KEMPNER & PARTNERS IP LAW TRACKER

January 2018

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 (UPC) sunrise-period for opting out European patents expected to start early 2018. Although the current start date of the UPC is still unknown due to a German legal challenge to the Unified Patent Court Agreement, the UPC Preparatory Committee is continuing to prepare the functionality of the Court, and Chairman Alexander Ramsay recently wrote a message “Summing up and Looking Forward to 2018”, in which he outlines the Provisional Application stage that will provide a UPC pilot phase before it is fully operational that can be used to conclude 3rd party agreements and hire judges.

 
31 March 2018 Counterfeits and Piracy

European Commission consultation on future “Counterfeit and Piracy Watch-List” closes. See December 2017 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 2017 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 2017 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 will begin to apply across all Member States. See October 2017 IP Law Tracker for further details.

 
2018 General IP enforcement

On 29 November 2017 the European Commission (EC) published a communication setting out its strategy for IP enforcement in 2018. See December 2017 IP Law Tracker for further details.

 

 

UK Legislation Tracker

Early 2018 Patents

In November 2016 the UK announced its intention to ratify the Unified Patent Court Agreement (UPCA), despite the Brexit vote. By the end of December 2017 the Unified Patent Court (Immunities and Privileges) Order 2017 had been passed by the House of Commons and House of Lords. The final step before ratification is now for the Privy Council to approve the Order, which they are expected to do at their meeting in February 2018.  However, as discussed above, the ongoing German legal challenge to the UPCA means that the UPC start date is still unknown.

 
31 March 2018 Designs

The UK is set to ratify Hague Agreement for industrial designs by this date. Secondary legislation to put the UK’s accession into effect, namely the Designs (International Registration of Industrial Designs) order 2017 should come into force by the end of June 2018. See October 2017 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. See October 2017 IP Law Tracker for further details.

 
Summer 2018 Tax

The UK government is expected to publish draft legislation on withholding tax royalties for non-UK residents who make sales in the UK but pay no tax here, as well as review the existing regime for IP taxation.

 
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 2017 IP Law Tracker for further details.

 

Brexit and IP

5 UK IP Associations drafted a joint note to government in December setting out key requests regarding IP following Brexit. The main requests were summarised under the following headings:

  • Continuation of EU-derived IP rights
  • Unitary Patent / Unified Patent Court Agreement
  • Exhaustion of rights
  • Rights of representation
  • Mutual recognition of judgments.

Download the full note here.

The Chartered Institute of Trade Mark Attorneys (CITMA) also published their business case for trade marks post-Brexit in December. The main requests are for the continued protection of EU trade marks and registered community designs across the remaining 27 European member states and the UK following Brexit.

Read the full business case here.

Recent IP case decisions and their impact on you

Patents

Does the Actavis v Eli Lilly doctrine of equivalents apply to patent construction in validity claims?

The Court of Appeal held in a recent case that the doctrine of equivalents introduced to patent infringement claims last year in Actavis v  Eli Lilly does not apply to an assessment of patent validity.

Impact on your business:
This case provides further reassurance to patent holders and applicants that beyond the realms of patent invalidity actions the law of patent construction remains unchanged following last year’s Actavis ruling, providing more certainty and predictability for patent holders and applicants.

Saab Seaeye v Atlas Elektronik [2017] EWCA Civ 2175, 19 December 2017

Trade marks

Can sorbet be sold as Champagne? Yes, if it tastes like it.

The CJEU has ruled on the interpretation of EU legislation on protected designations of origin and decided that Aldi “Champagner Sorbet” does not infringe the PDO “Champagne”. The ice cream in question was 12% champagne and the CJEU stated that if it tastes like champagne, it is champagne, and that use of “Champagne” in “Champagner Sorbet” was direct use of the PDO to claim openly a “gustatory quality” connected with it, and therefore did not amount to misuse, imitation or evocation.

Impact on your business:
This decision affects right holders of other protected origin brands and those wishing to use PDO products in their goods. The CJEU’s focus on the taste as connected with the protected ingredient provides useful guidelines for when use of a PDO name is permissible.

Comité Interprofessionnel du Vin de Champagne Aldi Süd Dienstleistungs-GmbH & Co OHG – Case C‑393/16, 20 December 2017