Articles and monographs : 185 Documents


Patents, Trade Marks and Design Rights: Groundless Threats

Document No: PUB 20I/13 Posted: 23 December 2013

On 17 April 2013, the Law Commission published a consultation paper on groundless threats. This consultation relates to their Patents, Trade Marks and Design Rights: Ground­less Threats project. The Commission was consulting on two approaches to reform:

  • The first is to build on the reforms made to patent law in 2004 and to extend these to the other rights. We also propose that legal advisers should be protected from liability for groundless threats.
  • The second approach is to treat groundless threats as a form of unfair competition and to introduce a new and broader cause of action based on the Paris Convention. 


Document No: PUB 20J/13 Posted: 23 December 2013

If a client is involved in litigation in a common-law country, then discovery (disclosure) may be sought of his communications with IP advisers. Clients have encountered serious and often insuperable obstacles to asserting privilege against such discovery with respect both to local advisers and to foreign ones. These obstacles are essentially unique to IP cases because (a) internationalised IP activity is the norm, and (b) so-called “non-lawyer” patent and trade mark attorneys/agents[1] are trusted major providers of IP legal advice and draft­ing. Privilege in general is in the public interest, and the anomalies which have arisen are accordingly contrary to the public interest. In the UK, these anomalies have been rectified to a limited extent in CDPA s. 280 and TMA s. 87, but much remains to be done both in the UK and elsewhere. (An extended discussion, albeit to be read in the light of the recent developments reported below, can be found in Trends and Events, December 2010, pages 24–27.)


[1] “So-called” is a reference to the UK situation. The Legal Services Act 2007 treats barristers, solicitors, patent and trade mark attorneys, and other specified legal professionals all as “lawyers”. 

Draft proposal for a revised block exemption for technology transfer agreements and guidelines

Document No: PUB 20L/13 Posted: 23 December 2013

The European Commission launched on 20 February 2013 a public consultation on anti-trust rules on technology licensing. The objective of the consultation was stated as follows:

In the meaning of the EU competition rules, a technology transfer agree­ment is a licensing agree­ment where one party (the licensor) authorises another party or parties, the licen­see(s), to use its technology (patent, know-how, software license) for the production of goods and services.

The rules on how to assess technology transfer agreements are set out in two instruments, the technology transfer block exemption regulation (“TTBER”) and accompanying Guidelines. The TTBER exempts certain categor­ies of licens­ing agreements concluded be­tween companies that have limited market power and that respect certain conditions set out in the TTBER. Such agree­ments are deemed to have no anticompetitive effects or, if they do, the posi­tive effects outweigh the negative ones. The Guidelines provide guidance on the application of the TTBER as well as on the applica­tion of EU com­peti­tion law to tech­nology transfer agreements that fall out­side the safe harbour of the TTBER.

These instruments will expire on 30 April 2014. The Commission has now drafted a proposal for a revised TTBER and Guidelines. The current consultation is seeking stakeholders’ views on this proposal.

The Federation’s activities

Document No: PUB 20M/13 Posted: 23 December 2013

One of the IP Federation’s chief lobbying tools is its policy papers. These are all available on the website at:

The policy papers on the website represent the views of the innovative and influen­tial com­panies which are members of the Federation. Members are con­sulted on their views and opinions and encouraged to debate and explore issues of practice and policy. Only after consensus is achieved are external bodies informed of the col­lective views of industry via the Federation.

Unregistered Design Rights – Qualification

Document No: PUB 20N/13 Posted: 23 December 2013

Unregistered Design Right (UDR) was introduced by the Copyright, Designs and Patents Act 1988. This sui generis right was created as a means of providing protection for purely functional designs which were first embodied in a design document or an actual article on or after 1 August 1989. 

Additional Employee Inventor Compensation – A right too far?

Document No: PUB 20A/12 Posted: 08 March 2013

The issue of employee inventions and the extent to which employee inventors should be compensated has in recent times become a hot topic in the UK. Since the Patents Act 1977 there has been a statutory right for employees to be awarded additional compensation over and above their salary for patented inventions made by them during the course of their employment where "having regard among other things to the size and nature of the employers undertaking, the invention or the patent for it (or the combination of both) is of outstanding benefit to the employer; and, by reason of those facts it is just" for an award to be made.

An Update on the America Invents Act (AIA) and Strategies to Consider

Document No: PUB 20B/12 Posted: 08 March 2013
The America Invents Act (AIA), the greatest change to American patent law in over 150 years, was enacted in September 2011, but many first-inventor-to-file (FITF) implementing rules were just recently proposed in July 2012, as the US patent system prepares to tran­sition to a first-inventor-to-file (FITF) system on March 16, 2013. In anticipation of this 2013 transi­tion, there are three helpful perspectives with which to view the im­ple­ment­ation of the AIA’s FITF system: (1) the perspective of pre-AIA US patent filings before March 16, 2013; (2) the perspective of post-AIA US patent filings with “effective” filing dates on or after March 16, 2013; and (3) the perspective of transitional US patent filings filed in the US Patent and Trademark Office (USPTO) on or after March 16, 2013, but with an “effective” filing date before March 16, 2013. This third perspective takes into account: a US patent application filed on or after March 16, 2013 which claims a benefit of priority under the Paris Convention to an earlier filed non-US application; and/or a US patent ap­pli­ca­tion filed on or after March 16, 2013 as a National Stage application of a PCT (Patent Cooperation Treaty) applica­tion filed before March 16, 2013. Understanding the proper “perspective” which applies to each US patent ap­plica­tion filing will be critical to building a strong US patent portfolio as the perspective will impact, for example, the scope of relevant prior art and attendant duty to disclose information to the USPTO, and an appropriate claim drafting strategy.

Proposal for Collaborative Search and Examination (CSE) in the PCT

Document No: PUB 20C/12 Posted: 08 March 2013
Collaborative search and examination (CSE) has been the subject of prolonged support by the Federation, beginning with a presentation by a Vice-President in June 2007 at an international Colloquium on Patent Quality in Amsterdam, and in 2012 involving con­tribu­tions by the President at similar events in London and Warsaw. Since 2010, support for CSE has been given also by the International Chamber of Commerce (ICC), which has been valuable because of ICC’s relationship with WIPO.

Copyright & Levies

Document No: PUB 20D/12 Posted: 08 March 2013

In December 2011, the Government published proposals for implementing a number of the recommendations relating to copyright which it had accepted in its August 2011 response to the Hargreaves Review of IP and Growth. Simultaneously Baroness Wilcox, the IP minister at the time, launched a Government consultation seeking views on these proposals.

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