Publications

Articles and monographs : 185 Documents

 

EU Review of the Technology Transfer Block Exemption Regulation

Document No: PUB 20K/23 Posted: 24 April 2024
The Technology Transfer Block Exemption Regulation (TTBER) 316/2014 and the associated Guidelines (2014/C 89/03) have underpinned many technical IP licence agreements since they were introduced in 2014, building on many years’ experience of predecessor legislation dating back to 1985 with the first TTBER (2349/84) coming into force. For background, Article 101(1) of the Treaty on the functioning of the European Union (the Treaty) prohibits agreements between undertakings that restrict competition unless they contribute to improving the production or distribution of goods or services or to promoting technical or economic progress while allowing consumers a fair share of the resulting benefits, in accordance with Article 101(3) of the Treaty. The TTBER and its associated Guidelines help provide business certainty by identifying when technology transfer agreements will not breach Article 101 restrictions (because the agreement is deemed not to restrict competition and therefore Article 101(1) will not apply), or because the agreement is deemed to provide objective efficiencies that are passed on to consumers and so meets the conditions of Article 101(3) of the Treaty. The TTBER and Guidelines provide further business certainty by identifying provisions in agreements that will or may raise Article 101 issues.

The first six months of the UPC: A summary of its orders and decisions

Document No: PUB 20L/23 Posted: 24 April 2024
Since the Unified Patent Court (UPC) opened on 1 June 2023, some interesting themes are already beginning to emerge from the (only) four substantive decisions and over 70 reasoned orders. The most substantive, certainly in terms of numbers of pages, is the 19 September decision by the Munich local division granting a provisional injunction (interim injunction in England) against NanoString Technologies in 17 EU countries. The oral hearing took place over two days and turned into something of a mini trial with both the issues of infringement and validity of the patent (concerning RNA sequencing technology) being considered. When it came to whether provisional measures should be granted, the local division stated that a mere finding of potential infringement was insufficient. There was a requirement to show urgency and the local division had to weigh up the interests of the parties and consider the potential harm to each of granting or not granting the injunction. As to the first, time did not start running until 1 June (the date the UPC opened). Since the claimants applied for an order on 1 June, the urgency requirement was fulfilled. As to the latter, the local division took into account 10x Genomics’ statements about permanently losing market share if they had to wait for the decision on the merits, balancing that argument against several arguments by the defendants that the measures were disproportionate, including that the second claimant was a non-practising entity. The local division awarded an injunction worded with reference to the patent claim (familiar to UK practitioners), rather than being restricted to a specific embodiment. NanoString appealed and the hearing was on 18 December 2023. A second application for a provisional injunction relating to another of 10x Genomics’ patents was refused.

IP Federation Gangnam-style

Document No: PUB 20M/23 Posted: 24 April 2024
Covid-19 changed many things, not all of them for the worse. Think of the mass enforced experiment of working from home which to our collective relief was actually quite alright and has proven durable and popular after the pandemic is behind us. Stopping travel was another change. Personal travel has come back but business travel less so. I finally managed to get to Japan to visit my company HQ in October ’22 after a three-year gap. There were few business travellers in my Tokyo hotel and my companions at breakfast were mainly intrepid tourists from France and the USA. There were constant reminders that Covid was still a real threat, from the plastic gloves we were obliged to don before handling breakfast items to the scary public announcements in stations to observe Covid precautions. And wearing a mask all day in HQ made my ears sore!

David Overington Lewis OBE, 1931–2023

Document No: PUB 20N/23 Posted: 24 April 2024
DAVID OVERINGTON LEWIS OBE was born on 17 November 1931 in Hampstead, London. David was educated at John Lyon School in North London and Northampton Engineering College. A founder member of the University of London Air Squadron, he was a pilot in the Royal Air Force on National Service, achieving the rank of Flying Officer in 1954. David qualified as a UK Registered Patent Agent (now Attorney) in 1961. He later became a Fellow of the Chartered Institute of Patent Attorneys, a European Patent Attorney, a Registered Trade Mark Attorney, and a Fellow of the Chartered Institute of Trade Mark Attorneys. On the retirement of Mr A. C. Price at the end of April 1964, David became the representative of Babcock and Wilcox Ltd on the Council of the Federation, attending his first meeting on Friday 8 May 1964. His attendance at Council was exemplary – and unique in duration. He attended his last meeting on Friday 10 January 2020 by phoning in. (Even before the Covid lockdowns later in 2020, remote attendance had become more common.) His last attendance in person had been on Friday 12 July 2019, when the Council meeting was followed by an Annual General Meeting of the Federation and a reception.

Design Law – What Awaits in 2024?

Document No: PUB 20O/23 Posted: 24 April 2024
For two years the IP Federation has been actively engaged in championing the views of UK industry in design law through debate and submissions with various stakeholders and legislative bodies . Finally, some of the revised legal landscape is beginning to come into focus and the future challenges more apparent. At the end of the 2023, it was announced that the Council of the EU and the European Parliament had reached a provisional agreement on the first substantial review of the 20-year-old EU Design Law. Two of the most notable changes amongst the proposals are infringement provisions associated with 3D printing and digital transformation, as well as the permanent introduction into the law of the Repair Clause. It is proposed that only the owner of an EU registered design shall have the right to create, download, copy and share software recording the design for the purposes of making the design, thus curtailing efforts to avoid infringement via digital means. The introduction of the Repair Clause seeks to enshrine in the law the extent to which EU design right holders can prevent the use of spare parts of an identical appearance for the repair of a complex product. Interestingly, the proposed clause seeks to balance the interests of design owners, consumers and the replacement parts industry by deviating from the ruling by the CJEU in Acacia vs Audi & Porsche (joined cases C-397/16 and C‑435-16) by narrowing the exclusion to “must-match”-only replacement parts of complex products. The formal adoption by both the Council and Parliament of the proposals is expected in early 2024.

IP Federation Patent Committee – expertise in practice

Document No: PUB 20P/23 Posted: 24 April 2024
It’s rarely a route to fame or fortune to say you’re a member of any committee, let alone a specialist one in the arcane field of intellectual property. So why do experts from innovative industry give up time from their very busy day jobs to participate in the IP Federation Patent Committee? Let’s see. Under the able chairing of Rob Knight (supported in the background by his gently snoozing dog), the Patent Committee meets by videoconference three times a year. Each meeting attracts about fifteen experts who really know how the patent system works, and could work better, in practice. Collectively, they cover a wide range of technologies and so are able to take a cross-sectoral view. But what’s the Patent Committee for? Well, it’s main purpose is to take a more detailed look at important patent issues than the Council has time for. It doesn’t have a decision-making role – that’s for Council – but it is well qualified to undertake analysis and give advice. A key benefit for its members comes from knowledge-sharing. It’s amazing how much people learn from one another in the course of the Committee’s discussions.

Copyright, Data and AI – What are we trying to achieve anyway?

Document No: PUB 20Q/23 Posted: 24 April 2024
The past year has seen a whirlwind of debate, consultations, guidelines, roundtables, and listening sessions on copyright. It’s even been the topic of discussion in the pub – well among my IP friends at least: 2023, the year copyright became interesting. In the midst of this activity, it’s important that we don’t lose sight of what we want to achieve … which is what, exactly? It is understandable that every industry is thinking about what impact AI will have on their business, as businesses consider what new roles may be required, and what operational changes could be made. There is clear excitement and interest about the potential new opportunities AI presents.

Patent law harmonisation

Document No: PUB 20R/23 Posted: 24 April 2024

Substantive patent law harmonisation (SPLH)

Since last year’s Review, there has been considerable activity in substantive patent law harmonisation (SPLH) . In early 2023, the EPO carried out a consultation amongst user organisations, including hosting two seminars at the EPO. The IP Federation provided a response to the consultation and was represented at the seminars. . In July, a plenary session of the B+ Group of nations’ patent experts was held. The EPO gave a short summary of the results of its earlier consultation process. 79% were in favour of a grace period provided this was part of a balanced package with a “safety net” for third parties. There was support for “deep” harmonisation of prior user rights with objective criteria for these. From the EPO’s perspective the takeaways from the consultation process were that Europe was interested in SPLH and that there was a readiness and momentum in Europe to accept a grace period as part of an SPLH package.

Amending the requirement for Description Amendments: the EPO’s hot topic of 2022

Document No: PUB 20A/22 Posted: 06 March 2023
Patent lawyers are well-aware of the influence a patent’s description can have on the monopoly granted by the claims of that patent. Whilst, strictly, what matters is the patent’s claims, any ambiguity takes one back to the description. European Patent Convention (“EPC”) Rule 42 specifies that the description must describe the invention such that it can be understood by reference to the underlying technical problem to be solved. The material included in a patent’s description therefore matters. Too little may limit the patentee’s ability to rely on a wider interpretation in post-grant amendments or enforcement against an allegedly infringing product. Too much material risks falling foul of the European Patent Office’s (“EPO’s”) strict new Guidelines for Examination (“the Guidelines”) on inconsistencies between the description and the claims (section F-IV-4.3). Under these Guidelines, examiners can require amendments to the description, including by the explicit disclaiming of certain embodiments as not being part of the invention. This, of course, can have significant implications, particularly when assessing infringement by the doctrine of equivalents. 2022 saw a plethora of EPO Board of Appeal decisions grappling with description amendments, with differing views. So where do we stand?

Amicus curiae briefs at the European Patent Office (EPO)

Document No: PUB 20B/22 Posted: 06 March 2023
In 2022, the IP Federation submitted two amicus curiae briefs to the Enlarged Board of Appeal of the EPO in relation to pending referrals. The first, submitted in April 2022, was in relation to the G 2/21 “plausibility” referral. The Board issued a preliminary opinion on this matter in October 2022, and held a hearing in November 2022 with the final decision still being awaited. The second brief, submitted in July 2022, related to the G 1/22 and G 2/22 “Entitlement to priority” referrals. The Board is yet to provide anything of substance on this matter, but they are expected to do so in 2023.
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