Publications

Total Documents: 28

 

Patent Box – The Basics

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

If you pay UK corporation tax and develop your own products but still haven’t taken a look at the Patent Box, you really should. From April 2013, companies which satisfy specific criteria will be able to claim an additional deduction against their taxable profits, effectively taking the tax rate applied to a proportion of their profits down to 10%. There will be some companies for whom the new Patent Box will make no difference at all but, equally, there will be some for whom it will offer a relatively easy way of reducing their tax burden.

Patent Marking

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

Patent marking is an often neglected aspect of patent law, but in recent years has come into the spotlight. Most countries, including the UK, have a provision that damages from infringement can be awarded where an infringer has copied a product only where said infringer is put on notice of the existence of a patent right by virtue of the patent number being applied to (i.e. ‘marked’ on) the product (cf Section 62 (1) of the UK Patents Act).

Patent Enforcement – Portugal enacts law mandating arbitration for pharmaceutical patent disputes

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

In December 2011 the Portuguese government enacted Decree Law 62/2011 which for the first time moved certain IP disputes, in particular patent disputes, in the pharmaceutical sector away from the Jurisdiction of the court and mandated that they are handled exclusively through arbitration. The reasoning underlying this controversial and unprecedented change is clearly political but has not been unambiguously expressed. It has been implied that it is linked to austerity measures in Portugal and indeed a Memorandum of Understanding on Specific Economic Policy Conditionality was concluded between Portugal and the Troika (European Commission, IMF and ECB) in May 2011. However, whilst the Memorandum of Understanding contained a section on the Portuguese Judicial system and mentioned arbitration within the context of alternative dispute resolution as a way to facilitate resolution of backlog cases and out of court settlement, there was no mention of its mandatory use, or any contemplation of its use in IP law, and certainly not in a specific sector. The only reference to IP in the Memorandum of Understanding was to make a speciality court on IP fully operational by Q1 2012. What is plain, however, is that the specific IP disputes selected by the Law to be handled in arbitration are the critical innovator vs generics disputes that effectively govern when a generic copycat medicine can legally be commercialised in Portugal.

Preliminary injunctions alive and well – a view from Europe

Document No: PUB 12/11 Posted: 13 February 2012
How do European IPR holders prevent key competitors from launching or selling their prod­ucts in valuable markets in Europe? The answer is simple: obtain a preliminary in­junction (PI), also known as an interim or interlocutory injunction, to put a stop to the competition at an early stage. It worked for Pfizer in the UK, where the sale of generic Lipitor® was recently halted within a matter of hours. Similarly, within 24 hours, Novartis stopped Sanofi’s at-risk launch of generic CoDiovan® in France. PIs have also recently been obtained by Apple against Samsung in respect of products in both the Netherlands and Germany.

Practical issues – selecting an expert and getting the best out of them

Document No: PUB 11/11 Posted: 13 February 2012
Expert evidence is crucial in litigation before the English Patents Courts. A good expert witness will safely guide the Court through the perils of infringement and validity, but the corollary is that an apparently strong case can be defeated due to poor expert evidence. Although identifying the right expert is important, it is also vital to ensure that evidence from a good expert witness is not undermined by defective instructions or inadequate preparation. Perhaps most importantly, expert evidence must remain (and be seen to be) impartial, because any bias will quickly become apparent under robust cross-examination. This article examines a range of practical steps that can be taken to maximise the chances of a favourable expert performance in infringement and validity actions before the English Patents Court.

Privilege

Document No: PUB 14/10 Posted: 14 December 2010
  1. Attorney-client privilege in the UK Courts, especially for patent and trade mark attorneys
  2. Privilege in the proposed European and European Union Patents Court (EEUPC)
  3. Attorney-client privilege in European Commission competition law investigations
  4. Practical implications

Patent Quality

Document No: PUB 11/10 Posted: 14 December 2010

It is a basic requirement of a good patent system that granted patents should be of high quality: i.e., the patents can be presumed valid with a high degree of cer­tainty. Those states and regional groups that provide for search and examina­tion before grant should carry out these procedures to a high standard; while those states that do not examine before grant should be able to rely on the international system (PCT) and/or the work of examining offices to achieve quality.

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