How Brexit has changed IP Law

EU Intellectual Property Office, Alicante

Author Kristof Roomp Licence CC BY 2.0

 

Jane Lambert

At 23:00 on New Year's Eve, the EU Treaties ceased to apply to the UK. With them the legislation establishing the Community design, the EU trade mark, supplementary protection certificates and all other EU regulations disappeared. They were replaced by a fiendishly complex legislative framework which I discussed in How Brexit has changed British IP Law in NIPC Brexit on 17 Jan 2021.  The IPO has summarized the effect of those changes in Intellectual Property after 1 Jan 2021 but it does not even mention the implementing legislation let alone explore it in detail.

This is where I can help.  Between 16:30 and 18:00 on Tuesday 26 Jan 2021 I shall give a talk over Zoom entitled "How Brexit has changed IP Law".  I will cover the following topics:

• The European Treaty Framework:  Art 50 TEU,   the Withdrawal Agreement and the Trade and Cooperation Agreement;
• The UK Statutory Framework:  European Communities Act 1972, the European Union (Withdrawal) Act 2018, The European Union (Withdrawal Agreement) Act 2020 and the European Union (Future Relationship) Act 2020;
• The 2019 Statutory Instruments
• The Intellectual Property (Amendment etc.) (EU Exit) Regulations 2020
• Former EU Trade Marks
• Former Registered Community Designs
• Supplementary Unregistered Designs
• Other Rights: Supplementary Protection Certificates, Geographical Indications, Former EU Plant Varieties, Copyright and Related Rights
• Likely development of IP Law.

Every attendee will receive a full set of slides and PDF handouts with links to the relevant sections, articles or paragraphs.   Admission is free but attendees must register through Eventbrite.

The Supreme Court's Judgment on the Unwired Planet and Conversant Wireless Appeals

The Supreme Court Rules on FRAND from Jane Lambert

Virtual Cambridge: Informa Connect's IP Law Summer School 2020

By Cmglee - Own work, CC BY-SA 3.0,
https://commons.wikimedia.org/w/index.php?curid=26838822

Jane Lambert

In 2017 and 2019 I was asked to speak at Informa Connect's Cambridge IP Law Summer School (see Cambridge IP Law Summer School 20 Aug 2917 NIPC News and Cambridge IP Law School 2019  19 Aus 2918 NIPC News). This is usually a residential course at Downing College which takes place in the second week of August.  Participants are housed in the most luxurious student accommodation I have ever seen and eat all their meals in college. Every night of the course there is a special event:  a pub quiz on the first night,  a dinner on high table, punting on the Cam and a barbecue after a walking tour.  Speakers include some of the best known IP practitioners on the planet. The course is attended by very bright young associates and trainees of leading law firms as well as in-house legal advisors in the public and private sectors.  It is a great way to learn and also a great opportunity to make new connections.

A residential course in Cambridge was impossible this year owing to the COVID-19 pandemic but to Informa's credit, it transferred the course online. Obviously, a lot was lost. There could be no punting, barbecues or dining high or even conversations in the bar or at the breakfast table, but there could still be talks. Of the three IP Summer Schools that I have attended, this year's talks were the best.  Informa attempted to facilitate online networking over the Brella platform.  Although I had a very interesting chat with Timothy Powell of Potter Clarkson I did not meet many of the participants.  Two turned up with me and the course organizers for a quiz night at the end of the third day which was the one Cambridge social event that could be transposed online but there were not enough of us to form opposing teams.  I also met a few more in a breakout room  on the very first talk which was conducted over Zoom rather than Brella,

Each day of the course has a different theme with a different chairperson.  The course began on 10 Aug 2020 with a discussion on fundamentals.  It was chaired by Derek Meale of Simmons & Simmons.  In Cambridge, Derek usually breaks the ice by handing out chocolate bars to those who can recognize a confectioner's brand from a fragment of the packaging.  His talk is entitled What is Intellectual Property and Why is it Important and it is a whistle-stop tour of trade marks, copyrights, designs and patents. He was followed by Adrian Howes of Nokia who introduced the EU legal framework for IP.  Geert Glas of Allen & Overy introduced copyright. Mark Cruickshank of the Royal Bank of Scotland and George Motley of Simmons & Simmons took us through trade marks. David Rose of Mischcon de Reya introduced us to patents. Giles Pratt of Freshfields discussed IP licensing and transactions.  Adrian returned with Claudia Milbradt of Clifford Chance's German office to cover open collaborative technology development.  The day was rounded off with an excellent presentation by Timothy Powell on due diligence.

Because online learning is tiring for speakers and audiences, Informa held the talks over 10 days instead of the usual 5 with a rest day between each working day.  The second working day took place on the 12 Aug 2020.  The theme was "patents" and it was chaired by me.  We had excellent presentations from Sean Leach of Matthys & Squire on drafting and patent office procedure, Hiroshi Sheraton of Baker & McKenzie on cross-border patent strategy,  Paul England of TaylorWessing on patent infringement and Matthew Shade of Wilmer Hale on patent validity. Claudia returned in the afternoon to discuss software patents and computer-generated inventions.  Timothy Powell also returned to talk about patent practices in different countries.  I spoke about FRAND.   Daniel Shaw of J A Kemp finished a very full day by speaking about pharmaceutical and biotech patents,

The third day of the course took place on 14 Aug 2020. The theme was "soft IP" and it was chaired by Fabienne Brison of Hoyng Rokh Monegier in Belgium.  Grego Prior of Reed Smith spoke of the technical challenges to copyright owners such as file sharing, Kodi boxes and 3D printing.  Victoria McEvedy, who is a US attorney as well as an English solicitor, discussed Directive (EU) 2019/790 which is the EU's legislative response to some of those challenges. Paul Maeyaert of Fencer unravelled elegantly the knotty rules on similar marks, similar goods and the likelihood of confusion including the likelihood of association in oppositions, invalidity and infringement disputes. Ciara Cullen of RPC spoke about the technical challenges to trade mark owners such as keywords and search engine optimization, 3D printing and jurisdictional issues.  Carina Gommers of Hoyng Rokh Monegier tackled the enormous and fast-changing topic of design law focusing on registered and unregistered Community designs and touching on overlapping protection of designs and copyright. Victoria McEvedy returned to talk about defamation, trade libel and injurious falsehood,   Joanna Conway of Kemp Little discussed database rights and copyrights in databases. Liz Fitzsimmons of Eversheds Sutherland ended a very full data with a discussion of data protection. 

As I mentioned above, a quiz night had been arranged for Friday evening and Katherine Reggler appeared on Brella in her magnificent, shiny, quizmaster's coat.  She had run the Cambridge summer school in 2019 as well as a special conference on copyright just before Christmas which I also addressed. It was very good to see her again, albeit very briefly.

Tuesday's theme was transactional IP and the day was chaired by the distinguished Irish lawyer Patricia McGovern of DFMG. The day began with a masterly presentation on licensing by Fiona Nicholson of Bristows.  I have known Fiona ever since she ran the Glasgow branch of the Licensing Executives Society in the 1990s. Glasgow hosted by far the most interesting talks of any branch in the British Isles and were well worth the long drive from Yorkshire to attend.  Fiona later ran the national LES. What Fiona does not know about licensing can be written on the back of a postage stamp. Fiona was followed by Jo Farmer of Lewis Silkin who discussed franchising and merchandising,  Peter Rowland of Herbert Smith explained succinctly the principles of EU and national competition law that are relevant to licensing.  I discussed the IP provisions of the EU withdrawal agreement and political declaration and the draft agreements that had been exchanged by David Frost and Michel Barnier as well as the free trade agreements under discussion with Australia, Japan, New Zealand, the USA and what's left of the Trans-Pacific Partnership.  I blogged about the topic in British Intellectual Asset Owners' Rights after Brexit: IP Provisions of Bilateral Investment Treaties and Free Trade Agreements on 17 Aug 2020 in NIPC Brexit. After lunch, we heard from Nigel Parker of Allen & Overy on joint ventures and collaboration, Yohan Liyanage of Linklaters on acquisitions and divestitures of IP, Anne Fairpo, who had been one of my colleagues in chambers until a few years ago, on IP tax issues and Nick Fenner of TLT on passing off.

The last day was on Thursday.  The theme was "disputes" which was again chaired by me.  We had a great start from Olivia Wessendorff of the Department for International Trade who is one of the officials negotiating the free trade agreement with Japan that I had touched on briefly on Tuesday.  Olivia had attended the summer school in 2018 and it was good to see her back.  Rebecca Halford-Harrison of Keystone Law kept up the momentum with a comprehensive discussion on IP strategy which was for me the most useful talk of the conference.   We then had a 75-minute break before welcoming Paul Abbott of Freshfields.  He spoke about arbitration and I was particularly interested to hear his discussion of the investor compensation claims through bilateral investment treaties and free trade agreements that I had touched upon the day before.  Patricia McGovern returned to discuss border controls and steps against counterfeiting and piracy.  A topic that I am sure will be a growth area for Irish lawyers after 31 Dec 2020.  After lunch, I discussed some research that Prof Mostert and I had presented to the WIPO Advisory Committee on Enforcement last September.(see Another Side of the WIPO  5 Sept 2019 NIPC News).  The last talk of a conference is usually the graveyard slot but James Marshall of TaylorWessing commanded our attention to the end with a masterly presentation on the Trade Secrets Directive and its interrelation with the law of confidence.

I did miss Cambridge and everything that I get to do there including a ballet class at the Bodywork Company (see Ballet. Bodywork and BITs in Cambridge 15 Aug 2017 Terpsichore) but the quality of this year's talks went a long way to making up for what we had lost.  A lot if not all of the credit must go to Alice Muasher who kept the conference to time.  There were a lot of technical issues with broadband outages and other gremlins but nobody would have noticed them for she was completely unflappable. This was a job very well done.

Should anyone who attended or spoke at the summer school wish to say hello, I can be contacted on 020 7404 5252 during office hours or through my contact page,

Patents 101 - An Introduction to English Patent Law

Intellectual Property Office, Newport

Crown copyright

Jane Lambert

The slides and handouts for an online introduction to English patent law presented in 5 talks of approximately 45 minutes each.

Part and Topic	Presentation	Handout
Part 1 The Basics	Powerpoint	PDF
Part 2 Sources of law	Powerpoint	PDF
Part 3: Patentability	Powerpoint	PDF
Part 4  Applications	Powerpoint	PDF
Part 5 Infringement	Powerpoint	PDF

Part 1 focuses on "The Basics".  The key to understanding English patent law is that a patent represents a bargain with the public. There are several possible ways of rewarding innovation.  In the old Soviet days when the state owned all means of production, distribution and exchange inventors received certificates that entitled them to certain benefits. In most countries including the UK inventors are given a temporary monopoly of the manufacture, importation, distribution or use of their invention in return for disclosing it to the world.  The purpose of the monopoly is to give inventors or their successors an opportunity to recoup their investment in developing the invention and possibly earn a little bit extra as a reward. That bargain is reflected in the specification: the description or teaching being the inventor's side of the bargain and the claims or monopoly the public's.

Part 2 explores the sources of law, namely legislation and case law.  In contrast to other areas of IP law, there has never been much EU law in patents. Instead, the patent laws of most European countries including the UK's are harmonized by the European Patent Convention which is a treaty that lies outside the EU framework. This module explores the Convention and the Patents Act 1977 in detail. It also considers the courts and tribunals that decide patents cases, primarily the Patents Court, the Intellectual Property Enterprise Court and the Intellectual Property Office hearing officers.  Readers are introduced to the two main sets of law reports, the Reports of Patents Cases and the Fleet Street Reports.

Part 3 considers patentability, that is to say, the conditions for the grant of a patent.  Novelty and the expression "the state of the art" are discussed.  The Court of Appeal's test of novelty in General Tire & Rubber Co v Firestone Tyre & Rubber Co {1972] RPC 457 is considered.  The meaning of "inventive step", "the person skilled in the art", "common general knowledge" and "obviousness" are explored.  This module considers the exceptions in s.1 (2) and (3) and s.4A of the Patents Act and in particular the business method and computer programmes exclusions in s.1 (2) (c).

Part 4 discusses the procedure by which a patent can be sought from the IPO, a European patent designation the UK from the PO and applications under the Patent Cooperation Treaty,  It also considers alternatives to patenting such as trade secrets or relying on unregistered designs right and copyright, costs and patent strategy.

The last part addresses infringement.  Starting with s,60 and s,125 (1) of the Patents Act it considers what constitutes infringement in practice and the need for specificity in paragraph 4 of the Part 63 Practice Direction.  In most infringement cases, the defendant attacks the validity of a patent on all the grounds set out in s.72 (1) of the Act. The construction or determining the precise meaning of a patent claim is crucial not just for deciding whether a claim has been infringed but also whether the claim is new or obvious.  The case law on construction has evolved over the years and these materials chart the evolution from Catnic through Improver, Kirin-Amgen, Eli Lilly v Actavis and subsequent cases.

Though everybody is welcome to download and use my Powerpoint slides and PDF handouts they should be aware that they are no substitute for an oral presentation whether online or in a conference room.  Slides and handouts contain markers and serve as aides memoire only.  Should anybody wish to discuss this course or anything else in the article, he or she should call me on 020 7404 5252 or send me a message through my contact form.