Intellectual Property : An Introduction
Contributed by Powell Gilbert LLP
IP litigation – UK court developments
A number of important developments took place in 2010/2011 in relation to the UK courts dealing with IP litigation.
The Patents Court continues to be extremely busy, with its lists dominated by disputes in the pharmaceutical, medical device and electronics sectors. Important cases heard during 2011 included Eli Lilly v Human Genome Sciences, the first patent case in the Supreme Court, in which the issue of industrial applicability was considered in the context of the biotechnology field. Also significant was Nokia v IPCOM, one of a large number of mobile telephony actions in which the concepts of patent infringement were applied to an industry built upon technical standards. There have also been numerous referrals to the Court of Justice of the European Union, including references in relation to SPCs - particularly for combination products - trade marks and copyright.
Key personnel changes took place in 2011: Lord Justice Jacob, the dominant figure in recent UK IP law, retired from the Court of Appeal in March 2011 to take up an academic role with UCL, following which Lewison J and Kitchin J were promoted from the High Court to the Court of Appeal.
Important reforms also came into effect in the Patents County Court (PCC), resulting in a revitalised and more affordable forum in which small and medium-sized enterprises can enforce their IP rights. The main changes are the introduction of hands-on case management – with procedural steps such as disclosure, witness statements and expert reports only being permitted if a cost-benefit test is satisfied – and caps on exposure to recoverable costs - £50,000 in total - and damages - £500,000. Spearheaded by an enthusiastic new judge, HH Judge Birss QC, formerly a specialist IP barrister, there has been a significant increase in the popularity of the PCC and it is clearly being recognised as appropriate for litigating certain types of IP cases.
Patent litigation in Europe
The CJEU was involved in patent issues in 2010/11, as decisions and AG opinions were provided in relation to a number of referrals from national courts in relation to Supplementary Protection Certificates, providing important clarification to the pharmaceutical industry regarding the proper basis for paediatric use extensions and combination products.
In addition, the CJEU gave its long-anticipated ruling regarding the proposed centralised European Patent Court. The ruling was negative, with the CJEU finding that a separate specialist patent court would be incompatible with the structures of the existing EU judicial framework.
Not to be dissuaded, however, member states pressed on, and further developed proposals for a ‘Unitary Patent’ under the ‘enhanced co-operation’ mechanism, which permits a sub-set of member states to progress measures even in the absence of full agreement. In a proposal supported by all member states except Italy and Spain, the Unitary Patent is a variation on the bundle of national patents granted by the EPO, and is envisaged to provide applicants with wholesale protection across all designated states, avoiding the need for national validation. The validity and infringement of such a Unitary Patent will then be determined centrally for all designated states.
Whilst the proposed framework for the Unitary Patent has garnered support, the method by which the rights granted by such patents will be enforced is not yet clarified. A Unified Patent Court existing separately from the EU is envisaged, but the proposals are at a relatively early stage and the detailed practical, procedural and political discussions are certain to continue in 2012.
Copyright
2010/11 was also a busy year in copyright law, with the UK Supreme Court giving its judgment in the Lucasfilm case, clarifying the nature of a work of “sculpture” and also confirming that the UK Court may exercise its jurisdiction to hear claims against UK-based parties alleged to infringe foreign copyright. The UK Courts also heard cases relating to online news-gathering services (Meltwater) and the question of whether ISPs can be required to block access to websites which make available infringing copies of copyrighted material (Newzbin).
Copyright issues were also on the agenda of the CJEU, with pending referrals expected to address questions regarding the Software Directive and the issue of copyright protection for computer programs and interfaces (SAS), and database protection in relation to football league fixture lists (Football Dataco).
Trade Marks
The CJEU gave its ruling in L’Oreal v eBay in relation to the liability of online marketplace operators for offers for sale placed on their websites regarding goods that infringe third-party trade marks. A key aspect was whether operators are protected by the E-Commerce Directive hosting defence. The CJEU held that this defence was not available to an operator taking an “active role” - e.g. by assisting in presentation or promotion - in respect of such infringing offers which gives the operator knowledge of, or control over, the data relating to the offers.
The CJEU also indicated that an operator would be liable if it was aware of facts or circumstances that would have led a diligent operator to realise that the infringing offers were unlawful and it did not promptly remove or disable access to them.
The English High Court will now apply the CJEU’s decision to the facts of the case, and it remains to be seen whether this decision will result in an effect upon online trading behaviour.
Robin Fry of DAC Beachcroft LLP is an acclaimed copyright specialist who acts for clients drawn from a variety of industries. Sources say that he
"gets to the point, gives clear opinions and always produces the information you need when you need it." David Hansel of Hansel Henson LLP is an experienced practitioner with a forensic approach and congenial style, according to sources. He specialises in soft IP and advises the sandwich chain Subway on its UK trade mark issues.
Peter Taylor of Baker Botts UK LLP is known as an exceptionally bright litigator whose work on the enforcement of IP rights continues to impress. His high-profile clients include the LEGO Group and Calloway Golf Company.
Jonathan Ball of Norton Rose LLP is an expert in contentious IP who is singled out by clients for his results-oriented approach. He is noted for his work in the pharmaceutical and engineering sectors, and has been increasingly active on brand management matters.
Dennis Lee has joined Michelmores from Silverman Sherliker. He works with clients on a wide variety of IP issues with a particular emphasis on the creative industries. Commentators are impressed with the quality of his advice and his leadership of the firm's IP offering. From his position within the firm's clean technology team,
Richard Penfold of Brown Rudnick LLP handles a range of IP protection and exploitation work across the media and hi-tech industries.
Simon Stokes heads Blake Lapthorn's IP presence in London and turns his attention to non-contentious matters on behalf of clients across a range of sectors including the publishing, education and financial services.
Ian Wood recently arrived at Charles Russell LLP from Mayer Brown and is considered by the market to be a useful addition to its IP offering thanks to his expertise in protection, enforcement and exploitation proceedings.
Simon Gallant of Gallant Macmillan LLP is new to the IP rankings and arrives with a terrific reputation for brand management and other soft IP work. Sources note his
"great personal rapport with his client base, a human approach to stressful situations and an ability to explain things in a simple manner." Caroline Hayward of Trowers & Hamlins LLP is another new addition to the table. She is a specialist in soft IP and has an impressive track record in copyright, trade mark and design rights work for a healthy mix of clients. Commentators appreciate her availability and praise her combination of
"intellectual capacity" and
"commercial practicality." John Hull of Memery Crystal LLP has significant expertise in the sphere of soft IP, including recently advising Brunel University on a potential infringement of a trade mark by Thames Valley University. Clients describe him as
"low key and precise; a strategic thinker rather than a table-pounder." Georgie Collins of Lawrence Graham LLP was promoted to the firm's partnership last year and continues to lead the IP group with aplomb. Clients say she is a
"communicative, able and patient" solicitor who has enjoyed success in both contentious and non-contentious work.
Denzil Gunner of Atkins Thomson attracts praise from clients for his brand management work. Commentators say his style is relaxed but firm, and say the way
"he always has everything under control inspires full confidence in his abilities." Richard Price of Winston & Strawn is a new arrival from Taylor Wessing and comes with a wealth of experience. He is a much-admired patent litigator who remains active across a range of sectors.
Ian Starr of D Young & Co is a hugely knowledgeable IP litigator whose move from Ashurst has been the talk of the market. He handles the protection and enforcement of IP rights on behalf of clients from the pharmaceutical, FMCG and broadcasting sectors.
Vanessa Marsland of Clifford Chance LLP boasts a great track record in substantial trade mark, copyright and patent issues. Clients admire her fluency with both commercial and contentious issues and say
"she gives exceptional advice on sensitive, high-value matters." Paul Harris of Gowlings handles both contentious and non-contentious IP work. Clients note that he "
not only understands the basics, but looks at things through a businessman's eyes and takes into account not just the law, but commercial considerations as well."
Gary Moss recently joined EIP. He is widely noted as an experienced patent litigator. He has recently been heavily involved in supplementary protection certificate work.
Neil Coulson of Baker Botts UK LLP is an able patent litigator with an excellent reputation in the field. Interviewees single him out as
"methodical, searching and detailed both in the questions he asks and the answers he gives." Nikki Powell has joined Addleshaw Goddard LLP from Edwin Coe. She is building an excellent reputation for patent-related work in the TMT sector. Clients are impressed with how "she keeps things understandable and focused on what we want to achieve."