Showing posts with label UPC. Show all posts
Showing posts with label UPC. Show all posts

Friday, 25 July 2025

UPC Injunction Restraining Infringement of a European Patent (UK) - Fujifilm v Kodak

View of Mannheim
Author Georg Buzin Licence CC BY-SA 4.0  Source Wikimedia Commons

 





Jane Lambert

Court of First Instance of the Unified Patent Court, Mannheim Local Division (Presiding Judge Tochtermann, Legally qualified Judges Böttcher and Agergaard and Technically qualified Judge Wismeth) Fujifilm Corp. v Kodak GmbH and Others UPC_CFI_365/2023 18 July 2025

A “European patent (UK)” is defined by s.130 of the Patents Act 1977 as "a European patent designating the United Kingdom."  S.77 (1) of the Act provides that "a European patent (UK) shall, as from the publication of the mention of its grant in the European Patent Bulletin, be treated for the purposes of Parts I and III of this Act as if it were a patent under this Act."  Until now, an owner of a European patent designating the UK who believed that his or her patent had been infringed would issue proceedings in the Patents Court or the Intellectual Property Enterprise Court in England or Wales (or the Court of Session in Scotland or the High Court in Northern Ireland).  The significance of the decision of the Mannheim Local Division of the Court of First Instance of the Unified Patent Court in Fujifilm Corp v Kodak GmbH and Others of 18 July 2025 is that a court outside the United Kingdom has restrained the infringement of a European patent (UK).

The Dispute

Fujifilm Corporation of 26-30, Nishiazabu 2-chome, Minato-ku, Tokyo 106-8620, Japan is the proprietor of European patent 3 51 1174, which designates the United Kingdom and Germany among other countries.  Fujifilm believed that Kodak GmbH, Kodak Graphic Communications GmbH and Kodak Holding GmbH of Stuttgart ("Kodak") had infringed the patent by importing infringing items from a UK company in the Kodak group and marketing them in Germany.  Kodak denied infringement and challenged the validity of the patent on grounds of anticipation, obviousness and added matter and counterclaimed for the patent's revocation.

Procedural History

The proceedings regarding the German designation were separated from those regarding the British designation pending the Court of Justice of the European Union's judgment in C‑339/22, BSH Hausgeräte GmbH v Electrolux AB in the light of the Advocate-General's opinion  EU: C:2024:687, [2024] EUECJ C-339/22_O, ECLI:EU: C:2024:687.  In the German proceedings, the patent was found to be valid and infringed.

BSH Hausgeräte GmbH v Electrolux AB 

The Court of Justice delivered judgment in Case C‑339/22, BSH Hausgeräte GmbH v Electrolux AB EU: C:2025:108, [2025] EUECJ C-339/22, [2025] WLR(D) 306, ECLI:EU: C:2025:108 on Feb 2025. I discussed the judgment in Cross-Border Jurisdiction in Patent Disputes - BSH Hausgeräte GmbH v Electrolux AB yesterday.   The salient points were that: 
Judgment

Referrinng to to the CJEU’s ruling in BSH Hausgeräte that the court of the EU member in which the defendant is domiciled pursuant to art 4 (1) does have jurisdiction to rule on an infringement action based on a patent granted or validated in a non-EU member state even if the invalidity of this patent is raised as a defence, the Mannheim judges held at para [31] of their judgment that the UPC has jurisdiction to decide upon the infringement action as far as it relates to acts infringing the UK national part of the patent in suit. That is subject to the Lugano Convention or other bilateral treaties that may exist, but in the case of the UK, there are none.  The judges proceeded to consider the claims and defences and found that the patent was valid and infringed.  They considered the available remedies and decided that they had the power to grant injunctions under s.61 (a) of the Patents Act 1977 as well as under art 25 (a) and art 63 (1) of the Agreement on a Unified Patent Court OJ 20.6.2013  C175/1.

Order

The Mannheim Local Division made the following order:
"A.I. The Defendants are ordered to refrain from: 
1. offering, placing on the market, using or storing it for those purposes a lithographic printing plate precursor within the United Kingdom, that has the following features: 
a. A lithographic printing plate precursor comprising:

an aluminum support; and
an image recording layer on the aluminum support,

wherein the aluminum support includes a
n anodized film on a surface of the image recording layer side,
the anodized film has micropores extending in a depth direction from the surface of the anodized film on the image recording layer side, 
the micropores include at least large-diameter pores whose maximum diameter inside the anodized film is in a range of 0.01 µm to 0.30 µm, and wherein an average value of depths of the large-diameter pores to the bottom from the surface of the anodized film is in a range of 100 nm to 1500 nm,  
an average pore diameter of the micropores in the surface of the anodized film is in a range of 10% to 50% of the maximum diameter of the micropores inside the anodized film,  
a thickness of the anodized film is in a range of 550 nm to 2850 nm, and  
the image recording layer contains an acid color former,

 - direct infringement of claim 1 EP 3 511 174 B1 -

2. supplying and/or offering to any person other than a party entitled within the territory of the United Kingdom with 

lithographic printing plate precursors  
which are suitable and intended to use with  
a. method of preparing a lithographic printing plate, comprising 
a step of imagewise-exposing the lithographic printing plate precursor of any of claims 1-14; and 
a step of supplying at least any of printing ink or dampening water and removing an image recording layer in a non-image area on a printing press.

 - indirect infringement of claim 15 EP 3 511 174 B1 - 

b. a printing method, comprising: a step of imagewise-exposing the lithographic printing plate precursor according to any one of claims 1 to 4; 
a step of supplying at least any of printing ink or dampening water and removing a non-image area of an image recording layer on a printing press to prepare a lithographic printing plate; and 
a step of performing printing using the obtained lithographic printing plate. 
- indirect infringement of claim 16 EP 3 511 174 B1 - 

A.II. It is ordered, that in the event of any violation of the injunction under A.I. above, the respective Defendants shall pay severally to the Court a penalty payment of EUR 50 per square meter of the contested printing plate precursor. 
B.I. It is held that the Defendants shall pay damages to the Claimant compensating all losses caused by infringing acts referred to in A.I. above in the United Kingdom since 17 July 2019. 
II. The Defendants are ordered to inform the Claimant to the extent of which the Defendants have committed the infringing acts of EP 3 511 174 referred to in A.I – stating 
1. the origin and distribution channels; 
2. the quantities delivered, received or ordered, as well as the price obtained; in particular  
  • the individual deliveries, broken down by delivery quantities, times and prices and the respective product designations as well as the names and addresses of the customers;  
  • the turnover, the gross margin and the contribution margin generated by the Defendants with the sale of these products; 
  • the individual offers, broken down by quantities, times and prices and product designations as well as the names and addresses of the commercial offer recipients;  
  • the advertising carried out, broken down by advertising media, their circulation, distribution period and distribution area, and in the case of Internet advertising, the domain, access figures and placement periods of each campaign;  
  • the identity of all third parties involved in the distribution, in particular the names and addresses of the commercial buyers and the sales outlets for which the products were intended; 
whereby the Defendants each reserve the right to disclose the names of their non-commercial customers to an impartial auditor only, chosen by Claimant and paid by the respective Defendant, who, upon Claimant’s request, confirms or denies whether a specific non-commercial customer is contained in the disclosure and who, in all other cases, is subject to confidentiality towards the Claimant. 
III. The Defendants are ordered to destroy at their own expense the products, material and/or implements referred to under A.I.1. which are in their possession and/or ownership within the United Kingdom. 
IV. The Defendants are ordered to recall the products referred to under A.I. which have been placed on the market from the channels of commerce, with reference to the infringement determined by a court of law (Unified Patent Court, Local Division Mannheim, decision of 2 April 2025); 
V. The Defendants are ordered to definitively remove the products referred to under A. I. from the channels of commerce at their own expense. 
C. All further requests of Claimant are dismissed. 
D. The Defendants have to bear the costs of the litigation. 
E. The Orders A.I., B.II. to B.VI. shall be enforceable only after the Claimant has notified the Court which part of the orders it intends to enforce, this notification has been served on the Defendant concerned and a certified translation of the orders in the official language of a Contracting Member State in which the enforcement shall take place has been provided by the Claimant and served on the Defendant concerned."

Comment

As this judgment was only handed down on 18 July 2025, there has been no opportunity to consider what steps a defendant in Kodak's position might take to avoid the enforcement of the claimant's UK patent or European patent (UK) by the UPC or, indeed, any court in an EU member state.  One possibility might be to seek the revocation of the patent under s.72 of the Patents Act 1977 or possibly a declaration of non-infringement under s.71 before proceedings are launched in the Unified Patent Court.  The possibility of staying proceedings in such circumstances was mentioned in para [35] of the Mannheim judgment because rule 295 of the UPC Rules of Procedure provides that the UPC may stay proceedings:

"(a) where it is seized of an action relating to a patent which is also the subject of opposition proceedings or limitation proceedings (including subsequent appeal proceedings) before the European Patent Office or a national authority where a decision in such proceedings may be expected to be given rapidly;"

or 

"where the proper administration of justice so requires" (r 295 (m)."  

Another possible solution might be an old-fashioned anti-suit injunction if the claimant is amenable to the jurisdiction of the English courts.

Anybody wishing to discuss this article may call me on +44 (0)20 7404 5252 during normal UK business hours or send me a message through my contact form at any other time.

Friday, 25 October 2024

Estonia

Tallinn Old Town
(c) 2024 Jane Lambert: all rights reserved

 














Jane Lambert

Last week I visited Estonia and was immediately reminded of Wales.  It is another small country on the Western seaboard of the landmass of which it forms part.  It has a larger territory but a much smaller population than Wales.  Although almost everyone speaks fluent English and many Estonians also speak Russian, the country has its own euphonic language the use of which was discouraged for much of its history   Like Wales, Estonia has a strong choral tradition.  The events by which Estonia regained  its independence are called "the Singing Revolution." 

Estonia has been very successful in establishing and growing new businesses. Examples of Estonian companies that have become household names are Skype, Bolt and Starship Technologies.  Although I had come to Estonia primarily to watch ballet I was also on the lookout for pointers to Estonia's success.  In this article, I have gathered information and pointed to resources that might be of use to UK entrepreneurs.  I will leave it to readers to consider whether Estonia has any lessons for the UK or for any of its nations and regions.

Many of Estonia's new businesses are in such activities as software development, fintech, electronics and robotics.   Those activities require a highly developed digital infrastructure.  In an article for Wired dated 28 Oct 2016, Matt Reynolds described Estonia as "the world's most digitally advanced society." It launched the first 5G mobile network in 2020 and offers very fast broadband to homes and businesses throughout the country.  Those activities also require a highly educated workforce and perhaps another reason for Estonia's success is that it scores high marks consistently in the OECD's PISA (Programme for International Student Assessment) (see PISA 2022 results: Estonia’s education is the best in Europe  Invesr Estonia.  

Estonia is party to the European Patent Convention and has its own Patents Act which was enacted in 1994.  It is also party to the Paris Convention, Patent Cooperation Treaty, the Patent Law Treaty and TRIPs.  Estonia also protects inventions as unitiltu models under the Utilities Models Act 1994.  Other intellectual property statutes to be noted are the Trade Marks Act 2002, the Industrial Design Protection Act 1997, the Layout-Designs of Integrated Circuits Protection Act 1998 and the Copyright Act 1992 which also protects rights in performances and database rights,  Estonia has acceded to the Berne and Rome Conventions, the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty.  Geographical indications are protected by Regulation 2019/787 and Regulation 2024/1143.

The Estonian Patent Office at Tatari 39 in Tallinn keeps comprehensive databases of inventions, trade marks, industrial designs and geographical indications.  It also keeps a list of patent attorneys.  A service that sounds as though it would be very useful to startup founders and other small business owners is pro bono advice on patent and utility model applications by patent examiners between 15:00 and 17:00 on Tuesdays (see "Free Consultations" on the Patent Office website. 

Precedents for establishing, investing in and advising new businesses are available from the Startup Estonia page.  These include agreements for assigning and licensing intellectual property rights which I have reviewed and believe to be sound.   Non-residents of Estonia who want to incorporate and run a company in that country remotely can apply for a status called e-residency,  Successful applicants receive a digital identity which enables them to access many government and private services that would otherwise be reserved for Estonian nationals and permanent residents.

Estonia is a civil law country.  The court system is divided into civil and administrative law branches.  Civil courts determine commercial disputes in accordance with The Estonian Commercial Code.  The County Court is the court of first instance for all matters including intellectual property disputes.  According to Taylor/Wessing's Patent Map Estonia does not have a specialist patents court though, as I mention below, there is at least one County Court judge with patents expertise.  Typical costs of a patent trial where infringement and validity are an issue are €25,000 to €45,000,  Appeal lies to the Circuit Courts and ultimately the Supreme Court which is also a court of cassation.

Estonia has ratified the Unified Patent Court Agreement and has adapted the unitary patent (see the UPC Member States Map on the Unified Patent Court website).   Estonia falls within the Nordic-Baltic Regional Division of the Court of First Instance which also includes Sweden, Latvia and Lithuania.  Kai Härmand who is also a member of the Estonian judiciary sits in that Regional Division.  One of the hearing centres of the Nordic-Baltic Regional Division is in Tallinn at Lubja 4.

As far as I could judge prices in Estonia seem to be about the same as in the United Kingdom although hotels and restaurants in the old town can be expensive.  A good tip from a dancer friend is to eat in the food court of the Solaris shopping centre which is just across the road from the Estonian National Opera House.  That is where the locals eat.   I bought a very nourishing meal of chicken, chips and sparkling mineral water at The Lido for €6.80  before watching my friend dance in Cinderella.   I would never get away with that in Covent Garden.

Anyone wishing to discuss this article should call me on 020 7404 5252 during office hours or send me a message through my contact page.

Sunday, 28 May 2023

How much Work is London losing to Continental English Speaking Commercial Courts?

 

Jane Lambert

In English Speaking Commercial Courts in France, Germany and the Netherlands bid for London's Work which I posted on 4 April 2021, I discussed how the UK's withdrawal from the European Union had been seen as an opportunity for lawyers and judicial authorities in France, the Netherlands and other countries to grab some of London's lucrative, international, commercial litigation work.  The Dutch authorities responded by establishing the Netherlands Commercial Court as an English-speaking commercial in Amsterdam.  In Paris, some of the proceedings before the International Chamber of the Paris Commercial Court and an International Chamber of the Paris Court of Appeal take place in English (see Présentation générale CCIP-CA / The ICCP-CA.  There are also proposals to set up similar English-speaking commercial courts in Belgium, Germany and Switzerland.

This month the Netherlands Commercial Court published a News Update which contained an article entitled Brexit: Europe sees emergence of specialist commercial courts to compete with the UK (Chessa, IBA).  It refers to a short article by Sara Chessa dated 17 March 2023 on the International Bar Association's website. Although the News Update quotes the opinion of Mr Martin Poelman that the Netherlands Commercial Court has very good judges whose judgments are perceived as good and solid and Dries Beljon's view that litigation in that court is quicker and cheaper in that court than elsewhere, Ms Chessa's article does not suggest that the Dutch or French courts are taking much (if any) work away from London.  She notes that between its opening in 2019 and 2022, the Netherlands Commercial Court saw only 16 cases, according to a publication by the Court,   If she was referring to the judgments page of the court's website there have been 16 judgments between opening and 23 April 2023.  Ms Chessa also quotes Nick Vineall KC who denied that London had lost any business at all since Brexit and that if anything the courts and arbitrators are busier than ever.

It is, of course, very early days.   Litigation under the inquisitorial system is obviously cheaper than under a procedure where contestant law firms leave no stone unturned.  Also, exclusion from Lugano will impede the enforcement of judgments of the UK's courts in the EU (see EU Commission rejects the UK's Application to rejoin Lugano 6 May 2021).  As an intellectual property lawyer, I am anxious that the Netherlands Commercial Court is pitching for soft IP work with its factsheet NCC and Intellectual Property.  The court's most recent judgment concerns intellectual property and ownership of data (see Diamedica Therapeutics Inc. v Pharmaceutical Research Associates Group BV NCC 22/018 (C/13/730389) 23 April 2023). From 1 June 2023, the Patents Court and Intellectual Property Enterprise Court face competition from the Unified Patent Court.

Apologists for brexit contend that any loss of business in Europe will be more than made up by increasing business with the rest of the world.  That is yet to be borne out by experience but even if it turns out to be the case for British business as a whole it may not turn out to be so for the legal services sector.   In the EU England and Wales was by far the largest English-speaking common law jurisdiction.   In the wider world, London faces competition from other powerful English-speaking common law courts in the USA, the Commonwealth, the Arabian Gulf and even Kazakhstan.

Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page. 

Friday, 10 March 2023

Unified Patent Court Update

Jane Lambert

 






Much has happened since my last article on the Unified Patent Court ("UPC").  The court will open for business on 1 June 2023 and not on 1 April 2023 as I stated on 22 Oct 2022 to allow users more time to prepare themselves for the strong authentication which will be required to access the court's case management system ("the CMS") and to sign documents (see Adjustment of the timeline – Start of the Sunrise Period on 1 March 2023 on the UPC's website 5 Dec 2022). The new website which I mentioned in my previous article is now up and running at https://www.unified-patent-court.org/en.

The new website displays 

  • photos of the UPC's buildings, 
  • a map of Europe showing the EU member states in blue, member states that have signed the Unified Patent Court Agreement in a darker shade of blue, the states in which the agreement will come into force on 1 June 2023 in dark blue and everywhere else including the UK in grey,
  • information on opt-out, registration as a representative before the UPC and FAQ,
  • the latest news, and
  • important links 
on its home page,

The court's judges whose appointment I mentioned in my previous article have now undergone advanced preparatory training in the UPC's Rules of Procedure (see Launch of the first training for all UPC appointed judges 17 Jan 2023).  Training in the court's internal rules and practice was also given to court staff immediately afterwards (see Update on UPC Training Activities 10 Feb 2023).  Alexander Ramsay, who chaired the committee that handled all the preparatory work, has been appointed the court's first Registrar and Axel Jacobi has been appointed as his deputy (see The Unified Patent Court appoints its first Registrar and Deputy-Registrar  19 Jan 2023).

Germany deposited its instrument of ratification of the UPC Agreement on 17 Feb 2023 nearly 10 years after it had signed it thereby permitting the sunrise period to start on 1 March 2023 (see Germany ratifies the Agreement on a Unified Patent Court  21 Feb 2023).  The sunrise period has now started and holders of European patents can now decide whether they want to opt out of the exclusive jurisdiction of the UPC pursuant to art 83 (3) of the UPC Agreement.   To help them to do so, the court has provided information on filing an opt-out and the following FAQ.

Those who are eligible to practise before the UPC may now apply to be listed as representatives before the court pursuant to art 48 (3) of the UPC agreement.  These include 

  • lawyers authorized to practise before the courts of a Contracting Member State pursuant to art 48 (1) and 
  • European Patent Attorneys who are entitled to act as professional representatives before the European Patent Office pursuant to art 134 of the EPC and who have appropriate qualifications such as a European Patent Litigation Certificate pursuant to art 48 (2).  

Art 2 (c) defines "Contracting Member State" as  "a Member State party to this Agreement".  Rgar would seem to include countries that have signed the UPC Agreement but not yet ratified it such as the Republic of Ireland.  In this regard, readers are reminded that James Bridgeman SC is a member of these chambers

Anyone requiring further information may call me on +44 (0)20 7404 5252 or send me a message through my contact page.

Monday, 30 November 2020

Unified Patent Court Ratification Bill clears Lower House of the German Federal Parliament

Author Cezary p  Licence CC BY-SA 2/5  Source Wikipedia Bundestag

 










Jane Lambert

In German Constitutional Court's Decision in Re Unified Patent Court Agreement  22 March 2020 NIPC Law, I commented on the Constitutional Court's decision in  Re Unified Patent Court Agreement 2 BvR 739/17 Order of 13 Feb 2020 (20 March 2020) that the bill to ratify German accession to ratify the Unified Patent Court Agreement was unconstitutional.  I wrote:

"If the problem was the lack of a two-thirds majority there is nothing to prevent the German Government from introducing another ratification bill and making sure that there are enough parliamentarians in each of the houses of Parliament to vote the measure through."

That is what appears to have happened.  A new ratification bill was passed by a quorate lower house with the necessary two-thirds majority (see UPC – Progress on German ratification 26 Nov 2020 UPC website). The bill now proceeds to the Upper House which will vote on the proposed legislation on 18 Dec 2020.

As Mr Boris Johnson MP in his capacity as Foreign Secretary had deposited the instrument of ratification on World Intellectual Property Day 2018 (see British Ratification of the UPC Agreement - Possibly the best thing to happen on World Intellectual Property Day 26 April 2018 NIPC News) we might have expected the Unified Patent Court to open for business in 2021,  Unfortunately, there are likely to be further delays as a result of the UK government's volte-face under Mr Johnson's premiership (see Volte-Face on the Unified Patent Court Agreement  29 Feb 2020 NIPC News).   A withdrawal notification of ratification was deposited with the Council Secretariat on 20 July 2020.  On the same day the Minister for Science, Research and Innovation:

"UNIFIED PATENT COURT

I am tabling this statement for the benefit of Honourable and Right Honourable Members to bring to their attention the UK’s withdrawal from the Unified Patent Court system.

Today, by means of a Note Verbale, the United Kingdom of Great Britain and Northern Ireland has withdrawn its ratification of the Agreement on a Unified Patent Court and the Protocol on Privileges and Immunities of the Unified Patent Court (dated 23 April 2018) in respect of the United Kingdom of Great Britain and Northern Ireland and the Isle of Man, and its consent to be bound by the Protocol to the Agreement on a Unified Patent Court on provisional application (dated on 6 July 2017) (collectively “the Agreements”).

In view of the United Kingdom’s withdrawal from the European Union, the United Kingdom no longer wishes to be a party to the Unified Patent Court system. Participating in a court that applies EU law and is bound by the CJEU would be inconsistent with the Government’s aims of becoming an independent self-governing nation.

The Agreements have not yet entered into force. However, in order to ensure clarity regarding the United Kingdom’s status in respect of the Agreements and to facilitate their orderly entry into force for other States without the participation of the United Kingdom, the United Kingdom has chosen to withdraw its ratification of the Agreements at this time. The United Kingdom considers that its withdrawals shall take effect immediately and that it will be for the remaining participating states to decide the future of the Unified Patent Court system".
Although this is the end of the road for British participation in the project unless and until the United Kingdom (or successor states of the UK) rejoin the European Union it need not be the end of the project.  

The UPC's Preparatory Committee meeting held on 10 Sep 2020 reported calls from European industry for the speedy implementation of the Agreement.  That includes British businesses that intend to continue to trade in the EU after the end of the transition period whether through subsidiaries, joint ventures or otherwise.  Until this year, British governments have always believed the establishment of an EEC, EU or unified patent to be in our national interests and much of British industry still does.  It is, therefore, gratifying to note that "good progress was made and the Committee is confident that pragmatic and legally sound solutions will be found that will enable the unitary patent system to be functional in a near future" (see Report of the Preparatory Committee meeting held on 10 September 2020 UPC website).

For that reason, I shall continue to monitor progress on the UPC even after the end of the transition period.   I shall also be glad to advise on points of law relating to European patents or the Unified Patent Agreement. As our chambers already have an Irish silk whose practice includes IP and technology law we can already provide representation in the UPC whenever it comes into being.   As soon as the UPC announces opens its doors, I shall also seek call to the Irish bar.   Anyone wishing to discuss this article or the UPC and unitary patent generally may call me on +44 (0)2- 7404 5252 during office hours or send me a message through my contact form.

Thursday, 9 July 2020

European Circuit Webinar "IP Litigation post Brexit"

Author Jtdi  Copyright waived by the author
















Jane Lambert

Yesterday I attended a webinar entitled "IP Litigation post-Brexit". It was presented by the European Circuit which is an association of advocates across the European Union and beyond modelled loosely on the Circuits of the Bar of England and Wales. The webinar was opened by the Leader of the Circuit, Mr Colm Ó hOisín SC. It was chaired by Ms Margaret Gray SC. The speakers were Nicholas Saunders QC of Brick Court, Jonathan Newman SC and Sir Robin Jacob.

The questions that I hoped might be addressed in this webinar were "What is to become of the Unified Patent Court?" and "What is to happen to cross-border litigation after Regulation (EU) No 1215/2012 ceases to apply to the UK?"  The first question was addressed because I asked it as did Fidelma Macken.  Sadly, nobody raised the second.

Mr Saunders noted that a vast volume of EU legislation has been absorbed into the laws of the United Kingdom.  From 1 Jan 2021 judges in this country will no longer refer points of law relating to that legislation to the Court of Justice of the European Union under art 267 of the Treaty on the Functioning of the European Union.  As British judges will have to do that for themselves he did not think it would be long before noticeable divergencies in the interpretation of the same instrument emerged.

Mr Newman agreed and opined that Irish courts would become less and less likely to follow English decisions as a consequence.  However. most of his presentation focused on the Commercial Court of the Republic of Ireland. and a proposal to create an intellectual property list within that Court. Sir Robin said that Ireland had a great opportunity as the main common law jurisdiction to take much of the work that will no longer go to London but it was an opportunity that Ireland was in danger of losing.  Ireland had yet to ratify the Unified Patent Court Agreement and failed to send judges to judicial forums.   The Netherlands was also a small country but the Dutch courts and lawyers had made a big contribution to the development of European IP law.

On the question of what will happen to the Unified Patent Court, Sir Robin thought that the agreement will have to be renegotiated.   Annex II of the Agreement allocated chemistry and pharmaceutical work to London. Sir Robin doubted whether businesses in those industries would want to litigate their disputes in Milan.  Judges and lawyers from the UK had contributed massively to the preparations of the Court including the procedural rules.  He was saddened by his country's withdrawal from the project and believed that the UK would be missed.

Although I enjoyed the presentations I think the webinar would have been improved greatly by contributions from IP Bar Association, the IP Lawyers Associations and the Chartered Institutes of Patent and Trade Mark Attorneys.  Sir Robin suggested that the Irish might send for Mr Justice Birss who would be an excellent speaker.  Perhaps, Lord Justice Arnold might be even better as it was he who reformed the Patents County Court and created the Small Claims Track.

Anyone wishing to discuss this article or any of the topics mentioned in it should call my clerk on  07986 948267 or send me a message through my contact page.

Monday, 3 February 2020

Brexit Briefing January 2020



Jane Lambert

Some marked the UK's departure from the EU with countdowns and flag-waving.  Others, such as "Led by Donkeys", protested. I attended a concert by the European Union Chamber Orchestra at St George's Hall in Bradford,  As its name suggests, this is an orchestra made up of artists from 10 countries which is funded by the European Commission,  It describes itself on its homepage as a "musical ambassador" for the European Union.

As I listened to the music I would not help reflecting on the smoothness with which brexit had been achieved.  Thanks to the  Agreement on the withdrawal of theUnited Kingdom of Great Britain and Nothern Ireland from the European Union and the European Atomic Energy Community, the rules that have governed this country's relations with its nearest neighbours, closest allies and biggest market will continue to apply until the end of the year at least and in some respects beyond which gives businesses and individuals time to plan. However, I also reflected that achieving such continuity had been a close-run thing.  The Agreement was signed only in the last few days of January and the legislation which implements it received royal assent only on 23 Jan 2020.  For much of the period since the referendum, there was a very real danger that the rules governing the UK's relationship with the 27 remaining member states would simply cease to apply when it left the EU.

In the field of intellectual property, much of the way ahead has been charted by art 126 and Title IV of the withdrawal agreement as I explained in Intellectual Property Post Brexit 2 Feb 2020 and The Intellectual Property Provisions of the Draft Withdrawal Agreement 19 Nov 2018.  However, some uncertainties remain.  One is whether the Unified Patent Court Agreement will ever come into force and if it does whether the United Kingdom can remain a party to it.  Another is whether the UK will accede to the Lugano Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters when  Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters OJ L 351, 20.12.2012, p. 1–32 ceases to apply.  One hopeful sign is that Iceland, Norway and Switzerland have agreed to support the UK's intent to accede (see the Ministry of Justice's News story Support for the UK’s intent to accede to the Lugano Convention 2007 28 Jan 2020).   I discussed the mechanics of the settlement between the UK and the EU in The Revised Draft Withdrawal Agreement and Political Declaration  21 Oct 2019 and The European Union (Withdrawal Agreement) Act 2020 30 Jan 2020). 

Now that the UK has left the EU the focus changes from the terms of withdrawal to the future relationship.  The European Commission has already begun to set out its stall with the President's speech to the London School of Economics (see The UK's Future Relationship with the EU - Ursula von der Leyen's Speech and Meeting with Johnson 9 Jan 2020).   It has also published its position on a number of issues (see The UK's Future Relationship with the EU - The Commission sets out its Negotiating Position 17 Jan 2020).  The Prime Minister is due to set out the UK's position today (see Rajeev Syal and others UK will refuse close alignment with EU rules, Johnson to say, Prime minister’s vision on future trading relationship will clash with that of EU leaders 2 Feb 2020 The Guardian/ The Observer).

To reflect the change of focus I have removed many of the links on this website to resources on the withdrawal agreement negotiations and inserted links to resources on the future relationship.  Anyone wishing to discuss this article should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page. 

Sunday, 2 February 2020

Intellectual Property Post Brexit

Author Furfur  Licence CC BY-SA 4.0 Source Wikipedia Brexit





















Jane Lambert

While many regret the UK's departure from the EU, it could have been so much worse.  There was a very real danger that the 2 year notification period provided by art 50 (3) of the Treaty of European Union would expire without any agreement on the arrangements for British withdrawal and that the rules that had governed the UK's relations with its nearest neighbours, closest allies and biggest market would simply cease to apply. The Agreement on the withdrawal of theUnited Kingdom of Great Britain and Nothern Ireland from the European Union and the European Atomic Energy Community sets out the terms upon which the country leaves the EU and the Political Declaration setting out the framework for the future relationship between the European Union and the theUnited Kingdom maps out the path for future cooperation.

Art 126 of the Withdrawal Agreement provides for a transition or implementation period between 1 Feb and 31 Dec 2020 during which time European Union law will continue to apply to the UK.  That is implemented by s.1 of the European Union (Withdrawal Agreement) Act 2020 which inserts a new s.1A into the European Union Withdrawal Act 2018 suspending the repeal of the law-making provisions of the European Communities Act 1972 until the end of the transition period,   Title IV of the Agreement contains provisions converting EU trade marks and registered Community designs and Community plant varieties into British trade marks, registered designs and plant breeders; rights from 1 Jan 2021.   I discussed those provisions while they were in draft form in The Intellectual Property Provisions of the Draft Withdrawal Agreement on 19 Nov 2018.

The upshot is that Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark OJ L 154, 16.6.2017, p. 1–99, Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs OJ L 3, 05/01/2002 P. 1 - 24 and Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights OJ L 227, 1.9.1994, p. 1–30 continue to apply to the UK until 31 Dec 2020.  As the Intellectual Property Office's news story, Intellectual property and the transition period published 29 Jan and updated 31 July 2020, points out, EU trade marks and Community designs and plant varieties remain in force. International registrations for trade marks and designs protected via the Madrid and Hague systems which designate the EU will continue to extend to the UK.  The courts of the UK that have been designated EU Trade Mark and Community Design courts will retain their jurisdiction for the rest of the year.

The same applies to other EU legislation including Regulation (EC) No 469/2009 on supplemental protection certificates for medicinal products and Regulation (EU) 2017/1128 of the European Parliament and of the Council of 14 June 2017 on cross-border portability of online content services in the internal market and to rules of law such as the exhaustion of rights doctrine. Judges in the UK can continue to refer questions of EU law to the Court of Justice of the European Union for preliminary rulings under art 267 of the Treaty on the Functioning of the European Union.  Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters OJ L 351, 20.12.2012, p. 1–32 will continue to apply.

These arrangements will end on 31 Dec 2020  but most rights holders will continue to be protected.  Instead of their EU trade marks and registered Community designs and plant varieties, proprietors will rely on their equivalent UK intellectual property rights.  A new British supplemental unregistered design right will apply to designs that are protected as unregistered Community designs. Proprietors of plant protection and medicinal product inventions may continue to apply for supplemental protection certificates.   These and other matters are discussed in greater detail in my article of 19 Nov 2018

In that article I wrote:
"The draft withdrawal agreement makes no provision for the Unified Patent Court Agreement which is awaiting German ratification. However, if Germany ratifies the Unified Patent Court Agreement during the implementation period there would appear to be no reason why that agreement should not come into force during that period, What would happen after that will depend on the terms of the UK's future relationship with the EU."
According to Geoffrey Bacon of Bristows, there are indications that the German Federal Constitutional Court could deliver judgment on a challenge to German ratification of the Unified Patent Court Agreement in the next few weeks (see Bacon Update on BVerfG cases allocated to Justice Huber, the UPC case rapporteur 23 Jan 2020 Bristows UPC website).  The European Patent Office has confirmed its readiness to grant unitary patents. Decisions on continued British participation and probably the future of the project will, therefore, have to be made before the end of this year.

Anyone wishing to discuss this article or IP and British withdrawal from the EU generally may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

Friday, 7 December 2018

Brexit Briefing - November 2018

Author O Flammger
Source Wikipedia Palace of Westminster


















Jane Lambert

Negotiators from the United Kingdom and the European Union have agreed the text of a withdrawal agreement in accordance with art 50 (2) of the Treaty on European Union and a political declaration setting out the framework for the future relationship between the EU and the UK. That agreement has been approved by the governments of the member states at a special meeting of the European Council on 25 Nov 2018.

The draft withdrawal agreement provides for an implementation or transition period starting on 29 March 2019 and continuing until at least 31 Dec 2020 during which time the British government will try to negotiate a long-term agreement with the European Union on the lines of the political declaration. During that period, EU law will continue to apply to the UK although it will cease to be a member on 29 March 2019 and will have no representation in the Council or in any of the EU institutions after that date.

The draft agreement will avoid disruption of trade but it will leave the UK as a rule-taker rather a rule-maker during the implementation period. More importantly, it may require the UK to remain in regulatory alignment with the EU even after the end of that period until both sides agree otherwise to ensure an open border with the Republic of Ireland.

This draft is being debated by both Houses of Parliament as I write this briefing and it has already prompted several ministerial resignations.  It is opposed by almost all the opposition parties and by many Conservative MPs on both sides of the Brexit debate.  Though nothing is impossible in present circumstances, most commentators think it unlikely that it will be approved by either House.

The Prime Minister has warned that the alternatives to the draft agreement are an exit from the EU without any implementation period which could be very disruptive to business and the general public or maybe no Brexit at all. In that regard, the Court of Justice of the European Union is hearing a case that has been referred to it by the Court of Session under art 267 of the Treaty on the Functioning of the European Union,  The case has been brought by Andy Wightman and others against the Secretary State for Exiting the European Union on whether the British government can unilaterally withdraw its notice of intention to leave the EU. The Advocate-General has opined that it can on certain specified conditions (see Case 621/18 Wightman and others v Secretary of State for Exiting the European Union EU:C:2018:978, ECLI:EU:C:2018:978, [2018] EUECJ C-621/18_O). The full Court is expected to deliver its decision on Monday 10 Dec 2018.

Whether we leave the EU with an agreement or not, it is clear that Community designs and plant varieties and EU trade marks will be converted into British ones, that we shall have a British system of geographical indications very much like the EU system and a supplemental unregistered design right that will be similar to unregistered Community designs,  Of course, none of that will be necessary if we remain in the EU. If we stay in the EU or even exit on the terms of the draft withdrawal agreement there is an outside chance that the Unified Patent Court and unitary patent will come into being and that we will participate in them.  It is highly unlikely that will happen if we leave without agreement.

The British government ratified the United Patent Cout agreement on 26 April 2018 and the Minister with responsibility for Intellectual Property who deposited the instrument of ratification was Sam Gyimh MP. Mr Gyimak is one of the ministers who was felt obliged to resign over the terms of the draft agreement as did his predecessor in the role Mr Jo Johnson MP.  Both were good ministers and it is sad to see them go.

Even though there are just a few weeks to go before the 29 March 2019 the best advice I can offer my clients is prepare for the worse and hope for the best.  Anyone wishing to discuss this article or Brexit generally should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page,  I wish all my readers a Merry Christmas and a happy New Year.

Saturday, 5 May 2018

Brexit Briefing - April 2018















Jane Lambert

One European initiative upon which the United Kingdom has been consistently communautaire has been a single European patent for the whole European Union.  Her Majesty's government was one of the signatories to the Community Patent Convention in 1975 and one of the reasons for the Patents Act 1977 was to give effect to that Convention.  The Convention never came into force because other parties failed to ratify it.  Several attempts have been made to revive the initiative or to launch other initiatives through the European Union or the European Patent Convention. The British government has supported all of those initiatives but they have all come to nought.

The reason why the United Kingdom has supported those initiatives is obvious upon consulting TaylorWessing's Patent Map.  There is a comparison of the typical costs at first instance of an action for patent infringement in each of the jurisdictions of Europe and England and Wales is by far the most expensive. The cost of enforcement goes a long way to explaining why the United Kingdom consistently lags behind not only Germany and France with similar populations and GDP to ours in the number of European patent applications but also Switzerland with one eighth of our population and the Netherlands with a third (see European patent applications per country of origin on the European Patent Office website).  A single European patent covering the territories of the United Kingdom and those of its European partners with a single patents court for all those countries would level the playing field for British business.

As it did not prove possible to launch an EU patent because of objections from Spain and Italy the other member states decided to establish a single European patent for their territories by themselves through a procedure known as "enhanced cooperation" (see Jane Lambert The Community Patent is Dead - Long Live the Unitary Patent 29 April 2018 NIPC Law). The result was the Agreement on the Unified Patent Court ("the UPC Agreement") which was signed by Her Majesty's and other governments on 19 Feb 2013. The Agreement establishes a Unified Patents Court consisting of a Court of First Instance and a Court of Appeal and one of the sections of the Central Division of the Court Instance is to sit in London. The British government acquired premises for the new court in Aldgate and began to fit them out long before the Brexit referendum.

Art 89 of the UPC Agreement provides that it will come into force after 13 signatories including France, Germany and the United Kingdom ratify it.  Over 13 states including France have already done that.  On World Intellectual Property Day, which falls on 26 April. the Minister for Intellectual Property announced that the UK had also ratified the UPC Agreement (see Jane Lambert British Ratification of the UPC Agreement - Possibly the best thing to happen on World Intellectual Property Day 26 April 2018 NIPC News). The last remaining condition for the implementation of that Agreement is German ratification but that is delayed by litigation in the German Federal Constitutional Court.  The Alternative for Germany Party has also tried to repeal legislation to ratify the UPC Agreement that has been passed by both houses of the German Parliament and is now awaiting presidential assent.

It is not clear how long it will take for the Constitutional Court to determine the legal challenge to German ratification but it could easily exceed the time in which the UK will remain a member of the EU.  After that it is by no means clear whether the UK can remain a party to the UPC Agreement.  My own view is that it cannot but there is a contrary view held by, among others, the British government that the UPC Agreement is an international treaty that lies outside the EU.  The reason for my scepticism is that such a treaty would be incompatible with EU law for the reasons given by the Court of Justice of the European Union in Opinion 1/09 of 8 March 2011 (see Jane Lambert Court of Justice of the European Union holds European and Community Patent Court to be incompatible with EU Law 8 March 2011 NIPC website).

Our chances of remaining party to the UPC Agreement will depend in large part on whether we leave the EU with a withdrawal agreement and on our future relations with the remaining member states.  Although a lot of progress has been made in negotiations for a withdrawal agreement. Monsieur Barnier warned at the Hanover Trade Fair that it is not a done deal (see Jane Lambert Withdrawal Agreement - Not a Done Deal Yet 26 April 2018). He emphasized at the All-Island Civic Dialogue in Dundalk on 30 April 2018 that a likely stumbling block is the Irish border (see EU press release Speech by Michel Barnier at the All-Island Civic Dialogue of 30 April 2018 on the Commission website). British ideas for "maximum facilitation" and a "customs partnership" appear not to have been agreed even by the British cabinet let alone the EU. There are reports in today's Guardian that British civil servants have drawn up plans for customs checks between Great Britain and Ireland which would be in line with the draft withdrawal agreement (see Daniel Boffey Brexit plan drawn up for border checks between NI and rest of UK 4 May 2018 The Guardian).

Such a plan would be tantamount to the economic partitioning of the United Kingdom which could have all sorts of political and constitutional consequences beyond the obvious such as the withdrawal of DUP support for the Conservative administration and renewed requests by the Scottish government to remain in the single market and customs union. However, if it led to a free trade agreement that covered services it would be welcomed widely by the financial services industry.  Such an agreement is on the table (see the memorandum from the art 50 task force to the EU 27 Topics for discussions on the future framework at forthcoming meetings 4 May 2018). Monsieur Barnier made some encouraging remarks about London remaining an important financial centre after Brexit in his speech to the Eurofi think tank's high level seminar in Sofia on 26 April 2018 (see EU press release Speech by Michel Barnier at the Eurofi High-level Seminar 2018 at Sofia, 26 April 2018 on the Commission website).

Should anyone wish to discuss this briefing, the UPC Agreement or Brexit generally, he or she should call me on 020 7404 5252 during office hours or send me a message through my contact form.

Sunday, 4 March 2018

Mrs May's Mansion House Speech: Some Home Truths At Last


Source Guardian,  Standard YouTube Licence

 Jane Lambert

The Prime Minister's speech at the Mansion House on Friday has received a mixed reception.  According to Toby Helm "most Conservative MPs and peers gave the prime minister a period of grace after Friday’s address."  However, Lord Heseltine dismissed it as "more detail on a set of demands that the European Union had made clear all along it would never agree to" (see Tories’ Brexit unity fades as Heseltine slams May’s speech 2 March 2018 The Guardian).

I hold no brief for the Prime Minister, but I think that is a little unfair.  She did speak some home truths though I fear she may have pulled her punches:
  1. Brexit will be no bed of roses:  "We are leaving the single market. Life is going to be different. In certain ways, our access to each other's markets will be less than it is now. How could the EU's structure of rights and obligations be sustained, if the UK - or any country - were allowed to enjoy all the benefits without all of the obligations?"
  2. "Even after we have left the jurisdiction of the ECJ, EU law and the decisions of the ECJ will continue to affect us." Aside from the niggle that the initials "ECJ" are no longer used as that tribunal is now known as the Court of Justice of the European Union ("CJEU") and has been for many years, I welcome that remark.  It will make it easier to reach agreement on the withdrawal treaty and it may just make it possible for the UK to remain a party to the Uniform Patent Court Agreement.  On the other hand, she omitted to say that the UK will lose its judge and advocate general on the Court who have hugely influenced its decisions since 1973. 
  3. No State Aids or Featherbedding:  "If we want good access to each other's markets, it has to be on fair terms. As with any trade agreement, we must accept the need for binding commitments - for example, we may choose to commit some areas of our regulations like state aid and competition to remaining in step with the EU's."
The reason Mrs May had to say these things is that there has been a lot of wishful thinking about Brexit. Some have argued that the shock of the departure of its third largest member state would rip the EU apart. That could happen but there are no signs of its happening yet.  It is equally possible that the remaining member states could integrate more quickly and become stronger and more influential than ever. Another bit of wishful thinking is that German car manufacturers, Italian white goods makers and French farmers will force their governments to make concessions were we ever to play hardball. I have never understood that argument because we are not going to start making those goods in Britain or sourcing those goods from elsewhere. Tariffs might dent demand for EU goods and services but it won't destroy it and the business communities in those countries know it.  The fact is that the UK is not negotiating from a position of strength and will on many issues have to take what the remaining member states have to offer or leave it.

Finally, the Institute for Government has produced an excellent, tabulated analysis of the PM's speech with "Area" in come column, "What the Prime Minister said" in another and "What this means" in the third (see The Prime Minister's Mansion House Brexit speech 2 March 2018 The Guardian).  I was about to do my own analysis along similar lines but this is so much better.

Anyone wishing to discuss this article or Brexit in general should call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.

Tuesday, 6 February 2018

Brexit Briefing - January 2018

Michel Barnier
Author Foto-AG Gymnasium Melle
 Licence CC BY-SA 3.0
Source Wikimedia Commons























Jane Lambert

The month started quietly with a period of contemplation on the terms of the interim agreement on citizens' rights, the Irish border and the financial contribution and ended in a ruckus with BuzzFeed's publication of a leaked government memo that predicted bad outcomes for every type of Brexit (see Alberto Nardelli This Leaked Government Brexit Analysis Says The UK Will Be Worse Off In Every Scenario 29 Jan 2018 BuzzFeed). That led to ministers' dissing their own civil servants and a back bench Tory MP accusing HM Treasury of all kinds of skulduggery.

That same back bencher provided the only drama of the month when he asked the Secretary of State for Exiting the European Union whether the UK would be a vassal state between 29 March 2019 and 31 Dec 2020 at a hearing of the House of Commons Select Committee on Exiting the European Union on 24 Jan 2018 (see  Will the UK be a Vassal State during the Implementation Period? 30 Jan 2018). Surprisingly Mr Davis came close to admitting to the committee that it would though only for a short period. Mrs May subsequently intervened to say that we would not admit new arrivals from the EU member states on the same terms as before and that we would seek a new mechanism to challenge any new laws that would harm our interests.

As to the relationship that will subsist between Britain and the EU after the 31 Dec 2020, the Chancellor of the Exchequer and the Secretary of State for Brexit called for "a new economic partnership with the EU – the most ambitious in the world – that recognises the extraordinary levels of interconnectedness and cooperation that already exist between us" in a joint article for the Frankfurter Allgemeine Zeitung." To continental eyes that looks very like cherry picking or having your cake and eating it.  Michel Barnier anticipated that speech and warned
"A country leaving this very precise framework and the accompanying supervision gains the ability to diverge from it but by the same token loses the benefits of the Internal Market. Its financial service providers can no longer enjoy the benefits of a passport to the Single Market nor those of a system of generalised equivalence of standards."
In other words we can have a free trade agreement and it may even have some provisions for the supply of services but it will fall far short of the frictionless trade conditions that we now enjoy (see Davis and Barnier set out their Negotiating Strategies for the Next Phase of Brexit Talks 11 Jan 2018).

On 17 Dec 2017 Daniel Alexander QC, Chair of the Intellectual Property Bar Association, together with the Chair of the IP Law Committee of the Law Society of England and Wales and the Presidents of the Chartered Institute of Patent Attorneys, the Chartered Institute of Trade Mark Attorneys ("CIPA") and the IP Federation, signed a memorandum to the Government entitled Intellectual property (IP) law and Brexit Summary of main requests for the UK government a copy of which can be downloaded from the CIPA website (see IP and Brexit - Key Requests to Government).  One of those requests is ratification and continued UK participation in the Unified Patent Court but that looks increasingly unlikely as exit day approaches. The question for now is what if anything can be salvaged from the UPC Agreement. I wrote about that topic on 26 Jan 2018 in NIPC Law and I am due to talk about it to Queen Mary University London on 12 Feb 2018 (see Implications of Brexit on Intellectual Property Law 19 Jan 2018 NIPC Law).

Anyone wishing to discuss this article or Brexit in general should call me on +44 (0)29 7404 5252 during office hours or send me a message through my contact form.

UPC Injunction Restraining Infringement of a European Patent (UK) - Fujifilm v Kodak

View of Mannheim Author Georg Buzin   Licence CC BY-SA 4.0     Source Wikimedia   Commons   Jane Lambert Court of First Instance of the Unif...