Tag:  “UK”  | (6) posts

New UK intellectual property minister reaffirms UK commitment to the Unified Patent Court

There is a new sheriff in town. Jo Jonson takes over from Baroness Neville Rolfe as UK Intellectual Property minister. He was appointed new minister on 11 January.

Baroness Neville Rolfe has previously made some promising statements concerning the UK’s intentions to ratify the agreement on a unified patent court (UPC).

Jo Johnson has now reaffirmed the country’s commitment to the unitary patent project and its importance to British business in a House of Commons Science and Technology Committee session on 11 January. He did also warn that the future of the ratification beyond Brexit is dependent on future negotiations.

Jo Johnson stated: “We have taken a decision to proceed with preparations to ratify the UPC Agreement. We believe it is important that we participate in this framework. It has value to UK inventors and businesses and we want to be there at its creation.”

The UK should be able to participate in the unitary patent system because the UPC will not be an institution of the EU. But this only goes so far since the unified patent agreement repeatedly refers to EU law and the EU court of justice.

If and how the UK can stay in the UPC after Brexit is still an ongoing debate and we will just have to wait and see where it goes.

UK inches towards UPC ratification

There was a sigh of relief at the end of November when the UK announced that it would proceed with the ratification process to implement the UPC in spite of Brexit.  This renewed the hope that the UPC will come in to force in 2017 as planned.  Whilst this was good news, what did it actually mean for the timescales and where is the UK currently in its legislative process to ratify the UPC?

In order to look forwards, it may be helpful to take a look back to see what the UK has already done to ratify the UPC.  They were, in fact, fairly advanced in the ratification process before the result of the EU referendum put a spanner in the works.

In May 2014, the UK Parliament passed the Intellectual Property Act 2014.  This Act amended the Patents Act 1977 by inserting new sections 88A and 88B in order to introduce the concept of the UPC into the legislation.  These new sections provided that the Secretary of State may make orders to give effect to the UPC Agreement and that such orders must be presented to both Houses of Parliament (the House of Commons and the House of Lords) for approval before they are passed. The UPC was also designated as an “International Organisation” under UK law which allows it to be granted certain privileges, immunities and exemptions if required.

Following on from this Act, the Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 was laid before Parliament in March 2016.  This order makes various amendments to the Patents Act 1977 in order to clarify the difference between a unitary patent and a European patent and applies and disapplies various provisions of the Patents Act 1977 (as appropriate) to unitary patents.  It is worth noting that this order was debated in the Houses of Parliament in March when confidence was still fairly high that the UK would remain in the EU.  Hansard (the record of parliamentary debates) shows that the House of Commons approved it in just 16 minutes and the House of Lords took only 24 minutes!

Since the UK’s announcement that it will continue to ratify the UPC Agreement, it has shown some progress by signing the Protocol on the Privileges and Immunities of the Unified Patent Court on 14 December 2016.  However, in order to implement this Protocol in the UK, it will need to lay a further order before Parliament for approval.  This order is currently being drafted but no draft has been published and there is no news on when it will be laid before Parliament.  I think what we can expect, when the time comes for the parliamentary debate, is that it will definitely not be as brief as it was for the last order.  What should be a fairly straight forward procedural approval may turn into a wider discussion on the UK’s role in the UPC, how it can function once the UK leaves the EU and whether the ratification should continue.

The UK also needs to deposit its instrument of ratification of the UPC Agreement with the General Secretariat of the Council of the European Union in order to formally ratify.  This will be prepared by the Foreign and Commonwealth Office but should be merely a formal step which will be done once the relevant secondary legislation has been passed.

There is still a lot of uncertainty surrounding Brexit, particularly with the ongoing Supreme Court appeal as to whether Parliament should be consulted before Article 50 is triggered.  The judgement is due this month and may give some clarity on the timing for Article 50.  As the UK is progressing with ratification of the UPC, membership is now likely to be one of the points of negotiation on departure from the EU.

Alicia Kim, Associate

Cautious optimism regarding 2017 UPC implementation

During the meeting of the EU Competitiveness Council on 28 November 2016 in Brussels, the UK Minister of State for Energy and Intellectual Property stated that the UK will proceed with their ratification process in the months to come.

The statement from the UK Minister for State and Intellectual Property Baroness Neville-Rolfe now seemingly paves the way for the UPC (Unified Patent Court) entering into force as soon as the second half of 2017, provided that Germany also ratifies in due course. However, there are still no official statements from either one of these countries when they actually expect to complete their ratification processes.

Voices were raised after the EU referendum on 23 June in favour of the UK ratifying the Agreement before filing the Article 50 declaration that sets in motion the process of leaving the EU, did so in view of the fact that the UPC is not an EU institution, but an international patent court and that the European Court of Justice (CJEU) will not deal with issues of substantive patent law. What will happen after the UK files the Article 50 is very uncertain, and concerns have also been raised that this might negatively influence how patent holders look at the UPC once it is operational. However, the intention of the UK administration appears to be, for as long as they are members of the EU, to play a full and active role in the UPC, according to Baroness Neville-Rolfe. She followed up by stating that “we will seek the best deal possible as we negotiate a new agreement with the European Union”. This statement might also be positive news with regards to European trademark and design rights.

In a statement made on 28 November, the UPC Preparatory Committee welcomes the news from the UK Minister. Since the UK vote to leave, the Preparatory Committee of the UPC has continued their efforts in recruiting judges and preparing the IT system for the entry into force of the UPC. Many countries have also moved forward with their preparations, for instance on 8 November it was announced on the UPC website that the Italian authorities had formally selected the location for the local division to be set up in Milan.

In an interview published on the website juve.de on 22 November, the chair of the UPC Preparatory Committee Alexander Ramsay also stated that the Brexit referendum more or less only posed a “speed bump” on the way to realizing the unitary patent protection and the UPC.

In addition, in a statement published on 29 November the EPO President Benoît Battistelli said:

“This important news from the UK government means that the long-awaited court is soon to be realized. Users, especially SMEs, have been waiting for the creation of a simpler patent system for Europe, and their relief is palpable. The way is now clear for the last few ratifications to take place in the coming months, and the new court to start work soon after. The UPC will provide a single forum for all participating states delivering faster enforcement actions and harmonized judicial decisions.”

The Preparatory Committee further fully acknowledges the uncertainty regarding the possible start of the system in their statement made on 28 November, and that the industry needs time to prepare for the new patent system. They will therefore publish a revised roadmap as soon as possible.

Provided that both UK and Germany ratify during the spring of 2017, businesses should be prepared for the entry into force during the autumn of next year.

Sofia Willquist, Partner – European Patent Attorney

Danish law can be applicable to infringing sales from UK websites

The Danish Maritime and Commercial Court has recently rendered a decision in a case regarding sale of infringing furniture designs from two British websites. The decision is interesting for practitioners as it explains which exact elements are added substantial weight, when defining which law is applicable to an online infringement.

When deciding whether sale of furniture designs identical to famous products from Arne Jacobsen and Poul Henningsen among others constitutes a copyright infringement, it can be of high significance whether Danish or UK law is applicable. As explained in this bloggers article in the latest edition of AWA Review, there is a difference of protection even though this will be reduced due to the approaching repeal of Section 52 of the UK Copyright Designs and Patents Act.

The two websites in question were www.interioraddict.co.uk and www.nlini.com. The first website was written in Danish and with a Danish speaking customer service. For those reasons alone, the court found Danish law applicable to the infringements. The latter website was originally also in Danish, but had since changed to an English version. However, as the court noted that (1) it is possible to order products to be delivered in Denmark, (2) reviews of the website and its products were available in Danish, and (3) the website had been advertised in Denmark, Danish law was also applicable to this site.

This reasoning confirms the principles of the Donner case (C-5/11) in which the European Court of Justice listed relevant factors when deciding the applicable law as choice of advertising material, choice of language and opportunities for foreign distribution. However, the Danish decision is interesting and helpful to right holders, as it confirms that these principles also apply to a website with a .co.uk domain name which is normally not seen as targeting foreign consumers. Consequently, this decision indicates that infringers cannot circumvent the requirements and protection given by Danish law simply by selling from a foreign domain address. A much welcome development for the many right holders of famous Danish design products.

When assessing the damage claim, the court gave detrimental effect to the fact that the defendants had not supplied any information as to the revenue or amount of products sold. Furthermore, and more interestingly, the court did find some degree of substitution for the less expensive products (despite these still being cheaper and marketed as replicas). Accordingly, the court found market disturbance and roughly estimated the total damage claim to be DKK 200,000 for each website.

Anders Michael Poulsen, Attorney at Law

An End to Faking It

Contrary to what many think, IP-law is not subject to an EU-wide harmonisation. This is probably due to the existence of the Community Trademark but bear in mind that all the national systems are still well and alive and existing alongside the EU-trademark.

Recently, the UK Copyright legislation has been amended. Very frustrating for rights’ owners, UK Copyright expired 25 years after the creator’s death. Most other countries have 70 years.

This meant that especially objects of industrial design and designer furniture were reproduced quite legally in Britain. Mies van der Rohe’s Barcelona chair, Arne Jacobsen’s Egg chair and similar classics were among the popular items. The big frustration for rights’ owners was that these products were widely exported across the EU borders.

Some British knock-off manufacturers even had web pages targeting, say, German, Italian or Danish costumers. Some manufacturers even had concrete and public plans of setting up showrooms where consumers from countries with higher copyright protection could see the products and order them.

This was all legal under UK law – but not legal in the rest of the EU member states.

A common misconception by many consumers in the EU is that goods purchased in one member state in general may circulate freely. This is not the case when the goods are illegal in the member state whereto they are ordered. The Internal Market of the EU will always yield to IP-rights. Offering goods for sale indirectly through show rooms does not change this. However, for the rights’ holders enforcement may be extremely costly and cumbersome as each infringement had to be countered nationally.

All this is now well in the past. A recent amendment to the UK Copyrights, Designs and Patents Act 1988 has brought the protection of copyrighted materials in the UK in line with the continental European countries, i.e. 70 years after the creator’s death.

Surely a good thing in the name of harmonisation of legislation, the protection of rights and an incentive to invest long term and create jobs in the creative business sector in the UK?

So is everybody now happy? No. The makers of these classic furniture knock-offs have complained that their business and the jobs will be heavily affected. Lamentable, but hardly a valid argument for sustaining a business that exists mainly with the focus of selling copies to countries where protection is high. And at the end of the day we are still talking about (now) illegal counterfeits.

Others that may be unhappy could be companies such as McDonalds. In Europe McDonalds famously rebranded their restaurants with designer furniture. Then quickly after the stock of same furniture was discovered to be heavily supplemented with designer knock-offs. Although this furniture to some extent – at least in the UK – may have been legal, McDonalds were publicly lambasted by Danish furniture company Fritz Hansen. The company suspended all supplies to McDonalds and accused McDonalds for endorsing piracy and setting intellectual property rights aside. I am sure that many will agree that this was not PR which McDonalds was happy with.

For lovers of copy furniture all is not lost. The works of Arne Jacobsen will exit copyright in 2041 and Mies van der Rohe in 2039…

Thorbjørn Swanstrøm, Trademark and Design Attorney, Attorney at Law, Partner

A new dawn for protection of designs?

It is no secret that the differences in national European law concerning the protection of designs, has been driving many Danish rights holders crazy for years on end. It has been difficult to come to terms with the fact that while many of our prominent Danish designs – designs of which we as a nation are proud – are protected under national Danish copyright law for the lifetime of the designer plus 70 years, it has been perfectly legal to purchase cheap (and sometimes not so cheap) copies in England and have them shipped to Denmark.

Many holders of such rights have fought in vain to stem the steady flow of such copies from England first to private consumers, and eventually and inevitably to the numerous flea markets, garage sales and even auction houses. While importing the copies for purely private use is perfectly legal in Denmark, the selling of such copies on the Danish market is not. But trying to stop private individuals from reselling their used copies is, to say the very least, a losing fight.

Help might just be at hand though, as the UK has recently announced a new measure to increase the protection of such rights. If passed, the protection of copyright in relation to manufactured furniture will be increased from the current span of a short 25 years to the lifetime of the creator plus 70 years, bringing it into line with most other European Union member states.

From a legal perspective, the differences in national laws on copyright protection have given rise to many interesting questions. The laws on copyright have not been harmonized in the EU. Coupled with the laws concerning the free movement of goods in the Union and the advances of internet shopping, it has been possible to find loopholes which allow citizens in some countries to purchase copies from countries with a more lenient law, while in other member states it is punishable even to import such copies. Is it fair that individuals in Denmark can own copies, when in some countries – such a France – it is punishable by law to even cross the border with a fake watch? Importing fake designer furniture into France can cost you a fine of up to EUR 300.000 or even a three year stay in prison.

With such extremes in copyright protection with France and Italy at one end of the scale and the UK at the other, it seems improbable that the laws on copyright will be harmonized anytime soon. For now, all we can hope for is that the UK enacts the suggested provision and sets up a solid system for enforcing it too.

Mette Bender, Attorney at Law