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Westminster Legal Policy Forum – The future for the UK’s patent framework – Review

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logo2wfpIPcopy attended the Westminster Legal Policy Review seminar on 2 February 2017. This post provides a summary of some of the issues raised and discussed at the seminar.

Patent law – current context and emerging priorities post-Brexit

The first session was from Dr Luke McDonagh, a lecturer at the School of Law at the University of London who provided some thoughts on the IPEC and also the Patents Court (the Patents Court is part of the Chancery Division of the High Court of Justice). In a series of 17 interviews that Dr McDonagh had conducted with judges and practitioners the consensus appeared to be that the IPEC reforms have worked well, with the speed that active case management provides and the cost certainty that the costs cap provides being highlighted as positive aspects of the Court.

There had been an increase in case activity following the reforms from the Patents County Court into the IPEC but this had not apparently been at the expense of cases in the High Court. Instead the IPEC seemed to be seeing a new type of litigant (a point that was echoed later in the day by His Honour Judge Hacon).

At the Patents Court in the High Court most cases relate to EP patents (especially in the life sciences field) whereas there aren’t too many EP cases in the IPEC (and very few life sciences cases). There are very few revocation actions at first instance in the IPEC.

Commenting on the current litigation landscape in Europe, Dr McDonagh suggested that there is the potential for divergent rulings on infringement and validity but the incoming Unified Patent Court may address some of these issues as it provides a sole venue for unitary patents and will share jurisdiction for EP patents (during the transitional period).

Dr McDonagh questioned if the UK Prime Minister’s position on the CJEU was irreconcilable (in an extreme interpretation) with the UK’s position on UPC ratification. At this point Kevin Mooney (Simmons and Simmons) repeated the government’s line of argument that the UK parts of the UPC are not national courts (and so the CJEU influence within the UPC is not impacting UK national courts dealing with UK patent law).

Patent Box

Dr David Harris (HMRC) provided an update on the UK’s Patent Box. Changes from 1 July 2016 include an adjustment factor that reduces the effect of the relief if a company has just bought in patents rather than developing the technology in house.

In the Q&A session an audience member asked if HMRC regard the take up of the Patent Box as a success. Dr Harris stated that HMRC do not regard the take up as low, a point of view that was questioned in the coffee break by at least one person IPcopy spoke to.

Panel discussion

Lots of ground was covered in the panel discussion between Ian Wood (Charles Russell Speechlys), Francis Tierney (AstraZeneca), Elizabeth Bain (Science and Technology Facilities Council) and Dr Tony Raven (University of Cambridge). Some things that IPcopy picked out of this section:

  • The Science and Technology Facilities Council don’t see Patent Box as something they can take much advantage of.
  • Dr Raven noted that Patent Box doesn’t feature much in the university landscape and he would like to see a grace period in UK patent law. He suggested that in the UK there is an issue with the scaleability of innovative companies. In his view, lots of companies have exited in recent years but not to UK buyers. He also suggested that spin outs are regarded as a failure to licence IP. If there is no interest in licensing then they consider spinning out a company until industry gets interested.

The Intellectual Property Enterprise Court and the domestic legal framework

His Honour Judge Hacon noted that the IPEC continues to be busy. Time to trial periods are falling. Two pilot schemes (The Shorter & Flexible Trial Procedures Pilot Schemes) were originally only to run for 2 years but have now been extended by a year to September 2018. The Shorter Trial Procedure scheme is much like the IPEC in its effect. The Flexible Trial Procedure scheme is a bespoke arrangement.

These schemes help foster access to the courts. His Honour Judge Hacon asked whether the UK has hit a sweet spot as far as access to courts is concerned and noted that the UPC, with its hearings lasting only a day, would likely have an impact. He suggested that once we see you can do a lot in a single day in court then this may input to the UK courts in due course.

Two recent cases were flagged up as of interest: PPL v Hagan (which covers the issues of costs in the IPEC and indicates that the advantages of making a Part 36 offer have increased) and Action Storage (which relates to unregistered designs). This latter case is well worth a read if you have an interest in unregistered designs.

Concluding his section His Honour Judge Hacon thought that the shorter trial scheme will be made permanent and noted that the IPEC model is of great interest outside the EU and he’s spoken about the court in Australia, Japan and China.

Mark Richardson 23 February 2017

 

 


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