The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Thursday, 31 March 2016

Fordham 2016: Outstanding patent issues - the UPC, dual-track systems and Alice v CLS Bank

With everyone feeling suitably optimistic about the future of copyright and trade mark law, are patent lawyers feeling equally jolly?  Well....not quite.  There seems to be more problems to resolve following reform in the US and Europe, as the AmeriKat reports:  

Margot Frohlinger
Margot Fröhlinger (Principal Director, Patent Law and Multilateral Affairs, EPO) was the first to take the podium to discuss outstanding issues about the unitary patent.  Next year, Margot explained, we will hopefully have a unitary patent and a Unified Patent Court (UPC) in Europe.  This means a one-stop shop for post-grant procedure for protection and enforcement.  This will help remove the complexity of a fragmented market, but there are other issues that need to be addressed - some which are quite tedious and which need to be dealt with by agreement by Participating Member States or dealt with by the UPC.  The first issue is in relation to Unitary Supplementary Protection Certificates (i.e. SPCs based on unitary patents).  The European Commission has recently announced that they are going to create a unitary SPC.  Margot wishes them good luck.  The creation of a unitary SPC may be as complicated as the UPC (which took 40 years).  There are number of legal and political issues - i.e. creating a European unitary title that only has effect in some EU Member States?  Who is going to grant unitary SPCs and fix the fees?  Who is going to get the fees for unitary SPCs?  At the moment SPC fees are retained by national offices.  It will be difficult to create, but pending the creation of a unitary SPC, national SPCs can be obtained on the basis of the unitary patent.  The EU Commission will be clearly stating this.  The second issue is what happens if request for unitary effect is rejected by the EPO or is overruled by the UPC at the time when the validation deadlines has already expired.  Member States mainly agree that they should reopen the deadline for national validations.  This has been implemented in Sweden, Finland, Netherlands and Germany.  The UK considers that the patent holder should just pay the national renewal fees (and would be protected).  A harmonized approach on this point may be difficult.  The third difficulty is where prior national rights lead to a limitation or revocation of the patent for the territory of one of the participating Member States after the registration of unitary effect.  There are different solutions - either revocation or limitation of the unitary effect only for the territory of the Member State concerned, or revocation or limitation of the entire unitary effect and reopening of the deadline for national validations or loss of the entire Patent.  The UPC may have to deal with this issue as well.  The final issue is the double protection for the same invention by Unitary Patents and national patents.  There is no prohibition under the European Patent Convention.  This is left to Member States.  Member States have different approaches - some allow double protection, others prohibit it.  German law which traditionally prohibits double protection has now provided for double protection in their new draft legislation.  This adds another layer of complexity and may impact the opt-out strategies of patentees.  In conclusion, Margot says we should not compare the UPC and unitary patent with what an ideal world may look like - it needs to be compared with what the fragmented system is like now.  The UPC and unitary patent is an improvement.

John Alty
Always smiling, John has been
working hard on patent harmonization
John Alty (Chief Executive and Comptroller general, UK IPO) started his presentation with a baseball analogy.  Popular in the US and Japan - there are essential elements in baseball that are common (baseball bats, mounds, bases), but there are slightly different rules . This is like the patent landscape where you have to understand slightly different rules in numerous jurisdictions which can be challenging for SMEs.  There should only be one system across the world, that may be agreed, but no one is in agreement as to what system this should be.  Group B+ is working on this in relation to four key topics:  grace periods, publication of applications, treatment of conflicting applications and prior user rights.  Starting by negotiating legal texts will not get us very far.  We need to step back and look at the objectives of the global patent system when it comes to harmonization.  In particular, solutions need to be coherent and balanced, provide legal certainty, promote high quality patents and support economic growth. As a result of this framework and the B+ Group's work on the four key topics, patent harmonization is now closer than ever.

Judge O'Malley  - a fan of the skill of IP litigators
Judge Kathleen O'Malley (US Court of Appeals for the Federal Circuit) stated that the CAFC came into being because there were so many regional circuits  - some patent friendly, some not - leading to a diversity of decisions.  The CAFC was therefore established to ensure that if a patent was found invalid/valid, it was held to be invalid/valid across the US.  In 2015, the CAFC entered appeals from district court cases in over 600 cases, with 6000 patent cases being brought before the district courts.  Now patent cases account for 60% of the CAFC's case load, but Judge O'Malley also reminded the audience that the CAFC has wider jurisdiction than just patent issues.  A significant change she has noted is the increase in the number of cases brought by patent owners who do not practice invention.  This change created a huge impact in the patent litigation game.  In particular, Judge O'Malley commented that big laws firms (with big fees), rather than boutique law firms, are increasingly representing parties in patent cases because the stakes have become so much greater.  This has led to a change in how patent cases are being tried.  This is because larger firms have litigation teams who are used to trying cases in a variety of subject matters in numerous different district courts.  They are also not unaccustomed to taking cases to the Supreme Court (and they know how to get leave to do so).  She is now seeing patent lawyers, who are technically skilled, adopting savvy litigation styles and advocacy in order to effectively explain the technology to the court. To obvious applause, Judge O'Malley noted that IP litigators are some of the best litigators that she has seen in court.

Judge O'Malley also commented that the Supreme Court is increasingly taking an active interest in the CAFC given its important role which has been borne out by the numbers.  For example, in the past 6 years the CAFC has had 47 cases go to the Supreme Court, 32 of which are patent cases.  The Supreme Court is weighing in on really complex issues in relation to section 101  - patentable subject matter.  However, in response from a question from Hugh, Judge O'Malley noted that she is not a "huge fan of the Supreme Court's patent jurisprudence", especially when she sees a unanimous decision as that is indicative of a court that is not really delving into the patent issues, as necessary.  Judge O'Malley stated that she likes the ways in which the Supreme Court has dealt with some issues, for example in relation to civil procedure and jurisdiction. But, she stated, when it came to patent law "they have created more problems than what they have resolved".

David Kappos - not a fan of the Supreme Court's
decisions on section 101
David Kappos (Cravath, Swain & Moore) said that he is concerned about the IP system in general, because it is really quite clear that there has been major incursions made in the US and elsewhere that have diminished the strength of the applicability and vitality of the IP system (not just just patent law).  The Second Circuit seem to be delivering copyright decisions which are frankly bizarre (see the recent Instagram decision).  What is needed is a new direction for the country.  The election cycle will set in motion a new season of change.  David set out ten modest improvements that the next administration can implement quickly which are all business oriented.  The list focused on the leadership that the new administration needs to bring to the table to emphasize a policy at which innovation is at its heart, with the US resuming its role as the world's leader of innovation (but not ignoring the need for great innovation coming elsewhere).  David also said that the federal government needs to take a lead in championing and rewarding US innovation, which requires recognizing that innovation is difficult and risk and incentives are needed.  The patent system is our system for incentivization (anti-trust does not do it, no matter what they say) and the focus must be orientated towards IP, not other bodies of law.  

In terms of Supreme Court decisions, especially the CLS v Alice Bank decision, David said that it is impossible to make sense of the Supreme Court jurisprudence on section 101.  In trying to make sense of section 101, the PTO is trapped by a set of Supreme Court decisions which are incomprehensible.  That is has been the architect of PTO's real struggle to get to grips with patentable subject matter.   Judge O'Malley agreed that it is difficult to understand what is and is not left in terms of patentable subject matter, but this challenge has led to many more creative arguments from lawyers who try to distinguish their inventions from the realm of a CLS  v Alice Bank situation.  Sir Robin chimed in stating that in the real world the patent office does issue bad patents - it is inevitable  This is because its a one-sided examination process conducted by an examiner who may not have all of the prior art before him or her and who is generally under-resourced.  You can see this in Europe where an opposition takes 10-15 years to decide whether a patent is valid.  This is a broken system.  The America Invents Act, to Sir Robin, looks great in comparison as it provides a quicker, more efficient regime to address validity.  It also provides certainty, which is hugely important.
David agreed about the inevitably of some patents being wrongly granted.  In particular, this is an issue when an examiner is being asked whether an invention is abstract - that very question is entirely subjective and, as Sir Robin noted, in such a situation of course wrongly granted patents will be inevitable.

Sir Robin envisaging the end of EPO oppositions in favor
of Central Division revocations
"I would not want to be a patent owner, given there are so many ways to be attacked", continued Judge O'Malley.  In particular she noted the problem of patentees facing "serial inter partes reviews (IPRs)."  For example, if a lawsuit is subsequently dismissed or via a time-barred opponent latching on to an IPR brought by a venture capitalist who does not need to show standing. There is no certainty as to when a patent will be held valid or invalid, which devalues the property right.  Even if you get a positive result in one forum, she noted, its impossible to know whether your property right is solid enough to be able to invest into it.  The US patent system currently does not really address the problems that are caused with these different tracks in place.

Picking up on this point, the AmeriKat posed a question to the panel:  Given the problems of this dual-track system - in the US, between the district courts and the USPTO IPR and, in Europe, national courts and EPO oppositions - what is the solution?  In Europe, a national court may have held a patent to be valid and infringed only for the patent, many years later to be held invalid by virtue of an EPO opposition decision.  This issue will come up in the UPC and we should be looking for a solution now.  What is the answer?   Judge O'Malley stated that what is needed is knowing when there is a final decision.  This needs to be clear, but that under US law this may be an issue which needs to go to the Supreme Court to resolve.  David Kappos stated that clever litigants will find ways to game a dual-track system.  When the AIA was put together, David stated that a "safety valve was put in place whereby the USPTO could decline to institute an IPR.  However this safety valve needs to be used more", especially when a litigant has had their day in court.  Another solution, would be by way of legislative fixes to address the unintended consequences of the dual-track system.  Sir Robin stated that the solution, with respect of the UPC, would be to forget EPO oppositions and to commence revocation actions before the Central Division of the UPC.  Indeed, he foresees litigants using this venue more than EPO oppositions in the future.

Fordham 2016: Copyright and trade mark - what does the future hold?

It is that time of year again when IP's great and good pool together at Fordham Law School near Columbus Circle in Manhattan to debate, learn and have fun.  After some introductory remarks from the ever entertaining Professor Hugh Hansen, the first session was quickly under way on the topic of the future of copyright and trade mark.

Maria Martin-Prat
First up was Maria Martin-Prat (Head of Unit - Copyright, DG Connect at the European Commission).  With new means of receiving content via subscription services streamed directly to different types of devices, Maria emphasized the continued role of copyright in this new digital landscape in raising questions as to how copyright law can deal with these new changes.  How does the copyright system ensure that the value of copyright works are recognized?  In Europe, we have been doing more than our fair share of copyright consultations with the debate becoming increasingly nuanced.  In particular, the Commission is looking at the copyright regime in the new landscape.  Due to the level of harmonization Maria stated that we have to make greater changes.  Such legislation will take the form of Directives which have to be implemented into national laws.  Directives are favored because the European legislation has to approximate their laws with international treaties.  Regulations are easier to use if the subject matter is stand alone - not really the case for copyright.  The examination of multi-territorial licences and cross-border issues relating to the facilitation of licences will be an important. issue.  In the EU single market, Maria asked, is it always justified that right holders always exercise their rights in a territorial manner and in doing so partition the single market along territorial borders?  If no, then how far can legislation go to legislate for this?  Maria also stated that exceptions to digital copyright will remain important but will not, in Maria's opinion, require further European wide harmonization (so no reopening of the E-Commerce Directive, for example?)  Finally, the future copyright debate in Europe will be increasingly about the exclusive nature of rights.  Even if there are many interests and stakeholders, these discussions are in the end about the exclusive nature of copyright. 

Michele Woods
Michele Woods
Michele Woods (Director, Copyright Law Division, WIPO) followed outlining a huge dossier of copyright issues WIPO is tackling.  Michele commented that there has been a bit of a legislative stalemate.  Member States (who make up the committees on WIPO) want to add more issues but don't want to necessarily have more meetings.  WIPO is looking forward to seeing how these issues are resolved.  On the issue of copyright and broadcasting, the audience was told that it has been on the WIPO legislative agenda the longest (since 1966), formally under discussion for over 15 years.  There is a potential treaty on broadcasting - currently in a narrow, consolidated text based on the function of traditional broadcasters and cable broadcasters.  There are quite divergent views in the committee and because its been ongoing for such a long time, there is frustration this hasn't moved as far as it should have.  Limitations and exceptions had four sub topics one of which resolved.   Analysis of copyright in the digital environment is an extremely broad topic which has also been added to WIPO's agenda.  Michele stated that WIPO is also expecting the Marrakesh Treaty to come into force.  World Intellectual Property Day will again be centered on copyright with issues ranging across the spectrum.   Michele explained that they have seen an increasing level of involvement from NGOs on WIPO committees (including companies), who actively drive discussions with Member States forward.  Because of the momentum that NGOs bring to the debate, they are very much welcomed by WIPO.  Hugh asked Michel to what extent social media has on WIPO?  Michele responded that real time social medial commentary, especially at conferences, is invaluable.  

Maria Pallante
Maria Pallante
Maria Pallante (Register of Copyrights, US Copyright Office) stated that the US has been reviewing its copyright laws since 2013 - which is a very deliberate, transparent and inclusive consultation working with many stakeholders.  In 2013, Maria suggested that Congress should stop proposing piecemeal solutions and conduct a full scale update of copyright law.  Since then the House of Representatives have had more than 20 hearings with several testimonies.  In April 2015, the Copyright Office identified 8 issues that were ripe for decision making.  It was for Congress to decide whether it should progress these issues.  Two interesting proposals to watch out for are a new copyright small claims procedure in the Office where plaintiffs and defendants opt in to resolve disputes.  The second proposal is copyright in the music market place (to be discussed on Friday) which is another exhaustive study where a series of rationalizations on music licensing is being examined.  The Copyright Office also issued recommendations including on "making available" right which is part of US law but recommended that Congress should monitor the case law and the judiciary should recognize their role in developing the case law in response to technological progress.  The Office also recommended that fair use  should be left alone so that the body of case law can develop.  There are currently four pending studies - two on Digital Millennium Copyright Act (s.1201 and s512 on notice and take down), one on copyright law and every day consumer products and a kick off symposium on moral rights (which hasn't really been looked at until now  - the symposium will be held on April 8).  Maria stated that the Copyright Office's view is that a 21st Century copyright law requires a 21st Century Copyright Office who facilitates not dictates the law.  In recent months, drawing on robust public feedback, Maria informed the audience that the Copyright Office has just published a five year strategic plan entitled "Provision information technology modernization plan and cost analysis" (click here to find out more).  With such a huge caseload of initiatives, Hugh asked Maria if she had enough help.  Maria said she has the authority to hire 500 staff, but only has the budget for 300 so if anyone was looking to come to the Copyright Office to work for free that would be welcome!  On the appointment of Registers, Maria commented that the appointment process will be increasingly political.  There are a number of proposals about how to strengthen what the Copywriter Office does, including in relation to them having direct, not indirect accountability, across the Government.  The portfolio is ever expanding.  For this reason, Maria noted, the Register needs the authority to do the job that they have under the law, give them direct accountability and also incentive to come in and do the job.  

Dimitris Botis (Deputy Director of Legal Affairs at the newly named EUIPO) was next to discus the future of the EU trade mark system in particular the recent trade marks reform package consisting of Directive 2015/2436 and Regulation 2015/2424.   The biggest change in substantive trade mark law is the deletion of the graphic representation requirement which means that it will be easier to register non-traditional marks.  The exact impact of this change on filing practice and types of marks that can be accepted will not be seen until the implementing rules are issued on 1 October 2017.  The second biggest change is to the functionality prohibition to "other characteristics".  There is now also an express requirement for clarity and precision in specifying the goods and services that are specified for the mark.  It will be based on the "natural and usual meaning" of terms (i.e .interpreted literally). The new fee structure and levels with a new "one-fee-per-class" system is also a big change.  There has been a moderate reduction of the application fee and substantial reduction of renewal fees. Dimitris also pointed out that there is also new EU Certification mark which can be registered to ensure the certification of the quality, material, mode of manufacture etc, but cannot be used in relation to geographical origin.  Institutionally, there will be changes in terminology - hello EUIPO!  But its not just changes in terminology, there is a change in management structure.  The changes will be taking on a more political taste (the EU Commission has two seats now).  The new Regulation also requires more cooperation between the Member States.  Trevor Cook from Wilmer Hale said the change are really only technical in nature and do not generate a huge impact on substantive trade mark law.  Dimitris agreed but the technical changes will ensure more efficient operation.  

Shira Perlmutter
Shira Perlmutter (Chief Policy Officer and Director of International Affairs, USPTO).  Legislative stalemates are not uncommon but there other means of achieving reform, including stakeholder consultations and developing industry best practices.  Shira also stated there is reason to be hopeful because the online markets have really developed over the past ten years and the discussion on copyright have progressed to the point were we are now talking about nuances of copyright systems, not the justification of copyright (echoing Maria's earlier comments).  

Mark Seeley
Mark Seeley

Mark Seeley (Senior VP and General Counsel at Elsevier).  In response to an earlier question about the presence of lobbyist in copyright, Mark stated that if lobbying is defined as talking to people, he would be one of them.  However, he does worry about the nature and quality of evidence that legislators examine when looking to formulate legislation, including the nature of advisers and consultants who advise the government. Another concern Mark shared is the nature of consultation surveys and questions which can seem one-sided or biased.  The AmeriKat wonders if the recent Enforcement Consultation could be one of them?

Antony Taubman (WTO) reminded the audience that the WTO came into being 20 years ago and from its inception there has been a perceived rivalry between the WTO and WIPO.  WTO could proudly extend this rivalry by the fact that they have just reached their 5th anniversary of no work at all on the GI register which is mandated by TRIPS.  WTO's work jams, like WIPO's, seem pretty well entrenched.  Antony echoed the sentiment that it is a period of real flux and a time to really think about what they should be doing in the filed of IP - there is a huge range of IP issues to tackle and a huge amount of interest to tackle these issues.  But what should they be?

Is the panel optimistic about the future of IP reform?  Antony said we can do tremendous things if we have greater alignment in international process and ensuring that the facts on the ground make their way into the international fora.  Mark said that we need more space to discuss what is the problem we are trying to fix and is there even a problem?  Is there a market solution, not a legislative solution that will have more impact?  We just need a bit more time, he said, to think through these questions and possibilities.  Shira is optimistic because there is more buy-in than there was 10 years ago on the concepts of IP.  In the past 10 years we have seen much greater expertise and understanding of the issues globally.  In a lot of bi and mutli-lateral conversations there is a considerable level of shared interest and concerns and a ripening of mutual understanding.  Dimitris responded that the EUIPO is optimistic, but there is more work to be done to implement all of the reform provisions.  Maria Pallante is also very optimistic, especially because copyright law has become ubiquitous in 21st Century life.  She noted that solutions will be part statutory, regulatory and voluntary agreement-based.  Michele is also optimistic, despite often feeling on the defensive with respect of the copyright system which is a good thing as it gives us a chance to explain the relevance of the system.  Member States clearly want to use all aspects of copyright and they see the value, but reform is a slow process.  However, as other panellists noted, there is an increasing level of knowledge and competence to help move the ball forward.  Michele also stated its a very fun time to be in IP, especially copyright (i.e. Internet of Things).  Maria Martin-Prat concluded by stating that her definition of "fun" is slightly different, but she is also optimistic, albeit a bit more cautious.  Maria really hopes for more rational debate with less room for exaggeration than what has been seen in copyright debate in the past 10 years.  

Two Book Reviews: European Law Design and The Changing European Patent

From Kat David, we have a look at a design book:

The first edition of David Stone's European Design Law: A Practitioner's Guide quickly became an indispensable reference work for this Kat. He was surprised to realise that it was only published a little over three years ago and that a new edition has been published by OUP (details here; ISBN: 9780198719298).

Writing an authoritative overview of a field of law, particularly for a harmonised EU right which generates decisions in many languages from Community Design courts across Europe, is a tall enough order. Doing so in a manner that is entertaining to read, opinionated and passionate is rare indeed. Since receiving the second edition, this Kat has found himself referring to the book to look up a specific point, and then quite some time later, realising he has read on far beyond the section of interest as he followed the author's development of a topic.

What emerges particularly is a consistent view of the Design Regulation and Directive. Where a court's decision might consider the concept of the informed user or of design freedom in the narrow context of a particular dispute, David Stone relates the same concepts back to the underlying scheme of protection and considers whether a given decision is consistent with the larger jurisprudence both on infringement and validity. When he finds that consistency is lacking, or that the approaches taken by the courts are unsatisfactory, he says so unequivocally.

Where a work like this becomes crucial then, is in the subsequent development of the law. If practitioners, advocates and judges are informed that consistency is lacking on a given topic, and if the reference work points out how greater harmonisation and consistency might be achieved, then the impetus for more predictable and sensible decisions increases. As a practical reference work, to discover which areas of law are settled and incontrovertible, which are uncertain, and which are wrongly decided, this book is unequalled. As a serious and yet entertaining read on IP law, it is up there with the best.

Relative to the first edition, the case law is brought up to date as of 1 September 2015, which has increased what Jeremy called the rupture factor from around 500 pages to over 700. Still reasonably svelte, then, but gaining in weight and authority as the years pass.

From Kat Mark, we have a review of a text in German:

Sebastian Fuchs' dissertation "Das Europäische Patent im Wandel - Ein Rechtsvergleich des EP-Systems und des EU-Patentsystems" ("The Changing European Patent - A comparison of the EP system and the EU patent package", 292 pages, Duncker & Humblot, Berlin 2016), written under the supervision of Prof. Thomas Klicka at the University of Munster, looks at the shortcomings of the European "bundle" patent, namely the lack of efficient cross-border enforcement, and compares them with the solutions of the EU Patent Package. Since the manuscript was submitted in late 2014, the author could not take into account the very latest developments of the EU patent System, such as the CJEU's rejection of Spain's challenge to the Unitary Patent Package, and the (final - subject to amendments re court fees) 18th draft of the Rules of Procedure of the Unified Patent Court adopted by the Preparatory Committee on 19 October 2015.

Wednesday, 30 March 2016

CJEU on taser, ahm, tacit prorogation of jurisdiction

This judgment of 17 March 2016 concerning a referral from Romania concerns primarily civil procedural law, but since it has arisen in the context of a trade mark assignment agreement, is worth reporting here.

The facts of the case are rather simple. In 2008, Taser International concluded an agreement with the Romanian company Gate 4 which obliged Gate 4 to assign to Taser International the Taser trade marks which Gate 4 had registered, or for which it had applied for registration, in Romania. The agreement contained a clause conferring exclusive jurisdiction on a court in the United States. Gate 4 refused to fulfil its obligations and Taser International sued it before the Tribunalul Bucureşti (District Court, Bucharest). Gate 4, despite the jurisdiction clause, entered an appearance before the Romanian court without challenging its jurisdiction. The Romanian court found for Taser and ordered Gate 4 to execute the formalities necessary to transfer the trade marks.

Gate 4 appealed and lost the appeal, too. Following the Curtea de Apel Bucureşti’s (Court of Appeal, Bucharest) decision to uphold the judgment of the first instance court, Gate 4 brought an appeal before the Înalta Curte de Casație și Justiție (High Court of Cassation and Justice). Although the jurisdiction of the Romanian courts to decide this case had never been challenged by the parties, the High Court considered it necessary to refer questions to the CJEU. Namely, the High Court wondered whether Article 24 of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters ("Brussels I Regulation") applied in case where one party was domiciled in a non-EU Member State (Brussels I has been replaced by "Brussels I Regulation (Recast)" in January 2015. Article 24 of Brussels I corresponds to Article 26(1) Brussels I Regulation (Recast)). Article 24 Brussels I Regulation reads:
Apart from jurisdiction derived from other provisions of this Regulation, a court of a Member State before which a defendant enters an appearance shall have jurisdiction. This rule shall not apply where appearance was entered to contest the jurisdiction, or where another court has exclusive jurisdiction by virtue of Article 22.

The Court of Justice had no difficulties answering the question: The only exceptions to the rule that an appearance confers jurisdiction are put down in the second sentence of Article 24 Brussels I Regulation. Since the prorogation of jurisdiction by an agreement on jurisdiction for the purposes of Article 23 of Brussels I Regulation is not included amongst the exceptions, neither the general scheme nor the objectives of that regulation provide grounds for the view that the parties are prevented from submitting their dispute to a court other than that stipulated in the agreement. This reasoning applies both to agreements conferring jurisdiction on the courts of a Member State and to those in favour of the courts of a third country, since the tacit prorogation of jurisdiction by virtue of the first sentence of Article 24 of Brussels I Regulation is based on a deliberate choice made by the parties to the dispute regarding jurisdiction.

The CJEU had no need to address the second - more interesting - question of the Romanian court, namely whether a dispute over  a contractual obligation to assign trade mark registrations/applications was a "proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered", for which the courts of the Member State in which the deposit or registration has been applied for have exclusive jurisdiction (Art. 22(4) Brussels I / Art. 24(4) Brussels I (Recast)). The question was moot since the Court of Justice found that the Romanian court had jurisdiction based on the defendant's appearance. The consensus view is that obligations to transfer the ownership of a trade mark do not fall within the scope of the exclusive jurisdiction of Article 22(4) Brussels I (see also Case 288/82 - Duijnstee v Goderbauer).

I guess the frustrating thing in this case is that it took Taser International over five years to enforce the rather straightforward obligation of Gate 4. The positive aspect is that it seems, finally, to be sucessful.

Tuesday, 29 March 2016

A Milestone: IPKat's 10,000th Post!

The IPKat has surpassed 10,000 posts on the wonders and frustrations of intellectual property law and practice (this post makes it 10,001).  That makes our blogging rate, since the IPKat's birth in 2003, about 800 posts a year or a post every 11 hours.  Without the support, encouragement and criticism of our wonderful readers, our blogging team (past, present, GuestKats and contributors) and the generators of IP subject matter, laws and decisions, there would be no IPKat.  We could not have done it without you.  The IPKat looks forward to serving our readers and the IP community for years to come.

In celebration, the IPKat agreed to sit for the AmeriKat for his first ever watercolor portrait.  Throughout the sitting the IPKat could not stop smiling at the achievements of the entire IPKat team and its readers over the past 13 years....

A big, fuzzy Kat hug from all of us on the IPKat team!  But not Merpel.  Merpel does not do hugs...

The IPKat on the occasion of his 10,000th post © 2016 Annsley Merelle Ward

Tuesday This and That

FRAND IN JAPAN--A March 23rd client alert from Louise Stoupe and Chihiro Tomioka of Morrison & Foerster reports on recent revisions to guidelines published by the Japan Fair Trade Commission whereby, under the Japanese Antimonopoly Act (“AMA”), holders of a standard essential patent (“SEP”) with FRAND (“fair, reasonable and non-discriminatory”) obligations--
“risk violating fair trade practices if they refuse to license their patents to a willing licensee or bring an injunction against an alleged infringer. This will make it more difficult for holders of an SEP with FRAND obligations to enforce their patent rights and could also lead to disputes over what constitutes a willing licensee.”
The client alert points out that the issue of whether a violation of a FRAND obligation was not directly dealt with in the original 2007 guidelines for the AMA. This has resulted in a number of legal disputes, most notably a cease and desist order brought in 2009 by the Japan Fair Trade Commission against Qualcomm for violation of its FRAND requirements. The client alert notes that the modified guidelines were published despite the fact that the appeal filed by Qualcomm against this order is still on appeal.

PATENTSVIEW PROJECT--For those Kat readers who are interested in patent data, fellow Kat Nicola has passed on a communication received from Alan Marco, Chief Economist of the US Patent and Trademark Office, who has issued the following announcement about the PatentsView project. The PatentsView search tool is described as allowing—
“… audiences to interact with nearly 40 years of data on patenting activity in the US. Use the tool to explore technological, regional, and individual-level trends through several search filters and multiple view options."
Regarding the most recent updates, Marco writes as follows:
“First, we have updated the PatentsView database with data through December 21, 2015. As always, these data are available through the search and visualization interface, as well as the API and the bulk downloads.

More importantly, the inventor disambiguation algorithm has been significantly enhanced using the output of our workshop winning team from the University of Massachusetts Amherst ( We have also enhanced the location disambiguation to ensure we are better capturing the geography of innovation.”
Marco emphasizes that feedback on this prototype is welcome.

Book Review: Trade Marks Law by Glen Gibbons

Having been sent for review the second edition of "Trade Marks Law", by Glen Gibbons (ISBN: 978-1-905536-80-1), this being a book on trade mark law written from an Irish viewpoint, this Kat was delighted to find a willing reviewer in his colleague Shane Smyth, himself a renowned authority on the subject. Over to Shane:

Not to be outdone by Charles Dickens, Glen Gibbons in his second edition of Trade Marks Law (published by Clarus Press) has with considerable insight, drawn upon his experience at the Irish Bar to illustrate the interaction between our Masters (primarily the Courts in Luxembourg) and how the crumbs which fall from the Master’s table are devoured by both the Irish Courts in Dublin and the Irish Patents Office (IPO). Since the IPO is based in Kilkenny, strictly speaking we have two cities but even Frankie Goes To Hollywood and Jonathan Swift only had two tribes at war.

The author in the preface to his first edition correctly opines that the law of Trade Marks is not a discrete corpus of law. With this in mind, the author addresses not just the façade of the bodily appearance but also its internal machinations. He does so by way of scratching below the surface with incision. Not too many Irish Trade Mark cases hit the Irish Courts and when they do, the in-depth analysis which the author provides to the leading cases in areas such as passing off (McCambridge v Joseph Brennan Bakeries), genuine use (Compagnie Gervais Danone v Glanbia Foods Society Ltd) and comparative advertising (Aldi Stores (Ireland) Ltd. v Dunnes Stores) is for the practitioner and students alike transcending differing needs. Indeed, I also have a strong suspicion that the Controller before the Irish Patents Office also looks to this treatise for inspiration and the judiciary would be well served in doing likewise.

When I have partaken in the preparation for a Hearing before the Controller, I found the first edition to be integral to my armoury. Now that I have the second edition at my disposal, I hope that one day our paths will cross at a Hearing so that by crossing swords, I will be able to disarm the author by quoting from his own treatise. Stranger things have happened. 

Monday, 28 March 2016

Book Review: Sir Robin Jacob tells us a story about "IP and Other Things"

The AmeriKat's copy of Sir Robin's book
Not many books start with "Richard Arnold said...".   But those three words grace the opening page of Sir Robin Jacob's IP and Other Things, a 500-page collection of the famous judge's essays and lectures.  Instead of merely publishing bygone lectures, Sir Robin adds new postscripts and commentary which illuminate how his views on the law and practice of IP have changed.  But there is a decidedly human element to the collection; each essay and lecture provide a vehicle for Sir Robin to share his personal story at that point in time.  It would therefore be incorrect to characterize IP and Other Things as a mere collection of IP law over time, but more properly an IP autobiography of one of the field's most prominent and outspoken figures, whose career has spanned over 50 years (half of which has been devoted to the bench, first as High Court and then in the Court of Appeal).

Over the past two months, the AmeriKat has been delving into its chapters filled with stories and lore from the judicial world and famous IP cases.  Although helpfully organized in parts, with dedicated sections for patents, trade marks and copyright, the book's organizational structure should not disguise a key fact:  story telling is at its heart.  Sir Robin is a story teller and IP and Other Things is a story not just of his life in IP, but of his life.  Anyone who has met or heard Sir Robin speak knows that he often commences a statement with "I am old enough to remember [insert a now long-forgotten case, judge or law]...".  With that introduction he will then entertain the audience with tales of a court room success (or inexplicable loss) from decades ago which, now, has surprising applicability, or is proposed as a solution, to the present day issue that the audience had gathered to discuss.  His published  essays and lectures reflect this knack for story telling - an art form that the AmeriKat  feels can sometimes be lacking in IP advocacy nowadays (on which the AmeriKat is reminded of Judge Alex Kozinski's remarks at last year's IBIL Sir Hugh Laddie Lecture about the benefit of IP advocates telling a story - see video here).

IP and Other Things starts in earnest with the record of  his Address of Welcome in 1993 when Sir Robin was elevated to the bench.  Readers are then taken back in time to Sir Robin's early academic years where his battle with Natural Sciences at Cambridge led him to a fateful decision to pursue law.  His glowing 2009 speech about the virtues of Trinity College to the Trinity College Cambridge Lawyers Association, ends in Sir Robin confiding to readers that "[a]ctually I was not all that happy at Trinity.  College was fun but the work was too hard for me.  I tried but found the science difficult."  Such an early confession from one of the most famous patent judges, alerts readers that this collection of essays is different.

From here, the narrative takes readers on a journey through general legal practice and general IP with quips such as "Rambo lawyers are one of the menaces out there...they never know when to quit" to "[t]he shrillest voice sort of won in relation to criminalisation of design infringement, though in the end it was reduced to deliberate infringement and confined to registered designs only.  It should not do much harm (or any good)."  Many more provocative comments lace the pages on topics ranging from the inability of competition law to cope with IP rights (see Chapters 8, 19, 20 and 21), to copyright and globalization (Chapter 40) and trade marks (Chapters 36-38).  No matter your IP specialty, there is something in there for everyone (especially students who are looking for a book to  make IP practice really come alive after one too many readings of Biogen v Medeva or General Tire).

Of most interest to the AmeriKat, of course, were Sir Robin's chapters in Part IV on the patent system and, in particular the Unified Patent Court.  Chapter 31 sets out Sir Robin's 2005 Fordham paper about why everyone gets patent litigation wrong and what should be done about it.  In it he tells a story about a Maritain visiting earth who is flummoxed as to why humans have developed a patent law that leads to a diversity of protection and decisions for essentially the same invention and a litigation system which only teaches well-reasoned Martians what not to do.  At the end of the paper is a list of eight recommendations which outline what is necessary to create a successful patent litigation system from scratch, most of which Sir Robin notes are present in the UPC.  The postscript also provides Sir Robin's personal list of solutions to fix the flaws in the US patent litigation system. However those recommendations are vastly outnumbered by his comments on the UPC in Chapter 25 entitled "The Perfect Patent Court", where he identifies the split structure of local and central divisions as a likely cause for forum-shopping and unpredictability of decisions.  However, he notes that the Rules of Procedure and the judges will be the UPC's saving grace, noting that as Chairman of the Advisory Committee on selection and training of judges "we are spoilt for choice and have the best patent judges of Europe applying."

IP and Other Things concludes with a collection of personal stories and tributes to the individuals who have most influenced Sir Robin, including Antony Walton QC (his second pupil master), Thomas Blanco White QC (his head of chambers at 8 New Square), Sir Hugh Laddie and Cyril Glasser.

Unfortunately, Parts IV, V, VI, which deal with substantive IP rights and practice, loses the personal touch and insight that the early and final chapters possess.  For some it may be a bit slow-going, but for those looking for IP analysis, these chapters will not disappoint.  Each chapter raises questions of debate and principle including second medical use protection, scaling back the multiple functions of a trade mark and the spread of bad ideas in copyright.  And although the AmeriKat is certain that many readers will not agree with what Sir Robin has to say on these issues, part of the fun of this book is imagining Sir Robin leaning forward from the bench, intensely staring straight into your eyes and asking "So, what is your answer, then?".  And that's another great thing about this book - in the comfort of your home you can have a debate with Sir Robin, without feeling embarrassed when you are unable to come up with an erudite, "Robin proof" retort.   When it all gets too much, all you have to do is close the book until you are ready for your next lesson in IP and life.

IP and Other Things:  A Collection of Essays and Speeches by Robin Jacob is published by Hart Publishing (Bloomsbury).  According to Amazon, people who have purchased Sir Robin's book have also bought The Unitary EU Patent Systems and Innovators:  How a Group of Inventors, Hackers, Geniuses and Geeks Created the Digital Revolution (see link here).

Never too late: if you missed the IPKat last week

Did you miss the IPKat last week? Here’s a summary of what happened on this very blog:

Can the unauthorised reproduction and making available of clips of cricket matches lasting up to 8 seconds amount to an infringement of copyright? Yes, explains Arnold J in England And Wales Cricket Board Ltd & Anor v Tixdaq Ltd & Anor [2016] EWHC 575 (Ch). Eleonora reports.

In the world of business strategy, jargon and buzz words are a handy currency. By using jargon, the speaker signals that they belong to a particular group and are in-the-know. Are business models simply jargon, wonders Nicola?

The Intellectual Property Office of Singapore (IPOS) is about to launch a brand-new ADR named "Mediation Promotion Scheme". It will “encourages parties in IPOS proceedings to choose mediation by funding the process, so that more can experience mediation as an attractive alternative to a hearing at IPOS for resolving their disputes satisfactorily”. An interesting law-and-economic experiment, comments Neil. 

A couple of weeks ago, news of the UK Supreme Court's decision in the Trunki Community registered design battle spread like wildfire across Europe, with many claiming it was the end of innovative design protection [see IPKat post here].  Ever responsive to the latest IP developments, the UK Group of AIPPI arranged a Rapid Response seminar with the counsel of the losing and winning teams to share their perspective of the most talked-about decision of 2016 (so far).  Tom Edwards (A&O) reports.  

Say their (new) names, suggest Eleonora. 

The Supreme Court has just published its list of cases that it will be hearing (or not) on appeal.  Among the list are two parties that are frequent users of the English judicial system, informs Annsley.

After the public consultation on the review of the Satellite and Cable Directive [here], after that on online intermediaries and platforms and that on the Enforcement Directive, now it is the turn of neighbouring (ancillary) rights and freedom panorama to be openly discussed in view of a possible reform. Eleonora reports. 

Annsley inaugurates a new Katcolum dedicating to the next generation of global IP lawyers. In this first episode, she has travelled almost 6000 miles west to San Francisco, California, where IP litigator Guinevere Jobson  at the leading West Coast firm of Fenwick & West tackles copyright litigation, Silicon Valley "casual" dress codes and a dream of working in Germany.   

Unlike other sports, the broadcast of a chess match is executed by near-instantaneously replicating players’ moves on graphic boards, as the players compete. Until recently, many websites around the world would transmit the players’ moves. The organiser of the World Chess Championship was not happy with that, and has just sued four websites that broadcast the live matches, claiming a violation of its broadcasting rights. Emma tells all. 

While IP trade flows may not have any immediate impact on IP practice, they point to longer-term trends that should be of concern to the IP community, namely that IP is threatened with being lumped together with other factors that are claimed by some as responsible for the increasing social and economic inequality that has come to dominate public discourse. We ignore this issue at our collective peril – and we should not, says Neil. 

Annsley pens of Mr Justice Carr’s decision in Fujifilm Kyowa Biologics v AbbVie Biotechnology [2016] EWHC 374. It addresses declaratory reliefs, jurisdiction to grant them, and delves into the leading case on declaratory relief in patent cases -  ie Arrow Generics Ltd v Merck & Co Inc [2007] EWHC 1900.



Never too late 88 [week ending on Sunday 20 March] – CoA’s decision in Design & Display Limited v OOO Abbott & another | AG in McFadden C-484/14 on WiFi providers’ liability | Twitter on “Dronie” trade mark | Rationale and possible abuse of new US Trade Secret Law | CJEU in Liffers on moral rights | product placements | Sci-Hub IP saga. 

Never too late 87 [week ending on Sunday 13 March] – UPC negotiations: Neil Feinson's version | Open Source Dogs | Myth, metaphor as drivers of innovation in IP | The Trunki case, i.e. PMS International Limited v Magmatic Limited  | Loubutin case referred to the CJEU | German court refuses amendments filed on appeal | Italian Sharing Economy Bill | EPO Performance | IP in culinary recipes | Where has the patent troll gone? | Napp v Dr Reddy's and Sandoz.

Never too late 86 [week ending on Sunday 6 March] – Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 41 | The IPKat team: news, new arrivals and farewells | CJEU in Shoe Branding Europe BVBA v Adidas and OHIM | World IP day | Advocate General's opinion in Henrik Saugmandsgaard Øe in Austro-Mechana | EPO v trade union | OLG Munich on YouTube liability | UPC judges' salary | The UK implements Unitary Patent | CJEU in Daimler AG Együd Garage Gépjárműjavító és Értékesítő Kft | Monsanto and tech-transfer in India | French ancillary right over on-line images | Stockholm District Court refuses to issue blocking injunction against access provider | CJEU on GIs in  Viiniverla Oy V Sosiaali- ja terveysalan lupa- ja valvontavirasto | Trinidad’s Carnival and copyright | Again on Article 28 and trade-mark portfolios.

Never too late 85 [week ending on Sunday 28 February] – AG Yves Bot's take in Reha Training | Battistelli having hard times | Blocking injunctions in trade mark cases | AIPPI UK event | Patent Enforcement Worldwide | Why Mickey Mouse is not mickey mouse | UPC court fees.

Friday, 25 March 2016

Fujifilm Kyowa Biologics can use declaratory relief to clear the way for its Humira biosimilar in the UK, rules Mr Justice Carr

The AmeriKat has been known to sleep alongside things 
stranger than patent decisions  (
A decision has been rolling around at the bottom of the AmeriKat's bed for about a month. Yes, the AmeriKat sleeps with patent decisions by her side.  Finally, in the peace of a Friday off from work, she has been able to fully digest the decision of Mr Justice Carr in Fujifilm Kyowa Biologics v AbbVie Biotechnology [2016] EWHC 374.

What is this case about?

Whether the UK Patents Court could grant the declaratory relief sought by Fujifilm Kyowa Biologics (FKB) in respect of their biosimilar version of Humira.  In determining that the court has jurisdiction to grant the declaration sought, Mr Justice Carr conducted a thorough analysis of the leading case on declaratory relief in patent cases -  Arrow Generics Ltd v Merck & Co Inc [2007] EWHC 1900 - and provided helpful signposts as to when such relief would be appropriate.

What is the product? 

Abbvive's adalimumab, marketed under the trade mark Humira, which in 2014 attracted over $12.5 billion in net sales.  Humira is approved for the treatment of rheumatoid arthritis, psoriatic arthritis and psoriasis.   Adalimumab binds and neutralizes activity of the TNFα, a cytokine (i.e. a small signalling protein) that is important in the regulation of immune cells.  By binding to TNFα, adalimumab prevents TNFα from binding to its receptors leading to an inflammatory response in autoimmune diseases (such as rheumatoid arthritis).  Humira is administered by way of a single, 40 mg dose subcutaneous injunctions injections [amended 29/3 at 12.20pm - see comment] every other week.

What is the patent protection?

The basic patent for adalimumab is EP (UK) 0,929,578, with an UK SPC (GB/04/002) that will expire on 5 October 2018.  AbbVie has or has applied for several patents and divisionals which relate to the 40mg dosage regime for the treatment of various indications, including EP (UK) 1,406,656 and EP (UK) 1,944,322.  The other divisionals concerning this dosage regime are unlikely to grant for several years.

The '656 patent, which claims the 40 mg subcutaneous, every other week dosage regime, had a rough time of it during its EPO opposition (15 oppositions, 19 statements of fact and expert reports, a request of a divisional patent, etc).  AbbVie subsequently abandoned the '656 Patent and it was then revoked on 16 November 2015 (importantly after FKB launched the current proceedings). The divisional, which claimed essentially the same subject matter, was published on 4 November 2015.  The '322 patent covers the 40 mg subcutaneous, every other week dosage regime, for the treatment of psoriasis.  This patent is in force.

Why is there a case before the UK Patents Court?

FKB, a joint venture between FUJIFILM and Kyowa Hakko Kirin, intends to clear the path of AbbVie's follow-on patents in order to market its biosimilar adalimumab product after expiry of the UK SPC in October 2018.  FKB issued its claim on 29 October 2015, seeking to revoke the '656 and '322 Patents.  Of course, subsequently, the '656 Patent was revoked following AbbVie's abandonment of the patent.

FKB therefore want to amend their pleadings and, in particular, wish to point to the '656 Patent's fate as demonstrating AbbVie's intention to avoid adjudication by the English courts and the Opposition Division on the validity of '656 but nevertheless keep its subject matter alive by way of the divisional.  Such tactics, FKB argues, makes it impossible to clear the path in time for their intended launch as the ultimate decision on the validity of the divisional would take years to be resolved.

AbbVie said there was no connection between the fate of '656 Patent and FKB's claim and that the real reason was to avoid dealing with a feature of the '656 Patent (concerning an in vitro L929 assay) that was under attack for sufficiency and added-matter.  This feature is not present in the divisional.

At the heart of this case, is FKB's claim to for a declaration that biosimilar products containing a monoclonal antibody to the antibody adalimumab for the treatment of rheumatoid arthritis, psoriatic arthritis and/or psoriasis by the administration of 40mg every other week by subcutaneous injection would have been obvious at the priority dates of the '656 and '322 patents.  Such a declaration takes support from Arrow Generics Ltd v Merck & Co Inc .

FKB's declaration intends to establish that its products were anticipated or obvious at the priority dates of the two patents.  If the declaratory relief is granted, AbbVie would find it impossible to claim that FKB's products infringe its patents without putting the validity of its patents in jeopardy (i.e., an obvious FKB product cannot be protected by an inventive AbbVie patent at the same priority date).

The Law - Is there jurisdiction to grant the relief sought by KFB?

Yes, like in Arrow Generics, the court has jurisdiction to grant such declaratory relief at trial.  The granting of declaratory relief is pragmatic and discretionary and can assist in achieving justice between the parties (see Messier-Doughty v Sabena [2001] 1 All ER 275 and Financial Services Authority v Rourke [2002] CP Rep 14; see also Nokia Corp v Interdigital [2006] EWCH Civ 1618; [2007] FSR 23).

In Arrow Generics very similar issues arose.  In that case, Merck's 70mg once-weekly dosage regime patent for alendornate was revoked by the High Court (upheld on appeal) and the EPO in proceedings brought by Arrow.  Having cleared the path, Arrow launched its generic product.  However, subsequently, Merck's divisional which claimed the same dosage regime as the revoked patent was subsequently granted.  There were also other pending divisionals which included or could be amended to include the dosage regime at issue.  With no final decision from the Opposition Division expected for years, the uncertainty meant that Arrow was faced with a real and substantial threat to its European alendornate business.  Like FKB, Arrow sought declarations that were directed at the obviousness of its own product at the priority date of the divisional applications.

Merck argued that section 74 of the Patents Act 1988 was a complete bar to the relief sought by Arrow.  Section 74 (1) provides for a closed category of circumstances where the validity of a patent may be put in issue (declaratory relief is not included) and section 74(2) states that the validity of a patent may not be put in issue in any other proceedings.  Kitchin J rejected this interpretation stating that section 74 did not exclude the right of a person to seek a declaration in relation to his own product, particularly where the need to do so derives from a patent application yet to be granted.  This did not mean that the court could weigh in on the validity of a patent application that has yet to be granted - this would be inappropriate.  However, Arrow was not seeking such a declaration. Arrow only sought a declaration that their own product was obvious at the priority date of the divisional applications.  The Dutch court's reasoning in the parallel case was consistent with the English Court (save they actually granted the relief sought, whereas Kitchin J held that the case for the declaration was arguable) (see Merck Sharpe & Dohme Manufacturing v Ratiopharm Nederland BV and others - February 13 2008 case number/docket number 288241/ HA ZA 07-1689).

A new mantra for those clearing the path?
AbbVie argued that the Arrow judgment was wrongly decided on numerous grounds.  The thrust of their argument came down to the fact that because FKB's product was defined by reference to the integers of AbbVie's pending patent applications, the relief sought was a backdoor way of invalidating the claims of the divisionals.  This was contrary to section 74 of the Patents Act and the deliberate exclusion of pre-grant examinations under English law and at the EPO.  Further, in granting such relief the English court would be usurping the EPO's validity examination jurisdiction directly or indirectly contrary to Article 27 of the Recast Brussels Regulation and Lenzing Ag's European Patent [1997] RPC 245.  AbbVie also argued that since Arrow was decided nine years ago, the appellate courts have been more willing to permit EPO procedures to take their course without English judicial interference (see  Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2013] UK SC 46[2014] A.C. 160, as summarised by Floyd LJ in IPcom GmbH & Co KG v HTC Europe Co Ltd & Ors [2013] EWCA Civ 1496[2014] R.P.C. 12.)

Carr J rejected these arguments, holding that Arrow was correctly decided. The relief sought did not touch on the validity of the pending applications, only Arrow's product.  The English court will not  make a declaration that no valid patent could be granted on a divisional application that is pending before the EPO.  The UK Patents Court is therefore not usurping the role of the EPO.  However, it was incorrect to argue that the UK Patents Court was being more deferential to EPO procedure since Arrow.  In particular, Lord Justice Floyd in the IPCom case cited by AbbVie held that English judges should have the discretion to refuse a stay of national proceedings given that the EPO opposition procedure can take many years to resolve.  Mr Justice Carr concluded:
"If there was no jurisdiction to grant Arrow declarations, then it would be impossible for parties who wished to clear the way for the launch of a product to do so, without facing years of commercial uncertainty posed by cascading divisionals pending before the EPO. This would be so even where a patent had already been revoked or abandoned in the jurisdiction of intended launch, as the patentee could seek to re-monopolise essentially the same subject matter by filing further divisionals. Whilst the jurisdiction needs to be exercised with caution, both the UK and the Dutch courts have found that it exists. I agree with their conclusions and will proceed to consider whether there is a realistic prospect that the trial judge will exercise the discretion to grant the declaration in the present case."
Mr Justice Carr holds that Arrow was
correctly decided
The Application - Is there a realistic prospect of the court granting the relief?   

In order to determine whether there was a reasonable prospect of the court granting the relief sought (and thus whether AbbVie's strike out application would be successful), Mr Justice Carr helpfully listed the factors relevant to the exercise of court's discretion in granting such relief:
1.  Would the declaration sought by FKB serve a useful purpose?  Yes.  If FKB's product is launched there is a real concern that at some point in the future it will face patent infringement actions arising from Abbvie's pending divisionals.  FKB may be on the hook for very substantial damages.  If they did not launch, as a result of such a risk, FKB will have lost many millions of pounds in investment in obtaining regulatory approval for its biosimilar (a risky game as it is).  A declaration would dispel this real commercial uncertainty, especially in circumstances where AbbVie had made public statements about "vigorously" enforcing its IP and seeking injunctive relief to prevent "at risk" launches.  
2.  Is the underlying issue sufficiently clearly defined to make it properly justiciable?  Yes - the issue as to whether FKB's own product was obvious or anticipated at the priority date is clearly defined and susceptible of a determination by the UK Patents Court.  
3.  Are there special circumstances why the court should not grant the declaration sought?  The facts of the case are sufficiently unusual that there is a realistic prospect that the trial judge will exercise his/her discretion to grant the relief.  In particular, the judge pointed to the fact that AbbVie had applied for and vigorously defended the '656 Patent until it was abandoned in 2015.  FKB had devoted significant resources in seeking to revoke it at the EPO.  For the purposes of the hearing, AbbVie was assumed to have abandoned the '656 Patent in order to prolong commercial uncertainty.  Further, the amount of money at stake for FKB was significant.  FKB therefore had a real prospect of success in establishing that its own product was anticipated or obvious at the relevant priority date.  
Merpel waiting for the AmeriKat to get to the point.....
AmeriKat, this is a long post - what do I really need to know?  

Yeesh, okay, okay - this is what you need to know:
  • Granting of declaratory relief is discretionary and it must serve a useful purpose, ie, achieving justice between the parties.  
  • Where a party is unable to effectively clear the path and achieve commercial certainty (despite best efforts), because of the threat of pending divisionals being enforced upon grant (at some uncertain point in the future), justice may not be achieved.  
  • Declaratory relief may be appropriate to achieve justice and provide commercial certainty. 
  • However, the jurisdiction to grant declaratory relief must be exercised with caution.
  • In particular, the type of relief sought in AbbVie and Arrow, will be appropriate in only unusual circumstances.
  • Whether there are unusual circumstances depends on numerous factors (as outlined above), including the inability to achieve commercial certainty in a reasonable time frame, whether the party has sought to clear the path previously, the degree of the commercial uncertainty and the amount of investment at stake.   
  • The relief must also not stray into pre-determining the validity of a pending European patent application, thus usurping the EPO's jurisdiction.
  • Although it may be unusual circumstances where such declaratory relief may be appropriate, it is still a useful tool to have in your patent litigator's tool box should the time come.  

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