Archive for the 'Patents' Category

The new Unitary Patent – European opportunity or risk?

After over 40 years of false starts we now have a new legal framework providing for the possibility of obtaining a Unitary Patent with Europe-wide effect, which can be litigated across its entire geographic scope in one central court. Whilst the UK government has welcomed the new framework as an efficient and cost saving one said to make enforcement of patents easier in Europe, it has faced criticism by many patent onwners and patent professionals.

Although no definite date has been fixed for its introduction it is likely that the new system will come into effect in 2015. It is important that all organisations which already have European patent protection in place and/or are considering applying for new or additional patent protection are aware of the development and consider the potential impact of it upon them and their patenting strategy.

We have prepared a briefing note on this important topic which can be accessed here

Robert Buchan

Increased drug testing in the UK?

A consultation by the UK Government and the UK Intellectual Property Office has found widespread support for an extension to what is known as the “bolar” exemption. This exempts certain drug testing/research activities from liability for patent infringement in the UK. For many years the current UK exemption was seen as narrower and less liberal than most other European countries with the fear that this meant that more and more clinical research trials were taking place outside the UK due to the fear that those instructing and/or carrying out the research faced liability for patent infringement in the UK in relation to tests related to new or non generic drugs.  This was claimed to have resulted in a depleted skill base and increasing delays in getting new drugs to the market in the UK. 

Although no concrete assessment has been carried out there is a legitimate concern that the current position is placing the UK at a competitive disadvantage in the field of clinical research trials resulting in significant financial loss. Clearly a key issue in the assessment of where and who to instruct to carry out such trials will be the potential risk of liability for patent infringement. It is not surprising then that 94% of responses supported a wider exemption.

The consultation results conclude that Section 60(5) of The Patents Act 1977 should be widened and amended to include an exemption from infringement for activities involved in preparing or running clinical or field trials involving innovative drugs for the purpose of gaining regulatory approval in any country (i.e. not just for obtaining drug or regulatory approval in the UK or EU). It is likely that this will also extend to health technology assessment activities for example in compiling data to support assessment by organisations such as The National Institute for Health and Clinical Excellence (NICE).

The next step is legislative reform and given the clear support from both government and the related pharmaceutical and clinical research industries it is anticipated that the revisal could be in place in 12 months time.  At a time when there are wider initiatives such as the Patent Box (offering a very attractive rate of tax in the UK as from April 2013 for revenue generated from qualifying patents) aiming to encourage more innovation and investment in research and development in the UK, this proposal is to be welcomed. Hopefully this will result in more home based trials which should benefit pharmaceutical and life sciences organisations as well as clinical research organisations – all of whom are key players in the Scottish economy.

Robert Buchan


Brodies Intellectual Property Survey Results- download now!

Recently we carried out a snapshot 60 second survey on Intellectual Property (IP) in conjunction with ADS, ScotlandIS and SCDI. We were keen to learn more about how businesses are dealing with such valuable key assets and what IP issues are of most importance to them. Responses were received from both large and small companies from a broad range of sectors.

The survey asked a number of key IP related questions such as whether audits were carried out to keep a track on the extent and value of IP, how it was used on social media platforms and whether businesses were involved in IP disputes. The results provide an interesting snapshot and insight into how businesses are dealing with IP as well as highlighting some areas where altering how IP is managed could improve the competitive advantage it gives to a business as well as maximising commercial returns.

We would like to share the results with you. They are available to download here 

Robert Buchan

A reflection on Apple v Samsung – is the jury out on jury cases?

The recent Apple v Samsung case in the US is one of the most talked about Intellectual Property (IP) decisions of the year and commentators are continuing to speculate on the impact that the decision will have on the tablet and smartphone industries.  However, from a legal perspective one of the most interesting aspects of the case  is the role that the jury played in arriving at the decision that Samsung was guilty of infringing Apple’s patents and how it calculated the damages award of around $1 billion against Samsung.

In the US, as readers will be aware, juries can be used to decide civil intellectual property cases.  However, in the UK only a judge or judges can do so.  This got me thinking about the pros and cons and of each approach and whether there is an advantage of one over the other. 

Understanding the technology
In intellectual property cases, one of the most difficult aspects is understanding the technology that forms the substance of the dispute.  This is particularly true in patent cases where the subject matter can comprise, for example, a pharmaceutical compound or a mechanical process or indeed cutting edge mobile phone technology.  In cases of a complex nature, an industry expert will usually be engaged to prepare a report to assist the lawyers and the Court understand the technology and to assist their legal arguments on the issues of validity and infringement of that patent.  Frequently, the technology will be so complex that more than one expert is engaged and each will deal with distinct parts of the patent.  The judge will spend many days listening to evidence and legal arguments on all the issues before reaching his decision. 

It may be fair to assume that the majority of jurors hearing a case will have neither a technical or a legal background.  That is not to say of course that juries cannot understand the technology or the substantive law required to arrive at a decision but it will likely mean that the lawyers (or the judge) may have to spend more time explaining complex technology or legal issues to them.  It may also mean that the legal arguments made in Court would be pitched in a different way if they were being made to a jury rather than the judge.  For example, it may be better to use less ‘legalistic’ submissions and instead use the key arguments in a context which can be more readily understood by the jurors.  Arguably, the focus becomes less on the legal aspects and more on presenting ‘key arguments/themes’ to the jurors. 

An interesting side issue to that is the impact that key jurors can have on the rest of the jury.  This is something which one would not have to consider in cases decided by a judge.  In jury cases, when a juror has experience in the particular field, they are likely to be the one who drives the discussion and influences the thinking of the other jurors.  In the Apple v Samsung case, the foreman of the jury was Velvin Hogan who is Chief Technology Officer at a company called Multicast Labs which specialises in internet video technology.  He also appears to have had some experience of the patent system in the US, having been the named inventor on a patent (see here).  In one of his post-trial interviews, it seems clear that his experience in this field was one of the key factors in helping the jury reach its verdict.  In his interview with the BBC (you can read the full transcript on the BBC website here) he said:

I asked myself the question: could I defend this patent, not in the court, could I defend this patent through that process just like I had to do my own if this were mine? ….. The answer to that question for me was yes. And so it just hit me that evening that that process I needed to explain to my fellow jurors because I was the only one that had ever gone through that process among them.

Some may argue of course that this decision making process is one of the main arguments in favour of allowing juries to decide cases such as Apple v Samsung.  Justice is being carried out by ‘the people’ because it comprises a cross section of society.  They will have different backgrounds and experiences and not everyone (perhaps even no-one) will be an ‘expert in the field’ of the technology in dispute.  Whatever their view, the jurors are bound to apply the law as it has been explained and as they understand it.  If there is one ‘expert’ amongst them then it is only natural that he or she will use their knowledge to have a major influence on the decision that is reached.

The damages calculation
In patent cases in the UK, once a finding of liability has been reached, there will usually be a separate hearing to establish the amount of damages due to the party which has had its intellectual property infringed (although often that is settled out of court). 

Under Scots law, the basic principle is that damages is calculated with a view to putting the party in the position it would have been in, had there been no infringement.  Alternatively, the victorious party can seek an account of the net profits which defender has made as a result of its infringing acts.  The victorious party usually selects whichever of these is likely to be the greater.  It is also important to note that damages in IP cases under UK law are usually not punitive.  Their purpose is not to punish the infringer for its wrongful acts (although there can be exceptions to his for example for flagrant infringement of copyright) but rather to restore the aggrieved party to the position it would have been in, but for the infringement. 

In the Apple case, there was much media criticism of the jury’s ability to reach a decision on liability and the amount of damages and in such a short period of time.  The jury was given an instruction document 109 pages long which contained around 700 individual questions.  Yet, the jury managed to assess all of this and deliver its decision in less than 2 days.  Mr Hogan, in one of his interviews claimed that there were in truth only 33 questions to answer  but that they related to 26 different Samsung devices, and in some cases the devices did not infringe the relevant patents. 

Nevertheless, this is still a remarkable feat given that, at least for the patent infringement claims, numerous items of prior art would first require to be considered to form a view on whether or not the patents were valid.  A judicial decision of this nature would certainly have taken many months to issue. 

Of course the speed of the jury’s verdict is helped greatly by the fact that they do not have to issue a written opinion setting out the reasoning for their decision or how they arrived at the amount of damages.  It would have been interesting in the Apple v Samsung case to see how they arrived at the damages amount of $1.05 billion!

So is one better than the other?
There are advantages and disadvantages to both jury and judicial decisions being issued in cases of IP infringement.  

In Scotland, there are 6 IP specialist judges who deal with the vast majority of the IP cases (the rest being dealt with by ordinary judges).  They have accumulated valuable experience in a wide variety of IP cases and many of them will also have further experience from working on cases whilst they were practising as Advocates/QC’s.  This means that the quality of the decision will most likely be very high.

Whilst I am not aware of any evidence that suggests jury decisions are appealed successfully more often than judicial decisions,  my own view is that there are likely to be less variable factors involved in a judge arriving at a decision.  This means that judicial decisions are likely to be more consistent and a body of case law can be built up and relied on.  Juries are more unpredictable in the sense that they will be made up of different people each time. 

As a lawyer, whether or not this is a benefit will depend what side of the case you are on.  It certainly worked well in Apple’s favour in this instance as the damages award is amongst the highest in American history.

Mark Cruickshank

IPR infringement and mobile apps – why Apple provides an online reporting tool

Last week’s iOS Dev Weekly email contained an item on the online facility provided by Apple to allow you to report alleged IPR infringement issues with apps on the App Store:

…If you are having copyright or trademark issues [or in fact any other IPR] with your app Apple now have a dedicated App Store process for dealing with this. What I found interesting about the description of this is that it states that it will put you directly in contact with the provider of the disputed app. Surprising.

From Apple’s perspective, this actually makes a lot of sense. Here’s why.

Pretty much anyone can publish an app for distribution by Apple through the App Store. However, whilst Apple does do some quality control on apps that are submitted, it doesn’t have the resources (or time) to carry out an indepth analysis of whether the submitted app infringes any third party IPR. It simply isn’t cost effective for Apple to do so, given the global nature of the App Store – researching whether a particular app infringed third party copyright, patents or trade marks in various countries around the world would cost many, many, thousands of dollars.

This means that there is a very real risk that apps available for sale on the App Store might infringe a third party’s IPR – whether through deliberate infringement, unintended copying, being unaware of a pre-existing patent (whether in the same territory or abroad) or simply the sale of an app by, say, a British registered trade mark holder in a country where the trade mark in question is already owned by someone else.

The dispute process
When an IPR infringement claim does come to light, for the reasons given above it is not practical for Apple to investigate it. It just isn’t worth its while as there’s no financial benefit to Apple from doing so, and Apple is unlikely to have the information required to respond to the complaint. So, instead, it makes much more sense for Apple to provide a facility for complainers to submit a claim straight to the person or organisation that submitted the allegedly infringing app so that the two parties can sort out the dispute directly.

In the meantime, in my experience Apple will suspend (or threaten to suspend) the allegedly infringing app. This keeps Apple in the clear in terms of any alleged infringement by Apple (remember, Apple is simply an agent (or Commissionaire) – it doesn’t licence/sublicence non-Apple apps to end users) and its obligations under the DMCA, as it has taken action as soon as it became aware of the issue, and puts the onus on the recipient of the infringement claim to sort it out so that it can get its app back on the market.

Of course this approach isn’t without its problems – particularly for those on the receiving end of an infringement claim, as the online reporting tool is open to vexatious and frivolous claims, with the onus on the recipient to then demonstrate to Apple that there isn’t an issue. But for aggrieved rights holders it provides an effective way of raising IPR infringement issues directly with the alleged infringer.

Be prepared
It also emphasises the importance of thinking about your IPR before you launch your app.

Are you comfortable that your chosen brand won’t infringe that of a third party? Have you thought about who owns IPR in foreign jurisdictions before you launch an app globally? Are you sure that any third party code utilised in your app is properly licensed? Have your developers assigned across ownership of any code they create? Have you taken steps to register any regiserable IPR that you create?

To learn more about protecting your IPR, download our free guide.

PS It’s not just Apple. A quick check reveals similar facilities on Google Play for copyright infringement and trade mark infringment (although on the latter it appears that Google will actually carry out some investigation itself).

Last opportunity to take part in our survey on how organisations identify, value and exploit their intellectual assets

Our survey on how organisations value and protect their intellectual assets closes at the end of this week.

Launched in conjunction with industry bodies ADS, SCDI and ScotlandIS, our survey is looking to identify how key intellectual property (IP) assets are dealt with and the IP issues which matter most to businesses today. We want to hear your views and appreciate your participation.

Year on year investment in the UK in intangible assets such as IP is higher than investment in traditional physical assets such as machinery or premises. IP rights, whether to a brand, design or manufacturing process, are often the most valuable asset that a business owns.

For any business to maintain a competitive advantage in the marketplace and maximise the return on investment, IP rights require to be properly managed or they will simply go to waste. Are you confident that you are making the most of your IP?

Please click here to take part (anonymously) in our 60-second survey and let us know what matters most to you in intellectual property. The survey will close at 5pm on Friday 24 August.

We look forward to sharing the results with you.

We’re keen to canvass views from as many organisations as possible. If you’d like to share the survey with your contacts then please feel free to use this shortened URL:

Free guide to protecting your intellectual property

Link to Brodies guide to protecting IP

Are you interested in finding out more about the  intellectual property that you or your organisation creates or usses in your business? Would you like to learn about the steps you can take to protect your intellectual efforts and prevent others from copying your work?

Often intellectual property rights (IP), whether in a brand name, design or manufacturing process, form a key part of the value of a business and its ability to stand out from the crowd and effectively compete.

To be able to optimise the value of IP and be best placed to generate a maximum return from it, it is important that a business takes active ongoing steps to identify, protect, exploit and enforce such rights. Over many years our IP specialists have worked with local and international businesses of all shapes and sizes to ensure that their IP is being fully protected.

Based on that direct experience we have compiled a brief overview guide to protecting your IP which we would like to share with you.

The guide is free to download. You can access the guide by following this link.

You can also share the guide using the shortened link

We hope you find it useful.

To find out more about our expertise and the services that we offer here at Brodies you have any questions then please contact me or another member of Brodies’ IP and technology team.

Finally, remember that you can also take part in our anonymous survey on how organisations use and value their intellectual assets. We’re keen to hear what you think. To take part, follow this link.

Honey, I stopped the infringement – European wide patent injunctions

How do you deal with the IP issues? Let us know by taking part in our survey on how organisations value and exploit their intellectual assets.


A recent decision by the Court of Justice of the European Union (CJEU) has opened up the possibility that a national court in one European country could possibly grant an interim protective measure potentially having effect across the whole of Europe, such as an interim interdict (injunction), in European patent infringement proceedings.  A European patent is a bundle of national patents which have to be enforced nationally in the relevant court of each country in which the patent has been validated as currently it is accepted broadly in the UK that it is not possible to enforce them on a European wide basis (in the sense in all countries in which the patent has been registered nationally).

This recent decision however indicates that in certain circumstances it may be possible for an interim injunction to be granted with pan-European effect.

A brief background

In the case of Solvay SA v Honeywell Fluorine Products Europe BV and others Solvay raised patent infringement proceedings in the Dutch court against 3 Honeywell companies for infringement of the national patents making up its European patent. One of the Honeywell companies was established in the Netherlands and the other two were established in Belgium. The alleged infringing activity was being carried out by both companies in relation to the same national patents which made up the European patent and which were registered in around 10 European countries (but significantly not in the Netherlands or Belgium in which these companies were based). In the course of the proceedings before the Dutch Court, Solvay sought a wide interim injunction in respect of all 10 countries in which the European patent was nationalised, to prevent the alleged infringing activity, pending the outcome of a full trial.  Honeywell then raised a counter argument that the European patent which it was claimed to infringe was invalid, even although it had not as yet raised a formal counterclaim seeking to invalidate the patent.

The issues raised and the CJEU’s decision

The case raised some interesting issues and various questions were referred to the CJEU for guidance. The 2 key questions which were answered were as follows:

  • Firstly, the CJEU accepted that there was in principle a risk of irreconcilable judgments if it was necessary to raise such interim infringement proceedings in both the Netherlands and Belgium. The situation here was that the Dutch and non-Dutch defenders were accused of the same allegedly infringing acts in respect of the same national patents, albeit in force in other member states. On this point, the CJEU ruled that the same national court could deal with such interim infringement proceedings where the court had jurisdiction against at least one defender. It is always up to the national court to determine if the claims are “so closely connected that it is expedient to hear and determine them together” but it makes sense to do so where the same national patents are in play.
  • Secondly and potentially of greater significance, could an interim injunction be granted and applied throughout Europe even although the defender counterclaimed that the alleged infringed patents were invalid? Honeywell would require to raise such invalidity proceedings in one of the countries in which the patent was registered and thus the Dutch Court had no jurisdiction to make such a substantive ruling on invalidity. Issues of validity have to be dealt with in the court of the member state in which the patent is registered in terms of the Brussels Regulation. Looking at the relevant competing provisions of the Brussels Regulation (Articles 22(4) and 31)  the CJEU ruled that as far as interim measures were concerned the Dutch court should not be prevented from granting such interim measures against infringement just because issues of validity were raised and which would in substance have to be dealt with by other national courts. It should be open to the Dutch court to make an interim assessment over how the court in another European country would rule on the issue of validity.  If the Dutch court considered that there was a ‘reasonable, non-negligible possibility” that the patent in suit would be declared invalid, then it should not grant the interim injunction. However, if there is no such risk, the Dutch court could in theory grant the interim injunction in all of the 10 countries in which the national patents were registered.

So what could this mean for owners of European patents?

This decision may be a welcome one for the owners of European patents because it confirms in principle at least that national Courts can rule on pan European patent infringement cases on an interim measure basis involving defenders which are based in different countries. This could in theory make enforcement of a European patent on an interim basis much more cost effective if it allows pan-European relief in respect of the infringement of the same national patents.  This is particularly so bearing in mind that often disputes resolve after such an interim measure is granted. Furthermore, the guidance means that alleged infringers of European patents cannot necessarily avoid such interim injunctions being granted simply by raising invalidity arguments where the initial assessment is that the attack has little or no prospects of success.

Does this apply to other areas of IP?

The Honeywell case only concerned interim infringement proceedings in relation to a European patent. However, there is authority for a similar application of this point of law in relation to infringement of a Community Trade Mark. In last year’s case of DHL Express v Chronopost the CJEU ruled that an injunction granted in one member state in respect of infringement of a Community trade mark can potentially have effect throughout the rest of Europe (albeit it would generally have to be demonstrated that there were infringing activities taking place across the whole of the Community as opposed to only in a few member states in which case the injunction would likely be limited to such member states). In addition the distinction is that trade marks can be registered and enforced Community wide, which is not the position with patents at present.

At the end of the day it remains to be seen how this guidance from the CJEU is applied nationally by the Dutch court and indeed by other national courts within Europe. Will it signal the start of pan-European interim injunctions in patent cases or be limited to the specific facts of this case? The potential seems to be there for the former but it is far from certain and in cases of urgency it may well be the case that patent owners may be wise to take action on a national basis.

The CJEU ruling also casts an interesting light on the ongoing political and professional debate about the establishment of the Unitary Patent and Unitary Patent Courts within Europe, hailed as the way to enforce patents on such a European wide basis.

Robert BuchanMark Cruickshank

Is ACTA dead in the water?

The European Parliament has delivered a resounding veto to the Anti Counterfeiting Trade Agreement (ACTA).

In my previous blog on ACTA, I wrote about the widespread opposition to ACTA on the grounds that it contains:

…vaguely worded provisions which could potentially allow internet service providers to monitor and disconnect repeat infringers and that it makes available unfair statutory damages for online music infringement to rights holders.

It could also have:

…given customs officers much greater powers to search and seize goods which are suspected of infringing intellectual property to prevent them from crossing national borders.

It will come as no surprise therefore that the European Parliament voted against ratifying ACTA on 4th July. The margin by which it was rejected, 478 votes to 39 (with 165 abstentions), is indicative of the unpopularity of this agreement.

What does the rejection mean?
It now means that none of the EU Member States can join ACTA.  In truth, the veto will have little impact for the internal laws of many member states (particularly in Scotland and the rest of the UK) because most of the proposals set out in ACTA are already present in domestic and European law. 

However, the rejection has more significance in terms of international enforcement and co-operation.  ACTA aimed to allow greater cross border protection against intellectual property infringement and it would have allowed rights holders and customs officers enhanced powers in countries where those powers did not already exist.

Where now for ACTA?
The rejection of ACTA will be celebrated by its opponents, such as supporters of open rights groups but is this really the end for ACTA? Perhaps not.

Prior to the European Parliament’s vote, the Court of Justice of the European Union had been asked to rule on ACTA’s compatibility with European law.  That decision will still be issued (irrespective of the European Parliament’s veto) and the EU Trade Commissioner will then discuss with the other international sponsors of the Agreement how ACTA wil be taken forward, if at all.

ACTA could also still come into force in its current form in other sponsor countries if six members of the agreement ratify it. However, without the approval of the EU (and potentially the US) its impact will be much less forceful.

Nevertheless, this is likely be the end of the road for ACTA in its present form (certainly in the EU) as it would require wholesale modification before being re-submitted to the European Parliament. 

Given the opposition to ACTA so far, perhaps it would be better simply to acknowledge the widespread unpopularity of the Agreement and consider alternative means of trans-national intellectual property enforcement.

Mark Cruickshank

Brodies launches Intellectual Property survey on how organisations value their intellectual assets

In conjunction with ADS, SCDI and ScotlandIS, Brodies is launching a 60 second survey to identify how key intellectual property (IP) assets are dealt with and the IP issues which matter most to businesses today. We want to hear your views and appreciate your participation.

Year on year investment in the UK in intangible assets such as IP is higher than investment in traditional physical assets such as machinery or premises. IP rights, whether to a brand, design or manufacturing process, are often the most valuable asset that a business owns.

For any business to maintain a competitive advantage in the marketplace and maximise the return on investment, IP rights require to be properly managed or they will simply go to waste. Are you confident that you are making the most of your IP?

Please click here to take part (anonymously) in our 60-second survey and let us know what matters most to you in intellectual property.

We look forward to sharing the results with you.

Thanks for taking part!

Robert Buchan

PS here is our launch advert from this morning’s edition of The Herald. Use the QR code or the link above to let us know your views:

Brodies advert in The Herald 20 June 2012 launching the IP survey

Twitter: @BrodiesTechBlog feed

December 2017
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