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Kevin Mooney: Provisional period of the Unified Patent Court could start in January 2016

January 2016: start of the so-called provisional period. October 2016: first cases taken. That may be a realistic timetable for the future Unified Patent Court, according to Kevin Mooney, chairman of the Committee that prepared the draft Rules of Procedure for the UPC.

unified patent courtKluwer IP Law spoke to Mooney about the progress of the Legal Framework Group of the Preparatory Committee, which has been finalising the Rules of Procedure (RoP) for the new specialized European patent court. The 17th Draft was discussed with a wide spectrum of users in Trier on 28 November 2014 and a final version of the RoP is due by July.

The provisional period is the transitory phase which is envisaged before the UPC Agre [...]

Pre-action Disclosure: Transparency is a virtue

On 28 April 2015, Mr Justice Arnold handed down judgment in relation to an unprecedented application for Pre-Action Disclosure from a patentee. The applicant, The Big Bus Company Limited (“Big Bus”) had applied for disclosure of all licence agreements which the respondent, Ticketogo Limited (“Ticketogo”), had granted under patent UK 2 391 101 (“the Patent”). The Patent claims a method of issuing a ticket over the internet which contains a barcode as an image file. Big Bus made the application following several years of sporadic correspondence with Ticketogo, in which Ticketogo outlined that it considered Big Bus required a licence under the Patent. The latest correspondence inden [...]

Spanish amendments to the draft new Patents Act: will Spain have rickshaws instead of cars in the streets?

In September of 2013, the Spanish Patents and Trademarks Office (“SPTO”) published a draft Patents Act aimed at modernising the old Act 11/1986, of 20 March, on Patents, which is close to celebrating its 30th anniversary. After hearing the stakeholders concerned, on 11 April 2014 the Council of Ministers approved the draft and sent it to Parliament, hoping that the new law could be approved before the next elections, which are expected to take place during the third or fourth quarter of 2015.

 The forthcoming elections appear to be the only rational explanation for a few of the amendments proposed by some of the parliamentary groups, which were published on 13 April 2015. Rather surprisingl [...]

UK: Actavis Group PTC EHF v. Pharmacia LLC, High Court of England and Wales, Chancery Division, Patents Court, HP14A01503, 11 July 2014

The English High Court (Arnold J.) has granted an application for a stay of the UK High Court proceedings to revoke the UK designation of an EP patent pending the outcome of opposition proceedings at the EPO. The decision is unusual as Arnold J had previously refused to stay the validity proceedings in this case on several grounds including the lengthy duration of the EPO proceedings. Following Arnold’s first decision dated 11 July 2014, Pharmacia offered two additional undertakings, which led Arnold J. to tip the balance in favour of a stay.

A full summary of this case has been published on Kluwer IP Law.

EPO: T236/12, European Patent Office (EPO), Board of Appeal, 05291183.1, 14 November 2014

During examination poor quality drawings had been replaced by drawings that made more details visible. The opponent argued that replacement of these drawings by the original drawings, to overcome Article 123(2) objections, extended the scope of protection (Article 123(3)). The board concluded that the skilled person remained clearly able to determine what was protected, because the technical features of the claims had been discussed extensively and with sufficient detail in relation tothe drawings as filed with the application.

A full summary of this case has been published on Kluwer IP Law.


The tension between competition law and IP rights in China: What IP rights holders should know

By Charles Pommiès, François Renard, Jie Tong, and Benjamin Bai

Speed read

In April 2015, China’s SAIC released its long-awaited guidelines on curbing abuses of intellectual property rights (“IPRs”). It introduces a new basis for forced licensing of IPRs where such rights constitute an “essential facility”.

Therefore, assessing market position and reviewing licensing policies under competition law has become critical to safeguard IP rights in China. These assessment and review must be made in the markets for the products protected by IPRs, and for the technologies involved, and they should be well documented.

Rules finally adopted by SAIC after cautious process

China’s State Ad [...]

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