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EPO CRISPR Patent Appeal Resolved

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CRISPR Commercial Patents

 

The EPO Boards of Appeal convened recently to offer a final ruling in respect of EP2771468, a patent granted to the Broad Institute in respect of CRISPR/Cas9 gene editing technology. This case has attracted a lot of attention, not least because of the potential commercial value of the patents at hand, as well as the background of long-standing disputes between the various parties holding CRISPR patents across the world.

 

What is CRISPR?

 

CRISPR (Clustered Regularly Interspaced Short Palindromic Repeats) technology is a novel DNA editing tool which is faster, more cost-efficient, and more accurate than previous gene editing techniques. Indeed, there was some speculation that the most recent Nobel Prize for physiology or medicine might be awarded to the minds behind CRIPSR, before this was awarded to Kaelin Jr, Ratcliffe, and Semenza for their discoveries of how cells sense and adapt to oxygen availability.

 

Ultimately, the technology can be used to permit scientists to rapidly make cell and animal models for the purposes of medical research, as well as providing many options for medical diagnostics, and the techniques are widely used around the world.

 

EP2771468

 

EP2771468 was filed on 12 December 2013, as an International (PCT) application, claiming a long list of priorities to earlier US applications. The publication of grant occurred on 11 February 2015. Several oppositions were launched, starting in October 2015, which asserted that the patent was invalid.

 

The claims themselves were directed towards a composition comprising a CRISPR-Cas system chimeric RNA or a CRISPR enzyme sequence, which are modified to improve their stability.

 

The patent itself is a fairly meaty read, with the International application as published running to 162 pages. The field of technology here is one with dense impenetrable jargon (much like patent law itself!), but this is beside the point. The merits of the appeal hinged on a simple question – was the application entitled to priority?

 

Priority

 

The law of priority for patents stems originally from the Paris Convention, which recites in Article 4(A)(1):

 

Any person who has duly filed an application for a patent […] in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.

 

Why is this important? Well, the Broad Institute filed their original US patent application having four inventors, also named as applicants. When filing in Europe (via the PCT filing), however, one of the inventors was omitted, Professor Luciano Marraffini of Rockefeller University, New York.

 

If Professor Marraffini had not, as asserted by the opponents, assigned his right to the invention correctly to the Broad Institute by the time the European application was filed, then the Broad Institute were not entitled to claim the priority right. This meant that the effective date for the assessment of prior art changed. Here, this meant that different citations, much more destructive to patentability, became citeable, which in turn would lead to revocation of the patent.

 

EPO case law is quite clear in this regard. T788/05 clarified that a sole applicant who was one of several joint applicants on a first filing cannot give rise to a separate priority right. The right of priority is jointly owned but indivisible. The applicant of the European patent application must be the owner or successor in title to all of the rights of the individual applicants of the priority application as of the date of filing of the European application, or in this instance, PCT application, for a valid priority claim to be made.

 

Oral Hearing

 

If the EPO case law is so clear, then how did this case reach an oral hearing? Crucially, the USPTO have a different interpretation of how a valid priority right can form – the later application needs only a single inventor in common in order for a valid priority claim to be made.

 

Essentially (and in much simplified terms), the Broad Institute argued that, given that the priority applications were US filings, then US law should govern how priority can be claimed. Additionally, much semantic argument was heard about the meaning of the term any person as outlined in the Paris Convention.

 

This line of argument threatened to lead the Boards of Appeal to refer the matter to the Enlarged Board of Appeal, which would have significantly extended the uncertainty regarding the status of the patent, but eventually finalised their decision to revoke the patent, finding the priority claim invalid.

 

Procedural Strictness

 

Overall, the decision of the Board of Appeal is much as had been expected to European observers. The prevaricating over this matter has ended, and the final written decision of the Board is expected soon.

 

What can we infer from a practice perspective from this resolution, however? Primarily, whilst the direction in the UK, at least, is towards excusing sloppy claim drafting, the law of priority remains strict, to the point of being lethal to viably patentable technology. In this instance, the Broad Institute potentially have nine patents which have questionable priority claims.

 

Given the divergence of US and European law in this regard, patent practitioners need to be very aware of potential issues in respect of entitlement and ownership, and how this can have a knock-on effect on the validity of patents.

 

Can I register this shape as a Trade Mark?

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Trade Mark Registration grants the owner a monopoly right over their Mark for an unlimited amount of time, so long as registration is renewed at each (10 year) anniversary.

 

When it comes to the registration of a 3D shape, arguably, the criteria for registrability is much more stringent, to avoid the same monopoly right being granted for a right that should more correctly be protected by a Design registration, with a limited life.

 

Aside from the usual requirements for registrability of a Trade Mark, a number of key hurdles are in place to limit the registrability of 3D shape Marks; these are listed below:

 

A 3D shape cannot be registered as a Trade Mark, if the shape:

 

  1. Arises from the inherent nature of the object/goods;
  2. Provides a technical function;
  3. Adds substantial value to the product.

 

Providing these objections can be overcome, a 3D shape can be an extremely valuable asset for an individual or company.

 

Case Study – The recent Jaguar Land Rover Case

 

Register a shape

 

Recently, the UKIPO rejected Jaguar Land Rover’s Trade Mark Applications for six 3D shapes, depicting their cars (pictured below), in a range of Classes of goods.

 

The grounds of the Oppositions were explored in detail in the UKIPO decision, which can be viewed here.

 

For the purposes of this article, we have focused upon two of the grounds pleaded:

  • the lack of inherent distinctiveness and
  • that the shape conferred substantial value to the goods

 

 (1) Lack of inherent distinctiveness

 

According to case law, for a shape Mark to be registrable, the shape must depart significantly from the norm or customs of the sector of products of that kind. This assessment is made through the eyes of average consumers, whose level of attention will vary, according to the nature of the goods in question.

 

The UKIPO identified that the shapes in question had some unusual aspects, namely “‘arrow shot’ rear windows and alpine side windows”. However, the configuration of the shape, as a whole, was important. Even with some unusual elements, the shape, as a whole, did not necessary depart from the norms or customs of the sector, and consequently, the Marks were found to be devoid of distinctive character in relation to passenger cars.

 

(2) Substantial value

Jaguar Land Rover pleaded that the boxy ‘slab-sided’ shapes were counter-functional, not necessary to achieve a technical result, and also, not features that consumers would be  looking for in competitors’ products.

 

The UKIPO expressed their uncertainty when deliberating whether the boxy ‘slab-sided’ shapes provided the ‘aesthetic appeal’, and it was merely noted that this was a ‘difficult and developing area of the law’, and the ground was ultimately left undecided.

 

Key Points from the UKIPO decision

 

  • When it comes to 3D Trade Mark Applications, Applicants will fare better the greater the degree that a shape constitutes a ‘significant departure from the norms or customs of the sector’. In this regard, mere elements and/or aspects of uniqueness or originality might not suffice, since it is the overall shape of the Mark which will be considered pertinent.

 

  • Unfortunately, the concept of substantial value still remains somewhat obscure. It is unclear whether this assessment should take into account or ignore the fact that consumers will recognise the shape. This raises doubt as to whether established brands, who have spent significant time and investment in creating brand recognition, will be jeopardising their ability to seek Trade Mark protection for a recognised product, if its appeal is only due to its ‘iconic’ shape/status in the mind of consumers. Hopefully, it will not take long for the ground of substantial value to be brought to the courts’ attention again, and perhaps the next time round, this will be properly addressed.

 

Summary

 

Overall, the UKIPO decision was not surprising. Given the potentially perpetual power of a Trade Mark registration, it remains in the interest of public policy to refuse registration of a 3D shape, where this would effectively grant a person or company, an endless monopoly over a shape that should be or become available for others to use in commerce.

 

If you would like further information or advice on registering 3D Trade Marks, or for any other Trade Mark advice, please contact the highly experienced team of Trade Mark Attorneys at Albright IP, who will be pleased to advise you further.

 

Intellectual Property Enterprise Court expands its small claims track outside London

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Bristol Civil Justice Centre – photo depositphotos / jaceksphotos

In the new IPEC guide issued last week, it was rather quietly announced that from October 2019 District Judges will be available in Birmingham, Bristol, Cardiff, Leeds, Manchester and Newcastle to hear intellectual property small claims. This will be welcome news for businesses and individuals in the regions who will now have easier access to the court system to resolve certain small-scale IP disputes.

Since it was set up in 2012, it is difficult to present the history of the IPEC small claims track as anything but a resounding success.  The value of an individual small claim is low (at least, relatively low) but the importance of being able to effectively enforce IP rights at low cost is invaluable in certain industries. Professional photographers in particular have been able to use the system to obtain good compensation for infringements that have occurred, and no doubt deter a great many infringements that as a result have not occurred.

At the same time, small business and individual defendants faced with certain spurious or unjustified allegations that they have infringed intellectual property rights have been able to have their side of the story heard, without the fear that the legal costs involved give them no option but to “settle and pay up”.

An IPEC small claim will typically be dealt with by directions being given on a judge’s review of the paper file, and a final hearing being allocated with a time estimate of one day. In the vast majority of cases it will be necessary for the Claimant to attend the final hearing themselves as a witness, whether or not they choose to be represented by a lawyer. The availability of the “Business and Property Court centres out of London” – the new and rather more descriptive name for what you may still see called the “Chancery District Registries” – is therefore a significant improvement in the accessibility of the Court to litigants far from London.

For “multi-track” cases, those which are too high-value or too complex for the small claims procedure, the IPEC guide has stated for many years that the judges are able and willing to sit outside of London.  Perhaps litigants and their lawyers were afraid to ask, because the first such trial outside London took place in Birmingham in October 2018.  HHJ Melissa Clarke, the judge in the case, commented “I do not know why it has taken so long”.

From time-to-time we have seen intellectual property cases issued in the County Court via the “money claim online” procedure.  The rules make it quite clear that this is not allowed (63.13, Civil Procedure Rules if you want to look it up).  Where a claim is wrongly issued by this route, it almost always serves to increase the time and cost of resolving the dispute.  Given the availability of IPEC small claims outside London, there is no excuse now.  An intellectual property claim must be issued in the correct court.

We look forward to the continued success of the Intellectual Property Enterprise Court and expect that this latest development will further assist those who rely on intellectual property, and a reliable and accessible court system to enforce it, for the success of their own businesses and livelihoods.

Can I wait to file a patent application?

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Can I wait to file a patent application?

 

For start-ups that are building their business around an innovative product, preventing more established companies from copying their idea by having a patent granted is essential. However, there are plenty of other essential aspects of a business which need attention when just starting out.

 

Therefore, is it possible for a start-up to defer filing a patent application, to allow funds to be spent on other areas of the business?

 

Why would I not be able to wait?

 

One of the chief requirements of obtaining a patent is “novelty”. Therefore, your idea must be completely new compared to what is already publicly available at the time of filing the patent application.

 

In general (read on to find a notable exception), patent offices do not distinguish between who made the idea available. Therefore, if you wait to file a patent application and start selling or marketing your product beforehand, then you may be prevented from obtaining a patent.

 

Even if you are not intending to publish or market your product just yet, someone else may have come up with a similar idea. Waiting to file your patent application increases the chance of someone else disclosing or filing for a similar idea – preventing you from obtaining a patent to that idea.

 

“Enabling disclosure”

 

To destroy the novelty of your invention, you would need to publish enough information to allow someone to recreate your invention.

 

In the case of a physical product, selling the product would likely destroy your chances of protecting the product itself. However, the method used to make the product may be the clever idea you want to protect.  If this method is not discernible from looking at the product, and if you have kept the method confidential, then you may still be able to protect this, even after launching. Additionally, if you only publish pictures of the exterior of your product (for example for crowdfunding campaigns), and these do not reveal how the product works, then you may still be able to obtain a patent to the workings of the invention.

 

In the case of an app, if the clever way the app works is locked away behind the scenes and is not apparent from the software which is distributed, then it may still be possible to protect this aspect of the app, even after launching.

 

In the above examples, it would be crucial that the method of production and working of the app be kept confidential. Non-disclosure agreements should always be used if such information must be disseminated to potential business partners or developers.

 

The notable exception

 

The United States (among a small number of other countries) provides a 12-month grace period for inventor disclosures. Therefore, if you publish your invention, this publication and any third-party publications going to the same published material won’t work against your US patent application. This is as long as you file for a patent within 12 months of your first publication.

 

However, other key markets (such as the UK, Europe and China) do not have such grace periods, so this strategy would result in a loss of ability to obtain protection in these markets.

 

Design protection

 

Whilst the UK and Europe do not have a grace period for patents, they do have a 12-month grace period for registered designs. Therefore, if you are only interested in protecting the way your product looks in these territories, you can market your product first, and file for a registered design within 12 months.

 

However, this strategy is not without risks as your registered design can be knocked out if a third party independently derives and publishes the same or a similar design before you file your registered design.

 

Additionally, China, among some other countries, do not have such design grace periods.

 

Conclusion

 

As a general rule of thumb, do not wait to protect your intellectual property (IP), whether that is by way of a patent, trademark and/or design. The IP in your business can be one of the most valuable assets within a few years. Stake your claim to it before someone else does.

 

Furthermore, selling or marketing your invention before filing a patent application would usually prevent you from obtaining a patent downstream. However, if the concept of your invention is not discernible from the product you sell or market, it may still be possible to protect it even after launch. But this is risky. Determining whether and where protection can be obtained in these instances can be complex. If you would like advice on this or on any other aspect of intellectual property, please do not hesitate to contact us on 01242 691 801.

 

How Disclosing Your Invention Can Prevent You From Obtaining a Granted Patent

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Starting a business is an exciting adventure to embark upon. Unfortunately, Intellectual Property (IP) is too often an after-thought and mistakes made early on in the process can be detrimental to obtaining IP rights.

 

Take patents for instance. In order to obtain a granted patent in the UK, at the time of filing a patent application, the invention must be novel (i.e. unknown in the whole world) and inventive (i.e. not obvious).

 

Looking more closely at the novelty requirement in the UK, the Patents Act 1977 states that:

 

“(1) An invention shall be taken to be new if it does not form part of the state of the art”,

 

and defines the state of the art as comprising:

 

“all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way” (see section 2 of the Patents Act 1977).

 

In essence, disclosing your invention publicly could prevent you from obtaining a granted patent because your invention will not be considered to be “new”.

 

So how do I know if I’ve publicly disclosed my invention?

 

You are likely to have disclosed your invention publicly if, before filing a patent application, you have:

  • Talked to investors, business partners, friends, or potential clients about your invention
  • Blogged, vlogged, tweeted, written about or posted images of the invention on a social media platform
  • Got a Kickstarter page in which the invention is disclosed
  • Posted a document about your invention on a website
  • Been on Dragons’ Den
  • Given a talk to an audience or displayed a poster at a conference,
  • Published a book or thesis which is on open shelves in a public library, even if no-one has ever read the book
  • Published an article, an abstract, or a grant proposal
  • Given away or sold samples
  • Shown your invention at an exhibition (with some exceptions)
  • Used the invention in a public place

 

There are, however, caveats to be voiced about the above list.

 

Confidentiality

 

Any disclosure in confidence, for example under a Non-Disclosure Agreement (NDA), will not be considered as a public disclosure. For a free, template Non-Disclosure Agreement, please click here.

 

Please note however, that any IP-related discussion you have with a chartered patent attorney or trademark attorney in the UK, such as those here at Albright IP, will be considered as confidential (i.e. not public), without you needing to sign an NDA first. This is because legal advice privilege applies to chartered patent and trademark attorneys.

 

Website postings

 

With regards to website disclosures, the European Board of Appeal provided the following two-step test to clarify when posting a document on a website constitutes a public disclosure.

 

If, before the filing or priority date of the patent or patent application, a document stored on the World Wide Web and accessible via a specific URL

 

(1) could be found with the help of a public web search engine by using one or more keywords all related to the essence of the content of that document and

 

(2) remained accessible at that URL for a period of time long enough for a member of the public, i.e. someone under no obligation to keep the content of the document secret, to have direct and unambiguous access to the document,

 

then the document was made available to the public […].

 

Therefore, if you post about your invention online, and if your posting remains online long enough and can be found by typing keywords into a public search engine (such as Google®), then the posting can be cited against your own patent application.

 

You should also, therefore, assume that the same approach will be taken by the UK Intellectual Property Office.

 

Emails

 

In a related case, the European Board of Appeal decided that the act of sending an email via the Internet does not constitute publicly disclosing the email’s contents.

 

Keep in mind, however, that the recipient of an email disclosing the invention needs to be under a confidentiality agreement – otherwise, the email contents could be considered as a public disclosure.

 

I think I’ve disclosed my idea publicly. Does that mean I can’t get a patent granted anymore?

 

Not necessarily.

 

To count as public disclosure, the disclosure also needs to be “enabling”. This means that enough detail needs to be disclosed so that someone “skilled in the art” could deduce how the invention works, for example, see Lux Traffic Controls Limited v Pike Signals Limited [1993] RPC 107, 132-135.

 

If your public disclosure is enabling, it may invalidate only part of your patent application. For example, you may have disclosed how the invention works but not how the invention is made. In this case, you may still be able to get a granted patent for the method of manufacture.

 

Where you have publicly disclosed everything about your invention, then patent protection in the UK or in Europe may no longer be an option. However, in some countries outside of the UK and Europe, you might still be able to rely on a grace period to get a patent granted, for example, in the USA. Alternatively, you may still be able to obtain another form of intellectual property in the UK or in Europe such as a registered design, due to the existence of a grace period.

 

Finally, it is worth highlighting that a public disclosure will only be detrimental if it is done before filing a patent application containing all the details disclosed.

 

In summary, avoid disclosing anything about your invention before you file a patent application, and make sure that any disclosure is done in confidence. If you are unsure on what to do, you can always talk to Albright patent attorneys or trademark attorneys for IP-related advice.

 

Victory for ‘Peppa Pig’ – Peppa’s win on Trade Mark Invalidity Claim

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The owners of a hugely popular British animated series, ‘Peppa Pig’, have successfully won their bid to invalidate a Mark, arguably evocative of their well-known ‘Peppa Pig’ character.

 

Peppa Pig first graced our TV screens back in May 2004, and has since become one of the most well-known, and most popular British children’s TV programmes of all time. The rise of ‘Peppa Pig’ has, quite naturally, created a multitude of extremely lucrative commercial opportunities for the owners, Entertainment One and Astley Baker, who are now appearing to be more actively enforcing and policing their Peppa Pig-related IP rights than ever before.

 

One of the most recent cases involving ‘Peppa Pig’ has been the invalidation claim brought against an EU Mark filed for by Xianhao Pan. The invalidity claim perhaps comes as no surprise when one views the Marks in issue side-by-side, as displayed below:

 

Xianhao Pan’s ‘TOBBIA’ Mark The ‘Peppa Pig’ Mark

 

Background

 

In 2013, Xianhao Pan was granted an EUTM for the ‘TOBBIA’ Mark in Class 25, for clothing, footwear and headgear. The Mark is in the colours, pink, red, yellow and blue, and is said to depict a ‘tapir head on a human body’, with the words ‘TOBBIA’ in bold and black text underneath.

 

This was argued to be confusingly similar to the Peppa Pig creators’ earlier black and white mark, registered for the same goods. The earlier Trade Mark depicted the famous cartoon character, Peppa, with the words ‘PEPPA PIG’ underneath, in black and bold text.

 

When the case was first heard by the EUIPO Cancellation Division, rather controversially, they ruled that the two Marks were not confusingly similar, upholding the validity of the ‘TOBBIA’ Mark. On appeal in 2017, a U-Turn decision was made, and the ‘TOBBIA’ Mark was invalidated on the finding that the Marks were visually, phonetically and conceptually similar.

 

The General Court’s Decision

 

Following a round of appeals before the Board of Appeals of the EUIPO, the General Court concluded earlier today, 21 March 2019, the invalidity of the ‘TOBBIA’ Mark. Despite noting the differences in terms of the colours of the Marks in issue, it ruled that these differences, considered overall, did not outweigh the similarities.

 

In the appeal to the General Court, the owner of the ‘TOBBIA’ Mark argued that the Board of Appeals had failed to state the reasons for going against the first decision by the Cancellation division, but the General Court was quick to confirm that it was sufficient for the Board of Appeals to only state the reasons on which its own decision is based, and that an obligation did not extend towards identifying the incorrect aspects of the Cancellation Division’s decision.

 

Undoubtedly in agreement with the preceding Board of Appeals’ decisions, it was confirmed that ‘the average consumer normally perceives a mark as a whole’, without engaging in lengthy analysis as to the various details, and therefore, it was right to find that the Marks were visually similar overall.

 

Most interestingly, the General Court also remarked approval of the Board of Appeals’ previous assessment, which found a certain correlation between the word ‘tobbia’ and ‘peppa’, in the sense that both words contain the reiteration of a strong consonant, namely, the ‘B’ in ‘tobbia’ and the ‘P’ in ‘peppa’.  Although not verbally similar therefore, it seems that there was a consensus that the structural correlation and extremely similar graphical elements in the Marks rendered an impression of similarity in the minds of the consumer, who might consequentially come to view the Marks, and also the respective goods, as being related in some way.

 

Despite assertions from the owner of the Mark that the ‘TOBBIA’ Mark depicted a tapir, rather than a pig, the court considered it unlikely that the public would at all associate the Mark with a tapir, consequently finding there to be conceptual identity in the Marks, in the sense that they both represented a pig.

 

Consequently, when considering the overall similarities from a visual, phonetic and conceptual perspective, the invalidity decision was upheld.

 

Conclusion

 

Whilst today’s decision may seem an overly generous stretch in favour of the creators of Peppa Pig, at least, when it comes to the court’s apparent approval of the ‘correlation’ between the ‘strong consonant’ elements of the Marks, the decision of the court does not appear all that surprising. A side-to-side comparison certainly highlights the ‘TOBBIA’ Mark’s eerie resemblance, highly reminiscent of the famous pig character. Given ‘Peppa Pig’s reputation, there is certainly a likelihood that consumers might come to perceive the Marks, and the respective goods, as being somehow associated and/or connected to the Peppa Pig franchise. Like it or not, what would have undoubtedly been interesting in the court’s decision would have been a more thorough discussion, or at least, a reference to the previous grounds raised by the owner of the ‘Peppa Pig’ Mark, specifically, the conflicts with the earlier copyright.

 

Trade Marks in a Post-Brexit World: The Implications of ‘No Deal’

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As the countdown towards Brexit draws nearer, we appear to be edging closer than ever to a “no deal” situation, particularly given the recent turn of political events. From an IP perspective, this will no doubt represent a period of substantial uncertainty, and it is rather difficult to predict how well businesses will be able to navigate around these unchartered territories.

Those in the IP fields can, however, be somewhat reassured that the government, amongst all the crisis, have taken steps to put IP issues on their agenda when preparing for the eventuality of a post-Brexit world. In their notice, published 24th September 2018, the government offered some guidance on the approach to be taken in a “no deal” scenario, specifically with Trade Marks (and Designs) in mind. The technical notice is aimed at preparing the road in such a way as to minimise disruption, ensuring a ‘smooth and orderly exit’.

Since then, a draft instrument has been written up to address, at least in part, the implementation of Trade Marks following the UK’s departure from the EU – see The Trade Marks Exit Regulations 2018 (the “TM Exit Regulations”).

 

The TM Exit Regulations

If a deal is done with the EU, the TM Exit Regulations will come into force on “exit day”, which, for all Trade Mark intents and purposes, will be at the end of the transition period (currently 31 December 2020).

If there is no deal on exit day (currently 29 March 23.00 GMT), the effect of the Regulations is still likely to be applicable – so the only real conceivable practical difference between a deal and no deal departure, will be in timing.

The draft TM Exit Regulations includes a new Schedule 2A, which will be inserted into the UK Trade Marks Act 1994.

In short, the TM Exit Regulations provides for a cloning-based Trade Mark regime. Existing EUTMs will be cloned into UKTMs, provided that they have been registered prior to exit day (29 March 2019). These UKTMs will be given a new title, “comparable Trade Mark (EU)” (hereinafter “clones”).  Clones will share the filing (including priority and seniority) and registration dates of their parent EUTM, and there is to be no fee or opt-in procedure for this process to happen.

Clones should, according to the Regulation, appear automatically on the UK Trade Marks Register ‘as soon as reasonably practicable after exit day’. The government’s notice has confirmed that a notification will be made to EUTM owners that a UK clone has been created. Given the multiplicity of EUTMs currently existing on the UKIPO database, and the likely administrative challenge of implementing this wholly novel clone-based database, it is foreseeable that there may be a significant lapse of time before clones start showing up on the IPO Register, and before owners are actually notified of their new clones.

 

Opting-Out

EUTM owners may choose to opt-out of cloning at any time on or after exit day by serving notice on the UKIPO. However, opting out is not possible in the following circumstances:

  • If the clone has been used in the UK;
  • If the clone has been licensed or involved in certain transactions;
  • If proceedings relying upon the clone have commenced.

With this in mind, it is questionable whether European Trade Mark owners with business in the UK can choose to opt-out at all, given that, in most cases, EUTMs will be used extensively in the UK during the course of business on the day before exit day, and will likely continue post-Brexit, upon which a clone will have automatically been made. Therefore, unless a business completely ceases to operate its business activities following exit day, it is difficult to envisage how a situation might arise, whereby an owner would not be “using” a clone in the UK, allowing them to utilise the “opt-out” provision.

 

Renewals

Renewals will still follow existing UKTM renewal procedures following Brexit, but with important added protection anticipating the potential problem of owners forgetting about their clones. The Regulation provides that any owner with a clone renewable in the first 6 months post-Brexit will receive written notification from the UKIPO, notifying them of the upcoming expiration. From the date of receipt of this notice, Trade Mark owners will have 6 months to renew their clones.

Crucially, renewal fees will have to be paid to both the EUIPO and UKIPO for all Marks with a renewal deadline post 29 March 2019.

 

Proof of Use

There are some important technicalities to bear in mind when it comes to proving use of a Trade Mark post-Brexit. When proving the use of a clone within a proof of use period occurring wholly before exit day, the use of a parent EUTM in the EU, which will include use in the UK, will count towards establishing proof of use. However, where the proof of use period of a clone is split partially before and after exit day, the use of a parent EUTM can only count for the part of the period before exit day. Any evidence of use during the part of the period after exit day must be use occurring specifically within the UK.

 

Reputation

Similar provisions are mirrored with respect to proof of reputation. Where there is requirement to prove reputation at a point before exit day, the reputation of a parent EUTM in the EU prior to exit day will count, including any relevant reputation in the UK existing before exit day.

 

Co-existence Agreements, Licenses etc.

Post-Brexit, any co-existence agreements, licences and any other relevant transactions which involve EUTMs are deemed to cover their corresponding clones unless there is explicit evidence that such documents were not intended to have effect in the UK.

 

Pending Proceedings and Injunctions in the UK

Any actions pending before the UK courts concerning EUTMs will continue after exit day, but with the EUTM being swapped out for their corresponding clone. Similarly, any existing injunctions prohibiting acts in the UK on the basis of an EUTM will continue, with a clone being swapped in. From a practical perspective, this process of swapping in clones may potentially significantly diminish the scope of proceedings and injunctions between the parties, so it seems that pan-European level injunctions will no longer be available from the UK courts following Brexit, at least insofar as far a ‘no deal’ departure is concerned.

 

Pending EUTMs

One of the most important things to note in the new Regulations is that any EUTM Application pending as of exit day will not be cloned.

Instead, the Applicant will have 9 months from exit day to file a new UKTM Application, during which they will be entitled to claim the same filing date (or priority date) of the previously pending EUTM Application.

Given that most EUTMs generally taking at least 4 months from the date of filing to progress to Registration, 3 months of that being the mandatory Opposition period, the usual lag before the EUIPO marks an Application as “Registered” may well mean that EUTMs filed in 2019, and potentially some filed in December 2018, will not be automatically cloned, and will need to be re-filed within 9 months.

Importantly, Trade Mark Applicant’s with pending Applications should therefore note that they will not be notified of the need to refile, and will be required to pay all official fees to make a new filing.

 

Outstanding Issues Unaddressed by The TM Exit Regulations

Generally speaking, the TM Exit Regulations go some way in addressing the problems which may arise following the UK’s departure from the European Union. Nonetheless, despite a level of detail, some outstanding issues remain largely unaddressed. A few of these issues are summarised below:

  1. The UK government has confirmed the continued protection of International Trade Marks in the UK following a ‘no deal’ departure scenario. International Trade Marks designating the EU will be protected as new UK Registrations, rather than International Registrations designating the UK. It remains unclear whether this is to happen automatically, as with cloning, or, in the alternative, whether Trade Mark owners will have to take proactive steps in order to safeguard continued protection.
  2. Based on current rules on correspondence addresses, anyone applying for a UK trade Mark must supply an address for service in the European Economic Area (EEA). The Regulations does not adopt any form of “transitional” approach to representation, which would have ensured a level of certainty if the UK were to leave the EEA too. Considering that this may well become the reality following a ‘no deal’ departure, the lack of transitional measures addressing the loss of rights of representation on part of UK Trade Mark Practitioners might have some significant ramifications.

 

Conclusion

Overall, the TM Exit Regulations, address a large area of the upcoming issues which may arise in a post-Brexit, ‘no deal’ world. As we get nearer to Brexit day, things could, no doubt change significantly overnight. Judging by what the UK government has prepared thus far, the current ‘business as usual’ theme is entirely focused on a visible attempt to make everything as easy as possible for Trade Mark owners. Whilst most of what is being suggested appears sensible, some larger issues do remain unresolved at the expense Trade Mark practitioners.

With many of the important details still to be confirmed, and with Brexit still being “up in the air” in terms of securing a deal or “no deal”, we may find ourselves in a situation where solutions and/or any significant changes are only announced at the very last moment. With this in mind, Trade Mark owners and practitioners should be minded to closely follow and monitor the unfolding political and legal developments, as these will, no doubt, have a huge impact on the implementation of Trade Mark law and practice in the post-Brexit world.

Cost-effective biotechnology searches in the UK

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If you have an invention in the field of biotechnology, you should consider filing a UK patent application first. It could save you money on search fees, and give you an idea of patentability in Europe without even filing a European patent application.

 

UK co-operation with Europe

 

Biotechnology-related applications have been accumulating at the UK Intellectual Property Office (UK IPO) for some time, partly due to a lack of suitably qualified examiners.

 

The UK IPO has invested in recruiting and training new examiners, according to their press release, but it will take time for those examiners to become fully proficient at what they do. This is expected to remain the case until sometime in 2019, based on a letter in March 2018 from the UK IPO to the EPO (see Annex 1).

 

In the meantime, the UK IPO has established an agreement with the European Patent Office (EPO), which came into force on 1st July 2018. The agreement will see some biotechnology applications sent over to the EPO for an official search. The first batch of applications to be searched was sent to the EPO in November 2018.

 

How could this benefit you?

 

The official search fee for a UK patent application is normally £150 (GBP). The official search fee for a patent application filed at the EPO is normally €1300 (EUR). The UK IPO will decide which applications get sent to the EPO for a search, and this is expected to be around 200 to 300 applications per year. If you’re lucky, your UK patent application might be one of the ones searched by the EPO, seemingly without the need to pay the much higher European search fee.

 

In addition, if you later file an equivalent application at the EPO which claims priority to a UK application searched by the EPO, the EPO search fee will be partly or fully refunded. Details of the exact level of the refund vary – see the EPO Official Journal of January 2019 for further information.

 

Is it worth patenting in the UK first?

 

It may be a bit of a lottery as to whether your application will be searched by the EPO. However, if it is sent to the EPO for searching, then you may get a direct indication of patentability in Europe before incurring costs for filing a European patent application. Similarly, for a PCT application which has not been searched by the EPO, entering the UK national phase early could be a good strategic move, since you may get an EPO search before you decide whether to incur significant costs for European regional phase entry.

 

Even if you are certain to file in Europe, filing a UK patent application first might still be a good idea, if the EPO-sourced search report includes the usual written opinion. This could be very valuable indeed, particularly if there are objections to sufficiency or plausibility which can be difficult to resolve after filing. Instead, you may get advance knowledge of potential problems and be able to pre-emptively update the patent specification before you file in Europe.

 

If you’d like further advice on patents or any other aspect of intellectual property protection or enforcement, please contact us to speak with one of our qualified attorneys.

 

Can You Patent Cannabis Products?

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Following high profile legalisation in territories around the world (for example Canada, some states in the US and limited medicinal allowability in the UK), industry and financial institutions are recognising the commercial potential of cannabis.

 

And where there is commercial potential, there will be a demand to protect innovations made to capitalise on the market.

 

However, given that recreational cannabis is presently illegal in many places (for example, most places in Europe and federally in the US), can you patent something which is illegal? Additionally, since cannabis is natural and has been known since ancient times, can you patent something which is so well known?

 

A quick search on a global patent database indicates over 7000 granted patents which include the word cannabis, including over 1000 in Europe and UK.

 

Whilst this is a very rough metric (such a simple search will include patents which are designed to prevent or detect cannabis use), it does suggest that government Patent Offices around the world are granting patents to something which is in some way illegal in their country. So, what’s going on here?

 

Illegality or Immorality

 

UK and European legislation prevents patenting of immoral inventions or inventions that go against “ordre public”.

 

Cannabis is illegal in most places in Europe and there might be some who would consider drug use per se to be immoral. So, why are patents granted to cannabis related products.

 

Both UK and European legislation have a provision that illegality should not mean that you cannot obtain a patent.

 

The rationale is that the patented product could be made in a country where using it was illegal, but exported it to somewhere that is legal.

 

The guidance given to patent examiners is that patent applications are only morally objected to if public opinion would find a patent “abhorrent”. For example, cluster bombs, and anti-personnel mines.

 

As such, in the UK and Europe, patent applications are rarely objected to on immoral grounds, and cannabis being illegal or banned from medical use would not stop someone obtaining a patent to it.

 

Nature

 

You cannot patent a discovery.

 

The cannabis plant, with its inherent chemical constituents, occurs naturally. A person would not be able to patent the naturally occurring plant or the chemicals found naturally in the product.

 

However, that person would be free to patent methods of extracting or using chemicals from the plant, methods of making synthetic versions of those chemicals or making other chemicals derived from those natural chemicals.

 

Arguments would need to be made that these chemicals or uses have industrial applicability, for example having a plausible medicinal effect. Many governments do not recognise the medicinal effect of cannabis constituents or only recognise the medicinal effect of cannabinoids (such as the US government). However, this has not followed through to various patent offices, which have granted companies protection over a variety of cannabis derived pharmaceuticals.

 

Additionally, the law covering the ability to patent plants obtained by means of an essentially biological process is under review in Europe. This likely means that, in the future, it may be possible to obtain a European patent to particular plants created by cross-breeding.

 

Therefore, we might soon expect to see new varieties of cannabis plants patented in Europe in the future.

 

Prior Art and Enforceability

 

Due to the historical and present illegality of cannabis in many places, there has been limited legitimate commercial exploitation of cannabis. As such, there are limited prior published patent documents which discuss cannabis. Given that patent examiners mostly use prior published patent documents to object to the newness of patent applications, cannabis related patent applications can be granted relatively easily.

 

However, this can be a double-edged sword. Whilst there may not be published patent documents, there is still plenty of public disclosure, such as in magazines, websites and folklore, which could be used to knock out a granted patent.

 

As such, cannabis related patent owners may be reluctant to sue infringers, for fear of having their patent knocked out. This means that cannabis patents may lack enforceability.

 

Subterfuge

 

Whilst in Europe or the US there may not be an issue with patenting cannabis, you might be concerned that less lenient jurisdictions would presently object to patents which mention cannabis.

 

If you have developed new cannabis paraphernalia and wish to obtain patent protection in less lenient jurisdictions in the hope that cannabis laws become relaxed in the future, it may be worth omitting mention of cannabis in the patent application.

 

If the product could work equally well with tobacco, for example, then tobacco could be mentioned in the patent application instead of cannabis. Unless of course there is a specific technical advantage to the product which is only apparent when used with cannabis.

 

Conclusion

 

Cannabis related products are certainly patentable in many major markets worldwide, although they can throw up some unique patenting issues. Some initial strategic thought and discussion is therefore recommended before rushing to file your patent.

Financial Compensation for Intellectual Property Infringement

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Damages ac of profits

An intellectual property right is fundamentally a right to prevent competitors from using your brand, invention, design, copyright work, or whatever.  But what if they do?  A rightsholder who successfully sues for infringement will be able to obtain an injunction – a court order preventing the infringement from continuing.  For infringements which have already occurred, there will usually be an entitlement to financial compensation.

Damages or profits?

A successful claimant will be able to choose either to claim damages – compensation for the loss that they have suffered due to the infringement, or an account of profits – the profits wrongfully made by the infringer.  The claimant will obviously want to choose the remedy worth the most, and will normally be able to get an order for disclosure of the defendant’s documents in order to gauge the relative value of each option.

Damages – lost sales

In theory, damages are compensation paid to a rightsholder for the loss caused by the infringing activity.  A certain number of infringing sales will have been made, but a key question is whether all of those infringing sales represent lost sales to the rightsholder.  All sorts of factors will need to be taken into consideration.  As an example, if a counterfeit or pirate product is sold at a much lower price than the original, and customers probably know that they are buying a counterfeit, then it may be very difficult to say that all of those customers would have paid full price for the genuine article if the infringement was not available.  On the other hand, if it is a very good counterfeit and sold at a similar price, so that customers are misled, then each infringing sale probably does represent a lost sale on the part of the rightsholder.

This example of counterfeit goods is relatively straightforward.  In other cases, for example a patent infringement, it may be that nobody is being misled, but a rightsholder might still argue that at least a proportion of the infringing sales represent lost sales on their part.  Evidence for this may end up being a little inexact.  Again, multiple factors will come into it – the price of the product may be an issue; if the infringing product has aesthetic differences then perhaps some customers would not have bought the patent holder’s product just because they did not like it, and so on.  In the end a Judge will have to weigh up all the evidence and come to an approximate view as to how many sales were lost by the rightsholder.

Damages – reasonable royalty

What if a rightsholder can’t prove lost sales for some or all of the infringements?  They are still entitled to a “reasonable royalty”.  This is an amount determined by looking at how much a hypothetical willing licensee in the position of the infringer would have agreed to pay a hypothetical willing licensor in the position of the rightsholder.  Again it is all a bit – well – hypothetical, but relevant evidence might include similar licences in the industry.  For example, in “simple mechanical” patent cases, reasonable royalties often seem to be determined at about 5% of sale price.

Reasonable royalty damages often end up being a small fraction of damages for lost profits, so rightsholders will work hard to try to prove lost profits for as many sales as possible, if they think they can.

Other heads of damage

Any reasonably foreseeable damage caused by the wrongful infringement can in theory be recovered.  Rightsholders may put forward various theories that they have lost out in different ways and need to be compensated.  A few examples include damages for price depression, where a rightsholder claims that infringing activity has forced them to drop their prices; lost sales of “convoyed goods”, i.e. goods not specifically covered by the relevant IP right but which are typically sold alongside and provide additional revenue; and costs incurred in mitigating damage, for example the cost of additional advertising to counteract lost business caused by the infringement.

Moral prejudice and damages for “flagrant” infringement

The Enforcement Directive[1] provides for “non-economic” factors, such as “moral prejudice”.  What is that?  There is relatively little guidance so far, but it probably allows – in principle – damages for “pain and suffering” and “mental distress” caused by an infringement.  English Courts have been rather reluctant to award damages under this head.

In copyright cases, “additional damages” can be awarded for “flagrant” infringement, and these additional damages can be quite valuable.  Additional damages go beyond the compensatory principle and can be well worth claiming.

Account of profits

What about the other option – an account of profits?  In principle, the rightsholder is entitled to the profits which the infringer has made by infringing, most obviously by selling infringing products.  In the first place this is an accounting question – what profits have actually been made by selling this particular infringing product line?  This might be less than straightforward, and there could be disputes over the proper allocation of variable and fixed costs.  Then what about the central overheads of the business? Whether these can be properly deducted can be a contentious issue.  The legal test is (a) whether the overheads would have been incurred anyway even if the infringement had not occurred and (b) whether the sale of infringing products would not have been replaced by the sale of non-infringing products.  In other words, would the same overheads in fact have sustained a non-infringing business if the infringement had not occurred?[2].  What this boils down to is that the rightsholder is entitled to recover the extra profits the infringer made due to their choice to carry out the acts which infringed.

Overall the rightsholder is entitled to the profits due to the infringement, so that may also raise the question as to whether the fact of infringement was really driving the sale of the product – i.e. did the consumer want an infringing product, a product having the particular characteristics protected by the IP right, or did they just want a product of a certain broader category?  If the infringement did not drive the sale then an apportionment may be made so that the rightsholder is only recovering the profits due to the infringement, rather than all of the profits due to sales of the infringing goods.

In some cases what this can mean is that after all this difficult accounting, an account of profits comes down to more or less the same thing as a reasonable royalty, which is the least a rightsholder can expect if they elect to claim damages.  Probably for that reason, damages tends to be the more popular choice.  It does all depend on the circumstances though.

An enquiry into damages or an account of profits is the very last thing that happens in IP litigation.  But it is well worth both parties having a good look at the possible financial implications early in the process, because with a realistic idea of the value of a claim, a swift and agreeable compromise can often be reached, vastly reducing the legal costs of resolving a dispute.  Estimating damages can be complex, but we’ve made a handy flow-chart to help a little bit.  Also, we would obviously be delighted to advise further on your specific case.

[1] EU Directive 2004/48/EC

[2] See Design & Display Ltd v OOO Abbott & anr. [2016] EWCA Civ 95

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