|UK courts and the CJEU?|
|... in a nutshell|
Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Darren Smyth, Nicola Searle, Eleonora Rosati, David Brophy, Alberto Bellan and Merpel, with contributions from Mark Schweizer. You're welcome to read, post comments and participate. You can email the Kats here
|UK courts and the CJEU?|
|... in a nutshell|
|counterfeiting copycats are everywhere!|
|A pawful outcome for Swedish|
|Gildor Elendil. CC-BY|
The IPKat is delighted to receive this paper from Prof. Dr. Winfried Tilmann of Hogan Lovells which suggests that it might be possible for the UK, post-Brexit, to nevertheless be involved in the Unitary Patent (European Patent with Unitary Effect or EPUE) and Unified Patent Court (UPC). Many have wondered whether this could be the case; few have come up with a plausible legal basis for such a scenario (given that the CJEU ruled the previous proposal for a European patent litigation system incompatible with the EU Treaties for reasons including the involvement of non-EU states). The IPKat will present the paper and hopes that our dear readers may provide their comments.
EPUE-Reg and UPCA after Brexit
The British voters have voted for a Brexit. What does that mean for the EPUE-Reg and for the UPC Agreement (UPCA)?
There is no immediate effect, since Art 50(2) EUC provides for a two-year period for agreeing on the details of an exit. During that period, the details of any UK participation in the patent package must be agreed upon for the time after the legal effect of the exit has taken place (legal exit).
What are the options for the EPUE-Reg and for the UPCA if a continuing participation of the UK in the patent package is desired?
|Is it safe to come out yet?|
We must rid ourselves of unconstructive criticism and the mortal danger of taking everything our union has achieved for granted. We must rediscover, love and cherish it.
Will Congress react? The US Supreme Court issued the much-awaited decision in Cuozzo Speed Technologies v. Lee. In that decision, the Supreme Court upheld the United States Patent and Trademark Office's (USPTO) use of the "broadest reasonable construction" standard in reviewing claims challenged in Inter Partes Review Proceedings (IPRs) before the Patent Trial and Appeal Board (PTAB). This standard makes it more likely that a challenged patent will be found invalid for obviousness. The Supreme Court also decided that the decision to institute an IPR is not appealable.
In Couzzo Speed Technologies, Justice Breyer wrote the unanimous opinion basically affirming the USPTO's power to adopt the "broadest reasonable construction" standard in IPRs. The Leahy-Smith America Invents Act clearly provided the USPTO with rule making authority concerning IPRs. The Supreme Court had little trouble following the statute. The Supreme Court also rejected arguments that IPRs were more like court proceedings than specialized agency proceedings. For example, challengers do not have to have constitutional standing, have a different burden of proof, and the USPTO can continue to hear the action without the challenger. Justice Breyer also noted that IPRs' predecessor was reexamination--essentially a return to review the agency's decision to grant a patent. The Court notes that there is nothing in the text, purpose or history of the statute to support a differing viewpoint. Notably, Justice Breyer recognizes that there may be inconsistent results between district courts and the PTAB, but that this was "inherent" in Congress' "regulatory design."
Justice Breyer also wrote the majority opinion on whether the decision to institute an IPR is not appealable. This may prove to be important because it essentially allows the PTAB full authority to decide whether an IPR should be instituted. Thus, ways to critique the application for an IPR may, over time, become more limited because of a lack (or threat) of judicial review.
|"Looks like a job for Congress!"|
“Does the first sentence of Article 23(1) of [the Regulation] preclude a licensee who is not registered …from bringing proceedings alleging infringement of a Community trade mark?”.Member States of the EU differ on the answer to the question (e.g., Spain— “yes”; Germany— “no”). The answer given by the CJEU is that no registration is required. While this Kat believes that the result is reasonable, the legal analysis given shows how inadequate the nature of CJEU decision-making can sometimes be in providing a compelling explanation in support of it ruling.
“Legal acts referred to in Articles 17, 19 and 22 concerning a Community trade mark shall have effects vis-à-vis third parties in all the Member States only after entry in the Register. Nevertheless, such an act, before it is so entered, shall have effect vis-à-vis third parties who have acquired rights in the trade mark after the date of that act but who knew of the act at the date on which the rights were acquired.”The Court states (para. 18) that--
“Read in isolation, that sentence could be interpreted as meaning that the licensee cannot, if the licence has not been entered in the Register, rely on the rights conferred by that licence vis-à-vis third parties, including the party infringing the trade mark.”However, the Court goes on to qualify what seems to be the plain meaning of Article 23(1) in favor or requiring registration of the license, stating that (para. 19) –
“… in interpreting a provision of EU law, it is necessary to consider not only its wording but also the context in which it occurs and the objectives pursued by the rules of which it is part (citation omitted).”Given this analytical framework for resolving the question, the Court reaches the conclusion that (para. 25)--
“With regard to the purpose of the rule laid down in the first sentence of Article 23(1) of the Regulation, the Court takes the view that … the lack of effects, vis-à-vis third parties, of the legal acts referred to in Articles 17 [transfer], 19 [rights in rem] and 22 [licensing] of the Regulation which have not been entered in the Register is intended to protect a person who has, or may have, rights in a Community trade mark as an object of property. It follows that the first sentence of Article 23(1) of the Regulation does not apply to a situation, such as that in the main proceedings, in which a third party, by infringing the mark, infringes the rights conferred by the Community trade mark.”
Since publishing IPKat's letter to our European IP colleagues (see letter here) following Friday's EU referendum result, the IPKat has received an outpouring of comments, emails and tweets from across Europe and the globe. Although there has been some criticism, the majority of responses have been warm and positive. The IPKat received a letter in reply from Sven Klos of the Netherlands that the team thought was worth sharing with our readers:
|The IPKat loves his European colleagues|
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