2020 UK IP judgments: key takeaways

Genentech, Inc. and Master Data Center, Inc. (BL O/111/20); Master Data Center, Inc v The Comptroller General Of Patents; Genentech Inc. v The Comptroller General of Patents

• Patentees should take note - if you handle SPC administration and fees internally, make sure your systems are robust to the point where an erroneous underpayment could not reasonably take place.
• If you plan to outsource these functions (as Genentech did in this case), complete relevant due diligence on the company to which you outsource the responsibility, and carefully review the terms on which they are instructed.
• Mistakes such as this one could well result in greater financial damage to your business and IP portfolio than your outsourcer is able to account for, even if they provide you with an indemnity.

• Enforcement of broad registrations should be initiated with care - as the use history of any prior rights may be closely examined in case they can be challenged for bad faith;
• This decision should make trade mark applicants and practitioners think twice before filing an application for the extremely popular term “computer software” (or other similarly broad terms such as “financial services” or “telecommunication services”) without limitation;
• Arnold LJ’s judgment clearly illustrates the implications of the CJEU’s reluctance to discourage broad filing practices – reaching this decision on merely some of the infringement claims required a laborious and detailed examination of the specification terms and the scope of use made and realistically envisaged by Sky since the time of filing. Use could therefore become a complex but determinative issue in many infringement claims, regardless of whether they are based on young or old registrations. We pity the new brand entrant who attempts to assess the pre-launch clearance risks with any certainty.
• It is interesting that Arnold LJ decided to draft his own alternative wording for “computer software” which was deemed to have been filed in bad faith by Sky. This suggests it would be sensible for any trade mark owners who may find themselves in this position in future to provide the Court with their own alternative wording in advance, in order to try and guide the Court to their own preferred wording and thereby avoid an amended specification they might be unhappy with.

• For patents which claim a range of products, the legal requirement for sufficiency means they must disclose enough information to enable a skilled practitioner to make the full range claimed.
• The requirement to show enablement across the whole scope of the claim applies only across a relevant range.
• The Supreme Court judgment underlines the challenges surrounding protecting inventions for which the technical contribution resides in a principle of general application which awaits further technical development before it can be fully realised.

• Copyright can subsist in functional shapes as long as they are original.
• Even if an object has attracted one type of IP protection (such as a patent) in the past that is not necessarily a bar to protection by another IP right, such as copyright.
• While the UK grants copyright to designs for industrial products, companies must generally rely on the lesser protections afforded by design rights when acting against companies which copy those designs.

• This judgment prevents grant of an SPC relying on a marketing authorisation covering a new therapeutic application of an active ingredient that has already been the subject of a marketing authorisation for a different therapeutic application.
• The rationale in this case appears to overturn the reasoning behind the Court’s 2012 decision in Neurim.
• Pharmaceutical companies should note that this judgment may have implications for the validity of SPCs granted on the premise of Neurim.

• EU law provides both regulatory and IP incentives for research into the paediatric use of new medicinal products, in the form of extensions to the relevant periods of exclusivity awarded to the product. However, it is not possible to benefit from both extensions for a single drug product.
• Companies and practitioners should carefully consider the different periods of exclusivity available through the regulatory and intellectual property legal frameworks, and their relative timings.
• There are some scenarios in which only one of the extensions will be available for a medicinal product that has been investigated for paediatric use.

• The fact that the skilled person may never have read the prior art is irrelevant when it unambiguously discloses the basic inventive concept. However, we should not allow hindsight to influence how we judge the skilled person’s perception of the prior art.
• It is important to ask whether the skilled person would have been interested in the prior art as a means to solve a problem.
• Paper proposals, particularly unworked patent applications, should be treated with caution when used as prior art. If the prior art lacks sufficient detail, was drafted many years before the priority date and/or was never implemented, the skilled person may have disregarded its contents.

• Drinks businesses must think carefully about their marketing and brand strategy when it comes to selling products similar to those already afforded protected designation of origin (PDO) and protected geographical indication (PGI) protection.
• Brands should take active steps on social media to manage their trade mark and products from being inadvertently compared to well established marks which are protected.
• Arguments as to the alleged originality of the product name are not persuasive. In respect of trade mark infringement, whether a mark was “copied” from or “inspired” by an existing trade mark or PDO remains irrelevant.

• Request for CJEU preliminary ruling on Art. 3(c) in Novartis has been withdrawn.
• Status quo remains that a party may not hold more than one SPC for any given “product".

• The EUIPO may rely on well-known facts when examining the arguments of the parties in invalidation proceedings, but these facts may be contested by the interested party
• EUTMs have unitary character and must have distinctive character throughout the EU, whether inherent or acquired through use
• Evidence of acquired distinctiveness may include evidence relating to the whole of the EU or to groups of Member States

• A business may be liable for third-party, online, adverts which reproduce a competitor’s trade mark, even where they do not create the content in question.
• MK Advokaten applied, Daimler remain good law.
• Ensure distribution agreements have clear termination provisions.

• The Courts will undertake a careful balancing exercise when interpreting the transitional provisions of our IP statutes so as to meet the legitimate expectations of rights holders and users alike.
• Trade mark litigation in the UK is not solely the preserve of the mega-rich. The existence of specialist tribunals such as the Intellectual Property Enterprise Court means that smaller businesses too can have their day in court.
• Thorough due diligence is critical when looking to transition a brand into a new market in order to mitigate the risks posed by third party IPRs.