Category Archives: Intellectual Property

Ratifying the Unified Patent Court Agreement

the thin red line

The UK government announced this week that it has, at last, ratified the 2013 Agreement on a Unified Patent Court. It had announced its intention to do so in November 2016, nearly 18 months and two IP Ministers ago.

The UK IP professions are generally in favour of such ratification. But they would like to see some concrete evidence of the government’s intention to negotiate for the UK’s continuing participation in the UPC and UPCA after Brexit. Some time ago, they obtained a QC’s opinion that provided a road-map to how the UK could participate after Brexit, but it would require the agreement of other EU countries and EU institutions. So far as IP Draughts can tell, industry and other EU countries are in favour of continued UK participation.

A potential difficulty with this idea is that the UPC/UPCA is subject to the supervisory jurisdiction of the Court of Justice of the European Union (CJEU), and the UK government has declared that CJEU jurisdiction is one of its “red lines” in the negotiation of the UK’s future trading relationship with the EU. This was, no doubt, what led then-MP Douglas Carswell to put down an early-day motion in the previous Parliament, calling for it not to be ratified. Fortunately (in IP Draughts’ view) no other MP was prepared to second this motion, which consequently did not proceed.

Back in November 2016, the government’s press release was at pains to distance the UPC from the European Union. It included the following “note to editors”:

The UPC itself is not an EU institution, it is an international patent court. The judiciary appointed include UK judges.

At the time, IP Draughts thought this was as much a note to the Brexiteer wing of the Tory Party as it was to editors.

But the official government line on continued participation has always been that this will be a matter for the Brexit negotiations. The UK government has not been willing to show its hand and say in terms that it wants the UK to participate in the UPC/UPCA post-Brexit. A fortiori, it has not been willing to say whether the limited CJEU jurisdiction required for participation is so marginal, and in such a non-political arena, that it might be allowed to slip over the thin red line that has been set for other areas of trade policy.

Observers have been left to read the runes of statements coming from government, to see if they can detect at least a direction of travel, even if a policy statement is currently thought to be politically impossible. If you stare long and hard enough at the comments from ministers and civil servants, do they start to levitate?

In this context, it is interesting to look at the latest press release about ratification, and see what it says about the future. It includes the following statements:

The unique nature of the proposed court means that the UK’s future relationship with the Unified Patent Court will be subject to negotiation with European partners as we leave the EU.

Ratification of the UPCA will keep the UK at the forefront of influencing the international system.

Should we read these statements as a hint that the UK government thinks we should be in the UPCA for the long haul, and not just until the end of the transition period implementation period?




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IP transactions course

IP Draughts spent last week in London, convening and speaking at a 5-day course on IP transactions, which is run annually at University College London’s Faculty of Laws. This is the 6th year that the course has run.

The law faculty has very recently returned to its building in Endsleigh Gardens, after a 2-year period of major building renovations. We were delighted to be one of the first conferences to use the new facilities. Although the builders still need to do some “snagging” and finish off cosmetic works, the atmosphere of the building was fantastic, and undoubtedly helped both teachers and students to get into the right frame of mind for our intensive course. Our lecture room had the name “Hong Kong Alumni Room”, which probably means that thanks are due to UCL Laws alumni based in Hong Kong who helped pay for the renovations.

The feedback that IP Draughts has seen so far has been exceptionally good. Here is an example:

Fantastic course. The only course of this type – truly transactional law and practice. Genuine speakers who are still currently practising. Really enjoyed it. Great location and venue – love the renovations. Well done, Mark and Sir Robin!

Thanks are due to our speakers, listed below. IP Draughts would also like to thank Lisa Penfold of UCL Laws, who organised and administered the event, and IP Draughts’ associate Christopher Pollard who helped organise it on behalf of Anderson Law. The speakers and workshop facilitators were:

Mark Anderson, Anderson Law
Christopher Bates, Ashurst
Christine Bendall PharView Limited
Michelle Blunt, Baker McKenzie
Stephen Brett, Anderson Law
Ruth Burstall, Baker McKenzie
Toby Crick, Bristows
Sam de Silva, CMS
Braeden Donnolly, Ashurst
John Enser, CMS
Faye Harrison, Bristows
John Hull, Farrers
Inbali Iserles, Ashurst
Professor Sir Robin Jacob, UCL
Steven James, Brown Rudnick
Tomos Jones, CMS
Charles Kerrigan, CMS
Mark Lubbock, Brown Rudnick

Sam Oustayiannis, CMS
Chris Shelley, Pennington Manches
Sally Shorthose, Bird & Bird
Jeff Skinner, London Business School
Adrian Toutoungi, Evershed Sutherland
Joanne Vengadesan, Pennington Manches
Philip Wareham, Government Legal Service
Matthew Warren, Bristows
Tara Waters, Ashurst
Tim Worden, Taylor Wessing
Cerys Wyn-Davies, Pinsent Mason

The dates for next year’s outing of this course have already been set. Put them in your diary! They are: 8-12 April 2019. Hopefully the snagging will be completed by then.

Now he just has to write this year’s exam…

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Filed under &Law Updates, courses and training, Intellectual Property

Blast from the past: is software ‘goods’?

Back in the 1980s, when brightly-coloured tracksuits were in fashion, IP Draughts took a part-time course in IT law at Queen Mary University. One of the subjects that he earnestly studied was whether the supply of software amounted to a sale of goods, for the purposes of the Sale of Goods Act 1979.

He was convinced that it didn’t amount to a sale of goods, and he carried this conviction with him into the 1990s, when he wrote his first book, Technology: the Law of Exploitation and Transfer (Butterworths, 1996). The third edition of that work, now called simply Technology Transfer (Bloomsbury, 2010), discusses at pages 461-466 the legal issues involved in this question, and in the related question of whether the sale of a patent could amount to a sale of goods. The discussion briefly mentions the 1995 case of St Albans District Council v ICL, in which the Court of Appeal considered (obiter) that the answer to this question might depend on whether the software was supplied on a disk.

IP Draughts has long felt that this is a ridiculous distinction to make, as the nature of software is not changed by the medium or method by which it is supplied. The value in the software depends on the electronic content, not the piece of plastic on which it is, or not, delivered. However, as mentioned below, this is a distinction that the courts have used to justify their decisions in subsequent cases.

The fourth edition of that book is now being written, and will mention a new case that continues the judicial debate on this subject. The Court of Appeal case of Computer Associates UK Ltd v The Software Incubator Ltd [2018] EWCA Civ 518, appeared on the BAILII website last week. The main question to be decided was whether, for the purposes of EU law on commercial agents, the supply of software (typically by download over the internet) amounted to a sale of goods.

At first instance, His Honour Judge Waksman QC had decided that it did amount to a sale of goods. In the Court of Appeal, Gloster LJ, giving a judgment with which her fellow judges agreed, decided that it did not.

Gloster LJ’s judgment considers certain English, EU and other case law in this field, including the St Albans District Council case. IP Draughts has a great deal of sympathy with Gloster LJ’s comment, at paragraph 45 that:

…I am somewhat uncomfortable with a conclusion that the tangible/intangible distinction leads to a construction of “goods” that excludes the Software, which seems artificial in the modern age. However, I consider this to be justified given the commercial context and notwithstanding the superficial attraction of the respondent’s arguments, which I next consider.

After considering the arguments and case law in further detail, including the fact that the Consumer Rights Act 2015 introduced a new concept of supplying “digital content”, she reaches the following conclusion:

I conclude that the judge was wrong in law in holding that the Software, which was supplied to CA’s customers electronically and not on any tangible medium, constitutes “goods” within the meaning of Regulation 2(1). I would therefore allow the appeal on this issue.





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Filed under Databases, Intellectual Property, Licensing

Vacancies for IP Law Committee of Law Society

The Law Society of England and Wales is currently advertising vacancies for a number of its technical committees, including the Intellectual Property Law Committee (IPLC – IP Draughts is the current chairman).

The IPLC’s main role is to make submissions to government and other bodies on IP issues as they arise. Currently, as you might expect, Brexit is dominating our discussions. Recent activities have included:

  • active involvement in the lobbying over the UPC, which led to David Cameron securing the life science and chemistry part of the central division of the court for the UK
  • over a decade or more, initiating a public debate on the IP threats provisions of UK IP laws, resulting in a Law Commission report, a Bill, and eventually the Intellectual Property (Unjustified Threats) Act 2017. We were closely involved in the progress of the Bill and gave oral evidence to a House of Lords committee about it.
  • coordinating a note on Brexit and IP that the UK IP professions submitted to the IP minister just before Christmas last year

Next week,IP Draughts is due to meet the new IP Minister, along with representatives of other IP bodies, to discuss our priorities for Brexit.

The committee has a mixture of people in private practice and in-house, in London and elsewhere, and across different industry sectors and IP types, from technical patent specialists to entertainment and fashion industry practitioners. We are looking for good people with any relevant background.

Details on how to apply are set out in the documents to be found at the link above.

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