Category Archives: Intellectual Property

Covid 19 – an open letter from the UK IP Minister

Well, perhaps. This article suggests that the UK’s Intellectual Property Minister, Amanda Solloway MP, should write an open letter on the subject of infringement of IP, in relation to developing and making urgently-needed products to deal with the Covid 19 pandemic. Draft text of a letter, written by IP Draughts for her consideration, appears below.

This article is prompted by several conversations and exchanges of emails that IP Draughts has had in recent days. It seems that many people (students, scientists, business people and others) have risen to the challenge of developing, making and distributing products that are urgently needed by the National Health Service and the nation. Examples that IP Draughts has been made aware of in recent days include:

  • oxygen concentrators
  • mechanical ventilators
  • 3D printing of facemasks and airflow dividers
  • apps to predict whether someone is infected
  • apps to track the development of the virus across the population
  • apps to provide reassurance to people in isolation

A concern that has been raised more than once is whether these activities may infringe the IP of others, and whether anything can be done at a national or international level to remove this risk. This concern has probably been stimulated partly by the news from Italy that someone has been making a ventilator valve using a 3D printer, for use in hospitals. Apparently they had asked the original manufacturer for design drawings and had been refused and threatened with an IP infringement suit.

The facts of this story have subsequently been disputed, but they raise an understandable concern. Some people in the IP community feel that reassurance needs to be given to people doing their best in a national emergency, that they are unlikely to be sued.

But any such reassurance is ultimately only someone’s opinion. No matter how unlikely you think it that a reputable company would trash their reputation by suing someone who is trying to save lives, there is nothing to stop them from doing so. Or is there?

There are provisions in UK IP legislation (and, IP Draughts suspects but doesn’t know, in the laws of other countries) that enable the UK government to override IP laws.

For example, section 55 of the Patents Act 1977 provides:

…any government department and any person authorised in writing by a government department may, for the services of the Crown and in accordance with this section, do any of the following acts in the United Kingdom in relation to a patented invention without the consent of the proprietor of the patent…

The section then lists various activities that would normally constitute patent infringement.

Section 59 of the same Act provides an alternative route. It includes the following provisions:

During any period of emergency within the meaning of this section the powers exercisable in relation to an invention by a government department or a person authorised by a government department under section 55 above shall include power to use the invention for any purpose which appears to the department necessary or expedient;

(a) for the efficient prosecution of any war in which Her Majesty may be engaged;

(b) for the maintenance of supplies and services essential to the life of the community;

(c) for securing a sufficiency of supplies and services essential to the well-being of the community; …

Similar provisions apply to certain other types of IP. For example, in relation to unregistered design right, section 240 of the Copyright, Designs and Patents Act 1988 includes the following provisions:

(1) A government department, or a person authorised in writing by a government department, may without the licence of the design right owner—

(a) do anything for the purpose of supplying articles for the services of the Crown, or

(b) dispose of articles no longer required for the services of the Crown;

and nothing done by virtue of this section infringes the design right.

(2) References in this Part to “the services of the Crown” are to—

(a) the defence of the realm,

(b) foreign defence purposes, and

(c) health service purposes…

On a slightly different topic, where IP has been generated under a contract with the government, the IP may be owned by the contractor but subject to a contractual equivalent to the Crown user provisions mentioned above, to allow the government to make use of the IP and authorise others to do so. For example, IP Draughts has seen funding agreements from the Department of Health that include such provisions.

To implement provisions of this kind, a government minister is required to take a formal decision, and in the case of section 59 of the Patents Act 1977 an Order in Council is required to declare a “period of emergency”.

Thus, the government has several levers of power to ensure that people responding to the Covid 19 pandemic are not sued for IP infringement.

With this in mind, and with a view to encouraging people to do what they can to help the NHS and the nation through the present crisis, IP Draughts proposes the following draft statement, or open letter, from the relevant government minister. Given that Amanda Solloway is both the IP Minister and the Minister for Science, Research and Innovation, she would seem ideally placed to issue such a statement.

For the avoidance of doubt, IP Draughts waives any IP rights that he may have in the following statement!

IP Draughts’ draft statement for the IP Minister to issue:

Covid 19 and the use of intellectual property (IP) for the public benefit

It has been inspirational to see the public responding so generously to appeals for help during the current pandemic. Within the science and technology communities, we have seen hundreds of initiatives to help solve shortages of vital equipment such as ventilators, face masks and hand sanitiser. There have also been initiatives to improve our understanding of the spread of the disease, including diagnostic tools and tracker apps. On behalf of the UK government, I would like to express our strong support and appreciation for initiatives of this kind.

Some of the people involved in these and similar initiatives have expressed concerns that they may be sued for infringement of third party intellectual property. For example, a scientific technique may be patented, or a product may make use of existing designs that are protected by design rights.

It would be extremely concerning if anyone who is trying to develop, make or supply products to help with the current emergency were to be threatened or actually sued for IP infringement.

The government would like to remind IP owners that it has statutory powers known as Crown user provisions, that enable the government to use, and authorise others to use, IP in the national interest. The government will not hesitate to implement those powers where appropriate.

However, the government hopes that it will not be necessary to devote time and national resources to implementing such laws. It trusts that IP owners will voluntarily cooperate to ensure that urgent needs are met (e.g. by voluntarily supplying designs and blue prints of their products where required), and refrain from asserting IP rights against those who are trying to meet those needs.

 

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Short-term politics override IP national interest

What can’t be cured must be endured.

The UK government announced yesterday that it would not be seeking UK involvement in the Unified Patent Convention (UPC). This news is dismaying to many IP professionals in the UK. The issue seems likely to be CJEU jurisdiction.

There is a residual CJEU jurisdiction under the proposed convention, very limited but nevertheless there. It is no greater, and probably considerably less than, the involvement of the CJEU as contemplated by the Withdrawal Agreement and the Political Declaration on the UK’s future relationship with the EU, which were agreed by a recent Conservative UK government.

The only issue the present government seems to care about is establishing the principles on which it is prepared to cooperate with the EU. Those principles reject outright any CJEU involvement. Obscure arrangements over international patent law are treated as minor collateral damage. F*** business, Boris Johnson said memorably during the Brexit process, and this decision confirms that he meant it.

It counts for nothing that:

  • the UPC took decades to agree
  • the UK led much of the work done to achieve it, and has also led much of the work in selecting and training its judges
  • participating in it is in the UK’s national interest
  • a former conservative Prime Minister, David Cameron, negotiated to get part of the court to be located in Britain, and the government signed a lease of premises for the court in central London
  • the CJEU issue has been known for several years. In 2017, Douglas Carswell, then the UK Independence Party’s sole MP, tabled an Early Day Motion urging the government not to ratify the UPCA. The motion attracted just one signatory, Carswell himself
  • despite the CJEU issue, a conservative UK government ratified the Unified Patent Court Agreement less than two years ago; the instrument of ratification was signed by one Boris Johnson as Foreign Secretary
  • at the time of ratification, the UK government declared that “The Agreement on the Unified Patent Court (UPC) is an international treaty. The international court will have jurisdiction over patent disputes across its contracting states” and “Ratification of the UPCA will keep the UK at the forefront of influencing the international system”

But all of this counts for nought because the UK electorate recently voted in a government determined to “get Brexit done”.

IP Draughts is not suggesting that the UPC or the UK’s participation in it was otherwise a done deal. There are problems, including the case before the German constitutional court, and whether and how the UK as a non-EU member, would be allowed to participate. But the hopes were that these issues could be resolved in due course.

This issue, like many in the field of IP law, has been on hold while the UK government decided what it wanted to do. Back in 2017, IP Draughts led the preparation of a short note to government on priorities for IP following Brexit, which was signed jointly by the leaders of various IP professions in the UK. The note can be found here, and it was discussed on this blog at the time, here. The note identified 5 priorities; item 2 was continuing UK participation in the UPC.

Since then, there has largely been radio silence from the UK government on its IP priorities, though it did recently say that it would not be following the EU Directive on copyright in the digital single market.

The latest news about the UPC is sickening. IP Draughts has done a quick search to see if Keir Starmer has expressed any views on IP policy, but was unable to find anything.

 

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TT4 has landed

Waiting for IP Draughts when he arrived home last night were two cardboard boxes containing his and Victor’s complimentary copies of the fourth edition of Technology Transfer (TT4).

He is very pleasantly surprised to see the book in print, a mere fortnight after the proofs went to the typesetters. His past experience has been a lead time of 2-3 months. Just-in-time manufacturing has finally reached the publishing industry!

IP Draughts’ longstanding colleague and former trainee, Victor Warner, has been responsible for updating most of TT4, and he has done a very good job. Much has changed in the laws affecting IP transactions since the third edition was published a decade ago. (It is nearly 25 years since the first edition was published, then a paperback under the Butterworths imprint, and then called Technology: The Law of Exploitation and Transfer.)

First edition, 1996

As with previous editions, the book considers law and practice issues through the lens of particular types of commercial agreement, particularly IP licences and R&D collaborations. This is still a relatively unusual way to write a serious law book – many law tomes are focused more on the perspective of the courts, or of academic enquiry, rather than on the commercial transaction.

The book is available direct from the publishers here, or from Amazon UK here.

Similar approach to teaching?

IP Draughts would like to see commercial law taught this way in leading law schools – teaching legal principles from the perspective of real transactions, rather than the other way around. If this had been done when he first studied law at university he would have been far more engaged in the subject. He felt that university law favoured people with very good memories and a capacity for learning dry principles, divorced from their practical context. He doesn’t dismiss those abilities, but it is not the way his mind works, and he suspects there may be many others who share his views, and his way of learning and thinking.

He would like to put this idea into practice, possibly at UCL, but it really needs some sponsorship to set up an institute that would also provide a setting for debate between practitioners, academics and judges – similar to the Institute of Brand and Innovation Law, but with more of a transactional focus. Please let IP Draughts know if you think your firm or organisation might be prepared to sponsor such a venture.

 

 

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Hopeless student IP disputes

Complaints between PhD students and their supervisors seem to be on the rise. IP Draughts has been instructed on several in recent years, both on behalf of the student and on behalf of the supervisor and university (but not all at the same time!)

Memories of these cases came flooding back when IP Draughts read the recently-published court judgment in the case of Ukoumunne v The University of Birmingham & Ors [2020] EWHC 184. This was a preliminary decision in the Intellectual Property Enterprise Court (a low-cost court for smaller disputes) on whether to strike out the former student’s claims against various supervisors, the university and an academic publisher.

Nearly all of the claims were struck out, and those that remained were in the “last chance saloon” – the claimant, who was not legally represented, was required to be more specific as to what she was claiming.

An interesting feature of this case for IP Draughts is the discussion of the difference between plagiarism (copying ideas, not attributing them, etc, in breach of academic norms) and infringement of copyright (typically copying lines of text rather than underlying ideas, though occasionally the organisation and structure of a work can be the subject of a copyright claim). In IP Draught’s experience, academics are sometimes unclear about the differences between plagiarism and copyright infringement. Plagiarism claims may be referred to an academic committee (eg if there is a claim of research misconduct) – this happened in the present case and the claims were dismissed.

Copyright claims are ultimately for a court of law to decide. The claimant in this case was unable to persuade the judge that she had an arguable case on copyright infringement. This claim was struck out, as were claims of negligence, racial harrassment, bullying and sex discrimination by the university .

The claimant also made allegations of breach of confidence in relation to her thesis, and breach of contract (seemingly the terms on which she became a PhD student, though this was unclear to the judge). On these allegations, the judge gave the claimant one last chance to improve her case (clarity of argument and supporting documents), failing which these claims would also be struck out.

IP Draughts wonders whether the claimant really thought she had a good legal case, or was just hoping for the best, and determined to pursue her dispute. He also wonders whether any attempt was made to negotiate a settlement or refer the matter to mediation. Sometimes, people just want to be heard, and there may be less expensive ways of enabling that to happen than going to court. The money saved might be better spent on a settlement with the student than on court fees and lawyers.

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