IP In The News – 29 June 2015

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Summary: Our regular update on developments in the world of IP, this week featuring the Unified Patents Court Agreement ratification, the Court of Appeal ruling on interpreting a claim in a patent, the changes in EU trade mark law, the harmonisation of the EU copyright reforms, a patent dispute relating to a drug which had three authorised uses and the US Court of Appeal case where the applicant did not have a bona fide intention to use a trade mark.

UK and the Unified Patents Court


The Government has announced that, whilst there is still work to be done before the UK can ratify the Unified Patents Court Agreement, it intends to complete the UK’s “domestic preparations” by Spring 2016 i.e. before any Referendum on the UK’s membership of the EU in 2017.

Claims and patents


The Court of Appeal has ruled that the prosecution history of a patent should not be used when interpreting a claim in a patent (the Actavis v Lilly case).

Changes in the law for trade marks


The proposals have now been published for changes to be made to EU trade mark law though the Trade Marks Directive and Regulation. These include procedural changes, reductions in certain fees, the removal of the need for trade marks to be capable of being represented graphically, EU-wide certification marks, and happily, the re-naming of OHIM to the European Union Intellectual Property Office (CTMs become EUTMs). Assuming the changes are adopted in the next few months, EU countries will then have 3 years to implement them into their national laws, with the Regulation coming into effect 90 days after its publication.

Buildings, sculptures and photographs


There is currently an exception under UK law which allows you to take a photograph of a building or a sculpture permanently situated in a public place, without infringing copyright in the building or sculpture. One of the proposals to be considered by the European Parliament in July, in the form of an amendment to the draft Report on EU copyright reforms prepared by Julia Reda (MEP but also interestingly a member of the Pirate Party) is the extent to which this exception should be made compulsory in all EU countries, or dropped altogether.

Subjective intentions and patents


In one of several court decisions in a patent dispute relating to a drug which had three authorised uses (the Warner-Lambert v Actavis litigation), the Court of Appeal ruled that use of the word “for” in a patent describing what the drug was to be used for meant what the manufacturer of the drug knew or could reasonably foresee would be the ultimate intentional use of the drug. It was not necessary to show the manufacturer had that specific intention himself. The issue arose because the patent still protected the drug for use for pain, but the patentee suspected that a generic version of it would actually be used to treat epilepsy, for example.

Bona fide intention and trade mark


The US Court of Appeal for the Federal Circuits has upheld a decision to refuse a trade mark application for iWatch on the ground that the applicant did not have a bona fide intention to use it. The Court concluded that the applicant was merely seeking to reserve a right in the mark, and did not have a bona fide intention to use the mark in commerce.

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