An easier route to pan-European relief for online design infringement?

Half of the world’s population is now online. That’s around 4 billion people worldwide with access to the internet.  Little wonder then that intellectual property rights holders are having to take active steps to respond to the infringement challenges that this multi-territorial digital marketplace presents.

Occasionally, governments respond directly to curb infringement online. For example, on 1 October new legislation came into force in the UK increasing the custodial sentence for criminal online copyright infringement offences from 2 to 10 years, matching the sentence for the same offences with physical goods. Also within the last few days, Europe’s highest civil court, the European Court of Justice (ECJ), handed down a judgment which could make it easier for owners of Community registered designs to tackle online infringement across multiple EU member states.

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Criminal Finances Act 2017 – Commercial Agreements May Need Review and Revision

The Criminal Finances Act 2017 (the “Act”) has just come into force in the UK. The Act introduces a new corporate offence of failing to prevent the criminal facilitation of criminal tax evasion. More information on the Act, and this new offence, can be found in this briefing.

The Act will have an impact on commercial transactions. This is in consequence of the broad definition of ‘Associated Persons’.  This definition includes not just employees but third party contractors.  Therefore, a company or partnership entering into a commercial agreement will have criminal liability if the counterparty is an agent or service provider (for example, a consultant, sub-contractor or provider of outsourced services) and the company/partnership fails to take reasonable steps to prevent them assisting another person to evade tax or evading tax themselves.  The official sanction is an unlimited fine but corporates falling foul of the new offence are likely to experience knock-on regulatory, insurance and reputational issues.  Companies and partnerships will, therefore, need to amend their contracts with third party contractors to include anti-evasion facilitation terms.

For advice on the drafting implications, please feel free to call Andrew Wilkinson.


More Changes to the EU Trade Mark Regime

Back on 23 March 2016,  the first round of reforms to the Community Trade Mark regime was implemented.   Amongst other changes, the Office for Harmonization in the Internal Market (OHIM) became the ‘European Union Intellectual Property Office’ (EUIPO) and the Community Trade Mark (CTM) was renamed the ‘European Union Trade Mark’ (EUTM).   These changes were introduced by the “Amending Regulation” which amended the Community Trade Mark Regulation (now known as the European Union Trade Mark Regulation or ‘EUTMR’). For more information on these changes, please see our blog post here.

Not all the provisions of the Amending Regulation came into force last year. The remaining provisions came into force on 1 October 2017, together with the “Implementing Regulation” and the “Delegated Regulation”.  Collectively, these Regulations introduce a second round of reforms to the EU trade mark regime.  Some of the key reforms are described below.

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Federal Circuit Rejects Requirement That Patent Owners Have the Burden to Prove the Patentability of Amended Claims Proffered During Inter Partes Review Proceedings

The Federal Circuit has issued its long-awaited ruling in Aqua Products, Inc. v. Matal, No. 2015-1177, with the majority of the en banc court agreeing that the requirement by the Patent Trial and Appeal Board (PTAB) that patent owners have the burden to prove the patentability of amended claims proffered during inter partes review (IPR) proceedings could not stand.  The PTAB’s decision  denying the patent owner (Aqua)’s proposed amended claims was therefore vacated and remanded to the PTAB to “assess[] the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner.”  Continue Reading

ITC Refuses To Allow Limited Usage Of Protected Material In European Patent Proceedings; Calls For Granular Examination Of Public Interest Issues

The U.S. International Trade Commission (USITC) has decided to review in part an Administrative Law Judge (ALJ)’s finding of violation of Section 337 based on patent infringement in Certain Semiconductor Devices, Semiconductor Device Packages, and Products Containing Same, Inv. No. 337-TA-1010 (Sept. 29, 2017).  While review of patent issues is not unusual, the Notice of Review contains two, relatively atypical pronouncements that are worthy of note. Continue Reading

AFCP 2.0 and QPIDS Pilot Programs Extended by USTPO

The U.S. Patent and Trademark Office (USPTO) has announced that the After-Final Consideration Pilot 2.0 (AFCP 2.0) and Quick Path Information Disclosure Statement (QPIDS) pilot programs have been extended to September 30, 2018. AFCP 2.0 and QPIDS are programs intended to further the goals of compact prosecution and foster increased collaboration between examiners and stakeholders.

The AFCP 2.0 program provides additional time for examiners to search and consider responses after a final rejection, and also allows examiners to use the additional time to schedule and conduct an interview to discuss the results of their search with the applicants. The QPIDS pilot program eliminates the requirement that a request for continued examination (RCE) be processed with an information disclosure statement (IDS) that is filed after payment of the issue fee in order for the IDS to be considered by the examiner.

The extension of AFCP 2.0 and QPIDS likely indicates that stakeholders and examiners are making sufficient use of these programs to warrant another year of the pilots. The additional time provided under AFCP 2.0 helps both examiners and applicants by setting up the possibility of an interview to discuss ways to place the application in condition for allowance. QPIDS is clearly advantageous to applicants because, assuming that the examiner determines that no new item of information in the IDS necessitates reopening prosecution, applicants save the complete cost of an RCE and the application continues to allowance.

UK: Unregistered Design Right – Clarity or Confusion?

In the UK, designs of three dimensional items (which are not artistic works) are protected against copying by a separate intellectual property right known as unregistered design right (UDR).  For the purposes of an infringement action, it is critical to know which features of a design are protected by UDR and which are not.  However, this is not always a straightforward question.  In the recent case of Neptune (Europe) Limited v Devol Kitchens Limited, the High Court attempted to interpret the law in this area.  Arguably, the ruling has resulted in more confusion than clarity.  Via this link, you can read our discussion of the ruling and its implications for those seeking to protect their designs.

UK Data Protection Bill Published

In line with the EU General Data Protection Regulation (GDPR), the UK has now published a Data Protection Bill, which is intended to “make our data protection laws fit for the digital age…” The Overview Factsheet for this Bill may be found here.  This legislative initiative parallels that of several other EU Member States that have introduced similar bills to implement the GDPR.

What does this mean for data protection laws in the UK and the impending GDPR, which is due to come into force throughout the EU on 25 May 2018?

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ICO’s consultation on the draft GDPR guidance on contracts and liabilities between controllers and processors

On 13 September 2017, the UK Information Commissioner’s Office (ICO) published draft guidance on contracts and liabilities between controllers and processors under the GDPR.

The draft guidance does not add substantial detail to the provisions of the GDPR but is a useful reminder of the key points. For example, it highlights the requirement for a written contract between the controller and any of its processors and summarises the provisions that the GDPR states must be included in the contract, specifically: Continue Reading

European Commission issues a new EU Cybersecurity Strategy

On 13 September 2017, the President of the European Commission, Jean Claude Juncker, announced during his State of the Union address the intention to propose new legislative measures that will boost the cybersecurity resilience within the EU. Following the President’s speech, the European Commission published the following initiatives:

Overall, these initiatives seek to remedy the current fragmentation of Member States’ policies and cybersecurity approaches by increasing the capabilities, preparedness and available resources for Member States and businesses.

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