Friday Fantasies

Getting ready for a little weekend getaway

Another working week is approaching its end. Before logging off for the weekend, take however a look at the usual pot-pourri of Kat-news below and, as always, do not forget to check our regularly updated Events page!

Events

4iP Council Webinar - IP and Startups: What, Why, How (24 October 2024)

On 24 October, 4IP Council is hosting a webinar with Prof. Dr. Martin A. Bader to help European SMEs and startups understand the strategic importance of intellectual property. For further information and to register, click here.

UK Trade Marks Act 1994 at 30 - Going Forward, Looking Backwards (7 November 2024)

On 7 November, UCL is hosting a panel discussion on the first 30 years of the UK Trade Marks Act 1994. For further information and to register, click here.

Royal Society of Chemistry Law Group - Intellectual Property Law Seminar 2024 (26 November 2024)

The Royal Society of Chemistry Law Group is hosting its annual Intellectual Property Law Seminar in London on 26 November. For further information and to register, click here.

Event Report: The UPC One Year On: What Do We Know Now?

Former InternKat Eleanor Wilson (Mishcon de Reya LLP) attended the recently held IPSoc event, focusing on the first year of the UPC. Here is what she has to say:

On Wednesday 25 September an impressive panel of leading patent practitioners made up of Gregory Bacon (Bristows), Paul England (Taylor Wessing), Tom Oliver (Powell Gilbert) and Darren Smyth (EIP) addressed a packed room of IPSoc members about the lessons learned, challenges and opportunities for IP professionals in the UK from the first year of operation of the UPC. The outlook of the panel was very optimistic: the UPC has had a strong start, with prospects of building on that success in the future, and – despite the UK not being a UPC contracting state – there is a role for UK lawyers and patent attorneys in UPC proceedings.

UPC judgments to date were praised for their quality, clarity and readability. A point of interest for the panel was the relationship between UPC jurisprudence and case law from the EPO. The panel observed that, to date, the majority of UPC validity analysis has tended to follow the EPO's approach, with an important exception in relation to the test for inventive step. While the UPC has not adopted the EPO's "problem/solution" test wholesale, its judges have also been careful not to seek to set out an alternative code for obviousness. This could, of course, change with an authoritative UPC Court of Appeal merits decision in the future.

The panel noted that the German national courts' approach to obviousness is similar to that in the UK and involves a multifactorial analysis. Given the prominence of German divisions and judges, such arguments may be reflected in UPC decision-making in the form of a holistic list of potentially relevant factors rather than a structured formula. In respect of other aspects of validity analysis, the panel suggested that it seems unlikely that the UPC would diverge from the EPO just for the sake of it.

A number of challenges arising from UPC procedure were highlighted: the time for developing case theory, preparing evidence, collating expert reports and drafting submissions is far more compressed than the timeframes that UK practitioners may be used to. This also raises client management difficulties that junior practitioners should be alive to where they may be asking clients to review and sign-off on lengthy submissions and rejoinders with a tight turnaround.

The panel also noted the difficulty of juggling caseloads where substantive cases are not stayed for procedural appeals (typically a point of principle from the UPC Rules of Procedure Preamble setting out an aspiration that proceedings shall be conducted in a way that normally allows a final first instance hearing to take place within one year – which has seemingly been elevated to a hard and fast cut-off). There were also anecdotally some teething problems with the procedure for service at the UPC, where proceedings are served by the court rather than the parties. This can cause frustration, and lead to staggered related proceedings due to the different dates of service depending on the location of the parties served.

On the whole, this engaging panel session was imbued with a sense of positivity with attendees keen to be involved with the UPC and to play a part in its development in the future. With one eye on the deferred Irish referendum and the potential changes that this could deliver, this IPSoc event marked an important opportunity for junior practitioners to learn about the role they may be able to play before the UPC, whether as part of mixed teams, co-counsel or co-ordinating international patent litigation.