Conference call CIPA: planning for the UPC

As ever, the unitary patent and the UK’s preparation for its impending launch were high on the agenda. The conference, held in October, heard from the UK’s IP minister, Lord Younger, on the appointment of a new IP adviser to the government, and from the UK IP Office (IPO) about arrangements for the patent and the associated Unified Patent Court.

Away from patents, a topic which generated lively discussion on the conference’s opening day was the continuing debate surrounding 3D printing, which lawyers agreed would put the world of IP into “uncharted waters”.

Although basic rights can apply to the concept of 3D printing, such as a trademark on the brand of printer or a patent for its working method, there has been increasing speculation as to whether further rules will apply should the printers enter mainstream society.

Among the concerns is whether sanctions will be available if individuals manufacture protected products or designs for personal use.

Quentyn Taylor, director of information security at Canon Europe, asked how far the problem could stretch.

“Exactly how much, and to what extent, people are going to print is unclear,” Taylor said.

He added that, although the technology was “some way off”, it was not beyond the realms of possibility for people to use a 3D printer to manufacture replica products, potentially causing a legal minefield.

The discussion was then opened up to the floor for further consideration with questions including who would be liable for infringements, the manufacturer or the user, and to what extent.

“It's unlikely that someone who manufactures and then sells a product will be found to be infringing,” said David Knight, partner at Field Fisher Waterhouse LLP in London.

“It’s likely that certain communities will have access to printers via a hub. The question is will the hub act rather like an Internet service provider, churning things out until the equivalent of a takedown notice is received?

“We are in uncharted waters, similar to what was seen with the Internet and its relationship with music and videos, which took off very quickly and took a while to settle down. Iwould expect that to be repeated in the 3D printing world.”

Unified Patent Court: the UK’s position

For the remainder of the conference discussions turned largely to patents and, specifically, the Unified Patent Court.

Neil Feinson, director of international policy at the IPO, was invited to speak on the morning of the second day to provide a rundown of the UK’s position on the Unified Patent Court and to shed some light on a proposed timescale for its implementation.

“We have to ensure that the UK’s voice is a leading one,” Feinson told delegates.

“If there is going to be a Unitary Patent and a Unified Patent Court it must provide high quality and reliable decisions and be accessible and affordable. We are adamant that the interests of UK users must be heard.”

Admitting that the IPO was on a “tight schedule”, Feinson said the UK still hoped to have its London-based court, one of three main divisions for the Unified Patent Court, operational by 2015.

“There was a time when I was extremely sceptical as to whether that would happen but I am a bit more optimistic now. We are making reasonable progress.”

Feinson was quizzed by lawyers on the mysteries surrounding the Unified Patent Court, most notably, costs.

“As far as renewal fees are concerned, it’s hard to say. It is both a technical and political discussion for the European Patent Office. I am not optimistic that a decision will be made this side of December 2014,” Feinson said.

"The risk of bearing the costs of litigation would be a detterent against the filing of lawsuits."

Delegates were also keen to focus on whether implementation of the Unified Patent Court could produce a surge in the numbers of non-practising entities (NPEs), currently making a name for themselves in the US, descending on European shores.

Nicola Dagg, partner at Allen & Overy LLP in London, told delegates there were some aspects of the Unified Patent Court framework which could create a potentially attractive environment for NPEs, sometimes referred to as ‘patent trolls’.

“If an injunction were obtained it would cover the 25 member states, which is a very powerful tool in itself,” Dagg said.

However, she added that there were also elements of the negotiations which could deter “troll-type litigation”, including Article 69 of the Unified Patent Court Agreement.

Article 69, which is also in force in the UK, stipulates that legal costs must be met by the unsuccessful party.

“The risk of bearing the costs of litigation would be a deterrent against the filing of lawsuits,” Dagg said, adding that the law was one of the key reasons why the UK has had far less troll-type litigation than the US.

“It’s good news that there is a similar rule for the Unified Patent Court, which may yet act as a deterrent,” Dagg added.