As noted in a recent post IPcopy attended the Westminster Legal Policy Review seminar on 16 October. This post provides a summary of some of the issues raised and discussed at the seminar. For a more detailed review of Neil Feinson’s (IPO) discussion about UPC implementation please see IPcopy’s post here.

Professor Johanna Gibson, Herchel Smith Professor of IP Law at Queen Mary, University of London discussed the issue of patent trolls and compared and contrasted the situation in the UK and the US. Professor Gibson noted that the definition of a “troll” on Wikipedia could be regarded to read onto any patent holder and Universities and innovative companies such as ARM could be regarded as trolls under such a definition.

The recent discussions in the US that this subject has attracted along with the various proposals for tackling the problem were mentioned including Senator Leahy’s proposals such as “bad faith demand letters”.

As an aside the most surprising news of the seminar was introduced at this point (at least to this IPcopywriter): Senator Leahy is a massive Batman fan (a “Batfan” perhaps) to the extent that he’s had brief appearances in two of the Christopher Nolan Batman films including a speaking part in the “The Dark Knight” (Senator Leahy’s Wiki picture here. Senator Leahy, actor, scene from the Dark Knight discussed here!).

Professor Gibson suggested that infringement exceptions in the UK Patents Act for private non-commercial acts and the groundless threats provisions provided two strong defences against trolls in the UK (and by extension in Europe). IPcopy notes that the loser pays philosophy probably is relevant as well….

Professor Gibson suggested that the expanded UK Patents Opinion service was effectively a re-examination of a patent. Given the potential financial implications on the UKIPO if they revoke a patent following a negative opinion and that revocation is overturned in court then I’m not convinced the opinions service will have quite so much weight. It may help in negotiations perhaps.

Finally, Professor Gibson ended with a brief look at the UPC. This was referred to as the blockbuster of 2014/2015 though there’s a long way to go. Professor Gibson suggested that once the court comes in there may be a period of uncertainty and increased costs.

His Honour Judge Hacon of the Intellectual Property Court was up next and highlighted that the IPEC (and its previous incarnation the Patents County Court) really began to take off following the new court rules that came into effect in 2010.

There is apparently going to be an IPO study into the IPEC published soon. According to Judge Hacon this should be “interesting for the Judge of the Court and nerds”. We’ll obviously be looking out for this….

Judge Hacon noted that people who are not members of the Bar do well at the IPEC. IPcopy wonders if this isn’t a good argument that EPAs will do well at the UPC without needing to sit an overly long and complicated additional qualification certificate….

Judge Hacon also noted that one of the main litigants in the IPEC are litigants-in-person and the majority of such are photographers taking on newspapers. Cases in the IPEC have gone up in recent years but there’s not been a corresponding drop in High Court cases which may suggest that more people are getting access to justice.

There were also two group panel discussions which will be (very briefly) mentioned below.

Panel 1 (Dominic Adair, Bristows; Matt McBrien, BAE Systems; John Mitchell, SME Innovation Alliance; David Secher, PraxisUnico; John Grant, Trevor Baylis Brands)

Dominic Adair asked what more the IPEC could do to support efficient dispute resolution. Dominic noted that he advises clients that cases in the IPEC take 8-12 months whereas the High Court is 12-18 months. Could cases be processed more quickly? Perhaps by using deputy judges? Could there be a court appointed expert so that the IPEC could do away with other experts?

Matt McBrien noted that confidence in the patents system is important to BAE Systems and as such he was glad that the proposed superfast system has fallen through as he thought this would have increased the possibility of invalid patents being granted.

John Mitchell suggested that the present UK court system exposes SMEs to “vultures” and does nothing to help SMEs. He suggested that the UK is crying out for a new system for SMEs and for others that fosters innovation.

David Secher looked at the patent system from the point of view of Universities and suggested that the most important issues in the patent system for universities were: simplicity; cost effectiveness; and grace periods.

John Grant referred to a “Banking on IP” report. He also suggested that lone inventors struggle with the patent system.

In the Q&A that followed this session a representative from the Federation of Small Businesses suggested that they don’t understand what their patent attorneys write. Having slogged his way through some, what we might characterise as, “interestingly written” prior art in the past this IPcopywriter understands this view, though he might respectfully suggest that if you don’t get the service you want from your patent attorney you should raise this in a direct discussion. Shopping around for another attorney is also always another possibility.

Panel 2 (James Nurton, Managing IP; Tim Frain, Nokia; Mark Ridgway, Allen & Overy; Vicki Salmon, Litigation Committee, CIPA)

James Nurton was first up and referred to a recent Managing IP article that highlighted some outstanding concerns regarding the unitary patent and UPC:

1. Costs/fees. The fact that so little is known about the fees is frustrating for potential users. James suggested that many companies interviewed during the writing of their article suggested that ideally they would have wanted 2 years notice of the level of fees. Renewal fees were regarded as of most concern. James noted at this point that the EPO President had suggested that annual fees are not the main element of patent strategies but that in any case the fee levels should be known mid 2015. This statement says a lot to IPcopy’s mind about the level of commercial understanding at the EPO. It is also noted that the mid 2015 date does not tally with Neil Feinson’s comments in his talk (he suggested late 2015).
2. Judges. A new court with new judges and the possibility that the court might be more attractive to less experienced judges than to those established in the UK, Germany etc.
3. Rules of Procedure. These are still not fixed. The 17^th draft has recently appeared.
4. The Wild East. The possibility of a rogue division of the UPC being very patentee friendly was raised. James noted that it might be a little unfair to suggest that such a division would arise in the East of Europe and suggested it could be anywhere.
5. Known Unknowns. There’s a list of issues that are currently unresolved, e.g. the start date, the impact of the Spanish challenge, who will use the system and the input on national offices.

Tim Frain raised a couple of points that he thinks need to be addressed still: the Opt-out and Fees.

On the issue of the opt-out it was suggested that the legal effect of the opt-out is still of great concern to users. This is despite comments from Neil Feinson earlier in the seminar suggesting that the political understanding of the opt-out regime is clear. Tim asked if the UK should ratify the UPC Agreement while this issue is outstanding.

On the subject of fees Tim raised the idea of a capped fee for batches of patents.

Mark Ridgway presented an overview of the recent Allen & Overy survey into the unitary patent package. In the Q&A that followed I asked how many SMEs were part of this benchmarking survey. Apparently the survey was conducted against the size of company’s patent portfolio rather than company size. The smallest portfolio size considered was apparently 50 patents. We’ve mentioned this before but it’s not immediately clear to IPcopy how relevant this survey is given that the UPC is meant to provide access to justice for all and in particular to SMEs.

Vicki Salmon was up last and pointed out that the UPC will not allow litigants-in-person unlike the UK courts. Patent attorney representation in the UPC was therefore viewed as important and Vicki wondered what will happen to EPO Opposition practice when the UPC comes in. Vicki also wondered why EPAs need to know (under the European Patent Litigation Certificate) all about private law in different countries or SPC law when this would not be necessarily be expected of lawyers.

Mark Richardson 6 November 2014