The Rt Hon Professor Sir Robin Jacob,teaches at the European Patent Academy in Krakow
Sir Robin Jacob taught at the European Patent Academy this week, in Krakow, Poland to an audience consisting of Polish and Serbian Judges. Sir Robin presided over a mock trial which was recorded for future use as part of the European Patent Academy’s online training scheme.
The Rt Hon Professor Sir Robin Jacob, attended the 16th European Patent Judges' Symposium in Dublin
Hosted by the Irish Committee for Judicial Studies, in conjunction with the European Patent Office, the symposium focused on the future European Patent Court and the protection of biotechnology inventions.
The biennial event provides a forum for judges specialising in patent law and litigation to come together with the aim of: "Fosterisng a harmonisation of case law through the establishment of informal channels for dialogue since there is no common European patent court to ensure a uniform interpretation of law."
Topics on the table this year included injunctive relief, disclaimers and the ongoing EU projects – the unitary patent and the Unified Patent Court.
A Conversation with Chief Judge Randall R. Rader and Professor Sir Robin Jacob
A day before delivering the 2012 Sir Hugh Laddie lecture, Randall Rader, Chief Judge, US Court of Appeal for the Federal Circuits, met with The Rt Hon Professor Sir Robin Jacob for an informal IBIL event attended by some 80 young IP professionals. The two 'conversationalists', both Appeal Judges, spoke on a range of IP topics including jury trial equivalents, damages calculations, when injunctions should be held, and the future of intellectual property law in 25 years' time. It was a chance for the audience to access two authoritative IP experts, spanning the US and UK jurisdictions, in a rare and freewheeling discussion.
Patents Stop People Doing Things? So Why Are They a Good Thing?
The public debate about patents is old and never stops. Here is what Jeremy Bentham said: 'So long as men are governed by unexamined prejudices and led away by sounds, it is natural for them to regard Patents as unfavourable to the encrease of wealth. So soon as they obtain clear ideas to annex to these sounds, it is impossible for them to do otherwise than recognize them to be favourable to that encrease: and that in so essential a degree, that the security given to property can not be said to be compleat without it'. This UCL Lunch Hour Lecture given on 6 March by The Rt. Hon. Professor Sir Robin Jacob put the debate in modern context and showed why Bentham was right.
Trade Marks and the Internet - US and European Views
What amounts to a trade mark infringement on the Internet is a matter of vital commercial importance. Both the question of whether there is an infringement and who should be liable are subjects of wide debate and argument. These questions are increasingly coming before the courts on both sides of the Atlantic. Is a common approach possible or necessary?
At an incisive event hosted by UCL’s Institute of Brand and Innovation Law on 15 February, Professor Barton Beebe (NYU) and Alexander von Muhlendahl (Bardehle Pagenberg, former Vice-President of OHIM) discussed the current state of trade mark law in the US and Europe, and where it may be heading. The comparative simplicity of the US approach compared with the complexity and uncertainty of the European position was made apparent for all. The event was chaired by The Hon Mr Justice Arnold who has given some of the key judgments in this area. Both speakers have kindly agreed to provide versions of their papers for publication.
Brüstle v Greenpeace: Has the European Court seriously damaged stem cell research?
The Court of Justice of the European Union recently published its decision in Brüstle v Greenpeace, declaring that a process which involves removal of a stem cell from a human embryo at the blastocyst stage, entailing the destruction of that embryo, cannot be patented. There is a widespread view that the Court's decision provides a significant bar to patentability in this area.
A multidisciplinary event on 1 February, hosted jointly by UCL’s Institute of Brand and Innovation Law (IBIL) and the UCL Centre for Stem Cells and Regenerative Medicine, explored the legal limits of this decision. Dr Justin Turner QC, 3 New Square Chambers, Professor Pete Coffey, UCL Centre for Stem Cells and Regenerative Medicine and Professor Jo Wolff, UCL Department of Philosophy examined the practical and ethical implications of this ruling. The event was chaired by The Rt Hon Professor Sir Robin Jacob, Sir Hugh Laddie Chair of Intellectual Property Law and Co-Director of IBIL at UCL Laws.
Institute for Brand and Innovation Law: Conor v Angiotech on Appeal
Conor v Angiotech was a real case in which the House of Lords reversed concurrent findings of obviousness by the High Court and the Court of Appeal. The House of Lords agreed with the Dutch court which had decided the parallel case in Holland. A sold out UCL Laws event on 23 November revisited this important patent law case and related arguments.
The event took the form of a moot between Lord Hoffmann (l) and the Rt. Hon. Professor Sir Robin Jacob of UCL Laws (r), who raised fundamental questions about the law of obviousness. A neutral introduction to the problem was followed by legal argument from the two 'counsel' (who themselves had given the lead judgments in the Court of Appeal and House of Lords respectively). The 'Judge', Justice Rothstein of the Canadian Supreme Court (pictured centre), flew in to London especially for the event, and acted as an 'international' arbitrator. Members of the audience were invited to join in the debate, as well as the equally lively drinks reception afterwards.
IBIL/Marques Event: Questions for Trade Mark Judges
On 16 November, UCL IBIL, together with MARQUES, the Association of European Trade Mark Owners, hosted ‘Questions for the Trade Mark Judges’. The event provided an opportunity for stakeholders to quiz those who make the decisions which affect them and their clients. Topics included how to simplify the trade mark system, whether registries should be bound by their own decisions, whether Advocate Generals add anything of value to CJEU decisions and whether trade mark law needs a parody defence.
In the hot seat were representatives from the major trade mark decision makers in the UK and Europe, namely, the Hon. Mr Justice Arnold (High Court), Gordon Humphreys, (member of 2nd, 3rd and 5th Boards of Appeal, OHIM), Amanda Michaels (Appointed Person) and Allan James (Senior Hearing Officer and Head of Trade Mark Tribunal, UK IPO). The Rt. Hon. Professor Sir Robin Jacob (former Court of Appeal Judge and Hugh Laddie Professor of Intellectual Property) took the role of chair cum agent provocateur.
Christophers Stothers named Young IP lawyer of the year
Dr Christopher Stothers, Visiting Lecturer in Intellectual Property at UCL Laws and member of the Institute of Brand and Innovation Law has won the title of Young IP lawyer or executive of the year at Intellectual Property Magazine's 2011 Awards ceremony, which took place on 16 November. The award recognises his work as a solicitor-advocate in England and Wales and a counsel in Arnold & Porter (UK) LLP’s intellectual property litigation group in London. He concentrates his practice on high value cross-border patent litigation and antitrust and competition litigation.
The Institute of Brand and Innovation Law was pleased to welcome members of SIPA, the Shanghai Intellectual Property Association, to UCL Laws on Tuesday 15 November. Discussion topics included the Intellectual Property system in the UK, European Patent Law and IBIL’s research focus, and there was an enthusiastic question and answer session at the end of the event.
Sir Robin Jacob Gives Testimony to Hargreaves Review of Intellectual Property
The Rt Hon Professor Sir Robin Jacob, Sir Hugh Laddie Chair of Intellectual Property Law at UCL and Co-Director of the Institute of Brand and Innovation Law, gave testimony on 18 October to the HOC Business, Innovation and Skills Committee's second evidence session on the Hargreaves Review of Intellectual Property. The Business, Innovation and Skills Committee is appointed by the House of Commons to examine the administration, expenditure and policy of the Department for Business, Innovation and Skills (BIS) and its associated public bodies, including Ofcom and the Office of Fair Trading (OFT).
Dr Ilanah Simon Fhima taught on the International Trademarks course of the Loyola Law School, Los Angeles London Summer International IP Institute 2011. She also delivered a talk on trade mark dilution to a lively audience at the Israeli Academic Centre of Law and Business' intellectual property summer school in Oxford.
2011 Sir Hugh Laddie Lecture
The third annual Sir Hugh Laddie Lecture, generously supported by Taylor Wessing
LLP, took place on 22 June 2011 with 350 guests in attendance. Mrs Justice Macken, judge of the Irish Supreme Court, and former judge of the Court of Justice of the
European Union gave a talk entitled 'Killing the Goose that Laid
the Golden Egg: Too Many Trademarks?'.
The Annual Sir Hugh Laddie Lecture commemorates the life of the late
Professor Sir Hugh Laddie QC and his contribution to the UCL Faculty of
Laws and the Intellectual Property community.
Lord Justice Mummery and Justice Macken
Guests listening to the lecture
Sir Robin Jacob Conference Attendances
Professor Sir Robin Jacob started at UCL in May and was immediately involved in a hectic programme of conferences. He attended the Annual meeting of the American Intellectual Property Lawyers Association (AIRPLA) and gave the keynote lunchtime speech on 15th May (watch on Youtube) and the International Trademark Association (INTA) conference, sitting on a panel on 17th May together with Prof J Thomas McCarthy, Miles J Alexander, Kilpatrick Townsend & Stockton LLP, Professor Eric Goldman, Santa Clara School of Law (United States).
Later in the same week, he went to the First Petersberg International Trademark Association Legal Forum, St.Petersburg, Russia, May 19-21, 2011, a conference sponsored by the Russian Government and attended by both the President and the Minister for Justice. He gave a speech on the theme of the rule of law.
In June he attended the meeting of the FICP in Brussels, as well as teaching on the judges' training course in Helsinki organised by the the European Patent Office. Sir Robin continues to be actively involved in discussions for the proposed European Unitary patent and patent court.
David Kappos, Director of US Patent & Trademark Office: first UK address
On 4 April 2011, UCL’s Institute for Brand and Innovation Law hosted over 200 early risers for an all-star intellectual property panel and breakfast discussion. The event, organised by the Directors Roundtable Institute with the co-operation of AIPPI UK (the International Association for the Protection of Intellectual Property), was billed as ‘A Dialogue with David Kappos, Director of the US Patent & Trademark Office’. It was Mr Kappos’s first UK public address. He was introduced by the Rt Hon Sir Robin Jacob, holder of the new Sir Hugh Laddie Chair of Intellectual Property at UCL Laws, who also joined in the debate.
Sir Robin Jacob of UCL Laws (left) with David Kappos, Director of the US Patent & Trademark Office
David Kappos outlined his main topic for discussion, the harmonisation of international patent law, a topic that was continued by fellow speakers Richard Vary, Director of European Litigation for Nokia, and Avril Martindale, Partner at law firm Freshfields.
Global harmonisation of patents, Mr Kappos noted, would be difficult with diverse legal traditions and languages. However, he felt it a goal worth pursuing. The US has recently started the ball rolling by making domestic improvements to its patent laws. Accordingly, key issues with the US system are in the process of being remedied. Mr Kappos noted that the passage of the new America Invents Act (a.k.a. the Patent Reform Act 2011) was looking promising, with a signing expected in summer 2011. Accordingly, he said, the US is now at the starting line for a global push towards harmonisation on patent matters.
Mr Kappos remarked that it was “bizarre” that intellectual property (IP) law is stuck using nineteenth-century models in an age of international transactions and an international marketplace. He explained that he was in Europe to discuss harmonisation as a global topic, with a view to enhancing global commerce rather than impeding it. The time for harmonisation, he said, is now.
Speakers Richard Vary and Avril Martindale agreed the need to co-operate. This theme was once more stressed by the Rt Hon Sir Robin Jacob, who noted that there were still many differences between the world’s main patent systems, but that the differences were slowly getting fewer. However, he felt a more global view was still needed, and that there might be things to learn from the US. He noted dryly that just because something is in US legislation does not necessarily mean it is wrong…
All in all, the take-home message was clear: harmonisation is on the agenda, and the US wants to make renewed moves on a global patent standard. Whether this will be enough to command reform on a global scale remains to be seen, but it’s certainly a step in the right direction.
Sir Robin Jacob to lead Intellectual Property Law at UCL
The case for outstanding Intellectual Property research and learning at UCL just got stronger. The Rt Hon. Sir Robin Jacob has been named the first holder of the Sir Hugh Laddie Chair in Intellectual Property (IP) Law at UCL. The Laddie Chair, funded by charitable contributions, is part of a globally-recognised centre of excellence in UCL’s Faculty of Laws, offering direct value to academics, practitioners and industry alike.
In this new role, Sir Robin will progress the legacy and outstanding vision of Sir Hugh Laddie, a former UCL professor and perhaps the leading judge and academic in the field of Intellectual Property (IP) Law. He also takes on the Directorship of the Institute of Brand and Innovation Law (IBIL). His responsibilities will include:
fostering the strength of UCL in London as a centre for intellectual property practice and scholarship
serving as a powerful force for building bridges between academics, the judiciary, policy-makers, the professions and users of the IP system
helping to shape a multi-disciplinary research agenda on intellectual property, within UCL and worldwide.
He will also manage a successful seminar series on cutting-edge IP issues. Speaking of the appointment, Sir Robin Jacob said:
“My intention is to build on what Hugh started: to make UCL one of the key world centres for practical IP law research and teaching. I hope to encourage much collaboration between IBIL and other key centres both in the UK and abroad. There so much to be done. I can hardly wait to start.”
Sir Robin takes-up his post with UCL Laws in Spring 2011. He hopes to continue sitting part-time in the Court of Appeal on IP cases.
Dr Matthew Fisher has joined UCL Laws and IBIL as a senior lecturer from
Bristol. Matt is the author of Fundamentals of Patent Law: Interpretation and Scope of Protection (Hart, 2007), which won the Inner
Temple Young Author's Book Prize and will be teaching on our Technology
and IP and LLB Industrial and Intellectual Property courses.
LLM Student Intellectual Property Dissertation Published
Dissertations by the following LLM students have been published in leading intellectual property journals:
Lisa Logan (LLM candidate 2009) - 'The emperor's new clothes? The way forward: TV format protection under unfair competition law in the United States, United Kingdom and France: Parts 1 & 2 Entertainment Law Review, Vol.20, Issues 2 &3 Aldo de Landa (LLM, 2008) - 'Personality Rights in the United States and European Union: Is Vanna Too Much? Is Irvine Not Enough' Entertainment Law Review, Vol.20, Issue 7
Ilanah Fhima speakers on Trade Mark Dilution
Dr Ilanah Simon Fhima presented her research on the fame standard for qualifying for trade mark dilution at the 2009 IP Scholars Conference in New York (Yeshiva University, 6-7 August 2009) and the Society of Legal Scholars Conference (Keele, 7-10 September 2009). This research forms part of a book she is working on for Oxford University Press about trade mark dilution in the United States and European Union.
Inaugural Sir Hugh Laddie Lecture delivered by Lord Hoffmann
The Inaugural Sir Hugh Laddie Lecture was delivered by Lord Hoffmann on 16 June on the Functions of a Trade Mark: Sir Hugh Laddie and the European Court of Justice. The lecture was attended by around 350 IP lawyers from the UK and Europe as well as many High Court Judges, Law Lords and Sir Hugh's family.
In his lecture Lord Hoffmann, who recently retired as a Lord of Appeal in Ordinary (Law Lord), reflected on the contribution made to European trade mark law by the late Sir Hugh Laddie. In surveying Sir Hugh's leading cases, including Wagamama, Davidoff I, Arsenal and Boehringer Ingelheim, Lord Hoffmann focused on Sir Hugh's belief that the key function of a trade mark is to act as a badge of origin. Lord Hoffmann concluded with the prediction that European trade mark lawyers may yet come to adopt Sir Hugh's approach.
The event also saw the launch of an appeal of £1.5 million for the Sir Hugh Laddie Chair of Intellectual Property Law. Great warmth was expressed by the audience on the announcement by UCL’s President & Provost, Professor Malcolm Grant CBE, of a significant donation to the Fund of £150,000 by Sir Maurice Hatter. Major donations have also been received from Herbert Smith LLP (£20,000) and the IP Education Trust (£17,000). The Chair will ensure that Sir Hugh’s name will forever be associated with world class legal thinking.
Dr Ilanah Simon Fhima on US Trade Mark Dilution Dr Ilanah Simon Fhima gave a presentation about United States trade mark dilution at the International Trademark Association’s round table entitled ‘The Protection of Well-Known Marks after the L'Oreal AG Opinion and Intel’. The event took place on 24 March 2009 at the London office of patent and trade mark attorneys Boult Wade Tenant.
Ilanah Simon Fhima, Co-Director of IBIL, is a lecturer. Ilanah completed her PhD as a Herchel Smith Research Scholar at the Intellectual Property Research Institute of Queen Mary University of London, and held a position at Brunel University before coming to UCL. Ilanah is deputy editor of the European Trade Mark Reports and serves on the editorial board of the European Intellectual Property Review. She is also co-founder and a contributor to the IPKat intellectual property weblog (www.ipkat.com). Her research focuses trade mark law. She is particularly interested in infringement issues and the influence of European law on intellectual property law. She has particular research experience in comparative trade mark law (especially with relation to the United States) and trade mark dilution, the subject of her doctoral thesis.
IBIL welcomes Thai law student ambassadors. On 19 March 2008, members of IBIL welcomed Miss Chutinan Chutima and Miss Phatamol Phisitbuntoon, two Thai fourth-year law students. The students were in the UK on a British Council-sponsored visit. They won the title of Thai student ambassadors after competing in a rigorous essay and mooting competiton on intellectual property themes.
2008 UCL team reaches quarter-finals.
Congratulations to the UCL team in the 6 th Annual Oxford International Intellectual Property Moot 2008 (http://www.oiprc.ox.ac.uk/moot.html): Lisa Chiarelli (LLB, 3 rd year), Ross Allan (LLM) and the reserve, Annsley Ward (LLM). The team, who were competing in Oxford against twenty-three teams that made it to the oral stage of the moot, reached the quarter-finals.
IBIL launched at Inaugural Seminar
The legal regulation of comparative advertising, the prospects for a single patent covering all EU states and whether repatenting known substances for alternative uses causes more harm than good were among the themes discussed at a seminar on 3 June 2008 to launch of UCLs new Institute of Brand and Innovation Law (IBIL). Over 300 practitioners, academics and government representatives attended the event.
Speakers and sessions at the launch event, chaired by Lord Neuberger of Abbotsbury, included:
· ‘A boom with no Bubble? – the “O2 Holdings” case and comparative advertising,’ Geoffrey Hobbs QC, Barrister, One Essex Court Chambers;
· ‘A Community Patent, the ePLa or nothing? – a view from the negotiating table,’ Robin Stout, Head of EU Policy, the UK Intellectual Property Office;
· ‘Claims limited by use – more harm than good? – the judgment in Actavis and the decision in Mobil/friction reducing additive,’ The Rt. Hon. Lord Justice Jacob;
· Copyright harmonisation: the winners and the losers – an examination of the direction of EU harmonisation in the copyright field,’ Dr Tilman Lüeder, Head of Copyright and Knowledge-based Economy Unit, DG Internal Market, European Commission. Download the launch brochure from this event.