UCL FACULTY OF LAWS
Institute of Brand and Innovation Law

Institute of Brand and Innovation Law

News

Wednesday 15 November 2017
Record Numbers Attend IBIL 'Equivalents' Event

On 1st November, IBIL brought together an unrivalled panel of international judges with an attentive audience made up of around 700 IP academics and patent professionals, including patent judges, barristers, solicitors and patent attorneys. The topic of debate was the recent UK Supreme Court ruling in the patent infringement case: Actavis UK Ltd v. Eli Lilly Co [2017] UKSC 48.

Actavis v. Lilly addressed a long-standing, thorny issue in patent law. When faced with allegations that a patent is infringed, how much weight should be given to the actual language used in the claims which define the invention? Here, the European Patent Convention’s Protocol on interpretation requires courts to strike a balance between awarding “fair protection” to the patentee while securing “a reasonable degree of legal certainty for third parties” by taking “due account” of the equivalence of any variant adopted by the would-be infringer to an element specified in a claim. This weak attempt at harmonisation affords national courts across Europe latitude to treat ‘equivalents’ differently. Inevitably, conflicting outcomes result.

Until this summer, UK courts applied the Kirin-Amgen v. Hoechst test established by the House of Lords in 2004. This required terms in patent claims to be construed by asking: “what would the skilled person understand the patentee to mean by the language used in the claim?” Applying this approach, the High Court and Court of Appeal agreed that because Eli Lilly’s cancer treatment patent specified ‘pemetrexed disodium‘, it was not infringed by the Actavis variation which contained pemetrexed dipotassium, instead.

The UK Supreme Court, finding for the patentee, disagreed. To the surprise of many in the patent field, the Court concluded that the Kirin-Amgen approach was “wrong in principle.” By placing such emphasis on the language used, the test tipped too much towards legal certainty. It failed to take “due account” of equivalents, thereby denying patentees fair protection. A patent should cover immaterial equivalents which fall outside the ‘normal interpretation’ of the claim.

Acting as Chair, IBIL's Professor Sir Robin Jacob, posed pre-selected audience questions concerning the potential implications of this landmark decision to the eminent panel of:

– Lord Neuberger of Abbotsbury, Former President of the Supreme Court of the UK

– Lord Sumption, Justice of the Supreme Court of the UK

– Professor Dr. Peter Meier-Beck, Presiding Judge of the German Federal Court of Justice

– Judge Rian Kalden, Head of the IP Division, Court of Appeal, The Hague

– Judge Kate O’Malley, US Court of Appeals for the Federal Circuit

The event proved to be enlightening and good-humoured. Having discarded the established test, the Supreme Court judges on the panel went some way to allay the audience’s key concerns head-on, explaining why a new test was required to give proper effect to the European Patent Convention. As the ruling was clearly influenced by the approaches elsewhere which already apply a doctrine of equivalents, the judges on the panel from the USA, Germany and the Netherland were able to shed light on when and which ‘equivalents’ might now be caught. Their answers seemed to indicate that extension of protection to “equivalents” was likely to be the “exception” and not become the “rule”.

Watch the full video of the event here.

For a comprehensive report, read the IPKat Report Part 1 and Part 2.

Tuesday 7 November 2017
New Publication on The Public Interest in European Trade Mark Law

Dr Ilanah Fhima's latest article on The Public Interest in European Trade Mark Law has been published in Intellectual Property Quarterly.

Thursday 2 November 2017
Question the Trade Mark Judges

On 18th October, in a joint IBIL and MARQUES (the European Association of Trade Mark Owners) event, The Rt Hon Professor Sir Robin Jacob, posed a set of pre-selected questions from the audience to:

  • The Rt Hon Sir John Mummery (former Lord Justice of Appeal and is President of the Investigatory Powers Tribunal and member of the Court of Ecclesiastical Causes Reserved in the UK)
  • Amanda Michaels (Appointed Person)
  • David Keeling (Member of the Boards of Appeal at EPO and Former Member of the EUIPO Boards of Appeal)
  • Camille Lignieres (Judge, Tribunal de grande instance de Paris)

A recording of the event is now available here.

Wednesday 18 October 2017
Patents in Telecoms and the Internet of Things - Speakers and Key Topics Announced

The conference will be an unique gathering of industry, the judiciary and regulators from the US, Europe and Asia, organised by Professor Sir Robin Jacob (the Sir Hugh Laddie Chair of Intellectual Property at UCL Laws) and Professor Marty Adelman, Co-Director of the Dean Dinwoodey Center for Intellectual Property Studies of George Washington University’s Faculty of Law.

Key topics of the conference include:

  • Who should decide FRAND terms when parties cannot agree?
  • The Internet of Things I – Legal and Economic Licensing Issues
  • The Internet of Things II – Practical Licensing Issues
  • Competition and Policy Towards Standard Setting
  • Injunctions – Europe and the rest of the world
  • FRAND Disputes
  • Update on The Unitary Patent Court
  • Economists: Do They Have a Place?
  • The Telecoms Ecosystem
  • Patent Assertion Entities
  • Judges' Panel

This year's speakers include:

  • The Hon. Mr Justice Birss, High Court of England and Wales
  • Dr Klaus Grabinski, Judge of the German Federal Court of Justice
  • The Rt Hon Prof. Sir Robin Jacob UCL IBIL
  • The Hon. Kathleen O’Malley, Judge of the Court of Appeals of the Federal Circuit
  • The Hon. James Selna United States District Judge of the United States District Court for the Central District of California
  • Linda Biel Vice President, Business Development, AST
  • David Blonder Director, Legal Counsel, Regulatory and Privacy, Blackberry
  • Tina Chappell Associate General Council, Law & Policy Group, Intel Corporation
  • John Colgan Senior Litigation Counsel at Google
  • Jorge L. Contreras Associate Professor, SJ Quinney College of Law, University of Utah; Internet Engineering Task Force - Legal Counsel
  • Fabio Domanico, Economist, DG GROWTH, European Commision
  • The Hon. Theodore Essex Administrative Law Judge at the U.S. International Trade Commission
  • Steve Faraji Senior Manager of Patents Electrics / Electronics, Audi AG
  • Laurie Fitzgerald Principal, McKool Smith LLP
  • Prof. Dr. Heinz Goddar  European & German Patent and Trademark Attorney, Boehmert & Boehmert
  • Stephen Haber Senior Fellow of the Stanford Institute for Economic Policy Research at Stanford University
  • Dietrich Kamlah Partner, Taylor Wessing LLP (Munich)
  • David Kappos Cravath, Swaine & Moore LLP
  • David Killough Assistant General Counsel, Microsoft Corporation
  • Stephen Korniczky Sheppard Mullin LLP
  • Chip Lutton General Counsel and Head of Regulatory Affairs at Nest Labs
  • Monica Magnusson VP, IPR Policy, Ericsson
  • Taraneh Maghamé Senior Director of Wireless Programs & Corporate Development at VIA Licensing Corporation
  • Keith Mallinson Founder of WiseHabor
  • Alan Marco former Chief Economist at USPTO
  • James Marshall Partner, Taylor Wessing LLP
  • Noel Maurer Associate Professor of International Affairs and International Business, George Washington University
  • Luke McLeroy Vice President, Business Development at Avanci
  • Kerry Miller Head of IP and Standards, IP Regulatory Affairs at Nokia
  • Suzanne Munck Deputy Director and Chief Counsel for Intellectual Property at the Federal Trade Commission
  • Brian Napper Senior Managing Director at FTI Consulting
  • Damien Neven Professor of Economics at the Graduate Institute Geneva
  • Barry Nigro Deputy Assistant Attorney General United States Department of Justice
  • Gil Ohana Senior Director, Antitrust & Competition, Cisco Systems
  • Chryssoula Pentheroudakis Ph.D. Founder of IP VANGUARD with Justus Baron, Northwestern University
  • Will Plut President, Patent Profit International
  • Heinz Polsterer Standardisation & IPR Management, Deutsche Telekom
  • Randall Rader Founder of the Rader Group, International Arbitration of Complex Disputes
  • Pierre Regibeau Charles River Associates
  • Frank Reiner Vice Principle of Licensing, Internet of Things Solutions, InterDigital Communications
  • Alex Rogers Executive Vice President and President of the Technology Licensing Division at Qualcomm
  • Brian Scarpelli Senior Policy Counsel at ACT
  • Gregory Sidak Chairman of Criterion Economics
  • Alesch Staehelin Counsel at IBM
  • Nikolaus Thumm Senior Fellow at the European Commission
  • Cory Van Arsdale Chief Revenue Officer, Global Licensing, Intellectual Ventures
  • Dirk Weiler Chairman of the Board, ETSI
  • Tim Wilson Director, Patents, SAS Institute Inc.
  • Koenraad Wuyts Chief IP Officer at KPN

View the full programme and booking details

Tuesday 3 October 2017
IBIL PhD Scholarship - Apply Now for 2018.

IBIL is delighted to announce that the admission period is now open for all PhD applicants interested in the new IP scholarship, commencing in September 2018. The scholarship will fund one PhD student to undertake research in the field of intellectual property, and will provide a stipend of £18,000 per year for 3 years. Fees equivalent to the Home/EU rate are also covered. (The scholarship is open to international students as well. If successful, an international student would receive a discount on the international fees equivalent to the value of the Home/EU fees, and would need to cover the difference with their own funds).

All applicants to the UCL Laws PhD Programme in the field of intellectual property will be considered for the scholarship. The applications period runs until 24 November 2017. To put yourself forward for the scholarship, simply submit an application to the programme by following the admissions instructions on our admissions website (here).

For more information about the academic staff open to supervising PhD research, please click here, or email phd-law@ucl.ac.uk with any queries.

IBIL would like to thank its sponsors for their generosity, which has made this scholarship possible.

Thursday 28 September 2017
New Publication on Copyright Defences

Dr Ilanah Fhima's latest article, Fairness in Copyright Law: An Anglo-American Comparison, has been published in Santa Clara High Technology Law Journal.

Tuesday 8 August 2017
New Publication on Due Cause

Dr Ilanah Fhima's latest article on Due Cause in EU Trade Mark Law has been published in Journal of Intellectual Property Law & Practice.

Thursday 27 July 2017
Details of IBIL's Innovation Seminar Announced
: Equivalents: K = Na. Is the genie out of the bottle?

On 1st November 2017, UCL Faculty of Laws Institute of Brand and Innovation Law will bring together an unrivalled panel of European judges to discuss the Actavis UK Ltd v. Eli Lilly & Co [2017] UKSC 48 judgment from a range of perspectives.

Confirmed speakers include:

  • Professor Sir Robin Jacob, Sir Hugh Laddie Chair of Intellectual Property Law, UCL Faculty of Laws (Chair)
  • Lord Neuberger of Abbotsbury, President of the Supreme Court of the UK
  • Lord Sumption, Justice of the Supreme Court of the UK
  • Professor Lord Hoffmann, Queen Mary, University of London, former Lord of Appeal in Ordinary
  • Professor Dr. Peter Meier-Beck, Presiding Judge of the German Federal Court of Justice
  • Judge Rian Kalden, Head of the IP Division, Court of Appeal, The Hague.

Book your place online at: http://www.laws.ucl.ac.uk/event/equivalents/

Monday 17 July 2017
Details of International Conference Announced

IBIL and George Washington University's Faculty of Law announce their 3rd Conference on Patents in Telecoms and the Internet of Things. The conference, taking place on 9th-10th November, will be an unique gathering of industry, the judiciary and regulators from the US, Europe and Asia, organised by Professor Sir Robin Jacob (the Sir Hugh Laddie Chair of Intellectual Property at UCL Laws) and Professor Marty Adelman, Co-Director of the Dean Dinwoodey Center for Intellectual Property Studies of George Washington University’s Faculty of Law.

Information about the programme and how to book is now available on the conference website: here.

Thursday 6 July 2017
UCL Laws IP students celebrate graduation at Royal Festival Hall

Read the full story here

Tuesday 4 July 2017
Prof. Sir Robin Jacob Comments Comments on the UN High-level Panel Report on
Access to Medicines

BSLR Cover

The article appears in the forthcoming issue of Bio-Science Law Review. The UN High-level Panel Report is available to download here.

Wednesday 21 June 2017
9th Annual Sir Hugh Laddie Lecture - Towards a Global Copyright Law?

Delivered by
Shira Perlmutter
Chief Policy Officer and Director for International Affairs, United States Patent and Trademark Office

Mozart Image

The 9th Annual Sir Hugh Laddie lecture has now been made available to watch on demand, here.

Wednesday 17 June 2017
On Trial: Mozart and Other Pirates

Mozart Image

This popular lecture has now been made available to watch on demand, here.

Tuesday 13 June 2017
New IBIL PhD Scholarship for 2018/19

IBIL is delighted to announce that it is offering a new scholarship in 2018/19. The scholarship will fund one PhD student to undertake research in the field of Intellectual Property, and will provide a stipend of £18,000 per year for 3 years. Fees at the Home/EU rate are covered (the scholarship is open to international students as well; if successful, an international student would receive a discount on the international fees equivalent to the value of the Home/EU fees, and would need to cover the difference with their own funds).

All applicants to the UCL Laws PhD Programme in the field of Intellectual Property will be considered for the scholarship. The applications period runs from September to November each year - to put yourself forward for the scholarship, simply submit an application to the programme by following the admissions instructions on our admissions website (here).

For more information about the academic staff open to supervising PhD research, please click here, or email phd-law@ucl.ac.uk with any queries.

IBIL would like to thank its sponsors for their generosity, which has made this scholarship possible.

Tuesday 21 March 2017
IBIL Joins Twitter!

Follow us for news, events and IP musings: @ucl_ibil.

Monday 20 March 2017
UCL's Intellectual Property Moot Team Success

We are very pleased to announce that UCL’s Intellectual Property moot team (Irene Kuek, Pak Hei Li and Andrew Stahl) reached the semi-finals in the oral rounds of the Oxford International Intellectual Property Law Moot Competition, which took place at the University of Oxford between 16th and 18th March.

UCL was successful in the preliminary rounds which whittled the original 24 teams to just eight, and beat off stiff competition from the Otago team to reach the final four, along with Oxford, Toronto and Bucerius - the ultimate winners.

The moot is one of the most prestigious intellectual property law mooting competitions attracting applications from teams from many distinguished law schools. This year 59 teams from around the world submitted written arguments this year (from which 24 were selected). The team, with coaches Professor Sir Robin Jacob, Sir Hugh Laddie Chair of Intellectual Property Law, Daniela Simone, Lecturer in Law at UCL Laws, and last year’s Semi-Finalists Jennifer Dixon and Kyra Nezami.

Wednesday 8 February 2017
Copyright Law and Freedom of Speech

free speech

Copyright law often thought to be designed to embody an appropriate balance between the need to allow copyright owners control over uses of copyright works (thereby providing an incentive for creativity) and the need to preserve some access to those works for socially valuable uses. Increasingly, however, copyright law has been subject to the criticism that it no longer strikes the right balance between control and access.

This seminar investigated the interaction between copyright law and the protection of freedom of speech from a number of different angles:

  • Judge M Margaret McKeown (US Court of Appeal, 9th Circuit) discussed the view from the US – considering, in particular, Google v Garcia 786 F 3d 733 (9th Cir. 2015) and the trend for litigants to try to use copyright law to remedy personal harms or to protect privacy interests.
  • Jonathan Griffiths (Professor of Intellectual Property Law, Queen Mary University of London) considered the impact of recent jurisprudence from the Court of Justice of the European Union and suggested that fundamental rights, such as freedom of expression, will have an increased significance upon the interpretation of copyright exceptions.
  • Julia Reda (Member of the European Parliament, Pirate Party) and John Halton (Assistant General Council, Financial Times) debated whether more (i.e. the proposed ancillary press publishers right) or less copyright protection was required to reach the right balance.

The Event was chaired by Professor Sir Robin Jacob (UCL IBIL).

Click here for the Programme details.

Click here for a social media highlight of the event by UCL Laws LLM student, Patricio González (@mrpatrick).

Monday 30 January 2017
UCL's Intellectual Property Moot Team Success

We are very pleased to announce that UCL’s Intellectual Property moot team (Irene Kuek, Pak Hei Li and Andrew Stahl) has been selected to participate in the oral rounds of the Oxford International Intellectual Property Law Moot Competition which will take place at the University of Oxford in March.

The moot is one of the most prestigious intellectual property law mooting competitions attracting applications from teams from many distinguished law schools. This year 59 teams from around the world submitted written arguments this year (from which 24 were selected). The team, with coaches Professor Sir Robin Jacob, Sir Hugh Laddie Chair of Intellectual Property Law, Daniela Simone, Lecturer in Law at UCL Laws, and last year’s Semi-Finalists Jennifer Dixon and Kyra Nezami, will be attending the competition, which takes place 16 to 18 March 2017.

Monday 23 January - Tuesday 24 January 2017
IBIL co-host a groundbreaking two-day event on privacy

IBIL, in conjunction with UCL Faculty of Laws, organised a two-day course on privacy called Privacy Online and Offline: The Citizen, the Personal and the Public Interest’ on Monday 23 and Tuesday 24 January 2017.

This event was an opportunity for lawyers and policymakers to consider the state of the current privacy landscape after the Investigatory Powers Bill was passed by Parliament. The Investigatory Powers Bill has been condemned by judges, QCs, law professors, senior lawyers and computer scientists and supported by a 100,000 signature petition of objection. In December its legality was called into question by the CJEU.

The speakers, who include internationally respected lawyers from both the UK and the USA, former government employees, the current director of Europol and experts in international data protection, security, computer science and cryptography, considered a vast array of topics such as freedom of expression, surveillance, national security and the law and ethics of leaking.

Keynote speaker, Rob Wainwright, Director of Europe’s Law Enforcement Agency, EUROPOL, began by outlining Europol’s remit and trans-national work. After a chilling tour of the dark side of the Internet he discussed the tension between privacy and law enforcement. Rob Wainwright was optimistic at society’s ability to develop a set of legal instruments that deliver privacy in a balanced and proportional way. He welcomed the improved openness in the law enforcement community post-Snowden and argued that there is a special responsibility in respect of data held about private citizens to improve trust between citizen and state.

Rob Wainwright saluted the powers and independence, for example, of the Europol’s data protection body that has access to 100% of Europol’s data. Revealing he had been described as “a despotic agent of digital repression” he firmly advocated online privacy as a fundamental right, and did not support the wholesale banning of encryption or any requirement for back door vulnerabilities. While welcoming improved co-operation between tech companies and his agency he was of the view that there was room for improvement beyond the limited circumstances where the interests of law enforcement and the technology companies were aligned.

Friday 16 December 2016
Professor Mark Anderson,
Visiting Professor at UCL Faculty of Laws, gave evidence to the House of Commons Science and Technology Committee on 14 December 2016.

Professor Anderson produced his evidence with Daniel Nelki of Wellcome Trust. The evidence focuses on their investigation of “Management of IP and Technology Transfer” and includes Professor Anderson’s suggestions for:

  • A short course on IP in all undergraduate degree courses.
  • A new Royal Academy of Innovation, which would provide a vehicle for interactions with government and for raising the status of technology transfer managers, and academic scientists who mix university research with involvement in industry.
  • Each university to have an experienced business executive who understands IP on the Vice Chancellor’s senior management team.

Watch the video here.

Monday 31 October 2016
Professor Sir Robin Jacob
gave evidence to the House of Lords Special Public Bill Committee at the Intellectual Property (Unjustified Threats) Bill on 17 October 2016.

Read the full evidence here.

Watch the video here.

Wednesday 22 June 2016
Annual Sir Hugh Laddie Lecture
on Patents and Populism

delivered by The Hon Dr Annabelle Bennett AC SC, Federal Court of Australia

About Justice Bennett:
The Honourable Justice Annabelle Bennett AO is a former Judge of the Federal Court of Australia and an additional judge of the Supreme Court of the ACT, having previously practised as a Senior Counsel specialising in intellectual property.

Justice Bennett is President of the Copyright Tribunal of Australia, Chair of the National Health and Medical Research Council, a Presidential Member of the Administrative Appeals Tribunal; Arbitrator of the Court of Arbitration for Sport; Member of Chief Executive Women; and Member of the Advisory Board of the Faculty of Law at The Chinese University of Hong Kong . She was appointed an Officer of the Order of Australia in 2005.

Justice Bennett completed her BSc (Hons) and PhD in Bioche mistry (the latter in the Faculty of Vet Science) at Sydney University and later obtained her law degree at the University of New South Wales. Her interest in biological sciences has led to membership of the Genetic Manipulation Advisory Committee, the Biotechnology Task Force, the Pharmacy Board of New South Wales and the Eastern Sydney Area Health Service.

Her Honour has also served as Pro-Chancellor of the Australian National University. In addition she has been a member of the Gene Patenting Advisory Committee of the Australian Law Reform Commission; member of the Advisory Group for the Dean of Medicine at The University of Sydney; Trustee of the Centennial Park and Moore Park Trust; Director of the Sydney Childr en’s Hospital Foundation; President of the Australian Academy of Forensic Sciences; President of Chief E xecutive Women; as well as a member of the Reference Group for the APEC Women Leaders’ Network Meeting 2007 and the Head of Delegation to the APEC Women Leaders’ Network Meeting 2008 in Peru. In July 2011 her Honour was awarded the honorary degree of Doctor of the University by the ANU