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As part of the Israel Desks International Legal Guide 2017, Dani Kramer has provided some top tips to Israeli firms’ developing their patent strategy.

Israeli companies naturally see the U.S. as their number one priority when seeking overseas patent protection for their technology. However, Europe and China, the two other world economics of similar size, have some considerable differences in local patent practice, so an IP strategy primarily focused on the U.S might well lead to missed opportunities in these other major markets.

Dani’s article outlines the key differences to consider when protecting and enforcing IP in the U.S., China and Europe, including costs, type of protection available and enforcement. To read the article in full please click here. 

Dani Kramer heads up our Israel Practice. For further information please contact Dani at [email protected], or +44 207 830 0000.

We teamed up with Insider Media as we were keen to understand the value that businesses in the North West place on their Intellectual Property (IP), and the role that it plays in  protecting their brand.

The results have revealed that many businesses regularly create new brands,  and recognise that they possess IP. However we found it surprising that very little actively protect, enforce or commercialise their IP, and more worryingly, less than 20% of respondents have a comprehensive IP policy in place. Please click on the link below to read the results of the survey, as well as our key findings.  

Insider survey screenshot

With the UK election over, attention in the world of patents can turn back to the ratification process for the Unified Patent Agreement. The Chairman of the UPC Preparatory Committee has released a statement indicating that he is hopeful that the sunrise period of the UPC might start in early 2018 and the UPC might be brought into effect in Spring 2018, but the timing is reliant on ratification progress in the signatory countries.

In the UK, the legislative process to ratify the UPC has been resumed with the order to bring the Protocol on Privileges and Immunities being laid before parliament, allowing it to start the process of being considered by committees in the House of Commons and the House of Lord. This process is not expected to be complete until at least Autumn 2017.

However, while it is not unreasonable to hope that the UK ratification process might be complete in time to meet the new timetable, a recent court action in Germany has called into question whether German ratification might face significant delays. We may see further revisions to the timetable before this chapter in the harmonisation of European patent law is brought to a conclusion.

If you have any questions about the UPC please speak to your attorney at Mathys & Squire or contact Caroline Warren at [email protected]. 

 

The London Mayor has announced ambitious plans to make London’s transport system zero emissions by 2050, a shift away from polluting vehicles being key part of the strategy to make London a greener, healthier city to live in. As part of his strategy, Sadiq Khan has introduced an additional £10 pollution charge on the most polluting of vehicles as of October and has called on the government to incentivise a diesel scrappage scheme.

Environmentalists, and others, believe that these schemes should be rolled out nationwide to protect other areas from the same level of pollution. But where will this leave the UK’s car manufacturing industry, and indeed those car owners who may be captured by such schemes?

Despite fears in the industry regarding the weak pound and what Brexit will entail, the UK car industry remains the country’s largest manufacturing export sector with a national supply chain and a presence in every UK region. The government is being urged to boost funding for the UK manufacturing industry to ensure that companies remain in the UK despite its exit from the European Union.

There is no getting away from the fact that for the economy the country needs to keep these big manufacturers within the UK. If they leave, the financial repercussions and job losses will be disastrous.

However, the rolling out of new and more efficient vehicles across commercial and domestic transport will take time, not least due to the amounts of capital needed to fund replacements.

So, what is one of the solutions in the meantime? – Funding green technology to reduce diesel emissions.

The United Kingdom is indisputably a country of technological innovation. The solutions needed to ‘clean up’ the toxic air, already exist locally and the government should engage with local businesses to source technologies capable of minimising the number of harmful by-products being pumped out. One example is reducing the amounts of harmful exhaust particulates from diesel engines using green solvent, dimethyl carbonate (DMC), which is non-toxic, VOC exempt (already approved for commercial use), biodegradable and environmentally friendly.

Green Lizard Technologies, a client of intellectual property firm, Mathys & Squire has recently launched an innovative new process which uses DMC to eliminate 80 to 90% of exhaust particulates from conventional diesel engines without the need to modify the engine. DMC itself is a well-known solvent and has been approved for use in Europe for a number of years already. Its use in diesel engines would help eliminate health issues associated with diesel engine fumes and solve one of London, and indeed the UK’s key challenges without a need for changing engines.

We worked closely alongside the team at Green Lizard Technologies to help identify and patent key areas of technology and chemical compounds in their ground-breaking process.

“By further investment in key science areas in universities and their spin-outs, as well as providing funding to those that innovate to provide green solutions; the government could turn a bad situation in to a good one not only in terms of the motor industry, but in improved health of the population. The advantages to the UK economy would also be great, by funding local businesses to help develop such products, the economy would be boosted both by using the technology locally and developing it for export to other countries.”

While Sadiq Khan quite rightly has big plans for the capital’s air quality, we can only hope that the current government does the right thing to safeguard the strength of the UK’s manufacturing industry. Investing today can only lead to a healthy more prosperous economy in the future.

This year we were excited to be a part of the Stationers’ Company Innovation Excellence Awards 2017,  which aim to recognise ‘the key role the Communications and Content industries play in the UK economy, highlights outstanding innovation in the sector and offers the opportunity to share best practice’. 

Winners of the individual categories were:

We were pleased to attend the Awards ceremony, and provided a prize to the winner of each category of free consultation time with our team. 

Universities and Commercial Enterprises working closer together.

Comment from partner Chris Hamer at Mathys & Squire in relation to the general election outcome.

“The general election results have come as a shock to the UK. It is clear that this result will cause continued uncertainty for the country, especially with regards to Brexit, economic and domestic social issues.

The Conservative government had promised increased funding for research and development and university spin outs, as well as for a general increase in the number of scientists in the UK.  Theresa May herself had put an emphasis on ‘science and innovation’.  We urge the newly formed Conservative government, now with support from the DUP, to continue with this promise and to look at how best universities should use some of this funding and resource to engage with commercial enterprises and businesses. 

The potential increase in funding presents exciting opportunities but also, we believe, commercial challenges.  Whilst research and fundamental knowledge are a priority for universities receiving funding, there is a need for academics to increase their commercial focus, i.e. how might their innovation be applied in the real world and where does it fit commercially?  Whilst university technology transfer offices have made a start, we hope to see a greater focus on entrepreneurs and businesses (themselves benefiting from tax incentives) working with academics on how best to focus and commercialise their innovations and maximise the potential for products and services, forming the basis of many spin outs.

Whilst extra funding and resource in these areas are certainly needed, there is a need to also focus energy on developing a more balanced working relationship between the two.”

Margaret Arnott discusses counterfeiting in the latest edition of Intercontinental Finance & Law Magazine.

As technology and logistic networks across the globe become increasingly sophisticated, so does the business of counterfeit goods.

So, what can governments and the courts do to safeguard the consumer goods industry, and what businesses can do to protect themselves against infringments?

To read the article please click on the link below:

http://view.intellimag.com/go/icfm-issue144-7/

 

In December 2016 Nokia asserted patents relating to displays, user interfaces, software, antenna, chipsets and video coding against Apple across multiple jurisdictions. Apple retaliated by initiating an antitrust lawsuit in the US, as well as removing a number of Nokia ‘health products’ from their retail stores.

Initiating multiple patent infringement actions simultaneously is a common tactic to swamp defendants in court procedure, making a worldwide settlement the easy way out; however Apple are perhaps one of the few companies that would have had the resources and inclination to contest numerous lawsuits simultaneously – as the Apple v Samsung patent saga had shown.

However, while Samsung and Apple are of course fierce commercial competitors, Nokia’s share of the mobile telecoms market is now negligible in comparison. In response to this decline, Nokia have altered their business model so to leverage the large patent portfolio developed during their historic dominance of this market. This portfolio was significantly bolstered by the acquisition of Siemens’ share of NSN in 2013, and Alcatel-Lucent in 2016.

This shift in business model has led some commentators (and indeed Apple themselves in court documents) to label Nokia a ‘patent troll’ – an entity which is able to issue spurious patent infringement actions without fear of retaliatory lawsuits significantly impacting other business activities.

In this regard, the antitrust suit filed by Apple was the logical response – any precedent which would limit Nokia’s ability to extract licence revenue would have been highly damaging to Nokia’s nascent business model (in particular with respect to standard-essential patents).

Whilst the terms of the agreement and the sums changing hands have not been released, I expect that Apple would have negotiated a favourable deal – with Nokia happy to oblige so that they can parade Apple as a licensee when requesting royalties from the rest of the industry.

It remains to be seen what Nokia’s next move will be, but no doubt they would have been emboldened by this settlement without having to go through the pain of protracted litigation. Apple on the other hand are probably relieved to put this battle behind them just as the war with Qualcomm seems to warming up.

For the rest of the industry, there will be some disappointment that this dispute has fizzled out without setting a precedent, and this in turn will likely only add to the animosity towards patent licensing entities demanding high royalty rates for patents of dubious value. In this regard patent attorneys are uniquely placed to advise on both issues of patent ‘essentiality’ and to interpret what licence rates are truly ‘reasonable’ – two factors which can assist even the smallest entities to apply some pressure of their own back on the likes of Nokia.

We are delighted to announce that a number of attorneys and partners have been promoted. The nine attorney promotion round includes four women representing 44.44% of the total made up.

Amongst the partners promoted, Jane Clark, Chris Hamer, Alan MacDougall and Martin Maclean have all been promoted to senior equity partners; whilst senior associate Anna Gregson has joined the partnership ranks for the first time; and Juliet Redhouse has been made a senior associate. All promotions have been made with immediate effect and brings the total number of partners to 24.

Commenting on the promotions, senior partner, Peter Garratt said:

“This year’s promotions demonstrate our ongoing dedication to career progression here at Mathys & Squire. Speaking on behalf of the whole firm, we would like to congratulate the nine individuals involved and wish them all the success in their new roles. We are committed to the growth and development of our business and are making significant investments in expanding our operations in the UK and internationally. We very much look forward to continuing this journey with all of our partners, associates, staff and clients.”

After months of deliberating the Court of Appeal this week refused Nestlé’s attempt to trade mark the shape of its four-fingered KitKat bar, upholding the High Court’s prior ruling. The 16,000 word judgment is the latest development in this long-running dispute with its rival Cadbury and is a big blow to Nestlé.

The Court did not accept Nestlé’s arguments that the shape of the bar is unique and has acquired distinctiveness. The judges noted that the shape of the bar had not been central to Nestlé’s marketing of the product for many years, meaning that the shape was unrelated to decisions made by consumers about whether to purchase the KitKat bar.

Cadbury’s arguments were bolstered by the existence of a Norwegian chocolate bar called Kvikk Lunsj, which also has a four fingered rectangular design. The Kvikk Lunsj bar has been on the market since the 1930s.

Nestlé’s frustration at the judgment will lie with the fact that other manufacturers and supermarkets will have greater chances of selling copycat chocolate bars at lower prices without Nestlé being able to stop them. This could impact Nestlé’s sales and profits.

The case highlights the high threshold for the registration of trade marks in the form of shapes, despite shape registrations becoming of increasing importance to brand owners. There must be clear evidence that consumers rely on the shape of a product to identify its origin before a Court will grant such monopoly rights.

However, this is unlikely to be the last stage of this saga, as Nestlé may appeal to the Supreme Court. Nestlé’s representatives have already expressed their disappointment in the ruling and said that the company is considering its options.