Photo of Morag Peberdy

Morag Peberdy has broad experience in all areas of intellectual property, where she advises on both contentious and non-contentious issues. Her wide-ranging expertise includes patents, trademarks, designs, copyright, database rights and confidential information, and covers drafting intellectual property agreements and infringement and contractual disputes. Her particular focuses have been on patent work in the life science sector, and in advising branded goods companies.

by Morag Peberdy and Christina Helden

When the legislative package the EU Unitary Patent was agreed last December, many speculated that the 1 January 2014 date for the implementation of the EU’s Unitary Patent was overly ambitious.  The publication of the UK’s new Intellectual Property Bill (the “Bill”) on 10 May 2013 now gives real substance to this viewpoint.  The provisions of the Bill indicate that the UK will not ratify the Agreement on a Unified Patent Court (the “Agreement”), one of the key legislative instruments required for the Unitary Patent’s implementation, until April or May 2015.  Since the UK must ratify the Agreement before it can be implemented anywhere in Europe, it appears that the timetable has been derailed.  Given that a number of tech companies, including Nokia and BAE Systems, advocated vocally against the Unitary Patent in its current form, this may be welcome news to some.
Continue Reading The UK Parliamentary Process Delays the Implementation of the Unitary Patent

by Morag Peberdy and Christina Helden

On 19 March 2013 the India’s Intellectual Property Appellate Board (IPAB) released its written judgment upholding the Controller of the Indian Patent Office’s decision to grant Natco Pharma Ltd a compulsory licence under Bayer A.G.’s patent for its anti-cancer drug Nexavar.  Section 84(1)(a)–(c) of the Indian Patents Act 1970 sets out three conditions for the grant of a compulsory licence.  The IPAB confirmed that although any one of these is sufficient, all three requirements were in fact met in this case, namely Bayer had not: (a) satisfied the reasonable requirements of the public; (b) made the patented invention available at a reasonably affordable price; or (c) worked the patented invention in India.

Although the IPAB was not as rigid in its views on local working as the Controller, this aspect of the judgment is most likely to raise concern internationally, and has implications across all industry sectors.  The Controller took the stance that for a patent to be worked locally, product must be manufactured in India.  The IPAB held that the local working requirement needs to be considered on a case-by-case basis.  However, if product is merely imported, the onus is on the patentee to show why its product could not be manufactured locally.  As Bayer did not manufacture Nexavar in India nor provide evidence as to why it could not manufacture this particular drug in India, it failed the local working requirement.  The IPAB considered WTO’s Trade Related Aspects of Intellectual Property Rights Agreement (TRIPs) but found no inconsistency.  Others are likely to disagree, and to view the IPAB’s interpretation of s84(1)(c) as being protectionist and incompatible with the fundamental principle of non-discrimination that underpins TRIPs. 
Continue Reading India Upholds its First Compulsory Licence

By Morag Peberdy and Jacqueline Clover

In a departure from the normal approach, the English High Court has found that in certain circumstances a copyright sub-licence may survive termination of the head licence. This was the Court’s holding in VLM Holdings Limited v Ravensworth Digital Services Limited [2013] EWHC 228 (Ch). Because of the specific facts of the case, termination of the head licence did not automatically terminate the sub-licence. Consequently, when the licensor subsequently exclusively licensed the same subject matter to another party, the licensor inadvertently put itself in instant breach of the exclusive licence. The case therefore illustrates some of the potential pitfalls for a licensor who does not fully understand what exactly it has permitted the licensee to do.

VLM Holdings does not hand down a rule of thumb that a sub-licence will survive termination of the head licence. The Court was very clear to confine its conclusion to the facts of the case. Notably, the head licensor was the parent of the sub-licensor and the sub-licensee was ignorant of the head licence. Nonetheless, it highlights the care which needs to be taken when drafting or interpreting licences of any kind.
Continue Reading English Court Upholds a Copyright Sub-licence Despite the Termination of the Head Licence

By Morag Peberdy and Jacqueline Clover

Yesterday, judgment was delivered by the Court of Justice of the European Union (“CJEU”) in the ONEL case on what constitutes genuine use of a Community Trade Mark (“CTM”).  A CTM can be revoked if there has been no genuine use in the Community for 5 years.  The conventional wisdom was that use in a single country, as long as it was more than de minimis use, validates a CTM across the EU.  This was called into question by the Benelux first instance decision in ONEL.  Many had hoped that the CJEU would confirm that use in only one European country constitutes genuine use in the Community.  However, the CJEU ruled that the territorial extent of the use is just one factor to be taken into account when assessing genuine use.  Other relevant factors include the specific market for the relevant goods and services, the nature of those goods and services and the frequency and regularity of the use.  Consequently, in some cases, use in one country alone will constitute real commercial exploitation, but on other fact patterns use across a number of countries may not suffice.

Continue Reading European Court of Justice Rules on What Constitutes Genuine Use of a Trade Mark

After more than 40 years of discussions, the European Parliament today voted in favour of the “EU patent package,” hot on the heels of the European Council’s approval yesterday.  The EU patent package will create a Unitary EU Patent i.e. a uniform patent which will have equal effect and will be granted, transferred and enforced in a unitary way in most of Europe.  Unitary EU Patents will be granted through the existing European Patent Office, but a new court system will be set up to enforce these patents.

The Unitary EU Patent will, in time, replace the current system of European Patents which – after grant – operate as independent national patents in up to 38 countries.

Today’s vote represents a major political breakthrough, and it is now highly likely that the package will be implemented, although the international agreement creating a unified patent court still requires ratification by individual European countries in order to come into effect.  The EU patent package will enter into force on 1 January 2014 or after 13 European countries have ratified it, whichever is the latest.  The 13 ratifying countries must include the UK, France and Germany.  Spain and Italy have so far decided not to participate in the EU patent package, but are free to opt back in at any time.  The European Commission anticipates that the European Patent Office will grant the first Unitary EU Patent in 2014.  
Continue Reading A Unitary Patent for Europe is Finally Approved

Shortly before today’s vote in the European Parliament on the Unitary EU Patent , Advocate General Bot recommended that the Court of Justice of the European Union (“CJEU”) dismiss the actions brought by Spain and Italy objecting to the EU Patent package.

The Spanish and Italians did not support the compromise that the rest of Europe reached on the language regime for the Unitary EU Patent, which would allow Unitary EU Patents to be filed in English, French or German and granted without the need for translations into other European languages.

In order to progress the Unitary EU Patent despite the Spanish and Italian opposition and break the deadlock which had lasted for over 30 years, on March 10, 2011 the European Council decided to deal with the Unitary EU Patent package via the “enhanced cooperation procedure”.  This procedure allows groups of member states to move ahead together, without the involvement of all 27 EU member states.  It is intended as a last resort, and has only been used once before in European legislative history.
Continue Reading Blow to the Spanish and Italian Challenge to the Unitary EU Patent