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of a national part of an European patent must be determined in the court of that nation. It also contains rules regarding the correct jurisdiction for hearing infringement, according to the domicile of the defendant (ie, in the home court) or where the infringing act is done. With the arrival of the UPC, there will be a jurisdiction where validity and infringement can be tried for all the participating states in Europe.
“Te Brussels regulation needs amendment to accommodate this new forum of the UPC. Until the amendment is made, there will be no orderly regulation of allocation of patent cases between national courts and the UPC.”
Approving the amendments to the Brussels I Regulation may not be a straightforward process, however, said Richard Pinckney, associate at law firm Bristows.
“One of the key issues which will need to be
addressed is the interaction between the Brussels I Regulation and the UPC agreement during the transition regime provided by Article 83 of the UPC agreement. In particular, the amendments to
Amended IP bill passes through House of Lords
Te Intellectual Property Bill, part of which is designed to criminalise the blatant copying of designs, passed through the UK House of Lords on July 30 with a new defence.
Alleged copiers will be exempt from potential 10-year prison terms if they can show that they “reasonably believed” they did not infringe an existing design.
Te amendment was introduced by Viscount Younger of Leckie, the UK’s IP minister and sponsor of the bill, aſter concerns were raised in the IP industry about the scope of the bill’s criminal sanctions.
Industry body the Chartered Institute of Patent Attorneys (CIPA), which objected to prison terms for just producing “substantially” similar designs to existing ones, urged for the act only to legislate against “deliberate and sustained” copying.
Younger failed to rise to these demands, but said the new defence of a reasonable belief of non- infringement will help courts to reach a “just and fair outcome” in design infringement cases.
He added that the amendment clarifies the scope of the criminal provision and provides confidence to UK designers. Te amended bill passed with no objections.
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Rob Jackson, a CIPA council member, said the changes are a step in the right direction but have still not gone far enough.
“We are worried about the current draſt’s potential chilling effects on genuine competition. We would like to see the legislation focused on counterfeit goods or products that are a blatant rip-off.”
While the new defence was welcome, he added, defendants will still have to go through an “unpleasant” litigation process before they can use it.
Chris McLeod, director of trademarks at Squire Sanders (UK) LLP and first vice president of the Institute of Trade Mark Attorneys, said he supported the reasonable belief test.
“Te test is good because it doesn’t necessarily rely on someone obtaining a legal opinion about the design—it could be that
the company or
person in question conducts their own enquiries that the design wasn’t valid.
“It gives comfort,” he added. “If and when the cases start to proliferate, people will look back to what the intentions were—and they were to prevent the blatant copying of registered designs. I am sure the courts will look at the provisions and see that the reasonable belief test does apply.
“It is positive to companies and individuals with concerns about receiving criminal records, even if it doesn’t go all the way,” he said of the bill’s amendment.
What is considered reasonable under the defence will be subject to a lot of argument in the courts, said Tom Hutchinson, director of Hutchinson IP.
law firm
“Tis amendment seems to be trying to mirror equivalent defences available under other IP legislation, such as under patent law where there is something known colloquially as the ‘innocent infringement defence’,” he said.
But he said there are some significant differences, not least that the IP bill is an “actual defence” whereas under patent law there is only a limit on damages awards, not a defence.
He added: “Patents are published in the register, journal and online, so it’s actually quite difficult, in practice, to invoke an innocent infringement defence in patent litigation. Registered designs are also published, but they are not as readily searchable using the online databases ... thus making the design registers harder, but not impossible, to search.”
Te bill, which deals with other issues such as providing the power to implement the London- based UPC, will move on to the House of Commons, where it must pass three readings before becoming law.
World Intellectual Property Review September/October 2013 11
the Brussels I Regulation will need to address the balance of jurisdiction between national courts and the UPC.”
Spain and Poland’s unwillingness to sign
the UPC agreement may provide further complications, he added.
“Judgments of the UPC must also be recognised and enforced in all contracting
member states to the UPC agreement. How will the Brussels I Regulation deal with the recognition and enforcement of UPC judgments in any non-contracting states, such as Spain and Poland?”
He added: “We wait to see how the legislators navigate these potential issues and, most importantly, how long that process will take.”
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