This months’ IP & IT Briefing looks at three significant Court of Appeal judgments published in October – two on patents and one on trade marks – and provides an update on Brexit planning and negotiations.
The decision in Unwired Planet International Ltd & Anor v Huawei Technologies Co Ltd & Anor  EWCA Civ 2344 was the court’s first opportunity to address in detail the licensing of standard essential patents – the murky area where patent law and competition law meet. Upholding the first instance judgment by Mr Justice Birss, the three appeal judges discussed whether only a global licence can be fair, reasonable and non-discriminatory (FRAND), the meaning of ‘non-discriminatory’ and the practical requirements of the CJEU decision in Huawei v ZTE.
Another patent case, Icescape Ltd v Ice-World International BV & Ors  EWCA Civ 2219, provided the Court of Appeal (and in particular its two IP specialists) with their first opportunity to interpret last year’s Supreme Court opinion in Actavis UK Ltd v Eli Lilly & Co  UKSC 48,  RPC 21. Lord Kitchin (now himself elevated to the Supreme Court) provided a set of questions which are likely to be used in future cases to determine whether the variant differs from the claimed invention in ways which are immaterial. In additional comments, Lord Justice Floyd reemphasized the importance of the claims themselves as the ‘starting point’.
Floyd LJ authored the court’s opinion in Argos Ltd v Argos Systems Inc  EWCA Civ 2211, a trade mark case that concerned issues including the use of keyword advertising, targeting, what constitutes a link and in particular the meaning of ‘taking unfair advantage of the distinctive character or repute of the mark’. While disagreeing with the first instance judge on some points, the court reached the same conclusion that there was no unfair advantage taken.
Our second monthly update on Brexit and IP focuses on two developments: an inquiry into the impact of Brexit on IP and the UPC, launched by the House of Lords EU Justice Sub-Committee, and a report by the All-Party Parliamentary Group on Legal and Constitutional Affairs on the effect of Brexit on legal services (including representation before EUIPO).
The IP/IT Briefing is part of the Bloomsbury Law Online Service. The full briefing is available here.