International Intellectual Property - United Kingdom

International Intellectual Property - United Kingdom

Published August 2019

Author

Joel Smith

Firm: Herbert Smith Freehills LLP
Country: United Kingdom - England

Practice Area: Intellectual Property

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We believe that it is crucial in any engagement to understand the client's commercial drivers and pressures, to be able to evaluate what a successful endpoint looks like. It may involve deploying our heavyweight disputes expertise through the courts or leveraging a successful negotiation for a settlement or favourable commercial deal. We are then rigorous in developing and evaluating the strategic options for the client, but not shying away from presenting and advocating our view of the best way forward. We strive to get under the skin of our clients, to understand their business and the marketplace they are in. We highly value our clients and put great emphasis on developing strong, long-term relationships with them.

We continue to lead the way in life sciences and pharma patent litigation; however, our practice excels at more than just patent disputes in this sector, but trade mark and other IP/tech litigation, IP-led transactions, commercial IP agreements and regulatory in sectors from tech, FMCG, energy to financial services. We have a dynamic and developing tech practice in its broadest sense, and are beginning to establish synergies between these areas as our clients become more technology-focused. For example: clients are deploying AI and machine learning, using big data and advanced analytics to solve challenges and build efficiencies as well as their product selection and development; deploying social platforms to connect beyond their organisational networks, and using the Internet Of Things to run complex operations. This in turn raises challenging issues around IP ownership and use of data as an asset (whether clinical data, customer behavioural data or transaction data). It also raises fascinating questions around inventorship and the availability of patents. We continue to see disputes where technology convergence is bringing previously unrelated businesses into direct competition over their product or service offerings. I am acting on just one such dispute, in the trademark sphere.

With IP offices in London, Paris, Milan, Sydney and Melbourne, and decades of experience in coordinating IP litigation in Germany, Switzerland, Spain, Ireland and other key European countries and across Asia-Pac, we are known for the range and depth of our IP practice. We advise our clients in litigation, transactions, risk management and strategic matters, working with our global team and other firms across time-zones and jurisdictions to the benefit of our clients. We have long been recognised as specialists in managing and coordinating multi-jurisdictional patent and trademark litigation from our UK and Australian IP offices. This may be for the launch of pharmaceutical products or medical devices or increasingly tech devices, often involving arguments around standards and FRAND licensing terms. We provide single point-of-contact advice by coordinating local counsel in upwards of 50 European or global jurisdictions at any one time. We distil this advice and provide strategic counsel to our clients for the whole of Europe or Asia-Pac, often working with US-headquartered clients, overseeing litigation, engaging experts and determining strategy, then directing local counsel accordingly on behalf of our clients. Given the complexity of the European or Asian markets, the many jurisdictions involved, and the cost of engaging directly with separate counsel in each jurisdiction, our expertise in performing this role is highly sought after. We develop and help to manage enforcement strategies and defensive patent and other IP litigation relating to our clients’ most business-critical products. We do more than just manage proceedings in multiple jurisdictions: we work with our clients to set an appropriate strategy from the outset; we prepare expert evidence and coordinate litigation in every jurisdiction involved (recognising the merit in obtaining specialist local advice where appropriate); and providing access to the best local advisers while providing a single point of contact for seamless, commercially relevant advice.

We are representing Unilever in the Supreme Court having successfully defended them against a multi-million-pound claim by a former employee (Professor Shanks) for compensation in respect of inventions made during the course of his employment. This case is of significant, commercial importance to companies conducting R&D in the UK. Although enacted over 30 years ago, the employee compensation provisions in the UK Patents Act (section 40) are only now receiving significant attention. Previous cases have usually involved relatively small undertakings, but the size of the potential claim by the former employee in this case, together with the factual circumstances and legal issues raised, means that this case is receiving a high level of interest from not only the media, but also all those companies that carry out significant research and development activities in the UK. Unilever has been successful in its defence before the UK Intellectual Property Office and on the dismissal of subsequent appeals to the High Court and Court of Appeal. The case went on to appeal to the Supreme Court, and we are awaiting the decision shortly. This is the first time that this aspect of law has been considered substantively above the Court of Appeal level of the UK legal system. The outcome will also influence other European jurisdictions with similar regimes and global organisations seeking to adopt/update employee innovation incentive schemes and mitigate the risk of claims.

Crisis management is one of the core services which we are able to offer, based upon our experiences of a wide variety of types of crises. On the one hand, we may be being asked to seek an urgent preliminary injunction within a day to prevent the launch by a competitor of a competing product which infringes our client's core trademark or makes use of our client's trade secrets or patented technologies. We recently succeeded in obtaining an interim injunction to prevent wrongful termination of a key development and licence agreement by a collaboration partner, pending arbitration. On the other, I have recently been asked to advise a multinational upon the official detection of the suspected, adventitious presence of genetically modified material in the seed material in a client's crop brand. This involved liaising with the regulatory authorities on an urgent basis to establish whether the claim was correct, the extent of the distribution of material; whether a product recall is required of living materials; and the potential legal implications within the supply chain. Another example recently involved me advising a multinational beverage company on resolving an unexpected regulatory challenge to a key brand in terms of meeting advertising codes of practice and the impact of a negative ruling upon the wholesaler and retail distribution chain.

I have found this a fascinating area of interest for companies at board level. Innovation ecosystems are becoming ever more complex and diverse. Technology is connecting individuals and businesses, across sectors, and it is easier than ever before for anyone, anywhere to innovate. There is also a sense that there is a need for increasingly rapid innovation, as organisations try to stay ahead of the curve. All of which means that there is a compelling imperative for organisations to look externally when it comes to innovation. Businesses are increasingly collaborating with third parties, even competitors. For instance, I am currently negotiating a complex collaboration arrangement between a healthcare business and a leading UK university, for the supply of medical scanning technology for cancer treatment at its hospitals and to pioneer new cutting-edge research projects in the oncology area. While collaborative innovation presents exciting opportunities, allows greater access to talent, and implies reduced costs and greater sharing of risk, it requires a flow of information into and out of the business. The traditional rules of engagement around research and development, collaboration and innovation, will not always apply. This sort of engagement can leave a business more vulnerable, its boundaries more permeable and ownership of IP or data less certain. I recently led a global thought leadership campaign on open innovation and collaboration, and what that means for businesses in legal terms. I led a team to interview clients from across sectors and jurisdictions and launched a report on the findings, along with our views and practical recommendations.

IP rights which are designated as applying across the EU (EU trademarks, Community plant variety rights, Community-registered designs and Community-unregistered designs), qualification for which involves activity within the EU (such as sui generis database rights), are all at risk of termination in relation to the UK, upon Brexit. However, the Withdrawal Agreement (“WA”) provides for replacement rights to be provided by the UK. Since the WA has not been approved by the House of Commons, the UK Government has, in addition, published its own set of no-deal technical notices stating that registered rights will be replaced with equivalent rights in the UK. The government has also published various statutory instruments confirming this. These will come into effect on exit day – at the end of the transition/implementation period after the UK leaves the EU if there is a "deal" in place, as is currently set out in the WA, or immediately, if the UK leaves the EU without a deal. If Brexit happens, there will be a layer of complexity to much of UK law around IP protection and enforcement. More detail is set out in our guide: Intellectual Property and Brexit.

The UK IP team of Herbert Smith Freehills are consistently highly recommended in key legal directories Legal 500, Chambers and Who's Who Legal. Partners Joel Smith, Mark Shillito, Andrew Moir, Sophie Rich, Jonathan Turnbull and Sebastian Moore are ranked as leading individuals across the major IP directories Managing IP stars, IAM patent and WTR 1000, as well as Legal 500 and Chambers. In September 2019, the UK team were shortlisted for IP litigation team of the year in The Legal Week awards. Other awards include: IP Team of the Year at The Lawyer Awards 2017; and Transatlantic IP Team of the Year 2017 in The American Lawyer.

It is important to us to support these organisations and participate in their meetings, both in terms of driving reform to areas of law and court practice (such as the UPC), but also to shape the law in response to potential major shifts, such as what might result from Brexit. It also brings opportunities to meet new contacts, flag and discuss the issues they face in their countries and industries, and constantly sense-check our understanding of legal developments in different jurisdictions.

We greatly value sharing our insights into sector trends and the legal issues that may arise. The legal and specialist IP media and organised events are a key part of being able to share our experience, as well as learn about new developments. We are fortunate to have an active and inquiring set of journalists in the media who are interested in the impact of IP and technology upon law and business.

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