Intellectual property (IP) agreements, eg relating to licensing of technology and for the joint development of new technology or other IP rights (IPRs), may have a restrictive effect on competition. However, the pro-competitive benefits in relation to IPrRs are recognised in a number of block exemptions that provide a ‘safe harbour’ from the application of Article 101 TFEU. This Practice Note explains how the various competition law block exemptions can apply to competition law issues relating to IP agreements. Several block exemptions are potentially applicable; this Practice Note details how to identify which is most relevant, how a business can use block exemptions to understand and manage risk, provides a high-level overview of the rules and practical tips for applying them and also identifies potential pitfalls and drawbacks of the various block exemptions.
This Practice Note introduces the importance of having proper due diligence processes when planning the outsourcing of services. It considers the key factors to be considered at each of the three suggested due diligence phases in an outsourcing project, including the customer's internal due diligence, the customer's due diligence on the supplier; and the supplier's due diligence on the proposed outsource transactions. It then considers some approaches to dealing with problems that often arise with due diligence in an outsourcing context.
The exercise of Intellectual Property Rights (IPRs) by dominant companies can cause competition problems under Article 102 TFEU (and Member State equivalents). The dividing line between anti-competitive exclusionary conduct and ‘normal’ reliance on IPRs is explored in relation to broad categories of potential abuses. The difficulties of market definition in relation to IPRs is also assessed. Patent disputes between telecoms companies and the AstraZeneca case are detailed in the context of abuse of FRAND licensing commitments and the system of patent grant. There is also a discussion on the Microsoft case and refusal to license ‘essential facility’ IPRs and unfair licensing terms and tying.
This Practice Note discusses the key practical points to consider prior to drafting and during the negotiation of an intellectual property (IP) licence, from both a licensor’s and a licensee’s perspective. It discusses the key terms of an IP licence, including sub-licences, payment terms, improvements to the licensed IP, warranties, representations and indemnities, and the prosecution, maintenance enforcement and defence of the licensed IP. It also considers compulsory licences, collective licensing, SEPs and FRAND licence terms and the registration of IP licences.
This Practice Note deals with the main types of patent claims: product claims and process claims. Within the first category, it briefly outlines the US terms of machine claim, article of manufacture claim and composition of matter claim. The note also covers Markush claims, two-part claims, omnibus claims, second use medical claims (Swiss-type claim and EPC 2000 claims), product-by-process claims and reach-through claims.
This Practice Note outlines the key risks on exit from an outsourcing, and deals with defining exit services, the term and exit period, the obligation to cooperate and to provide information for the purpose of re-tendering, staff, knowledge, intellectual property rights, asset and contract transfers, exit plan and exit costs, and what to do if a contract does not provide for exit.
This Practice Note introduces outsourcing deals and summarises the life cycle of the typical outsourcing transaction, primarily from the customer's perspective. As this Practice Note focuses upon general commercial outsourcings; any industry, regulatory or specialist (eg technology) requirements are not dealt with in detail here.
This Practice Note has been archived and is no longer maintained. It introduces the unitary patent (UP) and Unified Patent Court (UPC) system and sets out the structure, jurisdiction and competence of the UPC. It explains the transitional arrangements for opting patents out of the system during the sunrise period, providing practical tips on when and how patents can be opted out. It also discusses First Instance and Court of Appeal procedure, exploring and explaining the Rules of Procedure of the UPC.
This Practice Note has been archived and is no longer maintained. It discusses the historical background to the EU unitary patent (UP) and Unified Patent Court (UPC), as well as some details about how both the patent and the court would work and the steps needed before that can happen, including ratification of the UPC Agreement.
This is a Precedent particulars of claim for use in relation to a claim for copyright infringement. It can be adapted for use in either Intellectual Property sub-list or Intellectual Property Enterprise Court sub-list cases. Both sub-lists form part of the main Intellectual Property List (Chancery Division) in the Business and Property Courts. This Precedent is drafted so as to cover infringement of UK copyright pursuant to CDPA 1988.
This checklist covers the key considerations when applying for a Norwich Pharmacal Order such as why you would apply, issues to consider before making the application, when a Norwich Pharmacal Order might not be suitable, the procedure for applying including practical points, the form of the Norwich Pharmacal Order and what to do after the Norwich Pharmacal Order has been granted.
This Practice Note sets out the intellectual property and competition law issues which may arise in connection with character merchandising (ie the practice of licensing the name or likeness of a character for use in the marketing of goods or services, which will usually require the licensing of trade marks and/or copyright). It considers issues which may arise pursuant to Articles 101 and 102 of the Treaty on the Functioning of the European Union (or in the UK, Chapter I of the Competition Act 1998), as well as possible block exemptions or individual exemptions that might apply. It also considers the interaction between competition law and the tort of passing off.
Comparative advertising is any advertising which explicitly or by implication identifies a competitor or goods or services offered by a competitor. This Practice Note considers the conditions which must be satisfied in order for comparative advertising to be lawful, and discusses the interplay between comparative advertising and trade mark infringement. It also includes a checklist of key factors that an advertiser should consider when using comparative claims relating to competitors in an advertising campaign.
This Practice Note examines competition law in relation to copyright exploitation. It covers exhaustion of rights and parallel trade within the EEA including an examination of Article 101 TFEU and copyright licensing. Vertical agreements and exclusive licences are considered covering absolute territorial protection, geo-blocking, tying and bundling, as are horizontal agreements covering collective licensing and joint selling. The relationship between copyright exploitation and Article 102 TFEU is also considered.
This Practice Note considers film and television copyright issues relating to the underlying works encountered during the making of a film. It covers literary works such as scripts, biographies, characters, set design and location, photographs, the right to privacy of certain photographs or films, music, and performances. The note also covers copyright permitted acts or exceptions that may apply when various works are included in a film including fair dealing exceptions, incidental inclusion, reporting court proceedings, filming in a public place, and public interest.
This Practice Note considers copyright issues relating to film and television. It reviews key legislation covering: the definition of film, the definition of the author of a film, qualifying requirements, the term of protection, the Term Directive, soundtracks, broadcast right and moral rights in relation to films.
This Practice Note sets out some of the key intellectual property (IP) issues that should be considered when setting up a joint venture (JV). This Practice Note considers the scenario where two organisations (parent companies) set up a JV which is a separate legal entity (eg a company or a limited liability partnership), which they jointly own. It does not consider the IP issues that arise in contractual collaborations (where there is no separate legal entity).
This Practice Note considers the intellectual property (IP or IPR) issues that can arise in an outsourcing arrangement. It describes the difference between background and foreground intellectual property rights and explains how to deal with rights that are owned or licensed by third parties. It also looks at IPR warranties and indemnities in outsourcing agreements.
The Internet of Things is the term given to everyday objects, smart devices and connected devices connected to the internet. This Practice Note provides context and an explanation of the Internet of Things or IoT, providing an introduction to the technology, current and future implementations and key legal issues related to its implementation.
This Practice Note deals with orphan works and covers the background and implementation of orphan works legislation and licensing arrangements in the UK including coverage of the EU Orphan Works Directive, Directive 2012/28/EU, which was implemented in the UK by the Copyright and Rights in Performances (Licensing of Orphan Works) Regulations 2014 and the Copyright and Rights in Performances (Certain Permitted Uses of Orphan Works) Regulations 2014. The Practice Note covers: applying for a licence, making a diligent search, moral rights, appeals, use of revenues from orphan works and the impact of IP completion day on cultural heritage institutions and the UK Orphan Works Licensing Scheme.
This Practice Note examines the two different types of second medical use claims (purpose limited process ‘Swiss-form’ claims and purpose limited product ‘EPC 2000’ claims), the differences between them and their enforcement in England and Wales. It also discusses the impact of the Supreme Court judgment in Warner-Lambert v Generics (UK) and Actavis.
This Practice Note addresses the role played by standard essential patents (SEPs) and fair, reasonable and non-discriminatory (FRAND) licensing in patent litigation before the Courts of England and Wales (the English Courts). In particular, this Practice Note considers the legal landscape following the UK Supreme Court decision handed down on 26 August 2020 in the conjoined Unwired Planet and Conversant appeals and the practical implications of this decision.
This Practice Note examines the two principal research exemptions to patent infringement available under UK law, namely, the general experimental use exemption (sometime referred to as the experimental use defence) and the specific ‘Bolar-type’ exemption. It discusses what is required in order to benefit from these exceptions to infringement under section 60(5) and (6) of the Patents Act 1977 (PA 1977), relevant case law such as Meter-Tech v British Gas and practical considerations, eg how to deal with suppliers in contracts and research tools. This Practice Note also discusses the supplementary protection certificate (SPC) manufacturing waiver and the European Commission’s 2017 impact assessment in relation to possible legislative proposals aimed at improving the EU’s industrial property legal framework in relation to patent research exemptions.
This is a Precedent notice and takedown letter (or NTD letter) for use when an internet service provider (ISP) or online platform is hosting or providing access to a third party’s trade mark infringing activity. It is intended to be sent to an ISP or host in circumstances where a trade mark owner wishes to provide the ISP or host with notice of trade mark infringing activity as a precursor to obtaining a website blocking order or other injunction. This notice provides the intermediary with ‘actual knowledge’ of its service being used to infringe a trade mark so that the rights holder may apply for an injunction requiring that it terminates access to the infringing website, in accordance with the principles established in Cartier International AG & others v British Sky Broadcasting Limited & others  EWCA Civ 658.
This is a precedent outsourcing agreement under which the customer appoints a supplier as an outsourced services provider of a particular business function of the customer. It is a short form outsourcing agreement generally drafted on a pro-customer basis and is suitable for use in both IT and non-IT related outsourcing transactions. For more complex transactions, the long form outsourcing agreement should be used.
This is a precedent set of prize promotion terms and conditions suitable for a simple prize competition or a free prize draw. The terms and conditions will assist in complying with the rules governing prize promotion advertising under the Consumer Protection from Unfair Trading Regulations 2008 (CPUTR 2008) and the UK Code of Non-broadcast Advertising and Direct & Promotional Marketing (CAP Code).
IP analysis: Jake Palmer, associate at Bristows, discusses the UK’s proposal for reciprocal disclosure arrangement for unregistered design rights with the EU.
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