As we welcome in the New Year, Gill Grassie’s focus turns to the key IP issues of 2016…
Unitary Patent Opt-Outs?
Oil and gas, biotech sector and other IP rich businesses will start to wake up to time limited choices which will need to be made in view of the imminent effect of the new Unitary Patent system. Patentees need to decide whether to opt out before it comes into play, which is predicted to be early 2017. There may be a rush of opt-outs needed, as the jury is still out on how the new system will perform.
Generic pharma companies may deliberately force a tactical opt-in by suing for revocation before an opt-out is registered. This will allow them to have a go at invalidating a patent EU wide all in one go and so a prompt decision on opt out is potentially vital for pharma rights owners. Reviews of patent portfolios will be needed if a strategic approach to opt out is to be taken.
There may also be a rush on negotiating changes to existing licence agreements around the opt-out decision, who should take it and potential conflicting interests as between the patentee and exclusive licensees.
IP in the Oil & Gas sector
Oil and gas service companies will keep close guard on their IP in the leaner times ahead until the oil price picks up. They will use it to steal a march on their competitors in tender situations with margins growing tighter and increased competition. Aggressive tactics to enforce their IPR will increasingly be on the agenda should any theft of trade secrets or patent infringement come to light. Prevention is better than cure and strategic avoidance and workarounds of third party competitor IPR will be popular themes for 2016.
Trade Secrets will take more of a centre stage, with the EU draft directive taking shape and providing EU wide remedies and protections. It will heighten the profile of this form of IP protection and more companies will embrace it as a result of that and the improvements to be made in legal protection. Practically too, as it becomes more feasible to put in place electronic means of ensuring trade secrets are in fact kept secret and/or that there is an evidence trail of their theft, it should offer a more attractive form for protecting for IP. Interestingly the US Senate Committee on the Judiciary has recently been debating a proposed Trade Secrets Act there to bring in federal as opposed to state limited protection for trade secrets which is a close parallel with the aims of the EU Directive.
Copyright: The Digital Single Market
EU Copyright law will require to be seriously reviewed from the harmonisation perspective – it is a huge job potentially but if the Digital Single Market agenda is to be brought into being the hard work will need to be done. As discussed by my colleague Stewart Gibson here, the EU Commission proposes to present as many as 16 initiatives aimed at producing and facilitating a Digital Single Market by the end of 2016. Work will also be going on behind the scenes to help bring about the end to roaming charges by June 2017.
New Trade Marks Directive
January 2016 will also see the new EU Trade Marks Directive coming into force. The Directive is aimed at creating greater uniformity in trade mark law across member states. The Directive gives Member States until 2019 to implement most of its provisions, but we expect to see the initial moves towards implementation during 2016.
Perhaps the most interesting change is that trade marks will no longer require to be capable of being graphically represented. This opens up a range of possibilities and means that anything which can be represented using generally available technology could be registered. This may open the door for registration of sounds, smells or even holograms. It will be interesting to see just how far the removal of the graphic representation requirement will allow rights owners to go in registering trade marks.
On January 1, 2016