UK: Selected UK IP Highlights For 2015

This article originally appeared in the IAM Yearbook 2015 and can be accessed at .

This has already proven to be a fascinating year for intellectual property in the United Kingdom. Life sciences patent litigation came to the fore as the Court of Appeal considered whether the prosecution history of a patent can be used when construing its claims. The Court of Appeal looked at the use of celebrity images. In copyright, the High Court handed down website blocking orders, which have become increasingly common. This chapter looks back at the first half of the year to review a selection of cases and legal developments of interest to a variety of industries.

Unified Patent Court Agreement: United Kingdom ambles towards ratification

The United Kingdom is one of the three essential signatories that are required to ratify the Unified Patent Court Agreement, the intergovernmental agreement created to bring about the Unified Patent Court (UPC). Rumours earlier this year suggested that the United Kingdom might ratify the UPC Agreement before the May 2015 general election, despite the Conservative Party's election platform to hold a referendum to determine whether the United Kingdom should remain part of the European Union. Now in government, the Conservatives intend to hold the referendum before the end of 2017, leaving unresolved the question of when ratification might take place.

In a recent statement made by the UK Intellectual Property Office (UKIPO), it appears that the government is "pressing ahead" and intends to have all "domestic preparations" completed by Spring 2016. This may or may not mean that the government intends to ratify then, but it appears likely that the United Kingdom will not wait to ratify until after the referendum.

UK courts making changes

The Intellectual Property Enterprise Court (the United Kingdom's specialty court focused on resolving IP issues for small to medium-sized enterprises) was expected to relieve some of the increasing pressure on the High Court by providing a different route of access to the justice system for smaller cases and litigants. While the court has proven popular, no corresponding drop in the number of claims filed at the High Court has occurred. This has led to some concern about the gradually increasing length of time to trial before the High Court. In a recent statement, the court announced that more cases will be heard by deputy IP judges and the court will use its case management powers "in a more active manner", with the intention of getting trials heard more quickly – within a year from commencement "where possible". Further, a new High Court IP judge, Justice Henry Carr QC, has recently been appointed. This commitment will be welcomed by parties looking to litigate in the United Kingdom.

Case law

Life sciences

"Selection patents" and technical contribution: In Idenix v Gilead, a lengthy judgment handed down at the end of 2014, the court considered and crystallised the legal approach when considering whether patents that claim a selection of compounds are obvious and therefore invalid.

Idenix's patent concerned certain compounds for the treatment of flaviviridae, the family of viruses that causes many diseases, including hepatitis C. The court held that the selection of compounds was "stupendously broad" and it was not plausible that substantially all the compounds covered by the patent would be effective against flaviviridae.

The court therefore held that the patent claims were obvious because the claimed inventions made no technical contribution to the art. Interestingly, this was the first time that a UK judge considered the European Patent Office (EPO) Board of Appeal decision AgrEvo (T 939/92) in the context of obviousness, as opposed to rolling it up into insufficiency (eg, Regeneron v Genentech).

Patent claim construction – use of the prosecution file: One of the developing areas of patent law over the last few years has been whether a party is entitled to rely on the prosecution history of a patent to aid claim construction. The question has been: in order to understand the meaning of the claims of the patent, is it permissible to look behind the patent itself and consider the correspondence and arguments put forward by the patentee to justify the grant of the patent at the UKIPO or EPO?

Last year in Actavis v Eli Lilly the first-instance court held that it was appropriate to refer to the prosecution history of the patent. The patent covered Eli Lilly's compound pemetrexed disodium. The question was whether the compounds in Actavis' products infringed the patent on the basis that they were equivalent to the patented compound. The court held that the prosecution history provided evidence that Eli Lilly purposefully limited the claims to pemetrexed disodium in response to objections from the patent examiner and therefore went a considerable way to support the court's view that Actavis' product did not infringe.

However, the Court of Appeal overturned the decision and narrowed the positive reliance on the prosecution history as an aid to construction. As the leading appeal judge said: "In those circumstances, the light which the prosecution history sheds on the ultimate question of construction is likely to be extremely limited."

'Swiss form' claims – requisite knowledge: Warner-Lambert v Actavis has been one of the most complex cases of 2015, involving four High Court and one Court of Appeal decisions. One of the interesting issues to emerge concerns the scope of protection afforded to 'Swiss form' claims: to infringe such a patent, does a drug manufacturer require subjective intent or simply constructive knowledge that the drug will be used for the patented therapeutic indication?

The patent concerned the use of pregabalin (marketed as Lyrica) in the manufacture of a medicine for the treatment of neuropathic pain. The patent claim was written in Swiss form, a drafting method used to overcome patentability issues where a known active ingredient is used for a new therapeutic use (the previous patent concerned the molecule only and protection expired in 2013). Importantly, Lyrica was also prescribed (but not patented) for the treatment of epilepsy and anxiety. Actavis' generic pregabalin, Lecaent, was approved for epilepsy and anxiety, but not the treatment of neuropathic pain (a so-called 'skinny label'). Warner-Lambert argued that, regardless of the skinny label, doctors would still prescribe Lecaent for neuropathic pain and therefore the product would be used in a way that infringed the patent.

The first-instance court, on an application for an interim injunction, held that for the product to infringe, Actavis required a subjective intention on its part that Lecaent was suitable for, was intended for and would be used for the treatment of pain. The Court of Appeal disagreed and held instead that where a manufacturer of drugs has constructive knowledge that its drug will be used for the patented indication or where it is reasonably foreseeable that it will be used for the patented indication this lower threshold would be enough. After a detailed review, the trial judge reluctantly followed and applied the reasoning of the higher court but nevertheless found that Actavis did not have the requisite knowledge to infringe on either basis.

Following swiftly in the wake of the interim Warner-Lambert decision, the High Court again considered Swiss form claims in Hospira v Genentech, a path-clearing action brought by biosimilar hopeful Hospira against a Genentech patent concerning Herceptin. The court held that the mental element was important for the purposes of validity. In order for the Swiss form claim to be anticipated, the judge held that the skilled addressee had to know that the combination therapy would achieve the claimed therapeutic purpose. On the facts, the judge was not satisfied that the cited prior art disclosed the therapeutic purpose – namely, an increased efficacy in the treatment of breast cancer as compared to the monotherapy alone.


Software patents: In Lantana Ltd v Comptroller-General of Patents, Designs and Trade Marks, a patent application for a method of extracting and transferring data between two computers using email was held to be unpatentable as it was a computer program. The invention, intended to circumvent the problems of establishing and maintaining a continuous connection between two computers by using email, was held by the Court of Appeal to be a computer program 'as such', which is subject matter excluded from patentability. It may have involved novel and inventive processing, but was still excluded.

Pre-action disclosure: In The Big Bus Company v Ticketogo, an alleged infringer applied successfully for pre-action disclosure (discovery) against a non-practising patent licensing entity to find out whether the case was worth fighting or settling on the terms offered.

The court, in its discretion, allowed discovery of licences pertaining to the transport sector. The court followed earlier case law which held that limited disclosure as to quantum at an early stage is desirable, as it allows parties to make a realistic assessment of the value of the claim and prevents situations where likely costs exceed the quantum of the claim.

There remains a question over whether the judge was too ready to order pre-action disclosure. However, until the case is heard at appeal (listed for late 2015/early 2016), this remains a potential tactic for alleged infringers.


Use of celebrity images: Celebrities do not own the exclusive right over the use of their image in the United Kingdom. As a result, fashion designers and other manufacturers often believe that they are free to use celebrity images on their products. The Court of Appeal decision in Fenty v Arcadia is a reminder that care should be taken to ensure that such use does not amount to passing off.

Topshop used an image of Rihanna on a t-shirt. Last year the court held that such use amounted to passing off. In this appeal, the court confirmed that while it is possible for a celebrity to bring a passing off action to prevent the unauthorised use of his or her image, the use of an image on a garment is not, in itself, passing off. Factors of particular relevance in this case were Rihanna's previous use of the image for publicity, her past public association with Topshop and the scope of the goodwill that she enjoyed due to wide-ranging merchandising and endorsements. The Court of Appeal therefore confirmed the earlier finding that Topshop's actions amounted to passing off. While the law in this area has not changed, this case may make the fashion and retail industries more cautious about adding famous faces to their products in the future.

Pan-European relief: In Enterprise v Europcar earlier this year, Enterprise succeeded in an infringement claim against Europcar relating to its use of a stylised 'e' logo on a green background.

An interesting issue then arose as to the scope of relief – should Enterprise be entitled to pan-European relief or should relief be limited to the United Kingdom? Referring to DHL v Chronopost, the court held that once an applicant has established infringement of a Community trademark, it will generally be entitled to pan-European relief, except where:

  • the applicant itself has restricted the territorial scope of its action; or
  • the defendant proves that the use of the sign has not affected the functions of the trademark.

At trial, Enterprise relied solely upon infringing acts committed in the United Kingdom. Further, the finding of acquired distinctiveness and the evidence of actual confusion related to the United Kingdom only. Therefore, the injunction and inquiry as to damages were limited to the United Kingdom. From a practical point of view, this litigation highlights that pan-European relief will not be granted as of right.

Co-existence and descriptive trademarks: In Supreme Petfoods v Henry Bell & Co, the claimant produced animal feed labelled with various cartoon characters together with the word 'Supreme' in a banner. Henry Bell also used the word on animal feed, but not in a banner, as had been agreed with trademark owner Supreme Petfoods. The dispute arose when Henry Bell redesigned its packaging and extended its range to other products.

The High Court found that the SUPREME word marks were descriptive (the cartoon characters were better known than SUPREME), but had acquired a slender degree of distinctive character in relation to food for small animals. Therefore, the marks were invalid, except in relation to small animal food. Further, the High Court concluded that Henry Bell's actions amounted to honest concurrent use – it had used the sign for over 20 years without causing confusion, which demonstrated that the use had no adverse effect on the functions of the marks. Even if there had been infringement, Henry Bell could have successfully defended on the basis that it was using the sign as an indication of the quality of the feed.

The case is a reminder of the importance of choosing a distinctive brand name and of using that name in a trademark sense (ie, as a bridge of origin) and consistently. It also highlights that co-existence can present issues as brands and product lines evolve – arrangements should therefore be reviewed periodically.


Internet streaming: Earlier this year, the Court of Appeal once again referred the long-running ITV v TVCatchup dispute to the European Court of Justice (ECJ). TVCatchup provides an internet streaming service offering live television broadcasts to members. TVCatchup was previously held to have infringed copyright through streaming to mobile devices via a mobile telephone network, but had a defence against infringement when transmitting via the Internet. The ECJ has been asked to interpret the EU Copyright Directive regarding the meaning of the term 'cable' and whether wired internet services fall within that meaning. If so, it could provide TVCatchup, or any other streaming service that has not licensed content from broadcasters, with a potential defence against copyright infringement.

Website blocking order: In Twentieth Century Fox Film Corp v Sky UK Ltd, the court ordered the United Kingdom's major internet service providers to place a website block on a number of websites, including Popcorn Time, which offer streaming and BitTorrent file sharing of films and television programmes. The defendant internet service providers did not oppose the application, so the issue that the court considered was whether it had jurisdiction to make such an order. Once satisfied that the target websites had been properly identified, and armed with a technical understanding of how they worked, the court had no trouble finding that copyright had been infringed. Ultimately, jurisdiction was engaged and the blocking order was granted.

Equitable ownership: Fresh Trading Ltd v Deepend Fresh Recovery Ltd concerned ownership of the recognisable 'dude' logo used on packs of the Innocent brand of smoothies. The facts and payment provisions were complicated, particularly because the signed contract expressly transferring ownership of copyright could not be found. However, the court held that the parties were acting in accordance with the unsigned heads of terms and Fresh Trading had equitable ownership of the logo that it had commissioned. Ultimately, this decision should be used as a reminder that companies should keep accurate design records and all IP assignments should be made expressly and clearly.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.