Sunday Surprises

The IP Federation aims to improve the intellectual property (IP) framework to meet the needs of innovative industry by representing, nationally and internationally, the views of UK-based businesses. Its membership of 43 influential IP-intensive companies has wide experience of how IP works in practice to support the growth of technology-driven industry and generate economic benefit. 

Deadline for applications is Monday 26 August 2024 at 5PM.  Applications are to be sent to IP Federation recruitment at [email protected].

New IP Federation President takes the reins

In other IP Federation news, last month Danny Keenan (Unilever) stepped down after his year in the President’s role at the IP Federation.  Adrian Howes (Nokia) now takes the lead, supported by Vice President Sarah Vaughn (Rolls-Royce).  The IPKat congratulates Danny on a fantastic year at the helm which saw a change of government and another IP Minister (see below), and wishes Adrian and Sarah the best of luck in navigating the ever-eventful world of IP policy as the UK Government resets after the General Election.  To read more about the IP Federation’s activities, check out their Annual Review –  you can read the latest 2023 edition here (the AmeriKat, who spent her Christmas break editing the articles, can assure you that it is well worth the read).  

Feryal Clark MP appointed new IP Minister

For the 2022 IP Federation review, the AmeriKat wrote an article entitled “The IP Federation and the IP Ministers”.  Having pulled the stats since 2007, the IP Federation has worked with 16 IP Ministers (who on average spend 10 months in the role).  As of last month, it will be 17 with the appointment of Feryal Clark MP, the fifth woman in the role.  On 9 July, Clark was appointed Parliamentary Under-Secretary of State for AI and Digital Government at the Department for Science, Innovation and Technology.  She studied Bioinformatics at the University of Exeter, and was the Shadow Minister for Primary Care and Patient Safety and then for Health until November 2023.  Her portfolio is hefty, but unlike IP Ministers of yesteryear, actually has thematic congruence being that it includes:

• AI Safety Institute
• AI transparency and ethics
• AI regulation
• AI opportunities
• Large scale computer review
• Cybersecurity
• Digital public services
• Digital Centre of Government
• Digital identity policy  
• Copyright Tribunal
• Intellectual Property Office (IPO)
• Corporate Minister

Adam Williams (Chief Executive of the IPO) said he was “delighted” with the appointment  and was looking forward to working closely with the new minister to deliver “economic growth through science and technology“.  The IPKat team wishes the new IP Minister a productive, informative and long tenure in the role.

European Commission’s written intervention in HMD dispute reinforces Huawei v ZTE criteria in Germany

Back in April, the European Commission submitted written observations as an amicus curiae in the VoiceAge EVS v HMD Global dispute which is pending before the Munich Higher Regional Court (6 U 3824/22).  HMD, who is the exclusive licensee for Nokia-branded phones, alleged that VoiceAge EVS does not comply with EU law, as laid down by the CJEU in Huawei v ZTE (C-170/13).   At the end of last week, the Commission’s written submission was spied online (in German).  The Commission explained that that intervention’s objective is to ensure the uniform application of Huawei and, in the case of any doubts, the Munich court should be referring questions to the CJEU (paras 10 and 14).  As to the substance, although not opining on the facts of the case at issue, the Commission noted the conflicting judgments emanating from other German courts with those flowing from Munich (para 5) and the introduction of uncertainty as to the requirements for being considered a “willing licensee”, in circumstances where Huawei v ZTE only expressed the requirement to declare the willingness to be licensed in Step 2 (paras 85-87).  Paragraphs 5-8 summarize the Commission’s view as follows (unofficial English translation):  

“The different views of the Regional Courts of Munich I and Mannheim relate primarily to the requirements for proper infringement notice according to the Huawei judgment and the evaluation of the patent user’s declaration of willingness to conclude a license on fair, reasonable and non-discriminatory (FRAND) terms (steps 1 and 2 of the Huawei Framework, see section D.I.2 below).

In this amicus curiae opinion, the European Commission points out with regard to step 1 of the Huawei Framework that it follows from the Huawei judgment that the infringement notice must (i) draw the patent user’s attention to the patent infringement alleged, (ii) identify the SEP in question, and (iii) indicate how it is alleged to have been infringed. This information must be included in the infringement notice itself. The European Commission further notes that the Huawei ruling requires that the infringement notice be made before an injunction is filed.

With regard to step 2 of the Huawei framework, the European Commission points out that, according to the Huawei ruling, the patent user may reserve the right to review and, if necessary, challenge the effectiveness of the SEP in question and its materiality for the standard in question in his declaration of willingness to license FRAND terms. In addition, the willingness to license FRAND terms must be assessed on the basis of the content and circumstances of the declaration, but not on the basis of subsequent conduct during any negotiations.

Finally, the European Commission points out that, following the Huawei ruling, none of the steps of the Huawei framework, in particular the first two steps, following the filing of an injunction can be made up for. In addition, the individual steps of the Huawei framework must be checked in their predetermined order, so that the second step may only be checked if the first step has been done properly, and the third step only if the second step has been completed properly. The same applies to the fourth step.”

The intervention therefore throws up for discussion the Sisvel v Haier line of cases (see IPKat post here). Stakeholders, and lovers of the interaction of competition v contract law in the SEP space, will be fastidiously watching this case for the Munich court’s response, as well as how the Unified Patent Court will be applying Huawei v ZTE in future cases.