The privatisation of everything

My daily runs - interrupted by a chest infection in recent weeks, but now restarted - often take me past the Harwell Campus, which must be one of the most important concentrations of technology businesses in the country. During the pandemic, the government funded the building of a production facility for vaccines - then sold it off to a private company (as reported here by the BBC). The government denies that it sold it, claiming that it was never the government's property anyway, but it was certainly paid for with public money and the non-profit company that did actually own it should surely have been contractually prevented from selling it - to safeguard public investment. What an old-fashioned view I have of these things! As far as I know, it hasn't made any vaccine yet. 

More recently, Moderna has started - and now nearly finished - building another vaccine research, development and production facility on the Harwell Campus (read about it here). It's hardly necessary when there's an unused one only a mile away, and it's big and ugly and unsuited to the predominantly rural landscape - it's not within the existing built-up area, it occupies what were open green spaces including football pitches and the area where there used to be an annual bonfire night celebration, complete with a hugh bonfire that probably made a failry significant contribution to global warming. And all this in an area of outstanding natural beauty, which seems to count for nothing in planning terms. To build it, the contractors closed off the route I have been running for about 30 years and which was surely a customary right of way (though I have to admit I did not raise hell about this as I should have done). They also dug up and built over the historic runway from which the first airborne troops set off for Normandy on D-Day (more exactly, the previous evening, I think: and Montgomery himself must have been present, as a previous occupant of the farmhouse adjacent to our house remembers him staying the night with her family). There is still a war memorial at the end of the runway, and now also an interpretative board that, when erected, helped understand the landscape - no longer, as it's all under a huge building. They also destroyed the experimental catapult pit that contained the equipment that the RAF hoped would enable them to get aircraft airborne with heavier payloads than they could manage under their own power, but which never worked very well. What price history? And the Prime Minister at the time was a great fan of, biographer of, and in his own mind it sometimes seemed reincarnation of, Churchill. 

What was RAF Harwell during World War II became the Atomic Energy Research Establishment (and its two reactors, resembling giant baked beans tins and called Dido and Pluto (though I always thought it was Aeneas) remained local landmarks although not for much longer), and is now owned by the AERE's successor UKAEA, jointly with the Science and Technology Facilities Council and Public Health England. All very much in the public sector, surely. Which is why I am vexed when footpaths are closed, or when signs stating that the land is private appear. I accept that parts of the Campus are a licensed nuclear site, and regardless of ownership must be off-limits (patrolled by the only UK police force that can carry firearms at all times, though they tell me they don't do so in practice, and which has a right of hot pursuit - both facts that I picked up in my pre-reading before going to university to begin my legal studies, quite a few years ago), but the rest of it should be the property of the public. 

It seems to me that, as nature does with vacuums, the modern world - the post-capitalist world - abhors public property. And this is not only tangible property (I'm getting to the point at last): despite the success of initiatives such as Creative Commons and the open-source movement, the trend is towards more and more enclosure (to use another concept from the world of agricultural land) in the intellectual property world. It's a trend that looks closely related to the "technofeudalism" that Yannis Varoufakiswrites about in his new book, which I am sure contains a great deal of interest to intellectual property lawyers. I'll get into that sometime later, once I have read his work.

In the IP world, we can see many developments that expand the realm of private ownership. Patent offices continue to measure success by the number of patents granted, while critics of the patent system would regard this as a bad thing. Likewise with the number of trade marks registered: each one represents a diminution of the scope for free speech, further depletion of the stock of available trade marks, foreclosure of the market to businesses who can't find a suitable brand or can't use the one they have developed in their home country. The breadth of trade mark applications continues to make life difficult for smaller businesses, who are often bullied by big trade mark owners. And in the copyright field, big tech takes what it wants - using others' copyright works to train their AI engines, for example - without seeking permission from, still less remunerating, the copyright owner.

I am teaching a new cohort of University of London International Programme students, and getting to know a new group of students coming fresh to UK IP law always makes me reflect - their first experience of it is this, whereas mine 43 years ago was very different and I don't think the changes in the interim are altogether a good thing. Perhaps not at all a good thing.

Inferring access when establishing a copyright infringement case

Once, Silent Witness was one of the better crime dramas on television, but as some point a few years ago (after changes to the cast had already made it a shadow of its original self) it seemed to lose its connection to reality. I have not watched it for many years now, and the claim that an episode infringed copyright in an earlier screenplay made me wonder whether claiming even such an association with the show wouldn’t be detrimental to the purported author’s reputation. But there you are – that’s probably just me being a grumpy old man.

Molavi v Gilbert & Ors [2023] EWHC 646 (Ch) (23 March 2023) is an unusual case, in that it came before the court on an application by the defendants (which included the BBC and BBC Studios Production Ltd as well as Virginia Gilbert, the named writer of the accused episodes of Silent Witness) for summary judgment, on the grounds that the claimant had no real prospect of succeeding in her claim – Part 24.2 of the Civil Procedure Rules. And indeed it is hard to see, on the basis of the reported judgment, how the judge’s (Marcus Smith J’s) conclusion could have been otherwise.

The case is an important one because copyright infringement claims so often rely on inferences. Direct evidence of the defendant taking the claimant’s work is unlikely to present itself. The claimant’s job is to satisfy the court about three matters: first, that the work is their original work; second, that the defendant has engaged in copying (or some other infringing act); and third, that what has been taken is a substantial part of the work.

The second part of that list is the one that matters here. The defendants accepted that the claimant’s work was original, and that if there had been copying it was of a substantial part of it, so the judge did not have to worry about those issues. It all came down to whether there had been copying at all.

The defendants said that the claimant could not show that they had had access to the work, and without access copying would simply be impossible. The claimant could not say how her work had been copied, because of course she was not privy to the process by which the defendants’ screenplay had been written: she had to rely on the inferences that copyright law, recognising that it is unrealistic to expect the claimant to be able so show definitely what happened, allows to be drawn. There must be objective similarities between the original work and the accused copy, and the defendant must have had an opportunity to copy – if these conditions are satisfied, it is up to the defendant to explain away the similarities.

In the present case, it’s almost as if a further level of inference is brought in. The claimant had no evidence that the defendants had ever had an opportunity to copy her work, so pointed to the similarities and argued that their very presence in the defendants’ screenplay suggested that copying had taken place. The similarities could not, the claimant argued, be down to coincidence.

That reeks of desperation, though clearly there will be cases where the claimant is rightly desperate. If the alleged copying is literal, I can see that the court might be prepared to draw an inference – if the defendant has come with something that is word-for-word the same as the claimant’s work, it would be an extraordinary coincidence if there were no copying. Most cases, however, involve non-literal copying, and here it is plain from the judge’s analysis of the respective works that they weren’t very similar. The timeline also worked against the claimant (the basic premise of Silent Witness had been established long before the claimant wrote anything).

Of course in the field of non-literal copying we have to be wary of the idea-expression dichotomy, lest ideas be given copyright protection to which as a matter of policy they are not entitled. When considering an inference of copying, the court has to take great care to ensure it does not overstep this boundary, so when the allegation is of non-literal copying the claimant is going to have an uphill struggle to convince the judge to infer that copying has taken place.

It’s also very important to remember that you can’t break a copyright work down into its component parts and compare them against the elements of the alleged copy. In that great old case, Ladbroke (Football) Ltd v. William Hill (Football) Ltd [1964] 1 WLR 273 at 277, Lord Reid warned us that this approach can lead to the wrong result. UK copyright law tends to look at works as a whole (in the US, a rather different approach is taken) rather than chasing similarities in the components of the works.

Establishing that copying has taken place is never exactly easy, unless there is a smoking gun in the form of identical choices of words or something like that. We probably didn’t need this case to remind us of that, but it is always useful to be reminded of points like this that may determine the outcome of ligitigation.

End of the Line for Australian Innovation Patents

 Australia has phased out its innovation patent system, following legislative changes to the Patents Act 1990 (Cth). 

The final day for filing a new Australian innovation patent is 25 August 2021.

The relevant amending provisions of the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020 (Cth) commence from 26 August 2021 - 18 months after the Act received royal assent.

What is (or was) an Innovation Patent?

The innovation patent was conceived as a simpler, faster, and more economical, form of protection for inventions compared to a standard patent or provisional patent.

Unlike a standard patent, an innovation patent does not require the applicant to demonstrate an "inventive step". 

However, the prospective patentee must still demonstrate the subject matter has:

• novelty - namely, the absence of public disclosure of the invention before the priority date; and 
• an innovative step - namely, that the invention is different from known prior art, and makes a 'substantial contribution to the working of the invention'.

The duration of an innovation patent (once granted) is up to 8 years after its filing date, subject to payment of annual renewal fees. The specification is limited to 5 patent claims and formal examination of the application is optional.

Once filed, the application may be granted in as little as 1 month, and examination (if requested) can be completed within 6 months.

The overall cost of the application (excluding professional attorney fees) is estimated at approximately A$1,500 - substantially less than the cost of a full standard patent.

The Phase-Out

In 2015, the Australian Productivity Commission was tasked with a review of Australia's intellectual property laws, including to "ensure that the intellectual property system provides appropriate incentives for innovation, investment and the production of creative works while ensuring it does not unreasonably impede further innovation, competition, investment and access to goods and services".

The Productivity Commission's Final Report was released in 2016, and included a recommendation to abolish the innovation patent system.

That recommendation was formally supported by the Australian Government in 2017, stating in its response: "The [Australian] Government considers that more targeted assistance would better achieve this objective [to stimulate innovation in Australian SMEs], while avoiding the broader costs imposed by the innovation patent system."

Legislation was then implemented in two parts:

• The 'Part 1' Act (passed in 2018) included amendments to copyright, designs and trade mark legislation, among other measures; and
• The 'Part 2' Act (passed in 2020) addressed the recommendation to abolish the innovation patent system.

According to IP Australia's official announcement, the phase-out stems from several reasons, which are reflected in the 2016 Productivity Commission Final Report:

1. The innovation patent's low barriers to entry made it easy to file a patent application, but resulted in a clogging of the system. Further, it was argued that strategic filers could exploit the system as a means of stifling competition.
2. The low innovation threshold and lack of compulsory examination created difficulties and uncertainty for other innovators in gaining a clear understanding of freedom to operate.
3. Innovation patents were not recognised internationally. This is said to have jeopardised international expansion prospects and exposed patent holders to potential copycat activity in international markets.

IP Australia's conclusion was that the innovation patent system had failed to achieve to its objectives, whilst imposing an A$11m annual administrative burden on the agency.

Where to from here?

Existing innovation patents filed before 25 August 2021 will continue to remain in force until their expiry, and divisional applications based on an existing innovation patent application will still be permitted provided the effective priority date is on or prior to 25 August 2021.

To support SME innovators, IP Australia has deployed a range of other measures including:

• an online portal;
• a dedicated "SME Fast-Track" patent process to shorten the examination timeframes for SMEs; and 
• piloting access to subject matter experts and case managers targeted at assisting self-filers.

It will remain to be seen what impact the removal of innovation patents has on the broader Australian patent landscape.

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Ben Thorn is an Australian intellectual property lawyer based in Brisbane, Queensland. He is the founder and director of Xuveo Legal, and is the current chair of the Queensland Law Society Technology and Intellectual Property Committee. Ben has been listed as a recommended intellectual property lawyer in Doyle's Guide 2020 and 2021.

TRIPS waiver: many academics sign open letter supporting it

 The idea that the TRIPS agreement should be waived (just a little) to remove IP protection from Covid vaccines, first raised by India and South Africa a few weeks ago, has new momentum following publication of an open letter signed by “over 100 international IP academics” supporting the intiative. The list contains some well-known names (well-known, that is, to IP practitioners and students) although a couple that are missing are perhaps even more significant (I leave you to work out who they might be). You can read the text here and my friend Mark Anderson's take on it here. He is not convinced, and neither am I.

Despite the government's commitment (superficially at any rate: it hasn't exactly stuck to the script, otherwise it would never have repealed s.52 or introduced criminal offences for designs) to the Hargreave Report's recommendation that changes in the law should always be supported by hard evidence - so-called "evidence-based policy-making" - the letter is rather short on hard facts. It footnotes a number of academic papers, and perhaps I should not expect an open letter to go into its evidence at any length but simply citing academic articles is not very convincing. Annoyingly, the links in the footnotes do not take you to the articles themselves, which would have enhanced the credibility of the exercise: I would have liked to have been able to look at them easily. As it is, I have downloaded the half-dozen that look most relevant and will read them in due course, but as this is not a peer-reviewed academic journal I don't need to be extremely rigorous in expressing my opinions.

It seems to me that, while the patent system clearly failed to ensure that we had a vaccine from an early stage (however magical the patent system is, it could hardly have produced a vaccine before the pandemic), it is not good enough to say that it must therefore be done away with - at least for the duration of the present emergency. Perhaps the proposed waiver would help, but if it does I think it will be only in a very small way. Waiving patent (and other IP) protection is all very well, but without the accompanying know-how the patent will be of little use. Protection for know-how could also be waived, but far from ensuring that the information becomes freely available, that is likely to cause the pharmas to keep its secrets even more tightly controlled.

This is a crisis in which there has been a conspicuous failure of the market system, which is built on patent protection. Vaccines have been produced not because the pharmas could enjoy monopoly profits from behind their patent fortifications, but because governments gave them a great deal of public money. There is a very important discussion to be had about how the fruits of that expenditure - the patents and other IP - should be distributed, and no doubt the pharmas will say that they need the patents for the future, and perhaps that the publc money was just a contribution. It might well lead to a fundamental reappraisal of how the patent system works, and the desirability of creating so many private monopolies especially when they are created at public expense. But that is very far removed from saying that patent protection should be waived. Perhaps it would make a contribution, and perhaps the evidence that I haven't yet read will support that, but it will be a very small contribution, quite out of proportion to the amount of noise being made about it, and it would be far more productive to direct the energy that is being expended on the waiver campaign to matters that will have a more immediate and greater impact on the problem.

Unified Patent Court agreement not contrary to German constitution

The Unified Patent Court, which will bring much-needed consistency to patent litigation in Europe (but which the UK will do without), has already faced problems in Germany once: back in March 2017 it was approved by the Bundestag but not by the right majority, so the decision was declared void. Then the UK dropped out (initially after the referendum the UK government, in an excess of "cakeism", announced that it would still participate although no-one could quite see how that would work, but then someone noticed that the Court of Justice had a role to play in the new system and it suddenly became an impossibly hot potato), which threw the entire project into doubt. But now the Bundesverfassungsgericht (federal constitutional court) has rejected two claims that the UPC Agreement violated fundamental rights under the Constitution and the way seems clear for the Bundestag to approve it again (by they correct majority this time).

As this is not a blog about German constitutional law, and one of the many things that I am not is a German constitutional lawyer, I won't try to explain the details. The court has very helpfully put out a press release in English (here). It's got at least one split infinitive in it, but apart from that the English is excellent: if you prefer, the German version is easy to find from that same link but that's all the language versions there are to choose from.

IPO launches consultation on exhaustion of IP rights post-Brexit

The UK government has launched a consultation on the future regime for the exhaustion of IP rights. The consultation is open for responses from 7 June to 31 August 2021. It is going to be a crucial decision which would significantly impact IP owners, consumers, and others involved and affected by parallel trade. 

IP rights give economic incentives for creations, products and innovations of new technology, enabling rights owners to benefit from the information and intellectual goods created. Consumers benefit from the availability of a wider range of innovative or attractive goods. But move away from this justification and you have a plain old monopoly, which means fewer goods being made, innovation being sidelined, and prices being raised.

The doctrine of exhaustion of IP rights exists to balance the different interests of consumers and rights owners when goods move between jurisdictions, preserving competition in situations where the traditional justification for IP protection is not convincing. The doctrine limits the ability of IP rights holders to use their rights to control the distribution of physical goods once they have legitimately been put on the market. Intellectual property rights can be invoked to prevent goods crossing territorial borders, an issue that has caused problems within western Europe since the earliest days of the European Economic Community. “Parallel trade” - goods moving between national markets outside the manufacturer’s official channels, are a challenge to rights-owners’ marketing strategies, but often a key factor in reducing prices.

Price differentials, naturally, lie at the heart of parallel trading. Traders - arbitrageurs, they might prefer to be called - will buy goods where they are cheap and move them to markets where they command a higher price. At one level, this is nothing that has not been going on for centuries: Traders will buy produce where it is grown and move it to where people want to buy it. But in the consumer society it’s far more complicated. Purchasing power differs enormously, even within the European Economic Area, and a rational manufacturer will pitch their prices according to what local consumers can afford - which might represent a fantastic bargain to someone in a richer EU country.

Following Brexit, the UK is no longer bound by the requirements of EU’s rules, which in essence say that once goods have been placed on the market within the European Economic Area any IP rights attached to them will not be infringed if those goods are imported into another Member State (although the rules do provide for cases where there are legitimate reasons for stopping parallel imports, for example where they have been repackaged). The goods have to be free to circulate within the EEA. Notwithstanding all the talk of taking back control, the UK (at least in part because the Northern Ireland Protocol limits its room for manoeuvre) continues to apply the same rules after Brexit, so we are open to trade in cheap pharmaceuticals from The Netherlands; but the EU simply treats the UK as a third country, not within the Single Market, so parallel imports entering EU Member States from here are likely to infringe.

The consultation identifies four possible regimes: 

● The current unilateral EEA regime 

● National exhaustion 

● International exhaustion 

● A mixed regime 

The current unilateral EEA regime 

Once goods are put legitimately on the market in the EEA, rights are considered to be exhausted in the UK. IP rights cannot be used to prevent goods being imported from the EEA into the UK. On the other hand, the EEA is closed to parallel imports from the UK, but that is a matter for EU law so naturally the consultation does not touch on this aspect.

National Exhaustion 

Under this regime, rights are only considered exhausted in the UK once goods are legitimately put on the market in the UK, so IP rights can be used to prevent goods put on the market anywhere in the world from flowing into the UK. But this option has been ruled out by the government because of the inconsistency with the Northern Ireland Protocol, which means no checks are needed on the goods crossing the border with the Republic of Ireland. 

This option was only included in the consultation to gather what evidence is available on economic impact.

International exhaustion 

This regime would automatically allow the import of goods from any country. exports, on the other hand, would be automatically allowed only to those other countries with an international regime. This means that the rights are considered exhausted in the UK when goods are legitimately put on the market anywhere in the world. IP rights then cannot be used to prevent goods from entering the UK from any other country. This would have significant implications for IP owners in that it would limit their ability to prevent goods from being parallel imported into the UK. 

We have been here before, though it was over 20 years ago. Following the Silhouette case, the Commission had a report drawn up entitled "The economic consequences of the choice of regime of exhaustion in the area of trademarks" (NERA/SJ Berwin, February 1999), which found that the issues were complex and the benefit to consumers of changing to international exhaustion likely to be small (in some sectors under 2 per cent). It then consulted widely, including with Member States: in the UK, the result of this was the Eighth Report of the Select Committee on Trade and Industry (9 July 1999). The Commission dropped the idea of changing, though the Select Committee favoured international exhaustion at least for some goods. Which leads us to...

A mixed regime 

This would mean that specific goods and sectors could be subject to one regime and all other goods, sectors and IP rights subject to a different regime. Switzerland has a regime in which most goods can be parallel imported but an exception for medicines which is governed under their national regime. It is going to be a rather complex system if implemented and may be difficult for consumers and businesses to understand, but that doesn’t seem to have given the government pause for thought since the referendum. 

Note that the consultation does not cover some major topics such as: 

● Exhaustion of rights in purely digital goods. 

● Geographical indications or plant variety rights 

● Counterfeit goods 

● Parallel exports

Conclusion

Since the “National Exhaustion regime” has been ruled out, the UK government is left with limited possibilities . It will be interesting to see which regime will win the votes for this Post-Brexit battle as this will be of great commercial concern. Will the Government  head towards a “Mixed regime” and implement a complex system for consumers and businesses or getting cheap exports through “International regime” become the vote-winner? Only time will tell.

Post-implementation review of s.72 CDPA

 The government recently announced a post-implementation review of the changes made to s.72 five years ago.

S.72 creates what the government (though the IPO) tells us is "an exception to copyright infringement" though I insist (especially to students) that it is a permitted act. If the legislation uses that terminology, why should we call it something different? It has the effect of an exception to copyright infringement, but calling it by that name is sloppy.

Anyway, that section (should you need a reminder) permits free showing of a broadcast, and certain copyright elements that go with it (because a broadcast has to be of something: in modern terminology, which I also find objectionable because it devalues the work of creative individuals, "content"), and applies only in places where the public has free access, which may include retailers, hospitality, community spaces, gyms, voluntary centres, hospitals, charities, and some workplaces.

The Copyright (Free Public Showing or Playing) (Amendment) Regulations 2016 amended s.72 by removing “film” from the list of exceptions. That's a small change, but a dramatic one, akin to adding the word "not" to a sentence. 

The change was a response to a series of judgments of what the IPO calls the Court of Justice of the European Union, or CJEU, which is not entirely incorrect but unforgiveably sloppy: the CJEU is the judicial institution of the EU, comprising two tribunals (the Civil Service Tribunal having been merged into the General Court in 2016). The Court of Justice is one of those tribunals, which is daft and highly confusing but it should be capable of being understood by a moderately intelligent person, and certainly by a lawyer. Anyway, if you want to revisit it, the original consultation is here along with a further consultation (when the government changed its mind a bit) and the government response.

The bit that the government changed its mind about involved what I think is probably the most interesting aspect of the whole exercise, the distinction (which EU law makes) between the cinematographic element of a film and the fixation aspects. It's not a distinction that our copyright law has ever made, as the Court of Appeal found in Football Association Premier League Ltd v QC Leisure & Ors [2012] EWCA Civ 1708 (20 December 2012), so basically the government agreed with a number of reespondents that the best thing to do would be to take out the word "films" altogether.

At the heart of the matter lies the showing of broadcasts of football matches in public houses, and clearly this was something that FAPL wanted to be controllable by the copyright owner. At first glance this seems a heavy-handed approach, because there will surely be collateral damage: all manner of broadcast films will be removed from the scope of the permitted act. But the get-out-of-jail free card here seems to be that this content is already covered, to a large extent if not completely, by collective licensing arrangements.

There is a lot more to this consultation than I have had time to mention here, but it is a specialised area and I don't propose to comment in great detail. I have nothing to say to the government in response to their questions: I cannot give them any evidence to help the consultation, so I'll just draw readers' attention to it, provide links to assist with further research, and move on to something else.

Secretary of State v Servier: Supremes decline to broaden scope of unlawful means tort

When a patent is held to be invalid for want of novelty or inventiveness, a party which has suffered loss by being denied access to cheaper products cannot get damages on the basis that their loss was caused by unlawful means. In Secretary of State for Health v Servier Laboratories Ltd, where the loss arose because there were no generic equivalents of the invalidly-patented drug, the Supreme Court held that the "dealing requirement" laid down in OBG Ltd v Allan [2008] 1 AC 1, which states that the unlawful means should have affected the third party’s freedom to deal with the claimant, is a necessary element of the tort. So it's not exactly a patent case, but it deals with interesting questions about what an applicant or patentee can and can't do to protect their invention when novelty or inventiveness is in doubt.

The issue of the validity of the UK designation of the patent in suit was held to be invalid as long ago as July 2007 by the late Pumfrey J held ([2007] EWHC 1538 (Pat)). It lacked novelty, or alternatively was obvious over another existing patent. The Court of Appeal upheld that decision in May 2008 ([2008] EWCA Civ 445), the leading judgment being given by Jacob LJ, and in 2009 the EPO Technical Board of Appeal revoked the patent.

Causing loss by unlawful means is an economic tort, consisting of acts intended to cause loss to the claimant by interfering with the freedom of a third party in a way which is unlawful and which is intended to cause loss to the claimant. In this case, the claimant was of course the Secretary of State (not the recently departed one - it would have been Jeremy Hunt at the relevant time) and the third parties whose freedom was interfered with were the European Patent Office and the courts of England and Wales. As neither of the third parties had dealt with the Secretary of State, the claim could only succeed if the court said that the dealing requirement did not form part of the ratio of OBG or departed from that case (which, incidentally, was one of three cases dealt with together by the House of Lords, one of the others being better-known to IP lawyers: Douglas v Hello!).

To cut a fairly long story (30 pages) short, the Supremes could see no reason to do either of these things. In reviewing Lord Hoffmann's reasons in OBG for imposing the requirement, they listed seven good reasons for it, which should be enough for anyone. The claim was struck out by the judge at first instance, the Court of Appeal upheld him, and now the Supremes have too.

Whether the patentee deceived the EPO or the courts is another matter: for the purposes of the strike-out, it was assumed that they had, but the important matter is that there was no sufficient connection between the alleged deception and the loss that the Secretary of State claimed to have suffered. Under the 1966 Practice Statement which remains effective in the Supreme Court (see Practice Direction 3, para 3.1.3), there was no reason for the Supreme Court to depart from OBG, no injustice that called for the invocation of that Statement.

But this is an intellectual property law blog, so we should leave the tort law to others - if the Secretary of State cannot claim on the basis of unlawful means, what can he (or, though not then and not now, she) do about what would (if proven) be reprehensible conduct? Jacob LJ dealt with this back in 2008, saying that there might be a sanction under competition law but noting that the application of that body of law to unmeritorious patents was not something that had been explored. There is, it seems, a claim that Servier's conduct amounts to an abuse of a dominant position, and we (and the Secretary of State) must now wait to see how that goes. It certainly looks more promising, and more closely related to patent law than the tort under consideration in today's judgment.

OpenStreetMap identifies catastrophic effect of Brexit on database right

The Guardian today reports that the open-source mapping project OpenStreetMap, described as "Wikipedia-for-maps", is contemplating relocating from the UK to somewhere that is still in the EU. Although there seem to be manifold reasons, one of them (and I should have thought a pretty important one) is the fact that databases of UK origin will no longer enjoy protection in EU27.

What we know (and possibly love) as database right in the UK is, of course, a creature of EU law. Actually, it's old enough to be EC law: Directive of the European Parliament and of the Council 96/9/EC on the legal protection of databases, implemented by the Copyright and Rights in Databases Regulations 1997, SI 1997 No 3032. Those regulations were amended in 2003 and further amended in the blizzard of secondary legislation that was caused by Brexit, by the Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2019, SI 2019 No 605 (Regulation 28 is the place to look, if you are interested). I wrote about all this not long ago, here, but it bears repeating in this new context.

The amendments are not complicated, although it takes a lot of legislative verbiage to convey what they are doing: where the original legislation mentioned the EEA, it now refers to the UK. This means that where previously a connection with the EEA (being a national of an EEA Member State, or incorporated in one, or habitually resident in one - I am going from memory here, so please check the legislation if it's important for you) meant your database qualified for protection in the UK, from now on (for databases created after IP completion day, as 11pm on 31 December 2020 is called - "completion" being a form of Newspeak and actually denoting something very different) you have to show the same connection with the UK. For databases created before IP completion day, protection continues on the old basis and for the original term, but I imagine that will cause all kinds of interesting problems when the proprietor finds it convenient to argue that there has been a substantial change in the database such that protection can start running again - only to find that it potentially means the database no longer qualifies for protection.

Anyway, that's the other side of the OpenStreetMap coin. What OSM are worried about is the treatment of databases of UK origin in the EEA, and of course with the UK no longer being in the EEA, UK databases (if I may call them that) no longer enjoy the protection of the sui generis right created by the Directive. Pre-existing databases will still be protected, by virtue of Article 58 of the Withdrawal Agreement, but given the nature of databases that is a wasting asset. Arguably, the OSM database is a pre-existing one and (the OpenStreetMap Foundation being incorporated in England) it therefore enjoys continuing protection, but the term is only 15 years: the saving grace, for database makers, is that a substantial change to the database "which would result in the database being considered to be a substantial new investment" qualifies the resulting database for protection. Never having had to think about it particularly before, I had reduced that rule to "a substantial new investment in the database keeps the 15 term running", but clearly that is too simplistic: in fact, a substantial new investment means you have a new database which is protected for 15 years, and that makes it abundantly clear why OpenStreetMap are unhappy.