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Dallas Buyers Club, poisonous priority & UPC locations – news roundup



James Nurton, London


Recent IP developments in Europe and Asia include a defeat for Dallas Buyers Club in Australia, a new referral to the EBA in Europe and a decision on the location of the London branch of the UPC. Plus: a webinar on IP Stars and a speech by Jeremy Phillips

Dallas defeated down under

Dallas Buyers ClubDallas Buyers Club has suffered a blow in its bid to pursue file sharers in Australia. In a judgment today, Justice Perram of the Federal Court of Australia rejected the demand letter that DBC proposed to send to 4,726 iiNet account holders. He also said that the movie company should post a bond of A$600,000 ($445,000) to secure its undertaking, as it has no presence in Australia.

DBC’s proposed demand comprised four claims: (a) the cost of an actual purchase of a single copy of the film for each copy of the film downloaded; (b) an amount relating to each infringers’ uploading activities; (c) punitive damages depending on how many copies of other copyrighted works had been downloaded by each infringer; and (d) damages arising from the amount of money it has cost DBC to obtain each infringer’s name.

Perram said that while (a) and (d) were reasonable, (b) and (c) were "untenable" and outside the powers of the court: "[T]he power does not extend to facilitating court cases or negotiating positions lacking legal substance."

In a report, CNET said: "The ruling was greeted with surprise across the industry, with legal pundits regarding Justice Perram's decision as big win for both ISPs and customers," while Leanne O’Donnell said on Twitter: "Crucially Perram J has limited scope of 'speculative invoicing' in Au to exclude claims for punitive damages & loss re uploading."

EBA to review poisonous priority

Five questions have been referred to the EPO’s Enlarged Board of Appeal concerning the problematic issue of partial priority. The referral, in a case involving a patent filed by Infineum, aims to address a divergence in the EPO’s case law regarding priority.

In an article on his firm’s website, David Holland of Carpmaels & Ransford said: "The answers to the referred questions will rewrite, or at least significantly clarify, the concept of partial priority, with potential effects on pending patents and applications. No matter how the Enlarged Board answers the first four questions, it will have to address the 'toxic divisional’ problem head on."

Meanwhile, on the IPKat blog, Darren Smyth said he was "pleased to see that the Board purposely formulated the questions in terms broader than those suggested by the parties, such that they reflect the issues of partial priority generally, which can arise whenever there is state of the art potentially relevant under either Article 54(3) or 54(2) EPC, and not only in situations of 'poisonous priority’."

In an article on his firm’s site posted in January this year, Andrew Carridge of Reddie & Grose defined poisonous priority: "[I]n some circumstances, a European (or UK) divisional application could destroy the novelty of a claim in a parent patent or application that is not entitled to priority, or vice versa."

We will bring further analysis of this case as it develops.

UPC’s London home

Aldgate TowerThe London branch of the UPC Central Division, which will handle life science cases, and the UK local division will be located at Aldgate Tower, an office block in the City of London. The UK IPO this week confirmed that it had signed a lease for the 8th floor of the building, which covers 19,506 sq ft (1,789 sq metres).

The decision has been broadly welcomed by central London-based IP practitioners, as the government had previously been looking at a location in the Docklands area east of the city, which is less convenient.

Read more about the other locations of the UPC in our recent article, and find more information on our dedicated page managingip.com/upc.

Where are we?

Also in London, the next dinner meeting of UNION-IP, which takes place on September 10, features Professor Jeremy Phillips talking on the topic: "IP in 2015 - Where we are v Where I thought we'd be".

As many readers will know, Phillips founded Managing IP back in 1990 and is well known for his blogs, publications and teaching. He has said he will retire at the end of 2015, so this may be your last chance to hear him speak.

Tickets are £44 (members); £69 (non-members) £35 (first-timers). Register here.

IP Stars – your questions answered

Phil CoxWe receive a lot of enquiries about the methodology, process and timing of our research for IP Stars and the Managing IP Awards at this time of year, as the research process starts in September.

To address some of the most frequently asked questions, we are holding a free webinar on September 3. Speakers include some of our researchers and Phil Cox of Global Law Marketing, who has experience of submitting information to IP Stars and other directories.

If you would like to know more about the process and ask questions of the researchers, please sign up for the webinar. If you can’t make the date, a recorded version will be available soon after.


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