Is the reputation of London's IP rulings under threat?
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Is the reputation of London's IP rulings under threat?

If you want evidence that the UK’s IP courts are held in high regard, look no further than Samsung’s offer to the European Commission

Last year Europe’s antitrust watchdog informed the Korean company that its use of standard essential patents amounted, in its view, to an abuse of a dominant position. Now Samsung has responded with a series of offers to modify its behaviour.

One proposal would see the company promise not to seek injunctions in Europe using some of its SEPs as long as it used a specific process with would-be licensees to determine the proper FRAND royalty rate.

Working out royalty rates is notoriously tricky and many courts have been reluctant to help litigants thrash out the commercial details of licensing deals. But Samsung has proposed that court adjudication of any negotiations should be carried out by the High Court in London or by the UPC.

That’s a strong endorsement for the IP litigation system in England and Wales and for the judges who oversee it.

But is the reputation of the UK courts under threat? Managing IP has noted a trend towards allocating non-specialist IP judges to IP cases. In the last four months, for example, non-specialist judges have decided the high-profile trade mark disputes Assos v ASOS, BskyB v Microsoft and Mattel v Zynga.

Of course there’s a strong argument for having generalist judges: not least because they approach cases from a fresh perspective. But IP law is technical and growing ever more so.

The traditional view is that litigants dislike the cost of bringing an action before the London courts (all those pricey barristers and solicitors’ fees), but like the quality and fullness of its rulings. A comprehensive and well-reasoned ruling can deter appeals (saving the parties’ time and money). And a win in London can often force a settlement in multi-jurisdictional litigation.

It makes sense that the best decisions are made by judges with plenty of experience in the field. But London’s patent judges are increasingly tied up with smartphone litigation. Once the Unified Patent Court comes into effect, some of the UK’s IP judges may (although there’s no definitive view on this) find themselves in even greater demand. If they are, more non-specialist IP judges will be appointed to try disputes, particularly trade mark and copyright ones.

That could damage London’s reputation for high-quality IP rulings. The answer is appoint more specialist judges. One lawyer tells Managing IP that there is no shortage of candidates, but there is a shortage of money to pay for them, as budget cuts bite.

Such cost cutting could be short-sighted. English justice – particularly in IP – is an export business. Jeopardising it would be risky.

more from across site and ros bottom lb

More from across our site

Lawyers weigh in on the USPTO’s request for comment on the effects of AI on prior art analysis and obviousness determinations
A vast majority of corporates – especially smaller businesses – rely on a trusted referral when instructing external counsel, according to a survey of nearly 29,000 in-house counsel
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
The Munich Regional Court ruled that Lenovo was an unwilling licensee and had engaged in ‘holdout’ tactics
Technological innovation should play a critical role in advancing sustainable practices, argues Justin Delfino, global head of IP and R&D at Evalueserve
Ewan Grist of Bird & Bird, who acted for Lidl in its trademark victory against Tesco, reveals some of the lessons brand owners can take from the judgment
Dolby’s lawsuit at the Delhi High Court follows a record win by Ericsson earlier this year against the same defendant
Tee Tan, chief information officer at the owner of several IP firms, says to avoid tech just for the sake of it and explains how his company builds in-house tools
Regardless of whether the FTC’s ban on non-competes goes into effect, businesses should stop relying on these agreements
Mary Till, a former legal advisor at the USPTO who has joined Finnegan this week, is looking forward to providing clients with a USPTO perspective
Gift this article