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Licensing Intellectual Property Questions

Oct 23, 2018 | 0 comments

Oct 23, 2018 | Essays | 0 comments

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Licensing Intellectual Property Questions

– This is an exam preparation questions.

– This is a UK system LLM course
– please note that these questions are copyrighted so it should not be published or distributed
– I am aiming to score a distinction mark in this course
– There is no a word count. Indicate what is relevant for each question.
– Theses questions are discussing 3 main topics in IP Licensing. Each topic has its own questions.

Guidelines on how to structure the questions:
– Discuss the most significant terms of a trademark/patent licensing agreement within a given factual context (e.g. Scientist enters a licensing contract with a research institute)
– After pointing out the significance of clearly identifying the parties and setting out the recitals, you should explain the general principles according to which you might decide that a term needs defining (or not; as the case may be; eg. Patent improvement)

Then organize answer according to the typical structure of licensing agreement:
– The grant of IPRS
– Maintenance of rights ( including arrangements for enforcement)
– Warranties..etc

– Use headings or questions to structure or organize the answer (e.g. What is the nature of the grant of IPRS?) pointing out the advantages and disadvantages of various options, citing statutory rules where relevant and using; where possible, cases to illustrate the pitfalls: eg.
– “Grant of Rights”
– “Type of license” refer to the statutory provisions where applicable
– Territories …etc
Note:
– The problem question is not an essay, one should approach it as a matter of setting out analyzing the issues for future litigation (I.e. Follow the IRAC method). Ensure everything that is relevant to the question is written. If the question asks you to “advise Maria as to her likely success in an action for trademark infringement” : don not begging as if you are introducing a treatise on trade mark (e.g. A trade marks can be a useful tool for…”; or some other statement that foes not relate directly to the question)
– where the question involves a dispute, begin by setting out the parties: e.g. Maria v Bioton; the action? Whether contract; trade mark infringement or both; and the remedy sought injunction.)
– if it is an essay style question, then it is advisable to structure the answer also using IRAC method; although it can be more discursive in the style of writing, following the model of a law review article (as opposed to a case brief).
– when solving: first mention that there are 2 potential legal actions (tort/breach of contract) and then why you have a good reason to ask for it.
– you have to specify legal parties, what is being licensed, number of application
– identify what is likely to be a legal issue and what is not

Questions (IP licensing trademark part):
Q1:
(A)- identify and discuss key terms in TM license.
(B)- infringement quality control (bare license UK, naked license US)
(C)- discuss pros and cons of exclusive and non-exclusive licensing
(D)- trademarks are subject to competition law scrutiny. Discuss that.

Q2:
Ben Ransome, the director of the Ransome Research, developed a genetically modified potato that is resistant to late onset blight, a disease that has plagued farmers for generations, having led to the Irish potato famine of the 1840s.

Ben Ransome seeks your advice in the following two unrelated situations:

(a) In 2012 Ben created a spin-off company to commercialise the genetically modified potato. At that time he also registered the mark ‘Brensome’ as a Community trademark (CTM) for agricultural products in Class 31 of the Nice Agreement. Ben is aware that trade mark licensing presents an opportunity to increase revenues by expanding markets fir the potato throughout the European Union. However, he is also aware if the expansion of the business is to promote a positive brand image, it necessitates an assessment of the legal issues associated with the various trade mark licensing agreements and their implementation. Advise Ben as to the terms that should be included in the various trade mark licensing agreements in order to protect his interests.

(B) Agbio Plc agreed to commercialize Ben’s genetically modified potato. In January 2009 Ben and Agbio entered into a licensing agreement providing that Agbio could use the CTM ‘Bensome’ registered to Ben, 5 years as a distinctive mark for the genetically modified potato. The agreement did not give Ben an express contractual right to inspect or supervise Agbio’s operations. Subsequently, Ben became involved in a dispute with Agbio over the sub-licensing of the mark. In June 2014, Ben commenced legal action against Agbio, based on his understanding that the parties’ 2009 Agreement had expired and that Agbio’s use of the mark constituted trade mark infringement. Agbio counter claimed arguing that the agreement was a bare or ‘naked, license, and that Ben had therefore abandoned any rights in the mark. Advise Ben as to the likely outcome of his legal action.

Q3:
Maria Mella, the director of the Mella Research Institute (MRI), decoded the complete genetic make-up of the English wild strawberry to produce a more flavoursome fruit that is better equipped to resist disease. Biotin Plc agreed to commercialize Maria’s genetically modified strawberry. When Maria learned that Biotin planned to develop a trade mark for the product, she insisted that Biotin use the name ‘Mella’ which she has registered as a Community trade mark for fresh fruit.

(A) Advise Bio-Gen as to the terms that should be written into the trade mark licensing agreement.

(B) In 2007, the parties entered into a licensing agreement providing that Biotin could use the name “Mella” for 5 years as a distinctive mark on all or part of the products’ it manufactured. The agreement did not give an express contractual right to inspect or supervise Biotin’s operations. Subsequently, Maria became involved in a dispute with Biotin over the sub-licensing of the mark. In January 2013, Maria commenced legal action against Biotin, based on her understanding that the parties’ 2007 agreement had expired and Biotin’s use of the “Mella” mark constituted trade mark infringement. Biotin counterclaims arguing that the agreement was a bare or “naked” license, and that Maria had therefore abandoned any rights in the trade marks. Advise Maria as to the likely outcome of her legal action.

Guidelines to answer the IP Trademark licensing questions:
– Is the grant exclusive or non-exclusive?
– Which trademarks are being licensed and what specific rights are being conveyed?
– What is the licensee permitted to do with such rights? What is the licensee prohibited from doing with such rights?
– what types of products is the licensee permitted to manufacture and sell? In which territories? And in which channels of distribution?
– sub licensing
– Parallel imports
– record of the licensing
– Protection of trademarks rights
– No-Challenge clause
– Warranties
– Indementies
– Quality control
– possible use for completion law defenses or Euro-defenses

References:
– Trade Marks Directive
– CTM regulation
– Noel Byrne & Amanda McBratney Licensing Technology
– Clive Lawrence, Brands, Jordans, ch 13
– Nell J Wilkof & Daniel Burkitt Trafe Mark Licensing

Cases:
– Jean Christian Perfumes v Thakrar
– Eva’s Bridal Ltd Halanick Enter Inc the U.S. Court of appeals
– Oracle America Inc v M-Tech Data
– Coty Prestige Lancaster Group v Simex Trading
– Copad v Dior
– Elizabeth Enmanuel V Continental Shelf
– Barcamerica International USA Trust v Tyfield Importers
– Perfumes Christian Dior v EVORA
– Zino Davidoff v A&G Imports
Trademark infringement:
– Sabel v Puma
– Arsenal Football club v Reed
– Davidoff & Cle SA & Zino Davidoff SA v Gofkid
– L’oreal SA v Bellure NV
Passing off:
– Reckitt & Coleman Products v Borden
– Taittinger v Allbev
– Wamink v Townend
-BT v One in a Million
– Irine v Talksport

Question on controlling the exploitation of personality rights:

Q1- discuss critacally Irvine v Talksport case in that relation. (Passing off)
Q2- discuss critacally Fenty v Topshop CA 2015 case. Include in the answer the following:
– statutory provision
– elements of action
– How the judges apply the tort of passing off to this case?
– How Rihana was successful for the unlawful image in the case?
– how to know if there is a compensation?
– When passing off will be applicable?
Q3- “Recent English case law has firmly established the celebrities and their licensees enjoy an unlimited right in controlling the commercial exploitation of their personality aspects.” Discuss the statement with reference to relevant case law.

References:
– Cornish, Llewelyn and Aplin, Intellectual Property, 7th ed. (Sweet & Maxwell), paras 17-01 to 17-47
Articles:
– T. Aplin, “Commercializing privacy and privatizing the commercial: the difficulties arising from the protection of privacy via breach of confidence” ch. 8, celebrity Rights, Forthcoming Ed. G. Westkamp
– R. Arnold ” Confidence in exclusives: Douglas v Hello in the House of Lords”, E.I.P.R. 2007, 29(8), 339-343
– S. Maniatis, Personality Endorsement and Character Merchandising: A Sparkle of Unfair Competition in English Law’ ch. 4 Celebrity Rights, Forthcoming Ed.G.Westkamp
– Westkamp G (2012)’ personality Rights, Unfair Competition and Extended Causes of Action’ ch. 3 Celebrity Rights, Forthcoming Ed. G. Westkamp.
– Westkamp G (2010) Trade Marks and their Limits, Oxford Journal of Intellectual Property and Practice vol.2010, (6) 331-335.

Cases:
– Attorney Journal V Guardian Newspapers
– BBC Worldwide Ltd and Another v Pally Screen Printing
– Campbell v MGN Ltd
– Coco v A.N Clark
– Douglas v Hello
– Eddie Irvine v Talksport
– Jif Lemon
– The Executrices of the Estate of Diana, Princess of Wales, Application (2001) ETMR

Questions on Patent licensing:

Q1- Scientists employed by the university of Cranford in England led by the professor HB Wells, have advised a smart contact lens that is equipped with a tiny camera sensor. The smart lens can be used to measure blood glucose levels in diabetic patients to provide continuous feedback to both wearer and medical practitioner.

Ida Innovation, the University’s transfer company, owns the patent for the technology. It wishes to enter into a licensing agreement with Optica Limited, a company renown for the making of optical devices, including lenses.

(A) Advise Ida concerning the kinds of clauses that should be included in the patent licensing agreement as means of protecting the University’s intellectual property interests.
(B) Ida Innovation assigns the patent for the technology and “all improvements” to Triton Limited for the further therapeutic development of the invention. Notwithstanding, the University’s scientists continue to refine the technology. Because the smart lens is able to capture images based on the user’s eye movements, the scientists devise the means to enable the processing and control of such images via cell phone. They consider this use of the technology may be of potential help to blind in certain activities, such as crossing the street. Ida Innovation is the applicant for a patent in relation to this later invention. Triton is threatening legal action, claiming that this new test is an improvement of the earlier invention. Advise Ida Innovation as to the likelihood of Triton successfully contesting ownership of the later patent.

Q2- discuss: reservation clauses and non-exclusive licenses for universities and scientists.

Q3- Discuss improvements and who owns improvements in patent licensing.

Q4- TTBER and impact of such a license.

Q5- possibility of new patent application

Guidelines on answering Patent licensing questions:
– Definitions
– Is the license exclusive or non- exclusive?
– register the license
– exclusivity as to territory
– Competition law
– Regulation EU No 316/2014 on the application of Article 101(3) of the treaty on the functioning of the European Union to categories of technology transfer agreements
– Improvements
– Competition and improvements
– publication
– royalties
– Protection of the license against infringement
– licensee title to sue
– jurisdiction for the enforcement
– is the no-challenge clause contrary to competition law?
– Competition law and the block exemption
– warranties
– post patent expiry fees
– restraint of trade

Key cases:
– Nungesser v. EC Commision
– Buchanan v Alba
– Oxonica Energy Ltd v Neuftec
– University of Western Australia v Gray
– Yeda research v Rhone-Poulenc Rorer
– James Duncan Kelly and Kwok Wai Chiu v GE Healthcare
– Greenstar-Kanzi Europe NV v Jean Hustin

References:
Intellectual property law, Bently Sherman
– intellectual property: patents, copyright, trademark, and allies rights. Cornish & Aplin
– M. Anderson ‘IP Transaction in the biotechnology and Pharmaceuticals sectors
– guidelines for examination in the European Patent Office
– GE Evans, University Patent licensing for the research and development of pharmaceuticals in developing countries
– GE Evans, Patent licensing strategies for the research and development of pharmaceuticals in the developing countries

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