Darren Smyth

Head of Knowledge at EIP, chemistry specialist patent attorney. Committee Member @ip_out 🏳️‍🌈Blogs at He/him

[Darren Smyth @EIP_Knowledge]

So, I have changed my Twitter handle because I have a new role at EIP - Head of Knowledge. This means (amongs other things) that I lead our preparations for legal changes and developments. At the moment, that is mainly the Unitary Patent and Unified Patent Court!

[Darren Smyth @EIP_Knowledge]

@downpressor January 1st is literally the feast of the circumcision.

[Darren Smyth @EIP_Knowledge]

@DominicSelwood The Emperor of Japan would like a word!

[Darren Smyth @EIP_Knowledge]

@zaichishka I am so sorry to learn of your illness and hoping the treatment does its thing. Glad you have a lovely couch to luxuriate on during the difficult time!

[Darren Smyth @EIP_Knowledge]

@hizaga @zaichishka They were a client of mine and I have visited the factory (which is also a sugar refinery) several times. You can also see it from City Airport. Sorry to report that it does not smell of the syrup.

[Darren Smyth @EIP_Knowledge]

Here is my report of the state of play at the Unified Patent Court after two years of operation. The new thing in the last six months - lots of cases now settling or otherwise being withdrawn. I estimate the rate about 18% as a lower bound.

https://t.co/EOMfezg6t1

[Darren Smyth @EIP_Knowledge]

@DrLucyCradduck @qutlaw @QUT @OxIPMoot So sorry to be missing it this year! but 👋👋👋 from Kyoto.

[Darren Smyth @EIP_Knowledge]

The avalanche transceiver dispute at the UPC reaches its next stage, with the patentee now having prevailed in the action on the merits (after obtaining a provisional injunction).

[EIP @EIP]

After securing an ex parte provisional injunction (which was upheld on review and appeal), Ortovox have now prevailed in the action on the merits in their case against Mammut, relating to avalanche transceivers.

Isabelle Schaller reports - https://t.co/Km90XYiCuj

[Darren Smyth @EIP_Knowledge]

The UPC doing their best to make patents enforceable despite difficulties in service in China. Two interesting decisions by default relating to provisional injunctions.

[EIP @EIP]

The UPC grants two provisional injunctions in decisions by default. No response was received from the Chinese defendant. Service of both the applications for provisional injunctions and the orders themselves took place by publication on the UPC website, after service through Chinese judicial authorities failed.

@EIP_Knowledge reports - https://t.co/eKZV7Q18j4

[Darren Smyth @EIP_Knowledge]

The UPC has considered infringement by equivalents a few times. Here, it declined to opine on a specific test, noting that any test requires functional equivalence as a prerequisite, which was lacking in the case.

[EIP @EIP]

A further decision from the UPC involving assessment of infringement by equivalent means finds functional equivalence lacking, and so declines to elucidate a full test.

@EIP_Knowledge reports - https://t.co/44lJW55tWq

[Darren Smyth @EIP_Knowledge]

Attempts to set aside a decision by default failed. The original failure to meet the defence deadline is confirmed as fatal by the court (although still subject to appeal).

[EIP @EIP]

The UPC confirms that having been refused an extension for filing a defence leading to a decision by default, a party cannot set aside the decision by default unless it can show justifiable reasons for missing the deadline. This case confirms again the importance of compliance with UPC deadlines, which are hard to extend.

@EIP_Knowledge reports - https://t.co/hBXyxqKlGk

[Darren Smyth @EIP_Knowledge]

@PaprikaGirl_JP Oh he performed (under his previous name) in London quite a few years ago and I have his autograph on the programme. He is an amazing actor.

[Darren Smyth @EIP_Knowledge]

I argue that the UPC ruling that is has jurisdiction over the UK part of a European patent to consider infringement is a conventional reading of the Brussels Ibis Regulation - German court has jurisdiction over German defendants is a less controversial reading of the case.

[EIP @EIP]

The UPC has ruled that it has jurisdiction to decide infringement for the UK part of a European patent, when the defendants are based in UPC territory.

@EIP_Knowledge argues that this follows a conventional understanding of the jurisdiction rules - https://t.co/59dWu4v3Jh

[Darren Smyth @EIP_Knowledge]

Here, the UPC elects to extend a period for one of the defendants, rather than order a stay, in view of upcoming EPO appeal hearing.

[EIP @EIP]

Milan Local Division grants extension of time period for filing statement of defence due to imminent EPO appeal hearing in parallel proceedings.

Stuart McKellar reports - https://t.co/S7If9eznpN

[Darren Smyth @EIP_Knowledge]

For at least the second time, the UPC Court of Appeal has reversed a first instance decision that I thought was clearly correct. I had better stop predicting.

[EIP @EIP]

The UPC Court of Appeal has controversially ruled that the UPC does have jurisdiction to determine damages after a decision from a national court on infringement.

@EIP_Knowledge looks at this surprising decision - https://t.co/pZOiMZhvtV

[Darren Smyth @EIP_Knowledge]

Provisional injunction on hand held vacuum cleaners overturned on appeal as CoA was not convinced the accused products worked as the patent claim requires.

[EIP @EIP]

Dyson's provisional injunction against SharkNinja relating to hand-held vacuum cleaners was overturned on appeal.

Harry Radford reports - https://t.co/5mDcDXcyzD

[EIP @EIP]

Having prevailed at the central division with the patent maintained in amended form, Edwards is also successful at the Munich local division in asserting its patent on prosthetic heart valves against Meril.

Monika Rai reports - https://t.co/THaBbR1uqo

[Darren Smyth @EIP_Knowledge]

This is the second DexCom case at the Paris Local Division to be decided purely on the issue of the validity of the patent. (The first case was one of the very first UPC decisions on the merits).

[EIP @EIP]

The Paris Local Division has revoked a further DexCom patent on the ground of lack of inventive step. As in an earlier decision by the same division and similar parties relating to a different patent, in view of the finding of invalidity, infringement was not considered.

Read the report here - https://t.co/ZqrBdFRQLC

[EIP @EIP]

The UPC has confirmed that breach of a standstill agreement between the parties does not deprive the Court of jurisdiction, nor does it render an action inadmissible. It can only give rise to liability for breach of contract.

@EIP_Knowledge reports - https://t.co/v8u59hyxpU

[Darren Smyth @EIP_Knowledge]

This is an interesting little judgment clarifying what a patentee must do after securing a provisional injunction by the mandatory deadline in order for the injunction not to be revoked.

[EIP @EIP]

After being granted a provisional injunction, a patentee has to start an action on the merits within a specified time, or the injunction will lapse. Here, the UPC clarifies that it is only necessary to file a Statement of Claim through the CMS by the deadline; it is not necessary for the court fee to have been received by the court within the time period.

@EIP_Knowledge reports - https://t.co/iaiRFUS5TW

[Darren Smyth @EIP_Knowledge]

This is a really interesting decision from the UPC finding infringement by equivalent means, and suggesting a 4 stage test by which equivalents should be assessed. We shall see if it is adopted more widely.

[EIP @EIP]

The UPC local division in The Hague finds a patent infringed by equivalence and suggests a test by which equivalence should be assessed at the UPC.

@EIP_Knowledge reports - https://t.co/lkvGeKmMCD