25th October, 2021 / 9:00 - 13:00
28th March, 2019
In the world of intellectual property rights, it is the exhaustion of rights doctrine which determines how far an IP owner may control IP-protected products after the first act of authorised distribution, including their territorial distribution.
Depending upon your viewpoint, parallel importers either benefit society by encouraging cross-border trade and reducing consumer prices, or they operate in a murky ‘grey market’ and free-ride unfairly on investments made by innovators and brand owners.
Despite the general impetus towards increasing harmonisation of IP laws, the TRIPS Agreement of leaves the choice of national, regional or international exhaustion largely as matter for each member to decide. In this time of political flux, tariffs and other trade barriers are now back on the agenda as governments look for policies to shield national economies from the negative effects of globalisation. Whither the UK position on exhaustion in light of Brexit?
In the recent cases of Kirtsaeng and Lexmark, the US Supreme Court surprised many by adopting the international exhaustion standard for both copyright and patent law. Conversely, the Mitsubishi case (C-129/17), reinforces the CJEU’s ‘fortress Europe’ approach. The challenges posed by technological development may be fuelling a protectionist agenda. How does exhaustion of rights apply in the cases of digital redistribution? Or 3D printing? How far may right holders to rely upon contractual or technological measures to by-pass the exhaustion doctrine altogether?
UCL’s Institute of Brand and Innovation Law has brought together a distinguished panel to navigate the complex legal landscape which governs exhaustion of intellectual property rights.
About the Speakers
Irene Calboli is Professor of Law at Texas A&M University School of Law, Academic Fellow at the School of Law, University of Geneva, and Visiting Professor at Nanyang Business School, Nanyang Technological University. She has written extensively on exhaustion of rights. Her books include Intellectual Property Exhaustion: A Critical and Comparative Approach (2018) with Shubha Ghosh and the edited collection, Research Handbook on Intellectual Property Exhaustion and Parallel Imports (2016) with Edward Lee. Her other research interests also include overlapping intellectual property protection, geographical indications of origin, and the intersection between intellectual property and international trade.
William Bowes is General Counsel and Director of Policy at The Publishers Association. He joined in 2017, having previously served as General Counsel of Cambridge University Press – the world’s oldest publisher. William qualified as a solicitor in the intellectual property team at Wragge & Co (now Gowling WLG), and he has also worked with Penguin Books and Informa PLC. The Publishers Association represents book, journal, audio and electronic publishers in the UK, spanning fiction and non-fiction, academic and educational publishing.
Dr Christopher Stothers is a partner in the London office of Freshfields Bruckhaus Deringer LLP. Working across the all fields of technology, including pharmaceuticals, biotechnology, medical devices, software and telecommunications, Christopher is an experienced litigator in cross-border disputes. He also litigates and arbitrates other intellectual property, antitrust and pharmaceutical regulatory issues. Christopher is a Visiting Professor at UCL Faculty of Laws, and has authored numerous pieces on the subject of exhaustion of rights, including a chapter in Professor Calboli’s edited collection (above) and Parallel Trade in Europe: Intellectual Property, Competition and Regulatory Law, which was shortlisted for the 2008 Young Authors Inner Temple Book Prize.
Mathew Cope is Deputy Director IP Enforcement at the UK Intellectual Property Office. Matt took over responsibility for the IP enforcement team at the UK IPO in May 2014, but has worked for the IPO for over 18 years. A Mechanical Engineer by training, Matt originally joined the IPO as a Patent Examiner before moving into policy work, working in various areas such as corporate strategy, copyright reform and digital and online issues before moving to focus on IP Enforcement. Matt’s team cover all aspects of enforcement policy for both civil and criminal law including policy relating to exhaustion of rights.
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