Duncan Bucknell

When Your Strongest Asset Is What You Leave Off the Label

Duncan — Mon, 08 Jun 2026 23:02:00 +0000

The most valuable thing a competitor can do to your patent is comply with the law around it. That is the quiet lesson for IP-intensive businesses in the US Supreme Court’s unanimous June 2026 ruling in Hikma v. Amarin (read it here).

Amarin held a method-of-use patent on the cardiovascular indication for its drug Vascepa. Hikma launched a generic under a skinny label that carved out that patented use and kept only the off-patent one. Amarin’s induced infringement claim leaned on the totality of Hikma’s conduct: its label, its leaflet, its website, its investor press releases. The Court was unmoved. Inducement requires affirmative steps to encourage infringement, it held — not statements a physician could read as encouragement, and certainly not routine regulatory compliance, standard equivalence language, or what the drug didn’t say. Omissions, vagueness and “obvious alternative explanations” don’t cross the line.

For brand- side IP Managers, a second medical use patent is a real asset, if you can, figure out and claim all commercially viable indications – because the generic and biosimilar companies will. For generics and biosimilar teams, it confirms that a disciplined carve-out plus genuinely neutral commercial conduct is a defensible launch strategy, though note that Australian courts (Apotex v Sanofi, the pregabalin litigation) look hard at real-world market behaviour and won’t always reach the same result.

The takeaway for any IP-intensive organisation: your competitive position is decided long before litigation, in the choices about what you patent and how you behave commercially around it. Treat IP strategy as a business decision, not a filing exercise — and design your evidence trail, on both sides of the fence, before you need it.

The Reverse Payment You Didn’t Know You Made

Duncan — Mon, 08 Jun 2026 00:18:20 +0000

A patent settlement can look perfectly clean on its face and still carry antitrust risk buried in its economics. That is the lesson from an $885 million jury verdict handed down in Boston this month, where Takeda was found liable for effectively paying a generic rival to keep its version of the IBS drug Amitiza off the market. There was no cheque labelled “reverse payment.” Instead, the plaintiffs pointed to the structure of the deal — a 50% royalty that dropped to 15% if a second generic entered, and to zero with a third — and argued it gave Takeda every commercial reason not to launch its own authorised generic. The jury agreed, finding an implicit “no-AG” agreement and a large, unjustified payment under the Actavis rule of reason. It is the first time private plaintiffs have taken a pay-for-delay case all the way to a jury and won, and the damages could treble to roughly $2.5 billion.

How you transfer value matters as much as whether you transfer it. Courts and juries will read the commercial logic of a settlement, not just its wording — and an arrangement engineered to suppress competition will be treated as exactly that, however carefully it is drafted.

Tie any agreed entry date to a genuine, documented assessment of patent strength. Scrutinise royalty schedules, authorised-generic rights and every other lever for incentives that look exclusionary in hindsight. And note the timeline: a 2014 deal was still being unwound in 2026 — settlement decisions have a very long risk period. Strong IP strategy isn’t only about owning strong patents. It’s about structuring the deals around them so the economics tell the same story as the paperwork.

Katten’s analysis of the verdict: https://katten.com/lessons-from-landmark-jury-verdict-in-amitiza-reverse-payment-antitrust-case — and the reporting from FiercePharma: https://www.fiercepharma.com/pharma/takeda-slapped-885m-verdict-pay-delay-antitrust-case

One Court, Many Borders: Why the UPC Just Redrew Your Litigation Map

Duncan — Fri, 05 Jun 2026 18:09:00 +0000

The Unified Patent Court has signalled that its reach extends well beyond its own member states, and IP-intensive businesses should take note. In its 2 June 2026 decision in Fujifilm v Kodak, the UPC Court of Appeal confirmed that Article 34 of the UPC Agreement is not a territorial cap—where a defendant is domiciled in UPC territory, the Court can hear infringement claims tied to national designations of European patents in non-UPC countries, including the UK. The strategic point is that domicile, not the location of the alleged acts, is now the anchor. For patent owners, that opens a single forum to pursue cross-border relief that once required parallel suits in multiple jurisdictions.

For potential defendants, it means a German (or other UPC-state) corporate footprint can pull your UK and other foreign exposure into one court—worth factoring into where you incorporate, manufacture, and hold title.

But accepting jurisdiction is one thing; exercising it is another, and that distinction is where the commercial discipline lies. The Court built in safeguards through comity: it can grant relief on foreign designations subject to a condition that the patent isn’t later found invalid by the competent national court, giving defendants a clear incentive to move fast in national revocation forums if they want to resist a long-arm injunction. And clearing the jurisdictional hurdle guarantees nothing on the merits—Fujifilm’s UK claim ultimately failed because, under UK law, supplying goods abroad to a party that later imports them isn’t enough for joint tortfeasorship.

The takeaway for IP strategy: map your domicile and supply-chain structure against this expanded reach, decide early whether to maintain or withdraw extra-territorial claims, and remember that winning jurisdiction is the start of the contest, not the end of it.

Bristows’ full Rapid Reaction analysis is worth reading in full: https://inquisitiveminds.bristows.com/post/102n0w7/rapid-reaction-upc-court-of-appeal-clarifies-the-approach-to-long-arm-claims-fu

When a Sign-Off Becomes Someone Else’s Design

Duncan — Thu, 04 Jun 2026 23:28:00 +0000

A confidential drawing sent to you for a single, narrow purpose does not become yours to repurpose — and treating it as though it does can unravel an entire IP position. That is the strategic core of the Full Federal Court’s decision in Comino v Watson Webb Pty Ltd [2026] FCAFC 66. A distributor received a manufacturer’s confidential engineering drawing to “sign off” before production, stripped the markings, and registered the design in his own name. The Court confirmed that the obligation of confidence bound him regardless of his own contribution to the design, and even though key witnesses were never called.

For IP-intensive businesses the lesson is uncomfortable but clear: inbound IP is a constraint, not a windfall. Every drawing, sample and spec that arrives under an obligation of confidence narrows what you can later claim as your own — and disregard of that line is what invited additional damages here.

The appeal is just as instructive for what it corrected. The Court set aside a constructive trust that had handed the manufacturer the entire design, because the distributor was a genuine co-designer — remedies track contribution, not punishment. More striking is the threats ruling: a letter demanding undertakings and reserving the right to sue is prima facie an unjustified threat unless you can prove infringement, and quietly dropping the claim later will not save you.

Three takeaways for leaders and in-house counsel:

fix ownership in writing before development starts;
treat others’ confidential material as off-limits, not raw material; and
never send an enforcement letter you are not prepared to back in court.

Disciplined IP strategy is less about owning the most rights than knowing precisely how to use them.

When the Monopoly Ends, Your Shape Has to Stand on Its Own

Duncan — Tue, 02 Jun 2026 23:14:48 +0000

A registered design buys you a finite head start, not a permanent moat. When it lapses, competitors are free — and, the law says, encouraged — to copy. The Federal Court’s decision in Bodum AG v H.A.G Import Corpn (Australia) Pty Ltd [2026] FCA 238 provides a good illustration.

Bodum’s double-walled glasses enjoyed a decade of design protection; once it expired, Maxwell & Williams openly copied the exact shape, admitted as much, and sold a near-identical product more cheaply. Bodum tried to stretch its protection through misleading-conduct and passing-off claims, and lost. The strategic reason matters more than the result: Bodum had never built a secondary reputation in the shape itself. Consumers recognised the BODUM word mark and logo — not the bare silhouette. Ironically, the strength of the brand undercut the claim. Buyers identified the product by the name on it, so a glass without that name read as “not Bodum,” not “a cheaper Bodum.” Deliberate copying, the Court confirmed, is not the same as an intention to deceive — and a strong rival brand plus clear labelling will usually defeat the claim.

For IP-intensive businesses, the lesson is about sequencing and evidence, not litigation. Treat every finite right — a design, a patent — as a window to build something durable, not as the protection itself. If a shape is commercially important, work deliberately to make it distinctive of you: promote the shape as a brand signifier, consider a shape trade mark (renewable indefinitely), and keep the proof — distribution figures, readership, campaigns that feature the shape without the logo.

Bodum’s marketing was extensive but unfocused: the glasses were two of more than twenty-five double-walled designs, rarely shown unbranded, and the evidence of standalone shape recognition simply wasn’t there. The disciplined move is to convert a temporary monopoly into lasting brand equity before the clock runs out — and to document that recognition as you go, so the get-up can carry its own weight when the registration can’t.

Full decision here: https://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/FCA/2026/238.html

Built Before the Fight: What May’s IP Decisions Reward

Duncan — Sun, 31 May 2026 23:56:59 +0000

Strip the case names away and one pattern runs through this month’s posts: the decisive moment in an IP matter almost never happens in the courtroom. It happens years earlier — in the words drafted into a claim, the honesty of a brand at first use, the rigour of a specification, the provenance of training data, the structure of a portfolio. May delivered a run of decisions and developments that all reward the same discipline: getting the groundwork right before anyone is watching. For IP strategists, the signal is consistent. Enforcement tests work done long ago. Plan accordingly.

Disputes & Litigation

Three decisions this month make the same uncomfortable point — your earlier conduct becomes the evidence you later have to live with. The patent claim-drafting decision over the Bayer process confirmed that overbroad language fails post-Raising the Bar support and sufficiency tests, and that claim scope must map to what the specification actually enables. The High Court’s ruling on the honest concurrent use defence fixed honesty at first use of the mark, making brand clearance a decision point that sets your position for the mark’s life. And a quieter procedural decision confirmed that fresh acts of infringement can support fresh proceedings against a familiar opponent — a reminder that procedural clarity is leverage, not housekeeping.

Patents

The patent posts reinforce that theme from the asset side: the insufficiency and best-method failure in Orikan shows how fast a patent loses strategic value when the disclosure can’t carry the weight placed on it. Priority claims, knowledge capture and specification drafting are strategic processes — treat them as administrative tasks and the gap shows up in court.

Trade Marks & Brand Governance

Beyond first-use honesty, the brand dispute resulting in injunctions and a forced name change shows the upside of doing the groundwork: clean chains of title and procedural discipline let the successful party secure broad remedies, including trade mark cancellation and indemnity costs. Well-structured IP governance converts directly into commercial leverage.

Copyright, AI & the Price of Data

Two posts track the same fast-moving front — the value of content as AI training input. The scrutiny of Anthropic’s US$1.5B settlement reframes training-data valuation as a balance-sheet issue, making provenance, licensing posture and reserve planning board-level concerns. The EU’s move to put a licensing framework for AI training on the statute book then shifts the contest from courtroom to legislation, in the jurisdiction whose rules tend to become everyone’s — so decide whether you lead as a licensor or a licensee, document provenance, and engage the consultation while the rules are still being written.

Deals, Budget & Strategy

The strategic posts pull the month together. The Federal Budget’s R&D, ESS and CGT changes reshape how IP-intensive firms fund innovation and time their investments, forcing IP strategy to integrate with capital allocation and organisational design. And the argument that AI efficiency is not a durable advantage lands the same point from the offensive side: lasting advantage comes from combining proprietary data, patents and protected workflows into AI-native offerings competitors can’t easily replicate.

What to Watch

The through-line is clear enough to act on. Courts and regulators are pushing the decisive moment upstream — into drafting, clearance, provenance and portfolio structure — and rewarding the parties who treated those steps as strategy rather than process. Two fronts deserve attention in the months ahead. First, the post-RTB enforcement standard is tightening; audit live claim sets and specifications against the construction arguments an opponent would actually run, before a dispute forces the question. Second, the AI training-data market is being priced and legislated in real time; the organisations that can prove provenance and have decided their licensor-versus-licensee posture will negotiate from strength while others are still reacting.

The decisions of the next quarter will keep testing work done long before them. The IP Strategies that win have already been build, well ahead of when they are truly tested.

When Your Own Words Become Your Cage: The Cost of Claim Drafting Choices

Duncan — Thu, 28 May 2026 22:35:42 +0000

A decade-long battle over an anti-scaling method for the Bayer process has just delivered a sharp reminder that patent claims are commercial instruments, not afterthoughts. In Nalco Company v Cytec Industries Inc [2026] FCAFC 72, the Full Federal Court upheld findings that Nalco’s original claims failed the post-Raising the Bar support and sufficiency thresholds — because the language admitted within its scope a composition the specification never taught how to make.

The phrase “at least one small molecule” looked innocuous on the page. In practice, it stretched the monopoly beyond what the technical contribution could justify, and no amount of expert evidence about statistical improbability could rescue it. The Court was clear: low probability of an embodiment is not the same as exclusion, and the words a patentee chooses will be given work to do.

The strategic lesson runs deeper than drafting hygiene. Nalco eventually secured its amendments on appeal — but only after years of litigation, six amendment rounds, and a Full Court willing to exercise the s 105(1A) discretion afresh. That outcome turned on disciplined conduct: timely amendments, full and frank disclosure, and a credible narrative that each iteration responded to issues as they crystallised rather than to risks long known and ignored.

For IP-intensive businesses, three patterns are worth internalising.

First, the post-RTB regime rewards claim scope that maps tightly to what the specification actually enables — aspirational breadth is now a liability, not an option.

Second, opposition and appeal strategy should include pre-built fallback claim sets, stress-tested against the construction arguments your opponent is most likely to run.

Third, the discretion to amend remains genuinely available where the patentee behaves transparently — but culpable delay, tactical obscurity, or knowingly maintaining overbroad claims will close that door.

The patent bargain is being enforced more strictly than it once was; the businesses that treat claim drafting as a strategic exercise — not a downstream task — will be the ones still holding their monopolies when challenges come.

Read the full judgment here.

You Can’t Backdate Honesty

Duncan — Mon, 25 May 2026 23:49:00 +0000

A catchy name and a fast start built a billion-dollar lending business — but neither could rescue the trade mark when it mattered most. Australia’s High Court has now confirmed that the “honest concurrent use” defence to trade mark infringement is judged at the moment a business first uses the mark, not years later when it is sued or when the matter reaches trial. In the dispute between Zip Co and Firstmac, Zip adopted the ZIP brand without knowing of Firstmac’s earlier registration — but within months, IP Australia’s examination reports put Zip squarely on notice of the conflict. Zip gave those warnings cursory attention, took no advice, and pressed ahead. Years and 1.3 million customers later, the Court held that Zip had failed to prove it acted honestly at first use, and commercial success could not retroactively cure that. The burden sits with the user to affirmatively establish honesty, and knowledge of a prior mark weighs heavily against you.

The strategic lesson is sharper than it first appears. Brand clearance is not a formality to be tidied up after launch — it is a decision point that fixes your legal position for the life of the mark. An adverse examination report is not noise; it is the moment your risk profile changes, and how you respond becomes part of the evidentiary record you may one day need to rely on. Ignore it, or pivot to attacking the incumbent’s registration instead of engaging with the problem, and you signal awareness of the very impediment you later have to disprove.

For founders and in-house counsel, the discipline is simple: clear the name before you commit, document the genuine basis for believing there is no conflict, and treat regulator warnings as live strategic intelligence rather than paperwork. The businesses that scale safely are the ones that get the IP groundwork right at the starting line — because that is exactly where the law will look.

The full decision, Zip Co Limited v Firstmac Limited [2026] HCA 16, is worth reading: https://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/HCA/2026/16.html

The Licence to Train: Brussels Reopens the Copyright Bargain

Duncan — Sun, 24 May 2026 23:30:39 +0000

The European Commission has launched a call for evidence on targeted measures to modernise the EU copyright framework, with generative AI at the centre. It is asking, in plain terms, how rights should be licensed and enforced in the context of generative AI — and has put a potential legislative initiative squarely on the table.

The contest between content owners and AI developers is shifting out of the courtroom and into the statute book, in the jurisdiction whose rules tend to become everyone’s rules. The question is no longer whether training data carries a price. It is who sets it, and who captures the value.

For IP-intensive organisations, this is a window, not merely a warning. The businesses that come out ahead will not be the ones waiting for a final text; they will be the ones already treating data provenance, rights reservations and licensing posture as strategic assets.

Three moves are worth considering now.

First, know your position — most companies are at once a licensor of content and a licensee of training data, and those roles pull in opposite directions; decide which one drives more value for you, and act on it.

Second, document provenance and reservations rigorously, because in a licensing market that is forming rather than formed, clean records are leverage.

Third, engage the consultation — rules under construction can still be shaped, and silence cedes that ground to competitors who show up.

The deeper lesson is one IP strategists keep relearning: regulatory uncertainty is not a reason to wait. It is precisely the moment disciplined IP strategy earns its keep, turning a looming compliance cost into a defensible competitive position. When the rules of the game are being rewritten, the smart players help hold the pen.

Sources

European Commission, Commission seeks views on the review of EU copyright rules (18 May 2026): https://digital-strategy.ec.europa.eu/en/news/commission-seeks-views-review-eu-copyright-rules
European Commission call for evidence portal, A better copyright environment for European creativity and innovation: https://ec.europa.eu/info/law/better-regulation/have-your-say/initiatives/18173-Targeted-initiative-for-a-better-copyright-environment-for-European-creativity-and-innovation-_en
IPWatchdog, Other Barks & Bites (22 May 2026): https://ipwatchdog.com/2026/05/22/bites-barks-eu-call-for-evidence-targets-generative-ais-impact-copyright/
Jones Day, Navigating Copyright in the Age of Generative AI: EU, French and UK Developments: https://www.jonesday.com/en/insights/2026/05/navigating-copyright-in-the-age-of-generative-ai-eu-french-and-uk-developments-and-approaches

When Your Patent Isn’t Built for the Road Ahead

Duncan — Fri, 22 May 2026 03:37:45 +0000

How quickly a patent can lose its strategic value when the underlying disclosure isn’t built to withstand real‑world scrutiny. In the Federal Court’s decision in Orikan v VMS (No 2), Orikan’s infringement case faltered on multiple grounds, but most interestingly because the patent specification couldn’t carry the weight placed on it — with the Court upholding both insufficiency and best‑method attacks. For leaders in IP‑intensive organisations, this is a pattern worth noting: a patent that isn’t drafted with future enforcement, technical evolution and evidentiary demands in mind can become a weak strategic asset at precisely the moment it is meant to create leverage.

The judgment also highlights the competitive implications of disciplined IP governance. Questions around what was disclosed, how clearly it was disclosed, and whether the best method was actually described all point to the same strategic truth: IP strength is built long before litigation. Organisations that treat priority claims, internal knowledge capture and specification drafting as strategic processes — not administrative tasks — are better positioned to defend market share and shape competitive dynamics. The lesson is straightforward: thoughtful, well‑structured IP strategy is a commercial capability, and cases like this show what happens when that capability isn’t fully developed.

Read the full judgment here: https://www.judgments.fedcourt.gov.au/judgments/Judgments/fca/single/2026/2026fca0407