“The FRAND landscape will continue to develop considerably over the course of the next year in the UK and Europe”. That was the conclusion in last year’s Review on litigation over the fair, reasonable and non-discriminatory (“FRAND”) terms of the licensing of standard essential patents (“SEPs”). It certainly has. In 2023 two weighty FRAND judgments were handed down in the UK Patents Court, the European Commission’s proposed SEP Regulation has gathered pace and attention, and the English Court’s list remains packed with FRAND cases. This article provides a whistle-stop tour of the 2023 landscape.

Signature of UK’s Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) accession protocol in July 2023 The big news in trade and IP this year is that the UK has agreed in principle to join the Comprehen­sive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), following the signature of the UK’s CPTPP accession protocol on July 16, 2023 in New Zealand. The UK is expected to accede to the CPTPP next year, following Parliamentary scrutiny and completion of the ratification process. Success for the UK: IP Federation’s close trusted collaborative working with Government, and other key stakeholders After 5 years or so of sustained strong engagement, hard work and trusted collaboration with UK Government officials (DBT/formerly DIT, IPO) at all levels and other key stakeholders including the Chartered Institute of Patent Attorneys (CIPA), the IP Federation are very pleased to report the recent successful outcome that Government has achieved in relation to intellectual property (IP) aspects of the UK’s accession to the CPTPP. The effect of this Agreement is that no inconsistency can arise from the UK’s concurrent membership of both the European Patent Convention (EPC) and CPTPP.

On 27 April 2023, the European Commission unveiled its blueprint for patent legislative reform. The proposals focus on three key areas: standard essential patents (SEPs), supplementary protection certificates (SPCs) and a compulsory patent licensing scheme for crisis management. The EUIPO is at the centre of administering these proposed regimes. The proposals arise out of the Commission’s November 2022 IP Action Plan,[1] which aims to harmonise the approach to Intellectual Property law across EU Member States. The proposals are only the first step in the process and will now be considered and agreed by the Council of the European Union and European Parliament. [1] Commission adopts Action Plan on Intellectual Property

The IP Federation’s campaigns

The IP Federation invested considerable time and resource in 2023 in support of its aim of improving the intellectual property (IP) framework to meet the needs of innovative industry. Below are several key successes in which the IP Federation played a leading role.

1. The IP Federation engaged and continues to engage effectively with senior levels of Government on the potential impact of future free trade agreements (FTAs), including on the UK’s continued participation in the non-EU European Patent Convention (EPC).

Whereas 2022 was a year of revival and settling down, 2023 was more a year of just getting down to it. The legacy of remote working brought about by the Covid-19 pandemic meant that meetings of the IP Federation Trade Mark Committee were still being held remotely for most of the year. The committee is now back in the saddle again, having finally come together in November 2023 in person. With continuing opportunities and challenges, both at home and abroad, the opportunity to share views and discuss trade mark issues with fellow brand owners facing similar questions and decisions is invaluable. This chance to meet for open discussion and share practical tips is one of several benefits that members of the IP Federation enjoy. A further highlight of the latest in-person Trade Mark Committee meeting was that we welcomed CIMTA’s CEO, Keven Bader, to our meeting. Keven provided an update on CITMA’s activity on rights of representation and address for service.

In 2022, the IP Federation submitted two amicus curiae briefs to the Enlarged Board of Appeal (EBA) of the European Patent Office in relation to pending referrals to the Board. The first brief, submitted in April 2022, was in relation to the G 2/21 “Plausibility” referral. The second, submitted in July 2022, was in relation to the G 1/22 and G 2/22 “Entitlement to Priority” referrals. Decisions have now been issued for each of these referrals . In addition, there is a new referral now pending before the EBA, G 1/23 “Solar Cell”, which the IP Federa­tion is considering.

Patent case law in 2023 generated many interesting issues on validity. The highlights of these are detailed below. Priority and anticipation The year began, in Nokia v OnePlus (16 January 2023)[1], with a judgment looking at the interpretation of a novelty-only citation where only some of the matter contained in the prior art had the necessary priority. Oppo challenged the novelty of Nokia's patent on the basis of the prior art referred to as “Woo”, relying on s.2(3) PA. Woo therefore could only be relied on in relation for the purposes of s.2(3) in respect of matter that it contained which had an earlier priority date than that of the patent (which was the patent's filing date). The Woo priority document asserted as relevant was 'PD8', an LGE US provisional application. Woo contained material that was not present in PD8. Patentee Nokia contended that such material informed the interpretation of the parts of Woo that Oppo could rely on (and in a way favourable to Nokia). Meade J agreed. The first patent infringement/validity judgment of Charlotte May KC, sitting as a Deputy Judge of the High Court, was handed down mid-year in Ensygnia v Shell (26 June 2023)[2]. It concerned Ensygnia's patent to an information security method/system. Rejecting an anticipation challenge over prior art Schmidt, Charlotte May KC held that a disclosure that is capable of being carried out in a way which would infringe, but equally in a way that is not infringing, will not anticipate a claim. [1] Nokia Technologies OY & Anr v OnePlus Limited Technology (Shenzhen) Co., Ltd & Ors [2023] EWHC 23 (Pat) (16 January 2023) Meade J [2] Ensygnia IP Limited v Shell Oil Products Limited & Ors [2023] EWHC 1495 (Pat) (26 June 2023) Charlotte May KC

Danny Keenan, President Danny is a European patent attorney with 20 years of practical experi­ence with managing patents, designs, trade secrets and technology-related agree­ments. Danny joined Unilever in the UK after completing a DPhil in physical chemistry and worked for seven years as a research scientist and technical project leader before moving to the IP department. Danny has worked on IP across all of Unilever’s business groups, including personal care, nutrition and ice cream, and helped build the Unilever patent group in China.

The inclusion of proposals for a Unitary Patent Office and Unitary SPCs as part of the EU Patent Package was big news in 2023. If the proposals go ahead the new office will be part of the EUIPO and will be staffed by examiners from national patent offices. By the time you read this article the proposals will have advanced through the complex political system that is the EU and the eventual shape of the legislation may resolve some of the issues below or generate others! There are four proposed regulations: two adapt the current medicinal and plant protection schemes to create centralised procedures; two set up unitary rights where a Unitary Patent has been obtained. Details of the proposed changes are set out in this Review by Caitlin Heard and Claire Dorese in their article on European Commission reforms: SPCs, SEPs and compulsory licences.

The IP Federation’s commitment to improving diversity, equity and inclusion (DEI) in the IP professions has continued to grow with the leadership of the dedicated DEI Working Group. This year the IP Federation held a Best Practice Workshop where members discussed and shared details of their DEI policies and procedures to identify and establish best practices. The Best Practice Workshop covered two areas – internal policies and external policies with suppliers. It was clear that there was a wide disparity between the policies and practices of our members and that while many have well developed systems and procedures, some members’ policies and practices are still in development. It was agreed that the workshop should be repeated to ensure continued sharing of best practice as learnings and feedback developed.