Patent lawyers are well-aware of the influence a patent’s description can have on the monopoly granted by the claims of that patent. Whilst, strictly, what matters is the patent’s claims, any ambiguity takes one back to the description. European Patent Convention (“EPC”) Rule 42 specifies that the description must describe the invention such that it can be understood by reference to the underlying technical problem to be solved. The material included in a patent’s description therefore matters. Too little may limit the patentee’s ability to rely on a wider interpretation in post-grant amendments or enforcement against an allegedly infringing product. Too much material risks falling foul of the European Patent Office’s (“EPO’s”) strict new Guidelines for Examination (“the Guidelines”) on inconsistencies between the description and the claims (section F-IV-4.3). Under these Guidelines, examiners can require amendments to the description, including by the explicit disclaiming of certain embodiments as not being part of the invention. This, of course, can have significant implications, particularly when assessing infringement by the doctrine of equivalents. 2022 saw a plethora of EPO Board of Appeal decisions grappling with description amendments, with differing views. So where do we stand?

In 2022, the IP Federation submitted two amicus curiae briefs to the Enlarged Board of Appeal of the EPO in relation to pending referrals. The first, submitted in April 2022, was in relation to the G 2/21 “plausibility” referral. The Board issued a preliminary opinion on this matter in October 2022, and held a hearing in November 2022 with the final decision still being awaited. The second brief, submitted in July 2022, related to the G 1/22 and G 2/22 “Entitlement to priority” referrals. The Board is yet to provide anything of substance on this matter, but they are expected to do so in 2023.

With apologies to Samuel Pepys and Helen Fielding, the extract below is fictional and intended to capture the variety and challenge of life working as part of an in-house IP department.

Monday

Early start today – I’m meeting with a project team to discuss their latest developments. We filed a priority patent application last year and are now reviewing recently generated data to determine claim scope before foreign filing. We spend a fascinating couple of hours digging into the results and technology, it’s a highly competitive area so I think there may be filings from third parties, we need to be careful to maintain priority and I draw some timelines for the project team to try to explain why that matters. The project team also has some creative thoughts around names for the technology.  

Some may think that artificial intelligence (AI) has featured more in Hollywood than in our daily lives. The depiction of artificial intelligence in films is, all too often, the super intelligent robot that can outperform us mortals at just about everything. Terminator™ style machines that threaten to take over the world, before someone is able to pull the plug. The reality of artificial intelligence is, of course, very different. It's not Arnie; it’s actually a set of technologies which can complement the capabilities of humans. The things that humans can do, and the things that artificial intelligence is suited to, are typically very different and very complementary. Artificial intelligence is becoming more and more pervasive, touching every aspect of our day. It is carefully filing away your junk emails, it is improving your search engine, it is getting you to where you need to be, on time, while playing the music you want to hear.

An important topic coming out of the impending end of the Brexit implementation period (also known as the transition period) is addresses for service for IP rights. As many but not all readers will be aware, an address for service is the contact and address to which legal notices under the rights should be sent. As things stand, a UK address for service is permitted for EU rights and any address in the European Economic Area (“EEA”) is permitted as the address for service for UK rights. It has been clear for some time that UK addresses for service will not be allowed for European Union trade marks after the end of the implementation period but, as things stand, EEA addresses will be allowed for UK trade marks. Clearly, there is a disparity in these approaches. In July the UK Intellectual Property Office (UK IPO) launched a consultation on proposed changes to the address for service rules in the UK to remove the reference to the EEA, meaning that only UK or Channel Island addresses for service would be accepted for UK registered rights. This would apply to new applications for patents, trade marks and designs and also to requests for hearings. It would also apply to requests to start potentially contentious proceedings. It would not apply to actions which are lodged with the UKIPO before the end of the implementation period. Recognising that businesses use and pay for the systems under which rights are registered, the IP Federation concluded that it is unreasonable for a rights owner in the UK to be required to appoint a UK address for service. Many businesses including IP Federation members have non-UK, EEA-based representatives and would like to have the option of them continuing to be the address for service on UK records. The localised provisions proposed by the UK Government do not benefit UK businesses which operate across Europe. Rather, they increase overheads for these businesses. The IP Federation responded to the UK IPO’s consultation expressing its position and pressed for an impact assessment to be undertaken before the changes are made. Thomas Hannah, Trade Mark Committee Chair

As an industry association, we have a great culture of respect for each other. Several of our Federation members helped to establish and support IP Inclusive in its early days and the Federation is a member of its Management board. The IP Federation is also currently working on plans to promote social mobility in the profession (and hopefully we can say more on this soon) and our collective response to Covid-19 has shone a light on the care we have for one another, as described in our article IP owners step up to the plate. Never has this culture been more important.

The brief for this article was that I should comment on what has happened in design law over the past year, and suggest what might happen next. The current political environment makes prediction of anything difficult, but I will do my best. The three areas I will focus on are conveniently the ABC of this article…

The issue of employee inventions and the extent to which employee inventors should be compensated has in recent times become a hot topic in the UK. Since the Patents Act 1977 there has been a statutory right for employees to be awarded additional compensation over and above their salary for patented inventions made by them during the course of their employment where "having regard among other things to the size and nature of the employers undertaking, the invention or the patent for it (or the combination of both) is of outstanding benefit to the employer; and, by reason of those facts it is just …" for an award to be made.

Articles of Association of the IP Federation, adopted by special resolution passed at the ninety-third Annual General Meeting on 13 July 2012 with effect from 18 October 2012