Publications

Total Documents: 28

 

Patent law highlights on validity, 2023

Document No: PUB 20G/23 Posted: 24 April 2024
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

Patent law harmonisation

Document No: PUB 20R/23 Posted: 24 April 2024

Substantive patent law harmonisation (SPLH)

Since last year’s Review, there has been considerable activity in substantive patent law harmonisation (SPLH) . In early 2023, the EPO carried out a consultation amongst user organisations, including hosting two seminars at the EPO. The IP Federation provided a response to the consultation and was represented at the seminars. . In July, a plenary session of the B+ Group of nations’ patent experts was held. The EPO gave a short summary of the results of its earlier consultation process. 79% were in favour of a grace period provided this was part of a balanced package with a “safety net” for third parties. There was support for “deep” harmonisation of prior user rights with objective criteria for these. From the EPO’s perspective the takeaways from the consultation process were that Europe was interested in SPLH and that there was a readiness and momentum in Europe to accept a grace period as part of an SPLH package.

Patent Law Harmonisation Review

Document No: PUB 20M/22 Posted: 06 March 2023
This review, as in previous years, is concerned with progress on procedural patent law harmonisation at the IP5 Offices and discussions on substantive patent law harmonisation (SPLH) taking place before the B+ group of developed countries.

Procedural Patent Law Harmonisation

A virtual meeting between the Heads of the IP5 Offices and industry was held on 8 June 2022 and jointly chaired by the EPO and BusinessEurope. It was the 10th anniversary of such meetings. The meeting was split into two: a celebration of 10 years of the Offices working with industry (with an update of recent achievements) and a strategic topic: “sustainability”. There were short videos on both topics prepared by the EPO.

Privilege on intellectual property law advice and patent attorneys and levelling up?

Document No: PUB 20N/22 Posted: 06 March 2023

Introduction and who gets legal advice privilege

In common law jurisdictions legal advice privilege is generally afforded to communications between a lawyer and their client. In the UK the right to legal professional privilege is a general rule of our common law that communications between a lawyer and their client should be privileged from disclosure. The underlying principle is that legal advice privilege is in the public interest and a person should be able to make full and free disclosures to their legal advisors, even where such disclosures could be adverse to their interests were they made to a third party.

Patent Harmonisation Activities

Document No: PUB 21G/21 Posted: 22 December 2021

1.                   Introduction

There have been two main areas of activity concerning attempts to harmonise and improve the patent system in 2021: Substantive patent law harmonisation (SPLH) in conjunction with the B+ group of WIPO nations and procedural harmonisation before the IP5 group of Patent Offices.

Pilot for “PCT-IP5 search” / “CS&E”: update

Document No: PUB 20C/19 Posted: 20 January 2020

Pilot doing well so far, still open to PCT applicants until 30 June 2020

Subject to the successful conclusion of a pilot, which began on 1 July 2018 and closes to volunteering PCT applicants on 30 June 2020, it is hoped that in a few years’ time all PCT applicants will be offered a procedural option providing for – one of the IP5 offices (European, US, Japanese, Chinese, and Korean) receiving a PCT application to act as a “main ISA” leading a collaborative exercise, the result of which will be that the main ISA issues a search report and written opinion in Chapter I based on both its own work and on inputs from the other four offices (called “peer ISAs”). Such an option is currently officially called “PCT collaborative search and examination (CS&E)”; but to avoid possible confusion with other initiatives (and possible future renaming), in this report it is called “PCT-IP5 search”.

Patent harmonisation

Document No: PUB 20D/19 Posted: 20 January 2020

Substantive Patent Law Harmonisation (SPLH)

Representatives of the IP Federation have continued to play a leading role in the development of global thinking on improving the international patent system, especially through increased harmonisation of substantive law. Currently the patent laws of leading industrial nations or regions, such as the US, Japan and Europe, differ on several fundamental principles. While business has become accustomed to managing these differences, greater harmonisation of patent laws would bring considerable benefits through reduced transaction costs in global patenting and lower obstacles to trade. Crucially though, the resulting system must offer the best incentives to invent, and rewards for investment in innovation.

Patent harmonisation

Document No: PUB 20G/18 Posted: 12 September 2018
The last review in Trends and Events on the topic of patent harmonisation (cf, Trends and Events, 2015) looked forward to a stepping up of work on SPLH from the B+ Sub-Group and from the Industry Trilateral, all working under the remit of the Group B+. Through 2017 and to date in 2018, the Industry Trilateral (IT3) has met numerous times, and with increasing frequency, both in person and via WebEx calls with the aim of trying to reach agreement on a possible SPLH package that could be acceptable to users.

Policy Advisors Policy

Document No: PUB 4/16 Posted: 19 July 2016

The IP Federation recognises and values the ongoing contributions made by many of its former member representatives, some of whom have previously continued to be part of the Federation as elected vice-presidents. The title of “vice-president” is now reserved for specific positions within the Federation and is therefore no longer available for other purposes. The Federation wishes to create a new class of associate to which former member representatives who continue to contribute to the ongoing work of the Federation may belong. This type of associate is called a “policy advisor”. This policy is intended to set out the principles by which the Federation selects and engages with its policy advisors.

President and VPs Election Policy

Document No: PUB 3/16 Posted: 13 June 2016

The IP Federation relies heavily on the work carried out on its behalf by the president. The Federation recognises that the burden of the office of president could be eased by appointing vice-presidents to assist with the duties of the president. The Federation also recognises that there is benefit to be had in continuity as far as the office of president is concerned. This policy sets out the process by which the Federation intends to select and appoint presidents and vice-presidents.

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