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).

Since the Unified Patent Court (UPC) opened on 1 June 2023, some interesting themes are already beginning to emerge from the (only) four substantive decisions and over 70 reasoned orders. The most substantive, certainly in terms of numbers of pages, is the 19 September decision by the Munich local division granting a provisional injunction (interim injunction in England) against NanoString Technologies in 17 EU countries. The oral hearing took place over two days and turned into something of a mini trial with both the issues of infringement and validity of the patent (concerning RNA sequencing technology) being considered. When it came to whether provisional measures should be granted, the local division stated that a mere finding of potential infringement was insufficient. There was a requirement to show urgency and the local division had to weigh up the interests of the parties and consider the potential harm to each of granting or not granting the injunction. As to the first, time did not start running until 1 June (the date the UPC opened). Since the claimants applied for an order on 1 June, the urgency requirement was fulfilled. As to the latter, the local division took into account 10x Genomics’ statements about permanently losing market share if they had to wait for the decision on the merits, balancing that argument against several arguments by the defendants that the measures were disproportionate, including that the second claimant was a non-practising entity. The local division awarded an injunction worded with reference to the patent claim (familiar to UK practitioners), rather than being restricted to a specific embodiment. NanoString appealed and the hearing was on 18 December 2023. A second application for a provisional injunction relating to another of 10x Genomics’ patents was refused.

The IP Federation’s campaigns

The IP Federa­tion has invested considerable time and resource in 2022 in support of its aim of improving the intellectual property (IP) framework to meet the needs of innovative industry. Set out below are a number of key successes in which the IP Federation played a leading role.

This is not the original opening line of this piece. Just a week before this article’s deadline, it started, “By the time you read this there may be a new IP Minister”. Fast forward a week or so, and there was a new Prime Minister. Jacob Rees-Mogg, the former Business Secretary in whose department an IP Minister worked, had just resigned. His IP Minister, Dean Russell, was in the post for only 6 weeks. New Prime Minister Rishi Sunak had yet to appoint a Minister for IP. As if that wasn’t enough, between then and publication of this IP Federation Review, a new Department for Science, Innovation and Technology has been established as part of a wider departmental and ministerial reorganisation. It is there, not in the new Business and Trade Department, that responsibility for IP now resides. Which brings me back to my original sentence. By the time you read this there may be a new IP Minister.

The National Security and Investment Act 2021 (“NSI Act”) came fully into force on 4 January 2022, setting up a new regime for UK government scrutiny of acquisitions and investments. The NSI Act applies retrospectively to transactions from 12 November 2020. The NSI Act is intended to modernise UK Government’s powers to investigate and intervene in investments, mergers and acquisitions and other deals to protect national security as a foreign-direct investment (FDI) regime, while applying to UK and non-UK acquirers alike. It replaces the national security element of the Enterprise Act 2002. The regime is a hybrid mandatory and voluntary notification regime, supported by call-in powers on national security grounds.

The snappily named Agreement on Trade-Related Aspects of Intellectual Property Rights (or TRIPS for short as the full name hardly trips off the tongue) is a World Trade Organization (WTO) agreement badged as “the most comprehensive multilateral agreement on intellectual property to date”. It was signed in 1994 and is a “minimum standards” agreement which sets a baseline for IP protection; Members are able to provide more comprehensive protection if they wish and under certain circumstances flexibilities to the minimum standards are permitted. This agreement made headlines across the world in 2021 following proposals first tabled by India and South Africa at the WTO that a waiver should be agreed enabling Members to have more flexibility than currently allowed under TRIPS in respect of vaccines, therapeutics and diagnostics for the treatment or prevention of COVID-19. I finished my 2021 article on this matter with the following words: “It remains to be seen whether next year’s IP Federation Review article is talking about the impact of the introduction of a waiver or not – watch this space!”

The IP Federation’s campaigns

The IP Federa­tion has invested considerable time and resource in 2021 in support of its aim of improving the intellectual property (IP) framework to meet the needs of innovative industry. Here are some of our key successes.

In last year’s IP Federation Review, it was reported that, despite 2020 being a turbulent year for the Unified Patent Court (UPC), progress appeared to have been made. This year, a much more positive statement can be made. Progress has definitely been made, with the Preparatory Committee estimating that the UPC will start operations around mid-2022. Whilst that may be a little optimistic, next year’s Review may be published as the doors of the UPC are finally opening.  

There have been no Court of Justice of the European Union (CJEU) referrals decided this year. The main activity on supplementary protection certificates (SPC) has been political with changes considered on a European Union level as part of the pharmaceutical legislation review and the much vaunted appearance of the Unified Patent Court (UPC) on the horizon at the end of the year.  

Over the last 12 months the European Patent Office (EPO) has accelerated its digital transformation consistent with its Strategic Plan 2023. It is fair to say that the EPO is now a primarily digital workspace at every level of the organisation. This increased digitalisation has presented new opportunities for engagement, collaboration and communication without the obstacle of geography. The IP Federation has embraced this opportunity and continues to work closely with the EPO at many levels to bring the user perspective to EPO initiatives as they emerge and develop.