Five years since the doctrine of equivalents was introduced by the Supreme Court decision in Actavis v Eli Lilly [2017] UKSC 48, there are still questions as to its scope (ironically) in the UK. We dive into three decisions handed down in 2022 to see how the doctrine has progressed. Teva v Novartis [2022] EWHC 2847 (Pat). In this decision His Honour Judge Hacon (sitting in the High Court) addressed a question that had not been considered by the Supreme Court in Actavis: how should numerical ranges be approached in the context of infringement by equivalence?

A chance to share a virtual coffee with Belinda and Suzanne as they reflect on being an in‑house IP attorney

Suzanne: Well, Belinda, we first met when Roger [Burt] introduced us, as he thought we might get along? At that point though, you had been in the biz for a few years, and I had just started out, having just moved from private practice to in-house at Arm. What can you remember of your first few years in-house? Belinda: Yeah, he did, and good question. When I made the shift from private practice to working in-house at IBM (many years ago now), I thought that the roles would be rather similar – a steady diet of drafting, patent filings, amendments, oral proceedings, and more amendments – just without the step of having to wait for client instructions, or, I hoped, without having to keep track of and bill a client for every 6 minutes (0.1 hr) of my working day! Actually, it was not too dissimilar at the beginning, though luckily the timekeeping/invoicing did vanish. I started with ‘easy stuff’ with which I was familiar – mainly amendment work, and at least one draft per month, but over the last almost 20 years it has changed in almost every aspect (although I still dabble occasionally with the odd amendment!). The role in fact is constantly changing as the company does, and I still get queries popping up on topics which I have never considered before – this week’s example being copyright levies in Spain and the process of obtaining an exemption for laptops used only for business use! But it was not until I joined IP Federation Council in 2011 and listened to the other representatives there that I realised what a broad and varied job that of an in-house patent attorney truly is!

Introduction

It’s been a hugely busy year for the IP Federation and its Trade Working Group tracking and trying to influence the UK Government’s efforts to secure new trade deals, and ensure that their IP provisions are, as far as possible, supportive of the needs of innovative industry. Since my report on international trade and IP in last year’s IP Federation Review 2021, I would highlight the following key developments. The IP Federation, through its Trade Working Group, continues to engage actively with, amongst others, the UK Government-DIT and IPO in particular, the CBI and overseas governments/business stakeholders in the sphere of international trade and IP. It is an unprecedented and intensely busy time, with different complex trade negotiations being undertaken at pace by the UK with different partners across the world. The IP Federation’s sustained strong engagement and considered expert inputs in this area in support of the UK Government’s objectives are, we believe, beginning to produce positive results at a crunch time. The strong trusted relationship we have built up with the Government – DIT, IPO is a great asset.

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.

2022 was a year of revival and settling down. As we emerged from remote working brought about by the Covid pandemic, the new realities of work away from the office and the resulting benefits and challenges became clearer. The end of 2022 rear-view mirror was useful. The almost immediate transition to remote working and complete cessation of travel from February 2020 throughout 2021 proved that our IP and broader service teams were nimble. In-house and external legal teams pivoted almost seamlessly to an online digital world. Teleconferencing and video calls catapulted previously camera-shy individuals to new ways of working and interaction. Trade mark offices and some courts turbocharged their digitalisation and remote functionalities. Were it not for the Covid pandemic surely these developments would have taken longer. Trade mark processes and litigation continued largely electronically and successfully.

The arrival of the Unified Patent Court (‘UPC’) and Unitary Patent has been widely welcomed, as has the news that the system is planned to go live on 1 April 2023, despite the pleasure being tinged with disappointment given that the UK is not a part of it. Although companies have been warned many times over the years that the UPC was due to open soon and they should start their preparations, it has sometimes seemed too remote to worry about. Now, at last, it can be said that it will happen and therefore preparations must be made. This article looks at one aspect of those preparations – one that sometimes gets overlooked – the need to review a company’s European patent licences (both in and out).

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.

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.

The 2022 IPReg consultation on proposals for changes to regulatory arrangements The Intellectual Property Advisory Board (IPReg) was set up in 2010 by the Chartered Institute of Patent Attorneys (CIPA) and the Chartered Institute of Trade Mark Attorneys (CITMA) to be the independent regulatory body for both patent attorney and trade mark attorney professionals in the UK. In early 2022, IPReg opened a consultation on significant and wide-ranging proposals to change the regulatory framework for regulated attorneys. The IP Federation submitted a response on 17 March, and the consultation closed on 31 March 2022. IPReg later reported that they received a further 35 written responses from individual attorneys, firms, representative bodies such as CIPA and CITMA, as well as the Legal Services Consumer Panel. IPReg also published a response to the consultation and an updated version of their impact assessment on their website.

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.