Publications

Total Documents: 254

 

Resolution of the IP Federation Council February 2023

Document No: PUB 1/23 Posted: 23 February 2023
Resolutions of the IP Federation Council February 2023, passed on 1o February 2023 with immediate effect, to –
  • clarify that an application for membership may be in the form of an e‑mail request; and
  • change the registered office address to 2nd Floor, Halton House, 20-23 Holborn, London EC1N 2JD

IP Federation Review 2022

Document No: PUB 20/22 Posted: 27 February 2023
ISSN 2755-5755 In the IP Federation we have long advocated taking an evidence-based approach to the debates before us. Investments in R&D, supported by a balanced and predictable IP framework, have delivered amazing results across a variety of sectors: life-changing medicines; computers and processors; mobile communications; and green technologies. This side of the story deserves to be told too. We should be proud to say, ‘IP is like air’. – Matthew Hitching, President

Amending the requirement for Description Amendments: the EPO’s hot topic of 2022

Document No: PUB 20A/22 Posted: 06 March 2023
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?

Amicus curiae briefs at the European Patent Office (EPO)

Document No: PUB 20B/22 Posted: 06 March 2023
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.

Driving greater inclusion and diversity

Document No: PUB 20C/22 Posted: 06 March 2023
The IP Federation’s commitment to improving diversity and inclusion in the IP professions has been led by the dedicated D&I working group formed last year. Following the work on the IP Inclusive Equality, Diversity and Inclusion (EDI) Charter, the group has focused upon the Senior Leaders’ Pledge. This has been an initiative of IP Inclusive which has been very successful with IP professionals working in private practice. It comprises a series of personal commitments to be made by senior leaders in an organisation to their actions to improve diversity and inclusion. It was identified that some of these pledge commitments might be difficult for an employee of a large organisation with its own diversity policies and strategies. A new Senior Leaders’ Pledge for leaders of departments in larger organisations, including our IP Federation members, has been agreed and will be launched over the next few months. This will allow our members to demonstrate their personal commitment to diversity and inclusion The IP Federation has continued to support outreach activities in 2022 that aim to promote and widen access to STEM careers and the IP professions.

EVOLVING THE UK DESIGNS FRAMEWORK

Document No: PUB 20D/22 Posted: 06 March 2023
The past couple of years saw a great deal of activity concerning the planned revision of the EU designs system and the adjustment of design rights in the UK and the EU to the UK’s departure from the EU. The focus in 2022 has shifted to exploration of opportunities to improve the domestic UK design system. Early in the year, the UK IPO published a call for views on the current designs framework in the UK. The call for views covered both registered and unregistered rights, as well as the impact of new technologies and enforcement. The IP Federation submitted a written response  and has continued to engage with the UK IPO as it moves to the next phase of consultation.

FRAND: busy UK Courts, and the European Commission’s Initiative on a New Framework for Standard-Essential Patents (SEPs)

Document No: PUB 20E/22 Posted: 06 March 2023
Litigation over the Fair, Reasonable And Non-Discriminatory (‘FRAND’) terms involved in licensing telecoms patents again kept the UK Patents Court busy in 2022. The year kicked off with a trial to determine FRAND terms for InterDigital’s cellular SEP portfolio in InterDigital v Lenovo, and a 5-week trial to determine the same for Optis’s portfolio in Optis v Apple over the summer followed the fourth and final technical trial between the parties. Philips v Xiaomi, IP Bridge v Huawei, and Ericsson v Apple all settled to clear the Court’s diary, whilst jurisdictional challenges and technical trials kept litigators busy in Nokia v OnePlus, InterDigital v OnePlus, Philips v Oppo and Kigen v Thales.

Highlights from the UK Patents Court 2022: Validity

Document No: PUB 20F/22 Posted: 06 March 2023
It is almost invariably the case that a standard patent dispute should entail the question of infringement and validity. Leaving the updates on Infringement to fellow IP Federation associate Alex Calver of WilmerHale, we will focus on validity.

Obviousness

The principles governing the assessment of obviousness have been looked at by the courts in some depth in recent years. Fundamentally there is a single question. Is it obvious? Aside from the question as to whether it is possible to infer the nature of the skilled person from what the specification assumes about his/her abilities (Meade J said no in Optis v Apple, Mellor J said yes in Alcon v AMO), we have a fairly extensive and consistent body of case law explaining the law on obviousness and illustrating its application. The attribution of the characteristics of a skilled person is an important point though, as noted by Birss J (as he was then) in the Illumina case: “It would be wrong and unfair to the public to define a team so widely that that their common general knowledge is so dilute as to make something seem less obvious than it really was”. Defining the attributes of a skilled person would equally impact the assessment of sufficiency, as noted by Mellor J in Alcon v AMO.

Infringement: interesting rulings on the doctrine of equivalents in the UK Patents Court

Document No: PUB 20G/22 Posted: 06 March 2023
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?
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