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 2^nd Floor, Halton House, 20-23 Holborn, London EC1N 2JD

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

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.

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.

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.

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.

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.

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!