Five patent highlights from Europe in 2022 | Popgen Tech
“The long-awaited introduction of the unitary patent and UPC should provide a lot of interest in 2023, with attention likely to focus on the early number of applications for unitary effect, the number of European patents assigned, and the volume and nature of cases. “
IPWatchdog’s annual overview of patents in Europe focuses on five key developments from 2022 and introduces some trends to look out for in 2023.
1. Are you ready for the unitary patent and UPC?
There is only one place to start an overview of the year in Europe, and that is with the preparations for the launch of the Unitary Patent and Unified Patent Court (UPC).
The new system is expected to enter into force on 1 June 2023, and will be the biggest change to patent protection in Europe since the European Patent Convention was agreed 50 years ago. This will create a new option to obtain a unitary right covering at least 17 (and up to 24) EU member states and to obtain a court ruling on patent validity and/or infringement covering all those states.
As reported on IPWatchdog (Green Light for Unitary Patent and UPC), the year began with Austria depositing its instrument of accession to the Protocol on Provisional Application of the UPC Agreement. This began the preliminary application period and the final preparations for the establishment of the Court.
These preparations included the appointment of 85 legal and technical judges, confirmation that the Court will start with 13 local divisions and one regional division, and the signing of an agreement on the exchange of data between the UPC and the European Patent Office.
However, it was not all smooth progress. The start date was recently pushed back by two months from April 1, 2023 to June 1, 2023, to allow more time for users to set up the strong authentication needed to access the Case Management System. This means the transition period will start on 1 March 2023, rather than 1 January 2023.
During the transition period, holders of European patents can opt out of the jurisdiction of the UPC by making an online application.
The period in which patent applicants can submit early requests for unitary operation, as well as requests for delay in issuing the decision to grant a patent to the EPO, will start as planned on 1 January.
2. The joy of SEPs
This year saw more decisions in the UK courts in the dispute between Optis and Apple over standard essential patents (SEPs). The most recent of these, from the Court of Appeal, concerned the availability of injunctions in cases concerning fair, reasonable and non-discriminatory (FRAND) licensing.
When finally resolved, the litigation should decide issues including the determination of global FRAND licences, what lasts / lasts, and possibly Apple’s future in the UK market.
The dispute began in 2019, when Optis claimed that Apple’s iPhone and iPad devices infringed eight telecommunications patents, all of which were declared essential to 3G and 4G standards by the European Telecommunications Standards Institute (ETSI).
This led to four trials (known as trials A through D) to determine the validity, materiality and infringement of the patents, as well as a fifth trial (trial E) to determine FRAND, competition law issues and the availability of injunctive relief. The sixth trial (trial F) dealt with other issues, including Optis’ claim for an unqualified injunction.
At the time of writing, first instance verdicts in trials AD have been delivered, as well as appeal verdicts in trials A and B. Appeals in trials C and D are pending. Trial E was held in the summer of 2022 and the verdict has not yet been published.
In hearing F, the Court of Appeal recently upheld an order requiring Apple to undertake to enter into a license in the form determined to be FRAND at hearing E or, to the extent there are appeals in hearing E, a license that ultimately determined to be FRAND on appeal. As Lord Justice Arnold wrote in the judgment, this order provides for a FRAND order “with the modification that the order bites unless the implementer undertakes to take a license on terms. to be determined to be FRAND rather than unless the implementer takes a license on terms which already determined to be FRAND.” (Optis Cellular Technology LLC & Ors v Apple Retail UK Ltd & Ors  EWCA Civ 1411, emphasis added.)
In his judgment, Lord Justice Arnold also said that the appeals in this case “once again illustrate the dysfunctional nature of the current system for determining SEP/FRAND disputes” and called on organizations such as ETSI to legally enforce FRAND arbitration -make disputes part of their IPR policies.
3. To SPCA or not to SPCA
The European Commission is gradually moving forward with plans for a unified supplementary protection certificate (SPC) law. In the EU, SPCAs provide up to five years of patent extension for regulated pharmaceutical and plant protection products (and an additional six months for pediatric medicines). However, they are granted and administered nationally.
The Commission argues that this situation leads to fragmentation, extra costs and red tape for SPCA applicants and owners. This has also contributed to legal uncertainty – demonstrated by the large number of references to the CJEU regarding the SPC regulation. The introduction of the Unitary Patent and UPC (see above) provides an opportunity to consider a unified system, but progress has been slow.
In August this year, the Max Planck Institute for Innovation and Competition (the go-to authority for IP research in Europe) finally published its Study on the options for a unified SPC system in Europe (download here).
The study considered two options: (1) a PCT model, with a single authority examining a regional application for an SPCA by drawing up a single examination report, with national patent offices using it to make a decision to to grant; and (2) an EPC model, where national offices transfer the decision-making power to a central body, which decides on allocation.
It recommended to introduce a procedure to grant a European certificate based on an examining body consisting of a representative of each national agency; a system of appeals before the EU General Court supplemented by an Appeal Board within the agency; an option for central attack; and the option for applicants to choose between a batch of national applications and a single regional application.
The report said: “The unified procedure will lead to the granting of a European certificate which has national effect in some states and unitary effect in other states, according to the law applicable to the designated basic patent. In this way, it can also serve as a platform for the granting of unitary certificates for the countries in which the designated basic patent benefits from unitary operation once the unitary patent package becomes applicable.”
The study noted that this proposal is “ambitious” and it is now up to member states to review it. If there is no agreement, the study argued that a more modest PCT-type model would still be an improvement on the status quo.
4. Three steps to AI clarity
There have been three notable developments in the DABUS cases this year on whether an AI can be the inventor of a patent application.
First, in March, as reported on IPWatchdog (German decision may provide answer to AI inventorship), the German Federal Patent Court said that a designation stating that the inventor was Stephen Thaler prompted the AI DABUS to to create an invention was permissible, but a designation of DABUS as the inventor was not.
Second, in July the EPO Legal Board of Appeal published its judgment on Thaler’s appeal regarding its European application. (J 0008/20 (Designation of inventor/DABUS).) The Board found that in terms of Article 81 of the EPC, an “inventor” must be a person with legal capacity. It rejected an assistance request in which no inventor was identified, but in which it was specified that a natural person was entitled to the grant of a European patent as the creator and owner of DABUS.
But, in line with the German court, the Council said it could see no objection to the user or owner of a device engaged in an inventive activity designating themselves as the inventor and noting the role of the AI in the specification not. Thaler previously filed a divisional EP application where he was named the inventor, and DABUS was named the subject matter inventor.
Third, in August 2022, the UK Supreme Court granted Thaler’s application to appeal the Court of Appeal ruling on the UK patent application. (Thaler v Comptroller General of Patents, Designs and Trade Marks UKSC 2021/0201.) The appeal will be heard in 2023, with judgment likely before the end of the year.
5. Video killed the EPO journey
On 22 November, the EPO announced that videoconferencing would become the default format for oral proceedings in opposition; personal proceedings will only be conducted under certain circumstances, and when the opposition division allows it.
The decision followed a long period during which oral proceedings before the EPO in investigation, opposition and appeal were held by Zoom due to the COVID-19 pandemic. The EPO also published a survey in which 77% of the respondents found that oral proceedings by video conference are good or very good.
The use of oral proceedings has divided opinion among patent practitioners in Europe. Some argue that it reduces travel time and costs, allows more people to participate in proceedings and levels the playing field for parties and representatives wherever they are located. (The European Patent Organization now consists of 39 contracting states, following the accession of Montenegro in October 2022.)
However, others believe that video hearings are a poor substitute for in-person proceedings, they make it more difficult for parties to present arguments and for examiners to deliver fair and well-reasoned decisions and are not permitted by the EPC.
The appeal boards, which operate independently of the EPO president, also hold proceedings by video conference, but have not said whether they will become permanent. As IPWatchdog reported last year, the Enlarged Board of Appeals ruled that parties may be required to participate in appeal proceedings via video conference during a “general emergency.”
Coming in 2023…
The long-awaited introduction of the Unitary Patent and UPC should provide much interest in 2023, with attention likely to focus on the early number of applications for unitary effect, as well as the number of European patents withdrawn and the volume and nature of cases before the brought to court
At the EPO, decisions of the Enlarged Board of Appeal are expected in Case G 2/21, concerning admissibility and post-published evidence, and Cases G 1/22 and G 2/22, concerning the right to priority. Oral proceedings in G 2/21 were held on 24 November.
As mentioned above, the UK High Court is due to hear the DABUS case and deliver its verdict in 2023. The UK courts are also likely to continue to be very busy with various SEP cases, including those brought by Optis against Apple and by Nokia against Oppo. as parties continue to test the limits of the law following the Supreme Court’s Unwired Planet decision in 2020.
Finally, on December 7, the EU announced that it had requested the establishment of a World Trade Organization panel on the legality of China restricting holders of SEPs from accessing EU courts to effectively protect their rights and down to force. The dispute concerns anti-suit injunctions issued by Chinese courts since August 2020. A panel is likely to be established on January 30, 2023, and proceedings could last up to 18 months.
Image Source: Deposit Photos
Image ID: 76532417