There is only one place to start a review 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 due to come into force on June 1, 2023, and will be the biggest change to patent protection in Europe since the European Patent Convention was agreed 50 years ago. It will create a new option to obtain a unitary right covering at least 17 (and up to 24) EU Member States and to get a court ruling on patent validity and/or infringement covering all of those states. As reported on IPWatchdog (Green Light for Unitary Patent and UPC), the year started with Austria depositing its instrument of accession to the Protocol on Provisional Application of the UPC Agreement. That kick-started the provisional application period and the final preparations for setting up the Court. These preparations have 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 exchanging data between the UPC and European Patent Office. However, it’s not all been smooth progress. The start date was recently put back by two months from April 1, 2023, to June 1, 2023, to allow more time for users to set up the strong authentication required for accessing the Case Management System. That means the transitional period will start on March 1, 2023, rather than January 1, 2023. During the transitional period, holders of European patents can opt them out of the jurisdiction of the UPC by making an online application. The period in which patent applicants can submit early requests for unitary effect as well as requests for delay in issuing the decision to grant a patent at the EPO will start as planned on January 1.

This year has seen 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 regarding fair, reasonable and non-discriminatory (FRAND) licensing. When it’s finally resolved, the litigation should decide issues including the determination of global FRAND licenses, what constitutes hold out/hold up, and potentially Apple’s future in the UK market. The dispute began back in 2019, when Optis alleged that Apple’s iPhone and iPad devices infringed eight telecoms patents, all of which had been declared essential to 3G and 4G standards by the European Telecommunications Standards Institute (ETSI). This led to four trials (known as trials A to D) to determine validity, essentiality, 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) concerned other issues including Optis’s claim for an unqualified injunction. At the time of writing, first instance judgments in trials A-D have been handed down, as well as appeal judgments in trials A and B. Appeals in trials C and D are pending. Trial E was held in summer 2022 and the judgment has not yet been published. In trial F, the Court of Appeal recently upheld an order that Apple must undertake to enter into a license in the form that is determined to be FRAND at trial E or, to the extent that there are appeals in trial E, a license that is finally determined to be FRAND on appeal. As Lord Justice Arnold wrote in the judgment, this order provides for a FRAND injunction “with the modification that the injunction 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 have already been determined to be FRAND.” (Optis Cellular Technology LLC & Ors v Apple Retail UK Ltd & Ors [2022] EWCA Civ 1411, emphasis added.) In his judgment, Lord Justice Arnold also said that the appeals in this case “illustrate yet again the dysfunctional nature of the current system for determining SEP/FRAND disputes” and called on organizations such as ETSI to make legally enforceable arbitration of FRAND disputes part of their IPR policies.

The European Commission is gradually moving forward with plans for a unified supplementary protection certificate (SPC) right. In the EU, SPCs 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 SPC applicants and owners. It has also contributed to legal uncertainty—demonstrated by the large number of referrals 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 SPC by drafting a single examination report, with national patent offices using this to make a decision to grant; and (2) an EPC model, where national offices transfer the decision-making power to a central body, which decides on grant. It recommended establishing a procedure to grant a European certificate based on an examining body comprising a representative from each national agency; a system of appeals before the EU General Court supplemented by a Board of Appeal within the agency; an option for central attack; and the option for applicants to choose between a bundle of national applications and a single regional application. The report stated: “The unified procedure would lead to granting a European certificate which in some states has national effect and in other states unitary effect, according to the law applicable to the designated basic patent. In this way it could also serve as a platform for granting unitary certificates for the countries in which the designated basic patent benefits from unitary effect once the unitary patent package becomes applicable.” The study noted that this proposal is “ambitious” and it is now down 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.

There have been three notable developments this year in the DABUS cases regarding whether an AI can be the inventor of a patent application. First, in March, as reported on IPWatchdog (German Decision Could Provide an Answer to AI Inventorship), the German Federal Patent Court said that a designation stating that the inventor was Stephen Thaler, who prompted the AI DABUS to create the invention was allowable, but a designation of DABUS as the inventor was not. Second, in July, the EPO Legal Board of Appeal published its ruling on Thaler’s appeal regarding his European application. (J 0008/20 (Designation of inventor/DABUS).) The Board found that under Article 81 of the EPC, an “inventor” must be a person with legal capacity. It rejected an auxiliary request in which no inventor was identified but which specified that a natural person had the right to the grant of a European patent as the creator and owner of DABUS. But, consistent with the German court, the Board said it could see no objection to the user or owner of a device involved in an inventive activity designating themselves as the inventor and noting the role of the AI in the specification. Thaler had previously filed a divisional EP application where he was named as the inventor, and DABUS was designated as having invented the subject matter. Third, in August 2022 the UK Supreme Court granted Thaler’s application to appeal the Court of Appeal judgment regarding 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.

On November 22, the EPO announced that videoconference would become the default format for oral proceedings in opposition; in-person proceedings would only be conducted under certain circumstances, and when the opposition division permits it. The decision followed an extended period during which oral proceedings before the EPO in examination, opposition and appeal have been held by Zoom due to the COVID-19 pandemic. The EPO also published a survey, in which 77% of respondents found oral proceedings by videoconference to be good or very good. The use of oral proceedings has divided opinion among patent practitioners in Europe. Some argue that it cuts down on travel time and expense, enables more people to participate in proceedings, and levels the playing field for parties and representatives wherever they are located. (The European Patent Organization now comprises 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 harder for parties to present arguments and for examiners to deliver fair and well-reasoned decisions and are not permitted by the EPC. The Boards of Appeal, which operate independently of the EPO President, are also holding proceedings by videoconference, but have not said whether they will become permanent. As IPWatchdog reported last year, the Enlarged Board of Appeal ruled that parties can be required to take part in appeal proceedings by videoconference during a “general emergency”.

The U.S. Supreme Court will be hearing a case on the patentability of computer software. The case involves a dispute between two companies over a patent for integrating multiple sources of data into a single file. The question before the court is whether the software is too abstract to be patentable, or whether it meets the standard for patentability under U.S. law.

There has been ongoing debate about whether patents and other IP protections should be waived for COVID-19 vaccines. The Biden administration has come out in support of waiving these protections, while some pharmaceutical companies have argued that such a move would disincentivize innovation and make it more difficult to respond to future pandemics.

There has been increased scrutiny on so-called "patent trolls," which are companies that acquire patents not to use them, but to sue other companies for infringement. Critics argue that patent trolls stifle innovation and waste resources on frivolous lawsuits. Several states have passed laws aimed at curbing patent troll activity.

The U.S. recently joined the PCT, which is an international treaty that allows inventors to seek patent protection in multiple countries with a single application. The move is expected to make it easier and more cost-effective for U.S. companies to protect their inventions globally.

China has implemented a series of amendments to its Patent Law, which came into effect on June 1, 2021. The amendments include measures to strengthen patent protection, improve the patent examination process, and increase the damages awarded for patent infringement.

India's Ministry of Commerce and Industry has set up a National Intellectual Property Rights (IPR) Policy to create a comprehensive framework for IPR protection in the country. The policy aims to promote innovation and creativity, enhance access to IPR information, and strengthen enforcement measures to prevent IP rights violations.

The Intellectual Property Office of Singapore (IPOS) has joined the Global Patent Prosecution Highway (GPPH), which is a network of patent offices that allows patent applicants to request accelerated examination of their patent applications in multiple countries. This move is expected to speed up the patent application process for Singaporean companies seeking to protect their inventions overseas.

The Australian government has announced plans to introduce an IP waiver for COVID-19 vaccines, which would allow developing countries to manufacture and distribute vaccines without fear of infringing on patent rights. The proposal is in line with a similar proposal put forward by India and South Africa at the World Trade Organization.