Get ready for 2020
Examining changes to the IP landscape and getting patent
strategies ready for the new year was the central focus of this year’s European
Patent Forum in Munich, which took place on September 26.
Speakers said that for standard essential patent (SEP) holders
and other stakeholders concerned with the concept of fair, reasonable and
non-discriminatory (FRAND) terms, understanding the diverging case law and
practices across Europe was more important than ever.
While the Court of Justice of the EU set out the rules of
negotiations in Huawei v ZTE, nuances
such as the burden of proof regarding FRAND conformity can vary hugely between
jurisdictions. In Germany, for example, it was decided in Tagivan v Huawei that the burden falls on SEP holders. In Philips v Wiko in the Netherlands,
however, the opposite was found to be the case.
Delegates were also warned to keep an eye out for changes to
German patent law that could come as a result of mounting lobbying from the
automotive and telecoms industries to change automatic injunction law. One
speaker noted, however, that most of what lobbyists are asking for is already
achievable under the current system.
Preparing litigation strategies thus emerged as a key part
of preparing for 2020. To prepare properly, attendees were advised to take note
of their business’s priorities, build a picture of the market and identify the
relevant IP rights and associated territories.
Litigants should have a clear idea of what they want to
achieve, speakers said; whether that be an injunction, monetary damages, a
licence or the revocation of a patent. If a business cannot achieve what it
wants in a particular jurisdiction, it may want to think twice before it
And litigants should conduct a cost-benefit analysis to make
sure their litigation plans are financially sound. “There are two things that
make a court attractive from my perspective: cost and speed,” said one speaker.
“But you also need to look at the entity you’re looking at, because depending
on who they are and where you are, winning could be as bad as losing. If a
defendant refuses to accept an injunction and simply moves to another market,
what was the point?”
Delegates were also told to stay abreast of changes to
China’s Patent Law. One speaker pointed out that the fourth amendment is
raising the threshold of achievable damages in patent claims and easing the
burden of proof on plaintiffs, making China a much more attractive place to
Building and managing
a strong department
The best way to attack an opponent is from a position of
strength – so attendees were also encouraged to build the best possible
department they could and were given tips on how to improve their processes.
One speaker noted that they had enjoyed huge success in
building processes to regularly analyse their portfolios and determine patent
worth. The aim was to decide whether some patents were worth keeping and ultimately
shed the ones that were not, to save funds that could be reinvested in the
Diversity and inclusion also emerged as an important talking
point for speakers, who said it was becoming increasingly vital to get a
broader range of backgrounds and experience levels to contribute to projects.
The AIs have it
The day finished off with a talk about the merits of using
artificial intelligence in the patenting process. AI was said to be
particularly useful for searching and monitoring processes as part of freedom-to-operate
checks and for drafting and prosecution.
One speaker joked that he had recently overheard a
conversation where someone said: “By 2050 all attorneys will have been replaced
by AI – and judges too.” He was sceptical about that outcome, but noted that
technology would do a lot of the mundane processes that IP attorneys have to do
now by that time.
Using these technologies was one thing, speakers noted, but
developing and patenting them was another. Section 101 of the US Code and
Article 52 of the European Patent Convention were said to be big barriers to
the patenting of computer-implemented inventions.
A speaker noted that these hurdles were particularly
difficult to overcome for internet-of-things (IoT)-enabled products. He said
that to demonstrate inventive step, it would not be enough to show use of a
known internet technology in a different domain. The connected object must have
a problem that has been solved.
He said that it is also important to teach attorneys the
difference between solving a problem and circumventing it – because there is a
fine line between the two.
For example, in the case of claims directed to a technical
implementation of a non-technical method or scheme – in particular of a
business method or set of game rules – a modification to the underlying
non-technical method or scheme aimed at circumventing a technical problem is
not considered to make a technical contribution over the prior art.
When choosing the right prior art for IoT inventions,
attorneys should choose the closest prior art in normal situations, he added.
The closest prior art should be able to disclose, in a single reference, the
combination of features that constitutes the most promising starting point for
a development leading to the invention.