Europe: key patent issues counsel should monitor this year

The patent agenda for 2022 is already looking fairly packed in Europe, with some major developments expected at both the policy and judicial levels.

In the UK, policymakers are wading into some of the biggest debates on artificial intelligence (AI) and standards essential patents (SEPs) for a decade.

On AI inventorship, appeals could be accepted in the top courts of both the UK and Germany any day now.

And of course, this could be the year that the Unified Patent Court (UPC) finally opens its doors.

Managing IP spoke to counsel about how they expect these issues to play out in 2022.

The fact that 2022 could see some of Europe’s major courts and intellectual property offices add their voices to the debate on AI inventorship is testament to the hard work of the AI Inventor Project, best known for managing the patent applications naming AI tool DABUS as an inventor.

Ryan Abbott, lead attorney at the AI Inventor Project, tells Managing IP that the driving motivation behind the campaign was to shift the policy debate.

“It’s been successful beyond expectations in doing that, especially in the UK,” Abbott says.

As Managing IP revealed last November, the legal team behind the DABUS applications filed for leave to appeal its case to the UK Supreme Court.

If the court decides to take on the case, it would be one of the most influential judicial authorities to weigh into the debate so far.

The DABUS team is also considering the possibility of appeal to Germany’s Federal Court of Justice, depending on the content of a written decision from the Federal Patent Court.

Of course, as counsel have told Managing IP previously, many practitioners feel the AI inventorship debate needs a policy answer, not a judicial one.

If you subscribe to that view, then the UKIPO’s consultation on AI and IP could be the most important development of the year.

Abbott is hopeful that the process could yield a recommendation from the UKIPO for legislative change.

Whether any of that would translate into political action on AI inventorship is another question entirely.

Nicholas Fox, partner at Finnegan in London, says it’s difficult at the best of times to get politicians to talk about the nuts and bolts of IP policy.

“Getting parliamentary time on anything to do with patents is difficult. I don’t think this is on the government’s radar at the moment,” Fox says.

The DABUS team hopes, nonetheless, to keep AI inventorship high on the agenda.

“The UKIPO recommending the law should change, or the UK Supreme Court hearing the appeal – these would be big successes,” Abbott says.

It’s not just the AI debate that will put eyes on the UK in the coming year. The UKIPO is also seeking views on some of the most important issues in SEP policy.

In the past, it’s been UK judges who have broken new ground in the world of SEPs. Now practitioners will be keen to see whether policymakers reach the same conclusions on global rate-setting as the Supreme Court did in Unwired Planet v Huawei.

The wide-ranging consultation will make for intriguing viewing for all SEP stakeholders, both in the UK and internationally.

One topic under discussion is whether courts should take into account the value of a particular SEP to a product when assessing damages.

“I haven’t heard of a government looking at that before,” says Paul Zeineddin, partner at Axinn in Washington DC.

As is often the case with issues of SEP policy, questions such as that will sharply divide opinion.

As Managing IP reported last year, both patent owners and implementers are keen to get their views across at a time when the UK is re-evaluating its post-Brexit IP strategy.

For the moment, the UKIPO is giving little away in terms of which side it favours. As with AI, the UKIPO could provide some of the most compelling viewing in the SEP debate this year.

European practitioners will probably find more common ground on the UPC than they will on SEPs or AI.

For many practitioners, the UPC opening its doors will be top of their wishlist for 2022 – even if it’s just to have the whole saga over and done with.

If the UPC preparatory committee is to be believed, this is the year the project will clear all remaining hurdles and finally open for business.

Of course, we’ve heard that before. Practitioners could be forgiven for having become sick of hearing the words “this is the year” and “UPC” in the same sentence.

But it seems quite a few share the preparatory committee’s optimism.

“I would expect they’ll get it done this year,” says Francesco Machetta, IP strategy adviser at Bracco in Milan.

The next step is the provisional application period (PAP), during which final preparations will be completed.

For the PAP to begin, Austria needs to complete its ratification of the Protocol on the Provisional Application of the UPC Agreement.

Once that happens, the UPC will come into being as a legal entity and staff can finally tackle some of the outstanding tasks such as recruiting judges, training more staff, and finishing work on a new IT system.

The preparatory committee estimates it will need at least six to eight months to get all of this done.

Whether that’s realistic or not is the great unknown.

“I don’t expect any additional obstacles, but we’ve become used to surprises,” says Machetta.

The administrative work is just one problem. We still don’t know whether there will be a third central division seat for the life sciences to replace London or where it will go.

One option is that the central division will only have sections in Paris and Munich.

Otherwise, there are several contenders vying to replace the UK. Italy has touted Milan, while Amsterdam has been pushed as another option.

Ultimately it’s a political decision, and one that practitioners want sorted out as quickly as possible.

“The competent authorities could decide it tomorrow, there is no reason to wait,” says Machetta, who perhaps unsurprisingly favours his home city of Milan.

The organisers say none of this need delay the UPC’s opening beyond this year. 

Maybe you see that as refreshing optimism in difficult times, or as the UPC just living out its own Groundhog Day.

Either way, patent counsel can expect a lot from 2022.