The Top Five European IP Developments of 2019—and Five to Watch for 2020

“Among other European IP highlights, the UK Supreme Court this year provided guidance on obviousness, particularly regarding dosage regime patents, and the UK Supreme Court is expected to give its judgment in the Unwired Planet v Huawei litigation, concerning jurisdiction in FRAND cases, early in 2020.” the year winds down, IPWatchdog is running a series of articles on the top stories of 2019 and what’s ahead for the year to come. In Europe, all eyes will be on Brexit and its effect on IP rights, the Unwired Planet case, and the SkyKick trademark decision, among others. Overall, IP law developments across the EU have offered decidedly more clarity for IP owners than in the United States this year. Here are the highlights:

  1. UK Supreme Court Clarifies Obviousness

Probably the most significant patent decision this year was Actavis Group PTC EHF & Ors v ICOS Corp & Anor [2019] UKSC 15, a judgment of the UK Supreme Court handed down on March 27.

The Court upheld the Court of Appeal’s ruling that key claims of ICOS’s patent for the use of tadalafil for the treatment of erectile dysfunction were invalid for lack of inventive step. The judgment, written for a unanimous court by Lord Hodge, provided guidance on obviousness, particularly regarding dosage regime patents. Reviewing both the UK court’s Windsurfing/Pozzoli questions, and the EPO’s problem-and-solution approach, Lord Hodge said: “neither approach should be applied in a mechanistic way … neither require a literalist approach to the wording of the claim in identifying the inventive concept.” He went on to set out 10 factors that were relevant in this case.

Lord Hodge added that an appeal court would be justified in interfering with a first instance judge’s decision on obviousness “if the appellate court were to reach the view that the judge’s conclusion was outside the bounds within which reasonable disagreement is possible.” In this case, he said, the Court of Appeal was entitled to identify “an error of principle” in the judge’s finding that allowed an appellate court to carry out its own evaluation.

There were several interventions in the case, some of which raised concerns about the impact it might have on second medical use patents. Addressing these, Lord Hodge said: “I do not construe the judgments of the Court of Appeal as supporting any general proposition that the product of well-established or routine enquiries cannot be inventive. … [T]here is no policy reason why a novel and inventive dosage regime should not be rewarded by a patent. A fortiori, efficacious drugs discovered by research involving standard pre-clinical and clinical tests should be rewarded with a patent if they meet the statutory test.”

  1. Copyright for Designs

In its judgment in Cofemel – Sociedade de Vestuário SA v G?Star Raw CV (C-683/17), the EU Court of justice said that originality is the only requirement necessary for the existence of copyright protection in a design.

The case involved questions referred from the Portuguese courts in a dispute over alleged copies of designs of jeans. The designer, GStar, claimed the designs were protected by copyright but the defendant, Cofemel, argued they were not “works.” In the EU, copyright provides substantially longer protection (life plus 70 years, with no need for registration) than registered designs (up to 25 years).

In its judgment (not yet available in English), the Court said that the concept of “work” is an autonomous concept of EU law which must be interpreted and applied in a uniform manner: there must be an original object, in the sense that it is an intellectual creation specific to its author, which is identified with precision and objectivity.

The decision precludes additional requirements for copyright in national laws, for example requiring “aesthetic effect.” This ruling has been welcomed as expanding copyright protection for designers and brand owners.

  1. CJEU rules on EUTM Jurisdiction

An EU trademark (EUTM) proprietor may bring an infringement action in an EU Member State where advertising or offers for sale are directed or located, the Court of Justice of the EU ruled in September. The judgment in Case C?172/18 AMS Neve Ltd, Barnett Waddingham Trustees, Mark Crabtree v Heritage Audio SL, Pedro Rodríguez Arribas [ECLI:EU:C:2019:674] addressed questions concerning jurisdiction, in particular in cases involving Internet sales. This litigation concerned the alleged infringement of an EUTM for 1703 on the Internet and social media. Proceedings were brought in the UK against a Spanish defendant.

EUTM proprietors can bring actions in the Member State where the defendant is domiciled or has an establishment, or in the Member State where the act of infringement has been committed or threatened. In the latter case, the court has jurisdiction only in respect of that Member State. In this litigation, the England and Wales Court of Appeal asked the CJEU to clarify, essentially, whether the act of infringement takes place only in the jurisdiction where the website was set up and operated, or whether the Member State where consumers are targeted by advertising and offers for sale also has jurisdiction.

The CJEU reasoned that where “advertising” or “offers for sale” take place electronically, they are “committed in the territory where the consumers or traders to whom that advertising and those offers for sale are directed are located, notwithstanding the fact that the defendant is established elsewhere, that the server of the electronic network that he uses is located elsewhere, or even that the products that are the subject of such advertising and offers for sale are located elsewhere.” It added that whether the advertising and offers for sale lead to actual purchases is irrelevant.

Any other interpretation would make it easier for defendants to hide, said the Court. Moreover, courts in the Member State where the advertising and offers for sale are directed “are particularly suited to assessing whether the alleged infringement exists” due to proximity to the harmful event and the ease of taking evidence.

  1. New Rules of Procedure for EPO Boards of Appeal

The EPO Administrative Council approved revised Rules of Procedure of the Boards of Appeal in June. The revised Rules come into force on January 1, 2020 and will in general apply to any appeal pending on, or filed after, that date. However, there are transitional provisions that apply to protect parties’ legitimate expectations where submissions have already been filed.

The revised Rules aim to increase efficiency, predictability and harmonization. They also introduce elements of case management. There are important changes to Article 12 (Basis of appeal proceedings) and Article 13 (Amendment to a party’s appeal case) to encourage parties to present their full case as early as possible.

The key changes include:

  • the publication of a list of cases likely to be dealt with in the following year;
  • the power for the Board to extend the period for filing a reply to the statement of grounds by two months to a maximum of six months;
  • the possibility to request acceleration of proceedings;
  • mandatory communication by the Board in preparation for oral proceedings and a new timescale under which the Board aims to issue the summons and communication at least four months before oral proceedings;
  • the date of oral proceedings can only be changed if there are serious reasons;
  • Boards shall not remit cases to first instance unless there are special reasons;
  • if a decision is announced at oral proceedings, then a written decision will begiven within three months;
  • and the Boards will adopt a “convergent approach” in assessing amendments to a party’s case.
  1. Copyright in the Digital Single Market Directive

The long-debated Directive 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market was adopted and came into force on June 7. EU Member States have two years in which to implement it.

The Directive aimed to promote cross-border access to content, the use of copyrighted materials in education, research and cultural heritage and a better functioning copyright marketplace. Two of the most debated provisions were Article 15 (which introduces a press publishers’ right with exceptions for private/non-commercial uses, hyperlinking, and individual words/very short extracts) and Article 17 (which governs the liability of online content-sharing providers for content uploaded by users).

The controversy over the Directive did not end with its adoption. In May, the nation of Poland filed a case at the CJEU arguing that the Directive may result in preventative censorship. And France’s recently published legislation to transpose the Directive has been criticized for neglecting users’ rights.

And Five to Look Out For in 2020 And Beyond

  1. Brexit: the UK will leave the EU on January 31 and enter a transition period, which is scheduled to last until the end of the year. The terms of the country’s future relationship with the EU will have to be agreed during this period.
  2. Unified Patent Court (UPC): A decision from German’s Federal Constitutional Court is expected in the first quarter of 2020. If this is positive, Germany is expected to ratify the UPC Agreement, meaning it can come into force. However, the UK’s involvement will depend on the Brexit negotiations.
  3. Unwired Planet: the UK Supreme Court is expected to give its judgment in the Unwired Planet v Huawei litigation, concerning jurisdiction in FRAND cases, early in 2020. It heard the case in October 2019 (click on the link to watch video of the oral argument).
  4. SkyKick: A decision in this trademark case (C-371/18) is expected from the CJEU in the first half of 2020. It concerns whether over-broad trademark specifications constitute bad faith. If the Court follows the Opinion of the Advocate General, which was published in November, many registered EU trademarks could be in peril.
  5. Patentability of computer-implemented simulations: In case G1/19, the EPO’s Enlarged Board of Appeal has been asked to rule on three questions regarding inventive step and the criteria for assessing whether a computer-implemented simulation claimed as such involves a technical problem. The EPO President has submitted comments in the case and there have been a number of amicus briefs.

Image Source: Deposit Photos
Image ID: 76532417
Copyright: enterlinedesign


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Join the Discussion

2 comments so far.

  • [Avatar for CD Croan]
    CD Croan
    December 31, 2019 11:35 am

    Re: UK Supreme Court Clarifies Obviousness

    Whenever hiring expert witnesses to testify I’ve tried to pick individuals well versed in their profession AND having the ability to “dumb down” an explanation into common, understandable, language. This may indicate the individual understands their profession and is able to reasonably express it’s elements. To do otherwise may border on pretentiousness or indicate lack of clarity of thought.

  • [Avatar for MaxDrei]
    December 31, 2019 08:39 am

    As to Item #1, obviousness, we have here a dosage regime tadalafil case with patentability built around the notion “who would have guessed, that such a low dose would still work”. Wouldn’t it always be obvious to find out what is the lower bound of the dose that is effective? The court at first instance thought so, the appeal court and supreme court not.

    So, two startling points here. First, that the UK court of appeal reverses the first instance on obviousness (because that, in the UK, is very rare). Second, that the supreme court is minded to encourage dosage regime patents.

    In the patent family are issued US patents 6451807 and 6943166. I wonder, does ICOS enjoy in the USA a scope of protection equivalent to that they now have in the UK?

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