Five Key Patent Developments in Europe for 2021

As part of its review of 2021, IPWatchdog takes a look back on five patent stories from the past year in Europe, and highlights what further developments to expect in 2022.

1) Go Ahead for Unitary Patent and UPC

In 2021, Europe took a giant leap towards the implementation of the Unitary Patent and Unified Patent Court (UPC). After years of delays arising from disputes over rules and language, the U.K. signing up and then withdrawing, and constitutional objections filed in Germany, it now seems highly likely that the new system will launch in late 2022.

The pivotal step in this process was the decision by Germany’s Federal Constitutional on July 9 to reject as inadmissible two applications seeking to prevent the country from ratifying the UPC Agreement. (BVerfG, Beschluss des Zweiten Senats vom 23. Juni 2021- 2 BvR 2216/20 -, Rn. 1-81.) Following the decision, reported on IPWatchdog here, Germany ratified the Protocol on the Provisional Application of the UPCA, and Slovenia also did so in October.

That meant that just one more EU member state had to ratify the Protocol—and both houses of Austria’s Parliament voted to do so in November. The country’s President and Prime Minister need to sign the bill to complete the process, and that is expected to happen any day now.

Coming up: With the ratification of the Protocol, the Preparatory Committee can start to finalize the budget and IT systems and recruit the UPC judges—a process that is expected to take about eight months. The question of where to locate the pharmaceutical part of the Court’s Central Division (which was previously destined for London) also needs to be resolved.

Once it is clear everything is on track, Germany will formally deposit its instrument of ratification of the UPCA. That starts the clock ticking: the UPCA will enter into force on the first day of the fourth month after the deposit. Realistically, it is likely to be late 2022.

Even before that date, though, patent applicants and owners in Europe will need to start thinking about the new strategic options that the Unitary Patent and UPC offer, and the merits of opting in (and opting out). Expect to see extensive communications from patent professionals in the next few months!

2) DABUS Denied Again

In Europe, as elsewhere in the world, much legal brainpower has been exercised this year over whether an AI can be the inventor of a patent. The question arises from two applications naming an AI called DABUS as the inventor and Dr. Stephen Thaler as the patent applicant, which have been filed in multiple jurisdictions.

On September 21, the Court of Appeal of England and Wales upheld lower rulings that the UK patent applications were deemed to be withdrawn on the basis that the inventor had not been identified as required by the Patents Act 1977. (Thaler v Comptroller General of Patents Trade Marks And Designs [2021] EWCA Civ 1374, reported on IPWatchdog here.)

However, the three judges were split, with Lord Justice Birss holding that Dr. Thaler had the right to apply for the patent, naming DABUS as the inventor, and that anyone else could then challenge that assertion through existing mechanisms.

Subsequently, it was reported that the German Federal Patent Court proposed that the person behind the application could be named as the inventor, supplemented by the AI system, in its decision on the German DABUS applications.

Coming up: The team behind the DABUS applications have appealed to the UK Supreme Court, and a decision on whether the Court will hear the case is awaited. It may decide to do so, given the split at the Court of Appeal. The Supreme Court includes Lord Kitchin, a patent specialist who has previously spoken about AI and IP.

The UK IPO has launched a consultation on questions including patent protection for AI-devised inventions, which closes on January 7 2022.

Meanwhile, at the EPO, the Legal Board of Appeal is holding its hearing on the DABUS applications on December 21. It will be possible to watch the hearing online. The Board may publish its decision immediately, with the reasoning to follow later. The EPO has refused both European patent applications on the basis that the EPC requires that the inventor be a natural person, and Dr. Thaler is appealing that decision.

3) FRAND in Focus

UK courts can settle FRAND terms of a patent license covering foreign patents, even in a case where a legal action was initiated in China and just 0.5% of the relevant sales were in the UK. That was the consequence of a decision in the England and Wales High Court on November 4. (Nokia Technologies OY & Nor v Oneplus Technology (Shenzhen) Co., Ltd & Ors (Rev1) [2021] EWHC 2952 (Pat), reported on IPWatchdog here.)

London has become a paradise for telecoms patents disputes since the UK Supreme Court upheld the right of UK judges to set global FRAND terms or grant an injunction in standard essential patent (SEP) cases last year. (Unwired Planet International Ltd v Huawei Technologies (UK) Co Ltd, Conversant Wireless Licensing SÀRL v Huawei Technologies Co Ltd and Conversant Wireless Licensing SÀRL v ZTE Corporation [2020] UKSC 37.)

That position will be enhanced by this ruling, which rejected both the defendants’ challenge to the English jurisdiction and their application for a stay of the proceedings. It is good news for owners of SEP portfolios, but will also increase concerns about the long arm of the UK courts and the risk of inconsistent judgments—concerns which the judge, His Honour Judge Hacon, appeared to acknowledge. He described the current framework as “plainly not satisfactory” and creating “more uncertainty than is necessary.”

Coming up: With many telecoms patents cases pending before the UK courts, expect more decisions about jurisdiction, forum, and evidence in the coming year.

Probably the biggest case is Optis Cellular Technology v Apple, with some reports suggesting the latter could be liable for $7 billion in royalty payments. This comprises four technical trials, three of which have now taken place, and a separate trial to determine FRAND terms and anti-competition allegations—which is scheduled for June and July 2022.

Optis, which owns an extensive portfolio of SEPs, had secured several favorable rulings—leading Apple to indicate that it could withdraw from the UK market rather than submit to the Court’s terms. However, the iPhone maker has recently overturned one infringement finding at the Court of Appeal, and successfully argued in the High Court that another patent was invalid, so the litigation is now more finely balanced. The FRAND hearing next summer, should it go ahead, will shed further light on how the courts will handle these highly complex cases.

4) CJEU Rules on Pay-for-Delay

In a case concerning the drug citalopram, the Court of Justice of the EU upheld a fine of nearly €150 million ($170 million) imposed by the European Commission over reverse payments between Lundbeck and several generic pharmaceutical manufacturers.

The Court dismissed the companies’ appeals in a decision on March 25. (Cases C-586/16 P Sun Pharmaceutical Industries and Ranbaxy (UK) v Commission, C-588/16 P Generics (UK) v Commission, C-591/16 P Lundbeck v Commission, C-601/16 P Arrow Group and Arrow Generics v Commission, C-611/16 P Xellia Pharmaceuticals and Alpharma v Commission, and C614/16 P Merck v Commission).

It upheld the finding that Lundeck and the generic companies were competitors, saying the existence of patents “cannot, as such, mean that a manufacturer of generic medicines who has in fact a firm intention and an inherent ability to enter the market, and who, by the steps taken, shows a readiness to challenge the validity of that patent and to take the risk, upon entering the market, of being subject to infringement proceedings brought by the patent holder, cannot be characterised as a ‘potential competitor’ of the manufacturer of the originator medicines concerned.”

The Court added that while IP rights holders are entitled to enter into settlement agreements with alleged infringers, “the fact remains that that patent does not permit its holder to enter into contracts that are contrary to Article 101 TFEU.”

Coming up: There are further cases on pay-for-delay before the CJEU, arising from investigations under the Commission’s pharmaceutical sector inquiry.

Hearings were recently held in the appeals from the EU General Court judgments in the cases concerning the cardiovascular drug perindopril. (Case C-201/19 P and others.) In these cases Servier, Niche/Unichem, Matrix (now part of Mylan), Teva, Krka and Lupin were fined a total of €427.7 million ($480 million) in July 2014. The EU General Court reduced the fines in a decision in December 2018, and all the parties have appealed to the CJEU. (Case T-691/14.)

Another case, in which the Commission fined Teva and Cephalon a total of just over €60 million ($68 million) regarding a settlement agreement relating to the insomnia drug modafinil, is now pending before the EU General Court. (Case T-74/21.)

5) General Emergency Permits Videoconferencing

The imposition of videoconference hearings at the EPO has divided opinion among patent practitioners in Europe. In July, the Office’s Enlarged Board of Appeal (EBA) ruled that Boards of Appeal can require parties to take part in oral proceedings by videoconference during a “general emergency” such as the COVID-19 pandemic. (G 0001/21 Oral proceedings by videoconference.)

In its reasoning, published on November 1, the EBA said that “oral proceedings” as set out in Article 116(1) EPC are not limited to “in-person hearings in a courtroom” and that any format whereby parties can plead their case orally is permissible. It said that in-person hearings “are for now the optimum format” but “it does not follow from the above that the right to be heard or the right to fair proceedings cannot be respected when oral proceedings are held by videoconference.” If, in a particular case, a party’s right to be heard or right to fair proceedings is seriously impaired then the relevant body should take measures to remedy that.

In-person hearings should be the default, and should only be denied if there are good reasons, said the EBA. The COVID-19 pandemic was such a reason: excluding a videoconference would have meant postponing the oral proceedings in this case (for a second time) and doing so for a great number of cases would seriously impair the administration of justice. “In these circumstances it was justified to overrule the wish of the parties and to hold oral proceedings by videoconference,” concluded the EBA.

Coming up: The EBA’s ruling only applied to Board of Appeal proceedings, but the logic extends to oral proceedings in examination and opposition, which are also being conducted by videoconference by default – the latter until at least the end of 2022. The EPO believes videoconferences are essential to avoid a backlog of hearings, and many patent attorneys (particularly in the EPO member states that are further from Munich and The Hague) agree that they offer advantages in terms of accessibility, reduced costs and less time spent travelling. However, others argue that only in-person hearings provide the full opportunities to communicate that justice requires—and that parties should at least have the choice.

In 2019, oral proceedings by videoconference were rare. In 2021, the EPO expects to hold nearly 4,000 in opposition cases alone. With remote working become more common, and people likely to remain reluctant to travel, will videoconferences be part of the new normal? The EBA decision may not help answer that question, especially given its limitation to the circumstances of a “general emergency.” If some travel restrictions are lifted, but not others, will that still be a general emergency? Or if restrictions are lifted in Munich but remain in some of the 38 EPO member states? The ongoing challenges of the pandemic may yet prompt another referral to the EBA.

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