Posts in Europe

The European Union Intellectual Property Office (EUIPO) announced today that it has for the first time referred questions of legal interpretation of the EU Trade Mark Regulation (EUTMR) to the enlarged Board of Appeal. The EUIPO’s Executive Director, João Negrão, asked the Office’s Grand Board of Appeal to weigh in on five questions concerning the practice of “conversion,” which allows an EU Trade Mark (EUTM) application or registration to be converted into one or more national applications when necessary. The process is meant to address situations in which an EUTM faces a ground of non-registrability in one or several Member States; through conversion, “the EUTM applicant can convert the EUTM into one or more trade mark applications in the Member States not affected by the problem,” explained the Executive Director’s Referral of Questions.

On March 13, the European Parliament approved the Artificial Intelligence (AI) Act, a major piece of legislation that lays the legal foundation of the European Union’s (EU) regulation of AI platforms. While the 459-page bill addresses some of the copyright and other intellectual property (IP) issues related to generative AI, European creator groups have called upon the EU’s parliamentary body to create more meaningful mechanisms for IP rightsholders to prevent their works from being incorporated into AI platform training models. Further, questions have been raised regarding the extraterritorial impact of reporting requirements and how they might implicate the development of copyright law in foreign jurisdictions.

As of today, the world’s major platforms—Apple, Alphabet, Meta, Amazon, Microsoft and ByteDance—must be in full compliance with the European Union’s Digital Markets Act (DMA), an EU regulation intended to level the playing field in the digital marketplace. Signed into law in September 2022, the DMA imposed a complex regulatory framework upon the major Internet services platforms that are deemed to be “gatekeepers” (i.e. have a market capitalization of at least €75 billion [$83 billion USD]) due to their dominant market position. These gatekeepers each market at least one “core platform service” (CPS) that connects large numbers of users and business interests.

On March 4, the European Commission announced that it had levied a fine of more than €1.8 billion ($1.95 billion USD) against American consumer tech giant Apple over app restrictions employed by Apple’s App Store. The massive fine, which the Commission increased to ensure it was sufficiently deterrent to Apple’s anti-competitive practices, is the latest in a series of legal actions within the European Union (EU) to target dominant Internet platforms under competition law.

Participants in the U.S. and European patent systems face a rapidly changing landscape as the European patent with unitary effect and Unified Patent Court (UPC) are off to a successful start. The UPC has positioned itself alongside U.S. district courts, the International Trade Commission (USITC), and the U.S. Patent Trial and Appeal Board (PTAB) as a leading patent litigation forum…. Accordingly, participants in these patent systems constantly engage with U.S. and European patent attorneys, and now interact more frequently with attorneys who can represent them before the UPC (“UPC representatives”). This article describes key differences in the training, development, and skill sets of U.S. patent attorneys, European patent attorneys, and UPC representatives.

A large number of businesses trade through online platforms and marketplaces such as Amazon and eBay. Consumers may believe that because goods are listed on a well-known trusted platform, they are authentic, and the sellers have been approved in some way by the service provider. Unfortunately, as too many business owners are aware, e-commerce platforms offer counterfeiters and infringers a relatively easy way of offering their infringing goods for sale. A balance must be struck between forcing online marketplace providers to police intellectual property disputes themselves and allowing businesses to protect their intellectual property rights effectively when they are being exploited via online platforms.

As an update to my previous posts from 2017, 2019, 2020, March 2021, August 2021, 2022, and 2023, it has now been almost a decade since the U.S. Supreme Court’s 2014 Alice Corp. v. CLS Bank decision. Yet the debate still rages over when a software (or computer-implemented) claim is patentable versus being simply an abstract idea “free to all men and reserved exclusively to none” (as eloquently phrased 76 years ago by then-Supreme Court Justice Douglas in Funk Bros. Seed Co. v. Kalo Inoculant Co.).

On April 1, 2024, a new fee system will enter into force at the European Patent Office (EPO). Apart from moderate fee increases (more than 7% below the real inflation rate) and the abolishment of several rarely used fees, the new fee system introduces a new fee reduction scheme for so-called micro-entities.

The number of design applications filed through the Hague System for the International Registration of Industrial Designs continues to grow, with an 18.8% increase in annual filings reported in 2022. The Hague system, which covers 96 countries, offers numerous advantages for applicants and presents some interesting strategic options for filing in the United States as well.

As reported on IPWatchdog, the UK Supreme court recently ruled that a trained neural network (an Artificial Intelligence known as DABUS) could not be listed as the inventor on two patent applications filed by Dr. Stephen Thaler at the UK Intellectual Property Office (UKIPO). As a result, the two applications were treated as withdrawn for failing to comply with the requirements of the UK Patents Act 1977. This not a surprising decision for reasons that will be set out below, and it is consistent both with the earlier UK court decisions, and with the decisions of other jurisdictions around the world where Dr. Thaler has argued his case. The decision has, however, sparked interest in the questions of artificial intelligence and its ability both to “autonomously” devise inventions and to subsequently own them.

On December 8, 2023, provisional agreement was reached between the European Union (EU) Parliament and the EU Council on the basic content of the new AI Regulation (the “AI Act”) to be implemented as legislation in the EU. The text is still not publicly available as it is subject to certain further refinement over the coming weeks. However, there is information available in the public domain (including press releases issued by the European Union) as to the likely format of the AI Act. Additional background on the legislative process towards the AI Act is available here.

The most significant development in IP in Europe in 2023—indeed arguably the most significant in nearly 30 years—was the launch of the Unitary Patent and Unified Patent Court on June 1. The full implications of this are explored here. Beyond the UP and UPC, however, there were a number of. important developments in Europe affecting all the main IP rights.

Unsurprisingly, the UK Supreme Court today ruled that Stephen Thaler’s AI Machine, DABUS, cannot be granted patents for inventions it autonomously created. While the Court suggested that questions such as whether inventions like DABUS’ should be patentable and if the meaning of the term “inventor” should be expanded are important ones that should be considered at a policy level, the present case was concerned solely with the interpretation of the present law, which clearly does not contemplate non-human inventors.  

On June 1, 2023, the Unified Patent Court (UPC) opened, providing a new venue for patent litigation across all 17 ratifying European Union member states. The court represents a significant shift in patent litigation in the EU, which is poised to impact the global patent strategy of U.S. and multinational companies. Through the European Patent Office (EPO), inventors have long been able to obtain patent protection across most of the EU through a single application. Once the EPO grants a European Patent, inventors have the option of obtaining local patent protection in any member state that they select without the need for further examination or review. However, historically, once the EPO granted a patent, there was no single enforcement or invalidation mechanism, leaving it up to the member states to enforce patent rights.