This week in IP – EU chief wants SEP ‘solutions’, Australian patent reform, all or nothing for USPTO

The EU should ramp up efforts to find “pragmatic solutions” for standard essential patents and to create a single European patent system, internal market commissioner Thierry Breton announced to the European Parliament this week.

Speaking to lawmakers at the European Parliament Committee on Legal Affairs (JURI) on Monday, Breton said his first priority was to finally create a one-stop shop that would help companies reduce the costs of obtaining patents in the EU, but that IP rights “must allow technologies to spread”.

Breton, who was appointed to the European Commission in December 2019, added that the advent of 5G technologies would affect a number of different sectors. While IP rights should not be reduced, he said, the EU should work to develop solutions that would enable these technologies to be shared.

“It is a question of competitiveness,” he said. “We also need to find pragmatic solutions to the questions of patents that are essential to a standard and standarisation to ensure that Europe doesn’t fall behind in developing connected vehicles or the internet of things.”

The commissioner made these statements in French during his opening remarks to the JURI committee via video conference, where he also spoke about the need to reform data laws in the EU as part of a new regulation for the information society.

“It’s a major challenge for our economic recovery,” he said.

The European Commission is currently considering a competition complaint made by German car manufacturer Daimler against Finnish telecoms company Nokia over licensing terms for connectivity technologies in cars.

EU competition regulators quizzed Daimler and some of its suppliers involved in the complaint in March on why talks on patent licensing arrangements failed between these companies.

On the matter of a single patent system, EU member states and the European Parliament agreed on a patent package nearly a decade ago, in 2012, which included the establishment of a Unified Patent Court.

The harmonised patent project was dealt a huge blow this year, however, after the UK announced that it would not participate after Brexit and the German Federal Constitutional court upheld a complaint made against the system’s ratification.

The Australian government launched a review of the country’s patent system on Tuesday that was intended to support innovation among small and medium-sized businesses.

Karen Andrews, the minister for industry, science and technologies, said in a press release that the review would consider accessibility of the patent system to SMEs as part of the government’s commitment to ensure the country’s IP framework supported smaller business needs.

Andrews added that the government would roll out a suite of initiatives over the coming months as part of this review, including an SME case management service, the SME fast-track service, a dedicated outreach programme and an online portal.

“The aim of this review is to make sure our patents system best supports the needs of SMEs so Australian businesses can protect their inventions and operate with confidence in Australian markets and abroad,” said Andrews.

“This review is part of the government’s commitment to backing Australian innovation – by ensuring smaller businesses don’t face undue barriers or unreasonable costs when navigating our intellectual property system.”

The review will start in the coming months and run for six months, with the final report being delivered to the government by May 2021.

Elizabeth Carroll, chief legal counsel at the Australian IP office, told Managing IP about other IP focus areas for the country in an interview in January.

On Tuesday, the USPTO announced a proposed change for America Invents Act trial rules on institution and responsive briefing in light of SAS Institute v Iancu.

The proposed changes set out that if inter partes review (IPR), post-grant review or covered business method patent proceedings are instituted, the trial will proceed on all challenged claims raised by the petitioner.

The USPTO has also proposed changes to the rules to conform to the current standard practice of providing sur-replies to principal briefs and providing that a patent owner may respond to a decision on institution.

Under these changes, the office would also eliminate the presumption that a genuine issue of material fact created by a patent owner’s testimonial evidence filed with a preliminary response would be viewed in the light most favourable to the petitioner when deciding whether to institute a review.

The US Supreme Court held in 2018’s SAS ruling that a decision to institute an IPR under Section 314, Title 35 of the US Code must be based on all claims challenged in a petition.

A record number of trademarks were registered in the UK in 2019, but patent applications dropped and designs levelled off in the same year, according to the latest data from the UKIPO.

The UKIPO’s report – Facts and figures: patent, trademark, design and hearing data 2019 – shows that trademark applications rose by 12.9% in 2019 from the previous year and that patents fell by 8%. Following a 304% surge between 2015 and 2018, design applications dropped by 2.4% last year.

Trademark registrations increased by 16.7% between 2018 and 2019.

Across all IP rights, the highest number of non-UK applications came from the US, with China in second place.

A total of 4,117 oppositions were filed against trademarks in 2019, which made up most of the disputes managed by the UKIPO.

The surge in trademark applications and registrations in the UK may have occurred because of Brexit and the fact that the country will no longer be covered in the EU trademark system after the transition period ends on December 31.

Trademark-focused in-house counsel and organisations last week called for clarity on whether UK attorneys will be able to represent clients at the EUIPO.

The World Health Organization today launched its much-anticipated COVID-19 IP pool, which is intended to house IP, data and know-how related to coronavirus healthcare.

The platform was first suggested in March by the Costa Rican government, which wrote to the WHO to propose a voluntary mechanism for the sharing of patent and regulatory data, and other useful information relating to technologies that could be used in the fight against COVID-19.

“Our proposal relies on solidarity,” said Carlos Alvarado Quesada, president of Costa Rica, in a statement published on May 15. “It’s a solidarity call to action to member states, academia, companies, research institutions and cooperation agencies, based on global social responsibility, on a voluntary basis, promoting more global non-exclusive voluntary licensing.”

The opening will be welcomed by representatives for health groups such as the Medicines Patent Pool and the South Centre, which this month spoke about the need to create a patent pool to fight ‘IP hoarding’.