European Patent Research Articles

AKEBIA THERAPEUTICS INC v FIBROGEN, INC

H1 Patents — European Patents — Infringement — Validity — Pharmaceuticals — Treatment of anaemia — Revocation — Construction — Novelty — Obviousness — Obvious to try — Reasonable expectation of success — Sufficiency — Claims with both structural and functional features — Excessive claim breadth — Whether the skilled person had to be able to identify substantially all compounds covered by the claim without undue burden — Uncertainty — Identification of technical contribution — Plausibility — Reasonable prediction — Agrevo obviousness — Process limited product claims — Appeal to Court of Appeal

OPTIS CELLULAR TECHNOLOGY LLC v APPLE RETAIL UK LTD (TRIAL B)

H1 Patents — European Patents — Telecommunications — Standards essential patents — Infringement — Essentiality — Validity — Common general knowledge — Construction — Scope of Protection — Anticipation — Anticipation by equivalence — Obviousness — Workshop modifications — Proprietary estoppel — Acquiescence —”Inaction or silence — Reliance — Detriment — Telecommunications standards development processes and procedures — ETSI IPR policy — Construction — French law — Timing of declarations of essentiality — “Patent ambush” — Bona fide purchaser for value without notice

Technological competition and patent strategy: Protecting innovation, preempting rivals and defending the freedom to operate

Drawing on the resource-based view of the firm, we examine the effect of technological competition over a patent on the firm's choice of patenting strategy. We claim that technological competition makes the traditional strategy of protecting focal innovations from imitation less likely and increases the likelihood of a play strategy — i.e. using patents to avoid the risk of hold-up by other patent owners, or as a bargaining chip in litigation and cross-licensing. However, we claim also that technological competition over a target close to the firm's core technology should lead to use of a fence strategy i.e. to blocking the commercial endeavors of rivals and preempting substitute inventions. We find support for our hypotheses using data from a large-scale survey of European patent applications.

European Patent Enforcement and the UPC: Status Quo and Perspectives ‒ Conference in Luxembourg, 24 and 25 November 2022

Abstract The Unified Patent Court (the UPC) will soon open its doors to litigants and harmonise what used to be diverse domestic concepts of patent law. Its jurisprudence will undoubtedly be influenced by the various national practices. To shed light on what the future may look like, practitioners and academics met in Luxembourg to discuss the status quo and perspectives of European patent enforcement. The conference featured panels on important topics in patent enforcement followed by in-depth discussions between the panellists and the audience.

Revisiting the Framework for Compulsory Licensing of Patents in the European Union – Reflections on the European Commission’s Initiative

Abstract Within the scope of its initiative on ‘Compulsory Licensing in the EU’,8 the European Commission launched a call for evidence on 1 April 2022 and a public consultation on 7 July 2022 with the aim of gathering views from stakeholders. The objective of this initiative is to explore the possibility of revising the framework for compulsory licensing in the EU to make it more ‘adequately prepared and coordinated to tackle future crises’.9 The authors of this position paper welcome the Commission’s attempt to reinvigorate the public discourse on this important subject. Depending on the issue to be addressed and the extent of the Commission’s willingness to reform, different regulatory approaches are conceivable. Subject to compatibility with the principles of subsidiarity and proportionality, these include: Rather than making concrete recommendations on the regulatory approach, this paper addresses selected aspects by way of a preliminary, non-exhaustive note on: the proposed reform’s scope and the grounds for a compulsory licence; the requirements of prior negotiation and licensing failure; government use; procedural matters; compulsory licences for patent applications and products; the relation with other regulations and sui generis regimes (i.e. trade secret protection, regulatory data protection and supplementary protection certificates); the concept of adequate remuneration; compulsory licences for European patents with unitary effect; and the exhaustion of products placed on the market under a compulsory licence. – soft law measures, such as guidelines and recommendations; – harmonisation of national laws (substantive and/or procedural);10 – judicial cooperation (i.e. mutual recognition of judgments and of decisions in extrajudicial cases);11 – centralisation of granting and/or judicial review competences; – creation of a supranational compulsory licence; – or any combination thereof.

Risk assessment of additional information on maize MIR162

The European Commission requested the Panel on Genetically Modified Organisms of the European Food Safety Authority (EFSA GMO Panel) to assess new scientific information on maize MIR162, and to indicate whether the previous conclusions on the safety of maize MIR162 as a single event and as a part of stacked events remain valid. The new information is included in a European patent that reports a decrease in male fertility in some MIR162 inbred lines, pointing to a potential link between such decrease and the Vip3 protein expressed by maize MIR162. The EFSA GMO Panel evaluated the data provided by the patent owner and found scarce support for a causal link between Vip3 and decreased fertility. The general hypothesis of an association between event MIR162 and altered fertility could not be confirmed. The EFSA GMO Panel conducted the safety assessment based on the conservative assumption that such an association exists. The EFSA GMO Panel concluded that a decrease in male fertility would have no impact on the previous conclusions on maize MIR162 and stacked events containing MIR162.

Evidence on the Determinants of the Likelihood and Speed of Technological Convergence: A Knowledge Search and Recombination Perspective in Key Enabling Technologies

Technological convergence is the phenomenon whereby a focal technology, originating in one domain of application, end up as a part of new technologies that pertain to distant domains of application. This phenomenon is assuming increasing relevance due to its potential to create new markets and disrupt existing ones. Therefore, by adopting a search and recombination perspective, we seek to understand if and how the technological search breadth (i.e., the degree of different technological domains characterizing the knowledge base of the focal technology) and the geographical search breadth (i.e., the diversity of the knowledge base available for subsequent inventing activities) influence the likelihood and the speed of technological convergence events. We test our hypotheses on a sample of 135,496 European patents; they are applied between 1990 and 2009 and can be classified as key enabling technologies according to the European Commission. Our analysis shows that the likelihood and speed of technological convergence are positively affected by technological search breadth, negatively affected by the geographical search breadth, and positively affected by the interaction between technological and geographical search breadths.

Technological tools for project management in the digital transformation context

This article aims to identify the technological tools described in patents that present the relationship between Project Management (PM) and Digital Transformation (DT). The research is characterized as exploratory, with a qualitative approach, and investigates patents in public access bases. The research was carried out in the databases of the office of the World Intellectual Property Organization (WIPO) and the European Patent Office (EPO), bringing a set of 45 patents that addressed technological tools together with the relationship between PM and DT. The results show a great concentration in the patent classification groups G (Physics) and H (electricity), with predominance in the G group. The results also show that, in the context of DT and PM, individuals and teams capable of working with digital technologies and tools are more willing in scenarios of technological automation, process rationalization, agility, cost reduction, and value creation. This research contributes to expanding the knowledge in the use of technological tools in patents in a DT and PM context. In addition, evidence demonstrates that patents require technological capabilities with competent individuals to use technological tools and innovations.

Government R&D and green technology spillovers: the Chernobyl disaster as a natural experiment

AbstractUsing data on green patents filed at the European Patent Office from 1980 to 1984, this paper investigates the effect of increasing government R&D budget on green technology spillovers. Spillovers are measured with patent forward citations over the period 1981–1988. The level of government R&D budget is instrumented leveraging the unexpected occurrence of the Chernobyl nuclear accident—that exogenously pushed governments to reduce their energy-related R&D budgets—in a difference in differences setting. 2SLS results show that a 10% increase in government R&D increases by some 0.7% the number of citations received by green patents. Although positive and significant, the small magnitude of the estimated elasticity suggests that government R&D takes time to let innovation spillovers from green technologies to materialize with some relevance. Interestingly, increasing government R&D expenditures fosters green technology spillovers across traditional (non-green) fields and enlarges the technological breadth of inventions citing green patents. Overall, I conclude that government R&D fosters green knowledge spillovers, accelerates hybridization processes and favors technological diversification around green technologies. However, these positive effects seem to materialize at a slow pace.

FACEBOOK IRELAND LTD v VOXER IP LLC

Abstract H1 Patents — European patents — Telecommunications — Live broadcast features —Infringement — Validity—Skilled person — Common general knowledge — Proposed amendments — Construction — Clarity — Added matter — Infringement on normal construction — Equivalence — Formstein defences — Obviousness — Insufficiency — Enablement

European patent opposition outcomes in biotechnology

Oppositions to patent grants are a means to attack competitors and protect a firm's own patent portfolio. Extant literature has analyzed the determinants of oppositions, while the drivers of opposition outcomes are less known. We study 290 EPO biotech patent oppositions filed in 2012–2019. There are three possible outcomes of opposition proceedings: patent revocation, patent amendment, and opposition rejection. We find that opponents who know the patent's technology are more likely to obtain a patent revocation, while opponents who compete in the product market with the patent owner are more likely to receive a rejection.

Some aspects of judicial protection of civil legal relations in Estonia

Keywords: intellectual property law, codification, EU, civil procedure, civil law,CPC of Estonia
 The scientific article examines the peculiarities of the civil proceduralorder for the protection of law in Estonia. Attention is paid to the genesis of modernEstonian civil justice, the peculiarities of some civil legal procedures for considerationand resolution of civil cases are established. It is concluded that all civillegal disputes are resolved according to the rules of civil proceedings, includingdisputes about the protection of intellectual property rights and the protection ofownership rights to immovable property. Instead, there are exceptions — these aredisputes related to European patents, which are resolved in accordance with theAgreement on the Unified European Patent Court. This approach is fully in linewith the pan-European digitalization strategy. Attention is also paid to the implementationof European legal standards in civil justice in Estonia. Thus, it is indicatedthat Estonian courts must follow the relevant practice of the European Courtof Human Rights when deciding civil cases. In Estonia, the Supreme Court canturn to the European Court of Human Rights for an advisory decision on the application,interpretation, and interpretation of the law guaranteed by the Conventionon the Protection of Human Rights and Fundamental Freedoms. Moreover, theparticipants in the legal process, in case of disagreement with the decision of theEstonian courts, including the Supreme Court of Estonia, have the right to appealto the European Court of Human Rights and the Court of Justice of the EU. It is stated that in the Estonian civil process there is a special procedure for the collectionof evidence in accordance with the requests of the EU member states to Estonia.Based on the research, theoretical conclusions and recommendations of relativelyeffective ways of updating (unification, codification) Ukrainian legislationwere formulated, in particular in the aspect of its adaptation to EU legislation.

Organized Corporate Crimes using UNCITRAL Arbitration Framework Development for EPC Disclosure concerning Epistemic Corruption and Pharmaceutical Fraud of Off-label Medicines as Health Regulation and Policy

Purpose: Corporate Governance is a conceptual framework of business designs intended to illustrate the various activities of a company towards fulfilling its profit goals as private stakeholder and contributing to public interests for social obligation of sustainable development. Disclosure of corporate social responsibility is the central mechanism of corporate governance.
 Methodology: Based on stakeholder theory, corporate governance strongly influences corporate social responsibility disclosure to enhance the relationship of stakeholders and its business community.
 Findings: Tax aggressiveness is utilized by board director and its members to lessen tax contribution which is contrary to the government sector goals of maximizing tax impositions for public welfare and safety. Unlawful behavior on tax aggressiveness is known as tax evasion while tax avoidance is not a violation and serves as a loophole to the taxation system, although corporate fraud is apparent in off-label medicines. UNCITRAL model law is a legal arbitration concept of making “commercial” expand to other comparable jurisdiction of international trade. The European Patent Commission is the legal authority that delineates medical policies from patented products.
 Unique Contribution to Theory, Practice and Policy: This paper aims to develop arbitration framework based on stakeholder theory of corporate governance to separate tax evasion from tax avoidance as organized crime sourcing treatment of policies and engineer tax planning to divide intellectual property of product design with corporate fraud concerning off-label medicines. Therefore, tax evasion and corporate fraud are business crimes in pharmaceutical industries needed to be clearly managed by institutional healthcare companies for promoting economic success.

Aspects of the examination of patents relating to medical inventions

Keywords: selection invention; medical inventions; examination; patentability criteria
 The article contains an analysis of approaches to the examination of selectioninventions for medicines. Selection inventions are inventions created in theprocess of selecting an optimal compound from a group of known compounds or in theprocess of selecting parameters from an interval of known parameters related to thecompounds. Selection inventions must demonstrate an unexpected result that is unknownin the prior art. Selection inventions can potentially be a means of obtaining amonopoly on an already known compound or a medicinal product containing thatcompound, or a method of producing the compound, etc. Therefore, the examination of criteria of patentability for selection inventions is important for maintaining the balanceof interests between the patent holder and the society. The article contains informationabout the difference between the examination of inventions in the patent officeand the forensic examination. The analysis of approaches to examination includesthe law of Ukraine for invention, which provides for the means of combating evergreen(secondary) patents, as well as the opinion of experts of the Patent Office abouta patentability of selection inventions. The article contains the approaches to examinationaccording to the regulations of the European Patent Office and other nationaljurisdictions, as well as the opinion of forensic scientists practising in this field. Apractice example of examination of a selection invention is given. The summary includesrecommendations on approaches to the examination of selection inventions:the subject of the selection invention should not have been specifically disclosed earlier;the subject should exhibit previously unknown and unexpected advantages; thedescription of the selection invention should contain reasonable evidence of non-obviousnessof the selection; the selection invention should meet the condition of inventivestep according to the general requirements as for all the inventions. If unexpected advantagesof existing products were deemed patentable under the applicable law, thepatentability of a selection could be considered when an inventive step is present.

PHILIP MORRIS PRODUCTS, SA v RAI STRATEGIC HOLDINGS, INC

Abstract H1 Patents — European Patents — Tobacco products — “Heat Not Burn” technology — Validity — Infringement — Construction — “For use with” — The role of preferred embodiments — Person skilled in the art — Common general knowledge — Added matter — Pleadings — Obviousness — Arbitrary choices — Lack of technical contribution — Infringement — Exclusive licences

Targeting Factors of Ecotax Based on Cradle-to-Grave of Carbon Footprint for SELECT Criteria Mechanism of Decision Process Using Waste-to-Energy Technology

Every drug product, with its apparent patent and trademark from European Patent Commission (EPC), must exhibit its safety utilization starting from its ecological cultivation up to its warranty disposal back to the environment termed as Life Cycle Assessment of drugs. Climate change may be influenced and worsened by several determinants in which pharmaceutical sector may play a big role to environmental pollution and may eventually lead to risks of developing health problems due to environmental toxicities. Therefore, there is a crucial need for remediating drug wastes into renewable energies as corporate responsibility of environmental taxation for the advocacy of Sustainable Development as promoted and regulated by Kyoto Protocol of United Nations Millennium Development Goals of economic prosperity and safety of the public. This paper aims to delineate the waste to energy technology functions for addressing its problems and concerns in carbon tax such as the quantity of renewable power percentage, the amount of greenhouse gases of climate change and its environmental pollutants from waste disposal of expired and used drugs, the prevalence of morbidity and mortality rates in relation to environmental exposure to hazardous substances, and its relative monetary progress and success. Kinetic modelling of equations and its MATLAB simulation code is important for application of waste to energy technology for Sustainable Development. Therefore, delineation of carbon tax in kinetic modelling is quite necessary in resolving issues in economy, society, and environment as exhibited in SELECT criteria mechanism of decision making.

Green Technologies and diversity in the knowledge search and output phases: Evidence from European Patents

The aim of this study is to investigate technological diversity in the knowledge search and the knowledge output stages of the green inventive process. Exploiting a large sample of European patent data, from 1980 to 2013, the paper explores the degree of diversity in green inventions, comparing the recombinant features of green technologies with a control sample of non-green technologies selected through propensity score matching techniques. Empirical results suggest that green technologies show a higher degree of diversity of the knowledge sources and a higher technological diversity in how knowledge is effectively recombined. We further find that the green diversity premium is higher in the knowledge output phase than in the knowledge search phase. We conclude that the assessment of the role of technological diversity along the different phases of the invention process may improve the appropriate organization of innovative activities and policy design necessary for stimulating green technological developments and support a feasible sustainable transition.

Are ideas getting cheaper? The European evidence

Abstract Recent economics of knowledge studies have highlighted the strong positive effects that the limited exhaustibility of knowledge and its cumulability exert on the recombinant generation of new technological knowledge. While existing empirical investigations primarily focus on the knowledge generation and technology production functions, the analysis of the cost of knowledge has received less attention. This paper aims to fill this gap by investigating the dynamics and determinants of patent costs in the European Union in the period 1992–2012. The analysis of patent unit costs in European countries, measured as the amount of research and development (R&D) expenditure per patent application to the European Patent Office (EPO), shows a steady decline and clear convergence toward lower levels, both in time and across countries. We find that a larger stock of patents and a higher technological variety and coherence of its composition are associated with a sharper reduction in patent costs. Our findings suggest that, in Europe, ideas have been getting cheaper.

The Unified Patent Court’s Opt-Out Option – A General Introduction

Abstract With the entry into force of the Agreement on a Unified Patent Court (UPCA) on 1 June 2023, a common patent court will be created for 17 Member States of the European Union. It will be competent for disputes concerning the infringement and revocation of Unitary Patents and classic European patents. At the request of the users, a so-called opt-out mechanism was introduced, which allows the jurisdiction of the Court to be excluded by a corresponding notification. Such opt-outs can be filed via the Court’s case management system as of the start of the ‘sunrise period’ on 1 March 2023. This article provides a first general practical overview concerning the recording of such notifications.***

Vagueness in Artificial Intelligence: The ‘Fuzzy Logic’ of AI-Related Patent Claims

Artificial intelligence is an emerging technology with an average growth rate of 64.70% in patent filings worldwide and 39.71% in Europe between 2015 and 2019, according to Espacenet queries. This trend has raised several concerns regarding the implications for Intellectual Property rights, including disclosure, which is one of the main components justifying the existence of the patent system. Despite its importance, this requirement has been disputed due to certain tendencies that distort the functions that the act of disclosure fulfils, such as promoting innovation, research or teaching. With artificial intelligence–related patents being granted, the disclosure requirement is once again compromised, and perhaps even more due to the particularities that this branch of technology entails. In this sense, one main concern lies in the question of how artificial intelligence–related patents should be disclosed, as well as the fulfilment with this requirement. To this aim, two case studies are conducted to show the heterogeneity of compliance with this requirement, focusing on patents filed at the European Patent Office. The methodology used in the case studies consists in the analysis of a core-AI patent and an AI application patent which allow to assess the differences in the disclosure of both inventions. The heterogeneity between both case studies highlights the relevance of the topic and allows to propose three recommendations to improve sufficiency of disclosure in AI-related patent claims: metrics and benchmark analysis, standardisation of patent claim construction by introducing a ‘claim chart’ and introducing a peer review patent programme.