What are the biggest challenges and opportunities confronting the international patent system?
A major challenge is the multiplication of litigation costs where proceedings on corresponding patents are run in multiple jurisdictions.
A major opportunity is for centralised or regionalised enforcement and revocation of granted patents, as is planned for the Single European Patent – a model that could be emulated, for example, in South-East Asia.
Although a never-ending story, the implementation of the UPC agreement and the adaptation of stakeholders to the new system of course pose a number of risks and chances for the patent community. Lawyers must be prepared to advise clients on the ups and downs of the new regime.
From the perspective of litigators, the growing number of patents granted and diversity of players in particular in the IT and automotive sectors has a real-life impact on businesses. Navigating the patent landscape without interfering with prior rights is increasingly complex, while at the same time debates questioning the automatic injunction in Germany and Austria are seen as a challenge to patentees seeking to enforce their rights.
Reducing the BRPTO backlog. The possibility of “anti-antisuit” injunctions.
Today, emerging new technologies will have a major impact on the existing intellectual property landscape, so intellectual property administration, policy and governance will face major challenges. But the challenge is also an opportunity. Therefore, although national technological capabilities vary widely across the globe, these challenges will also provide important opportunities for the development of national IP systems.
At the EU level the biggest challenge is resolving the Unified Patent issue, which is also a big opportunity.
The main challenge in international patent litigation is the need to commence action everywhere infringing acts are committed together with the risk of irreconcilable decisions.
However, when knowing the peculiarities of each system, it is possible to map a dispute and select the jurisdictions where to commence a case depending on the objectives to be achieved.
Such international battles are also a way to make deals and can be part of a licensing program.
Other opportunities are expected when the UPC will be alive, if ever once…
The implementation of Unified Patent Court system (which currently is on hold pending the outcome of a Constitutional Complaint against the instalment of the system in Germany and the Brexit).
Finally, deciding on clear and uniform rules on questions of SEPs and FRAND which will eventually be done by the Federal Supreme Court.
With the dramatic expansion of globalization and ever evolving popularity of e-commerce, it seems that one of the biggest challenges for inventors will be to protect their inventions in an international environment where potential infringers have easy access to their inventions in many countries all over the world.
a) Developing legal jurisprudence regarding the breakthrough developments being made in the field of Artificial Intelligence;
b) Uniformity in applying Doctrine of equivalence or purposive construction regarding infringement of Patents, across various jurisdictions;
c) The concept of omnibus claims;
d) Controlling abuse of dominance by Patent Trolls or Non-practicing entities.
e) Concept of Patent Prosecution Highway under which participating patent offices agree that when an applicant receives a final ruling from a first patent office that at least one claim is allowed, the applicant may request fast track examination of corresponding claim(s) in a corresponding patent application that is pending in a second patent office, on the basis of the search and examination in the first patent office.
It is possible that the Unified Patent Court might be adopted subject to international developments on this issue.
The biggest challenges and opportunities confronting the international patent system continue to be locating the optimal equilibrium between access to medicines and the need to foster and reward innovation among the research-based global pharmaceutical companies. A similar challenge in the international patent arena is to locate the optimal equilibrium in the litigation of fair, reasonable and non-discriminatory (FRAND) terms for standard-essential patents (SEPs).
The European patent community has been holding its breath for the Unified Patent Court system to eventually happen, and Italian patent practitioners make no exception.
While the uncertainties deriving from Brexit and the complaint pending before the German Federal Constitutional Court seem to have spoiled UPC excitement across Europe, the UPC still represents the biggest challenge ahead for the international patent system.
There has been a dispute as to what theoretical construction may render the Japanese Patent Act effective when part (e.g. a server) of the elements configuring a patented invention (e.g., a system) is located overseas, and whether such theoretical construction is applicable. In the situation where further growth in cross-border business activities which are conducted overseas or in outer space is expected to occur, it is predicted that numerous discussions and determinations concerning such cross-border infringements will further arise from now on based on the individual cases, or in more general trends with an eye toward legislative revisions.
Further, with respect to establishing an international justice division in the Intellectual Property High Court which permits the use of the English language in intellectual property litigation proceedings, consultations have already started among the judicial community, the Ministry of Justice and the concerned parties of the industry.
The complexity of the system and the costs, resources and time it takes to obtain patent protection in several jurisdictions are the biggest challenges to the system in our view.
The biggest challenge of the international patent system is creating one or more regional enforcement systems (such as the UPC system).
The Unified Patent Court, artificial intelligence, trade secrets, data protection and competition matters.
We think that finding proper balance between private and public interests in patent system on national and international level is still the main challenge of the system.
The biggest challenge facing the international patent system arises from the firmly territorial nature of patents and national patent systems. While harmonisation efforts, including the filing of patents under the Patent Cooperation Treaty (“PCT”), have made significant headway in ensuring countries around the world apply a similar concept of patentability, the continued lack of uniformity in substantive patent law and patent practice across countries means that a unified international examination system for patents remains elusive.
One example of divergent patent practice even between International Searching Authorities (“ISA”) under the PCT is shown by how the United States Patent and Trademark Office (USPTO) regards method of treatment claims as being patent eligible, while the European Patent Office (EPO) does not.
Another example is the differing treatment across various countries of prior disclosures of an invention in the assessment of a patent’s novelty. In some jurisdictions, there is a grace period of 12 months given to applicants to obtain protection for their invention notwithstanding that matter constituting the invention has been disclosed prior to the application. This grace period may not be recognised in other jurisdictions. This may mean that the applicant in the country with the grace period may suffer a loss of patent rights.
Further difficulties are posed by searches of prior art in different languages. Due to language constraints, a search conducted by an ISA may not uncover prior art which is not in its primary language. An applicant may hence be required to have prior art in a foreign language translated at its own cost to ensure completeness of the search.
Nonetheless, since the priority date of a patent filed under the PCT procedure is the date when the application was filed with a Receiving Office, the PCT affords applicants the opportunity to obtain for priority even before it has reached a decision on which country it seeks protection in.
The initial search an examination undertaken by the ISA and its subsequent written opinion on the patentability of the invention will enable the applicant to make an assessment of whether applications ought to be filed in other PCT Contracting States, or whether the claims ought to be narrowed in light of the identified prior art. Positive examination results in the international phase may also expedite the examination process undertaken by national patent offices.
Globalization of patent systems combined with evergrowing cross-border transactions among companies are leading to increase in multi-jurisdiction disputes. Companies have been building global patent portfolios with the benefit of the international patent system, and parallel patent infringement actions are filed in multiple jurisdictions by the companies to exploit the legal instruments of different countries. To manage this parallel, multi-jurisdiction dispute, legal counsels, whether in-house or outside, are required to understand the legal systems in various countries and communicate effectively with law firms in various jurisdictions. We expect that this trend will continue and provide new challenges and opportunities to lawyers across the borders.
The UPC system and whether it will come into force.
Another area is computer-implemented inventions, where many low-quality patents seem to continue being granted, while genuinely beneficial developments are excluded from protection.
The challenges ahead certainly include AI-generated inventions and the effects they will have on the patent system. Also, the effects of antitrust law on the patent system will pose further challenges. Finally, the patentability of plants will remain controversial.
Taiwan's innovations in energy, development of industrial clusters, and Research and Design expenditures amount of the proportion of GDP are among the best in the world, and are even ranked second in patent applications. These are Taiwan's greatest opportunities for continued growth in the international patent system.
However, just there are many international cases of theft of patent technology, trade secrets, and talent, Taiwan is also facing such issues. Therefore, while actively developing a patent portfolio, it is necessary to prevent the interests of enterprises from being infringed. This may be the most difficult challenge in the international patent system for Taiwan.
Consistent interpretation and effective enforcement of the patent law.
Once the European patent is validated in Turkey, it is protected as a national patent. The same applies to the inventions entering into Turkey via the PCT, once the registration process is completed.
The main hurdle of the patent registration system is that it takes so long to obtain the full registration that the invention becomes irrelevant in the field. Due to the lack of supplementary protection term in Turkish Law, patent owners are not able to compensate for the full registration term.
Another problematic area is the lack of clear provisions preventing the judges from granting invalidation decisions for European patents validated in Turkey as the EPO opposition process continues. This leads to a double standard for national patents, as the IP Law explicitly prohibits the decision-making on the infringement claims until the post grant opposition proceedings before the TPTO are finalised, and such immunity is not provided to European patents.
One opportunity of the system is that the examiners at the TPTO generally follow the practice of the PCT and EPO. Therefore, no surprises are expected with respect to novelty or inventive step examination.
Another positive aspect is the availability to file the translation of the documents later. As a matter of fact, for applications entering the national phase through PCT, it is possible to submit documents in foreign languages, and file the translation within two months without the need of a notification.
The fascicule of the European patent can be filed within three months following the publication of the grant of the European patent.
- Setting clear guidelines for the enforcement of SEPs in the context of global supply chains for complex products, in view of the proliferation of Internet-of-Things (“IoT”) enabled device and the advent of 5G wireless technology.
- The need to clarify the scope of patentable subject matter, in view of rapid developments in the life science and technology sectors which continue to test the boundaries of what is and what should be patentable.
- The need to develop targeted, appropriately crafted and proportionate remedies for patent infringement. This raises the question of the circumstances under which injunctive relief might be refused, including in relation to life-saving medical treatments, or multi-component technological products which may read on thousands of patents, only some of which may be infringed.
- Ensuring that the UK patent system remains functional and fit-for-purpose both during and following its anticipated exit from the European Union.
- The long-discussed establishment of a UPC to allow for the enforcement of Unitary Patents in up to 26 EU Member States, which will help to simplify, harmonise and lower the cost for enforcing patents across much of Europe. Current challenges for the project include a German Constitutional Court challenge to ratification of the project, as well as the role that the UK will play in the project in view of its impending exit from the EU.
- Maintaining political support and momentum for the adoption and harmonisation of patent laws across developing countries and rising powers, in particular China.
- Ensuring harmonisation and minimising divergence between EU Member States on the interpretation and application of EU law, and obtaining clear decisions from the CJEU that can readily be applied by courts in Member States.
From a global perspective, there remain differences regarding the perceived adherence to the “rule of law” and the independence of the courts. In countries where these principles are viewed with skepticism, there are fewer patent applications filed and fewer lawsuits commenced. Also, in emerging countries, the body of law concerning patents may be limited or spotty. This results in a lack of predictability and confidence for parties considering patent rights and enforcement in those countries. These issues present challenges for companies that compete domestically and abroad. But opportunities also exist because as the legal systems of the world grow more mature and experienced, patents may play a greater role in a larger number of countries.
NPE litigation is also a phenomenon affecting more countries today and likely into the future. Ten years ago, NPE lawsuits were principally filed in the United States. Now NPE suits are being filed in Europe and Asia. In countries where the patent laws are well-established and a permanent injunction is the typical remedy for infringement, an NPE can implement a global enforcement strategy that reaches more entities. Consequently, the uptick in NPE litigation has led to policy debates and proposed legislative reforms.
On June 14, 2019, the National Assembly of Vietnam ratified a law amending and supplementing the IP Law, with the primary purpose being to bring the existing law in line with the terms of the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), which came into effect in Vietnam on January 14, 2019.
In this regard, patent holders can face the following challenges and opportunities:
- Grounds for claiming compensation caused by IP infringement
Under the amended IP Law, it is possible for a holder of IP rights to claim compensation for infringement on any legal basis which the rights holder is able to prove. Under the CPTPP, such determination basis could include lost profits, the value of the infringed goods or services measured by the market price or the suggested retail price, or the infringer’s profits generated from the infringement. This is much more flexible than the previous law, which allowed only certain methods/approaches for calculating damages.
- Attorney’s fees
In IP lawsuits, both the plaintiff and the defendant are entitled under the amended IP Law to request the court to force the other party to pay reasonable attorney’s fees. This was previously only available to the plaintiff. The defendant may request attorney’s fees if it is concluded to have not committed an IP infringement.
- Abuse of IP rights
To comply with the CPTPP, a new provision concerning compensation for the “abuse of IP rights” by the rights holder is included under the amended IP Law. In particular, any parties suffering from damages caused by the rights holder’s abuse of it IP rights are entitled to request the court to force such rights holder to compensate for the damages, including but not limited to reasonable attorney’s fees. The definition and basis for determining the abuse of IP rights, however, remains vague.