IP Summit: Changes In Patent System, Intermediary Liability And The Future Of IP

The stretch run for Europe’s Unitary Patent System (UPS) again took centre stage at the Premier Cercle IP Summit 2015 in Berlin yesterday. Eyes are on Germany for the ratification of the UPS. Cornelia Rudloff-Schäffer, president of the German Patent Office, in the keynote speech assured the 300 hundred participants Germany was preparing for the new system and called out to industry to prepare for the change, saying: “Check your portfolio now.”

Details for the Unitary Patent System and the Unified Patent Court would be completed next summer, said Michael König, deputy head of unit at the Directorate-General for Internal Market, Industry, Entrepreneurship and SMEs of the European Commission.

UPS Waiting for Ratification

The fee structure will be finalised in mid-December and based on a combined fee for the top four countries. The fees for the court will be settled early next year. Completion of the whole package could be expected for next summer. With at least 13 ratifications needed and only eight in now, “the real spotlight is very much on Germany,” König said. “It is high time that works are accelerated,” the Commission official said.

Rudloff-Schäffer told Intellectual Property Watch the German provisions are in the legislative process. “We can expect that legislation will be passed next fall”, she said. Given that the UPS once all details were finalised on the EU level still had to tackle the “rather tricky question of the IT system,” Germany was still in time.

Changes in Patent Systems

She acknowledged that there was some talk about patentees rushing to patent their inventions in Germany before the start of the system. Growth in the German patent numbers, in sum 66,000 for 2015, is mainly sustained by foreign patentees, she said. “It is interesting that Japan has registered more than the US,” Rudloff-Schäffer said.

Preference for Germany stems from what is seen as a pro-patentee system. Injunctions for example are standard for German judges, experts noted. Filings at the European Patent Office also arrived at record numbers, 274,000 compared to 266,000 in 2013. The filing boom resulted from concerns with regard to the new system. Patentees have the possibility to opt out of the new court system for seven years.

A change against a too patent-friendly application process was brought about by the Patent Trial and Appeal Board (PTAB). Only 10 percent of the patents challenged there brought to the specialised judges were held valid, said Kenneth Burchfiel, litigation partner at Sughrue Mion in Washington, DC. Some 90 percent were either invalid or settled beforehand, allowing to cut the period of patent litigation.

“It is a complete change to the system of patent litigation in the US,” Burchfiel said, calling the PTABs the “death squad” of the patent system.

After several reform attempts of the US Patent System for example through ex-parte re-examination of patents and inter-party re-examinations, the “PTAB has become a very important tool” with numbers raising steadily reaching over 1,700 after three years, said Glenn J. Perry of the Administrative Patent Court at the USPTO. “While I do not like the derogatory notion, to the extent that bad patent claims can be invalidated we are happy to be the executioners of the ‘death squad’.”

The conference also discusses injunctions under FRAND [fair, reasonable and non-discriminatory] licences and the competition of different standard organisations using different IP policies and also the most recent developments in copyright. A rather critical reading for example was presented on the recently leaked text of the European Commission’s Copyright Communication, which is expected to be officially published next week.