IP-Fälle und Artikel

Celebrating 100 newsletters: patent decisions 2007-2024

To celebrate our 100th patent newsletter we’ve compiled a condensed overview of the eighteen years’ worth of case law and commentary since our first October 2007 publication.

Over this time the emergence of new technologies has posed challenges for rights holders, attorneys, scholars and the judiciary alike, and has led to transformation of the patent legal landscape around the globe. We invite you to visit our IP knowledge bank where all our articles, guides, webinars and newsletters can be found: www.dyoung.com/ipknowledgebank.


Our first patent newsletter heralded the entry into force of the European Patent Convention 2000 (EPC 2000) at the close of 2007. We welcomed the new year with news that the EU had joined the Hague Agreement, meaning any European individual or company could file an international registered design. In May 2008 the London Agreement entered into force, offering a reduction in the cost of translations at grant for some of the most commonly designated EPO states, and in September 2008 the patent prosecution highway (PPH) pilot programme between the EPO and the USPTO commenced, allowing fast-track patent examination procedures.


Another fast-track system hit the news in May when the UKIPO introduced the Green Channel, an accelerated process for UK applications relating to greentech. Hot topics over the year included computer-implemented inventions as well as antibody, stem cell and DNA patents, divisional applications and the liberalisation of ECJ law on multiple SPCs.


This was the year we evolved our brand identity to the logo and newsletter format you see today. Elsewhere we saw more debate in the courts on DNA sequence and computer programme patenting, SPC application time limits and the end of the Swiss claim format for second medicinal use claims. By the close of the year we were reporting a reboot of the Patents County Court (PCC) with hopes that the “re-born” court would bring affordable UK litigation to SMEs.


In January we introduced our dispute resolution & litigation group and became the first firm of patent and trade mark attorneys to establish a legal disciplinary practice in the UK. We also launched our now popular European biotech patent case law webinars (and we hope you will be able to join us in June for the latest of these). This year the CJEU ruled on stem cell patenting, causing considerable uncertainty for European stem cell companies at the time.


After years of speculation about the elusive unitary patent, discussions gained impetus following an EU Competitiveness Council meeting in Paris in which the compromise solution of a Central Division in Paris with specialist clusters for chemistry, life sciences and mechanical engineering was proposed. Our closing words “watch this space” were to be repeated for another 11 years until the launch of the UP and UPC in June 2023!


The start of the financial year ushered in a new opt-in tax saving scheme, the UK Patent Box, a tax opportunity that any IP-active company should still keep in mind. The smartphone patent wars rumbled on with news of the latest skirmishes in Samsung v Apple, and 3D printing was capturing our collective imaginations.


Trending issues a decade ago were “big data”, graphical user interfaces (GUIs), and wearable tech, plus of course the ongoing smart phone wars. We discussed implementation of the Nagoya Protocol in the EU, enabling the fair and equitable sharing of benefits arising from the utilisation of genetic resources, contributing to the conservation and sustainable use of biodiversity. In October the UK IP Act 2014 came into force, designed to modernise IP law and to support UK businesses in the protection of their IP rights in the UK and abroad. The global patent prosecution highway (GPPH) pilot programme expanded to include Singapore, bringing the total number of participating IP offices to 19 (in 2024 we have reached 27 members, including the DPMA and UKIPO).


The so-called Broccoli and Tomato decisions (G 2/12 and G1/13) were stand-out cases for 2015, and good news for applicants seeking protection for non-GM plants in Europe. This decision was overturned five years later in G 3/19, at which point the law updated to state that “plants and animals exclusively obtained by essentially biological processes are not patentable”.


In a decision that disappointed many design right holders, Magmatic (Trunki) lost its appeal to the UK Supreme Court in its case against PMS, sellers of the competing Kiddee Case. This remains a cautionary tale regarding the importance of filing design registrations that do not limit scope of protection unnecessarily, especially for shape designs. Significantly for D Young & Co, this was the year we opened our first German office to support our growing client base across Europe and the rest of the world. In 2024 we are delighted to celebrate the continued growth and success of our Munich team.


2017 was a momentous year for claim interpretation in the UK, with a ground-breaking decision from the UK Supreme Court (Actavis v Eli Lilly). The decision brought a doctrine of equivalents into UK patent law, as well as a limited doctrine of file wrapper estoppel, changing the way in which the scope of protection conferred by a UK patent is assessed. Also, the High Court of England & Wales handed down a judgment in Unwired Planet v Huawei, determining the terms of a licence relating to standard essential patents (SEPs) for mobile communication technologies on fair reasonable and nondiscriminatory (FRAND) terms.


The UK announced its intention to join (after much delay) the Hague system, becoming the 68th member of the system and giving applicants increased flexibility over the strategy to pursue when filing international design applications. In a decision that was welcomed by campaigners against GM foods, but regarded with dismay by many scientists in the field, the Court of Justice of the European Union (CJEU) decided that gene-edited organisms, using technology such as CRISPR, should be classified as genetically-modified organisms (GMOs), and thus subject to substantial associated regulations. At the end of the year the EPO published revised guidelines for examination relating to AI, machine learning and mathematical methods, aiming to reduce uncertainty for applicants as to what technological innovations are patentable.


A new buzzword in the tech industry was “blockchain”, a potentially disruptive technology. By the close of the year, for the first time in the history of the EPO, the Enlarged Board of Appeal had been asked for a decision relating to the patentability of computer-implemented inventions (CIIs) in G 1/19.


Sadly, the Collins English Dictionary word of the year was “lockdown”. Writing our newsletters during the Covid-19 pandemic we worked with and witnessed creative groups and individuals from around the globe protecting us from the virus and innovating in diverse areas ranging from frontline medicine, epidemiology, and immunology, to engineering, digital communications and many more. The pandemic dramatically accelerated moves towards digitalised working practices, most prominently at the time for patent attorneys at the EPO, with the adoption of oral proceedings by videoconference. In September the UK Supreme Court confirmed that UK courts are able to set global FRAND terms, a decision that addressed the inherent conflict between, on the one hand, a globalised market place and standards setting context for many technologies, and on the other, the national scope of individual patent rights.


The EPO Enlarged Board of Appeal announced its decision in respect of G 1/19 relating to the patentability of computer simulations, restricting the patentability of purely simulation based innovations in Europe. Following the UK’s exit from the European Union in the previous year, we published our “Patents and SPCs post-Brexit” report, shining a spotlight on the impact of Brexit on the pharma industry, focusing on the challenges ahead, as well as areas of opportunity for the UK.


With news in January that Austria had deposited the instrument of ratification for the Protocol to the Agreement of a Unified Patent Court, launch preparations for the new court began in ernest and we were busy answering your all-important opt-out questions. In the UK the government issued its response to a consultation conducted into artificial intelligence and IP, exploring three areas of patent and copyright law particularly relevant to the commercial exploitation of AI: copyright in computer-generated works, patents, and text and data mining.


The Enlarged Board of Appeal issued its much awaited decision G 2/21 (concerning post-filing data in support of a technical effect for inventive step), and hot topics included techbio, AI inventors and inventions, data mining, greentech and spacetech. However, the clear headline news, arguably since our inaugural newsletter, was the launch in June 2023 of the Unified Patent Court (UPC) and unitary patent (UP). Our newsletters and website are now frequently updated with UP & UPC statistics, commentary and insight on the new system (www.dyoung.com/upandupc).

2024 +

Technology advances every day and IP law must continually evolve to catch up. We will continue to keep you abreast of the latest developments in law, science and technology and publish our patent and trade mark newsletters each month.
To subscribe, please email your details to subscriptions@dyoung.com or visit www.dyoung.com/subscriptions.

Patent-Newsletter Neueste Ausgabe
Patent-Newsletter Neueste Ausgabe