Journal

Meet the IP judges

Joel David Briscoe reports on the CIPA seminar ‘UK Patent Drafting and Litigation – Myth, Legend & Reality’ held on Monday 29 April at the Society of Chemical Industry in Belgrave Square, London.

Hosts: Lee Davies and Gwilym Roberts.

Panel:

• Daniel Alexander KC
• The Rt. Hon. Lord Justice Arnold
• The Rt. Hon. Lord Justice Birss
• His Hon. Judge Hacon
• The Hon. Mr Justice Meade
• The Hon. Mr Justice Mellor
• Joeeta Murphy, Avidity IP Ltd
• Suzanne Oliver, Scintilla IP

This is a first for this writer, and I believe a first for CIPA, to have a room filled with the UK’s leading IP judges and, according to the hosts, the UK’s leading patent attorneys. This talk was under Chatham House Rules, as such, no reference will be made to the speakers, and no comments are intended to be attributed to any individual. The seminar was a structured discussion around preselected questions.

Is there a disconnect between drafting a patent for grant and litigating a patent?

Firstly, the seminar explored the relationship between drafting patents for grant and litigating patents, questioning whether there exists a disconnect between the two processes. Key points raised include the importance of considering potential future litigation when drafting patents, the necessity for patent attorneys to thoroughly review inventor-drafted patents, and the challenges faced when translating technical concepts across languages. Insights from leading UK IP judges highlighted the significance of professional input in patent drafting and the pitfalls of self-drafted patents, particularly in complex areas such as artificial intelligence (‘AI’). Additionally, the panel addressed the limitations of adapting US-originating patents to the UK context and emphasized the importance of professional drafting in ensuring enforceability.

Description amendments, and their impact on litigation

Next, the seminar delved into the contentious issue of description amendments, particularly in relation to the European Patent Office and their impact on claims and subsequent litigation. Key questions centred around the extent to which descriptions should be amended and the implications for litigation strategies. Insights from panelists highlighted judges’ scrutiny on description amendments, emphasizing that the more attention devoted to them, the greater their significance in litigation. Concerns were raised about the lack of strategic guidance and the challenges of conforming descriptions to amended claims. Panelists noted the historical practice of accompanying claim amendments with corresponding changes to the specification, which has since diminished.

Discussion also revolved around the practicalities and costs associated with conforming descriptions and the inherent complexities involved. While there was an acknowledgement of the importance of internal document consistency, panelists grappled with the practicality of implementing such changes, often citing the difficulty in hindsight assessments.

The seminar underscored the multifaceted nature of the issue, touching on concerns regarding costs, client apprehension, and the uncertainty of litigation outcomes. Despite differing opinions on the matter, there was a consensus that the litigation safety of amended descriptions remains uncertain until tested in court.

Costs vs patent quality

The seminar engaged in a lively discussion surrounding the intricacies of patent examination, particularly focusing on issues such as conformity, added subject matter, and the balance between costs and patent quality.

Panelists highlighted the challenge of determining whether certain elements, like Example 65, should be included in claims, often resulting in pressure for conformity from examiners and clients alike. This administrative act can significantly alter the outcome of patent applications, raising concerns about added subject matter and constructive ambiguity desired by clients.

Further discussions touched upon the struggle between costs and patent quality, with participants reflecting on the remarkable achievements of the international patent system despite minor flaws. Quality control efforts by patent offices were acknowledged, although the absence of a clear metric for measuring patent quality was noted. Despite debates on patent quality, panelists generally agreed that the overall standard remains high, with rare instances of patents being granted erroneously.

Additionally, the seminar explored the strategic implications of broad patents and the role of patents as persuasive tools in negotiations and licensing agreements. Participants commended the high quality of patent drafting, noting its success in both technical and administrative aspects.

Increasing complexities of the patent system and its accessibility

The seminar sparked a thought-provoking conversation on the role of the judiciary in patent law, as well as the increasing complexities of the patent system and its accessibility.

Participants raised pertinent questions regarding the judiciary’s ability to navigate complex patent cases and communicate decisions effectively to clients. Concerns were voiced about the impact of recent high-profile decisions on legal interpretation and future patent applications, particularly in areas such as plausibility and data-intensive inventions.

Panelists emphasized the judiciary’s responsibility to consider broader legal implications beyond individual cases, striving to maintain a workable and fair legal system. While acknowledging the current satisfaction with the state of the law, particularly regarding plausibility, panelists highlighted the dynamic nature of legal interpretation and the potential for future changes.

Discussion also touched upon the accessibility of the patent system, particularly for unrepresented applicants. Panelists recognized the challenges faced by individuals without legal representation and highlighted initiatives such as the Intellectual Property Enterprise Court designed to address accessibility issues. Additionally, the importance of pro bono legal services was emphasized as a means to bridge the gap between legal representation and unrepresented litigants, ensuring greater access to justice for all.

And last but not least… AI

The seminar delved into various aspects of patent litigation, advocacy quality, description amendments, and the potential impact of AI on patent drafting.

Participants discussed the quality of advocacy in patent litigation following the introduction of a litigation course by CIPA. While there was hope for increased participation, it was noted that relatively few patent attorneys are willing to engage in litigation, citing reasons such as risk and business relationships with clients.

Regarding description amendments, the discussion revolved around the dilemma of whether to delete or include embodiments falling within equivalents of explicit descriptions. Panelists highlighted the case-specific nature of such decisions and the importance of preserving subject matter while avoiding unnecessary excisions.

The conversation also touched upon the potential role of the Unified Patent Court and the efforts made by CIPA to secure litigation rights for UK attorneys. However, challenges related to business relationships and client retention were identified as barriers to increased participation in litigation.

On the topic of AI in patent drafting, participants expressed varying views. Some emphasized the importance of human expertise and cautioned against reliance solely on AI-generated content, while others acknowledged the potential for AI to aid in certain aspects of patent drafting. Panelists underscored the significance of maintaining ownership and oversight of AI-generated work, emphasizing the continued importance of human judgment and expertise in the patent process.

On reflection…

The seminar offered a comprehensive exploration of patent law complexities, from description amendments to AI integration, reflecting a rich dialogue among legal experts from both ends of the life cycle of a patent document. Despite acknowledging challenges such as advocacy quality and AI’s role, participants expressed optimism about future improvements. Encouraging signs included initiatives like CIPA’s litigation course and efforts to enhance accessibility. Overall, the seminar provided valuable insights, fostering a hopeful outlook for future discussions and advancements in patent law. Attendees expressed eagerness for more such events to continue facilitating dialogue and progress within the field.

Joel David Briscoe