2021 LS&HC Horizons - Flipbook - Page 43
Life Sciences and Health Care Horizons 2021
43
Patents, Litigation,
and Beyond
Global patent litigation into 2021 and beyond
2021 promises to be another exciting year in
patent litigation. What themes will be keeping
our patent litigators particularly busy during
the next 12 months, and what important
decisions or political developments will likely be
at the forefront?
In the U.S., one of the most anticipated cases
will be the Supreme Court’s review of the
Arthrex Inc. v Smith & Nephew, Inc. case that
will likely affect the viability of the Patent Trial
and Appeal Board (PTAB) as well as countless
past, present, and future PTAB decisions. Even
if the Court upholds the constitutionality of
the PTAB, the issue will undoubtedly be hotly
debated by courts on other grounds during 2021
and beyond.
In the UK, the Court of Appeal will consider
issues that traverse questions about AI
inventorship. In the Netherlands, we may see
further guidance from the Dutch courts on fair,
reasonable, and non-discriminatory (FRAND)
issues, which most likely take into account
recent developments in other parts of Europe
and the rest of the world. In France, we expect
an increased use of the new legal provisions
creating an after-grant opposition procedure
against French patents granted by the
National Institute of Industrial Property
(INPI), allowing third parties to request the
revocation or modification of a patent through
administrative proceedings.
In Germany, we continue to monitor the
proposed reform of German patent law,
to make the granting of injunctive relief in
patent infringement matters subject to a
proportionality test, which is currently stuck in
the Federal Council (Bundesrat). In Italy, the
Supreme Court issued an important decision
last year on infringement by equivalents,
rejecting the so-called “prosecution history
estoppel” doctrine. We will see in 2021 how the
implementation of this ruling will strengthen
the position of patent holders. In Russia, we’ve
seen a positive trend for patentees, through the
imposition by the Russian courts of permanent
injunctions based on the mere threat of patent
infringement and patent infringement claims.
We expect this trend to continue and develop
this year.
In Japan, recent revisions to the Patent Act
provide a new discovery (disclosure) process
allowing plaintiffs to request the inspection of
defendants’ facilities by a neutral expert to be
designated by the court not dissimilar to the
continental European systems for search and
seizure. As the pandemic subsides, 2021 should
provide an indication as to how much this
procedure will be utilized. Similarly, China has
amended its Patent Law, but in a more extensive
way. Along with overhauling and “modernizing”
almost all of its other IP laws, China has now
implemented procedures for attaining patent
term extensions and patent linking.
Simon Roberts
Partner, New York
simon.roberts@hoganlovells.com
