An Insight into the Changing World of Patent Law - David Hobson, Patent Attorney / Partner

A partner and patent attorney at one of Europe’s leading patent law firms, David holds a PhD in biochemistry, extensive experience in patent law, has had several publications and a recent recommendation in the ‘Legal 500’ - he uses his expertise to navigate complex cases involving multi-jurisdictional prosecution experience. David specialises in life sciences - acting for UK and overseas biotechnology, pharmaceutical, and food clients in all patent matters. Much of the patent work he performs relates to enzyme biotechnology, including its application in the food and pharmaceutical industries, antibody therapeutics, cell therapies, and plant biotechnology. This cross-country working means he often has to navigate different systems, laws and communication styles. Here, David shares with us his fascinating insights into the latest developments in patent law, the challenges, the opportunities, and his advice for companies looking to improve their legal English. 

What is a patent, and why would companies need one?

A patent is an intellectual property right that allows the owner (Patentee) to stop non-authorised third parties from working on an invention claimed.  It differs from the other IP rights, such as copyright and trademarks as it is specifically directed to technical subject-matter.  In other words, a patent allows for the protection of an innovative technical solution to a technical problem in a given industry.  Although the term "invention" is evocative of machines (such as aircraft engines), patents can be granted in any field, for any form of technology, including those relating to biotechnology and food technology. 

What are the latest developments in patent law?

There was a very big development earlier this year.  On 1 June 2023, the Unified Patent Court (UPC) came into effect.  This is a new court system that has exclusive jurisdiction over patents granted in European member states that are signatories to the agreement.  The potential advantage of the system is pan-European patent enforcement.  However, its key limitation is that patents that have not been opted out of the system are at risk of central revocation. In other words, the Patentee could lose the patent in all the UPC member states via one single court action if an invalidity challenge is successful. This contrasts with the current system whereby litigation proceeds separately before each national court. 

What are the current challenges?

In the biotechnology and pharmaceutical fields, one of the biggest challenges in Europe is the balance between securing an early filing date with presenting sufficient data in the application as filed. The latter is necessary to meet the European Patent Office’s strict plausibility requirements for inventive step or enablement; the case law has continued to raise the bar in this regard, especially when it comes to second medical use inventions. Consequently, applicants are required to perform more upfront R&D investment in order to generate extensive, robust supporting data. 

What is the impact of the increased use of technology on the complexity of life sciences patent law?

The biotechnology and pharmaceutical industries are really embracing the use of AI (Artificial Intelligence) and have been quick to adopt it.  For example, we’re seeing more inventions based on the use of AI and machine learning, especially in the medical diagnostic tech space.  In particular, AI is able to help support the delivery of more accurate diagnoses.  We anticipate that the use of AI in these industries will only continue to grow leading to some exciting new innovations. 

What are the future opportunities?

For businesses in the biotechnology and pharmaceutical industries specifically, cell-based therapies are a hot topic, especially in the treatment of cancer.  Interested readers are suggested to search for articles on CAR T-Cell therapy, the recent success of which has inspired other companies to develop similar therapies to treat a wide variety of conditions. 

What about opportunities for people looking to work in this sector?

Anybody looking to work in patent law should have a STEM (Science, Technology, Engineering and Mathematics) degree.  Many big firms and pharmaceutical companies provide regular openings for Trainee Patent Attorneys, in which the successful candidate will be exposed to ‘on the job’ training. Key to the UK attorney qualification process is a series of exams starting with the foundation or Certificate in IP Course followed by four final-level diploma exams. In parallel, trainees with 3 years+ experience sit the European Qualifying Exams to become European Patent Attorneys.  Due to the global nature of the sector, knowledge and understanding of the specific Business English is of immense value to any professional who is not a native English speaker. 

What impact do you think digital transformation and AI will have on patent law in the coming years?

I think it’s going to be a really helpful tool, but I don't think it will ever replace patent attorneys.  There's an important human element required in the work that we do - we have to work within grey areas and find the right balance between business/client needs, legal requirements, and scientific reasonableness.  It almost always comes down to the attorney making the right judgement call, and this is something AI would struggle to do (at least at present).  Having said that, the technology will definitely help us by assisting with more routine work.  For example, AI may make prior art searching and analysis much more efficient.  In conclusion, I think AI will only ever complement our work, not replace it.