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The Invention of Rules

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BBC

 

Intellectual Property can be a difficult topic to publicize, so credit is due to the BBC for continuing to keep the fundamentals of the patent system in the public (Dragon’s) eye year after year. Auntie Beeb’s mission statement is to inform, educate and entertain, and for such a weighty topic, you would expect the home of respected heavyweights such as Attenborough, Bragg, and O’Carroll to be firmly in favour of educating the public and bringing the subject to the attention of younger consumers.

 

Bitesize

 

BBC Bitesize is an online study support platform for school-age students in the UK, and contains lots of articles that delve into interesting titbits from the news. I, as a mostly grown man, therefore was naturally drawn to a blog post entitled ‘How do you invent a new sport?’. The article itself is a brief discussion of the history of Bossaball, a mix of football, volleyball and extreme gymnastics.

 

Unfortunately, the blog has a rather fuzzy approach to the fundamentals of IP, which will no doubt encourage the reader towards some of the more common misconceptions about the difference between patent, trademark and copyright law.

 

The laws of invention

 

“Creating a sport isn’t just about building a player base – patents also comes into it. A spokesperson for the Intellectual Property Office (IPO) explained to BBC Bitesize that the name of a sport can be trademarked in the UK – recent examples are Zumba, Boxercise and Spinning. Rules of the game can’t be trademarked but they can be protected by copyright, and revisiting them over time also keeps them in copyright.”

 

There is a lot to unpack here.

 

  • The focus of the is on trademarks. The names of the new sports referenced are protected by Registered Trademarks. This is fine – a trademark protects branding or trading stylisation – but these are definitively not

 

  • The rules of a game cannot be trademarked, but this isn’t really the point. What the author wants to say here is that the rules of a game cannot be patented (in the UK). Rules for a game are explicitly excluded from patentability. A patent can protect the method of a technical invention (such as a method of manufacture), but the rules of a game are deemed non-technical in nature.

 

  • The rules of a game can be copyrighted, in the sense that the literal wording of the rules codifying the game fall under the scope of copyright protection, if original. Copyright cannot protect the underlying concept of a game.

 

The confusion between trademarking and patenting is reiterated in the next paragraph:

 

“Anything unique to a new sport in terms of equipment can be trademarked. The IPO has seen patents registered for wetsuit technology linked to triathlons, with many more for equipment linked to rugby and cycling. The UK is also number one in Europe for patents regarding sports-adapted wheelchairs used in the Paralympics and other events.”

 

In this instance, I believe the author is referring to trademarks when they mean patents. The name of a piece of equipment can be trademarked, but the unique (and inventive) aspects of a product can be patented.

 

A cursory search of the patent databases finds a single British patent application to a ‘sports wheelchair’, GB2130154, which dates back to the 1980’s. It’s not clear where the assertion of the UK’s pre-eminence in the sports-adapted wheelchair technology sector arises from, but I for one would be interested to know more!

 

Bossaball

 

Potentially, some of the confusion arises from the conversation with Filip Eyckman, the creator of Bossaball. He acknowledges a tricky past with the enforcement of his IP over the years.

 

The Bossaball website directs the reader towards a page entitled ‘Patents’, which recites the following:

 

“Bossaball Sports S.L. is the owner of all rights worldwide. Bossaball Sports S.L. is protected through international copyright and additional trademark and design patents worldwide.”

 

Herein lies another common misconception about IP – the existence of the ‘design patent’.

 

A design subsists in the aesthetic (i.e. non-functional) aspects of a product. Bossaball Sports S.L. do not appear to have any patents (called utility patents in some jurisdictions, such as the US), but instead have design patents or registrations.

 

As such, Bossaball Sports S.L. IP rights portfolio would appear to comprise the following (in at least some territories):

 

  • Protection, via a design patent/registration, over the aesthetic appearance of the inflatable court, upon which Bossaball is played.

 

  • Protection, via a trademark registration, to at least the Bossaball name.

 

  • Protection, via copyright, to the written rules of the Bossaball game.

 

What Bossaball can’t do, it would seem, is prevent the unauthorised use of a game played on an inflatable court which looks different to that protected by the design patent/registration, under a different name, and not utilising a copy of the rules created for Bossaball.

 

So how do you protect a game?

 

Whilst it may seem as though Bossaball Sports S.L. have vulnerabilities in their portfolio (i.e. potential avenues for copycats to arise), the vulnerabilities are narrow in scope. The protection sought by Bossaball Sports S.L. is actually a textbook case as to how to obtain some sort of protection for a game which otherwise cannot be patented.

 

  1. Obtain design (or, if feasible, patent) protection for any equipment or paraphernalia in the game;

 

  1. Register the game name as a trademark, and build up brand awareness to improve the strength of the trademark; and

 

  1. Ensure that you have good and detailed records of copyrightable material, so as to permit enforcement of any rights available against direct copycats.

 

What you shouldn’t do is mark your concept as patented or patent pending, when you only have trademark to the brand. This is illegal, and highlights why it’s important to be selective in the terminology you use in the IP arena. So I tip my hat to BBC Bitesize for raising these points to the wider audience, whilst giving them a digital slap on the wrists for using some misleading phrasing!

 

Albright IP – Covid 19 update – 17 March 2020

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Covid 19

 

We should like to assure our clients, colleagues and friends that we are all in good health.

 

  • We are open for new and existing business, we can meet your IP deadlines and our office is open for telephone enquiries.

 

Most of our staff are remote working in line with UK Government advice.

 

  • This week the EPO extended deadline dates to 17 April 2020 and the EUIPO pushed back deadline dates to 1 May 2020 for time limits falling within 9 March 2020 and 30 April 2020. Currently UK deadlines have not been extended.

 

  • It is worth bearing in mind that EPO fees are increasing by around 4-5% on 1 April 2020. You may want to file in March to beat the fee increases.

 

  • Please do continue to send us your instructions, when requested, so that we can serve your requirements.

 

Thank you. In these unprecedented times, we wish you, your colleagues and families, good health.

How To Make Competitors Aware Of Your IP

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Competitors of intellectual Property

 

It is a question that we are frequently asked: ‘I have patents and trademarks, so how do I put a notice on my products and website to notify competitors of my intellectual property rights?’

 

Whilst driving home from a recent ski trip with my family, I noticed the following on a cardboard sleeve used by Starbucks® to hold my piping hot triple-shot cappuccino:

 

Competitors of intellectual Property

 

Curiosity took me to the stated page: www.lbpmfg.com/patents/, and I liked the way this was laid out.

 

The company’s rights are clearly displayed in a table, with a picture of the product, and the trademarked name …

Competitors of intellectual Property

 

… followed by the associated patent rights:

 

Competitors of intellectual Property

 

If curious, the granted patent rights can be viewed at US8,529,723 and US9,056,712.

 

(Interestingly, their associated right US9,580,228, granted in 2017, is not listed on their web page, so it does seem that LBP Manufacturing are behind with their updates.)

 

Undertaking a manufacturing run, whilst having pending patent and trademark applications, costs money to reprint or retool once your applications are finally allowed and become granted or registered rights. This usually results in a new ‘grant’ number, particularly for patent rights.

 

To this end, having a single website address which can be referred to on your products and literature, and which can be easily updated as new rights are won and older rights lapse, will save time and costs downstream.

 

Why Do I Want To Notify Others Of My IP Rights?

 

Let’s look briefly at the UK, and also the USA to answer this question.

 

In the UK, there are provisions for at least a partial defence against infringement if the infringer can argue that they were ignorant of the existence of the patent or similar rights. See ‘Section 62(1)’ on the UKIPO’s website.

 

The onus is on the infringer to prove that they were not aware.

 

Being clearly directed to a list of your IP rights by a statement on your product or associated literature makes this defence difficult or impossible to use.

 

There are no specific requirements, under UK patent law, for a patent owner to state their rights publicly (but why wouldn’t you? You have paid for the asset, why not use it to protect your market?). Under US patent law, legal damages will not accrue until an effective notice of rights is given.

 

35 USC 287(a), since the introduction of the America Invents Act (AIA) in 2011, gives the option of ‘virtual’ marking to avoid the necessity of physical marking. Virtual marking is as shown above, where LBP Manufacturing has put a statement on their cardboard sleeve of ‘Patent’ followed by their internet address for a web page that outlines a complete and up-to-date list of associated patent rights. See Page L-67 of the MPEP from the USPTO for more specifics.

 

As alluded to above, since you have paid to stake a claim to your intellectual property, why would you not make the best use of the assets? Use the rights as a ‘keep off the grass’ sign to deter your competitors.

 

Albright IP’s Trademark Team in World Trademark Review 2020

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Albright IP’s Trademark team

 

Albright IP’s Trademark team has been recognised in the 2020 edition of the World Trademark Review 1000.

Julia House is “highly capable, and nice with it”. “Practical and focused, she provides top-notch, outstanding Trademark prosecution work. She is a pleasure to work with.” Katie Oliver is “responsive, commercial and always focused on the client’s ultimate goals; she understands the big picture”.

European patent fees to increase from 1st April 2020

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European patent fees

 

The European Patent Office has announced forthcoming changes to its fees, in line with its usual practice of biennial fee adjustments.

 

The January 2020 edition of the EPO Official Journal sets out further details of the fees that will be applicable from 1st April 2020. The changes typically lead to an increase of just under or just over 4% relative to the current official fees. The fee increases will apply to any fees that have not been paid prior to 1st April 2020.

 

Is it worth paying any fees early?

 

You might be able to pay certain mandatory fees on your European patent application before 1st April 2020, in order to take advantage of the slightly lower official fees.

 

This would be particularly advantageous if you are looking to file a Euro-PCT application to avoid increases to the application fee (+5 EUR), search fee (+50 EUR), examination fee (+65 EUR) and designation fee (+25 EUR), as well as any extra claims fees and/or extra page fees.

 

Overall, filing a Euro-PCT application by 31st March 2020 could save you at least 145 EUR in official fees, or potentially more for longer applications. There will also be some cost savings if you wish to file a direct European application by the same date.

 

If your current application relates to two or more inventions – typically highlighted by a “unity” objection in a European search report – then you should also consider filing any divisional applications for the other invention(s) by 31st March 2020. A divisional application takes the filing date of the original ‘parent’ European application, and any renewal fees for previous years need to be paid separately for a divisional application.

 

If, for example, your original European application was filed in February 2015, all of the 3rd to 6th-year renewal fees would need to be paid on a new divisional application, plus the divisional filing fee. In that scenario, you could save at least 130 EUR on those fees alone, in addition to savings on the application fee, search fee, etc. This all assumes that the divisional application is filed and the necessary fees paid before the fee increases take effect.

 

What’s the cost to file an application now?

 

If you would like an immediate quote for filing a Euro-PCT application by 31st March 2020, please enter your PCT application number (in the form PCT/XX20XX/XXXXXX) into our Euro-PCT calculator.

 

If your application is not written in English, French or German, then a translation will be required at additional cost. Please contact one of our attorneys directly if this applies to you, or if you are looking to file a direct European application or a divisional European application, and we would be pleased to provide a firm quotation.

 

For general advice on patents or other intellectual property, please give us a call and have an initial chat with one of our attorneys.

 

Artificial Intelligence Cannot Be an Inventor of a Patent Application

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Artificial intelligence (AI) system.

 

The European Patent Office has recently issued a decision that a machine cannot be named as inventor for a European patent application.

 

On 27 January 2020, the EPO refused two European patent applications (EP3564144A1 and EP3563896A1, relating to a food container and a light for attracting attention in an emergency respectively) on grounds that they do not meet the legal requirement set out by the European Patent Convention (EPC) that an inventor designated in the application has to be a human, not an artificial intelligence (AI) system.

 

According to Rule 19(1) EPC, a designation of inventorship is required if the applicant is not the inventor or sole inventor, and the designation shall state the family name, given names and full address of the inventor. The designation should also contain a statement indicating how the right has been passed from the inventor to the applicant (Article 81 EPC), typically by employment or assignment.

 

For these two applications, the applicant, Mr Stephen Thaler, had designated a machine, DABUS, as inventor. Mr Thaler initially indicated that he had acquired the right to the patents as employer, then  later changed to as successor in title. He explained that the inventions had been made by the machine and argued that the machine should be recognised as the inventor. Mr Thaler contends that failure to do so would effectively exclude inventions made by machines from patentability.

 

However, the decision handed down by the EPO indicates that the concept of ‘inventor’ refers only to a natural person, i.e. a human being, which is afforded various rights under the EPC, including the initial right to the European patent, the right to transfer this ownership, and the right to be mentioned as inventor. In the EPO’s opinion, AI systems or machines can have no such rights because they have no legal personality according to present legislation, legal systems or case law. As such, AI cannot have rights that come from being an inventor.

 

The EPO’s opinion is largely in line with the view taken by many major countries, such as UK, USA, China, Japan and Korea. Hence, it coincides with the internationally recognised standard.

 

What is further detrimental to these two applications is that the applicant had apparently indicated throughout the proceedings that he wishes the AI machine to be designated as inventor, even after being given the opportunity to rectify the deficiencies by naming a human. Therefore, given the EPO has ruled that AI machines cannot have any legal rights and they can be neither employed nor can they transfer any rights to a successor in title, the applications have been refused on grounds of not meeting the formal requirements under the EPC. The only remedy now available to the applicant is to file an appeal to the decisions.

 

Given the advances in artificial intelligence in recent years in a wide range of industries, it is expected there will be more and more cases like these which will challenge the status quo. It seems that a wider debate regarding AI as personalities is required. Should the human owner of an AI machine be named as inventor of an AI-created invention (even though the human is not actually responsible for the inventing), and should a patent for such an invention be granted to its owner simply because of ownership? On the other hand, refusal to grant a patent on grounds that AI invented the invention could hinder innovation and technological development.

 

It is interesting to note that for example, in the UK, copyright of a computer-generated literary, dramatic, musical or artistic work belongs to the human author which has undertaken arrangements necessary for the creation of the work.

 

What is the take home message of these two EPO decisions? Be sure to name a human as inventor for your patent application, at least for the time being.

 

Shanks vs Unilever

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Shanks vs Unilever

 

The Supreme Court’s judgement in Shanks vs Unilever could lead to increased costs for businesses which benefit from profitable patents. But can these costs be avoided?

 

In the UK, the right to be granted a patent for an invention which is devised in the course of an employee’s duties automatically belongs to the employer. As such, usually, there is no legal requirement for an employer to give the employee a share of the profits from the patent/invention, or even a one-off bonus. This is based on the principle that the employer takes the financial risk in filing the patent application and marketing the invention, as well as the fact that the employee is at least partly being employed to devise inventions (so why should they be paid more for doing their job!).

 

This may seem rightly just/wholly unfair depending on which side of the employer/employee divide you are on!

 

There is one main legal caveat to this – that the inventor is entitled to fair compensation if the patent/invention is of “outstanding” benefit to the employer. Of course, this raises the question of what is “outstanding”?

 

“Outstanding” has generally been seen by the courts as a very high bar to pass. The first award of compensation for an employee by the courts under this law was in Kelly and Chiu v GE Healthcare Ltd [2009]. In this case, the patented invention vastly turned around the fortunes of the employer – the company was facing a financial crisis before the patented product provided total sales between 1993 and 2007 of £1.3 billion. It seems safe to say that, in this case, the invention/patent was of outstanding benefit.

 

But the situation was far more nuanced in the Supreme Court’s more recent judgement in Shanks vs Unilever. The patent for the invention, developed by Professor Shanks whilst working for a Unilever subsidiary, provided Unilever with £24.5 million in licence fees. This is undoubtedly a large sum of money, but to a company of Unilever’s size would one describe such a sum as “outstanding”?

 

Professor Shanks’s representatives argued that if only the relative size of the financial gain were considered, then this meant that no company of Unilever’s size would ever be required to pay inventor compensation. In other words, this interpretation meant that Unilever was “too big to pay”.

 

The Supreme Court ultimately came to the conclusion that, although the benefit to Unilever might not be outstanding in absolute financial terms, it was outstanding because it came from an area of the market which Unilever was not particularly active, and came only in the form of licence fees, so the risk and effort on Unilever’s part was minimal. Professor Shanks was awarded compensation of 5% of the profits which equated to £2 million when accounting for interest.

 

The Supreme Court made the following remarks, which could well form the basis of future outstanding benefit compensation claims where the relative financial benefit of the patent/invention to the employer is not particularly great:

 

“For example, the benefit may be more than would normally have been expected to arise from the duties for which the employee was paid; it may have been arrived at without any risk to the business; it may represent an extraordinarily high rate of return, or it may have been the opportunity to develop a new line of business or to engage in unforeseen licensing opportunities.”

 

These comments, therefore, seem to provide several possible avenues for arguing that the benefit to the employer is “outstanding”, and as such may clear the way for more employee compensation claims.

 

So, what might you do if you are an employer and are lucky enough to have employees devising very profitable patented inventions, but are concerned about paying out large sums in employee inventor compensation claims?

 

There is nothing contractual which can be done to prevent an employee receiving compensation – the UK patent’s act expressly states that any clause of a contract which would prevent an employee receiving this kind of compensation is unenforceable. Nor is providing the employee with a small amount of compensation a way to prevent compensation being awarded – if the compensation is “inadequate” then the courts can still make an award.

 

Since there is no way to prevent employees from being awarded compensation, a “soft” approach would appear to be the best strategy; provide your employees with reasonable/generous rewards for devising any and all patented inventions. Not only would this provide an incentive for employees to devise further inventions are therefore generate more profit, but a happy employee might not feel the need to go looking for compensation in the instance of a particularly successful invention, and thereby avoid mutually costly court proceedings.

 

The Mathematics of Patents

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Mathematics of Patents

 

As a general rule, mathematical methods are excluded from patentability, although practical applications involving mathematics may still be patentable (advances in cryptography, for example). However, mathematical terms themselves aren’t excluded and some of those have made their way into the lexicon of patents. Here are five common aspects of patent law involving relatives of words you might expect to find in a maths textbook.

 

1) Added subject matter, by addition (+)

 

A patent application is a snapshot of the invention at a particular point in time once it has been finalised to a large extent. Of course, you may continue improving your invention after a patent application has been filed – this happens all the time. However, you are not allowed to add any new information to your patent application to describe those improvements. If you need to make changes to the application, you can only do so using the information that was in the application at the time it was filed.

 

If the improvements to the invention are valuable in their own right, then you would need to file a new patent application to protect them. Of course, the original application may still cover your invention (unless there have been major changes), but protecting incremental improvements as well can allow you to prolong patent protection for your products beyond the 20-year patent term, and may allow you to take advantage of Patent Box tax relief over a longer period of time.

 

2) Added subject matter, by subtraction (–)

 

This is the other side of the coin to the situation above. Claim 1 of your patent application might claim “a widget comprising a first widget part, a second widget part and a third widget part”. All of these features are in the independent claim (claim 1), so they are considered to be essential to how your invention works. But what if you find that the third widget part isn’t actually essential, and keeping it in claim 1 would make for an easy workaround? Can you delete it from claim 1?

 

The answer is maybe. It depends if there is another part of the patent specification that indicates the third part is non-essential. Taking out the third part would constitute “claim broadening” (a kind of claim amendment), which is allowed before the patent grants, but not after grant. Of course, removing a feature from claim 1 could also mean that there is more prior art standing in the way of patentability, so it may be necessary to add other features in to compensate for that.

 

There is also the chance that you might need to disclaim (i.e. exclude) a particular feature or scenario to get around an objection based on prior art. Disclaimers can be based on something said in the patent application (a “disclosed disclaimer”, e.g. my widget does not include a handle), or occasionally based on something that is not said (an “undisclosed disclaimer”). This second type of disclaimer could be argued to add matter, but is essentially restricted for use in a situation where the prior art is completely unrelated, e.g. your invention is a dog toy, and the prior art involves helicopters.

 

3) Multiple embodiments (×)

 

It is often the case that an invention can be put into practice in more than one way. If you have found two or more ways to solve the same technical problem, then there are potentially multiple embodiments to describe when preparing a patent application. For example, a lever-type door handle solves the same problem as a rotatable doorknob – but one of these is only useful if you need to keep a bear in the next room.

 

Sometimes a patent examiner may decide that two or more embodiments are claimed in different enough ways that they will not perform a patent search for all of the embodiments, even if they are related to each other. There is usually the option to request a further search for the unsearched embodiments, but to obtain patent protection for those other embodiments may require a divisional application (see below).

 

4) Divisional applications (÷)

 

A patent is limited to a single invention. If your patent application includes multiple inventions, e.g. the lever and rotating door handles example mentioned above, then you may need to file a second patent application which is divided out from the first. A divisional application would be searched and examined separately and, if granted, renewable separately to the first patent.

 

A divisional application can only be filed whilst the original application is still pending (European patent applications) or usually no later than three months before the compliance deadline (UK patent applications). This is one reason why it can be beneficial not to get a patent granted as fast as humanly possible – keeping an application pending retains the option to file a divisional, which can be useful if there is infringement.

 

5) Infringement by equivalence (=)

 

An infringing product does not need to copy every single feature of a claim in a granted patent for there to be infringement. Sometimes, it is enough that an equivalent feature is provided. That is to say, patent protection isn’t limited to the literal wording of the claims – it is the claims as construed in light of the specification as a whole, and taking account of equivalent features, that determines the scope of protection and whether a variant infringes.

 

For example, in 1990, the Improver v Remington case found that a slitted rubber rod was equivalent to a helical spring, mainly because the epilator obviously worked in the same way. This was taken further in Actavis v Eli Lilly which went all the way to the UK Supreme Court, with the result that potassium was considered to be equivalent to sodium, for the purposes of interpreting the scope of the patent claims at issue.

 

For UK patents, if the variant works in the same way and achieves the same result as the invention, and strict compliance with the claim wording is not essential to the invention, then it should be found to infringe. This is assessed on a case-by-case basis though.

 

Summing up

 

The take-home messages here are that you can’t add new information to a patent application after filing, you might need to split your patent application in two (or three, or four…) to protect multiple versions of your invention, and assessing patent infringement isn’t always as straightforward as it might seem – there are a lot of factors to consider.

 

For advice on your patents or other intellectual property, please give us a call and have an initial chat with one of our attorneys.

 

Brexit update – 31 January 2020

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Brexit - 31 January 2020

 

The UK formally leaves the EU today on, 31 January 2020. A transition period will run up until the end of 2020. Regardless of whether a modified version of the Withdrawal Agreement is negotiated, it is unlikely that the current draft proposals/terms relating to IP rights will change. A summary of these is set out below.

 

Trade Marks & Designs

 

Here are some key points to consider in anticipation of the post-Brexit proposals:

 

Filing

 

• All granted EUTM/RCD Registrations will be cloned at the effective date of Brexit; with the original filing/priority dates being preserved.

• Any EUTM/RCD Applications pending at the effective date of Brexit will not be cloned; these will retain the original filing date/priority date, provided they are re-filed at the UKIPO within nine months of the effective date of Brexit. Thereafter, they will undergo fresh examination.

• To ensure you will have rights in the EU and the UK after Brexit, file all new Applications in the EU and the UK.

• When filing IRs designating the EU; a separate UK designation should be added.

 

Renewals

 

• Any EU renewals falling due prior to Brexit will encompass the UK.

• Any EU renewals falling due after Brexit will not avoid payment of the renewal fee for a UK clone; this will require a separate renewal.

 

Use

 

• For the future, use in the UK will not validate an EU Registration and vice versa. This will become relevant five years after grant, if vulnerability to cancellation for non-use is to be avoided.

 

Pending Proceedings

 

• Closure of pending proceedings prior to the effective date of Brexit is to be recommended. As such, Cooling Off periods in pending EUIPO Oppositions should be brought to an end, and ongoing proceedings expediated.

• Any ongoing EU Opposition and Invalidation proceedings based solely on a UK right, may be thrown out following Brexit.

 

Licences and Security Interests

 

• Licences or security interests recorded against an EUTM/RCD should also be recorded against its clone when this is created.

 

Contracts and Agreements

 

• The terms of any pre-Brexit agreements should be reviewed, to ensure compliance following Brexit – opting-out or surrendering a clone might be necessary, as the existence of a UK Registration might be contravening earlier agreements.

• Any clauses related to jurisdiction, governing law, and territory in existing contracts should be reviewed and amended to include the UK, as well as the EU, where appropriate.

• Distribution agreements should also be reviewed in anticipation of changes to the exhaustion regime.

 

Patents

 

There will be no fundamental changes insofar as patents are concerned. Since the European Patent Office is not an EU Institution, and since the European Patent Convention is unrelated to EU law, practice will continue as usual.

 

Summary

 

As Brexit approaches, IP owners should be taking pro-active steps to ensure that their rights are well-managed and adequately protected. Whilst Patent owners and Applicants remain largely unaffected by the unfolding Brexit scenario, owners and Applicants of Trade Marks and Registered Designs should actively safeguard their interests, by paying attention to the action points outlined above.

 

Whatever happens in the lead-up to and indeed after Brexit, Albright IP will continue to offer expert advice to our clients, and we will be moving forward and adapting our practice, to ensure that the most appropriate, most comprehensive and cost-efficient IP protection is put in place in the UK and the European Union. 

EPO CRISPR Patent Appeal Resolved

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CRISPR Commercial Patents

 

The EPO Boards of Appeal convened recently to offer a final ruling in respect of EP2771468, a patent granted to the Broad Institute in respect of CRISPR/Cas9 gene editing technology. This case has attracted a lot of attention, not least because of the potential commercial value of the patents at hand, as well as the background of long-standing disputes between the various parties holding CRISPR patents across the world.

 

What is CRISPR?

 

CRISPR (Clustered Regularly Interspaced Short Palindromic Repeats) technology is a novel DNA editing tool which is faster, more cost-efficient, and more accurate than previous gene editing techniques. Indeed, there was some speculation that the most recent Nobel Prize for physiology or medicine might be awarded to the minds behind CRIPSR, before this was awarded to Kaelin Jr, Ratcliffe, and Semenza for their discoveries of how cells sense and adapt to oxygen availability.

 

Ultimately, the technology can be used to permit scientists to rapidly make cell and animal models for the purposes of medical research, as well as providing many options for medical diagnostics, and the techniques are widely used around the world.

 

EP2771468

 

EP2771468 was filed on 12 December 2013, as an International (PCT) application, claiming a long list of priorities to earlier US applications. The publication of grant occurred on 11 February 2015. Several oppositions were launched, starting in October 2015, which asserted that the patent was invalid.

 

The claims themselves were directed towards a composition comprising a CRISPR-Cas system chimeric RNA or a CRISPR enzyme sequence, which are modified to improve their stability.

 

The patent itself is a fairly meaty read, with the International application as published running to 162 pages. The field of technology here is one with dense impenetrable jargon (much like patent law itself!), but this is beside the point. The merits of the appeal hinged on a simple question – was the application entitled to priority?

 

Priority

 

The law of priority for patents stems originally from the Paris Convention, which recites in Article 4(A)(1):

 

Any person who has duly filed an application for a patent […] in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.

 

Why is this important? Well, the Broad Institute filed their original US patent application having four inventors, also named as applicants. When filing in Europe (via the PCT filing), however, one of the inventors was omitted, Professor Luciano Marraffini of Rockefeller University, New York.

 

If Professor Marraffini had not, as asserted by the opponents, assigned his right to the invention correctly to the Broad Institute by the time the European application was filed, then the Broad Institute were not entitled to claim the priority right. This meant that the effective date for the assessment of prior art changed. Here, this meant that different citations, much more destructive to patentability, became citeable, which in turn would lead to revocation of the patent.

 

EPO case law is quite clear in this regard. T788/05 clarified that a sole applicant who was one of several joint applicants on a first filing cannot give rise to a separate priority right. The right of priority is jointly owned but indivisible. The applicant of the European patent application must be the owner or successor in title to all of the rights of the individual applicants of the priority application as of the date of filing of the European application, or in this instance, PCT application, for a valid priority claim to be made.

 

Oral Hearing

 

If the EPO case law is so clear, then how did this case reach an oral hearing? Crucially, the USPTO have a different interpretation of how a valid priority right can form – the later application needs only a single inventor in common in order for a valid priority claim to be made.

 

Essentially (and in much simplified terms), the Broad Institute argued that, given that the priority applications were US filings, then US law should govern how priority can be claimed. Additionally, much semantic argument was heard about the meaning of the term any person as outlined in the Paris Convention.

 

This line of argument threatened to lead the Boards of Appeal to refer the matter to the Enlarged Board of Appeal, which would have significantly extended the uncertainty regarding the status of the patent, but eventually finalised their decision to revoke the patent, finding the priority claim invalid.

 

Procedural Strictness

 

Overall, the decision of the Board of Appeal is much as had been expected to European observers. The prevaricating over this matter has ended, and the final written decision of the Board is expected soon.

 

What can we infer from a practice perspective from this resolution, however? Primarily, whilst the direction in the UK, at least, is towards excusing sloppy claim drafting, the law of priority remains strict, to the point of being lethal to viably patentable technology. In this instance, the Broad Institute potentially have nine patents which have questionable priority claims.

 

Given the divergence of US and European law in this regard, patent practitioners need to be very aware of potential issues in respect of entitlement and ownership, and how this can have a knock-on effect on the validity of patents.

 

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