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Albright IP Expands With Six New Starters

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New Starters at Albright IP - 2021

 

Albright IP has been taking on new talent to deal with a growing workload driven by an expanding client base and continuing post-Brexit work.

In recent weeks we have welcomed six new starters. Four are training as attorneys in the Patent teams and in addition to this, two paralegals have also joined the expanding Trade Mark team and will start their training towards becoming qualified Trade Mark attorneys.

The business expansion is necessary, says Albright IP Managing Director Robert Games, to respond to an increasing client base and to support clients that need additional help with Trade Marks and Registered Designs now that the UK has left the EU.

2021 has been a very busy year for us so far, and we want to make sure we’re fully equipped to respond to our client needs. Brexit in particular has caused a surge in work, as clients both existing and new now need to file for Trade Marks and Registered Designs separately in both the UK and in Europe.

“Our Trade Mark team has worked through a backlog of ‘cloned’ UK registrations that automatically took place when we left the EU,” he said.

“All in all, it has resulted in a lot of additional registration work in a short timescale. While it has been challenging to absorb the growing workload, our team has done a fantastic job, even while mostly working remotely.

“We have some amazing talent in the business, and everyone responded in a really positive way – which means we’re able to continue to deliver great service.”

Lauren Fisher and Zainab Rhyman, both first class law graduates have joined Albright IP as trainee paralagels in the Trade Mark team. Charlie Heal, Ciara Felix, Dr Emily Taylor and Alysia Draper, have all now joined the Patent teams, bringing their own specialisms to expand the company’s knowledge base.

Dr Taylor has a PhD in Chalcogenide Thin Film Materials for Next Generation Engineering Applications from Bath University, while Alysia Draper has a Masters degree in Chemistry from Cardiff University. In addition to this Ciara Felix, has a Doctorate from Oxford University, where she studied computational research on the use of ultrasound as a non-invasive treatment for neurological disorders.

Charlie Heal has a first class Masters in Chemistry from the University of York with modules on clean technology and the use of patents in the chemical industry. His Masters focussed on the synthesis and characterisation of chromia-based hydrofluorination catalysts.

Added Robert: “We pride ourselves in the training and support we provide to our employees to enable them to develop their careers while they are working with us. We’ve already taken six of our existing staff through to become qualified Patent Attorneys and I’m delighted to say that this year we’ve seen Adrian French successfully qualify as a European Patent Attorney.”

How Apple Successfully Patented A Software User Interface for A Camera

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Software interface

 

 

Case Study No. 2

 

Index

 

Introduction

 

This is the second article in my Case Study series about how to successfully patent software in Europe.

 

If not done so already, please read my first article in this series, in which I analyse a first European software patent by Apple Inc, and dissect how this was granted.

 

As introduced in my first article, it is a common misconception that you cannot obtain a patent in Europe for software.

 

Since I am frequently asked about the perceived difficulties of software patenting in Europe, I thought a Case Study series looking at Apple Inc and their patent portfolio would be interesting. Apple receives hundreds of successfully granted European patents each year, with a large percentage being software or software-related patents.

 

This second article about successfully patenting software looks at how to protect an improvement to the graphical user interface of an Apple iPhone® or other Apple device to control its integrated cameras.

 

The second Apple patent that we will now examine is EP3483653B1.

 

Originally filed in May 2017, this patent granted quite rapidly (for a European patent) in October 2020.

 

How To Find Software Patents

 

How to search for software patents was covered briefly in my first article, and you can see on the front page of this patent EP’653 some similar classification codes. If you are interested in looking up more software-related patents, start with these:

 

Software

 

Background Of The Patent

 

This patent application originally had 284 claims!

 

Considering large excess claims fees are incurred for claim numbers in excess of the first fifteen claims, and then this increases again beyond the fiftieth claim, it is not surprising that Apple decided to ultimately trim the claims back to fifteen.

 

How Does Apple Obtain So Many Granted Software Patents in Europe?

 

Apple uses a similar and simple strategy in most cases:

 

  1. Start with a ‘method’ claim, and then
  2. Wrap up the claim set with a ‘computer-readable storage medium’ claim and an ‘electronic device’ claim at the end.

 

Why start with a ‘method’ claim?

 

Under European patent law, software as such is excluded from patentability. Therefore, we need to be smart about the wording. If we simply use language which relates to or states ‘software’, then we are not going to get anywhere fast.

 

Software is, by-and-large, the processing or movement of data to enable actions to be performed. Therefore, breaking down the action of the software into a process or ‘methodology’ allows the functional characteristics to be worded in a way that allows patent protection to be granted.

 

Dissecting The Claims

 

Let’s take a look at the ‘method’ claim, the ‘computer-readable storage medium’ claim, and the ‘electronic device’ claim forming claims 1, 14 and 15 of this patent EP’653.

 

  1. Remember, when reading the following ‘method’ claim, this is explaining the interaction between the screen of the iPhone® , the iPhone’s camera(s), and the processing (in other words, data movement and therefore the software) between the two.

 

  1. Also be aware that the term used in this ‘method’ claim – ‘affordance’ means an object, such as a button or slider, which is designed to show the user the action which can be taken without having to consider how it should be used.

 

So, in this case, the ‘magnification adjustment affordance’ is, for example, a button or slider that appears on your phone’s screen, and it is designed that you immediately know that if you turn it or slide it, the camera’s magnification or zoom will be adjusted.

 

Method Claim 1

 

NB: My comments are in italicized parentheses to help you understand the wording of the claim.

‘A method, comprising:

 

at an electronic device [ed: in other words, your iPhone®] with one or more cameras, one or more input devices [ed: some sensors], and a display [ed: your iPhone’s screen]:

 

concurrently displaying, on the display:

 

a digital viewfinder [ed: so, you’re shown on the screen what the camera is seeing] for capturing media with the one or more cameras at a first magnification level [ed: for example, the viewfinder is in a none zoomed state]; and

 

a magnification adjustment affordance [ed: in other words, a software dial on the user screen that lets you zoom or not];

 

while concurrently displaying the digital viewfinder and the magnification adjustment affordance [ed: so, showing both the viewfinder and the zoom adjuster together on the screen], detecting, via the one or more input devices, a first gesture [ed: sensors in the phone detect your interaction with the screen] at a location corresponding to the magnification adjustment affordance,

 

wherein the one or more input devices are configured to detect a first type of gesture and a second type of gesture that is different from the first type of gesture [ed: in other words, your iPhone® has sensors and associated software that can differentiate between two different finger movements on your phone’s screen];

 

in response to detecting the first gesture at the location corresponding to the magnification adjustment affordance [ed: so, you move your finger on the screen of your phone in a first direction to adjust the zoom]:

 

in accordance with a determination that the first gesture is of the second type:

 

preparing to capture media with the one or more cameras at a dynamically-selected magnification level [ed: so, this implies that software within the phone makes on-the-fly assumptions to assist in the capturing of the video or image] different from the first magnification level, wherein the dynamically-selected magnification level is selected based on a magnitude of the first gesture [ed: in other words, your iPhone® interprets the size of your finger scroll, and adjusts the zoom level accordingly]; and

 

displaying, on the display, a zoom control at the location corresponding to the first gesture [ed: now the software in the iPhone® pops up a specific digital zoom control on your screen at your finger location]; and

 

in accordance with a determination that the first gesture is of the first type preparing to capture media with the one or more cameras at a second magnification level different from the first magnification level without displaying the zoom control [ed: and finally, the software determines with this different finger gesture that you don’t need the specific zoom control displayed].’

 

So, the general gist of this ‘software’ method claim is to cover a process which, in reality uses software code, shows a viewfinder for a camera on your phone’s screen, along with a zoom option. It detects your finger touching the screen, and interprets that touch either to bring up a specific zoom control before taking the picture, or simply to take the picture.

 

Computer-Readable Storage Medium Claim 14

 

Now, let’s look at claim 14, which reminds us that method claim 1 is primarily a software claim written to outline the processing steps of the backend architecture interconnecting the screen of the iPhone® and the camera(s).

 

Again, my comments are in italicized parentheses to help you understand the wording of the claim :-

 

‘A computer-readable storage medium [ed: in other words, some memory] storing one or more programs [ed: software!] configured to be executed by one or more processors of an electronic device [ed: for example, your iPhone®] with one or more cameras, one or more input devices, and a display, the one or more programs including instructions [ed: code] for performing any of the methods of claims 1-13 [ed: method claim 1 above is the broadest claim, so this is the one of most interest here].’

 

Electronic Device Claim 15

 

And, just in case we forget that our method claim 1 above needs to be implemented on an actual Apple product, we round off our software claim set with claim 15, which recites:

 

‘An electronic device [ed: for example, your iPhone® again], comprising:

 

one or more cameras;

 

one or more input devices [ed: in other words, your touchscreen];

 

a display;

 

one or more processors; and

 

a memory storing one or more programs [ed: in other words, software!] configured to be executed by the one or more processors, the one or more programs including instructions [ed: code] for performing any of the methods of claims 1-13 [ed: again, just focus on method claim 1 discussed above].’

 

What Happened During Examination?

 

How did these claims stack up before the European Examiner? Surprisingly well.

 

The European Examiner raised some initial novelty (uniqueness) and inventive step (obviousness) objections, based on a few prior patent documents. One set of counter-arguments was made.

 

Part of Apple’s counter to the Examiner’s objection of a lack of inventiveness was to state their ‘objective technical problem’ that the development was seeking to solve. This is not unusual in European patent prosecution. But, interestingly in this case, was how basic their statement was:

 

Case

 

Somewhat surprisingly, the Examiner rapidly backed down.

 

A side-note to mention is therefore to make good use of the ‘Statements of Invention’ in the patent document when it is being originally drafted.

 

The Statements of Invention typically restate the language of the claims near the beginning of the patent document. However, use this as an opportunity to thoroughly explain the technical benefits of the features of the claims, what technical problems are overcome, and what results are achieved. This potentially gives you improved support when stating your ‘objective technical problem’ during examination to overcome an inventive step objection.

 

A second note is that the European Examiner made no comment or objection to the fact that the claim set essentially defines the implementation of software. Written in the form of a method claim outlining processing and the interaction of, largely physical sounding, components is the trick to being successful.

 

This European software patent covering a user interface for the phone’s camera(s) was therefore granted in short order.

 

Conclusion

 

In addition to the ‘Summary’ at the end of my first Case Study article, we can add these closing thoughts when considering how to successfully patent software in Europe:

 

  • Look at all the figures used in this Apple software patent EP’653. These really do backup the processing steps that are taking place, the backend architecture, and a gives the impression of good sufficiency and enabling disclosure. The patent examiners will like this technical support;
  • Plenty of ‘hardware’ type technical language is used in the claims to explain the interaction between the display, the cameras, and the processing steps therebetween. This makes it much harder for an examiner to argue that the ‘inventiveness’ of the claim only relates to excluded software matter. Again, this makes it easier to obtain grant of a software-type patent in Europe; and
  • Make use of the Statements of Invention to outline possible ‘objective technical problems’ and solutions right at the outset when preparing the patent document for initial filing.

 

If you would like further information, please contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide.

 

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Can a Machine Really Invent?

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AI

 

As IP attorneys we have certainly seen a large increase in AI inventions over the past few years. It comes as no surprise then, that the UK Government wants to develop intellectual property law and policy to ensure that AI technology is supported and protected in the right way.

 

A public consultation has been launched and anyone can submit their views on the subject before the deadline of 11:45pm on 30th November 2020.

 

The consultation is wide-ranging, with questions on topics spanning from current practical problems (or not) with protecting AI inventions, to the seemingly less commercially-focused issue of “Is there a moral case for recognising AI as an inventor?”.

 

The scope of the consultation also covers designs, trade marks, copyright and trade secrets. Some of the questions are about practical problems in the here and now, some of them rather more in the crystal ball arena.

 

The UKIPO recognise that “there is no single agreed definition of artificial intelligence”, but the Government has chosen to use for these purposes the definition:

 

“technologies with the ability to perform tasks that would otherwise require human intelligence, such as visual perception, speech recognition, and language translation.”

 

That definition is probably not a bad one in terms of the AI technologies which are commercially important today. But although the introduction to the consultation says that impact of concepts such as AI superintelligence or an AI as a legal entity are not to be considered, some of the more future-gazing questions seem to assume the possibility of technology beyond the definition, which either does not yet exist at all or currently exists only as interesting proof-of-concept work.

 

Artificial Inventors

 

One area being covered is the possibility that an AI system may be able to invent.

 

In a series of patent applications Dr. Stephen Thaler and his company Imagination Engines have argued that they have a machine which does exactly that, and accordingly the machine “DABUS” was designated as an inventor.

 

Both the UK and European Patent Offices found that current law simply does not allow a machine to be named as inventor – the named inventor must be human. But in many ways that is a legal technicality – the wider question as to whether or not a machine can in fact “invent” was not really addressed in the DABUS cases. Is there, or will there ever be, “technology with the ability to perform tasks that would otherwise require human intelligence, such as inventing an invention”? Some commentators have questioned whether the alleged inventions in the DABUS applications were truly invented by the AI DABUS in the sense that the AI has devised the invention as opposed to being use as a tool to assist a human in devising the invention. So, the UKIPO is asking “can current AI systems devise inventions?”. If you work in the field, tell them what you think!

 

A more practical and immediate question is “does current law or practice cause problems for the grant of patents for AI inventions in the UK?”. The exclusion of patent protection for “computer programs as such” in UK and European law certainly does crop up in practice when prosecuting “AI inventions”.

 

My take is that the existing case law gives the UKIPO scope to grant patents for most new and non-obvious inventions which fall within the Government’s definition of AI. But the UKIPO seem to have unfortunately established a practice based on an interpretation of the case law which is not favourable to some inventions.

 

AI technology is, accepting the Government’s definition, technology which has the ability to perform tasks that would otherwise require human intelligence. This might be put as “an AI invention is an invention which achieves something which humans might be already able to do, but machines have thus far found very difficult”. Giving machines new competencies is in my mind the epitome of technological innovation.

 

But is it intelligent?

 

It is worth observing that bound up in this definition of AI is a certain expectation that the technology is novel and non-obvious. Something that would “otherwise require human intelligence” so requires because there is no machine yet that can do it and it is not obvious how to make one, even though the underlying task may be easy for a human child to complete. Thus, many of the rule-based expert systems which represented the state of the art of artificial intelligence in the 1980s might not be honoured with the “AI” moniker today.

 

The question as to patentability, both according to UK and EPO case law, boils down more or less to whether a true technical contribution has been made to a field of technology. The field of AI, that is the endeavour of trying to make computers do things that so far computers have not been able to do, is in my mind clearly a field of technology and a technological endeavour. If a technical advance has truly been made, then it should be patentable under existing law.

 

Unfortunately, the UKIPO and to some extent the EPO can sometimes focus more on the field in which the technology is applied than on the field in which the technological advance is made.

 

For example, the UKIPO has held that a natural language processing invention is patentable when tied to “speech processing” (i.e. audio) but not otherwise (when processing text)[1]. This is despite the real technical contribution apparently being in processing any computer-readable natural language, the conversion to or from audio being a matter of existing technology. This seems to me neither logical, fair, nor according to the established case law when properly understood.

 

It is certainly good to see that the UKIPO are taking these questions seriously. I hope that they will get some serious and considered answers from a range of stakeholders. The consultation will not be very useful if the only people who respond are patent attorneys, so I would encourage anyone working in or close to the field of AI to take the time to respond. The consultation materials can be found on the government website.

 

[1] Toshiba’s application BL O/453/14

Registered design infringement – what gets compared and how similar does it have to be?

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infringement

 

Quite a few years ago now, we thought it would be fun to look at some decisions on registered design validity and infringement and put together a quiz. The quiz is still available on our website. For each of thirteen pairs of designs the question is apparently simple: do the two designs shown produce a similar overall impression on the informed user? As we said at the time, the quiz isn’t really fair because by showing only the pictures of the designs, many of the background facts and considerations taken into account by the court in each case are simply ignored.

 

Similar or the same?

 

But recently someone pointed out a more fundamental issue – is it right to say that the legal test is about “similar overall impression”, or is the test that the overall impression has to be the same?

 

The EU Directive and Regulation[1] actually say neither. Rather, the test for infringement, in terms of the scope of protection, is expressed in the negative:

 

“The scope of the protection conferred by a design right shall include any design which does not produce on the informed user a different overall impression.”

 

Likewise when assessing validity the test is expressed in terms of whether the design differs from what has gone before:

 

“A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the date of filing…”

 

On the face of it, that might settle the question. If something is “not different” then it is “the same”. If something is “not very different” then perhaps it is “similar” but the articles of the Regulation say “different”, not “very different”. Except that if you look to the recitals of the Regulation[2], you get more or less exactly that (emphasis added):

 

“Whereas the assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus…”

 

If something doesn’t “clearly differ” then that sounds a lot like it might be “similar” even if not “the same”.

 

The “clearly differs” wording has not been carried through from the recitals into the body of the Regulation, and neither has the idea of the “design corpus”. Although the discrepancy, if it is that, has been noted at times by the courts, I am not aware that there has been any particularly definitive answer to it, in terms of the test for validity[3].

 

There is more clarity though when it comes to infringement. Indeed, the problem was tackled in the first ever EU Registered Design case to reach the Court of Appeal, back in 2007. In Procter & Gamble v Reckitt Benckiser[4] Lord Justice Jacob declined to import the “clearly differs” wording into the test for infringement, saying that “different policies are involved [for validity and infringement]”. For infringement:

 

“It is sufficient to avoid infringement if the accused product is of a design which produces a “different overall impression.” There is no policy requirement that the difference be “clear.” If a design differs, that is enough – an informed user can discriminate.”

…

“…the test is “different” not “clearly different.”

…

 

“… the court should ask whether the overall impression of each is different. This is almost the equivalent to asking whether they are the same – the difference is nuanced, probably, involving a question of onus and no more.”

 

More recently in Pulseon v Garmin[5] the Court of Appeal rejected an argument that the High Court Judge had erred by “asking himself whether the accused devices would produce an identical impression on the informed user”:

 

“In my judgment, despite the language which he chose… the judge did not apply an incorrect test. By saying that the designs did not create an identical impression, the judge was deciding that the impressions were different”.

 

The importance of overall impression

 

So, for infringement of a registered design the test is “not different”, which is almost equivalent to “the same” or “identical”. But what is it that has to be the same? It is the overall impression on the informed user. In a contested allegation of registered design infringement, the nature of the overall impression is likely to be a key battleground. After all, once the overall impression of a registered design and the overall impression of an accused infringement have been defined, asking whether or not they are the same ought to be fairly straightforward.

 

The overall impression will depend on a range of factors. It is an inherently subjective test but in an effort to try to impose some consistency, the legislators have told us that we must look at overall impression through the eyes of the notional “informed user”. Constraints on the designer must be taken into account, as well as the informed user’s knowledge of the design corpus. My previous article which went with the quiz deals with some of these factors in more detail.

 

It is clear that formulating the overall impression is a critical part of correctly assessing infringement. From Procter & Gamble again:

 

“The court must identify the “overall impression” of the registered design with care. True it is that it is difficult to put into language, and it is helpful to use pictures as part of the identification, but the exercise must be done.”

 

The importance of correctly formulating the overall impression, which could perhaps be characterized as “what the informed user thinks about the design when he sees it” is illustrated in the well known “Trunki” decision[6]. The Court of Appeal, overturning the High Court, said that the trial judge had fallen into error by failing to appreciate that the overall impression was a suitcase which looked like a horned animal. Whether that is a correct statement of the overall impression or not may be a matter of opinion. The trial judge’s assessment is not in my opinion clearly faulty but his judgement does not clearly state what the overall impression actually is, rather focusing on lists of similarities and differences and the relative importance of the similar or different features. On that basis the Court of Appeal found themselves able to come to their own view.

 

In summary then, to determine whether an accused design infringes you have to ask:

 

  1. What is the overall impression of the registered design?
  2. What is the overall impression of the accused design?
  3. Are they the same?

 

At step 1, the prior art needs to be taken into account, firstly because the overall impression will need to be formulated in such a way as to ensure that the design is valid over any particular piece of prior art, but also because the corpus of prior designs has an effect on the impact the design will have against that background. Jacob LJ again in Procter & Gamble:

 

“…if a new design is markedly different from anything that has gone before, it is likely to have a greater overall visual impact than if it is “surrounded by kindred prior art.” (HHJ Fysh’s pithy phrase in Woodhouse at [58]). It follows that the “overall impression” created by such a design will be more significant…”

 

For a strikingly new design, it will be possible to formulate the “overall impression” at a higher level of generality while still ensuring that it is different from any particular known design. At the same time, that higher level of generality will truly reflect the impression the informed user gets when they see a design the likes of which they have not seen before. Once the overall impression has been formulated at a higher level of generality, a wider range of different designs can be seen to have the “same overall impression” and therefore infringe the registered design.

 

Still, it is not easy to say that one lawyer’s formulation of the “overall impression” will certainly be the same as another’s, try as they both might to be objective and apply the test through the goggles of the informed user. Design infringement is always going to be an inherently uncertain question, but by carefully following the correct tests, hopefully at least some clarity can be found.

 

[1] The Directive being the source of law for EU harmonized, but national, registered designs, and the Regulation being the source of law for EU-wide “Community Registered Designs”. As far as is relevant to this article, both say the same thing.

[2] And again, the Directive is exactly the same.

[3] Though in Karen Millen Fashions v Dunnes Stores C-345/13 the European Court of Justice gave some indication that the articles simply trump the recitals, in rejecting a view that individual character had to be assessed against the design corpus as a whole as opposed to each prior design individually.

[4] [2007] EWCA Civ 936

[5] [2019] EWCA Civ 138

[6] Magmatic v PMS [2014] EWCA Civ 181 on appeal from [2013] EWHC 1925 (Pat).  The Court of Appeal’s intervention was subsequently upheld by the Supreme Court.

How does Apple successfully patent software?

by

Apple Software

 

Case Study No. 1

 

Index

 

 

Introduction

 

 

Having handled patent cases for more than 20 years, I have lost count of the number of times clients have asked “How do I patent software?”, or state that “Software is not patentable in the UK or Europe”.

 

My answer has always been, that although this area of patent law is generally more difficult and complex, it is certainly not impossible to obtain granted software patents.

 

Once the client stops looking perplexed, I have to then explain the initial strategic thought process to allow us to be successful when patenting software. This takes a reasonable amount of time, which led me to the conclusion that I needed to write this series of brief case studies which examine how to successfully patent software.

 

Apple Inc is a massive brand, known around the world. Not only do they develop amazing hardware and have fantastic designs, they obtain large numbers of granted patents almost daily. Many of those grants relate to software patents.

 

Each article in this short series dissects a granted patent issued to Apple Inc to guide you as to how we can successfully patent software in at least Europe.

 

The first Apple software patent that we will examine is EP3435240.

 

Where to Find Software Patents?

 

Software patents are generally located under the broad classification code of G06F.

 

Code G06F is described as: ELECTRIC DIGITAL DATA PROCESSING.

 

G06N is also referred and is described as: COMPUTER SYSTEMS BASED ON SPECIFIC COMPUTATIONAL MODELS.

 

There are many sub-categories within both of these classifications, and by just looking in these categories alone, many granted software patents can be reviewed.

 

Apple’s European patent EP3435240 has an Abstract which reads (bolding added for emphasis):

 

‘Systems, apparatuses, and methods for efficiently moving data for storage and processing are described. In various embodiments, a compression unit within a processor includes multiple hardware lanes, selects two or more input words to compress, and assigns them to two or more of the multiple hardware lanes. As each assigned input word is processed, each word is compared to an entry of a plurality of entries of a table. If it is determined that each of the assigned input words indexes the same entry of the table, the hardware lane with the oldest input word generates a single read request for the table entry and the hardware lane with the youngest input word generates a single write request for updating the table entry upon completing compression. Each hardware lane generates a compressed packet based on its assigned input word.’

 

Essentially, this is movement and manipulation of data. In other words, it’s software!

 

However, the Abstract is written to convey ‘hardware’ type language. The Abstract is the first statement that the Examiner reads. We need to make the Examiner think this is more than just software, to try and avoid him simply jumping to a conclusion that this is excluded matter.

 

What Patent Images will Help Obtain Grant of a Software Patent?

 

Figure 1 of the Apple patent which accompanies the Abstract shows the following:

 

 

This kind of flow chart is extremely useful in conveying the technical attributes of the system. I do always encourage clients to provide such flow charts. Please do look at the other drawings in the Apple patent, there are fifteen pages altogether. All are useful in explaining to any patent examiner the movement and manipulation of the software data between ‘hardware’ type components within the backend processing architecture.

 

It is not necessary to have this many pages of images, but it does certainly help convince the patent office examiners that we have a clearly sufficient and enabling disclosure, thereby potentially aiding smoother prosecution.

 

How was Claim 1 Written to be Considered Patentable Matter?

 

Claim 1, in this case, was originally filed as follows:

 

 

You can easily see that the language used is largely ‘technical’. Use of words such as ‘buffer’, ‘table’, ‘circuitry’, ‘hardware lanes’, ‘packet’ and ‘stores’, for example.

 

Under European patent law, the examiners will argue that the claimed material is not patentable if it is not ‘technical’ in nature. If the language is purely software related, then there is a strong chance that this first hurdle will not be overcome, the development will be considered ‘excluded matter’, and the application will thus be refused.

 

The second independent claim, namely claim 11, was written as a method:

 

 

As you read the above claim, you will see that similar language has been used, including the use of ‘hardware lanes’. This again conveys technical language, and thus a lower likelihood of being found to be none patentable subject matter.

 

The third independent claim on filing was claim 15 going to a ‘system’:

 

 

Similarly to the above comments, the examiner has no major issue with the patentability of this ‘system’.

 

The examiner did contend that the ‘apparatus’ claim 1 and the ‘system’ claim 15 were effectively two ‘apparatus’ claims covering the same matter. Claim 15 was thereby removed to easily overcome this objection.

 

Why was Claim 1 objected to?

 

With software patenting, once the first hurdle of ‘is it excluded subject matter?’ has been overcome, then prosecution is very much like any mechanical or electronics patent. The two hurdles that have to be overcome are ‘novelty’ and ‘inventive step’. In other words, is the claimed improvement unique and not obvious?

 

For this software patent for Apple, only one prior patent document was raised (US6879266B1) as having closely similar features to those of at least claims 1 and 11.

 

The examiner noted:

 

 

This is interesting. The examiner focuses on the feature ‘determining dependencies’ and argues that, although this is a distinguishing feature when considering US’266, because it is phrased in a non-technical way, it has to be ignored. To that end, claims 1 and 11 therefore have nothing else that separates them from US’266, and as such there is not a sufficient inventive step forward. The examiner therefore raises his objection against grant.

 

How to Overcome Examiner Objections to Obtain Grant of a Software Patent

 

The patent examiners will often subtly point out potential areas that could be worked on to achieve grant.

 

For example, as outlined above, the examiner in this Apple application drew attention in item 3.3 of the examination report (snippet above) to what he considered to be the ‘distinguishing feature’. But, then explained why it was not suitably ‘technical’, and thus lacked inventive step.

 

Following removal of the ‘system’ claim 15, remaining independent claim 1 was amended as follows, with independent method claim 11 being similarly amended:

 

 

It is clear to see that the original phrase ‘determining dependencies’ was concentrated on. This was clarified by the inclusion from the patent specification of the term ‘intra-group’, as shown in the first red box above.

 

Once clarified, further ‘hardware’ type technical phrasing was utilised to explain that access of the table was based on the intra-group dependencies. This is akin to a ‘lock and key’, and as such conveys more of a ‘technical effect’. See the final red box above.

 

To back-up the submitted amendments and address the examiner’s lack of inventiveness concerns, a concise summary of the benefit of the improved system was provided to the examiner:

 

 

The examiner accepted this clarification of the distinguishing feature, and agreed that it differentiated sufficiently over the prior art patent. He thus accepted that a ‘technical problem’ was being solved, also accepted therefore that the novelty and inventive step hurdles were overcome, and consequently allowed grant of the patent.

 

Summary:

 

  • Have sufficient explanatory figures of the backend architecture, framework, and/or data processing
  • Use ‘hardware’ type technical language to explain movement or manipulation of the data, thereby overcoming the first ‘is it excluded matter?’ hurdle
  • Ensure that your patent specification is written with the ‘technical effect’ in mind
  • Include in the specification an explanation of the ‘technical problem’ that is being solved, thereby ensuring that both the novelty and inventive step hurdles are overcome

 

If you would like further information, please contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide.

 

ASK AN EXPERT

 

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Living ViCo-riously

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Living ViCo-riously

 

The new normal is here, but the world of Intellectual Property management continues unabated. Deadlines for prosecuting patent applications may be extended in many cases, but by-and-large the filing and examination processes are unchanged.

 

One major change to proceedings before the European Patent Office is the move to hold hearings with the Examining and Opposition Divisions by video conference, or ViCo. This allows discussions with EPO Examiners to occur without any parties needing to be in the same room, thereby protecting all participants from the risk of infection.

 

This week, I have participated for the first time in oral proceedings via ViCo, and found it an effective means of communicating with the Examiners.

 

One of the main concerns applicants have with the use of ViCo compared with physical hearings is that there will be some technological impediment that may lead to subsequent difficulties in obtaining a positive outcome from the hearing.

 

I am happy to report that the process is smooth; the EPO have put a lot of time and effort into simplifying the ViCo process (ViCo has long been an option for oral proceedings, but the summons to appear in person has always been the default).

 

The connection was made via the Skype for Business web browser app, and was easy to get started. Furthermore, the EPO offer a pre-hearing test connection to ensure that your settings are suitable well in advance of the real hearing.

 

All-in-all, the hearing ran much as you would expect from a physical meeting. The Examiners are visible, and therefore it remains possible to take visual cues as to how they are considering your arguments, and the ability to turn video and audio off makes recessions straightforward to implement without any connection loss.

 

The increase in the use of ViCo hearings can only be beneficial to applicants and professionals. For applicants, the costs involved in attending a physical hearing in Munich or the Hague can be prohibitive, whereas with a ViCo hearing, there may be a greater inclination to fight a more arguable case to grant. For professionals, there is the added benefit that the travelling is removed, and therefore time can be better spent in preparation for the hearing itself.

 

Albright IP Proves Small Can Be Beautiful – and Successful!

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CITMA ranking

 

Albright IP has again demonstrated its top-flight capabilities after earning a place in the recent Chartered Institute of Trade Mark Attorneys (CITMA) rankings.

 

The annual league tables produced by CITMA show how many filings IP companies have made – and in the 2019 results released earlier this month, Albright IP checks in at number 29 in the UK, and number 15 in the EU.

 

“These latest league tables are a clear indication that not only are we experts in what we do, but that we’re able to offer a very competitive service, both to clients in the UK and beyond ,” said Albright IP, Director and trade mark attorney, Julia House.

 

“Clients know they can rely on us to deliver a focused, consistent service that helps them to protect their investments in innovation and creativity. We may be a small company compared with many of the others listed, but the CITMA tables show this is no barrier to our success. All our clients benefit from our attorney partner led approach.”

 

Established in 2007, Albright IP operates with a six-strong trademark team, led by two fully qualified IP attorneys. It employs 30 people across the company and has seen significant growth over the past few years, currently working with more than 2,000 companies across the world, including Europe, the US and China.

 

“We have consistently appeared in the CITMA annual top-filer rankings, which is very impressive and testament to the skills and capabilities we have within the trademark team,” says Albright IP Managing Director Rob Games.

 

“Our commitment to quality, underpinned by attorneys able to give sound commercial advice, delivers what customers need when it comes to trademark filings. The trademark team have worked hard to achieve these rankings and I’m very proud of our staff.”

 

You can view the full league listings here:  CITMA 2019 top filers

The Effect of The Coronavirus on Official Deadlines (Updated)

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Deadlines

 

Normally, having to face moving goalposts would be a bad thing, but it is proving to be beneficial when it comes to IP deadlines falling during the Covid-19 pandemic.

 

For now, deadlines before the UK Intellectual Property Office remain extended under the ‘interrupted days’ provision, although this will be reviewed on 7th May. The UK IPO still intends to give at least 2 weeks’ notice before the automatic extension is halted.

 

Most deadlines before the European Patent Office have also been extended again to 2nd June, and deadlines before the EU Intellectual Property Office (for designs & trade marks) have been further extended to 18th May.

 

Further extensions may yet be available, depending on how quickly the pandemic is brought under control.

 

If you have a particular case you are concerned about, please feel free to get in touch and we can confirm the deadline to put your mind at ease

Can a Deity Apply For a British Patent? – Part 2

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Apply for British Patent

 

Following on from Part 1, we explore further questions relating to applying for and owning a patent, particularly cases where there are multiple owners.

 

As a patent is a form of property, how does it work to have two or more joint owners?

 

In the UK, joint owners are considered to have an equal, undivided share of the patent, unless there is an agreement to the contrary, for instance specifying different share percentages.

 

Each joint owner is free to use the patent and work the patented invention without requiring the consent of other co-owners and without infringing the patent. If a joint owner passes away, their share passes to their estate rather than to the other joint owners.

 

The above also applies to joint applicants (i.e. before grant of the patent).

 

All the above dealt with using the patent owned by a joint owners. But what about dealing with the patent itself? 

 

A patent can be amended after or before grant, surrendered or revoked. As a form of property, a patent or patent application can also be licenced, assigned, or mortgaged. However, to do any of the above actions, the consent of all joint owners must be obtained, unless there is an agreement specifying otherwise. Such a situation might arise, for example, where one joint applicant is a funding body who is not interested in being actively involved in the prosecution of the patent application, but wants to retain a share of the patent.

 

Renewals are an exception to the rule that consent from all joint owner is required. A renewal fee is due every year after grant on the filing anniversary in order for the British patent to be kept in force. Any party can pay the renewal fee, even a third party, without the consent of the patentee(s) or other joint owners.

 

What can you do if you cannot agree with another co-proprietor on how to proceed with a patent application?

 

Requiring the consent of all joint owners can be an issue if joint owners cannot agree. For instance, one joint owner may want to continue prosecution whilst another joint owner wants to give up on the process entirely. Alternatively, all joint owners may want to continue proceedings but have opposing views on the direction of the patent application.

 

In such cases, UK law specifies that any of the parties can refer the dispute to the UK Intellectual Property Office (UKIPO). The UKIPO can take any decision it deems appropriate. For example, the UKIPO can transfer the application from one party to another, such that the application proceeds in the name of one or more of the parties.

 

If one of the joint owners develops an improvement to the patented invention, do all joint owners of the original patent automatically become joint owners of a patent to the original patented invention with the improvement?

 

No. If, upon working the patented invention, a joint owner develops an improvement which is patentable in its own right (i.e. novel, inventive and non-excluded subject-matter), only the joint owner is entitled to a granted patent protecting the improvement (or the original invention incorporating the improvement). The right to this new invention is owned solely by the joint owner who developed it. The other joint owners of the original patent are not entitled to the new invention, even though it was developed from the original patented invention.

 

The above also applies to joint applicants of a patent application (i.e. before grant of the patent).

 

This concludes Q&A about Applying for and Owning a Patent – Part 2. Please see Q&A about Filing Strategies – Part 3 (coming soon) for further discussions relating to what, in anything, can be done if someone files a patent application to your invention. In the meantime, if you have any queries about patents, please do not hesitate to contact us.

 

Greater Protection in the UK For Patent Owners

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UK Patent Owners

 

A quick summary of two relatively recent court decisions in the UK explaining why having a British granted patent now gives you generally greater protection under the newly adopted ‘doctrine of equivalents’ without the limitation of ‘file history estoppel’.

 

At the end and in view of the above, this article also gives some suggestions to consider when you are now writing a new patent (or having a new patent written for you).

 

Recent Decision 1:

 

Excel-Eucan Limited v Source Vagabond Systems Limited

 

The patent relates to a ‘link-tail’ bag for feeding ammunition to a machine gun:

 

 

The single granted independent claim reads:

 

 

Shown below(1) are the Link-Tail (top example, and subject of the above claim 1), and the 2017 Bag (lower example, and competitor product); in both cases with the top flap open at the right hand end:

 

 

The important bit to notice is that the competitor bag (the ‘2017 Bag’) at the bottom does not have a zipped opening (you can see the zipped opening in the patented ‘Link-Tail’ bag at the top and circled) or indeed any openable closure along its length. If you re-read the claim above, you can see that the ‘openable closure’ is a required feature of the granted claim.

 

The judge concluded: ‘I am satisfied that the 2017 Bag (ed: competitor product) achieves the same result in substantially the same way as the invention. Both bags can be loaded horizontally and/or vertically and substantially the same result is achieved. In neither case is the openable closure necessary.’ Highlights added.

 

Granted claim 1 clearly requires ‘an openable closure extending substantially from the first end to the second end’. The court held that this feature is immaterial to the ‘inventive concept’.

 

Therefore, infringement was found.

 

This is a positive outcome for the patent owner. A product without all of the features of their granted claim 1 was still held to infringe.

 

Recent Decision 2:

 

Icescape Limited v Ice-World International Bv & Ors

 

Ice-World’s patent is for cooling a mobile ice rink.

 

To make transport easier, the cooling system of manifolds feeding cooling pipes can be folded up.

 

The diagram below(2) from Ice-World’s patent shows two ‘elements’ or sections of the Ice-World design (41, 42, each highlighted by a green box). Each section (41, 42) has a main feed pipe or manifold (43, 45, circled in purple) and a discharge manifold (44, 46, also circled in purple).

 

The feed and discharge manifolds of the two sections (41, 42) are connected to each other via joints 47 and 48 (circled in red) respectively.

 

As such, the cooling fluid entering the feed manifold (45) of the second section (42) must pass through the feed manifold (43) of the first section (41). The same applies to the discharge manifolds (44, 46), albeit in a reverse direction of flow.

 

In other words, the ections (41, 42) are considered to be connected in series or one after the other.

 

Each section (41, 42) also has a number of longitudinal cooling pipes (50, 51, circled in blue) which have a ‘first series’ or bank of pipe sections (68, 68’, 68’’) connected in series with a ‘second series’ or bank of pipe sections (69, 69’, 69’’) by flexible joint members 70 (circled green). The result of the above is that this jointing (70) of the various pipes (50, 51) allows folding of the system to permit easier transport for mobile ice-rink applications.

 

Scheme 1

 

The variant by Ice-World’s competitor, Icescape, is diagrammatically shown below(2). The arrangement has three ‘elements’ or sections (E1, E2, E3, highlighted as green boxes).

 

Each section of the competitor’s system has a feed manifold (F3, circled in purple), a discharge manifold (D3, circled in purple) and cooling pipes  ‘C’ (circled in blue) extending in parallel with each other.

 

The cooling pipes ‘C’ comprised foldable joints, which are not visible in the diagram below.

 

However, Icescape believed that they would circumvent the Ice-World patent if they positioned their sections (E1, E2 and E3) such that the fluid entering the feed manifold (F3, circled in purple) of any of the three sections (E1, E2, E3) did not pass through the feed manifold of any other of the three sections (E1, E2, E3).

 

In other words, the sections (E1, E2, E3) are in parallel, rather than in series.

 

As such, in the Icescape arrangement, there is no equivalent to the joints (47 and 48) in the Ice-World patent.

 

Icescape believed that this separated them sufficiently from the Ice-World patent:

 

Scheme 2

 

Granted claim 1 of the Ice-World patent was set out in integer form (i.e. as a list) by the judge(2):

 

“Cooling member (21, 40) for a mobile ice rink provided with:

 

a feed manifold (43, 45) extending in a transverse direction and a discharge manifold (44, 46), and a number of longitudinal pipes (50, 51) which extend transversely to the manifolds and can be connected at a first end (53, 54) to a manifold (43, 44, 45, 46), two longitudinal pipes (50, 51) in each case being in fluid communication with one another at a second end (60, 61) via a connector (27, 63), so that a fluid path is formed from the feed manifold (43, 45) to the discharge manifold (44, 46) via the two connected longitudinal pipes (50, 51), characterised in that

 

  1. the cooling member comprises at least two elements (41, 42), each with a feed manifold (43, 45) and discharge manifold (44, 46) and a number of longitudinal pipes (50, 51) connected thereto,
  2. wherein each longitudinal pipe comprises at least two rigid pipe sections (3, 12, 16, 24, 68, 69) that are connected to one another via a joint member (4, 13, 17, 25, 70, 132, 133) such that they are fluid-tight, and
  3. wherein by moving the joint members (4, 13, 17, 25, 70, 132, 133) a first series of parallel pipe sections (68, 68′, 68″) can be placed in a transport position with respect to a second series of parallel pipe sections (69, 69′, 69″) connected thereto, in which transport position the two series of pipe sections (68, 68′, 68″; 69, 69′, 69″) are at an angle with respect to one another or are positioned on top of one another, and can be placed in an operational position in which the two series of pipe sections (68, 68′, 68″; 69, 69′, 69″) extend in the extension of one another,
  4. wherein the first and the second element (41, 42) can be placed in the operational position alongside one another such that the feed and discharge manifolds (43, 44, 45, 46) of the elements extend in the extension of one another in the transverse direction,
  5. wherein the feed and discharge manifolds of the two elements are provided with a coupling member (47, 48) to make a fluid-tight connection between the respective feed and discharge manifolds of the first and the second element.”

 

It was submitted that ‘the key novel and inventive feature of the invention is integer C […] the use of joint members (70, ed: see first image above) which allow the longitudinal pipes to have two configurations, one in which the cooling pipes are extended and the other in which the cooling pipes are folded back on one another. This is the integer which enables the claimed system to work in its intended manner. Integer C is […] the invention.’

 

The competitor, Icescape, accepted that their design had all of the features of Ice-World’s granted Claim 1 except integers D and E (i.e. they had features A, B and C, but not D and E) due to their parallel arrangement.

 

On Appeal, it was held that, although the claim must be taken literally to be limited to a ‘series’ connection between the adjacent ‘elements’, a ‘parallel’ connection is an alternative way of implementing the same concept. The difference in the positioning of the elements relative to each other has nothing to do with the core inventive contribution of the patent (the foldability of the cooling pipes 50, 51 and C).

 

The judge held that ‘there is nothing to suggest that the patentee regarded series connection as essential in any relevant sense’.

 

The judge also noted that the prosecution history did nothing to alter this view, and as such ‘file history estoppel’ or restricting the scope of the claim based on comments made by the patentee during examination still plays no part in the determination of the inventive concept.

 

However, the judge nuanced this statement by reinforcing a previous judgement that reference to the prosecution history would be appropriate in two scenarios. The first scenario was where “(i) the point at issue is truly unclear if one confines oneself to the specification and claims of the patent, and the contents of the file unambiguously resolve the point”.

 

The second scenario is where “(ii) it would be contrary to the public interest for the contents of the file to be ignored”.

 

The judge illustrated the second scenario as occurring where the patentee had explicitly renounced a variant during prosecution, but later tried to enforce the patent against that very variant.

 

Therefore, on Appeal, the decision was overturned and the patent was held to be infringed (although it was also held invalid due to an invalid priority claim, but that is beyond the scope of this article’s topic).

 

Again, this is another positive for the patent owner. The competitor’s product clearly did not have all the features of the granted claim 1. But, the system was held to achieve substantially the same inventive concept, and as such infringement was found.

 

Comment

 

  • In light of these decisions, it seems to make sense to ‘characterise’ your independent claims at the outset with ‘results to be achieved’ type language that explains the intended inventive concept. Even if the claim language is then limited during prosecution, the broad ‘inventive concept’ (or even concepts) remains stated on filing.
  • Furthermore, including caveats and examples throughout the patent specification would seem to encourage a broad interpretation of the ‘inventive concept’.
  • Having a well-rounded and broad ‘conclusion’ at the end of your description which restates in different language the ‘inventive concept/concepts’ rather than necessarily just specific features also makes sense.
  • It is also worth bearing in mind that, although a claim can be infringed, the patent can still be held invalid in light of prior art. With the broader interpretation being given to granted claims, being aware of such prior art therefore now becomes increasingly more relevant.
  • The alleged infringer will likely still push for ‘file history estoppel’ or in other words using the examination history to mould or shape the scope of the granted main claims and what the inventive concept should be construed as. It is therefore prudent to be mindful of statements being made during examination. Re-stating the broad inventive concept during examination is a good idea, but not necessarily explicitly designating essential features which are deemed to make up that inventive concept.

 

(1) https://www.bailii.org/ew/cases/EWHC/Patents/2019/3175.html

 

(2) https://www.bailii.org/ew/cases/EWCA/Civ/2018/2219.html

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