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Opposing A European Patent On A Tight Schedule

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Opposition deadline on a tight schedule

 

What do you do when you are up against a competitor’s European patent, and you have minimal time to oppose or revoke the patent in order to operate freely?

You know the story – you’ve geared up for an all-important product launch, and take one last look at the patent landscape to make sure you have freedom to operate. Unbeknownst to you, one of your competitors has recently had a European patent granted which could derail the launch. You are close to the deadline to centrally revoke (or oppose) the patent at the European Patent Office (EPO). What do you do with the time you have left?

Get organised

Preparation is key for oppositions before the EPO. If you can’t make a concrete case for revocation, then you’re likely to lose. How do you know what constitutes a concrete case, though?

Construe the claims

The claims of a patent define the scope of protection conferred. Claim construction, that is, interpreting what the claims actually say, will determine what prior documents will be relevant to your opposition. Just because a prior document looks close to the product covered by the patent, it doesn’t necessarily follow that that document represents the best starting point for any attack to revoke a claim, in whole or in part.

Considered claim construction will allow you to identify where the weaknesses in the claim as granted lie, and might flag some grounds of opposition that would otherwise not be apparent, such as an inadequate amount of disclosure to allow the skilled person to work the invention (insufficiency) or new material introduced after the original date of filing of the application (added-matter).

Review your own position

An opposition need not result in complete revocation of the patent to be successful. Forcing the owner to limit the patent to exclude your arrangement can be extremely worthwhile. As such, focussing on the possible options to limit the claims in the patent in a manner which would result in non-infringement may give the owner an easy ‘win’ – maintenance of the patent without a difficult battle. If that can be achieved, then the infringement risk can be mitigated.

Delve into the file history

Hunting through the file history, that is, the documentary trail to grant might seem like a tedious task, but the advantages are clear; if the proprietor has had a difficult path to grant, then exploration of similar themes identified by the examiner may be fruitful if more pertinent prior art can be found.

The benefit of this focus is that there will be ready-made obviousness (i.e. inventive step) argument on file from the proprietor which can potentially be countered in detail. This strategy can yield quick results if prompt filing of a notice of opposition is required.

Similarly, digging through the family histories of other patents or applications linked to the European patent might uncover documents which the owner has been avoiding bringing to a European examiner’s attention.

Search for prior publications

A hunt for prior art documents can make or break the prospects for opposition. Patent searches in non-European languages can yield quick results, since these documents may have been more difficult for the European examiner to find.

One would hope that the European patent examiner had been thorough in uncovering relevant patent documents, but classification searching in tangential classes to that of the patent may unearth new prior art citations which could be valuable, particularly in obviousness attacks.

What can also be useful is hunting through your own back catalogue of information accrued over the years. Catalogues, sales information, advertising – these are all public disclosures which may show material which may not have been worthwhile including in a patent application, but which may be indicative of the mindset of the skilled person prior to the filing of the patent.

The search for prior publications should not necessarily be considered complete as of the opposition deadline. Whilst facts or evidence which are uncovered post notice of opposition are generally disregarded, relevant documents pertinent to the maintenance of the patent can be filed late. If you keep searching, you might find a ‘killer’ document!

Play the system

The submission to the EPO that you want to make an opposition, the notice of opposition, must be filed not later than nine months from the publication of grant of the relevant patent in the European Patent Bulletin. The notice of opposition must contain an indication of the facts and evidence in support of the grounds. Failure to do so will result in an inadmissible opposition.

That said, the evidence and arguments indicated may actually be submitted subsequently, so if there is a real rush to meet the opposition filing deadline, this could be a useful tool to rely on to ensure that an inadmissible opposition is not filed.

Opposition can be done at short notice!

Overall, there are lots of tactics that could be considered for opposing the grant of a European patent, even if time is short. Opposition is always worth factoring in as a choice, as often the consequences of taking no action can be seriously damaging to commercial strategy. This applies even where you are running on a tight schedule!

Summary

To oppose a European patent on a tight schedule, you should therefore:

  1. Get organised
  2. Construe the claims
  3. Review your own position
  4. Delve into the file history
  5. Search for prior publications
  6. Play the system

If you need to defend or oppose a European Patent, 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 you. 

 

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Winning An Opposition Against A European Patent

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Winning a Patent Opposition

 

This brief case study provides an overview of strategies for winning an opposition submitted against a European Patent.

The statistics for opposition of a European patent before the European Patent Office (EPO) suggest that the process can be considered something of a gamble.

There is a relatively consistent spread between the three possible outcomes in opposition, where a decision is communicated by the EPO examiners:

  • upholding of the patent as granted (~30%);
  • upholding of the patent in an amended form (~40%); or
  • revocation of the patent (~30%).

At first glance, this might seem to be more favourable to the patentee, as there is an approximately 70% chance of the patent being maintained in some form. However, it is equally likely that a limitation of the patent as granted may actually be more favourable to the opponent than the proprietor, since a potential infringement scenario could be excluded.

The number of opposition filings over the past few years has remaining relatively constant. However, from January 2021, newly-filed oppositions will be presumed to be conducted by video-conference by default, in the absence of strong persuasive reasons to the contrary. This reduces the cost of filing oppositions for many prospective opponents, as the representative will no longer need to spend time travelling to and from the EPO offices. Opposition filings may therefore become more common.

Regardless of whether you are a prospective opponent, considering the possibilities for opposing your competitors’ patents, or whether you are looking to strategically prepare in the potentially increased likelihood of a speculative opposition being filed against your own commercially critical patents, then it is worthwhile giving thought to how to improve your prospects for success during opposition proceedings.

To do so, we can look back at an Albright IP success story as a Case Study:

EP2963134

We received a notice of opposition for EP2963134 on 21 February 2019.

Oral proceedings then took place on 3 March 2020, in which a notice of rejection of the opposition was communicated.

How did we go from a potential disaster for the patent owner to complete maintenance of the patent as granted in just over a year, which is a remarkably quick turnaround for an opposition?

  • Preparation – ensuring that you are fully prepared for events during opposition proceedings is key to success.

Whilst we were confident in the merits of the facts and our arguments which we had prepared in respect of the patent as granted (which proved to be well-placed), there is no substitute for thinking through the potential fall-back positions which would be acceptable and ensuring that the merits of those fall-back positions are completely considered.

In this instance, several auxiliary requests were entered into the proceedings in order to address potential issues, in case the Opposition Division did not agree with the merits of our initial arguments.

Taking this approach provides you with options for limitation, instead of the binary choice between maintenance and revocation.

  • Focus on Detail – the Opposition Division issued a preliminary opinion on patentability with the summons to oral proceedings on 10 September 2019, which appeared to be prejudicial to the maintenance of the patent.

Whilst disappointing at this early stage, it forced us to focus on the perceived deficiencies in the submitted arguments, rather than merely relying on repetition of the arguments used during substantive examination before the Examining Division.

  • Procedural Expedience – ultimately, the Opposition Division only has a limited amount of time to spend on each case.

Ensuring that our arguments in counter to each of the points in the opposition were clear, but more importantly concise, will make the Examiner’s job easier.

There can be a temptation to prepare expansive arguments to support any given point, particularly in written proceedings, but the final message is the one which needs to be followed by the Examiner.

  • Co-operation – we sent two attorneys to the oral hearing, and this was invaluable.

Time could be well-spent stress-testing the arguments to be used in advance of the oral hearing, and in the recession periods, strategic considerations were made which might not have occurred to a sole representative. Two heads are usually better than one!

In the end, the facts and arguments were on our side, and the patent was successfully maintained in full. This may well have come as a shock to the opponent, who had the advantage of the preliminary impression of the Opposition Division being in their favour at the time of issuing the summons to oral proceedings.

What, therefore, can you do to improve your prospects when opposing a patent?

  • Preparation – it is clear now that the evidence favoured our client, being the patent proprietor.

Although the opponent found new prior art documents which they cited against the patent, it was not pertinent once considered in full.

This shows the value of comprehensive searching prior to filing an opposition. The more searching that is performed, the more likely it will be that relevant and damaging prior art can be found.

  • Focus on Detail – we submitted counter-arguments and possible auxiliary requests in response to the summons to oral proceedings.

These counter-arguments provided the basis for our successful defence of the patent.

The written correspondence prior to oral proceedings gives you a good understanding of what the other side’s position will be. It is imperative that time is spent understanding their position in detail, so that you can demolish it during a hearing.

  • Procedural Expedience – rambling arguments will frustrate the Opposition Division, but not nearly as much as revisiting points already discussed during the hearing.

It is critical to have a skeleton plan for arguing your case. You must be succinct, and not revisit grounds which the examiners will have already reached an opinion on.

  • Co–operation – whilst having a partner present for the oral hearing will help you to quickly think our arguments on the fly, it is also worth considering how best to co-operate with the examiners.

Having prepared documents ready for use in the hearing which you can refer to will be of enormous value to both your case and to helping the Opposition Division understand your arguments.

It is transparent that, regardless of whether you are the opponent or proprietor in an opposition, preparedness is key.

There is no reason why decisions should be made last-minute: the opposition window is nine months from publication of grant. There is plenty of time for an opponent to get their arguments in order; similarly, there will be ample periods for reflection for the proprietor in the written correspondence prior to any oral hearing in which a full and complete defence can be prepared.

Given the comparative cost-effectiveness of opposition against revocation in national offices, it is well-worth being prepared now to revisit any opposition strategies you may have, in order to sure up your commercial position.

If you need to defend or oppose a European Patent, 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 you. 

 

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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

Brexit IP: Prepare for the worst, hope for the best

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Brexit - 31 January 2020

 

After several years of debate and negotiation, the UK will finally leave the European Union at midnight on the 31st December 2020. This brings with it some fundamental changes for UK companies with European trade mark and design registrations. Julia House, trade mark Attorney and Director at Albright IP outlines what companies need to think about and how Albright IP is ready to support them…

 

Following Brexit, the UK will no longer be governed by European law and in particular, be bound by decisions of the European Courts. This also means that the UK can no longer be part of the European Union Intellectual Property Office (EUIPO)

 

So, what does this mean? Well, in a nutshell, EU and UK trade mark and design protection will now be separate.

 

Moving forward, any existing European registrations will be automatically cloned in the UK (to create UK registrations) as EU registrations will cease to be covered in the UK.

 

Patents, however, will remain unaffected as they are covered by a separate treaty, which, hopefully, will not be repealed.

 

The newly cloned registrations will become your UK equivalent right and while this will be created freely and automatically, there will be renewal fees in the future which will have to be paid separately and will need to budgeted for.

 

Preparation is key

 

At Albright IP we are well prepared for Brexit, we have a network of European mainland attorneys who will assist us with our European cases. But essentially not a lot will change, we will continue to handle all cases, be the first point of contact for our clients and continue to provide the same high level of service, advice, and support as always.

 

For us this is a tried and tested approach, as a specialist IP attorney we have been working in partnership with foreign attorneys for over a decade now, it helps to minimise client costs (no overheads of foreign offices) and gives our clients the ‘on the ground’ expertise for each individual country we operate in.

 

Most of all, it gives our clients choice, our trusted partners have established businesses within Europe and it will be no different to how we operate in the US, China or Australia, where we are also not direct representatives.

 

Business as usual

 

For both existing and new clients, it will be business as usual and we will remain the key point of contact for your IP, we will continue to monitor your cases on our database, send renewal reminders, and ensure that the deadlines are met.

 

Our corporate customers will also be able to use our IP portal which will be uploaded with cloned cases once they have been generated by the UKIPO, helping to give you a ‘real-time’ view of your IP across the EU and the world.

 

For any of our clients with existing EU trade mark and design registrations, we will be writing to them directly to advise them of their cloned registrations and sending timely reminders for any decisions that need to be taken.

 

For any trade mark and design applications that are yet to be filed, we will guide you towards the most cost-effective and cohesive filing strategy to follow, to ensure the best protection is secured in the UK, EU, and beyond.

 

Worry not, it will be a smooth transition, and we will continue to keep you up to speed with your new rights, and the full implications of Brexit upon your IP.

 

How does Apple successfully patent software?

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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.

 

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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

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

World IP Day – 26th April – Celebrating Innovation In a Crisis

by

World IP Day

 

The arrival of the Coronavirus onto the world’s stage has brought into sharp focus the need for businesses to combine thinking on their feet with innovation and creativity. As we celebrated World Intellectual Property Day on the 26th April, it is a chance to focus on the role intellectual property (IP) rights play in encouraging innovation and creativity, Albright IP’s managing director Robert Games takes a look at how things might play out for the companies which are willing to ‘think smart’…

 

With the NHS crying out for ventilators, and personal protective equipment such as masks, scrubs and face shields, it’s those companies that can demonstrate agility and manufacturing flexibility that are proving best placed to respond. We’ve seen some great examples of businesses which have recognised the need and taken a creative approach to their design, manufacturing processes and product lines.

 

At one end of the scale, you’ve got companies like Ineos and Dyson switching design and production to hand sanitiser and ventilators respectively. Ineos have committed to building a whole new manufacturing facility in just 10 days with a planned one million bottles of much-needed hand sanitiser due to come off its production lines each day – something that will be replicated in Germany.

 

Leading from the front

 

Dyson is working in partnership with The Technology Partnership (TTP) on a brand-new ventilator design called the CoVent which can be made quickly and at high volumes. Using Dyson’s existing Digital Motor design, as well as the company’s air purification products, the new product will deliver safe and consistent ventilation for COVID-19 patients.

 

Another UK company, Gtech, more familiar with the world of household appliances and vacuum cleaners, has made two ventilator designs available free of charge (www.gtech.co.uk/ventilator) after the government decided it no longer required the company’s assistance.

 

There’s the fantastic partnership between University College London, NHS clinicians and Mercedes Formula 1 which has developed a new breathing aid which can deliver oxygen to the lungs without the need for a ventilator.

 

And there’s the VentilatorChallengeUK consortium which has brought together some big names in the industrial, technology and engineering sectors, including Airbus, BAE Systems, Ford, Rolls Royce and Siemens. They are pooling their creative resources to develop new ventilator technology at speed.

 

At the same time, Innovate UK has been leading from the front and set up a competition to encourage business-led innovation in response to COVID-19. It’s offering a total of up to £20m and the winners are due to be announced on May 1st.

 

It’s encouraging to see so many organisations putting competitiveness to one side and coming together during this unprecedented time. Keeping their innovation and creativity muscles flexed in this way will stand them in good stead once we emerge from the other side of this pandemic.

 

This continued approach to innovation will keep them better placed for whatever the next chapter looks like, as will their employees who will very likely have learned new skills and expertise. But it’s not only the world-renowned brands that are demonstrating their flexibility when it comes to addressing the current challenges being faced in the health service and wider carer sectors

 

Celebrating our local innovation

 

In the South West we have our own business heroes that should be celebrated such as Emma Willis the Gloucestershire fashion house that has turned its hand to producing scrubs for NHS frontline staff; the Charlton Kings school, Balcarras, that’s used its 3D printer to make face shields;

 

And Staverton-based company Safran has joined forces with Decathlon and Segula Technologies to produce face protection masks. The masks are adapted from Decathlon’s Easybreath Subsea snorkelling mask. They’ve also made the adaptation design available via open access to anyone who wants to make the masks using their own 3D printer.

 

Further afield is the Canadian boy scout who deserves an honorary mention! He designed and printed facemask ear guards using ingenuity and his own 3D printer. He’s now shared his creation so anyone with a 3D printer can download and print his design.

 

Keep the innovation going

 

This approach to innovation and creativity perfectly sums up what World IP day stands for and showcases the potential within all businesses to innovate when they put their mind to it. There’s a humbling generosity of focus at the moment on sharing ideas, designs, equipment and know-how, and this is absolutely how it should be if we’re going to ensure the health service, the care sector and more besides have the right tools and equipment to enable them to do their jobs as safely as possible.

 

While it’s quite right for companies to be putting collaboration first in the current climate, it’s also important for companies who want to stay ahead of the competition and grow their businesses to look after their intellectual property.

 

When we final emerge from this unprecedented chapter in our shared lives, I would encourage businesses to look back at what they’ve learned, capture any innovative ideas or processes that will help them in the future, and continue to encourage creativity among their workforces.

 

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