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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) http://www.bailii.org/ew/cases/EWHC/Patents/2019/3175.html

 

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

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

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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.

 

Can a Deity Apply For a British Patent?

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British Patent

 

In this series of three articles, we explore common and slightly less common questions regarding Applying for and Owning a British or European Patent.

 

Who can apply for a patent?

 

Under UK law, anyone can apply for a patent, whether by themselves or jointly with another person. In this context, a “person” is understood to be a natural person (i.e. an individual) or a corporate body, limited companies being the most common type of the latter. Other corporate bodies include foreign states, universities and limited liability partnerships (LLP) in the UK, to name a few.

 

An unincorporate partnership on the other hand, such as a limited partnership, is excluded from applying for a patent. In this case, one or more of the personally responsible partners would need to apply instead.

 

The UK Intellectual Property Office (UKIPO) will also accept as applicant some foreign corporate entities not recognised as such in the UK, an extensive but non-exhaustive list of which can be found here.

 

If not listed above, other foreign entities which are not considered corporate bodies in the UK but which, under the laws of a foreign state can own land and property in their own name may potentially be considered as applicants for a British patent. For instance, Hindu law in India recognises a Hindu idol as both a deity and a “juridical subject being capable in law of holding property”.  Therefore, whilst this scenario remains to be tested, a Hindu idol may, in theory, apply for and own a British patent (a form of property). In practice, the representatives of the applicant would need to confirm to the UKIPO that the Hindu idol can own property.

 

Similar provisions exist under European law. A European patent application may be filed by “any natural or legal person, or any body equivalent to a legal person by virtue of the law governing it” (Article 58 EPC).

 

What is a proper chain of entitlement and why is it important?

 

Applying for a patent is only the first hurdle in the lengthy process of obtaining patent protection. Whilst anyone can apply for a patent, a patent will only be granted to an entitled person or persons (assuming the invention is patentable). If a patent is granted (incorrectly) to a non-entitled person, the patent may be transferred to the entitled party and/or may be revoked. Hence it is important to have a clear trail or chain of entitlement in place, i.e. why and how the applicant is the entitled party, particularly if the applicant is not the inventor.

 

By default in the UK and in Europe, the entitled person is the inventor. The inventor is defined as the person who devises or creates the invention. An inventor can only be an individual, not a corporate entity nor an Artificial Intelligence (AI) as clarified under UK law (see section 3.05). The European Patent Office has adopted a similar stance, as shown in two recent European patent applications.

 

However, another party may be entitled to the patent in preference to the inventor if a law or agreement to that effect was in place at the time of invention. Such a party is the successor in title to the inventor. An agreement may include an assignment or a contract, for example. The right to a patent can be further transferred by the entitled party to yet another party, via similar means.

 

In summary, it is always advisable to ensure that there is a proper chain of entitlement in place, as the absence of one can result in a transfer or the revocation of a patent.

 

Does an employer automatically own the right to a patent for an invention created by an employee?

 

An example of a law in the previous paragraph pertains to employer-employee cases.

 

Under UK law, the employer is entitled to the right to a patent if:

 

1/ the employee made the invention during the course of their normal duties or specially assigned duties, or if the employee has a special obligation to further the interests of the company (such as by being a director of the company), and

 

2/ it could be expected that an invention may arise from carrying out these duties.

 

If any of these conditions is not fulfilled, the right belongs to the employee instead, unless there is any agreement to the contrary.

 

For example, a researcher employed by a university is expected to do research as part of her normal duties. It can be expected that an invention may arise from such research. In this case, the invention and the right to a patent protecting the invention would likely belong to her employer.

 

On the other hand, the normal cleaning duties of a cleaner employed by the same institute would not be expected to give rise to an invention. As such, if the cleaner creates an invention, the right to the patent would vest with him, rather than the employer.

 

In essence, the employer typically owns the right to a patent in most cases, but it may be worth clarifying the ownership of any IP in a contract of employment.

 

What happens to a patent after the owner ceases to be?

 

In the case of a natural owner, the patent passes to their estate. Usually, the patent rights are transferred to a new owner, typically according to the deceased owner’s will if one was made, or according to the rules of intestacy in the absence of a will. This also applies to any patent applications. In this case, it is advisable to prepare a will so that the estate is administered according to the deceased person’s last wishes. As the value of IP is included in the estate for the purposes of calculating inheritance tax, it may also be worth consulting an Inheritance Lawyer specialised in IP law.

 

In the case of a corporate owner which goes into administration, an administrator is appointed. The administrator administers the assets which may involve attempting to sell the patent to cover any debts. If no new owner can be found, upon dissolution of the company, the patent will pass to the Crown. The same applies to patent applications. In this case, assigning the patent or patent application prior to entering administration may be worth considering to avoid losing the patent or application to another party or to the Crown.

 

This concludes Q&A about Applying for and Owning a Patent – Part 1. Please see Q&A about Applying for and Owning a Patent – Part 2 for further discussions relating to applying for and owning a patent, particularly cases where there are multiple owners. In the meantime, if you have any queries about patents, please do not hesitate to contact us.

That’s the way, a-hah a-hah, Joe Lycett

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Trade Mark enforcement

 

In these bewildering times, we find ourselves in (Brexit, COVID-19, Brexit again), fortune occasionally sees fit to part the gloom, and serve up some much-needed levity. Enter Hugo Boss. Not the designer clothing company one might expect but rather, the comedian formerly known as Joe Lycett.

 

On 1 March 2020, Hugo Boss, the man (hereafter “Boss”), tweeted the following in protest against the Trade Mark enforcement practices of Hugo Boss, the brand (hereafter “Hugo Boss”):

 

So [Hugo Boss] (who turnover approx $2.7bn a year) have sent cease & desist letters to a number of small businesses & charities who use the word ‘BOSS’ or similar, including a small brewery in Swansea, costing them thousands in legal fees and rebranding.

 

It’s clear that @[Hugo Boss] HATES people using their name. Unfortunately for them this week I legally changed my name by deed poll and I am now officially known as Hugo Boss. All future statements from me are not from Joe Lycett but Hugo Boss. Enjoy.

 

As one might expect of such an unorthodox protest, Boss’ efforts were an immediate viral sensation, spawning tens of thousands of retweets, and extensive news coverage by the British media. The reaction provides an insight into an aspect of Trade Mark enforcement that should not be overlooked; a Trade Mark owner should not assume that their rights confer exclusive, and inexhaustible rights no matter what the context.

 

Like recent PR nightmares for McDonald’s, Red Bull and Sky, Hugo Boss is another in an ever-growing list of toppled Goliaths whose enforcement tactics have caught the wrath of the public.

 

From the perspective of responsible Trade Mark maintenance, Hugo Boss’ actions are understandable; they would wish to avoid their rights becoming diluted. At its most extreme, dilution can result in irreparable damage to a company’s reputation if, for example, the goods and/or services covered by the conflicting Trade Mark are of inferior quality.

 

In the ‘small brewery in Swansea’ case mentioned in Boss’ tweet, Hugo Boss took action against two Applications by Boss Brewing Co for Marks that were ostensibly similar in terms of both Mark and goods and services. On paper at least, this seemed to be a prudent move to secure the exclusivity of their Trade Mark rights.

 

However, where one can go wrong is in failing to also consider consumer perception of a conflict, even if the conflict seems clear ‘on paper’.

 

In Hugo Boss v Boss Brewing Co, it was unlikely consumers would ever confuse the activities of a designer clothing company with those of a brewery. Thus, Hugo Boss’ legitimate actions were perceived by the public as being so heavy-handed, that it has led to this most unusual of protests.

 

Consequently, it is important that Trade Mark owners consider how they conduct the enforcement of their rights. Blanket, uncompromising enforcement is not always the best method of protecting a Trade Mark, especially when approaching individuals or small companies that may be unfamiliar with Trade Mark practice, and proceedings.

 

Here at Albright IP, we endeavour to offer pragmatic commercial advice when dealing with Trade Mark infringement. Should you require, our excellent Trade Mark team are always happy to provide assistance.

 

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