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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.

 

Albright IP’s Trademark Team in World Trademark Review 2020

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Albright IP’s Trademark team

 

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

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

Artificial Intelligence Cannot Be an Inventor of a Patent Application

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Artificial intelligence (AI) system.

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

Shanks vs Unilever

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Shanks vs Unilever

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

The Mathematics of Patents

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Mathematics of Patents

 

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

 

1) Added subject matter, by addition (+)

 

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

 

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

 

2) Added subject matter, by subtraction (–)

 

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

 

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

 

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

 

3) Multiple embodiments (×)

 

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

 

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

 

4) Divisional applications (÷)

 

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

 

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

 

5) Infringement by equivalence (=)

 

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

 

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

 

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

 

Summing up

 

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

 

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

 

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