Albright IP Limited

Protecting your innovation

+44 (0)1242 691 801

Speak to a UK and European Patent and Trade Mark Attorney

Can a Machine Really Invent?

by

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

by

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.

 

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

by

infringement

 

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

 

Similar or the same?

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

…

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

…

 

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

 

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

 

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

 

The importance of overall impression

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

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

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

[4] [2007] EWCA Civ 936

[5] [2019] EWCA Civ 138

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

Accelerated patents – are you making use of the Green Channel?

by

Green Innovation

As the government grapples with the need to map out what the post-COVID landscape might look like, there is one thing for certain, now is the time to take the opportunity to do the right thing for our world. There is much discussion about the need to ‘build back better’ –  Robert Games, Managing Director of IP Attorney, Albright IP talks about the need to ensure we rebuild around a green economy with a focus on innovation that addresses climate change…

 

If we want a more resilient and sustainable future, we have to grasp this opportunity to reinvent our economy and put ‘green’ business and renewable energy at the top of our ‘build back better’ agenda. Climate change must be at the heart of any plan to address the post-Covid19 economic crisis.

 

Governments around the world have proved how swiftly they can move in the face of a pandemic and there is no reason they cannot act with same speed and agility to tackle carbon emissions. A recent international survey carried out by Ipsos Mori shows that most people believe that climate change is just as important an issue as the coronavirus, suggesting there would be support for a recovery plan that embraces carbon reduction strategies.

 

A critical ingredient in any green recovery plan is innovation, in all its guises. Whether it’s the development of smarter energy systems, more energy-efficient manufacturing processes, decarbonising heat, the harnessing of digitisation or the introduction of green travel solutions, there’s huge opportunity for so many companies to rethink the way they work and do things differently.

 

We can’t risk slipping back into our old ‘business as usual’ ways – something the EU has already recognised. It’s developing a Green Deal that will make the combined EU economies more stable and sustainable, with a focus on supporting businesses that are reducing carbon emissions and / or increasing digitisation. It is emphatic in its view that not a single Euro should be spent on propping up old, dirty industries.

 

It wasn’t that long ago that renewable energy technologies such as solar panels and wind turbines were regarded as ineffective, expensive, and too reliant on subsidies. Last year, renewables accounted for 72% of all new energy sources installed around the globe – backed by investments that could achieve returns of more than 800%. And just this month, Britain chalked up a record two months without using coal.  Our world energy map is changing irrevocably, and now we have the chance to change other sectors, too.

 

If we’re to succeed, however, innovation must be supported, encouraged, and promoted. It should be on the agenda for every company, large or small, and the government needs to step up and ensure the right environment exists to enable new ideas to thrive.

 

What if, for example, work to develop charging networks for electric vehicles (EVs) was to be incentivised and supported? Earlier this year, the results of a six-month trial to test the world’s first pop-up electric vehicle charge point in a residential street in Oxford were revealed – paving the way for a potential wider roll-out.

 

The UEOne pop-up charge-point project was developed and manufactured by Albright IP’s product design sister company, Duku as part of a consortium alongside Urban Electric and Oxford City Council, and protected by us.

 

The project involves designing, prototyping, testing and manufacturing six retractable bollard-style charge points. The bollards rise automatically when required and disappear out of sight when not in use. The consortium received funding from Innovate UK to help it realise the concept and prove its value in meeting the growing need to fast track the UK’s EV charging network.

 

This is a great example of how companies with expertise, can join forces to address a need, taking new thinking and new approaches, with the support of government funding, and delivering a solution that’s not only scalable, but offers the double benefit of helping both the environment and the economy. As the common parlance would have it, what’s not to like?

 

It’s important, of course, for companies to protect their ideas and innovations, and the patents process enables organisations to do so. However, this can take a long time … which is where the ‘Green Channel’ comes in.  This is a route by which companies can access an acceleration of the ‘search and examination’ process which is integral to applying for a patent.

 

To qualify, the invention or process must have an environmental benefit. It’s simple to apply on-line and if successful, the whole patent process will be speeded up. And, importantly, it also places the applicant in a much better position from which to apply for R&D tax benefits and the Patent Box.

 

The Patent Box is designed to encourage companies to keep and commercialise intellectual property in the UK. It allows companies to apply a lower rate of Corporation Tax – currently 10% – to profits earned from its patented inventions.

 

The EV charging trial is a perfect example of how, with the right support and partnership approach where appropriate, the UK can take the lead in exploring and applying innovation, and play a role in any economic recovery.

 

It’s good to see that the government has acknowledged the need for ‘green investment’, with its recent announcement of £2bn package for England, for projects like home insulation and the cycle repair voucher. This is part of its wider £3bn plan to cut emissions. But this simply isn’t ambitious enough – Germany, for example, is investing €40bn (£36bn) in green jobs and energy efficiency, and France, which has already pledged €15bn to tackle the climate crisis. We can and must do better.  The BBC have reported that the Government has spent £190 bn on the Coronavirus crisis.

 

It’s unlikely there will be any single quick fix to the damage done by Covid19, but if we act now, innovate, think differently, and are willing to challenge the status quo, we have a much better chance of creating a more resilient economy and a world that’s in better shape to pass on to future generations. No one knows for sure what our world will look like post-pandemic, but I am certain that this is an economic and environmental opportunity that we cannot afford to ignore.

 

How does Apple successfully patent software?

by

Apple Software

 

Case Study No. 1

 

Index

 

 

Introduction

 

 

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

 

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

 

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

 

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

 

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

 

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

 

Where to Find Software Patents?

 

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

 

Code G06F is described as: ELECTRIC DIGITAL DATA PROCESSING.

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

 

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

 

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

 

How was Claim 1 Written to be Considered Patentable Matter?

 

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

 

 

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

 

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

 

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

 

 

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

 

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

 

 

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

 

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

 

Why was Claim 1 objected to?

 

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

 

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

 

The examiner noted:

 

 

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

 

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

 

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

 

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

 

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

 

 

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

 

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

 

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

 

 

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

 

Summary:

 

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

 

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

 

ASK AN EXPERT

 

reCAPTCHA

Living ViCo-riously

by

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.

 

World First Pop-Up EV Charging Unit Trial Paves Way for Wider Roll-Out

by

EV Bollard

 

A successful six-month trial to test the world’s first pop-up electric vehicle charge point in a residential street in Oxford has paved the way for a wider roll-out, say its designers.

 

The UEOne pop-up charge-point, has been developed and manufactured by product design company Duku for Urban Electric Networks Ltd at their Cheltenham design studio and protected by sister intellectual property company Albright IP.

 

The project involved designing, prototyping, testing and manufacturing 6 retractable charge points that can rise automatically when required and disappear out of sight when not in use, maintaining space on paths and avoiding visual clutter. The project was conducted in association with Oxford City Council.

 

The retractable nature of the charge-points means that they reduce the amount of street furniture permanently on view. They are straightforward and speedy to install and don’t require the use of heavy machinery – a real bonus for councils, road-users and residents alike.

 

The consortium consisting were successful in received funding by Innovate UK to realise the concept and prove its value in meeting the growing need to fast track the UK’s EV charging network.

 

“This has been a fantastic project to work on,” said Duku director Alex Lee. “It addresses a real obstacle in the adoption of Electric cars – how to bring EV charging to drivers who have no-off street parking and no access to charge points near their homes.”

 

More than 40% of drivers don’t have off-street parking, with this figure rising to 85% in some parts of London which is a prime market for the short distance commuting to which electric vehicles are so well suited.

 

“There aren’t currently any viable, sustainable solutions, so we were asked to look at developing a pop-up charge-point that would allow EV owners to utilise practical and cost effective steady overnight charging at home” said Alex.

 

Using state of the art CAD technology and 3D printing, Alex and his team developed and manufactured the UEOne, a reliable and robust charge-point which users can command to pop up and connect their vehicle for charging. When the charge is complete, the charge-point is retracted out of sight. Discreet LED halo lighting indicates the location and status of the charge-point ready for the next user.

 

“Coming up with a solution that would be reliable and suitable for the installation environment was a challenge, especially when you consider existing infrastructure such as electrics and telecoms cables.”

 

To ensure accessible connection to a user’s EV, the charge point rises 800mm above the pavement surface when fully extended, so Duku had to minimise that bulk beneath the ground when retracted using an innovative telescopic design. In addition, they needed to ensure the charge-points were able to operate in all conditions that the British weather can throw at it, which during the trial period consisted of 30 degree heat, ice and torrential rain and flooding!

 

The project allowed Duku to demonstrate their flexible in-house manufacturing capabilities, with many of the components for the charge points being manufactured using recycled materials and modern production techniques such as 3D printing.

 

“This allowed us to be agile in our design development work, giving us the ability to act quickly to make design improvements that could be retrofitted to the charge points in a matter of days”

 

After trialling six units in Oxford over a 6-month period working in partnership with the city council, Duku says the results have been extremely promising, and that they are now underway on a further project to enable a roll out of the technology on a commercial, UK-wide scale.

 

“The feedback from the residents who trialled the charge points was very encouraging and emphasised the need for such technology to be reliable, accessible and avoid being a permanent eyesore,” added Alex.

 

“We also learned a good deal about user interaction with the charge-points and how to minimise the cost and disruption of installation and maintenance. We are now working on a second phase design which will incorporate additional features to make the charge points as easy to use and reliable as possible as well as further engineering that will ensure a cost-effective manufacturing process as the volumes scale up.”

 

“It has been hugely exciting to work on a project which is a genuine innovation in this sector and of real value in the move towards the widespread adoption of Electric cars.”

PlanetArt v Photobox: Does your app icon contain descriptive terms?

by

Trademark infringement Recently, PlanetArt, the company behind the popular FreePrints app, succeeded in a Trade Mark infringement claim against one of its competitors, Photobox. The infringement claim related to Photobox’s rival app, which, like FreePrints, provides prints of photographs for free.

 

The High Court judgement ultimately represents a sound balance between the need to recognise and protect the investment of a Trade Mark proprietor on the one hand, and the need to preserve the wider public’s freedom to use inherently descriptive terms on the other.

 

At the same time, the reasoning behind the case merits scrutiny, as it can act as a useful guideline for app providers and developers, who are looking to establish a strong and enforceable brand identity.

 

Background

PlanetArt’s FreePrints app was launched in 2014 with this app icon

 

Essentially, the app allows customers to order free prints of their photographs, with the only fee being related to the delivery charges. That is to say, the app does exactly what it says – it provides free prints.

 

Since its launch, FreePrints has been attracted much success on the Appstore. By the end of 2019, the app had over 11 million downloads in the UK alone, generating substantial revenue for the company.

 

In April 2019, Photobox launched a rival app, providing a similar service to the FreePrints app, mainly using the following icons:

 

Icon 1:     Trademark infringement

Icon 2:    
Trademark infringement

Icon 3:
Trademark infringement

 

A day before a letter before action was sent to Photobox, PlanetArt applied for a UK Trade Mark for its app icon, displayed above (UKTM. No 3393165). The Mark was granted in August 2019.

 

When the case eventually came to trial, PlanetArt’s primary claim was based on the infringement of their UKTM Registration for the app icon. Specifically, PlanetArt alleged that the use of the three icons by Photobox was:

 

  • Confusingly similar to their earlier registered Trade Mark; and/or
  • Taking unfair advantage of, or causing detriment to the distinctive character or repute of their earlier Mark.

 

Each of Photobox’s icons are considered in turn below, since the judge arrived at a different conclusion for each sign.

 

The High Court’s Decision

 

Icon 1 – Infringed

 

This icon is what the customer would see on their own phones, once they had had downloaded the app from the Appstore.

 

The judge found that there were significant similarities in the aural and visual elements, and some level, albeit more limited, conceptual similarities. According to the assessment, the Photobox icon was a similar turquoise colour to PlanetArt’s Trade Mark, and featured a simple white line drawing, above the words ‘Free Prints’.

 

In the judgement, it was noted that app icons in similar fields (i.e photo-related apps) tended to feature words beneath the icon, to show brand name or origin, rather than a description of the app or the service provided. As such, the fact Photobox used the words ‘Free Prints’ beneath the icon, without any other wording or signs which might suggest that the app originated from Photobox, appears to be critical to the finding of infringement.

 

Whilst it was acknowledged that an app developer may be confined by the Appstore’s limits on the number of characters which can be used beneath an icon, from the evidence, it was unclear why the full name ‘Photobox Free Prints’ was not used; despite this being within the 30-character limit.

 

Based on the above, the use of Icon 1 amounted to infringement of PlanetArt’s Trade Mark on both of the grounds raised, i.e. confusing similarity and unfair advantage/detriment to distinctive character and/or repute.

 

Icon 2 & 3 – No infringement

 

In contrast, Icons 2 & 3 were held not to infringe PlanetArt’s Trade Mark Registration, since both contained the word ‘PHOTOBOX’ in a prominent position.

 

According to the judge, the words ‘PHOTOBOX’ was placed in a position and manner whereby consumers would ordinarily expect a brand to be found. As such, the average consumer would place any origin significance on the ‘Photobox’ element, and meanwhile, attribute the ‘free prints’ element, as merely having its ordinary, primary descriptive meaning.

 

For these reasons, the infringement claim failed against Icons 2 & 3.

 

Guidelines for app developers:

 

Some useful pointers can be discerned from the Court’s judgement:

 

  • Avoid descriptive names for your app where possible, as this may affect your ability to enforce against third parties.
  • The words under an app icon are more likely to be seen as your brand name, rather than as a description of the app – it should therefore be used for the purposes of denoting origin.
  • Although the Appstore operates some constraints on the format of an app icon, it is important to consider all the elements of branding when adopting an app icon, including: wording, images, colouring, and the positioning of each of these elements;
  • When adopting your app icon, reasonable steps should be taken to that it is sufficiently different icons already on the market, in order to make it straightforward for the consumer to distinguish between the multitude of apps available.
  • Extra steps should be taken to ensure that icons are sufficiently different from that of competitors.

 

Comments

 

The judgment of High Court is far from a clear-cut success for owners of descriptive brand names. Rather, it is a clear demonstration of the limits of an inherently descriptive term, and the fine lines that are at play where Trade Mark rights are concerned.

 

Had the issue not involved a Mark that was an inherently a descriptive term, the results of the decision may well have turned even more in PlanetArt’s favour.

 

If you would like further information or advice on registering your Trade Marks, please contact the highly experienced team of Trade Mark Attorneys at Albright IP, who will be pleased to advise you further.

 

SKY v SKYKICK: Part 2 – The Clouds Part…

by

 

Following the CJEU greatly anticipated judgement to questions raised to it, the UK High Court has now issued Lord Justice Arnold’s concluding decision, in the Sky v SkyKick case.

 

As reported previously, Justice Arnold had requested the CJEU provide clarity on a number of pertinent issues to the case; namely, the legitimacy of wide-reaching specifications, and the associated issue of ‘bad faith’ being pleaded in Trade Mark invalidation proceedings.

 

Now armed with the CJEU’s judgement, Justice Arnold’s ruling provides brand owners and practitioners with well-drawn conclusions, and strategic guidance.

 

Application of CJEU Judgment

 

The High Court mostly followed the CJEU judgment:

 

  • Confirming “Trade Marks cannot be declared wholly or partly invalid on the ground that their specifications are lacking in clarity or precision” [1]; and

 

  • “Trade Marks can only be declared invalid in relation to those goods and/or services in respect of which the Court finds that the applications were made in bad faith, and not totally invalid” [2].

 

  • However, Sky had applied for its Trade Marks “with the intention of obtaining an exclusive right for purposes other than those falling within the functions of a trade mark, namely purely as a legal weapon against third parties” [3]. Thus, limitations were applied to most of the relied upon goods and services, these being so broad Sky could not conceivably be using their Trade Marks to the full breadth of what these terms entail.

 

  • Extraneous to the CJEU judgment, Justice Arnold supplied the limitation wording himself in absence of Sky providing their own.

 

  • Limitations aside, Skykick were still found to have infringed Sky’s earlier rights. Justice Arnold concluded, “[t]he fact that [Sky’s] Trade Marks are partially invalid on the ground that they were applied for partly in bad faith does not affect [the finding of infringement]” [4].

 

Conclusion

 

Foremost, it is worth stressing that a finding of bad faith is not concluded lightly. In the context of Sky v SkyKick, it had to be demonstrated that Sky “had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark” [5]. Justice Arnold concluded these criteria were met. Sky had included terms that could not be conceivably supplied, in full, ‘in the course of trade’. The decision in Sky v SkyKick leaves us with a few points of particular note:

 

  • Where broad terms are used, a specification drafted defensively could now be vulnerable to an invalidation action. However, brand owners need not panic in that it cannot be assumed that Registrations will be invalidated in their entirety, even where an invalidation action succeeds.

 

  • When drafting a specification, use of broad terms such as “computer software”, should not be included without limitation as to the specific purpose that the software will be put to. On the basis of the agreed wording of Sky’s limitations, we now at least have Court-approved wording for certain broad terms. For example, “computer software supplied as part of or in connection with any television, video recording or home entertainment apparatus or service”.

 

  • Justice Arnold resorted to limiting Sky’s specifications because they had not proposed any wording as a fall-back position. In future invalidation proceedings, it may be worth Applicants, or their counsel, devising their own fall-back wording, lest the Court’s wording be imposed upon them.

 

Whilst the conclusion of Sky v Skykick has not met the initial expectations, our previous advice remains current:

 

  • Avoid extending protection beyond the list of goods and services that are realistically likely to be provided, when filing a new trade mark application.

 

  • Avoid the temptation of filing for a list of speculative goods and services, that may be introduced at a future date, simply as a way of gaining ‘more value’ out of an application. Ultimately, instructing a second application, if and when use expands to other areas, will be far more useful and cost effective, than fighting an invalidation action that could result in having goods/services struck through.

 

  • Do contact us should you require advice on how to best protect your Trade Marks. As always, our highly experienced team of Attorneys will be pleased to advise further, and share their expertise in the drafting of an appropriate specification.

 

Bibliography

[1] Sky Plc & Ors v Skykick UK Ltd & Anor [2020] EWHC 990 (Ch) (29 April 2020). Paragraph 12.

[2] Sky v Skykick. Paragraph 13.

[3] Sky v Skykick. Paragraph 21.

[4] Sky v Skykick. Paragraph 62.

[5] Sky v Skykick. Paragraph 11.

 

The Effect of The Coronavirus on Official Deadlines (Updated)

by

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

Quicklinks & Glossary

Albright IP All Rights Reserved 2021