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How Apple Successfully Patented A Software User Interface for A Camera

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Software interface

 

 

Case Study No. 2

 

Index

 

Introduction

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

How To Find Software Patents

 

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

 

Software

 

Background Of The Patent

 

This patent application originally had 284 claims!

 

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

 

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

 

Apple uses a similar and simple strategy in most cases:

 

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

 

Why start with a ‘method’ claim?

 

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

 

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

 

Dissecting The Claims

 

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

 

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

 

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

 

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

 

Method Claim 1

 

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

‘A method, comprising:

 

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

 

concurrently displaying, on the display:

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

Computer-Readable Storage Medium Claim 14

 

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

 

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

 

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

 

Electronic Device Claim 15

 

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

 

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

 

one or more cameras;

 

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

 

a display;

 

one or more processors; and

 

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

 

What Happened During Examination?

 

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

 

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

 

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

 

Case

 

Somewhat surprisingly, the Examiner rapidly backed down.

 

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

 

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

 

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

 

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

 

Conclusion

 

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

 

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

 

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

 

ASK AN EXPERT

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

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Brexit - 31 January 2020

 

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

 

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

 

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

 

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

 

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

 

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

 

Preparation is key

 

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

 

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

 

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

 

Business as usual

 

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

 

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

 

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

 

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

 

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

 

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

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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?

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Apple Software

 

Case Study No. 1

 

Index

 

 

Introduction

 

 

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

 

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

 

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

 

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

 

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

 

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

 

Where to Find Software Patents?

 

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

 

Code G06F is described as: ELECTRIC DIGITAL DATA PROCESSING.

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

 

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

 

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

 

How was Claim 1 Written to be Considered Patentable Matter?

 

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

 

 

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

 

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

 

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

 

 

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

 

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

 

 

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

 

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

 

Why was Claim 1 objected to?

 

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

 

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

 

The examiner noted:

 

 

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

 

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

 

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

 

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

 

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

 

 

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

 

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

 

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

 

 

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

 

Summary:

 

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

 

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

 

ASK AN EXPERT

 

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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.”

The Effect of The Coronavirus on Official Deadlines (Updated)

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Deadlines

 

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

 

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

 

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

 

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

 

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

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

by

Apply for British Patent

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

Greater Protection in the UK For Patent Owners

by

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.

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