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How does Apple successfully patent software?

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Case Study No. 1

 

Index

 

 

Introduction

 

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

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

 

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

 

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

 

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

 

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

 

Where to Find Software Patents?

 

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

 

Code G06F is described as: ELECTRIC DIGITAL DATA PROCESSING.

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

 

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

 

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

 

How was Claim 1 Written to be Considered Patentable Matter?

 

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

 

 

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

 

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

 

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

 

 

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

 

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

 

 

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

 

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

 

Why was Claim 1 objected to?

 

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

 

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

 

The examiner noted:

 

 

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

 

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

 

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

 

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

 

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

 

 

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

 

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

 

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

 

 

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

 

Summary:

 

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

 

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

 

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

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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

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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

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UK Patent Owners

 

A quick summary of two relatively recent court decisions in the UK explaining why having a British granted patent now gives you generally greater protection under the newly adopted ‘doctrine of equivalents’ without the limitation of ‘file history estoppel’.

 

At the end and in view of the above, this article also gives some suggestions to consider when you are now writing a new patent (or having a new patent written for you).

 

Recent Decision 1:

 

Excel-Eucan Limited v Source Vagabond Systems Limited

 

The patent relates to a ‘link-tail’ bag for feeding ammunition to a machine gun:

 

 

The single granted independent claim reads:

 

 

Shown below(1) are the Link-Tail (top example, and subject of the above claim 1), and the 2017 Bag (lower example, and competitor product); in both cases with the top flap open at the right hand end:

 

 

The important bit to notice is that the competitor bag (the ‘2017 Bag’) at the bottom does not have a zipped opening (you can see the zipped opening in the patented ‘Link-Tail’ bag at the top and circled) or indeed any openable closure along its length. If you re-read the claim above, you can see that the ‘openable closure’ is a required feature of the granted claim.

 

The judge concluded: ‘I am satisfied that the 2017 Bag (ed: competitor product) achieves the same result in substantially the same way as the invention. Both bags can be loaded horizontally and/or vertically and substantially the same result is achieved. In neither case is the openable closure necessary.’ Highlights added.

 

Granted claim 1 clearly requires ‘an openable closure extending substantially from the first end to the second end’. The court held that this feature is immaterial to the ‘inventive concept’.

 

Therefore, infringement was found.

 

This is a positive outcome for the patent owner. A product without all of the features of their granted claim 1 was still held to infringe.

 

Recent Decision 2:

 

Icescape Limited v Ice-World International Bv & Ors

 

Ice-World’s patent is for cooling a mobile ice rink.

 

To make transport easier, the cooling system of manifolds feeding cooling pipes can be folded up.

 

The diagram below(2) from Ice-World’s patent shows two ‘elements’ or sections of the Ice-World design (41, 42, each highlighted by a green box). Each section (41, 42) has a main feed pipe or manifold (43, 45, circled in purple) and a discharge manifold (44, 46, also circled in purple).

 

The feed and discharge manifolds of the two sections (41, 42) are connected to each other via joints 47 and 48 (circled in red) respectively.

 

As such, the cooling fluid entering the feed manifold (45) of the second section (42) must pass through the feed manifold (43) of the first section (41). The same applies to the discharge manifolds (44, 46), albeit in a reverse direction of flow.

 

In other words, the ections (41, 42) are considered to be connected in series or one after the other.

 

Each section (41, 42) also has a number of longitudinal cooling pipes (50, 51, circled in blue) which have a ‘first series’ or bank of pipe sections (68, 68’, 68’’) connected in series with a ‘second series’ or bank of pipe sections (69, 69’, 69’’) by flexible joint members 70 (circled green). The result of the above is that this jointing (70) of the various pipes (50, 51) allows folding of the system to permit easier transport for mobile ice-rink applications.

 

Scheme 1

 

The variant by Ice-World’s competitor, Icescape, is diagrammatically shown below(2). The arrangement has three ‘elements’ or sections (E1, E2, E3, highlighted as green boxes).

 

Each section of the competitor’s system has a feed manifold (F3, circled in purple), a discharge manifold (D3, circled in purple) and cooling pipes  ‘C’ (circled in blue) extending in parallel with each other.

 

The cooling pipes ‘C’ comprised foldable joints, which are not visible in the diagram below.

 

However, Icescape believed that they would circumvent the Ice-World patent if they positioned their sections (E1, E2 and E3) such that the fluid entering the feed manifold (F3, circled in purple) of any of the three sections (E1, E2, E3) did not pass through the feed manifold of any other of the three sections (E1, E2, E3).

 

In other words, the sections (E1, E2, E3) are in parallel, rather than in series.

 

As such, in the Icescape arrangement, there is no equivalent to the joints (47 and 48) in the Ice-World patent.

 

Icescape believed that this separated them sufficiently from the Ice-World patent:

 

Scheme 2

 

Granted claim 1 of the Ice-World patent was set out in integer form (i.e. as a list) by the judge(2):

 

“Cooling member (21, 40) for a mobile ice rink provided with:

 

a feed manifold (43, 45) extending in a transverse direction and a discharge manifold (44, 46), and a number of longitudinal pipes (50, 51) which extend transversely to the manifolds and can be connected at a first end (53, 54) to a manifold (43, 44, 45, 46), two longitudinal pipes (50, 51) in each case being in fluid communication with one another at a second end (60, 61) via a connector (27, 63), so that a fluid path is formed from the feed manifold (43, 45) to the discharge manifold (44, 46) via the two connected longitudinal pipes (50, 51), characterised in that

 

  1. the cooling member comprises at least two elements (41, 42), each with a feed manifold (43, 45) and discharge manifold (44, 46) and a number of longitudinal pipes (50, 51) connected thereto,
  2. wherein each longitudinal pipe comprises at least two rigid pipe sections (3, 12, 16, 24, 68, 69) that are connected to one another via a joint member (4, 13, 17, 25, 70, 132, 133) such that they are fluid-tight, and
  3. wherein by moving the joint members (4, 13, 17, 25, 70, 132, 133) a first series of parallel pipe sections (68, 68′, 68″) can be placed in a transport position with respect to a second series of parallel pipe sections (69, 69′, 69″) connected thereto, in which transport position the two series of pipe sections (68, 68′, 68″; 69, 69′, 69″) are at an angle with respect to one another or are positioned on top of one another, and can be placed in an operational position in which the two series of pipe sections (68, 68′, 68″; 69, 69′, 69″) extend in the extension of one another,
  4. wherein the first and the second element (41, 42) can be placed in the operational position alongside one another such that the feed and discharge manifolds (43, 44, 45, 46) of the elements extend in the extension of one another in the transverse direction,
  5. wherein the feed and discharge manifolds of the two elements are provided with a coupling member (47, 48) to make a fluid-tight connection between the respective feed and discharge manifolds of the first and the second element.”

 

It was submitted that ‘the key novel and inventive feature of the invention is integer C […] the use of joint members (70, ed: see first image above) which allow the longitudinal pipes to have two configurations, one in which the cooling pipes are extended and the other in which the cooling pipes are folded back on one another. This is the integer which enables the claimed system to work in its intended manner. Integer C is […] the invention.’

 

The competitor, Icescape, accepted that their design had all of the features of Ice-World’s granted Claim 1 except integers D and E (i.e. they had features A, B and C, but not D and E) due to their parallel arrangement.

 

On Appeal, it was held that, although the claim must be taken literally to be limited to a ‘series’ connection between the adjacent ‘elements’, a ‘parallel’ connection is an alternative way of implementing the same concept. The difference in the positioning of the elements relative to each other has nothing to do with the core inventive contribution of the patent (the foldability of the cooling pipes 50, 51 and C).

 

The judge held that ‘there is nothing to suggest that the patentee regarded series connection as essential in any relevant sense’.

 

The judge also noted that the prosecution history did nothing to alter this view, and as such ‘file history estoppel’ or restricting the scope of the claim based on comments made by the patentee during examination still plays no part in the determination of the inventive concept.

 

However, the judge nuanced this statement by reinforcing a previous judgement that reference to the prosecution history would be appropriate in two scenarios. The first scenario was where “(i) the point at issue is truly unclear if one confines oneself to the specification and claims of the patent, and the contents of the file unambiguously resolve the point”.

 

The second scenario is where “(ii) it would be contrary to the public interest for the contents of the file to be ignored”.

 

The judge illustrated the second scenario as occurring where the patentee had explicitly renounced a variant during prosecution, but later tried to enforce the patent against that very variant.

 

Therefore, on Appeal, the decision was overturned and the patent was held to be infringed (although it was also held invalid due to an invalid priority claim, but that is beyond the scope of this article’s topic).

 

Again, this is another positive for the patent owner. The competitor’s product clearly did not have all the features of the granted claim 1. But, the system was held to achieve substantially the same inventive concept, and as such infringement was found.

 

Comment

 

  • In light of these decisions, it seems to make sense to ‘characterise’ your independent claims at the outset with ‘results to be achieved’ type language that explains the intended inventive concept. Even if the claim language is then limited during prosecution, the broad ‘inventive concept’ (or even concepts) remains stated on filing.
  • Furthermore, including caveats and examples throughout the patent specification would seem to encourage a broad interpretation of the ‘inventive concept’.
  • Having a well-rounded and broad ‘conclusion’ at the end of your description which restates in different language the ‘inventive concept/concepts’ rather than necessarily just specific features also makes sense.
  • It is also worth bearing in mind that, although a claim can be infringed, the patent can still be held invalid in light of prior art. With the broader interpretation being given to granted claims, being aware of such prior art therefore now becomes increasingly more relevant.
  • The alleged infringer will likely still push for ‘file history estoppel’ or in other words using the examination history to mould or shape the scope of the granted main claims and what the inventive concept should be construed as. It is therefore prudent to be mindful of statements being made during examination. Re-stating the broad inventive concept during examination is a good idea, but not necessarily explicitly designating essential features which are deemed to make up that inventive concept.

 

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

 

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

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

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World IP Day

 

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

 

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

 

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

 

Leading from the front

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

Celebrating our local innovation

 

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

 

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

 

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

 

Keep the innovation going

 

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

 

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

 

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

 

Can a Deity Apply For a British Patent?

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British Patent

 

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

 

Who can apply for a patent?

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

The Effect of the Coronavirus on Official Deadlines

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Intellectual Property Covid-19

 

National and regional intellectual property offices are, like all of us, feeling the effects of the on-going Covid-19 outbreak. Some of them have now extended deadlines or put into place corresponding measures which are aimed at helping you to weather the storm without losing your rights.

 

We remain very much open for business as usual, but here is a brief overview of the positions being adopted by the UK Intellectual Property Office (UK IPO), the European Patent Office (EPO), the EU Intellectual Property Office (EUIPO), and the World Intellectual Property Organization (WIPO).

 

UK IPO

 

The UK IPO has announced that all deadlines for UK patents, designs, trademarks, supplementary protection certificates, and applications for any of those rights, have been indefinitely extended. This applies to deadlines from 24th March 2020 to an unspecified future date.

 

It is important to note that this extension applies to UK rights only. Any applications for overseas rights made under international or regional agreements must still be made by the relevant deadlines.

 

The situation will be reviewed on 17th April 2020. The UK IPO indicates that there will be a two-week notice period before the extension period ends, so the earliest that any extended deadlines may fall would be 1st May 2020.

 

EPO

 

The EPO has announced that deadlines for time limits expiring on or after 15th March 2020 are extended until at least 17th April 2020. Oral proceedings scheduled during the same period have been suspended until further notice, unless video-conferencing has already been arranged.

 

It should be noted that the extensions apply to parties which are already party to proceedings under the European Patent Convention (EPC) or Patent Co-operation Treaty (PCT).

 

For opposition filing deadlines, it should be noted that the EPO has stated that the current situation qualifies as a ‘general dislocation’ under rule 134(2) EPC. Therefore, this should also extend the deadline for filing an opposition to a European patent until at least 17th April 2020, assuming that the opposition deadline had not already expired prior to 15th March 2020.

 

The EPO has also pointed out that the extension does not apply to some things such as the deadline for filing a divisional application and the deadline for making written submissions before oral proceedings. The same notice indicates that renewal fees falling due on 31st March 2020 can be paid until 17th April 2020, and that such renewal fees can for now be paid at the current rate rather than the increased rates coming into force from 1st April 2020.

 

EUIPO

 

The EUIPO has announced that deadlines expiring between 9th March 2020 and 30th April 2020 have been extended to 1st May 2020 (in practice, 4th May 2020, since 1st May is a public holiday followed by a weekend).

 

This specifically relates to deadlines for trademark or design matters, but does not cover deadlines which relate to other matters or which relate to another authority, e.g. bringing an action before the General Court against a Board of Appeal decision.

 

WIPO

 

The WIPO is still processing international patent, design and trademark applications as normal. The latest newsletter contains some advice on possible remedies in the event that a PCT deadline is missed for an international patent application.

 

If you are nearing the end of a priority filing period (12 months from first filing a patent application, or 6 months from first filing a design or trademark application), then the Paris Convention only allows for an extension to the priority period where the national Office was closed to the filing of applications. Please click the relevant links here for further details relating to the PCT, Hague System and Madrid System procedures as affected by the Covid-19 situation.

 

For the time being, the UK IPO, EPO, EUIPO and WIPO are still accepting applications. The EPO and EUIPO have indicated that priority filing deadlines may be extended, for now. However, to be on the safe side, if you plan to file a national/regional application, a PCT international patent application, a Hague System international design application, or a Madrid System international trademark application through one of those Offices, it is still worth aiming to file subsequent applications by the priority deadline.

 

The situation for all of the above Offices is still evolving, but we will endeavour to continue to provide up-to-date information on our website. If you have a query relating to a specific case, please do not hesitate to contact us for further information.

How To Make Competitors Aware Of Your IP

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Competitors of intellectual Property

 

It is a question that we are frequently asked: ‘I have patents and trademarks, so how do I put a notice on my products and website to notify competitors of my intellectual property rights?’

 

Whilst driving home from a recent ski trip with my family, I noticed the following on a cardboard sleeve used by Starbucks® to hold my piping hot triple-shot cappuccino:

 

Competitors of intellectual Property

 

Curiosity took me to the stated page: www.lbpmfg.com/patents/, and I liked the way this was laid out.

 

The company’s rights are clearly displayed in a table, with a picture of the product, and the trademarked name …

Competitors of intellectual Property

 

… followed by the associated patent rights:

 

Competitors of intellectual Property

 

If curious, the granted patent rights can be viewed at US8,529,723 and US9,056,712.

 

(Interestingly, their associated right US9,580,228, granted in 2017, is not listed on their web page, so it does seem that LBP Manufacturing are behind with their updates.)

 

Undertaking a manufacturing run, whilst having pending patent and trademark applications, costs money to reprint or retool once your applications are finally allowed and become granted or registered rights. This usually results in a new ‘grant’ number, particularly for patent rights.

 

To this end, having a single website address which can be referred to on your products and literature, and which can be easily updated as new rights are won and older rights lapse, will save time and costs downstream.

 

Why Do I Want To Notify Others Of My IP Rights?

 

Let’s look briefly at the UK, and also the USA to answer this question.

 

In the UK, there are provisions for at least a partial defence against infringement if the infringer can argue that they were ignorant of the existence of the patent or similar rights. See ‘Section 62(1)’ on the UKIPO’s website.

 

The onus is on the infringer to prove that they were not aware.

 

Being clearly directed to a list of your IP rights by a statement on your product or associated literature makes this defence difficult or impossible to use.

 

There are no specific requirements, under UK patent law, for a patent owner to state their rights publicly (but why wouldn’t you? You have paid for the asset, why not use it to protect your market?). Under US patent law, legal damages will not accrue until an effective notice of rights is given.

 

35 USC 287(a), since the introduction of the America Invents Act (AIA) in 2011, gives the option of ‘virtual’ marking to avoid the necessity of physical marking. Virtual marking is as shown above, where LBP Manufacturing has put a statement on their cardboard sleeve of ‘Patent’ followed by their internet address for a web page that outlines a complete and up-to-date list of associated patent rights. See Page L-67 of the MPEP from the USPTO for more specifics.

 

As alluded to above, since you have paid to stake a claim to your intellectual property, why would you not make the best use of the assets? Use the rights as a ‘keep off the grass’ sign to deter your competitors.

 

European patent fees to increase from 1st April 2020

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European patent fees

 

The European Patent Office has announced forthcoming changes to its fees, in line with its usual practice of biennial fee adjustments.

 

The January 2020 edition of the EPO Official Journal sets out further details of the fees that will be applicable from 1st April 2020. The changes typically lead to an increase of just under or just over 4% relative to the current official fees. The fee increases will apply to any fees that have not been paid prior to 1st April 2020.

 

Is it worth paying any fees early?

 

You might be able to pay certain mandatory fees on your European patent application before 1st April 2020, in order to take advantage of the slightly lower official fees.

 

This would be particularly advantageous if you are looking to file a Euro-PCT application to avoid increases to the application fee (+5 EUR), search fee (+50 EUR), examination fee (+65 EUR) and designation fee (+25 EUR), as well as any extra claims fees and/or extra page fees.

 

Overall, filing a Euro-PCT application by 31st March 2020 could save you at least 145 EUR in official fees, or potentially more for longer applications. There will also be some cost savings if you wish to file a direct European application by the same date.

 

If your current application relates to two or more inventions – typically highlighted by a “unity” objection in a European search report – then you should also consider filing any divisional applications for the other invention(s) by 31st March 2020. A divisional application takes the filing date of the original ‘parent’ European application, and any renewal fees for previous years need to be paid separately for a divisional application.

 

If, for example, your original European application was filed in February 2015, all of the 3rd to 6th-year renewal fees would need to be paid on a new divisional application, plus the divisional filing fee. In that scenario, you could save at least 130 EUR on those fees alone, in addition to savings on the application fee, search fee, etc. This all assumes that the divisional application is filed and the necessary fees paid before the fee increases take effect.

 

What’s the cost to file an application now?

 

If you would like an immediate quote for filing a Euro-PCT application by 31st March 2020, please enter your PCT application number (in the form PCT/XX20XX/XXXXXX) into our Euro-PCT calculator.

 

If your application is not written in English, French or German, then a translation will be required at additional cost. Please contact one of our attorneys directly if this applies to you, or if you are looking to file a direct European application or a divisional European application, and we would be pleased to provide a firm quotation.

 

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

 

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