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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 (coming soon) 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.

 

Artificial Intelligence Cannot Be an Inventor of a Patent Application

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Artificial intelligence (AI) system.

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

Shanks vs Unilever

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Shanks vs Unilever

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

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

 

The Mathematics of Patents

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Mathematics of Patents

 

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

 

1) Added subject matter, by addition (+)

 

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

 

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

 

2) Added subject matter, by subtraction (–)

 

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

 

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

 

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

 

3) Multiple embodiments (×)

 

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

 

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

 

4) Divisional applications (÷)

 

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

 

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

 

5) Infringement by equivalence (=)

 

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

 

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

 

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

 

Summing up

 

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

 

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

 

Brexit update – 31 January 2020

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Brexit - 31 January 2020

 

The UK formally leaves the EU today on, 31 January 2020. A transition period will run up until the end of 2020. Regardless of whether a modified version of the Withdrawal Agreement is negotiated, it is unlikely that the current draft proposals/terms relating to IP rights will change. A summary of these is set out below.

 

Trade Marks & Designs

 

Here are some key points to consider in anticipation of the post-Brexit proposals:

 

Filing

 

• All granted EUTM/RCD Registrations will be cloned at the effective date of Brexit; with the original filing/priority dates being preserved.

• Any EUTM/RCD Applications pending at the effective date of Brexit will not be cloned; these will retain the original filing date/priority date, provided they are re-filed at the UKIPO within nine months of the effective date of Brexit. Thereafter, they will undergo fresh examination.

• To ensure you will have rights in the EU and the UK after Brexit, file all new Applications in the EU and the UK.

• When filing IRs designating the EU; a separate UK designation should be added.

 

Renewals

 

• Any EU renewals falling due prior to Brexit will encompass the UK.

• Any EU renewals falling due after Brexit will not avoid payment of the renewal fee for a UK clone; this will require a separate renewal.

 

Use

 

• For the future, use in the UK will not validate an EU Registration and vice versa. This will become relevant five years after grant, if vulnerability to cancellation for non-use is to be avoided.

 

Pending Proceedings

 

• Closure of pending proceedings prior to the effective date of Brexit is to be recommended. As such, Cooling Off periods in pending EUIPO Oppositions should be brought to an end, and ongoing proceedings expediated.

• Any ongoing EU Opposition and Invalidation proceedings based solely on a UK right, may be thrown out following Brexit.

 

Licences and Security Interests

 

• Licences or security interests recorded against an EUTM/RCD should also be recorded against its clone when this is created.

 

Contracts and Agreements

 

• The terms of any pre-Brexit agreements should be reviewed, to ensure compliance following Brexit – opting-out or surrendering a clone might be necessary, as the existence of a UK Registration might be contravening earlier agreements.

• Any clauses related to jurisdiction, governing law, and territory in existing contracts should be reviewed and amended to include the UK, as well as the EU, where appropriate.

• Distribution agreements should also be reviewed in anticipation of changes to the exhaustion regime.

 

Patents

 

There will be no fundamental changes insofar as patents are concerned. Since the European Patent Office is not an EU Institution, and since the European Patent Convention is unrelated to EU law, practice will continue as usual.

 

Summary

 

As Brexit approaches, IP owners should be taking pro-active steps to ensure that their rights are well-managed and adequately protected. Whilst Patent owners and Applicants remain largely unaffected by the unfolding Brexit scenario, owners and Applicants of Trade Marks and Registered Designs should actively safeguard their interests, by paying attention to the action points outlined above.

 

Whatever happens in the lead-up to and indeed after Brexit, Albright IP will continue to offer expert advice to our clients, and we will be moving forward and adapting our practice, to ensure that the most appropriate, most comprehensive and cost-efficient IP protection is put in place in the UK and the European Union. 

EPO CRISPR Patent Appeal Resolved

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CRISPR Commercial Patents

 

The EPO Boards of Appeal convened recently to offer a final ruling in respect of EP2771468, a patent granted to the Broad Institute in respect of CRISPR/Cas9 gene editing technology. This case has attracted a lot of attention, not least because of the potential commercial value of the patents at hand, as well as the background of long-standing disputes between the various parties holding CRISPR patents across the world.

 

What is CRISPR?

 

CRISPR (Clustered Regularly Interspaced Short Palindromic Repeats) technology is a novel DNA editing tool which is faster, more cost-efficient, and more accurate than previous gene editing techniques. Indeed, there was some speculation that the most recent Nobel Prize for physiology or medicine might be awarded to the minds behind CRIPSR, before this was awarded to Kaelin Jr, Ratcliffe, and Semenza for their discoveries of how cells sense and adapt to oxygen availability.

 

Ultimately, the technology can be used to permit scientists to rapidly make cell and animal models for the purposes of medical research, as well as providing many options for medical diagnostics, and the techniques are widely used around the world.

 

EP2771468

 

EP2771468 was filed on 12 December 2013, as an International (PCT) application, claiming a long list of priorities to earlier US applications. The publication of grant occurred on 11 February 2015. Several oppositions were launched, starting in October 2015, which asserted that the patent was invalid.

 

The claims themselves were directed towards a composition comprising a CRISPR-Cas system chimeric RNA or a CRISPR enzyme sequence, which are modified to improve their stability.

 

The patent itself is a fairly meaty read, with the International application as published running to 162 pages. The field of technology here is one with dense impenetrable jargon (much like patent law itself!), but this is beside the point. The merits of the appeal hinged on a simple question – was the application entitled to priority?

 

Priority

 

The law of priority for patents stems originally from the Paris Convention, which recites in Article 4(A)(1):

 

Any person who has duly filed an application for a patent […] in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.

 

Why is this important? Well, the Broad Institute filed their original US patent application having four inventors, also named as applicants. When filing in Europe (via the PCT filing), however, one of the inventors was omitted, Professor Luciano Marraffini of Rockefeller University, New York.

 

If Professor Marraffini had not, as asserted by the opponents, assigned his right to the invention correctly to the Broad Institute by the time the European application was filed, then the Broad Institute were not entitled to claim the priority right. This meant that the effective date for the assessment of prior art changed. Here, this meant that different citations, much more destructive to patentability, became citeable, which in turn would lead to revocation of the patent.

 

EPO case law is quite clear in this regard. T788/05 clarified that a sole applicant who was one of several joint applicants on a first filing cannot give rise to a separate priority right. The right of priority is jointly owned but indivisible. The applicant of the European patent application must be the owner or successor in title to all of the rights of the individual applicants of the priority application as of the date of filing of the European application, or in this instance, PCT application, for a valid priority claim to be made.

 

Oral Hearing

 

If the EPO case law is so clear, then how did this case reach an oral hearing? Crucially, the USPTO have a different interpretation of how a valid priority right can form – the later application needs only a single inventor in common in order for a valid priority claim to be made.

 

Essentially (and in much simplified terms), the Broad Institute argued that, given that the priority applications were US filings, then US law should govern how priority can be claimed. Additionally, much semantic argument was heard about the meaning of the term any person as outlined in the Paris Convention.

 

This line of argument threatened to lead the Boards of Appeal to refer the matter to the Enlarged Board of Appeal, which would have significantly extended the uncertainty regarding the status of the patent, but eventually finalised their decision to revoke the patent, finding the priority claim invalid.

 

Procedural Strictness

 

Overall, the decision of the Board of Appeal is much as had been expected to European observers. The prevaricating over this matter has ended, and the final written decision of the Board is expected soon.

 

What can we infer from a practice perspective from this resolution, however? Primarily, whilst the direction in the UK, at least, is towards excusing sloppy claim drafting, the law of priority remains strict, to the point of being lethal to viably patentable technology. In this instance, the Broad Institute potentially have nine patents which have questionable priority claims.

 

Given the divergence of US and European law in this regard, patent practitioners need to be very aware of potential issues in respect of entitlement and ownership, and how this can have a knock-on effect on the validity of patents.

 

Banksy: The Flower Thrower

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Banksy: The Flower Thrower

 

“Does art matter?”. On 17 October 2019 , graffiti artist Banksy launched an online shop called Gross Domestic Product to sell his branded merchandise for two weeks, the launch being advertised by a pop-up shop in Croydon, UK. To have chance at purchasing an item, would-be Banksy merchandise owners had to register their interest and answer the above tie-breaker question. The sale of trademarked merchandise, an unprecedented move by Banksy, is better understood in the wider context of a dispute surrounding one of Banksy’s trade marks.

 

Banksy is the owner of several European trade marks, registered under the name of Pest Control Office Limited, a handling service acting on behalf of Banksy. The particular European trade mark at the centre of the dispute is European Trade Mark 012575155  which protects an image reminiscent of Banksy’s Rage, the Flower Thrower mural in Jerusalem, also known as Love Is In The Air, Flower Thrower or Flower Bomber. The Flower Thrower trade mark was filed in February 2014 and registered by August 2014.

 

In a statement posted on the pop-up store in Croydon, Banksy has explained the motivation behind the shop as follows:

 

“A greetings card company is contesting the trademark I hold to my art and attempting to take custody of my name so they can sell their fake Banksy merchandise legally”.

 

Full Colour Black, the greetings card producer in question, deny that they are trying to take custody of Banksy’s name, and have stated that the company previously approached Banksy’s representatives to pay them royalties, which Banksy refused

 

Subsequently, in March 2019, Full Colour Black filed an action for invalidity to cancel the Flower Thrower European trade mark. If the trade mark were successfully cancelled, Banksy would not be able to rely on his European trade mark to prevent use of the Flower thrower image commercially and Full Colour Black would be free to sell cards featuring the Flower Thrower without any risk of infringing the mark.

 

Of course, Banksy could rely on copyright to stop Full Colour Black or any other entities who are copying his art work. However, so far, Banksy has not enforced his copyright, the likely reasons for this being that to do so would require giving up his anonymity, and the requirement to file statements of use to enforce his copyright in the USA.

 

The essential function of a trade mark is to enable consumers to distinguish the goods or services of one undertaking from those of other undertakings. As the Flower Thrower image is reproduced widely on goods sold by different entities, Full Colour Black have argued that the image is not capable of being a trade mark. This is because it does not allow consumers to distinguish the goods originating from an undertaking under Banksy’s control and those originating from other companies. This is particularly true, as, prior to the launch of the shop in October 2019, no official Banksy merchandise existed. Furthermore, Full Colour Black argue that Banksy has registered the mark with no intention to genuinely use it, which amounts to bad faith, a further ground for invalidity.

 

It is unclear how selling trademarked merchandise is supposed to help Banksy’s case, as evidence of use has no effect in an invalidation action. The sale would be much more understandable if the action filed by Full Colour Black had been for revocation, as a trade mark can be revoked for non-use.

 

According to European trade mark law, a trade mark can be revoked, upon application to the European Union Intellectual Property Office,

 

“a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; […]”

 

(Article 58 of the EU Regulation No 2017/1001 of 14 June 2017)

 

In other words, as Banksy had not sold any goods to which the Flower Thrower trade mark was applied, and for which the trade mark was registered between August 2014 and August 2019, and there were no reasons preventing him from doing so, his Flower Thrower European trade mark became subject to revocation in August 2019 such that Full Colour Black could have applied for revocation from then on.

 

However, the law does also state that:

 

“no person may claim that the proprietor’s rights in an EU trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed;[…]”.

 

In short, the shop launch in October 2019 may have been an attempt by Banksy to pre-emptively invalidate any revocation action filed by Full Colour Black.

 

Such a revocation action would nevertheless remain admissible if Banksy only launched the shop after becoming aware of the possibility of a revocation action being filed against his trade mark and if such an action were filed within three months. Whether the sale of a few items for a limited period of time constituted genuine use of the mark is also an important question.

 

The current status on the European Union Intellectual Property Office register of Flower Thrower European trade mark 012575155 is “registration cancellation pending”, as the court determines the matter.

 

In a parallel move, Banksy’s legal team appear to have filed another representation of the Flower Thrower as a new European trade mark application in August 2019, European trade mark application 018118853. This new trade mark application is currently undergoing examination. If registered in due course, the sale of branded merchandise in October 2019 may well have been a move to demonstrate use of the image submitted in the newly-filed European trade mark application, rather than in response to the invalidation action. Of course, if the first Flower Thrower trade mark is invalidated (and therefore was never a valid registered trade mark), this may not bode well for the registration of the second Flower Thrower trade mark application, or indeed the registration of many other of Banksy’s image trade marks.

 

It will be interesting to see how this case develops further.

 

An important, practical conclusion for trade mark owners to draw from this case is to not wait five years before putting your trade mark to use. Otherwise, your trademark will become open to being revoked for non-use.

 

If you have not been using your mark in the last five years or more, the most advisable course of action in many cases would be to resume or start as soon as possible.

 

If in doubt, please do not hesitate to contact Albright IP for advice about your trade mark.

 

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