Commentary by Partner Alan MacDougall has been featured in The Patent Lawyer, highlighting differences between the UK and US patent filing process and the importance of protecting research and development investment for banks whenever possible.
An extended version of the press release is available below.
The UK’s biggest banks have filed just a fraction of the patent applications of their American counterparts over the last 10 years, with the top five UK banks collectively applying for just 290 patents while the top 3 US banks collectively applied for 5,027, says intellectual property law firm Mathys & Squire.
The low number of patent applications filed by UK banks is partly due to the lengthy and complex filing process in the UK but also due to a misplaced notion that software is not patentable in the UK. This has resulted in more frequent and more successful filings in the US.
The US patent application process has slowed down significantly over recent years as the number of applications has increased. Even with much longer wait times, it remains markedly easier to obtain protection for a financial services related patent in the US than in the UK.
Whilst obtaining patent protection for software related inventions is possible in the UK, the UK IPO has long been reluctant to grant patents for software that relates to financial products. The strict rules it applies to whether a piece of software is patentable means that relatively few fintech software patents are actually granted in the UK, discouraging the banks from trying in the first place.
Alan MacDougall, Partner at Mathys & Squire, says that it is essential that banks protect their research and development (R&D) investment as much as possible by patenting their technology where they can. In a competitive marketplace, unique technology can set financial services businesses apart from their rivals and help to win and retain customers.
Patent-protected technology can also serve as a significant source of income in itself, as the owners of the technology can then license it to other businesses and can be used as a bargaining tool in the event that they find that their products infringe the rights of others.
While it’s common to see tech companies secure IP with patents, financial services companies frequently do not take the same approach. Alan MacDougall says that “Banks are amongst the biggest investors in tech development in the UK but they are still not being as vigilant as they should be about protecting the intellectual property that their funding helps to generate.”
“We’d never expect a tech company to release a new product without trying to patent it first. Financial services institutions should be thinking about their IP in the same way. They should be trying to protect their IP with patents. Leaving that valuable IP open to being copied reduces the return on the investment from the R&D that the banks are undertaking.”
Commentary by Partners Nicholas Fox and Alexander Robinson has been featured in Kluwer Patent Blog, Law 360, Managing IP, Solicitors Journal and World Intellectual Property Review, giving an insight into the impact of the Court of Appeal’s order on future interventions in proceedings at the UPC.
An extended version of the press release is available below.
The Unified Patent Court (UPC) Court of Appeal has dismissed an attempt by Mathys & Squire to intervene in a critical test case on public access to documents filed with the Court. An attempted intervention by the law firm Bristows was also dismissed.
In October the UPC’s Nordic-Baltic regional division granted a request by a member of the public to access documents filed at the court in a patent infringement action between Ocado and Autostore. However, access was stayed after Ocado asked the UPC Court of Appeal to overturn that decision, which conflicts with a narrower view taken by the UPC’s Central Division requiring members of the public to prove a “legitimate reason” in order to access such documents.
In November, Mathys & Squire applied to intervene in the Appeal on the basis that Court of Appeal’s decision was likely to be determinative of a separate application for access to documents that Mathys & Squire has filed before the UPC’s Central Division. Bristows likewise applied to intervene in December in view of a pending request that the firm had filed for access to documents at the UPC’s local division in the Hague.
In its ruling (see here), the Court of Appeal interpreted the grounds on which third parties can intervene in an appeal very narrowly, limiting applications to cases where a third party has a direct interest in the wording of an order which the Court might issue.
Specifically, the Court held that an intervention requires a “direct and present interest in the grant by the Court of the order or decision as sought by the party, whom the prospective intervener wishes to support and not an interest in relation to the pleas in law put forward.”
Our application to intervene, and that of Bristows, were both rejected on the grounds that an interest in a decision based on an “indirect interest” such as “similarity between two cases” (e.g. similarity between our request for access to documents at the Central Division and the request for access to documents at the Nordic-Baltic division) was insufficient.
The Court of Appeal’s order sets an important precedent. It means that interventions in proceedings at the UPC will only be allowed in narrowly-defined circumstances. In adopting this narrow interpretation, the UPC Court of Appeal has adhered closely to the practice of the CJEU, where possibilities for interventions by third parties are very limited.
The Munich Section of the Central Division has stayed Mathys & Squire’s application to access for documents pending the outcome of the Ocado and Autostore Appeal. We therefore have to wait for the outcome of the Ocado and Autostore Appeal until our application for access to court documents will proceed further.
If the Court of Appeal delivers a decision which provides wide-ranging guidance on the interpretation of the UPC rules on public access to documents, with reasoning which is applicable to most circumstances, this may resolve our concerns about the Court’s current restrictive approach to public access to pleadings and evidence filed with the Court.
It is, however, possible that these issues will not be resolved in the Ocado and Autostore appeal. The circumstances of the access request in the Ocado and Autostore appeal raise specific questions which may cause the Court of Appeal to issue a narrow ruling. We understand that one of the objections that Ocado have raised is that some of the requested pleadings were never properly served and hence do not form part of the court file.
Mathys & Squire have been in contact with the member of the public whose original request for access is the subject of this Appeal. We have provided him with copies of our materials to support his arguments in defence of the public interest in judicial transparency, and wish him the best of luck.
Our concerns about the transparency of court proceedings at the UPC persist.
The original request for access to the Ocado and Autostore documents was filed by a member of the public in August last year. Although the Court of Appeal was to hold oral proceedings in mid-February, the hearing has now been rescheduled for mid-March and hence any decision by the Court of Appeal is unlikely to issue much before April. This means that it will have taken over 6 months for the UPC to process what should be a simple administrative request for access to court documents.
According to the UPC’s case management system, 13 applications for access to court documents have been filed since the UPC opened in June. Two of those requests have been rejected, leaving 11 still pending. To date, none of the applications have resulted in members of the public having sight of evidence and pleadings filed with the court.
We will await the outcome of the Ocado and Autostore with interest.
Mathys & Squire is delighted to have been recognised in JUVE Patent’s UK rankings 2024 for the fifth consecutive year in the fields of ‘Pharma and biotechnology’, ‘Medical technology’, ‘Chemistry’, ‘Digital communication and computer technology’, ‘Electronics’ and ‘Mechanics, process and mechanical engineering’.
As well as a practice-wide recommendation for the firm, four of our Partners have maintained their status as Recommended Individuals: Hazel Ford and Philippa Griffin (for ‘Pharma and Biotechnology‘), Chris Hamer (for ‘Chemistry‘) and Jane Clark (for ‘Digital Communication and Computer Technology‘ / ‘Mechanics, Process and Mechanical Engineering‘).
Partner Chris Hamer has also maintained his specialist Leading Individual ranking once again this year for his expertise in chemistry, one of only eleven UK patent attorneys noted for their technical speciality.
Each year, JUVE Patent rankings are carefully researched by an independent team of journalists, who send out questionnaires and conduct interviews with lawyers, clients, legal academics and judges. The 2024 edition brings together UK patent practices, solicitors and barristers, who, according to the in-depth research carried out by a team of journalists, have a leading reputation in the UK patent law market.
To see the JUVE Patent UK 2024 rankings in full, please click here.
The Supreme Court has today confirmed that artificial intelligence (AI) systems cannot currently be named as an inventor on a patent application in the UK. It has also confirmed that an owner of an AI system that creates a new invention is not entitled to a patent for that invention simply by virtue of owning the AI system.
This case concerns two UK patent applications filed in 2018 for inventions allegedly created by an AI system called “DABUS” (Device for the Autonomous Bootstrapping of Unified Sentience). The patent applications were filed by Dr Stephen Thaler (the creator and owner of DABUS), but DABUS was named as the inventor on each application.
Sections 7(3) and 13(2) of the Patents Act 1977 define the inventor of a UK patent application as the “actual deviser” of an invention and that the applicant must identify the “person” they believe to be the inventor. Section 7(2) also states that a patent may be granted primarily to the inventor or to any person entitled by agreement or rule of law, or their successor in title.
Applicants for patents at the UK Intellectual Property Office (UKIPO) are therefore required to file a statement of inventorship and, if the applicant is not the inventor, to indicate how they derived the right to be granted a patent.
In the case of Dr Thaler’s applications, he not only indicated that DABUS was the inventor but also maintained that he himself was not an inventor. He asserted that he was entitled to grant of the patents by virtue of owning DABUS.
At a hearing in November 2019, Dr Thaler’s arguments were rejected by the UK Intellectual Property Office on two grounds:
(a) DABUS is non-human so is not a “person” as envisaged by section 7 or section 13 of the Patents Act, and therefore cannot be an inventor, and
(b) Dr Thaler is not entitled to apply for these patents simply by virtue of owning DABUS, since DABUS – not being a “person” – had neither any rights that could be transferred, nor any power to transfer anything that it might have owned.
Accordingly, the applications were held to be withdrawn upon expiry of the period for providing the statement of inventorship.
Dr Thaler appealed this refusal, but his appeal was dismissed in the High Court and subsequently the Court of Appeal in September 2021 (on a 2:1 majority). This was then appealed further to the Supreme Court, who have now also dismissed the appeal.
The Supreme Court considered this appeal to be concerned with the relatively narrow question of how the relevant provisions of the Patents Act 1977 should be interpreted, rather than a broader policy consideration of whether the meaning of the term “inventor” should be expanded to allow AI systems to be named as inventors.
On the first issue of whether DABUS could be named as an inventor, the Supreme Court unanimously found that an inventor must be a natural person. Lord Kitchin noted that, at the time of drawing up the Patents Act, Parliament did not contemplate the possibility that an AI system acting on its own could devise an invention, so the laws are not intended to cover this possibility.
The second issue, namely whether Dr Thaler was entitled to the grant of a patent for the inventions created by DABUS, has also been answered with a “no”. Lord Kitchin explained that since DABUS cannot be and has never been an inventor, and that Dr Thaler has himself admitted that he is not an inventor, there is no link between Dr Thaler and an inventor (i.e. no link of the type provided for in the Patents Act, such as an employer-employee relationship or other succession in title). As the Patents Act provides a “complete code” for the purpose of determining the right to apply for and obtain a patent, which starts with the inventor, then the absence of an inventor must cause the application to fail.
Although Dr Thaler argued that as the owner of DABUS he was entitled to the grant of patents for inventions created by it under the doctrine of accession (in the same way that a farmer owns a calf born to his cow), this argument was also dismissed. The Court held that on the basis that an invention is not tangible property, there is no basis for the application of the principle of accession.
Finally, the third issue considered was whether the UKIPO was correct to treat Dr Thaler’s applications as withdrawn. The Supreme Court agreed with the findings of the lower courts that Dr Thaler did not meet the requirements of Section 13(2) of the Patents Act, so his applications were rightfully deemed withdrawn.
This judgment is consistent with the current laws on inventorship and entitlement, although as flagged by Lord Kitchin, this is partly due to the fact that they were drawn up some time ago before issues of AI inventorship would have been envisaged. However, with the increasingly rapid development and adoption of generative AI, these issues are unlikely to go away any time soon.
It is worth noting that the Supreme Court emphasised that neither the UKIPO nor the courts investigated Dr Thaler’s assertions of fact, namely that the inventions were generated autonomously by DABUS and that Dr Thaler was not an inventor. Indeed, it is not the function of the UKIPO to investigate the factual correctness of such statements. As recognised by the Supreme Court, the outcome may well have been different if Dr Thaler had asserted that he was an inventor who had merely used DABUS “as a highly sophisticated tool”.
Although corresponding cases in Australia and South Africa found that an AI machine could be named as an inventor, for the time being applicants in the UK will therefore need to identify the human inventors who have devised the invention. In the context of AI-generated or AI-assisted inventions, this still leaves several grey areas in determining who should be named as an inventor – for example, whether it should be the creator, owner or user of the AI system, or even someone who has identified the inventive concept of an invention created by an AI system.
We look forward to seeing how patent law in the UK and overseas continues to respond to challenges posed by AI.
Following an extended 14-day conference in the UAE, the 28th United Nations Climate Change Conference(COP28) concluded on the 13th of December 2023. As ever, the annual climate conference beings together delegates from across the world to set the course for the future of the green economy.
Following COP21 and the almost unanimous decision to limit the rise in global temperatures to 1.5°C, these conferences typically focus on ways and means to meet this target, for instance by limiting the emission of carbon dioxide (one of the largest contributors to climate warming).
One major outcome of COP28 was the agreement to transition away from fossil fuels in the energy sector ‘in a just, orderly and equitable manner’. This is to be achieved by a rapid expansion in renewable energy production and exploring emerging technologies such as carbon capture, usage, and storage (CCUS). Being hailed as the most important agreement for the climate since COP21, technologies that address this issue are likely to become a key sector of growth over the coming years.
Whilst the agreement was limited to the energy sector, away from COP28 we have seen numerous developments this year in the decarbonisation of those sectors which are more reliant on fossil fuels; namely the aviation and automotive sectors. The first transatlantic flight by a sustainably fuelled jet airliner took place just two days before the opening day of COP28, potentially paving the way for reducing the emissions of the most difficult sector to decarbonise. Furthermore sustainable fuels continue to see potential in the automotive sector, including in motorsport.
The Green Climate Fund (GCF) was founded at COP17 on the basis of richer countries (historically responsible for the most carbon emissions) providing funding to mitigate the effects of climate change in poorer countries (often disproportionally affected by climate change). COP28 saw the GCF rise to $12.8Bn pledged from 31 countries and forms part of a larger commitment set out at COP15 for developed countries to commit $100Bn per annum towards affected countries. One of the purposes of the GCF is to accelerate and scale up climate innovation, including by encouraging more widespread adoption of proven climate solutions by enhancing financing of climate investments. With the continued growth of the GCF, we might expect more investment to become available for innovators in this area.
Whilst not without its controversies, COP28 stands to reaffirm the importance of cleantech and the potential opportunities for innovation, particularly in the energy sector and in technologies relating to the replacement of fossil fuels in other sectors.
At Mathys & Squire, we work with many cleantech clients on green technology breakthroughs and sustainable solutions. We are pleased to partner with companies and inventors who are addressing climate change and whose initiatives further the objectives set forth by COP28.
A piece by Partner Nicholas Fox and Technical Assistants Daniel Johnston and Grace Heredge Thomas has been featured in The Law Society Gazette, giving an insight into the challenges that the Unified Patent Court (UPC) presents to English patent litigators.
An extended version of the press release is available below.
The UPC is a new court which has been established to provide a forum for hearing disputes over unitary patents which provide patent protection extending over 17 EU member states. In addition, the UPC has jurisdiction to enforce and revoke patents granted by the European patent office in force in those member states. Prior to the establishment of the UPC, enforcement of such patents could only take place on a country-by country basis and one of the main rationales for the new court was to remove duplication of enforcement proceedings.
In the first few months of its existence, filing figures at the UPC have been robust with over 100 already having been filed at the court. In contrast, the volume of patent litigation in the English courts has been falling in recent years, whereas 85 cases were filed with the English Patents Court in 2017, that number fell to only 35 last year with a similar number of cases expected to be filed this year.
This puts English patent solicitors in a quandary. The English Patents court was a forum of choice for settling high profile international patent disputes, with the highly competent patent judges and rigorous testing of expert evidence through cross-examination making the English courts a preferred venue for challenging the validity of granted patents. The initial signs of success for the UPC indicate that this position is likely to be challenged. The rules of procedure for the UPC were designed by cherry-picking the best aspects of English and European court litigation with a view to making the court as suitable as possible for hearing patent disputes. Through greater emphasis on documentary evidence and a more targeted approach to cross-examination, the costs of litigation in the UPC are expected to be significantly lower than in the English Patents Court. At the same time, the rules do provide for a much stronger role for the presentation and challenge of expert evidence than in the case in main continental court systems.
Further, one of the attractions of the UPC is that it is expected that a significant proportion of the litigation conducted in the new court will be in English. Actions to revoke a patent are required to be brought in the language in which a patent was prosecuted which in around 80% of cases is English. Litigants normally have a choice of languages to use when enforcing a patent in the UPC, but in almost all cases litigating in English will be an option and in a recent case brought in the Dutch division of the UPC, the court acceded to a defendant’s request to change the language of proceedings from Dutch to English on the grounds that would be of assistance to a defendant based in Spain.
Unfortunately, most English patent solicitors will be locked out from this new court system. The UPC only permits lawyers qualified in the EU to litigate before the court and requires such lawyers to hold EU nationality. Following Brexit and the UK’s departure from the EU, only a handful of English lawyers have the right to litigate in the new court, typically through a fortuitous combination of ancestry and cross-qualification as lawyers in Ireland.
The situation of English solicitors is in marked contrast to that of UK patent attorneys. Virtually all UK patent attorneys are qualified to act before the European Patent Office – a patent granting organization based in Munich and the Hague which as it was established under a treaty which was separate from the founding treaties of the European Union has been unaffected by Brexit. Over 970 UK patent attorneys, representing about a third of patent attorneys based in the UK have registered to act before the UPC on the basis rights to conduct litigation acquired pre-Brexit. Unlike lawyers appearing before the court, there are no restrictions that attorneys must have EU nationality.
In the face of dwindling numbers of patent disputes being heard in the English Patents Court, this cadre of patent attorneys presents English patent solicitors with an opportunity. Historically, patent attorneys have only had a supporting role in English patent litigation with almost all English based litigation being overseen by solicitors specialising in patent law. Patent attorneys have, however, long represented clients in opposition proceedings before the European patent office which enable third parties to challenge the grant of patents. Such opposition proceedings are heavily influenced by civil law approaches to litigation in Europe and share many similarities with revocation proceeding before the UPC. The challenge facing English patent litigators will be how to leverage this cadre of patent attorneys qualified to litigate in the UPC in order to capture a share of UPC litigation market.
The United Nations’ 28th Framework Convention on Climate Change (UNFCCC) Conference of the Parties (COP28) will run from 30 November – 12 December 2023 at Expo City, Dubai, United Arab Emirates (UAE). The conference brings together politicians, activists, citizens, and business representatives from over 190 countries to set the course for the future of the green economy.
According to the United Nations (UN), “climate change is the defining crisis of our time and it is happening even more quickly than we feared.” Therefore, it is no surprise that COP28 is set to be one of the largest and most important international gatherings of 2023, with over 70,000 delegates expected to attend, including heads of state and leaders from 197 countries around the world.
Since the inception of the Paris Agreement at COP21 in 2015, UN member countries have been committed to keeping average global temperature rises around 1.5°C compared to pre-industrial levels and strengthening the world’s ability to adapt to the effects of climate change.
COP28 will present an opportunity to achieve further progress towards the goals of the Paris Agreement. The COP28 agenda will also be focused on four additional ‘paradigm shifts.’
COP28 aims to significantly reduces emissions and builds on the progress made during previous summits. In particular, COP28 aims to accelerate mitigation efforts to develop decarbonisation strategies aligned with the Paris Agreement, implement carbon market and non-market approaches to attract investments, ensuring a faster transition towards a fossil-free energy system.
The COP28 Presidency, in partnership with global state and industry collaborators, is advancing a comprehensive energy plan in alignment with scientific recommendations. This plan includes a focus on tripling renewable energy capacity, reducing oil and gas emissions, transitioning high-emission sectors to low-carbon technologies, promoting fossil-free transportation, and accelerating the phaseout of unabated coal power, while encouraging action, transparency, and accountability from companies and countries in line with global standards.
According to the COP28 Presidency, finance is essential for climate action, especially in developing countries, but the current financial system is inadequate to achieve the Paris Agreement goals, as those will require over $2.4 trillion annually by 2030. COP28 will urge the leaders of the developed countries to fund the Green Climate Fund, double adaptation finance by 2025, and scaleup adaptation efforts.
COP28 will aim to establish a new financial architecture, promoting dialogue on finance principles and reforming international financial institutions. This approach also seeks innovative solutions to mobilise private capital through regulatory reforms and voluntary carbon markets, accelerating climate progress in developing nations.
COP28 will focus on addressing the impacts of climate change by prioritising adaptation, enhancing adaptation finance and ensuring support for those facing severe climate impacts. The conference emphasises a Global Goal on Adaptation (GGA) framework, which aims to promote efforts on nature, food, health, water, and relief, and champions conservation and adaptation, highlighting the roles of women and indigenous peoples, while addressing climate-related humanitarian and security challenges through initiatives like Early Warnings for All and the Risk-informed Early Action Partnership.
COP28 will prioritise inclusivity, collaborating with diverse groups for active participation, emphasising gender balance, and promoting indigenous peoples’ access to finance. The Youth Climate Champion, Minister Shamma Al Mazrui, strengthens youth engagement through initiatives like the International Youth Delegates program, calling for continued support. The COP28 program embraces innovation and inclusivity, addressing various topics, and urges commitment to multilevel partnerships.
COP28 will set the course for the future of the green economy, and the four paradigm shifts will serve as a blueprint for the immediate action that might expect from the leaders attending the conference. We also expect governments to continue to implement local policies to support innovation in cleantech. All solutions and innovative concepts helping to fulfil the green agenda and mitigate climate change should be protected, and the best way to do so is with help of intellectual property rights.
At Mathys & Squire, we work with many cleantech clients on green technology breakthroughs and sustainable solutions. We are pleased to partner with companies and inventors who are addressing climate change and whose initiatives further the objectives set forth by COP28.
We eagerly await the results of the COP28 summit to see how they will influence the future of the green economy.
Data and commentary provided by Mathys & Squire has featured in an article by The Trademark Lawyer and Solicitors Journal, giving an insight into the issues that companies face amidst the recent surge in AI legal cases.
An extended version of the press release is available below.
The surge in new artificial intelligence (AI) legal cases to decide if infringements arise when copyrighted data is used to train AI systems, suggests that intellectual property law will struggle to keep pace with the speed of AI developments, says leading intellectual property law firm, Mathys & Squire.
Companies are increasingly concerned about both the risks of intellectual property infringements and confidentiality issues when using AI. Companies are even urging their advisors, such as law firms and professional services firms, not to input any of their information into AI systems such as large language models (LLMs) amid fears of data leaks.
Lack of clarity on AI related copyright breaches
Mathys & Squire says that, as with the growth of the internet, AI is going to see both the courts and legislation struggle to provide businesses clear direction on rapidly developing law relating to AI.
Clear infringements occur if generative AI systems are directly reproducing copyrighted information. However, it is unclear whether copyright infringements arise when the AI system producing them has been trained on this copyrighted information.
AI LLMs are fed massive amounts of data so that the model can automatically return results, which could be copyrighted material. This is creating confusion for owners of copyrighted material who want to protect their intellectual property rights.
Andrew White, Partner at Mathys & Squire says, “AI is creating a multitude of new challenges and questions in relation to intellectual property. Many legal cases are ongoing as individuals seek clarification on what their rights and responsibilities are. Companies with copyrighted material and AI companies themselves are in urgent need of clarification.”
Recent legal cases regarding AI copyright disputes include:
Some tech firms themselves have already taken action to provide clarity on the issue. Microsoft said it will take legal responsibility if customers get sued for copyright breaches while using its AI Copilot platform. Google has also reassured users of its AI tools on Cloud and Workspace platforms that it will defend them from copyright claims.
Companies fearful of AI data leaks
AI also presents serious potential confidentiality risks to companies. As data is stored in the cloud, data leaks can occur even if companies use their own private AI systems to safeguard against information being shared outside of their organisation.
Italy had previously banned ChatGPT over data protection concerns in April 2023 before reversing its ban later that month. Apple has restricted its employees from using AI tools over fears that confidential data could be leaked to outside sources.
Adds Andrew White, “It is important to have safeguards in place to ensure that confidential information is not input into these AI systems. Given the enormous risks, companies have made formal requests to their professional advisors like law firms and management consultants not to enter any of their information into AI systems.”
High-profile examples show that the entering confidential information into AI can have serious consequences. These include:
