Commentary by Partner Rebecca Tew and Managing Associate Adam Gilbertson has been featured in The World Intellectual Property Review and The Patent Lawyer Magazine as they discuss the rise in global patent filings for footwear inventions and Nike’s leadership in IP activity.
Read the extended press release below.
Nike is leading the way with global patent filings for footwear with approximately 250 applications published in the 12 months to June 30 2024 alone* – almost 100 more for the same period than all of its major competitors combined – as the world’s biggest shoe manufacturers compete in a ‘running shoe arms race’, says intellectual property law firm Mathys & Squire.
Nike’s nearest competitor for numbers of footwear patent filings is traditional German rival Adidas, with 37 patent applications publishing in the past 12 months*, amounting to just 15% of Nike’s total (see graph below).
The battle to develop and patent new technology for elite running shoes was triggered in 2017 by the launch of Nike’s first Vaporfly shoe, featuring a full-length carbon fibre plate for increased ‘rebound’ and efficiency when running, producing remarkable yet controversial results.
The resulting development of new shoe technologies has been credited with cutting the men’s marathon record by two minutes and the women’s marathon record by seven minutes since 2017.
The ‘running shoe arms race’ has heated up in recent years, as new entrants to the market, like Li-Ning and Xtep, are putting pressure on the established leaders.
This summer’s Olympic Games saw Nike competing with traditional rivals Adidas, Asics, New Balance and Puma to supply the most advanced shoes to athletes in events such as the marathon. However, this year’s Games also saw less-established brands like Swiss shoemaker On as well as Chinese manufacturers Li-Ning and Xtep supply high-profile runners. Both Chinese challenger brands had runners finish in the top ten of the men’s marathon in Paris in April 2024.
Rebecca Tew, Partner at Mathys & Squire, comments: “This may be the golden age of running shoe innovation.”
Adam Gilbertson, Managing Associate at Mathys & Squire, comments “The right shoe can now deliver a major step forward in a runner’s personal best. The introduction of carbon fibre plates and 40-millimetre foam outsoles has been a game-changer for runners.”
“Established manufactures like Nike have been patenting their shoe technologies for years, but newcomers to the market making these big innovations in running shoes should make sure that their investment in intellectual property is protected and they have a clear IP strategy. What can be patented should be patented in key territories to help prevent competitors copying key technology.”
Rebecca Tew adds that the rise of new running shoe technology has already started to generate patent disputes between footwear manufacturers. US-based running shoemaker Brooks recently sued German competitor Puma for patent infringement in the US, the latest development in a long-running intellectual property dispute between the two companies.
Patent applications for footwear inventions in the last 12 months include:
Number of global patent applications for footwear inventions published in the past year – Nike is by far the most active patent filer
* Source: World Intellectual Property Organisation
As we draw to the end of another successful working year at Mathys & Squire, it is appropriate to take stock of our achievements throughout 2024.
It is a privilege to work with some of the brightest minds within the industry here at Mathys & Squire, and it has therefore been a pleasure to see our staff and partners recognised as IAM Strategy 300: Global Leaders, Managing IP: IP Stars, Managing IP: Rising STARS, The Legal 500: Recommended Individuals, IAM Patent 1000: The World’s Leading Patent Professionals and WTR 1000: Recommended Individuals. Our team is dedicated to achieving the very best for our clients, and it has been great to see our hard work and expertise recognised in this way. Indeed, this dedication has found considerable success this year in terms of a significant number of new clients.
This past year we have also celebrated many personal milestones in our team, including the promotions of Samantha Moodie, Edd Cavanna and Laura Clews into the partnership. Further, Alex Elder, Adam Gilbertson, Lionel Newton, Oliver Parish and Leonard Wright were promoted to Managing Associates.
As we continue to grow, we have welcomed many newcomers to the team. Some of those joining this year include Partner Matthias Brittinger, Managing Associates Chloe Flower and Markus Von Rudno, Associates Danielle Champagne, Emma Pallister and Greg Jones, and Technical Assistants Nathalie Richards, Alícia João, Adrian Salt, Thomas Mead, Sophie Wilson, Daniel Speed, Alexander Osborne, Craig MacGregor-Chatwin and Daniyal Khan. It is a pleasure to take on so many new joiners this year, and we look forward to growing our team and welcoming even more staff in 2025.
We have shown once again the excellence of our internal work processes and management systems through the achievement – for the 8th consecutive year – of our ISO 9001 & 14001 certifications.
Within our community, it has been great to give back, particularly through the charitable donations of the firm. We are pleased to share that we have raised over £3,300 through fundraising and match funding, with Southwark Food Bank (an initiative led by Technical Assistant Nathalie Richards), Movember and Macmillan Cancer Support a selection of the charities that have been positively impacted by our donations.
We have also invested £22,000 in improving diversity, inclusion, social mobility and wellbeing within the IP industry. Through our continued partnership with Career Ready, a non-profit organisation dedicated to bridging the gap between education and employment, we have a 12-month mentorship programme in which our colleagues guide their mentees through the early stages of their career journeys. We have also sponsored two students to go through the In2STEM programme led by In2Science, an initiative which encourages the pursuit of science, technology, engineering and maths based employment by increasing accessibility in these sectors. Finally, we have signed the ’Leaders’ Pledge’ of IP inclusive to underline our genuine commitment to enact positive change within our industry. This includes signatures from Paul Cozens, Caroline Warren and Alan MacDougall.
This year more than ever, we have seen the rewards of our focus on ensuring that our values are at the forefront of all that we do. We strive to ensure that we are Better Together by treating everyone fairly, encouraging diversity, and collaborating effectively within and across our various areas. And by Empowering one another there is always a wide breadth of opportunities for positive change, personal development and progress. The very bedrock of Mathys & Squire is our Clients First approach, upon which our best in class technical, legal and professional expertise is founded. We are indeed fortunate to have such an exceptionally talented team at Mathys & Squire.
Reflecting upon what the firm has achieved this year fills us with an immense sense of pride. Now, looking forward to 2025, we can be more than confident that we will bring this same strength to the new year – a year that marks no less than the 115th year anniversary of Mathys & Squire.
Best Wishes,
Mathys & Squire Managing Partners
In the UK, it is estimated that 100,000 people suffer from strokes each year, equivalent to one stroke every five minutes. Research from the NHS demonstrates the life-changing aftermath they can have, with over 50% of survivors affected by a long-term disability.
Time is a crucial factor for preventing enduring symptoms as it is estimated that a patient loses 2 million brain cells every minute during a stroke. With the devasting impacts of this disease clear, it is not surprising that innovative technologies are being sought to help NHS staff and stroke centres decrease their response time and improve patient outcomes.
The Brainomix 360 Stroke AI tool is a fantastic example of how innovative technologies can unlock improved treatment delivery in the health care sector.
Brainomix launched as a spin-out from the preclinical stroke lab at the University of Oxford in 2010. Their advanced AI algorithms assist in the diagnosis and understanding of each patient’s condition by applying proprietary image processing techniques to brain scans to provide real-time interpretation, enabling more patients to get the right treatment at the right time.
For the NHS, the benefits unlocked by the Brainomix 360 Stroke technology have been vital.
Firstly, analysis of the impact of Brainomix’s 360 Stroke AI tool within the NHS demonstrated a 50 minute reduction in medical treatment time. Especially important in the field of stroke care, reducing the time taken to analyse and interpret test results enables the appropriate treatment for each patient to be identified and delivered at a much faster rate. Not only can AI technologies help in the display and interpretation of results but, as highlighted by David Hargroves (NHS England’s National Clinical Director for Stroke), it can help the confidence of NHS staff in supporting clinical decisions made in a high intensity, time pressured environment.
Secondly, the use of AI has enabled an increase in patient treatment by mechanical thrombectomy (MT). Mechanical thrombectomy is a time-critical intervention which helps patients by reopening a blocked blood vessel in the brain, significantly reducing the risk of long-term stroke impacts. As a result of rolling out the Brainomix 360 Stroke AI tool, it was demonstrated that patients were 70% more likely to receive mechanical thrombectomy (MT) than before.
In addition, through a faster understanding of the need of each patient, communication between hospitals has strengthened. As each patient is promptly assessed, they can be appropriately transferred, getting each patient the right help in the right location with ease.
Today, every stroke centre in England (107 in total) has now rolled out the use of AI in their practice, with research suggesting it now assists 80,000 people who have a stroke every year.
The adoption of innovative technologies in the field of stroke treatment has already demonstrated its potential for meaningful impact, greatly improving patient outcomes and streamlining the delivery of treatment. Yet, there still exists huge opportunity for AI technologies to revolutionise the delivery of medical treatment in the healthcare sector.
Mathys & Squire is proud to be working with Brainomix in the pursuit of protecting their innovative platforms and proprietary technologies.
If you have any questions about pursing patent protection for AI-based technologies in the healthcare sector, please reach out to a member of our team.
Jessie Harrison – Associate | [email protected]
We are delighted to announce that we have successfully passed the ISO 9001 & 14001 audit for the 8th year.
ISO certifications are led by the British Assessment Bureau in order to assess and examine businesses, showcasing their dedication to excellence in work processes and management systems.
Our first certification, Quality Assurance (ISO 9001), demonstrates how the firm meets the globally recognised standards, showing our commitment in providing a high level of customer service, delivering consistent performance and continuously improving.
The second certification, Environmental Management (ISO 14001), recognises our commitment to improving environmental performance through efficient use of resources and reduction of waste. From this, it is clear we are taking meaningful steps forward to reducing our carbon footprint.
We are proud to be an environmentally aware firm, and are pleased to be able to formalise our progress and gain recognition for our commitment to delivering a first-class service to our clients.
To find out more about ISO 9001 and ISO 14001 click here.
Status Quo
On 18 November 2024 the new EU Design regime was published in the Official Journal as Regulation (EU) 2024/2822 and Directive (EU) 2024/2823, meaning the new regime will enter into force on 10 December 2024.
Regulation (EU) 2024/2822 will be applicable from 1 May 2025 and member states of the EU have until December 2027 to make necessary changes to national law to implement the Directive. However, what are these changes? And how do they account for 21st century?
Under the old regime (Regulation (EC) No 6/2002) an EU Design can be obtained for:
“the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation”; Article 3(a).
And a “product” is defined as:
“any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs”; Article 3(b).
Notably, EU designs (save for graphical symbols and typographical typefaces) in the original regulation were directed toward physical objects that one can feel and touch. Under this regime, while redress can be obtained for the sale of, for example, counterfeit Louis Vuitton handbags, their representation on a virtual reality video game without permission is, for want of a better phrase, fair game – unless a trademark is also being infringed of course!
The current regime thus means the world of video games, and the metaverse in general, is at risk of becoming like the wild-west, with proprietors of design rights having little control over how their designs are used in the digital world.
Welcome to the 21st Century
As of 10 December 2024, a welcome change to EU design law will come into force that will help to address this issue. Under the new regulation (Regulation (EU) 2024/2822) an EU Design can be obtained for:
“the appearance of the whole or a part of a product resulting from the features, in particular the lines, contours, colours, shape, texture and/or materials, of the product itself and/or of its decoration, including the movement, transition or any other sort of animation of those features”; Article 3(1).
And a “product” will be defined as:
“any industrial or handicraft item, other than a computer program, regardless of whether it is embodied in a physical object or materialises in a non-physical form […]”; Article 3(2).
meaning digital designs, either static or animated, will be protectable under EU law – it looks like the Sheriff may be coming to town in the wild-west of the metaverse!
Infringing in the Metaverse
Once the changes are implemented, EU design proprietors will be able to take action against anyone who infringes their registered designs irrespective of whether the design is infringed by a physical product that you can touch, or by a static or animated virtual representation in the metaverse.
For example, once implemented, someone will infringe a registered design if they are “making, offering, placing on the market or using a product in which the design is incorporated or to which the design is applied” (Article 19 2(a)) regardless of whether that product is in a physical or a virtual form. In other words, digital products (e.g., a digital representation of a Louis Vuitton handbag, a Jaguar car, etc.) that can be made, sold, and/or bought in a virtual reality environment may be considered infringing articles.
This does give rise to several questions about, for example: who may be considered an infringer? What does and does not constitute an infringing act? Where geographically an alleged infringement may be considered to have occurred?
For example, if an end user of a virtual reality racing game is given the capability to design their own car and sell that car for virtual or real currency to other users around the world, could the provider of the virtual reality platform itself be considered to be infringers if the car designed by the end user incorporates a registered design of e.g., a vehicle manufacturer?
Does every instantiation of the virtual vehicle on the respective screen of a different end user – or only the storage of the representation on the server – constitute the ‘making’ of an infringing product within the meaning of the amended regulation? Similarly, even if the virtual vehicle is being displayed on the screen of an end user in a country covered by the regulation, if the server is in a country that is not covered does that still represent an infringement?
Infringing by floppy disc, USB stick, and email…
As well as maintaining the infringing acts that already exist in EU design law, in another nod toward the development of 21st century tech, the new regulation will also introduce the infringing act of “creating, downloading, copying and sharing or distributing to others any medium or software which records the design for the purpose of enabling a product…to be made”; Article 19 2(d).
This change has been introduced to protect against the creation of infringing articles by technologies such as 3D printing by discouraging, for example, the distribution of CAD files that record a design and which can be used to manufacture an infringing product by e.g., a 3D printer.
Whilst this appears to be directed primarily at the manufacture of physical products, it does raise some interesting questions in the context of the other changes to the regulations mentioned above.
Take the example of the virtual car given above. Even though the provider of the virtual reality platform may have no direct knowledge of the creation of the infringing car design by an individual user, the platform will naturally store that design and distribute it to the screens of other users. Would this mean that the platform provider was guilty of the new infringing act of “creating, downloading, copying and sharing or distributing to others any medium or software which records the design for the purpose of enabling a product…to be made”?
As it stands the new regulation is not 100 % clear on this issue and needs interpretation – ultimately the courts will have to decide in test cases.
But what about the UK?
Since Brexit, Community (EU) Designs no longer apply to the UK, and EU regulations and directives will have no effect on design law in the UK. As such, design protection in UK and the EU are about to diverge … and not in a good way. As things stand, in the UK design protection will not be available for digital designs, and products created in virtual video games sold in the UK will not be infringing products!
With respect to virtual reality worlds, the divergence between the UK and the EU will create quite complex and nuanced issues. For example, if the virtual reality world is maintained by a UK company on a server in the UK and provided to end users in the EU, will a proprietor be able to enforce an EU registered design against the UK company? Possibly not…
The UK Government will therefore need to decide whether they wish to harmonise UK design law with the new EU design regime to bring the UK into the 21st century, and avoid the UK becoming a haven for possible infringers of EU designs in the digital world by becoming the new home of servers hosting digital platforms (presuming the servers hosting digital platforms are deemed not to infringe if they are outside the jurisdiction of the EU).
Looking for design protection in the metaverse? Contact us to discuss.
Jeremy Smith – Partner | [email protected]
Christopher Ashcroft – Associate | [email protected]
Four Mathys & Squire Partners, Anna Gregson, Dani Kramer, Sean Leach, and Martin MacLean, have been recognised in the 2025 edition of IAM Strategy 300 Global Leaders.
The guide serves as a platform to showcase the leading experts in the field of intellectual property (IP). Earning a place in the prestigious IAM Strategy 300 Global Leaders reflects a professional’s exceptional strategic expertise in IP, as recognised by peers from a range of sectors.
IAM says: Anna Gregson is a dedicated and client-orientated expert who is deeply committed to both intellectual property and people. She obtains win-win solutions to any patent issue and achieves them about with great integrity and skill.
Read Anna’s full interview here.
IAM says: Dani Kramer consistently delivers exceptional IP work, whether its drafting ironclad files or strategically managing portfolios. As a true leader, he inspires and uplifts those around him, managing his team with excellence.
Read Dani’s full interview here.
IAM says: Sean Leach stands out for his enthusiasm for technology and foresight regarding the use of IP for business growth. He is a strategic planner with a thorough grasp of the competitive IP landscape and current innovation trends.
Read Sean’s full interview here.
IAM says: Recognised in the market as “an exceptional patent attorney who shares his expertise with ease2, Martin MacLean is highly adept at addressing the most urgent IP issues and he effortlessly manages intricate technical aspects in tricky business plans.
Read Martin’s full interview here.
We would like to express our thanks to every client, contact, and peer who dedicated their time to engage in the research process.
The full 2025 edition of the guide is available here.
The UK Intellectual Property Office has recently launched a new awareness campaign “Fake Always Breaks” to highlight the dangers of counterfeit vehicle parts, the IPO defining such parts as ‘unauthorised copies of a genuine branded part’ whether that part is an original manufacturer or aftermarket part.
The campaign targets the ever-growing industry of counterfeit automotive parts by highlighting that fake automotive parts are more likely to fail in use and offer poorer performance than genuine parts, posing an increased risk to vehicle occupants and other road users alike. Particularly concerning are large numbers of counterfeit safety-critical components such as brake parts, airbags, wheels, and tyres. A recent East London operation organised by the City of London Intellectual Property Crime Unit resulted in the seizure of 500 counterfeit airbags, highlighting the prominence of this issue.
The scale of the counterfeit automotive parts market was brought to light by research conducted by the Organisation for Economic Co-operation and Development (OECD) in 2016 which estimated that there were around £1Bn of counterfeit parts imported into the UK in that year. Whilst it may be thought that counterfeit parts are primarily sold to deceive the user, a survey by the IPO revealed that 58% of respondents who had purchased a counterfeit part had done so knowingly, with lower cost and no discernible difference in appearance being cited by significant (31% and 34% respectively) portions of these knowing buyers.
The dangers of such counterfeit goods are apparent.
Tyres are the only contact a road vehicle has with the road and as such must transmit the huge cornering and stopping forces associated with sudden manoeuvres and emergency braking. Poor quality rubber or incorrectly sized tyres can not only increase braking distances and reduce grip, but also change the balance of a vehicle whilst stopping – potentially increasing the likelihood of an uncontrollable skid. To this end, some manufacturers (for example Porsche™) have even gone as far as to work with tyre manufacturers to produce specific compounds to suit the characteristics of their cars (in this case the N-rated tyre), highlighting just how essential the use of real components is.
There is also a financial and convenience cost associated with using counterfeit parts. “Buy cheap buy twice” is a common proverb in the automotive world where real parts are specifically refined to improve their lifetime and performance. Examples include spark plugs in petrol engines and headlight bulbs – a failure of either not only requires purchasing an additional part but a fault is most likely to occur whilst the vehicle is being driven, causing a delay and a potentially hazardous break-down for the user.
Intellectual property rights play a key role in preventing counterfeit automotive parts from entering the UK market. Patents protect the underlying technical aspects of an invention, trademarks protect against posing items as being from another manufacturer or seller, whilst design rights protect the look and appearance of parts. If in force, these rights can allow manufacturers to prevent the importation and manufacture of counterfeit parts, thereby ensuring the parts do not pose a risk to road users.
To that end, the IPO is keen to raise awareness of the risks associated with IP crime and infringement as part of the government’s Counter-Infringement Strategy (2022-2027). This strategy aims to make the UK an inhospitable environment for deliberate infringement, prevent people from choosing to infringe, and to enable law enforcement partners to effectively pursue and tackle IP crime and infringement.
As a more immediate solution, parts that may be counterfeit can be reported locally to the Chartered Trading Standards Institute or anomalously to Crimestoppers.
Commentary by Partner Edd Cavanna has been featured in Law360, World Intellectual Property Review, The Register and Communications Today discussing the global increase of semiconductor patent applications following the growth of the AI sector.
Background
There has been a 22% increase in global semiconductor patents filed, rising from 66,416 in 2022/3* to 80,892 in 2023/4 (year-end March 31), shows new research by Mathys & Squire, the leading intellectual property law firm.
Dr Edd Cavanna, partner at Mathys & Squire, says the rise in new inventions in the sector is partly being driven by the boom in the AI sector which has dramatically increased the market cap of chip companies such as Taiwan Semiconductor Manufacturing.
Dr Cavanna says: “Gen-AI is the most recent technology that is spurring R&D in the semiconductor industry and leading to an associated rise in patent applications.”
Chinese patents up 42% as domestic industry responds to US export restrictions of some semiconductors
Global semiconductor patent applications filed in China have risen 42% to 46,591 in 2023/4, up from 32,840 the year before.
The sharp uptick in Chinese applications is in keeping with a general trend recently of strong growth and large filing numbers. In contrast, new US patent application filings have remained reasonably steady over the past few years.
Dr Cavanna says: “This is likely an indication that the rivalry between US and China in the semiconductor patent space is heating up.”
Export restrictions on some semiconductors from the US to China and concerns that more export restrictions could be announced in the future may have encouraged more investment and R&D from the Chinese semiconductor industry.
The Chinese government has previously called for China to ‘step up’ progress in the innovation of key technologies, including semiconductors as well as AI research which depends heavily on semiconductor technology.
Dr Cavanna says: “The massive rise in semiconductor patent applications in China also shows a vote of confidence amongst the semiconductor industry in China as a market for semiconductors.”
In the US the Inflation Reduction Act (IRA) may also have helped trigger more R&D in the sector. The IRA provides substantial financial incentives, running into billions of dollars in subsidies, to chip manufacturers to manufacture more semiconductors in the US. That funding may be helping more R&D in the sector. Semiconductor patents in the US have risen 9% to 21,269 in 2023/4.
Export restrictions have also led to an increase in chip manufacturing from foreign firms in the US. For example Taiwan Semiconductor Manufacturing Co, one of the largest manufacturer of chips, has undertaken an unprecedented investment in constructing an Arizona plant that reportedly rivals the productivity of its plants in Taiwan.
There has been a 22% rise in patents applications for semiconductors from 2022/3 to 2023/4
* Applications filed in the year ending March 31, Source: World Intellectual Property Organization
Mathys & Squire have ranked in the 2025 Chambers and Partners UK Legal Guide, which acknowledges some of the top ranked law firms and lawyers each year. The research analysts obtain information through one-to-one interviews and investigation.
We are delighted to announce that Mathys & Squire have maintained our ranking in the Chambers and Partners 2025 guide.
Chambers state:
“The Mathys & Squire team are able to handle complex and sophisticated matters with extreme competence and professionalism in a timely manner.”
“Mathys & Squire are always responsive and apply very high standards to get to the final product. They are nothing short of outstanding.”
“Mathys & Squire combines good technical patent work with pragmatism and successfully leverages technical and industry knowledge.”
Amongst the team, Partner Martin Maclean has also been ranked as a Band 1 Patent Attorney, acknowledged for his work as an “outstanding patent attorney.”
For more information on the Mathys & Squire rankings, visit the Chambers and Partners website here.
Managing IP have released their guide for the 2024 IP Rising Stars, which recognises the best up-and-coming practitioners across several IP areas and more than 50 jurisdictions. Each year, the research analysts obtain information through firm submissions, research data and feedback to identify the IP Rising Stars.
We are delighted to announce that Partners Edd Cavanna and Max Thoma and Managing Associate Harry Rowe have been named as 2024 IP Rising Stars.
Alongside IP STARS, Managing IP annually identifies professionals who have demonstrated excellent practice on behalf of their firm, making it a commendable award.
For more information on the Mathys & Squire rankings, visit the IP Stars website here.