This decision of the European Patent Office (EPO) Boards of Appeal clarifies that the concept of ‘whole range sufficiency’ applies to all types of inventions, not just to fields of chemistry and medical use, and highlights the potential dangers in reaching for too much in broadly claimed mechanical inventions that often encompass technically reasonable embodiments not described.
A fundamental legal requirement for a patent application is to disclose an invention in sufficient detail to enable it to be reproduced by a notional skilled person without undue burden using their common general knowledge (Article 83 EPC). According to established case law, in order to meet the requirements of Article 83 EPC, a detailed description of at least one way of carrying out the invention must be given in the application, but this is sufficient only if it allows the invention to be performed across the whole claim scope (see CLBA II-C 5.2 and 5.4).
Since the application is addressed to a skilled person armed with the common general knowledge in the field, a lot of weight is often given to the skilled person’s knowledge and ability to fill in gaps and missing details in a disclosure, and even to exclude certain embodiments falling with the scope of the claim that make no technical sense, in order to put the invention into practice and meet the requirements of Article 83 EPC (CLBA II-C 4.1). In fact, the EPO explicitly discourages the drafter from describing every little detail of an invention for this reason (see GL Part F-III 1). As such, a sufficiency objection requires there to be serious doubts, substantiated by verifiable facts, that the skilled person would be able to work the invention as claimed.
The sufficiency requirement can often be satisfied by providing a detailed description of a single working embodiment falling within the scope of the claims (which is also a formal description requirement of Rule 43(1)(e) EPC). Indeed, this is often the case for mechanical and electronic-type inventions which are typically defined by concrete structural elements with some specific function(s) that attempt to generalise the teaching in the description. But it may not be the case for certain inventions, such as chemistry and medical use inventions, that cover a broad field and range of embodiments whereby the inherent doubt that the invention can be reproduced over the claim scope is higher. For such broadly claimed inventions, the description may need to go to greater lengths in detailing a series of embodiments covering the “whole range claimed” to satisfy Article 83 EPC (see e.g. T 409/91, reasons 2; T 435/91, reasons 2.2.3; T 862/11, reasons 5.2 (b); T 941/16, reasons 9; all in the field of chemistry). This is even more the case where a claim contains a functional element defining a desired technical effect or result to be achieved, whereby the effect should be plausibly achieved over the whole claim scope to satisfy Article 83 EPC (see GL Part F-III, 12 and CLBA II-C, 6.1).
The concept of ‘whole range sufficiency’ would thus appear to be a matter of settled case law – a fundamental principle applying to any invention irrespective of the technology or how it is claimed. However, in a number of recent EPO case law decisions in the field of mechanics (see e.g. T 2773/18 reasons 3.2; T 500/20 reasons 3.6; T 1983/19 reasons 2.1.3; and T 0155/21 reasons 5.3.3), the Boards have suggested that the concept of whole range sufficiency was developed in the fields of chemistry where a central aspect of the invention usually resides in a range of compositions or other parameter values, and is not necessarily applicable to inventions in other fields such as mechanics that do not involve a range of parameter values or compositions.
In particular, the Board in T 500/20 stated (see reasons 3.6) “In claimed inventions that do not involve a range of parameter values or compositions basing an argument of insufficiency on this approach [the whole range sufficiency approach] is inappropriate and can be rejected offhand for that reason.”
These decisions might therefore throw some uncertainty surrounding how sufficiency is to be assessed for different types of inventions. The question of whether the concept of whole range sufficiency should be limited to any specific technical field is specifically addressed in decision T 0149/21.
T 0149/21 was an appeal against the decision of the Opposition Division to maintain the patent as granted (EP2630545). The patent in suit (EP2630545) relates to a method for reducing the energy consumption of a rolling mill installation and is thus firmly set in the field of mechanics. During the operation of such a plant, there are rolling breaks of the rollers of different lengths, e.g., for a roll change or in case of malfunctions. In the event of unplanned rolling breaks, the system components that are not directly affected by the rolling break (e.g., fume extraction, hydraulic systems, heating, sensors, etc.) are normally not switched off and continue to consume power. The invention is aimed at “maximizing the energy-saving potential of a rolling mill during a break in rolling” by automatically shutting down as many of the system components as possible whose shut-down and re-start time is shorter than the duration of the rolling break.
Claim 1 as granted specified a method including steps of, among other things (paraphrasing):
a. identifying a type of fault that led to an unplanned rolling break and feeding that to a control device, and
b. the control device determining the probable duration of the rolling break based on the identified type of fault.
In the decision under appeal, the Opposition Division concluded that the patent was sufficiently disclosed for a person skilled in the art to carry it out, namely because at least one way of carrying out the invention within the scope of the claims is described. Specifically, in paragraphs [0008] and [0025] of the patent in suit, an embodiment is described in which a ‘roller operator’ manually identifies the type of fault who then inputs this to a control device (c.f. step a). The control device then determines the probable duration of the rolling break (cf. step b) on the basis of a database ‘fault matrix.’
The Board in T 0149/21 disagreed with the Opposition Division. In interpreting the claims (see reasons 2.1-2.2), the Board considered the feature of step (a) to encompass both manual identification (i.e. performed by the roller operator as in paragraphs [0008] and [0025]) and automatic identification of faults. The Board further noted that claim 1 is not limited to any particular type of fault, so the fault in steps (a) and (b) can include previously known faults or unknown faults.
The Board considered, with regards to step (a), that the patent only describes manual fault identification, and the skilled person would not be able to provide for automatic identification only on the basis of his general knowledge. With regards to step (b), in the Board’s view, the determination of a probable duration of the rolling break based on a fault matrix, as set out in paragraph [0025] of the patent in suit, can only be made for faults that are already known (see reasons 2.2). No other ways of determining the duration of the rolling break are described in the patent. Thus, it is not clear how the probable duration of faults that are previously unknown could be determined based on the information in the patent and common general knowledge.
The proprietor had argued (see reasons 3.2 and 3.5 of the decision) that, according to case law, it was sufficient that at least one way of carrying out the invention was shown in order to satisfy Article 83 EPC, and that the requirement of whole range sufficiency was not applicable to the field of mechanical inventions, citing T 2773/18, T 500/20 and T 1983/19. Whether other ‘exotic’ scenarios also fall within the scope of the claim is irrelevant in this context. The proprietor argued that the consideration of all the possible types of faults that might fall within the claim scope would lead to an excessive requirement on the enforceability of Article 83 EPC, and used examples such as a nuclear bomb exploding or an airplane crashing into the rolling mill as unknown fault types causing the rolling break.
However, the Board held that while the indication of one way of carrying out the claimed invention is sufficient to satisfy the description requirement under Rule 42(1)(e) EPC, it is not necessarily sufficient to satisfy Article 83 EPC. According to the settled case law of the Boards of Appeal, the claimed invention must be capable of being carried out over the entire claimed area (see e.g. T 409/91, reasons 2; T 435/91, reasons 2.2.3; T 862/11, reasons 5.2 (b); T 941/16, reasons 9; all in the field of chemistry), and this jurisprudence is usually not limited in any way to the respective subject area. To support this view, the Board cited a large body of case law supporting the application of ‘whole range sufficiency’ to fields outside of chemistry and medical uses, including electrical engineering (see e.g. T 1542/12, reasons 2.1.1; T 2210/16, reasons 3.2; T 1306/17, reasons 4.2), physics (see e.g. T 2305/14, reasons 3.2; T 222/17, reasons 12; T 1921/19, reasons 1.1.3), and mechanics (see e.g. T 1905/10, reasons 1.3.3; T 2431/11 reasons 4.2 and 4.10). Further, the Board noted that the requirement of whole range sufficiency is in line with fundamental legal and political concern that, in principle, the exclusive right conferred by a patent with regards to its claim scope should be limited by the actual contribution to the state of the art (see T 435/91, reasons 2.2.1).
Notably, the Board made a distinction between embodiments falling within the scope of the claims that are ‘technically reasonable’ which the skilled person would objectively understand, and those which are merely ‘theoretically possible.’ The latter, for which the nuclear bomb and plane crash scenarios put forward by the proprietor are clearly examples of, are not a technically sensible and can be ignored for the purposes of Article 83 EPC, whereas the former should be taken into account for the purposes of Article 83 EPC.
In the present case, the embodiments of automatic identification of a fault type and previously unknown fault types are, in the Boards’ view, examples of technically reasonable embodiments falling within the scope of the claims, because the skilled person would be familiar with the possibility of automatically identifying a type of fault in the context of a rolling mill through common general knowledge, and previously unknown faults (new faults) can legitimately occur (see reasons 3.7).
Consequently, the Board held (contrary to the Opposition Division’s view in reasons 4.3 of the contested decision) that claim 1 is not sufficiently disclosed across its whole scope (see reasons 3.10-3.11).
The decision in T 0149/21 clarifies that the concept of whole range sufficiency is not limited in any way to a particular technical field and emphasises that all ‘technically reasonably’ embodiments falling with the entire scope of the claims should be sufficiently disclosed to meet the requirements of Article 83 EPC. Accordingly, care should be taken when drafting applications in all fields of technology to consider all the technically feasible variants and ensure there is sufficient information in the application to put them into practice.
In particular, reaching too far with broadly claimed functional features (so-called ‘free beer’ claims) in the fields of mechanics, electronics and physics, which by design may comprise an indefinite and abstract host of possible alternatives, could be problematic if only one way of carrying out the invention is described. In such cases, a single example may suffice if the patent discloses a technical concept fit for generalisation and a generalisable teaching which makes the host of variants encompassed by the functional definition available to the skilled person (see CLBA II-C 5.4).
Data and commentary provided by Mathys & Squire has featured in an article by Tech.EU and Life Sciences Intellectual Property Review providing an update on the rise of patent applications submitted by universities.
An extended version of the press release is available below.
The UK’s 50 largest universities* filed 433 new patent applications last year**, shows new research from Mathys & Squire, the leading intellectual property law firm, as they increasingly commercialise the output of their research programmes.
Iain Armstrong, Partner at Mathys & Squire, says UK universities have made substantial efforts in recent years to both increase the commercial value of their research work and to protect this IP through patent applications.
The impact of university generated IP has been noticeable in areas such as material science, biotech and pharmaceuticals. For example, the UK’s first approved COVID vaccine was developed at Oxford University.
Largely centered around Cambridge University, Cambridge has become one of Europe’s most successful technology clusters, home to 12 companies valued at more than $1 billion, including pharmaceutical giant, AstraZeneca.
Cambridge University has acted as catalyst for many of these companies, with output either directly based on research produced by the university or in collaboration with research teams. Others are founded or staffed by Cambridge alumni.
The most prolific UK university, in terms of patent filings, last year was the University of Oxford. Oxford University Innovation, who manage the university’s IP, have an admirable track record of successfully launching spinout businesses and attracting investment based on the university’s IP. The university has built up a reputation as a leader in biotechnology and pharmaceuticals***.
Many of the patent applications filed by UK universities are in areas in which technological progress is in high demand. This includes nanotechnology, green technology and artificial intelligence.
Universities in the US still lead the way for IP innovation. The most prolific filer of patent applications last year were Massachusetts Institute of Technology (MIT) and Harvard University, which filed 329 and 247 applications respectively.
Legislation such as the Bayh-Dole Act has helped the US lead the way in patent filings. The act creates an arrangement where the government have a quick route into protecting US technology by giving patent ownership to the university. In turn, the university is incentivised to take full ownership through a slice of royalties for a project it didn’t need to fund****.
Iain Armstrong says the UK Government should consider taking a leaf from the US Government’s book, increasing support for financing IP innovation, taking inspiration from schemes that are available to US academic and research institutions.
Iain Armstrong, says: “The past few decades have seen UK universities progress leaps and bounds in turning their research into intellectual property.”
“UK universities are home to some of the world’s brightest minds but there is clearly more potential to be unlocked. Helping remove some of the red tape and providing much needed funding would go a long way towards helping the UK catch up with the US.”
“Utilising universities’ ability to produce intellectual property and work alongside businesses is something the United States is particularly good at. It wouldn’t hurt for the UK Government to consider taking a leaf from their book.”
*By number of students
**Year end September 30 2022, research used WIPO patentscope
***Oxford University Innovation
****Syracuse University
*Year-end December 31
As of 1 May 2023, there has been a substantial change in the manner in which the compliance period for UK divisional patent applications is determined.
The compliance period defines the deadline for putting a UK patent application in order for allowance – and if a patent application is not in order for allowance by the end of the compliance period, then it is treated as having been refused. In practice, this can result in patent examiners issuing examination reports in a rapid fire manner as the end of the compliance period approaches and applicants needing to file equally rapid fire responses in order to get an application over the line.
The compliance period for an application is calculated as the later of:
(i) four years and six months calculated from the earliest priority date of the application; or (ii) twelve months from the date of the first substantive examination report (for the patent family of that patent application). This period can be extended by two months as of right (upon payment of a small fee), but any further extensions to the compliance period are discretionary.
The compliance period also sets the deadline for filing divisional applications. This deadline for divisional applications is three months before the end of the compliance period – and extending the compliance period also extends this divisional deadline.
Historically, the initial compliance deadline for a divisional application has been set as the compliance period of the parent application from which that divisional is derived. So, if a compliance period was to be extended for a parent application, then any later filed divisional application would commence with this extended compliance period. Therefore, it has been possible to: extend the compliance period of a parent application by two months, file a divisional application with an initial compliance period that is this extended parent compliance period; and then extend the compliance period for that divisional application by another two months. In effect, it has previously been possible to obtain multiple as-of-right extensions to a compliance period by filing divisional applications. This possibility has now been closed.
Specifically, as of 1 May 2023, the initial compliance period deadline for a divisional application will be the same as the un-extended compliance period of the parent application.
The major effect of this change is that more time pressure will be placed on applicants that file divisional applications towards the end of the compliance period. And it will not be possible to file numerous divisional applications using a cascading strategy. Potentially problematically, this could result in applicants needing to file numerous divisional applications before a resolution has been reached on a parent application. The practical effect of this change is that for applications that disclose multiple inventions a suitable divisional strategy should be considered well ahead of the compliance period to ensure that there is enough time to file these divisional applications and also enough time to progress these divisional applications to grant.
Please contact Mathys & Squire if you wish to discuss this change in more detail with a professional representative.
In today’s rapidly evolving job market, the success of individuals and companies alike is heavily reliant on a skilled and adaptable workforce. With technological advancements, shifting industry landscapes, and global economic changes, it is crucial for young professionals to be adequately prepared for the challenges that lie ahead.
Enter Career Ready, a pioneering organisation that is reshaping the way students and graduates approach their career paths. Career Ready is a non-profit organisation dedicated to bridging the gap between education and employment. Founded with a vision to equip young individuals with the knowledge, skills, and confidence necessary to thrive in the professional world, the organisation has become a leading force in career-focused education and work-readiness training.
The core mission of Career Ready is to provide students with invaluable experiences, mentoring opportunities, and exposure to real-world work environments, enabling them to make informed career decisions and excel in their chosen fields. By partnering with educational institutions, businesses, and volunteers, Career Ready fosters a holistic approach to career development that goes beyond traditional academic learning.
Mathys & Squire is proud to partner with Career Ready to support the personal growth and development of students from across the UK. We provide internship opportunities and run training sessions for students interested in learning more about the IP profession. We are also part of a 12-month mentorship programme, in which our colleagues guide their mentees through the early stages of their career journeys. The aim of the experience is to expose these individuals to the working environment, giving them an insight into every facet of the Mathys & Squire business, and the working world.
Masterclasses and shadowing opportunities are present across all departments in an effort to expand the horizons of our interns. Different tasks and activities presented to them will allow our interns to engage with, and understand, the operations of a legal firm, whilst educating them on intellectual property and its importance in fostering innovation across every sector.
“Career Ready internships have proven to be an invaluable experience for both our firm and the talented young individuals we mentor. Through this transformative program, we witness the emergence of a new generation of professionals who possess not only technical expertise but also a deep understanding of the real-world challenges they’ll face in their careers. Investing in these young minds today ensures a brighter future for the entire industry, and that’s why Mathys & Squire is proud to partner with Career Ready.” – Caroline Warren, D&I Partner
We encourage our interns to explore every career path available to them and in turn nurture their personal growth and development.
“My experience at Mathys & Squire has been brilliant. I initially chose to do my internship here because, through my research, I learnt it is one of the best IP firms in the country, which really intrigued me as I’m really interested in IP law. The experience of learning and shadowing different departments was highly informative and a great way to learn why different departments are needed in a firm. The staff has been amazing and helpful as well!” – Britney, summer 2023 intern
“I chose a Career Ready internship to get an insight into the legal sector and experience different types of law. Additionally, I wanted to know the different pathways I could take to become a lawyer. This experience has helped me understand what an IP firm does and the various departments within the firm and what they do behind the scenes for their clients. Furthermore, the culture within the firm is quite diverse and inclusive and allows one to feel more welcomed and comfortable. It has been a very fun experience and probably the most insightful one into the legal sector thus far.” – Mariam, summer 2023 intern
The collaboration between Career Ready and Mathys & Squire exemplifies the power of investing in the workforce of tomorrow. By fostering a culture of learning, mentorship, and hands-on experience, we become instrumental in shaping a future where young professionals are equipped with the skills and confidence to overcome challenges and become innovators and champions in their chosen field.
The advent of social commerce has revolutionised the way we shop, blurring the lines between content creation, entertainment, and consumerism. The explosive growth of TikTok has attracted a reported 1.5 billion user base, which includes content creators, influencers, and entrepreneurs.
The platform’s ease of use and potential for viral success has led to a surge in product promotion and marketing campaigns. TikTok Shop, the retail arm of this social media giant, allows users to discover and buy products directly from the platform. With US$20 billion of expected sales this year alone, TikTok Shop has been hailed as a groundbreaking move in the world of social commerce, streamlining the shopping experience and capitalising on its massive user base.
While this seems like a promising integration of e-commerce and social media, it also brings to light a concerning issue – the proliferation of counterfeit products. It’s important to understand challenges TikTok Shop faces with counterfeits and its implications on intellectual property (IP) rights.
Recent reports have found more and more counterfeit products, ranging from clothing and accessories to gadgets and cosmetics, finding their way onto TikTok through various means. Sellers may use popular creators to endorse their knock-off products, capitalising on their wide reach and influencing power.
Others may subtly promote counterfeit goods through visually appealing and misleading videos, luring unsuspecting users into making purchases they may later regret. This movement has been coined ‘RepTok.’ Despite TikTok’s policies against users posting content featuring counterfeit goods, #RepTok, short for Replica-Tok, is thriving, with upwards of 120 million views on that hashtag alone.
These unauthorised copies of branded products cause harm to both consumers and legitimate brands. So, what are TikTok doing to tackle this?
In the fight against counterfeits, a spokesperson for TikTok advised that they have a dedicated team of IP professionals working with brands, as well as a dedicated IP Protection Centre platform for rights holders. Rights holders can use this platform to submit takedown complaints and track their progress. Merchants found to be selling counterfeit products or infringing IP rights will be penalised or permanently removed from the platform. Sellers may also be required to provide documentation, such as brand authorisation or proof of product authenticity, with respect to their product listings.
The issue of counterfeits on TikTok raises a pressing concern about IP rights. Rights holders should be aware of the risks faced and have a strategy in place to tackle infringement. A clear strategy may protect their brand value from potential dilution, assist in maintaining consumer confidence regarding safety regulations and quality standards and protect against potential loss of revenue, as well as reputational damage caused by inferior counterfeit products.
If you would like to discuss how to protect your brand’s online presence, please contact us to discuss how we may assist.
The UK Government set out plans for artificial intelligence (AI) regulation in a white paper released by the Department for Science, Innovation and Technology earlier this year. With the UK “frequently ranked third in the world” across several measures in the Global AI Index, the UK is positioning itself to become a global leader in AI technologies.
The paper sets out a regulatory framework aimed at driving growth, increasing public trust in AI, and strengthening the UK’s position as global leader in AI.
From the perspective of AI innovators including startups and SMEs, increased regulation might be unwelcome news at first, posing potential threats to their agility and freedom to innovate. However, the white paper recognises the need to take a pro-innovation approach that allows UK-based companies to remain competitive in a global market and incentivises overseas AI businesses to establish themselves in the UK.
The paper recognises that although the use and creation of AI is currently regulated through some existing frameworks, such as the MHRA guidance published in 2022 for AI and software used in medical devices, “AI risks arise across, or in the gaps between, existing regulatory remits.”
In light of the pace at which AI technologies are evolving, the government is not yet proposing new legislation, but is setting out a framework including various support and monitoring functions that in time are likely to be formalised.
Although light on detail at this stage, the proposed framework includes support such as AI testbeds and sandboxes to assist innovators in getting products to market and navigating the regulatory ecosystem, targeted at startups and SMEs in particular. This is in addition to existing tax relief schemes and other support proposed in the UK Government’s digital strategy paper last year.
The pilot sandbox scheme will initially focus on a single industry sector where there is a “high degree of AI investment (…) and appetite for improved collaboration between regulators.” The pilot industry sector has not yet been named, but sectors such as healthcare, fin-tech and automotive seem to be natural candidates, and it will be interesting to see where this initiative is rolled out first.
Although this paper does not directly deal with intellectual property rights for AI technologies, it emphasises that blanket rules will not be made for specific technologies, sectors or applications of AI. Instead, regulation will focus on “the use of AI rather than the technology itself.” Separate guidance is due to be released this summer from the UKIPO regarding the interaction between copyright and generative AI.
Indeed, the proposals and principles set out in this white paper are likely to have wider implications on AI patenting activity. For example, new regulation may present opportunities to solve new problems in innovative technical ways, for example relating to security, safety and explainability.
In addition, through requirements for greater accountability and transparency, we may see more innovators looking to patent their AI technologies if relying on closed-model software or trade secrets/know-how becomes less viable in this field.
Overall, the white paper appears to be positive news for AI innovators and is unlikely to hinder AI patenting activity in the foreseeable future. We look forward to developments in this area, and in particular to how the UK’s approach will align with the more developed EU AI Act proposal.
Videos published on the internet are an increasingly common source of technical information and are used by companies in the same way that marketing literature, user manuals, and educational content have been for some time.
The EPO’s register, and the manner in which evidence is submitted to the EPO, is generally not capable of either receiving video evidence other than by means of a URL.
If decisions of the EPO are to be subject to proper review on appeal, or are to be made properly available to the public, then this problem needs to be solved. The recent update to the EPO Guidelines went some way to address this issue for applications under Examination, but the question of how to deal with it in EPO Oppositions seems to remain open.
The 2023 update to the Guidelines (B-X-11.6 and G-VII-7.5.6) was related to a decision of a Technical Board of Appeal of the EPO in T 3000/19. In that case, the evidence cited by the Examining Division of the EPO in refusing an application was an internet video. The Examining Division cited the URL, gave a screenshot, and quoted some text from the video. They also cited certain video frames by reference to their time stamps. By the time of the appeal, the video in question was no longer available on the internet.
The Board found that the material available on the file “does not provide sufficient evidence to allow the Board to make its own assessment of the relevant evidence.” In explaining that this was unsatisfactory, the Board set out the requirements which should apply to such evidence by reference to the Guidelines of the Committee of Ministers to member states on electronic evidence in civil and administrative proceedings, a publication of the European Commission.
The Board commented that, such evidence “should be collected in an appropriate and secure manner, and submitted to courts using reliable services such as trust services” and using procedures established by member states for the secure seizure and collection of digital evidence.” They also made reference to the need to store such video evidence with standardised metadata and evidence demonstrating when and how it was made available to the public.
Parties wishing to rely on video evidence obtained from the internet, for example in Opposition Proceedings, clearly need to address these issues but the Guidelines do not say how. Opponents should consider creating a secure and verifiable archive of the evidence provided by an internet video disclosure.
They should also ensure that they have some means of verifying that the content of their archive matches the content of the internet video disclosure in case it is later changed or removed from the internet altogether.
According to an announcement this week from the Italian Ministry of Foreign Affairs, agreement has officially been reached to situate a third branch of the Unified Patent Court (UPC) Central Division in Milan. The Milan branch of the Central Division is expected to open by June 2024. This will supplement the two branches in Paris and Munich which opened on 1 June 2023.
Originally the third branch of the UPC Central Division was destined for London, but after the UK withdrew from the UPC system in the wake of Brexit a decision was taken to relocate this branch. Milan has been rumoured to be the front-runner for several years, but negotiations seem to have been protracted. Notably, the announcement from the Italian government does not confirm which technical areas will fall within the competence of the new Milanese branch. London was originally to have competence for cases falling under IPC classifications A and C, relating broadly to chemistry, materials, life sciences and pharmaceuticals. For the time being these have been divided between Paris and Munich, and it is rumoured that those two branches might be seeking to hold on to some of that work even after Milan opens its doors. It is possible that discussions in that respect may be ongoing.
The Central Division of the UPC is the division with competence by default for actions concerning patent revocation and declarations of non-infringement. Other actions including infringement actions and applications for preliminary injunctions are, by default, the competence of the UPC’s Local and Regional Divisions. However, the Central Division has competence for these types of action in some circumstances, for example if the defendant is located in a country which is not party to the UPC Agreement, or if there is no local or regional division with competence to hear the case in the relevant UPC country/countries.
Each of Paris, Munich and Milan also already hosts a local division of the UPC, therefore the addition of a branch of the Central Division is likely to cement Milan’s position as a major venue for patent litigation under the new system.
Mathys & Squire is delighted to be ranked in the latest edition of the IAM Patent 1000: The World’s Leading Patent Professionals 2023 directory – the definitive ‘go-to’ resource for those seeking to identify world-class, private practice patent expertise. IAM undertakes exhaustive qualitative research, identifying top firms and individuals based on their depth of expertise, market presence and sophistication of work. Only those individuals who stand out for their exceptional skill sets and profound insights into patent matters feature in the IAM Patent 1000.
Aside from our firm ranking, 13 of our Mathys & Squire attorneys have been recognised as Recommended Individuals: Partners Paul Cozens, Martin MacLean, Alan MacDougall, Jane Clark, Chris Hamer, Andrew White, Dani Kramer, Anna Gregson, Craig Titmus, as well as James Pitchford. Additionally, Partners Stephen Garner, Juliet Redhouse and Michael Stott have been newly recommended in the guide.
Our attorneys have been praised as “proactive, responsive and accurate. Their communications are clear and easy to understand. The service they provide has been timely, accurate, helpful and courteous, and we have never had any issues with them. They have strong technical capabilities, and they make sure they have the right people doing the work. Their expertise, meticulous attention to detail, follow through and creativity always get positive results”. We are pleased that Mathys & Squire is recommended as “a top choice for prosecution across all manner of technical areas.”
The UK Government announced on 19 May 2023 its long-awaited national semiconductor strategy, setting out a 20-year plan to help secure and grow the UK’s world leading expertise in semiconductor technologies, whilst also strengthening resilience to supply chain disruption and protecting national security.
The national strategy recognises the importance of semiconductors to modern technologies of today and the future, and to the growth of the UK economy. The global semiconductor market, which was valued at $601.7 billion in 2022, is expected to grow by 6% to 8% a year up to 2030. The potential for growth in this industry is therefore huge and the government’s strategy is to bolster the UK’s position in the global semiconductor market by maintaining and building on its strengths.
The national strategy identifies the UK’s strategic and longstanding strengths in compound semiconductors, semiconductor chip design and intellectual property (IP), as well as world-leading research and development (R&D) supported by universities, which will play an important role in the development of new semiconductor technologies. Emphasis is placed on securing the UK an advantage in technologies such as artificial intelligence (AI), high performance computers, quantum and cyber, to drive economic growth and future discoveries.
The strategy sets out a number of ambitious initiatives to help secure and grow the UK semiconductor industry, including a commitment to invest up to £1 billion in the sector over the next 10 years, with £200 million earmarked for the 2023-2025 period. The funding aims to, among other things, help deliver a new National Semiconductor Infrastructure Initiative and a specialist incubator pilot for semiconductor startups to improve access to infrastructure and facilities, as well as boost UK commercial innovation for SMEs to help make them seem more attractive to investors, and help new products get from lab to market faster than ever.
The strategy also involves a commitment to strengthen existing collaborations with international partners, such as Japan, South Korea and the US, to help develop skills and capabilities in new areas and improve supply chain resilience. The announcement is timely and comes as other tech ‘superpowers’ including the US, China, Japan and the EU are investing heavily in maintaining their global position in the semiconductor market.
A key takeaway is that supporting further research, innovation and commercialisation in the UK semiconductor sector is central to the government’s plan for growing the industry and the economy.
Innovation naturally leads to the generation of IP, and patents are increasingly being used as an indicator of innovation activity. The UK is currently eighth globally and third in Europe for the number of semiconductor international patent families, behind Germany and France. We expect this to change in the coming years as the success of the strategy should, in part, be reflected in a rise in the number of patent filings on semiconductor technologies.
Although perhaps not as much funding as some might have hoped for, the government’s national semiconductor strategy comes as a welcome boost to the UK’s semiconductor industry.
