The European Patent Office (EPO) has just published the new edition of their Guidelines for Examination that will come into effect from 1^st November 2018.

The Guidelines for Examination give instructions on the practice and procedure to be followed in the various aspects of the examination of European applications and patents in accordance with the European Patent Convention and its Implementing Regulations and is supposed to be followed by all European Examiners. Any changes to these Guidelines can therefore impact the action and conduct of Examiners in Europe. Key changes are outlined below.

Guideline changes

Alongside re-written sections on unity and a move towards more definitive language e,g. “should” changing to “is”, “must” and “needs to”, the Guidelines provide clarity on ongoing the question: what is technical with regards to computer-implemented inventions?

Perhaps most relevant to those working with AI and computer-implemented inventions is the creation of entirely new sections directed at, for example:

• cases where the invention is realised in a distributed computing environment;
• mathematical methods;
• artificial intelligence and machine learning;
• claims directed to methods of simulation, design or modelling; and
• programs for computers.

AI and Machine Learning

The entirely new section on AI and machine learning explains how AI and machine learning find applications in various fields of technology and includes patentable examples such as the use of a neural network for identifying irregular heartbeats. While the new section does list some exceptions to what might be considered technical (for example the classification of text documents solely in respect of their textual content), encouragingly it does indicate that “where a classification method serves a technical purpose, the steps of generating the training set and training the classifier may also contribute to the technical character of the invention, if they support achieving that technical purpose”. This suggests that claims directed to methods of training AI, and datasets for use in such training, are patentable. This may have important implications for those working, for example, in the field of drug discovery.

The addition of the new section on AI and machine learning appears to follow in the wake of the EPO’s first conference on patenting AI nheld in May 2018 where the challenges and opportunities of patenting AI were discussed. The amendments to the guidelines to include this entirely new section appear to be indicative of a more favourable approach to AI being adopted by the EPO, in line with the remarks of Grant Philpott, the EPO’s chief operating officer for ICT, when he highlighted that the patent system needed to work very hard to ensure
it remains an opportunity for innovation in AI.

Mathematical Methods

In particular, the new section on mathematical methods provides a number of helpful examples of technical purposes which may be served by a mathematical method to help support the presence of an inventive step. These include:

• separation of sources in speech signals; speech recognition, e.g. mapping a speech input to a text output;
• encoding data for reliable and/or efficient transmission or storage (and corresponding decoding), e.g. error-correction coding of data for transmission over a noisy channel, compression of audio, image, video or sensor data;
• encrypting/decrypting or signing electronic communications; generating keys in an RSA cryptographic system;
• optimising load distribution in a computer network;
• determining the energy expenditure of a subject by processing data obtained from physiological sensors; deriving the body temperature of a subject from data obtained from an ear temperature detector;
• providing a genotype estimate based on an analysis of DNA samples, as well as providing a confidence interval for this estimate so as to quantify its reliability; and
• providing a medical diagnosis by an automated system processing physiological measurements.

Similarities to the US

In some ways the inclusion of such examples in the EPO Guidelines is similar to the practice of the US Patent and Trademark Office (USPTO) issuing examples for evaluating claims for patent subject matter eligibility under 35 U.S.C. 101.  Many US patent practitioners working in this technical sphere already work to draft and prosecute their applications so that, at least in the minds of the Examiners, their patent applications will fall within one of these safe harbours. With the issuance of these new examples in the EPO Guidelines for examination, perhaps we will see the same being done by European patent attorneys.

What this means for Innovators

Whether these changes to the EPO Guidelines will make patenting AI and computer-implemented inventions as such easier in Europe is difficult to say yet.  At the very least, the changes should make prosecution of patent applications in these areas more predictable. Therefore it’s best to seek advice from experienced European patent attorneys at an early stage, so they can help draft and prosecute patent applications in these technical areas in a manner that will navigate these safe harbours and improve the prospects of obtaining patent protection in Europe.

This article was first published in Intellectual Property Magazine. 

Additional commentary from Andrew White is also featured in Global Data Review.

To discuss protecting the IP in your AI or other technical innovation, please contact our IT&E team today.

On Thursday 25th October, the CJEU delivered a decision that puts beyond doubt, for the foreseeable future, that the duration of patent protection for medical devices cannot be extended by use of a Supplementary Protection Certificate (SPC).

The SPC system was introduced across Europe in the 1990s to enable the term of protection for pharmaceutical products to be extended by up to 5 years if there has been a delay in getting the product to market due to the marketing authorisation process. While the regulations were originally intended to cover only pharmaceutical products, there has been pressure over recent years to extend the scope of SPCs to medical devices, which can also face significant delays in CE approval, particularly when the device is provided in combination with a drug product.

However, this decision from the CJEU now puts beyond doubt any question of medical devices enjoying the same extended protection as pharmaceutical products under the current regulations.

While it seems unlikely that there will be any change in European regulations in the near future, this is one area where there is expected to be pressure on the UK after Brexit to provide more favourable extended protection provisions, so there may be further developments around the corner.

To learn more about SPCs, Brexit affecting your intellectual property or protecting your innovation, please contact Caroline Warren. 

Although there are some similarities between the way that US and European authorities uphold antibody patents, there are also some important differences.

Mathys & Squire partner, Monika Rai and managing associate, Juliet Redhouse, explore those differences in September’s edition of BioPharm. Their article outlines the European Patent Office’s approach to antibodies, including such variations as single-chain variable fragments (scFvs) and single-domain antibodies.

To download and read the article in full, please click here. To discuss patenting antibodies further, please contact Monika Rai or Juliet Redhouse.

Juliet has experience advising on supplementary protection certificates (SPCs) in multiple European jurisdictions and handles a wide range of subject matter in the fields of molecular biology, pharmaceuticals and biotechnology. She also has particular experience in the areas of antibody technology, vaccine technology, protein and peptide based medicines, recombinant gene expression, diagnostic assays and medical devices.

Following the launch of UK-US Science and Technology Agreement in September 2017 – aimed at strengthening research collaboration between the UK and the US – UK Science Minister Sam Gyimah has visited the US and announced further progress with research partnerships in medical technology.

The Minister confirmed that UK experts from the Life Sciences sector will visit Texas in November 2018 on a “fact-finding” mission, to investigate opportunities for innovation and to explore access to US markets for UK innovators.

17% of investment in UK research and development is financed from abroad. In view of this, and given the UK’s imminent departure from the EU, the UK Government is committed to keeping the UK connected to scientific advances being made around the world.

The recently agreed landmark ‘BioBridge’ collaboration between The Texas Medical Centre (TMC) and the UK Department for International Trade (DIT) is one example of such commitment.

As part of this  BioBridge collaboration, UK Life Sciences businesses will be able to be located at the TMC, where they will have access to advisors, investors and medical experts from both the TMC and DIT, enabling innovative individual projects and joint research in areas such as genomics and oncology.

Three UK companies have already made use of the BioBridge collaboration and healthcare trusts in Oxford, Cambridge and Manchester are also in discussions with TMC institutions regarding the formulation of partnerships.

Innovation within the Life Sciences sector is continually evolving however, as it is such a fiercely competitive industry, companies need to move fast to take products from promising ideas to market.

The Life Sciences team at Mathys & Squire comprises Patent attorneys experienced in working with a diverse range of clients; from university technology transfer organisations to international corporations. With degrees in subjects ranging from natural sciences and biochemistry to neuroscience, biotechnology and microbial technology – the team is recognised as having some of the leading practitioners in their field.

To learn more about our Life Sciences practice, please click here.

To download a brief background about the practice, please click here. 

To discuss protecting and commercialising your intellectual property and innovation, please email Managing Associate, Bethany Gibbs, via [email protected]. 

The UK Government published guidance on 24^th September outlining potential ramifications to trade mark and designs law should the UK leave the EU without an agreement in place – a ‘no deal’ scenario. The paper noted it was the duty as a “responsible government to prepare for all eventualities, including ‘no deal’”. To read the article in full, please click here.

The Mathys & Squire Trade Mark team understand that the goodwill in a brand can be the greatest asset a company owns and when managed carefully, that asset can be used to generate significant value in terms of revenue, market dominance and repeat product sales.

To learn more about our Trade Mark practice, please click here.

To combat the grey weather, London hosted its annual Design Festival, bringing some much needed colour to the city. The week long event showcased cutting edge designs and creations by artists, architects, interior designers and entrepreneurs across the city.

In honour of the Design Festival, we posted a series of Daily Design Dos and Don’ts on our Twitter page, sharing some top tips for protecting your designs, creativity and intellectual property.

Keep it confidential! Registered Designs should be sought before the design is publicly disclosed; otherwise this can preclude the opportunity to seek Registered Design protection.

Keep it cost effective. Under both UK and European Registered Design systems it’s possible to file several designs simultaneously in a multi-part application. The more you file, the lower the cost per design.

Keep designs protected. Registering a design in Europe and the UK is simple inexpensive and quick compared to other forms of intellectual property – plus there’s very little that cannot be protected by Registered Designs

Keep it clear and accountable. The first owner(s) of the intellectual property in a design is the original devisor(s) of that design.

Keep an eye on the calendar. The filing date of a Registered Design is critical. To remain in force UK & European Registered Designs must be renewed every 5 years.

Keep digi in mind. Registered Designs can be used to protect aesthetic aspects of digital products e.g. icons and aspects of graphical user interfaces (GUIs) – not just the external, physical product appearance.

Keep all your bases covered. Registered and Unregistered Designs are effective tools for protecting design aesthetics but should be used as part of a suite of IP rights e.g. trade marks, patents and copyrights.

To learn more about our Designs services, please click here or contact one of our attorneys on 0207 830 0000.

On 18 October 2018, Mathys & Squire Partner, James Pitchford, will be conducting an IP training day at the Cambridge Information and Intellectual Property Meeting (CIIPM), alongside CIIPM founders, Jane List and Stuart Newbold.

The topics covered will range from discussing the simple question – what is IP and why does it matter – to exploring the various types of IP protection available and the steps you can take to protect your creativity, ideas and innovation.

With information on patents, trade marks, copyrights and designs, the event will provide insights and tools to help protect and commercialise your IP portfolio alongside developing strategic business decisions.

For more information about the event, including ticket availability, please visit the CIIPM website.

James is a member of the European Patent Institute, a fellow of the Chartered Institute of Patent Attorneys (CIPA) and an active member of CIPA’s International Liaison Committee, through which he has represented the Institute overseas. James has significant experience working with entrepreneurs, start-ups, spin-outs and SMEs, alongside large corporations, research institutions and universities.

CIIPM – founded in 2015 by Jane List of Extract Information and Stuart Newbold of Patent Search & Information Management, Cambridge Information and Intellectual Property Meeting aims to provide a knowledge sharing space  a space for knowledge sharing and learning to those who work with information and commercialising IP. 

On 12 September 2018, the UK Government announced a new Agricultural Bill, setting out a major post-Brexit policy to replace the current subsidy system of Direct Payments to farmers based on the total amount of land farmed.

A new Environmental Land Management system will start from next year which aims to reward farmers and land managers in return for “public goods”, including better air and water quality, improved soil health, higher animal welfare standards, public access to the countryside and measures to reduce flooding. Those that provide the greatest environmental benefits will be rewarded with the largest payments, which is believed to lay the foundations for a Green Brexit.

Key aims

The Department for Environment, Food and Rural Affairs (Defra) has said that the Bill will be underpinned by measures to increase productivity and investment in R&D, including funding for research projects. As such, using the powers in the Agriculture Bill, Defra has pledged to:

• support innovation to improve productivity;
• improve investment in farming equipment, technology and infrastructure; and
• facilitate collaboration and pioneer the use of more innovative and efficient farming techniques.

A Defra policy statement has since served to highlight the priority of the Bill in enhancing food security based on strong domestic production, acknowledging that British farmers play a crucial role in the food chain and that this future policy will support farmers to provide more home-grown produce.

This comes at a time when concerns over global food shortages are steadily growing as current projected food production trends fall well short of the projected demand of a global population (expected to reach 9 billion by 2050), and when importation of food products from foreign countries may become more complicated for the UK following Brexit.

Why focus on agriculture?

Agri-Science was identified in 2014 as part of the UK Intellectual Property Office’s (IPO) “Eight Great Technologies” report as a robust and growing area for innovation in the UK. We have already had glimpses of a number of new technologies that are set to revolutionise traditional farming methods and potentially offer farmers and land managers a greater share of the rewards under the new system. The use of new technologies, including drones and robotics, farm management software packages, vertical farming, aquaponic farms for urban environments, gene-editing and biological pesticides, to name but a few, may become even more commonplace as farmers become further incentivised to improve their productivity and the extent they contribute to the “public goods”.

The Agricultural Bill thus appears to add additional impetus for further research and innovation in what has already been identified as a significant area of growth in the UK.

Mathys & Squire’s Agri-Tech team work with a range of businesses at the cutting edge of farming and food production. To discuss IP and Agri-tech, please call 0207 830 0000.

Michael Stott has worked in the patent profession since 2008 and has been involved in the drafting and prosecution of patent applications in the UK, Europe, and many overseas jurisdictions, including the US. Michael’s expertise span a wide range of technologies including electronic materials and devices, agrochemicals, petrochemistry, food chemistry and absorbent articles.

The European Medicines Agency (EMA) has pulled all contracts with the UK’s Medicines & Healthcare products Regulatory Agency (MHRA) ahead of the UK withdrawing from the EU next year. The EMA has instead redistributed the UK’s product portfolio to other EU members – prompting questions about the potential impacts of Brexit on healthcare and what will fill the gap for the MHRA.

Mathys & Squire Life Sciences Partner, Martin MacLean, provided insight on this development which has since been featured in PharmSource, European Pharmaceutical Manufacturer and Labiotech. Please click the images below to download the articles and read Martin’s commentary.

For further information regarding Brexit and the EMA or intellectual property developments in the Life Sciences and Chemistry field, please contact Martin on [email protected] or call 0207 830 0000 to speak with a patent attorney in our Life Sciences team. 

Martin Maclean is a Band 1 Patent Attorney and a member of the Life Sciences Committee for the Chartered Institute of Patent Attorneys. He has consistently been nominated by peers as one of the world’s leading practitioners in the field of patents featuring in the 2016, 2017 and 2018 editions of Who’s Who Legal: Patents and has also been ranked in the latest edition of IAM Strategy 300 – The World’s Leading IP Strategists 2017. 

Our Manchester Mathys & Squire team is attending Venturefest North West 2018. 

Ready to help innovators protect, commercialise and develop tailored strategies for their intellectual property, the team are looking forward to meeting budding entrepreneurs at the Manchester Central event on Thursday 13th September.

Venturefest also includes an Innovation Showcase Competition!

Companies compete across four categories: product innovation, service innovation, digital innovation and innovative established business, pitching their business ideas for the chance to win thousands of pounds worth of business support, provided by organisers GC Business Growth Hub and its partners.

Open to small and medium-sized businesses from across the North West, the competition is now in its fifth year and is a fantastic opportunity to present your ideas to the market place.

We are delighted to be awarding one lucky prize winner an in-depth IP clinic: a chance to sit with our team and run through your patent and trade mark portfolio, audit your IP and discuss the potential challenges facing you and your business.

We look forward to seeing you there – and good luck to the competition finalists!