When it comes to IP and your software, here are a few things to think about!
A common misconception is…
That it is not possible to patent software. Although computer programs per se are excluded from patentability, many software inventions are indeed patentable.
In general, you can obtain patents for inventions which are…
a) technical in nature and b) new and non-obvious.
These criteria apply to software inventions; however identifying the technical nature of these inventions can be more difficult. The question is whether the software addresses a technical problem, rather than merely addressing e.g. business needs.
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Key indicators of patentable software inventions include…
Improvements (e.g. in terms of efficiency, resource usage, reliability, security) to the operation of external technical devices or processes or to the internal functioning of a computer system.
The most important thing is…
There is no simple, reliable rule and it is important to look at each case individually.
It’s not just about patents…
- Does your software include a brand used to identify your product to customers?
- Does your software include a user interface?
- Have you thought about licensing your software?
There are various means to protect the IP in your software, from registered rights such as patents and designs, through to copyright and trade marks.
Where there is commercial value in your software, we can help you protect it.
We have extensive experience working with software companies from start-ups through to Silicon Valley multinationals. Our team can tease out which elements of your inventions might provide promising subject matter for a patent application alongside navigating the time frames and fine lines of applicable patentability criteria. Click to download a summary about software protection.
To discuss the IP in your software, please contact one of our attorneys or call 0207 830 0000.
On 25th July 2018, the Court of Justice of the European Union (CJEU) ended a decade-long debate on whether organisms obtained by gene-editing techniques should be treated as genetically modified organisms (GMOs) within the meaning of the GMO Directive… and the answer is “yes”.
The upshot of this landmark ruling is that organisms obtained by modern gene-editing techniques, such as CRISPR/Cas9, must go through the same regulatory and approval process as organisms obtained using traditional transgenic methods. Craig Titmus, a Partner in our Life Sciences and Chemistry team, explains.
Background
The GMO Directive (2001/18/EC) is the key legislation controlling cultivation and sale of GMOs within the EU. Organisms categorised as “GMO” fall within the scope of the GMO Directive, and must undergo a risk assessment, public consultation and labelling, prior to authorisation. Mechanisms also exist for individual EU member states to provisionally restrict or prohibit the use and/or sale of an authorised GMO. For organisms categorised as “GMO”, the route to market is far from straightforward.
Traditional transgenic methods for generating genetically modified organisms leave a genetic “fingerprint” which can readily distinguish such modified organisms from those existing in nature. Few would argue that organisms, modified using traditional transgenic techniques, do not qualify as “GMO”. At the other end of the scale, few would argue that naturally-occurring organisms are “GMOs” (even though random genetic mutations occur in nature and give rise to the biodiversity present in the natural environment).
Between these two extremes, there exists a grey area in which the delineation between “GMO” and “non-GMO” is not clear-cut.
One such example is the use of chemical mutagens and ionising radiation to introduce random genetic variations e.g. in conventional crop breeding techniques. At first blush, although these conventional mutagenic techniques often leave no genetic fingerprint, many would assume that the resulting organisms would be categorised as “GMO”, and would therefore fall within the scope of the GMO Directive.
This is not the case. As set out in the GMO Directive and confirmed in C-528/16, “organisms obtained by means of techniques/methods of mutagenesis which have conventionally been used in a number of applications and have a long safety record are exempt from [the obligations set out in the GMO Directive (subject to other EU provisions)]”.
The GMO Directive and gene-editing techniques
Several years after the GMO Directive was directed back in March 2001, modern gene-editing techniques (such as CRISPR/Cas-9) have been developed, enabling targeted modification of an organism’s genetic material, without leaving a genetic fingerprint. Absent a genetic fingerprint, one cannot readily distinguish organisms that were obtained using modern gene-editing techniques from organisms that were modified using conventional mutagenesis techniques (or, indeed, from organisms in which the same mutation occurred through a random natural event). Drawing parallels with conventional mutagenesis techniques, it was widely anticipated that the CJEU would rule that organisms obtained using modern gene-editing techniques would fall outside the scope of the GMO Directive.
On the contrary, C-528/16 held that “new techniques/methods of mutagenesis” which enable targeted modification of an organism’s genetic material, might carry the same risks as traditional transgenic organisms, and must therefore be subject to the requirements set out in the GMO Directive.
GMOs and Brexit
The cultivation and sale of GMOs in the UK is, of course, mainly regulated by EU law. At the time of writing, it is virtually-impossible to imagine what a Brexit deal might look like, but the Department for Environmental Food and Rural Affairs (DEFRA) has just issued a guidance notice entitled “Developing genetically modified organisms (GMOs) if there’s no Brexit deal”, which seeks to explain “how controls on the release of genetically modified organisms (GMOs) into the environment would be affected if the UK leaves the EU in March 2019 without a deal.” The guidance notice may be summarised as follows: in the event of a no-deal scenario, the UK Government will maintain the status quo.
Craig Titmus is a Partner in our Life Sciences and Chemistry team and is based in our Cambridge office. Craig holds a bachelor’s degree in molecular biology and biochemistry and a PhD in biotechnology. His practice covers diverse biotechnological subject-matter, with a particular focus on vaccines, diagnostics, therapeutic antibodies and peptide conjugates and agri-tech. Craig has significant experience of European and international patent prosecution, and coordinates global IP strategies for a range of clients including start-ups, SMEs, universities, large corporations and the UK Government. The “Legal 500” notes that Craig is an “excellent” patent attorney with “strong a technical background and highly developed legal skills” (2017). For any questions related to GMOs, please contact Craig via [email protected].
On 19th July 2018, the UK Government announced the establishment of a new Cambridge-based task force: the Digital Framework Task Group (DFTG), a team focused on harnessing the power of digital technologies to help UK industry plan for future construction needs.
Officially launched by Exchequer Secretary to the Treasury, Robert Jenrick, and run by the University of Cambridge’s Centre for Digital Built Britain (CDBB), the task force will bring the expertise of industry, academia and government together and advise the Treasury on how data, artificial intelligence and machine learning can help predict and meet the needs of the UK.
With extensive experience in the digital field, Cambridge alumnus and Mathys & Squire Partner, James Pitchford, is delighted by the news of this digi-development:
“Cambridge is the perfect location for the DFTG, as it will enable the Group to tap in to the city’s wealth of experience in the digital field, across both academia and industry, that has been built-up over many decades.
The University and the city are both world-renowned for digital innovation, and it will be fascinating to see what new developments will arise from the DFTG, and how these will be applied to real-world projects that will benefit people’s lives.
For instance, 5G telecommunications and IoT sensors are now just around the corner, and these, combined with large-scale data processing and advanced analytical techniques, have great potential in monitoring the use of urban infrastructure and enabling future infrastructure to be planned, built and managed more effectively.”
Mathys & Squire has been actively involved in the Cambridge digital community since opening its doors in Cambridge almost ten years ago.
From artificial intelligence to encryption, image recognition to distributed data processing; the Mathys & Squire team are actively working and engaging with the local technological community, alongside governments and corporates, helping to protect innovation in the digital and manufacturing fields for the greater good of clients and the UK economy.
The team look forward to learning more about the DFTG and hope to see them around Cambridge soon.
For further conversation regarding Cambridge innovation and intellectual property, please email James Pitchford on [email protected].
James obtained an MA honours degree in natural sciences (physics and materials science) and a PhD in materials science, both from the University of Cambridge. He entered the patent profession in 2000, and qualified as a European Patent Attorney in 2005 and a Chartered Patent Attorney in 2006. James also holds a certificate in intellectual property law from the University of London. He has given lectures on intellectual property at the University of Cambridge, seminars on European patent law and practice at the Japan Patent Attorneys Association in Tokyo, and a presentation on EPO examination policy at the Korean Intellectual Property Office.
Kit Kat Case Closed?
The decision of the European Court of Justice, handed down on 25 July 2018 in relation to the shape of the four-finger KitKat chocolate bar, marks an interesting development in the treatment of shape marks under European Union Law. It has solidified the necessity for significant and wide-reaching evidence when attempting to claim exclusive rights in respect of reasonably commonplace or simple shape marks across the EU.
Companies within this sector are now unlikely to obtain trade mark rights in the shape of their products or packaging, save where those shapes depart significantly from the norm of that sector, or where they have become extremely well-known as an indication of the company in all member states of the EU.
This may mean that companies within the food and beverage sector will look to utilise more distinctive shapes for their products and packaging if they ultimately wish to obtain trade mark rights in the same in the future.
The decision will also send a message to companies in the sector that a bank of evidence should be created that shows sales, marketing and consumer perception within the various countries of the EU as early as possible so that this can be called upon to later support an application.
It is possible that the number of European Union trade mark applications for marks of this type may now decrease and companies instead focus on their core markets within the EU and apply to protect the shapes nationally in those countries, so as to avoid the evidence burden required at EU level.
One thing that should be appreciated however is that the decision does not automatically have the same effect in respect of other types of trade marks, such as word or logo marks. A non-distinctiveness objection must be overcome in the countries in which the mark is deemed to be non-distinctive and often, with word marks, language will play a big part in this.
As such, the territory for which evidence is required will be smaller and relate only to the countries in which that language is widely spoken or understood.
For further conversation regarding trade marks and commercialising intellectual property protection, please email Laura West on [email protected]
Laura works with clients to ensure their IP strategy fits closely with their overall business strategy and aims to provide legal advice that has a strong commercial foundation. She has worked with a wide range of clients including those in the fashion, media, medical, construction, engineering and service-based sectors.
On Wednesday July 11th 2018, Mathys & Squire Partner, Jeremy Smith, attended the third annual Cambridge Information and Intellectual Property Meeting (CIIPM) at Homerton College.
Founded in 2015 by Jane List of Extract Information and Stuart Newbold of Patent Search & Information Management, CIIPM is a platform for IP knowledge sharing.
Talks ranged from regulatory updates, legal insights and risk mitigation through to licensing, valuation and insurance and as such, the day was a great opportunity for those looking to make legal and commercial decisions with their IP in mind.
As an experienced patent attorney specialising in the protection of electronics, software and telecoms related inventions – and as a named inventor on a number of semiconductor device related patents – Jeremy has long since been an active part of the IP community both in Cambridge and elsewhere.
He noted that, “the event offered an opportunity to both share with other professionals involved in many aspects of IP protection and commercialisation, and learn from speakers with an interesting and varied mix of experience in the IP sector”.
For further conversation related to the protection of inventions and other intellectual property, please email Jeremy Smith on [email protected].
Jeremy has a first class honours degree in electronic and integrated circuit engineering from the University of Liverpool. Jeremy works across all areas of patent practice including: the preparation, filing and prosecution of patent applications before patent offices throughout the world; opposition both in Europe and elsewhere; due diligence activities; and litigation in the UK and elsewhere.
Mathys and Squire Partner, Anna Gregson, recently attended Biofocus 2018, a life sciences conference bringing industry, academics and experts together to discuss innovative initiatives and developments within the field.
Elaine Warburton of QuantuMDx kicked off the proceedings with an inspiring keynote presentation about working on handheld point-of care diagnostics that can be easily taken to, and used in, parts of the world without easy access to hospitals and laboratories. A real North-Eastern success story with global implications!
As with most conferences, Brexit was the mot du jour and a “State of the Nation” panel session discussed Brexit and the upcoming challenges companies, particularly in the biotech sector.
The general consensus? Companies need to be actively taking steps to make sure their businesses are ready for a post-Brexit environment – although this is difficult when so much uncertainty remains.
As such, SMEs need a strong support network to help them achieve commercial success and subsequent sessions showed how to put this theory into practice. Talks from NEPIC, the Centre for Process Innovation and the new National Horizons Centre (due to open March 2019) alongside showcase presentations from three North Eastern innovators, showed once again how the North East punches above its weight in technological innovation.
The afternoon focused a subject in which Newcastle University is a global leader – ageing research.
Newcastle’s cutting-edge research in this field has been a highlight of the BioFocus conference since the conference first ran in 2016 and this year was no exception as the second keynote presentation of the day linked cutting edge research in both age-related diseases (such as cancers and neurodegenerative conditions) and nanomedicine.
Anna noted that “with world class research and an excellent support network and thriving innovation ecosystem, biotech innovators in the North East are well placed to weather the challenges posed by Brexit – but they would be wise to bear in mind the old Axiom – to fail to prepare is to prepare to fail – and make sure they ready themselves for the changes ahead, and seek appropriate advice.”
For further conversation on all things Biotech, please contact Anna Gregson via [email protected]
Anna graduated from the University of Cambridge with a first class MA honours degree in natural sciences, specialising in pathology. She went on to obtain a PhD in biochemistry from Manchester University. Anna has experience in a wide range of subject matter in the fields of biotechnology and life sciences, including therapeutic antibodies, plant biotechnology and stem cells.
Mathys and Squire Partner, Craig Titmus, and Technical Assistant, Lionel Newton, attended “ON Helix” Translational Research Conference, hosted by One Nucleus at the Babraham Research Campus in Cambridge.
A leading event for the Life Sciences industry, the conference provides a platform for discussion and discovery, exploring the path from early stage innovation to the clinic.
With talks ranging from alternative funding, due diligence and licensing plans, through to relationship management and NHS partnership case studies, this event covered the full lifecycle of clinical innovation and highlighted the strategic advantages of collaboration over competition.
Mathys & Squire has worked closely with One Nucleus over a number of years and we are delighted to be One Nucleus’ preferred provider of Intellectual Property advice.
For any questions or queries relating to biotech, life sciences and IP strategy, please contact Craig Titmus via [email protected]
Craig’s practice covers diverse biotechnological subject-matter, with a particular focus on vaccines, diagnostics, therapeutic antibodies and peptide conjugates and biofuels. Craig has significant experience of European and international patent prosecution, and coordinates global IP strategies for a range of clients including start-ups, SMEs, universities, large corporations and the UK Government.
Mathys & Squire Partner and patent attorney, Caroline Warren, explores whether the Unified Patent Court (UPC) changes the landscape for court structures in the UK and EU.
Unified Patent Court: The Post-Brexit Structure
On 6 July 2018 the Cabinet met at Chequers to discuss the UK’s vision for the impending new relationship between the EU and the UK following the Brexit referendum.
The Cabinet statement summarising the meeting noted that “the Government’s vision for a future relationship, built around an economic partnership and a security partnership, remained fundamentally sound” but that the position needed to “evolve” to provide a “precise, responsible and credible basis for progressing negotiations” and achieve outcomes that are in the UK’s national interest and work for both the UK and the EU.
As such, the statement proposes a “joint institutional framework” to provide for the “consistent interpretation and application of UK-EU agreements”.
While the statement provides no further details on what such a framework might look like or how it might be implemented, one possible model could come from the proposed UPC system that was in development long before Brexit was first mentioned.
The UPC system provides a new international court that is “common to the member states” but lies largely outside the jurisdiction and control of the UK and EU court systems. The court system was designed while the UK was within the EU but, due to opposition for the project from Spain and Italy, the court was never an EU-led creation. Instead, the UPC will be a largely independent international court straddling the EU and UK jurisdictions.
Due to its unusual history and genesis, creation of the new court has required amendment of the Brussels 1 Regulation in order to recognise its jurisdiction and enable recognition of UPC judgements.
The work that has gone into this project over the past few years may now provide a mechanism by which alternative court structures can be established by mutual agreement between the EU and the UK, or at least serve as a model for such court structures.
Even in this international court, however, the CJEU retains a limited role in providing interpretation of aspects of the law in certain situations. Therefore, as always, politics will trump legalities and it remains to be seen whether the limited role of the CJEU in the proposed court structure will be acceptable to the newly-energised Brexiteers.
To read Caroline’s thoughts in The Times of London – please click the image below.
Caroline is part of the Mathys & Squire Brexit team and her practice includes management of large portfolios for multinational organisations, including representing clients at hearings before the European Patent Office. Caroline also enjoys advising small businesses on their IP strategy, both in the UK and internationally. For any questions about Brexit or the UPC, please email Caroline via [email protected].
Proper design registration is a ‘Mast’ as demonstrated by Mast-Jägermeister last week when their appeal to the Court of Justice of the European Union (CJEU) regarding shot glass design was rejected.
On 5th July 2018, the CJEU rejected an appeal by the well-known liquor producer Mast-Jägermeister related to a European registered design application directed to shot glasses.
In 2015, Mast-Jägermeister filed a registered design application including figures (not made publically available) that showed shot glasses along with bottles of Jägermeister. The bottles were apparently not intended to form part of the claimed design.
The European Union Intellectual Property Office (EUIPO) Examiner objected to the application on the grounds that the representation of the design was not sufficiently clear, because the presence of the bottles in the design meant that it was not clear whether protection was being sought for the shot glasses or the shot glasses in combination with the bottles.
Mast-Jägermeister could have remedied the deficiencies either by adding “bottles” to the indication of product and dividing the design into separate parts, or by filing new views (which would have caused the application to be re-dated). However, they were apparently unwilling to use either of these remedies (presumably because either action would have made the registered design application somehow not fit for commercial purpose).
Accordingly, the Examiner took the view that the design application could not be accorded a date of filing, since the design for which protection was sought could not be identified.
Mast-Jägermeister’s subsequent appeals to the Board of Appeal of EUIPO, the General Court of the EU, and finally the CJEU focussed on whether the application clearly defining a scope of protection was indeed a requirement for according a data of filing for an application.
Mast-Jägermeister’s interpretation of the regulations was that, for a date of filing to be accorded, the design simply needs to include a representation of the design suitable for physical reproduction. This would mean that a design application would need only to pass a narrow formal examination to be accorded a date of filing.
However, the CJEU ruled that the concept of representation encompasses, in itself, the idea that the design must be clearly identifiable – so the appeal was rejected, and consequently Mast-Jägermeister’s registered design application could not be given a date of filing.
This case emphasises the vital importance of ensuring that the figures used in registered design applications are correct and cover what is intended to be covered before the application is filed, in particular where any re-dating of an application would be undesirable.
In this case, the originally filed figures in Mast-Jägermeister’s application fatally prejudiced their application, with the resulting deficiencies being incurable despite appealing to the highest possible level.
This article has recently been featured in The Patent Lawyer Magazine – click the image below to view!
For guidance on preparing figures suitable for use in registered design applications, or indeed questions about design registration in general, please contact a member of our Designs team:
Dani Kramer via [email protected]
Dani is a Partner and European Design Attorney with extensive experience of filing and prosecuting registered designs in the UK, via EUIPO and internationally. Dani works for a number of large corporations managing their international patent portfolios. His focus is on the fields of internet television, software, electrical and electronic engineering, information technology, microprocessors, semiconductor devices, and communication technologies.
Max Thoma via [email protected]
Max has a Masters in Mechanical Engineering from the University of Cambridge. Max works primarily on drafting and prosecuting patent applications in the UK, Europe, and the US and has experience in contentious matters. Alongside his patent work, Max works on preparing, filing and prosecuting Registered Designs in the European Union, as well as in many overseas jurisdictions.
Laura Clews, Associate at Mathys and Squire, recently sat with the team at Food Matters Live to talk about the IP on our plate.
From R&D and packaging to food technology, processing and the composition of ingredients, Laura outlined the various ways companies seek to protect their innovations in this competitive industry.
Laura is a Chartered Patent Attorney and European Patent Attorney with experience in the drafting and prosecution of patent applications in the UK, Europe and worldwide. A member of our Food and Beverage team, Laura has recently written articles regarding cell-cultured meat and was interviewed by the host of BBC Radio’s The Food Chain series, Emily Thomas, to discuss trade secrets in the food industry.
To watch the Food Matters Live video in full, please click below.
Food Matters Live is an annual event exploring the relationship between food, health and nutrition. Our dedicated Food and Beverage group has extensive experience in the industry and understands the challenges faced by companies in this highly competitive market. Members of the team will be attending Food Matters Live 20-22 November 2018 in the London Excel Centre and will be ready to talk all things food and IP.
