This Saturday, 20 July 2019, marks 50 years since Neil Armstrong first stepped on the moon, and inspired millions around the world to enter careers in science and engineering.
In the intervening years, we have seen a shift in innovation in the space sector from previously state-owned activities to now private and commercial activities, operated by the likes of SpaceX, Blue Origin and Virgin Galactic. As a consequence, the protection of intellectual property in the space sector is rapidly increasing.
Blue Origin LLC, for example, have a number of patents granted to innovations ranging from multiple stage rocket systems and new composite structures for aerospace vehicles, to methods for compensating for wind prior to engaging airborne propulsion devices for enabling reusable launch vehicles to land.
Figure 1 U.S. Patent 8678321, “Sea landing of space launch vehicles and associated systems and methods”
Why protect innovations that are going to be used in space?
Because intellectual property (IP) rights are territorial rights, at first sight, the thought of protecting inventions that are going to be used in space may seem counter-intuitive.
However, the US Patent Act (35 U.S.C.§ 105) states that any invention made, used or sold in outer space onboard a spacecraft that is under the jurisdiction or control of the USA is considered to be made, used or sold on US territory. Therefore US patents may indeed cover activities in outer space.
While many other countries don’t have similar provisions written into law, there are reasons those active in the space sector should look to cover territories other than just the US. For example, before a satellite or innovation is actually in space, it is typically designed and made somewhere on Earth. Patent rights can therefore cover those activities that take place on Earth.
However, careful thought needs to be given as to how such patents are drafted and where they are filed – what activities are you specifically looking to cover? If the patent is to be directed to a physical object – e.g. a rocket or engine – then obtaining protection in territories where the object is designed, made and likely to be launched from (both by you and a competitor) seems prudent. But what if the patent is to be directed towards a new method – such as a new way a satellite may communicate with objects on Earth? In such cases the patent claims need to be carefully drafted to capture only the activities that are performed on Earth within their scope – otherwise there may be a case of “divided infringement” where the patent is never actually infringed because not all steps of the claimed method are performed in the territory which the patent covers.
The space sector in the UK is growing fast
A recent report from the House of Commons Committee on Exiting the European Union noted that the UK space sector has trebled in size in real terms since 2000 and captures between 6.3 and 7.7 % of the global market, with a turnover in 2014/15 of £13.7 billion. This figure looks set to grow.
The UK is a world leader in the development of small- and micro-satellites, and the UK Government has committed to enabling low-cost space launch from the UK by 2021, with the view to developing commercial spaceports in the UK. The protection of the intellectual property in such small- and microsatellites is as important as it is for intellectual property in any sector. If such small- and microsatellites are to be launched in the UK, then patents covering the UK will cover the making, importing or use of any such satellites in the UK, which is particularly relevant if they are to be launched from the UK.
There are therefore good reasons why those active in the space sector should consider obtaining patent protection as part of a wider overall IP strategy that acts to help preserve their R&D investment and helps them to achieve their long-term commercial goals.
The team here at Mathys & Squire has specialist expertise in protecting IP in the aerospace sector and already work with a number of businesses active in this thriving industry. If you are looking to protect the innovations in your business, please get in touch with us today.
The extended version of this article has been published by Managing Intellectual Property – available here (login required).
We are delighted to share the new Mathys & Squire logo and brand.
Since Mathys & Squire was founded in 1910, the firm has grown and changed shape in many ways. From the move of our London office in 2014 from Holborn to the iconic The Shard, the acquisition of Coller IP in 2018, various new offices opening around the UK, to a brand-new office in Munich on 1 July 2019. We thought it was time to reflect our modern, innovative approach by refreshing and modernising our brand.
An important challenge in refreshing our logo was to meet the requirements of today’s ever-changing world; after over a century in the marketplace, Mathys & Squire’s new logo now represents a full-service firm with well-established IP specialists, leading the field with insight, innovation and quality.
Our constant strive for excellence is instilled in everyone who works in the firm and our unrelenting focus on delivering the best client service in the industry is what keeps pushing us forward.
To find out more about Mathys & Squire, click here.
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Mathys & Squire has featured in the Financial Times’ report of ‘Europe’s Leading Patent Law Firms 2019‘.
2,727 clients and peers participated in the survey, with several thousand recommendations being made to recognise Europe’s leading firms for patent prosecution and patent strategy consultation services.
Patent law firms could be recommended both in general and for specific categories that covered a range of specialist services. Mathys & Squire is delighted to announce that it has been recommended in the following sectors:
A full copy of the report can be accessed via the Financial Times website – here.
In this article for Managing Intellectual Property, Mathys & Squire Associate Alex Robinson provides expert commentary on whether the revised rules of procedure at the EPO’s Boards of Appeal are likely to improve efficiency.
Revised rules of procedure at the EPO’s Boards of Appeal and their focus on avoiding late amendments and submissions could see parties ‘front-load’ their arguments at an earlier stage, causing a headache for first instance divisions, lawyers say.
The revised rules were adopted after the latest meeting of the EPO’s oversight body, the Administrative Council (AC), at the end of June.
Among the changes are stricter measures for dealing with submissions made during an appeal and a tweaking of the rules on when cases can be remitted back to the decision of first instance.
The revised rules, intended to combat the EPO’s backlog, will come into force in January next year. Alex Robinson, patent attorney at Mathys & Squire in London, says the tightening up of amendments at the appeal stage could result in a “precautionary front-loading” of requests, amendments and supporting evidence into first instance proceedings.
Article 12 of the revised rules clarifies that any amendment to a party’s appeal case after it has filed its initial grounds of appeal will be “subject to the party’s justification and may be admitted only at the discretion of the board.”
Robinson says parties may take a precautionary approach in light of this and try to account for “every possible permutation of issues in documents filed in first instance proceedings.”
This, he says, would allow parties to keep the opportunity to address every possible point should the need arise during a subsequent appeal. He notes, however, that this could increase the workload of the first instance divisions.
Robinson says the boards were already quite strict on this, but that “by putting it into the black letter of the rules,” the EPO has taken away some of the discretion that the boards theoretically have under the current rules.
The new rules will not apply to cases where the grounds of appeal are filed before the start of 2020, or where a summons to oral proceedings has already been issued by then.
Robinson says this may prompt “a flurry of activity” in the next six months as attorneys whose cases would otherwise be subject to the new rules try and get in as many arguments and amendments as they can now, so as not to fall foul of any stringency in the revised rules.
Patent ping pong
A major reason behind the rule changes – approved during the AC meeting of June 26 to 27 – is to avoid first instance decisions being appealed and patents then entering a ‘ping-pong scenario’ between the first instance and appeal stages, adding to the office’s overall backlog.
Article 11 of the revised rules now says the board shall not remit a case unless ‘special reasons present themselves for doing so’.
Previously this part of the rules stated that the board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, ‘unless special reasons present themselves for doing otherwise’.
Robinson notes that if a patentee appeals against a first instance decision, the boards will quite often send a case back, but that the new rules clarify that this will only happen if special procedural reasons are highlighted.
Robinson says: “The backlog is notorious and it’s a laudable objective to try and combat this. But some of the rules could be seen as using a sledgehammer to crack a nut.”
The EPO’s backlog is regularly bemoaned. However, critics have previously told Managing IP that the office’s latest strategic plan shows there is too much focus on trying to grant patents quickly rather than ensuring they are of sufficient quality.
The revised rules, although positive in limiting the scope for reassessment, could muddle things further by overloading first instance divisions with claims that may not be relevant at the time.
This article was first published in Managing Intellectual Property – click here to read the full piece via their website (login required).
All roads lead to Rome, all Silk Roads lead to China. With the latest, most ambitious Chinese initiative dawning upon us, it is essential for IP right holders to factor in the changes and challenges that come along with the One Belt One Road (OBOR) strategy.
What is the OBOR?
The OBOR is a Chinese strategy which was initiated in 2013. Its aim is to forge closer economic ties by linking Europe and Asia through an improved transport infrastructure, consisting mainly of new rail routes, called ‘belts’, and new maritime routes, confusingly called ‘roads’.
The strategy has gained popularity rapidly, with over 80 countries adhering to the overall initiative since 2013.
The threat
One of the ‘belts’ connects China with Europe, with trains arriving in Paris and London and one of the main ‘roads’ will start in China and reach Italy through the Suez Canal, connecting with ports in Singapore, Kuala Lumpur, Sri Lanka, Maldives, Seychelles and Africa on the way.
We are, therefore, witnessing the development of a fast transport system that joins together new production countries in Southeast Asia, Central Asia and Africa, with western countries of destination. Add in the lower costs of production, the increasing number of free-trade zones and the less stringent customs controls along the OBOR routes and you’ve got yourself a very favourable environment for counterfeiting and organised crime activities.
The maritime routes will remain cheaper and thus preferred by counterfeiters in some instances, while the new railways provide for much faster transport, which could serve as a more appropriate method of ferrying a wide range of ‘limited life’ goods, such as pharmaceuticals and foodstuffs.
UK, EU and the OBOR
The European Commission has stated that the EU will be the final destination for at least one-third of Chinese exports, with an estimated value in excess of $600 billion per year. By 2020, it is suggested that this could reach $1 trillion.
With the UK set to leave the EU, right holders are concerned that due to a potential bilateral trade deal with China, the UK will become the destination for huge volumes of counterfeit goods, but that the UK will not deploy the corresponding levels of additional customs control. Moreover, there are concerns that post-Brexit, the cooperation between EU and UK customs could suffer, with the EU limiting access to its information and intelligence.
The solution?
In light of all this, both EU and UK right holders call for long term, policy preparation for the development of the OBOR strategy. They urge the West to take the initiative and improve the customs control capacity at ports, free zones and rail stops, and lobby for better control and expertise in the Southeast Asian, Central Asian and Eastern European countries.
As for the relations between the UK and the EU, right holders believe it vital that the two parties take joint responsibility and work together to ensure safety and security, even after Brexit concludes. This will certainly be a work in progress and we will be sure to keep you updated as things progress.
IP rights are valuable business assets and can be an important source of financing.
Virtually everything your business creates, that sets it apart from your competitors, is likely to attract some form of intellectual property (IP). It is, therefore, important to understand the significance of IP to your business and how you go about protecting it.
Registered rights such as patents, trade marks and Registered Designs are reasonably widely familiar, but many businesses are unaware of their less tangible, unregistered IP rights, that exist automatically when something is created, and require no registration procedure. These could, in fact, be hugely valuable assets in their own right. Examples include copyright, unregistered design rights, database rights, semiconductor topography rights, know-how, confidential information and trade secrets. It is well known, for example, that the Coca Cola recipe is one of the most valuable trade secrets in the world, and continues to set them apart from their competitors.
Here are some top tips on how to protect your business’ IP:
Identify what IP your business has (or could have)
IP cannot add value or help to grow your business if you don’t know it’s there. It doesn’t just help to protect the things that make your business unique, but can also help you to raise crucial funds in order to grow your business.
Understand the unregistered IP rights that already exist within your business
It is rare for a business to have no IP at all, so even if you don’t have any registrable IP, you may have unregistered rights which can be just as valuable.
Know when to keep your ideas confidential and when it is safe to share them
Whether it’s a trade secret or a patentable invention, confidentiality can be a crucial part of your IP strategy.
Identify registrable IP to best protect the key USPs of your business
Strategic use of registered IP, such as patents, designs and trade marks, can protect your USPs to give you the competitive advantage to grow your business or attract investment.
Create an IP strategy to help secure funding
Whether you need to borrow against the value of your IP, secure grant funding or attract investment, the right IP strategy can help, whereas a weak or non-existent IP strategy can be detrimental.
Understand the financing options available to you
Investment (whether private equity, angel, grant-based or even crowdfunding) is not the only way to finance your business for growth. Sometimes, a more attractive, and potentially quicker, option is to simply borrow the money you need to implement your growth strategy.
There are a number of ways for a small business to borrow money to fund their growth, such as these peer-to-peer websites: Funding Circle, RateSetter and Zopa.
However, not all businesses are sufficiently ‘creditworthy’ to consider what is essentially an unsecured loan, and this is where your IP could really help. IP rights are not only valuable business assets, but they can also be an important source of financing, because an ever-increasing number of lending institutions are extending their businesses to provide loans on the basis of IP, and some banks use IP assets as a credit enhancer, so knowledge and understanding of all of your IP rights could be crucial.
The management and protection of your IP should be seen as an ongoing discipline that is aligned with, and an integral part of, your business planning and strategy. Unless assets are protected, why would a third party invest if there is nothing to stop rivals from copying ideas and innovation?
This article was first published in Business Game Changer magazine in July 2019.
You’ve had a great idea for a new product, so what do you do next?
In this article for Business & Innovation Magazine, we provide some top tips on raising funding in order to develop your business.
Some degree of product design is likely to be needed and you would expect the result of that, in the first instance, to be a minimum viable product (MVP) or working prototype that can be tested and ‘tweaked’ before the design is finalised for manufacture. This is, of course, a very simple description of what can often be a rather lengthy and complex journey which doesn’t end there, and, somehow, needs to be funded until sales revenue starts to cover the overheads.
In general, a new or growing business may (potentially) go through several rounds of funding to raise capital as it progresses along the road from concept to market, and these funding rounds can be broken into three broad categories, namely:
- Pre-seed
- Seed
- Series A (and even B, C, D, etc.)
Raising capital can, in itself, be an arduous and frustrating process, but pre-seed funding, in particular, can be exceptionally difficult, because this is the capital you need for early-stage product development of an MVP, testing and finalising the product design. Not only that, you may need to pay for intellectual property registrations, market research, branding, etc. out of this capital, and yet you may not yet have anything viable for potential investors to buy into, nor anything tangible to borrow against.
There are a number of different ways to raise pre-seed funding, and although they are not all covered here, broadly speaking, many startup and scale-up ventures raise their pre-seed capital by one (or a combination) of:
- crowdfunding;
- grant funding;
- private (angel or personal)
- investment; and
- R&D tax credits.
With the exception of R&D tax credits, all successful bids for investment/funding are likely to have one thing in common: getting the message right.
So how do you go about getting your message across and attracting the right investors?
It is rarely possible to effectively do everything that needs to be done yourself, and it is crucial to have an effective core team and good relationships with at least a couple of credible service providers, such as an intellectual property attorney, product designer, branding specialist and marketing expert. It is this network of people that you want an investor to recognise as credible and sufficiently effective to take the business to the next stage.
Su Copeland of Priddey Marketing explains: “It isn’t easy to find the right investors, and doing so requires knowing where to find them and then having an attractive pitch.”
There is no doubt that the start-up journey is long and often complex. It almost always takes longer and costs more than you probably expected, but with the right people around you, and the right advice at the right time, you are much more likely to succeed in the end. Su has provided her top 10 tips below.
Top 10 tips for attracting investors
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Das hochrangige Unternehmen für geistiges Eigentum, Mathys & Squire LLP, treibt seine Expansion in Europa voran. So hat es heute die strategische Ergänzung eines äußerst respektierten Münchner IP-Teams verkündet, das unter der Leitung von Dr. Gerold Fiesser steht. Nachdem erst kürzlich neue Büros im Vereinigten Königreich eröffnet wurden, verfügt das Unternehmen nun über zehn Standorte im Vereinigten Königreich sowie auf Kontinentaleuropa, einschließlich in Paris, Luxemburg und München.
Dr. Gerold Fiesser, einer der führenden Patentanwälte Deutschlands, schließt sich Mathys & Squire in München mit seinen Kunden und einem Team des deutschen IP-Unternehmens Herzog Fiesser & Partner Patentanwälte, das er 2010 mitbegründete, an.
Begleitet wird er dabei von Dr. Giuditta Biagini, Dr. Lorraine Aleandri-Hachgenei und Dr. Kirstin Wenck sowie von angehenden AnwältInnen und einem Supportpersonal. Zudem wird dem neuen Team zusätzlich technische Unterstützung aller anderen Mathys & Squire-Büros zugutekommen.
Dr. Fiesser ist ein deutscher und europäischer Patentanwalt sowie Anwalt für Markenrecht und Designschutz. Er ist in allen Gebieten des Patent- und Markenrechts tätig, wobei seine Schwerpunkte auf der Einreichung und Weiterverfolgung von Patentanmeldungen, Einspruchs- und Beschwerdeverfahren sowie Patentstreitigkeiten liegen, die sich auf Konsumgüter, Life-Sciences und die Sektoren der organischen Chemie und Polymerchemie, einschließlich persönliche Pflegeartikel und ihre Zusammensetzungen, Schönheitsprodukte, Anwendungen von Polymerchemie und Polymeren sowie Zusatzstoffe, Öle und Fette, beziehen.
Als qualifizierte italienische und europäische Patentanwältin spezialisiert sich Dr. Giuditta Biagini auf die Vorbereitung von Gutachten zur Ausübungsfreiheit und Validität, Patentanmeldeverfahren sowie Einspruchs- und Beschwerdeverfahren im Bereich der Chemie, pharmazeutischen Chemie und der Polymere.
Dr. Lorraine Aleandri-Hachgenei ist eine deutsche und europäische Patentanwältin, Anwältin für Markenrecht und Designschutz sowie US-amerikanische Patentvertreterin. Ihre Fachgebiete umfassen Einsprüche, Beschwerden, Gutachten zur Ausübungsfreiheit, Rechtsstreitigkeiten und Due Diligence. Aleandri-Hachgeneis Tätigkeit fokussiert sich auf Chemie, Physik und Ingenieurwesen, einschließlich medizinische Produkte und pharmazeutische Verabreichungsprodukte.
Dr. Kirstin Wenck ist eine deutsche und europäische Patentanwältin sowie Anwältin für Markenrecht und Designschutz. Ihre Tätigkeitsschwerpunkte umfassen die Betreuung von Patenterteilungs- und Einspruchsverfahren sowie Markenerteilungs- und Einspruchsverfahren auf dem Gebiet der organischen Chemie und der Polymer- und Biochemie.
Über den Zusammenschluss mit dem neuen Mathys & Squire-Büro sagte Dr. Gerold Fiesser: „Mein Team und ich freuen uns, Teil eines solch renommierten und hochrangigen Unternehmens zu werden. Einer der Schlüsselfaktoren für den Zusammenschluss war das positive Ethos, das wir teilen, sowie die aufrichtige Begeisterung zusammenzuarbeiten, um all unsere Kunden auf höchstem Niveau zufriedenzustellen.“
Fiesser meinte weiter: „Mathys & Squires Größe, internationale Reichweite und großer Support im Vereinigten Königreich, in den USA und in Asien werden für unsere Kunden in wichtigen internationalen IP-Jurisdiktionen von großem Vorteil sein. Zudem können wir dem internationalen Kundenstamm von Mathys & Squire, wie auch seinem Kundenstamm aus dem Vereinigten Königreich, durch unsere weitreichende Erfahrung und geografische Nähe zum Europäischen Patentamt, zum Deutschen Patent- und Markenamt sowie zum Deutschen Bundespatentgericht bestmöglich dienen.“
Dr. Paul Cozens, Seniorpartner von Mathys & Squire, meinte: „Wir sind wirklich hocherfreut, dass sich Gerold und sein Team dem Unternehmen in München anschließen. Uns war es wichtig, nicht nur ein bewährtes Team, das sich der Ausübung höchst qualitativer Arbeit widmet, sondern auch Menschen zu finden, die sich gut in unsere inklusive und freundliche Kultur eingliedern und mit uns und unseren Kunden weiterwachsen. Wir genießen seit einiger Zeit eine große Präsenz in Europa und das Büro in München wird perfekt mit unseren Teams im Vereinigten Königreich und in Paris und Luxemburg harmonieren. Nach dem Brexit ist eine anerkannte Expertise innerhalb der EU von absoluter Wichtigkeit, um unsere internationalen Kunden zufriedenzustellen.“
We are delighted to announce that Dr Gerold Fiesser, one of Germany’s leading Patent Attorneys, is joining Mathys & Squire in Munich with his clients and a team from the German IP firm Herzog Fiesser & Partner Patentanwälte, which he co-founded in 2010.
Dr Fiesser will be joined by Dr Giuditta Biagini, Dr Lorraine Aleandri and Dr Kirstin Wenck as well as trainee attorneys and support staff. The new team will also have additional technical support from across Mathys & Squire’s offices.
Dr Fiesser is a German Patent Attorney and a European Patent, Trade Mark & Design Attorney. He works in the areas of life sciences and organic and polymer chemistry including personal care items and compositions, beauty, polymer chemistry and polymer applications and additives as well as oils and fats.
Having qualified as an Italian and European Patent Attorney, Dr Giuditta Biagini specialises in the preparation of patent applications, oppositions and appeals in the chemistry, pharmaceutical chemistry and polymers sectors.
Dr Lorraine Aleandri is a German Patent Attorney, a European Patent and a US Patent Agent, specialises in oppositions, appeals, freedom-to-operate opinions, litigation. Lorraine’s work focuses on chemistry, physics and engineering, including medical and drug delivery products.
Dr Kirstin Wenck focuses on patent and trade mark prosecution and opposition proceedings in the organic, polymer and biochemistry fields.
Commenting on joining the new Mathys & Squire office, Dr. Gerold Fiesser said: “My team and I are delighted to become part of such a prestigious top tier firm. One of the key factors for the move was the shared positive ethos between us and the genuine enthusiasm to collaborate in order to service all of our clients at the highest level.”
He continued: “Mathys & Squire’s size, international reach and depth of support in the UK, US and Asia will be of significant benefit to our client base across key global IP jurisdictions. In addition, our extensive experience and close proximity to the European Patent Office, the German Patent & Trade Mark Office and the German Federal Patent Court will allow us to service Mathys & Squire’s UK and international client base.”
Mathys & Squire Senior Partner, Dr. Paul Cozens, said: “We are really thrilled that Gerold and his team are joining the firm in Munich. For us it was important to find not only a proven team dedicated to carrying out the highest quality work, but also people who would fit comfortably into our inclusive and friendly culture, and continue to grow with us and our clients. We have had a significant presence in Europe for some time and the Munich office will work seamlessly with our teams across the UK and in Paris and Luxembourg. After Brexit, a recognised expertise within the EU is crucial to serve our clients worldwide.”
Mathys & Squire is pleased to announce that Partner Martin MacLean, as well as Alex Tame, Director of IP at our sister firm Coller IP, have once again been recommended in IAM Strategy 300: The World’s Leading IP Strategists.
Following in-depth research undertaken by teams based in London, Washington DC and Hong Kong, the IAM Strategy 300 2019 guide lists the individuals that have been proven to possess world-class skills in the development and roll-out of strategies that maximise the value of patents, copyright, trade marks and other IP rights.
The research teams spoke to a wide range of senior corporate IP managers covering North America, Europe and Asia, as well as third-party IP service providers, in order to identify IP leaders to be included in the guide: men and women whose business is the creation, development and deployment of strategies that enable IP owners to gain maximum value from their portfolios. Only those individuals nominated multiple times by different parties as outstanding IP strategists are listed in the IAM Strategy 300.
The 2019 edition of IAM Strategy 300 was released on 20 June 2019, and full details can be found in the online press release.
Praise for Mathys & Squire Partner Martin MacLean in the 2019 guide includes:
Described by the market as “a brilliant patent attorney who carries his wisdom very lightly”, Martin MacLean is “right on top of the most pressing IP challenges”. “He handles mind-boggling technical matters in complex business projects without breaking a sweat.”
Thank you to our clients and contacts who provided comments to the researchers at IAM Strategy 300.
