Mathys & Squire is proud to have worked with MS-RT – an offshoot of Ford’s rally partner M-Sport – in protecting their IP as they redefine the landscape of commercial vehicle design with the introduction of the all-new Ford Transit Custom MS-RT and Ford Ranger MS-RT.

Developed by MS-RT in partnership with Ford Pro, these new MS-RT models seamlessly blend Ford Motor Company’s renowned durability with motorsport-inspired design innovations. The launch has received huge praise across the automotive industry, with over 200 individual articles posted within the first 24 hours of the launch. The new models are available to order from Ford Pro dealers across Europe, with cars expected on the road in mid-2024.

Working closely with MS-RT’s design and legal team, Mathys & Squire prepared and filed a comprehensive set of design registrations meticulously covering various aspects of MS-RT’s innovative designs in various formats to provide a broad scope of design protection, ensuring that the distinctive features of the MS-RT vehicles remain exclusive to the brand.

Adam Gilbertson, Associate at Mathys & Squire, says:

‘For a company like MS-RT whose business and USP is all about its unique designs that transform the look of these vehicles, and which get so much attention, protecting their design IP is critical as the business continues to grow. We are delighted to be part of MS-RT’s journey and see the launch go so well.’

Carolyn Mills, Legal and Contracts Director at MS-RT, says:

‘Having the expert guidance of the Mathys & Squire team to steer us through the process and set a filing strategy has been extremely reassuring.’

Joe Pace, Managing Director at MS-RT, says:

‘Having invested a significant amount of time and money into the development these designs, we felt it was essential to protect this investment with proper design protection. Many thanks to the Mathys and Squire team for all your help with registering our designs for the MS-RT Custom and Ranger. Great work and excellent support throughout the whole project.

Mathys & Squire has a dedicated and experienced designs team which has helped numerous household names secure strategic protection for their designs internationally. Find out more about our design services here and contact us here.

In December 2023, it was announced that the UK Intellectual Property Office (UKIPO) had received permission to appeal the High Court’s ruling in Emotional Perception AI Ltd v Comptroller-General of Patents, an appeal that will be heard on 14 May 2024. The Court of Appeal will therefore be revisiting the question of the patentability of software inventions and will have its first opportunity to comment on the patentability of artificial neural network (ANN)-based inventions.

The ongoing Emotional Perception case has generated significant interest in the artificial intelligence (AI) industry and patent profession alike, at a time when global interest in use and development of AI technology is sky rocketing – indeed, the UK Government recently identified AI as one of the five technologies of tomorrow critical to helping drive future discoveries and economic growth in its recent Science and Technology Framework. Emotional Perception is the first UK patent court case to focus on AI technology, and the importance of the case is underlined by the fact that the UKIPO, immediately following the first instance judgement, changed their practice for examination of ANN inventions – a change that, at least for the time being, effectively removes ANN inventions from the scope of the computer program exclusion and has led to a flurry of AI-related patents being allowed.

Seen by many as a long-awaited breakthrough towards the recognition of AI as a technical field in its own right, eligible for patent protection commensurate with its increasing role in driving innovation worldwide, the first instance judgement is also highly controversial, as it represents a significant divergence from established European Patent Office (EPO) practice and has sparked debate and has polarised views amongst the patent community. If not overturned on appeal, the Emotional Perception case will make the UK a far more favourable patentee-friendly place for patenting AI inventions for the foreseeable future.

The decision at first instance

The invention at the heart of the Emotional Perception appeal relates to a system and method for providing improved media file recommendations to an end user which is implemented using an artificial neural network (ANN) trained in a specific way which is said to align its output more closely to how a human semantically perceives the content of an input file.

Initially, the UKIPO rejected Emotional Perception’s application on the grounds that the invention was excluded from patentability for being a computer program as such. That rejection was then reversed by the High Court which concluded (among other things) that the claimed invention, in so far as it relates to the training and use of a trained ANN, did not involve a computer program at all so did not engage the exclusion, and even if it did, the novel method of identifying and providing files to a user was a sufficient “contribution” and sufficiently “technical” to prevent the invention from being considered a “computer program as such”. It is this decision which is now under appeal.

The Law

Since 2007 the UKIPO have used the test set out in Aerotel Ltd v Telco Holdings Ltd  to determine whether an alleged invention relates to excluded subject matter. This test involves the following steps:

A key question at the heart of the Emotional Perception case was: what was the actual contribution of the claimed invention? Counsel on both sides accepted that the invention related to an ANN-based system for providing improved file recommendations and that the fundamental insight on which the invention was based was the training of the ANN to analyse physical properties of a file using pairwise comparisons of training files. Once trained the trained ANN could then be used to identify, swiftly and accurately, files from a database which correspond semantically to a target file, and to provide file recommendations to a user device.

The judge concluded that although potentially implemented in software, a software ANN was not operating a program in the traditional sense of a set of instructions provided by a programmer because, rather than processing data on a step-by-step instructional basis, machine learning uses training data to self-learn and reconfigure an ANN to solve a specific problem. No other candidate program was identified, and for this reason the “contribution” was held not to engage the computer program exclusion at all. The judge went on to consider step 4 of the Aerotel test anyway and concluded that the contribution was technical in nature and thus also not a computer program as such, because: (i) the end result of sending the file recommendations to an end user provides a relevant external technical contribution; and (ii) a trained ANN itself can also amount to a technical contribution external of the training it received.

Differences of approach in the UK and the EPO

The UKIPO and EPO’s approaches to the assessment of patentable subject matter diverged in the early 2000s when the EPO changed their practice in PBS Partnership/Pension Benefits T931/95. Following that decision, the EPO adopted an “any hardware” approach whereby if a claim involves the use of technical means (e.g. a computer) or is directed to such technical means it avoids the exclusions. As a result, the EPO do not currently raise excluded subject matter objections to “computer-implemented” inventions unless a claim is directed to a purely abstract concept.

The question of whether or not an invention gives rise to a “technical effect” (i.e. whether or not a claimed invention provides a technical solution to a technical problem) remains part of the EPO’s assessment of patentability. However, rather than being considered as part of an assessment of patentable subject matter, it is considered as part of the EPO’s assessment of inventive step.

For computer-implemented inventions, assessment of inventive step involves an exercise of dissecting a claim into technical and non-technical features. Features which serve a technical purpose and contribute to solving a technical problem are taken into account when determining whether or not an invention involves an inventive step. In contrast, features of a claim which are identified as being non-technical are considered to form part of the background to the “technical problem” that an invention might be said to address and are essentially ignored for the purposes of assessing inventive step. Examples of what are considered technical purposes and processes which enable examiners to assess whether or not particular features are “technical” are set out in the EPO’s Guidelines. If an invention is not considered to address a “technical” problem, then it will be considered to be unpatentable in the EPO.

This approach was explicitly endorsed by the EPO’s Enlarged Board of Appeal in Bentley/Pedestrian Simulation G1/19.

The UK Courts have repeatedly stated that the UKIPO and EPO’s approaches are capable of reconciliation and amount to two different ways to (in principle) arrive at the same result. The first instance Emotional Perception decision, however, puts the two approaches into direct conflict.

First, the High Court’s ruling that ANNs inventions do not engage the computer program exclusion at all will in many cases allow AI-based inventions to pass directly to the inventive step stage and even to grant without any consideration of the technical character of the invention.

In contrast to the EPO, assessment of inventive step in the UK is limited to an assessment of whether or not it would be obvious to a person skilled in the art, using common general knowledge to modify any existing item of prior art to arrive at a claimed invention. All claim features are taken into account as part of this assessment and there is no formal separate assessment of the technical character of a claim at the inventive step stage.

Second, the High Court’s ruling that the end result of providing improved file recommendations provides a relevant external technical effect is in direct conflict with the established jurisprudence of the EPO Boards of Appeal who have consistently refused patent applications relating to recommendation systems and methods for lacking a relevant technical effect because any effects of the recommendations (e.g. playing a song, or requesting further recommendations) depends on the subjective choices of the user (see T 0306/10, T 1869/08, T 1983/18, and more recently T 0183/21).

These decisions underline the EPO’s emphasis on the concepts of technical problem, technical purpose and an objective technical effect. By contrast, there was no consideration by the High Court in the Emotional Perception decision of whether or not the invention served a technical purpose or solved any kind of technical problem, or even whether the output of the ANN was to be used as part of a subsequent technical process. Although the judge acknowledged the subjective effect of the recommendation on the user, he then focused on how the recommendation was generated and concluded that this was sufficient to overcome the “technicality” check in the final step of the Aerotel test. Hence, the judgement supports the notion that a trained ANN, processing data through its nodes in a technical way using logic it has learned itself, fulfils the requirements of the Aerotel test regardless of the purpose and the subsequent use of a machine’s output.

The long term impact of the Emotional Perception decision will depend upon the views of the Court of Appeal.

The conclusion at first instance that the computer program exclusion requires the presence of an identifiable set of instructions provided by a human that a computer is to perform is highly questionable and may well be overturned. However, equally important will be how the Court of Appeal addresses the question of whether the technical purpose or nature of the output of an invention is something which needs to be taken into account when assessing patentability. If it does not, then that would leave the door firmly wide open in the UK to the patentability of a wide range of inventions that leverage AI and machine learning, including those in traditionally non-technical fields such as finance, business and administration which would likely be considered to be unpatentable by the EPO.

That having been said, this second part of the Emotional Perception decision seems to be significantly more grounded in UK precedent. In previous decisions such as Protecting Kids the World Over vs Comptroller and Gemstar v Virgin Media, the UK High Court has considered that transfer of data files is sufficiently “technical” to overcome the final check in the Aerotel test, and that there is therefore no need to consider whether or not the output of an invention has a “technical” purpose.

We can expect the outcome of the appeal sometime in the latter half of 2024.

Commentary by Partner Nicholas Fox has been featured in Managing IP, giving an insight into the implications of the UPC Court of Appeal’s ruling that members of the public cannot have access to court documents without using a professional representative. This story has also been covered in JUVE Patent which also discusses the test case which Mathys & Squire have launched in this area, more details of which are discussed here.

Read more on the subject of the ruling by Partners Nicholas Fox and Alexander Robinson below.

The Court of Appeal of the Unified Patent Court (UPC) has decided that members of the public cannot have access to court documents without going through a professional representative. This will act as a further barrier to public access by imposing additional costs, and compares unfavourably to the practice of other courts. It also raises the prospect that the Court of Appeal could dismiss a pending case on access to court documents without giving a ruling on the core issue of how far the Court’s obligation of public access extends.

This is the upshot of the latest procedural order in the protracted dispute over public access to documents in the Ocado v Autostore litigation at the UPC. In an order dated 8 February 2024 the Court of Appeal interpreted its Rules of Procedure so that the requirement for a “party” to be represented also extends to members of the public when applying for access to documents lodged with the Court, even though such members of the public are not parties to the litigation.

The Court of Appeal had requested submissions on whether the member of the public who made a request to access documents filed in the Ocado v Autostore case needed professional representation. Both Ocado and the member of the public who had made the request submitted that representation was not needed, because a member of the public is not a “party” and so the rules requiring “parties” to be represented did not apply to him.

The Court of Appeal has now taken a decision which diverges from the views of both Ocado and the member of the public. Although the Court states that it “does not consider this requirement [for representation] to be unnecessarily burdensome” it has the undesirable effect of making public access more complex than it needs to be. Members of the public will now need to go to the additional expense of appointing a professional representative just to take care of what should be a simple administrative process.

This compares unfavourably with the practice of the European Patent Office (EPO), where any member of the public can access virtually any document filed with the Office simply by consulting the online register. It also compares unfavourably with the practice of the federal courts in the United States, where all pleadings, motions, memoranda and associated documents are available to anyone via the electronic PACER system. Similarly, public access is available in various European countries such as in England and Wales, where statements of case are available to anyone subject to payment of a small fee, and Sweden, where documents held by the court can be requested by email or post subject to payment of a small fee for large numbers of documents or pages.

The ruling raises an important question in relation to the outcome of the appeal. Ocado had previously raised no objections that a member of the public could request access without having to engage legal representation.  However, now that the Court has ruled otherwise, it raises the question of whether the original request for access by the unrepresented applicant should be ruled void. Notably, in the context of the appeal, the Court has ordered that previous submissions by the unrepresented applicant should be disregarded as they were not lodged through a representative. It is not clear why the same logic should not also apply to the applicant’s original request, particularly as the Court of Appeal expressly states that the obligation for legal representation applies equally at first instance and during the appeal process.

Previously, Ocado, who are objecting to the release of documents, have not pursued this point as their stated position was that the obligations for legal representation did not apply to access requests. However, now it is to be expected that the validity or otherwise of the initial application will be brought into question.

The Court of Appeal has granted the member of the public 14 days to appoint a representative and has scheduled a hearing on the substance of the appeal to be held on 12 March 2024.

The Court’s order is not yet available on the UPC website, but its contents have been reported here.

An article by Technical Assistant Rebecca Bennett and Partners Anna Gregson and Andrew White outlining the available protection for AI-driven bioinformatics has been featured in the latest edition of The Patent Lawyer.

Read the feature below.

The bioinformatic landscape has undergone a profound shift with the infusion of artificial intelligence (AI) technologies. The integration of AI, and specifically its subsets like machine learning and deep learning, has catalysed a revolution in bioinformatics. This transformative impact is most evident in the enhanced analysis and interpretation of biological data, unlocking invaluable insights from expansive datasets. The synergy between AI and bioinformatics is not only expediting drug discovery but also enriching our understanding of complex biological systems. Today, AI stands as an indispensable instrument within the bioinformatics toolkit, propelling the field into new realms of discovery and innovation.

However, a prevalent misconception has persisted, particularly in Europe, that bioinformatic inventions are inherently unpatentable due to their classification as mathematical methods or computer programs by the European Patent Office (EPO) and as such fall within excluded subject matter (Article 52 European Patent Convention (EPC)). This has led to the belief among inventors that their innovations may be ineligible for patent protection. While it is true that mathematical methods and computer programs, in isolation, are excluded from patentability, it is essential to recognise that many AI-driven inventions, particularly those in the dynamic field of bioinformatics, do not fit this restrictive narrative and are not classed as excluded subject matter.

This misconception is evidently mirrored in the discernible contrast in the number of patent applications across various jurisdictions. In 2022, both the United States and China saw a substantial surge in bioinformatics-related patents, with over 4000 published patent applications each. In stark contrast, Europe recorded roughly half that number, totalling just over 2000 published patent applications in the same year. This marked divergence in patent activity may be attributed, in part, to another prevalent misperception — the belief that the United States is more permissive when it comes to software-related inventions, such as those at the intersection of bioinformatics and AI implementation. It’s essential to note that while the United States Patent and Trademark Office (USPTO) may have exhibited a historically more permissive stance toward software-related innovations, including those in bioinformatics and AI, the landscape has significantly evolved in the past decade. A discernible shift towards a more rigorous approach has emerged.

The way that many AI-related bioinformatics inventions are assessed for patentability in Europe is often under the guise of inventive step.  In performing this assessment, when considering whether any features contribute to the presence of an inventive step, the EPO will assess whether those features are “technical” or provide a technical contribution in the sense that they provide a technical solution to a technical problem.  There is no explicit definition of what is considered “technical” or not, rather this is framed by case law of the EPO Boards of Appeal built up over the last few decades.

It is often in this domain where we find that the argument on patentability can be won or lost.  To support arguments on inventive step, it is helpful to be able to refer to statements in the application as originally filed of technical advantage associated with any features that are being argued over.  Therefore, care should be taken at the time of drafting to gain input from a European practitioner, experienced and knowledgeable on EPO case law, as to what may help support the presence of an inventive step and therefore the patentability of the invention in Europe.  Adding in statements in a letter of response to the EPO is often not as effective as including such statements in the application as originally filed.

Helpfully, the EPO offers illustrative instances of AI applications across various technology fields to help explain what may be considered “technical” or not. For instance, utilizing a neural network in a heart monitoring device to identify irregular heartbeats constitutes a clear technical contribution. Similarly, the classification of digital images based on low-level features, such as edges or pixel attributes for images, exemplifies typical technical applications of classification algorithms. Therefore, although this a hurdle that an invention has to overcome, there are clear circumstances and approaches to meet this requirement.

Additional challenges arise when assessing whether a patent application provides an enabling disclosure of an invention. In particular, according to the EPC, a fundamental requirement is that “The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.”. This sufficiency criterion gains heightened significance in the context of patents that encompass machine learning technologies. In some cases, this may require the description and or disclosure of training data, if these cannot be generalised in some way that is reproduceable by the skilled person.

As European practitioners working with bioinformatics inventions, we witness first hand compelling instances of successful bioinformatic applications implementing AI culminating in granted patents. A prime illustration of this lies in the field of genetics. The EPO has rendered affirmative judgments on inventions pertaining to computational methodologies for detecting mutations, including Single Nucleotide Polymorphisms (SNPs) and Single Nucleotide Variations (SNVs). Furthermore, the EPO has extended its positive rulings to encompass predictive technologies for phenotypic traits—ranging from symptoms and their severity to disease prognosis—based on viral genotypes. These instances underscore the EPO’s recognition of the technical merit and innovative impact of AI-driven bioinformatic solutions, offering encouragement and assurance to companies operating in these cutting-edge domains.

In conclusion, the prevailing misconceptions surrounding bioinformatics inventions, especially those implementing AI, are often unfounded, as these innovations are indeed patentable in Europe. The notion that they face insurmountable obstacles is often unsupported.

Partner Martin MacLean & Associate Lionel Newton of Mathys & Squire LLP, instructing Richard Davis KC of Hogarth Chambers, sought clarification from the Court of Appeal on whether supplementary protection certificates (SPCs) can be granted for a “combination product” (i.e. a product requiring two or more “active ingredients”).

The trial concluded on 24 January 2024 and the awaited decision will be seminal on this point of law, potentially adding £billions back on to the value of Big Pharma marketing this class of medicinal product in the UK. Moreover, the persuasive effect of UK jurisprudence should not be underestimated, as this decision will inevitably impact the outcome of parallel scenarios across Europe where proceedings have been stayed (notably in Germany and Ireland).

The technical subject-matter relates to the use of safinamide as an “add-on therapy” to patients with Parkinson’s disease (PD) and who are already receiving conventional levodopa treatment, which has been the “gold standard” treatment for PD patients for the last 50+ years. However, as the disease state progresses, the response to levodopa doses becomes shorter and patients experience symptom recurrence at the end of the dose effect. These “OFF” periods typically become refractory to treatment and are often associated with dyskinesias. The addition of safinamide increases the timeframe during which a patient’s symptoms can be controlled (the so called “ON” time) and without increasing troublesome dyskinesia.

Newron S.p.A. was granted a European patent for this “add-on” combination therapy in 2009 but had to wait a further 6 years (until regulatory approval was granted in 2015) before being able to commercialise the therapy in Europe. The SPC Regulations were introduced to address this specific problem, namely to provide patent owners with a means for legal redress to recover loss of effective patent term when this has been due to regulatory delay. Newron therefore sought SPC protection to recover as much of this lost time patent term as possible.

By way of general background, the travaux préparatoires of the SPC Regulation confirm that the legislators intended that a wide range of medicinal inventions should be acknowledged as meritorious of SPC protection. However, with stakes so high in this niche area of patent law, all Courts must be alert to attempts to obtain undeserved patent term extension (aka “evergreening”). The various sub-sections of Article 3 of the Regulation cooperate with one another and collectively protect against this type of abuse and, as a result, it has become established primarily by way of CJEU case law that SPC protection should be denied when the “product” (for the purpose of article 3) can only be distinguished on the basis it constitutes a new formulation, a new patient category (e.g. human vs. veterinary), or a new clinical indication.

At the heart of the present case is Article 3(b) of the SPC Regulation and how one should interpret a Marketing Authorisation (MA) in order to determine what “product” has been authorised; the meaning of ‘product’ being explicitly defined in Article 1(b) of the SPC Regulation?

Article 3(b)

“A certificate shall be granted if … a valid authorisation to place the product on the market as a medicinal product has been granted in accordance with Directive 2001/83/EC or Directive 2001/82/EC, as appropriate.”

Article 1(b)

“The following definition(s) shall apply … ’product’ means the active ingredient or combination of active ingredients of a medicinal product.”

In other words, should one adopt a strict or literal approach (e.g. as a lawyer might favour), or should one read an MA through the eyes of its intended addressee (e.g. a clinician, or a Regulatory operative)?

Turning now to the European Medicines Agency (EMA) and its regulatory process. Before a manufacturer is permitted to place a product on the market in Europe, the manufacturer must first convince the EMA that its proprietary product is both safe and efficacious for a specified clinical use. If successful, the EMA will then grant the manufacturer a MA, which allows the manufacturer to place its proprietary product on the market for the particular clinical use that has been approved by the EMA. The relationship between the EMA and a MA holder doesn’t end here as grant of an MA is conditional on the MA holder maintaining quality control standards and addressing any notified “adverse event” to the satisfaction of the EMA. In this way, the EMA is able to ringfence the responsibility it places on a MA holder to those steps that are under its control, namely all aspects of manufacture and marketing, though not extending to third party use of the proprietary product that goes beyond what the EMA has approved as being safe and efficacious (as specified in the MA).

In the case of a “combination product” (consisting of two different active ingredients, A+B), EMA practice therefore gives rise to two different outcomes depending on whether the MA holder’s proprietary product contains A+B (i.e. both actives formulated in the form of a single delivery vehicle), or whether the proprietary product contains only one or A or B and to which the “other” active (i.e. B or A, respectively) is added either prior to administration or in use. To distinguish one form from the other, the EMA relies on the following terminology:

Whilst this quirk of the EMA process is no doubt be well understood by regulatory affairs personnel and clinicians alike (i.e. the intended addressees of a MA), the same is not necessarily true of IP professionals. One should also be mindful that the EMA’s primary role is to safeguard the public by carefully controlling which pharmaceutical products are permitted onto the marketplace. Thus, the EMA has no nexus to patent law or SPC practice, and how the UKIPO might choose to interpret one of its MAs will be a long way down any list of priorities (should the EMA even be aware of this issue in the first place).

So, returning to the MA in question, when approving a combination product (consisting of active ingredients A & B), the EMA will always issue the corresponding MA in a form that identifies the MA holder’s proprietary product:

Indeed, this mere presentation of “form” (over substance) is what forms the crux of this appeal.

Partner Martin MacLean and Richard Davis KC argued that the term “product” as authorised by the MA must be the “combination product” as the underlying basic patent provided patent protection only for the combination product as required by article 3(a), and because the “product” must be the same for all aspects of article 3. It was further noted that the regulatory term “add-on therapy” (specified in the Summary of Product Characteristics) only made technical and practical sense in the context of a “combination product”. Finally, it was argued, as a matter of fact, Newron had sought regulatory approval from the EMA for the “combination product” and not for any single active ingredient, that no other conclusion made practical sense, that this was consistent with the EMA’s assessment of the phase 3 clinical trials data package, and that by granting Newron its MA the EMA was therefore confirming the “combination product” was both safe and efficacious. Indeed, no similar conclusion could be drawn from the clinical data package for any single active ingredient.

The intended take-home message here was that, in the case of combination products, one must be mindful that the proprietary product identified on page 1 of a MA might only be part of the product that the EMA has assessed for safety and efficacy compliance and thus only part of the product that the EMA has approved. However, from an SPC examination practice perspective, this scenario will always be easy for an Examiner to spot, for example, by reference to Form SP1 (section 6) where applicant will have identified the “product” in terms of two of more active ingredients and/ or by reference to the Summary of Product Characteristics of the MA where more than one active ingredient will be identified, and Regulatory terms like “add-on therapy” should act as a flashing beacon.

The key arguments from the respondent, the UK Intellectual Property Office (UKIPO), were that, since the MA is a legal document, a strict legal approach should be followed, and the “product” must therefore be “A” (safinamide alone) as per page 1 of the MA. It is true that “safinamide” is the only active ingredient explicitly identified on page 1 of the MA, and that one has to read on to the “Summary of Product Characteristics” before one sees any mention of a second “active ingredient”, but as noted above this shouldn’t cause any impediment.  The UKIPO also presented a policy-type defence asserting that the MA must be read in a way that allows an Examiner to conclude a swift and simple answer, arguing that any form of detailed review of a MA was inconsistent with what the legislators had intended and in any case was inappropriate due to insufficient resource/ regulatory expertise at the UKIPO.

Partner Martin MacLean and Richard Davis KC argued that, both from a practical and factual point of view, the UKIPO conclusion must be incorrect if for no other reason than because “X” (safinamide) alone had no recognised clinical efficiency (and certainly no regulatory approval). This only left levodopa, and it would be nonsense to consider this as “product” authorised Newron’s MA. Thus, it was argued, the product authorised by the EMA could only be the “combination product”.

It was further noted that, had the combination product in question been a “fixed-dose” combination product, the UKIPO would likely have granted SPC protection for this product at an early stage in the examination process. Thus, to deny Newron SPC protection for their “fixed” combination product would amount to an arbitrary discrimination based purely on form over substance (i.e. the form in which the same active ingredients are presented), and for which no legal basis exists.

We await the Court of Appeal’s decision in earnest.

By default, European patents granted by the European Patent Office (EPO) in effect in countries participating in the Unified Patent Court (UPC) are subject to the jurisdiction of that Court. However, patent proprietors have the option to opt their European patents out from the UPC’s jurisdiction. Such opt-outs are defensive in nature as an opt-out protects a European patent from being revoked in a single court action. Opted-out patents can only be revoked in national proceedings brought on a country-by-country basis.

Given the defensive nature of UPC opt-outs, it would be expected that one factor which patent proprietors will consider when deciding whether to opt patents out of the jurisdiction of the UPC would be the likelihood of revocation actions being brought against their patents. EPO oppositions are by far the most common form of revocation action which are brought in Europe. Hence, EPO opposition rates should provide a reasonable indication of the rate at which revocation actions are sought against patents in different technologies. With that in mind, it would be expected that in general there might be a correlation between EPO opposition rates and opt-out rates in different technologies. But is that really the case?

Differences in opt-out rate vs EPO opposition rate across technical fields

The figure below shows the opt-out rate vs. EPO opposition rate for the different technology fields for which the EPO grants patents apart from food chemistry which has been omitted in the interests of clarity due to the exceptionally high rates of opposition filed against Food Chemistry patents.

As can be seen in the graph above, there is relatively little correlation between opt-out rates and opposition rates across technologies as a whole. However, a glance at the graph does demonstrate that there are very few technologies associated with high-opt out rates which are associated with low opposition rates and vice versa.

Part of the problem with considering opt-out and opposition rates across all technologies is that opposition rates vary considerably across technical fields. For that reason, it is worthwhile drilling down and considering patents in related technical fields.

Assessing opt-out rates and opposition rates in electrical engineering fields

The following graph illustrates opt-out rates and opposition rates, but this time only considering technologies in electrical engineering.

When only electrical engineering patents are considered, then a much stronger trend appears with a significant proportion of variation of opt-outs across different fields being correlated with EPO opposition rates. As a whole, across electrical engineering technologies, differences in opposition rate account for around a third of the variation of opt-out rates. As can be seen from the graph above, most of the remaining variation is accounted for by the relatively high opt-out rate of computer technology patents compared with the numbers of oppositions filed against such patents and the relatively low opt-out rate of semi-conductor patents.

Comparable patterns in patents related to mechanical engineering

Similar trends can also be observed with mechanical engineering patents, with one obvious clear exception, namely patents in the field of textiles and paper, which have opt-out rates far in excess of what might be expected given the relatively low numbers of oppositions which are filed against such patents. In the graph below, the trendline for mechanical engineering patents other than in the field of textiles and paper is shown. If textiles and paper inventions are excluded, the variation in opposition rates accounts for around half of the variation in opt-out rates across mechanical engineering technologies.

More variation in chemical technology fields

Significantly more variation is to be found in chemical technologies, illustrated in the graph below. Food chemistry has been included in this graph as the higher rates of opposition in chemical technologies as a whole mean that the inclusion of food chemistry with its very high rates of opposition does not cause the opposition rates for other technologies to cluster as would have done in the first figure.

As can be seen in this graph, there is practically no correlation between opt-out rates and opposition rates across chemical technologies, with variation in opposition rates explaining only around 7.5% of the variation in opt-out rates in chemical fields. This suggests that factors, other than the actual likelihood of revocation actions being brought, are the primary factors behind the variation in opt-out rates in different fields of chemistry. Most likely, the significant value of some chemical patents, particularly those in the pharmaceutical field, results in extra caution on the part of patent proprietors in certain fields where the risk of a revocation action is not insignificant, and the potential commercial impact of the loss of individual patents can be very large.


Proprietors’ assessment of the risk of revocation is clearly only one of many factors which proprietors consider when deciding whether to opt their patents out of the jurisdiction of the UPC.  The costs involved in filing and registering UPC opt-outs are limited and as a result significant numbers of European patents have been opted-out. If the risk of central revocation is a significant one, it would be expected that patent proprietors are well placed to identify patents which are at risk.  However, other factors are clearly of importance and the extent to which out-opts have been risk-based has varied considerably across different technological fields.

The outcome of the test case filed by Mathys & Squire to secure public access to evidence in the Unified Patent Court (UPC) is expected early in 2024. Commentary provided by Mathys & Squire has been featured in JUVE Patent, Law 360, the Solicitors Journal and World Intellectual Property Review.

An extended version of the press release is available below.

The Unified Patent Court (UPC) has now set a schedule for hearing an appeal which is likely to be determinative on the rights of the public to access evidence and pleadings filed with the Court.

Two weeks ago, Mathys & Squire brought a test case before the Munich Section of the Central Division of the UPC arguing that, by default, evidence and pleadings filed with the Court should normally be made available to third parties on request and that access should only be restricted when it is absolutely necessary to protect confidential or personal information.[1]

Mathys & Squire also applied to intervene in an appeal where a party is seeking to overturn the decision of a judge in the UPC’s Nordic-Baltic division to permit a third party to obtain copies of evidence and pleadings.[2]

The appeal pending before the UPC Court of Appeal has now been assigned to the second panel of the Court of Appeal with judge Ingeborg Simonsson being appointed as the judge-rapporteur for the appeal. Ms. Simonsson has been a full time judge in the Swedish courts since 2008 and in 2020 was appointed Judge in the Svea Court of Appeal and the Patent and Market Court of Appeal.[3]

Judge Simonsson has now set a 15-day deadline for the parties to comment on Mathys & Squire’s application to intervene. She will then make a decision as to whether or not to accept Mathys & Squire’s application. The parties will then be given a further 15 days to submit written arguments to the court on the substance of the appeal. An oral hearing will then be held on 15 February 2024.

Nicholas Fox, Partner at Mathys & Squire, says: “We welcome the appointment of Judge Simonsson as judge-rapporteur in the appeal. The Swedish Courts have an exceptionally long history of transparency and openness, and the principle of public access is considered an essential principle of Swedish law. Judge Simonsson will be an excellent judge to consider this appeal.”

The case pending before the Munich Section of the Central Division has been stayed pending the outcome of the Appeal.[4] 

Alexander Robinson, Partner at Mathys & Squire, says: “The decision to stay the proceedings pending the Court of Appeal decision supports our arguments that we have a legal interest in the appeal and should be allowed to intervene.”

In the cases being brought, Mathys & Squire are being represented by Nicholas Fox and Alexander Robinson, partners from our London office, and Andreas Wietzke, a partner from our Munich office.

[1]  Pending as case no. APP_588681/2023. A copy of the arguments that Mathys & Squire submitted to the court is available here.

[2] Case No. APL_584498/2023,

[3] A biography of Judge Simonsson can be found here.

[4] Preliminary Order UPC_CFI_75/2023

Four Mathys & Squire Partners, Anna Gregson, Dani Kramer, Sean Leach, and Martin MacLean, have been recognised in the 2024 edition of IAM Strategy 300 Global Leaders.

Since its inception, the guide has been a platform that highlights the top experts within the field of intellectual property (IP). Securing a spot in the esteemed IAM Strategy 300 Global Leaders is a testament to a professional’s strategic prowess in intellectual property, as recognised by peers across various domains.

IAM says: Anna Gregson couples a nuanced understanding of patent law with a deep knowledge of the biotechnology and life sciences industries to provide holistic and proactive strategic advice. She leaves no stone unturned in her analyses in order to deliver the best possible result for her clients.

Read Anna’s full interview here.

IAM says: Highly experienced patent attorney, Dani Kramer brings a vast knowledge of the law and experience at the European Patent Office. He is the go-to practitioner for providing guidance when dealing with complicated and sensitive cases at the EPO.

Read Dani’s full interview here.

IAM says: Sean Leach is a big picture thinker who effectively finds and maximises the commercial value for clients in the hard technology sector. He pairs immense technical knowledge with an understanding of his clients’ commercial goals to deliver top-tier strategic advice.

Read Sean’s full interview here.

IAM says: Martin MacLean is a dynamic and agile attorney who masterfully devises creative IP solutions. He goes above and beyond to meet and exceed client expectations and dives into the details of their business to ensure his advice aligns neatly with their commercial goals.

Read Martin’s full interview here.

We would like to express our thanks to every client, contact, and peer who dedicated their time to engage in the research process. 

The full 2024 edition of the guide is available here.

The UK Intellectual Property Office (UKIPO) has published new guidance setting out that patent examiners should not object to inventions involving an artificial neural network (ANN) under the “program for a computer” exclusion of section 1(2)(c) of the Patents Act 1977.

On 21 November 2023 the UK High Court handed down its judgement in Emotional Perception AI Ltd v Comptroller-General of Patents, Designs and Trade Marks [2023] EWHC 2948 (Ch). The judgement related to whether an invention involving an ANN constituted excluded subject matter as a “program for a computer … as such” under section 1(2)(c) of the Patents Act 1977.  

The judgement held that the trained ANN of the claimed invention was not a computer program at all and thus did not engage the relevant exclusion. The judgement also held that, in any case, the invention involved a substantive technical contribution going beyond a program for a computer “as such”. 

Following this judgement, the UKIPO temporarily suspended their guidelines for examining patent applications relating to artificial intelligence (AI) inventions (see here) and published brief new guidance (see here).  Under the new guidance, patent examiners should not object to inventions involving an ANN under the “program for a computer” exclusion of section 1(2)(c) of the Patents Act 1977.

Notably, the judgement did not address whether an invention involving an ANN constitutes excluded subject matter as being a “mathematical method … as such” under section 1(2)(a) of the Patents Act 1977, which is another objection that is often raised in relation to AI and machine learning inventions.

This is a significant development which might, for the time being at least, make it easier for applicants to obtain patents for AI inventions in the UK.  It remains to be seen whether the judgement will be appealed.

Mathys & Squire has filed a test case to secure public access to evidence in the Unified Patent Court (UPC). Commentary provided by Mathys & Squire has been featured in Commercial Dispute Resolution, The Global Legal Post, JUVE Patent, Kluwer Patent Blog, Law 360, Managing IP, The Patent Lawyer and World Intellectual Property Review.

An extended version of the press release is available below.

Mathys & Squire has brought a test case to try to improve the transparency of the operations of the UPC.[1]

The Unified Patent Court Agreement requires that proceedings before the court are to be open to the public unless the Court decides to make them confidential in the interests of the parties, affected persons or in the general interest of justice or public order.[2]

It was for that purpose that, throughout the drafting process of the Court’s rules of procedure, provision was made that written pleadings and evidence would be accessible by third parties on request.

Two recent decisions[3] of the Central Division of the UPC, have, however, interpreted the Rules of Procedure in a restrictive manner limiting access to third parties who the Court considers can demonstrate that they have a “concrete and verifiable, legitimate reason” to access documents filed with the court. In practice, this means most if not all members of the public will be unable to access evidence and pleadings pending before the court.

We consider that the way that the Central Division has interpreted the Rules of Procedure is wrong.

It is in the public interest that the public can inform themselves about the strengths and weaknesses of cases pending before the UPC so that they can make commercial decisions about the patents which are being sought to be revoked or enforced in the Court. Further we consider that openness and transparency is vital in order for the public to be able to hold the court to account.

The principles of openness and transparency in Court proceedings and the rights of third parties to access public documents are well established principles in International and European law. Many European courts provide third parties with free access to pleadings and evidence filed with their courts.

Indeed, the European Patent Office, which has the power to revoke European and Unitary Patents after grant in opposition proceedings is a paragon of openness in this respect as all pleadings and written evidence filed in such proceedings is made available for download from the European patent register subject only to narrowly defined exceptions where confidentiality is required to protect personal or confidential information.[4]

In view of the importance of this matter, Mathys & Squire have filed a test case asking the Central Division to reconsider its restrictive approach. Mathys & Squire have also filed to intervene in an Appeal where a party is seeking to overturn the decision of a judge in the UPC’s Nordic-Baltic division to permit a third party to obtain copies evidence and pleadings.

Copies of the pleading we have submitted to the Central Division can be accessed here.

In the cases being brought, Mathys & Squire are being represented by Nicholas Fox and Alexander Robinson, partners from our London office, and Andreas Wietzke, a partner from our Munich office.

[1] The case is pending application APP_588681/2023

[2] Article 45 of the Unified Patent Court Agreement

[3] Order no. 550152 in ACTION NUMBER: ACT_459505/2023 issued 20 September 2023 (UPC number UPC_CFI_1/2023) & Order no. 552745 in ACTION NUMBER: ACT_464985/2023 issued on 21 September 2023 (UPC number UPC_CFI_75/2023).

[4] Article 128 EPC and Rules 144-147 EPC.