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.
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.
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:
- Properly construe the claim.
- Identify the actual contribution (although at the application stage this might have to be the alleged contribution).
- Ask whether it falls solely within excluded matter.
- If the third step has not covered it, check whether the actual or alleged contribution is actually technical.
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.
Mathys & Squire is delighted to announce that our trade mark team has been recommended in the 2024 edition of the World Trademark Review (WTR) 1000 guide. Partners Gary Johnston and Margaret Arnott retain their position as Recommended Individuals, whilst Rebecca Tew features for the first time.
The WTR 1000 directory illustrates the depth of expertise available to clients, serving as the definitive tool for those seeking outstanding trade mark services worldwide. Now in its 14th year, the WTR 1000 has firmly established itself as the definitive ‘go-to’ resource for those seeking stellar trademark expertise and partners worldwide. Mathys & Squire has been recommended for its work in the trade mark field, specifically in the ‘prosecution and strategy’ category. Our “team of experts share their clients’ ambition, passion and entrepreneurial spirit, going above and beyond what is expected when it comes to service delivery.”
Alongside our firm ranking, Partners Margaret (recommended in the categories of ‘Enforcement & Litigation’ and ‘Prosecution & Strategy’), Gary (recommended in the category of ‘Prosecution & Strategy’), and Rebecca (recommended in the category of ‘Prosecution & Strategy), have received the following testimonials:
“Margaret is a bright and responsive attorney whose team is very professional and extremely experienced, with expert knowledge of all trademark matters. They handle global trademark registrations with a deft touch and help to successfully resolve any international issues.”
“Gary is a well-respected IP practitioner who provides pragmatic and well-thought-out advice.”
“Rebecca is an impressive practitioner who successfully overcomes challenges and handles opposition proceedings through accurate strategic advice and strong arguments.”
We would like to thank each of our clients, contacts and peers who took the time to participate in the research. For more information and to see the full WTR 1000 rankings, please click here.
Following the Decision of the Administrative Council of 14 December 2023, the European Patent Office (EPO) has announced a general increase in official fees, a year after its last fee increase in 2023. A complete breakdown of the increases is available on the EPO website.
Whilst some fees have been left unchanged, others have undergone modest changes of only about 4%. Most notably the renewal fees for the 3rd to 5th year have jumped significantly, ranging from 8 to 30% increases. Interestingly, the 6th year renewal has actually been reduced (2%).
For more information about the fee increases and how they may affect you, as well as to discuss any potential cost savings, please get in touch with your usual Mathys & Squire attorney, or send us an enquiry.
Commentary by Partner Alan MacDougall has been featured in The Patent Lawyer, highlighting differences between the UK and US patent filing process and the importance of protecting research and development investment for banks whenever possible.
An extended version of the press release is available below.
The UK’s biggest banks have filed just a fraction of the patent applications of their American counterparts over the last 10 years, with the top five UK banks collectively applying for just 290 patents while the top 3 US banks collectively applied for 5,027, says intellectual property law firm Mathys & Squire.
The low number of patent applications filed by UK banks is partly due to the lengthy and complex filing process in the UK but also due to a misplaced notion that software is not patentable in the UK. This has resulted in more frequent and more successful filings in the US.
The US patent application process has slowed down significantly over recent years as the number of applications has increased. Even with much longer wait times, it remains markedly easier to obtain protection for a financial services related patent in the US than in the UK.
Whilst obtaining patent protection for software related inventions is possible in the UK, the UK IPO has long been reluctant to grant patents for software that relates to financial products. The strict rules it applies to whether a piece of software is patentable means that relatively few fintech software patents are actually granted in the UK, discouraging the banks from trying in the first place.
Alan MacDougall, Partner at Mathys & Squire, says that it is essential that banks protect their research and development (R&D) investment as much as possible by patenting their technology where they can. In a competitive marketplace, unique technology can set financial services businesses apart from their rivals and help to win and retain customers.
Patent-protected technology can also serve as a significant source of income in itself, as the owners of the technology can then license it to other businesses and can be used as a bargaining tool in the event that they find that their products infringe the rights of others.
While it’s common to see tech companies secure IP with patents, financial services companies frequently do not take the same approach. Alan MacDougall says that “Banks are amongst the biggest investors in tech development in the UK but they are still not being as vigilant as they should be about protecting the intellectual property that their funding helps to generate.”
“We’d never expect a tech company to release a new product without trying to patent it first. Financial services institutions should be thinking about their IP in the same way. They should be trying to protect their IP with patents. Leaving that valuable IP open to being copied reduces the return on the investment from the R&D that the banks are undertaking.”
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.
Conclusions
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.
Commentary by Partners Nicholas Fox and Alexander Robinson has been featured in Kluwer Patent Blog, Law 360, Managing IP, Solicitors Journal and World Intellectual Property Review, giving an insight into the impact of the Court of Appeal’s order on future interventions in proceedings at the UPC.
An extended version of the press release is available below.
The Unified Patent Court (UPC) Court of Appeal has dismissed an attempt by Mathys & Squire to intervene in a critical test case on public access to documents filed with the Court. An attempted intervention by the law firm Bristows was also dismissed.
Background
In October the UPC’s Nordic-Baltic regional division granted a request by a member of the public to access documents filed at the court in a patent infringement action between Ocado and Autostore. However, access was stayed after Ocado asked the UPC Court of Appeal to overturn that decision, which conflicts with a narrower view taken by the UPC’s Central Division requiring members of the public to prove a “legitimate reason” in order to access such documents.
In November, Mathys & Squire applied to intervene in the Appeal on the basis that Court of Appeal’s decision was likely to be determinative of a separate application for access to documents that Mathys & Squire has filed before the UPC’s Central Division. Bristows likewise applied to intervene in December in view of a pending request that the firm had filed for access to documents at the UPC’s local division in the Hague.
The Court of Appeal’s order
In its ruling (see here), the Court of Appeal interpreted the grounds on which third parties can intervene in an appeal very narrowly, limiting applications to cases where a third party has a direct interest in the wording of an order which the Court might issue.
Specifically, the Court held that an intervention requires a “direct and present interest in the grant by the Court of the order or decision as sought by the party, whom the prospective intervener wishes to support and not an interest in relation to the pleas in law put forward.”
Our application to intervene, and that of Bristows, were both rejected on the grounds that an interest in a decision based on an “indirect interest” such as “similarity between two cases” (e.g. similarity between our request for access to documents at the Central Division and the request for access to documents at the Nordic-Baltic division) was insufficient.
The Court of Appeal’s order sets an important precedent. It means that interventions in proceedings at the UPC will only be allowed in narrowly-defined circumstances. In adopting this narrow interpretation, the UPC Court of Appeal has adhered closely to the practice of the CJEU, where possibilities for interventions by third parties are very limited.
Where next for our application at the Central Division?
The Munich Section of the Central Division has stayed Mathys & Squire’s application to access for documents pending the outcome of the Ocado and Autostore Appeal. We therefore have to wait for the outcome of the Ocado and Autostore Appeal until our application for access to court documents will proceed further.
If the Court of Appeal delivers a decision which provides wide-ranging guidance on the interpretation of the UPC rules on public access to documents, with reasoning which is applicable to most circumstances, this may resolve our concerns about the Court’s current restrictive approach to public access to pleadings and evidence filed with the Court.
It is, however, possible that these issues will not be resolved in the Ocado and Autostore appeal. The circumstances of the access request in the Ocado and Autostore appeal raise specific questions which may cause the Court of Appeal to issue a narrow ruling. We understand that one of the objections that Ocado have raised is that some of the requested pleadings were never properly served and hence do not form part of the court file.
Mathys & Squire have been in contact with the member of the public whose original request for access is the subject of this Appeal. We have provided him with copies of our materials to support his arguments in defence of the public interest in judicial transparency, and wish him the best of luck.
Continuing reservations over speed and transparency at the UPC
Our concerns about the transparency of court proceedings at the UPC persist.
The original request for access to the Ocado and Autostore documents was filed by a member of the public in August last year. Although the Court of Appeal was to hold oral proceedings in mid-February, the hearing has now been rescheduled for mid-March and hence any decision by the Court of Appeal is unlikely to issue much before April. This means that it will have taken over 6 months for the UPC to process what should be a simple administrative request for access to court documents.
According to the UPC’s case management system, 13 applications for access to court documents have been filed since the UPC opened in June. Two of those requests have been rejected, leaving 11 still pending. To date, none of the applications have resulted in members of the public having sight of evidence and pleadings filed with the court.
We will await the outcome of the Ocado and Autostore with interest.
Mathys & Squire is delighted to have been recognised in JUVE Patent’s UK rankings 2024 for the fifth consecutive year in the fields of ‘Pharma and biotechnology’, ‘Medical technology’, ‘Chemistry’, ‘Digital communication and computer technology’, ‘Electronics’ and ‘Mechanics, process and mechanical engineering’.
As well as a practice-wide recommendation for the firm, four of our Partners have maintained their status as Recommended Individuals: Hazel Ford and Philippa Griffin (for ‘Pharma and Biotechnology‘), Chris Hamer (for ‘Chemistry‘) and Jane Clark (for ‘Digital Communication and Computer Technology‘ / ‘Mechanics, Process and Mechanical Engineering‘).
Partner Chris Hamer has also maintained his specialist Leading Individual ranking once again this year for his expertise in chemistry, one of only eleven UK patent attorneys noted for their technical speciality.
Each year, JUVE Patent rankings are carefully researched by an independent team of journalists, who send out questionnaires and conduct interviews with lawyers, clients, legal academics and judges. The 2024 edition brings together UK patent practices, solicitors and barristers, who, according to the in-depth research carried out by a team of journalists, have a leading reputation in the UK patent law market.
To see the JUVE Patent UK 2024 rankings in full, please click here.
