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International Women’s Day is a globally recognised day that celebrates the social, economic, cultural, and political achievements of women. This day also serves as a call to action for gender equality and to raise awareness of the struggles and challenges that women face worldwide. In the context of innovation and intellectual property (IP), women have made significant contributions and advancements in various fields.

However, the representation of women in these industries remains disproportionately low. This year, Mathys & Squire is celebrating International Women’s Day by highlighting the experiences of women in the IP profession, as well as looking at their idols, inspirations and motivators behind their success.

Alex Stacey – Technical Assistant

“My decision to pursue a career in patent law is driven by the desire to continue learning about how the world functions, the same reason that I chose to pursue undergraduate and postgraduate study in physics.

As a Technical Assistant, I am fortunate to spend most of my time at work learning – either by teaching myself about new inventions or being taught how to apply the law to help inventors and businesses use their legal right to stop others practicing inventions that belong to others.

My role models are Rosalind Franklin and Marie Curie. Rosalind is an idol of mine for the work that she contributed to understanding the structure of DNA, despite being unacknowledged during her lifetime, and Marie Curie who was the first woman to be awarded a Nobel Prize, the first person to be awarded two Nobel prizes, and so far, still the only person to have won Nobel prizes in more than one field.

Marie worked in science throughout her life, not only for the pursuit of knowledge, but also applying her work to provide real life benefits during World War I. Radiological cars nicknamed ‘petites Curies’ provided X-rays to soldiers and Marie Curie visited the front line more than 30 times over the course of the war.”

Caroline Warren – Partner 

“I’m a physicist by training – I studied physics because I wanted to learn about why the world works as it does. I now work with technologies ranging from computer networking to medical devices via green technologies and consumer products.

My science idol is Maggie Aderin-Pocock. I love the fact that, after a career at the top levels of research in astrophysics, she is so passionate about communicating science and inspiring young people.”

Jessie Harrison – Technical Assistant

“I was attracted to study material science and engineering by a desire to learn about the ‘stuff’ our world is made from, and how we can engineer a better future through smarter materials.  

Now in a career in IP, I am driven by helping entrepreneurs and startups protect their ideas. British female entrepreneur, Mandy Haberman, is a particular inspiration. Haberman developed the Anywayup® cup, the world’s first totally non-spill toddler cup. Through a series of high-profile ‘David and Goliath’-style court cases, she successfully defended her intellectual property and received great commercial success. I hope to help many other entrepreneurs protect their inventions and realise their potential.”

Lindsay Pike – Technical Assistant

“I studied biology because I was interested in the natural world and everything that lives in it. I later specialised in genetics – I was fascinated by how DNA results in the differences between species and individuals.

I chose to pursue a career in patents because I wanted to stay exposed to new discoveries and inventions across a broad spectrum of biological areas. I now work with new treatments for a range of medical conditions, including cancer, blood clots that may lead to strokes or heart attacks, and genetic disorders.

It’s hard to pick just one science idol but since I named my cat after her, I have to choose Cecelia Payne-Gaposchkin, the astronomer/astrophysicist who first discovered stars are made of hydrogen and helium. She faced a lot of opposition and difficulties because she was a woman, but she continued in science nonetheless.”

Nayna Chunilal – Technical Assistant

“I feel very fortunate to have worked alongside some brilliant women throughout my career. They are passionate and successful lawyers, scientists, communicators, engineers, mathematicians. They are also mothers, daughters, sisters, friends. They’re inspiring, creating and breaking barriers every day. I’m proud to say that some of those women are why I’m in IP today. As Eleanor Roosevelt once said, “well-behaved women rarely make history” and the same can be said for the women in IP helping to change the status quo.”

Sarah Le Mesurier-Edwards – Managing Associate 

“I’m a materials scientist by training – I studied physical natural sciences, specialising in materials science, because I wanted to contribute to the innovation of life-changing technology. As a patent attorney, I enjoy being at the cutting edge of technological advances and seeing how they shape the world around us. I joined Mathys & Squire earlier this year and I am so grateful to be surrounded by a team of strong, successful women.

My science idol is Katherine Johnson who has a truly inspiring story. She overcame discrimination over her race and gender to fulfil a critical part of NASA’s first successful manned space mission.”

Eliz Huseyin – HR Administrator

“Let us choose for ourselves our path in life, and let us try to strew that path with flowers.” This quote, by French philosopher Emilie du Chatelet, resonated with me. Embracing that we are all individually unique with our own goals and dreams which takes us all in different directions of life. I’m proud to be working alongside strong women in IP who showcase hard work and determination.”

Susan Mutangadura – Paralegal

“My STEM idol Mae Jemison once said “Don’t let anyone rob you of your imagination, your creativity, or your curiosity. It’s your place in the world; it’s your life. Go on and do all you can with it, and make it the life you want to live.” This quote sits with me as it is a bold thing to listen to your imagination, lean into your creativity and forever be curious about the things in life. Mainly because, as we grow older such skills are hindered rather than natured due to life circumstances and the world that we live in.”

The above is just a small fraction of the many women that have helped shape Mathys & Squire, each an integral part of our team, and a testament to the hard work of women in IP. We would like you all to join us in wishing a happy International Women’s Day to all women around us!

The United Kingdom Intellectual Property Office (UKIPO) has announced an important Tribunal Practice Notice on 25 January 2023 concerning UK registered trade mark or design holders/representatives without a UK address for service (UK AFS).

This will predominantly affect owners of trade marks and registered designs who have designated the UK through an international registration filed through the World Intellectual Property Organisation (WIPO) and are subject to any opposition and cancellation proceedings. It is effective immediately.

For any inter partes trade mark invalidation, revocation, rectification and opposition proceedings, and registered design invalidation proceedings, the UKIPO will now seek a UK AFS before any formal serving of documents. Any non-UK addresses will not be accepted.

Invalidation, revocation and rectification

In the event of an application for invalidation, revocation, and/or rectification being filed against a UK designation of an international registration, the UKIPO will issue a preliminary letter directing that the affected right holder has one month to appoint a UK AFS, along with its intention to oppose the application for invalidation, revocation and/or rectification.

Failure to act will result in the UKIPO declaring the challenged trade mark or design registration as abandoned or invalid and being removed from the register.

Oppositions

In the event of opposition being filed against a UK designation of an international registration, the UKIPO will issue a notice of provisional refusal based on an opposition to WIPO, who will thereafter forward those grounds to the international registration holder, either applicant or representative.

The UKIPO will also issue a letter informing the applicant or representative, using the non-UK AFS, that there is a two month deadline to file a counterstatement in defence of the opposition and a UK AFS must be appointed.

Where a counterstatement has been provided but a UK AFS was not, the UKIPO will instruct the applicant to provide a UK AFS within one month.

Failure to act will result in the UKIPO treating the application as withdrawn in respect of those goods and services against which the opposition was directed.

Brexit – Filing new trade mark and design applications

From 1 January 2021 any new application for a trade mark or registered design filed at the UKIPO must have a UK AFS. This includes any UK trade mark or registered design applications filed within the first nine months following January 1, 2021, which claim the filing or priority date of an earlier EU trade mark (EUTM) or community design registration.

Brexit – cancellations or oppositions against Brexit clone registrations and comparable rights

Following the UK’s departure from the EU, the creation of existing rights (clone registrations) that are a result of existing EUTM or community design registration do not need a UK AFS. Many of these registrations retain a non-UK AFS.

UK opposition or cancellation proceedings commencing before 31 December 2020 will not be affected by the Tribunal Practice Notice 2/2023. The UKIPO will continue to use the non-UK AFS for the duration of the proceedings.

After 1 January 2024, this exemption will no longer apply, and a UK AFS will be required if the right is subject to any cancellation or opposition proceedings.

Key takeaways

It will only be required to designate a UK-based address for service if the UK designation of an international registration is the subject of an application for invalidation, revocation, rectification or opposition.

The Tribunal Practice Notice has clarified that this approach will only concern inter partes proceedings and has no impact or effect upon ex parte proceedings.

In response to this notice issued by the UKIPO, any non-UK holders of international trade marks or design registrations are strongly advised to appoint a UK-based AFS as soon as possible in order to reduce the possibility that crucial, time sensitive notices from the UKIPO will not be acted upon by the holder and result in the loss of rights. Holders should also ensure that all addresses are up to date.

Mathys & Squire can provide UK representation for international UK designations, and represent clients in trade mark opposition and cancellation, as well as design invalidity proceedings in the UK. The full details of the tribunal practice notice can be found here.

The European Patent Office (EPO) has published a draft version of the amended Guidelines for Examination which will enter into force on 1 March 2023. A summary of the main changes is included below.

Unified Patent Court

With the Unified Patent Court (UPC) sunrise period also due to begin on 1 March 2023, the Guidelines have been amended to extend existing provisions relating to national proceedings to include proceedings before the UPC. For example, where an infringement action in respect of a European patent is pending before a national court of a contracting state or the UPC, a party to the opposition proceedings may request accelerated processing (E-VIII, 5).

In addition, Guidelines C-IV, 7.2 introduce guidance on national prior rights in view of their importance for applicants in proceedings before the UPC. This section reflects the recently introduced practice under which the examiner expands the top-up search scope at the grant stage to include national applications and patents of the contracting states in so far as they are present in the EPO’s databases. The division informs the applicant about the outcome of the top-up search for national prior rights and any documents that are considered prima facie relevant for the application are communicated to the applicant.

Oral proceedings by videoconference

In accordance with the OJ EPO Decision 2022, A103, the wording of the Guidelines has been updated to recite that oral proceedings are held by videoconference, or, in exceptional circumstances, where there are serious reasons against holding the oral proceedings by videoconference, they may be held on the premises of the EPO (E-III, 1.2).

The guidance has also been updated to reflect the procedure for when technical problems occur such that the oral proceedings held by videoconference cannot be conducted openly and fairly, for example due to a total or partial breakdown in communication.

If the sound or image transmission of any of the participants taking part in the oral proceedings is lost, the chair will stop the proceedings until the transmission is re-established. If a participant is disconnected for more than a few minutes, a member of the division will contact that party to see if they are having technical problems. Any relevant information will be shared with all parties. If a party reconnects after a temporary connection failure, the chair will make sure that no information has been missed. Some arguments might have to be repeated.

If, despite all efforts of the participants, technical problems prevent the oral proceedings by videoconference from being conducted in accordance with the parties’ rights under Art. 113 and Art. 116, the videoconference will be terminated. A new summons to oral proceedings will be issued. As a rule, new oral proceedings will be held by videoconference unless there are serious reasons for not doing so (E-III, 8.2.3).

This may provide peace of mind to all parties involved in videoconference oral proceedings.

Summons to oral proceedings as the first action in examination of a divisional application

Part C-III, 5 of the Guidelines has also been updated to include a list of exceptional cases whereby the examining division may exceptionally issue a summons to oral proceedings as the first action in examination of a divisional application. Such exceptional circumstances include if:

Correction of erroneously filed application documents or parts

Section A-II, 6 of the new Guidelines has been introduced to reflect new Rule 56(a) of the Implementing Regulations which entered into force on 1 November 2022 (OJ EPO 2022, A3). This new provision relates to procedures by which an applicant can correct “erroneously filed” parts of a European patent application. This brings the European Patent Court (EPC) into conformity with PCT Rule 20.5bis which also allows correction of erroneously filed elements of an international application. Previously, the EPC only provided provisions by which ‘missing parts’ could be filed (Rule 56).

The application is examined on filing to check that it is entitled to a date of filing. If, during this check, the EPO establishes that the description, claims or drawings (or parts of them) appear to have been erroneously filed, it will invite the applicant to file the correct documents within a time limit of two months of a communication under Rules 56(1) and 56a(1).

Alternatively, if, within two months of the original date of filing, applicants notice that they filed erroneous application documents or parts, they should, of their own motion, file correct application documents or parts as soon as possible under Rule 56a(3). The guidelines set out that whether documents were erroneously filed depends only on the applicant’s statement as to what was intended. No further evidence is required by the EPO.

As with missing parts, if, after the filing date, the applicant corrects erroneously filed application documents, then the date of filing does not change, provided that all of the following criteria are satisfied:

It is also worth noting that erroneously filed application documents remain in the file, even if they are considered not to form part of the application as filed. As such, following publication of the application, the erroneous application documents or parts are open to file inspection.

Erroneously filed sequence listings may also be corrected under Rule 56a (A-IV, 5.2).

Sequence listings

The updated Guidelines also confirm the EPO’s position that an ST.26 sequence listing must be filed for all divisional applications, regardless of whether the parent application was filed prior to ST.26 coming into force.

The Guidelines state that, since the content of the disclosure of the invention is the responsibility of the applicants, any sequence listing which is to form part of the description must be filed by the applicant. The sequence listing of the earlier application is, thus, not automatically added to the dossier of the divisional application if:

This comes despite concerns that the requirement for all divisional sequence listings to be in ST.26 format places an unnecessary burden on users, as well as concerns that the requirement may force applicants to add matter in cases where the ST.25 sequence listing contained less information than the ST.26 sequence listing.

Contracting states to the EPC

Montenegro has also been added to the list of EPC contracting states following the effect of its ratification on 1 October 2022 (General, 6). As such, Bosnia and Herzegovina is now the only remaining extension state (A-III, 12).

Consultation

The EPO has invited comments on the updated Guidelines by way of a consultation running until 4 April 2023. More information on the consultation can be found here.

Following the Decision of the Administrative Council of 14 December 2022, the European Patent Office (EPO) has announced a general increase in official fees by 4-6% from 1 April 2023 – just a year after its last fee increase in April 2022. Full breakdown of the increases is available on the EPO website.

The fees with the largest increase include excess pages, excess claims per claim 16-50, and examination, whilst the filing fee for an application in character-coded format is the only one to decrease in price.

With the increases in mind, it might be sensible to pay certain fees early, before the rates go up. For example, requesting examination and paying renewal fees can be performed several months ahead of the official deadline so applicants may find it worthwhile to review their patent portfolios and check if any fee payments can be made ahead of the 1 April 2023.

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.

Data and commentary provided by Mathys & Squire has featured in articles by The Times, The Patent Lawyer, UK Tech News, L’Entrepreneur, Business & Innovation Magazine , Facts Chronicle, World Intellectual Property Review and The Business Magazine providing an update on the rapid growth in semiconductor patents applications.

An extended version of the press release is available below.

There have been a record 69,190 global patents for semiconductors filed in the past year*, up 59% from 43,380 five years ago and 9% more than the 62,770 filed in 2020/21, shows new research by Mathys & Squire, the leading intellectual property law firm.

 R&D in the semiconductor industry has underpinned the growth in technology and the intense competition within the sector has ensured that innovation continues at a fierce pace.

The global semiconductor industry is forecast to be worth $1 trillion by the end of this decade – up from $590 billion in 2021**.

US giants Intel and AMD have been locked in a years-long rivalry to dominate market share within computers by designing ever faster, higher-capacity processors. Meanwhile companies such as Cambridge-based Arm have targeted semiconductor design for mobile devices. Such intense commercial rivalries often lead to the active filing and enforcement of patents.

By 2030, the automotive sector is predicted to make-up 15% of global demand for semiconductors, up from 8% in 2021***. Another key area of growth is the ‘Internet of Things’, including everything from wearable tech to smart homes and even smart cities.

As rising geopolitical tensions have led to trade barriers for key technologies, Governments have taken steps to secure their access to semiconductors.

Last year, the US Congress passed the CHIPS and Science Act, which allocated $280 billion to promote the research and manufacture of semiconductors in the United States. The European Union is currently considering a European Chips Act in order to boost Europe’s semiconductor industry.

As the growth of domestic semiconductor industries becomes a feature of more countries’ industrial policies, we can expect new patent filings to continue as businesses seek to protect and monetise their technological advances.

China filed 55% of global semiconductor patents in the past year

In 2021-22, 55% of semiconductor patents (37,865) were Chinese in origin. China has placed a major focus on boosting domestic semiconductor production in order to reduce dependence on western technologies.

The largest individual filer in 2021/22 was semiconductor giant Taiwan Semiconductor Manufacturing Company (TSMC) Limited, which was responsible for 4,793 patents – 7% of all patents worldwide.

18,223 of the patents filed in the last year (26% of the total) were filed in the United States. The top US filer was California-based Applied Materials Inc, with 209 patents, followed by SanDisk (50 patents) and IBM (49 patents).

In contrast, the UK accounted for only 179 patents, just 0.26% of the global total.

Edd Cavanna, Managing Associate at Mathys & Squire, says: “Governments are increasingly concerned about the fragility of global supply chains and are taking steps to promote semiconductor research and production domestically. New technologies which emerge from this global technology race will be protected by patents which are likely to be fiercely enforced.”

“Global powers such as the US, China and the EU are competing to be leaders in semiconductor technology. That says it all regarding their importance for the future of the economy.”

“However, the UK lags behind other parts of the world in developing semiconductor technology. The UK Government may wish to consider whether current funding structures provide enough support to research and development in this vital field.”

*Year end September 30 2022, Source: World Intellectual Property Organization
**Source: McKinsey
***Source: McKinsey

Germany has finalised its approval of the Unified Patent Court (UPC), opening the UPC’s case management system and kicking off the court’s sunrise period from 1 March. The start date for the UPC is now 1 June 2023.

Germany’s move brings closer the biggest development in European IP law since the creation of the European Patent Office in 1977. The UPC has been an aspiration for the EU for half a century with several attempts at introducing a single European patent court blocked over the years before a breakthrough was finally made in 2013. Following a number of other challenges over the last few years, the UPC is on the precipice of finally coming into force.  

The UPC – presiding exclusive jurisdiction over European patent litigation – means businesses will only need to make one legal claim to enforce their patents across Europe. Costs will reduce so much that they will be comparable to making a claim in only one country previously. The new process will also make it more convenient to enforce patents across Europe for UK and EU businesses.

The start of the UPC’s sunrise period means businesses have three months to decide whether to opt their patents out of the UPC before full commencement. Businesses that anticipate having to defend their patents may wish to exercise their opt-out. Opting out would prevent competitors from ‘knocking-out’ their patent across Europe in a single judgement, making it easier to defend their patents from challenges.

Andreas Wietzke, Partner at Mathys & Squire says, “UK businesses need to seriously consider whether it is best for them to opt out of the UPC now that the Sunrise Period has begun.”

“The UPC has long been a dream for the EU and provides many benefits for those wanting to enforce their patents across the single market. But for existing patent holders, it could mean an increased risk that their IP will be challenged, with a single judgement able to ‘knock-out’ patents that had applied in several jurisdictions across Europe.”

“The ease at which patents could be challenged may incentivise competitors to gamble and discover if they can disrupt their competition now that it is more convenient and cheaper to do so. UK businesses have three months to decide how to best protect their IP before the UPC goes into full effect.”

The UPC was first agreed in 2013 but was held up for years by the domestic ratification processes of member states. Germany’s final approval of the system means that it is set to become fully operational in three months once the sunrise period elapses.

French luxury brand Hermès has prevailed in a significant US court case after a year-long trade mark battle. Mason Rothchild’s ‘MetaBirkin’ non-fungible tokens (NFTs) were found to violate Hermès’ trade marks for its renowned Birkin bag, making Rothschild liable for trade mark infringement, trade mark dilution, and cybersquatting.

The trial is one of its kind, in which we see the interplay of intellectual property law, fashion and technology. It has also set an important precedent on what may be considered artistic expression and how NFTs are viewed in the eyes of intellectual property law.

The Birkin bag

Introduced in 1984 and named after the actress Jane Birkin, the Hermès Birkin bag quickly became iconic and is one of the most sought-after items in the fashion world. It is undeniable that the Birkin bag, manufactured in France with precise and distinctive craftsmanship, has evolved into a symbol of status and luxury and is known for its exclusivity. For the opportunity to own a Birkinbag, customers must have a purchase history with the brand and may often wait months or years to be offered one.

Hermès owns trade mark rights in the Hermès and Birkin marks and trade dress rights in the Birkin bag design.

The Hermès v Rothschild case

In 2021, Rothschild began selling MetaBirkin NFTs which portray reworked Birkin bags made of fur with vibrant colours and designs, rather than the conventional leather of the genuine Hermès bag and priced equivalently to a real Birkin bag.

Rothschild claimed that his MetaBirkin NFT project was an “artistic experiment” which provided commentary on Hermès’ manufacturing and examined society’s fixation on status symbols and luxury bags.

Upon discovery of MetaBirkin, the luxury brand filed a lawsuit in January 2022.

Hermès contended that Rothschild had capitalised on its goodwill; the NFTs were only bought because of the Birkin name which led consumers to assume the goods were formally affiliated with the brand and endorsed by Hermès themselves. Hermès contends that Rothschild not only used its Birkin mark without authorisation but also benefited openly from doing so by selling and reselling NFTs.

Rothschild relied on a fair use defence as per the First Amendment of the U.S. constitution and claimed that the NFTs are an act of artistic expression rather than trying to pass the artwork off as being associated with Hermès, drawing parallels with Andy Warhol’s paintings of Campbell’s soup cans.

Rothschild also relied on the ‘Rogers’ legal test. The criteria, which was first established in the Rogers v Grimaldi case from 1989, permits artists to use a trade mark without obtaining permission so long as it satisfies a basic requirement of artistic relevance and does not deliberately mislead consumers.

Although Hermès does not yet sell NFTs, unlike some of its peers in the luxury fashion world, the company’s global general counsel Nicolas Martin has commented there are plans to break into the metaverse, but this has been hindered by Rothschild as there will always be a reference to MetaBirkin.

The jury ruled in favour of Hermès, finding that Rothschild’s unauthorised versions of the Birkin bag constituted trade mark infringement, trade mark dilution, and cybersquatting as Rothschild used the MetaBirkins.com domain name, which the court determined was confusingly similar to that already of the luxury fashion house, awarding Hermès $133,000 in damages.

The jury also found that because of Rothschild’s unauthorised use of the bag as an NFT, this was not an artistic expression as it was explicitly misleading to consumers and therefore not a protected form of speech under the First Amendment of the U.S. constitution. The jury found that the ‘MetaBirkin’ was more akin to consumer goods, which are subject to trade mark regulations, than free speech-protected works of art, and that Rothschild did this to profit from Hermès’ goodwill.

Implications

This trial marks a win for IP protection for luxury brands in general, but perhaps the law lags behind innovation. While this case is the first to explore what constitutes “artistic expression” in the context of NFTs and IP, it is very fact specific and there is still much to consider regarding the legal issues presented by this new digital form of expression. It is the first of many judgements we can expect to see as the technology and ecosystem around NFTs continue to evolve and courts are required to provide more guidance on what constitutes infringement in the trade mark world and metaverse.

There is also some guidance on how intellectual property law is applied to digital assets and NFTs for artists and those working in this space, particularly in light of ongoing legal disputes such as Nike v StockX.

Questions do remain unanswered, and it may not be all over for Rothschild as there could be a possible appeal.

A trade mark dispute between Jack Daniels and VIP Products, around a dog chew toy resembling the Jack Daniels bottle, will be heard by the US Supreme Court. Although this case involves parody and trade mark law rather than NFTs, it could serve as a precedent for the conflict between freedom of expression and commerce, which will contribute to expanding the initial parameters set here in Hermès v Rothschild and help continue to define the scope of trade mark law in the digital age.

Mathys & Squire is delighted to announce that our trade mark team has been recommended in the latest World Trademark Review (WTR) 1000 guide. Praised for “having a specialised knowledge of trade marks”, as well as “adopting a client-oriented approach and delivering high quality results”, Gary Johnston and Margaret Arnott are also named as Recommended Individuals.

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 thirteenth year, the guide researchers have spent four months analysing the trade mark legal services market through an extensive interview process. 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’) and Gary (recommended in the category of ‘Prosecution & Strategy’) have received the following feedback:

“Margaret is practically a trade mark encyclopaedia. She can answer any question that a client may have and knows how to get great results. Margaret is also very pragmatic and will always provide the full picture prior to assisting in the decision making process.”

“Gary is an experienced, commercial and pragmatic lawyer who is highly knowledgeable about IP.”

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.

On 24 January 2023, the Science and Security Board (SASB) of the Bulletin of the Atomic Scientists announced that the hands of the Doomsday Clock have been moved forward. The clock, which is a universally recognised indicator of the world’s vulnerability to global catastrophe caused by manmade technologies, now stands at 90 seconds to midnight. The primary reason for moving the Doomsday Clock forward was said to be the war in Ukraine, notably the increased risk of nuclear war.

However, the SASB also consider the war to undermine global efforts to combat climate change. In particular, the SASB state that “countries dependent on Russian oil and gas have sought to diversify their supplies and suppliers, leading to expanded investment in natural gas exactly when such investment should have been shrinking.” The announcement is thus another reminder of the importance of investing in research and development of green energy if we are to mitigate a global climate catastrophe. 

One such form of green energy is solar energy, however, sunlight is an intermittent energy source meaning that it is not always reliable. Therefore, we need an efficient means of converting solar energy into another form of energy. This is where artificial photosynthesis may be useful. Plants can survive for periods without sunlight because during the day sunlight, water, and carbon dioxide are converted into chemical energy in the form of sugar.

The ultimate goal of artificial photosynthesis is to mimic this reaction, but on a larger scale and in a more controlled environment. It is hoped that the products produced by artificial photosynthesis could be used in the production of fuel (e.g. for cars), but also for supporting the growth of crops (e.g. using the acetate produced during artificial photosynthesis) in areas of extreme temperatures, drought, floods, and perhaps, even in space.  

Historically, artificial photosynthesis involves a photoelectrochemical (PEC) cell comprising a system that activates a photosensitive substance, such as a semiconductor, submerged in a liquid solution to trigger the chemical reaction. More recently, chemical engineers at École Polytechnique Fédérale de Lausanne in Switzerland developed a prototype of an ‘artificial leaf’ which enables water to be harvested directly from humid air using a novel gas diffusion electrode.

The artificial leaf comprises a small transparent wafer of glass fibres that is made by blending and compressing glass wool fibres into a wafer. The wafer is then coated with a thin porous transparent film of a conductor (fluorine-doped tin oxide) which functions as a gas-electrode. A second coating comprising a sunlight absorbing semiconductor material (i.e. copper(i) thiocyanate) is then applied.

Importantly, the novel gas electrodes have two key characteristics. Firstly, unlike previous gas diffusion electrodes, which are typically made from opaque carbon-based materials and are used in fuel cells which do not require sunlight (e.g. zinc-air batteries and nickel-metal hydride batteries) the electrodes used in the artificial leaf are transparent to maximise sunlight exposure of the semiconductor coating. Secondly, the electrodes are porous to maximise the contact with the water in the air. Specifically, unlike PEC cells which comprise a flat surface onto which the semiconductor material is applied, the artificial leaf comprises a three-dimensional structure that vastly increases the surface area to maximise contact with water in the air. The resulting artificial leaf is able to absorb light and convert gas-phase water into hydrogen.

Although, as with other forms of artificial photosynthesis, the solar to hydrogen conversion efficiency of the artificial leaf is relatively low, the prototype offers an important proof of principle that PEC cells can be adapted to use gas-phase water. It is hoped that following optimisation of, for example, the pore size, thickness of the coatings, and the semiconductor and catalyst used, the artificial leaf may be used in solar cells in both arid and humid environments.

Some sources suggest that the artificial photosynthesis market size will grow from 62 million USD in 2022 to 185 million USD in 2030. Currently, the market appears to be largely driven by government funding and grants for research and development (R&D), however, private companies are also increasingly investing in their own R&D. It is perhaps unsurprising that there has been an upwards trend in the number of patent filings relating to this field. Whilst there is still a way to go before the technology is ready for mass consumption, there are encouraging signs that we are moving ever closer to a truly reliable green energy source.

Peter Drucker and Edwards Deming are most often cited as saying that “you can’t manage/improve what you don’t measure.” How do you know which intellectual property (IP) rights to devote more resources to, if you do not know what value it is bringing to the business?

Unlike tangible assets such as cars, houses and machinery, intangible assets (IA) add value through contributions to creating revenue. Examples of IAs include intellectual assets, intellectual capital, and intellectual property. It is not only registered IP rights, such as patents, trade marks, and designs that add value, but the people, contracts, databases, trade secrets, know-how and business efficiencies as well. All of these can be individually valued, or as a combination within a product or service.

Such assets are created by virtue of our skills, experience, and innovative ability to solve problems, hence the intellectual and intangible labels. Businesses and organisations need to understand what intangible assets they possess, identify where these add value to the business or organisation, and finally, put a value on these assets. This process is what we call IA/IP valuation.

Usually, most valuation exercises take place following a trigger event which necessitates it, like a sale, licence agreement, investment round, calculating loss of earnings through infringement of IP, transfer pricing arrangements or even insolvency.

However, there are many benefits to getting ahead of trigger events and starting early. It is advised to get a formal valuation done right after an IP audit. The best practice would also entail updating it regularly as you generate new IAs and relinquish others – it is all about actively managing your portfolio and knowing its value, which can often open up unthought avenues for commercial gain.

Despite its significance and benefits, IP valuation is still shrouded in mystery. The common methods of its calculation fall into three main categories and the differentiating circumstances are the deciding factor as to which one is used. These are the cost method, market method and income method, all conceptually easy to understand, and not just based upon accounting and financial considerations alone, but also a market view of the company, its position within the market and opportunities for growth, including an analysis of risk, a consideration which can greatly affect value.

The cost method looks at the cost to reproduce either the exact same asset, a replication, or a similar asset with the same utility. The premise of value here is that no one would want to pay more for an asset which they could generate internally from scratch. Other considerations include how the asset has aged, or become obsolete, which reduces value. A drawback is that this does not actually give the company an indication of value, but rather opportunity cost and therefore ignores the value which owning the asset contributes to future income.

The market method for IP valuation works the same way as it does for tangible asset valuation. It involves investigating the market prices for a similar house on the same street for example, or the same age and make of a car. Just like a house will be adjusted for having an extension or larger garden, a patent value must be adjusted for countries where it is granted, field of use, claims cover and other factors. This method relies heavily on a liquid market with a lot of exact transactions, which is hard to find in an intangible asset class. Again, it only looks at the current market value, not considering the future capability to generate income.

Considering the drawbacks and the limited usefulness of the above methods, the most common measure of value for IAs and IP is the income method, which looks at financial modelling and forecasts for the business using the IP asset. The cash flows are calculated and then discounted back to today’s value using the discounted cash flow method. This method gives a more realistic valuation in terms of earning capacity and capabilities for the IP over time.

The full process of conducting an IP valuation exercise is supported by a team of people with expertise in financial modelling, market and risk analysis, sector specific knowledge, as well as IP from a commercial and legal perspective. Expert involvement allows for a comprehensive and reliable analysis of the assets and market in question, resulting in an accurate valuation.

Our Mathys & Squire Consulting team is well equipped to answer any further questions you may have.