In honour of the spooky season, we are exploring tales of IP terror for patent and trade mark attorneys. Now is the time to check your closet and cover your eyes, as we take you on a walk through the graveyard of IP despair, and discover what horrors wait for you on the other side of IP law.

Weak trade marks – a scary sight for trade mark attorneys

A trade mark’s essential function is to designate brand origin. This means that it must be capable of distinguishing the goods/services of one undertaking from those offered by other undertakings. Often it is tempting to choose a brand name that ‘sends a message’ about the business; from a marketing perspective, this may even be desirable. However, many brand owners risk falling into the descriptiveness/non-distinctiveness spooky trap. That is, adopting a trade mark that is not capable of protection, and not enforceable.

As trade mark attorneys, we see it time and again. Brand owners will be refused protection for their marks and will struggle to stop third parties from using identical and/or similar names. Who are the main culprits? Usually, it’s purely descriptive words (such as ‘plus’, ‘extra’, ‘ultra’), words describing the business or the goods/services offered, buzzwords characteristic to each industry, and/or combinations thereof.

For example, with the recent sustainability movement, terms such as ‘BIO’, ‘ECO’, ‘GREEN’ and ‘ENVIRO’ have become increasingly popular. Sadly, they are also unenforceable. Accordingly, trade marks such as ‘Bio Cup’, ‘Bio Organics’ and ‘Clean & Green’ have been refused protection. Avoid the pitfalls of descriptive/non-distinctive marks and check with a trade mark attorney whether or not your chosen name is capable of protection.

Patent ownership – keeping skeletons out of your closet

As a patent attorney, I would much rather see someone tricked with silly string on their front lawn than be faced with an ownership scenario gone wrong! Although inventions are devised by inventors, the actual legal owner of a patent application is the ‘applicant’ (later ‘patentee’ once grant is reached) which is typically a business entity employing the inventor(s). In many territories, including the UK, transfer of relevant IP rights from employee to employer is covered under statutory provisions. However, this does not mean that disputes can’t arise, or other situations in which case-specific demonstration of chain-of-title is required.

To be in a position to address future queries or confusion regarding ownership that may arise, it is always sensible to formalise the relevant chain-of-title via assignment documentation, and it is best to do this as early as possible in the process, in case the inventors move on, disbursing like ghouls in the night.

Further complications can arise where (e.g. third party) collaborators are involved, such as: other companies, subsidiaries of a company, a commissioned party, or ‘non-employee’ inventors such as PhD students. Any one the above may have a claim to (partial) ownership and thus, such scenarios should always be investigated and dealt with.

Not policing a trade mark – the nightmare that keeps on giving

Obtaining trade mark registration for your brand and proudly displaying the ® symbol next to it is great. Not policing your trade mark and allowing identical or similar marks on the register – not so great. Business owners will successfully protect their branding by registering the important elements of it as trade marks but will take a passive approach to enforcing them. This can have its own dangers, as seen below:

Competitors creating confusion on the market, loss of trade and damage to reputation

If a brand owner A started a business and registered the brand name and then brand owner B also enters the market with an identical/similar name, consumers may buy from B erroneously believing the products originate from A. This will divert trade from A and result in a loss of profit. Zoinks!

Things can turn even uglier if brand owner B offers products or services of a lower quality than A, as this could adversely impact A’s reputation. Indeed, consumers may be dissatisfied with the service provided by B and attribute the bad experience to A, not being able to clearly distinguish between the two brands. A howling shortcoming, if you ask us!

Lessening of one’s trade mark rights

Furthermore, allowing trade marks on the market and/on the register that are similar to brand owner A’s mark will result in its weakening. Oh-oh! Brand owner B would then be able to argue that A’s mark has low distinctive character (and is more difficult to enforce) since several similar trade marks co-exist without confusion among consumers. Conversely, we note that there is only one ‘Apple’ in the information technology sector, which is unlikely coincidental. If several businesses were allowed to adopt ‘Apple’-derivative names for the same goods and services, the brand would have lost its significance.

Defence to infringement available to third parties

Finally, if brand owner A decides to stop brand owner B from damaging its business and tries to issue infringement proceedings, but brand owner B registered the similar mark in the meantime, B will now have a defence to infringement. This will create an additional hurdle for A, which could have been easily avoided by proper policing. The simplest way to protect against similar marks creeping on one’s business is monitoring the market and setting up a watching service – a literal guardian watching the registers and informing brand owners of any potential dangers.

Prior disclosure – a fright for any patent attorney

There are not many scenarios patent attorneys dread, but one of the most horrifying ones involve invention disclosures prior to patent filing. Picture the chilling scene where a client finds out their invention they have worked on so hard is not patentable anymore because they previously exposed its intricacies to the public. A true nightmare for any attorney – with no application officially filed and the invention now publicly disclosed, the chances of gaining successful IP protection may well have just vanished like a ghost in the night.

Disclosing details of an invention prior to filing a patent application in such a way that the notional skilled person can now recreate it, would prejudice the novelty of an associated patent claim, a key requirement to be patentable. Although so-called ‘grace periods’ exist in certain territories – providing a period of typically 6-12 months prior to filing in which an inventor can disclose without destroying patent novelty – such generic grace periods do not apply at the UK or European Patent Offices.

But fear not, there is a means to hold steadfast against a complete loss of IP protection, as the registered design system does enjoy such grace period. Registered designs offer an alternative to protect certain features of your product, even after disclosure, as long as the disclosure did not occur more than 12 months prior to filing. Although the prior disclosure may render pursuing patent protection untenable, design features (e.g. the appearance) of a product can still be protected. This means any IP vampires wanting to leach off your hard work will struggle to recreate the look of your exact design without facing the wrath of a vengeful design attorney.

Luckily, we have encountered these terrors so you do not have to worry! Follow our advice and you will be safe from the IP ghouls and ghosts aiming to halt and hinder your progress. If in doubt, always reach out to an experienced attorney for advice.

The UK Government has published its annual report on the work of the Intellectual Property Office (IPO) and the role it plays in driving innovation and growth in the UK. In particular, the report identifies the UK as a leading innovator in key areas of green technology and outlines ongoing developments to the UK IP system.

The benefit of IP for the UK economy is clear – with investments in intangible assets now exceeding total tangible investments, the IPO estimates that industries with above average use of IP rights accounted for 15.5% of total UK employment and over half (£159.7bn) of all exported goods in the last year.

The Innovation and Growth Report 2021-22 sets out how the work of the UK IPO has promoted innovation and productivity within the UK and how it supports the UK’s position as a ‘global science superpower’. In particular, their strategy is characterised by two outward facing pillars: delivering excellent IP services and creating a world leading IP environment.

Core IP services

There is an ever-increasing volume of IP activity in the UK, with the last year seeing record numbers of trade mark and design applications (up on the previous year by 16.1% and 71.8% respectively) and the highest number of granted patents in over 30 years. The IPO has also cleared Covid-induced backlogs and examination times for its core IP services. A funding support scheme was launched to help innovative SMEs recover from the Covid-19 pandemic, as well as an IP audits scheme helping businesses fund professional audits of their IP assets.

The IPO has also made progress with the ‘One IPO transformation programme’ for streamlining IP services, with the opening of an integrated digital renewals service for all registered IP rights. They have also developed prototypes for ‘manage IP’ (IP management service) and ‘secure IP’ (digital IP application service) and have performed initial work for ‘research IP’ (searching and analysis tool for UK IP rights) and ‘challenge IP’ (digital hearings and tribunals service). The rollout of these four services under the ‘One IPO’ umbrella can be expected in 2023.

World leading IP environment

The second pillar of the IPO’s strategy is about developing IP policy frameworks for the UK, both domestically and internationally, emphasising the importance of securing post-Brexit trade deals. IP provisions in recent trade deals include a commitment from New Zealand to adopt a reciprocal right to compensation for visual artists, and an agreement from Australia to make reasonable efforts to accede to the Hague agreement on industrial designs. In addition, an innovation collaboration has been agreed with Switzerland and negotiations are underway with India, Canada and Mexico.

Looking ahead, the report identifies several ongoing research projects commissioned by the IPO to create a sustainable, innovative and world leading IP environment. These projects include developing trackers for copyright infringement and counterfeit goods, researching the use of trade secrets in SME communities, and exploring key areas of technology for the future, including metaverse/extended reality technologies, blockchain/NFTs, artificial intelligence (AI) and ‘green’ technologies. There has been a significant increase in worldwide patenting activity for renewable energy and green vehicle technologies (more than doubling in the last five years), with the UK ranked as the top patenting country for offshore wind power and green building technologies. Further analysis on green technologies is due later this financial year from the IPO’s green technologies working group.

Following the consultation on how to handle AI within the patent and copyright systems, the government’s response was published earlier this year, and the IPO has conducted various studies, including on the use of IP to incentivise investment in AI, and the use of AI to enforce IP rights. In September, they also released guidance for patenting AI inventions in the UK.

IP enforcement has also been a major area of work for the IPO, having published their new counter-infringement strategy in February and increasing intelligence capabilities and coordination with law enforcement.

We are pleased to see the ongoing success of the UK IP system and look forward to the upcoming developments and publications from the IPO.

Data and commentary provided by Mathys & Squire, as published in Legal Week, provides an update on the appointment of Unified Patent Court judges.

An extended version of the press release is available below.

The Unified Patent Court – Europe’s new single point of contact for patent enforcement – took a major step forward with the confirmation that 85 of its judges from across the EU have now accepted positions on the court.

Mathys & Squire, the leading intellectual property law firm, says that after years of delay, the Unified Patent Court is now fast approaching and that patent holders worldwide cannot afford to ignore it.

The UPC confirmed the appointment of 85 judges on the evening of October 19 after receiving over 1,000 initial applications for the positions. Mathys & Squire says that the nationalities of the judges reflect where the ‘hotspots’ of patent litigation are in Europe, and where the pool of potential judges is largest. Of the 85 judges appointed, the countries with the greatest representation are:

• Germany 27
• France 17
• Italy 11
• Netherlands 7
• Belgium 5
• Denmark 4
• Finland 4
• Sweden 4

A further judge has both French and German nationality. Austria, Bulgaria, Estonia, Portugal and Slovenia are each represented by a single judge. Three more judges remain to be appointed before the commencement of the court’s operations – one each in Paris, Munich and Copenhagen. Four of the countries participating in the UPC (Latvia, Lithuania, Luxembourg and Malta) are not represented by any judges. Other EU countries are not represented as they have not yet agreed to participate in the UPC. Ireland is holding a referendum to decide whether to join the court, which is expected to take place in 2023 or 2024.

Under the UPC, patent holders can enforce a European patent across all participating countries through a single litigation procedure under the regime of the UPC. Estimated costs for such a claim will be slightly higher than litigating in one single country, but the UPC will be able to grant supranational injunctions as well as damages.

Businesses that anticipate having to defend their IP may wish to opt out of having their current intellectual property covered by the UPC. Opting out will prevent competitors from ‘knocking out’ their patent across Europe in a single judgement in the UPC.

The UPC was discussed for a long time and first agreed in 2013 but was held up for years by the domestic ratification processes of the member states. With the appointment of judges, the long-awaited court has cleared one major hurdle on the road to becoming fully operational.

Andreas Wietzke, Partner at Mathys & Squire says: “With the successful appointment of judges, one major obstacle to the operation of the UPC across the EU has been overcome. These judges will play a key role in setting early UPC precedents and determining the future of intellectual property enforcement in Europe.”

“The new court will provide a simplified and cost-efficient patent litigation system for anyone holding a European patent.”

“Businesses with patents pending or granted in Europe can no longer afford to ignore the UPC. They need to ensure they have the right strategy in place to protect their IP and the value of their business.”

The Royal Swedish Academy of Sciences awarded the 2022 Nobel Prize in the field of Chemistry to K. Barry Sharpless at the Scripps Research Institute, Morten Meldal at the University of Copenhagen, and Carolyn R. Bertozzi at Stanford University, for their roles in the development of click chemistry and bioorthogonal chemistry.

In his paper entitled ‘Click Chemistry: Diverse Chemical Function from a Few Good Reactions’,  Sharpless noted that traditional means of reconstructing complex molecules found in nature required the use of complex multi-step reactions which were considered to be less efficient and resulted in the formation of considerable amounts of unwanted byproducts. Sharpless proposed a new approach to the synthesis of complex organic structures aimed at accelerating the rate at which new compositions could be formed. With regards to this new synthetic approach, Sharpless noted “The approach derives from a keen awareness of natures preferred methods of synthesis, but does not seek to emulate them too closely. Nature is a matchless creator of C-C linkages and we propose leaving the tough job of C-C bond synthesis as much as possible to her.” The new method of synthesising complex molecules, referred to as ‘click-chemistry’, was based on a process of forming of heteroatom bridges (C-X-C) between molecular building blocks containing the required carbon structure.

Sharpless stipulated that in order to fall under the term ‘click chemistry’, a reaction must “be modular, wide in scope, give very high yields, generate only inoffensive byproducts that can be removed by nonchromatographic methods, and be stereospecific (but not necessarily enantioselective). The required process characteristics include simple reaction conditions (ideally, the process should be insensitive to oxygen and water), readily available starting materials and reagents, the use of no solvent or a solvent that is benign (such as water) or easily removed, and simple product isolation.”

The ‘click chemistry’ process was further developed when Morten Meldal and Barry Sharpless both independently developed a copper catalysed azide-alkylene cycloaddition reaction, in which one reactant comprises an azide functional group and the other an alkylene functional group. In the presence of a copper (I) catalyst the two reactants form a triazole structure (as shown below). By incorporating these azide/alkylene functional groups, different building blocks may be reacted precisely and efficiently allowing researchers to synthesise more complex organic structures.

Proposed catalytic cycle for the Cu¹-catalysed ligation, taken from “A Stepwise Huisgen Cycloaddition Process: Copper(I)-Catalyzed Regioselective “Ligation” of Azides and Terminal Alkynes” Angew. Chem. Int Ed. 2002, 41 No. 14.

Bertozzi further developed the ‘click chemistry’ process for the purpose of studying glycans on the surface of cells. Previously, it had not been possible to study glycans, sugar-based polymers which play a vital role in our immune responses, on living cells. The bioorthogonol reactions developed by Bertozzi replaced the copper catalyst previously used – which is toxic to organic cells – with cyclooctyne, an 8-membered alkyne ring. Bertozzi discovered that the strain energy within such compounds could be used to drive the ‘click chemistry’ process in the absence a copper catalyst and without disrupting the normal chemistry of the cell.

This research has made a considerable contribution to humankind as it has enabled new drugs and pharmaceutical compositions to be discovered in shorter time periods. New research into cancer treatment has been based on this development. In particular, studies developing clickable antibodies which target different tumours are ongoing.

UPDATE as of 19 October 2023

The European Patent Office (EPO)’s ‘10-day rule’ will cease to exist from 1 November 2023. From that date, EPO communications will be deemed to be delivered on the same date which they show, rather than 10 days later (as occurs at present). Click here to find out more.

As of yesterday, 13 October, the Administrative Council of the European Patent Office (EPO) has passed “a new package of rule changes intended to adapt the rules of the European Patent Court (EPC) to the digital age”, according to a report from the UK’s Chartered Institute of Patent Attorneys (CIPA). One rule due to change as part of this package is Rule 126(2) EPC, also known as the ’10-day rule’. This will affect the majority of deadlines in proceedings before the EPO.

Users of the European patent system will be familiar with the EPO’s ’10-day rule’. For those unaware, it is a legal fiction that states official communications from the EPO are typically said to have been delivered to the recipient 10 days after the date which they bear. Many deadlines at the EPO are calculated based on the ‘deemed’ delivery date of official EPO communications. From November 2023, EPO communications will be deemed to be delivered on the same date which they show, rather than 10 days later as they are at the moment. This means that from November next year many deadlines set by the EPO will be 10 days shorter than they are at present.

Abolition of the 10-day rule had been proposed earlier this year but the EPO opted not to go ahead with the rule change at that time. Although the EPO has not officially confirmed CIPA’s report at the time of writing, it looks as though a rule change has now formally been agreed.

It is important to note this new rule will not come in to force until 1 November 2023, providing time for users to adapt their docketing systems appropriately. According to CIPA, the EPO will additionally run a publicity campaign over this coming year to assist those concerned in dealing with the coming rule change.

More details of the planned rule change will follow when we receive them, including confirmation of any transitional measures (e.g. for communications issued before the rule change comes into force) as well as confirmation of safeguards which we understand will be put in place in case documents are not delivered on time.

Data and commentary provided by Mathys & Squire has featured in an article by The Nutraceutical Business Review, providing an update on the growth of the nootropics market.

A condensed version of the article is available below.

The global nootropic market is set to reach a value of $6.61 billion by 2026 at a compound annual growth rate of 13.7%, according to some projections. The term ‘nootropic’ describes a broad category of nutraceuticals and pharmaceuticals offering cognitive function benefits. Caffeine is the most recognisable nootropic, but there are other examples that consumers will ingest on a regular basis, such as L-theanine (found in black and green tea), anthocyanins (found in blackberries), nicotine and creatine.

The increasing popularity of nutraceuticals, and particularly nootropics, appears to reflect consumers taking a more active approach to their health and wellbeing, as a consequence of evolving lifestyle choices, increased health awareness, and a shift toward a preventative healthcare paradigm.

Why are nootropics so popular?

Nootropics have established a wide and cross-generational appeal as individuals seek to ‘biohack’ their cognitive function with supplements and functional foods.

Competitive gamers and ‘eSports’ professionals are increasingly using nootropics to improve gaming performance. However, there is also a growing use of nootropics in sports nutrition by athletes, particularly those involved with team sports requiring swift decision making, motor control, coordination and timing. Nootropic sports drinks formulated with herbal nootropics for instance already exist and are marketed as helping improve focus, as well as energy levels.

It is not surprising that nootropics are also being marketed towards working professionals wanting to be more productive and stay focused, as well as to older generations wishing to retain mental acuity and stave off any mental decline.

Innovation driving popularity

Another notable reason for the increasing popularity of nootropics is that they are becoming more convenient and appetising to consume. Nootropic supplements are readily available in the form of chewable gummies, and in a variety of flavours, for those who have ‘pill fatigue’. In addition, nootropics are becoming increasingly prevalent in functional foods and beverages that can be integrated more readily into people’s existing routines. For example, there are nootropic snack bars, protein bars, performance drinks, stimulant-free functional beverages, and even adaptogenic coffee blends and alcohol-free nootropic mocktails.

The growth of personalised/individualised healthcare has also infiltrated the nootropics sector, as innovators have started offering personalised/individualised nootropic formulations determined by algorithms that take consumers’ responses to lifestyle questionnaires and convert them into a tailored formulation.

Protecting innovation

Unsurprisingly, the nootropics market is a hotbed for innovation, as companies fight to distinguish their products from those of their competitors and capitalise on the shift in consumer trends. Branding and marketing strategy play a significant role in the commercial success of such products, but innovators are also recognising the value in protecting their innovations through patents. New European patent applications in the ‘food chemistry’ category increased by 6.1% in 2021 over the previous year, suggesting that the innovation seen in the sector is translating to increased numbers of patent filings year on year.

As with other food chemistry products, there are numerous options for protecting technical innovation underpinning nootropic products through patents. For instance, protecting a new composition or formulation of ingredients (including, for example, a synergistic ‘stack’ of actives), and uses thereof, is often the most desirable protection sought by applicants.

There are also other patent protectable innovations relating to improvements in product bioavailability, organoleptics, shelf life, or for overcoming challenges to meet consumer preferences (e.g. to be derived from sustainable sources or to be vegan). There are also patentable innovations relating to extraction techniques of natural products and processing methods for producing a food product having, for instance, particularly high purity or particularly high active concentration, as well as new uses of known nutraceuticals that innovators may seek to protect.

Use claims (patents) at the EPO – where things can get more complicated

Patenting nootropic products, or indeed any form of nutraceutical product, does not come without its challenges. The European Patent Office (EPO) does not, for instance, distinguish between a pharmaceutical or a nutraceutical product (for example, a functional food with a purported health benefit), which can be problematic when it comes to claiming the use of a nootropic product.

The EPO does not allow claims to methods of treatment of the human or animal body by surgery or therapy and many readers will know that claims relating to a medical use must be formulated in a specific manner to avoid such exclusions to patentability at the EPO. Nutraceutical products which may have a health benefit can fall into a grey area where they might not be intended for the treatment of a particular disease, but a claim to their use might be considered to constitute a method of treatment and therefore, fall foul of the exclusions.

Non-therapeutic / cosmetic method claims are allowable at the EPO, however, the non-therapeutic use must not be “inseparably associated” or “inextricably linked” with a therapeutic use – which is not always clear. Some cosmetic methods can also help prevent disease. One can, for instance, imagine how there might be confusion if a nootropic product may improve cognitive performance in a healthy subject, but may have a therapeutic effect in a subject with a cognitive disorder.

Helpfully, a relatively recent EPO Board of Appeal decision T 1916/19 has clarified that a non-therapeutic method is allowable, so long as there are “realisations” of the claimed method that are purely non-therapeutic. Thus, in the case of the EPO, it seems that there are signs of a permissive approach to the assessment of non-therapeutic method claims, which is likely to be particularly welcome to nootropics innovators and the nutraceutical sector more widely.

Health claims (labelling) in Europe

Innovators in the nutraceutical sector must also navigate EU and UK regulation when seeking to market their innovative products. EU Regulation on food labelling and equivalent UK regulation prohibits labelling of foods with assertions that they prevent, treat or cure human diseases, which is understandable since they do not go through the same regulatory approval as medicinal products do. However, the regulation does allow assertions that a foodstuff “reduces the risk” of disease, provided it is listed on the EC Register of acceptable health claims.

If a nootropic or a nutraceutical product, cannot be marketed in the EU or UK as being useful for preventing or treating a human disease, how much value is there in granted patent claims directed to a medical use of a nutraceutical product? The answer to that is not so straightforward, but it certainly means that applicants should be considering ways to maximise the benefit of such claims, for instance by mirroring the allowable labelling language by referring to “reducing the risk of a disease” in the patent claim itself.

Summary

The nootropics sector is a particularly fast-growing branch of the nutraceuticals market which seems set to cement itself in the public consciousness in the future, if it hasn’t already. It is clear that nootropics have a wide appeal to consumers and the innovations in the sector continue to mean that there are more options available for consumers to integrate nootropic products into their routine, and inevitably more options to ‘biohack’ in a personalised and individualised fashion. Whilst there are certain hurdles for innovators to market such products, it is apparent that they can enjoy the full remit of patent protection for their innovations within the sector, at least as far as Europe and the UK are concerned.

Data provided by Mathys & Squire has featured in an article by Managing IP analysing the increase in demand for free-from foods and the subsequent surge in legislation.

An extended version of the release is available below.

Increased consumer demand for free-from food and drink products, such as non-dairy milk, low or no-alcohol and meat alternatives has seen a raft of new products hit the market in recent years. This change in consumer demand is driven by health concerns and increasing food sensitivities, as well as concerns over the impact of traditional meat and dairy products on climate change, and even long-distance transportation.

Given the huge potential for revenue growth in this market, which is expected to hit $1 trillion by 2026, established free-from brands, new entrants and makers of more conventional products will be fighting for market share. Unilever has announced plans to grow its plant-based meat and dairy products business five-fold to €1billion by 2027.

In an increasingly hotly contested space, brands such as Oatly and Impossible Burger have resorted to legal action over alleged breaches of their intellectual property in a bid to protect their market share. As the market grows, what considerations do brands need to take on board when pursuing litigation?

Assessing potential risks to your IP

On 9 March 2022, Impossible Foods Inc started infringement proceedings against Motif FoodWorks based on its US patent, US 10,863,761. According to Impossible Foods, when starting out, they had a team of researchers analysing which biological molecules make meat look and taste the way it does. As a result, it was discovered that a hemoprotein molecule, soy leghemoglobon (LegH), could be incorporated into plant-based products to provide meaty aromas and create the appearance of “bleeding” in a burger, similar to that of traditional beef products. Impossible Foods state that this molecule is a key ingredient in its products.  

The action brought by Impossible Foods centres around Motif’s sale of HEMAMI^TM – a bovine myoglobin composition which Motif’s website states “tastes and smells like meat because it uses the same naturally occurring heme protein”, along with burgers produced containing the HEMAMI^TM molecule. Impossible Foods claim that Motif directly infringe their patent (through the sale of the burgers) and indirectly infringes their patent through the sale of HEMAMI^TM – as Motif are considered to “actively encourage its business partners to make, sell and/or offer for sale the infringing burger”.

Claim 1 of US 10,863,761, refers to “a beef replica product, comprising:

• a muscle replica comprising 0.1 %-5% of a heme-containing protein, at least one sugar compound and at least one sulfur compound; and

• a fat tissue replica comprising at least one plant oil and a denatured plant protein, wherein said muscle replica and fat tissue replica are assembled in a manner that approximates the physical organization of meat.”

In response, Motif FoodWorks has now filed a petition with the USPTO’s Patent Trial and Appeal Board to request that the validity of the Impossible Food’s patent be reviewed. It would appear that Motif’s arguments are that the use of heme proteins in meat substitutes was known prior to the filing of this patent.

Motif’s actions in the circumstances are unsurprising and it is essential for companies to critically assess their own IP before commencing any form of contentious action. This ensures companies are aware of and can prepare for any potential attacks against their IP once proceedings begin.

Assess potential damage to reputation

In the June 2021 UK High Court case, Oatly AB/ Oatly UK Limited asserted that Glebe Farm Foods Ltd’s oat milk product, PureOaty (shown below,) infringed five of its registered trade marks, including three word marks (OATLY, OAT-LY! and OATLY) and two device marks (a blue OAT-LY! carton mark, shown below, and a grey OAT-LY! carton mark).

However, the judge dismissed this case stating that “there is no likelihood of confusion between the PUREOATY sign and carton and any of the Oatly trade marks”.

The decision to bring proceedings against Glebe Farm Foods (a significantly smaller competitor), resulted in negative publicity and a social media backlash with respect to the Oatly group. In particular, Oatly received media commentary accusing it of hypocrisy, often based around its 2020 investment from private equity fund Blackstone, which has been linked to deforestation.

While Oatly may have felt it had no choice but to take action against Glebe Farm, as failing to defend trade marks could open the door for other brands to enter the marketplace, the ultimate decision of whether to pursue a third party needs to be weighed up carefully against any potential long-term reputational damage in the marketplace.

A further dispute, relating to the ownership of US 11,058,137, is ongoing between two meat alternative startup companies, Meati Foods (previously Emergy) and The Better Meat Co.  Co-founders of Emergy.

Tyler Huggins and Justin Whiteley claim that, while conducting research at the U.S. Department of Energy’s UChicago Argonne National Laboratory (“Argonne”) in Illinois, they developed a new mycelium cultivating process (mycelium being the vegetative part of a mushroom consisting of a mass of branching, fibrous filaments called hyphae), which allowed the cultivated material to maintain a fibrous filament structure. Dr Huggins and Whiteley then went on to assess the use of this material as a meat alternative product. During this time Augustus Pattillo assisted in this research and had access to relevant confidential information before gaining employment at The Better Meat Co. Meati have accused The Better Meat Co. of basing their patent, US 11,058,137, which names Mr Pattillo as an inventor, and their filamentous fungi-based meat alternative product, ‘Rhiza’ on misappropriated trade secrets, as well as proprietary and confidential information belonging to Meati Foods. Meati Foods has requested that US ‘137 be assigned to their company. In response, The Better Meat Co. asserts that the action is simply an attempt to bully a less funded rival within this field. The issue of who owns such information will likely be key as well as the legal agreements and recorded information available from that time.

Given the rapid growth and potential size of this market, it is quite clear that the potential IP clashes will grow considerably in the coming years. However, given the expense of litigation proceedings and potential issues with respect to brand reputation, consideration should be given to other ways of settling disputes.

Alternative means of dispute resolution

For companies who find themselves embroiled in an intellectual property dispute but would prefer not to proceed down the litigation route, there are a range of options at their disposal which could be cheaper, faster and/or more discrete compared to full-blown litigation. For example:

• Offer to buy a licence: Short-term this may be a cheaper option, whereby firms offer to pay an annual fee to continue to use the contested IP.
• Purchasing IP rights: This can be more costly than licensing, especially up front, but brings the advantage of long-term security.
• Opting for mediation: Mediation uses an independent mediator to try and help resolve disputes without requiring court proceedings. This has obvious advantages for smaller players but may also offer advantages to large corporates too. This is especially the case if the IP which they claim is being infringed is not core to their business and they would like to enforce their rights without investing too much time and money. They may also be more likely to agree to mediation if they are less sure of the outcome.

All companies looking to make their way in the field of no/low products need to have a commercial strategy with a number of options should a third party seek to lay down a challenge.

Companies looking to develop new products and protect new and existing IP in this rapidly growing market should make sure they are as informed as possible on the latest IP law developments. With the right knowledge and expert advice they can ensure their products are indeed free from controversy.

We are delighted to announce that Mathys & Squire has maintained its ranking for the PATMA: Patent Attorneys and PATMA: Trademark Attorneys categories in the 2023 edition of The Legal 500. We are pleased to report that we have had a record number of fee earners individually recommended in this year’s guide.

Patent Partners Chris Hamer, Alan MacDougall, Martin MacLean, Jane Clark, Paul Cozens, Craig Titmus, Dani Kramer, Philippa Griffin and Juliet Redhouse, who have been listed in the guide for a number of years, as well as James Wilding, Sean Leach and James Pitchford, who are all newly ranked, are all featured in the 2023 edition of the directory. Joining our team of Key Lawyers this year is Laura Clews, our ‘extremely competent’ Managing Associate.

Alongside our patent practice, Mathys & Squire’s trade mark team has also been recognised, with Partners Margaret Arnott and Gary Johnston, as well as Managing Associate Harry Rowe, all being individually recommended. Of Counsel Rebecca Tew has been listed in the guide for the first time.

The firm received glowing testimonials for its patent and trade mark practices:

‘The most fortunate development of our business was engaging Mathys & Squire. Highly knowledgeable, professional and excellent value for money.’

‘My experience with the Mathys & Squire team has been outstanding. They are organised, responsive, and dynamic. They ensure they have gathered all of the relevant data by virtue of asking the appropriate questions and extracting information that I may have overlooked or not considered.’

‘The Mathys & Squire team has been able to effectively guide us on all of our queries.’

‘Mathys & Squire stands out above all other firms.’

‘Highly targeted advice and in-depth knowledge of how trade marks work. Holistic advice on manoeuvring through other companies’ rebuttals.’

Aside from the excellent firm-wide feedback we received, our Key Lawyers were also praised by all our clients and contacts.

‘Paul Cozens is my primary contact and he brings a wealth of experience that enables him to get to the key issues very quickly. He is supported by a strong team who always deliver high quality outcomes.’

Our main contact, Martin MacLean, has truly extensive experience in prosecuting patent applications through the whole process from filing to award. His support team are also highly competent. It is a pleasure to work with Martin.’

‘Laura Clews and Jane Clark have always been a delight to work with. They are both extremely competent and pleasant.’

‘Craig Titmus brings dedication, knowledge and humour to our meetings. He clearly has a passion for science and our specific products, delivering assignments with a competitive edge. Craig addresses issues head-on, and delivers quality, in-depth reports even when deadlines are squeezed from 3 months to 3 weeks without notice and without flinching.’ 

‘I have been working with Alan MacDougall for over ten years. Alan is very diligent in his work and has extensive knowledge and experience in the intellectual property field. He always responds in a timely and accurate manner and has been a reliable partner in my business.’

‘Chris Hamer’s unbelievable ability to analyse complicated concepts incorporating chemistry, physics and mechanical disciplines, and somehow render the interaction clear and easy to read, is outstanding. I can say with total transparency that the strength of our patent portfolio is in good part thanks to Chris.’

‘Margaret Arnott is clearly a deeply experienced and highly knowledgeable trade mark attorney.’

For full details of our rankings in The Legal 500 2023 guide, please click here.

We would like to thank all our clients and contacts who took part in the research, and congratulate our individual attorneys who have been ranked in this year’s guide.

The UK Intellectual Property Office (UKIPO) released a guidance note for the examination of patent applications relating to artificial intelligence (AI) inventions. The UKIPO has confirmed that patents can be granted for AI inventions, given they provide a technical contribution to the state of the art.

Following a period of consultation that ran from 7 September to 30 November 2020, the new guidance note details the requirements of AI technologies to meet patentability criteria. As computer programs are specifically excluded from patentability criteria, the new guidance note and accompanying scenarios provide clarity when seeking to patent AI-based technologies.

The UKIPO defines AI as:

“Technologies with the ability to perform tasks that would otherwise require human intelligence, such as visual perception, speech recognition, and language translation”.

In summary, the new guidance note states that:

• AI patents are available for all fields of technology.
• Whilst mathematical methods or computer programs are excluded from patent protection, when the task or process performed by an AI invention contains a technical contribution, it is not excluded.
• An AI invention is likely to provide a technical contribution if it:
  • carries out or controls a technical process existing outside the computer;
  • contributes to the solution of a technical problem, external to the computer;
  • solves a technical problem in the computer itself; or
  • defines a new way of technically operating a computer.
• AI inventions are not excluded if they are claimed in hardware-only form (ie. they don’t rely on program instructions or a programmable device).
• AI inventions are likely to be excluded from patentability if they relate to an excluded item, relate solely to processing data, or are a general improvement on a program or conventional computer.

When considering the patentability of AI technology, focus is therefore placed on the technical contribution the invention makes to the state of the art.

Example scenarios

The UKIPO has also released a series of scenarios concerning AI or machine learning (ML) technologies and whether they meet the criteria for patentability. These scenarios focus on the issue of excluded matter and cover a breath of fields and technologies with worked examples of why each invention is or isn’t excluded from patentability.

Particularly interesting scenarios include the training of a neural network, in which the end result of the process and its intended use can be the deciding factor in whether or not it is excluded from patentability.

For example, training a neural network classifier system to detect cavitation in a pump system is allowed. Such a method involves correlating data pairs with class values to produce a training dataset (wherein each class value is indicative of an extent of cavitation within the pump system) and then training the neural network classifier system, using the training dataset and back propagation.

The fact that this process is reliant on a computer program does not exclude it from patentability, since it provides a contribution which uses physical data to train a classifier for a technical purpose – namely, the detection of cavitation in a pump system. The end result of this training, and its contribution, is therefore technical in nature.

By contrast, active training of a neural network is not allowed. Such a process involves determining areas of weakness in the neural network by comparing confidence levels to a threshold, then augmenting the training data with data related to the area of weakness. For example, a neural network used for detecting animals in pictures may struggle to identify cats, so the specimen data may be augmented with additional pictures of cats. This is more efficient than simply expanding the dataset across all elements.

While this method may result in a more efficient training method for a neural network, it does not itself produce a neural network that operates itself more effectively or efficiently. The mere identification of specific additional training data cannot be said to relate to a technical problem. As such, no technical problem has been solved within the neural network, and no technical effect is produced. A claim directed to this would therefore be excluded as a program for a computer as such.

Additional scenarios may be accessed here, and the guidelines published by the UKIPO are available here.

(C) Naomi Korn Associates & Mathys & Squire 2022. Some Rights Reserved. These case studies are licensed for reuse under the terms of a Creative Commons Attribution Share Alike Licence.

The following case study has been taken from the “Implications of Covid-19 on SMEs – Reassessing the Role of IP in Multiple Sectors and Industries” report written by Naomi Korn Associates and Mathys & Squire Consulting, November 2021. This case study reviews the impact on SMEs (small, medium enterprises) of the COVID-19 pandemic since its appearance in early 2020 through the first quarter of 2021. It focuses on the industries most affected by the crisis and whether intellectual property (IP) and IP management may have helped mitigate its impact through adaptation and change.

Sector overview

During the pandemic, social distancing, and a reluctance to use public transport, resulted in a rise in the use of alternative modes of travel. This has included e-bike hire schemes, such as Lime, and ride sharing platforms like Uber.

Analysis

The pandemic has caused a further shift in the wider mobility market with many companies in this space making significant strategic changes towards ACES (autonomous driving, connected cars, electrified vehicles, and shared mobility). Worldwide, there have been more than 420 partnerships signed and the space has seen significant investment, with startups offering mobility technologies receiving $45 billion in 2020 alone.

Micro mobility modes of transport, including lightweight options such as bicycles, e-scooters, and mopeds have grown significantly during this period, whilst the roll out and investment in autonomous vehicle technology has continued to grow during the crisis and is likely to help in the economic rebound post COVID-19 [1]. This technological shift has resulted in the redefining of car lanes to fit more bikes, scooters, and even autonomous vehicles, as well as government incentives across the globe advocating the use of low-carbon transport modes. Companies such as German Colivery, arising from the Government and Vodafone backed “Wir Versus Virus” Hackathon, have developed an online shopping experience connecting self-isolating people with volunteer delivery drivers, who use software optimised routing and several shopping lists on the same route to ensure maximum efficiency.

A number of companies have also developed e-scooters, including UK based company Ginger, which with the help of Enterprise Europe Network, trialled the scooters in a number of cities in the north of England. Ginger also took advantage of coronavirus-related loans and grants. Several other companies internationally, such as the US-based companies Lime and Bird, have large patent portfolios, which we can expect to see grow over the coming months. With the growth of this market, and the increased demand for this technology, businesses are likely to carve a niche for themselves, seeking to protect their position and their brand through enforceable IP rights, such as patents and trade marks.

The transport sector has clearly demonstrated their IP and its application through joining the Open Covid Pledge. Companies such as Uber, have offered patents relating to safe routes for navigation systems, and real-time resource management, to companies trying to combat COVID-19 through royalty free licences. AT&T have also engaged in the pledge through offering their IP relating to the reduction in travel time of emergency transport.

Localised travel restrictions and fear of infection have increased the interest in private vehicle ownership, with a recent McKinsey study indicating that approximately a third of consumers value access to a private vehicle compared to pre-COVID-19. In the United States, 20% of people who did not own a vehicle prior to COVID-19 are now considering acquiring one.

In addition to this, the pandemic has raised awareness of the human involvement in the logistics industry and has sparked interest in the likely need for self-driving vehicles moving forward. In this context, autonomous vehicles, and autonomous driving technology also saw a substantial push in 2020, partially due to their ability to reduce the risk of infection and avoid physical contact.

The autonomous delivery company NURO, was given permission in the US to operate its vehicles on public roads, accelerating grocery deliveries. NURO has also adapted its vehicles to serve in supplying local COVID-19 hospitals with much needed supplies. NURO, which already had a large portfolio of over 30 patents, has recently partnered with Domino’s Pizza to provide autonomous vehicle pizza deliveries, and we can expect this growth to continue as many of the new innovations arising during the pandemic are protected and published. UK-based Oxbotica, an autonomous driving spinout from Oxford University, notes the potential for autonomous vehicle technology in reducing the spread of the virus, but also for longer term benefits in areas such as mining, port logistics and other industrial applications. As a result of its impact in reducing the spread of the virus, the demand for low-speed autonomous driving technology, such as Baidu’s Apollo, is increasing. To support frontline workers in China, the company has made its Apollo open-source autonomous driving platform and related patents available to companies developing vehicles for carrying out disinfection tasks. By growing its network of companies using its AI heavy IP portfolio, currently most of which is through open licensing arrangements, the company is generating an ecosystem of businesses using its technology to fight the pandemic, while at the same time creating a situation whereby its patent portfolio becomes the standard across a number of fields.

Across the transport sector, electric vehicles, e-scooters and autonomous vehicles offer novel solutions to the problems created during the pandemic, not only in terms of potentially reducing the transmission rate of the virus, but also issues surrounding logistics and cargo transport, where ill staff may seriously affect the ability of these sectors to operate.

[1] Ellen MacArthur Foundation (2020): The circular economy: a transformative Covid-19 recovery strategy