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Data and commentary provided by Mathys & Squire has featured in articles by The Manufacturer and The Patent Lawyer, providing an update on the rapid growth in drone patents that have been granted in recent years.

An extended version of the press release is available below.

Patents granted for drones worldwide have increased by 39% to 4,876 in the past year*, shows new research by leading intellectual property law firm Mathys & Squire. The figure is up from 3,511 in the previous year and up three-fold from just 446 patents five years ago.

Mathys & Squire says the global drone market is dominated by China. Of the patents granted in 2021, 3,262 (67%) belong to Chinese companies and research institutions. The US trails in second place, with 751 drone-related patents granted in 2021 – 15% of the global total.

Drone technology is being employed across a growing list of sectors, including agriculture, construction, energy, news reporting and delivery of emergency medicine and supplies.

The commercial drone market is predicted to be worth $47 billion by 2029, while estimates suggest the military market could be worth $98 billion by the end of the current decade*. While some of the expected applications in the commercial drone market (such as home delivery services, including fast-food!) have yet to fully materialise, new commercial uses for drones are constantly being developed.

Manufacturers are competing to corner as much of this rapidly growing market as they can by registering patents to protect their often considerable R&D investments.

Andrew White, Partner at Mathys & Squire says: “Drones are increasingly becoming part of everyday life, yet the strong growth in new patents suggests their full potential is still to be realised.”

“Drones are set to play a major role in the global economy in the 21st century. IP in this area is extremely valuable and therefore likely to be hotly contested in the coming years. Companies are spending considerable sums on drone research and will want that investment to be protected with patents.”

Patents related to drone technology granted last year include:

*Year ending December 31 2021, Source: World Intellectual Property Organisation
**Source: Fortune Business Insights
***Source: Teal Group

In the latest update on the artificial intelligence (AI) inventorship saga, the legal Board of Appeal of the European Patent Office has now provided their written decision and reasons for dismissal of an appeal that AI should be recognised as an inventor of a European patent.

We have previously covered the decision of the UK Court of Appeal which similarly dismissed an appeal that the very same AI system should be recognised as an inventor of a UK patent, which can be read here.

Whilst many jurisdictions seem to agree with the UK’s and EPO’s position, the South African Patent Office however, was willing to issue the world’s first patent listing with AI as the inventor and the AI’s owner as the owner. Our commentary on this news can be read here.

Background

On 17 October 2018 and 7 November 2018, Dr Stephen Thaler filed two patent applications at the EPO without designating any inventors. In response to the resulting communications inviting the applicant to designate an inventor, Dr Thaler indicated “DABUS” (Device for the Autonomous Bootstrapping of Unified Sentience) as the inventor, with the comment that “the invention was autonomously generated by an artificial intelligence”. Furthermore, Dr Thaler argued that he, as the owner of the machine, had acquired rights to the patent as the employer, followed by a subsequent corrected designation of the inventor asserting that he had derived rights in the invention as the successor in title of the machine by virtue of being its owner.

Both applications were refused by the receiving section on the grounds that: a) designation of a machine as inventor did not meet the requirements of Article 81 and Rule 19(1) EPC, an inventor within the meaning of the EPC must be a natural person; and b) a machine has no legal personality and can neither be an employee of the applicant nor transfer any rights to him.

This decision therefore covers two main topics: 1) whether the ‘inventor’ within the meaning of Article 81 EPC must be a natural person; and 2) to whom do rights within the meaning of Article 60(1) EPC belong if no natural person inventor exists, and how would such rights be transferred.

Main request

The appellant’s main request listed DABUS as the inventor and argued that Dr Thaler had derived the right to the patent as successor in title by virtue of being the owner and creator of the AI inventor.

The Board found the main request to be not allowable because the designation of the inventor did not comply with Article 81 EPC. The Board pointed to the Oxford English Dictionary and Collins Dictionary of the English Language definitions of the word inventor, both of which define an inventor as a ‘person’. There was seen to be no reason to assume that the EPC uses the term in a special way departing from this meaning. When a provision of the EPC 2000 refers to or includes the inventor(s), it uses the terms person or legal predecessor (e.g., Article 60(2) EPC or Article 55(1) EPC), thus, it postulates a person with legal capacity.

The Board felt that there was thus no reason to examine the origin of the right to the European patent, as per Article 81 EPC, second sentence.

Auxiliary request

The appellant’s auxiliary request designated no inventor, instead asserting that the invention was conceived autonomously, and the first sentence of Article 81 EPC thus does not apply. The auxiliary request also included a statement, that Dr Thaler had derived the right to the European patent by virtue of being the owner and creator of the AI inventor.

The Board in fact agreed with the appellant’s argument that the first sentence of Article 81 EPC does not apply in this situation. However, the auxiliary request did not resolve the issue of ownership. Article 60(1) EPC vests the rights in the European patent to the “inventor or his successor in title” as well as deferring to national law in the case that the inventor is an employee. The Board did not agree that being the “owner and creator” of the machine brought the applicant within the rights conferred by Article 60(1) EPC, i.e. the owner and creator is neither the successor in title nor the employer of the machine – in short, a machine has no legal personality and cannot transfer any rights.

This creates a situation where the requirements of Article 81 EPC, second sentence, i.e. the statement indicating how rights are derived from the inventor, cannot be satisfied. Both requests therefore failed to meet the requirements of Article 81 EPC.

Comments

The take-home comment appears to be that a natural person inventor is necessary for the grant of a European patent. Additionally, rights conferred by inventorship cannot subsist in or be transferred from a machine.

This poses a question: should it be possible that a patentable invention within the meaning of Article 52 EPC could be conceived of purely by an AI system? Does this decision rule out patentability of such inventions?

The Board certainly did not rule out the patentability of AI generated inventions per se. Indeed, the Board actually confirmed that the scope of patentable inventions is not limited to human-made inventions, see reasons for the decision paragraph 4.6.2:

“Firstly, under Article 52(1) EPC any invention which is novel, industrially applicable and involves an inventive step is patentable. The appellant has argued that the scope of this provision is not limited to human-made inventions. The Board agrees.”

But, as it stands, designation of either a non-human inventor, or simply no inventor does not satisfy the requirements of Article 81 EPC. It is thus within the rights of the receiving section to refuse such an application. These formal requirements of Article 60(1) and 81 EPC cannot be ignored.

Whilst the Board appeared to take a firm position that formal requirements cannot be ignored, they did however appear to be amenable to a situation where no inventor was named, should none exist, thus disregarding the first sentence of Article 81 EPC. Whilst this may seem contradictory, the logic behind this position was that the purpose of this provision is to confer rights to the inventor, which is not necessary where the inventor does not exist.

Whether this situation is unjust, the Board stated that it is a task for the lawmakers to potentially amend the EPC should a problem exist, and not for the Board to propose a solution to this scenario. Nevertheless, the Board did appear to suggest that the solution is that the owner and creator of the AI system should simply designate themselves as the inventor, see reasons for the decision paragraph 4.6.6:

“The Board is not aware of any case law which would prevent the user or the owner of a device involved in an inventive activity to designate himself as inventor under European patent law.”

Could this be taken as an implicit suggestion that the creator and owner should just designate themselves as the inventor? Even if this approach is the only practical solution, applicants may nevertheless find this to be unsatisfactory. As the use of AI systems becomes more widespread, it seems likely that in a commercial setting the creator, the owner, and the user of the AI may be different people, leaving the rightful owner of the patent unclear. Additionally, the Board’s apparent suggestion may be incompatible with national law. For example, under US law, this could be considered to be a false statement under oath, jeopardising patentability or even risking criminal proceedings.

As the Board state that the ‘user’ could be deemed the inventor, they appear to envision that there must be some degree of human input into an AI generated invention. However, it remains unclear what level of input would be required to make someone the user. Could an action which does not involve inventive skill in of itself, such as inputting a seed value, selecting a preferred outcome, or even just clicking ‘go’, be suitable to impart inventorship onto a user of an AI system?

For now, we will have to await future decisions or changes to the EPC before having any further clarity on AI inventorship before the EPO.

This recent decision by the European Patent Office (EPO) Boards of Appeal (T 2627/17) highlighted the way in which the ‘sufficiency of disclosure’ requirements under Article 83 EPC can lead to different (and perhaps counterintuitive) outcomes for claims to medical uses in general (so called ‘first medical use’ claims) and for claims to specific medical uses (so called ‘second medical use’ claims). In T 2627/17, the Board held that in vitro data in the patent were supportive of the (broader) first medical use claim, but not the (narrower) second medical use claim.

In overview, the patent relates to compounds for use in the treatment or prevention of diseases or conditions that are estrogen sensitive, estrogen receptor dependent, or estrogen receptor mediated (collectively, such compounds are said to have ‘ER activity’). The patent contained in vitro data demonstrating ER activity of a large number of compounds which fall within the scope of the claims in estrogen-dependent breast cancer cell lines. The patent also contained a discussion linking ER activity with estrogen-dependent cancer therapy.

The patent granted with claims directed to compounds per se, use of the compounds in medicine (first medical use), and use of the compounds in the treatment of a wide range of specific conditions including various types of cancer, alcoholism, arthritis, migraines, dementia, and infertility (second medical uses).

First medical use claim

During the appeal proceedings, the appellant argued that the alleged ER activity was not supported across the wide range of compounds covered by the claims.

The Board disagreed, and referred to T 609/02 (Reason 9), which noted that “for demonstrating sufficient disclosure of a therapeutic application, the patent must provide some information in the form of, for example, experimental tests, to the avail that the claimed compound has a direct effect on a metabolic mechanism specifically involved in the disease, this mechanism being either known from the prior art or demonstrated in the patent per se.” (emphasis added).

Demonstration of ER activity, combined with a discussion linking ER activity with estrogen-dependent cancer therapy, was ultimately held to support the (broad) medical use claim.

Second medical use claim

The appellant argued that the ER activity data in the patent were limited to a specific breast cancer cell line, and that these data did not support each of the specific conditions listed in the second medical use claim.

The patentee (respondent) argued that the patent rendered it plausible that ER activity is involved in each of the conditions listed in the second medical use claim, and that each of those conditions were therefore sufficiently disclosed.

The Board decided that the data, combined with the discussion linking ER activity with existing estrogen-dependent cancer therapies, supported treatment of estrogen-dependent cancers.

Regarding the other conditions listed in the second medical use claim, the Board again pointed to T 609/02 (Reason 9) and noted that in vitro data may support a therapeutic application “if there is a clear and accepted established relationship between the shown physiological activities and the disease” (emphasis added). Without evidence of an established relationship between ER activity and the other conditions listed in the second medical use claim, those other conditions were considered insufficiently disclosed.

Outlook

T 2627/17 highlights the considerable importance of establishing a relationship between a biological or a physiological activity and a disease or a condition, particularly when supporting data for that disease or condition are unavailable. Patent applications are often filed before robust in vivo (or even in vitro)data are available, and so investing time at the drafting stage to explain why or how a demonstrated biological activity is relevant to a condition, can pay significant dividends.

T 2627/17 contained a further quirk: even though the second medical use claim was considered ‘bad’ for treatment of conditions other than estrogen-dependent cancer, those other conditions were nevertheless covered by the broader scope of the granted first medical use claim and claims to the compounds per se.

According to the WIPO Statistics Database, in 2020, the China National Intellectual Property Administration (CNIPA) received 1.5 million patent applications, accounting for 45.7% of the world’s total filings (see Fig.1). From a quantity perspective, China has become the top filer of patent applications in the world. However, it is clear that this is merely a stepping stone, with new targets for high-value invention patents being part of the latest five-year plan for the period from 2021 to 2025.

Figure 1

What are high-value invention patents?

The CNIPA considers the following invention types as high-value:

The 14th five-year plan

China’s five-year plans have been known for their importance to the nation’s economic growth, development, corporate finance, and industrial policies. In the most recent plan (2021 to 2025), China has defined a new indicator as one of the main 20, highlighting the number of high-value invention patents per 10,000 population:

CategoryIndicator20202025
Innovation-driven5. Number of high-value invention patents per 10,000 population6.312

The number of high-value invention patents is considered to be an objective measure of its innovation performance and its position in global innovation competition. By 2025, it is expected that the number of high-value invention patents per 10,000 people in China will reach 12, which would improve the nation’s innovation performance, hopefully providing powerful support for economic development.

China Patent Awards

Ever since The China Patent Award’s debut in 1989, the award has become the most prestigious and highest award available in the field of patents in China. Winners of the awards are selected in different categories to celebrate innovation across various industries and technologies. Up for grabs are patent awards including 30 Gold Awards, 60 Silver Awards and a number of Excellence Awards, as well as 10 Gold Awards, 15 Silver Awards and numerous Excellence Awards for registered design owners.

According to the CNIPA, during the 13th five-year plan (covering the period of 2016 to 2020), 130 Gold Awards were awarded, and the inventions covered by those awards created sales accounting for more than 1 trillion RMB. Nowadays, the awards are becoming more valuable and competitive, as the winners’ inventions automatically become considered high-value invention patents.

Faster but stricter patent examination in China

On 21 March 2022, the CNIPA also released the ‘Annual Guidelines for Facilitating High-Quality Development of Intellectual Property 2022’. The target for the examination period of an invention patent application has been reduced to 16.5 months, three months less than that for 2021. The target set for an evaluation of a high-value invention patent application has been reduced further to 13.8 months. CNIPA has clearly already taken into consideration its new indicator when examining patents and it is expected for their examination to be more efficient and timelier than that of standard applications.

In practice, however, the reduced examination period may put more pressure on the examiners’ shoulders to make a rushed decision on whether to grant or reject an application. Therefore, the patent applicants may be given fewer opportunities to defend the applications to avoid rejections in the examination process, and instead might have to further pursue the invention in a less ideal re-examination process, with the unintended consequence of reducing patent quality.

With the latest five-year plan underway, businesses in China are already adjusting. The introduction of the new indicator may promote high-value patent filings; however, the new stricter examination process might pose a hurdle to this goal. As per the definition of ‘high-value’ patents, Chinese companies have become keener to build patent portfolios abroad both to establish a foundation for maximising competitiveness as well as eligibility to the ‘high-value’ label. With that in mind, many businesses have resorted to reaching out to patent attorneys, who are able to guarantee the highest chance of ensuring grant of a patent both locally and abroad.

(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

The manufacturing sector has been hard hit by COVID-19. A recent report suggested that due to staff furloughs and job losses, customers are likely to curtail spending except for groceries, medicines, and home entertainment. This has a knock-on effect for the manufacturing sector including cars, apparel, textiles, furniture, and appliances as well as the broader business to business industry. Furthermore, the report estimates that across Europe, up to 25% of jobs in the manufacturing sector may be at risk, which equates up to almost eight million jobs across several manufacturing industries. This figure can be multiplied many times over looking at the challenges facing the global manufacturing sector.

Analysis

In the earlier days of the pandemic, there was a global shortage of ventilators, required for treating COVID-19 patients. Similar shortages were observed for PPE, alcohol hand sanitiser and anti-COVID-19 drugs. These challenges resulted in existing producers ramping up production, and many businesses and inventors coming up with innovative solutions and alternative technologies. One technology area that benefited from increased innovation as a result of the pandemic driven demand increase is additive manufacturing and 3D printing. The digital technique allows extreme flexibility in production and easy customisation, meaning that prototypes for new products can be easily generated. As such, this technique has been used to generate specialist parts to help fight the pandemic. Italian company Isinnova produced a 3D printed Charlotte valve capable of connecting to snorkelling equipment, allowing for production of positive air pressure devices from standard snorkelling kit. Likewise, 3D printing has been used to produce mask filters and face shield parts [1]. In this context, German multinational Siemens enabled access to its additive manufacturing network for any parties needing assistance in medical device design and manufacture. Being a partially digital tool, complex 3D printing designs were shared globally online. An obvious issue in this context is infringement of IP rights such as patents, designs or copyright, however, initially it was assumed that good intentions and an ethical approach would prevent potential legal actions or wilful IP theft.

At the beginning of the pandemic, countries across the world experienced severe shortage of hand soap and alcohol sanitisers, caused by a boom in consumer demand and the supply chain unable to cope with it. In the case of PPE, this shortage was caused by panicked bulk buying of unsuitable equipment. Many manufacturing facilities were faced with a level of demand they were not designed for and never intended to deliver for, however it has been noted that many operational changes occurring in manufacturing due to COVID-19 were already underway and the arrival of the pandemic has simply accelerated these processes. This challenge has had several interesting consequences, many of which have impacts on IP rights moving forward.

In the case of ventilators, numerous governments and regulators, temporarily reduced requirements to enable non-medical industry manufacturers to produce ventilators and promoted production under forced collaborative manufacturing arrangements. In the UK, the VentilatorChallengeUK Consortium, comprising businesses across multiple industries was established to meet the increasing and urgent demand for ventilators. The UK government indemnified participants from accidental infringement of IP rights, competition and procurement law and aspects of product failure. Consortium designers and manufacturers were offered an IP indemnity by the UK Government, thus allowing the various partners to push forward with the task of producing ventilators without worrying about potential infringement. While the level of indemnity was not released, it was believed that the government undertook a contingent liability in excess of £3m, which gave consortium members confidence to partner with other firms.

Several governments, such as Chile or Canada, have also gone as far as issuing compulsory licences to produce PPE or ventilators, as well as anti-COVID-19 medication, such as Kaletra in Israel [2]. These compulsory licences have been issued with the caveat that the product being produced is free of charge for emergency use only and future commercial production would require the appropriate licence agreement [3]. The demand for PPE and hand sanitiser has also caused a number of manufacturers to modify their business models, including moving towards ecommerce and teleworking environments, as well as modifying their supply chain and using existing facilities to produce new products to meet demand. Going digital has not simply meant a move to online sales, but the development of a robust digital plan, which offered many SMEs the chance to streamline and automate many aspects of their business, resulting in improving efficiency and reducing costs. This digitalisation, along with new working patterns and shaking up of existing supply chains will create many new offerings for SMEs, especially those who have also carefully managed their cash flows during this period.

In addition to changes in business models, many businesses have also pivoted towards completely new goods and services offerings. Textile manufacturers such as Zara or Prada have produced face masks, while perfume manufacturer LVMH has used their facilities to make hand sanitisers. Many of these expansions into new markets by established companies have been successful in their new activities by growing their existing brand recognition and trade mark portfolios.

Some companies have sought to assist during the pandemic through a more direct use of their IP. The Open Covid Pledge providing a patent pool offering use of COVID-19 related patents is a good example. Under the pledge, companies with patents covering COVID-19 related inventions offered the open COVID-19 standard or open COVID-19 compatible licences to external businesses. The licences are offered royalty free for use by their owners for the duration of the pandemic until one year after its official end, as declared by the World Health Organization.

However, for companies producing crisis critical innovations such as PPE, sanitising gel and medications, the boom in demand has caused an increase in passing off and counterfeiting. In March 2020, a joint international police operation (Operation Pangea XIII) made 121 arrests and confiscated over 34,000 counterfeit surgical masks, ‘corona spray’, coronavirus packages and counterfeit medicines [4]. Similarly, in May 2020, the Italian Guardia di Finanza seized 900 counterfeit children’s masks [5]. With the innovation and licensing programs seeking to exploit all available technologies in the fight against COVID-19, innovative companies may find their IP being infringed, their products being copied, as well as a loss of enforceability of IP where compulsory licences have been granted. These companies will need to ensure that they do not miss out on potential commercial opportunities, but also that they remain sympathetic to the harsh economic and health circumstances, whilst understanding the potential reputational damage suing an infringing party during the pandemic might cause. For example, the non-practicing Labrador diagnostics sued the practicing company Biofire for alleged infringement of two of its patents. However, this misfire from Labrador has caused reputational damage and it delayed the development of potentially useful critical crisis technologies. Labrador diagnostics has since announced a royalty free licence to anyone developing COVID-19 tests, as well as extending the deadline for potential infringing parties to come forward. In another more positive example, truck manufacturer Scania provided some of its manufacturing experts to Swedish company Getinge to enable them to ramp up their ventilator production. In doing so, the company clearly improved the production capacity of Getinge, and thus the fight against COVID-19, without risking the core technology IP of Scania.

The European Commission is also putting in place an action plan to help SMEs impacted by COVID-19 by introducing new licensing tools and a system to co-ordinate compulsory licences [6]. In addition to this, the Commission is aiming to simplify the sharing of information and introduce mechanisms for quick pooling of patents, in order to efficiently meet the needs of those fighting COVID-19. Action points include backing of the Unitary Patent system, optimisation of the use of supplementary protection certifications, as well as the revision of EU legislation surrounding designs and plant variety protection. Furthermore, to directly assist EU based SMEs, IP vouchers will be available for one year to help such businesses manage their IP portfolio. Importantly, the Commission will also investigate methods of support for IP backed financing and seek to support SMEs in this context, in a similar manner to the Japanese government’s support on IP securitisation.

In the context of the current pandemic, when a company believes it is infringing someone else’s IP right, it should contact the relevant IP owners with the aim of securing a licence (potentially royalty free for the duration of the pandemic). Alternatively, companies may decide to drop enforcement of specific patents for the duration of the pandemic, similarly to AbbVie not enforcing Kaletra patents. However, companies failing to be flexible with their IP enforcement and licensing policy during the pandemic may find their products being reverse engineered and alternative, non-infringing products, being developed, thereby causing both reputational damage and loss of market share.

[1]Choong, et al (2020): The global rise of 3D printing during the COVID-19 pandemic, Nature Reviews Materials

[2] Tietze, Frank et al. (2020): Crisis-Critical Intellectual Property: Findings from the Covid-19 Pandemic, University of Cambridge

[3] Baker McKenzie (2020): COVID-19: A Global Review of, Baker McKenzie

[4] International Chamber of Commerce (2020): Disruptions caused by Covid-19 increase the risk of your business encountering illicit trade risks, ICC

[5] Verducci Galletti, S (2020): Challenging times: anti-counterfeiting in the age of covid-19, WTR

[6] European Commission (2020): Communication from the commission to the European Parliament, the Council, the European Economic and Social Committee and the Committee of the Regions- Making the most of the EU’s innovative potential, European Commission

Naomi Korn Associates is one of the UK’s specialists in copyright, data protection and licensing support services.

Mathys & Squire Consulting is an intellectual property consulting team that can support all businesses in capitalising intangible assets.

Naomi Korn Associates and Mathys & Squire Consulting are working in partnership across multiple industries to provide innovative consultancy IP support services.

A recent decision by the Boards of Appeal at the European Patent Office (EPO) looks at the exceptions to patentability under Article 53(c) EPC, and how they apply to method claims which do not explicitly recite a treatment step.

Article 53(c) EPC excludes from patentability methods for the treatment of the human or animal body by surgery or therapy, as well as diagnostic methods practised on the body.

In the present case, the claims relate to a method of managing delivery of an orthodontic ‘treatment plan’, and recite steps performed before and after administration of orthodontic appliances to a patient (notably, the claims do not recite the administration step itself). During examination, the Examining Division refused the application under Article 53(c) EPC on the basis that the claims “implicitly comprise an orthodontic treatment step”.

During the appeal proceedings, the Applicant acknowledged that the unspecified administration step was a prerequisite for performing the method, but (citing G 1/07 and T 329/94) argued that the absence of an explicit administration step meant that the claims do not fall foul of Article 53(c) EPC.

The Board disagreed with the parallels drawn between the present invention and with G 1/07 and T 329/94. Whereas G 1/07 and T 329/94 dealt with cases in which there was no functional link between the claimed method and the effects produced by the device on the body, the presently claimed method steps were deemed to be functionally linked with (and incomplete without) the administration step.

The Board noted that “it is not necessary for a claim to explicitly (…) mention a therapeutic method step (…) to be excluded from patentability. It is sufficient that the claimed method encompasses such a step (see G 1/07, grounds 4.1 to 4.3…)” (see Reasons, 1.2). The unspecified administration step was therefore held to be an essential feature which must be taken into account when assessing Article 53(c) EPC.

The Board therefore agreed with the Examining Division and maintained the decision to refuse the application under Article 53(c) EPC.

Although the Unified Patent Court (UPC) is anticipated to open its doors around March 2023 and European patent holders and applicants are busy reviewing their European patent portfolios to decide whether to opt out of its jurisdiction, the ability to formally select Unitary Patent protection is not yet available.

The transitional measures of the EPO – delay of grant as well as an ‘early request for unitary effect’ (for details, please click here) – will only come into force once the so-called sunrise period starts. This will be three to four months prior to the start of the UPC. Neither of these dates have ultimately been confirmed yet.

Thus, if you have already received your 71(3) communication, you will need to rely on other intervening measures if you want to have the opportunity. Such measures may make it possible to bridge the time until the transitional measures are in place. Whether or not this is possible for you will depend on the individual circumstances and details of your case and will need to be evaluated and discussed on a case by case basis.

Leading intellectual property law firm Mathys & Squire has announced a series of Partner promotions and two new Managing Associates. The promotions form part of the firm’s growth strategy and reflect the firm’s commitment to professional development and career progression.

Alan MacDougall says: “We are delighted to announce these promotions following a very strong year for Mathys & Squire. Our new Equity Partners, Partners and Managing Associates have all played a crucial part in Mathys & Squire’s recent growth and successes. They have the proven knowledge and experience to deliver for our clients and help continue the growth of the firm.”

In recognition of their contribution, the following Partners have been promoted within the equity partnership:

The firm is also pleased to announce two Partners have been promoted to Equity Partners:

Annabel Hector and Alexander Robinson have been promoted and are now Partners. Annabel has experience in litigation with her technical expertise spanning the fields of mechanical and structural engineering. Alexander’s experience includes the defence of commercially significant patents against multi-party oppositions. His technical expertise lies in chemical sciences and pharmaceuticals. Both Annabel and Alexander are London-based.

Edward Cavanna and Thomas Fraser are newly promoted Managing Associates in Mathys & Squire’s London office. Edward is experienced in drafting and prosecuting UK and European patent applications, especially in the fields of software, materials and green energy. Tom’s technical expertise lies in IT and electronics, including AI and machine learning. His practice includes drafting and prosecuting patent applications in the UK, Europe and US.

Alan MacDougall says: “We are passionate about providing our employees opportunities to maximise their potential and are delighted to offer them a promotion and the recognition they deserve. Mathys & Squire is proud to have them on our team and is looking forward to continuing to grow our practice together.”

Serving legal proceedings can be a necessary, but potentially troublesome legal requirement – and using the usual methods of service (personal service, first class post, leaving at a specified place, or via electronic communication) can be particularly tricky in situations where potential defendants are being purposely evasive. A recent decision from the UK High Court offers an alternative method, albeit one that is applicable only in very specific circumstances.

In this decision (D’Aloia v Binance Holdings & Others [2022]), Fabrizio D’Aloia has been allowed to serve proceedings via non-fungible tokens (NFT) airdrop to a digital wallet. The background to the case is that Mr D’Aloia had transferred a large number of cryptocurrency tokens to a purported trading account, which he later realised was fraudulent. Mr D’Aloia was able to trace these tokens to digital wallets associated with Binance (among other exchanges). Thereafter, in an attempt to recover these assets, D’Aloia sought an injunction and also sought – and was granted – permission to serve the (unknown) owners of the digital wallets via NFT airdrop to those digital wallets as well as via email.

This ruling thus enables the contacting of parties of unknown identity or address in a straightforward manner via NFT airdrop. At the present time, there seem to be rather limited circumstances in which this method might be applicable, specifically in cases of cryptocurrency misappropriation. However, if blockchains become more pervasive through society in the coming years – and more people have links to known digital wallets – this method of service might become more widely applicable. One could imagine a future in which various types of legal proceedings are served by NFT Airdrop to a wallet associated with a defendant. And this sort of rapid and undeniable service of proceedings via NFT, which would leave an immutable record on a blockchain, would offer immediately apparent benefits over the slower and more difficult to evidence service of proceedings via post.

A similar ruling was made earlier this year in the US in LCX AG, -v- John Does Nos. 1 – 25, so perhaps more countries will follow soon.

Although these cases are of course not relevant to the patenting of blockchain technology, these decisions do at least indicate that blockchains are being used for an increasingly diverse range of purposes and are increasingly finding acceptance from governmental bodies. One slightly tangential takeaway then from a patent point of view – that is particularly relevant in the UK (which currently takes a harsher view of blockchain applications than other jurisdictions) – is that it is worthwhile for applicants to think about potential (non-cryptocurrency) uses of blockchains and to describe these uses in any patent application. Linking blockchain technologies to practical uses will often be helpful for avoiding subject matter objections in patent applications.

Data provided by Mathys & Squire has featured in articles by The Manufacturer, The Resource, Circular Online and The Patent Lawyer providing an update on Chinese companies leading the charge for ‘holy grail’ of clear recycled PET.

An extended version of the release is available below.

A record 2,149 patents for plastic recycling were filed last year, up 7% from 2021 and an eightfold increase since 2016, says Mathys & Squire, the intellectual property firm.

Mathys & Squire says the plastic recycling industry is competing to develop technology that will produce clear recycled plastic. Current recycled plastic has a yellow or grey tinge, unlike the clear colour that consumers expect of a premium product.

A vast range of methods for separating and sorting clear recycled PET is being tested, including the use of fans, centrifuges, lasers and optical lenses. The main priority is to achieve a higher quality ‘feed’ of recycled plastic that will provide the desired lack of colour.

Global brands are searching for a source of clear recycled plastic due to consumer and regulatory pressure to reduce or even eliminate virgin plastic from their supply chains. Coca-Cola and Pepsi have each pledged to use at least 50% recycled PET by 2030.

85m tonnes of PET plastic is produced globally per year. Mathys & Squire says that given the pressures on corporates to use more recycled PET, the company that perfects clear recycled plastic stands to generate very large revenues from licensing its technology.

Chris Hamer, Partner at Mathys & Squire said: “The race is on to develop the holy grail of cost-effective, clear recycled PET. That is the key driver behind the surge in innovation we have seen in this area.”

“Stakeholders are increasingly demanding low-carbon products, which in turn is creating a huge market for recycled plastics.”

“Whoever can develop a cost-effective method of producing clear recycled plastic will be able to tap into what some major players estimate to be a potential £100 billion market.”

Last year Chinese companies filed 1,970 patents relating to plastic recycling, 1,937 more than second place India. China is leading the way in patent filings as the country is in the middle of a single-use plastic crackdown.

In July of last year, China’s National Development and Reform Commission which oversees economic planning of mainland China published a “five-year plan” to boost plastic recycling and incineration capabilities. The five-year plan also commits to greatly reducing the use of single-use plastics.