To celebrate World Intellectual Property Day 2022, Mathys & Squire has collaborated with three SME leaders on a series of articles, exploring innovation and the impact IP has had on each business.

In the second of our series, we interviewed Atif Syed, CEO of Wootzano, a robotics company based in the North East of England.

1. How is your idea/invention creating a better future?

My invention was the electronic skin which allows robots to sense and feel like humans do. At the time when I was developing this, there were very few, if any, people who were actually looking into this field. Through Wootzano, we were able to catapult and scale up the manufacturing of the e-skin and became one of the first in the world to mass-manufacture e-skin. Using Wootzano as an inspiration, there are now many companies and research institutes (including Edinburgh, my own alma mater) looking into developing their own e-skin.

At Wootzano, we are using the e-skin within our Avarai robotic system, which is the world’s first and only system that can autonomously and dexterously pick and package complex fruits such as table grapes. The Avarai robotic system is enabling fruit packers to increase their margins and get an ROI of one year. Avarai is helping to reduce food waste and remove laborious and mundane human labour jobs, converting them into higher skilled, higher paid and more secure engineering jobs. The applications of the e-skin are versatile. We already used it in robots for nuclear power plant decommissioning, autonomous maintenance and repair of offshore wind turbine blades. In the future, we have plans to use it within prosthetic limbs and quite a few other applications which we have in our plans.

2. What were the challenges you or your team faced when growing your business?

There are various challenges: from finding the right people, to technical challenges. Since what we are doing is completely new, there are no references anywhere for this. We had to create our own models and generate our own data to feed into the machine learning models to enable the Avarai robotic system to handle grapes and other delicate fruits.

3. What role does IP play in protecting your invention and supporting your business objectives?

IP is one of the biggest assets we have. By protecting the IP, we are increasing an immense value within the business which otherwise would be untapped.

4. What advice would you give to your younger self to better navigate your journey?

I wouldn’t make many changes as many of the failures I have had actually helped me develop better strategies which otherwise I wouldn’t have thought about in the way I currently do. There is still a lot to learn!

5. What forward-looking plans do you have to ensure an even better future for your business and/or the wider society?

We have quite a few interesting plans, but I will leave some for the imagination! Wootzano exists to democratise robots. We want to see robots becoming common use by businesses and individuals. There are a lot of exciting plans for Wootzano in the coming months and years. The so-called “Google” of the robotics world does not yet exist, but we genuinely believe that we will take that spot in the next few months!

6. What activities do you carry out to ensure your business keeps innovating?

Innovation is at the heart of everything we do at Wootzano. We will be allocating specific budgets for R&D and we work very closely with various universities in the UK, Europe and the US. We are always on the look-out for other interesting tech which can complement the robotic systems we have developed, as we would also be very keen and interested in acquiring some of the tech within our robotic systems.

Mathys & Squire recognises the invaluable contribution inventors and innovative businesses offer to building a better future, and we are also aware of some of the challenges they might face. In an effort to help entrepreneurs, startups and scaleup businesses protect their inventions, we launched the Scaleup Quarter, a microsite with resources and a tailored offering for SMEs.

For more information, contact a member of our team.

To celebrate World Intellectual Property Day 2022, Mathys & Squire has collaborated with three SME leaders on a series of articles, exploring innovation and the impact IP has had on each business.

To kick off the series, we interviewed Phil Shadbolt, CEO of EZ-Charge, an Oxfordshire-based renewable energy solutions company that specialises in electric vehicle (EV) charging technologies.

1. How is your idea/invention creating a better future?

EZ-Charge focuses on renewable energy solutions, and we have developed an EV charging point. Our invention will help support the transition to EVs, as well as reduce the level of carbon emissions produced.

2. What were the challenges you or your team faced when growing your business?

We had several problems along the way, including delays in receiving signed legal contracts from local authorities and shortages of components required. We also had a partner step away from our projects, but we have managed to overcome all these issues. Despite a few hurdles along the way, we are proud to announce that we are now installing 250 EV charge points throughout Oxfordshire.

3. What role does IP play in protecting your invention and supporting your business objectives?

IP helps us to protect our invention from being copied and monetised by competitors. Having IP rights also portrays our technology as highly innovative to the public, including investors, which is crucial as it shows a promise of a satisfactory return on investment in the future.

4. What advice would you give to your younger self to better navigate your journey?

Don’t worry so much! I would also tell myself to continue working hard, as I truly believe that hard work will help you overcome any obstacles, so never give up!

5. What forward-looking plans do you have to ensure an even better future for your business and/or the wider society?

EZ-Charge is now looking to pursue a global licensing model to help us expand our presence. Looking at our research, we anticipate the expansion to cover Austria, Japan, Malaysia, Saudi Arabia, and South Africa. We hope to license out our IP to local companies, to enable them to roll out the installation of EV charging points, just as successfully as we have in the UK. This will help us to reinforce our efforts in making the future better and greener.

6. What activities do you carry out to ensure your business keeps innovating?

Our main focus is innovation, however, with research and development (R&D) being so expensive, we are adapting our business model to allow us to benefit from grant funding, which helps to support the R&D department. This also ensures that we plan accordingly and have strategic milestones in place to keep us on track and to deliver the highest quality products. We typically work collaboratively with local authorities and universities which helps us to broaden our horizons and consider all aspects of innovation and alternative avenues for product development.

Mathys & Squire recognises the invaluable contribution inventors and innovative businesses offer to building a better future, and we are also aware of some of the challenges they might face. In an effort to help entrepreneurs, startups and scaleup businesses protect their inventions, we launched the Scaleup Quarter, a microsite with resources and a tailored offering for SMEs.

For more information, contact a member of our team.

(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 contents should not be considered legal advice. If such legal advice is required, the opinion of a suitably qualified legal professional should be sought. 

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 of the COVID-19 pandemic on SMEs (from early 2020 through to 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

COVID-19 has had an enormous and perhaps irreparable impact on the retail sector worldwide, with social distancing requirements, lockdowns and dwindling sales pushing many businesses to bankruptcy and expediting the shift from physical stores to digital shopping. It is estimated that the pandemic has accelerated the move towards digitalisation by at least five years.

It has also been revealed that department stores experienced a 60% sales decline in 2020, while e-commerce businesses saw sales soar by 20%. The marked decrease in sales from physical stores has pushed large department stores such as Century 21 into administration, while SMEs found themselves struggling to survive in the competitive online environment. A 2019 study estimated that digitalisation is integral to increase global GDP growth[1], which further reinforces the need for businesses to embrace digital technologies to weather the pandemic and ensure rapid recovery[2].

Another consequence of the pandemic is the disruption of traditional supply chains, highlighting the importance of having a more localised supply chain, to support local businesses and increase their brand awareness. In hindsight, this can be a way to counter some of the gradual decline of the high street stores in the UK and many other countries worldwide.

Analysis

Despite the challenges faced by the retail industry, there have been several success stories, most notably e-retail platform such as Ocado, and Amazon, as well as food delivery services such as Uber Eats, Deliveroo and Just Eat. These platforms have grown from strength to strength with large portions of the population now doing most of their shopping online. Although items such as clothing saw a decline in sales overall, other items such as groceries, PPE, alcohol, entertainment, home improvement or construction materials grew by 10%-15%, largely due to people isolating and further lockdown restrictions. Many companies have pivoted to this new normal in two main ways: by offering online shopping with the order being shipped to the customer; or via a “buy online and pick-up in store” / “click and collect” option, where the item is simply collected at the store entrance, with minimum interaction. Amazon experienced a 40% sales growth in 2020 due to the pandemic, whilst US based Walmart saw a 97% increase in its e-commerce sales in Q2 of 2020 alone.

In order to meet these increasing requirements, many of these companies have developed new technical innovations, both in terms of e-commerce platforms and user interfaces, but also modes of processing and delivering such high volumes of online orders. Multi-channel distribution approaches have allowed businesses to provide greater flexibility and less reliance on a single point of the supply chain[3]. It is worth noting however, that the increased exposure for businesses through digitalisation and e-commerce also increases the risk of potential counterfeiting and IP theft. The traditional focus on protection of registered rights and employee know-how may be insufficient, with a pivot towards cyber security becoming increasingly important. It is also progressively vital that as businesses ‘go digital’, by turning to e-commerce platforms or developing their own software solutions. With such solutions, it is important that businesses understand their responsibilities and obligations when using open source code, especially when looking to commercialise their own solution containing open source software. 

Ocado, a leading provider of grocery delivery and logistics, is a good example of a business that has created additional value for through its innovations and licensing of IP to third parties. At the same time, Ocado has been able to foster innovation in adjacent areas through its venture program, supporting and acquiring disruptive technologies. This is achieved by expanding the Ocado patent portfolio, which now covers innovations relating to its core competencies surrounding AI and machine learning; robotics; IoT and edge intelligence; simulation; and modelling and forecasting. In this way, Ocado uses its IP as a foundation layer for a wider defensive strategy, while at the same time ensuring awareness of competitor strategies, what impact they have on Ocado and how to react.

In the meantime, home delivery giants such as Amazon have amassed large patent portfolios, including some IP rights that are relevant to the e-retail sector, such as drones, drone noise reduction, order management systems, mobile loading platforms, and autonomous vehicles. Ocado has also recently expressed its interest in autonomous vehicle technology for self-driving vans through a $13.8 million investment in autonomous vehicle technology company Oxbotica. The use of drone technology for deliveries is now beginning to extend beyond large behemoths such as Amazon, to startups such as Manna in Ireland, trialling grocery and medicine deliveries with supermarket chain Tesco, which estimates the market to be worth £10 billion in the UK alone over the coming years. UK supermarket chain Asda, owned by US giant Walmart, is also planning to trial drone delivery using drone firm Flytrex.

It is clear that the field of automation and logistics must improve to meet the demand of the e-commerce market, and with that, many large companies are already developing new innovations to meet customers’ expectations. However, these will be supported largely by innovators, especially SMEs, that will need to carefully protect their inventions, to maintain a position for themselves in this growing ecosystem. It has been noted that numerous companies, including Heineken and Philip Morris, have had to adapt their IP strategies to reflect the explosive growth in e-commerce platforms. Increasing sales channels have also dramatically increased the number of cases of infringement. This increase in counterfeiting has been influenced by significant changes in supply chains and rapid digitalisation, and has led to a number of malevolent parties taking the opportunity to monetise on someone’s invention or design, resulting in significant seizures of counterfeit branded products, including masks[4]. To combat these issues, many brand owners are now looking to online tools to help monitor and track potential infringements and, where relevant, initiate enforcement actions. Heineken has indicated that it has moved to single user-friendly online tools that allow monitoring of all their brands across different platforms. Ultimately, a company’s brand and its brand assets will remain an important point for business leverage and revenue production moving forward. For those utilising e-commerce platforms, it is likely that there will be an increased level of cooperation and collaboration between brand owners and platform providers to detect infringement and discourage the sale of counterfeit goods. Moreover, in response to an increase in passing off any counterfeit products, companies that are successfully operating through e-commerce platforms have utilised trade mark and design protection across multiple jurisdictions, to both protect their brand and at the same time deter any potential counterfeiters.

[1] (UNCTAD, 2020, pp. Summary of adoption of E-commerce legislation worldwide)

[2] (The Commonwealth, 2020, pp. Trade, Oceans and Natural Resources Directorate of the Commonwealth Secretariat Leveraging, Digital Connectivity for Post-COVID Competitiveness and Recovery)

[3] (Fabeil, Pazim, & Langgat, 2020, pp. Journal of Economics and Business, The Impact of Covid-19 pandemic crisis on micro-enterprises: Entrepreneurs perspective on business continuity and recovery strategy)

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

Last week saw the release of the UK government’s spring statement which announced new tax breaks for IP owners undertaking research and development (R&D) in the AI, quantum computing, cloud computing, and robotics sectors.

This is facilitated by allowing R&D expenditure on pure mathematics to qualify under the R&D tax relief scheme, with the intention of supporting emerging, technology-driven sectors.

The announcement appears to align with the National AI strategy, released in September 2022, which aims to boost AI capabilities in the UK with the culminating goal to ‘make Britain a global AI superpower’. The Department for Digital, Culture, Media & Sport and the Office for Artificial Intelligence has also projected that more than 1.3 million UK businesses will use AI by 2040, and spending on AI by UK businesses is expected to reach more than £200 billion by the same date, up from £63 billion in 2020.

This is great news for the UK’s many innovative businesses working in the AI, robotics, and quantum tech space. The Chancellor, Rishi Sunak, also raised the possibility of further innovation relief for future green energy-related schemes.

The R&D tax break is in addition to the Patent Box scheme, a tax relief initiative introduced in April 2013 which offers companies reduced tax rates on profits from products and services covered by patents, in order to recognise innovation in business.

For more information, please reach out to a member of our team.

The final version of the Rules on Representation before the UPC has now been published, and we are pleased to confirm that all our UK, French and German attorneys will be able to represent our clients before the new UPC when it is up and running. 

The official rules regarding representation rights can be found here.

More information on the UPC and what its advent means for European patent rights holders can be found on our UPC Hub.

Facebook’s rebranding to ‘Meta’ in 2021 brought renewed attention to the metaverse, a shared virtual environment that, at least according to Meta, is the next evolution of social connection. The metaverse offers the potential to radically change many aspects of life, including learning, working and socialising. The metaverse – and the investment flowing into it – provides opportunities for companies looking to innovate and to protect their innovations.

While the introduction of Meta is relatively recent, the development – and patenting – of metaverse technologies has been ongoing for decades. While some companies already have substantial patent portfolios built up in this space, the metaverse is a huge space, so much room remains for innovation and patenting.

Hardware technologies

In principle, seeking patent protection for hardware technologies for the metaverse tends to be quite straightforward – and there are many existing patents for virtual reality and augmented reality headsets. When seeking protection for hardware technologies, the major barrier is likely to be the need for novelty and inventiveness. While this is far from simple in what has become a crowded space, there are of course myriad areas in which metaverse hardware can be improved.

Software technologies

On the other hand, obtaining software patents for metaverse technologies is likely to be comparatively more difficult from a subject matter point of view, but there is still substantial scope to protect such inventions. Much of the metaverse will be built on simulation, either of the real world or virtual locations and situations. As demonstrated in European Patent Office (EPO) decision G1/19, patenting inventions for simulation can be difficult via the EPO (and, indeed, in the UK). However, such restrictive provisions are not universally applicable. Obtaining protection for these types of inventions in, for example, the US can sometimes be more straightforward.

Future of patents in the metaverse

In any event, getting a patent granted for many of the technologies required to implement the metaverse, and especially the simulations within it, is likely to be possible. As an example, much of the recording of information and transactions associated with the metaverse will occur using blockchains or similar technologies – and as explained in our recent article, obtaining protection for these technologies is currently possible in many jurisdictions.

In short, protecting software inventions associated with the metaverse might not always be easy, but there is certainly room for innovation. While care should be taken to position the software inventions in a patent-friendly manner, there is plenty of scope for obtaining protection for all types of metaverse inventions.

UK companies working in the human medicine, medical diagnostics and medical device sectors now have access to a new £60 million fund to support their manufacturing projects and promote growth in the UK’s life sciences sector.

The Life Sciences Innovative Manufacturing Fund (LSIMF) was launched earlier this month by the Department for Business, Energy and Industrial Strategy (BEIS) and the Office for Life Sciences. A significant barrier to the deployment of emerging technologies is the restrictive up-front costs of setting up production, which the LSIMF aims to mitigate by providing capital grants to companies with projects operating in target fields, including pharmaceuticals (such as cell, gene and nucleic acid therapies); disease diagnostics; and medical devices. The first wave of applications is now open, with a deadline of 12pm on 31 March 2022, and further monthly deadlines on 29 April and 31 May 2022 for two subsequent waves. 

To be considered eligible for these grants you must be a UK registered company, and the project in question must be a manufacturing project located in the UK within one of the approved sectors. The published guidance also indicates that an eligible project should have a minimum total cost of £12 million (although BEIS reserves the right to approve smaller projects under certain circumstances).  Since this is a capital grant fund, certain intangible costs that would form part of this total (such as R&D) will not be eligible for grant funding.        

The application process involves a number of stages, including an interview with an expert panel to discuss the project’s alignment with the fund’s objectives, a due diligence report of the application and ministerial assessment.

For full information on this fund and how to apply, click here.

The European Commission has launched a public call for evidence in response to a proposed reform of the supplementary protection certificate (SPC) system. The initiative will put in place “a unitary SPC and/or a single (unified) procedure for granting national SPCs” in an effort to benefit the health sector by making them more accessible and efficient.

Following an evaluation in 2020, the Commission identified that SPCs being granted and administered nationally is the “main shortcoming” of the current system: “SPC applications are currently filed at the national patent office of each EU Member State where protection is sought and in which a basic patent, to be extended, has been granted. This undermines their effectiveness and efficiency.” The initiative is intended to tackle the following key issues:

1. Divergent outcomes of the grant procedures across EU countries
2. Lack of unitary SPC protection for the future unitary patent
3. Suboptimal transparency of SPC-related information
4. High cost and administrative burden for SPC users

Further information about the initiative is available to download here. Feedback can be provided until Tuesday 5 April 2022, please click here to have your say.

For more information about SPCs, visit our webpage here.

Applicants seeking patent protection in European markets have two routes available: via the European Patent Office (EPO), which provides a single examination procedure for all EPC contracting states; or the ‘national route’ which involves filing individual national applications in each country where protection is sought. Whilst there are benefits and drawbacks to both, below are some reasons to consider the national route in the UK.

1. The UK Intellectual Property Office (UKIPO) often grants patents more quickly than the EPO

The UK system provides the option to receive a combined search and examination report (CSER) approximately two months after filing. If a reply that addresses any objections raised in the CSER is filed promptly, it is possible for a patent to be granted in around eight months. This is, on average, much faster than EPO timescales. Furthermore, for inventions with environmental benefits, the UK offers a Green Channel which allows applicants to request accelerated processing, resulting in a CSER being issued in just six weeks.

It is also common in the UK for agreement to be reached on allowable claims by telephone call with the examiner, which can substantially accelerate prosecution, without reliance on written formalities. This may be advantageous to keep a short file wrapper, which can be helpful if the patent is ever litigated.

The UK system has a compliance period of four and a half years from the date of filing, meaning all UK applications must be ready for grant beforehand, preventing ongoing prosecution extending over many years. In practice, examiners may review applications that are close to the end of their compliance period more quickly. While this may be helpful for some, it can be disadvantageous for others who favour long pendency and flexibility to file a series of divisional applications.

2. Acceleration in other territories

The UKIPO is well respected and provides a high standard of examination which can provide a basis for accelerating grant in other territories. Under the Patent Prosecution Highway (PPH), granted UK patents can be used to accelerate prosecution in Australia, Canada, Germany, Israel, Japan, New Zealand, Russia, Singapore, South Korea, and the United States, amongst others.

3. The UKIPO offers very good value for money

Patent application and associated grant costs in the UK can be lower than in many territories. For example, where the EPO may charge £3,000+ for filing an application, requesting search and examination, as well as grant fees, in the UK it could cost just £310. Renewal fees are also far cheaper at UKIPO than at the EPO.

It is relatively rare to be summoned to a hearing at the UKIPO, unless requested or as a last resort, as opposed to the EPO where oral proceedings are reasonably common. Furthermore, the EPO Guidelines (C-III, 5) permit the issuance of a Summons to Oral Proceedings as the first action in examination. As preparation for a hearing is more expensive than written communications, the UK approach can help to keep costs down during prosecution.

If you are only interested in protection in a few European countries, such as the UK, France and Germany, direct filings with the national patent offices can be more cost effective than a European patent application.

Furthermore, registration systems also exist which allow UK patents to be re-registered in a selection of overseas territories including Hong Kong and Gibraltar. Re-registration can provide a cheap and easy way to obtain patent protection elsewhere.

4. UKIPO procedure is less rigid than at the EPO

The UKIPO gives applicants more opportunity to amend claims than the EPO does, and discretionary amendments are rarely not permitted. The UKIPO also provides options to have more than one claim set searched, and there is no deadline on a second search request, giving applicants the opportunity to be more informed about the potential patentability of their invention(s) and their protection strategies, e.g. before a decision is made as to whether or not to file a divisional application.

There is no hard rule on conciseness in the UK, and multiple independent claims in the same category can be accepted in circumstances which may not be allowed by the EPO, which can again help to reduce costs and obtain a broader scope of protection in a single application.

5. The UKIPO’s inventive step standard can, in practice, be less strict than at the EPO

At the UKIPO, the EPO’s ‘problem and solution’ approach does not need to be followed (although it will be accepted) and the UKIPO inventive step approach is less rigid. Arguments based on the relative age of documents and the commercial success of the invention can be given more weight at the UKIPO than at the EPO.

6. Adding credibility to a patent family

The UKIPO is well respected, so having a patent granted in the UK relatively early on acts as a deterrent to potential infringers in other territories who might be considering engaging in infringing activities, as they may expect you to obtain similar patent coverage in other territories.

7. Streamlined enforcement procedures

The UK offers fast track patent litigation in a specialist court with expert judges and commercially reasonable limits on liability for the other side’s legal costs. If enforcement is necessary, the UK’s Intellectual Property Enterprise Court (IPEC) offers procedures that resolve certain cases (limited to claims of <£500,000) more quickly than disputes heard in the High Court. The IPEC has been set up to be time- and cost-effective, and ability to resolve disputes in such a way is highly desirable.

8. Reliable judgments and expert judiciary

The UK Patents Court (Chancery Division of the High Court) consists of specialist judges with IP expertise. There are also several highly experienced IP expert judges in the Court of Appeal and Supreme Court, for hearing more complex cases that reach these higher-level courts.

The approach to claim interpretation taken by the European Patent Office (EPO)’s Technical Board of Appeal 3.5.03 in its recent decision T 1127/16 appears to be at odds with the UK Courts’ doctrine of equivalents, as recently applied in Illumina Cambridge Ltd v Latvia MGI Tech SIA & Ors [2021] EWHC 57.

UK Courts’ doctrine of equivalents

In the UK Supreme Court’s decision in Actavis v Eli Lilly [2017] UKSC 48, Lord Neuberger developed a new approach for dealing with “equivalents” in UK patent infringement. The decision set out a two-part approach to assessing whether a UK patent is infringed by a product or process that is an equivalent variant of that claimed in the patent. This approach involves asking the following two questions:

• does the variant infringe any of the claims of the patent as a matter of normal interpretation; and, if not,
• does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial?

If the answer to either question is ‘yes’, there is an infringement. Otherwise, there is not.

As an extension of the second question, Lord Neuberger set out three further questions (that have come to be known as the ‘Actavis Questions’) for evaluating whether a variant is ‘immaterial’:

1. Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention?
2. Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?
3. Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?

The third Actavis question – Illumina Cambridge Ltd v Latvia MGI Tech SIA

The High Court of England & Wales applied the doctrine of equivalents principle in its recent decision in Illumina Cambridge Ltd v Latvia MGI Tech SIA, which related to DNA sequencing technology. 

One of the patents covered in this decision claimed a process involving ‘incorporation’ of a nucleotide. It was argued that this claim was infringed by the use of another process involving an allegedly equivalent variant of the claimed ‘incorporation’ step. 

However, the description of the patent contained a specific definition of the term ‘incorporation’ as referring to “(…) the joining of the nucleotide to the free 3’ hydroxyl group of the nucleic acid strand via formation of a phosphodiester linkage with the 5’ phosphate group of the nucleotide.” The allegedly equivalent incorporation step did not accord with this definition.

Based on this definition, the judge held that “(…) the answer to the third Actavis question should be in [the defendant’s] favour (…). The reason why skilled person would think that strict compliance with the normal construction of ‘incorporation’ was essential is because the specification has gone out of its way to define that term in a clear and simple way.  It is not necessary for the skilled person to speculate about why the patentee may have done that, the fact is that it has been done (Paragraph 396)”.

Therefore, in this decision, the description of the patent was used to impart a narrower interpretation of the claims of the patent, such that they were held to exclude the allegedly equivalent variant by virtue of the third Actavis question.

EPO decision T 1127/16

In this decision, the Technical Board of Appeal considered related issues of claim interpretation, taking an approach that appears to be at odds with the approach taken in the Illumina Cambridge decision.   

T 1127/16 was an appeal against a decision of the Opposition Division to revoke a European patent on the grounds that the main claim – as interpreted – extended beyond the content of the application as filed. The claim in question related to a method for handling aircraft communications involving communicating with the ground via a plurality of broadcast networks, arranged in an order of preference and stored within a preference list. The method involved evaluating the highest in preference broadcast network and whether it is available, before transmitting a message.  Importantly, the claim involved the following features:

• “(…) evaluating a preference to determine a preferred network of the plurality of transmission networks,
• wherein the preference comprises a preference list identifying a selection of the plurality of broadcast networks in order of preference
• and identifying the highest in preference of the plurality of broadcast networks in the preference list that is available.”

One of the main questions of claim interpretation was whether features (b) and (c) should be read in combination or, as argued by the patentee, separately. If read in combination, the claim defined a preference list that identified both a selection of the plurality of broadcast networks in order of preference, and the highest in preference of the plurality of broadcast networks in the preference list that is available. The Opposition Division and Technical Board of Appeal both considered that there was no basis in the application as filed for such a preference list.

It was argued by the patentee during the appeal proceedings that the skilled person would consult the description to resolve this ambiguity, and that the description would clarify that in fact features (b) and (c) should be read separately, rather than together. 

However, the Technical Board of Appeal took a different approach, stating that “(…) the description and the drawings of the patent [do not] have to be consulted automatically as soon as an “ambiguous” feature (i.e. a feature which at least theoretically allows more than one interpretation) occurs in the claim, or where the claim as a whole includes one or more inconsistencies, to resolve that ambiguity or inconsistency. According to such a logic, an applicant could then arguably dispense with providing a clear and unambiguous formulation of claim features (…) in order to be able to fall back on a more description-based interpretation at will during a subsequent opposition proceedings.” (Reasons 2.6.1.)

The Board considered there to be no linguistic problem with reading features (b) and (c) together, and that the repeated use of the verb “identifying” in these features, as well as there being no comma separating these features, would lead the skilled person to read these two features together. The Board also considered this interpretation of the claim to be technically credible, setting out an exemplary implementation of the invention according to this interpretation. On this basis, the Board decided that the claim extended beyond the content of the application as filed and thus dismissed the appeal. 

The importance of commas?

Finally, much has been written about how the appeal in T 1127/16 failed as a result of the simple omission of comma between claims features (b) and (c), as set out above. The reality is, perhaps reassuringly, more nuanced.

The patentee in T 1127/16 did in fact file an auxiliary request in which a comma wasinserted between features (b) and (c). Considering this request, the Board nonetheless decided that “(…) despite the presence of the comma, the claim may – linguistically and technically – still be given the same meaning as (…) the main request”. (Reasons 3.2.)

Therefore, it is clear from the Board’s reasoning that they considered the presence or absence of comma between features (b) and (c) to be just one factor contributing to the way in which the claim should be interpreted. In practice, this factor was outweighed by others, such as the repeated use of the verb “identifying”, which were of more importance. 

Conclusion

The EWHC’s decision in Illumina Cambridge and the EPO Technical Board of Appeal’s decision in T 1127/16 illustrate differing approaches to using the content of the description of a patent to interpret the claims. 

In Illumina Cambridge, the EWHC relied on a definition provided in the description to interpret a key feature of the claim. This decision therefore highlights the potentially significant role the description can potentially play in interpreting the claims – particularly in the context of infringement proceedings – and therefore the care that should be taken when drafting the description, particularly with regard to any definitions of claim wording.

In T 1127/16, the Technical Board of Appeal took a more restrictive view of the role of the description in interpreting the claims, indicating that the description need not be consulted automatically, even when the claims are ambiguous when read in isolation. It is unclear how such an approach to claim interpretation would enable one to answer the third Actavis Question, which necessarily requires the claims to be read in the context of the whole patent to understand whether the reader would have concluded that strict compliance with the literal meaning of the claims was an essential requirement of the invention. Nonetheless, this decision serves as reminder as to the importance of drafting claims that are clear and unambiguous, independently from the description, and as to the potential effects of seemingly minor differences in claim wording.