Good things come to those who wait. After years of seemingly little to no progress and challenging negotiations, and with the Unitary Patent (UP) being on the verge of introduction several times, the time has finally come. Despite many hurdles, unforeseen detours, and some political headwind, the way now seems clear for the UP.
The Unitary Patent and the Unified Patent Court (UPC) seemed set to be on the verge of introduction a few years ago. However, various political imponderables such as Brexit – with the subsequent exit of the UK from the EU and thus also the UP and the UPC – as well as legal hurdles such as the lawsuits against ratification of the UPC before the German Federal Constitutional Court, have delayed its implementation. In July 2021, the long-awaited decision of the Federal Constitutional Court removed the last obstacle to said ratification. Despite federal elections taking place the same year, Germany swiftly ratified, so that the three required states with the highest number of European patents filed – France, Italy and Germany – had thus taken the decisive step towards the UPC and the UP coming into effect. After a range of further national ratifications, the final required national decision is now awaited for 2 December 2021 with the ratification of the UPC being on the agenda of the Austrian Federal Council.
With the political hurdles regarding the ratification process thus overcome, implementation of the UPC and the connected UP can finally commence. However, the main effort still lies ahead: administrative structures now have to be created and the required staff must be hired and trained.
Patent owners will now be able, and are in fact required, to do their part as well, as far as considerations and decisions are concerned. Even if the actual UPC start date is not likely before 1 January 2023, the likely advantages and risks of the new system are already known. As the UP is closely interlinked with existing European patent law in terms of its structure, it is advisable for patent owners to take a closer look at this linkage and to consider its effect on existing patent portfolios as well as on the future filing strategy in more detail.
Due to the multitude of possible patent uses, as well as varied market and competitor scenarios, no general recommendation can be made regarding UPC opportunities and risks. Rather, a detailed analysis of the individual business’ entire IP situation is required. This is the only way to ensure that patent owners are fully prepared prior to the introduction of the UP, both with a view to their portfolio and comprehensive overall strategy. This can range from active use of the UP; to a ‘wait-and-see’ approach while requesting to opt-out; to possible avoidance strategies through national applications. Regardless of the approach, at least there is now some clarity around the long-delayed start of the UPC so that patent owners can get prepared.
Click here to read the above article in German.
Following the order issued on 16 July 2021, the Enlarged Board of Appeal (EBA) has now published its full written Decision in G 1/21. The procedural objections raised throughout the earlier part of the proceedings have been covered in a previous article, and so this article focuses on the opinion of the EBA on the status of oral proceedings by videoconference in the context of the European Patent Convention (EPC).
Although the EBA considered it necessary to restrict the referred question to proceedings before the Boards of Appeal, as opposed to departments of first instance, the Decision issued provides general guidance with respect to the circumstances under which oral proceedings by videoconference may be imposed on parties without their consent. The EBA acknowledged that in-person proceedings should be the ‘gold standard’ default, with videoconferencing able to provide a suitable alternative in some cases. The EBA also commented that the parties’ preferences (with good reason) should be given due consideration by a Board when deciding on the format of oral proceedings. Thus it seems that we can expect a return to the ‘old normal’, at least for Board of Appeal proceedings, following the current pandemic.
The EBA opened by reformulating the referred question in view of the particular need for clarification in the referring decision (CLBA 2019, V.B.2.3.3). In doing so, they considered that the choice facing the referring Board in T 1807/15 was not between in-person and videoconference, but instead between videoconference and postponement – the question was thus limited to periods of ‘general emergency’, such as the Covid-19 pandemic. However, the EBA has not provided further comment as to which parties able to declare a ‘general emergency’ (or when it is over).
The EBA did consider it appropriate to evaluate compatibility of videoconferencing with the EPC more generally, and not solely in regard to Article 116 EPC, as “the right to oral proceedings is an expression of [the right to be heard under Article 113(1) EPC]”.
The fundamental question of what legal status is given to a videoconference may usefully be considered in several parts, summarised as follows:
(1) Do oral proceedings by videoconference constitute ‘oral proceedings’ within the meaning of Article 116 EPC?
YES
(2) Is a videoconference equivalent to in-person oral proceedings?
NO
(3) Is a videoconference a suitable format for conducting oral proceedings?
YES
The first of these questions focuses on the interpretation of Article 116 EPC, which is actually concerned with when oral proceedings are to take place, rather than what constitutes ‘oral proceedings’. The EBA considered the term ‘oral proceedings’ to be very general so a broad interpretation, requiring only verbal communication between parties, was adopted. However, it was later noted that a telephone interview would not be ‘suitable’ in the context of the third question. In dismissing allegations about the intention of the legislators of the EPC 1973 and 2000, the EBA stated that the purpose of the Convention is to “provide a system for the grant of European patents with the aim of supporting innovation and technological progress”, and therefore considered that it would be at odds with the fundamental object and purpose of the EPC to exclude the use of newer technologies in the conduct of oral proceedings. It was also pointed out that the use of laptops, PowerPoint presentations, and digital whiteboards would equally not have been envisaged by the original legislators, but these forms of technology have nevertheless formed a useful part of oral proceedings for some time.
On this topic, the Decision makes an interesting point that, if videoconferences were not ‘oral proceedings’ within the meaning of Article 116 EPC, the validity of certain aspects of such videoconferences even with the consent of the parties could be called into question. For example, giving parties the opportunity to make oral requests (in accordance with their right to be heard), or the rendering of an oral decision by a Board, might have different legal status as compared with the same procedural acts performed in-person.
The second and third questions were considered under the same heading in the Decision, but there seems to be an important distinction between them. Specifically, the second question appears to relate to the effectiveness of videoconferencing in general, whereas the third assesses simply whether it meets the needs of users of the European patent system where necessary, e.g. to avoid postponement of oral proceedings in the height of a pandemic. It is noteworthy that the EBA agreed (at least with a number of the amicus curiae briefs) that communication by videoconference “cannot, at least for the time being, be put on the same level as communicating in person”, i.e. it is not equivalent to in-person proceedings. However, the EBA considered that the essential features of oral proceedings can be ensured by a videoconference, namely (as set out in R 3/10) “.. to allow each party to make an oral presentation of its arguments, to allow the Board to ask questions, to allow the parties to respond to such questions and to allow the Board and the parties to discuss issues, including controversial and perhaps crucial issues”. This is consistent with the analysis above with respect to the legal validity of acts performed via a videoconference. The EBA also noted that the extent to which body language can be interpreted (which was a feature of a number of the submissions by those taking a position against videoconferencing, including the appellant) is a matter of degree; the point was made that interpretation of body language could equally be impacted by distance or layout in a physical courtroom.
Thus, the Decision concludes that videoconferencing does provide a suitable alternative to in-person proceedings.
Before turning to this final part of the question, the Enlarged Board noted that oral proceedings are most often held on the request of a party. It was therefore concluded that the choice of format for oral proceedings should be made by the party requesting them, particularly as they could have good reasons to prefer in-person proceedings (since it has been established that these are the ‘gold standard’).
Despite this conclusion, it was considered that the Board of Appeal could overrule the party’s preference in format under certain circumstances. The conditions for doing so as set out in the Decision are that:
(i) there must be a suitable, if not equivalent, alternative (such as videoconferencing); and
ii) there must be circumstances specific to the case which justify the decision not to hold the oral proceedings in person.
The EBA specified that the decision as to whether the specific circumstances justify deviating from a party’s wishes “must be a discretionary decision of the Board of Appeal summoning them”.
Whilst the present Decision may have addressed the issues raised in light of T 1807/15, it remains to be seen how the Boards of Appeal will apply the guidance and to what extent they will exercise their discretion. The Decision does feature statements with which we are now all too familiar, including ‘general travel restrictions’, ‘quarantine obligations’, and ‘other health-related measures’ preventing travel to an in-person hearing, and so there is the potential for some variation in the interpretation of these deciding factors. One helpful point, although seemingly less relevant after over a year of trialling videoconferencing in European Patent Office (EPO) proceedings, is that the decision should not be influenced by administrative issues including the availability of rooms and interpretation, or by intended efficiency gains.
Whilst we might still expect some discussion in the coming months about the suitability of videoconferencing as an alternative to the ‘gold standard’ of in-person hearings in particular cases, the overall impression based on the reasoning of the present Decision is that the EBA envisages the EPO maintaining the status quo for the time being (at least until an end date to the most recent state of ‘general emergency’ is announced). Nevertheless, the Decision has now provided particular terms as a springboard to open discussion with the Boards of Appeal surrounding parties’ particular circumstances, and it will be interesting to see how broadly or narrowly these terms are applied in the coming months, including whether the departments of first instance look to follow the same procedure.
For the moment, it seems that we can conclude that the EBA does not see videoconferencing becoming a ‘new normal’ in its current form, and we hope to see a return to the premises of the EPO for those of us who are keen to do so.
The UK Government officially launched its consultation on intellectual property (IP) and artificial intelligence (AI) on 29 October 2021, as part of the National AI Strategy (see our summary here) which aims to ensure the UK continues to be a world-leader in AI development and deployment.
In brief, the consultation is designed to seek opinions on the issues surrounding IP – in particular copyright and patents – and AI as a tool for innovation and creation. The responses will help the UK Government to design and implement solutions that will tackle these issues and pave the way through our increasingly AI-driven world.
This consultation follows the earlier call for views on AI and IP, a response to which was published in March 2021, in which a number of questions were raised regarding the role of copyright and patents to protect inventions and creative works arising from AI.
For example, there was concern that copyright can restrict the development of AI by limiting what sources can be used for developing or training AI. In addition, issues were identified with the patent system that may also act as a barrier to AI innovation or use.
There is also the ongoing debate over whether IP rights can or should be used to protect inventions and creative works partly or wholly arising from AI, and how or to what extent this protection occurs.
The consultation therefore focuses on three specific areas to understand these issues in more detail:
The ambition behind the consultation is to ‘encourage innovation in AI technology and promote its use for the public good’. In addition, the consultation aims to ‘preserve the central role of IP in promoting human creativity’.
Similarly, the UK Government have emphasised that any new measures implemented as a result of the consultation must also meet these goals and be based on the best available economic evidence.
The consultation will run for 10 weeks – it began on 29 October 2021 and will close at 11.45pm on 7 January 2022. Responses must be submitted via a completed response form, available online, to a specially created email address. The form is split into two main sections; one requests information from the responder, and one sets out 21 questions further breaking down the three key areas described above.
Following the consultation, the UK Government will consider the responses and publish a formal response document in due course. The consultation states that the information obtained will be used to inform government decisions on any changes to legislation that appear necessary as a result and will help to achieve the aims of encouraging AI innovation and implementation, whilst still promoting and protecting human creativity.
The UK Government have also published an Impact Assessment, which provides further information about the consultation and indicates there are no preferred options at this consultation stage. It will be interesting to see whether there is a consensus preferred option from the responses to the consultation, and how the UK Government takes the findings into consideration going forwards.
We are pleased to see the attention the UK Government is dedicating to the role of IP in AI and if any clients or contacts have views on any of the questions the consultation seeks answers on, we would be happy to hear their thoughts.
Thanks to technological advancements and innovation driving change at an increasing rate, business owners are realising that intangible assets and registered rights such as intellectual property (IP) contribute significantly to overall business value. This has therefore sparked the need to understand the value of IP, but – as with all intangible assets – can often be challenging. Mathys & Squire Consulting provides clients with insights into the IP valuation process and a clear understanding of the components of value, as outlined below. Although the valuing of IP can be complex, it is an essential stage to prioritise before engaging in any IP transactions.
A crucial consideration in IP valuation is to understand your business model and to evaluate whether it is most likely to lead to a transaction within reasonable timescales, with a party that has a key position in a strong value chain. It can often be the case that several business model alternatives exist, and numerous factors need to be reviewed to determine the optimum approach to take when valuing IP.
Another aspect to consider is awareness of the assets’ ownership within the value chain (i.e. owned by the customer or sub-contractor). At every step of the value chain, the value of an intangible asset tends to increase, and thus transactions at different levels can yield significantly differing results – both in terms of the level of success of the transaction itself and the ultimate financial outcome.
A further consideration is the reason behind IP valuation in the first place, which could be for the purpose of mergers and acquisitions; securing more funding and investments; asset transfers; infringement-related damage evaluation; or insolvency. All these scenarios call for an IP valuation, but it is likely they will be approached differently. It is therefore crucial to understand the reason for valuation, as it will help determine the most suitable calculation method. Certain circumstances may require a more pragmatic approach than others, and IP valuation should cater to all cases, with the overriding consideration that the IP valuation model is designed to support transaction negotiations.
The flexibility built into the IP valuation process can provide a portfolio’s value at a particular time and market strength. The value of intangible assets and an IP portfolio can fluctuate significantly given changes to the state of the economy, industry trends and market competitiveness. Such valuation should be updated as the business expands or any external changes occur, which could inflate or devalue the asset value.
The industry in which your business operates also has a significant impact on asset valuation. Different industries have varied product development turnaround time, with some being able to market an invention or technology in less than two years, while others may take 15 years to do so. This can directly influence the value of assets in terms of the time to market and market growth. Certain markets also have regulations and de facto standards that businesses must comply with to enter the market. For any new invention, the valuation model needs to take account of ongoing investment required to demonstrate regulatory compliance.
The market context and purpose of intangible asset and IP valuation are key factors in establishing a negotiation position, leading to a successful transaction. Mathys & Squire Consulting has developed a methodology that can be used to enable clients to understand where the key value drivers are within a transaction, which leads to meaningful and efficient negotiations.
8 November marks National STEM Day – a time to celebrate the importance of science, technology, engineering and mathematics (STEM) subjects at school. As a firm that supports technologically innovative clients with IP legal advice, we need attorneys who understand a wide range of different technologies. We acknowledge there are too few young people studying STEM subjects at higher education.
Our commitment to inspiring students to choose STEM careers led us to the UK Electronics Skills Foundation (UKESF), a charity we have now been working with for over four years.
Since 2012, over 600 engineering undergraduates have participated in the UKESF Undergraduate Scholarship Scheme, with work placements being provided by 65 different companies. Of those that have graduated, 91% are engaged in the electronics and technology sector. In addition to scholarships and work placements, UKESF also works with schools and universities to raise awareness, support students during their studies, and promote inclusion and diversity amongst them. To celebrate National STEM Day 2021, together with UKESF we have outlined four examples of the opportunities available to you should you choose to pursue a STEM subject education.
Living in a world full of technology encourages young innovators to keep researching, working, and creating. Our daily lives are increasingly impacted by technological innovations, such as smart phones, electric vehicles, robots and the Internet of Things, which all have one thing in common: they depend on electronics. Having the knowledge and skillset to develop the next ground-breaking technological advancement can equip you with power to shape the future.
Studying STEM subjects can open many doors and introduce you to some of the most rewarding career routes – from saving lives in hospital, to researching vaccines or teaching the next generation. Choosing a career in electronics can enable you to work on the latest technological advances that will solve problems and make people’s lives better or allow you to become a patent attorney who helps to provide the protection for those innovations, and hence encourage the investment required to turn those ideas into products that can make a real societal difference.
Pursuing a STEM education equips you with transferable skills, which you can use to excel in professional and private life, including attention to detail, determination, problem-solving, critical thinking, resilience and communication. Such skills will not only make you an outstanding candidate for a STEM-related role, but also any other career you wish to follow.
The demand for skilled scientists, technologists, engineers and mathematicians is constantly increasing, as the world relies more heavily on their research and work. With the electronics industry in the UK growing extremely quickly and accounting for more than 6% of the nation’s GDP, electronics is an intellectually stimulating, and financially rewarding, career path to follow if stability, growth and development are important.
The benefits associated with education and careers in STEM go far beyond those mentioned above. In an article for Electronics Weekly, five of our attorneys have shared their experience of studying electronics or physics and how that led them to becoming patent attorneys. Along with the UKESF, our mission is to encourage more young people to consider these careers, by providing them with the skills and support they need to succeed. If a career in electronics is of interest to you, get in touch with UKESF to explore how they can help you take the first steps.
Innovation has been placed at the heart of the COP26 summit, with new green technologies playing an essential part in each country’s strategy to stay on track to reach net zero by 2050 to achieve the summit’s aim of limiting global warming to 1.5 degrees Celsius.
In this article, we have provided an overview of six Mathys & Squire clients in the clean-tech and sustainability space, whose ground-breaking innovations are helping to combat climate change.
Enapter has developed leading anion exchange membrane (AEM) electrolyser technology to turn renewable electricity into emission-free green hydrogen gas that can fuel cars and planes, as well as heat homes. Its technology is already being used by customers in more than 40 countries, in sectors ranging from mobility to industry, power-to-gas, electricity storage, and heating and cooling.
Enapter recently won the ‘Fix Our Climate’ category of The Earthshot Prize, an initiative launched by Prince William, Duke of Cambridge, and Sir David Attenborough, with an aim of rewarding organisations dedicated to climate action through project funding. The £1 million prize will enable Enapter to mass produce their technology, expand their team, and invest more in research and development, in a bid to provide 10% of world’s hydrogen generation by 2050. The company, which has a presence in Italy, Germany, Thailand, and Russia, has also recently broken ground on the construction of its new mass production site in Saerbeck, Germany.
The Mathys & Squire and Mathys & Squire Consulting teams have worked very closely with Enapter for a number of years, filing and prosecuting numerous patent applications in the UK and internationally, while supporting them in the growth and valuation of their intellectual property (IP) portfolio.
Biophilica is a designer and manufacturer of specialist plant-based leather alternatives and other biomass-derived materials, with an aim of transforming the fashion and leather industries through providing a leather substitute that is not only cruelty-free, but also non-toxic and environmentally friendly (free from petrochemical derived polymers, such as polyurethane and PVC). Biophilica’s flagship product, TreekindTM, is a biodegradable leather-like material manufactured from green waste which uses less than 1% of the water consumed in leather production, all while exhibiting comparable performance characteristics with conventional leathers.
Biophilica received the first Queen Mary Social Venture Fund and Manufacturing Futures 2021: Fashion District Innovation Challenge Prize and has also recently been announced as a semi-finalist for the Conservation X Labs (CXL) Microfiber Innovation Challenge.
Mathys & Squire has advised Biophilica through implementing a robust IP protection strategy for their innovations, directed to a plant-based leather alternative. A UK priority patent application has been filed and the portfolio is set to be expanded internationally in due course.
Colorifix is the first company to apply biological dyeing to the commercial dyeing of fabrics, including polyamide-based jersey, polyester and cotton, as well as other natural and synthetic fabrics. Instead of using toxic and non-renewable petrochemicals, Colorifix uses synthetic biology methods to create a range of colours which are produced naturally. By engineering microorganisms to produce naturallyoccurring pigments, Colorifix converts agricultural by-products such as sugar molasses into colorants suitable for textile dyeing. Importantly, the engineered microorganisms also transfer the colour directly onto a fabric or garment, resulting in additional water and energy savings, providing a solution that uses 10 times less water than traditional dyeing processes and zero heavy metals, organic solvents or acids while still achieving excellent results in independently certified quality tests.
Colorifix carried out its first promotional brand launch with H&M in April of this year and will be launching its first commercial collection with another brand in mid-November. The company is currently embarking on a Series B fundraise of £17 million and its existing investors include Cambridge Enterprise, H&M, Mills Fabrica, Primera Impact and Sagana.
Mathys & Squire works closely with the Colorifix team and has secured patent protection for Colorfix’s processes for dyeing fabric using microorganisms in a significant number of territories worldwide.
OXTO Energy has developed a new generation of flywheel mechanical batteries that store kinetic energy in the form of a rotating mass. These flywheel batteries stabilise the supply of electricity from intermittent renewable sources such as solar and wind power, which only produce electricity when the wind is blowing or the sun is shining.
OXTO Energy’s batteries will foster renewable energy integration for industries such as manufacturing, transportation, real estate and others. In railway transportation systems, these flywheel batteries can be used to provide trackside storage of energy recovered from a train’s regenerative braking system; this energy can then be used by an adjacent train station, for example to lower energy consumption or to power electric vehicle charging points.
Mathys & Squire has advised OXTO Energy with its patent strategy and has filed and prosecuted a number of patent applications for their flywheel technology in the UK, the US, Europe and further afield.
Bitrez is a designer and manufacturer of specialist polymers, synthetic resins, catalysts and curing agents. With a focus on developing and implementing alternatives to conventional epoxy resin-based chemistries, Bitrez’s products are used in the preparation of adhesives and coatings used in a plethora of industries, including aerospace, defense, automotive, and construction. These innovations are set to revolutionise the green credentials of the resin and coatings industry, which supplies numerous other industries, meaning that there are far reaching benefits, amounting to a substantial impact on meeting evermore ambitious environmental targets.
Bitrez received a Queen’s Award for Enterprise (innovation category) as well an IChemE Global Award (food and drink category) for its innovations in BPA-free phenolic resin, useful in food packaging. Lead inventor and managing director of Bitrez, Paul Jones, has also received the Royal Society of Chemistry’s Chemistry World Entrepreneur of the Year – 2021 for his globally recognised work in innovating speciality polymers employing green chemistry principles.
Mathys & Squire has filed a number of patent applications for Bitrez, as part of its growing IP portfolio, directed to green curative agents / hardeners and high bio-content cured epoxy systems obtainable therefrom. These cases are being accelerated through prosecution before the UKIPO by virtue of the Office’s Green Channel and international applications have also been filed in order to extend protection globally.
Abundia Financial (Abundia) is an asset investment company with a focus on circular solutions and sustainability, including sustainable fuels, power, chemical technologies, and traditional commodity endeavours. As part of its green technology projects, Abundia has helped to develop a process that enables the conversion of biomass to important hydrocarbons such as jet fuel, diesel, LPG, naptha and gasoline. Unlike many of the current technologies available, Abundia’s niche process does not rely upon crop biomass such as corn or sugar cane and thus does not adversely affect food availability.
Mathys & Squire supports Abunida in relation to its IP strategy, in filing a number of new patent applications to protect the core technology, and in due diligence advice to ensure that this exciting technology makes it to the commercial marketplace.
Mathys & Squire is proud to work with numerous clean-tech clients on their green technology and sustainable solutions. Inventors and innovative businesses such as those highlighted above are working to tackle the impact of climate change and we are excited to see their future developments and to work alongside them in supporting many of the goals outlined by COP26.
In recent European Patent Office (EPO) Decision T 116/18, the Board of Appeal has referred important questions to the Enlarged Board of Appeal (EBA) regarding the issue of to what extent an invention must be plausible from the application as filed. A decision on this issue by the EBA would have important ramifications for how much experimental data is required to be included in a patent application, especially in the chemical and pharmaceutical sectors.
The issue of whether a technical effect is plausible from the original disclosure of a patent application is a controversial one in European patent law and is subject to much debate. There is no statutory requirement for plausibility in the European Patent Convention (EPC), but the criterion has been found necessary for patentability in many Board of Appeal decisions. According to established EPO case law, where a technical effect is recited in a claim (for example in medical use claims), its plausibility from the application as filed is a requirement for whether an invention is sufficiently disclosed (Article 83 EPC). On the other hand, where a claim does not recite a technical effect (such as a claim to a chemical composition per se), but the achievement of a technical effect is relied upon for inventive step, the plausibility of the technical effect from the application as filed has been found in certain decisions to be an important requirement for inventive step (Article 56 EPC). The case from which the present referral originates deals with the issue of plausibility under inventive step and the use of post-filed evidence to demonstrate the existence of a technical effect.
In many cases, a claimed invention (such as a pharmaceutical or chemical composition) is only inventive because it achieves some unexpected technical effect that it would not be obvious from the prior art would be associated with the claimed composition. In such cases, data to demonstrate the technical effect is often included in the application as filed. However, in others, data is not included in the application as filed, and the application merely contains an assertion that said technical effect is achievable. In other cases, the application as filed does not even contain a reference to the achievement of the effect. In the latter two scenarios, post-filed evidence is often filed during prosecution of a patent application or during opposition proceedings to demonstrate the existence of the technical effect. Post-filed evidence is very often filed where the problem underlying the invention must be reformulated in view of prior art that the patentee was not aware of when the application was filed. For example, data is often provided to demonstrate an unexpected improvement over said prior art.
The case from which the present referral originates concerned claims relating to an insecticide composition comprising a combination of known insecticidal compounds and an alleged synergistic effect associated therewith. The application as filed contained evidence of a synergistic effect against the insect pest species – S. litura and P. xylostella – at certain concentrations. During opposition proceedings, the opponent was able to demonstrate with data and argumentation that a synergistic effect against these above species was not credibly achieved across the scope of the claims for these species. However, using post-filed evidence, the patentee was able to demonstrate a synergistic effect against a different pest species, C. suppressalis. The problem underlying the invention could thus be reformulated as the provision of synergistic insecticidal activity against the species C. suppressalis. The opponent objected that whilst the post-filed data showed that this problem had been solved, it was not plausible from the application as filed that the claimed compositions solved such a problem due to the absence of data showing activity against C. suppressalis, and that as a result, the patentee’s post-filed data should not be taken into account when reformulating the problem underlying the invention. Without the patentee’s post-filed data, there was no evidence supporting a synergistic activity against C. suppressalis and the question of whether the patentee’s post-filed data could be taken into account would thus determine whether or not the claimed compositions were inventive.
The Board of Appeal decided to refer questions on plausibility to the EBA, as, in their view, there were three diverging lines of case law regarding to what extent post-filed data can be relied upon by patentees to demonstrate the existence of a technical effect. The Board considered the three lines of case law to be:
1) Ab initio plausibility cases;
2) Ab initio implausibility cases; and
3) No plausibility cases.
The Board considered a referral necessary to ensure uniform application of the law and because points of law of fundamental importance had arisen.
In the ‘ab initio plausibility’ line of case law, the Board identified a principle that the plausibility of a technical effect must be established in the originally filed application by direct evidence of the technical effect such as experimental data or scientific reasoning; only then could post-filed data be considered. In the ‘ab initio implausibility’ line of case law, post-published evidence could only be disregarded if the skilled person would have legitimate reasons to doubt that the purported technical effect had been achieved at the filing date. For example, if common general knowledge at the filing date indicated to the skilled person that the technical effect was not achievable. In the ‘no plausibility’ line of case law, the concept of using plausibility as a way to determine the admissibility of post-filed data was rejected altogether and found incompatible with the EPO’s problem and solution approach for assessing inventive step.
The Board of Appeal thus referred the following three questions to the EBA.
Answers to these questions from the EBA may have important ramifications for the validity of patents and affect best practice regarding drafting and prosecuting patent applications at the EPO. For example, if the EBA answers ‘Yes’ to questions 1 and 2 but ‘No’ to question 3 (approving an ‘ab initio plausibility’ standard), this would mean that applicants only receive patents for subject-matter for which data or other substantiation is contained in the application as filed that makes plausible the technical effect relied upon for inventive step. This might have the greatest impact on practice in fields such as pharmaceuticals where, quite often, patent applications directed to broad novel classes of compounds are filed with limited data demonstrating the effect of said compounds. On the other hand, if the EBA approves a ‘no plausibility’ requirement, this could open the door to considerably more ‘speculative patenting’ where applicants are granted patents for merely theorising that an invention is possible.
In the referral decision, the Board expressed concern that the ‘ab initio plausibility’ standard would place a very high burden on applicants where a reformulation of the problem underlying the invention was required in view of prior art unknown at the filing date, since post-filed data would not be able to be provided in support of any technical effect that was not plausible from the originally filed application. This risks undermining decades of case law allowing the reformulation of the technical problem and relying on post-published evidence to show that the newly formulated problem is solved.
Interestingly, the Board questioned whether the ab initio plausibility and implausibility standards were compatible with the principle of free evaluation of evidence, and what the legal basis was for preventing a patentee from relying on fact evidence relevant to inventive step, and from preventing a Board from taking into account evidence that it finds decisive. The Board also raised the issue of whether Article 56 EPC indeed provides legal basis for plausibility, commenting that Article 56 EPC simply states that an invention must be not obvious in view of the prior art, whereas the rationale for plausibility is whether or not the invention had indeed been made at the filing date (a separate criterion). The Board also made references to other commentators who had made similar observations.
There is some chance that this EBA referral will not be admitted on the basis that the points of law are not of fundamental importance and that the three lines of case law discussed above are not truly divergent. However, in the event that the referral questions are admitted, the EBA’s answers to these questions have the potential to significantly change practice at the EPO and best practice for drafting strong patent applications to be prosecuted in Europe.
The Royal Society of Chemistry (RSC) has opted to hold its annual Chemistry Week this year on 1-12 November 2021, to coincide with the 26th UN Climate Change Conference of the Parties (COP26). To reflect and celebrate themes that span both COP26 and the RSC’s Chemistry, Sustainability and Circular Economy (CSCE) campaign, the society has chosen ‘sustainability’ as the focus of Chemistry Week 2021. With this in mind, we are marking the event with an article celebrating how chemists are driving forward sustainability in the automotive sector.
As announced by the government in November 2020, the UK will phase out the sale of new petrol and diesel-powered cars by 2030, with many other countries following similar roadmaps. Such efforts will put huge pressure on the electric vehicle (EV) market to provide alternative vehicles that are convenient, reliable and cost-effective. The engines leading these efforts are the chemists, harnessing all the expertise of their field to revolutionise the automotive industry.
As the world faces the climate change crisis, its historic reliance on fossil fuels in powering the approximately 1.4 billion vehicles in use globally (as of 2021) is becoming increasingly unsustainable. Alternate means of fuelling our vehicles must be found, and, having gained considerable momentum over the past few years, EVs are at the forefront of these efforts.
The classification of EVs encompasses a broad field, including vehicles powered by fuel cells, solar cells and batteries, but they are all united by the fundamental importance of chemistry in governing their efficacy. The most popular type of electric vehicle relies on its onboard battery to store chemical energy that can be transformed into electrical power. This battery is a crucial element in the operation of such EVs, and extensive research is being conducted globally to find compounds – and their combinations – with the most advantageous chemical properties that can bring about the next revolution in battery technology. According to a joint European Patent Office (EPO) and International Energy Agency (IEA) study, patenting activity of battery technologies grew at an average annual rate of 14% between 2005 and 2018. Currently, the most abundant type of battery is the one that helped kick-start fully electric vehicles: the lithium-ion (Li-ion) battery.
The first patent for a Li-ion battery in its modern form was filed in 1983, by Professor Akira Yoshino while working for the company Asahi Kasei. This helped them to control 17% of the global market share for Li-ion battery separators until 2016. Sony, alongside Asahi Kasei, later went on to commercialise the first Li-ion battery product in 1991, protected by the security afforded by their patents. By 2015, they had shipped over five billion cells and pioneered a revolution in modern battery technology.
While the Li-ion battery was a huge step forward in battery technology – providing much higher charge density and effective rechargeability – within the context of EVs, there are still many limitations to overcome, with capacity being a prominent example. The average range of a fully charged EV (across the spectrum of manufacturers) is around 300km, with many being significantly lower. However, an understanding of the chemical properties that give rise to this limitation – namely the storage density of lithium atoms within the electrode materials – has allowed researchers to develop promising alternatives.
One such example is a prototype lithium-sulfur battery with the potential to more than double the specific energy (energy per unit mass) of Li-ion batteries. This innovation is based on replacing the cobalt-based cathode material with one comprised of S8 sulfur. As Li-ions and electrons converge at this cathode during discharge, a series of sequential reactions eventually reduce the octatomic S8 to eight individual sulfur atoms each bonded to two lithium atoms. In this way, each sulfur atom within the cathode can accommodate two Li-ions, in comparison with the roughly 0.6 Li per host atoms that conventional Li-ion batteries achieve. However, many other alternative solutions are being explored, such as the use of nickel, phosphates, and manganese, hinting that there is still space for innovation in this field.
The speed at which an EV can be charged is also a crucial limitation, with serious consequences for public adoption of fully electric vehicles if not suitably resolved; who wants to spend seven+ hours recharging their car when they forgot to charge it overnight, or take half an hour for a ‘quick’ top up just to get them home? While there are certainly vast infrastructure improvements to be made to alleviate some of this concern, chemistry still has plenty to offer on this front too. This research is primarily focused on the anode and electrolyte, as these are where the rate-limiting steps in the charging process occur. Regarding the anode, the theoretically superior properties of silicon (such as its 10-fold higher specific capacity) have made it a widely studied material. For example, it is the basis of an upcoming EV battery that claims to achieve five-minute charging times.
The chemistry of electrolytes is also making significant contributions towards resolving these issues. While conventional Li-ion batteries make use of liquid electrolytes, consisting of lithium salts in various organic solvents, many are turning their attention to the benefits solid-state electrolytes could provide (such as greater energy density and improved safety). Examples such as certain lithium metal oxides exist as a crystalline lattice that can possess extremely high ionic conductivity, permitting the rapid movement of lithium ions between the electrodes. Efforts being made towards the successful development of these solid-state batteries can be demonstrated by the fact that automotive manufacturer Toyota reportedly holds over 1,000 patents in the field. Nonetheless, there undoubtedly remains a wealth of opportunity across the entire field of battery development for the discovery of the next transformative breakthrough.
New technologies, even those as groundbreaking as the Li-ion battery, can take upwards of 20 years to successfully commercialise, so ensuring that you are able to exploit your invention to fully reap the rewards of your work and investment is important. Patents are an invaluable tool in protecting your intellectual property, giving you control over how your ideas are used.
With Halloween only two days away, we are bringing you some of the scariest scenarios our patent and trade mark attorneys face! Here, we are ‘creeping’ it real and sharing our first-hand intellectual property (IP) horror stories.
A classic nightmare in the world of trade marks is investing time and money in a brand, only to discover you cannot use it. It is not uncommon for businesses to adopt a trade mark without first conducting appropriate due diligence to establish if said trade mark is free from third party encumbrances. Should they commence the use of the brand and invest resources establishing it, business owners run a significant risk of developing a brand that they don’t truly own. It is often the case that as your hard work starts paying off, aggrieved third parties take notice and begin issuing Cease & Desist Letters. For the most unfortunate, the only way out is to surrender the brand and start from scratch under a different name!
Some brand owners will opt to run their own searches on the Trade Marks Registers, however, to think this will all run smoothly is often ‘witchful’ thinking. Infringement of IP rights goes beyond identical names, products, or trade marks. Earlier owners may enforce a range of rights, from similar trade marks protecting identical/similar goods and services, to trade marks with reputation and even non-registered trade marks. Problems may therefore ‘creep’ up on business owners from multiple directions, and so the only way to identify potential obstacles and assess the risk, is to run a full clearance search.
Another mistake that could haunt you is omitting to carefully consider future plans outside the UK when adopting a new brand. There are many aspects to take into consideration, especially if there are plans to use the brand in several territories. In order to ensure brand consistency across different markets, the searches discussed above would have to cover all jurisdictions. Trade mark protection is territorial and whilst it may appear free to use in the UK, this may not be the case in other countries.
Yet another factor to consider when expanding internationally is the local language and culture. Brands may be refused protection if their meaning has derogatory connotations, and such situations may not be obvious without translation and feedback from local professionals. Entering a market under a brand with negative undertones can easily escalate into a horror story, not only from an IP perspective, but also when it comes to your business’ PR.
Trick or treat is never fun when playing with your brand – beware of trade mark squatters. There are not many things scarier than attempting to use or protect your mark in a new market, only to find that third parties have already registered it, hoping to seek financial gain. Emma Raducanu’s success and novelty attracted attention not only from all tennis fans, but also trade mark squatters, who filed to register her name as a trade mark.
The process of recovering a brand name from squatters can be very expensive and time-consuming, therefore, it is advisable to file for protection sooner rather than later, including in ‘terror-tories’ that may become of interest in the future.
Ghosts, goblins and zombies might be scary, but those pale into insignificance for attorneys who face a conversation with a potential patent applicant who proceeds to tell a chilling tale about how their new invention has already been made public on social media or in a published paper, prior to them filing an official application! Under UK and European law, publicly disclosing an invention (in a manner that enables the notional ‘skilled person’ to recreate it) before submitting the patent application, usually means the chances of obtaining protection are minimal. IP rights can only be granted for inventions that are novel, and therefore, any previous disclosures have a detrimental effect on the possibility of receiving IP protection.
Although the news that no patent protection can be obtained is disappointing, some relief can be found in the registered design system, which – unlike patents – protects the appearance of products, rather than the way they work. Despite the same ‘novelty’ requirement also applying to design applications, the UK and EU (and several other jurisdictions) offer a 12 month ‘grace period’. Any previous product disclosures that took place within 12 months of filing date are not considered when assessing novelty. Discouraged applicants seeking IP protection for an already disclosed product should explore the creative utilisation of the registered design system – an alternative but commercially useful protection that can still be obtained, even for products which are not purely focused on aesthetics.
So what do all these horror stories have in common (other than bad puns)? They could have been easily avoided! The golden rule in IP is: the sooner, the better – so don’t wait! If you are working on an invention or building a brand, make sure you carry out your due diligence and help your future self by contacting a ‘fangtastic’ attorney to help protect your business.
Chancellor Rishi Sunak has delivered the Autumn budget 2021 statement, with a target of building a stronger post-pandemic economy for the UK. Of particular interest to us is the government’s focus on science and technology through research & development (R&D) and its recognition of innovation in supporting sustainability to combat climate change:
Reinforcing the sentiment set out in the Queen’s Speech in December 2019, Sunak commented that a boost in R&D investment will help to “secure the UK’s future as a global science superpower”. A 33% increase (£5bn) to the current research budget of £15bn a year has been announced, and with the majority of this funding planned to come into effect in 2023, this highlights the government’s emphasis on the importance of innovative science and technology businesses in recovering the UK’s economy. £2bn of this £5bn increase has been allocated to the UK’s membership of ‘Horizon Europe’, an EU collaborative research programme which brings together researchers from industry and academic research institutions.
An increased investment in UK R&D to £20bn per year by 2024, as well as a reform of R&D tax relief to support modern research methods on domestic activities, were also announced, but this £20bn sum falls short of the previously proposed (in March 2020) commitment of £22bn per year – a target that has now been pushed to 2026. In addition to supporting UK businesses carrying out research within the UK, a new ‘Scaleup visa’ has been introduced in an attempt to attract highly skilled people from abroad to growing UK businesses. With this new visa scheme, the chancellor announced the launch of a ‘Global Talent Network’ to attract “the best global talent in key science and tech sectors”.
Overall, the total investment in R&D investment will increase from 0.7% of GDP (in 2018) to 1.1% of GDP in 2024, which puts the UK ahead of Germany, France and the US; which once again confirms this government’s emphasis on the importance of adequately supporting science and innovation through funding.
Private R&D investment has also been prioritised, with an increase to £1bn per year by 2024 for core Innovate UK programmes (£300m more per year than in 2021). Sunak has further confirmed the new £800m government funding for the Advanced Research and Invention Agency (ARIA), as proposed in the March 2020 budget.
The subject of sustainability and the UK’s impact on climate change remains prominent in this year’s budget announcement, which comes just days before the start of the COP26 summit. The chancellor has confirmed that more than £11.4bn will be invested into a new fund for the government’s net zero strategy in support of “new green industries of the future”, bringing the total invested in the UK’s ‘green industrial revolution’ to £30bn since March 2021. A further £6.6bn will be spent on international climate finance, and the UK Infrastructure Bank (UKIB) will invest £107m in offshore wind in an effort to meet its target of all electricity coming from renewable sources by 2035. A £1.4bn package – the Global Britain Investment Fund – has been designed to encourage investment in the UK’s innovative green and renewable tech sectors, with over £800m of this reserved for the production of electric vehicles.
Alongside these promising steps to reaching a greener economy, Sunak also announced changes to air passenger duty and slashed taxes on domestic flights. The Office for Budget Responsibility predicts a 3.5% increase in passenger journeys a year as a direct consequence of this latest initiative; which has sparked concerns regarding our carbon footprint, especially in the run up to the COP26 summit.
In an effort to encourage smaller businesses struggling to prioritise sustainability, the chancellor announced an investment relief to encourage businesses to adopt green technology, e.g. solar panels and wind energy. Sustainability and a green economy are only achievable if change is implemented at every level of society – starting with legislation and governmental funding, through to individual households; the Autumn Budget is a step in that direction.
Through the Autumn budget, the government is highlighting its trust in innovation and R&D as building blocks to becoming a ‘global science superpower’ and rebuilding the UK economy. We look forward to seeing the outcome of such investment and how this will impact the science and technology space.
