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.
The European Patent Office (EPO) has a notoriously strict approach to assessing added matter according to Article 123(2) EPC. In the recent decision T 2842/18, the EPO’s Technical Board of Appeal 3.3.04 scrutinised the basis for a therapeutic effect in a second medical use claim. The decision demonstrates that speculative language can undermine a verbatim statement of a therapeutic effect in the application as filed.
According to Article 123(2) EPC, a European patent application or European patent may not be amended in such a way that it contains subject matter which extends beyond the content of the application as filed. Established case law sets out the ‘gold standard’ for assessing added subject matter according to Article 123(2) EPC: the claimed subject matter must be directly and unambiguously derivable from the application as filed. After the amendment, the skilled person may not be presented with new technical information.
In T 2842/18, the claim in question had been amended to include the medical use “for preventing or slowing down the progression in structural joint damage and erosion caused by rheumatoid arthritis”. The question was whether this effect could be directly and unambiguously derived from the application as filed.
The Opposition Division had previously held that the requirements of Article 123(2) EPC were met because the therapeutic effect was disclosed verbatim in Example 3 of the application as filed: “It is expected that re-treatment under the protocol herein […] will be effective in preventing or slowing down the progression in structural joint damage and erosion caused by RA”.
However, the Board took a more stringent approach, and considered whether the skilled person could directly and unambiguously determine that the effect of “preventing or slowing down the progression in structural joint damage and erosion” would be achieved when carrying out the claimed treatment. In view of the speculative language “it is expected”, the Board held that the skilled person would only derive from the statement that the “effect might or might not be achieved. The skilled person would not conclude that the effect was definitely achieved” (see point 48 of the Reasons).
The Board went on to consider the teaching conveyed by Example 3 as a whole. It was deemed that Example 3 contained further uncertainties as to whether the claimed therapeutic effect was achievable, which only confirmed that the above statement was merely expressing a speculation. The uncertainties pointed to by the Board (in points 48-49 of the Reasons) included Example 3 being a protocol for a proposed clinical study that had yet to be carried out, and the objective of the study being to “evaluate the efficacy” to “potentially prevent disease progression“.
On this basis, the Board concluded that the effect could not be derived from the application as filed, and so the claim extended beyond the content of the application as filed.
It is important to the note that the Board emphasised that this was not a question of enablement, noting that the “criteria for the assessment of direct and unambiguous disclosure of a claimed therapeutic effect are independent of, for example, the presence of data or the assessment of plausibility of the claimed effect”. Instead, the question was whether the effect could be derived from the application as filed in view of the phrase “it is expected” (see points 54-57 of the Reasons).
A significant parallel can be drawn with the case law, noted in our recent article, on the novelty of medical use claims over prior art indicating that a clinical trial for a candidate treatment is underway but results are not yet reported. Such disclosures are deemed not to anticipate a medical use claim directed to the candidate treatment because the skilled person is not able to discern from the prior art whether the therapeutic effect can actually be achieved. For example, in T 715/03, the Board stated:
“The fact that phase II studies are running also means that phase I studies are concluded. However, from this information the skilled person can only conclude that the results on safety and tolerability in humans, as well as the pharmacokinetics studies, were positive. However, there is no information about a possible beneficial effect on TS patients.”
More recently, T 1859/08 confirmed that “a mere statement that a […] therapy is being explored does not amount to a novelty-destroying disclosure” of a medical use claim.
Thus, even when a candidate treatment is deemed to be so promising that it is revealed to be undergoing clinical evaluation, that per se does not disclose the medical use of the relevant substance in treating the relevant patients. Vital information is missing – i.e. whether or not the treatment is actually effective.
Indeed, in T 1437/07, the Board explained that the teaching in the prior art “was considered as speculative or hypothetical because it was not clearly and unambiguously derivable” that a particular therapeutic effect had been achieved. Again, this was not a question of enablement, but rather a question of information content. In the absence of a concrete statement of “treatment”, the prior art could not be interpreted as disclosing the claimed subject matter.
Significantly, however, the Board held in T 1437/07 that a hypothetical embodiment could provide basis for an amendment. It was not relevant to Article 123(2) EPC whether the disclosure had in fact been carried out it, but rather whether it was possible to derive, directly and unambiguously, the effect from the written disclosure as a whole.
Therefore, the Board’s judgment in T 2842/18 aligns the standards of disclosure for added matter and novelty of medical use claims.
In summary, T 2842/18 highlights that hypothetical or conditional language, reflecting a more cautious approach commonly used in scientific literature, can risk reducing a disclosure of a therapeutic effect to a mere suggestion. If such language is present in the examples, it appears necessary to include more concrete statements in the description or claims on filing to ensure adequate basis for the therapeutic effect is provided.
The Royal Swedish Academy of Sciences awarded the 2021 Nobel Prize in the field of Chemistry to both Benjamin List of the Max-Planck Institute and David W.C. MacMillan of Princeton University, who independently developed asymmetric organic catalysts (organocatalysis) in 2000.
Prior to this discovery, it was believed that just two types of catalysts were available: namely metal complexes and enzymes. Organic catalysts provide a precise, more cost-effective, and environmentally friendly alternative and are formed from a stable framework of carbon atoms, to which one or more active chemical groups, typically comprising oxygen, nitrogen, sulphur, or phosphorus, can be attached.
List and MacMillan both followed different pathways in the discovery of this new field of chemistry.
After completing his postgraduate doctorate, David MacMillan set his sights on finding a simple, cost-effective, and more stable alternative to the moisture- and air-sensitive transition metal catalysts he had previously used in his research. As discussed in J. Am. Chem. Soc. 200, 122, 4243-4244, MacMillan’s research focused on the use of iminium ions from α,β-unsaturated aldehydes and amines to mimic the equilibrium dynamics and π-orbital electronics inherent in Lewis acid catalysts. To support this hypothesis, MacMillan demonstrated the use of chiral amines as enantioselective catalysts in Diels-Alder reactions between α,β-unsaturated aldehydes and various dienes.
In contrast, Benjamin List worked with X-ray diffraction scientists during this postdoctoral research, to determine how aldolase antibodies function. It was discovered that an amino group and an acid group were essential to the reactivity of the enzyme. As part of his research, List looked into the possibility of a simplified catalyst based on the identified essential functional groups rather than the use of a large and complex enzyme structure. The Hajos–Parrish–Eder–Sauer–Wiechert reaction (discovered in the 1970s), which uses the amino acid proline as a catalyst for asymmetric adol reactions, formed the basis of his research. Benjamin List’s paper, J. Am. Chem. Soc. 2000, 122,2395-2395, successfully demonstrates the use of proline as an effective asymmetric catalyst for a direct adol reaction between unmodified acetone and a variety of different aldehydes.
The discoveries by List and MacMillan offer an alternative method of producing organic compounds which does not rely on the traditional transition metal catalysts and enzymes.
Of this research, Johan Åqvist, chair of the Nobel Committee for Chemistry, explained: “This concept for catalysis is as simple as it is ingenious, and the fact is that many people have wondered why we didn’t think of it earlier.”
The discovery seems to be of particular importance to the field of pharmaceuticals. Many pharmaceutical compounds are produced as enantiomers – i.e. compounds formed having structures that are mirror images of one another. The individual enantiomeric structures can produce very different, and sometimes harmful, pharmacological effects within the body, and so only one of these mirror image structures is generally required for a specific drug. The organic catalysts developed by List and MacMillan can selectively produce one desired structure of a drug molecule.
Since the publication of this significant research, organic catalysts have already shown promising effects in methods of drug discovery and fine chemicals production.
Mathys & Squire has featured in an exclusive article published by The Telegraph, covering the introduction of so-called ‘security bonds’ of at least £50,000 for UK businesses seeking to litigate in the EU post-Brexit.
Partner Andreas Wietzke, from the Mathys & Squire Munich office, commented: “For British businesses, defending your intellectual property (IP) in the EU has become a much more costly affair since Brexit. This could have a chilling effect on actions by UK litigants in Europe, particularly for startups and SMEs with limited funding.
“For those in the UK with valuable patents or trade marks that are being infringed by businesses in Europe, the decision whether to pursue litigation is not quite so simple as it was before Brexit. Having to put up £50,000 or £100,000 to have your case heard in Germany, France or the Netherlands will give some of them pause for thought.”
Despite these expensive ‘bonds’, with the help of a patent attorney – e.g. through creating inter-EU IP entities, moving IP, or setting up internal licence agreements – businesses still have options when it comes to protecting their intangible assets through litigation.
For more information regarding IP litigation, wherever you are based, get in touch with a member of our team.
A version of this article has also been published by City A.M. – click here to read in full.
The United Nations’ 26th Framework Convention on Climate Change (UNFCCC) Conference of the Parties (COP26) will run from 31 October – 12 November 2021 in Glasgow. The Conference brings together politicians, activists, citizens and business representatives from over 190 countries to discuss tackling climate change through net zero carbon emissions targets review, clean energy initiatives to protect habitats, and raising $100 billion per year.
This year’s conference is particularly significant, given it is the first one since the pandemic and since the UK left the EU; and, most importantly, the first one of these conferences to review the net zero promise under the Paris Agreement. In Paris in 2015, all members of the COP21 have signed the Paris Agreement, pledging to limit global warming to 1.5 degrees celsius. All signatories agreed to come back with updated nationally determined contributions (NDCs) every five years, meaning this year’s 12-day summit will provide important updates on individual countries’ progress.
Aside from reviewing the Paris Agreement’s progress, COP26’s agenda anticipates discussions revolving the following four goals:
All representatives are asked to come forward with their 2030 emission reduction targets that put them on track to reaching net zero by 2050. All eyes will be on developed countries and the largest emitters, as their NDCs are likely to have the biggest impact on the success of the overall goal.
Those experiencing the direct effects of climate change and global warming are also those that have done the least to cause it. The international community must work together to deliver change involving building resilient infrastructure, warning systems, and restoring biodiversity – all targets that COP26 will aim to produce measurable goals and action plans to address.
Developed countries must raise at least $100 billion every year in climate finance to support developing countries. The UK is increasing its International Climate Finance commitment to £11.6 billion between 2021 and 2025, and intends to motivate as many other countries as possible to follow suit.
Working together is the only way to reach all of the above three targets and to move closer to a net zero economy. A focus for the negotiations during COP26 is finalising the rules needed to implement the Paris Agreement, called the ‘Paris Rulebook’.
With all member states attempting to decarbonise their economies, COP26 will shape policies and trade-offs that will have a direct effect on future for decades. The UK has already passed laws to end its global warming contribution by 2050 and to stop sales of new petrol and diesel cars from 2030 onwards. The results and outcomes of the summit will directly influence regulations put in place, to which businesses and individuals need to comply to. The conference has the power to shape trends in the upcoming years in terms of technology development, household items production, and consumption patterns. We expect new industries to form as the green economy continues to expand and is increasingly introduced in developing countries.
COP26 also poses a massive opportunity in that it is set to encourage member states to raise $100 billion every year to invest in ‘green projects’ to accomplish all goals by 2050. Capital will flow towards greener initiatives, putting polluting business models at risk, as investors anticipate a much higher return on investment in green companies. In recent years there has been an increase in financial help for innovators who are working on environmentally-friendly solutions, such as the Young Inventors Prize and the Earthshot Prize.
On top of this, the growing awareness of the climate crisis has shifted customer consumption patterns, with consumers willing to pay premium for a more sustainable alternative. It is therefore expected that the green economy will grow exponentially, and entrepreneurs will put the environment at the forefront of their decision making. These opportunities are likely to drive innovation and create new business models going forward.
It is evident that the future is green: there are not only more sustainable and carbon neutral products on the market, but also increasingly more solutions that proactively tackle climate change. Such new inventions and innovative concepts need to be protected and the best way to do so is in obtaining intellectual property rights.
Mathys & Squire works with numerous clean-tech clients on their green technology developments and sustainable solutions. We are proud to represent inventors and businesses who are working to combat climate change, and whose actions support the goals outlined by COP26.
We wait with anticipation to see how the outcome of the upcoming COP26 will shape decades of clean technologies and green solutions.
Mathys & Squire is pleased to congratulate its client, Enapter, on winning the ‘Fix Our Climate’ category at The Earthshot Prize ceremony in London on Sunday 17 October 2021.
The initiative was launched in 2020 by Prince William, Duke of Cambridge, and Sir David Attenborough, with an aim of rewarding organisations dedicated to climate action through project funding, covering five ‘earthshot’ goals for the planet: ‘Protect and Restore Nature’, ‘Clean Our Air’, ‘Revive Our Oceans’, ‘Build a Waste-Free World’ and ‘Fix Our Climate’.
Enapter has developed leading AEM Electrolyser technology to turn renewable electricity into emission-free hydrogen gas that can fuel cars, planes and heat homes. The £1 million prize will enable them 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 global presence in Italy, Germany, Thailand and Russia, has also recently broken ground on the construction of its new mass production site in Saerbeck, Germany.
Mathys & Squire and Mathys & Squire Consulting have worked very closely with Enapter for a number of years, supporting them in the growth and valuation of their intellectual property portfolio, as they expand and revolutionise the world of renewable energy. We are extremely pleased to hear the news and wish the Enapter team continued success!
The UK government released its National Artificial Intelligence (AI) Strategy on 22 September 2021, following guidance from the AI Council’s 2021 AI Roadmap and other related plans – the Innovation Strategy and National Data Strategy. Among other topics, the National AI Strategy (the strategy) will involve a consultation on AI and intellectual property (IP) with the UK Intellectual Property Office (UKIPO).
Since the AI Roadmap was published in March 2021, the UK government has been encouraged by the AI Council to produce an official strategy. Six months on, the strategy outlines how the UK aims to boost AI capabilities over the next 10 years, with the culminating goal to ‘make Britain a global AI superpower’.
The plan is broken down into three main ‘pillars’:
(i) investing in long-term needs of the AI ecosystem;
(ii) supporting the transition to an AI-enabled economy, while making sure all sectors can benefit from it; and
(iii) ensuring the UK gets the governance of AI technologies right.
Each of these pillars has associated short-, medium- and long-term key actions, along with a promise of a more detailed and measurable plan being released later this year.
One of the short-term plans is to complete a consultation on copyright and patents for AI in collaboration with the UKIPO. The strategy acknowledges that IP plays a significant role in building a successful business by rewarding people for inventiveness, creativity and enabling innovation. IP is noted for supporting business growth by incentivising investment, safe-guarding assets and enabling the sharing of know-how. The strategy further recognises that AI researchers and developers need the right support to commercialise their IP and help them to understand and identify their intellectual assets, providing them with the skills to protect, exploit and enforce their rights to improve their chances of survival and growth.
The strategy also recognises that for the UK to become a ‘science superpower’ and ‘the best place for researchers to innovate’, it needs an IP framework that gives British entrepreneurs, innovators and businesses a competitive edge. Among other things, the strategy promises to evaluate patentability of AI inventions, and to conduct an economic study to enhance understanding of the role the IP framework plays in incentivising AI investment.
The remaining short-term goals focus on supporting the Department of Education in developing AI skills and publishing subsequent AI strategies – the Defence AI Strategy and National Strategy for AI-Driven Technologies in Health and Social Care. Overall, the first three months are focused on data gathering and setting out the foundations for the framework to be implemented.
After the initial three months, the medium-term stage will involve the government looking to analyse all collected data and begin acting on it. The agenda includes a roll-out of new visa regimes to attract the world’s best AI talent and investing in AI programmes for schools, as well as encouraging a wider range of people to enter AI-related jobs. All these measures will ensure the UK has enough qualified workers now, and in the future, to sustain the UK’s new AI-driven economy. In addition, the government plans to publish a white paper on a pro-innovation position on regulating AI, in an effort to govern AI correctly. The strategy realises that AI is not currently unregulated, but it also recognises there are areas for improvement.
The long-term strategy will involve launching a new National AI Research and Innovation Programme to align funding initiatives: updating guidance on AI ethics and safety, as well as considering which machine-readable government datasets can be published for AI models. The government also intends to take on larger challenges, such as encouraging diversity in AI and including trade deal provisions in AI.
A more detailed and measurable plan for the execution of the initial stages of the strategy is expected towards the end of the year.
We will follow with interest the government’s progress in tackling the outlined action plans as part of its strategy to make the UK an AI superpower, and are pleased to see that IP has been identified as an important tool in achieving this goal.
In this article for The Patent Lawyer, Mathys & Squire partner Dani Kramer and associate Dylan Morgan review the response of patent offices to blockchain filings with a particular focus on the United Kingdom Intellectual Property Office (UKIPO), the European Patent Office (EPO), and the United States Patent and Trademark Office (USPTO).
In the last decade or so, blockchain has become an area of increasing interest both commercially and from a patenting perspective. While blockchain has not yet become a part of daily life for most people, the technology can be applied to many fields and offers the potential to improve various existing technologies. Unsurprisingly, many companies are keen to protect their blockchain developments via patents.
Throughout this article, comparisons between patent offices will be drawn in particular by comparing the treatment of exemplary patent families in the various offices. In general, most of these jurisdictions seem to be amenable to blockchain filings. The exception to this is the UKIPO, which has granted relatively few blockchain patents and has objected to many applications on the basis of unallowable subject matter. Thus, at least for the time being, applicants seeking protection for blockchain inventions in the UK might be best served by pursuing patent protection via the EPO.
The majority of patent offices have yet to rule on the patentability of blockchain in any seminal cases, and present guidance from patent offices is typically that blockchain inventions should be treated the same as other computer-implemented inventions.
For example, in a conference report titled ‘Talking about a new revolution: blockchain’ from 4 December 2018, the EPO set out its position that: “… blockchain inventions are essentially computer-implemented inventions (CII), so they are examined by the EPO according to established stable criteria, developed in accordance with CII case law.”. “Realising that blockchain inventions are in fact CII is a big relief,” said Lievens. “We are on known territory. We know how to do this. Applicants will have legal certainty and will get what they expect.”
Other patent offices have taken similar positions, that blockchain inventions should be treated much the same as any other computer-implemented inventions.
Of course, in practice different types of computer-implemented inventions can be treated rather differently by different patent offices. Below, we have compared the treatment of blockchain filings by certain offices to identify any discernible trends.
There have been hundreds of blockchain filings at the UKIPO, with most of these applications being filed within the last five years. Many of these applications have not yet received search or examination reports and so there is a limited pool of filings from which conclusions can be drawn.
However, enough applications have been examined to observe an apparent pattern of UK blockchain filings being rejected on the basis of unallowable subject matter.
An indicative application is GB2555496A, filed in 2017 by Trustonic. Corresponding applications have been filed in Europe (EP3312756B1) and the US (US20180114220A1) – and these applications will be commented upon later.
In a first examination report for the UK application, the Examiner stated:
“I note that the US equivalent to this application has been abandoned following significant amendment, and the EP equivalent granted again following significant amendment (note conflict warning below.) Given also the substantive excluded matter objection, which would not in my view be addressed by either the US or EP form of claims, I have not therefore at this stage completed an updating top up search on this application.”
While this application is still pending, it seems that overcoming these objections will be challenging. This examination report is also interesting because it succinctly expresses a number of conclusions that are borne out of our review of other UK filings. In particular:
This being said, certain companies have managed to secure patent protection for blockchain inventions at the UKIPO (e.g. via GB2549085B and GB2561107B).
Filings that manage to achieve grant in the UK are typically linked to a physical system or input; for example, the claims of GB2561107B require the obtaining of biometric data and the comparison of this biometric data to a biometric hash.
As will be apparent from the Examiner’s comments in the UK examination report cited above, the EPO is generally more amenable to blockchain inventions than the UKIPO.
Indeed, for EP3312756B1 (the EP filing in the above-mentioned Trustonic patent family) the Examiner’s objections were almost entirely related to novelty and inventive step, with the patentability per se of the subject matter attracting very little attention.
This trend is played out across European patent filings. Novelty and inventive step tend to be the determining factors, with patentable subject matter tending to be of subsidiary relevance. This is partially due to the way in which the EPO approaches inventive step – and as with all applications, non-technical aspects are of limited relevance during the determination of an inventive step – but, as a general rule, the EPO seems willing to consider blockchain technologies as being technical and to more readily grant blockchain patents.
Another application that illustrates this difference in approach between the EPO and the UKIPO is EP3577593B1, which was filed by PHM Associates in 2018 claiming priority to a GB application filed in 2017. On the face of it, this is a fairly innocuous European application. Following entry into Europe via a Patent Cooperation Treaty (PCT) application, the Examiner raised various novelty and inventive step objections. Once these were overcome, a patent was granted by the EPO.
Conversely, the corresponding UK application GB2566741A has thus far received a total of four examination reports from two different examiners, with each of these examination reports objecting to the claims as relating to unpatentable subject matter.
Turning then to an application that has fallen foul of EPO subject matter objections, EP3376456A4 is an application filed by Nippon Telegraph and Telephone Corp in 2016 that relates to the determination of whether a party is qualified to add blocks to a blockchain. This application has been refused by the EPO Examining Division and is currently under appeal.
Justifying the refusal, the Examining Division stated:
“The present application relates to decisions for granting the right to generate the next block in a blockchain as typically used in cryptocurrencies such as Bitcoin.”…
“This problem is addressed by a blockchain generation and verification method in which the decision for granting the right to generate the next block in a blockchain is based on the number of “transaction patterns”, i.e. the number of transactions with different transaction partners in which a party has participated (e.g. determined in the form of the sum of the number of unique identifiers of transaction partners in the transaction datasets). This is regarded as an index of trustworthiness of the generating party based on the assumption that a transaction is conducted with trust on the transaction partner built by revealing each other’s identities and knowing who the transaction partner is. …”
“The problems which are thus addressed do not appear to refer to a technical solution of a technical problem, but rather address business-related or behavioral considerations for the selection of a parameter in a consensus algorithm.”
This decision makes it clear that not all blockchain applications will be considered by EPO examiners to be technical in nature and hence allowable by the EPO. In particular, those applications that are interpreted to be business methods per se (and inventions relating to consensus mechanisms might be at increased risk of this) are likely to face difficulty at the EPO, unless – as with any computer-implemented or business method invention – it is possible to demonstrate a clear technical effect. As mentioned above, this application is currently under appeal, and the outcome of this appeal might well have implications for future blockchain applications.
In summary, the EPO has shown itself willing to grant blockchain patents – but applicants should be careful in particular to avoid straying towards business methods.
Turning to US practice, it is useful to consider again the patent families that have been mentioned previously – the Trustonic, PHM, and Nippon families.
The US application in the Trustonic family (US20180114220A1) received a first Office Action that raised numerous patentability objections. The claims were rejected under 35 USC § 101 as being “Certain Methods of Organizing Human Activity”.
Following a response from the applicant, and the issuance of a subsequent final Office Action, the application was abandoned.
Relevant extracts from that final Office Action include:
In contrast, the US application in the PHM family has received no subject matter objections under 35 USC § 101. Similarly, the US application in the Nippon family received no subject matter objections under 35 USC § 101 and has recently proceeded to grant.
While the Trustonic US application received subject matter objections, it is notable from the above extracts that these objections do not focus on the blockchain aspects. Furthermore, the case file contains an Examiner’s summary of an applicant interview that suggests the objections could have been overcome with further amendments.
More generally, it is notable from a review of US applications that the ‘abstract idea’ objections faced by blockchain inventions at the USPTO seem more likely to be surmounted than subject matter objections at the UKIPO or EPO. For example, US10291627B2 is a patent filed by ARM in 2016 and granted in 2019 and US10803022B2 is a patent filed by Uledger in 2018 and granted in 2020. Each of these filings faced initial subject matter objections that were overcome via amendment and argumentation.
Comparatively, blockchain filings seem to be viewed relatively favourably by the USPTO – and in many cases where subject matter objections have been raised, it has proved possible to overcome these objections.
In summary, most patent offices seem to be willing to grant blockchain patents – and although they have not been discussed here, the China National Intellectual Property Administration (CNIPA) and the Japanese Patent Office (JPO) also seem to be willing to grant such patents.
As with other computer-implemented inventions it is helpful to show a clear technical effect and to illustrate that any claimed method could not be performed by humans. And as with other computer-implemented inventions, applications that stray too far towards pure business methods are at particular risk of receiving subject matter objections.
The UKIPO is perhaps a notable outlier that views blockchain filings somewhat unfavourably. Therefore, where UK protection is desired it might well be beneficial to seek patent protection by filing an application at the EPO.
This article was published in The Patent Lawyer Magazine in October 2021.
Mathys & Squire is pleased to be ranked in the PATMA: Patent Attorneys and PATMA: Trade Mark Attorneys categories in the latest edition of The Legal 500 – the definitive guide to the legal market. In addition to our firm rankings, we are delighted that a record number of fee earners have been individually recommended in the 2022 guide.
Patent partners Jane Clark, Paul Cozens, Chris Hamer, Alan MacDougall, Martin MacLean, David Hobson, Juliet Redhouse, Andrew White, Philippa Griffin, Dani Kramer, Anna Gregson and Craig Titmus, plus partners Margaret Arnott, Gary Johnston and managing associate Harry Rowe from our trade mark practice, have all featured in this year’s guide. Praise for our attorneys includes:
‘Chris Hamer and his team have put in a very good effort to understand our business and work very well with our inventors, despite their some times difficult mindset. We go to meetings enjoying the discussions and leave the meetings with a very good energy for moving ahead. Problem-solving is a big part of their mindset, highly appreciated by us. Difficulties and issues are for solving with never-ending energy and inspiration.‘
‘Philippa Griffin is a pleasure to work with. She has an exceptional grasp of our company’s technology and is extremely responsive and comprehensive in her analysis and communication of IP strategy.‘
‘Craig Titmus has been incredibly helpful and collaborative, helping us efficiently and guiding us through many scenarios to identify key risks and rewards with each strategy. It has certainly helped us define and secure our IP as well as getting it through the many hurdles international process patents require.‘
‘Andrew White is an exceptional patent attorney. He knows exactly the perfect way to construct a patent application, to consider an examiner’s feedback and to work round it to get the patent grant with minimal deviation from the original scope. He’s the best I’ve worked with in over 15 years.‘
‘Juliet Redhouse is an excellent patent attorney. She is very knowledgeable about both the science and the law, always well prepared for meetings, and easy to work with. I recommend her highly as a superb patent attorney.‘
‘David Hobson is top rate.’
‘What we liked especially was having one point-person to manage our affairs, right from initial no-obligation chat, to engagement, all the way through to resolution of the trade mark issue we were facing. We were very impressed by Harry Rowe’s professionalism from the start. The whole process ran very smoothly and was painless and cost-effective, and we were very happy with the advice we received and the result achieved. We wouldn’t hesitate to recommend Harry Rowe personally and M&S in general in resolving a tech-related trade mark issue.’
The firm also received glowing testimonials for its patent and trade mark practices:
‘The people make the team as they say. This team is made with perfection, collaboration is smooth and with a high mind to understand our business. Their knowledge and experience is outstanding for patent drafting, prosecution and also oppositions.‘
‘I have always found Mathys & Squire to be the most approachable and reactive of all the patent attorneys I have worked with. There is never the feeling that you are ‘on the clock’ and they always go the extra mile.‘
‘Immediate response on urgent situations. Full knowledge on how to deal with minute details that would pose a risk to the trade mark.’
‘Very strong in TMs and design rights both in the UK and worldwide.‘
‘We were very happy with the client service received, the advice given to us, and the result achieved by the lawyers at M&S.’
‘Very robust in terms of their position in the market. High gravitas.‘
‘Always on hand to help and guides us through often complex issues in a professional way with plain English.’
For full details of our rankings in The Legal 500 2022 guide, please click here.
We would like to thank each of our clients and contacts who took the time to participate in the research.
Through years of education and hands-on experience with clients, our team of patent and trade mark attorneys have built expertise in all areas of intellectual property (IP) in the pharmaceutical sector. To celebrate World Pharmacists Day (25 September 2021), Mathys & Squire is assessing the impact and distinctiveness of IP in the pharmaceutical industry.
One way to protect intangible assets and IP is to obtain patents, which can be used to prevent infringements, as well as boost innovation and drive research and development (R&D). Patents bring reassurance to investors that an invention can be commercially successful, and that the company has exclusive monopoly in relation to a particular product. Specifically, in the pharmaceutical industry, an effective IP strategy provides businesses with confidence that, subject to marketing approval, they will be able to market the drug. This can drive further motivation and importantly, investment. The majority of pharmaceutical company’s value is wrapped up in its patent and trade mark portfolio, so a robust IP strategy is vital to its success.
Most patent applications are filed during the R&D stage, so obtaining a patent also gives pharmaceutical companies the space and time needed to develop medicinal solutions and enter clinical trials, without the risk of any associated disclosures preventing them from obtaining a patent. This enables businesses to invest in the long-term, complicated, and risky process of developing medicines, as they have legal measures in place that prevent third parties from using their invention for 20 years.
Another aspect that impacts IP in pharmaceutical companies is the lengthy drug development process and complex requirements to obtain marketing authorisation. With inventions being patented very early on in the R&D process, drugs often make it to the market with only a few years of patent life remaining. Once their drug(s) have made it to market, pharmaceutical companies must also adhere to The Association of the British Pharmaceutical Industry (ABPI) Code and disclose full details of the chemicals used in a particular drug, which makes the invention vulnerable to copying by competitors when the patent expires. This poses a problem as a patent’s remaining validity may not be long enough to bring a return on the investment, and as a direct response to this, legislators have introduced supplementary protection certificates (SPCs). This IP right has the power to extend a patent’s validity by a maximum of five years and is therefore very popular amongst pharmaceutical companies.
IP in pharmaceutical companies is also crucial when it comes to setting the price for a drug. A patent grants a temporary monopoly on an invention, meaning the inventor can charge higher than normal prices, as there is no competition in the market. However, once the patent loses its validity, competitor generics may enter the market, typically at much lower prices. Protecting intangible assets and IP has a direct impact on a business’ profitability, so having a team of experienced patent and trade mark attorneys offering advice is key to a company’s success.
Drafting a patent application can be challenging as it can require a lot of detail to convince Intellectual Property Offices that an invention is different from anything else already on the market – i.e. that it is inventive – and at the same time provide enough technical detail for somebody to ‘work’ the invention. Initially, a patent application may be filed with some details omitted, but it is normally advisable to incorporate as much detail (and experimental support) as possible during the first 12 months from filing. Timing is critical because no new information can be added to a patent beyond the 12-month stage. As the full drug development process can take up to 15 years, it is challenging to anticipate the final results of that research phase in the first 12 months. More than likely, there will also be multiple pharmaceutical companies trying to fill the unmet medical demand with their own inventive molecules, which makes it much more difficult to differentiate the proposed offering from existing drugs or patent applications. For these reasons, it is crucial for a pharmaceutical company to have a secure invention capture process in place and to keep accurate lab book notes to allow for effective patent filing.
It is widely recognised that IP rights are essential, especially for pharmaceutical companies, to allow for continued innovation of new medicines. Thanks to the pharmaceutical revolution, people have a longer life expectancy, better life quality and improved comfort of living. Mathys & Squire is pleased to celebrate all pharmacists this World Pharmacists Day, and in particular, our innovative clients in the pharmaceutical industry!
