Our firm is proud to represent a diverse range of clients in a variety of commercial fields, one of which is Spirit Energy Limited (SEL). SEL started life as a new entity into which Centria plc’s exploration and production (E&P) business and Bayerngas Norge AS were contributed enabling SEL to operate as an independent business in the oil and gas E&P sector.

In 2017, we filed, on behalf of SEL, UK trade mark applications for the marks SPIRIT ENERGY and, as a series mark, variations of SEL’s logo mark (below). These applications covered a variety of goods and services in classes 4, 37, 39, 40 and 42 relating to the oil and gas industry and oil and gas E&P.

The opposition proceedings

Both applications were opposed by Spirit Solar Limited (SSL), which operates a solar panel installation company in Reading and the surrounding areas. The oppositions were filed on the basis of SSL’s UK trade mark registration of SPIRIT SOLAR and its alleged unregistered trade marks SPIRIT, SPIRIT SOLAR and SPIRIT ENERGY.

The oppositions were based on SSL’s allegations that SEL’s application would:

The Hearing Officer issued her decision in the consolidated proceedings in August 2019 (the ‘Decision’). In the Decision, the Hearing Officer partially revoked SSL’s UK registration to restrict it to goods and services relating to, generally speaking, solar panels and solar panel installation services (and associated services). The Hearing Officer decided that there was no likelihood of confusion between the marks on account of the respective goods/services being dissimilar (or similar only to a very low degree). The Hearing Officer also found that the applications were not filed in bad faith.

Despite the restriction of SSL’s registration, and the finding that there was no likelihood of confusion, the Hearing Officer decided that use of SEL’s marks would take unfair advantage of the repute/distinctive character of SSL’s registration and could be prevented under the tort of passing off in respect of SSL’s unregistered SPIRIT and SPIRIT SOLAR marks.

The appeal proceedings

There are two possible routes of appeal in respect of UK trade mark opposition decisions, either to the High Court or to the Appointed Person; the latter route does not allow for further appeal to any higher Court. SEL appealed the Decision to the Appointed Person and SSL cross-appealed. The appeals were heard in December 2019, with the appeal decision issued in March 2020.

With respect to the decision regarding section 5(3) (reputation), the Appointed Person disagreed with the Hearing Officer and found that the Hearing Officer was wrong to find that SSL’s SPIRIT SOLAR mark was known by a significant part of the relevant public. In the absence of a reputation, the opposition under section 5(3) could not succeed, and SEL’s appeal in this regard was allowed.

The Appointed Person also disagreed with the Hearing Officer’s decision that a link would be established between the respective marks and therefore allowed the appeal and dismissed the opposition under section 5(4)(a) (passing off) on the basis that there would be no misrepresentation.

Turning to section 5(2)(b) (likelihood of confusion), the Appointed Person upheld the Hearing Officer’s decision that the respective goods/services were dissimilar.

As a result of the appeal, the oppositions were dismissed in their entirety and an award of costs was made to SEL.

The appeal decision represented a very good result for our client, allowing it greater certainty with respect to its ability to use and register its mark in the UK. As reported by the popular IP blog The IPKat in April 2020, the odds of overcoming the Hearing Officer’s opposition decision on appeal before the Appointed Person are relatively slim, with only three (including SEL’s) of 21 appeals at the beginning of this year being successful. The case also highlights that a great deal of care should be taken when filing evidence in opposition proceedings to ensure that grounds which are evidence-dependent are fully supported.

The trade mark team at Mathys & Squire is experienced in assisting clients in both defending and prosecuting trade mark opposition proceedings before the UKIPO, as well as the EUIPO. Please get in contact with us if you have any potential disputes you would like to discuss.

In this article, written for The Pharma Letter’s Expert View section, Mathys & Squire associate Amy Nick examines the latest developments in artificial intelligence and machine learning in the biotech sector.

Developments in artificial intelligence (AI) and machine learning (ML) are playing an increasingly influential role in the biotech space, driving the formation of new partnerships between the tech and healthcare industries.

While big pharma is increasingly seeking collaborations with AI startups, major tech players such as Google, IBM and Microsoft are taking steps into the biotech space. A 2019 survey of pharmaceutical and biotech professionals by ICON found that 80% of respondents were using, or planning to use, AI technologies.

AI has already begun to make an impact. Food and Drug Administration approvals of AI algorithms have increased exponentially over the past few years, and the AI healthcare market is predicted to reach $6.6 billion by 2021.

The potential value of AI is already apparent in areas such as diagnostics, with research suggesting that diagnostic algorithms can match the performance of human experts in detecting diseases from medical images. The use of AI in other areas is more speculative: no AI-designed drugs have been approved yet, and few have reached clinical trials.

This is in part because validating AI/ML predictions remains expensive and time consuming, especially where this requires synthesising entirely new compounds or conducting large-scale clinical trials. Meanwhile, the margin for error in healthcare is narrow, and even the most advanced machine learning models can only be as good as the datasets they are trained on. Potential investors need to be convinced that the rewards are worth the risk.

IP protection

This will require a shift in approach to the creation and protection of IP. The patent system has long served as a mechanism for promoting and rewarding investment in innovation, but AI/ML innovation poses numerous challenges to this current system. As of yet, there is no consensus in the approach taken by national courts and intellectual property offices to resolving these, leading to uncertainty and inconsistency between jurisdictions.

One key issue raised by AI inventions is the nature of authorship and inventorship. In copyright law, it has long been debated whether a human creator is required for copyright to arise in a creative work.

This too remains unresolved. Some jurisdictions, such as the UK, award copyright for computer-generated works to the person responsible for facilitating creation of the work. In contrast, courts in the USA and Australia have denied protection to works with no substantive human input, although how these decisions will be applied to AI/ML remains to be seen.

AI and inventorship

Resolving the issues around copyright protection will be relevant for the protection of source code. However, AI is increasingly becoming capable of generating patentable output with diminishing human supervision. Here, inventorship is generally understood to reside with the person who developed the AI, which is seen as a ‘tool’ of the human inventor.

There are as yet no specific legal provisions addressing the notion of AI as an inventor, and most jurisdictions require the named inventor to be a natural person. Both the UKIPO and EPO recently rejected patent applications because the named inventor was an AI, despite acknowledging that the criteria for patentability were met.

The USPTO followed suit, arguing that US patent law limits inventorship to natural persons. Such refusals are unlikely to be the end of the issue. As unsupervised learning algorithms become more complex and their use more widespread, cases where human oversight over the final output are not sufficient to meet the legal criteria of human inventorship will bring this point back to the forefront.

Patentability requirements

Another question lies in the interpretation of patentability requirements. Computer programs are excluded from patentability in many jurisdictions on the basis that they can be protected by copyright, and similar restrictions apply to algorithms and mathematical models. Yet, it is not always clear how these patentability requirements should be understood in the context of
AI and ML. The EPO updated its Guidelines for Examination to include specific guidance on this for the first time in 2018, but the approach of many other patent systems remains unclear.

Broader questions also arise from the use of AI in biotech. Standards for inventiveness may need to be revised, as AI interprets and processes information in an entirely different way to a human inventor. Under current law, to obtain a patent an invention must not be obvious to a ‘person of skill’ in the relevant field on the basis of publicly available information. It is unclear how this should apply to AI-generated predictions.

AI-based approaches could conceivably identify drug candidates which are an obvious outcome of the application of AI, despite not being obvious to a human expert on the basis of the same information. The more commonplace AI becomes, the more difficult it may be to determine inventiveness exclusively by reference to a human inventor.

IP strategy

The IP strategy of companies in the biotech space will also need to evolve to meet new challenges. This is particularly true in the context of personalised medicine: as AI/ML-driven personalisation targets increasingly smaller patient populations, drug-makers may end up with treatments applicable to only a handful of patients, or even to a single person.

In such cases, traditional strategies protecting a specific composition of product or a particular treatment protocol are likely to be of little commercial value. Instead, companies will need to find ways of capturing value across all stages of the clinical development process.

In particular, protecting novel strategies for accelerating drug discovery, improving patient selection and enabling treatment optimisation, as well as innovative methods of data capture and the analytics tools underpinning them are likely to be increasingly important.

Legal, ethical and regulatory issues

The growing use of AI has given rise to a new set of legal, ethical and regulatory issues which must be addressed if innovation is to keep pace with technological progress.

A patent system able to adapt to these challenges will be key in allowing researchers to cooperate openly; without robust systems for protecting their IP, developers may choose to keep novel AI and ML processes trade secrets, depriving the research community of the opportunity to build on their progress.

Navigating these issues will be complex, requiring cooperation and discussion between the tech and pharmaceutical industries and the legal community, but this is vital in order for AI and ML to realise their full potential in healthcare.

This article was published by The Pharma Letter in August 2020.

It is important to note that as the UK leaves the European Union, EU trade marks (EUTMs) will still be valid in the other 27 member countries of the EU: Austria, Belgium, Bulgaria, Croatia, Cyprus, Czechia, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden.

However, the UK has entered a transition period (due to last until 31 December 2020), after which time registered EUTMs will no longer extend to the UK. These rights will be automatically ‘cloned’ by the UKIPO to create equivalent UK rights which will ensure continued protection and enforceability in the UK. Trade marks will continue to be protected and enforced in the UK. Although marks will be fully independent of the EUTM, they will still retain all the same dates recorded for the EUTM, and therefore will also be valid.

That being said, trade marks are vulnerable to cancellation by third parties if they are not used within the countries in which they are registered. For EU and UK trade marks, this cancellation period is five years from when the mark was entered on the trade mark register, or for any subsequent continuous period of five years. To prove use of a trade mark, samples of the way in which a trade mark is used are needed (i.e. marketing; promotional and advertising material; copies of web pages; invoices etc.).

Following the end of the transition period, it is worth noting that use of a trade mark only in the UK will, after a period of time, no longer be sufficient to keep an EUTM registered if attacked by a third party for non-use.

Whilst UK evidence will be valid proof of use for a period of time, this will gradually be given less and less weight and will only be acknowledged to show use in the period before Brexit. After this, evidence of use in at least one of the other 27 member countries of the EU (listed above) will need to be relied upon in order to prove use in the European Union.

Once the UK part of an EU registration has been converted into a fully independent UK mark, examples of the way in which a trade mark is being used in the UK will need to be kept in order to prove use in the United Kingdom.

For more information, and for advice on protecting your trade marks ahead of the transition period ending on 31 December 2020, get in touch with our Brexit team.

We are delighted to announce that our client, medical software company Transformative AI, has raised a $1.7 million seed round. The investment, which was led by Tera Ventures and included funding from the Wellcome Trust and InHeath Ventures, will support Transformative AI in obtaining FDA clearance for its first product.

Transformative AI was formed in 2016 through Entrepreneur First’s startup programme, and since then the company has expanded to operate in the US, the UK and Estonia. Its predictive patient monitoring software allows healthcare providers to respond to life-threatening medical events before they occur, through the use of cutting-edge machine learning techniques.

This recent investment from Tera Ventures is the latest step in a journey of substantial growth for Transformative AI and will assist the company in developing and perfecting their life-saving products.

The team at Mathys & Squire, led by partner Dani Kramer, has worked with Transformative AI since its inception, and has been involved in the filing of a number of patent applications directed towards the prediction of cardiac events.

Commenting on the investment news, Dani said: “We are thrilled that Transformative AI has successfully raised this significant sum to invest further in its technology. Transformative AI’s technology in early intervention is vital in light of the fact that millions of people die globally from sudden cardiac arrest every year. We’re delighted to be working with the team at Transformative AI in protecting their proprietary technology, to support their mission in the development of vital sudden cardiac arrest prediction technology.”

Click here for more information.

The UK’s exit from the EU may have an effect on all types of intellectual property (IP) where there are existing agreements or licences in place. The UK is currently in a transition period until 31 December 2020, but it is important to get ahead now and ensure that your interests are secure.

An IP agreement, whether it’s a compromise agreement or a licence, will usually be defined by territory and by reference to the relevant IP rights. As it stands, reference to the European Union will take effect across the whole of the EU including the UK, but this will not be the case when the transition period ends. It is therefore important to ensure that the UK’s exit does not cause your agreements to fall short.

Scope of IP rights

An agreement or licence typically revolves around one or a collection of IP rights. These are often defined in the body of the agreement or in ‘Schedules’. Where these are unitary EU rights that will be split after Brexit, i.e. EU trade mark or design registrations, the referenced rights will not extend to the UK when the transition period ends. Separate UK rights will be created, but it may be necessary to amend or redraft agreements to reflect this.

Territory

If the geographical reach of an agreement is defined as the ‘European Union’ with no further definition or specific mention of the UK, the benefit of that agreement may no longer apply to the UK when the transition period ends. This could have an effect in terms of the management of licence arrangements, freedom to operate, or the ability to rely on restrictions imposed in settlement/co-existence agreements.

There are other considerations such as royalty payments and customs duties that may come in to play but there is still time to review and ensure that your agreements and licences are clear and will hold up in the post-Brexit landscape.

Action

Take the time to review your IP and licence agreements now; it may be that a simple addendum or redraft is required. Make sure that any new agreements are drafted to provide a full definition of ‘territory’ where the EU is involved and refer to the UK specifically.

For more information, and for advice on protecting your IP agreements ahead of the transition period ending on 31 December 2020, get in touch with our Brexit team.

During these challenging coronavirus times, digital life is at its peak – with people meeting, working and learning digitally from home. Accordingly, more and more online seminars, so called ‘webinars’, are being offered.

Situation

The term ‘webinar’ has actually been protected as a national German trade mark with the registration number 30316043 since 2003. The trade mark is registered for services in classes 35, 38 and 41, including mediation of trade and business contacts, presentation of companies, providing information, platforms and portals on the internet, and organisation and implementation of seminars and conferences. In 2019, the rights on the trade mark ‘webinar’ were transferred to a new entity.

Rumours now have it that a wave of warnings based on the German trade mark ‘webinar’ is imminent.

To counter such potential threat, a total of six requests for revocation and invalidity of the trade mark ‘webinar’ have been filed during the last couple of weeks based on non-use of the trade mark by the owner and based on the requirement of availability of the term ‘webinar’, which became a generic term for web-based seminars.

Risks and recommendations

Since no evidence of the use of the trade mark by the owner can be found, and since the term became generic for web-based seminars, the chances for a revocation of the mark ‘webinar’ in the pending revocation and invalidity proceedings are very high. While anyone using the term ‘webinar’ for seminars, conferences, or similar bears the risk of a warning until the decisions in this matter are final, the chances of success of such a warning are very low.

To avoid any risks, an alternative expression, such as ‘online seminar’, can be used.

Since the term is registered as a national German trade mark, the commercial use of ‘webinar’ can only be prohibited in Germany. However, all non-German providers of online seminars should be aware that, as an online service, the offer of an online seminar titled ‘webinar’ can also be directed to, accessed by or even simply noticed by users in Germany. Therefore, non-German providers should also be aware of the current situation.

Assistance

No wave of warnings as the rumours predicted has happened, yet. However, should you receive a warning letter based on your use of the term ‘webinar’, do not ignore it – it could get expensive! In this case, we highly recommend contacting a trade mark attorney.

This also serves as a reminder that allowing a trade mark to become generic may render it unenforceable. If you are the owner of a trade mark and become aware of its use by a non-authorised party, we also recommend contacting a trade mark attorney to enforce your rights.

Mathys & Squire’s team of trade mark attorneys is experienced and highly qualified, not only in handling the defence against warnings and enforcement of rights, but in all trade mark related matters. Visit our trade marks page for more information.

Background

The efforts to create a unified patent system in Europe are now well advanced. The agreement on a unified European Patent Court has been coordinated at European level and is now available for ratification by the individual member states of the EU. In order for the agreement to enter into force successfully, it is necessary, among other things, for 13 states to ratify it, including France, the UK and Germany. To date, 16 states have ratified it, including France and the UK. Up until 20 July 2020, the situation was that the only thing missing was ratification in Germany, which was decided in the Bundestag, but against which a constitutional complaint was filed.

Status in Germany

In March 2020, the Federal Constitutional Court ruled that the sufficient quorum had not been reached for the decision in the Bundestag. The resolution passed by the Bundestag is therefore not valid. Instead, a new decision is necessary, which must be passed with a two-thirds majority. It is not currently possible to foresee when such a decision can be passed in the current COVID-19 crisis and under the influence of the approaching Bundestag elections next year.

Status in the UK

In April 2018, the UK government ratified the UPC Convention and notified the EU. The UK left the EU on 31 January 2020, and is therefore no longer a member of the EU. As the Unified Patent Court (UPC) Convention only provides for an effect in EU member states, the UPC can no longer have any effect in the UK. According to the present agreement, the central chamber is currently based in Paris, with London and Munich as secondary seats.

On 20 July 2020, the UK actively withdrew its ratification (see full details here).

Opinion of the EU Commission

From the EU Commission’s viewpoint, the ratification process is not affected by Brexit. As can be seen from the 15 July communication, the Commission considers it decisive that the UK was a member of the EU at the time of ratification. The communication also confirms that the UK will no longer participate in the single patent system when it leaves the EU. In relation to ratification, the Commission believes that a legally binding approval in the German Bundestag will bring the Convention into force.

The UK’s withdrawal of the ratification took place only after the communication of the EU Commission, meaning that no statement on this is currently available.

Open questions

It remains questionable whether the withdrawal of the UK ratification prior to the entry into force of the UPC has made it impossible to follow the path prescribed in the Convention. In this case, a possible solution would be for another EU member state to take the place of the UK. It remains to be seen whether this would happen automatically on the basis of the number of patent applications filed by the remaining member states, or whether an EU-wide vote would take place.

One thing that does appear to have been clarified is that a seat of the Central Chamber in London will probably be eliminated.

Visit our Brexit page for more information, or contact the article author, partner Andreas Wietzke, directly.

In this article for Intellectual Property Magazine, Mathys & Squire associate Alexander Robinson analyses the implications of the EPO’s high-profile plant and animal ruling reversal.

In a widely unexpected decision (opinion G3/19), which represents a complete reversal of a position adopted only five years ago, the European Patent Office’s (EPO) highest judicial instance, the Enlarged Board of Appeal (EBoA), ruled that plants and animals exclusively obtained by means of “essentially biological processes” cannot be patented.

At the root of the dispute leading to G3/19 is the fact that Article 53(b) of the European Patent Convention (EPC) forbids the patenting of “essentially biological processes for the production of plants or animals”. In its so-called Broccoli/Tomatoes II (G2/12 & G2/13) decisions in 2010, the EBoA clarified that this did not preclude claims to plants or plant material which are obtained through such processes.

This article was published by Intellectual Property Magazine in July 2020 – to read the full version, please click here (subscription required).

Today (15 July 2020) saw the hearing of the EPO Enlarged Board of Appeal in G 1/19 – only the second such hearing ever relating to Computer Implemented Inventions (CIIs) at the EPO.  While the case that led to this referral relates to computer simulations, it has the potential to have far-reaching consequences for the patentability of not only simulations, but mathematical methods and their application in computer implemented inventions in general (which is reflected in the large number of amicus curiae briefs filed). 

While not being physically present, a number of colleagues at Mathys & Squire LLP attended the hearing virtually via videoconference. The EBoA didn’t issue a decision at the hearing, and the hearing itself was relatively brief. We await their findings with keen interest.

Given the current trajectory of technological development, particularly in the field of machine learning and AI, we are hopeful that the first two questions referred to the Enlarged Board will be answered in the affirmative. To do otherwise might risk development of an unduly negative and restrictive standard for the patentability of CIIs.

Background

EPO Appeals system

Only in rare circumstances, normally where case law developed by Technical Boards of Appeal (TBA) over the years appears to diverge, is a matter referred to the Enlarged Board of Appeal (EBoA).  For those working in or familiar with the life sciences field, we recently saw such a decision issued in G 3/19 (reported here).  In the CII field, the last we had was the referral of the President of the EPO in G 3/08 issued in 2010.

How are CIIs assessed for patentability?

The approach to assessing the patentability of CIIs at the EPO was established in T 641/00 (COMVIK), refined and restated in T 154/04 (Duns Licensing) and expressly approved by the Enlarged Board in G 3/08, the only other referral ever made to the EBoA on this subject.

In summary, the COMVIK approach is first to determine whether the claim includes any technical means (any hardware is enough). Then, if it does (and assuming it is novel) the next step is to determine whether the claim provides a non-obvious technical solution to a technical problem.  The EPO does this by assessing which, if any, of the claim features contribute to producing a technical effect.  Only those features which do contribute in this way are given any weight when determining obviousness. Those which do not contribute to the solution of a technical problem are deemed to form part of the prior art, given as a “requirements specification” in the objective technical problem to be solved in the “problem and solution” test for inventive step.

A body of established case law in this field has built up over time, and the EPO Guidelines for Examination have also been amended (somewhat recently) to reflect this position. 

The revised EPO Guidelines (G-II, 3.3), when discussing the patentability of mathematical methods, note that “A mathematical method may contribute to the technical character of an invention, i.e. contribute to producing a technical effect that serves a technical purpose, by its application to a field of technology and/or by being adapted to a specific technical implementation”.  The Guidelines helpfully list a number of examples that may be considered technical, including “simulating the behaviour of an adequately defined class of technical items, or specific technical processes, under technically relevant conditions”.

Importantly, however, the Guidelines and the existing case law suggest that “the mere fact that a mathematical method may serve a technical purpose is not sufficient, either. The claim is to be functionally limited to the technical purpose, either explicitly or implicitly.  This can be achieved by establishing a sufficient link between the technical purpose and the mathematical method steps, for example, by specifying how the input and the output of the sequence of mathematical steps relate to the technical purpose so that the mathematical method is causally linked to a technical effect”.

T 1227/05 (Infineon)

A decision that is often referenced in this field is that of T 1227/05 (Infineon).  It relates to a computer-implemented method for the numerical simulation of the performance of an electronic circuit subject to noise.  The Technical Board of Appeal held the method here to be patentable because the simulation of a circuit subject to a particular type of noise constitutes an adequately defined technical purpose.

Significantly, in the manner it was claimed, the method was functionally limited to that technical purpose.  The Board held that a circuit with input channels, noise input channels and output channels whose performance is described by differential equations does indeed constitute an adequately defined class of technical items, the simulation of which may be a functional technical feature.  

By contrast, a claim which attempted “the metaspecification of an (undefined) technical purpose” by making mere reference to simulation of a “technical system” was deemed not an adequately defined class of technical items, and therefore not patentable. This contrast may, we believe, be of particular significance in the present referral.

It may also be worth observing that the EPO Guidelines note that “if the claim were not limited to the numerical simulation of an electronic circuit subject to 1/f noise, the mathematical algorithm defined by steps (d1)-(d3) would not serve any technical purpose and would thus not be considered to contribute to the technical character of the claim”.

The appeal (T0489/14) which led to this referral

The appeal, which gave rise to the present referral to the Enlarged Board, relates to “A computer-implemented method of modelling pedestrian crowd movement in an environment”. 

The patent application in question indicates that the main purpose of the simulation is its use in a process for designing a venue such as a railway station or a stadium. This is not recited in the claims of the Main and First to Third Auxiliary Requests but it is referenced in the Fourth Auxiliary Request.

Importantly, at Reasons 10 of the decision referring the questions to the EBA, the TBA held (emphasis added):

“10. As to the technicality of simulating crowd movement, the appellant argued that simulating the movement of pedestrians yielded results which were no different from those obtained by modelling an electron using numerical methods. Like the simulation of an electron, the claimed simulation of the movement of pedestrians was based, at least in part, on the laws of physics.

The Board does not disagree with these observations but is not convinced that numerically calculating the trajectory of an object as determined by the laws of physics is in itself a technical task producing a technical effect.”

The Board went on to state (emphasis added):

“11. In the Board’s view, a technical effect requires, at a minimum, a direct link with physical reality, such as a change in or a measurement of a physical entity. Such a link is not present where, for example, the parabolic trajectory followed by a hypothetical object under the influence of gravity is calculated. Nor can the Board detect such a direct link in the process of calculating the trajectories of hypothetical pedestrians as they move through a modelled environment, which is what is claimed here. In fact, the environment being modelled may not exist and may never exist. And the simulation could be run to support purely theoretical scientific investigations, or it could be used to simulate the movement of pedestrians through the virtual world of a video game.

In this context, the Board notes that the Enlarged Board of Appeal in decision G 2/07, reasons 6.4.2.1, stated that “[h]uman intervention, to bring about a result by utilising the forces of nature, pertains to the core of what an invention is understood to be“. It appears to the Board that using a computer to calculate the trajectories of hypothetical pedestrians as they move through a modelled environment does not utilise the forces of nature to bring about a result in any way different from using a computer to perform any other type of calculation.”

The Appellant had referred during the hearing to T 1227/05 (Infineon) and drawn the analogy that simulating the performance of a modelled electrical circuit (which was held patentable there) is much the same as simulating the behaviour of a modelled environment.  In the subsequent written decision, the Board agreed with the Appellant’s arguments that T 1227/05 supported their case but noted that they were “not fully convinced by the decision’s reasoning”.  They gave two reasons:

“First, although a computer-implemented simulation of a circuit or environment is a tool that can perform a function “typical of modern engineering work”, it assists the engineer only in the cognitive process of verifying the design of the circuit or environment, i.e. of studying the behaviour of the virtual circuit or environment designed. The circuit or environment, when realised, may be a technical object, but the cognitive process of theoretically verifying its design appears to be fundamentally non-technical.”

“Second, the decision appears to rely on the greater speed of the computer-implemented method as an argument for finding technicality. But any algorithmically specified procedure that can be carried out mentally can be carried out more quickly if implemented on a computer, and it is not the case that the implementation of a non-technical method on a computer necessarily results in a process providing a technical contribution going beyond its computer implementation (see e.g. decision T 1670/07 of 11 July 2013, reasons 9).”

The Board also noted that T1227/05 acknowledged a tension with an earlier decision in T 435/91 which required a step of “materially producing the chip so designed” thus tying the subject matter explicitly to a real-world object.  The Board noted the growing importance of “numerical development tools” and in particular CIIs, and that “legal certainty in respect of the patentability of such tools is highly desirable”.  The Board therefore referred three questions for consideration by the Enlarged Board.

Questions referred to the EBoA

1. In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation’s implementation on a computer, if the computer-implemented simulation is claimed as such?

2. If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?

3. What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?

The first question

The first question suggests that the applicability of the widely-accepted approach to assessing the patentability of CIIs under inventive step (Article 56 EPC) following the COMVIK decision (T 641/00) is not in question.

However, by using the language “computer implemented simulation of a technical system” (emphasis added) in the question, this presupposes that the system is already technical – which may not be the case here where the system is the behaviour of pedestrians.  Instead, the system may be held to be non-technical because, following the reasoning of a very recent decision taken in T 1798/13, it “is not a technical system that the skilled person can improve, or even simulate with the purpose of trying to improve it”.

The use of “as such” language in question 2 was commented on in the amicus briefs because of its apparent relevance to the wording of Article 52(2) EPC, but these issues weren’t raised at the hearing. It remains to be seen whether they will be addressed in the written decision.

The second question

The second question seems to address the idea of whether the simulation is (as set out in the Guidelines) “functionally limited to a technical purpose”. 

The EPO’s current Guidelines for Examination say that a generic purpose, such as “simulating or controlling a technical system” is not sufficient, but rather that the technical purpose must be a specific one.  Moreover, the mere fact that the mathematical method may possibly serve a technical purpose is not sufficient, either – as held in T 1227/05, the claim must be functionally limited to a specific technical purpose, either explicitly or implicitly.

Interestingly, the EPO Guidelines also note (at G-II, 3.3.2) “In the context of computer-aided design of a specific technical object (product, system or process), the determination of a technical parameter which is intrinsically linked to the functioning of the technical object, where the determination is based on technical considerations, is a technical purpose”.

These Guidelines are of course not binding on the Enlarged Board. Indeed, the Enlarged Board’s answer to the second referral question may very well have direct implications for future revisions of these parts of the Guidelines, and if so a direct impact on practice before Examining Divisions at the EPO.

The third question

The third questions seems most relevant to the claims of the Fourth Auxiliary Request under appeal – where the claims are directed to a method of designing (a model of) a building structure.  The TBA noted that this additional step “arguably strengthens the appellant’s case” that T 1227/05 is relevant yet noted that their view was that it didn’t help as “a direct link with physical reality is still absent”.

Our observations of today’s hearing

During the hearing it was interesting that both the Appellant and the President of the EPO argued in favour of computer simulations as such being technical, with the Appellant arguing that simulations serve a technical purpose and therefore must provide a technical effect.

With respect to the second question, both the Appellant and President made analogies between physical and virtual wind-tunnel tests.  They both argued in essence that such simulations rely on technical considerations and therefore have to be regarded as technical – in some sense agreeing with the position set out in the EPO Guidelines at G-II, 3.3.2 but they may perhaps have gone further than this in the arguments they made.  The President made further reference to an example of raytracing (commonly used in computer games), noting that the raytracing process is based on technical considerations even if the generated imaged is fictitious.

The EBoA didn’t decide anything today, and the overall hearing was relatively brief.  They will likely now take some time to consider the submissions, along with the many amicus curiae briefs before issuing their written decision and minutes of the hearing.  However, the consensus view amongst our colleagues who ‘attended’ the virtual hearing is that the first two questions should be held in the affirmative.  In our view, deciding otherwise may create a relatively negative and restrictive view on the patentability of CIIs in the future, as well as having an adverse knock-on effect on past cases and in protecting AI inventions more widely.

The EPO’s May 2020 decision in G3/19, on the patentability of certain plants, was among the most controversial in the office’s history. In this article for Life Sciences Intellectual Property Review, Mathys & Squire partner Anna Gregson explores the implications.

In its decision G3/19, issued in May, the European Patent Office’s (EPO) Enlarged Board of Appeal (EBA) held that plants, plant material, and animals exclusively obtained by an essentially biological process are not patentable.

G3/19 is the latest chapter in a 20-year history of the protection of plant-related innovation, beginning with the introduction of the EU Biotech Directive in 1998. Before G3/19, the EBA’s last contribution to this saga was the issuance of the consolidated G2/12 and G2/13 (Tomatoes II and Broccoli II) in March 2015.

In those decisions, the EBA concluded that the exclusion of essentially biological processes for the production of plants in article 53(b) of the European Patent Convention (EPC) did not have a negative effect on the allowability of a product claim directed to plants or plant material. These decisions were not popular in some EPC member states, which led to the EU Commission issuing a guidance notice in November 2016 to the effect that the Biotech Directive excluded such products from patentability.

This article was published by LSIPR in July 2020 – to read the full version, please click here (subscription required).