We are pleased to announce the appointment of Robin Richardson as associate to our trade mark practice, bringing the team headcount to a record high of 13 (made up of attorneys and paralegals), across our London, Birmingham and Manchester offices.

Robin is an attorney of the High Court of South Africa, a qualified trade mark attorney and soon to be UK qualified solicitor. He has several years of experience in trade mark, domain name and copyright protection, working with clients ranging from large multinationals through to newly formed startup companies. Robin has filed and prosecuted trade mark applications in the UK, EU, Africa and worldwide. He is an accredited domain name adjudicator with the South African Institute of Intellectual Property Law and settled a number of disputes before moving to the UK in 2018.

Robin obtained a B.SocSci and L.LB (Law) from the University of Cape Town and a Masters of Law, specialising in Intellectual Property Law from Queen’s University in Canada. Robin is a Fellow of the South African Institute of Intellectual Property Law and a South African-qualified trade mark practitioner.

After beginning his career with KISCH IP in South Africa where he worked for several years, Robin then joined Womble Bond Dickinson (UK) LLP, based in their Leeds office, in 2018.

Commenting on his appointment, partner and co-head of the Mathys & Squire trade mark team, Gary Johnston, said: “We are delighted to welcome Robin to the firm as our trade mark practice grows. His extensive trade mark skills and international experience will further augment the capabilities of our trade mark practice. Robin has a strong passion for solving domain name, trade mark, copyright and internet based legal issues which will add to our offering to clients. He will be a great asset to the firm.”

Robin Richardson added: “I am thrilled to have the opportunity to be working with the highly regarded team at Mathys & Squire. I share with them the same values and level of client service. I look forward to working with the firm, its innovative clients and contributing to the firm’s continued growth and development.”

This release has been published in World Trademark Review and Intellectual Property Magazine.

The EPO Board of Appeal has now issued its written decision in T 844/18 confirming the revocation of EP-B-2771468, an important CRISPR patent belonging to the Broad Institute, MIT and Harvard. The case was being widely followed due to the priority entitlement issues it raised. James Wilding and Alex Elder of Mathys & Squire represented one of the opponents.

The hearing was covered in our earlier news item here. To recap, the case turned on the issue of ‘same applicant’ priority. The PCT request for the application from which the patent derived had not included all of the applicants for the US provisional applications from which priority was claimed or their successors in title. The proprietors argued that this did not matter, because:

• the EPO does not have the power to assess legal entitlement to priority,
• in the case of joint applicants for a priority application, each can exercise the right of priority without the others, and
• the omitted PCT applicant was not, under US law, an applicant for the relevant invention in the US provisional applications or a successor in title thereto, because they had not contributed to that invention or derived rights from a contributing inventor. 

At the hearing, the Board rejected all three arguments, consistent with established EPO case law and practice. With the written decision, we know the Board’s reasons:

In relation to the first argument, the Board concluded that the EPO’s power to assess ‘same applicant’ priority derives from the European Patent Convention (EPC): “Article 87(1) EPC clearly sets out a requirement that the EPO examines the ‘who’ issue of priority entitlement”.  The Board rejected the proprietors’ analogy between the determination of entitlement disputes, which the EPO is not empowered to do, and the assessment of ‘same applicant’ priority, which the Board confirmed to be a formal assessment and not substantive. 

In relation to the second argument, the Board firmly endorsed the current approach of the EPO, according to which all of the applicants named on a priority application, or their successors in title, must be named on the later European filing in order to introduce priority rights. Article 4A(1) of the Paris Convention and Article 87(1) EPC provide that ‘any person’ who has duly filed an application for a patent enjoys the right of priority, or their successor in title.  The Board accepted that the ordinary meaning of ‘any person’ was ambiguous, but found support for the ‘all applicants’ interpretation in the authentic French text of the Paris Convention, in the object and purpose of the Paris Convention, and in the “many decades of EPO and national practice”. The Board further concluded that the bar to overturning the long-established case law and practice “should be very high because of the disruptive effects a change may have.” Those disruptive effects include the potential proliferation of priority-claiming applications and a significant shift in the prior art landscape.

In relation to the third argument, the Board held that it is the Paris Convention that determines who the ‘any person’ is who duly filed a priority application and who therefore holds priority rights. According to the Board, that person is simply “the person or persons who carried out the act of filing”, this requiring a formal assessment without regard to inventorship – consistent with earlier EPO case law.  Accordingly, it was the unity of all of the applicants named on the US provisional applications who held priority rights, irrespective of inventive contribution.

In firmly rejecting the proprietors’ three arguments, the Board has maintained the status quo. Perhaps to underscore the point that ‘nothing has changed’, the decision has been coded for non-distribution to other Boards and it will not be published in the Official Journal of the EPO, notwithstanding the attention the case has drawn and the issuance of an EPO press communiqué (published today, 6 November) announcing the written decision. Whether the decision has a significant impact remains to be seen: the question of EPO power to assess legal entitlement to priority is pending in other appeals. 

This article was published in The Patent Lawyer Magazine in November 2020.

As covered in our previous article (read the summary here), in September 2020 the LG München I (District Court of Munich I) decided in favour of Nokia in a preliminary injunction against Lenovo, in which the SEP case related to a video standard (H.264 – also known as MPEG-4 part 10), which Lenovo uses in its laptops and PCs.

Shortly after Lenovo appealed the decision against it having to remove the concerned products from its German website, the OLG Munich (Munich Higher Regional Court) made an unexpectedly quick decision on the appeal, and has now stopped the enforcement of the interim injunction. Lenovo’s products can now be ordered again on the company’s homepage.

In the present case (21 O 13026/19), the Court of Appeal has based its decision on the high probability that the patent in dispute lacks legal validity. In the German patent infringement system, the validity of the patent is not examined by the infringement court, but by the Federal Patent Court in a separate procedure (bifurcation). The infringement courts, however, have the possibility to suspend their proceedings if it is highly likely that the patent in dispute lacks legal validity. In the present case, the OLG has thus justified the revocation of the first instance ruling.

The decision of the OLG Munich suspends the preliminary injunction of the LG München, but on the basis of procedural grounds. It remains to be seen whether the Court of Appeal, in its written reasoning, makes further statements in the context of an orbiter dictum, which deals with the application of the FRAND criteria by the court of first instance.

Towards the end of September 2020, the LG München I (District Court of Munich I) decided in favour of Nokia on a preliminary injunction against Lenovo. The subject matter was an SEP case relating to a video standard (H.264 – also known as MPEG-4 part 10), which Lenovo uses in its laptops and PCs. After payment of the security deposit, which was set at €3.25 million by the LG München, Nokia has now enforced the decision and thereby stopped Lenovo from selling the respective products in Germany. The tech company has also had to remove the products concerned from its German website. Lenovo has already announced that it will not accept this decision and has appealed.

This infringement is only a minor issue in the present decision, while the focus is on the application of the FRAND criteria as established by the Court of Justice of the European Union (ECJ) in Huawei v ZTE. The Munich Court found that Lenovo’s efforts to reach a licence agreement were not sufficient within the meaning of the FRAND criteria. In the present case, the communication between the parties appears to have taken place in principle without significant delay, but without reaching an agreement on the monetary side of the FRAND conditions.

In doing so, the Munich Regional Court is following the guidance of the Federal Court of Justice in Sisvel v Haier (K ZR 36/17). Perhaps surprising is the low security deposit of approximately €3 million. This may be one reason why Nokia enforced the decision in order to increase the pressure on the licensee Lenovo, which, in the view of the Munich court, is unwilling to accept. The current decision is a further step towards Munich courts being SEP owner friendly. In particular, it further increases the requirements for SEP users and their willingness to negotiate. This positive development for SEP owners certainly leads to increased caution for SEP users in product development, but particularly in ongoing license negotiations. This could also be seen as judges strengthening the patent rights against the plans of the German government to change patent law.

In this article, which was published in Volume 12, Issue 13 of the International Pharmaceutical Industry (IPI) Journal, Mathys & Squire Partner Martin MacLean demonstrates how, following the case of Regeneron v Kymab, transgenic mice claims have been found insufficient by the Court of Appeal.

The Supreme Court judgment (24 June 2020) sends a clear “no” Brexit message to any big pharma contemplating corporate muscle-flexing of excessively broad patent claims. This ruling overturned the position held by the Court of Appeal that, for patents relating to “a principle of general application”, there was no requirement to teach how to make the full range of claimed products. In this regard, the Court of Appeal held that Regeneron’s contribution to the field extended beyond the products (transgenic mice) that could be made back in 2001, and instead related to the general principle of providing ‘better’ mice (thereby overcoming a prior art immuno-sickness problem inherent to mice transfected with human DNA). With hindsight, the Court of Appeal allowed too much weight to be given to the relative contribution the ‘better’ mice aspect provided in producing a(ny) mouse having commercial utility. In sum, the Supreme Court considered the Court of Appeal had incorrectly watered down the “sufficiency of disclosure” requirement of patent law and, in doing so, this judgment maintains a sensible balance between patent law enforceability and invalidity and provides guidance on what might constitute a ‘principle of general application’ for which broad claim scope might be held valid.

Click here to read the article in full. This provides an update to the original version, which was published in June 2020.

We are delighted to share the news of our client, Poseidon Plastics, has been awarded a £2.6 million grant from UK Research and Innovation (UKRI), the national science and research funding agency, as part of its Smart Sustainable Plastic Packaging (SSPP) challenge.

The full press release is available below:

Using its proprietary technology as a platform, Poseidon’s mission is to develop a PET plastic recycling infrastructure on an industrial scale. This grant will be used to commercialise Poseidon’s scientifically proven chemical recycling technology through the construction of its first commercial facility, initially capable of processing 10kpta of waste PET. Construction is planned to start in Teesside in the second quarter of 2021 and will be completed in 2022.

The facility will redirect the equivalent of over one billion bottles per year out of landfills and the environment, to instead be repurposed into consumer packaging and other end-uses by Poseidon’s commercial partners. This facility marks the start of Poseidon’s programme to expand its chemical recycling process across the globe, rapidly expanding its output of recycled plastic feedstock, and reducing the use of PET as a ‘single-use’ plastic worldwide.

Partnering with waste collection experts Biffa Polymers, PET resin producers Alpek Polyester UK and DuPont Teijin Films UK, the University of York’s Green Chemistry Centre of Excellence and polyester fibre end-users, O’Neil’s and GRN Sportswear, Poseidon Plastics will demonstrate how previously unrecyclable post-consumer and post-industrial packaging and film, alongside other hard-to-recycle PET wastes can now be chemically recycled back to virgin-quality PET feedstock, Poseidon rBHET^TM, for use in the manufacture of new consumer end-use goods.

By completing the supply chain from waste collection and sorting to feedstock production and PET manufacture through to consumer end-use goods, Poseidon and its partners will achieve a UK-first, a fully circular economy for PET plastic. 

Around 80 million tonnes per annum of PET is produced globally, only a quarter of which is recycled. After the end of short first-use cycle, the majority of post-consumer and post-industrial PET plastic is currently incinerated or dumped in landfill, as it is deemed unsuitable as a feedstock for current recycling systems and processes. This is where Poseidon looks to make an immediate and significant difference; PET is lightweight, strong, inexpensive and with Poseidon’s proprietary technology, a valuable feedstock within a closed-loop circular economy.

Martin Atkins, CEO of Poseidon Plastics, commented: “We are delighted that the potential of our technology has been recognised by the government through UK Research and Innovation. This grant, as part of UKRI’s SSPP challenge, represents a significant and tangible commercial step on our way to achieving our ambitious, global-scale recycling targets.

“With the help of Alpek Polyester and our other partners, the new Teesside plant will evidence the scalability of our advanced recycling process and help us towards our core goal of making an immediate, significant, and sustainable impact on the global issue of plastic waste.”

Commenting on the news, Mathys & Squire partner Chris Hamer, who acts for Poseidon Plastics, said: “This is excellent news for Poseidon Plastics, as well as a positive step for green technology companies as the UKRI has invested a significant sum to tackle the important issue of plastic waste recycling. This would not have been possible without the specialist expertise and determination of the team at Poseidon Plastics – I look forward to seeing the construction project begin!”

On the last day of 2019, the China National Intellectual Property Administration (CNIPA) announced the latest amended guidelines for patent examination effective on 1 February 2020. This amendment was announced only three months after the previous amendment made in September 2019. This unusually speedy amendment to the guidelines reflects the Chinese government’s plans to strengthen the protection of IP rights in the fast-growing high-tech fields of artificial intelligence (AI) and blockchain.

What’s new

A new section (Part II, Chapter Nine, Section Six, ‘the examination guidelines for inventions that contain algorithms or business rules and methods’) has been added to the guidelines. This new section aims to clarify the examination of inventions relating to AI, internet plus[1], big data and blockchain, which normally contain intellectual activities such as algorithms or business rules and methods.

The new guidelines indicate that the ‘as-a-whole’ principle for considering patentable subject matter (Article 25.1(2) and Article 2.2), as well as assessing novelty and inventive step – technical features and features relating to algorithms or business rules and methods – should not be separated in a claim. Whether a claim constitutes a technical solution should be assessed based on the technical means, the technical problem and the technical effect of the claim as a whole.

The ‘interaction-consideration’ principle for assessing inventive step is as follows: to be considered as contributing to the inventive step of a claim, features relating to algorithms or business rules and methods should be closely integrated with technical features (‘mutual supportive and interactive relations in function’) to form a technical means to solve a technical problem and result in a corresponding technical effect.  Otherwise, those features relating to algorithms (in effect mathematical methods) and business rules or methods would be considered non-technical and therefore not relevant when assessing the inventive step of a claim, in a manner similar to that taken in Europe.

EPO and CNIPA new guidelines

Details about the new section of the Chinese guidelines can be found in Table 1 (emphasis added) with a brief comparison between the European Patent Office (EPO) and the CNIPA guidelines.

CNIPA examples

Section 6.2 provides 10 examples illustrating the application of the new guidelines in various scenarios from both positive and negative aspects. Examples 1 to 6 demonstrate whether the subject matter in the claimed invention is patentable. Example 1 relates to a method for establishing an abstract mathematical model, which should be excluded from patentability under Article 25.1(2). Examples 2 to 6 discuss what constitutes a technical solution in the fields of AI, business models and blockchain specified in Article 2.2 of the guidelines.

For instance, example 4 describes a method for preventing blockchain business nodes from leaking user privacy data in the alliance chain network. This claimed invention addresses a technical problem of providing more secure blockchain data – business nodes only establish connections to limited objects, by carrying the Certificate Authority (CA) certificate in the communication request and configuring the CA trust list in advance to determine whether to establish a connection. Such technical means achieve the technical effect of securing communications between business nodes and reducing the possibility of business nodes leaking private data. Therefore, the solution in this example is a technical solution specified in Article 2.2.

In contrast, example 5 relates to a method for promoting users’ consumption. This method, however, does not constitute a technical problem because a computer is only executed to determine the rebate amount based on the user’s consumption amount according to the specified rules. Therefore, in this application, no technical means are used, and the only effect of this claimed invention is to promote users’ consumption. The subject-matter in this patent application thus is excluded from patentability.

Examples 7 to 10 demonstrate whether the subject matter in patent applications involves an inventive step, which will be compared with EPO’s examples in a later section.

EPO v CNIPA – patentable subject matter

For the purposes of comparison, these new guidelines (section 6.1.1 and section 6.1.2) relating to patentable subject matter appear to be close to the EPO’s approach (as compared in the following Figure 1 and in the previous Table 1).

EPO v CNIPA – inventive step

The EPO guidelines (GL G-VII 5.4) and the case law (T 641/00) distinguish between three groups of features:

i) technical features,

ii) non-technical features, and

iii) features which, when taken in isolation, are non-technical, but do, in the context of the invention, contribute to producing a technical effect serving a technical purpose, thereby contributing to the technical character of the invention.

When following the approach set out in the new Chinese guidelines for assessing inventive step (section 6.1.3), algorithm or business rule and method features may be equivalent to the features in the EPO’s group iii. It might be worth noting that the CNIPA currently only considers these two particular kinds of ‘non-technical’ features (i.e. algorithms or business rule and method features) to be able to contribute to inventive step. The CNIPA’s approach seemingly first considers whether algorithm or business rule and method features and more traditional ‘technical features’ interact with each other functionally in the context of the invention to solve a technical problem and result in a corresponding technical effect. If yes, then the contribution of algorithm or business rule and method features should be considered.

Two CNIPA examples (example 7* and example 10** detailed in post-script) and two EPO examples (5.4.2.2 example 2 and 5.4.2.4 example 4) are selected to demonstrate whether technical features and algorithm or business rule and method features interact with each other functionally in the context of the invention.

In example 7, it is considered that algorithm features – i.e. the fuzzy algorithm in step (2) – are closely integrated with technical features (i.e. the robot information in step (1)), because the input parameters of the fuzzy algorithm are limited to the robot information to determine the stability state of the humanoid robot. In one EPO example (5.4.2.4 example 4), ‘the mathematically expressed claim features’ when considered in isolation, represent a mathematical method with no technical character. However, these features contribute to the technical character of the method because the claim is limited to a computer-implemented method in which this mathematical method serves a technical purpose of ‘circuit simulation’. In other words, the ‘mathematically expressed claim features’ and the technical features of ‘circuit simulation’ can be considered to interact with each other functionally in the context of the invention.

In example 10, the CNIPA explains that the technical means for visualisation could be used with different sentiment categorisation rules (the algorithm feature). Therefore, the sentiment categorisation rule and the visualisation method do not interact with each other functionally. Similarly, the EPO provides an example in its guidelines (5.4.2.2 example 2) in which the features defining a business method were ‘easily separable’ from the technical features of its computer implementation. Thus, the business method features and technical features cannot be considered to interact with each other functionally in the context of the invention.

Conclusion

To conclude, the new CNIPA guidelines bring some welcome clarity to what was a grey area of determining the patentability of an application involving business rules and methods, algorithms and mathematical methods. Previously, it was very common to see Chinese Examiners assessing inventive step based on divided features in a claim, and there was no clear guidance on how to examine ‘non-technical’ features. The new guidelines, therefore, tend to be more friendly to patent applicants because of the new ‘as-a-whole’ principle and the ‘interaction-consideration’ principle. This fast-track amendment indicates that, in order to keep up with the times, the CNIPA is maintaining a positive attitude towards AI and blockchain-related inventions.

Post-script

Example 7 *

Claim 1 recites

“A method for detecting the falling state of a humanoid robot based on multi-sensor information, which is characterized by the following steps:

(1) fusing attitude sensor information, zero-moment point ZMP sensor information and robot walking stage information to establish a sensor information fusion model with a layered structure;

(2) using the front and rear fuzzy decision system and the left and right fuzzy decision system to determine the stability of the robot in the front and rear direction, and the left and right direction respectively, the specific steps are as follows:

① determining the walking stage of the robot according to the contact between the robot support foot and the ground and offline gait planning;

②applying fuzzy inference algorithm on the position information of ZMP;

③applying fuzzy inference algorithm on the pitch or roll angle of the robot;

④ determining the output membership function;

⑤ determining fuzzy inference rules according to steps ①～④;

⑥ de-fuzzifying.“

D1 is considered as the closest art and discloses step (1) of the method. Therefore, the difference between D1 lies in step (2) – i.e. implementation of the fuzzy decision algorithm. Compared to D1, the technical problem solved by the claimed invention is how to determine the stability state of the robot and accurately predict its possible fall direction. The altitude information, ZMP (Zero Moment Point) position information and walking stage information in step (1) are used as input parameters, and the fuzzy algorithm in step (2) outputs information to determine the stability state of the humanoid robot, which provides a basis for further accurate posture adjustment instructions. Therefore, the algorithm features and technical features have mutual supportive and interactive relations in function, and they are closely integrated and jointly constitute a technical means to solve a technical problem and thus obtain a corresponding technical effect.

Example 10 **

Claim 1 recites

“A method for visualising the evolution of dynamic viewpoints, comprising:

Step 1 – a computing device determines a sentiment membership and sentiment category of the information in the collected information set, the sentiment membership of the information indicates how likely the information belongs to a sentiment category;

Step 2 – the sentiment category is positive, neutral, or negative, the specific categorisation method is: If the value r of the number of likes p divided by the number of dislikes q is greater than the threshold value a, then the sentiment category is considered as positive, if the value r is less than the threshold b, then the sentiment category is considered as negative, if b≤r≤a, then the sentiment category is neutral, wherein a>b;

Step 3 – based on the sentiment category of the information, the geometric layout of the sentiment visualisation of the information set is automatically established, the horizontal axis represents the time of information generation, and the vertical axis represents the amount of information belonging to each sentiment category;

Step 4 – the computing device colours the established geometric layout based on the sentiment membership of the information, and colours the information on each sentiment category layer according to the gradual order of the information colour.”

D1 discloses a sentiment-based visualisation analysis method, where time is represented as a horizontal axis, the width of each colour band represents a measure of sentiment at that time, and different colour bands represent different sentiment.

The difference between the solution of the claimed invention and the closest prior art D1 is the new sentiment categorisation rule proposed in step 2. It should be noted that the same technical means for colouring could be used with different sentiment categorisation rules. Therefore, the sentiment categorisation rule and the visualisation method do not have mutual supportive and interactive relations in function.

In addition, the problem of ‘visualisation’ has been solved in D1. Compared to D1, the claimed invention only proposes a new rule for sentiment categorisation, which does not actually solve any technical problem or make a technical contribution to the art. Consequently, the claimed technical solution of the claimed invention does not involve an inventive step in light of D1.

[1] Similar to Information Superhighway and Industry 4.0, the Chinese government has created its own “Internet Plus” initiative to transform, modernize and equip traditional industries to join the modern economy.

In its recent decision, the EUIPO Fourth Board of Appeal overturned the Opposition Division’s earlier decision in opposition proceedings concerning ex-professional footballer Jürgen Klinsmann and Panini Societá Per Azioni (‘Panini’), which is perhaps best known for producing collectable stickers of footballers and sticker albums.

The marks

The case concerned Mr Klinsmann’s EU designation of international registration no. 1384372 for the above mark for a range of goods in classes 16. 25 and 32 (including printed matter, clothing and beers and non-alcoholic beverages, respectively) and services in class 41 (including sporting activities). Panini opposed the designation on the basis of the following marks:

1. Italian reg. no. 1539690 for services in class 41 (including sporting activities);

2. EU designation of international reg. no. 1282870 for goods in class 32 (including beers and non-alcoholic beverages);

3. Italian reg. no. 1561953 for goods in classes 16 and 25 (including stickers and clothing articles, respectively);

4. Italian reg. no. 1063937 (representation of mark not provided) for goods in classes 16 and 25 (including stickers and clothing articles, respectively);

5. EU reg. no. 4244273 for goods in class 16 (including stickers); and

6. EU reg. no. 4244265 for goods in class 16 (including stickers).

The opposition proceedings

Grounds 1-4 were based on the allegation of a likelihood of confusion between those marks and Mr Klinsmann’s. Grounds 5 and 6 were based on Panini’s alleged reputation in those marks and the allegation that Mr Klinsmann’s use of his mark would take unfair advantage of, or cause detriment to, that reputation.

The Opposition Division found a likelihood of confusion in respect of grounds 1, 2 and 3 and therefore refused the application for all of the contested goods/services and did not proceed to examine the opposition under grounds 5 and 6.

Mr Klinsmann appealed the decision asserting that the marks are dissimilar.

The appeal proceedings

The Board of Appeal found that the respective marks were, as Mr Klinsmann alleged, dissimilar on the basis that Mr Klinsmann’s mark differs from Panini’s marks in that:

• it only consists of a black and white sketch without any contours within the sign itself, which is just black;
• there is a circle around the black sketchy element;
• the silhouette is markedly different in position and direction (the thickest stroke being vertical upwards).

The Board found that “the impression of both marks as a whole is markedly different. There is not even one single ‘element’ that could be singled out from the earlier mark and then be found to ‘match’”. In the absence of any word element, no oral assessment could be performed.

The Board also continued that “the representation of a football player, as a concept, is weak for goods that have to do with football and sports in general. That extends to ‘clothing’ insofar as sportive clothing is covered, and to Class 16 as regards the goods for which the opponent claims an actual use (and reputation), namely stickers of footballers and football books, almanacs or albums”. It found that Mr Klinsmann’s mark would not be perceived unambiguously as a football player, and therefore has no clear concept; as a result there was no conceptual similarity between the marks.

As the Board found that the marks were visually and conceptually dissimilar, it could not find a likelihood of confusion or unfair advantage/detriment. Particularly noteworthy is the fact that, as Panini failed to file adequate proof of use of the mark under ground 6 (which it was requested to do by Mr Klinsmann), the opposition was unfounded in that regard. The same was true for the mark under ground 4.

Commenting on the decision, Harry Rowe, managing associate in the Mathys & Squire trade mark team, said: “As a Tottenham Hotspur fan (Klinsmann being a club legend) and a lover of all things trade marks, this case particularly piqued my interest. The case represents an important example of the narrower scope of protection afforded to figurative marks (as compared to word marks); it shows that one cannot merely rely on slight visual and conceptual similarities for a successful opposition. It also highlights the importance of filing cogent evidence of use (and the need to keep records of such evidence in the event it is required in opposition or cancellation proceedings).” 

A version of this article was published in The Trademark Lawyer magazine in October 2020.

In this article for Intellectual Property Magazine, partner Andrew White discusses how the automotive ‘patent battles’ are heating up in light of the Nokia dispute.

The automotive standards essential patents (SEPs) wars are heating up. The decision of the Mannheim regional court in Germany, which was announced on 18 August 2020, secured a win for Nokia against the Mercedes carmaker Daimler, but many questions still remain. In particular, it is still not clear whether Tier 1 suppliers are required to be the licencees of any relevant SEPs or whether it is the carmakers themselves.

The decision related to only one of 10 connected suits filed by Nokia against Daimler, and the litigation has garnered much attention from other car makers, suppliers and even politicians. While the eye-wateringly high bond of €7bn required by Nokia to obtain an injunction against Daimler is very high, Nokia claims it will help bring Daimler back to the negotiating table. The decision itself also raises questions as to the conduct of the patent holder (Nokia), and it is expected that if Daimler is to appeal the decision, clarification would be sought from the Court of Justice of the European Union (CJEU).

This article was originally published in Intellectual Property Magazine in October 2020 – click here to read the full version (login required).

In this article for The Patent Lawyer, partners Sean Leach and Andrew White lay out a general roadmap to help non-European practitioners navigate the landscape.

Partners Sean Leach, Andrew White and Juliet Redhouse have hosted a webinar on this topic – click here to download a recording.

A patent or patent application in the hands of a third-party, which covers a product which you wish to exploit presents a difficult challenge, and even more so if it is in a foreign jurisdiction. Preliminary qualitative research indicates that, in the US at least, the options to monitor and mitigate risks from European patents are not widely known. All but the most internationally focused US and Chinese attorneys use the European procedures infrequently, and their clients even less so. 

Whether defending patent infringement action, reducing the risk posed by such actions, applying for complete or partial revocation of a patent, or opposing grant of a problem patent in the first place European jurisdictions offer many effective options, which by comparison with similar measures in the US are low-cost, low-risk and procedurally simple. Much can be done anonymously, and there are very good tactical reasons to take advantage of the possibility to remain anonymous.

In addition to these helpful features of the European procedural and legal landscape there are other issues, such as bifurcation in Germany and the losing party’s liability for the other side’s legal costs, which can represent very significant risks in their own right.

The background – patents granted by the EPO

The EPO provides a centralised examination procedure, through which a single application granted by the EPO is turned into a bundle of independent national patents.

Each patent must be dealt with separately after grant in the courts of each relevant national jurisdiction.  Complete revocation of a granted European patent may thus require court proceedings in multiple jurisdictions, each conducted in a different language, under different evidential and procedural standards.

To a third-party to whom a European patent presents a risk, it is thus far better to take action at the EPO when possible. This can be done by filing so called “observations”, or by filing an opposition within a nine month time window after grant to have the patent revoked centrally at the EPO. Both can be done anonymously, which conveys a very significant tactical benefit because arguments can be advanced without constraining the conduct of future proceedings and because a patent proprietor forced to amend by an anonymous opponent cannot know the infringement target which they are aiming to hit.

In EPO proceedings there is no discovery or disclosure obligation on the parties, and only a very limited liability for the other side’s costs.  There is no estoppel, the quality of the decisions is high and the rules of evidence and the standards applied by the EPO mean that outcomes are, by comparison to national proceedings, straightforward, fast and predictable.

1. Before grant: the options to attack an EPO or national application prior to grant in Europe

So-called “third-party observations” can be filed anonymously at the EPO at any point until the patent grants (and can even be filed against PCT applications before they enter the European Regional Phase).

The best time to file third party observations is thus early in examination before minds have been made up, and so the Examiner will be obliged to take them into account (the EPO Guidelines state that if the observations call into question the patentability of the invention in whole or in part, they must be taken into account). Experience suggests that unless the issue of patentability is prima facie clear, the observations may be less effective than one might hope. On the other hand, if the observations are fully substantiated and filed prior to any communication of intended grant, the EPO will normally issue a new office action within three months of their receipt. 

The objections likely to fare best are clear added matter objections and clear novelty objections.  Importantly, in Europe there is generally no presumption of validity. This is significant because a document being cited during prosecution does not mean that a national court will presume that a patent is valid over that document. 

A potential downside to third party observations is that the applicant may amend the patent application so as to strengthen it.  Thus there may be attacks which could be made but which would be much better saved for an Opposition (see below).  However, an applicant responding to anonymous observations does not have any infringement target in mind. It may thus be possible, by carefully calibrated attacks, to shepherd an applicant toward a desirable amendment to clear a product without them ever having been aware of it.

2. Post-grant: the EPO opposition procedure, and its German national equivalent

As noted above, once a European patent application grants, it is converted into national rights, and litigation must be done at a national level at national courts.  This can rapidly become expensive.  One tactic adopted by some is to litigate in a single territory first and use the outcome of that litigating to force mediation/an agreement elsewhere.  However, even adopting such a tactic, costs will be higher. For example, the cost of patent litigation in the English courts (even via the relatively cheaper Intellectual Property Enterprise Court) is typically measured in multiples of hundreds of thousands of pounds with further costs if there is an appeal.

By comparison, the cost of most EPO oppositions is generally less than £100K in all but the most complex cases, and simple cases can be won for far less. At the time of writing this article, an opposition (including detailed professional searches for prior art) could be concluded for about £30K-70K, and takes around two to four years to complete. Normally, first instance proceedings culminate in an in-person hearing at the EPO.  An opposition decision can be appealed, which can add another two to four years and further cost – although appeals can be accelerated.

The EPO issues on average around 2000 opposition decisions a year, and roughly 30% result in the patent being upheld as granted, about 30% result in the patent being revoked, with the remaining 40% resulting in the patent being maintained in amended form.  Therefore, opposition proceedings represent a good prospect of having the scope of a granted patent changed in some form or other.

To take advantage of the Opposition procedure it is of course necessary to be aware of the patent within the nine month Opposition period. Only during this window of opportunity can the patent be challenged centrally at the EPO. It is therefore prudent to search for competitors’ patent applications at the EPO and to monitor their progress. If the Opposition window is missed it cannot be reopened.

3. Post-grant: the options to control risk from national patents after grant and EP patents outside the EPO opposition period

a. UKIPO infringement and validity opinions
If the opposition period has been missed, or if it simply isn’t relevant (e.g. the patent was filed directly in a selected number of European territories) there are still options available to challenge and cast doubt on the validity of granted patents in Europe without costly court proceedings.

In the UK it is possible to obtain an opinion from the UKIPO either relating to the validity of the patent and/or as regards infringement.  Opinions are fast and low cost and can be used to influence the conduct of later proceedings, and may have implications for awards of costs. Opinions can be requested anonymously.

UKIPO validity opinions are limited to issues of novelty and inventive step.  The official fee is around £200 and the request can be filed against any patent or SPC, even if it is no longer in force.  A list of opinions issued last year can be found here.  The patentee is given an opportunity to comment, and the UKIPO will normally issue a validity opinion within three months.  The opinion is non-binding, but the UKIPO can revoke a patent in cases where the patent is clearly invalid. This is rare.  The procedure for obtaining an opinion on validity is relatively new, and to date 90 opinions have been issued, with 43 finding the patent to be invalid.  Only 36 final decisions have been issued, with about half resulting in the patent being amended. In six cases the patent has been revoked. 

Infringement opinions follow similar procedure and are also non-binding, but may serve as a useful negotiation tool to avoid or resolve a potential dispute.

b. Revocation actions in the national courts & before the UKIPO
In the UK, a revocation action can be taken before the UKIPO or the courts (The Intellectual Property Enterprise Court (IPEC) or the High Court (Patents Court)).  The action can be raised on essentially the same grounds as for an EPO opposition.  If action is taken before the UKIPO, a typical timeframe may be between 6 months to a year.  Notably, decisions from the UKIPO can be appealed to the Patents Court.  While a revocation action cannot be filed anonymously, any individual or legal entity can apply for revocation and (unlike e.g. in the US), there is no requirement for any threatened or actual proceedings.

If action is taken before the IPEC or Patents Court, it would probably take around 12 months to go to trial.  Notably an application for revocation can be stayed pending the outcome of any pending EPO opposition proceedings.

The costs of the proceedings will be determined by the complexity of the case but may typically be in the range of £10,000 to £30,000 before the UK IPO, £50,000 to £200,000 before IPEC and £250,000 to £1,000,000 or even higher before the Patents Court.  In English litigation, the losing party generally has to pay the other side’s costs.  While costs are limited before the UKIPO and IPEC (in the IPEC the costs are capped at £50,000), in the Patents Court there is no limit on the award of costs

Whilst the procedure before the courts of each jurisdiction is independent, and courts in different European countries do sometimes reach different conclusions on the same patents, a successful outcome from the court of a major jurisdiction is likely to at least influence proceedings in other territories.

c. Bifurcation and protective briefs in Germany
In Germany validity and infringement are dealt with separately (in so-called bifurcated proceedings). It is thus possible for a patentee to obtain a preliminary injunction very quickly and without any invalidity defence even being considered. 

To defend against this risk a protective brief can be filed pre-emptively at a German court setting out arguments against infringement or validity of the patent concerned. It is only disclosed to the patentee if they apply for a preliminary injunction. The benefit of a protective brief is that it ensures an invalidity defence must be addressed by the patentee and considered by the court before a preliminary injunction can be issued. 

Conclusion

We have had a series of conversations with non-European attorneys to understand their view of European patent risk. The conclusion we drew from those conversations is that the monitoring and watching that most European attorneys do for their clients is not adopted as widely outside Europe as it could be. When faced with a European patent or patent application which presents a risk, forewarned is most certainly forearmed. The EPO opposition procedure is predictable, fast, and low cost. More people should use it. Although such action before the EPO has much to recommend it, there are also a range of options available in national jurisdictions to control risk without launching revocation proceedings as a first resort.

This article was first published in the Sept/Oct 2020 edition of The Patent Lawyer (pp. 76-79).