Mathys & Squire is thrilled to be once again a recommended firm in the latest edition of IAM Patent 1000. Four of our partners were this year singled out as recommended individuals in the firm –  Chris Hamer, Craig Titmus and Martin MacLean.

Will you be attending the 2019 AIPPI World Congress? If so, Mathys & Squire would like to invite you to join us for drinks with a view at our London office in The Shard to celebrate!

AIPPI is the world’s leading international organisation dedicated to the development and improvement of laws for the protection of intellectual property. Based in Switzerland, the organisation has over 9,000 members representing 125 countries and its World Congress meeting open to all members is held annually. The 2019 Congress takes place at the Queen Elizabeth II Centre and Central Hall Westminster from 15-18th September. 

To mark the start of the London Congress, Mathys & Squire’s event will take place on Sunday, September 15th 2019, where you can expect cocktails, canapés, live music, stunning panoramic views of the City and the chance to meet other AIPPI members. 

For more information and to RSVP, click here or contact [email protected].

*N.B. This event is for international delegates only and not UK IP firms or law firms. For more information about this, please contact the Mathys & Squire Marketing team here.

Mathys & Squire will once again be sponsoring and exhibiting at the flagship event for London Tech Week, TechXLR8, which brings together seven of the biggest technology conferences with over 15,000 attendees, 300 exhibitors and 600 speakers.

From 12th-13th June at the ExCeL Centre, London, our team of patent, trade mark and design experts will be based in the Startup Elevate hub at stand S104 ready to discuss all intellectual property related matters including protection, strategy and valuation for startup businesses.

Managing Associate Andrew White will be a judge at the ‘Pitch off’ session on Security and Connectivity from 14:20 – 15:20 on 13th June.

For further details and a copy of the full agenda, click here.

Mathys & Squire LLP has promoted Hazel Ford and Posy Drywood to the partnership. The firm now has 27 partners and 10 offices across the UK and Europe.

Hazel Ford has nearly 20 years’ experience in the patent profession and joined Mathys & Squire from the London office of a leading US IP law firm. She advises clients on all aspects of patent strategy, and handles patent prosecution, EPO opposition and appeal proceedings. She specialises in biotechnology and pharmaceuticals including antibodies, vaccines, genes and proteins, drug formulations and diagnostics. Hazel has a PhD from the University of Cambridge and is qualified as a Chartered and European Patent Attorney and a Patent Attorney Litigator.

Posy joined the chemistry group at Mathys & Squire in 2009. She drafts and prosecutes patent applications for her clients, as well as managing global portfolios on their behalf. Posy is experienced in opposition and appeal proceedings before the European Patent Office, and has coordinated the filing and prosecution of Supplementary Protection Certificates across Europe.  As part of the chemistry group, Posy is particularly familiar with inventions in the fields of pharmaceuticals, oil and gas, batteries and green technology.  Her clients range from large multi-national companies to SMEs and universities. Posy has a master’s degree in natural sciences, specialising in chemistry, from the University of Cambridge.

Commenting on the firm’s new promotions, partner Chris Hamer said: “We are delighted that Posy and Hazel are joining the partnership to augment our high-level skills in their specialist chemistry and biology sectors and to service our clients across these global industries. It has been a very successful year for Mathys & Squire and these promotions highlight the firm’s continued growth and strength in the marketplace, as well as our dedication to nurturing and progressing talented individuals in the business. We wish them the best of luck in their careers as partners in Mathys & Squire!”

For small companies in the medtech space, the most usual exit is to be acquired by a larger corporation. Having seen this process from both sides, through advising a vast number of startups and multi-nationals, I cannot overemphasize how important spending a small amount of time in order to look ahead and get the intellectual property (IP) strategy right at the outset can make a big difference both to the likelihood of a successful acquisition and the sale price.

Following are some top tips on what medtech businesses should do in order to help protect their IP and avoid risks to their inventions.

Think about IP from the outset and start protecting it early on.

If you are successful with your product, potential larger acquirers will want to know:

(a) is it protected, or can it be copied; and
(b) is it free to use or does it infringe someone?  

You cannot patent an invention once it has been disclosed publicly, whether in a press release or to potential investors unless those investors are under a non-disclosure agreement (NDA). You should be aware even of teasers which may not go into full detail but make it public enough to render a later patent application obvious. Therefore, it is important that you apply for patent protection prior to disclosing the technical details of your technology. Be wary of including too much speculative information early on as you may reduce the chances of protecting future advances, which could be considered obvious if you hint towards them in earlier applications.

Check that you can show you own the IP.

This is particularly important when you have research and development collaborations or where tech comes from university research/work with healthcare providers. The default in the UK is that the right to patents or designs is owned by the employer of the inventor(s) or designer(s), although this can be altered by agreement. Make sure it is clear from the outset who will own the IP from any collaborations and ensure this is clearly reflected in the IP clauses in the agreement. 

Some universities have standard procedures for transferring or licensing the IP, whilst it is harder at others. Ensure you know the terms of your contract and your options before entering into any discussions about who owns the IP and how to transfer it out, if necessary.

Know what IP your competitors have and make a plan for dealing with it. 

Third-party IP rights can block you from getting your product to market, lead to potentially lengthy and uncertain litigation, costly settlements or simply make you less attractive to investors. There is a delicate balance as an almost limitless amount of money could be spent searching for and analysing third parties’ IP, whereas doing nothing may result in being surprised by something that really should have been identified before and may have been a simple work-around or might have been effectively neutralised, had it been identified earlier.

Consider third-party observations or oppositions (in Europe) which are much cheaper than litigation or Inter Partes Review (in the US) to help prevent competitors getting IP that may be an issue. Gaining protection which may interfere with competitors’ commercial activities, even if such IP does not directly cover your own, may improve your negotiating position and provide a disincentive for competitors to assert their own IP against you.

Tie in your IP strategy closely to your funding and business plan.

It is not essential to apply for worldwide protection for everything from day one. Work out what you need to protect early on – the key concept is anything you have to disclose publicly to obtain funding – and file a national application with little or no official fees. Defer costs by filing an International PCT application a year later, which puts off the decision on which countries you eventually want to pursue protection in for two and a half years after the initial filing. Include several concepts in one application; you are likely to get an objection that the application relates to multiple inventions but can file divisional or continuation applications later to protect separate concepts, reducing the initial cost of official fees and prosecution.

It is normally quicker and easier to obtain protection for narrower concepts, so if there is a difficult battle and funds are tight, one strategy is to focus on getting something useful protected early on, while ensuring you have basis to protect the broader idea in a divisional or continuation later when you hopefully have more funding. Investors often want to know you have registered IP and showing a few early grants for patents that read directly onto your products can be very helpful.

Aim to achieve good protection in key territories rather than weaker protection everywhere.

Think about the key markets for yourself and your competitors; where your competitors are based and manufacture; and where – normally as a last resort – you would litigate if needed. It would be very unusual to fight litigation in every possible market. The US, Europe – particularly Germany and the UK – and, increasingly China, are normally key territories. But this very much depends on the marketplace and your commercial strategy. 

Beware that IP protection differs throughout the world. For example, there are restrictions on patenting medical methods of treatment or diagnosis in Europe. Although, the devices can be protected as can related methods, as long as they do not involve the actual treatment or diagnosis. Taking a strategic view early on may give you better outcomes.

Don’t overlook registered designs and trade mark protection.

Registered designs are relatively cheap; a few hundred to a few thousand pounds, and fairly quick; a few weeks to a few months to obtain as they do not require substantive examination prior to grant. Designs cover products which are novel in appearance (i.e. design), rather than technical innovations. 

If you have spent time and money getting your product to look right, whether a web/app interface or a hand-held device, then it is normally worthwhile to obtain registered design protection. If you are successful, your brand may become your biggest asset so set your brand strategy early and don’t do things to weaken it.

Finally – a little good strategic advice early is generally much cheaper and more valuable than scrabbling to resolve problems after they have become serious enough to get your attention.

This article was first published in Medtech Insight in May 2019.

In an episode of CUTalks, Mathys & Squire Partners James Pitchford and Craig Titmus speak to Cambridge University Technology and Enterprise Club (CUTEC) hosts about the secrets of good IP management for founders and business owners.

The podcast covers a range of IP management topics, including types of IP; advice about timing; costs associated with IP for international reach; and examples of tech-based scenarios with IP advice.

To listen to the full podcast, please click here.

On 27th March 2019, the IP Tribunal of the Chinese Supreme People’s Court (the CSPC IP Tribunal) handed down its first judgment of an appeal case since its establishment on 1st January 2019: Xiamen Lucas Auto Parts Co., Ltd. (China, hereinafter “Lucas”), Xiamen FuKe Auto Parts Co. Ltd. (China, hereinafter “FuKe”) v. Valeo Systèmes d’Essuyage (France, hereinafter “Valeo”).

Summary

The CSPC IP tribunal, in its very first judgment, explored the relationship between interim judgment and temporary injunction when they coexisted in a trial. The CSPC judges also discussed claim construction and gave guidelines on the criteria on assessing functional and “means-plus-function” features in its role as a national appeal court.

Background

Valeo is a French supplier of car wipers and sued Lucas, FuKe and Chen Shaoqiang to the Shanghai IP Court for infringing its Chinese patent ZL200610160549.2 (Wiper connector of motor vehicle and the corresponding connecting device) by manufacturing and selling three models of car wipers. The Shanghai IP Court acknowledged the infringement and issued an interim judgment on 22nd January 2019, ordering Lucas and FuKe to immediately stop infringing Valeo’s patent rights. Then Lucas and FuKe filed an appeal to the new CSPC IP tribunal.

The appeal

The CSPC IP tribunal accepted the appeal case on 15th February 2019 and held the public hearing on 27th March 2019. The panel of five judges maintained the interim judgment of the Shanghai IP Court and the judgment was pronounced in court.

Fig.1 and Fig.3 of Valeo’s Chinese patent ZL200610160549.2

Claim construction

The first core issue discussed in court was whether the alleged infringing products would fall within the scope of claim 1 of Valeo’s patent. In particular, three technical features of claim 1 were analysed by the CSPC judges:

1) Claim 1 recites “a connector (42) of a wiper for securing a connection and articulation between a wiper arm (22) and a component (40) of a wiper blade (24)” (feature 1). Lucas and FuKe claimed that the wiper arm and a component of wiper blade of the alleged infringing products were not directly connected and articulated as recited in claim 1. The CSPC judges disagreed with them and stated that claims and terminologies should be interpreted, from a skilled person’s point of view, based on claims in combination with the description and drawings and cannot be interpreted in isolation, because according to Article 59 of Patent Law of the People’s Republic of China “For the patent right of an invention or a utility model, the scope of protection shall be confined to what is claimed, and the written description and the drawings attached may be used to explain what is claimed”. Firstly, feature 1 itself didn’t exclude indirect connection of the wiper arm and wiper blade, and secondly, paragraphs [0043] and [0044] of the specification and Figs. 1 and 3 show that the wiper arm and the connector were connected, and the connector and a component of the wiper blade were articulated, therefore the connector secured the connection and articulation of the wiper arm and a component of the wiper blade, which means that skilled person would understand that feature 1 didn’t require direct contact of the wiper arm and a component of a wiper blade. Therefore, feature 1 could read onto the alleged infringing products.

2) Whether the alleged infringing products include feature 2 “at least one elastically deformable member (60) – the member (60) locking the connector (42) at an embedded position at the front end (32) of the wiper arm (22)”. Lucas and FuKe argued that the elastic member of the alleged infringing products can only “fix” rather than “lock” the connector. Again, the judges restated that the skilled person reading the original disclosure (the description, claims and drawings), would understand that “locking” in claim 1 does not mean tight “locking” but only “fixing” or “locking to a certain extent” in the context that Valeo’s patent aimed to address a technical problem of accidental disengagement of the connector. The three alleged infringing products all comprise elastic members which are configured to fix the connector or lock the connector to a certain extent at an embedded position at the front end of the wiper arm. Feature 2 thus could also read onto the alleged infringing products.

3) Whether feature 3 “in the closed position, the safety fastener (74) extends toward the locking member (60) for preventing elastic deformation of the locking member (60) and locking the connector (42)” was a “”means-plus-function” feature or not. The CSPC judges overruled the Shanghai IP court’s interpretation of feature 3 as a means-plus-function feature and investigated the boundary of identifying a functional feature. According to Articles 8 of CSPC’s Interpretation (II) of Several Issues concerning the Application of Law in the Patent Infringement Dispute Cases, that if a certain technical feature has defined or implied specific structures, components, steps, conditions or the relationships of a technical solution, even if the technical feature also defines its function or effect, in principle it is not a means-plus-function feature.

In the present case, the judges clarified that feature 3 described the position relationship between the safety fastener and the locking member and also implied a special structure – “the safety fastener extends toward the locking member”. Therefore, feature 3 further contributed position and structural limitations (also seen at paragraphs [0056] of the description) and thus is not to be interpreted as a means-plus-function feature, and its positional, structural and functional limitations should all be considered when the features are compared for infringement analysis.

The judges then found that three models of car wipers had equivalent positional/structural/functional features as feature 3, and again feature 3 could also read onto the alleged infringing car wipers.

In conclusion, the three alleged infringing products therefore fell within the scope of claims 1 of Valeo’s patent.

The interim judgment and the temporary injunction

The second core issue was how to deal with the temporary injunction request in the second instance.

In the first instance, Valeo requested a temporary injunction to stop the defendants from continuing alleged infringing activities. However, the appeal was filed shortly after Shanghai IP Court issued the interim judgment, leaving the temporary injunction request undealt with.

In the second instance, the temporary injunction request was transferred to the CSPC IP tribunal. When dealing with the temporary injunction request in light of the first-instance interim judgment, the CSPC judges applied a special test to see if there would be any urgent damage made to Valeo and if yes, whether the CSPC IP tribunal would be able to make a final decision when the temporary injunction was being processed. In this case, the evidence submitted by Valeo was not sufficient to approve the urgency of damage, and in view of the fact that the judgment was pronounced in court, Valeo’s temporary injunction request was therefore not supported by the CSPC IP tribunal.

An “Innovative” hearing

The CSPC IP tribunal’s first public hearing emphasises the concept of “protecting innovations in an innovative way”:

1) As mentioned at the beginning of this article, this is the first judgment of the CSPC IP tribunal, which was established to handle appeals decided by Chinese Intermediate People’s courts or IP Courts in invention patent cases as well as other highly technical IP cases. Such a national appeal court will unify the criteria of IP trials, help prevent inconsistency of legal application and improve the quality and efficiency of trials.

2) The CSPC IP tribunal, for the first time, explores the relationship between the interim judgment system and the temporary injunction system, and clarifies the conditions when the two systems coexist.

3) The CSPC IP tribunal closed the whole case within an impressive 50 days, from case acceptance to decision delivery. The speedy second-instance decision enabled Shanghai IP court, which made the interim judgment to simplify a complicated first-instance trial, to continue the rest of the trial in good time.

4) The judgment of the CSPC IP tribunal explained in detail the rules for identifying a functional feature and a means-plus-function feature, which is particularly relevant because means-plus-function features are typically interpreted quite narrowly. This decision, encouragingly, interprets the feature of the locking member in a manner such that it is not restrictively interpreted as a means-plus-function feature, perhaps opening the way to more functional claim language being interpreted in such a way in China.

5) Various different forms of technical support were used during the hearing. For example, Augmented Reality (AR) technology was used to display evidence, speech recognition was used to generate transcripts, and a QR code was provided for downloading the decision.

Continuing…

On 23rd, April 2019, the CSPC IP tribunal’s held a public hearing of the first administrative case: appellant Baidu, Inc., Sogou, Inc. and the appellee State Intellectual Property Office Patent Re-examination Board. Due to the complexity of the case, the court did not pronounce a judgment in court. However, we will continue to watch this case and future decisions made by the CSPC IP tribunal.

Mathys & Squire and Food Tech Matters will be co-hosting a VIP pre-launch party to Food Tech Matters 2019. 

Food Tech Matters is a meet-up between the best food tech startups from all over the globe, corporates, accelerators and leading food tech investors who attend not only to hear about the latest food tech trends and developments from the experts, but to forge strategic partnerships to accelerate these breakthrough technologies. The event will be held from 25th – 26th June 2019 at The Crystal, London. 

As the official IP partner, Mathys & Squire will co-host the VIP pre-launch party at our London office in The Shard. Below are the details:

When: Tuesday, June 18th 2019

Time: 18:00 – 21:00

Where: Mathys & Squire, The Shard, 32 London Bridge Street, SE1 9SG

*Please remember to bring photo ID to enter The Shard

If you’re interested in attending the event, please email the Mathys & Squire Marketing Team by Friday, June 14th 2019.

Disruptive technology can often be viewed as a threat to the status quo in a long established value chain. This is no surprise when there are numerous examples of value chains that have been broken by disruptive technologies.  Consider the impact that online shopping has had on our traditional high street value chain, or how software/mobile/maps have impacted the taxi and automotive value chains.

Disruption is often considered in terms of specific businesses within the value chain, rather than the impact this has on businesses lower or higher in the chain, and this includes the customers and suppliers.

If companies within the value chain consider the impact on their suppliers and customers, then it becomes possible to start offering solutions which adopt the disruptive technology and take full advantage of the wider commercial benefits. This will, in most cases, move some of the existing boundaries between customers and suppliers up or down the chain, but will sustain the chain in some revised form. This then limits the opportunity for new entrants to break the chain completely.

A key requirement for the active defence of the value chain is the awareness of the disruptive technology, an assessment of the impact and the options to take full advantage within the chain, with strong customer-supplier relationships being an important enabler.

Disruption comes from innovation and that innovation will be protected by patents to capture the rights ahead of adoption where possible. Therefore, patent portfolios indicate the ‘health’ of a value chain to withstand disruption whereas an ‘unhealthy’ patent portfolio will be inward looking and linked to the existing chain.

Healthy portfolios contain patents related to disruptive technology with a view to exploiting those inventions in order to sustain the existing value chain against outside threats. This can be supplemented by in-house R&D departments within the chain seeking to acquire patents and other IP rights through acquisitions, investment funding and joint ventures.

Those value chains considered ‘ripe’ for disruption are often the older well-established chains which in many cases do not view R&D as a central part of their business activity or have a short-term focus.  CEOs often read about AI and robotics and think they does not apply to their business, yet they need to ask the question: ‘Will it affect my customers and suppliers?’. If the answer is yes, then this represents an opportunity to offer solutions to those customers and suppliers that moves the boundaries in favour of the company promoting those solutions within the chain.

Mathys & Squire offers patent portfolio ‘health’ checks to indicate the resilience to disruption and the opportunity for innovation to grow the business within the value chain. Get in touch with a member of our team to find out more.

Mathys & Squire will be at this year’s INTA annual meeting in Boston, from 18th – 22nd May. Our team will be available to discuss all things trade marks, patents and designs, as well as IP strategy and valuation. Please feel free to contact them through their profiles to schedule a meeting.

The INTA Annual Meeting is the largest and most influential gathering of brand owners and intellectual property (IP) professionals from around the world and from across industries. The 141st Annual Meeting in Boston, Massachusetts, will leave you with critical insights, best practices, and knowledge about new market trends to drive your organization forward—as well as with vital connections that will enhance your professional and personal life.

Our INTA team comprising of Gary Johnston, Margaret Arnott, Rebecca Tew and Laura West will be present and are excited to meet new faces.

Please feel free to contact our marketing team on [email protected] if you require more information.