In a surprise move, the representatives acting on behalf of UC Berkley defending CRISPR patents in appeal proceedings before the EPO have withdrawn their approval of the texts of the patents thereby revoking them and bringing the appeal proceedings to an end. When doing so, the representatives justified the withdrawal referencing “serious procedural concerns” arising from the Board of Appeal handling of appeal T2229/19, a decision Mathys & Squire are seeking to reverse through an application for Petition for Review.
In T2229/19 a Board held as inadmissible a request to delete two dependent claims solely on the grounds that although the deletion would have addressed all the objections considered so far, the deletion would not prima facie overcome the Board’s preliminary opinion on a different, yet to be discussed issue, namely sufficiency of disclosure.
In the CRISPR appeal, UC Berkely’s representatives concluded that given that the chairperson and rapporteur in their appeal were also members of the Board in T2229/19, the risk that the Board would adopt a similar approach in their appeal was such that the Patentees could not “be expected to expose the Nobel-prize winning invention protected by the … patent[s] to the repercussions of a decision handed down under such circumstances, when other members [of the patent family were] still at a stage where the Patentees [could] ensure that they [would] ultimately be fully heard on all substantive issues.”
It is highly unusual for a patentee to withdraw their approval of the text of a patent during appeal proceedings and accompany such a withdrawal with an expansive statement as to why a patent is valid and why the patentees have concerns about the expected handling of a case by a Board of Appeal.
It could well be that UC Berkley were merely providing cover for a withdrawal which will significantly delay the EPO making a final ruling on the validity of a patent. Certainly, that was the view of the representatives of the opponents who described the withdrawal as “a transparent move to avoid any possibility of an adverse decision” which they claimed was “justified by a (spurious and hypothetical) concern about the future conduct of the Board.”
However, if UC Berkley’s concerns are to be taken at face value, they raise serious questions about the EPO Boards of Appeal and in particular the Rules of Procedure which were introduced in 2020.
Those Rules of Procedure sought to emphasise that EPO Appeals should be restricted to a review of the proceedings at first instance and reduce the extent to which new matters might be raised on appeal. However, it is evident, that in some areas this has led to inconsistencies in approach. In our Petition for Review we noted that two distinct approaches [1] to the deletion of dependent claims during appeal proceedings (neither of which had been followed by the Board in that case) had arisen.
UC Berkely noted that our Petition for Review against T2229/19 could be pending for quite some time. Although the Petition for Review procedure was intended to be as simple and short as possible and prior to 2020, Petitions for Review were typically resolved in around 10 months, evidently that is no longer the case as was clearly demonstrated with the four-and-a-half year time period taken to resolve the Petition for Review in R1/20 which was finally resolved in July this year.
In the meantime, even though a Petition for Review is pending against it, T2229/19 serves as a potential precedent to be followed in other EPO Appeals and indeed recently another EPO Board of Appeal in T172/22 referred to T2229/19 as a precedent for refusing to allow claims to be deleted during appeal proceedings.
When Board of Appeal decisions result in the filing of Petitions for Review and cause the withdrawal of high-profile appeals, the apparent inability of the EPO to rule on such Petitions in a timely manner is very concerning.
[1] T1480/16 vs T1224/15
We are delighted to announce that Mathys & Squire has upheld its position in the 2025 edition of The Legal 500 for both PATMA: Patent Attorneys and PATMA: Trade Mark Attorneys categories.
Patent Partners Chris Hamer, Alan MacDougall, Martin MacLean, Jane Clark, Paul Cozens, Dani Kramer, Philippa Griffin, James Wilding, Sean Leach, James Pitchford, as well as Alexander Robinson, Peter Arch, Laura Clews, who are newly ranked, are all featured in the 2025 edition of the directory.
Mathys & Squire’s trade mark team has also received recognition in the directory. From our trade mark practice, Partners Margaret Arnott, Rebecca Tew and Gary Johnston, and Helen Cawley who is listed, and Managing Associate Harry Rowe, have been ranked.
The firm received glowing testimonials for its patent and trade mark practices:
”M&S have a very deep technical and legal experience that covers areas very relevant for green carbon sequestration technologies. They also have representation in key markets in Germany and the UK, which makes it very relevant. The team work very well together and drafted in a quick time period our patent application.”
”M&S team of IP experts provides unparalleled knowledge and experience in all areas of intellectual property, including patents, trademarks, design protection, and litigation. The firm’s versatile team of attorneys, scientists, and strategists possesses deep experience navigating complex IP landscapes for high-growth, technology-driven industries.”
”The Mathys & Squire team have been excellent in providing focused and pertinent advice on tricky issues and have shown considerable technical and commercial ability in fintech patent issues.”
”From my first call till today, I have seen a kind and professional approach from Mathys & Squire. Despite my language barriers, their patience and understanding makes me feel comfortable and confident through the communication process. I have worked on two patent applications with them in the last year.”
“The entire team at Mathys & Squire is very professional, welcoming and very patient. We pose some difficult issues sometimes and we always get a prompt, detailed response which enables us to take a final decision with the client. We are very pleased both professionally and administratively.”
“I’ve worked with Mathys & Squire for the last 15 years. They mostly deal with our patent work and some design registration. I’m impressed with the way they deal with all our patent office issues. On a personal level, they are easy to work with and, when we write new patents, they make the process straightforward and painless.”
“I have not found any scientific area of focus where [the] team aren’t comfortable. The Mathys & Squire team do excellent legal work for us and are always on the lookout for information that will help further our understanding of European legal issues.”
”Paul Cozens demonstrates a masterful grasp of the subject area and is solution driven to problem solving.”
”Alan MacDougall has been my trusted business partner for more than 10 years. Alan is diligent person who provides helpful, accurate, and timely answers to questions that are unclear for us. Alan has a wealth of knowledge and experience in the intellectual property field and his useful and appropriate advices has always been of great help to us. We look forward to working with him to further expand our business.”
“If intellectual property is or could be important to your business, and you want to be assured of the best possible advice, then look no further than Mathys & Squire and Dani Kramer in particular, you will be hard pressed to find any better.”
”Sean Leach is technically and legally competent, approachable and responsive.”
“The trade mark team is supportive, available, and interested in supporting the business to grow.”
”Gary Johnston has oodles of experience and is sensible and commercial.’
”Harry Rowe is fantastic and really helps us to secure trade marks and to pursue other IP protections. Harry has integrity and is genuinely interested in our business, which is a tech-start with ambition for global growth and societal change. He gets the importance of the latter also. He helps us to map a pathway forward to support our business to grow.”
”Harry Rowe has excellent communication skills, often having to translate complicated legal agreements for me in a way that I will understand them. He makes sure to get a very clear understanding of what’s unique about our business and can think laterally to identify issues that might become an issue for us in the future.”
For full details of our rankings in The Legal 500 2025 guide, please click here.
We extend our gratitude to all our clients and connections who participated in the research, and we extend our congratulations to our individual attorneys who have earned rankings in this year’s guide.
Managing IP have released their guide for the 2024 IP Rising Stars, which recognises the best up-and-coming practitioners across several IP areas and more than 50 jurisdictions. Each year, the research analysts obtain information through firm submissions, research data and feedback to identify the IP Rising Stars.
We are delighted to announce that Partners Edd Cavanna and Max Thoma and Managing Associate Harry Rowe have been named as 2024 IP Rising Stars.
Alongside IP STARS, Managing IP annually identifies professionals who have demonstrated excellent practice on behalf of their firm, making it a commendable award.
For more information on the Mathys & Squire rankings, visit the IP Stars website here.
Partner Nicholas Fox has been featured in the ‘’This is a big problem’: The CRISPR controversy and the ‘mess’ at the heart of the EPO’s appeals boards’’ article by Sarah Speight published by WIPR and LSIPR discussing a request by CRISPR scientists to withdraw their patents over allegations of mishandling by the EPO’s Board of Appeals has thrust a ‘’fundamentally unfair, uncertain system’ into sharp focus.
Here is a short extract from the articles:
‘’…It’s seriously unusual for one set of patent attorneys in another set of proceedings to refer to another case in the way that they have done,” says Mathys & Squire partner Nicholas Fox, who filed the Ipsen complaint…
….”The fundamental issue here is discretion,” he adds. “It’s the discretion of the board, and it’s causing [problems], particularly for amendments or later amendments’’…
This article was first written for and published in WIPR and LSIPR on 27 September 2024. Please visit WIPR and LSIPR to read the full articles.
The UK remains highly ranked in terms of global innovation, but is the UK’s science and technology scene missing a trick when it comes to optimizing value for their innovations through international patent protection?
The World Intellectual Property Organization (WIPO) recently published the 2024 edition of its annual report of the Global Innovation Index, ranking world economies on various metrics considered pertinent to fostering innovation. Although the UK was overtaken by Singapore in this year’s edition, it remains highly innovative at a respectably 5th overall rank. Switzerland, Sweden and the United States maintain their top three overall ranks of the 2023 edition.
A recent report by the Chartered Institute of Patent Attorneys (CIPA), based on the 2023 edition of the Global Innovation Index, has however highlighted the UK’s relatively lower ranking on metrics related to international patenting activities. The UK ranks 19th and 20th in the number of multi-jurisdictional patent family filings and in the number of PCT application filings, adjusted for purchasing power parity GDP, respectively. This is well below the economies ranked higher overall in the Global Innovation Index (i.e. Switzerland, Sweden, the United States and Singapore), and is also behind comparable economies such as Germany, France, the Netherland, South Korea or Japan.
The benefits of geographical diversification over a patent strategy focussing only on a single country can be significant. Protection in several key jurisdictions allows increased value to be derived from a patent portfolio, be it in the form of a competitive edge in a larger overall market or in the form of increased revenue obtained by licensing patent rights across different regions. Competitors are deterred more effectively from challenging a patent in view of the increased potential costs and legal risks of multi-jurisdictional litigation. In addition, investors may place increasing value on multi-jurisdictional patent families, thus elevating the valuation of a business.
Why British businesses, despite their high capacity for innovation, pursue international patent protection at a lower rate than businesses in competitive economies remains an open question. CIPA’s analysis shows that the lower number of overseas filings by UK applicants may well be attributed to lower rates of filing at the European Patent Office (EPO) and in China. Given that EPO member states and China make up a significant proportion of British export markets, these lower rates of filings are surprising.
Ultimately, the number of jurisdictions in which to pursue patent protection remains a business decision. While it is not pragmatic in most technology areas to file in tens of jurisdictions, a focus on several key jurisdictions may elevate the value derived from innovation and ensure that business interests are well protected in an increasingly globalized economy.
An article by Partner Andrew White and Associate Jessie Harrison has been published in IAM Magazine giving insight on why the UK patent system needs an overhaul to better accommodate AI-related innovations and foster a more conducive environment for technological progress.
Artificial Intelligence (AI) is driving innovation across a host of industries, from healthcare and finance to transportation and entertainment. However, the UK’s patent system seems to be struggling to keep pace with these rapid advancements. As the innovation landscape changes, this article will explore why the UK patent system requires an overhaul to better accommodate AI-related innovations and promote a more conducive environment for technological advancement.
The global artificial intelligence market size is expected to grow twentyfold between 2021 and 2030, from about USD 100 billion in 2021 to nearly USD 2,000 billion in 2030 (Statista 2023). In order to position the UK as a global centre for AI and data-driven innovation, it is important to ensure that the UK can provide the best environment for developing and commercialising AI technologies.
This article, first written for and published in IAM Magazine on 31 August 2024, considers the current ambiguity in UK patent law and its competitive disadvantage from a global perspective. To read the full article, click here.
Commentary by Partner Nicholas Fox has been featured in Law360, Global Legal Post, World Intellectual Property Review, Managing Intellectual Property, Commercial Dispute Resolution, Solicitors Journal, discussing the Unified Patent Court’s (UPC) decision to grant Mathys & Squire’s access to evidence in a Unified Patent Court case between Astellas and Healios.
Read the extended press release below.
Background
Mathys & Squire, the intellectual property law firm, had brought a test case to try and improve the transparency of the operations of the UPC. Previously commented on the following articles:
- Mathys & Squire files UPC test case in support of open justice
- Court hearing on public access to evidence in Unified Patent Court to be held in February 2024
- UPC Court of Appeal interprets law narrowly in transparency test case
- A further blow to transparency at the UPC?
- UPC releases pleadings to the public, but questions remain
- Update on Mathys & Squire test case in support of open justice
- Are written proceedings before the UPC truly public? A tale of three access requests
In recent decisions the UPC had been restricting the access of third parties to pleadings and evidence in UPC cases that should have been accessible on request.
The principles of openness and transparency in Court proceedings and the rights of third parties to access public documents are well established principles in International and European law.
The UPC is a new court system (just over a year old) which will have the power to enforce patents across much of the European Union.
Comments from Nicholas Fox, Partner at Intellectual Property Law firm Mathys & Squire: “We are delighted that the Unified Patent Court has finally granted our request to access the pleadings in this case.”
“However, the way in which our request has been processed still raises significant concerns about the UPC commitment to transparency and open justice.”
“It has taken more than 8 months for the court to process our request. The exceptionally slow processing of the request has delayed our access until after the underlying case was settled.”
“The Judge-Rapporteur has previously stated an intent that the access request would be processed “expeditiously” as soon as an appeal relating to another document access request had been concluded. Those appeal proceedings concluded on 10 April and yet the Court has taken more than 4 months to process our application and issue a decision granting our access request.”
“So far, the UPC has yet to grant access to written pleadings and evidence in a case prior to an underlying matter being concluded.”
The European leg of ‘TAYLOR SWIFT THE ERAS TOUR’ has concluded, leaving fans ‘Enchanted’ as Taylor Swift continues her 152-date global tour, breaking records along the way. She surpassed Michael Jackson’s record for the most performances at Wembley by an international artist during a single tour, with eight nights at the iconic venue. In the UK alone, Swift performed to nearly 1.2 million fans, contributing an estimated £1 billion to the nation’s economy. The singer-songwriter is undoubtedly a huge success and has managed to build on her creative talents to establish a global brand. In the highly competitive and ever-evolving landscape of the music and entertainment industry, Intellectual Property is a crucial asset for artists and Taylor is definitely not ‘Fearless’ when it comes to protecting her IP.
Brand recognition on this scale requires consistent promotion and exposure with the risk that creative works and unique elements are easily accessed and reproduced. To protect her interests, Taylor Swift has registered numerous trade marks at the UKIPO (and internationally), including her name ‘TAYLOR SWIFT’, her fan base ‘SWIFTIES’, albums such as ‘FOLKLORE ALBUM’ and iconic song lyrics such as ‘CAN YOU JUST NOT STEP ON OUR GOWNS’. All of these are synonymous with the distinctive brand, image, and musical style that her SWIFTIES love and the artist’s foresight in securing registered protection has allowed her to promote and commercialise her brand with the assurance that legal protection is in place. All vital for building a loyal fan base and creating long-term success.
Trade marks can be licensed or franchised, creating additional revenue streams which in this case have proven very valuable. Merchandising is a significant income source in the entertainment industry and by having her song lyrics and phrases registered as trade marks, Taylor is able to control any merchandise associated with her brand. When fans purchase products bearing the trade marks of their favourite artists or bands, they contribute to the overall revenue generated beyond just music sales and concert tickets. Forbes reported that the Eras Tour merchandise generated $200 million in 2023. Just in case you were thinking about using ‘TAYLOR SWIFT THE ERAS TOUR’ to create any merch, it is already protected and has been with effect from April 2023, before the tour was announced. Establishing rights ahead of launch or promotion has maintained a competitive edge and provided Taylor’s people with the tools they need to address any early, unauthorised attempts to profit from the tour. This strategy is one that other artists and online creators can use to protect their popularity and success, particularly in a world where songs and catch phrases can quickly go viral and be widely adopted.
Taylor has also had to manage challenges with the laws of Copyright following her move in November 2018 to a new record label.
In the UK, copyright is governed by the Copyright, Designs and Patents Act 1988, which safeguards original works such as literary, dramatic, musical, and artistic creations, including sound recordings. The US equivalent, the Copyright Act of 1976, protects ‘original works of authorship’ that are fixed in a tangible medium of expression. This includes literary, musical, dramatic, and artistic works, as well as sound recordings. The copyright for a musical track can be divided into two parts: the musical composition, which includes the lyrics and melody and is typically controlled by the artist, songwriter, or composer, and the sound recording, often referred to as “the master” which is generally managed by the record label. This division can lead to conflicting interests, as record labels and managers involved in the recording process seek to profit from their share of the copyright royalties.
For Taylor Swift, this meant that while she owned the copyright to the musical compositions of her albums, the masters for her first six studio albums were held by her then record label, Big Machine Records. This ownership gave the label control over her ability to perform her original music and allowed them to continue profiting from licensing these songs for use in television and film. Following her split with the label, Swift’s highly publicised dispute with Big Machine Records brought significant media attention to the issue, underscoring important aspects of copyright law in the music industry.
Taylor Swift’s, decision to re-record her earlier albums and brand them as ‘TAYLOR’S VERSION’ has been a strategic and well-advised move, allowing her to avoid copyright issues with the original sound recordings and reclaim control over her master’s and music licensing. Additionally, the name and registered trade mark of the re-recordings, ‘TAYLOR’S VERSION’, has become a powerful marketing tool, gaining widespread recognition and appearing on merchandise, promotional campaigns, and even featured on the Transport for London map during her tour!
Taylor’s fans were easily convinced to purchase and stream only ‘TAYLOR’S VERSION’ of their favourite tracks whilst the surrounding publicity raised the artist’s profile even further and has no doubt boosted her already huge fan base.
Adding to her record-breaking achievements, ‘Fearless (Taylor’s Version)’ was Taylor’s first re-recorded album and the first re-recorded album to ever reach No. 1 on the Billboard charts. According to Billboard, ‘Fearless (Taylor’s Version)’ has earned 1.81 million equivalent album units, while the original version of Fearless has earned 535,000 equivalent album units. Since its release, Fearless (Taylor’s Version) has earned more than 3 times as many units as the original. Since the release of ‘Red (Taylor’s Version)’, another chart topper, the re-recording has earned 3.32 million equivalent album units, compared to 390,000 units for the original ‘Red’ album. Contributing to the impressive album unit totals for the two previously re-recorded albums, ‘Fearless (Taylor’s Version)’ has accumulated 1.47 billion on-demand song streams since its release, compared to the 680.39 million streams for the original ‘Fearless’ in the same timeframe. Similarly, since its release in November 2021, ‘Red (Taylor’s Version)’ has achieved 2.86 billion on-demand song streams, while the original ‘Red’ has earned 476.48 million. Although the original albums still receive millions of streams, ‘TAYLORS VERSION’ has significantly surpassed them, redirecting the associated royalties.
Key takeaways:
Taylor Swift’s IP strategy has significantly strengthened her brand, provided robust legal protection, and created lucrative commercial opportunities. Her copyright dispute has highlighted the often-restrictive nature of contracts for emerging artists and the importance of IP awareness in considering any commercial arrangement. Swift has shown current and emerging artists how effectively managing intellectual property can be a powerful marketing tool, helping to differentiate themselves and protect their achievements. By registering trade marks for her name, signatures, tours, fanbase and lyrics (Taylor has over 500 registrations internationally, the earliest dating back 17 years to 2007), reclaiming control of her masters through ‘TAYLOR’S VERSION’, she illustrates how effective IP management can drive long-term success in the competitive music industry while safeguarding her brand and ‘REPUTATION’ from unauthorised use. In the end, Taylor Swift’s relationship with IP has indeed turned out to be a ‘Love Story’.
Mathys & Squire Partner Nicholas Fox has been prominently featured in a recent article by the Solicitors Journal, which discusses the Unified Patent Court’s (UPC) decision to grant the firm access to crucial evidence in a patent dispute between Astellas and Healios. The article highlights Mathys & Squire’s significant role in challenging the court’s approach to transparency, as the firm sought access to documents that were initially restricted by the UPC.
In his comments, Nicholas Fox expressed mixed feelings about the court’s decision. On the one hand, he acknowledged the positive outcome of finally gaining access to the requested documents, which marks a step forward in promoting transparency within the newly established UPC system. He states that this victory reflects Mathys & Squire’s commitment to enhancing openness in the judicial process, particularly in the context of the UPC, which has only been operational for just over a year and is still refining its procedures. However, Fox also voiced serious concerns regarding how the UPC handled the access request.
He emphasised the considerable delay in processing the request, noting that it took more than eight months for the court to grant access which resulted in the case being settled shortly before the access request was finally granted.” This delay, according to Fox, undermined the value of the access granted, as it prevented third parties from monitoring the case in real-time.
To read the full article click here.
Mathys & Squire Managing Associate Harry Rowe was recently featured in ‘’Claiming X: lessons from the controversial rebrand that cost Twitter $3.2 billion in brand value ‘’ article by World Trademark Review (WTR) and provided commentary on how the company’s trademark protection strategy looks a year on.
Harry Rowe says: ’’…Trademark examiners at the EUIPO have, in recent years, adopted a stricter approach regarding the level of distinctiveness required for a trademark to be registrable…’’
This comment was first written for and published in WTR on 24 July 2024, to read the full article click here.
