Inside IPAutumn/Winter 2018Venner Shipley’s Intellectual Property Magazine

European Patent Office publishes new Guidelines on the patentability of Artificial Intelligence and Machine Learning

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European Intellectual Property Attorneys

Patenting the Internet of Things PAGE 25

New EU Trade Mark Directive PAGE 17

The 2019 AIPPI World Congress is coming to London! PAGE 28

What’s inside?Page 1 Patenting Artificial IntelligenceFollowing its widely attended “Patenting Artificial Intelligence” conference in May this year, the European Patent Office has published new Guidelines on the patentability of Artificial Intelligence and Machine Learning. In this article Richard Kennedy and Peter Thorniley take a look at the patentability criteria for AI/ML inventions in the light of this new guidance.

Page 4 CJEU clarifies the scope of the ‘Specific Mechanisms’ in case C-681/16 Pfizer v OrifarmSince 2004, 13 additional Member States have joined the European Union. As part of the expansion of its membership, the EU has had to deal with the situation where new Member States may not have offered the same level of patent or Supplementary Protection Certificate protection for pharmaceutical products prior to their joining, Ruth Shelton explains.

Page 5 Is it the end of the ICE age?Jack Rogan discusses whether we are coming to the end of the "Internal Combustion Engine" age.

Page 8 Trade mark protection for a growing cannabis marketJulia McFarlane examines the fast changing, and potentially lucrative, cannabis market and seeks to discover if brand protection is becoming increasingly important for cannabis marks and products.

Page 11 Yes, it’s German, but is it Scotch?David Birchall looks at Scotch whisky trade marks, and how so many begin with GLEN.

Page 13 CERN: the Large Hadron ColliderIn September 2018, the Large Hadron Collider at CERN marked its 10th anniversary. Kathryn Rose discusses this milestone for CERN, and looks how its open science policy can sometimes be conflicted with the commercialisation of its IP.

Page 15 Updates to the EPO GuidelinesEvery year the EPO updates the Guidelines to not only reflect changes in the law, including important case law decisions, but also changes to the EPO’s internal practice. The latest revisions have now been announced by the EPO, and came into effect on 1 November 2018, Catrin Petty provides an overview.

Page 17 New EU Trade Mark DirectiveYoann Fouquet provides an update on the new EU Trade Mark Directive. The Directive is aimed at harmonising the trade mark laws of EU Member States, who have until 14 January 2019 to transpose its provisions into their national laws.

Page 19 Trade mark specificationsTwo recent decisions in the UK High Court by the same Judge, have considered similar questions concerning registered trade mark specifications in the UK and the EU. Camilla Sexton discusses the cases.

Page 22 Venner Shipley news

Page 23 European Patent Office newsMatt Handley provides an update on the new EPO president. António Campinos has now taken office having been elected to succeed Benoît Battistelli by the Administrative Council of the European Patent Organisation, the EPO's legislative body, for a five-year term.

Page 25 Patenting the Internet of ThingsAs the Internet of Things revolution gathers pace, Rob Cork takes a look at the challenges that are likely to face applicants seeking to protect new IoT-related inventions.

Page 28 2019 AIPPI World Congress is coming to London!

Page 29 One year on – the impact of Actavis v Eli Lilly in the UK courtsDavid Pountney looks at the Actavis v Eli Lilly case and how it fundamentally changed the UK’s approach to the scope of protection of patent claims and infringement by equivalents.

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A word from the editorWhen I was growing up, Artificial Intelligence (AI) featured in things like science fiction films or documentaries about future life. Nowadays, AI and Machine Learning (ML) are becoming an increasingly normal part of everyday life, with AI/ML inventions powering many devices and technologies that we take for granted. We at Venner Shipley have a very strong AI/ML team, and we handle a large number of cases in this field. Richard Kennedy and Peter Thorniley both have vast experience in this area, and they provide an in-depth look at the issue of patenting AI/ML inventions at the EPO on pages 1 to 3.

On a similar EPO theme, Catrin Petty discusses some important updates to the EPO Guidelines on pages 15 and 16 and Matt Handley has a review of some developments at the EPO, including the election of a new president, on page 23. In addition, Ruth Shelton discusses some important issues relating to SPCs on page 4.

Like AI/ML, the Internet of Things (IoT) is another technology area that has seen a significant increase of patent activity over the last few years. Rob Cork runs through some of the challenges in protecting IoT inventions on pages 25 to 27.

The internal combustion engine (ICE) has been around for a long time, but are we at the end of the ICE age? Jack Rogan provides a detailed discussion of this on pages 5 to 7.

Regarding trade marks, we have a number of interesting articles in this issue. Julia McFarlane provides some analysis and discussion on the issues of protecting trade marks for cannabis related goods on pages 8 to 10. David Birchall discusses some issues relating to trade marks for whisky on pages 11 and 12. Also, Yoann Fouquet discusses the implications of the new EU Trade Mark Directive on pages 17 and 18, and Camilla Sexton discusses the implications of two recent UK High Court decisions on trade mark specifications on pages 19 to 21.

On a final note, as mentioned on page 28, the 2019 AIPPI World Congress is taking place in London and Venner Shipley is hosting a drinks reception. Please let us know if you would like more information.

About Venner Shipley:Venner Shipley is a leading firm of European patent and trade mark attorneys and lawyers, representing a broad range of clients including major domestic and international corporations, SMEs, universities and individual inventors.

We are ranked among the best firms in both patents and trade marks by the Legal 500, Chambers Directory and Managing Intellectual Property Magazine and we pride ourselves on our high standards of service and quality.

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Broadly speaking, the EPO approach is that patent protection is available for any new and non-obvious technical development. To understand how this approach is applied to AI/ML inventions, it is helpful to first consider the key concepts of obviousness and technicality, as both play a critical role in the assessment of patentability.

Obviousness and technicalityIt is a fundamental tenet of the patent system that it should not be possible to patent what is obvious. This is as true for AI and ML as it is for any other technology. Hence there is a requirement for an “inventive step”, which is taken to be satisfied if an invention is not obvious to a person skilled in the art. In addition to the non-obviousness criteria, in most patent systems there is also an eligibility criteria which places a further restriction by defining certain subject matter or activities which cannot be patented (even if not obvious). Article 52(2) of the European Patent Convention (EPC) gives a non-exhaustive list of subject matter or activities which are excluded as such, including discoveries, mental acts, business methods etc.

Patenting Artificial Intelligence

Following its widely attended “Patenting Artificial Intelligence” conference in May this year,

the European Patent Office (EPO) has published new Guidelines on the

patentability of Artificial Intelligence (AI) and Machine Learning (ML).

In this article we will take a look at the patentability criteria for AI/ML inventions in the light of this new guidance, as well as some of the key questions which it still leaves open.

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Technical application It is clear from the new guidance that AI/ML developments will be considered technical when applied to a specific field of technology. A variety of examples of technical applications are provided, including classification of digital images, videos, audio or speech signals based on low-level features, image or video analysis or enhancement (e.g. detecting persons in a digital image, de-noising), speech recognition, and encryption/decryption. (See box “technical application areas” for further examples).

These examples accord with our day-to-day experience with the EPO, and with the case law that has been established by the EPO Boards of Appeal, on which the new guidance is based. Nevertheless that case law is itself relatively limited, and thus the new Guidelines leave many questions unanswered. For instance the guidance is silent on the technicality of some key use cases for AI, such as machine translation and natural language processing, and the case law on these areas is relatively sparse. While some might argue that natural language processing relates to a linguistic purpose rather than a technical one, this seems difficult to reconcile with the fact that that speech recognition is considered technical. Moreover while image classification based on low level features is technical, text classification is ruled out. Some would say this leads to a contradiction – if a new AI/ML development is applicable to both image and text classification, limitation to image classification seems arbitrary and technically irrelevant.

These issues point to a broader difficulty – many AI/ML inventions are applicable to a number of different technical application areas; how should such inventions

The EPO approach takes this further by requiring that patent protection is only available for technical inventions, such that a patentable claim should specify a "technical solution to a technical problem". It is by developing this line of jurisprudence over the last 30 years that the EPO Boards of Appeal have been able to extend the patent system of the EPC, which was originally designed to deal with innovations in hardware, to also cope with innovations in software, and so now also innovations in AI and ML.

Under the EPO approach obviousness and technicality are intertwined together in the assessment of inventive step; only those features which contribute to the technical character of the invention are taken into account in this assessment. On the other hand, if a feature cannot be considered as contributing to the solution of any technical problem by providing a technical effect it is given no significance in the assessment of inventive step; it is ignored. Thus for inventions relating to AI and ML, a crucial question is often which (if any) features of the claimed invention contribute to its technical character?

Technical character of AI inventionsThe new guidance proceeds on the basis that the computational models and algorithms on which AI and ML are based are per se of an abstract mathematical nature. This means that, for example, a neural network as such is considered to be a mathematical rather than a technical feature. However, crucially, the guidance sets out that such features can contribute to technical character in two ways: by application to a field of technology and/or by being adapted to a specific technical implementation. We will look at these two situations, application and implementation, in turn.

best be protected? For such an invention it would seem unfair to require limitation to one specific technical use case or another, or to require an applicant to file multiple divisional applications, one for each technical application. While it is possible that there could in some cases be a drafting solution (e.g. multiple independent claims, or an “OR” statement in the independent claims), the extent to which the EPO would permit this is at present somewhat unclear. It is true that in some cases, such an invention might be considered technical because it falls within the second situation mentioned in the Guidelines, i.e. because it is adapted to a “specific technical implementation”, and that in that case there would be no need to limit to a particular technical application. However this will only apply if particular criteria are met (which we will discuss below) and so does not fully resolve the difficulty.

Technical implementations – protecting core AIThe new Guidelines state that independently of any technical application, a mathematical method (i.e. algorithm) may also contribute to the technical character of the invention “when the claim is directed to a specific technical implementation of the mathematical method and the mathematical method is particularly adapted for that implementation in that its design is motivated by technical considerations of the internal functioning of the computer”.

The interpretation of this wording is crucial for the patentability of AI/ML inventions that are not limited to any specific technical use case, such as inventions relating to core AI. However its precise meaning is somewhat vague; for example there is a question about whether or to what extent there needs to be a link to hardware in order for a mathematical

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“In denying that AI/ML is itself a specific technical application area, the new Guidelines leave room for ongoing debate and further case law on the patentability of innovations in this developing field.

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a memory efficient implementation, or for parallelization across multiple processor cores, or faster training, may in particular cases be argued to fall within the category of a “specific technical implementation”, and so considered technical. Nevertheless the boundary delineating what is and what is not a “specific technical implementation” remains somewhat unclear, and more case law is needed to clarify the patentability criteria in this area, in particular for inventions relating to core AI.

Final thoughtsThe new EPO Guidelines provide helpful guidance on the situations in which AI/ML will be considered technical, referring in particular to developments adapted to a specific technical implementation or applied to a specific field of technology. However as mentioned above, a difficulty arises in circumstances where an AI/ML innovation has multiple technical use cases and does not fall within the guidance relating to “specific technical implementation”. This points to a difference between AI/ML and many other innovations in that many AI/ML developments are applicable to multiple fields. In denying that AI/ML is itself a specific technical application area, the new Guidelines leave room for ongoing debate and further case law on the patentability of innovations in this developing field.

Richard Kennedyrkennedy@vennershipley.co.uk

Peter Thornileypthorniley@vennershipley.co.uk

Examples of technical application areas• classification of digital images, videos, audio or speech signals based on

low-level features (e.g. edges or pixel attributes for images);

• the use of a neural network in a heart-monitoring apparatus for the purpose of identifying irregular heartbeats;

• controlling a specific technical system or process, e.g. an X-ray apparatus or a steel cooling process;

• determining from measurements a required number of passes of a compaction machine to achieve a desired material density;

• digital audio, image or video enhancement or analysis, e.g. de-noising, detecting persons in a digital image, estimating the quality of a transmitted digital audio signal;

• separation of sources in speech signals; speech recognition, e.g. mapping a speech input to a text output;

• encoding data for reliable and/or efficient transmission or storage (and corresponding decoding), e.g. error-correction coding of data for transmission over a noisy channel, compression of audio, image, video or sensor data;

• encrypting/decrypting or signing electronic communications; generating keys in an RSA cryptographic system;

• optimising load distribution in a computer network;

• determining the energy expenditure of a subject by processing data obtained from physiological sensors; deriving the body temperature of a subject from data obtained from an ear temperature detector;

• providing a genotype estimate based on an analysis of DNA samples, as well as providing a confidence interval for this estimate so as to quantify its reliability;

• providing a medical diagnosis by an automated system processing physiological measurements;

• simulating the behaviour of an adequately defined class of technical items, or specific technical processes, under technically relevant conditions.

method to be considered a “specific technical implementation”. Some have suggested that a specific technical implementation requires specifically adapted hardware, but we do not read the new guidance in this way. It is true that the algorithm must be particularly suited for being performed on a computer, but the computer could be entirely conventional. The Guidelines give the example of the adaptation of a polynomial reduction algorithm to exploit word-size shifts matched to the word size of the computer hardware: it is the algorithm which is adapted to the hardware, not the other way around. Thus, algorithms which are specifically adapted for e.g.

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CJEU clarifies the scope of the ‘Specific Mechanisms’ in case C-681/16 Pfizer v OrifarmSince 2004, 13 additional Member States have joined the European Union. As part of the expansion of its membership, the EU has had to deal with the situation where new Member States may not have offered the same level of patent or Supplementary Protection Certificate (SPC) protection for pharmaceutical products prior to their joining.

When coupled with the EU’s principle of the free movement of goods, this could hypothetically have exposed a patent holder to parallel imports from new Member States without them having been able to protect their product in those States and, consequently, without having received adequate compensation for their invention. To prevent this scenario, an exception to the free movements of goods was provided as part of the Acts of Accession through which the new Member States joined the EU and is known as the ‘Specific Mechanisms’.

Under the Specific Mechanisms the holder of a patent or SPC for a pharmaceutical product filed in an existing Member State at a time when such protection could not be obtained in the new Member State for that product, may rely on the patent or SPC in order to prevent the import and marketing of that product in that existing Member State, even if the product was put on the market in that new Member State for the first time by him or with his consent.

As it represents an exception to the principle of free movement of goods within the EU, the Specific Mechanisms need to be interpreted narrowly.

In the recently decided case of Pfizer v Orifarm (C-681/16), Pfizer sought to prevent the importation of the arthritis drug Etanercept into Germany from several new Member States by the Danish group Orifarm, operating as a parallel importer

“As it represents an exception to the principle of free movement of goods within the EU, the Specific Mechanisms need to be interpreted narrowly.

”of pharmaceutical products. The protection for the drug derived from an SPC based on a German patent with a filing date of 31 August 1990. At the time of filing the patent application it was impossible to obtain equivalent patent protection for the product in the new Member States but at the time of filing the application for an SPC (26 June 2003) it was possible to obtain SPC protection in all the new Member States except Croatia. However, the existence of a granted patent is a necessary condition for the subsequent grant of an SPC and consequently it was still impossible for the patent holder to obtain equivalent SPC protection in the new Member States.

The Landgericht Düsseldorf (Regional Court, Düsseldorf) court referred several questions to the CJEU to determine the date in respect of which the level of protection in the new and existing Member States

should be compared for the purpose of applying the Specific Mechanisms. In line with the opinion of the Advocate General, the CJEU decided that:

“the Specific Mechanisms must be interpreted as authorising the holder of an SPC issued in a Member State other than the new Member States to oppose the parallel importation of a medicinal product from the new Member States in a situation where the legal systems of those States provided for the possibility of obtaining equivalent protection at the time when the application for the basic patent was published and/or the application for an SPC in the importing Member State was filed, but did not yet provide for such a possibility at the time when the application for a basic patent was filed, with the result that it was impossible for the patent holder to obtain an equivalent patent and SPC in the exporting States.”

The court was also asked to decide whether the Specific Mechanisms should be interpreted as applying to paediatric extensions even though such an extension is not expressly provided for. In this respect the court decided that the Specific Mechanisms should be interpreted as applying to paediatric extensions.

This ruling clarifies the scope of the Specific Mechanisms and maintains the balance between the principle of free movement of goods within the EU and the rights of the patent holder which the Specific Mechanisms sought to achieve.

Ruth Sheltonrshelton@vennershipley.co.uk

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You may think it is crazy posing such a question after the glorious sun of the 2018 UK summer...

Is it the end of the ICE age?Those more aware of the history of the Earth may even point out that the Pleistocene Epoch ended around 11,700 years ago. So how can it be the end of the ICE age now?

However, the question is not about the "Ice" age. I’m not talking about the demise of the woolly mammoths, but of another giant. One of the Institute of Engineering and Technology’s best 100 inventions. Due to its contribution to global warming and the use of non-renewable energy resources, it is time to consider whether it is the end of the Internal Combustion Engine (ICE) age.

If you have paid attention to the recent headlines, you would assume that the answer is a resounding “YES!” Article titles such as “Petrol cars to be banned by 2040” have been plastered all over news outlets and social media, especially around the summer of last year.

All the hysteria is based around commitments issued by the government that by 2040 vehicles with purely petrol or diesel-based power units will not be allowed to be sold in the UK. Technically, the promise is that by 2040 the “majority” of new cars and vans sold will be completely zero emissions, and all new cars will have zero emissions “capability”.

However, there is no ban specifically on the sale of hybrid vehicles which combine ICE’s and electric powered motors to form the power unit or the use of ICE’s already on the road.

Environmental issuesIt is clear why such commitments have been agreed to. In a global society with a growing conscience which is eager to care for our environment and facing issues such as climate change, pollution caused by ICEs and the environmentally unfriendly methods used to obtain ICE fuels have come under ever increasing scrutiny.

ICEs produce emissions which effect people and environments the world over. The emissions have been linked to increasing temperatures and producing some of the crazy weather seen around the globe recently. The annoyance of the noise from an ICE keeping you awake at night seems trivial in comparison.

Despite this, the benefit of the ICE to the world should not be underestimated or forgotten. Most, if not all, of readers will have, or have owned in the past, a car. Therefore, most will appreciate the luxury of being able to travel privately, directly to wherever desired, at whatever time you want, in reasonable speed. Even most public transport is powered by ICEs as well as some electric generators and machines for moving heavy loads.

Looking past how the ICE has improved our lives, we are now at a stage in our development as a global community where we can use new, cleaner technologies to power our travel. Technologies which make less noise, have less of an impact on air quality, reduce climate change, and improve energy security by using energy from renewable energy sources.

What alternatives?Having the capability to and not exploiting these technologies would be irresponsible. Two of these alternative technologies identified for replacing ICEs are electric vehicles (EVs) and hydrogen fuel cell vehicles (HFCVs). And two of the large car manufacturers currently backing these alternative power units are Nissan and Toyota.

Nissan’s vision for the future is based on EVs. Nissan aims to reduce total car emissions by 90% from 2000 to 2050 using predominantly solely electric powered vehicles. It is a large commitment from a company who had a 25% share of the EV market, over 100,000 vehicles, in 2016.

To make this vision become a reality, there will need to be innovations in three key areas: batteries, the powertrain, and charging. The main traditionally perceived problem facing EVs is that the range of the battery is not large enough. This will increase with increasing energy density, if it doesn’t compromise safety, and the development of materials with a lower heat resistance. In fact, modern EVs now have a much larger range than those which were original placed on the market.

The powertrain can be improved by more efficient cooling and the use of semi-conductors whilst charging wirelessly and/or ultrafast charging would improve the usability of EVs. The concern of how the electricity is generated will diminish as more of our electrical supply is generated from renewable sources.

Currently, there is no complete solution to these problems facing EVs, but Nissan has offered some novel solutions. Nissan pictures a future in

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“would each individual living in the suburbs or countryside be willing to give up their freedom of movement and independence?

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which cars can be used to power your computer at work or appliances at home.

Nissan envisages changing roads, curbs, and parking spaces into wireless charging strips. This means that EVs can charge whilst on the move, whilst you shop, or whilst you sleep. The intelligent, autonomous EVs could even rearrange themselves to make sure those with low battery get to recharge before returning to where they were left.

Toyota’s quest for sustainable mobility appears to be leading it down another path. Toyota, the creator of the Prius over 20 years ago, also recognises the problems posed by

ICEs and the cost and weight issues of batteries. Although 40% of Toyota’s sales in Europe are hybrid, Toyota’s vision for the future is based on the hydrogen fuel cell (HFC). Toyota’s plan is to improve all power units with a focus on hybrid vehicles until HFC technology is mature enough to take the place of the ICE and be used in conjunction with an electrical power unit.

Toyota prefers the HFC avenue of development for a number of reasons including being able to give new vehicles the same range as ICE vehicles, usually larger than EVs, whilst having the same refuel time as an ICE vehicle. Other advantages of HFCVs include their high energy densities, that there is no fluctuation in the amount of available energy, and that the only waste product is water.

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air/fuel mixture to pressures just short of combustion and then injecting a second dose of fuel and igniting it with a spark to quickly burn through the whole mixture. The engine can run in this mode across a large operating range and only switches to a conventional spark igniting mode under hard acceleration.

The futureAs so often happens when technologies or companies are in an arms race, innovation is the result. There will be inventions on both sides fuelling innovation on the other and collaborations between the two will yield power units with ever increasing efficiencies and reducing emissions.

We are already seeing the benefits of hybrid vehicles and as they become more mainstream. The most popular combination is the ICE supplemented by an electric motor. The electric motor helps the ICE to be more efficient during acceleration whilst energy from the ICE which is usually wasted under breaking is harvested to charge the battery which powers the motor.

The current symbiotic nature of the ICE and the electric battery powered motor is likely to drive simultaneous advances towards higher efficiency power units. Areas such as catalytic converters, bio fuels, and battery architecture are all technologies that will likely develop alongside each other somewhat. It would be senseless of the brilliant minds which make these breakthroughs not to combine them with the latest and cleanest technology not only for the benefit of the environment but also the people around them to improve quality of life.

That is why it appears that the new power unit technologies may actually help keep the ICE running long into the future, albeit a lot leaner and cleaner. For that reason, it is fair to say that the ICE age is not yet over!

Jack Roganjrogan@vennershipley.co.uk

efficient and less damaging to the environment.

Modern developments in ICEs include Audi’s electric powered compressor which reduces turbo lag and makes the engine more efficient at low rpm, Ford’s EcoBoost engines which achieve up to 30% better fuel efficiency and 15% fewer greenhouse emissions, Camcon’s Intelligent Valve Actuation which has replaced the camshaft with a digital valve train system and can improve fuel economy by 7.5%, and the use of lightweight materials.

The trend appears to be using electronics to develop the ICE and each incremental development makes the power unit greener. It shows that just because we may stop using ICEs at some point doesn’t mean we should not make them greener for use in the near future.

Only last year the Mercedes-Benz Formula 1 team announced they had produced a racing engine that had hit the 50% thermal efficiency mark, around 30% more than conventional road cars. So it’s not as though the brakes have been applied to the development of the ICE.

Although the $12-14 million price tag for the power unit means we won’t see that particular engine on the road, technology from F1 will eventually filter down to road cars, in one form or another, as was the case with the sequential gearbox and Kinetic Energy Recovery Systems. The development made by F1’s engine manufacturers shows, if nothing else, that there is much development to be made on the efficiency of the everyday ICE. However, with the new Formula E electric series, it is possible that an arms race is about to warm up.

If you need further evidence to suggest that this arms race will not be an easy win for EVs, there is plenty to be found. Earlier this year Mazda introduced its Skyactiv-X engine with Spark Controlled Compression Ignition. A cross between petrol and diesel engines combining the best traits of both and providing a reliable solution to burning petrol at diesel compression ratios without causing the engine to explode.

Essentially, Mazda’s new engine promises up to 30% lower fuel consumption by compressing a lean

What is best for the people?So how does this affect the future of the ICE? Some say it’s the end of the road for ICEs. Others take the opposite view. For example, consider the costs of an EV. The upfront price is higher than that of a conventional vehicle, and although the cost may be recouped over a number of years in lower maintenance and fuel costs, for most people the upfront price is, currently, just too much.

This is before any considerations are given to the location of the nearest charging point and whether the slow charge time of up to 8 hours is manageable, unless the Tesla Model S and its 30 minutes 0 to 80% rapid charging is within your price range (from £70,000).

Now take into account that the parties most interested in the new power unit technologies are parties that wish to operate a fleet of autonomous, zero-emission vehicles. Such a service will be extremely useful for those making short trips in densely populated areas with an abundance of fleet vehicles where waiting times will be small. However, for those living in remote areas or not on the outskirts of a big city, a fleet of hail and ride electric vehicles may not be so useful or abundant.

A fleet of autonomous, zero-emission vehicles in, for example, the City of London, would be a great idea – but would each individual living in the suburbs or countryside be willing to give up their freedom of movement and independence? Would it be fair to force them to buy a private EV/HFCV or have their ability to travel restricted to the availability of fleet vehicles or public transport? Perhaps not.

The evolution of ICE’sThe ICE has come a long way since its inception in 1853. In fact, some of the first developments like Nikolaus Otto’s patented four cycle engine (1876) and Karl Benz’s patented two-stroke engine (1879) made sure that the ICE was chosen to power vehicles over electricity and began the ICE age.

There have been many inventions over the years which have brought the ICE from its relatively basic beginnings to the complex machine we know today. And with each step the ICE has become more

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In the US it is not possible to obtain a federal trade mark registration for any mark that covers actual cannabis products or directly related goods or services. United States federal trade mark registrations are based on “lawful use of a mark in commerce” and use of cannabis marks for cannabis products or services is prohibited by the Control of Substances Act (CSA) and is therefore not “lawful use in commerce”. Most recreational medicinal cannabis products and services violate the CSA and the USPTO’s current position is that trade marks for cannabis products are not entitled to registration. Even where trade mark applications are based on foreign applications or registrations in countries where such products or services may be legal the USPTO will refuse the application on the basis

Trade mark protection for a growing cannabis marketThe general public’s perception of cannabis as an illegal narcotic, whose use is likely to harm the mental and physical health and wellbeing of its consumers, is changing. Laws prohibiting or permitting cannabis use vary widely with Uruguay, some states in the US and recently Canada legalising recreational cannabis use and other countries such as Mexico, Germany and Denmark legalising medical use, with many other countries considering a change in stance.Whilst the negative personal and societal effects of uncontrolled use of cannabis are still widely accepted, the use and production of cannabis products for medicinal purposes is also fast gaining acceptance and the (regulated) legalisation of cannabis for recreational use is also spreading. There is also growing investment and interest by consumer food and drink producers in how to use the non-psychoactive constituent parts of the cannabis plant to add flavours, aromas and wellbeing effects to their products. In this fast changing and potentially lucrative environment brand protection is becoming increasingly important. By looking at the position in the US, Canada and the UK/EU this article seeks to consider what protection is available through trade mark registration for cannabis marks and products.

that its use in the US would violate the CSA. However, although federal registration is not available, a number of US states have legalised cannabis in some form and state trade mark registrations may therefore be available. Although state trade mark registrations do not offer the same protection as a federal registration, they are relatively cheap and easy to obtain and are a matter of public record.

Federal trade mark registrations may also be available for ancillary goods and services which are indirectly related to cannabis. These may cover retail, business or consultation services in class 35 or entertainment and educational services in class 41. The CSA prohibits the manufacture, distribution, dispensing and possessing of cannabis or related

“The efficacy of cannabis based products in the treatment of a number of medical conditions including multiple sclerosis, cancer, epilepsy and AIDS is now widely accepted.

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his mother at Heathrow airport. This has raised awareness of the availability and use of cannabis as a medicinal product. The government is looking at reclassifying cannabis derived medicines to allow UK doctors to prescribe them. Germany and Denmark have legalised cannabis for medical use whilst a number of European countries including the Netherlands, Italy, Czech Republic and Croatia have agencies governing the production and supply of medical cannabis and regulations as to its cultivation, production, possession and use. The efficacy of cannabis based products in the treatment of a number of medical conditions including multiple sclerosis, cancer, epilepsy and AIDS is now widely accepted and the need for their wider availability gaining momentum.

The EU is also not immune to the growing potential for investment in cannabis based products both in terms of medicinal cannabis and wider consumer products. Consumer products, particularly in the food, drink and wellness industries are now seen by many companies as natural extensions of the cannabis market. Food, drink and cosmetics companies are looking into how the non-psychoactive constituents of the cannabis plant producing relaxant and inflammation reduction effects can be used to enhance products such as sports drinks and skin preparations.

Neither the EUIPO nor UKIPO have a blanket ban on trade mark registrations for cannabis and cannabis related products as in the US nor do they allow easy access to trade mark registrations for cannabis products as in Canada. A trade mark

products. So services that, for example, provide a marketing platform or are purely informational in relation to cannabis products may well be registrable at a federal level. Therefore, an application for a mark with a carefully crafted specification of goods or services excluding cannabis and directly related cannabis goods/services could achieve registration and could be used to enforce the mark against later joining competitors.

Although federal trade mark protection for cannabis goods and services in the US poses a number of difficulties, across the border in Canada the position is very different. On 17th October 2018 Canada became the first G7 country to legalise the purchase and use of recreational cannabis, though subject to tight government regulation. Regulations were published on 11th July 2018 placing restrictions on certain types of marks, for example, prohibited under the Act are marks for cannabis products that consist of a person, character or animal, whether a fictional or real, marks that appeal to children, marks that glamourise the goods or include a testimonial or endorsement. Although Canada has opened the door to trade mark registration for cannabis products, care is still required in the selection and filing of trade marks since the government has clearly signalled that it does intend to control all aspects of promotion and sale of legalised cannabis products.

Since the proposed legalisation of recreational cannabis in Canada was announced, there has been a surge in investment and commercial activity across the market sector particularly in relation to licensed producers of cannabis in Canada. Canadian companies are also looking to extend into other countries overseas as cannabis and its related products have started to gain greater legitimacy

and acceptance. This has resulted in a large increase in trade mark filings both in Canada and in the EU. There are currently 14 cannabis trade mark applications under examination/published at the EUIPO filed in the past 10 months, 5 of which have been filed by Canadian companies. In 2018, 12 cannabis marks have been accepted for registration by the EUIPO, 10 of which were filed by Canadian companies, Spectrum Cannabis Canada Ltd and 1977121 Ontario, Inc. and covering a wide range of cannabis related goods and services.

The position in the EU is that there is no harmonised EU law on cannabis, the responsibility being that of each EU member state. EU countries are however bound to control cannabis following their obligations under various United Nations drug control treaties.

Recreational use of cannabis remains illegal in all European Countries although the penalties for use related offences varies widely. Even in the Netherlands, cultivation supply and personal possession of cannabis are all criminal offences. A practice of tolerance has evolved in the concept of “coffee shops”, that is, cannabis sales outlets licenced by the municipality. However, two thirds of municipalities do not allow coffee shops and the remainder is subject to strict regulations.

Some authorised cannabis based medicines have been available in a number of European countries for some time. For example, Sativex, a treatment for multiple sclerosis, which contains extracts of cannabis has been authorised in 17 EU member states. In the UK, the availability of medicinal cannabis hit the headlines this summer when 12 year old Billy Caldwell had the medicinal cannabis oil, used to treat his severe epilepsy, confiscated from

application may receive an objection from the EUIPO or UKIPO on the basis that it is “contrary to public policy or to accepted principles of morality” (Article 7(1)(f) EUTMR and Section 3(3)(a) Trade Marks Act 1994).

“Public policy” is intended to deny protection to marks which could induce public disorder or the likelihood of criminal or other offensive behaviour. This will include marks which appear to have criminal connotations, such as being associated with illegal drugs. The notion of “principles of morality” is somewhat harder to define and of necessity more fluid in assessment but the EUIPO has said that it is something that “must be perceived by the relevant public, or a significant part of it, as going against the basic norms of society”.

Objections raised by the EUIPO or UKIPO under Article 7(1)(f) EUTMR or Section 3(3)(a) apply to the registrability of the marks themselves rather than the legality of the goods or services included in the specification. The question whether the goods or services for which protection is sought can or cannot be legally offered in a particular member state’s market is irrelevant for the question as to whether the sign itself falls foul of Article 7(1)(f) EUTMR (13/09/2005, T-140/02,”INTERTOPS”, Section 33). However, national legislation and practice will inform the assessment of relevant public perception of what is acceptable in terms of public policy and principles of morality.

Marks including the words cannabis, marijuana, weed, hash or other cannabis related or derived words or symbols will be specifically scrutinised. The EUIPO recently accepted applications for the marks “SPEKTRUM CANNABIS” and “SPECTRUM CANNABIS” for a wide variety of cannabis related goods in Classes 3, 5, 9, 16, 18, 25, 29, 30, 31, 32, 34, 35, 41, 42, 44 and 45

including medical cannabis, skin care preparations containing cannabis plant derivatives, food and beverage products containing cannabis, hemp seeds, pipes and vaporizers for administering medical cannabis and various educational, product development and medical, consulting and advisory services relating to cannabis. In relation to the goods accepted for registration, the Office stated that it had decided to partly waive its initial objections where it was satisfied that the goods related to “the legal and common use of cannabis, among others for use in cosmetic preparations, in foodstuff and for medical purposes, where the intention of use are not psychoactive”. The goods and services to which the Office maintained its objection were live cannabis plants and seeds in class 31, smoking accessories, marijuana, cannabis and derivatives thereof, cannabis capsules and sprays, smoking accessories in class 34, sale of cannabis products and accessories and smoking accessories in class 35 and cultivation, breeding, processing and production of cannabis in class 44. The Office considered these goods contrary to the accepted principles of morality in that the goods and services for which the mark would have been used “would be seen as a reference to drugs of which consumption for recreational purposes is harmful to health and lives of the people (and prohibited in part of the EU)”.

The use of cannabis for recreational purposes continues to be illegal in all member states of the EU and there does not seem to be any strong move to change this. Therefore, for the foreseeable future, cannabis related marks for any goods or services relating primarily to recreational use are likely to be rejected. However, where use of cannabis is not for psychoactive recreational purposes, it seems that the EUIPO will accept arguments that such use in relation to a wide variety of products is not contrary to public policy or to accepted principles of morality. Although cultural attitudes in the UK and many EU countries may be viewed as behind the curve and not as beneficial as in countries such as Canada there is opportunity for companies wishing to trade in cannabis related goods in the EU to obtain substantial trade mark protection.

Julia McFarlanejmcfarlane@vennershipley.co.uk

“The use of cannabis for recreational purposes continues to be illegal in all member states of the EU and there does not seem to be any strong move to change this.

”

www.vennershipley.co.uk

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as Swabian (meaning from South Western Germany) and as Deutsches Erzeugnis’ (meaning German product). The label further explained that the whisky was produced in the Berglen area near Stuttgart, which might possibly explain how the word Glen came to be used.

The Scotch Whisky Association argued to the Hamburg court that, while the magic word SCOTCH did not appear anywhere on the labelling, the inclusion of the word GLEN in itself offended against the PGI granted to Scotch Whisky under the Regulation.Article 16 of the Regulation protects an EU PGI from:

a any direct or indirect commercial use in respect of products not covered by the registration in so far as those products are comparable to the spirit drink registered under that geographical indication or insofar as such use exploits the reputation of the registered geographical indication;

b any misuse, imitation or evocation, even if the true origin of the product is indicated or the geographical indication is used in translation or accompanied by an expression such as ‘like’, ‘type’, ‘style’, ‘made’, ‘flavour’ or any other similar term;

c any other false or misleading indication as to the provenance, origin, nature or essential qualities on the description, presentation or labelling of the product, liable to convey a false impression as to its origin.

Examples are Glenlivet, Glenmorangie, Glenfiddich, Glen Grant and Glengoyne. Indeed, on the EU Trade Marks Register alone, there are at least 70 live registrations/designations of trade marks beginning with GLEN specifically protected for whisky.

The fact that so many of these Scotch whisky trade marks begin with GLEN means that, in markets where they are sold side by side, this common GLEN element is “weak” in trade mark terms. Therefore, to successfully argue that the mere inclusion of GLEN in a mark in itself infringes these earlier marks would be challenging. As long ago as 2009 in a decision on an opposition to register GLEN’S as an EU trade mark, the EUIPO (then known as OHIM) held that GLEN was “a commonly used term in trade marks for whisky products” and that its “distinctive character in this sense was not just restricted to the English speaking public but also the European whisky drinkers in general”.

In a recent case (C44/17, Scotch Whisky Association v Michael Klotz), the European Court of Justice (ECJ) responded to a German court’s

referral on a case regarding the use of the word GLEN in relation to whisky. The ECJ was not asked to consider whether the use of GLEN infringed any earlier trade mark registrations but rather for guidance on the correct interpretation of the regulation governing protected geographical indications granted by the EU under EU Regulation 110/2008/EC (the Regulation). The Scotch Whisky Association sought to rely on the protected geographical indication successfully obtained by Scotland from the EU authorities for the term “Scotch Whisky” under the Regulation.

A protected geographical indication (PGI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. In order to function as a PGI, a sign must identify a product as originating in a given place. 14 of the 86 PGIs granted to the UK by the EU are for products produced in Scotland.

In this case the industry body, the Scotch Whisky Association, was aggrieved by a German distiller marketing what his bottle label described as a “Swabian Single Malt Whisky” under the mark Glen Buchenbach” (a German registered trade mark). The labelling made no mention of Scotland and indeed expressly described the product

“while the magic word SCOTCH did not appear anywhere on the labelling, the inclusion of the word GLEN in itself offended against the PGI granted to Scotch Whisky.

”

Yes, it’s German, but is it Scotch?The English word GLEN is derived from the Gaelic word GLEANN, meaning valley. The brand names of many Scotch whiskies sold in the European Union begin with GLEN.

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The Scotch Whisky Association maintained that Article 16 of the Regulation protected not only against the use of a PGI itself but also against any reference suggesting the geographical origin of that indication. It argued that, because ‘Glen’ is very widely used in Scotland, it evokes in the relevant public an association with Scotland and Scotch Whisky. It submitted that this was “indirect commercial use” of the PGI and/or an “evocation” of the PGI and/or “misleading information.

The Hamburg court referred the matter to the ECJ for a ruling on the correct interpretation of Article 16(a) to (c), in particular as to whether phonetic/visual identity or similarity to the PGI is vital for use of a term to be “indirect commercial use” of a PGI or to constitute an “evocation” of a PGI. It also requested clarification on whether the context in which the disputed element was embedded (including any mention of true origin of the product) should be taken in account when assessing these matters.

The ECJ held that, for there to be “indirect use” of the PGI under Article 16(a), the disputed element must be used in a form that is either identical to that indication or phonetically and/or visually similar to it. Thus, in the German case, the use of GLEN would not be caught under Article 16(a).

For the purpose of finding an ‘evocation’ within the meaning of Article 16(b), the ECJ clarified that there is no requirement for the term used to describe the product to be phonetically or visually identical or similar to the PGI. Accordingly, it is possible that an “evocation” may be found to exist even in the absence of such similarity. The ECJ has however held that the national court must determine not only whether the term used to designate the product concerned incorporates a part of the PGI but also whether, when the consumer is confronted with the name of the product, the image triggered in his/her mind is that of the product the subject of the PGI.

The ECJ directed that when making that assessment, the national court must have in mind the perception of an average European consumer who is reasonably well informed and reasonably observant and circumspect. The ECJ added that it is necessary, where appropriate, to take account of what it described as ‘conceptual proximity’ between terms emanating from different languages, on the basis that such proximity, may also trigger an image in the consumer’s mind which is that of the product whose PGI is protected, when confronted with a similar product bearing the disputed term.

The ECJ then applied its interpretation of Article 16(b) to the case in hand. It guided the German court that it would, taking account, in the absence of (i) any phonetic and/or visual similarity between the disputed designation and the PGI or (ii) any partial incorporation of that PGI in GLEN, of conceptual proximity between the PGI and GLEN, have to determine whether a reasonably well informed, observant and circumspect average European consumer would think directly of the PGI for ‘Scotch Whisky’, when confronted with the product bearing the word GLEN.

The ECJ also held that the fact that the true origin of the product is indicated and the context surrounding the disputed term are irrelevant for the purposes of assessing whether the use of the term evokes the PGI.

As to the correct interpretation of ‘false or misleading indication’ in Article 16(c), the ECJ held that no account should be taken of the context in which the disputed element is used when assessing the meaning of “false or misleading indication”.

It will be interesting to see how the Hamburg court applies the ECJ guidance. Irrespective of the Hamburg Court’s decision, the case provides useful clarification on the breadth of protection granted to EU PGIs.

Those selling products in food/drink categories for which PGIs have been registered should tread carefully so as not to “evoke” a PGI on their labelling.

Effect of Brexit on EU PGIs The use and registration of PGIs is regulated by EU law. On leaving the EU provision will need to be made for use and regulation of the 86 PGIs registered by the UK under the Regulation. The UK government announced at an early stage in the preparations for Brexit that it would be establishing its own geographical indication scheme. One of the terms in the published draft withdrawal agreement between the UK and the EU was that all PGIs registered in the EU would be granted the same level of protection in the UK without the need for any re-examination.

In the guidance published by the UK government about the effect of a no-deal Brexit, the plan to set up the UK’s own geographical indication scheme has been repeated, with a promise of a public consultation about this. However, the no-deal guidance points out that, while all 86 PGIs registered by the UK in the EU will automatically be granted PGI status in the UK, this will not apply to PGIs already granted by the EU to other member states. According to the no-deal guidance, those other EU member states will need to apply to the UK for PGI status in the event of a no-deal Brexit.

David Birchalldbirchall@vennershipley.co.uk

www.vennershipley.co.uk

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In September 2018, the Large Hadron Collider (LHC) at CERN marked its 10th anniversary. It seems as if the LHC has always been present at CERN, the European Organisation for Nuclear Research, which may be because the concept of developing the world’s largest and most powerful particle accelerator began back in the 1980s. It was, however, only in 1994 that approval for construction was finally given and only with the help of contributions from countries such as India, Japan and the USA, was the project able to proceed in a single phase. Even so, it was still 14 years before the first official experiment was set in motion on 10 September 2008.

The LHC is made up of a ring of two beam pipes housed at an average depth of 100 m underground, in the 27 km-long tunnel built for the LHC’s predecessor, a large electron-positron collider. In the LHC, protons isolated from hydrogen atoms are added to the separate beam pipes, where they travel in opposite directions. The beam pipes operate in a vacuum, at temperatures colder than space, to ensure no resistance or loss of energy as the protons move around the ring. This enables the protons to travel close to the speed of light, accelerated by several structures, including a ring of super conducting magnets, to gradually higher and higher energy levels before they are made to collide. Collisions can occur at four different points around the ring where the two beam pipes intersect and corresponding particle detectors are located. The particle detectors monitor and record the collisions that occur and each is linked to one of four main experiments currently operating in association with the LHC.

The underlying aim behind these experiments – to improve our understanding of the Universe. A not insignificant challenge for any field

of science! More specifically, one of the main goals has been to try and identify the building blocks of matter, the first particles created just after the Big Bang. The particle that scientists have been particularly keen to identify has now become well established in the public conscious – the Higgs boson.

In trying to determine how particles developed following the Big Bang, the Brout-Englert-Higgs (BEH) mechanism was proposed in the 1960s, providing a theory as to how particles gain mass when they interact with a quantum field, known as the Higgs field. The particle associated with this field is the Higgs boson.

Over 40 years after this mechanism was first proposed, it has been through use of the LHC that the Higgs boson was eventually discovered in July 2012, thereby confirming existence of the BEH mechanism proving how particles gain mass. The significance of this discovery and the media interest that ensued has led the Higgs boson and the field of particle physics to become well established in main stream culture. Given the significance of this discovery, it is little wonder why the 10 year anniversary of the LHC is such a milestone to particle physics and the science community as a whole.

IP at CERNThe discovery of the Higgs boson is just one of the reasons why CERN is regarded as a leading research

institute and it is evident that the technological developments originating from CERN’s scientists have many potential implications for the global community.

As with every scientific institute, CERN recognises that there is both an obligation and willingness for knowledge transfer, so that the discoveries and knowledge gained by its scientists can be disseminated to, and applied in, the real world to the benefit of the public. CERN is therefore no exception in trying to make its technologies available for both scientific and commercial purposes. An open science policy, however, requires there to be a ‘full and timely disclosure of findings and methods’ and in this regard there is often seen to be a conflict between open science and intellectual property (IP).

Two notable cases are evident from CERN’s history. In the 1970s, CERN pioneered the use of touch screens and trackballs in their computerised control systems. However, researchers were unable to progress this technology further as industrial partners were unwilling to invest, in the event that CERN would disclose this technology under the remit of their open science model. Thus, without the kinds of assurance provided by IP, touch screens and trackballs remained in house, without further development. In contrast, whilst working with Tim Berners-Lee, the inventor of the World Wide Web, CERN agreed to release the World Wide Web software into the public

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“CERN has been able to develop a good working balance between its research needs, industry and commercialisation.

”domain in 1993 and followed the next release with an open licence. The subsequent global dissemination and use of the World Wide Web speaks for itself.

These stories could suggest that only an ‘all or nothing’ outcome can be achieved when trying to marry scientific development and IP. CERN, however, have helped to demonstrate that this need not be the case.

It is clear that science institutes do not develop products and thus, there is a need for a mechanism by which the gap between science and the market place can be reduced. IP can provide a solution as to how this can be achieved. In light of its past difficulties, CERN appears to have understood that collaboration with IP is required to ensure that technology, like the trackballs, does not languish, but instead is allowed to develop further. In this way, CERN has been able to develop a good working balance between its research needs, industry and commercialisation.

A large part of this success seems to have been achieved though the establishment of their Knowledge Transfer (KT) office and in 2010, the formalisation of their IP management policy within their framework of open science. CERN identified the need to educate parties on all sides to demonstrate the benefits that can be derived from IP and to highlight that there is much more involved than just patents. This involved promoting awareness of IP in their researchers to show how it can benefit them, as well as highlighting to industry the kinds of successful collaborations that can be achieved. Having a dedicated group clearly outlining CERN’s policy regarding IP and commercial exploitation has helped to provide greater security to third parties looking to collaborate and has ultimately helped to improve, not hinder, the dissemination of CERN research.

The KT office aims to identify and promote those technologies that

have strong potential for commercial development and real world application, in order to encourage investment and collaboration with third parties. This can help to ensure that technology finds a way to the public domain, even if it is not made available to the whole public domain initially. By drawing on IP, CERN is also better recognised as the source of an invention, products and services can be linked to contributions from CERN more readily, and they are better able to advertise to industry which technologies are available for exploitation.

IP has therefore become an important component of CERN’s technology transfer program. Through a combination of licensing and patenting, CERN has secured funding in industry or through start-ups to ensure technology has been developed and thus, able to reach the market place effectively and perhaps sooner than would otherwise have been possible without such exploitation. A number of spin-off companies based on CERN technologies provide strong examples of the success that can be achieved through patents and licensing opportunities.

One such example includes the development of vacuum-sealed solar panels, derived from the ultra-high vacuum technology used for the LHC. The LHC operates one of the largest ultra-high vacuum systems in the world. A vacuum is required in the accelerator to prevent particles colliding with gas molecules inside the beam pipes. It became evident that ultra-high vacuum technology was applicable to solar panels. When the patent to this technology was publicised, an investor was identified, enabling a spin-off company to be founded in partnership with CERN. Using this technology has led to significant improvements in vacuum-sealed solar panels. It has been possible to vacuum-seal flat (rather than cylindrical) solar panels, which are better for collecting light. The overall efficiency of the solar panels

has also been greatly improved as they are better able to capture diffuse light and have enhanced insulation, thereby reducing heat loss. The high-temperature solar thermal panels created have been such a success that they now cover the 1200 m2 roof of Geneva Airport’s main terminal building.

Medipix is another prime example of the successful dissemination of CERN technology. Medipix3 is the latest in this family of read-out chips, derived from particle imaging and detection technology originally developed for particle tracking in the LHC. Similar to a camera, when the electronic shutter is open, Medipix3 chips detect and count individual particles hitting the pixels. Today this technology is being used in a broad range of fields, including medical imaging. This hybrid pixel-detector technology is ideally suited to the medical field where there is a demand for reliable, high-resolution images of human tissue. This technology allows patients to be scanned, producing a 3D colour image identifying the different tissues and components of the body part under examination. This can enable more accurate diagnoses and treatment of patients, particularly those with cancer. The chips are now being trialled in relation to a number of medical conditions.

These are just two examples, but it seems apparent that through the use of IP, CERN has been able to secure interest and collaboration from industrial and institutional partners to see their scientific contributions translate into real world applications. So whilst the release of scientific information may be delayed slightly, developing a strategic IP policy has provided a means by which targeted technology can be developed sufficiently to bring it to market, where its release will have a much larger impact on, and be of greater benefit to, the public.

Kathryn Rosekrose@vennershipley.co.uk

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Updates to the EPO GuidelinesThe Guidelines for Examination in the European Patent Office (EPO) provide an insight into the procedures followed by the EPO. They can be a valuable tool to patent attorneys allowing us to understand what objections might be raised and what actions we can take to avoid them. Every year the EPO updates the Guidelines to not only reflect changes in the law, including important case law decisions, but also changes to the EPO’s internal practice. The latest revisions have now been announced by the EPO, and come into effect on 1 November 2018.

This year’s revisions will affect a number of sections of the Guidelines, with substantive revisions being made in the sections relating to mathematical methods, with new sections relating to Artificial Intelligence (AI) and simulation, design or modelling being added. A more detailed discussion of the patentability of AI inventions in light of these changes is provided in an article written by my colleague Richard Kennedy on page 1. Similarly, substantive amendments have been made to the sections concerning programs for computers, with new sections added on information modelling, activity of programming and programming languages and data retrieval formats and structures. It is hoped that these changes to the Guidelines will provide clarity on when a claimed invention may be viewed as technical.

Four further important changes to the Guidelines are discussed below.

UnityArticle 82 EPC states that a “European patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept”. If an Examiner believes that the claims of an application define a group of inventions which are not linked to form a single general inventive concept then a lack of unity objection will be raised.

The revised Guidelines provide a new two part test to determine whether a group of inventions is unified. The test comprises first determining what subject matter is common for each of the claimed inventions. Secondly, it is necessary to determine whether or not any of the identified common features are “special”, i.e. whether any of the common features define a contribution over the prior art. If both criteria are met then the claims will be viewed as unified.

Using the problem-solution approachWhen assessing inventive step, the EPO applies the problem-solution approach. The first step in this approach comprises identifying the closest prior art document. Due to a recent decision of the Technical Boards of Appeal, T320/15, the Guidelines have been updated to confirm that it is only permissible to identify two or more prior art documents as the closest prior art if it can be shown that all of the documents are equally valid springboards.

This clarification should prevent opponents in opposition proceedings from running multiple different inventive step arguments in the hope that one has a chance of succeeding.

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Claims to a plant or animalEssentially biological processes for the production of plant and animals, and the plants and animals produced using these processes are not patentable. Conversely, plants and animals obtained using a technical process, such as directed mutagenesis, may be patented. The updated Guidelines confirm that if a technical feature of a claimed plant or animal might be the result of either a technical intervention or an essentially biological process, a disclaimer is required to disclaim the non-patentable subject matter.

In view of this change, the Guidelines provide the following example which is not excluded from patentability due to the inclusion of a proviso:

“A cultivated pepper plant expressing a mutated AHAS enzyme with the proviso that the plant is not exclusively obtained by means of an essentially biological process.”

Undisclosed disclaimersIt is possible to add a disclaimer to a claim, even if it is not explicitly disclosed in the application as filed if the disclaimer:

a restores novelty over a disclosure which is only citeable for the purposes of establishing novelty;

b restores novelty over an accidental anticipation; or

c removes subject matter which is excluded from patentability, such as in the example provided above.

In addition to these criteria, the amended Guidelines confirm that the disclaimer must not provide a technical contribution to the subject matter disclosed in the application as filed. Furthermore, it must not be or become relevant for the assessment of inventive step or for the question of sufficiency of disclosure.

Catrin Pettycpetty@vennershipley.co.uk

“This clarification should prevent opponents in opposition proceedings from running multiple different inventive step arguments in the hope that one has a chance of succeeding.

”

www.vennershipley.co.uk

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New EU Trade Mark DirectiveOn both the Trade Marks Act 1994 and the Trade Mark Rules 2008 will be amended as a result of the UK implementing the EU Trade Mark Directive No. 2015/2436.

The Directive is aimed at harmonizing the trade mark laws of EU Member States, who have until 14 January 2019 to transpose its provisions into their national laws. The timing is slightly odd considering that the UK is leaving the EU; however, trade mark owners should welcome these changes since they will harmonise the way UK and EU trade marks are protected.

The changes will come into force immediately on 14 January 2019; there will be no transitional period. The UK Intellectual Property Office (UKIPO) has published practical guidance covering the changes. Some of the changes are very specific but the key practical changes for trade mark owners are summarized below. References to section numbers are to sections of the Trade Marks Act 1994 (“the Act”).

Definition of a Trade Mark Under Section 1(1) of the (soon to be) old version of the Act, a sign can only be registered as trade mark if it is “capable of being represented graphically” and is capable of distinguishing the goods or services of one undertaking from those of other undertakings. In effect this requirement that applicants provide a graphic (visual) representation of their mark limited the type of signs that could be registered as trade marks because non-traditional signs, such as smells, sounds and moving pictures, tend to be quite difficult to represent visually.

Under a new Section 1(1)(a) the requirement for graphical representation will be removed. Any form of representation will be accepted and a sign will be able to be registered as a trade mark provided that it can be represented in the register “in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”.

Key point: The removal of the requirement for graphic representation means the filing of trade marks in digital file formats (such as MP3, MP4 or JPEG files), should be allowed and will facilitate the registration as trade marks of sounds and moving pictures. However, applications will still need to enable others to understand exactly what the mark is. As such, the changes are unlikely to help the registration of smell marks, since

the representation of these marks, graphical or otherwise, remains difficult.

While the above change will bring the UK into line with the position as it has been for EU trade marks since 1 October 2017, it should be noted that WIPO (the office in charge of International trade marks) still requires marks to be represented graphically and will not accept marks presented in electronic formats. Therefore, unless a UK trade mark was filed with a graphical representation, it will not be possible to use this UK trade mark as the basis of an International registration. In other words, while an applicant may be able to register a new UK trade mark with the filing of a .jpg file; it will not be able to then register this new mark as an International mark.

New defence in infringement proceedingsCurrently, a defendant facing an opposition (or an invalidity action) based on a trade mark registration that may be vulnerable to a non-use cancelation action (on the basis that this mark has not been used for a continuous period of five years for the goods/services covered) can request as a defence that the other side demonstrates genuine use of his mark. However, that defence is not available in infringement actions. In such instance, the defendant must issue parallel invalidity proceedings against the claimant’s trade mark registration (or counterclaim for invalidity) to prevail.

Under a new Section 11A the proprietor of a trade mark registration will not be able to seek to prevent use of a sign if that registration is liable to revocation for non-use. The defendant will be entitled to request that the proprietor proves use of his mark (if the mark

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Key point: Applicants should not rely on the UKIPO search report to determine whether their new mark (and use of this new mark) is at risk. It is prudent to conduct searches before a new mark is adopted (and filed) and ensure that these searches include expired marks.

Absolute groundsThe prohibition on marks consisting exclusively of shapes that perform a purely technical function, add value to the goods or result from the nature of the goods will be extended to cover any other characteristic that is intrinsic to the goods applied for. The UKIPO’s guidance gives the example of a repetitive high-pitched sound being considered an intrinsic part of a fire alarm and likely to be subject to an objection. According to the Guidance, these changes are likely to apply to only a very small proportion of marks, but if this kind of objection is raised against an application, it may be difficult to overcome.

InfringementsThe rights of trade mark owners have been extended slightly. In the case of counterfeit goods using a valid trade mark passing through the UK, it will now be up to the person shipping the goods to prove that the trade mark owner has no right to stop them being marketed in the country of destination (previously the trade mark owner would have had to prove that the goods were to be put on sale in the UK). Trade mark owners may also be able to take action against a wider range of items used to prepare for counterfeiting (tags and security features or devices), where there is slightly more uncertainty about the intention behind the production of the packaging, and in relation to services, as well as goods.

Yoann Fouquetyfouquet@vennershipley.co.uk

Own-name defenceCurrently, businesses may escape liability for trade mark infringement where the trade mark being asserted is for a word that matches their name, providing that their use of that name is in accordance with honest practices. This “own-name defence” will be removed in respect of companies; the new Section 11(2)(a) will specifically state that the defence only applies to use by individuals using their own name or address. Furthermore, the use of a sign as a trade or company name has been specifically included in the list of infringing acts (Section 10(4)(c)(a)).

Key point: It is crucial that appropriate searches are conducted before a new trading or company name is adopted, to ensure that use of this new trading/company name does not infringe prior trade mark rights.

Search reportsThe UKIPO stopped examining new trade mark applications on the basis of relative grounds in October 2007 and does not object to a new application on the grounds that it conflicts with a prior mark. However, the UKIPO has continued to perform (very) limited searches and alerts new applicants of prior marks that might conflict with their applications.

These alerts used to include prior registrations which had expired less than a year earlier, on the basis that these marks could be restored. This will stop. Section 6(3), which included expired registered marks within the definition of “earlier marks” in the context of relative grounds for refusal, will be repealed. As a result, the UKIPO will no longer include expired marks in its search reports.

This may put new applicants at risk because they will not be notified that their new mark is identical (or confusingly similar) to an expired mark and could have their application opposed (and their use of the mark blocked) if the prior mark is restored. To protect applicants who started use of their mark in good faith, proprietors of expired but later restored marks will not be able to bring infringement actions in relation to the periods during which their marks were expired up to their restoration. However, the protection does not extend beyond that period.

“It is prudent to conduct searches before a new mark is adopted (and filed) and ensure that these searches include expired marks.

”has been registered for more than five years when the action was brought) and if genuine use cannot be proven (or proper reasons for non-use shown) the action will fail.

Key point: This change is welcomed; it will stop trade mark owners from relying on old unused rights in infringement cases and remove the need for use to be challenged by way of separate revocation action. For trade mark owners it means that, more than ever, it is advisable to regularly ascertain that their trade mark registrations are used for the relevant goods or services. If not, this may affect their ability to enforce their rights in these registrations.

Proof of use Also worth mentioning is the new way the five-year period is to be calculated. Under the old version of the Act, should an opponent rely on a trade mark registration in support of his opposition, he might have had to prove genuine use of that earlier mark during the five-year period ending with the date of publication of the opposed mark.

This sometimes led to strategic actions on the part of an applicant. For instance, an applicant knowing that his application could be opposed on the basis of an earlier trade mark registration, could deliberately delay the publication of his mark so that at the date of publication the problematic earlier mark would have been on the register for more than five years and, if it was used to oppose the new mark, subject to the requirement that genuine use be proven.

Under the revised version of the Act, the five-year period will not be calculated from the date of publication of the opposed mark but from its filing date (or its priority date, if applicable).

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“is the term computer software sufficiently clear and precise, and, if not, what is the consequence?

”

The caseSky objected to the use of the trade mark SKYKICK by SkyKick. Sky owns various registrations for SKY in word and stylised word format. The Judge decided that, provided they were validly registered, the SKY marks would be infringed by use of SKYKICK.

The Judge noted that some of Sky’s registrations had specifications which exceeded 8,000 words, were very broad and went way beyond Sky’s core business areas.

He stated that trade mark registrations are powerful tools which confer exclusivity in the registered mark in relation to the registered goods and services. The specification must, as a matter of policy, be sufficiently clear and precise so that anyone viewing the Register can understand the extent of the registered rights.

The specific terms under the spotlight were, respectively, computer software, financial services and insurance services but the principles under review could apply equally to other broad terms such as telecommunications services.

Sky Plc v SkyKick UK LimitedCan a trade mark be validly registered for computer software?

Mr Justice Arnold referred four questions up to the Court of Justice of the European Union (CJEU) here. The term computer software was pivotal to the case and was therefore considered in some detail.

The basicsTrade marks are registered for a specified list of goods and services and this specification goes a long way to defining the scope of protection of

the mark. For example, the identical word POLO has been registered by VW for vehicles, by Nestlé for confectionery and by The Polo/Lauren Company for clothing. None of these businesses can claim exclusivity in POLO across all goods but, provided the trade mark specifications and corresponding commercial use are suitably well delineated, both the register and the marketplace should be able to withstand POLO coexistence without consumer confusion.

Trade mark specificationsTwo recent decisions in the UK High Court by the same Judge have considered similar questions concerning registered trade mark specifications in the UK and EU and the possible impact if (i) an unclear and imprecise term is contained in the specification, and (ii) the applicant does not have an intention to use the mark on all the goods and services contained in the specification.

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Some of Sky’s registrations covered computer software. The Judge considered this term “unjustified and contrary to the public interest because it confers on the proprietor a monopoly of immense breadth which cannot be justified by any legitimate commercial interest of the proprietor”. His view was that software covers such a wide variety of applications that it is not credible one business would engage in all possibilities. There are two issues here. Firstly, is the term computer software sufficiently clear and precise, and, if not, what is the consequence? Secondly, what is the consequence (if any) of a finding that Sky could not have intended to use its mark across the entire breadth of computer software possibilities?

i) Sufficiently clear and precise?In light of the above, the Judge has referred the following questions to the CJEU:

1 Can an EU trade mark or a national trade mark registration within the EU be declared wholly or partially invalid on the ground that some or all of the terms in the specification are lacking in sufficient clarity or precision to enable the competent authorities and third parties to determine the extent of the protection conferred by the trade mark?

In other words, might an imprecise term jeopardise the registration in part (i.e. strike out the term from the registration) or in whole (i.e. strike out the whole registration)?

2 Is a term such as computer software lacking in sufficient clarity or precision?

The Judge expressed his personal view in the decision that computer software does have sufficient clarity and precision.

ii) Intention to use – bad faith?Under the UK Trade Marks Act 1994, an applicant for trade mark registration must either be using the mark in relation to all the goods and services applied for or else it must have a genuine intention to do so. If the applicant lacks this intention at the point of application, this is “bad faith” and can be the basis of an invalidity action in the UK. An invalidated registration is struck from the Register as though it never existed.

Proving lack of intention is difficult. However, after cross-examination of a Sky witness, the Judge concluded that certain goods and services were included within Sky’s registrations purely as a strategy to seek very broad protection for their marks, regardless of whether it was commercially justified. On this basis, he was prepared to infer a lack of intention on the part of Sky to use its registered marks in relation to certain goods, including bleaching preparations and whips. He made the same inference where computer software was concerned because Sky’s marks had not and could not have been used across the entire breadth of the category Unlike the UK, there is no express legislative requirement for the applicant of an EU mark to have a genuine intention to use it. However, some case law suggests that such a lack of intention may constitute bad faith. In order to clarify the EU

perspective, the Judge asked the CJEU:

1 Can it constitute bad faith to apply to register a trade mark without any intention to use it in relation to the specified goods or services?

2 If yes, is it possible to conclude that an application was made partly in good faith and partly in bad faith if the applicant had an intention only to use the mark in relation to some of goods/services but not in relation to others?

The second question is important in order to determine whether a registered mark could be partially invalid or wholly invalid once a finding of a lack of intention to use has been made against any one or more product or service.

A link to the Judgment is here: http://www.bailii.org/ew/cases/EWHC/Ch/2018/155.html

Fidelity v FidelisCan a trade mark be validly registered for financial services?

The caseThis was another infringement case in the High Court before Mr Justice Arnold. Fidelity claimed that Fidelis had infringed its rights in the trade mark FIDELITY by use of the mark FIDELIS. Fidelis counterclaimed that the FIDELITY registrations were wholly or partially invalid due to inclusion of the broad phrase financial services within the registered specification. Fidelis also claimed Fidelity had registered their marks in bad faith due to inclusion of the general term insurance services when the marks had only been used in relation to pension-

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related insurance services. Fidelity could not have had an intention to use their mark across the whole spectrum of insurance services. Other issues were addressed in the case but are not relevant to this article.

The Judge restated the position on the interpretation of trade mark specifications, namely that terms are to be ascribed their ordinary and natural meaning. Services are considered inherently less precise than goods, and should not be interpreted so liberally that they lose clarity and precision.

Here, financial services were considered to be “less objectionable than computer software” insofar as the term may possess clarity and precision. However, the Judge still concluded this point was arguable and there remained the possibility that the FIDELITY registrations were invalid. This would depend on the response to the questions he referred to the CJEU in SkyKick.

The bad faith claim relating to insurance services was also held to be arguable. The key question was whether Fidelity had a reasonable commercial rationale for registering the general term or whether it was only justified in registering a narrower term such as pension-related insurance services, insurance bonds, life insurance. There is a presumption here of good faith unless the contrary is proven and the burden of proving bad faith lay with Fidelis. On the facts, the Judge considered it unlikely that Fidelity had acted in bad faith but, in the current uncertain state of the law, the point was arguable. It is noteworthy as a separate issue that he cut down the FIDELITY specifications so that

insurance services were reduced to pension-related insurance services because, when required to prove use, Fidelity was only able to do so in this specific area. There had been no use in other categories such as car insurance, home insurance, travel insurance and so on.

A link to the Judgment is here: http://www.bailii.org/ew/cases/EWHC/Patents/2018/1097.html

Venner Shipley’s trade mark opinion:It would be very surprising if the CJEU rules that computer software is not sufficiently clear and precise to be a validly registered term. Multiple EU trade marks are registered for computer software and it would be a radical change in practice with serious consequences. That said, it may be unrealistic for trade mark owners to claim exclusivity in their registered marks in relation to software across all possible applications. After a period of five years on the register, a UK or EU trade mark becomes subject to a use requirement. If attacked, it can be revoked to the extent that it has not been used in relation to any of the registered goods and services in the absence of proper reasons for non-use. It is likely that, if attacked for some reason, registered specifications which include computer software as a broad term will be trimmed down

to a more specific type of software on which the mark has actually been used, e.g. computer games software. This also applies to other broad terms such as financial services and insurance services. However, for the first five years of the registration, it may remain possible to retain very broad protection.

From a practical perspective, there are advantages and disadvantages to broadly registered trade mark specifications and each case should be taken on its merits. What is clear from the SKYKICK decision, however, is that unrealistically broad specifications which lack business credibility may not be accepted at face value as having been filed with a genuine intention to use the mark across the full spectrum of goods and services. In certain scenarios, such as the SKY registration which covered whips and bleaches, the validity of some or even all of the registration could be called into doubt.

Camilla Sextoncsexton@vennershipley.co.uk

“it may be unrealistic for trade mark owners to claim exclusivity in their registered marks in relation to software across all possible applications.

”

Venner Shipley News

Ashleigh is a trainee patent attorney in our Electronics & Engineering team. She graduated with an MEng in Aeronautical Engineering. During her final year project, she specialised in analysing the performance of multifunctional aerospace materials with both energy-

storing and structural capability. Prior to joining Venner Shipley, she worked in technology transfer for a world-leading university where she gained experience assessing the patentability of new inventions and responding to examination reports.

Paul heads our Manchester office and is a dual-qualified patent and trade mark attorney, and a qualified IP litigator. Paul has a strong technical background in engineering and a particular interest in manufacturing, utilising his expertise to undertake drafting work

and to prosecute patent applications through the UK and European patent systems. His appointment allows the team to provide specialist advice across the whole IP spectrum from patents to trade marks, and in all technical fields, from biotechnology through to manufacturing and software. Jan Walaski (managing partner) commented: “We are delighted to welcome Paul to head up our Manchester office. His background and experience is a great fit for us to strengthen and grow our support to clients across the Northern Powerhouse cities.”

Ashleigh WaldronMEng

Paul MisselbrookPhD MEng CPA EPA ETMA CTMA

Since our last issue of Inside IP we have continued growth in our Electronics & Engineering team and regional offices.

Antoine is a trainee patent attorney in our Electronics & Engineering team. He studied Engineering at the University of Cambridge, specialising in Machine Learning and telecommunications. In his final year, he designed a novel channel code for wireless communication channels.

Antoine DupuisMEng

Ronique HossainBSc MSc

Lawrance is a trainee patent attorney in our Electronics & Engineering team. He graduated from the University of Cambridge with a distinction in MEng. In his final year he focused on Semiconductors, Power Electronics and Sensor Technologies.

Lawrance ChiangMEng

Monifa PhillipsMPhys PhD

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Sinthuja is a trainee patent attorney in the Electronics & Engineering team. Sinthuja has experience in the drafting of European patents, and prosecution of European and US patent applications in the fields of electronics, telecommunications computer-

implemented inventions, and domestic appliances. Sinthuja graduated with an MSci (Hons) in Physics from University of Nottingham, where she covered Classical, Quantum and Theoretical Physics.

Sinthuja ViyasarMSci

Monifa is a trainee patent attorney in our Electronics & Engineering team. She studied Physics at the University of Sheffield before embarking on a PhD within the Materials and Condensed Matter Physics group at the University of Glasgow.

Ronique is a trainee patent attorney in our Electronics & Engineering team. Ronique graduated from UCL in July 2017 with a degree in Mathematics with Economics. Subsequently, he completed a Master’s in Artificial Intelligence at the University of Edinburgh in 2018.

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“I'm delighted to start my role as President of the EPO, an organisation already respected greatly for the services that it offers.

”

European Patent Office NewsThe EPO has a new president. António Campinos has now taken office having been elected to succeed Benoît Battistelli by the Administrative Council of the European Patent Organisation, the EPO's legislative body, for a five-year term.

Mr Campinos has an impressive record of 20 years of executive leadership experience in the Intellectual Property field, and he has shown his leadership skills as Executive Director of the European Union Intellectual Property Office (EUIPO) for seven years. Before that, he was President of the Portuguese Institute of Industrial Property (INPI) and served as the Portuguese representative on the EPO’s Administrative Council.

One of Mr Campinos’s most pressing tasks will be to smooth relationships between the EPO’s Administrative Council and its 7000 staff following a number of controversial reforms to EPO service regulations spearheaded by Mr Battistelli. Although the objective of the reforms was to modernise the EPO and improve its efficiency, it is reported that they have caused some internal strain.

In his first statement as EPO President, Mr Campinos said: "I'm delighted to start my role as President of the EPO, an organisation already respected greatly for the services that it offers. The EPO is undoubtedly a success story and we want to build upon that by assessing with our staff and stakeholders if improvements can be made. That means working to ensure that the Office will not only be efficient, but also effective in delivering high quality patents to our users to support Europe's innovation sector."

With the EPO recognised as issuing high-quality patents covering a market of 700 million people over 44 countries, the challenge for Mr Campinos is to ensure that the EPO maintains its status as a world leading patent organisation.

The appointment of Mr Campinos did not come as a surprise. His only competitor was Cuno Tarfusser, an Italian judge at the International Criminal Court. No more than one round of voting was necessary to reach the qualified majority of three quarters of the votes of the 38 member states.

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The EPO’s annual Quality Report was recently issued, with over 5000 users taking part in the survey. The level of user satisfaction for the EPO and patent administration services increased to 89 percent in 2017 from 80 percent in 2015, according to the report.

The EPO average pendency in examination time has been reduced to 22.1 months, compared to 23.5 months back in 2015. Timeliness of patent cooperation treaty examination procedures has also been improved, with the percentage of international applications filed and transmitted within 28 months rising by two percent in 2017, and by 16 percent in total since 2012.

In other news, 20 December 2018 marks the 40th anniversary of the first published European patent application, EP 0 000 001. The first published application was filed by Euratom, the European Atomic Energy Community. It was published in German and relates to a thermal heat pump.

The initial batch of European patent applications published on that first day was made up of 112 documents. They came from applicants based throughout Europe, the USA, Japan, and elsewhere, and related to diverse subject matter including herbicides, locks, centrifuges, solid catalysts, and pharmaceutical compositions.

In other developments, a validation agreement between the EPO and the Kingdom of Cambodia recently entered into force. This is the latest development to expand the territory over which protection can be obtained by means of a European patent application well beyond the borders of the EPC member states.

There are currently 38 member states of the European Patent Convention (EPC), which are Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Lithuania, Luxembourg, Macedonia, Malta, Monaco, Netherlands, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland &

“the EPO is not an institution of the European Union and the UK’s membership of the EPC is entirely unaffected by Brexit.

”publication of the European patent application. A request for registration and grant in Hong Kong must subsequently be filed upon grant of the European patent.

The EPO also has a number of Patent Prosecution Highway (PPH) agreements in place with other patent offices, including JPO (Japan), KIPO (South Korea), SIPO (China), USPTO (USA), ILPO (Israel), CIPO (Canada), IMPI (Mexico), IPOS (Singapore), IPA (Australia), SIC (Colombia), ROSPATENT (Russian Federation), MyIPO (Malaysia) and IPOPHL (Philippines). The Patent Prosecution Highway offers a mechanism by which positive examination results in one office can be used to accelerate patent prosecution in a second office.

Finally, no commentary is complete these days without mention of Brexit. However, when it comes to patents in Europe, it is business as usual. The EPO is not an institution of the European Union and the UK’s membership of the EPC is entirely unaffected by Brexit. Indeed, since the result of the UK’s referendum on EU membership, there has been no let-up in the large number of European patent applications filed by British applicants and attorneys. The EPO’s recent Annual Report shows that UK businesses continue to file a large and growing number of European patent applications, with an increase of 2.4% in 2017, the fourth consecutive year of growth. We look forward to further positive developments in the future.

Matthew Handleymhandley@vennershipley.co.uk

Liechtenstein, Turkey, and the United Kingdom. All of these states are automatically deemed designated upon payment of a single designation fee. When a European patent is granted, it must be validated in each designated member state in which protection is required, whereupon it confers the same rights as national patents granted directly by the national office.

There are also currently 2 extension states, Bosnia & Herzegovina (BA) and Montenegro (ME). Since 1993 there have been 10 states that have signed extension agreements with the EPO, 8 of which have now become full EPC member states. These agreements enable patent rights provided by European patents and patent applications to be enforced in the extension states, despite those states not having acceded to the EPC.

There are also 4 validation states, Morocco, Moldova, Tunisia, and, most recently, Cambodia. Validation agreements between these countries and the EPO are like extension agreements, allowing protection to be obtained in non-EPC member states, however, they are not limited to European countries. Validation states are not to be confused, however, with the process described above of national validation in EPC member states.

To extend protection to extension and/or validation states, additional fees need to be paid, within the same deadline as the request for examination. Specific post-grant validation requirements also apply in extension and validation states, in order for the patent to be effective.

Patent protection can also be obtained in Hong Kong by means of a European patent application. In a first stage, a request to record the designated patent application must be filed within 6 months of

As the Internet of Things revolution gathers pace, we take a look at the challenges that are likely to face applicants seeking to protect new IoT-related inventions.

Patenting the Internet of Things

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program must provide a solution to a technical problem. Unfortunately, however, the law does not provide a single definition of what is meant by ‘technical’ in this context. Consequently, it is usually more constructive to discuss the meaning of ‘technical’ with reference to specific examples, rather than attempting to come up with a generic definition.

For instance, consider a hypothetical system in which the novelty lies in the fact that a blockchain ledger is used to track a chain of transactions relating to the same physical asset. A blockchain inherently contains information about all transactions in the chain, and can allow an audit trail to easily be constructed. In the case of non-performance of one of the contracts in the chain (e.g. failure to deliver the agreed goods), the blockchain audit trail can allow quick and easy identification of point along the chain at which the fault occurred, which ordinarily would be a time-consuming and complex process under current systems. However, from a patentability perspective, an EPO examiner might well object that this constitutes a solution to a business problem, rather than being a solution to a technical problem.

Conversely, consider the example of an asset performance management (APM) system in which an AI algorithm receives data from smart sensors which are monitoring a piece of equipment in an industrial facility. The sensors could measure parameters that provide the algorithm with information about the current physical state of the equipment, such as the surface temperature, humidity levels, vibration, noise, and so on. The AI algorithm then processes the sensor data to attempt to predict when failure of the equipment is likely to occur, so that an engineer can be despatched to repair or replace the part in question before failure occurs. In this way, it is possible to avoid a situation in which the component fails unexpectedly, potentially damaging

IntroductionThe Internet of Things is one of the technology sectors at the heart of the so-called Fourth Industrial Revolution (4IR), which also encompasses such diverse fields as robotics, AI (Artificial Intelligence), 3D printing and autonomous vehicles. A 2016 study by the McKinsey Global Institute estimated that by 2025 there will be around 26-30 billion IoT-enabled devices in the home and workplace. This proliferation of connected devices will undoubtedly drive numerous innovations, many of which will of course be eligible for patent protection, as researchers explore new applications and use-cases.

Unsurprisingly, the number of 4IR-related patent applications has grown commensurately with increasing R&D activity in this technology sector. In a study titled “Patents and the Fourth Industrial Revolution”, the European Patent Office (EPO) found that the number of 4IR-related applications filed at the EPO increased by 54% from 2013 from 2016, making it one of the fastest-growing technology sectors in terms of the number of patent filings over that period.

In this article, we will look at examples of some of the types of innovations that can arise when developing IoT systems, and discuss the key issues that need to be considered when assessing the patentability of IoT-based inventions.

IoT software patentabilityAs the number of connected devices and smart sensors increases, so too will the volume of data being generated by those devices. Regardless of whether that data is sent to the cloud for processing, or is processed at the network edge, the software that processes the data and generates some form of output can be eligible for patent protection in its own right, provided certain criteria are fulfilled.

To answer the question of whether a new software program is likely to be eligible for patent protection in Europe, it is first necessary to consider the function that the software performs, and in particular the problem that is being solved. It is well-established in European patent law that in order to be eligible for patent protection, a novel software

other components and resulting in further system downtime while a replacement part is procured and installed. If the only novelty lies in the AI algorithm itself, and the new algorithm is able to predict when a failure will occur with greater accuracy than existing solutions, then the system incorporating the novel AI-based software may well be patent-eligible on the grounds that it solves a technical problem, namely how to improve the reliability of the system as a whole.

It is also worth briefly mentioning the potential impact of 5G on the patentability of IoT software solutions. The next generation of mobile communication networks, referred to as fifth-generation or ‘5G’ networks, will enable machine-to-machine communications at significantly lower latencies than can be achieved with existing 4G technology. Particularly in industrial IoT (IIoT) applications, where latency is often of critical importance, existing solutions have typically been limited to data-gathering and analysis without performing real-time control, due to the relatively high latency of 4G (or older) networks. It is anticipated that the lower latency of forthcoming 5G networks will enable the next generation of 5G-based IIoT systems to control industrial processes in real-time.

This is of particular relevance when it comes to the patentability of software, since under both UK and European patent law a technical effect is normally present if the new software has an effect on a process carried on outside the computer, for example, controlling machinery on a production line. Of course, a software program which controls a 5G-based IIoT system will still need to meet the usual requirements of novelty and inventive step. However, the fact that a physical process is being controlled should help to satisfy the ‘technical effect’ requirement, and ought to mean that patent applications

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“As the IoT sector matures and competition in the marketplace becomes more intense, it will become increasingly important for companies to protect the IP in their commercial products.

”

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directed to these types of software-based solutions will have one less hurdle to overcome.

IoT hardware patentabilityThe second of the two examples mentioned above, namely an APM system which can more reliably predict the failure of a piece of equipment, can also be used to illustrate types of hardware innovations that are likely to be patentable in an IoT context. In the example described above, the only novelty lay in the software algorithm that is used to process the data. However, it is equally conceivable that the reliability of the AI prediction may be increased by modifying the hardware to improve the quality of the data that is fed into the algorithm. Here, if the novelty lies simply in substituting a more accurate temperature sensor for the sensor that would normally be used in existing systems, and the improved type of sensor is itself already known, then it is likely that this would be considered to be an obvious modification and therefore would not constitute a patentable invention.

On the other hand, if the invention lies in the realisation that relocating the sensor to a different position on the equipment will provide a temperature reading that gives a better indication of the likelihood of failure, then this modification may well not have been obvious. For example, experiments may have revealed a surprising correlation between the temperature at a particular part of the equipment and the observed failure rate. If so, then it should be possible to secure patent protection for a system comprising: (i) the equipment itself; (ii) an IoT temperature sensor disposed in the new location; and (iii) a server configured to receive temperature data from the sensor and use the data to predict when the equipment will fail, even though the individual hardware components may themselves be known. Also, in some cases it may be possible to obtain independent protection for (i) and (ii) together, without having to include the server.

Of course, in addition to improvements at a system level, there are clearly many opportunities for patentable inventions to arise at the component level. Improvements to hardware components such as energy harvesting mechanisms, power supplies, batteries, wireless transceivers, antennas, sensors, actuators, and so on, may well be eligible for patent protection in their own right.

IoT use-cases: point solutions to specific problemsAs more and more devices become IoT-enabled, the number of potential use-cases will increase. At the recent IoT Solutions World Congress 2018 in Barcelona, it was often remarked that the IoT sector should not be seen as a single market from a commercial perspective, as the range of potential IoT use-cases are too diverse to be considered as one all-encompassing market. Instead, delegates were encouraged to think in terms of ‘a thousand million-dollar markets’ as opposed to one billion-dollar market. However, a consequence of the fragmented nature of the IoT sector means that there are numerous opportunities for start-ups and SMEs to succeed by offering point solutions to specific problems.

Returning to the APM examples discussed above, it will usually be the case that the invention has been developed with a particular application in mind. For example, the APM system may have been designed to predict the failure of mechanical bearings in a steel rolling mill. However, it may be theoretically possible to apply the same principles to other types of systems in which similar bearings are used. Consequently, there may be a temptation to draft patent claims broadly without specifying the environment in which the component is operating.

However, in reality there may not be any commercial need to protect these other theoretical use-cases. For example, failure of the same type of component in other systems

might be relatively inconsequential, in which case there may not be a commercial market for an expensive IoT-based APM solution. Drafting claims too broadly at the outset can complicate matters during prosecution, as otherwise unrelated prior art may be cited. Also, it may be more difficult for a patent examiner to identify the technical problem that is solved by the invention when the claim scope is too broad, resulting in objections that would not otherwise have been raised if the claims had been drafted more narrowly at the outset. Therefore in cases where a business model has been built around a single use-case, as is often the case for start-ups, applicants may wish to consider drafting their claims narrowly to focus on the specific application that is relevant for their business. This can help to improve the chances of success for the patent application, and to reduce costs during prosecution.

SummaryAs the IoT sector matures and competition in the marketplace becomes more intense, it will become increasingly important for companies to protect the IP in their commercial products. Without proper protection in place, competitors will be free to introduce their own copycat products, resulting in a negative impact on market share and profits. However, by being careful to spot potentially patentable inventions at an early stage when developing new IoT solutions, and by drafting claims that provide a clearly-defined solution to a specific technical problem and therefore support a strong inventive-step argument, companies can build a patent portfolio that will allow them to maintain their competitive edge.

Robert Corkrcork@vennershipley.co.uk

www.vennershipley.co.uk

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2019 AIPPI World Congress is coming to London!September 15 - 18 2019The annual AIPPI World Congress is taking place in London during 2019, and to celebrate, we are hosting a drinks reception at a landmark London location on the evening of Tuesday 17 September 2019. It will be a chance for us to celebrate Venner Shipley's recent expansion and to catch up with our clients and friends from across the globe whilst they are in London.

Further details to follow on our website. If you would like to attend our event, please email mail@vennershipley.co.uk requesting further information.

If you would like further details on the conference please visit: https://aippi.org/event/2019-aippi-world-congress-london/

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One year on the impact of Actavis v Eli Lilly in the UK courtsOver a year has passed since the Supreme Court handed down its groundbreaking decision in Actavis v Eli Lilly in July 2017. The landmark decision fundamentally changed the UK’s approach to the scope of protection of patent claims and infringement by equivalents, and opened the door (ever so slightly) to accessing the prosecution history when dealing with issues of infringement or claim interpretation. Here, we review some of the recent decisions of the lower UK Courts which have concluded that purposive claim construction remains the correct approach when considering novelty.A year ago we reported on what is undoubtedly the most important decision in UK patent law in recent years: the Supreme Court’s decision in Actavis v Eli Lilly [2017] UKSC 48 (‘Actavis’). In this update we consider how the lower courts have begun to interpret the Supreme Court’s decision and what unanswered questions remain.

The Supreme Court’s decision in ActavisAs detailed in our article last autumn, the key issue in Actavis related to claim scope and direct infringement. In summary, the Supreme Court defined how the scope of protection could be widened beyond the normal interpretation of the claim when considering infringement by variants. In particular, instead of only purposively construing the claims it considered infringement using a new two part test:

(i) Does the variant infringe any of the claims as a matter of normal interpretation? If not,

(ii) Does the variant nonetheless infringe because it varies from the invention in a way which is immaterial?

The second limb of the Supreme Court’s new approach involves applying the reformulated Improver

questions (now renamed the ‘Actavis’ questions). Of particular note, the notional addressee of the patent is now imbued with the knowledge that the variant does indeed work when considering whether it would have been obvious that it achieved the same result in the same way.

Prior to this case, it was a settled legal principle of UK patent law since the House of Lords’ judgement in Synthon v SmithKline Beecham [2005] UKHL 59 (‘Synthon’) that claims should be interpreted in the same way when considering either validity or infringement: the approaches mirrored one another. However, the Supreme Court has now stressed that there should be a clear distinction between the concepts of claim interpretation when assessing novelty and the issue of scope of protection afforded by the claims when considering infringement.

As the Supreme Court only considered claim construction for the purposes of infringement, there has been much speculation in recent months as to how far the doctrine of equivalents would apply to novelty when validity is being assessed. In recent months the High Court has had to consider the issue of whether an equivalent, or variant, in the prior art would be enough to destroy novelty and overturn the patent in question.

Some of these cases are discussed briefly below.

What is meant by ‘normal interpretation’?In Generics & Ors v Yeda & Ors [2017] EWHC 2629 (Pat) (‘Generics’), the claimants sought revocation of a patent concerning a dosage regime of glatiramer acetate used in the blockbuster drug Copaxone. The claimants argued that a piece of prior art disclosed an equivalent regime that anticipated the claims and so destroyed novelty. The defendants’ position was that settled law meant that the claim would only lack novelty if the subject matter disclosed by the prior art fell within the claim as purposively construed.

In his judgement, Mr. Justice Arnold considered the first limb of the Supreme Court’s test and what was meant by a ‘normal interpretation’ and whether this required a new approach to claim construction. However, he concluded that the Supreme Court had intended the first limb to still require the claim to be construed in order to determine what the person skilled in the art would have understood (i.e. purposive and not literal construction).

Mr. Justice Arnold then went on to consider the question of whether equivalents should be taken into account when assessing novelty. The defendants had advanced three arguments: firstly, that following Synthon, the infringement test for novelty did not extend to anticipation by equivalents as Synthon had been decided before Actavis; secondly, that the Guidelines for Examination at the EPO (based on decisions of the Technical Boards of Appeal) state that a claim is not to be deprived of novelty by an obvious equivalent in the prior art; and thirdly, that the Supreme Court’s decision in Actavis was based on Article 2 (relating to infringement) of the Protocol on the Interpretation of Article 69 EPC and so did not concern validity in any event.

Mr. Justice Arnold ultimately found favour with the defendants’ submissions, and that the new doctrine of equivalents should not be taken into account when assessing validity. However, in case he was wrong on this point he considered in the alternative and concluded that the claim would have lacked

novelty if equivalents were taken into consideration. Mr. Justice Arnold also remarked that ultimately it will require another decision of the Supreme Court to provide a definitive answer on the approach to be taken.

Further casesThe High Court has since agreed with the approach taken by Mr. Justice Arnold in Generics in a number of further cases, including: Fisher & Paykel v ResMed [2017] EWHC 2748 (Ch) (‘Fisher’); Illumina v Premaitha [2017] EWHC 2930 (‘Illumina’); L'Oréal v Ventures [2018] EWHC 173 (‘L'Oréal’); and Olaplex v L'Oréal [2018] EWHC 1394 (‘Olaplex’).

In Fisher, the High Court considered Actavis in a case concerning revocation of patents relating to masks used to treat obstructive sleep apnoea. The claimants argued that the claims had a broad scope of protection and so were anticipated by the prior art, whilst the defendants argued for a narrower interpretation in the hope of avoiding the prior art and upholding their patents. Infringement was not in dispute as had the patents been valid, then they would have been infringed by the claimants’ devices.

In his judgement, Richard Meade QC, sitting as Deputy High Court Judge, stated that in the absence of a decision of a higher court, the approach taken by Mr. Justice Arnold in Generics was correct and that the ‘normal interpretation’ required by the first limb of the test requires purposive construction. In addressing the second limb and the Actavis questions, the Judge stated that in his view the Supreme Court had equated ‘literal meaning’ with ‘normal meaning’ for the purpose of the reformulated questions. He also suggested that in light of the Supreme Court’s decision in Actavis it may be preferable to refer to ‘claim scope’ rather than to ‘claim construction’, to indicate that (at least for the purposes of deciding whether a claim extends to equivalents in relation to infringement) it is no longer permissible to use the one-stage purposive construction familiar from Kirin-Amgen v Hoechst Marion Roussel [2004] UKHL 46 (‘Kirin-Amgen’). The Judge did not give a view on whether a claim can actually be anticipated by a variant, except to say that it was an arguable view which he expects will be considered by a higher court in due course.

In conclusion, the Judge held ResMed’s patent to be both anticipated by the prior art and obvious. However, he also stated that there would have been infringement had the patent been valid. The outcome of this case, as in Generics, was not in the end materially affected by Actavis and the new law concerning equivalents. However, it is only a matter of time before a case presents where these issues prove critical.

Is the prosecution history now relevant?To what extent should the prosecution history be considered by the UK courts when dealing with issues of infringement or claim interpretation? Prior to Actavis it was widely discouraged with Lord Hoffman famously stating in Kirin-Amgen that “life is too short” to consult the file for the limited assistance it may provide. Now, following Actavis the door has been pushed gently ajar. The Supreme Court concluded that reference would be appropriate in a small number of cases, but only where: (a) the point at issue is truly unclear if one confines oneself to the specification and claims of the patent, and the contents of the file unambiguously resolve the point; or (b) it would be contrary to the public interest for the contents of the file to be ignored. Following Actavis, in both Illumina and L'Oréal, the High Court has stated that reference to the prosecution history of a patent should very much be the exception and not the rule.

Further clarity has now been given in the recent case of Icescape v Ice-World International [2018] EWCA Civ 2219 (‘Icescape’). In this case, the Court of Appeal held that if the appellants are permitted to run a case based on equivalents then the respondents should, provisionally, be permitted to rely upon the prosecution history of the patent. Ultimately, in Icescape the Court of Appeal held that the correspondence fell well below the threshold set by the Supreme Court and did not unambiguously resolve the issues. As such, the Court viewed this as a good illustration of why it is usually unhelpful to consider the file. However, now that there is more clarity on when the prosecution history may be relevant, it will be interesting to see if it ever proves determinative when considering issues of infringement or claim interpretation in future cases. Certainly, the increased likelihood of

the Court considering the prosecution history may lead to increased caution during European and UK patent prosecution in the future.

Looking aheadForetelling how a claim may eventually be construed during any future litigation is an important consideration many years earlier during patent prosecution. The Supreme Court’s judgement has clearly provided a wider scope of protection to patentees when considering equivalents and infringement. To date, only alleged infringers have attempted, albeit unsuccessfully, to take advantage of the change to the law when pursuing revocation actions and challenging novelty. However, the High Court has so far stated that purposive claim construction still applies to the assessment of validity. Interestingly, the Court of Appeal has in both Icescape, and Actavis v ICOS [2017] EWCA 1671 (currently awaiting the decision of the Supreme Court) also stated that the approach to normal construction has not changed in light of the Supreme Court’s decision and that the question remains “what the person skilled in the art would have understood the patentee to be using the language to mean”.

The apparent divergence between the approaches taken to interpret claims for the purposes of novelty and infringement will, ultimately, need to be addressed by the Supreme Court. But until then it will be interesting to follow how case law continues to develop in this area.

Paul Harrispharris@vennershipley.co.uk

David Pountneydpountney@vennershipley.co.uk

www.vennershipley.co.uk

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