IP in Film

With Christmas movies, old and new, hitting our screens, what better time for trade mark attorney Rachel Havard to delve into the wonder of the movie business, looking at how IP needs to be a consideration at every stage of the creative process.

With the festive season upon us there’s bound to be time for a few good movies, from the feel good family romcom you watch every year, to fairy tale animations, to blockbuster Hollywood franchises. As you snuggle down on the sofa and rummage round in the choccies tin for something which isn’t an orange or strawberry cream, give some thought to the enormous amount of work which goes into your favourite flicks, and the broad range of IP which protects all those creative efforts.

🎞️ Pre-production

A long time ago, in a writer’s house far far away, someone will have penned a story to be told. It may begin with a novel, a full screenplay, or a treatment to put to potential investors, but copyright will automatically be created in an original literary work.

Storyboards will be created, whole worlds and sets will be designed, built first as models to give an idea of feasibility for eventual production. Ornate, even otherworldly costumes will be designed. Character designs will be sketched out. Again, copyright would subsist in such artistic works.

Copyright will also arise in musical works, for new music, musical arrangements or score, which may be laid down a good time in advance of filming.

Copyright is a valuable automatic right in the creatives’ armoury of intellectual property. It is not necessary to register it in the UK but, to be able to enforce it if someone should copy your work, you’ll need to be able to prove that you created an original work yourself, and when. Keeping dated records is a must. Work can be marked with the copyright symbol ©, your name and the year of creation.

🎬Production

When moving into production, more copyright aspects will apply, and performers’ rights will exist in actors’ performances. Musical films will have their own musical performances. Sound and music recordings will attract copyright, as will the film recording itself. There will be production photographs, websites, social media promotions, trailers and movie posters with copyright too, promoting the finished product but while production is still underway.

Throughout the process, care must be taken not to infringe anyone else’s IP. Consideration should be given to any third party permissions needed. Royalties will need to be paid to copyright owners of existing music used in a film’s soundtrack. Use of quotes or extracts from copyright works of others should be authorised and accredited.

Product placement can be hugely beneficial as a marketing tool for brand owners. The James Bond/007 franchise has had significant promotional partnerships over the years, especially with car manufacturers, but often with a sad fate for the cars themselves!

Other productions create their very own brands, especially for their fictional world.  Red Apple cigarettes and Big Kahuna Burger spring to mind here, or Duff beer on the small screen.

🍿Movie Merchandising

Production companies will have registered their own trade marks and, often, will look to protect movie names by trade mark registration. There is also good reason to protect other trade marks, names or imagery unique to a film or series of films.

Fans of movies, especially big franchises, will want to collect merchandise. This will be branded, and associated trade marks will be registered.

The movie worlds of Star Wars, Harry Potter and Lord of the Rings are recreated in our real world for fans who want the same costumes and props themselves. Toys and action figures will be big sellers over the festive season. Movie franchise trade marks and characters adorn lunch boxes, bed linen, stationery and clothing. Books, comics and games related to the franchise will be created, branded and sold.

Original ideas will be perpetuated in spin off movies, stage shows, small screen series, or animated versions of live action features then, eventually, older movies will be remade and updated. But in all of this, IP will continue to be created, protected and enforced when infringed. Movies are big business, but so is the IP!

If you have any questions about how to protect IP of your own, send an email to hello@two-ip.com or contact us via our website here.

The 3 most important things for optimizing working between patent in-house counsel and private practice attorneys

Two IP founder and director Anna Molony was recently invited to speak at the CTC Legal Media Winter IP Conference.  Here, Anna shares the key takeaways from the discussion on the day for those unable to attend the event.

As part of the panel at the CTC Legal Winter IP Conference session “Maximizing synergy: nurturing dynamic partnerships between in-house counsel and private practice” I shared some of the things I’ve learnt from being in-house counsel and from working with in-house counsel clients as an attorney in private practice.

For those who didn’t make it to the Conference, here are

The 3 most important things I’ve learned about optimizing working between patent in-house counsel and private practice attorneys:

  1. Private practice attorneys – sometimes you really do need to have a serious level of expertise in the technology to protect it properly
  2. In-house counsel – don’t underestimate the value of giving the private practice attorney you’re instructing the business context of the invention
  3. In-house counsel – be really clear about how you want the private practice attorneys you’re  instructing to do the work you give them

So, how come I know about this?

Well, I’ve been on both sides of the in-house counsel/private practice relationship.

For a couple of years, I was in-house counsel at a high-tech, spin-out called Indigo Photonics. Indigo made optical fibre sensors and I lead the IP function internally, with external support from a private practice firm who did the filings and so on. During my time at Indigo I learnt about how R&D teams work and how to work with them, and I learnt about where IP sits within an early stage, VC funded business and I learnt a lot about what an in-house attorney needs from their private practice outside counsel.

As an attorney in private practice, I have worked closely with a number of corporate in-house IP teams, mainly with their patent departments. Each relationship is different in terms of the work that I do and how I do it. For one client, we are that outside resource that does the filings and so on, for another I have been drafting patent applications for nearly 20 years, and for a third I work 1 day per week for them, as a fully integrated part of their patent team.

I’ve learnt a lot about that relationship from working with each of those clients.

 

Let’s take a look in a bit more detail at those 3 most important things for optimizing working between patent in-house counsel and private practice:

  1. The problems that can arise if the private practice attorney doesn’t understand the client’s technology properly

As patent attorneys, we are great at getting our heads around a wide range of technologies and understanding them to a level that is “good enough” for us to be able to advise our clients. But, for clients who are leading the way in their technical fields, having a “good enough” understanding of the technology sometimes just isn’t, well, good enough. Expertise is needed.

I’ve seen enough poorly drafted patent applications in my areas of expertise (optical comms, optical fibre, lasers, photonics) over the years to know the problems that not properly understanding the client’s technology can cause. This is how it sometimes goes: I read the patent claims and I think “Hmmm”, and then I read the description, particularly the bits that have clearly been pasted in from the invention disclosure, and I think “Double hmmm. I can see what the invention is but that’s not really what the claims are covering”.

I have, in those circumstances, then had to draft an exam response – it’s not straightforward, overcoming the Examiner’s objections while at the same time trying to redraft the claims to cover the invention properly. I’ve also had to handle exam reports where the patent office Examiner hasn’t properly understood the invention. Both can cause serious limitations to the scope of the patent you can get and therefore on the commercial value of the patent.

In some areas of technology, if you don’t have a depth of understanding of the technology, you simply can’t describe it, and define the claims, properly. And, if the examiner doesn’t understand the technology, how can you explain where they’ve gone wrong if you don’t understand it fully yourself?

So, my first lesson to share would be this: in-house counsel, make sure that your outside private practice attorneys have the necessary level of expertise to fully understand your technology; and private practice attorneys, don’t take on work that you’re not technically qualified to cope with.

  1. The value of in-house counsel giving private practice attorneys the business context of the invention

The amount of information about an invention that you receive from a client can massively impact the quality of the work that you can do.

At one extreme, I’ve prepared exam responses where all I’ve had is the published application, the exam report, the prior art, and instructions to prepare a response that overcomes the objections. Now, I can absolutely do that. But without any access to the inventor or any information about which features of the invention are commercially important, my response may not actually result in commercially useful protection.

At the other extreme, one of my clients gives me access to a brilliant internal document that they have for each patent family. It’s a narrative of where the invention came from, what the commercially important features are, what’s happened during the prosecution of each application in the patent family, and notes from the inventors and in-house counsel. It is a fantastic source of context and supporting information for me when I’m preparing an exam response or considering whether we need a divisional application to protect any other features. I can highly recommend writing this type of document, the time spent is well worth the effort.

  1. The value of in-house counsel being really clear about how they want the outside counsel to do the work.

As in-house counsel, how tightly do you want to control how the private practice attorney that you’re instructing does the work you give them. What drafting style should they use? Is there an in-house style or are you happy to let them draft in their own way?

I’ve got a lot of experience of drafting applications using a template and very detailed drafting style guidelines from the client. But I also have clients whose in-house counsel are happy for me to draft in whatever style I think best, on the basis that I know as much about the technology as they do. Both have their merits and their disadvantages.

The first approach can result in a very highly controlled patent portfolio but it requires a significant amount of input from in-house counsel. And not every qualified attorney will be happy having their work scrutinized on a regular basis. I’m used to it and I’m pretty comfortable with it because I think there’s always something new to be learned.

The second approach, letting people work in their own way, will probably be more comfortable for most private practice attorneys. And I think drafting can be easier to do if you’re not trying to squeeze it in to someone else’s preferred approach. However, it may mean that your patent portfolio is less consistent and, possibly, of more variable quality.

Copyright rowed back

The intersection of copyright law and craftsmanship has long been a contentious issue, and few cases highlight the debate better than WaterRower’s battle to protect its iconic rowing machine.

Patent attorney Neil Kilpatrick, who once acted for WaterRower, delves into the complexities of the case, unpacking the legal clash between UK and EU interpretations of copyright.

As the courts wrestle with defining “artistic craftsmanship,” Neil sheds light on the broader implications for intellectual property law and design protection, leaving us to ponder where the line between art and craftsmanship truly lies.

It’s been a long wait, but the scope of copyright to protect 3D articles and products has been given a set-back after WaterRower lost its argument that its iconic water rowing machine does not qualify as a work of artistic craftsmanship.

The WaterRower is an aesthetically pleasing, “nice to look at” piece of exercise equipment. It’s featured prominently in TV and film and has been displayed and sold by the Design Museum and MoMA. It’s undoubtably a great design and WaterRower rightly try their best to protect their product and its status.

Knowing this, back in 2019 I was faced with a dilemma – competitors were producing products that strayed closer and closer to WaterRower’s main product line and design. Indeed one that they had been very successfully manufacturing and selling since the late 1980’s. All patents had lapsed, and unregistered and registered designs were also past their end date. Setting aside trademarks, the only IP right left was copyright.

The traditional thought is that copyright protects artistic, literary, musical works, not products. However, these artistic works can include sculptures and works of “artistic craftsmanship”. And what is a work of artistic craftsmanship? Why a work by a craftsman who is also artistic of course.

Is the WaterRower a work of artistic craftsmanship? Well, in my mind it actually didn’t matter. EU case law binding in the UK had established that copyright subsists regardless of artistic merit. So it should subsist in works of artistic craftsmanship without the artistry – a work of craftsmanship. Thus began WaterRower’s dispute with Liking.

So which approach is correct? The broad EU one that copyright exists for all original works, or the UK one that requires original works to also conform to a set of categories. This is the crux of WATERROWER (UK) LIMITED v LIKING LIMITED (T/A TOPIOM) [2024] EWHC 2806 (IPEC).

I will leave the legal detail to another day, but you can tell that the judge wrestled with this dilemma. Indeed, 15 months passed from hearing to judgment. In the event, he found that whilst the WaterRower has aesthetic appeal and the designer could be considered a craftsman, it does not have artistic quality.

How does this square to EU law (still binding on the UK post-Brexit)? Well, in my opinion it doesn’t – although perhaps the judge felt bound to follow UK precedent even whilst acknowledging this inconsistency.

Personally, whilst I do not dislike seeing copyrights “overreach” being rowed back, I still see the glaring mismatch between copyright and how it is applied in the UK and in the EU. I feel that UK law or at least the approach taken by the UK courts needs to be clarified. Until it is then this will remain a valid but uncertain option for proprietors seeking to prevent copycats.

So will WaterRower appeal? I no longer act for them since moving firms, but I hope so. However I suspect that until the Supreme Court gets the opportunity to discuss the issues with the law and earlier precedent, that we will continue to be left wondering when a craftsman becomes an artist craftsman and so when craftsmanship becomes artistic craftsmanship.

If you would like further advice or support, please get in touch via our website here or email us at hello@two-ip.com.

European Patent News – No legal basis to require patent applicants to amend European Patent application description to conform with allowed claims

Another European Patent Office (EPO) Boards of Appeal decision has been issued on 4th October stating that there is no legal basis to require amendment of a patent application description to bring it into conformity with the allowed claims. We take a look at what it means for European patent applicants.

In T 0056/21 (Adaptation of the description/HOFFMANN-LA ROCHE), the EPO Board of Appeal has held that there is no legal basis to require adaptation of the description to conform with the allowed set of claims in a European patent application. The decision summary states that: “In examination of a patent application, neither Article 84 nor Rules 42, 43 and 48 EPC provide a legal basis for requiring that the description be adapted to match allowable claims of more limited subject-matter”.

European patent applications are regularly required to amend the description in this way and patent attorneys are universally opposed to it, for several reasons. Most important of which is that the content of a patent application amended in this way can adversely affect the scope of related patents in other jurisdictions. This is because the EPO requires that any embodiment that is not, in its opinion, covered by the allowed claims is specifically identified as not being an embodiment of the invention – not something you really want on public record in the event of future patent litigation in, for example, the US.

In this particular case, the EPO Examining Division objected that the description contained “SPECIFIC EMBODIMENTS”, which contained claim-like clauses”. Claim-like clauses usually consist of an earlier set of claims, for example, from a priority founding application or a parent application of the application in question. Patent attorneys include them so that the entire content of the priority founding or parent application is contained within the application being examined, in case amendment back to earlier claims becomes necessary or the applicant wants to file a divisional application to a different set of claims.

The examining division held that these “claim-like” clauses made the application unclear as to the actual scope of protection as defined by the claims, contrary to the requirements of Art. 84 EPC and these claim-like clauses had to be removed according to the EPO Guidelines.

The Board of Appeal disagreed, stating that there is no legal basis to require the application to be amended in this way.

As more of these decisions keep appearing, European Patent Attorneys keep hoping that the EPO will see the error of its way and remove the requirement from the Guidelines for Examination for amendment of the description to conform with allowed claims. Unfortunately however, the Board of Appeal in this case also stated that it is “not concerned with the correctness of the Guidelines for Examination and, even less, with a possible need for their correction.”

The Board also stated that “To the extent that the Board’s interpretation of the European Patent Convention differs from an interpretation that may follow from the Guidelines for Examination, the Board’s reasons for the divergence should be readily understood [the reasons for the decision]. However, such reasons do not oblige the President of the Office to “correct” the Guidelines for Examination under Article 10(2)(a) EPC. Indeed, the Board’s decision has a binding effect only on the examining division that issued the decision under appeal (Article 111(2) EPC).”

So, once again, we await a decision from the Enlarged Board of Appeal to, hopefully, get rid of this ridiculous requirement that the EPO brought in when it amended the Guidelines for Examination.

You can read the full decision here: https://www.epo.org/en/boards-of-appeal/decisions/t210056eu1

A time for designs?

In today’s fast-paced business landscape, intellectual property (IP) protection is crucial for safeguarding innovation and securing investment.  In this article Two IP patent attorney Neil Kilpatrick explores the growing importance of design rights and highlights how businesses can leverage design protection to deter copycats and maintain a competitive edge.

If Dragon’s Den has given the UK public anything, it is the awareness that IP is crucial for securing investment and protecting businesses. Almost every enquiry I receive, from clients new and returning, focus on whether, and how, their latest innovation can be patented.

But in reality, not all products are new and inventive enough to meet the patent threshold. Other innovations, such as software or artistic creations are excluded from patent protection. Even for the best inventions, the patent process is a multi-year journey, with an often uncertain path towards protection. And of course if the idea has already been disclosed then a patent can be dead on arrival.

Fast fashion, or first follower?

Patents don’t suit all businesses. Whilst a patent covering product fundamentals is still the best way to secure market share, product innovation has become more and more focussed on the yearly update, the killer new feature, the brand refresh. IP filings are reflecting this trend. Patent filings are broadly flat over the past few years, whilst registered design filings are up 1154.9% between 2015 and 2023.1

Design, prepare, protect

Designs protect how a product looks. They are the perfect tool to deter and stop pure copycat competitors. Being a valid and issued IP right, they are a powerful tool for IP takedown action on the key online marketplaces.

The design system is flexible and made with business in mind. For the UK (and the US and Europe at least), designs can be filed up to 6 months after being disclosed. The process itself is also fairly straightforward and quick compared to patents. Produce the required formal drawings, submit the request and pay the (reasonable) official fee, address any formal objections, and receive an issued certificate. Timescales of weeks (c.f. years for patents) from start to finish provide quick business certainty.

Practical Tips

Up, down, left, right, top, bottom, and perspective. These are the standard typical views needed for a successful design filing. Consistency is key here – there can be no ambiguity between what is shown in one view and visible in another. Accordingly, the best design drawings are generated straight from the CAD file, albeit for designs we want technical line drawings. A technical draughtsman and attorney input here pays dividend in the long term.

The next question is what to show, what to emphasise, and what to omit. Is a particular colour key? Or are we interested in the colour contrast? Omitting all colour is broadest, but a blank box is not likely to be valid. Similarly, features can be emphasised or ignored by using dashed or dotted lines to disclaim elements.

Multiplicity

All the questions above give many branching options for what a design is focussed on protecting. Each design is a compromise between breadth and validity, and can’t do everything all at once. The design system knows this and has been set-up to encourage multiple design filings made together by tailoring the fee structure in this way. One design can emphasise features on the front of a design, a second features on the back, a third the overall shape or colour, etc. By building a thicket of protection around your core product you stop not just full copycats, but also companies who “take inspiration” from your ideas.

Enforcement

With your registered design you can now use it to protect your commercial advantage. Designs are powerful tools because they shift the onus for proving copying to the defendant. “Prove you didn’t copy my registered design” is a much harder question for a competitor to answer than any broad accusation that they did copy. Also, being a registered right, they are easy to use for online-marketplace takedowns, which are a powerful tool for quickly blocking the sales of competitors.

1. https://www.gov.uk/government/statistics/facts-and-figures-patents-trade-marks-designs-and-hearings-2023

If you would like further advice or support, please get in touch via our website here or email us at hello@two-ip.com.

Bands and brands – Two IP trade mark attorney Rachel Havard reports from the field … literally!

As this summer’s music festival season draws to a close, Two IP trade mark attorney Rachel Havard has some observations on how two significant influences in her life – festivals and trade marks – are becoming more intertwined.

In my 20s and 30s, I was a regular at Glastonbury Festival, back when it was easy to get tickets for a big group of friends, friends of friends and hangers-on, and it didn’t used to sell out.  With focus on worthy causes rather than brand placement, it did not feel at all commercial.  Rather, you were transported to another land, even another time, for those few glorious (and sometimes rather muddy!) days around the Summer Solstice. 

Some lovely festivals, like the Phoenix, sadly folded because there were too many festivals and not enough interest.  These days, Glastonbury is on everyone’s bucket list, and just getting tickets for you and your closest friends can be as likely as winning the Lottery.  Once again, though, festivals are everywhere!

Small bohemian festivals, which we’ve happened upon by chance, have been the most fun.  The excellent Maui Waui Festival, which began in Suffolk and now moved to Norfolk, is about as far away from corporate as you can get, offering a magical escape from a world which can seem driven by consumerism and big brands. But festivals cost so much to stage.  Our own village runs a great little music festival for around a thousand people each year, but could not do so without the sponsorship of local businesses, and to support charitable causes as well.

For my last summer festival of this year, I joined my teenage daughter for All Points East in London’s Victoria Park, presented by Uber One.  This was a very different experience, where my day job as a trade mark attorney and my passion for a good festival merged together.  From the free cans of Coke Zero handed out to several thousand of us as soon as we walked through the gate, the 19 Crimes themed area, to the sponsored stages, including Amex Unsigned and L’Oreal Paris branded stages, and the enormous Cupra branded tent housing one of the main stages, brands were everywhere, just as they are in the real world.  

But did this detract from a damn good day out?  Absolutely not!  Big brands are wise to what a good promotional opportunity festivals can be.  So many people now want to experience festivals, and exposing them to brands when they are at their most relaxed and happy is great for reinforcing the distinguishing power of those brands.  

As for the bands: Sir Chloe, Wasia Project, TV Girl and Towa Bird were my highlights – best not mention that most of them were small children (or not yet born!) back in my own twenty-something Glasto days.  

You’re never too old for a good festival, or to discover new music.  And personally, I don’t mind a trade mark or two to jolly it all along.

If you have any questions about your own trade marks, branding and IP protection, please do get in touch with us hello@two-ip.com, or visit our website at www.two-ip.com.

WIPO releases new Guide to Trade Secrets and Innovation

You are probably familiar with patents, trade marks, designs and copyright as types of intellectual property – but do you know about trade secrets?

Trade secrets are valuable confidential information and can help you gain (and keep) your competitive edge over the rest of the market. The World Intellectual Property Office (WIPO) has just released a new Guide to Trade Secrets – here’s our overview of what’s in it (and why you should take a look at trade secrets in your business).

The strategic role of trade secrets in the innovation ecosystem and the world economy

Trade secrets should foster fair competition, enhance the efficiency of the innovation ecosystem and facilitate generation of commercially valuable information.

What is a “trade secret”?

A great example is the Coca-Cola recipe, which has been kept secret since 1891 (the Guide lists lots of different types of information that might be protected as trade secrets)

How to keep your trade secrets, well, secret. And how to manage them.

You need to protect your trade secrets against theft and leakage, and contamination with third parties’ trade secrets. Strategic exploitation of your trade secrets and their valuation can help you build value in your business.

Enforcement action you can take if someone steals your trade secret.

You can take litigious or non-litigious action when a trade secret has been misappropriated. Injunctions and monetary remedies can be available through the Courts.

Who owns trade secrets that arise during collaborative innovation?

It is important to set out in any collaboration or join venture agreement who will own all foreground IP rights, i.e. those that are created through the collaboration. This should include trade secrets as well as patents and know-how. Particularly if you are collaborating with a University.

Digital trade secrets – what are they and how can you identify them?

Trade secrets can also exist in digital objects. Similarly to digital copyright, timestamping and digital signatures are useful for identifying digital trade secrets as yours, so you can prove ownership, or copying, in the future.

You can read the WIPO Guide here: https://www.wipo.int/web-publications/wipo-guide-to-trade-secrets-and-innovation/en/index.html

If you would like further advice or  support, please get in touch via our website here or email us at hello@two-ip.com

Emotional Perception: the aftermath – protecting AI at the UK IPO

Following the Emotional Perception decision, did the IPO miss an opportunity to clarify its guidelines for examining AI and artificial neural network implemented inventions?   And what takeaways can we learn from the July Appeal Decision which found in favour of the UK IPO?
Patent attorney Coreena Brinck writes an updated article following the appeal decision which was published on 19th July 2024, and found in favour of the UK IPO.  Of her original article (which can be read here), Coreena says ‘I was torn at the time of writing, as whilst I really wanted the UK IPO to become more favourable to patenting AI technology, I didn’t think the decision would survive the appeal’.
So what can we learn from the appeal decision?

I have worked for many years as a European and UK patent attorney with computer-implemented inventions, but mostly file with the European Patent Office.  Why?  Well, the UK Intellectual Property Office has a fundamentally different approach to how claims to inventions which are implemented using a computer-program are searched and examined.   

As most will know, after a patent application is filed with a patent office, that patent office will review the claims (which define the legal rights sought) so that they only relate to an invention which meets the requirements for patentability.   This is usually done in a strict sequence – a search is performed, and then the application is examined based on what prior art was found in the search.  Most inventors are aware that to be patentable an invention has to be novel, inventive, and capable of some form of industrial applicability.  In addition, however, the subject-matter of the claims must be eligible subject-matter for patent protection.  In the UK (and most European) patent offices this means that the invention claimed must be more than a computer-program per se, and must be more than a mathematical method per se, amongst other objections.

The reason why the EPO is favoured over the UK IPO for computer implemented inventions for which UK patent protection is sought, is that the UK IPO search examiner can decide there is no invention that meets the UK IPO’s tests for patentable subject-matter BEFORE they search, meaning they don’t need to conduct a search, and the applicant has no opportunity to argue in the examination phase why the Examiner may be wrong and why the invention as claimed should be considered to have patentable subject matter.  The only way to address this is to appeal against the UK IPO search examiner’s opinions, which considerably escalates costs at this early stage of the proceedings (searches are usually conducted a few months after filing, so that the search results can be used as the basis for making foreign filing decisions within the priority year).

In contrast, at the EPO, a search will usually be performed if there are technical means involved (which there are inherently for any computer-implemented method etc) and then during examination if the Examiner considers the invention to not meet the EPO’s tests for patentability, the applicant has an opportunity to defend why the invention should be found patentable.   

Last year, an applicant for a UK patent relating to music selection using an ANN system appealed against the UK IPO’s rejection of their application.  They argued that it did meet the required standard for the subject-matter to be found patent eligible.  They lost against the UK IPO’s Hearing Officer, but appealed successfully against the Hearing Officer’s decision.  The UK IPO then appealed this successfully and we are now back to the original status quo in terms of UK patent practice.  But can we learn anything from this regardless of the long term outline?

I think that unfortunately this was not the best case to really test the UK IPO and bring about a change in practice, but things were looking very optimistic at one point. In the appeal from the UK IPO Hearing Officer’s decision, Emotional Perception AI Ltd v Comptroller-General of Patents, Designs and Trade Marks [2023] EWHC 2948 (Ch), the High Court decision found in favour of the applicant and overturned the decision by the IPO hearing officer to refuse a patent application on the basis the AI-related invention was nothing more than a computer program per se and so formed unpatentable subject matter.

The Emotional Perception decision which was then handed down by the High Court on 21 November 2023 led to a fundamental revision of the IPO practice as examiners were no longer able to treat ANN inventions as excluded subject matter under the computer program per se objection.  This practice change has since been recalled. This is a huge shame.

Now despite the announcement by the UK government in August 2024 that AI funding will be hugely cut back, the UK is likely to increasingly rely upon innovative AI and ML technology to boost our economic recovery.

The patent rights obtained in the UK as a result of taking either the UK IPO or EPO filing route successfully (assuming the European patent is validated in the UK after grant) legally have the same effect so far as protecting an invention in the UK.  The EPO route is more expensive, but once other factors such as the risk of not having the invention searched and needing to file an appeal to progress a patent application for an invention involving a CII has been factored in, and possibly not getting the application to succeed even then, the EPO is usually much cheaper.  In fact, it is a great bargain as it gives the opportunity to validate the European patent once allowed in multiple EU countries as a Unitary Patent as well as individually in non-EU countries like the UK and Norway, which are also members of the European patent convention.  However, the official fees along in Europe are around a factor of 5 times more expensive, and that is before any excess claims fees have been factored in.  This is a big issue for some computer implemented inventions involving AI, as there may be a desire to protect a product including the AI system, the AI system, the training method, the operational methods etc – and so it can be useful if some idea of whether these are patentable is obtained before the UK IPO.  At the UK IPO, up to 25 claims to be searched before excess claims fees (at a reasonable £20 per excess claim over 25) are incurred.  In contrast, excess claims fees for European patents kick in for the 16th claim onwards, and cost around 275 Euros per claim up to the 50th claim, and are considerably more than this (currently 685 Euros) for the 51st claim onwards.   

So I can’t but feel here in the UK we are at a disadvantage compared to elsewhere in Europe where national patent offices more closely follow the European Patent Office (‘EPO’) approach to patent examination of computer-implemented technology. The patent offices in Nordic states including Sweden and Denmark (and Luxembourg) are some examples of national patent offices which do excellent search and examinations which are more like the EPO in their analysis for a very reasonable cost.

Of course, whilst these national offices can be used by UK start-ups and SMEs as an alternative to the IPO, and I have filed and prosecuted various CII and AI inventions with Nordic patent offices, I can’t help but feel here in the UK we should have our own national route available for small inventors and start-ups to follow if they can’t afford the far higher cost of filing for patent protection before the EPO.

So, as things stand, the EPO still is, in my opinion, the favoured route for obtaining patent protection in the UK for many forms of computer-implemented invention simply because the EPO approach for assessing patentable subject matter is more predictable for inventions involving AI although this may change when the Court of Appeal Court issues its decision.  Alternatively, consider first filing with the Swedish patent office, for example, for a search (and examination) on a par with the European patent office but for a fraction of the price.  This can then be used to make a decision about whether to first file with the EPO later or not, for far less cost.

When I read through the Emotional perception judgements, several things stood out.  Firstly, I felt there was something rather nebulous being grasped by the High Court judge which was somewhat overshadowed by several of the subsequent arguments.  This was that in the Emotional Perception invention, there were two ANNs, one training the other.  

So when the UK judge made certain comments about how the technical effect of one ANN could be considered a trained ANN, I believe he was talking about the output from on ANN being used to cause another (trained) ANN to come into existence.  In my opinion, that is (arguably) something technical.  BUT, if both trained ANNs are in effect part of the same overall computational model, it will not necessarily help with the UK IPO, as the tests applied by the UK IPO are very different.   Moreover, what is being fundamentally being achieved outside the computer system is very important.

In the successful appeal by the UK IPO, the UK IPO Comptroller was able to overturn the previous decision by the HC, on all four of the following grounds:

i. The HC Judge erred in holding that the exclusion from patent protection for a “program for a computer … as such” was not engaged;

ii. The HC Judge was wrong to rely on the Appellant’s ‘concession’ that a hardware ANN was a computer but it was a computer with no program, or words to that effect;

iii. The HC Judge was wrong to exclude the consideration of the mathematical model exclusion; and

iv. The HC Judge was wrong to hold that the claimed invention involves a substantive technical contribution.

The reasoning given in the judgement, was that subject only to the step of sending a recommended file to a user, the whole remainder of the contribution made by the invention (where the contribution referred to here is the contribution for inventiveness based on the UK’s approach to assessing inventive step under Aerotel Ltd V Telco Holding Ltd [2007]), was consisted of a program for a computer and nothing more. 

In this case, the function of the computer program was considered to be providing improved file recommendations (for music files). The appeal by the HC was considered to hinge, once the correct characterisation of the function of the computer had been found, which  was stressed as being critical to determining patentability, on whether the Hearing Officer was right to find the subject-matter exclusion applied, because the beneficial effect the file recommendation was of a subjective and cognitive nature, or whether the HC Judge was right to hold that the exclusion did not apply, because even though what made the file recommendation better was not technical criteria (because the semantic similarity is a subjective matter), the ANN had reached that result by “going about its analysis and selection in a technical way”.   

In the end, the appeal by the UK IPO was successful as it was concluded that the semantic similarly of the files was found to what led to them being recommended, which was considered to not be technical.  Whilst there is UK patent case law which might have been helpful regarding patentability when technical information was made available outside a computer system,  in this case, the fact that there was an external transfer of data (the file recommendation) did not help as the information made available was considered not technical for the same reason:  “What matters is the correct characterisation of the data being transferred …” 

A fundamental takeaway from this judgement in my opinion, is that it stresses correctly characterising the function of a computer program may be critical in terms of whether it is making a technical contribution or not, which may ultimately affect its patentability.   

TAKE AWAYS

Patenting AI systems requires in most patent jurisdictions working out what technical benefit or contribution to the prior art is being made by the ANN.   This means not just describing what the ANN is being used for, but how it is structured to achieve that and any benefits of the particular AI model architecture used in that respect.  These benefits may arise, for example,  from the type of model used, or its learning rules for updating for weights, or from the sort of data is used to train an ANN, or how the output from the ANN is applied in a real-world context.

If there are more than one ANN, what each ANN does should be described, particularly if there are different technical effects/benefits which may be either directly or indirectly attributable to one of the ANNs. So, for example, if you have two or more ANNs, each may need different data, to be differently trained, for different amounts of time, and with different levels of confidence/accuracy.  If the result of training one ANN affects how another ANN is trained, and if the collective training will have an internal effect on the accuracy of the system output for example, these should also be explained.  So rather than just summarise what technical character the system output has, it can be useful to add a breakdown of the contributions from each ANN to that technical character to the description.  This does, of course, mean that some AI specifications are larger than patent specifications for other types of invention, as there is simply more to describe to present the invention in all its facets in the best possible way to allow a patent to be granted.  It also means that AI drafting can take longer and this means it is more of an expensive process.  Given all this though, a good AI patent specification with claims could be infringed by competitor’s technology may be incredibly reassuring to have if there is any likelihood of having to disclose your AI systems architecture to the EU AI office under the terms of the new EU AI act.

If you are interested in patenting any AI technology, do reach out to me for a preliminary discussion.

If you would like further advice or  support, please get in touch via our website here or email us at hello@two-ip.com

UK IPO launches new SME funding programme, IP Advance

If you are an innovating SME, protecting your intellectual property and having an IP strategy that supports your business are critical to achieving your growth potential.

The UK IPO has just launched up to £4,500 funding to help you with this – here’s what you need to know.

The UK IPO’s IP Advance funding programme offers two levels of support:

  1. IP Audit: this provides part-funding of £2,250 (including VAT) towards the cost of having an IP Audit carried out by a suitably qualified IP professional and you need to contribute £750 (including VAT) towards the cost. You receive an IP Audit identifying IP rights in your business and giving recommendations, costs and timelines for obtaining IP protection for your rights. You also receive a follow-up meeting with the person who carried out the IP Audit to discuss the recommendations.
  2. IP Access: this provides a contribution of up to £2,250 (including VAT) for IP advice to progress an IP strategy or implement recommendations from the IP Audit.

You can apply for either or both levels of funding; receiving IP Audit funding is not a prerequisite to receiving IP Access funding.

You can apply for the funding through Innovate UK Business Growth in England, Scottish Enterprise, Highlands & Islands Enterprise, South of Scotland Enterprise, Invest Northern Ireland or the Welsh Government, depending on where your business is located.

Two IP is an Innovate UK supplier for providing these IP Audits and the ongoing IP Access advice. We work closely with Innovate UK Business Growth advisors to deliver these services to SMEs referred to us by Innovate UK.

Get in touch to discuss IP Audits, IP strategy or IP protection for your business by emailing hello@two-ip.com

Robust IP: What is it and how do you spot it?

What do the terms ‘strong’ or ‘robust’ intellectual property actually mean? In this article, experienced patent attorney Timothy Powell explores the critical factors that investors and companies should consider when evaluating the robustness of their IP assets.

Often when talking to investment professionals one hears mention of “strong IP” as a desirable feature in target companies.  It is not unusual to learn that the IP policy of an investment vehicle is only to invest in companies with “robust” IP, or some such.

What do these companies mean when they refer to “strong”, “robust” or “high-quality” IP?  Do they really know what separates “strong” IP from weak IP?  Is it truly possible to talk of “strong IP” in a start-up, whose patent applications have not progressed to the stage of allowance (let alone being tested for validity in a court or opposition action)?

This article seeks to clear some of the fog surrounding the so-called strength of intellectual property assets, and especially patents.  By the end you should have a better idea of the main factors; and I can provide further information in a tailored seminar or webinar for those who want to know more.

Unavoidably we start with a little information about the process of obtaining a patent, since the stage reached on a patenting journey can provide useful pointers.

Before it All Starts: Pre-Filing Patent Searches

It is readily possible to undertake investigations, usually referred to as “searches”, before filing of a patent application.  The aim of these is to try and establish whether a new invention is novel, before the cost of preparing and filing a patent application is incurred.

In an ideal world every company, large and small, would have access to efficient patents searching services; they would find out about the novelty of each invention at an early stage; and they would save much wasted effort and cost spent pursuing patent applications for non-inventive ideas.

Actually in many ways this ideal world exists, because reputable and professional searching companies are out there ready and waiting for searching and reporting instructions.  They have for many years been improving the accuracy of their searching techniques and the useability of their reports, and their services are available to anyone who chooses to pay for them.

So our first pointer is that any potential investment target that can point to effective pre-filing searches producing favourable indications of invention novelty (and, better still, education of its inventors and technology managers on the meaning of the search results) probably enjoys a greater likelihood, than a company without this information, of the company’s patents being “strong”.

Money Talks

Why then do not all start-ups commission pre-filing searches?  There can be several explanations, including for instance a conviction that there is no-one else researching the exact technology space of the company in question (such that searches would be a waste of time).  This however is a relatively rare reason compared with the admittedly prosaic, but more common, one that start-ups very often simply have not budgeted for pre-filing patent searches or their interpretation.  A far-sighted investment target therefore is one whose seed funding includes an allowance for searches and, as explained below, a patenting strategy based on the results of those investigations.

Note the emphasis on this being desirable at the seed funding stage.  Any invention forming the subject of a patent application must be novel as of the application filing date.  This means that pre-filing search results are likely only to be of value if they are generated, and any desired patent applications filed, before any non-confidential disclosure of the invention occurs.  Unless a start-up has a well-developed confidentiality policy that is effectively enforced there is a real chance that a product launch will have occurred or a non-confidential disclosure made at an early stage in the company’s life cycle.  In order to guard against the risk of rendering the invention unpatentable on lack of novelty grounds it is strongly desirable that searches are completed at an early stage and, depending on the search results, at least an initial patent application filed during the same phase.

So another useful pointer is that the seed funding of a start-up includes a budgeted amount for intellectual property searches and applications.  In brief, in  many cases it is too great a risk to leave these aspects until a later stage of the company’s development.

Strategic Interpretation

Merely instructing the completion of pre-filing searches, however, while a sign that a company takes IP issues seriously does not mean that the search resultsare good (or bad, or indifferent).  In other words it is necessary not only to commission searches; but to interpret their results as well.  Another pointer therefore to a company having justified confidence in the strength of its IP is the existence of an analysis, by an experienced professional, of the results of pre-filing searches.

Better still is an action plan based on the analysis.  This may involve changing the emphasis of the company’s patent applications, alterations in the lists of countries where protection is desired, the undertaking of additional R & D to counteract third party patents revealed by the searches, or any of a range of further options.  Regardless of the exact form it takes the existence of a search-derived plan is a very good indicator that the company’s IP is in good shape (or is in the process of being improved, at any rate).

Filing Milestones

The process of obtaining a patent is lengthy and involves a number of stages.  The filing step is the first one and on its own often tells little about the quality of a company’s IP, being in one sense no more than a statement by the applicant entity of what it thinks it ought to be able to protect.  Investors should not be misled about patent quality by the mere filing of a patent application, no matter how bold the claims made in it.

A more important, subsequent stage is the issuing of a search report by a reputable patent office.  This should be consistent with the results of any pre-filing searches (which do not carry official weight but as explained can be powerful indicators of patentability and related aspects).

However sometimes the official searches throw up unwelcome surprises.  A target company that has encountered trouble at this stage should be candid about unexpectedly adverse official search results; and should show itself to have a flexible IP strategy at such a time.

In contrast a company that is not open about adverse developments at this stage either may lack confidence concerning its IP; or may have realised, too late, that its initial patent application(s) did not contain sufficient descriptions of useful variants on the basic invention as to support amendments addressing the effects of unexpected, unfavourable prior art.  Neither situation is a good indicator in a target company.  Indeed a failure to recognise potential grounds of IP invalidity can have far-reaching effects and may significantly devalue the IP assets of a company.

Country Strategy

Another key point concerns the range of countries in which a company files patent applications.  Ideally a company will include budgets for patents in key jurisdictions.  What counts as a key jurisdiction may be judged with reference for instance to the presence of manufacturing rivals, potential sales markets and the ease (or otherwise) with which patents and other IP rights can be enforced.  Look for signs that seed and A-Series funding include allowances for a patenting programme that matches the “key jurisdiction” strategic analysis.

It’s a Numbers Game (or Is It?)

The subject of country strategies leads nicely on to a caveat, which is not to be unduly impressed by the sheer numbers of patents (or patent applications) a company possesses.  There is no limit to the number of patent applications a company can commission but this on its own says nothing about the quality of the underlying inventions or indeed the skill with which the patent applications have been drafted.  A more detailed investigation is required, and simple numbers of patent applications on their own may be a misleading indicator.

This is especially true when multiple patent applications relate to say only one or two patent families (i.e. groups of related patents/applications usually directed to only one underlying invention).  A single patent family can be extended to multiple countries and thereby give rise to tens of patent applications.  This allows a company truthfully to say it has 10, 15 or however many patent applications, without admitting that it has only one invention worthy of the name.  It is important to be alert to careless terminology when talking about the numbers of patents owned by a company.

Evergreening

“Evergreening” in the context of IP refers to the practice of having a continuing R & D schedule that gives rise to developments based on the originating technology of the target company.  Evergreening is often extremely useful in prolonging the overall patented life of a product and moving the market in ways that confound rivals.  This can be so even if an initial patent application is regarded as “pioneering” and hence of particular value.

As is always the case, the more IP a company requires the more it costs; but a thought-through approach to evergreening suggests a sophisticated attitude that is not always encountered. It is another sign of the strength of IP in a company.

Other Forms of IP

This article focuses chiefly on patents, but these of course are not the only IP rights available.  Companies that use (for example) registered designs to protect particular product aesthetics or packaging; trade marks to protect brands; and recognition of unregistered IP rights again show themselves to have a deeper understanding of intellectual property issues than others.

A particularly good indicator in my view is the existence of an effective trade secret recording and management process.  This often goes hand in glove with well-organised R & D practices and is a sign that the target probably will find it comparatively easy to defend attacks on the validity of its IP assets.  A deep dive into the non-patent IP assets in other words often reveals much about the overall attitude of the company to IP topics; and a company with high-quality IP practices should be able to produce schedules of such assets without difficulty.

Likelihoods

As indicated I can only talk in terms of the probabilitythat a company has strong patents.  Why is that?  Well, firstly, despite all the advances in database searching and the recent introduction of AI into the searching process, there remains a subjective element in at least the interpretation of search results if not in their initial generation.  That subjective element carries through to examination of a patent application, in which a human (i.e. a patent office examiner) is responsible for determining whether a patent should be granted.

Even once a patent is granted there remains an uncertain aspect of its validity; and partly for this reason a granted patent remains open to an invalidity-based attack throughout its life.  Judging of patent validity in litigation will remain the preserve of humans for the foreseeable future and this further means that unless the validity of the patents is tested in court we can never state with complete certainty that a company’s patents are “strong”.

Nonetheless the more of the foregoing features one can identify, the more input there is to a company’s strategy by experienced IP advisors and the greater the confidence with which the target company can point to the positive features, the greater is the chance that one has encountered an investment target with “strong” IP.  This is all the more likely to serve the purposes of (a) acting as a barrier to entry by competitors; (b) becoming a vehicle for licensing revenue; and (c) adding to the asset value of the company.

Do you want to know more? Perhaps you still have questions?

– How do you effectively instruct patents searches?

– What do you do when adverse search results arise?

– Which patent offices have thorough examination processes?

– In which countries is patent enforcement most effective?

– Are certain countries important for particular technology areas?

– What details of a company’s IP portfolio really make a difference, and which ones are problematic?

If you would like me to provide a free, tailored webinar or in-person seminar on related aspects, please get in touch at TPowell@two-ip.com.