Navigating the complexities of patenting AI inventions

AI innovation is moving fast—but can the patent system keep up? Drafting patents for AI systems isn’t just about protecting technology; it’s about bridging the gap between coders, technical experts, and legal frameworks.

 

With evolving regulations and the challenge of defining inventorship, securing strong IP protection requires careful strategy. Two IP patent attorney and AI expert Dr Coreena Brinck shares what you need to know.

Drafting patents for AI systems presents a complex array of challenges, particularly when it comes to inventions involving inventor teams who may be experts in different disciplines.

AI inventions can often be a result of collaborative efforts between coders, technical specialists in various areas, for example, medicine, and commercial managers, each with their own understanding of what the invention is, and possibly each having their own technical language to describe what may be the same thing in practice. 

On top of this, are the various ways that code can be generated for any computer-implemented invention these days. For example, many coders and programmers rely on libraries of code snippets or pre-existing code modules and computer models to build their own platforms and systems and some also use generative AI applications to automatically generate source and/or executable programs using prompts (an example here being Claude, also available as a mobile phone app). This can lead to a lack of awareness over implementation and may bring additional challenges and complexity not just from describing how to implement an invention but also when it comes to identifying who exactly made various inventive contributions.  The later is essential not just as the fundamental right to a granted patent rests with the inventor(s) unless assigned away, for example, to their employer, but also as only humans can currently have such ownership rights and this means non-human inventors are not allowed by patent offices.

Patenting complex technology accordingly means professional help may be crucial for success.  Not only can a patent attorney help assess whether an invention is eligible for patent protection, but they can also determine who should be named as an inventor in view of their contribution to the invention.    A patent attorney can also keep track of your patent application as it progresses which may include revisiting the question of inventorship as the inventors listed in the initial patent claims may differ from those who are ultimately listed in the granted claims, making the process even more fluid and challenging.

The issue of AI-assisted inventorship is further complicated as different patent offices have different guidelines and regulations.  As of February 2025, the European Patent Office (EPO) does not allow non-human inventors to be named on patent applications. This rule means that AI systems, while they may play a significant role in the invention, cannot be listed as inventors, even though they may arguably have contributed to generating part or all of the inventive idea.

In patent drafting, a key challenge for protecting inventions involving applied AI, where a known AI model is used in a new way for a particular application, may be simply identifying what AI model(s) can be used in the invention and how their features and characteristics, including how the AI system is trained and functions operationally, contributes to a technical effect.  The inventors may not have thought of their invention in this manner and it can be perplexing for them to understand what information they may need to share with their patent attorney so that the patent specification includes sufficient information to “teach” how their invention can be implemented by others skilled in that technical field.

Assessing what is sufficient information is not straight forward and can be particularly challenging for core-AI inventions.  In some situations, during the training stage, details such as the volume, source, and cleaning/pre-processing of training data may need to be provided. What counts as “trained” and when the training process should stop may be other important factors to describe for some models.  The weight learning algorithm of the ANN and initialization methods may need to be explained for some core models and it may be that a training method contributes to a different technical effect from that provided by the trained ANN model. The various possible training methods may also need to be described, and whether one or more different types of training are possible.  For example, training may be supervised, unsupervised, on-going or continuous, in some situations.

If the training is on-going, it is crucial to describe what this means, as well as how errors are measured ongoingly and how this can impacts the performance of the model.

The operational stage of the AI system may be the core commercial proposition that the applicant wants to protect from its competitors.  In this case, how the trained AI system is being used should be explained, and a causal link provided including any post-processing of its output so that the AI system as claimed provides a patentable technical effect.

Finally, given the ongoing evolution of AI technology and regulatory frameworks, considerations like the EU AI Act are become increasingly important. Inventors and patent professionals must navigate the fine line between patenting the AI system, protecting trade secrets, and utilizing open-source and defensive publications to safeguard innovations without over-disclosing sensitive details.

Ultimately, patent drafting in the AI space requires clear communication among diverse stakeholders with varying levels of expertise, clear and consistent language to be used in documentation of both the technical and operational stages, and some understanding of the AI regulatory landscape is also helpful. Successfully balancing technical disclosure, confidentiality, and patentability is what makes AI patent drafting a particularly complex and evolving field – as well as why I so enjoy working in this area.

If you are seeking guidance on protecting your AI inventions, you can contact Coreena via our website here or email us at hello@two-ip.com

Innovation saves lives – but only if we protect it

During the COVID-19 crisis, we saw a spike in vaccine patent applications – but why does that matter? Because intellectual property rights (IPR) aren’t just legal protections; they’re the foundation of life-saving innovation. Without them, groundbreaking research wouldn’t have scaled into global solutions.

Curious about why IPRs matter to biotech and life sciences innovators, and how their use played out in the COVID-19 pandemic and beyond? Two IP patent attorney Sheena Linehan explains more. 

In the realm of biotech and life sciences, the ‘Why’ of protecting intellectual property (IP) is deeply connected to the mission to advance human health. Safeguarding IP is essential for fostering innovation, allowing groundbreaking medical discoveries to be developed and scaled to address pressing health challenges.

Why protecting Intellectual Property matters

The primary purpose of intellectual property rights (IPR) in this sector is to incentivise the development of new medical solutions. The process of creating vaccines, therapies, and medical technologies demands significant investment in research and development. By securing IP, organisations can protect their innovations from unauthorised use, allowing them to recoup investments and fund further research. This protection is crucial for translating scientific discoveries into accessible health solutions that benefit society at large.

Securing patents and other IP rights allows organizations to:

✅ Secure investment for R&D and clinical trials

✅ Form strategic partnerships for clinical development and large-scale manufacturing

✅ Enter new markets and foster global accessibility through licensing and collaborations

The COVID-19 pandemic highlighted a critical role for IP in public health. The University of Oxford developed a candidate COVID-19 vaccine ChAdOx1 and secured its IP. To ensure widespread access, they licensed this IP to AstraZeneca, which carried out clinical trials and franchised production to global partners, facilitating mass production and distribution. AstraZeneca notably partnered with the Serum Institute of India (SII), which alone manufactured over a billion doses. This collaboration was pivotal in delivering vaccines to low- and middle-income countries, demonstrating how strategic IP management can serve the public interest.

How IPR fuels ongoing innovation

The benefits of IP protection don’t end with one breakthrough. Following the success of the COVID-19 vaccine partnership, SII has pledged £50 million for a vaccines research facility at Oxford University, and has partnered with the University in development of the R21/Matrix-M malaria vaccine, which it will manufacture on a large scale.

Companies like Moderna and BioNTech, pioneers of mRNA vaccine technology, utilised their IP to rapidly develop COVID-19 vaccines, primarily for high-income countries. Post-pandemic, they are exploring the application of mRNA technology to cancer vaccines, showcasing how robust IP portfolios can drive ongoing innovation to address various health issues.

What are Intellectual Property Rights?

Intellectual Property Rights are legal protections granted to creators and innovators. In the biotech and life sciences sectors, these typically include:

  • Patents: Protect new inventions, such as novel biologics and their medical uses, and medical devices, for a limited period of up to 20 years.
  • Trade Secrets & Confidential Information: Protect proprietary formulae, research data, and manufacturing processes etc.
  • Trademarks: Safeguard brand names and logos, ensuring market identity.
  • Designs: Protect the unique appearance or design of a product, such as a medical device, for a limited period of up to 25 years.

These rights ensure that innovators can control the use of their creations, providing a framework to monetise their inventions and fund further research.

Impact of IPR on health

Owning IPRs significantly influences the ability of biotech and life sciences companies to address health challenges. The COVID-19 pandemic led to a substantial increase in vaccine patent applications, reflecting a surge in innovation aimed at combating the virus. This surge was driven by the need to develop effective vaccines rapidly, highlighting how IP protection can stimulate the creation of solutions to global health crises.

Moreover, strategic IP management facilitated collaborations that were essential for large-scale vaccine production and distribution. The partnership between AstraZeneca and SII, underpinned by IP licensing agreements, enabled the delivery of vaccines to numerous countries, exemplifying how IP can be leveraged to enhance global health outcomes.

In essence, for biotech and life sciences companies, the belief encapsulated in obtaining IPR is that innovation is a catalyst for improving health. Protecting IP not only rewards innovators but also ensures that their innovations can be developed, scaled, and distributed to address critical health challenges, ultimately serving the greater good.

Biotech Leaders – Protect your innovations

Biotech and life sciences companies must take action to protect their IP. Without it, groundbreaking research can be copied, funding becomes harder to secure, and the path to global impact becomes uncertain.

Our patent and trade mark attorneys can help you work out what you should be doing and then help you do it. To get in touch, click here or email us at hello@two-ip.com.

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Sources:

astrazeneca.com

£50m funding for Poonawalla Vaccines Research Building at Oxford University | University of Oxford

Oxford R21/Matrix-M™ malaria vaccine receives WHO recommendation for use paving the way for global roll-out | University of Oxford

Merck and Moderna’s mRNA cancer vaccine aces its first efficacy trial | pharmaphorum

Promising lung cancer vaccine trial starts in UK – BBC News

How to leverage IP rights to generate more revenue and boost pay levels

Did you know that companies with intellectual property rights (IPRs) generate 23.8% higher revenue per employee and pay 22% higher wages?
In today’s fast-paced, innovation-driven economy, protecting your ideas isn’t just important – it’s essential. The latest EPO and EUIPO report reveals how owning patents, trademarks, and designs can transform firm performance, especially for SMEs, who see an incredible 44% revenue boost when leveraging IPRs.
Curious about how IPRs fuel growth, attract investment, and secure competitive advantages? Two IP founder Anna Molony shares key learnings from the report.

Owning IPRs significantly enhances the performance of companies, with measurable benefits across financial, operational, and competitive dimensions. The 2025 European Patent Office (EPO) and European Union IP Office (EUIPO) report, “Intellectual Property Rights and Firm Performance in the European Union,” provides a comprehensive analysis of how IPR ownership translates into tangible advantages for businesses – these are the key points for SMEs.

Higher Revenue per Employee

Companies with IPR ownership generate, on average, 23.8% more revenue per employee compared to firms without IPRs. This is because IPRs allow companies to create unique, high-value offerings that command premium prices in the marketplace. Protected innovations ensure that competitors cannot replicate these offerings, enabling companies to maintain strong pricing power and brand equity.

Increased Wages and Talent Retention

IPR-owning firms pay 22% higher wages on average than non-IPR-owning firms. This is indicative of their stronger financial health and higher productivity levels, as well as their ability to attract and retain top-tier talent. By investing in innovation and protecting the outcomes, these companies create high-value roles that demand specialised skills, leading to better compensation for employees.

Stronger Performance Among SMEs

While IPRs are beneficial to firms of all sizes, their impact is particularly pronounced for small and medium-sized enterprises (SMEs). According to the report, SMEs with IPRs generate 44% higher revenue per employee than SMEs without them. For these businesses, owning IPRs is often a crucial differentiator, enabling them to compete with larger firms by carving out a unique market niche.

Resilience and Market Positioning

IPR-owning companies exhibit greater resilience during economic downturns and disruptions. By leveraging their protected intellectual assets, these firms can adapt more quickly to changing market conditions, introduce new products or services, and secure their market share. Trademarks, in particular, help build long-term customer loyalty, while patents and designs protect competitive advantages in product innovation.

Access to Investment and Financing

IPRs play an important role in enhancing a company’s attractiveness to investors and lenders. Firms with registered patents, trademarks, or designs are often perceived as lower-risk investments, as their protected innovations can serve as valuable assets that generate future income. For SMEs, the presence of IPRs often improves access to venture capital and other financing sources, enabling them to scale their operations more effectively.

Sector-Specific Insights

Industries such as technology, pharmaceuticals, and creative arts see the most substantial benefits from IPRs, as these sectors rely heavily on innovation and unique intellectual assets. For example, technology firms with patents have a significant edge in securing partnerships and licensing agreements, while companies in the fashion and design industries leverage design rights to safeguard their brand identity and product aesthetics.

Innovation Spillover Effects

IPR ownership not only benefits the individual firm but also contributes to broader economic growth. The protection of intellectual property encourages investment in research and development (R&D), leading to the creation of cutting-edge technologies and products. These innovations often have spillover effects, benefiting other firms and industries through collaborations, licensing, and the general diffusion of knowledge.

Reduction in Counterfeiting and Infringement

By obtaining IPRs, companies can more effectively combat counterfeiting and infringement, which are particularly damaging to brand reputation and revenues. The report emphasises the economic benefits of reducing counterfeit goods, as IPRs provide companies with legal tools to enforce their rights and take action against infringers.

💡 What are you doing to protect your IPRs?

IPRs not only offer protection but are also a strategic asset that drives performance, competitiveness, and growth. For innovative companies, particularly SMEs, IPRs are instrumental in maximizing market potential and securing financial investment.

What steps are you taking to safeguard your business’s creativity and innovation?

Our patent and trade mark attorneys can help you work out what you should be doing and then help you do it. To get in touch, click here or email us at hello@two-ip.com.

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THATCHERS v ALDI: When life hands you lemons…

Following recent judgment from the Court of Appeal in the case of Thatchers vs. Aldi, Two IP trade mark attorney Rachel Havard unpacks the implications of the decision and offers practical insights for brand owners aiming to safeguard their own intellectual property.

On 20 January 2025, the Court of Appeal handed down a very welcome judgment for brand owners, in their continued fight against look-alike brands.

The appeal, between Thatchers Cider Company Limited and Aldi Stores Limited, concerned last year’s decision by the Intellectual Property Enterprise Court (“IPEC”).  The IPEC decision had been in favour of German discounter, Aldi, in relation to their TAURUS brand cloudy lemon cider, despite its rather similar appearance to Thatchers own offering.

Below are the two brands for comparison, with photographs taken from the Court of Appeal decision:

A sour taste: last year’s decision by the IPEC

In this harsh decision for Thatchers, the IPEC dismissed their claims of registered trade mark infringement and passing off against Aldi.

For registered trade mark infringement, the grounds raised had been similarity of the Aldi Sign with the Thatchers Trade Mark and a likelihood of confusion as to commercial origin of the goods (Section 10(2) of the Trade Marks Act 1994), and/or that the Aldi Sign took unfair advantage of or was detrimental to the distinctive character or repute of the Thatchers Trade Mark (Section 10(3)).

The “Thatchers Trade Mark” is the UK registered trade mark shown below:

The IPEC judge considered similarity of the Aldi Sign with the Thatchers Trade Mark to be low and that there was no likelihood of confusion, nor did they consider the Aldi sign to take unfair advantage of or cause detriment to the Thatchers Trade Mark.

Sweet outcome for Thatchers at the Court of Appeal

Thatchers appealed the IPEC decision only on the refusal of the Section 10(3) registered trade mark infringement ground.

In this case, it was particularly important that Thatchers had secured trade mark registration for the label of their product as shown above. Had their registration only been of the word mark THATCHERS, there would be no real basis for argument that Aldi’s TAURUS product and associated labelling/get-up, i.e. the “Aldi Sign” was similar to the Thatchers product get-up.

With Aldi’s “TAURUS” branding of their product, there was unlikely to be confusion of customers that the Aldi product and the Thatchers product came from the same commercial origin, so it is unsurprising that Thatchers did not appeal under Section 10(2).

Under Section 10(3), however, Thatchers’ appeal was successful.  The Court of Appeal agreed that the Aldi Sign had taken unfair advantage of the repute of the Thatchers Trade Mark, with each having a number of elements of similarity with the other, and so infringement had occurred.

As per Arnold LJ at paragraph 99 of the judgement:

“The inescapable conclusion is that Aldi intended the Sign to remind consumers of the Trade Mark. This could only have been in order to convey the message that the Aldi Product was like the Thatchers Product, only cheaper. To that extent, Aldi intended to take advantage of the reputation of the Trade Mark in order to assist it to sell the Aldi Product.”

and at paragraph 114, he explained that this fed into a “transfer of the image of the mark” and “riding on the coat-tails of that mark”.

 A new zest for trade mark protection

At the beginning of the Court of Appeal judgement, Arnold LJ acknowledged how the IPEC decision had attracted the attention of commentators in the field of trade mark law, saying that:

“Some have criticised the judges’s decision as illustrating an alleged failure on the part of UK law properly to protect brand owners against so-called “look-alike” packaging, while others have commended it as upholding competition and hence cheaper prices for consumers”.

In this case, the cloudy lemon product was quite a visual departure from other products in Aldi’s existing TAURUS range of ciders, but the below images (taken from the Court of Appeal judgement) illustrate that Aldi’s original TAURUS range was itself an imitation of another leading brand in the market place, as it was closely modelled on Strongbow:

Discounters such as Aldi and Lidl are renowned for sailing close to the wind, with their creation of leading brand look-alikes across all product ranges.  From a consumer point of view, of course, and with increasing cost of living challenges, there is a desire to buy the next best thing to a leading brand, when a discounter or supermarket’s own version is more affordable.  It is the point of purchase likeness that one brand has to the other which prompts the consumer’s decision to buy that next best thing. They would be less likely to do so if the own label brand had its own completely distinct appearance.   

For the brand owner, who will have incurred significant cost in designing their own brand and packaging, the imitators are clearly taking advantage of this investment without having to do the work themselves.

As this latest decision of the Court of Appeal clearly recognises transfer of image from one brand to another, or one riding on the coat-tails of another, as ingredients for Section 10(3) trade mark infringement, those in the imitation game will need to be a lot more cautious.

To thoroughly protect themselves, brand owners need to register as many aspects of their branding as possible; this should go further than the traditional registering of word trade marks, company names, logos, or product names – protection of the appearance of labels, product packaging and overall get-up is just as important.

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.

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.