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.

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.

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.

Why is an ANN not a computer program per se?  Because it is more than that.

Want to patent core-AI tech in the UK? Well, right now may be the best time to seek protection via the UK IPO providing your invention is not just a computer program! Two IP patent attorney Dr Coreena Brinck shares her views on the new UK IPO guidelines for examining AI inventions.

I was quite looking forward to reading the UK Intellectual Property Office (IPO) latest update to its guidelines for examining AI and Artificial Neural Network (ANN) implemented inventions.  However, I can’t help but feel an opportunity to set out a best practice to clarify the law and reduce uncertainty for applicants in this area has been muddled and missed yet again. 

This may be a deliberate ploy of course.  The updates were published just before the UK IPO appeal to the Court of Appeal to overturn an earlier High Court decision which found in favour of the applicant in Emotional Perception AI Ltd v Comptroller-General of Patents, Designs and Trade Marks [2023] EWHC 2948 (Ch).  This overturned a decision by the UK IPO to refuse a patent application on the basis the AI-related invention was nothing more than a computer program per se, and so unpatentable subject-matter.  The Emotional Perception decision handed down by the High Court on 21st November 2023 led to a fundamental revision of the UK IPO practice as examiners were no longer able to treat ANN inventions as excluded subject-matter under the computer program per se objection.  The UK IPO appealed the decision and with the Appeal court hearing scheduled for May 14th 2024 only a few days after the May 20204 practice update was published, one can’t help but wonder if this was a pragmatic update in view of the expectations of the likely outcome of the appeal.

I am a UK and European patent attorney who has handled a lot of computer-implemented inventions including AI and ML technology over the years.  What the outcome of the appeal will be I won’t overly speculate on; however, I hope it improves the situation for all UK inventors who are generating AI or ML based inventions.  The UK is likely to increasingly rely upon innovative AI and ML technology to boost our economic recovery.  Currently, I can’t help but feel here in the UK we are at a disadvantage compared to elsewhere in Europe where national patent offices more closely follow the EPO approach to patent examination of computer-implemented technology.  The patent offices in Sweden, Denmark and even 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 UK IPO, it may not always be a suitable approach and frankly, 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 European Patent Office.  The EPO is, in my opinion, still the favoured route for obtaining patent protection in the UK for many forms of computer-implemented invention simply as the EPO approach for assessing patentable subject-matter is more predictable for inventions involving AI.

So, coming back to the UK situation, however, the High Court decision essentially determined that a (trained) emulated ANN was more than a computer program per se, which means that the UK IPO route could be more favourable even than the EPO if this continues to be the way the UK IPO examine AI and ML inventions.  The HC decision itself considers in depth a lot of nuances regarding what is meant by a computer and a computer program.  Now I favour the definition of a computer program as comprising instructions which are devised by a (human) programmer which, when executed by a computer, cause a number of operations to be performed on operands (data).  Based on a similar definition, and somewhat paraphrasing the actual decision, an ANN was found to be more than just a computer program and the trained ANN was distinguished from the computer program which was used in training and executed on a computer to implement the ANN.  It was considered irrelevant whether the ANN was an emulation of a hardware implemented ANN.  

Now, I agree that a trained ANN is more than a computer program per se, but for many reason, one of which is I’m aware that many ANNs are initially trained and then subjected to on-going training, I am somewhat wary of getting too excited and relying on this decision to favour the UK route to patentability for AI and ML in all its shapes and forms.  Personally, I found both the UK IPO guidelines originally published and the updates disappointing. In particular, I felt the UK IPO had summarised the judgement in a manner in some places which arguably meant it lost some of the nuances essential for the decision to make sense.  This disappointment was increased in the May 2024 revised scenarios which accompanied the guidelines.  Example scenarios 13, 14, and 15 were revised from being excluded to non-excluded subject-matter but the commentary by the UK IPO was particularly terse. All three scenarios which were affected related to core AI examples and the guidance given is along the lines of:

“Ask whether the contribution falls solely within the excluded subject matter; and check it is actually technical in nature.  Following the judgment in Emotional Perception, an invention involving an artificial neural network (ANN), whether implemented in hardware or software, is not a computer program as such. No other exclusion applies.” The conclusion given is then stated as: “ The invention defined in the claim is not excluded under section 1(2) as a program for a computer as such.”

So, with this in mind, I recommend proceeding cautiously before the UK IPO, as although examiners  are currently obliged to at least search claims which recite an ANN (in a trained form and/or in its operational mode), there is clearly a reluctance to follow the High Court decision in Emotional Perception, and this is no doubt why they have appealed.  

Nonetheless, one can take some hope that given the current case law situation or if the appeal by the UK IPO is rejected, that some hope for patenting core AI inventions in the UK may be possible in future. So, with the above caveat about being cautious should you wish to have your invention first searched by the UK IPO, here are my key take-aways if you are considering seeking patent protection for a core-AI invention:

i.   Be sure to set out in the description of the invention the fundamental way(s) the Artificial Neural Network (ANN) computer model could be trained to operate and what the operational features are of the ANN that result from the ANN being trained.

ii.   Claim the training related features ideally in separate independent claims from the trained AI system/operational mode of the AI system.

iii.  State as clearly as possible how the algorithm (computer program) or training mode of the ANN results in novel and inventive features in the trained ANN, and their technical effect.

iv.  Explain what is occurring during any initial training phase and what may happen during any subsequent on-going training (if any) during the ANN operational phase.

v.  Give examples of how the ANN receives input and how it outputs its inferences. Where possible indicate the technical implications of any inferences and try to include at least one example where the input comprises technical data.

Of course, there are various diverse types of training, including supervised and unsupervised, and even once trained initially, some ANNs are configured to learn continuously in their operational phase.  So, for each of the training and operational modes of the ANN, clearly differentiate where possible the effect of the processes performed within the ANN which occur during training.  Explain, if different types of training are possible, what impact they have on the resulting trained ANN.  If the ANN is capable of being partially or fully implemented in hardware, then this should also be indicated in the description of the invention.

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

How to write Invention Disclosures for AI inventions

Writing a thorough invention disclosure is crucial for ensuring that an AI invention is effectively described and defined in a patent application. Patent attorney Coreena Brinck shares her detailed guidance on what to include in your AI invention disclosure.

Sufficiency of disclosure may require a large amount of information to be included in the patent specification and it’s critical it’s addressed right at the start of the patenting process as omissions can’t be added later. For AI inventions in particular, where the training of the AI model and its operational use may both need to be described, it can be quite a challenge to capture all the necessary information to meet the sufficiency of disclosure requirements.

By including these key components in your invention disclosure, you will give your patent attorney all the information they need to draft a robust patent application for your AI invention.

  1. How is the technology used in a commercial context?
    This lets the drafter know where to focus the claims so they can work out how best to protect the invention once it is commercialized.
  2. What are all the features which are needed to make the invention work in at least one commercial context? Which feature(s) are new in the context of the invention? Which feature(s) are inventive in the context of the invention?
    A feature may be new in the context of your invention but known in a different context. If, however, it would not be obvious to use it in the context of the invention, then this should be explained as well as it’s important.
  3. Are there sketches of the Artificial Neural Network, ANN, model architecture/functional diagrams?
    AI inventions usually contain clear description of function rather than an over-detailed description of structure but a model architecture diagram showing the way connections are provided between processing nodes already is advisable. For example, is the network layered, recurrent, etc.?
  4. How is the ANN model implemented in a computer system for training and for operational purposes?
    What sort of data is input in either case (files or a stream/feed)? Does the operational ANN process data in real-time or not? How is input data obtained from one or more sources? Is any preprocessing necessary? What makes the ANN output data useful in the real-world?
  5. Inside the ANN, how is data processed?
    If it’s not already well known for the AI model in question, it may be necessary to explain how weights are initialized, how they are applied to input, and importantly how the weights are updated via learning rules. What amount of data is need to train the AI system, or for how long should it be trained for the results it provides to be reliable enough to be useful? It is particularly important if any claim defines a feature in terms of parameters such as weights that any methods used to determine the weight values and any other parameters are described in the detailed description, unless a person skilled in the art would know what method to use or unless all methods would yield the same result.
  6. Is the description of all essential features such as the mathematical method(s) used, the training data characteristics used, and other essential feature such as how the weights are used (and how they are derived and updated), the same for all embodiments or just some?
    If not, then patent offices may request the claims are restricted to only those embodiments where a description is given.
  7. What is the technical effect that a machine learning algorithm achieves and is this readily apparent or not?
    If not, then the technical effect may need to be established by explanations, mathematical proof, experimental data etc. The good news here is that whilst mere allegations are not enough complete and comprehensive proof is not required, either. However, patent offices may no longer accept a simple statement that the AI model does something faster – they want more details about how the AI system causes something technical to be improved in specific way. For example, if the technical effect is dependent on particular characteristics of the training dataset used by an ML algorithm, those characteristics that are required to reproduce the technical effect must usually be disclosed – although there’s no need to disclose the specific training dataset itself.
  8. How is the AI model trained?
    For example, is training on-going or not, how is model updated? What are the characteristics of the training data required by the AI system. Is the training data public or private? Describe the input data characteristics and format, is it a series of files, or a stream of real-time data for example? What amount of data is need to train the AI system, or for how long should it be trained for the results it provides to be reliable enough to be useful? Is the data input pre-processed? How is the output used? Does the AI system provide any feedback to the data sources (which may happen in control systems for example).
  9. What are the start/stop conditions for any iterative process?
    If something is iterated then explain what triggers the iterations to start and under what conditions they stop. This is often very important for training AI systems.
  10. If something is optimised by a process, is there an example of what combinations of parameters (possibly with examples of each parameter/value) provide the optimization? Is there an example of what optimal means (what is optimized, what’s the technical effect of this, possibly with example values)? What does the optimization achieve?
    Requiring a person skilled in the art to find out this information from scratch without any guidance may be considered too much of a burden – which in turn could lead to the patent application being refused due to the disclosure of how the invention could be implemented being insufficient.

This sounds like a lot (and it may be) but drafting is not just about explaining and claiming novel and inventive features – there’s much more to it. Good patent attorneys will try to limit the level of detail down to the minimum needed to explain to someone skilled in the art how to adapt their common general knowledge to implement the invention. What does this mean? A rough practical guide is you can assume an undergraduate text book level of knowledge – anything more than this could be too specialized, and so should be explained in the patent specification.

To request a FREE Invention Disclosure Template to use to record your AI inventions, send us a message here or email us at hello@two-ip.com

A new, easy way to get a patent in Georgia

As of 15th January 2024, it is possible to validate European patent applications and patents in Georgia. This makes the process of obtaining patent protection in the country much easier and cheaper that is has historically been. We take a brief look at what you need to do.

What is this new protection?

Georgia is not a member state of the European Patent Organisation but rather is one of five ‘validation states’ that the Organisation has validation agreements with – the other countries are: Morocco, Republic of Moldova, Tunisia and Cambodia. Under the validation agreements, it is possible to validate European patent applications and patents in these countries, to give you patent protection having the same scope as the granted European patent.

How do I validate my European patent in Georgia?

Validation for Georgia is ‘deemed to be requested’ for any European or International patent cooperation treaty (PCT) application filed on or after 15 January 2024. It is not available for European patent applications, or European patents resulting from PCT applications, filed before that date.

A validation fee must be paid to the European Patent Office (EPO) within six months of publication of the European search report on a European patent application, and on entry into the European regional phase from a PCT application.

Further information about validating European patent applications and patents in Georgia in the EPO’s Official Journal: OJ EPO 2023, A106 – Validation of European patents in Georgia

If you are interested in patent protection in Georgia, our European patent attorneys will be happy to explain the European patent application process to you. Get in touch here.