Inside IP www.vennershipley.co.uk Venner Shipley’s Intellectual Property Magazine Autumn/Winter 2019 G1/19: Just what do those questions mean? PAGE 12 What's in the Patent Box for Implications of the UK 100 Engineering Ideas That SMEs? General Election on Brexit Have Changed The World PAGE 10 PAGE 24 PAGE 30 European Intellectual Property Attorneys 1 What’s inside? Page 4 AI Inventorship Page 19 New Year, New Rules: Richard Kennedy and Joel Moss explore if an invention Changes to the Rules of Procedure of is created by an AI, should the AI be named as the the EPO Boards of Appeal January inventor? 2020 Tim Russell looks to 1 January 2020 when new Rules Page 5 MONOPOLY: Trade Mark of Procedure of the Boards of Appeal of the EPO come Edition into force. Camilla Sexton highlights the recent case of Hasbro, which had one of its EU trade mark registrations for Page 22 Integrated Circuits MONOPOLY struck out in part. To celebrate the 60th anniversary of the invention of the integrated circuit, Rob Cork looks back on the Page 6 Protecting a New Medical Use pioneering work of two US inventors, Jack Kilby and Robert Noyce, whose research paved the way for of a Known Substance virtually all modern electronic devices. Catrin Petty looks at how patent protection can be pursued for a new medical use of a known substance in five key jurisdictions. Page 24 Implications of the UK General Election on Brexit Page 8 Effective Use of Outsourcing We provide an insight into the implications of the UK General Election on Brexit. for Developing Patent Portfolios Based on his experiences, Gary Whiting highlights how in-house departments can make effective use of Page 25 Design Protection of outsourcing when developing patent portfolios. Graphical User Interfaces We continue our series of articles on GUIs. George Page 10 What's in the Patent Box for Hudson explores the extent to which GUIs can be protected under the various design law systems SMEs? covering the UK. Ian Grey provides an update on the UK tax incentive scheme, Patent Box. Page 28 Sound Marks Page 12 G1/19: Just What do Those David Birchall highlights the topic of sound trade Questions Mean? marks. Pawel Piotrowicz has been at the forefront of developing EPO law regarding computer-implemented Page 30 100 Engineering Ideas That inventions following the EPO Board of Appeal referring questions to the EBA on G1/19. In this issue Have Changed The World Pawel discusses the referral and highlights the wider We continue our series of articles, where we look implications for the patentability of simulations at some of the greatest engineering ideas that have surrounding the decision. had an effect on our everyday lives. The list of 100 engineering ideas was compiled by The Institution of Engineering and Technology (IET). Page 16 Designing for Compliance – Data Protection Considerations in the Page 34 Venner Shipley News Development of Artificial Intelligence A round up of the latest Venner Shipley news. Robert Peake and Ronique Hossain explore how the application of AI, and ML, to support decision making and accelerate innovation has experienced exponential growth in recent years. 2 www.vennershipley.co.uk A word from the editor European patent practice is heavily influenced by the case law of the Boards of Appeal at the European Patent Office (EPO). Every year there are hundreds of decisions made by the EPO Boards of Appeal, but decisions of the Enlarged Board (which carry the greatest weight) are much rarer, with only two or three cases being referred a year. Regarding computer implemented inventions, there have been well over a thousand Boards of Appeal decisions about what is patentable, but no Enlarged Board has fully wrestled with the issue. This will change with Enlarged Board case G1/19, which is the subject of our cover article. This case is being handled by Venner Shipley’s Pawel Piotrowicz, and Pawel provides an overview of this very important European patent matter on pages 12 to 15. On the subject of the EPO Boards of Appeal, the Rules of Procedure of the Boards of Appeal undergo some important changes on 1 January 2020, and appeals expert Tim Russell provides a detailed overview of the changes on pages 19 to 21. It will not be a surprise to many that there has been a huge growth in the filing of patents related to AI technology, and Richard Kennedy and Joel Moss discuss on page 4 the issue of whether an AI can be considered to be an inventor of a patent, with reference to a test case that is being processed by various patent offices. In addition, Robert Peake and Ronique Hossain discuss data protection considerations in the development of AI on pages 16 to 18. Before joining Venner Shipley, Gary Whiting gained extensive experience as an in-house patent attorney. On pages 8 and 9, Gary draws upon this experience to discuss effective use of outsourcing for developing patent portfolios. The UK has a tax incentive scheme called Patent Box, which enables companies to benefit from a reduced rate of corporation tax for the profits derived from innovative products and processes protected by a qualifying IP right. Ian Grey provides an update on this scheme on pages 10 and 11. As part of our series of articles relating to graphical user interfaces, George Hudson provides an overview of how design protection can be used to protect graphical user interfaces on pages 25 to 27. Regarding trade marks, David Birchall discusses issues related to sound trade marks on pages 28 and 29, and on page 5 Camilla Sexton provides an interesting summary of a recent decision relating to bad faith concerning a trade mark for MONOPOLY. Also, Jan Walaski and David Birchall provide an insight into the implications of the UK General Election on Brexit. As a final point, I am very pleased to note that Venner Shipley has been recognised by Legal 500 UK as a Tier 1 firm for PATMA: Patent Attorneys. This recognition means a lot to us, and is the result of the hard work of all of our attorneys and the wider Venner Shipley team. Simon Taor Partner, Patent Attorney About Venner Shipley: Venner Shipley is a leading firm firm with a long history and a of European intellectual property vast amount of experience in attorneys and lawyers. We are relation to all aspects of patents, a modern forward-thinking trade marks and IP law. 3 AI Inventorship For a patent application, there is a requirement to name the inventors. While there have been many disputes as to who should be considered the inventor of a given invention, the requirement to name inventors was, until recently, considered to be uncontroversial. The continued rise of artificial intelligence has changed this. If an invention is created by an AI, should the AI be named as the inventor? Should inventions created solely by AI be patentable at all? In a test case for these issues, a team inventions, DABUS was not merely manual to expressly indicate that “an led by Professor Ryan Abbott at the used as a tool by a human inventor ‘AI Inventor’ is not acceptable as this University of Surrey has filed several but instead independently conceived does not identify ‘a person’ which is patent applications for inventions the inventions and identified their required by law” giving an indication which they claim were invented by salience. The team’s view is that as to how the UK IPO is likely to react an AI named DABUS (Device for the DABUS should be considered to be to the inventions allegedly invented Autonomous Bootstrapping of Unified the inventor and that there is no by DABUS. Nevertheless, the pace Sentience). The inventions in question appropriate human inventor to name of development of AI is rapid and are a ‘Fractal Container’ and a ‘Neural in the patent applications. unpredictable, and Ryan Abbott’s Flame’. team is of the view that DABUS is However, the notion that an AI (or already capable of independent indeed any computer software) creation without the involvement of could be named as an inventor on a a human inventor. While views differ, patent conflicts with several existing the issues go beyond mere academic provisions in patent law, and with enquiry, or the formality of what the common understanding that name to include on a form - in the the inventor should be a person. United States in particular, failure to For example, the UK Patents Act and name the correct inventors can lead the European Patent Convention to a patent being held unenforceable. provide certain rights to inventors, The questions around AI inventorship including the right to be mentioned thus represent an emerging challenge Architecture of the DABUS Artificial Intelligence in an application or patent. Rights for the patent system which has yet to to appropriate compensation, at be resolved. Patent applications to both of these least for some inventions, also exist inventions have been filed with the UK in some jurisdictions. These and Venner Shipley has extensive AI IPO, USPTO and EPO. PCT applications other provisions of patent law do expertise with the largest dedicated AI to these inventions have also been not mesh well with the concept of AI team in the UK. Members of our team filed. The 'Fractal Container' patent inventorship. have postgraduate qualifications in AI application relates to a container Neural Flame and have given presentations on the having a wall with a fractal profile. The patentability of AI at various major fractal profile enables the coupling of IP conferences.