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.

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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. So, whether your AI multiple containers, improves grip, has spontaneously started inventing and facilitates heat transfer into and or you simply want to protect your out of the container. The 'Neural inventions in this area, please get in Flame' patent application relates to touch. causing a light source to pulsate in a particular manner to attract attention over competing attention sources by triggering human or artificial anomaly detection filters. Fractal Container

Ryan Abbott’s team argues that The position of the European these inventions were conceived by Patent Office is that it is “a global DABUS. The team says that DABUS consensus that an inventor can only only received training in general be a person” and that “the current knowledge in the field, and was state of technological development not created to solve any particular suggests that, for the foreseeable Richard Kennedy problem nor trained on any special future, AI is a tool used by a human [email protected] data relevant to the inventions. The inventor”. Similarly, the UK IPO Joel Moss team argues that in creating these recently updated its formalities [email protected]

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the benefit of being able to rely upon one registration without the need to MONOPOLY: prove use of it. She also indicated that this was a benefit considered by all brand owners across many different industries. It was the above admission Trade Mark Edition which appears to have been key to the decision. The BoA noted that if a filing is motivated not only by the Hasbro, Inc. ('Hasbro') has had one of its EU trade advantage of not having to prove use mark registrations for MONOPOLY struck out in of the mark but for other reasons as well, this does not, in itself, make part by the Board of Appeal on the basis that it was the strategy acceptable. Further, the fact that other brand owners may filed in bad faith. also make repeat filings does not, in itself, make the strategy legal and acceptable unless it has been tested Background The Case and approved as such by the Courts. The EU trade mark registration Hasbro already enjoyed the benefit system is based on the 'first to file' of three EU trade registrations for the The BoA concluded in a harsh principle. With some exceptions, word MONOPOLY. The registrations manner: “Such conduct, which the superior right is awarded to the were filed respectively in 1996, improperly and fraudulently trade mark owner who obtains a 1998 and 2010. It obtained a fourth extends the five-year grace period, registration rather the owner who registration for MONOPOLY in is manifestly intended to circumvent uses the mark in commerce but does 2011 for goods and services in part the obligation to prove use of earlier not register it. However, the system identical to the previous registrations marks and must be considered as an is open to abuse if owners clutter and in part for previously intention to distort and imbalance the up the register with unused marks. unregistered goods and services. European Union trade mark system Competitors are denied the full range A Croatian company applied to as established by the EU legislators”. of available brand names. To mitigate invalidate the 2011 registration on the The MONOPOLY registration was this, EU legislation allows a finite ground that it was filed in bad faith. struck from the register insofar as it grace period of five years’ non-use It claimed Hasbro had a dishonest included goods and services already of a registered trade mark after its intention when the application was covered by earlier registrations. It entry on the register. If a mark is filed because it was a repeat filing was allowed to remain on the register unused after that period there are made with the intention of re-setting insofar as it extended the goods and consequences. One of these is that it the non-use clock for the word mark services because it could be inferred becomes liable to a revocation action MONOPOLY. The Cancellation Division that these extensions were a natural for non-use and could be struck from at first instance disagreed. It held that commercial progression of the mark. the register insofar as it has not been there was no evidence of dishonest A further appeal is underway. used on the registered goods and intention or unfair practice involving services and there are no proper bad faith. An appeal was filed. reasons for non-use. It will also be Comment disregarded as a basis of opposition The Appeal Decision There was always doubt that the before the EUIPO, meaning it cannot practice of re-registering marks block later applications for the This was a score draw. The Board of was acceptable under EU law. This same or similar mark. In both these Appeal ('BoA') invalidated Hasbro’s decision very much underlines the scenarios the registered owner is MONOPOLY registration in part and risk trade mark owners take in re- required to prove use of the mark. allowed it to remain on the register filing in this way. Care is needed in This requires an investment of time in part. Most unusually, rather than long-term filing strategies. It was and cost. relying on written submissions alone, also interesting to note that the fact the BoA ordered oral proceedings in of a finding of bad faith in relation As a result of the above, some trade this case. The issue of bad faith must to some goods and services was not mark owners have taken to re- be determined at the time of filing of fatal to the entire registration. applying periodically for the same the mark and the BoA said it wanted mark in order to re-start the non-use to better understand the particular clock by each fresh application. The circumstances underlying the filing resulting registration can be used in strategy of Hasbro. Bad faith is not opposition proceedings for a period defined in EU legislation but may be of five years without the owner having inferred from the behaviour of the to prove use of it. Therefore, even if registered owner. This must take the mark is in fact being used on the into account the accepted principles registered goods and services, a new of honest commercial and business registration would, in theory, spare practice. At the oral hearing the the owner the task of proving actual registered owner mentioned that one use in contentious proceedings. There of the reasons (among others) for the Camilla Sexton is a time and cost saving here. re-filing was to reduce administrative [email protected] burden. She specifically referred to

5 Protecting a New Medical Use of a Known Substance The ability to protect known compounds and compositions where a new medical indication has been discovered can be extremely valuable. However, it is not possible to obtain protection for a new medical use of a known substance in some jurisdictions. Furthermore, even in jurisdictions where it is possible to obtain protection, the form the claims should take to comply with local practice can vary significantly. Knowing where protection can be pursued, and the form the claims should take, better enables us to work with clients to devise a targeted filing strategy. This article provides a summary of how patent protection can be pursued for a new medical use of a known substance in five key jurisdictions.

Europe an Enlarged Board of Appeal Decision Such claims can also define dosage (G5/83) reached the conclusion that regimes and specific patient groups. The European Patent Convention the use of a known compound or (EPC) states that a European patent composition to treat a known disease shall not be granted in respect of China can be patentable if the medical use is methods for treatment of the human linked to a novel and inventive dosage In China it is possible to obtain or animal body by therapy. This regime. protection for the medical use of a excludes from patentability methods known compound using so-called of treatment and prophylaxis, but Furthermore, established case law of Swiss-style claims. These are written this exclusion does not apply to the Boards of Appeal (for instance, like so: products, in particular substances see T 233/96) states that it is also and compositions, for use in such possible to obtain protection for • “Use of compound/composition methods. the use of a known compound or X for the manufacture of a composition to treat a known disease medicament.” If a known compound has not where the compound or composition previously been used in a method of is administered to a novel patient Or: treatment by therapy, it is possible to group. The patient group must protect the product using a so-called be distinguishable from former • “Use of compound/composition first medical use type claim, which patients due to their physiological or X for the manufacture of a may be written like so: pathological status. medicament for treatment of disease Y.” • “Compound/composition X for use as a medicament.” Unites States of America It will be noted that these claims It is possible to obtain protection correspond closely to first and Even if the product had previously for methods of treatment in the second medical use claims. If a PCT been used as a medicament, further United States. Accordingly, it is application is drafted with first and medical indications could still be possible to obtain protection for new second medical use type claims or protected by a so-called second indications of known compounds and method of treatment claims, these medical use claim, which would take compositions by using a method of can be converted to Swiss-style claims the form: treatment claim. Such claims would upon entry to the Chinese national generally take the form: phase. • “Compound/composition X for use in treating disease Y.” • “A method of treating disease X in However, a decision by the Supreme a subject, the method comprising People’s Court found that use It should be noted that second administering to a subject in features which do not have any medical use claims are not limited to need thereof a therapeutically effect on the manufacture of treatments of new diseases. In fact, effective amount of compound/ medicament cannot be considered composition Y.”

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to form a contribution over the prior became patentable in India in 2005. art. Accordingly, claims where the Accordingly, it is now possible distinguishing feature is a specific to obtain protection for new dosage regime or the treatment of a compounds and compositions. specific patient group may be invalid Additionally, it is also possible to in China. obtain protection for new forms of a pharmaceutical product. For instance, Knowing where if an unexpected improvement is “ observed for a polymorph or salt of protection can be a known compound then this may be protected in India. Additionally, a pursued, and the synergistic composition possessing form the claims unexpected chemical properties may also be protected. should take, better enables us to work Summary Different jurisdictions have with clients to significantly different approaches devise a targeted when determining whether or not a new medical use of a known filing strategy. compound may be patentable. ” However, careful drafting of the patent specification and claims can Japan ensure that there is basis to protect The Japanese Patent Office allows your inventions in key markets. Please a number of different formats for contact one of our attorneys for claiming a new medical use of a further advice. known substance. These are:

1. “A pharmaceutical composition for the treatment of disease X, comprising compound Y.” 2. “An anti-disease X agent comprising compound Y.” 3. “Use of compound Y to treat disease X.” 4. “Use of compound Y in the manufacture of a medicament for Catrin Petty the treatment of disease X.” [email protected]

Similar to the situation in China, the claims of a PCT application can be adapted to comply with Japanese practice on national phase entry or during subsequent prosecution of the application.

In addition, new dosage regimes and the treatment of new patient groups may also be patentable if it can be argued that there is an unexpected technical effect associated with the novel feature.

India It is not possible to obtain protection for a new use of a known substance or a method of treatment in India. Accordingly, second medical use claims are not allowable.

However, chemical and pharmaceutical substances

7 Effective Use of Outsourcing for Developing Patent Portfolios

Gary Whiting has been a patent attorney for more than 20 years, with almost half of that time spent in-house. Based on his experiences, Gary has the following thoughts on how in-house departments can make effective use of outsourcing when developing patent portfolios.

Why Insource? Why Core In-House Tasks One aspect of patentability analysis is searching for earlier disclosures of A number of elements of the patent Outsource? similar concepts (prior art). In-house portfolio development process can be Let us assume that you are experts know the business, often considered to be core in-house tasks responsible for a dedicated in-house making them good at searching in the that should generally be partially or IP department that is developing a relevant field, suggesting that prior art completely insourced, if the resources significant patent portfolio around the searching should be a core in-house are available to do so. world. Your department has limited function. However, prior art searching resources and makes extensive use of is a specialist and time-consuming Invention Harvesting outsourcing. You are under pressure task. You should consider whether the Your in-house team is likely to be to develop a high quality patent use of specialist external searchers closer to the business (and to the portfolio that meets the needs of your is more efficient or whether your in- people within the business) than business. You are also under pressure house team can do a more effective external patent attorneys. This, to keep costs under control. job. Also, with algorithms improving, coupled with the knowledge of the is there a case for automatic or business (including business strategy), How can you ensure that your use of semantic searching as part of the typically makes invention harvesting a outsourcing is effective? process? If your in-house team has both core function of the in-house team. There will be circumstances when the skills and the time to do so, If a detailed prior art search is external attorneys can be of then insourcing many of the tasks obtained, many departments consider assistance. For example, a visit from typically carried out by external that analysis of the search results is an external attorney (e.g. an invention patent attorneys is likely to be the a core function of the in-house team. harvesting workshop) can sometimes cheapest option. Also, in-house However, some companies prefer to generate enthusiasm and encourage teams are closer to the business and outsource at least some of this work. have detailed technical and business the submission of ideas for potential patent filings. knowledge that can lead to the Filing Decisions generation of a high quality patent Whether to file a patent application Initial Patentability Analysis portfolio that meets the needs of the is typically a decision with many In some companies, patent business. variables, only one of which is applications are filed if there patentability. Accordingly, this is is a business case, with limited So why not insource everything? usually considered to be a core in- consideration of patentability. The In-house departments typically have house function. You should consider consideration of the business case insufficient resources (particularly the extent to which the wider is a core in-house role. In other time) to insource everything and it is business should be involved at this companies, patent applications easy to increase or reduce the level stage. Do you want to get input from may be filed only when a detailed of outsourcing as workload demands your technical team regarding the patentability analysis concludes that fluctuate. In addition, outsourcing is inventiveness of a new invention? the chance of obtaining a granted typically the easiest (and most cost- Do you want to get input from your patent is high. Where to sit on this effective) way of obtaining specific commercial team regarding the spectrum is a question for you and technical or legal expertise. commercial value of a new invention? your business.

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Portfolio Management The preparation of the first patent external patent attorneys, but for the A patent portfolio needs to be filing for a new invention is one of the in-house team to retain responsibility reviewed regularly to ensure that most important steps in the patent for the scope of the patent claims. resources are being used effectively. generation process. Well drafted For example, abandoning individual patent applications not only lead Oppositions and Contentious Matters patents or patent families can help to to patents that are more likely to Patent oppositions can be extremely keep costs under control. provide valuable patent protection, time-consuming. Accordingly, but such patent applications typically although expensive, unless your This is generally an in-house role, and pass through the patent system department has a significant amount the wider business should perhaps more easily. It can be difficult (and of regular opposition work, such be involved. One approach is to hold expensive) to get poorly drafted tasks are typically best outsourced. regular (e.g. annual) review meetings patent applications granted and may Similarly, contentious work is often to get the business involved. This be impossible to obtain a broad scope better outsourced unless significant approach works well with relatively of protection. Accordingly, investing internal expertise is available. small patent portfolios, but can extra resources at the patent drafting Outsourcing contentious work may quickly become unmanageable as the stage may be cost-effective in the long also make the application of attorney- size of the portfolio grows. Another term. client privilege easier to secure. option is to reconsider the value of cases within the portfolio at defined Patent Filing Final Thoughts milestones (e.g. on grant) or at The filing of patent applications IP departments have different sizes, defined time periods after filing. is usually outsourced to patent skill sets, workloads and priorities. Even though the decision making is attorney firms. Filing patents in-house Almost all departments make at least often a core function of an in-house involves significant responsibilities some use of outsourcing and the IP department, the implementation and is typically only cost-effective comments above should assist with of such decisions is often outsourced. for companies with large patent tailoring the use of outsourcing to Although it is possible for an in-house portfolios. Before committing to meet your particular circumstances. team to liaise with patent attorneys this, you must ensure that you It makes sense to discuss your around the world, this is a significant have sufficient internal resources. approach to outsourcing widely. undertaking. This is typically only a Consideration should be given to the For example, these issues can be core function of the largest in-house implications of systematic mistakes discussed within your IP team, IP teams. that risk the loss of a significant within your wider business and with portion of your patent portfolio. Consideration must also be given to your peers (e.g. those managing IP how to handle renewal fee payments departments at other companies). that are required to keep patents A visit from Moreover, external patent attorneys in force (such costs can be a large an“ external have experience of many different proportion of the lifetime cost of a outsourcing arrangements, all of patent family). Nearly all companies attorney can which have pros and cons. outsource this process, either to Although you should consult widely, an external patent attorney or to sometimes generate ultimately decisions need to be taken a specialist renewal fee payment enthusiasm and and those should be communicated company, not least because of (internally and externally). External the severe implications of missing encourage the patent attorneys who understand the payments. rationale behind your outsourcing submission of ideas arrangements (and your wider patenting strategies) will be better Non-Core Functions for potential patent placed to meet your expectations. A number of elements of the patent filings. portfolio development process are ” not generally considered to be core Patent Prosecution in-house tasks. These are often Prosecuting patents to grant typically outsourced (to a greater or lesser involves a large number of self- degree), although this may depend on contained tasks that are well suited the size and expertise of the in-house to outsourcing to external patent team. attorneys.

Patent Drafting Care is required here since patent Patent drafting is time consuming and applications can be granted with Gary Whiting most departments do not have the amendments that can significantly [email protected] resources to draft all cases in-house. reduce the value of the patent within Many IP departments outsource all your patent portfolio. Thus, if this task patent drafting work, but if you have is to be outsourced, then the in-house internal patent drafting expertise, team should ideally maintain at least then a combination of drafting some some control of the process. One cases in-house and outsourcing common approach is to outsource others may be optimal. the patent prosecution process to

9 What's in the Patent Box for SMEs?

R&D tax credits is a UK tax incentive scheme which seeks to encourage UK companies to invest in R&D by allowing them to reduce their tax bill or claim payments as a proportion of their R&D expenditure. The scheme has been available to UK companies for some time and the value of it for many companies is undisputed.

In 2013, the UK Government patents, it must have a qualifying IP to the perceived complexity of the tax expanded on the favourable tax right, such as a patent granted by calculations and the associated cost incentive offered by the R&D the UKIPO or the EPO, or a patent and effort of ensuring compliance. tax credit scheme by enacting a granted by another country within Although the additional administrative Corporation Tax incentive, known as the European Economic Area that burden may be a factor, a lack of the Patent Box, to further capitalise recognises the system. A qualifying awareness of the scheme and the on creative talent in the UK and IP right is not limited to patents, benefits that it may provide, coupled boost innovation by incentivising and and may also include certain other with a lack of specialist knowledge rewarding the active exploitation of types of intellectual property, such as relating to intellectual property may patented technology in the UK. supplementary protection certificates also be partially to blame. and plant variety rights. The UK Patent Box regime offers Although some SMEs might be companies a competitive tax The company must actively hold the dissuaded from claiming, we would environment by reducing the rate qualifying IP right as an owner or still encourage all companies to of Corporation Tax payable to 10%, an exclusive licensee. This means investigate the potentially valuable compared with the main rate of that the company must be creating, incentive provided by the Patent Box Corporation Tax of 19%. The reduced or significantly contributing to, the regime. Electing into the scheme may rate is applicable to the profits protected invention, or performing be worthwhile for many businesses derived from innovative products and a significant amount of activity to and the procedure may not be as processes that are protected by a develop the protected invention or onerous as it first appears. qualifying IP right. any product or process incorporating it. If the company holding the patent It is also important not to The lower rate of Corporation Tax is part of a group and the activities underestimate the potential tax provided by the Patent Box regime are carried out by another member relief that may be available, bearing has the aim of incentivising UK of that group, then it must actively in mind that a UK patent is all that is companies to: manage its portfolio of qualifying needed to enable all the worldwide IP rights. It is also necessary for the profits generated as a result of selling • Increase the number of patents company to have an income related a product covered by that patent to and other intellectual property to the IP right, such as from the sale fall within the Patent Box regime. As protection being sought, and of patented products. Finally, the long as UK Corporation Tax is paid to ensure that the technology majority of the relevant R&D must be on the profits obtained as a result of, covered by that intellectual carried out in the UK. for example, the sale of a patented property is further developed and product, it is irrelevant whether commercialised; Since the introduction of the system those sales were made in the UK or in 2013, the total value of the relief overseas. Furthermore, if a patented • Manufacture and sell innovative claimed through the Patent Box component is incorporated into a products protected by that regime has grown year-on-year. From larger product, profits attributable intellectual property; and the latest statistics on the uptake to the entire product may qualify for • Locate the high-value jobs of the Patent Box published by relief under the Patent Box regime. associated with the development HM Revenue & Customs (HMRC) in Whilst there are some upfront costs and manufacture of patented September 2018, it is apparent that associated with obtaining a patent, technology in the UK and this upward trend continues. once granted it can be maintained encourage the exploitation of for 20 years, which means that the patents covering that technology. Whilst the statistics show year-on-year saving in Corporation Tax over that growth, the use of the Patent Box 20-year period can be substantial and For a company to benefit from the regime continues to be dominated by easily justify the costs associated with reduced 10% Corporation Tax rate on large companies. One reason for the obtaining the patent in the first place. profits derived from UK or European lack of uptake by SMEs could be due It is also important to appreciate that

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a patent can be sought for relatively small modifications or improvements to existing products or processes, especially if that new product or process provides an advantage or solves a problem compared with an existing product or process that is already known.

Once granted, a patent will enable a company to take advantage of the Patent Box and the tax savings that it provides straight away. Although a claim for tax relief under the Patent Box regime can only be made once a patent has been granted, the regime does allow for profits arising up to six years before grant (i.e. in the period between applying for a patent and grant), to benefit from the reduced rate.

Assuming that the UK Government intends to continue its high priority of supporting innovative companies undertaking R&D in the UK, we anticipate that the Patent Box regime will continue beyond Brexit. As the rules around the relief available have been influenced by the European Commission, Brexit means that the UK will no longer have to seek EU approval for favourable tax incentive regimes such as the Patent Box, and so the UK government may have free rein to implement a more generous Patent Box regime. This could make it more attractive to SMEs and further incentivise the creation of IP assets in the UK.

Please contact us if you have any further questions on the Patent Box.

I

Ian Grey [email protected]

11 G1/19: Just What Do Those Questions Mean? When you think of a researcher – a scientist or an engineer – designing a new computer chip, optimising a chemical process, or developing a new medicine, the chances are that you picture him or her sitting in front of a computer manipulating a computer-generated model. Simulation allows the researcher to test different designs, try out alternatives, make substitutions and change variables, before settling on a final design. In this way, the researcher can rapidly try out large numbers of designs before finally turning to expensive real- world testing or costly production.

Given that patents protect implemented inventions are handled perhaps unsurprising that different technological innovations, you might at the EPO. Boards of Appeal can reach different naturally assume that patents can conclusions in similar cases giving be used to protect the very type of Appeals at the EPO diverging reasoning. software used in this activity. That assumption, however, is misplaced. The EPO has a self-contained appeals This is where the Enlarged Board Indeed, in Europe, patent protection system. If a department of first of Appeal plays an important role: for computer-implemented inventions instance (typically an examining its main task is to ensure uniform is currently under review with division or an opposition division) application of the law (the European questions referred to the European refuses an application, revokes a Patent Convention). It decides Patent Office (EPO) Enlarged Board of patent or issues some other form of on points of law which are of Appeal in G1/19 (CONNOR/Pedestrian negative decision, then the affected fundamental importance that are Simulation). The outcome of the party can appeal against the decision. referred to it either by a Board of referral could have a significant effect Appeal or by the President of the EPO. on whether these invaluable – indeed The appeal is heard by one of 28 Referrals of questions are rare: there essential – tools and processes can Technical Boards of Appeal (or simply are only two or three cases referred in fact be protected and could have 'Boards of Appeal'). Each Board to the Enlarged Board each year. far-reaching consequences affecting consists of about seven members a wide range of technical areas of which three are drawn to hear This is what is happening in G1/19. involving computers. a particular appeal. The appeal Questions have been referred by a process includes a written procedure Board of Appeal seeking clarification But G1/19 is not just simply and often involves a hearing ('oral about patentability of simulations. about whether or not computer- proceedings'). At the end of the process, a Board hands down a implemented simulations are Computer-Implemented patentable. It also looks at the sorts decision which includes its reasoning of simulations that can be protected. (the 'ratio decidendi', to give it its Inventions at the EPO For example, a tool for verifying the proper name). Once a decision has The case law relating to patentability design of a computer chip might seem been handed down, the case is often of computer-implemented inventions more worthy of patent protection remitted back to the department of is well developed and you might be than one which models the price of first instance for further examination forgiven for thinking that no referral stocks and shares. Furthermore, the with the department bound by the is needed. Indeed, a referral made case also looks at what the claims reasoning in the decision. Important over ten years ago by the President should cover, in particular, whether decisions are added to the EPO’s of the EPO in G3/08 (Programs a claim to a method of simulation Case Law of the Boards of Appeal and for computers) was found to be alone is enough or whether the significant cases are incorporated into inadmissible because the Enlarged claim should be directed to the wider the Guidelines for Examination at the Board of Appeal did not identify design process (including simulation), EPO. any divergence in Board of Appeal or indeed be limited to a final, real- decisions. The present case, however, world product or system. About 3,000 appeals are filed each highlights a potential gap as to year, most of which result in a what should be considered to be Before delving into some of the decision. Thus, there is a large and patentable in the realm of computer- details of the case, it is perhaps ever-expanding body of case law. implemented inventions. helpful to have a brief look at the Given the sheer volume of cases and appeals process and how computer- variations in Board members, it is

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The current EPO approach to The perceived problem with a questioned the decision’s reasoning in examining computer-implemented simulation is that it does not control INFINEON. inventions is based to a large extent any external equipment or process on T 641/00 (Two identities/COMVIK). physical data. If a simulation just runs First, the Board considered that on a computer, then what technical “although a computer-implemented In this decision, it was held that, effect does it produce or indeed could simulation of a circuit or environment when assessing inventive step of an it produce? is a tool that can perform a function invention consisting of a mixture of "typical of modern engineering work", technical and non-technical features The Appeal it assists the engineer only in the and having technical character as cognitive process of verifying the a whole, only those features which The application in CONNOR relates design of the circuit or environment, contribute to the technical character to a method of simulating pedestrian i.e. of studying the behaviour of of the claim should be taken into crowd movement which can be used the virtual circuit or environment account; those features making no to help design or modify a venue, designed. The circuit or environment, such contribution cannot support the such as a railway station or stadium. It when realised, may be a technical presence of inventive step. seeks to provide a realistic simulation, object, but the cognitive process in real-world situations, which of theoretically verifying its design It is important to note that the cannot be adequately modelled by appears to be fundamentally non- COMVIK decision did not state that conventional simulators. technical”. non-technical features should be ignored. Instead, the decision made The application was refused during Secondly, the Board took the view it clear that such a feature could examination on the grounds that that the earlier decision “appears contribute to technical character (and it lacked an inventive step: the to rely on the greater speed of the so be considered when assessing examining division argued that a computer-implemented method as inventive step) provided it met a simulation model was non-technical an argument for finding technicality. certain requirement, namely that it and that its implementation on a But any algorithmically specified interacts with the technical features computer was obvious following the procedure that can be carried to change how those aspects of the approach set out in COMVIK. out mentally can be carried out claim technically function. more quickly if implemented on a So what are the issues? The first computer, and it is not the case that This approach is important since relates to the link between the the implementation of a non-technical in most computer-implemented simulation and physical reality. method on a computer necessarily inventions the distinguishing feature Simulations are run on models which results in a process providing a tends to lie in areas that the EPO approximate real-world systems. Is technical contribution going beyond considers to be non-technical, such there a direct link between the two? its computer implementation”. as an algorithm or mathematical Should there be? Remember that process. the system being modelled may not The Board acknowledged actually yet exist and indeed may the significance of numerical What does this approach mean in never exist. development tools and considered practice? that “legal certainty in respect of the The second issue is the role that the patentability of such tools is highly Stated simply, a non-technical feature simulation plays. Does the simulation desirable”. Accordingly, it is looking can contribute to the technical merely assist in a cognitive process for a decision to be taken on the character in one of two ways, namely of verifying the design? A cognitive patentability of simulation methods. by its technical application to a field of process is not technical. Therefore, technology, i.e., by solving a technical does the simulation provide a The Board, therefore, referred the problem in a technical field (i.e., it technical contribution going beyond following questions to the Enlarged serves a 'technical purpose'), or by its computer implementation? At their Board of Appeal for decision: being adapted to a specific technical heart, the issues concern technical implementation. Thus, if neither of effect and the question “What is the 1. In the assessment of inventive these two situations arise, then the technical effect of a simulation which step, can the computer-implemented non-technical feature will be ignored is run on a computer?” simulation of a technical system or during the assessment of inventive process solve a technical problem step and so the claimed invention is The appeal cited an earlier Board by producing a technical effect likely to be found unpatentable. of Appeal decision T 1227/05 which goes beyond the simulation’s (Circuit simulation I/INFINEON implementation on a computer, if the A non-technical feature can be TECHNOLOGIES) in which it was found computer-implemented simulation is considered to serve a technical that simulation of a circuit subject to claimed as such? purpose when, for example, it 1/f noise constitutes an adequately contributes to controlling external defined technical purpose. In that 2. If the answer to the first question equipment, such as an X-ray machine, case, the simulation was found to be is yes, what are the relevant criteria or it is used in the processing of patentable. for assessing whether a computer- physical data, such as digital images implemented simulation claimed as or measurements, to achieve a The Board of Appeal agreed that such solves a technical problem? In technical effect. INFINEON supported the case in particular, is it a sufficient condition CONNOR. However, the Board that the simulation is based, at

13 least in part, on technical principles Amicus Curiae Briefs and Conclusion underlying the simulated system or It is hoped that the Enlarged Board process? Comments from EPO President of Appeal will hand down a decision before the end of 2020. 3. What are the answers to the At the beginning of September, the first and second questions if the Enlarged Board of Appeal invited All being well, the Enlarged Board of computer-implemented simulation is observations from the appellant, Appeal will take a sensible, pragmatic claimed as part of a design process, in interested parties and the EPO approach and agree that computer- particular for verifying a design? President. implemented simulations as such are patentable at the EPO. If it takes the The questions are ostensibly based The common view was that the first opposite view, then the repercussions on those that were presented by two questions should be answered not just in computer-aided design the appellant during the appeal. in the affirmative. Pleasingly, the EPO but also across all fields involving Interestingly, another question was President submitted comments which computer-implemented inventions formulated by the appellant relating supported the view of the appellant. – including AI – would be immense. to the extent to which claim features The President was of the view that “a It would also bring into question based on psychological considerations computer-implemented simulation of whether the patent system in Europe could make a technical contribution. a technical system or process claimed is fit for purpose for inventions The Board, however, decided not to as such solves a technical problem coming from new and growing refer a question on this point. by producing a technical effect going technology sectors or whether it is beyond the computer-implementation stuck in the 20th century, content So what do these questions actually when it reflects, at least in part, with granting patents only for the mean? The questions can be stated technical principles underlying the technologies of yesteryear. more simply (although not quite on a simulated system or process”. one-to-one basis) as:

- Are computer-implemented The outcome of simulations in principle patentable? “ - Does the nature of the system or the referral could process being simulated matter? have a significant In particular, does it help if the simulation concerns the technical effect on whether aspects of the system or process? - What form should a claim to a these invaluable – simulation take? indeed essential – Pawel Piotrowicz [email protected] Another way of looking at the tools and processes questions is whether the test set out can in fact be in T 1227/05 is correct and, if so, how should it be applied? protected and could

The form of claim will have an have far-reaching important bearing on different consequences actors in the chain between software designer, via the user of the software, affecting a wide and manufacturer. For example, if a direct link to physical reality range of technical is required, then it still might be areas involving possible to obtain a European patent for a product designed using the computers. simulation. However, such a patent ” is of little use to the designer of the As to the issue of direct link to software. physical reality, the President stated that “a direct link to physical reality The answers to the referred […] is not necessarily required for questions could have far-reaching the finding of a technical effect going consequences. Simulations are beyond the computer-implementation used in a wide range of technical in the context of inventive step”. areas, including drug discovery, chemical processing, transport and Thus, if this view is followed by the communication networks to name but Enlarged Board of Appeal, then it will a few. Also, it should be remembered affirm that computer-implemented that building a model is a key part of simulations, in principle, can be artificial intelligence. patented at the EPO.

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15 Designing for Compliance – Data Protection Considerations in the Development of Artificial Intelligence

The application of artificial intelligence (AI), and more specifically, machine learning (ML), to support decision making and accelerate innovation has experienced exponential growth in recent years. Large, aggregated datasets are extremely valuable; they can help us to identify trends in a population, relationships between different variables, test hypotheses and evaluate outcomes.

One of the central challenges for requirement of data minimisation; research into potential causes and AI developers is the vast amount which, as we will see, also assists cures. The importance of considering of data required in order to train in achieving data security and in the privacy impact of AI systems AI algorithms successfully. Many meeting the legal requirement that will only increase, as more powerful of today’s AI applications seek to personal data are retained no longer models are fuelled by increasing solve human-centred problems, and than necessary for the purposes amounts of data. With the wider therefore rely heavily on data about for which they are processed. We availability of hardware specialised individuals - personal data - in order should not, however, lose sight of the for the processing required in ML to function. In this article, we will requirement for personal data to be models (such as neural processors/ look at the phases in the lifecycle of processed lawfully. Non-exhaustively, accelerators, found even in mobile ML applications, the importance of that means the data are processed: devices), it is more feasible than ever personal data in those phases, and to perform a contractual obligation; to implement larger, more powerful the approaches which can be adopted in the legitimate interests of the models. Typically, more data are to minimise regulatory risk whilst processor; in order to carry out a task required to train these larger models allowing algorithms to achieve their in the public interest; or based on the and achieve these higher levels of aims. consent of the individual whose data performance. is being processed. Another important Personal data – being data relating aspect of data protection law in the Typical ML Pipeline to an identified or identifiable context of automated decision making individual – must only be collected – including decisions reached using Before turning to the strategies for and processed in accordance with AI systems – is that individuals have minimising the privacy impact of ML data protection laws. In the UK, we the right not to be subject to purely models, it is useful to have in mind are concerned principally with the automated decisions. This should the common phases for such models. Data Protection Act 2018 (DPA) and be borne in mind by organisations Trained ML models process data the EU General Data Protection implementing AI systems. in order to make some prediction Regulation (GDPR). Certain types about that data. For example, in of personal data, such as health Some of the most widely reported order to verify a user’s identity, face or biometric data, are classified (and debated) AI applications at recognition models receive a picture as special category data which are present rely on biometric and other of a face and predict whether the subject to heightened restrictions special category data, for example, AI received picture depicts a specified on processing, and must be handled systems that process vast amounts of user or not. This phase, where a with additional safeguards. In this patient data in order to find specific trained ML model is used to make article, we will look principally at symptoms that could help identify the predictions, is usually referred to how ML models can meet the legal presence of a disease, thus enabling as the inference phase. The phase before this is known as the training

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phase. An untrained model has access privacy discussed below will need to This is a very simple method, and easy to training examples during this be implemented in both the training, to implement in the inference phase, phase; the data comprising those testing and inference phases. as well as in training, as all that is examples will often be collected from needed is remembering which noise one device and transferred to a server Data Protection distributions were chosen during where the ML model training will training, and the features to which take place. These training examples Techniques noise was added. include some input data and a target Many applications of ML, such as for each data point. The target face recognition, use an individual There are, however, some drawbacks represents the result that we would as a data point. Each example in the to implementing perturbation in order ideally like our model to produce for set of training examples is linked to reduce privacy impact. First, with each given data point. Then, to train to a particular individual and each any method that perturbs individual the model, we generate predictions example might contain a set of features of training data, there is for some training examples, and descriptors about the individual. For a risk of reducing the predictive adjust the model so that the next example, a job recommendation power of ML models, as patterns in time it sees the training examples, service may use an ML model to the training data become corrupted the generated predictions are more match candidates with jobs; each by the addition of noise. More similar to the corresponding targets. training example will represent a importantly however, is that if outliers In the face recognition example, particular candidate. The descriptors are present in the training data (e.g. if the target would be 1 (i.e. 'True') for for each candidate may include the highest earning candidate earns images with the user’s face, and 0 (i.e. information such as industry sector double the second highest earner), 'False') otherwise. experience, years of experience, adding noise will do little to mitigate relevant education, etc. For training the risk that the outlier could be These are the two most important examples linked to an individual, singled out from the data. phases, but there are other phases the data protection principle of where data is processed. Before minimisation means that the amount Using Random Matrices deploying ML models in practice, of personal data collected, processed Another perturbation method could it is important to go through a and retained should be no more than involve generating a random matrix validation phase. This involves what is necessary for the purpose to multiply with the training examples making predictions on unseen data of the data processing. Similarly, in (also represented as a matrix) to (i.e. data that the model has not the testing and inference phases, transform human-readable, sensitive been trained on) to ensure that the minimising the personal data used in data into a matrix of ‘random’ model performs well when deployed. ML applications is a key component numbers. In this case, as all of the When picking a suitable model for of regulatory compliance. Below, data has been modified by the same deployment, several models may be we examine some of the principal transformation, the predictive power validated. The best performing model methods for minimising personal of ML models should not be affected. will then be tested on a separate data data in ML applications, from training At inference, instead of sending the set in the testing phase in order best through to inference. personal data to a server where to assess the model. In practice, this training data is stored, the personal is implemented by distinguishing a Perturbation Methods - Adding data can be first multiplied by the large collection of data into different Noise generated matrix in order to preserve sets for these distinct phases, with a A simple technique which seeks to an individual’s privacy. However, large majority of data being used to reduce the privacy impact of data there is risk that the process could train the various models (e.g. 70% of processing on individuals, is to be reverse engineered to find the the data), and smaller portions for ‘perturb’ the training examples by inverse transformation and recover validation and testing (e.g. 20% for adding 'noise' to the data (e.g. by the original data. validation and 10% for testing). replacing existing data points with modified values). This approach Synthesising Data While it is common to separate seeks to mitigate the risk of retaining A related approach is to train ML training and inference phases, a fully accurate data profile for models using synthetic training data. this may not always be the case individuals in the trained ML model, In this privacy-preserving technique, in practice. One example of this is which would pose a heightened risk generative models are used to on-device training in which a model to those individuals, for example, in generate synthetic data which closely is continually refined through use, the event of a data breach. In the job matches the characteristics of the e.g. a face recognition model which recommendation service example, original training data set comprising is refined over time as a user’s a candidate’s previous income personal data. Such generative appearance changes. may be desirable to include in the models will of course need to be training data. Instead of using (and trained in the first place, which will Most of ML depends on the storing) a candidate’s real income, we require the use of personal data, assumption that the data used to could generate values from a noise although that training could make train a model is from the same distribution and perturb the values use of federated learning (as we distribution as the data that will be by adding this noise to produce a examine in greater detail below), received during inference. Therefore ‘noisy estimate’ of the candidate’s real where personal data is only stored any pre-processing (i.e. processing income. on a local device. Alternatively, a done to raw data before input into the centralised trusted organisation ML model) approaches to preserving could train these models in a secured

17 location, with the personal data devices have sent their results to the mindful of the term for which data deleted once the generative models server. At inference, the local version are retained. The greatest mitigation are trained (favouring compliance currently on a device can be used to from a regulatory perspective is with the data retention principle, generate personalised predictions, achieved when data no longer pertain that personal data is not held longer without user data being transmitted to an individual (including by allowing than necessary). Once the generative or stored remotely on the cloud. the ‘singling out’ of a person, even models are trained to produce high- without necessarily ascertaining their quality synthetic data, this synthetic Local Models full identity) – that data ceases to be data can then be used to train AI and As alluded to in the previous sections, ‘personal data.’ Anonymised data ML applications. In order to avoid ML models can be implemented on held in a secure system, achieves a potential pitfall to this approach, the devices that use the results of that desirable result, effectively care must be taken to ensure that the generated predictions. In the removing the regulatory burden of the generative model is not merely user verification example mentioned data protection law by stripping data ‘remembering’ examples in the previously, the face recognition model of its ability to identify an individual. personal data training set, as this can be implemented on the device The sophistication of AI algorithms, in would not achieve the aim of reducing that needs to verify the user. In this tandem with the number of publicly the privacy impact on individuals. We privacy-preserving technique, data is accessible data points on individuals, should also remember that at the not sent to the cloud during inference. means that AI applications are inference phase, personal data will Local models are more difficult to increasingly able to analyse data sets still need to be processed to generate implement in the training phase, as which have been anonymised (that accurate predictions in relation to a fully training ML models is typically is to say, they contain no personal specific individual. The bulk of data too resource intensive for current data), in combination with other data required in ML applications, however, personal handheld devices. As a sets, in order to re-associate data with is to train models at the outset, so result, personal data may still need to individuals. using synthetic data to train models be sent to a server for training models can greatly minimise the amount of – unless federated learning or other It is not without irony that AI personal data being processed. related techniques are also used algorithms now pose a threat to the during training. use of anonymisation for achieving Federated Learning privacy compliance when dealing In addition to minimising the One way to reduce the amount of with personal data in AI systems. amount of personal data processed, personal data required to achieve Whilst anonymisation continues to data protection law requires that sufficient predictive power in this be a useful tool for reducing risk appropriate security measures are in setting is by adapting pre-trained when processing large data sets (in place to protect personal data from ML models. For example, when particular), new technologies which improper disclosure. One approach implementing user verification, can result in such data being re- to mitigating the risk of a serious data instead of training a face recognition associated with individuals, means breach, is to adopt the approach of model for each user from scratch that anonymisation remains a tool, 'federated learning' which allows ML (requiring a large number of but not a full solution, for regulatory models to be trained, whilst retaining examples for each specific user), pre- compliance. As AI continues to gain personal data on localised servers trained models may be adapted for prominence, we can expect to see an rather than all personal data being this purpose. In particular, a powerful increased focus on data security in held on a single common server. image recognition model may be order to guard against the improper This technique involves including trained on millions of examples of disclosure of anonymised data, where the devices used to collect personal images to detect whether there is they could be vulnerable to becoming data in the training phase of ML any face in a picture. This model ‘personal data’ once again, presenting applications. This is performed by would not require images containing a significant risk for the owner of the having the different devices partly a specific user for training. As this AI system. train their own local versions of a model has captured the idea of what ML model, and sending these results a face is, large parts of this model to a server that then trains a ‘global’ may be extracted to form part of a version of the model. The global face recognition model in order to versions of the model are updated implement user verification. Then, the and sent back to the participating entire face recognition model can be devices in order to continue the trained by deploying the model locally training process. Whilst the ‘results’ of on a user’s device, and asking the user the local training (e.g. the gradients of to complete a configuration process an objective function used to update using only a few examples captured the parameters of a neural network) of that specific user. are derived from personal data, the Robert Peake risk of identifying individuals from What the Future Holds [email protected] the results would be greatly reduced. We have seen that the different Further security can be implemented approaches to mitigating privacy Ronique Hossain by requiring the results sent to the impact on individuals by minimising [email protected] server to be encrypted, such that the personal data used in the decryption can only occur when a different phases of AI applications, large enough number of participating prioritising data security and being

18 www.vennershipley.co.uk New Year, New Rules: Changes to the Rules of Procedure of the EPO Boards of Appeal January 2020 The new Rules of Procedure of the Boards of Appeal (RPBOA) of the EPO come into force on 1 January 2020. The new rules include significant changes and have been the subject of much debate, for example, on how much they will affect appeal proceedings at the EPO.

The rules implement a so-called • the minutes of any video or they may wish to rely on during an 'convergent approach' that is telephone conference with the appeal. Given the significance now intended to focus the appeal party or parties sent by the placed on the objections, arguments proceedings on the issues discussed Board. and amendments submitted at first and decided upon in the decision instance (and the explicit reference It is noteworthy that the new rules under appeal. This is intended to the minutes of the first instance make reference to the decision to improve procedural efficiency oral proceedings introduced for the under appeal and the minutes of the without compromising quality. From first time into the revised rules), the first instance proceedings. Perhaps 1 January 2020, the new rules apply minutes of the first instance oral surprisingly, the previous rules made to all pending appeal cases and so proceedings are now more important. no such mention. Including reference we should soon see the practical Accordingly, from a practical in the new rules to the decision under implications of these new rules. In perspective, this makes it advisable appeal and the corresponding set of preparation, we consider some of the for parties to review more carefully minutes is suggestive that in future, main features of the new rules. the minutes of oral proceedings appeal proceedings will be focussed and request corrections where more on the decision under appeal appropriate. Changes to an Appeal Case and what was discussed at first One overriding effect of the new instance rather than focussing on the rules is that it will be more difficult facts and arguments presented by the It will also be to change your case during an parties on appeal. “ appeal (i.e. change your case after much easier for a filing an appeal), but it will also be The rules, i.e. Article 12(2), also limit more difficult to change your case the changes that a party can make to Board of Appeal when filing an appeal (i.e. employ its case during appeal proceedings to dismiss a late- facts and arguments etc. that were compared to its case presented at not presented at first instance). first instance (e.g. examination or filed argument, Concerning what you can include in opposition). In particular, a party’s document or an appeal, Article 12(1) indicates that appeal must be directed to the appeal proceedings shall be based on: requests, facts, objections, arguments claim amendment and evidence on which the original • the decision under appeal decision under appeal was based. without having to and the minutes of any oral Parties will therefore find it difficult justify why. proceedings held during the first to raise new objections, submit new instance; documents or file new auxiliary ” requests (claim amendments) that As in the current rules, the revised • the notice of appeal and rules require that a statement of statement of grounds of appeal; were not presented during the first instance proceedings. With appeal, or the reply, must contain a • any reply to an appeal filed within immediate effect, parties should party’s complete case indicating all the specified time limit (in cases therefore consider their case requests, facts, objections, arguments having more than one party); carefully during the first instance and evidence relied on. The new rules also restrict the amendments • communications issued by the proceedings and make sure that all objections, documents and claim that a party can make to their case Board of Appeal and any reply to after their appeal is filed (or after a such communications; and amendments are on file during the first instance proceedings that party has replied to an appeal filed by

19 another party). Anything not filed with As a result, parties should consider rule, fundamental deficiencies which either a party’s appeal or reply that each case carefully during the first are apparent in the proceedings is subsequently filed is considered instance proceedings to identify any before that department constitute an amendment to a party’s case, argument and identify any document such special reasons”. i.e. considered late filed. Any such that they may wish to rely on at any amendment to a party’s case may be stage of the proceedings, in particular It is understood that the reason for admitted into the appeal proceedings the appeal stage. Under the new this is to avoid 'ping-ponging' between but only at the Board of Appeal’s rules there is nothing to be gained the Boards of Appeal and the first discretion. by keeping any argument/document/ instance departments. Again, the aim claim amendment for the appeal. Any of these changes is to make the whole Moreover, any amendment to a argument, any document or any claim process more efficient. party’s case must be clearly identified amendment not presented at first and reasons provided for submitting instance is likely to be rejected (not However, it is not clear if the new it only in the appeal proceedings. admitted) by the Board of Appeal. All rules will encourage the Boards of If the amendment is to a patent arguments, documents and/or claim Appeal to consider issues that were application or patent, the party amendments should be submitted at not discussed/decided on at first must indicate the basis for the the earliest opportunity. instance. Until now, it has been the amendment(s) in the application practice of the Boards of Appeal to as filed and provide reasons why Remittal Less Common remit a case back to the department the amendment overcomes the of first instance if issues had not been objections raised. Another significant change to the discussed. For example, an opposition rules is the approach to remittal of division may have revoked a patent The emphasis of the new rules a case to the department of first for added-matter without considering suggests that Boards will be less instance. The new rules appear to novelty/inventive step. If a Board likely to accept any changes to a make it less likely that a case will of Appeal subsequently overturned party’s case. Hence, the new rules be remitted. The current version of the opposition division’s decision on introduce significant restrictions on the rules provide that remittal must added-matter, until now the Board what can and cannot be submitted/ occur if fundamental deficiencies of Appeal would have remitted the argued during appeal proceedings. are apparent in the first instance case to the opposition decision for It will also be much easier for a proceedings (unless special reasons consideration of novelty/inventive Board of Appeal to dismiss a late- present themselves for doing step. The new rules regarding filed argument, document or claim otherwise). The new rules address remittal suggest that Boards should amendment without having to justify the possibility of remittal in a very be dissuaded from remitting cases why. The rules aim to make the EPO’s different light. Article 11 RPBA 2020 in these circumstances. On the appeal proceedings more focussed on states: “The Board shall not remit other hand, remitting a case in such reviewing the decision under appeal the case to the department whose circumstances would seem to run and move away from a complete decision was appealed for further contrary to the intention of these new revaluation of the case. prosecution, unless special reasons rules that an appeal should focus on present themselves for doing so. As a the decision under appeal. Time will

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tell how the Boards of Appeal intend the decision to be taken. This stand, the transitional arrangements to interpret these new rules and if communication is mandatory, appear to allow a situation in which their practice in remitting cases will however the new rules do not the appellant’s grounds of appeal change. In the meantime, given the require that the communication (filed December 2019) are treated possibility that Boards will discuss and includes a preliminary opinion. according to the existing rules and decide issues not discussed/decided The new rules indicate that the respondent’s reply to the appeal in the decision under appeal, parties sending a preliminary opinion is (submitted March 2020) is treated must be fully prepared to discuss all optional (Article 15(1)). according to the revised, more strict possible issues during an appeal. rules. How the Boards of Appeal 4. The new rules also set out in resolve this will be interesting. what circumstances a party may Oral Proceedings request a change of the date of There are also several changes the oral proceedings (Article 15(2) introduced by the new rules to the (b)). Reasons which do not justify holding of oral proceedings, mostly of a change of date are also listed a formal nature. They include: (Article 15(2)(c)).

1. The new rules require the 5. The new rules also require Boards of Appeal to publish a that a Board of Appeal issues list of the cases in which the its written decision in a timely Boards are likely to hold oral manner. For example, in most proceedings, issue a summons cases the Board should put their to oral proceedings, or issue a decision in writing and dispatch Tim Russell decision in written proceedings it within three months of the oral [email protected] in the next working year (Article proceedings (Article 15(9)). 1(2)). However, the list is merely a guide and there is no obligation Transitional Arrangements to keep to it. How informative the Although the new rules come into list is will only become apparent force on 1 January 2020, the new rules over time. do not apply to grounds of appeal 2. The new rules state that a Board or replies to an appeal filed before should “endeavour” to provide at that date. It is therefore worthwhile least four months’ notice of oral considering all pending appeals and proceedings (Article 15(1)). deciding if any action should be taken before the end of 2019, e.g. filing 3. Prior to oral proceedings, a grounds of appeal and replies to an Board is required to issue a appeal early, so that the existing, communication drawing attention less strict rules are applied. Finally, to the matters that seem to be it should be noted that as they of particular significance for

21 Integrated Circuits

To celebrate the 60th anniversary of the invention of the integrated circuit, Rob Cork looks back on the pioneering work of two US inventors, Jack Kilby and Robert Noyce, whose research paved the way for virtually all modern electronic devices.

To be able to appreciate the board via soldering, making the structure” (serial no. 830,507). Noyce’s significance of Kilby and Noyce’s fabrication of complete circuits both application described an alternative individual contributions to the time-consuming and prone to defects. approach to manufacturing integrated development of the modern circuits, in which the electrical integrated circuit (IC), it may be In the early 1950s, an Englishman connections between different helpful to begin with a short history called Geoff Dummer was the first components took the form of metal lesson. In the early 20th century person to propose a theoretical strips deposited directly onto the the invention of the vacuum tube design for a monolithic integrated surface of the wafer. had helped to launch the fledgling circuit, in which multiple circuit electronics industry. Due to their elements would be fabricated Both Kilby’s and Noyce’s circuits physical size, devices which relied closely together on a single block of shared the common concept of on vacuum tubes were extremely silicon and interconnected to form a forming a number of components bulky and consumed large amounts functioning circuit. By reducing the in a single semiconductor wafer of power. For example, in 1945 length of the connections between by selectively doping parts of the the US Army developed the ENIAC components, Dummer’s novel wafer. It was already known that computer for calculating artillery ‘integrated’ circuit would be capable the conductivity of a semiconductor firing tables, which could calculate a of operating faster and at lower could be increased by the addition trajectory in 30 seconds that would power than could be achieved with of a suitable dopant. If a dopant is normally take a human 20 hours existing technologies, and clearly used which adds electrons to the to complete. However, the ENIAC had the potential to revolutionise semiconductor, the resulting region contained some 20,000 vacuum the fledgling electronics industry. is referred to as ‘n-type’. On the tubes, approximately 5,000,000 However, since Dummer did not other hand, the addition of a dopant hand-soldered joints, weighed 60,000 describe how to actually fabricate which removes electrons from the pounds and consumed around 150 such a circuit, let alone on commercial semiconductor, leaving positively- kW of electricity. It was rumoured scales, the integrated circuit remained charged ‘holes’, results in a ‘p-type’ at the time that lights across a merely theoretical concept – a region. Crucially, both Kilby’s and Philadelphia would dim whenever the solution that promised to deliver so Noyce’s solutions were compatible computer was switched on. Clearly, much, yet remained tantalisingly out with known semiconductor doping if electronic devices were to achieve of reach. Until, that is, Kilby and Noyce processes, and so could allow widespread adoption, the size and arrived on the scene. miniaturised components having power requirements would have to be both n-type and p-type regions to be significantly reduced. On 6 February 1959, Jack Kilby and formed on one semiconductor wafer, his employer, Texas Instruments, as a single device. In this context, there was great filed a US patent application interest in the late 1940s and early titled “Miniaturized Electronic As an interesting aside, following 1950s in alternatives to vacuum- Circuits” (serial no. 791,602). The the grant of Noyce’s application on tube technology that would allow application described a circuit 25 April 1961 (US 2,981,877), Texas electronic components and circuits in which components such as Instruments appealed the decision to be miniaturised. One of the transistors, resistors and capacitors to grant Noyce’s patent on the most promising solutions was the could be fabricated on the same grounds that Kilby had made the transistor, which had been developed semiconductor wafer and connected invention before Noyce. At the time, by Bell Labs in 1948. However, the via thin loops of wire, the ends of US patent law operated according earliest transistor designs featured which were thermally bonded to to the ‘first-to-invent’ principle, and electrodes on different surfaces contacts on the surface of the wafer. Texas Instruments produced evidence (i.e. different layers). As a result, it This provided a technically feasible in the form of Kilby’s lab notebook. was not straightforward to form solution for fabricating integrated This, it was argued, showed that interconnections between multiple circuits. Then, just a few short Kilby had made his invention on 24 transistors on a single silicon wafer. months later, on 30 June 1959, Robert July 1958, being the date on which Instead, transistors were packaged as Noyce and Fairchild Semiconductor he had drawn the first sketch of separate components which would Corporation filed an application for what later became known as “The then have to be attached to a circuit a “Semiconductor device-and-lead Monolithic Idea”. Noyce’s own

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at the time it represented a technological breakthrough since it enabled electrical connections to be formed solely by patterning a layer of surface metallisation, and in doing so elegantly overcame the main obstacle to mass-producing integrated circuits.

Initially, it was not clear which out of Kilby’s and Noyce’s alternative approaches would eventually gain widespread adoption, if at all. As Kilby recalled in his Nobel acceptance speech many years later (8 December 2000), after filing their respective records, on the other hand, showed regions, respectively, whilst the patent applications in 1959: “Noyce, that he had arrived at the invention underlying oxide ‘tongues’ (5′ and 5′′) a few others and myself provided later, in January 1959. The USPTO prevent the metal strips from shorting the technical entertainment at then granted Kilby’s application on 23 out other regions that lie beneath professional meetings for the next June 1964 (US 3,138,743), which was each strip. five years as we described and in turn appealed by Fairchild. Texas debated the merit of the various Instruments and Fairchild eventually miniaturization systems”. Ultimately, settled their differences via a cross- it was Noyce’s design that proved licensing agreement. more commercially successful, not least because it offered a much In Kilby’s design for an integrated simpler fabrication process than circuit, components were connected Kilby’s ‘flying-wire’ design, and all by means of so-called ‘flying wires’ modern integrated circuits can trace formed from gold. In the below their roots back to Noyce’s original drawing taken from US 3,138,743, design. Noyce went on to found Intel these are the wires labelled ‘70’ which jointly with Gordon Moore, who is span the gaps between components perhaps best known for devising the on the surface of the wafer. As well as eponymous ‘Moore’s Law’. connecting components on top of the For example, the tongue (5′′) on the wafer to each other, the gold wires right-hand side that stretches across Although Noyce’s design won out could also be used for connections to the ring of p-type material (4) allows commercially, the decision of the other parts of a device, such as the a layer of surface metallisation (7) Nobel committee to recognise the input and output leads beneath the to be deposited across the insulator invention of the integrated circuit wafer. in the Nobel Prize in Physics 2000 sadly came too late for Noyce. The prize was awarded to Kilby, but could not be shared posthumously with Noyce since he had passed away a decade earlier, and Nobel prizes can only be awarded while the recipient is still alive. However, in his Nobel acceptance speech Kilby paid tribute to his one-time rival, remarking that “[w]hile Robert and I followed our own paths, we worked hard together to achieve commercial acceptance Noyce’s design on the other hand, to reach the contact (6) to the for integrated circuits. If he were still provided connections between central n-type region (3), without the living, I have no doubt we would have various components in the form metallisation coming into contact shared this prize”. of surface metallisation. Noyce with the surrounding ring of p-type proposed using metal strips on top material. Noyce formed the insulating of an insulating oxide layer to make layer by oxidising the surface of the the electrical connections between semiconductor, followed by etching different regions of the device, with away selected portions of the oxide to the insulating oxide ensuring that the reveal the underlying semiconductor. metal layer would not short out the semiconductor junctions. In the below As with many of the great inventions, drawing of a transistor taken from US with hindsight Noyce’s idea might 2,981,877, the metal strips labelled seem deceptively obvious, particularly ‘9’ and ‘7’ provide the electrical as it is now such a routine feature Rob Cork connections to the p- and n-doped of semiconductor devices. However, [email protected]

23 Implications of the UK General Election on Brexit

As our regular readers will be aware, on 23 June 2016, the UK voted in a referendum to leave the European Union (EU), by a relatively narrow margin of 51.9% to 48.1%. The Government initiated the official withdrawal process on 29 March 2017, providing for a 2-year period to allow for the negotiation of a withdrawal agreement, so that the UK was due to leave the EU on 29 March 2019.

With the UK having been tied to the outcome of the election, the prospect In summary, whatever the result of EU for over 40 years, Brexit, as it of a no-deal Brexit on 31 January 2020 the election, it is likely that the status quickly became known, would clearly is now very remote, which should give quo in relation to EU trade marks and have wide ranging implications both a great deal of comfort to trade mark designs will prevail for a further year within the UK and on its external owners. at least, and that subsequently, even relationships with other countries. if the UK does leave the EU, this will As a result, the withdrawal process If it wins the election with a sufficient be on the basis of a trade deal that has been difficult and controversial, majority, the Conservative party, provides a predictable and smooth and has resulted in extensions being which forms the current government, transition for trade mark and design sought from and granted by the EU, would seek to leave the EU on 31 owners. and deadlock in Parliament. January on the basis of the latest withdrawal agreement which has The present position is that the been negotiated with and accepted by EU has granted an extension the EU. This would lead to a transition until 31 January 2020, at which period until at least the end of 2020 point, in the absence of a further during which the new government extension, the UK will leave the would seek to negotiate a trade EU, either with or without a deal, agreement with the EU. During this the latter being referred to as a transition period, there would be no no-deal Brexit. In relation to the change in the protection provided field of intellectual property, while by EU trade marks and designs. At patents are unaffected, the main the end of that period, the impact Jan Walaski effect of a no-deal Brexit would be on these EU rights would very much [email protected] on EU registered trade marks and depend on the trade deal that had registered Community designs, since been reached, but the transition to David Birchall membership of the EU is required any new system should be much [email protected] to allow an EU trade mark or more measured and predictable than design to have effect in the UK. The under a no-deal scenario. Government has made significant preparations to allow for the If the Conservative party does not continuity of registered trade mark win the election, then the most likely and design protection in the UK after outcome is that there would be a Brexit. More information on this can coalition government supporting be found on our website. a renegotiation of the deal with the EU, with a view to achieving a In an attempt to break the current closer alignment, or potentially even deadlock, the Government called a remaining in the EU, following a General Election on 12 December. The further referendum to be held during result of this election will affect the 2020. Although this would require way in which the UK leaves the EU, or the EU to grant a further extension even whether it leaves at all. beyond 31 January, it is difficult to see Although there are a number of why it would refuse to do so in these different scenarios depending on the circumstances.

24 www.vennershipley.co.uk Design Protection of Graphical User Interfaces In the last edition of Inside IP (Spring/Summer 2019), we looked at how graphical user interfaces (GUIs) could be protected under the UK copyright regime. In our latest article on this topic, we will explore the extent to which GUIs can be protected under the various design law systems covering the UK.

Background to the Law of what constitutes a valid design and ornamentation". The term ‘product’ The Community Design Regulation the same test for assessing whether is defined in section 1(3) of the Act (Council Regulation No. 6/2002/EC) an article produced by a third party (Article 3(b) of the Regulation) as "any provides the legal framework for falls within the scope of protection. industrial or handicraft item other both registered and unregistered For a design to be valid it must be than a computer program; and, in Community design protection. UK novel and have ‘individual character’, particular, includes packaging, get- registered design protection is a meaning that the design produces up, graphic symbols, typographic separate right that has basis in the a different ‘overall impression’ type-faces and parts intended to be Registered Designs Act 1949, which on a hypothetical ‘informed user’ assembled into a complex product". is harmonised with the national than publically available prior It is therefore clear that registered registered design laws of Member designs (‘prior art’). Infringement design protection is not restricted States by the Community Design is assessed in a similar manner by to physical articles and instead Directive (Directive 98/71/EC). determining whether a third party also covers two-dimensional Therefore, in the UK it is currently design produces the same overall designs including ‘graphic symbols’ possible to obtain registered design impression on the informed user as and ‘typographic type-faces’. The protection via a UK Registered Design the registered design. Therefore, the registered design system treats GUIs (UKRD) or a Registered Community points discussed below apply equally and app icons as ‘products’ that are Design (RCD) that covers the entire to UK and Community registered eligible for protection. The exclusion EU. Meanwhile, unregistered design systems and the Community of computer programs at first glance Community design protection subsists unregistered design right. There are appears to preclude the protection automatically, but with the significant no immediate plans for UK registered of GUIs. However, this provision drawbacks of a much shorter term of design law to diverge upon exit from actually excludes the protection of protection and also that the burden of the EU. the technical function and underlying proof is on the rights holder to show software code of computer programs, that an infringer copied the design. A separate UK unregistered design which are instead protectable under In the event of Brexit (with or right also exists (having basis in the the patent and copyright regimes. without a deal), then the current Copyright, Designs and Patents Act The fact that two-dimensional designs position is that all RCDs which have 1988). The UK unregistered right is are protectable means that it is been successfully registered by very different to the other design possible to obtain protection to a GUI the leaving date will be converted systems and, significantly, ‘surface per se, without showing any hardware into an equivalent UKRD in order decoration’ (i.e. two-dimensional (e.g. a smartphone or tablet) in the to avoid loss of protection to rights designs) is excluded from protection. design drawings. This is in contrast holders. Furthermore, UK applicants This makes the UK unregistered with registered design regimes in will continue to be able to apply for system unsuitable for protecting GUIs certain foreign jurisdictions, for RCD protection. In addition, a new and therefore will not be discussed example, China and the United States, supplementary unregistered design further in this article. wherein it is necessary to depict the right will be available in the UK GUI displayed on a device screen offering the same protection as the What is Protectable? (although some jurisdictions, such existing unregistered Community Section 1(2) Registered Designs Act as the United States, permit that the design right. 1949 (Article 3(a) of the Community device is disclaimed by being shown Design Regulation) defines a ‘design’ in dashed lines). Due to the harmonisation of the as "the appearance of the whole or a design law systems, the UK and part of a product resulting from the Scope of protection Community registered design systems features of, in particular, the lines, The scope of design protection is and the Community unregistered contours, colours, shape, texture determined by the drawings filed with design right use the same definition or materials of the product or its the design application. It is therefore

25 important that the scope is not A difference between the UK and differences between the designs unintentionally limited to features Community design registration and prior art, resulting in a higher that are shown in the drawings for systems is that a UK design threshold to establish individual context but do not actually form part application can include a written character of the design. of the design. In the case of GUIs, disclaimer. This can prove useful such features commonly include user for disclaiming content that is Animations content and information that varies not intended to limit the scope of It is possible to protect the animations with use of the GUI (for example, the protection of the design. For instance, now commonly found within GUIs. temperature displayed in a weather in the above example a written The European Union Intellectual app). One solution is to show such disclaimer could be used to clarify Property Office (EUIPO) Design features using dashed lines, which that protection is not limited to the Guidelines explain that this can be are usually interpreted as not forming particular media information and achieved by filing "a short sequence of part of the scope of protection. album art shown in the drawing. views used to show a single animated An example of this can be seen in design at different specific moments the below RCD no. 001441638-0010, Design Freedom in time, in a clearly understandable directed to a media player app. One aspect that is taken into progression". The Guidelines provide Certain features, including the media account when assessing validity and the following example of an allowable buttons and the square outline of infringement of a registered design ‘animated icon’: the thumbnail image, are shown in solid lines and thus will be interpreted as limiting the scope of the design. However, the thumbnail image and the media information text (depicted by the word ‘CONTENT’) are displayed in dashed lines. is the degree of ‘design freedom’ RCD no: 2085894-0014 (Proprietor: NIKE Innovate available to the designer. If there are C.V.): This clarifies that protection is not constraints on design freedom (for intended to be limited to these instance, a particular product has to The requirement for the sequence features, which instead provide be a certain shape in order to perform to show a "clearly understandable context to the design. Otherwise, if all its function) then the informed user progression" can prove problematic, of the features were shown as solid will notice more subtle differences as can be seen in the case of lines, the design could be interpreted between the registered design and a TeamLava, LLC v King.com Limited (R as being limited to the specific media third party design. This means that 1948/2015-3). In this case, King.com information shown in the design (i.e. third party designs are more likely to obtained RCD no. 2216416-0049 to the design would only be infringed produce a different overall impression an animated icon from their popular by an app showing the same media on the informed user and thus lead ‘Candy Crush’ game: information). to a finding of non-infringement. As explained above, the test for validity mirrors the test for infringement, and therefore restrictions on the degree of design freedom would mean that the informed user is more likely to conclude that a registered design produces a different overall RCD no. 2216416-0049 (Proprietor: King.com Limited): impression and thus has individual character over prior art designs. It has been noted that (for example, TeamLava initiated an invalidity by the Board of Appeal in the King. action, arguing that each of the com case discussed below), in the views lacked novelty and individual case of computer graphics, design character over items of confectionery freedom is generally only limited to disclosed in a catalogue, including a the extent that the graphics must be ‘Mint Humbug’ and ‘Uncle Joe’s Mint displayable on a computer screen Ball’. and that certain graphics, such as icons, are generally of limited size. King.com argued that the RCD was With regard to the appearance of to the animated appearance in most graphics, including the shape, succession of the three views and pattern and colouring, the design thus it would be inappropriate to freedom is essentially unlimited. This compare the three views to the means that the scope of protection individual pieces of confectionery of of registered designs to computer the prior art. The Board of Appeal graphics is usually going to be disagreed, finding that the drawings interpreted relatively broadly given did not reveal any animation in a RCD no. 001441638-0010 (Proprietor: Microsoft the large degree of design freedom. clearly understandable progression, Corporation): On the other hand, the informed user and thus the Board construed will be more likely to overlook small the RCD as relating not to a single

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product but to three separate views of confectionery. In view of this, the Board held that the views of the design lacked individual character over the prior art and that therefore the RCD was invalid.

It is worth noting that under the UK system it is possible to file up to 12 drawings for each design, allowing for more complex animations to be depicted. In comparison, a RCD can only include up to seven views to each design.

Conclusion As we have seen, it is possible to protect the visual elements of GUIs under the UK and Community registered design systems and also by utilising Community unregistered design protection. In the case of registered designs, it is important to ensure that the design drawings, and any written disclaimers in the case of a UK application, are prepared in a manner such that the scope of design protection is limited only to features that are intended to form part of the design, with purely contextual features disclaimed. Where protection for animations is sought, the sequence of progression of the animation must be clear from the design drawings. A carefully drafted registered design application can be a powerful tool for the protection of GUIs, complementing the protection afforded by the copyright and patent regimes.

George Hudson [email protected]

27 Sound Marks A sound trade mark is a trade mark consisting exclusively of a sound or combination of sounds. It differs from a mark which combines sound with e.g. movement, which should be applied for at the European Intellectual Property Office (EUIPO) as a multimedia mark.

With effect from 1 October 2017, as from those applicable to other A relationship between the mark and part of its major reform of European categories of trade mark. However, the goods and services applied for can Union trade marks (EUTMs), the decisions issued on sound marks be an obstacle to registration, just as EUIPO dropped its requirement that since the introduction of the 2017 with a word mark. EUTM Application an application for a sound trade changes show the fine line that must No. 17889555 filed by the Italian two- mark needed to contain a graphical be walked by sound marks between wheel motor manufacturer, Piaggio, representation of the sound. From 1 being (a) sufficiently distinctive but for “electrically operated scooters” October 2017 onwards, applications (b) not overly short or long. EUTM was refused on the basis that, since it for sound marks filed with the EUIPO application No 017700361 in the would be perceived as a mere burst instead required either a) an audio name of Futbol Club Barcelona for of engine noise, it was devoid of any file reproducing the sound or b) an audio recording of the word Barça distinctive character. Interestingly, an accurate representation of the (the Catalan abbreviated name for the mark was not refused by the sound in musical notation. 'Accurate the city of Barcelona) was allowed to EUIPO under Article 7(1)(e) of the musical notation' means that the proceed to registration, without any European Trade Mark Regulation on representation must include all the evidence of acquired distinctiveness, the basis that it consists exclusively elements necessary for interpreting for a range of goods and services. of a characteristic of the goods the melody i.e. pitch, tempo and any themselves. lyrics. Any audio file submitted to the Paris Bedding successfully registered EUIPO must be in MP3 format, and its a sound mark of approximately only EUTM Applications 018024550 and size cannot exceed two megabytes. two seconds length in 2018 in respect 018024555, both filed by Japan The EUIPO does not permit the sound of furniture and fabric and related Tobacco International in February to stream or loop. services. 2019 for a range of goods related to electronic cigarettes, including lighters Despite the changes introduced On the other hand, EUTM Application for smokers, were refused on the in 2017, which should have made 017880808 filed by the Austrian basis that the sound marks (which the process of applying to register electricity company, EVN AG, for sound like a cigarette lighter igniting) a sound mark as an EUTM easier, a sound lasting just over three were devoid of distinctive character. there are still less than 300 registered seconds was initially refused on the sound trade marks on the EUIPO’s basis that no real melody could be register. Given that over 2 million remembered by the relevant public. From 1st October applications for EUTMs have been The EUIPO also held that the sound “ filed since the EUIPO opened was “just a kind of pulsation with 2017 onwards, its register in 1996, this is a tiny an Arpeggio over a single repeated applications for percentage. base note” and that “such sounds are widespread in electronic devices”. sound marks filed Amongst those 200-odd sound mark However, the EUIPO’s Board of Appeal with the EUIPO registrations are McDonald’s I’m (BOA) disagreed and reversed the lovin’ it jingle, Metro-Goldwin-Mayer refusal, finding that the sound mark instead required Lion Corporation’s iconic lion roar contained a particular melody and a and Twentieth Century Fox Film recognisable structure and that it was either a) an audio Corporation’s equally iconic fanfare. memorable. file reproducing However, setting aside these iconic sounds, surely there must be many The length of a sound mark, on the the sound or other sounds distinctive enough to other hand, can lead to the sound be capable of denoting the origin of mark being denied registration. EUTM b) an accurate goods and services and therefore Application No 17277864 (filed with representation capable of trade mark registration? a 39-second long audio file) covering telecommunications apparatus and of the sound in The General Court held in its 2016 services was refused in 2018 on the musical notation. decision in case T-408/15 (SON D’UN basis that the mark applied for was ” JINGLE SONORE PLIM) that the criteria too long and complex. for assessing the distinctive character In Case R0530/2019 the BOA of a sound mark are no different reconsidered the refusal of an

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application to register a sound Registration of smell trade marks at mark in classes 6, 29, 30, 32 and the EUIPO is in practical terms not 33. The sound was of a container of possible because of the difficulties carbonated drink being opened. In in satisfying the requirement to its appeal, the applicant argued that represent the smell mark in a precise, the EUIPO had failed to take account, durable and easily accessible form. in particular, of the surprising and There are no equivalent issues for unexpected effect of the time break its other non-traditional trade mark between the opening sound and cousin – the sound trade mark. If part the unusual long sound pattern of your branding is the sound of your that followed which made the mark jingle or the unusual sound produced memorable. The applicant also by your product, consider protecting argued that the grounds for the it by trade mark registration to stop refusal did not, in any case, apply to others copying this unique selling those goods applied for which do not point! generally or never contain carbon dioxide e.g. milk products, coffee, tea and cocoa. The BOA found that the sound mark applied for would only be heard after the goods were opened, and thus generally only after purchase.

The BOA held that if the sound is only heard after use of the product has begun it cannot serve as a reference for consumers making a David Birchall purchasing decision. The BOA also [email protected] held that the Examiner had correctly pointed out that, in cases in which the sound applied for reproduces a sound inherent in the goods or their use, the case law regarding signs that represent the external appearance of a product or of its packaging can be applied. The BOA agreed that, therefore, in this case, the sound applied for would need to depart significantly from the norm or customs of the sector in order to fulfil a function of indicating origin and hence display the required distinctive character. The BOA agreed that the sound applied for did not do so.

The BOA also agreed that since milk, coffee, tea, etc,. could possibly be produced in fizzy versions this was sufficient to support the objection raised. The BOA held that the sound applied for did not depart sufficiently from comparable noises which arise naturally when opening a tin of carbonated drink, so as to be able to be perceived by consumers as an indication of origin. The BOA held that contrary to the view taken by the applicant, the break between the noise of the opening of the can and the sound that follows is not resonant enough to distinguish the mark applied for sufficiently from comparable noises. The BOA’s decision is being appealed to the General Court.

29 100 Engineering Ideas That Have Changed the World

We continue our series of articles, where we look at some of the greatest engineering ideas that have had an effect on our everyday lives. The list of 100 engineering ideas was compiled by The Institution of Engineering and Technology (IET). Our attorneys look at the IP milestones in the history of each of the inventions on the list and whether any IP protection was sought or obtained.

1 Photography

In the modern era, where almost advance and, in 1868, Louis Arthur Photography technologies continue everyone carries a device capable Ducos du Hauron patented the to be developed to this day and with of taking high resolution photos in foundations of colour photography, this continued development, and the their pocket, it seems impossible to using three different coloured proven benefits of patent protection, imagine a world without the ability to dyes. Unfortunately for Ducos du there is no doubt that these two capture an image. However, although Hauron, the technology required industries will continue to share the camera obscura – a way of for implementing his invention history. projecting an image onto a surface – was not yet mature enough for has been known for centuries, it was commercial exploitation – although not until the 19th century that a way his ideas did eventually make their of 'fixing' an image was discovered. way into the implementation of The French inventor Nicéphore colour photography. It was not until Niépce is usually credited with the George Eastman’s 'Kodak' camera invention of photography and in that photography became accessible the late 1820s his partnership with to the mass market. Eastman’s Louis Daguerre, who refined Niépce’s invention, protected by his patent process, led to the development filed for 'Camera' in 1888, used film of the 'daguerreotype'. The value and had a relatively low price. The of this invention was recognised success of the “Kodak” line of cameras Steven Davis by the French government and the led to Eastman renaming his entire [email protected] intellectual property was purchased company to Kodak. This company from Daguerre in 1839 in exchange would go on to introduce, arguably, for an annual stipend. This was the final building block of modern presented as a gift 'free to the world'. photography with the invention of A 'world' that did not, however, digital cameras. In 1977, the filing include England, where – five days of the patent titled “Electronic still prior to the French government’s camera” protected this new invention, announcement – Daguerre filed a and while Kodak famously did not patent, requiring licenses for the adopt this technology into its own practice of the invention in England. products until much later, this patent From these primitive beginnings, helped Kodak to earn billions until its the technology continued to expiry in 2007.

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2 Lithium Ion Batteries

On 9 October 2019, the Royal Oxford did not do the same with Prof. One week after the announcement Swedish Academy of Sciences Goodenough’s research. of the Nobel Prize, the retailer John announced the award of the Nobel Lewis announced in its 2019 annual Prize for chemistry to Prof. John As Prof. Goodenough said himself: report that sales of camcorders were B Goodenough, Prof. M Stanley “At the time we developed the “practically non-existent”. While the Whittingham and Prof. Akira Yoshino battery it was just something to technology that demonstrated the for their key roles in the development do. I didn’t know what electrical commercial viability of LIBs fades of lithium ion batteries (LIBs). engineers would do with the battery. into obsolescence, research into LIBs The pioneering work of the Nobel I really didn’t anticipate cellphones, and their associated patent filings laureates enabled Sony to launch the camcorders and everything else”. continue to grow. first commercial rechargeable LIBs in Whilst the University’s approach to 1991. Within a few years, the demand patenting has undoubtedly changed for LIBs was driven in particular by since then, Prof. Goodenough’s sale of camcorders. comments illustrate the challenge of any organisation seeking to protect The LIB commercialised by Sony its new technology, which includes contained a graphite anode based on predicting the commercial value Prof. Yoshino’s research at Asahi Kasei of the technology and framing a and a cathode based on the research patent application to best capture of Prof. Goodenough at the University that predicted value. In the case of of Oxford, which in turn followed LIBs, this value includes not only intercalation chemistry research of improvements in LIBs per se but also Anwar Gilani Prof. Whittingham at Exxon. Whilst applications of LIBs in things ranging [email protected] Prof. Yoshino’s work was patented from portable electronic devices to by Asahi Kasei, the University of electric cars.

3 Nanotechnology

Nanotechnology is the production or in patent applications filed over the validity of the claims and third manipulation of materials having a last 20 years. The European Patent parties’ freedom to operate across a size of less than 100 nanometres. To Office (EPO) specifically defines whole range of unrelated industries, put this into context, one millimetre = nanotechnology as involving “entities causing problems for patentees and 1,000,000 nanometres (nm). A human with a controlled geometrical size of competitors alike. hair is between 50,000 and 100,000 at least one functional component Furthermore, from a patenting nm thick. A piece of paper is around below 100nm in one or more perspective, merely making 75,000 nm thick. dimensions” and classifies associated something smaller does not mean patent applications under the EPO’s an invention is novel and inventive. Often thought of as a recent field Cooperative Patent Classification Therefore, if a technology is already of technology, nanotechnology has (CPC) class B82. However, the known on a larger scale, does in fact been used for centuries. The wide range of applications of reproducing it on a nanoscale meet Lycurgus Cup is an example of an nanotechnology across disparate the requirements of patentability? ancient use of nanotechnology from industries, and thus the wide range For some technologies the answer around AD 293 to AD 476 — the cup of classifications used for related would appear to be a resounding shines green in reflected light, but patent applications, means that the ‘yes’, since there can be significant red when light shines through it due true number of nanotechnology technical challenges to overcome in to gold-silver alloyed nanoparticles applications filed at the EPO is hard miniaturising macroscopic systems or distributed in the glass. More recently, to measure and the applications materials, not to mention in handling nanotechnology has begun to appear themselves are hard to search. the quantum effects arising in any in almost every aspect of our lives. Despite the relatively simple resulting nanoscale structures. In definition, neither using nor patenting situations where the change in size For example, sunscreen includes UV nanotechnology inventions is is less significant, for example for a absorbing nanoparticles, self-cleaning straightforward. Since the sharp selection of a nanoscale range from windows include a nanoparticle increase in nanotechnology-related a slightly larger range already known coating, nanotechnology research inventions is relatively recent, some in the art, the 2019 EPO Guidelines is producing lifesaving medical granted claims in the nanotechnology (following T 261/15), state that the treatments and nanoparticles have field can be overly broad. Whether selected sub-range is considered applications in the electronics, textiles this is due to classification issues novel if: and food industries to name a few. or a true lack of prior disclosure is This upsurge of the technology in not always clear, but such broad • the selected sub-range is narrow our lives is reflected in the increase claims bring into question the compared to the known range;

31 • and - the selected sub-range is nanotechnology inventions can sufficiently far removed from any present some challenges, the drive to specific examples disclosed in the innovate in the field shows no signs prior art and from the end-points of slowing down and there are great of the known range. opportunities for patenting these advances. From renewable energy This selected sub-range is also to cancer fighting nanomedicines, considered to involve an inventive nanotechnology has brought about step if an “unexpected technical endless advances across all areas of effect” applies to the entire range science and engineering, and there is Emma Bridgland claimed. The technical effect is certainly more to come. [email protected] “unexpected” if no hints exist in the prior art that lead the skilled person (Please see here for imagery of the Lycurgus Cup) Alexandra Seymour-Pierce to that selection. Such a novel and Image from the British Museum; https://www. [email protected] non-obvious selection was seen in the britishmuseum.org/research/collection_online/ decision of BASF v Orica Australia (T collection_object_details/collection_image_gallery.as 0547/99), in which the EPO’s Technical px?partid=1&assetid=1052709001&objectid=61219 Board of Appeal held that disclosure of polymer nanoparticles larger than 111 nm did not destroy the novelty of a subsequent patent application by Orica for nanoparticles smaller than 100 nm. Orica’s smaller particles also exhibited a remarkable improvement in the properties of the paint in which they were used, resulting in a glossier coat compared to the larger particles disclosed in the earlier patent. Whilst the use and protection of

4 Robotics

The concept of robotics arguably diverse fields, such as manufacturing, surrounding the treatment area, dates back to ancient Greece where, medicine, military technology, and result in improved outcomes for according to Greek mythology, Talos, biohazards, social care, and space cancer patients. a giant bronze automaton, circled the exploration. The prevalence of robots island of Crete three times daily to in cinema has also brought this The Atlas robot developed by Boston protect the Greek goddess, Europa. technology to the forefront of the Dynamics is an example from a Whilst Talos may represent the first public consciousness. different field in which robotics description of a robot, it was a long has utility, being a bipedal robot wait until the term ‘robotics’ was In the area of medical robotics, the designed to perform a variety of first used in print in 1941 by the CyberKnife radiotherapy system is search and rescue tasks, and capable author of ‘I Robot’, Isaac Asimov. one example of where enormous of moving independently over and Today, robotics is a well-established benefits can be derived from through challenging terrain - although branch of technology dealing with the the application of robotics. The you may be more familiar with its construction, design, operation and CyberKnife system is a radiotherapy gymnastics skills, for which it is application of robots. device mounted on a robot arm, arguably most famous. of the same type as used in As a general definition, a robot manufacturing for spray painting, These examples demonstrate that is a machine which is capable of which can move in 6 degrees of the application of robots is potentially carrying out a complex series of freedom around the patient. This limitless and can have a real and actions automatically. Increasingly, enables delivery of precise doses of beneficial impact on the global modern day robots are becoming radiation from a much broader range population. fully autonomous systems, which of positions than with a conventional are able to respond to changes in radiotherapy system. The system also It is no surprise therefore that the their environment without the need includes X-ray and optical imaging robotics market is substantial, with for human input. This progression systems to monitor the position of the global industrial robotics market has been driven by advances in the target volume during treatment, expected to grow in value to around artificial intelligence, mechatronics, allowing real-time adaptations to the $40.75 billion by 2024. In particular, object recognition and sensing and treatment delivered. the global medical robotics market is information processing. projected to be worth $4.09 billion by Together, these aspects of the 2024. Due to these advances, robotics CyberKnife system can result in lower now has applications in countless levels of irradiation of healthy tissue

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Innovation in robotics is research- important where an invention can be intensive and often collaborative. reverse engineered. As the number of In this field innovation requires a first patent filings in robotics has been network of research institutions increasing worldwide since the 1980s, and technology intensive firms the need for IP protection in this field working together to bring together continues to grow. know-how and build on the latest developments in materials science, Alongside patents, trade secrets, motive power, control systems, design rights, copyright and sensing and computing. As a result, trademarks are all important forms of Emma Lonnen advances typically happen at the IP that have application in the robotics [email protected] interface between public and private innovation ecosystem. research, with firms commercialising Kathryn Rose innovations often developed [email protected] through long-term partnerships with universities and other public research organisations.

Due to this model of collaboration, the capital-intensive nature of robotics R&D and with increasing numbers of players in the robotics field, a robust IP strategy is becoming ever more important to safeguard the interests of the various parties. In this way, patent protection can be particularly important in this field to allow companies to recoup their investment, and is particularly

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Venner Shipley recognised by Legal 500 UK as a Tier 1 firm for PATMA: Patent Attorneys

We are delighted to announce that Legal 500 UK has recognised Venner Shipley in its 2020 rankings as a Tier 1 firm for PATMA: Patent Attorneys.

Our partners, Oliver Anderson, Alex Brown, John Chettle, Paul Derry, Allie Elend, Siân Gill, Ian Grey, Anton Hutter, Richard Kennedy, Pawel Piotrowicz, Tim Russell and Jan Walaski also received individual recognition. Our patent practice was highlighted as being “positioned to provide quick and efficient assistance whenever it is necessary”. Further testimonials in the guide state that [our team is] “clearly very experienced" and "adept at obtaining successful outcomes in an efficient manner”.

The guide also endorsed John Chettle and Oliver Anderson, both partners and patent attorneys from the Electronics & Engineering team, as being “effective and well qualified”. Richard Kennedy, another partner and patent attorney in our Electronics & Engineering team, with a key focus on AI, was noted for getting “great results” and being “efficient at his work, a great team player and very personable to work with”. Head of our Mechanical Engineering team, Ian Grey, was also described as taking “a very hands-on approach” and that he “cares about the quality of the work he and his associates perform and explains all of the procedures clearly and to the point”.

Venner Shipley's AIPPI World Congress 2019 event at St Paul's Cathedral Thank you to all those who joined us in September for our AIPPI 2019 drinks reception, hosted at one of London's most iconic landmarks, St Paul's Cathedral. It was our great pleasure to be joined by more than 150 clients and friends for an exclusive private tour and evening drinks reception in the Cathedral's Crypt.

We hope our guests enjoyed the evening and we look forward to hosting more events in the future.

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Growth and expansion of the Over £2,000 raised for our Venner Shipley team charity partner,

This year we have continued to expand our IntoUniversity European presence by expanding our Munich office with German patent attorneys Michael This year we have been partnered with the Fischer and Ralf Bucher. charity IntoUniversity. IntoUniversity aims to improve the educational attainment and future They both bring with them a wealth of prospects of young people from underprivileged experience and their arrival will further backgrounds via high-quality and impact-driven strengthen our market-leading position. programmes delivered through its network of Ralf Bucher learning centres and outreach events. Senior Associate Catrin Petty has also recently made a move, relocating from our Guildford To raise money for IntoUniversity, the firm office to Manchester. has been hosting various fundraising events throughout the year, and we are proud to say Catrin brings broad experience in drafting, filing our total has now reached over £2,000 for the and prosecuting patent applications through the charity. We look forward to continuing to work UK and European patent systems in a variety of with them and raising more funds in the future. fields, including agrochemistry, drug delivery, Michael Fischer food pharmaceuticals, polymer technology and medical devices. She makes a great addition to our Manchester team.

Catrin Petty

Welcoming our 2019 trainees

This September we welcomed our biggest intake of trainees to date, with 12 new faces joining the Venner Shipley team in London, Guildford and Cambridge. We are very proud to welcome such a diverse group and look forward to seeing their skills grow and develop as they begin their successful careers as patent attorneys.

In our Electronics & Engineering team we welcome Hugh Crook, Jamie Walsh, Nivedha Radhakrishnan, Paola Rojas, Tasmin Bluck, William Grace, Rory Jenkinson, Alexandra Gregory and Alan Brunier. Charlotte Wilding and Rachel Challands join our Chemical & Life Sciences team and last but not least, Mark Pearce joins the Mechanical team.

Hugh Crook Jamie Walsh Nivedha Paola Rojas Tasmin Bluck William Grace Radhakrishnan

Mark Pearce Rory Jenkinson Alexandra Charlotte Alan Brunier Rachel Gregory Wilding Challands

35 www.vennershipley.co.uk [email protected]

Help or Advice If you would like more information or advice on any of the topics covered in this issue please contact us. We will be happy to answer any of your questions.

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This newsletter is for general information for our clients. This publication is printed on paper that is 50% recycled Its contents are not a complete statement of the law on and 50% from sustainable wood sources. any subject. Professional advice should be sought before any course of action is pursued. © Venner Shipley LLP 2019

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