Obstacles in patenting AI Technology

Although there are often misconceptions about it, AI has the potential to be protected like all other areas of technology innovation.  There is often the mistaken understanding that technology like AI, which is implemented using computers, cannot be patented.  Whilst there are practical challenges to obtaining patent protection, patent offices around the world regularly grant patents on AI inventions. (more…)

Could an Option to Postpone Examination be Introduced into the European Patent System?

The European Patent Office (EPO) recently published the results of a consultation on the possible introduction of an option for deferring examination of European patent applications. This is an interesting idea and, in tandem with the existing possibility of requesting accelerated examination, could be a sensible option that would afford greater flexibility for applicants. Noting that some European patent applications have remained pending for the full 20 years of their term, it is hard to take blanket objections to this potential option too seriously and respondents were divided approximately 50:50 between those “for” and those “against” such a scheme.

Some interesting possible features of a system were explored in consultation questions. If the most popular features were followed we would end up with a system allowing up to three years’ deferral of examination from the deadline for requesting examination/confirming an intention to proceed with the application. Deferral would need to be requested by the relevant (exam request/intention to proceed) deadline and it would be effected by request alone with no fee, however a response to the extended European search report would still have to be filed. The system would also include a mechanism for third parties to trigger examination, i.e. end the deferment, by payment of a fee. Notably, there would be no need to reveal the identity of the interested third party.

On a nerdy note, for some data the report uses the interesting technique of presenting frequency of responses in bar charts with a logarithmic y axis.

By Tom Faulkner

Divergence in scope of UK patents for purposes of Infringement and Validity?

We reported in July on Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48, the most significant UK court decision on patents for decades. This introduced equivalents firmly into UK law for the determination of patent infringement. That decision left unclear whether equivalents should also be considered when assessing the validity of patents; is the new test for determining the scope of a patent claim for use in assessing both infringement and validity or is it only a test for assessing infringement?

Based on another recent decision, Mylan v Yeda and Teva [2017] EWHC 2629 (Pat), and opinions given by commentators (for example at the recent debate “K = Na. Is the genie out of the bottle?“ held by UCL Institute of Brand and Innovation Law on 1 November), it seems it is the latter. Thus for now, at least, in the UK we have a situation where a claim will be considered to be broader for the purposes of assessing infringement than it is for assessing validity. This could potentially lead to absurd results, such as a patent covering something that was in the public domain before the patent was filed, and there is no existing UK law to cope with and deal with such issues. In due course UK case law will evolve to address these issues, but exactly how is more difficult to predict. In the meantime there is scope for considerable uncertainty.

A significant number of other countries (e.g. the USA, Germany, the Netherlands) have established law on the subject of equivalents and how to deal with some of these potentially absurd results; however the approaches are all different. One common theme seems to be that the availability and effects of equivalents are being diminished in those countries. It has been suggested by some that equivalents, i.e. the Actavis decision, may rarely have a practical effect in the UK. If that proves to be true it would be rather unfortunate given that the decision will introduce considerable additional complexity and uncertainty, and hence possibly extra costs for businesses, into the assessment of patent disputes in the UK.

Authored by Tom Faulkner[:]

Poisonous Divisionals – Antidote or Bust – Update

We discussed the poisonous divisionals and poisonous priority issue in our previous post and mentioned that the question of how to deal with such situations has been referred to the Enlarged Board of Appeal G1/15.

The European Patent Office have now decided to stay examination and opposition proceedings where the result of the proceedings “depends entirely” on how the Enlarged Board answers the points of law referred to it. Details can be found in a notice from the European Patent Office.[:zh]We discussed the poisonous divisionals and poisonous priority issue in our previous post and mentioned that the question of how to deal with such situations has been referred to the Enlarged Board of Appeal G1/15.

The European Patent Office have now decided to stay examination and opposition proceedings where the result of the proceedings “depends entirely” on how the Enlarged Board answers the points of law referred to it. Details can be found in a notice from the European Patent Office.[:ja]We discussed the poisonous divisionals and poisonous priority issue in our previous post and mentioned that the question of how to deal with such situations has been referred to the Enlarged Board of Appeal G1/15.

The European Patent Office have now decided to stay examination and opposition proceedings where the result of the proceedings “depends entirely” on how the Enlarged Board answers the points of law referred to it. Details can be found in a notice from the European Patent Office.[:]

Speeding up Examination of Competitor Patents at the EPO

In some situations a pending patent application can be more problematic than a granted patent. Although generally you cannot be sued for infringement based on a pending application, the fact the application is pending provides the applicant with significant flexibility. The existing application may be redirected or a divisional application may be filed. This means that a pending patent application represents something of a moving target that could potentially represent an infringement risk for your company.

Patent owners can use this uncertainty to their advantage, at the cost of third parties who must sometimes wait years to find out whether a pending application represents an infringement risk.

One option for improving certainty is now available through the use of third party observations at the EPO (European Patent Office). This provision can allow companies to file observations on another company’s patent application. This may be done anonymously or non-anonymously – either naming an interested party, or a stooge or “strawman”.

Historically, filing third party observations often seemed ineffective. However this seems to have changed. First, it seems that Examiners are more actively taking third party observations into account. Second, the EPO’s current policy is that, if such observations are filed non-anonymously and have substance, then the EPO will accelerate examination of the application against which the observations have been filed.

This might lead to earlier grant of a patent, but also possibly earlier refusal, or earlier limitation. Further it may close off the option for filing any (further) divisional application. Thus the filing of third party observations may help to improve certainty for third parties.

In other cases, of course, such acceleration may be most undesirable – in such a case, avoiding third party observations, or filing them anonymously will be the better route.

Poisonous Divisionals – Antidote or Bust

EPO appeal T557/13 (re EP0921183B) has led to a referral to the Enlarged Board of Appeal G1/15. The Appeal Board has referred questions to the Enlarged Board of Appeal on the vexed issue of the poisonous divisionals and poisonous priority.

The most alarming aspect of this issue is that according to at least the EPO Board of Appeal in T1496/11 and the opposition decision that lead to T557/13 it is possible for a European divisional application to anticipate its own parent (or vice versa). Although this seems perverse, it appears to be the prevailing view at the EPO.

The situation can arise where an original application narrowly describes something which is claimed more broadly in a later application, which claims priority from the original application. As an example, the original application may describe “screws” and the later application may claim “fastening means”. The broad reference to “fastening means” was not present in the original application so it does not have a valid claim to priority. If a divisional is filed, then a broad claim to “fastening means” lacks novelty because “screws” falls within the scope of “fastening means”, and “screws” is entitled to priority whereas “fastening means” is not. Thus, a parent application claiming “fastening means” is anticipated by its own divisional which discloses “screws”.

In T1496/11 the invention relates to bank notes with security features. The original application disclosed an “optical lens + printed or embossed feature”. This had a priority date of the original application. The parent of the divisional claimed “optical lens + feature” which was only entitled to the filing date of parent. Thus this claim was found anticipated by the divisional application.

In T557/13 the collision is between use of a specific amine/amide based group of substances as a “cold flow improver” in fuel oil in the original application and parent versus a more general group of polar nitrogen compounds claimed in the divisional.

In the writer’s view the problem would be best solved with a universal antidote for poisonous divisionals and poisonous priority. This can be accomplished by treating the claim as having two virtual parts. A first entitled to priority and disclosed in original application/parent/divisional and a second not entitled to priority but not disclosed in original application and hence not needing a claim to priority. In the example above the first part would correspond to “screws” and second part would correspond to “fastening means except screws”. This proposal was set out in an article in the March 2012 edition of the CIPA Journal, and it is hoped that the Enlarged Board of Appeal uses this approach to address the issue.

Thankfully the questions referred to the Enlarged Board have been cast broadly enough (see T557/13 for the questions asked) to potentially deal with the specific poisonous divisional issue and the more general issue of poisonous priority. In fact, the Appeal Board chose to cast the questions more broadly than requested by the parties.

Thus we are now left to hope that Enlarged Board answers in a way such that sense can be restored.

Budget sheds no light on Patent Box reforms

As mentioned in our recent update, the existing patent box scheme will be closed to new applicants after June 2016. Thus there is little time for a revised scheme to be finalised. There was hope of some further information or announcement in the budget on 8 July 2015, but there was none.

The previous scheme was developed after significant consultation and it has to be questioned whether it will be possible to complete such consultation and have a new scheme ready for June 2016. With nothing mentioned in the recent budget, it seems that we might not learn more about the new scheme until autumn 2015.