Posts Tagged: "epo"

In Part I of this series, we discussed how patent portfolio managers should be careful when generating company-owned prior art or reviewing competitor prior art, and how a patent litigation or licensing campaign can be significantly hamstrung based on how the United States and Europe consider intervening prior art. In Part II, we will focus on software patents with U.S. and EP family members. The number of software related patent applications that are filed at the United States Patent and Trademark Office (USPTO) and European Patent Office (EPO) continues to increase despite heightened scrutiny during examination. Further, U.S. courts and national courts in Europe continue to critically analyze the eligibility of software patents.

One ingredient that distinguishes a good patent portfolio from a great patent portfolio can be the synergistic strength of its U.S. and European patent family members. To develop this strength, it is not enough to have a U.S. attorney and a European attorney simply coordinate the procedural strategy for filing an application; rather, the drafter and manager of the application should analyze important issues upfront and prepare a patent application that accounts for the substantive differences between U.S. examination, U.S. courts, European examination, and national courts in Europe.

As an update to my posts from 2017, 2019, 2020, and March 2021, it has now been 86 months since the U.S. Supreme Court’s 2014 Alice Corp. v. CLS Bank decision. Yet the debate still rages over when a software (or computer-implemented) claim is patentable versus being simply an abstract idea “free to all men and reserved exclusively to none” (as eloquently phrased over 73 years ago by then-Supreme Court Justice Douglas in Funk Bros. Seed Co. v. Kalo Inoculant Co.). Further, it has been 10 years since famed venture capitalist Marc Andreessen wrote the influential and often-quoted op-ed piece in the Wall Street Journal titled “Why Software Is Eating the World.” Today, the digital transformation where software is “eating the world” is undeniable. Let’s look at some facts and figures from the USA, Europe and China.

Oral proceedings before the EPO Boards of Appeal can be held by videoconference, even without the consent of the parties, during a general emergency, according to a July 16 decision by the EPO’s Enlarged Board of Appeal (G1/21). The question about videoconferencing was referred to the EBA in March by a Technical Board of Appeal in Case T-1807/15. The EPO introduced hearings by videoconference (generally held via Zoom) last year as a result of the pandemic and travel restrictions. Since January 2021, some oral proceedings have been conducted without the consent of the parties. The EBA, which comprises members of the Boards of Appeal and judges from EPC member states, was asked to rule on whether this was compatible with the right to oral proceedings as enshrined in Article 116(1) of the European Patent Convention. The EPO claims that videoconference hearings are necessary to manage the workload and ensure efficient delivery of justice during the pandemic. They also mean that parties throughout the EPC’s 38 member states can participate on equal terms, without having to travel to Munich or The Hague.

Last week, the European Patent Office (EPO) announced six U.S. researchers as finalists for the European Inventor Award 2021. The EPO began the prestigious European Inventor Award in 2006 to honor individual and teams of inventors in five categories, i.e. Industry, Research, SMEs, Non-EPO countries and Lifetime achievement. The finalists and winners are selected by an independent jury of experts in the fields of business, politics, science, academia and research. In addition, a Popular Prize is awarded based on a public vote wherein the public selects a winner from among 15 finalists through online voting. U.S. researcher Gordana Vunjak-Novakovic was nominated for a lifetime achievement award for devoting her career to “developing an ex vivo tissue engineering technique for more precise tissue cultivation.” The remaining U.S. finalists were nominated in the “Non-EPO countries” category. In particular, Kim Lewis and Slava S. Epstein were nominated for their development of a device for separating and incubating single strains of bacteria in nature, Sumita Mitra was nominated for pioneering use of nanotechnology in dentistry, and Bo Pi and Yi He were nominated for developing the first fingerprint sensor capable of detecting both a fingerprint’s pattern and the presence of blood flow.

On April 7, 2021, the European Patent Office (EPO) Opposition Division (OD) issued a comprehensive written decision in the Opposition by Gilead Sciences, Inc. against NuCana plc’s European Patent No. B-2 955 190, upholding amended compound claims that include Gilead’s blockbuster hepatitis C drug, Sovaldi (sofosbuvir). The claims were upheld over various arguments made by Gilead, including an assertion that the NuCana patent did not teach the skilled worker how to make the nucleoside component of Sovaldi (which is a nucleotide phosphoramidate). Gilead alleged, as it did in the myriad of global Idenix litigation cases, that a skilled person in 2003 who tried to make the nucleoside of Sovaldi “would be required to undertake extensive experimentation, if indeed he would be able to succeed at all. This represented an undue burden.”

The latest in a series of reports by the European Patent Office (EPO) and European Union Intellectual Property Office (EUIPO) studying IP-intensive industries and their contribution to economic performance and employment in the European Union has found that companies owning at least one patent, registered design or trademark generate higher revenues per employee than companies that do not own IP rights and pay higher wages on average than other companies. The EPO-EUIPO report is titled “Intellectual property rights and firm performance in the European Union” and builds on research conducted in 2013, 2016 and 2019 regarding the contribution of IP-intensive companies to the EU economy, as well as a 2015 EUIPO study based on data from 12 Member States. The latest report analyzes over 127,000 European firms and compares the economic performance of firms that own IPRs with those that do not.

The European Patent Office (EPO) issued a press release and 75-page study on December 10, titled “Patents and the Fourth Industrial Revolution – the global technology trends enabling the data-driven economy,” which examined global trends in innovation in fourth industrial revolution (4IR) technologies. As used in the study, 4IR denotes “the full integration of information and communication technologies (ICT) in the context of manufacturing and application areas such as personal, home, vehicle, enterprise and infrastructure,” and it marks a “radical step towards a fully data-driven economy.” The study examined international patent families (IPFs), i.e., inventions for which patent applications have been filed in two or more patent offices, related to 4IR worldwide between 2000 and 2018. The study revealed that, between 2010 and 2018, global patent filings for 4IR technologies, including smart connected objects, Internet of Things, Big Data, 5G, and Artificial Intelligence (AI), grew at an average annual rate of almost 20%, which is nearly five times faster than the average of all technology fields.

Much has been written about the uncertainty in U.S. patent law concerning laws of nature, natural phenomena, and abstract ideas following the Supreme Court’s decisions in Mayo v. Prometheus and Alice Corp Pty Ltd v. CLS Bank Int’l. A recent decision from the Enlarged Board of Appeal at the European Patent Office (the Enlarged Board), however, demonstrates that the United States is not alone in grappling with issues surrounding patent eligibility. In the case of genetically modified plants and animals, questions arise on where to draw the line between human invention and biological processes. Earlier this year, the Enlarged Board reversed a 2015 decision that had held that product-by-process patents could be sought for genetically modified plants and animals despite a patent exclusion for “essentially biological processes.” 

On July 13, the European Patent Office (EPO) published a landscaping study titled “Patents and additive manufacturing: Trends in 3D printing technologies”. The study highlighted current trends and identified industry leaders in additive manufacturing (AM), i.e. 3D printing. It noted that between 2015 and 2018 the number of AM patent applications increased at an average annual rate of 36%, with more than 4,000 AM patent applications filed in 2018 alone.

For the past 60 years, scientists have been able to utilize artificial intelligence (AI), machine learning, and other technological advances to “promote the general science …”. U.S. courts have increasingly come under pressure to not only allow AI-directed applications as patentable subject matter, but also from a small yet determined and growing contingency of IP professionals, to recognize the AIs themselves as the inventors. The EPO recently handed down guidance that AI could not be recognized as inventors on patent applications. The purpose of this piece is not to debate the merits of whether or not AI should be given inventor status on applications which, it has been argued, they are rightly due—nor should it be. It is important, however, to peek beyond the looking glass into a future where AI are given status in the United States that has, as of the writing of this piece, been reserved for human beings. Let’s explore a few main issues.

We live in interesting times. No corner of professional or personal life seems untouched in at least some way by the latest coronavirus (named SARS-CoV-2) and the disease it causes (named “coronavirus disease 2019” abbreviated COVID-19). Governments all around the world are either demanding or suggesting that people quarantine themselves or engage in social distancing. The intellectual property world is no different. The United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the World Intellectual Property Organization (WIPO), the European Union Intellectual Property Office (EUIPO), IP Australia, the German Patent and Trade Mark Office (DPMA), and the UK Intellectual Property Office (UKIPO) are just some of the Offices that have in recent days issued COVID-19 guidance to inform stakeholders of how the Offices will handle workflow and meetings during this global health emergency.

Earlier this month, the European Patent Office (EPO) and the UK Intellectual Property Office (UKIPO) each rejected two patent applications that designated an artificial intelligence named DABUS as the inventor. While the UKIPO published a decision setting out its reasoning, the EPO simply stated at the time that the applications did “not meet the requirement of the European Patent Convention (EPC) that an inventor designated in the application has to be a human being, not a machine.” Now, the EPO has released more detail about the grounds for its decision. In the EPO press release today, the Office explained: “The EPO considered that the interpretation of the legal framework of the European patent system leads to the conclusion that the inventor designated in a European patent must be a natural person. The Office further noted that the understanding of the term inventor as referring to a natural person appears to be an internationally applicable standard, and that various national courts have issued decisions to this effect.”

Patent prosecution can sometimes seem to be a rather byzantine process. As with anything, the more you understand, the better prepared you will be for the strategic decisions that lie ahead, some of which will result in a streamlined patent approval, but which will also raise the overall cost of obtaining the protection desired. In this regard the patent process is full of trade-offs. For many, getting a patent quickly is very important, as is the case with high-tech start-ups and SMEs seeking reputational advantages, additional funding, licensing opportunities and partnerships. With this in mind, here are eight helpful tips co-authored with the Morningside IP team and specifically aimed at those applicants filing at the European Patent Office (EPO) who are hoping to obtain a strategically reasonable set of patent claims with a streamlined patent application approval process. Of course, following these eight tips can and should also pay dividends with respect to getting your patent approved in other patent offices around the world.

The European Patent Office has refused two European patent applications that designated an artificial intelligence called DABUS as the inventor, following a non-public hearing on November 25, 2019. The applications are for a “food container” (number EP3564144) and “devices and methods for attracting enhanced attention” (number EP3563896). They were filed by the Artificial Inventor Project, which has so far filed patent applications for the inventions via the Patent Cooperation Treaty (PCT) in the United States, United Kingdom, Germany, Israel, China, Korea and Taiwan.