Posts Tagged: "epo"

In early 2019, we undertook a comprehensive research project to develop a forensic understanding of European Patent Office (EPO) oppositions, particularly in the life sciences sector, analyzing EPO opposition data in far greater depth than in any publicly available report. We examined more than 5,000 opposition cases filed at the EPO over the last 10 years and studied the timelines for hundreds of life sciences oppositions. The resulting report, entitled EPO Opposition Trends in the Life Sciences Sector, offers a granular understanding of the EPO opposition procedure and its various nuances. Introduced in July 2016, the EPO’s streamlining initiative was designed to simplify opposition proceedings and deliver decisions more quickly, thus providing “early certainty”. The EPO’s target pendency is 15 months by 2020 (opposition pendency here being measured from expiry of the nine-months-from-grant period for filing an opposition to the Opposition Division issuing its decision). Our research revealed that the streamlining initiative is on track to meet its target in the life sciences sector. The mean opposition pendency has been reduced from just over 22 months in 2015 (pre-streamlining) to 17 months in 2018 (post-streamlining).

In November, the UIC John Marshall Law School held their 63rd Annual Intellectual Property Conference in Chicago, IL.  The program consisted of four plenary sessions and nine breakout sessions covering artificial intelligence, patents, copyrights, trademarks, trade secrets, antitrust, and in-house counsel, as well as IT and privacy developments.  Speakers came from China, Europe, and the Middle East, and represented government, industry, academia, nonprofits, and practice. IPWatchdog’s Editor-In-Chief, Eileen McDermott was there. The program kicked off with a keynote address the Honorable Chief Judge Diane Wood of the U.S. Court of Appeals for the Seventh Circuit.  Titled “Antitrust & IP: Does It Need to Be Retooled?”, Chief Judge Wood spoke about the need for procedural and substantive reform. She began by observing that “[t]he general rule has been for many years — and I think this is entirely correct — that intellectual property is property.” She noted that this approach has been encapsulated in the Department of Justice and the Federal Trade Commission’s Guidelines for the Licensing of Intellectual Property, and that “the fundamentals of antitrust analysis are the same, although the answers may be a little different.” Citing standard essential patents as an example, she said that “there may be some real synergies back and forth between the IP field and the antitrust field that would be well worth exploring,” in particular when considering how antitrust law should approach access issues involving digital platforms, as what is sought is “FRAND-type access to these platforms. ”

“IP matters for the European economy,” said Yann Ménière, the chief economist for the European Patent Office (EPO), who provided the opening keynote presentation at the EPO’s High-growth technology business conference 2019 on November 4 in Dublin, Ireland at Aviva Stadium. Leading off a packed two-day program, Ménière released the results of an EPO study on how Small-to-Medium Enterprises (SMEs) used intellectual property rights, specifically patents. SMEs typically file European patents for high-potential inventions that find their way to market, the EPO study finds. Therefore, not surprisingly, the EPO report also shows that SMEs that rely on patents have an above average number of employees, and those employees are higher paid and contribute more to European GDP.

Later this year (likely in October), the United Kingdom’s highest court will hear arguments on questions arising in two disputes concerning standard essential patents (SEPs). The UK Supreme Court has agreed to hear appeals in Unwired Planet International Ltd and another v Huawei Technologies (UK) Co Ltd and another UKSC 2018/0214 and the joined cases Huawei Technologies Co Ltd and another v Conversant Wireless Licensing SARL UKSC 2019/0041 and ZTE Corporation and another v Conversant Wireless Licensing SARL UKSC 2019/0042. The arguments are likely to focus on one question: can a national court impose a global license in SEP cases? The closely watched appeal will be the culmination of years of litigation between the parties. In the Unwired Planet case, Mr. Justice Birss of the High Court heard five trials on the validity and infringement/essentiality of Unwired Planet’s patents. In April 2017, he then gave a mammoth judgment determining what a fair, reasonable and non-discriminatory (FRAND) license would be, and setting royalty rates. Critically, he found that only a worldwide license would be FRAND in the circumstances of this case. The England and Wales Court of Appeal upheld this conclusion, in a judgment in October 2018. The Supreme Court will likely sit in a five-judge panel in a hearing that will last about two days and will be live streamed on its website (the date and panel details have not been confirmed yet). It will hand down judgment later this year or early in 2020. (Ironically, patent specialist Lord Kitchin is a member of the Supreme Court but will not be sitting in this case as it is his own judgment that is under appeal.) You might have thought that—after decades of legal debate and academic writing, dozens of judgments addressing questions such as what constitutes a FRAND license and what are reasonable royalties, and extensive discussions between technology companies—the questions around SEPs would be close to being resolved. But that is far from the case. The outcome of the UK Supreme Court hearing, for instance, will have an impact on negotiations between owners of SEP portfolios and implementers worldwide, at a time when standards are set to become critical to many more industries.

In the final installment of my interview with three examiners at the European Patent Office (EPO), we wrap up our conversation about their approaches to examining computer implemented inventions, particularly in the field of artificial intelligence (AI), and how the EPO system compares with the U.S. patent examination system.

In Part II of my interview with three examiners at the European Patent Office (EPO), we continue the conversation about their advice, pet peeves, and approaches to examining computer implemented inventions, particularly in the field of artificial intelligence (AI), and how the EPO system compares with the U.S. patent examination system.

I recently had the opportunity to speak on the record with three examiners at the European Patent Office (EPO) about their advice, pet peeves, and approaches to examining computer implemented inventions, particularly in the field of artificial intelligence (AI), and how the EPO compares with the U.S. patent examination system. It was a wide-ranging and thoroughly enjoyable conversation with three professionals who obviously know this area very well, and who were willing to provide keen insight into ways applicants can and should improve technical disclosures to maximize the likelihood of obtaining a patent.

“It is, to me at least, regrettable that because these apparently simple words [computer programs … as such] have no clear meaning both our courts and the Technical Boards of Appeal at the EPO have stopped even trying to understand them. However, we are so far down that road that “returning were as tedious as go o’er”. Instead we are now engaged on a search for a “technical contribution” or a “technical effect”. Instead of arguing about what the legislation means, we argue about what the gloss means. We do not even know whether these substitute phrases mean the same thing […].” – Lewison LJ, in HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 [143]. This extract has inspired this article, in an effort to scrutinize whether the critique by Lewison LJ is still controversial today, six years after that judgment was rendered in the United Kingdom. In doing so, the article analyzes the two divergent approaches on determining whether a particular subject matter is patentable under UK and EU patent law, focusing specifically on the patentability of computer programs/software. First, I discuss the “technical contribution/effect approach” by the UK courts (“UK approach”) and the “any hardware approach” by the European Patent Office (“EPO approach”). The differences between these two approaches become apparent in comparing the former to the latter, in light of HTC Europe v. Apple, and by attempting to define the legal terminology addressing “computer programs” and “technical contribution’/‘technical effect”.

When drafting Patent Cooperation Treaty (PCT) applications, or applications intended to be prosecuted abroad, a U.S. drafter inevitably faces the challenge of providing a description in line with the requirements of different jurisdictions. By the time feedback is received from the foreign patent offices, it will be too late to make any adjustments, and important aspects of the invention may inadvertently be lost. The challenge might feel impossible when dealing with the requirements of the European Patent Office (EPO), as the European Patent Convention (EPC) regulations on written description are framed in a way that is fundamentally different from U.S. regulations. For example, the requisites of providing an adequate description and notice of the metes and bounds of the claimed invention are framed in the United States as separate requirements (written description and definiteness respectively) with different legal bases (35 USC 112(a) for written description and 35 USC 112(b) for definiteness respectively).

It is safe to say that Artificial intelligence (AI) and Machine Learning (ML) are hot topics and, as with any rapidly growing technological area on the industry side, there is also a rapidly growing number of patent applications being filed.In view of this, the European Patent Office (EPO) issued new guidance for examination for AI and ML patent applications in November 2018. Meanwhile, in January 2019, the U.S. Patent and Trademark Office (USPTO) also issued revised guidance directed to what constitutes patent eligible subject matter under 35 U.S.C. §101. Although the USPTO’s revised guidance is more generally directed to software applications, at least one of the accompanying hypothetical examples (Example 39) is directed to the AI and ML space. Therefore, while there may be lingering concerns that AI and ML inventions will face extra scrutiny toward patentability due to their software-centric nature, the extra attention that the EPO and USPTO are paying toward AI and ML will likely help swing the pendulum of patentable subject matter toward a place that is in harmony with the current state of technology. The below analysis reviews the recent developments by the EPO and the USPTO to provide specific guidance on the topic of AI and ML.

There were 174,317 patent applications filed at the European Patent Office in 2018, according to figures in its Annual Report published today (March 12). That represents an increase of 4.6% on 2017, when there were 166,594 applications. The number of patents granted also increased. The EPO published 127,625 granted patents in 2018, up 21% on 2017. U.S. entities are once again the most prominent applicants at the EPO, accounting for 25% of all applications in 2018. The U.S. is followed by Germany (15%), Japan (13%), France (6%) and China (5%). Applications from Germany grew by 4.7%, which the EPO attributed to an upward trend in the automotive sector and related areas, such as sensors and other measuring devices.

Preparation of the background section of a specification that complies with the requirements of both U.S. Patent and Trademark Office (USPTO) and European Patent Office (EPO) requirements is a classic conundrum for patent drafters seeking to file an application in both jurisdictions via the Patent Cooperation Treaty (PCT) or direct filings. In U.S. patent applications, statements made in the background section can be considered an admission of prior art, regardless of whether the admitted prior art would otherwise qualify under 35 U.S.C. 102 and regardless of any disclaimer made. Additionally, statements made in the background section of an issued U.S. patent can not only be used against expert testimony that describes the prior art differently and during claim construction, but also can have a limiting effect on claim interpretation. As a consequence, discussion of deficiencies in the prior art can be interpreted as a disclaimer of the related features and therefore can severely (and often inadvertently) limit the interpretation of the claims. In contrast, statements made in the background section of EPO applications that discuss deficiencies and technical problems present in the prior art are expected to be included in order to enable the reader to understand the technical contribution to the art made by the invention as claimed. In particular, according to EPO practice, the applicant is expected to discuss the technical problem solved not just in view of the closest prior art at filing (subjective technical problem), but also, more importantly, in view of the prior art cited during prosecution in the context of the problem-and-solution approach (objective technical problem). Accordingly, applicants drafting applications to be filed at the EPO tend to provide a heavy background section with discussions of cited documents, related deficiencies and problem solved and later adjust it in view of the objective technical problem in view of the objective technical problem arising during prosecution. What constitutes best practice in this scenario and how the two practices can be harmonized is controversial.

Last week, the U.S. Court of Appeals for the Federal Circuit reversed a ruling of the U.S. District Court for the Eastern District of Virginia, which had affirmed a patent term adjustment (PTA) calculation of the United States Patent and Trademark Office (USPTO). See Supernus Pharmaceuticals, Inc. v. Iancu, No. 2017-1357 (January 23, 2019). The Federal Circuit held that the USPTO cannot count as applicant delay any period of time during which there was no possible action that the applicant could take to reasonably conclude prosecution. A sensible ruling, and one the panel explained was entirely consistent with both the PTA statute and Gilead Sciences, Inc. v. Lee, 778 F.3d 1341 (Fed. Cir. 2015). “A period of time including no identifiable efforts that could have been undertaken cannot be ‘equal to’ the period of failure to undertake reasonable efforts under the terms of the statute,” wrote Judge Reyna.

Patentability of Blockchain is a hot topic primarily because of the tremendous expectations around this emerging, disruptive and promising technology. On December 5, 2018, the European Patent Office (EPO) held an International Conference on Patenting Blockchain at The Hague to explore this topic in detail.

Practitioners who work on patent applications or clearance advice in this field should be careful in the choice of keywords for prior art searches and should be aware of what kind of patent they are seeking: core technology (with possible risks of a pure algorithm objection), applied technology, and virtual currency claim (which is excluded in China).

During our previous interview Ms.Romano-Götsch mentioned that the EPO would be soon releasing a study on self driving vehicles. I expressed interest in speaking with her again once that study was published, and she agreed. Our conversation discussing this EPO study follows. In this wide-ranging conversation we discuss how traditional auto companies and big tech companies are both competing in the self driving space, and how the EPO is seeing an increase in applications from SMEs as well. We also discuss how the political climate in Europe surrounding a push for greater fuel efficiency and environmental concerns are a driving force behind autonomous driving initiatives across Europe.