This year’s theme for World Intellectual Property Day is ‘IP and youth – innovating for a better future’. There are numerous obstacles that entrepreneurs face when working towards improving the prosperity of future generations, however, young businesses and their leaders are stepping up to the challenge, utilising creativity, hard work and innovation to drive change. Startup and scaleup businesses are at the frontline of innovation and bringing us closer to a better future, one invention at a time.
To celebrate World Intellectual Property Day 2022, Mathys & Squire has collaborated with three SME leaders on a series of articles, exploring innovation and the impact IP has had on each business.
To kick off the series, we interviewed Phil Shadbolt, CEO of EZ-Charge, an Oxfordshire-based renewable energy solutions company that specialises in electric vehicle (EV) charging technologies. Read the full interview here.
In the second of our series, we interviewed Atif Syed, CEO of Wootzano, a robotics company based in the North East of England. Click here to read the full interview.
In the final interview of our series, we spoke to Toni Schneider, COO of Ostique, a UK company offering innovative and affordable ostomy care products. Read more from Toni here.
Mathys & Squire recognises the invaluable contribution inventors and innovative businesses offer to building a better future, and we are also aware of some of the challenges they might face. In an effort to help entrepreneurs, startups and scaleup businesses protect their inventions, we launched the Scaleup Quarter, a microsite with resources and a tailored offering for SMEs.
For more information, contact a member of our team.
To celebrate World Intellectual Property Day 2022, Mathys & Squire has collaborated with three SME leaders on a series of articles, exploring innovation and the impact IP has had on each business.
In the final interview of our series, we spoke to Toni Schneider, COO of Ostique, a UK company offering innovative and affordable ostomy care products.
1. How is your idea/invention creating a better future?
There have been incremental developments in ostomy care over the last few decades, yet despite this, products still impact on ostomates’ daily activities and psychological wellbeing. Even the most body-confident ostomates find current products stigmatising and the lack of choice frustrating.
We create innovative and aesthetically empathetic ostomy care products, as we believe that everyone living or adapting to life with a stoma deserves ostomy care that not only delivers on functional needs, but also supports them mentally and physically. We understand that there can be stigmas and challenges that people with stomas will face, and with our product we hope to improve their quality of life for a better future.
2. What were the challenges you or your team faced when growing your business?
Similar to other young businesses, we needed to raise funds to grow our operations and have found the process of fundraising to be challenging. However, we are overcoming this challenge by ensuring we get our brand into the marketplace and connecting with the various networks that support businesses looking to fundraise.
Furthermore, due to the nature of our work, when COVID restriction took place, we were unable to run a few of our daily activities, such as carry out patient focus groups. Despite this, we were very quick to adapt our process and took sessions online, and sent products via post to individual participants.
3. What role does IP play in protecting your invention and supporting your business objectives?
IP is very important to our business, as we invest heavily in developing new and innovative products which address the significant issues of existing ostomy product offerings. We also recognise the vital commercial importance of protecting the company’s innovations to prevent other players in this space from free-riding on our developments. Our IP strategy is thus to seek robust protection for all of Ostique’s IP, where commercially appropriate to do so.
Our earliest patent applications in fact pre-date the incorporation of Ostique as a company (they were filed in the name of our founder Stephanie and were later transferred to Ostique) – emphasising the fact that defensibility has been a core pillar for us from the very start.
4. What advice would you give to your younger self to better navigate your journey?
My advice would be to believe in yourself, self-doubt and imposter syndrome can be your worst enemy and limit your progression. I was fortunate to have a very supportive network of family and friends to encourage myself and Ostique’s CEO, Stephanie.
Also, trust the path you are following, I started a career in law and then founded my own business with my friend. Although I stopped practising law, I use so many of the transferable skills that I learnt to run the business today. Finally, trust your gut!!
5. What forward-looking plans do you have to ensure an even better future for your business and/or the wider society?
We have specific milestones for Ostique to grow and we continue to focus on working with patients impacted by stoma surgery and help integrate them into society, whilst promoting awareness and social inclusion.
6. What activities do you carry out to ensure your business keeps innovating?
We keep an eye on the market as well as ensuring we are signed up to the relevant publications and newsletters to hear the latest industry news. We also consistently collaborate with patients, care-givers, nurses, clinicians and academics to receive feedback to input into our innovative products.
Mathys & Squire recognises the invaluable contribution inventors and innovative businesses offer to building a better future, and we are also aware of some of the challenges they might face. In an effort to help entrepreneurs, startups and scaleup businesses protect their inventions, we launched the Scaleup Quarter, a microsite with resources and a tailored offering for SMEs.
For more information, contact a member of our team.
To celebrate World Intellectual Property Day 2022, Mathys & Squire has collaborated with three SME leaders on a series of articles, exploring innovation and the impact IP has had on each business.
In the second of our series, we interviewed Atif Syed, CEO of Wootzano, a robotics company based in the North East of England.
1. How is your idea/invention creating a better future?
My invention was the electronic skin which allows robots to sense and feel like humans do. At the time when I was developing this, there were very few, if any, people who were actually looking into this field. Through Wootzano, we were able to catapult and scale up the manufacturing of the e-skin and became one of the first in the world to mass-manufacture e-skin. Using Wootzano as an inspiration, there are now many companies and research institutes (including Edinburgh, my own alma mater) looking into developing their own e-skin.
At Wootzano, we are using the e-skin within our Avarai robotic system, which is the world’s first and only system that can autonomously and dexterously pick and package complex fruits such as table grapes. The Avarai robotic system is enabling fruit packers to increase their margins and get an ROI of one year. Avarai is helping to reduce food waste and remove laborious and mundane human labour jobs, converting them into higher skilled, higher paid and more secure engineering jobs. The applications of the e-skin are versatile. We already used it in robots for nuclear power plant decommissioning, autonomous maintenance and repair of offshore wind turbine blades. In the future, we have plans to use it within prosthetic limbs and quite a few other applications which we have in our plans.
2. What were the challenges you or your team faced when growing your business?
There are various challenges: from finding the right people, to technical challenges. Since what we are doing is completely new, there are no references anywhere for this. We had to create our own models and generate our own data to feed into the machine learning models to enable the Avarai robotic system to handle grapes and other delicate fruits.
3. What role does IP play in protecting your invention and supporting your business objectives?
IP is one of the biggest assets we have. By protecting the IP, we are increasing an immense value within the business which otherwise would be untapped.
4. What advice would you give to your younger self to better navigate your journey?
I wouldn’t make many changes as many of the failures I have had actually helped me develop better strategies which otherwise I wouldn’t have thought about in the way I currently do. There is still a lot to learn!
5. What forward-looking plans do you have to ensure an even better future for your business and/or the wider society?
We have quite a few interesting plans, but I will leave some for the imagination! Wootzano exists to democratise robots. We want to see robots becoming common use by businesses and individuals. There are a lot of exciting plans for Wootzano in the coming months and years. The so-called “Google” of the robotics world does not yet exist, but we genuinely believe that we will take that spot in the next few months!
6. What activities do you carry out to ensure your business keeps innovating?
Innovation is at the heart of everything we do at Wootzano. We will be allocating specific budgets for R&D and we work very closely with various universities in the UK, Europe and the US. We are always on the look-out for other interesting tech which can complement the robotic systems we have developed, as we would also be very keen and interested in acquiring some of the tech within our robotic systems.
Mathys & Squire recognises the invaluable contribution inventors and innovative businesses offer to building a better future, and we are also aware of some of the challenges they might face. In an effort to help entrepreneurs, startups and scaleup businesses protect their inventions, we launched the Scaleup Quarter, a microsite with resources and a tailored offering for SMEs.
For more information, contact a member of our team.
The European Commission has launched a public call for evidence in response to a proposed reform of the supplementary protection certificate (SPC) system. The initiative will put in place “a unitary SPC and/or a single (unified) procedure for granting national SPCs” in an effort to benefit the health sector by making them more accessible and efficient.
Following an evaluation in 2020, the Commission identified that SPCs being granted and administered nationally is the “main shortcoming” of the current system: “SPC applications are currently filed at the national patent office of each EU Member State where protection is sought and in which a basic patent, to be extended, has been granted. This undermines their effectiveness and efficiency.” The initiative is intended to tackle the following key issues:
- Divergent outcomes of the grant procedures across EU countries
- Lack of unitary SPC protection for the future unitary patent
- Suboptimal transparency of SPC-related information
- High cost and administrative burden for SPC users
Further information about the initiative is available to download here. Feedback can be provided until Tuesday 5 April 2022, please click here to have your say.
For more information about SPCs, visit our webpage here.
Research carried out by Mathys & Squire, around the rise in global patents related to blockchain technology, has featured in an article published by City A.M. – click here to read the feature (p. 14).
An extended version of the article is available below.
There have been a record 9,973 global patents related to blockchain filed in the past year*, up from 3,810 two years earlier, shows new research carried out by Mathys & Squire.
The rush to secure new commercial applications for blockchain technology is driving R&D in the space. The development of new uses for NFTs and attempts to make core blockchain technology less carbon intensive are particular areas of focus for software houses.
Blockchain technology has the potential to help make supply chain data more reliable and up-to-date. The technology could help eliminate counterfeiting and trace the movement of goods within the supply chain. Possible applications include secure event ticketing and validating ethical supply chains – from organic food to conflict-free diamonds.
Dani Kramer, Partner at Mathys & Squire says: “Blockchain has the capacity to revolutionise sectors as diverse as insurance, healthcare and urban planning. The race to capture new commercial applications is the driving force behind R&D and patent filing in this area.”
“Cryptocurrency is just one element of blockchain technology. It’s a misconception that blockchain is only applicable to cryptocurrency trading or NFTs in the art market.”
Beyond blockchain’s more well-known applications, our research reveals technology for many other potential uses of blockchain has been patented in the last year, including:
- allowing insurers to analyse vehicle sensor data and build user profiles;
- enabling the secure storage and transmission of medical information;
- optimising traffic flows in urban areas; and
- optimising energy efficiency within the power grid.
Fears over crypto carbon footprint drives blockchain innovation
Another key area of innovation in the last year has been to make core blockchain technology greener after criticism of its carbon footprint. In 2019, Bitcoin mining consumed as much energy as the Netherlands**. Earlier this year Elon Musk u-turned on accepting Bitcoin as payment for Tesla vehicles over environmental concerns.
Efforts to make blockchain greener have focused on cryptocurrencies, with alternatives to energy-intensive ‘proof of work’ system of verifying transactions. Proof of work uses so much energy because to verify crypto transfers it requires computers to solve increasingly complex mathematical problems.
Dani Kramer says: “While the environmental impact remains a concern, crypto developers are already coming up with ways to reduce the carbon footprint of cryptocurrencies. Other blockchain applications, for example in the field of energy efficiency, already hold the potential to reduce emissions.”
The majority of blockchain patents for the last year (5,714 – 57% of the total) were Chinese in origin. The US came in second place, with 1,729 (17% of the total). 53 patents originated in the UK – just 0.5% of the global figure. Major filers for 2020-21 include insurance company Ping An, Chinese payment platform Alipay and US technology company IBM.
Number of blockchain patents filed per year
* Patents filed with World Intellectual Property Organization, year ending 30 September 2021
** University of Cambridge and International Energy Agency
In this article for The Patent Lawyer Magazine, Partners Andrew White and Anna Gregson discuss the importance of protecting IP as an asset, even years before commercial use, in one of the largest growth opportunity markets: deep tech.
Deep tech is a term most frequently used in the investment community and tends to refer to businesses that are very research & development (R&D) intensive, using innovative and emerging technologies to solve a particular problem. Deep tech commonly refers to technologies such as advanced materials, synthetic biology, artificial intelligence (AI), or quantum technologies, although many deep tech startups today are combining these technologies – for example where AI and synthetic biology intersect, with 96% of deep tech ventures using at least two technologies. Deep tech companies are therefore very IP-rich, with about 70% of such ventures owning patents related to their products or services.
Deep tech is being seen increasingly as a massive growth opportunity. As shown in the figure below, the amount of capital put into this space has grown fourfold, from $15bn in 2016, to more than $60bn in 2020, and it is estimated that deep tech investments will grow to about $140bn by 2025, with investment in AI and synthetic biology attracting two-thirds of deep tech investment last year.
About 83% of deep tech ventures involve designing and building a physical product. Their digital proficiency is focused on using artificial intelligence, machine learning and advanced computation to explore frontiers in physics, chemistry and biology.
(Data taken from https://www.bcg.com/publications/2021/overcoming-challenges-investing-in-digital-technology)
Deep tech companies are likely to be disruptors; incumbent companies, particularly in industries like energy, chemicals and agriculture, will probably be disrupted by deep tech if they don’t engage with this community soon.
As can be seen in the chart below, deep tech companies can also be extremely lucrative, with companies such as Impossible Foods being valued at around $10bn this year:
(Data taken from https://www.bcg.com/publications/2021/overcoming-challenges-investing-in-digital-technology)
Pushing technological frontiers
Deep tech has the potential to reinvigorate established sectors, such as drug R&D, where costs to develop a new drug have doubled each decade for the last 70 years. By providing opportunities to apply tools and principles such as network data science and deep learning to overcome the ‘biology bottleneck’, deep tech has the potential to significantly reduce costs in drug development.
Deep tech also opens the commercial potential of newer sectors, such as synthetic biology, where the confluence of developments in IT, systems theory and biology enables synthetic biology to move beyond the laboratory into commercial use. Despite the emergent nature of synthetic biology, there are already examples demonstrating its scope and disruptive potential, such as designer bacteria capable of producing as diverse materials as precursors for anti-malarials, to spider silk proteins, biologically based logic gates and synthetic organelles.
Why do you need to protect your IP?
Because of their IP-rich and R&D heavy nature, it may be many years before a deep tech startup successfully commercialises its innovation and emerges from the infamous ‘valley of death’. IP may be the only real asset a deep tech startup has for a number of years, so protecting that IP and developing an effective IP strategy is therefore critical to its success.
Investors recognise this and many will want to see a robust IP strategy in place before investing. Deep tech startups need to engage with IP early and often, developing their own IP pipeline (including patents, trade secrets and other relevant IP) and also considering third party IP and freedom-to-operate. Particularly for products where lead times can be long, such as for new drugs that require regulatory approval, a strong pipeline with downstream IP is vital.
Exit strategy
Depending on its business goals, effectively protecting IP can dramatically affect the exit of a deep tech startup. For example, building up a strong and effective IP portfolio can drastically increase the value of the business, whether the exit is via acquisition or IPO. This may yield a higher return on investment for those early-stage investors, as well as the founding team. In the longer term, for many deep tech startups, a strong IP portfolio is also essential because they may be entering and disrupting a crowded and well-established market. Without strong IP in place, they may not be able to survive. If a startup has patents of their own, these can be used defensively; if sued by a well-established competitor, having patent rights of your own can present you with the option to cross-license rather than engage in costly and time-consuming litigation.
To patent or to keep secret?
A common question faced by many deep tech startups is whether to patent at all, or whether to keep their innovation secret in the form of a trade secret. For many, the question comes down to whether a third party is able to reverse-engineer or take apart their innovation and determine how it works. For example, can a user of a software platform understand how an AI algorithm works if all the user does is send some data to a cloud platform, and receive some answers in return? In such cases an effective trade secret policy may be sufficient. One benefit of a trade secret policy is that it doesn’t have to cost lots of money, and it can last indefinitely, provided the secret can be kept. The obvious downsides are that there may be leakage of your trade secrets over time, and by keeping your innovation a secret it doesn’t prevent a third party independently inventing and then patenting their own solution which may in turn limit your ability to work your invention, even if you had been using it prior to their patent filing.
Advantages of a patent are that it encourages investment, collaboration and joint development work, as the patent holder can freely disclose their invention in the knowledge that they are protected by the patent. Patents can also be an indicator of both ownership and technical credibility; they can be used to convince investors that you own the technology that you say you do and that what you are working on is truly innovative.
Partnerships with bigger players
By virtue of their complex and cross-disciplinary nature, many deep tech startups must collaborate to implement their solutions. This presents its own set of challenges and opportunities. For example, the ownership of any resulting IP (often referred to as foreground IP) needs to be established, and for many collaborators they will want a share in this foreground IP. This presents a challenge to the startup who may consider that they hold much of the original (background) IP that attracted the collaborator in the first place.
Deep tech startups should therefore be mindful not only to negotiate a strong and effective IP agreement, but should also consider filing patents before any work begins as part of the collaboration. Filing IP beforehand means it can be pushed into the background IP and therefore the startup can retain ownership of more of the IP in the space.
As with any field, deep tech startups should also be using non-disclosure agreements (NDAs) whenever they discuss any elements of the technology with a third party. However, even if you have an NDA, they are notoriously difficult to enforce and once your idea becomes public it can be very difficult to retain ownership of the innovation. Therefore, if a patent application can be filed even before discussions under an NDA have taken place, this will strengthen your IP position.
Opportunities and challenges
It therefore appears that there are plenty of opportunities for deep tech startups, and the volume of investment pouring in is only set to increase. It is also clear that startups in the deep tech space need to devise and implement a truly effective IP strategy if they are to survive and be successful. For more information on IP specifically relating to startup businesses, visit the Mathys & Squire Scaleup Quarter.
This article was published in The Patent Lawyer Magazine in February 2022.
The European Patent Office (EPO) has announced it will be increasing official fees by approximately 2.5% from 1 April 2022 – two years since its last fee increase in April 2020. Full details of the increases are available via the EPO website.
Those with the largest increase (~3%) include application filing fees and renewal fees, while additional page fees, international search fees and further processing of delayed payments will remain at their current cost. The majority of official fees paid on or after 1 April 2022 will be charged at the new rate (although a six month grace period until 1 October 2022 has been confirmed if an official fee is paid at the pre-April 2022 rate). As stated by the EPO, it will be “deemed to have been validly paid if the deficit is made good within two months of an invitation to that effect from the [EPO]”.
Applicants can save money by paying fees early, ahead of the 1 April 2022 fee increase date, even if the official deadline for paying the fee is not until later in the year. Some fee payments, such as requesting examination and paying renewal fees, can be performed several months ahead of the official deadline so applicants may find it worthwhile to review their patent portfolios to check what fee payments are due over the next few months. A key example that could result in significant savings is entering the European regional phase early (i.e. before 1 April 2022). By doing this, applicants can save up to €115 per application (around 3% of the official fees). Although this would involve attending to the formalities to enter the European regional phase early, it would not bring forward other costs associated with the application as there is no need to request early processing of the application should an applicant choose this option.
We recommend applicants check their pending PCT applications now to decide whether to enter the European regional phase early to take advantage of the cost savings.
For more information about the fee increases and how they may affect your European patent portfolio, and to discuss your options in filing early to save costs, please get in touch with your usual Mathys & Squire attorney, or send us an enquiry here.
Update: 9 March 2022
Having reviewed the final 2022 version which is now in force, there are no substantive changes compared to the preview, which the article is based on. With that in mind, the below summary still stands correct and those changes are still relevant.
The European Patent Office (EPO) has published a preview of its revised Guidelines for 2022, which are due to come into force as of 1 March 2022. While a high-level summary of the major changes has been provided by the EPO, here we discuss some of the changes we consider to be most relevant.
Amending the description
One of the major changes last year was directed to stricter guidance for amending the description. Although the EPO indicated the updates were made to reflect the current process, in practice, much more time and attention is now required to comply with the updated Guidelines.
The EPO appears to have taken on board comments from users as part of the consultation process, at least to some extent, and F-IV, 4.3 has been further revised – although perhaps to not the extent that some may have wished for. For example, instead of requiring the removal (or prominent marking as not being claimed) of embodiments no longer encompassed by the amended claims, it is only subject-matter that is inconsistent with the claims that needs to be deleted (or marked as not falling within subject-matter for which protection is sought).
If an embodiment comprises further features which are not claimed as dependent claims, this is not an inconsistency – as long as the combination of the features in the embodiment is encompassed by the subject-matter of an independent claim.
Examples of inconsistencies are also provided, such as the presence of an alternative feature which has a broader or different meaning than a feature of the independent claim, or if the embodiment comprises a feature which is demonstrably incompatible with an independent claim. Claim-like clauses still ought to be deleted.
The revised Guidelines emphasise further that terms such as “disclosure”, “example”, “aspect” or similar are not sufficient replacements for “embodiment” or “invention” in relation to inconsistencies. However, the revised Guidelines indicate benefit of the doubt ought to be given to applicants where it is unclear if an embodiment is consistent with the claims.
Of course, the revisions were likely finalised before the recent decision in T 1989/18 from December 2021, in which the Board held there is no legal basis in the EPC or elsewhere that requires a description must be amended in line with the claims. The summary of the changes to the Guidelines includes a footnote clearly stating that amendments introduced are intended to remove potential misinterpretation of EPO practice, and that the amendments have been extensively discussed with external and internal users to clarify how the established practice is applied. It seems likely that this will be an ongoing subject, and it remains to be seen whether the decision in T 1989/18 will have an impact on EPO practice.
Priority considerations
A-III, 6.1 provides clarification relating to transfer of priority rights citing T 844/18: where the previous application was filed by joint applicants, all these applicants must be amongst the applicants of the later European patent application or have transferred their rights in the priority application to the applicant of the later European patent application.
A-III, 6.12 is amended to reflect that the EPO now also performs searches for the national offices of Albania and Croatia, and that the EPO now includes in the file of a European patent application a copy of the search results referred to in Rule 141(1), thus exempting the applicant from filing said copy, where the priority of a first filing is made in People’s Republic of China and Sweden.
Finally, F-VI, 1.5 has been revised with further guidance on determining partial priority when only a part of the subject-matter encompassed by a generic “OR” claim is entitled to the priority date of a previous application, in line with G1/15. The revised Guidelines emphasise that, where a part of an application (e.g. EP-Y) already appears in an earlier application (e.g. EP-X), a later application (e.g. EP-Z) cannot validly claim priority from that part (e.g. in EP-Y).
Of course, this year (as reported here) we have recently had the referrals of G1/22 and G2/22 relating to formal entitlement to priority; it is expected that a decision on this will not be issued in time for the next revision cycle of the Guidelines (coming into effect in March 2023), but we will of course update you as soon as there are developments in this matter.
Biological inventions
A-IV, 4.1 now emphasises that for Euro-PCT applications, the document satisfying the EPO that the depositor of a biological material has authorised the applicant to refer to the deposited biological material in the application, and has given unreserved and irrevocable consent to the deposited material being made available to the public, must be provided to the International Bureau before completion of the technical preparations for international publication.
Due to the upcoming implementation of the new WIPO Standard ST.26 for sequence listings that will apply to applications filed on and after 1 July 2022, several sections – in particular A-IV, 5 – have been amended. The changes to the new standard compared to ST.25 are quite extensive and deserve their own separate due care and attention. The revised Guidelines note that detailed information on the changes in practice required by this new standard will be published in the Official Journal of the EPO well in advance.
Relatedly, A-IV, 5.1 provides further clarification relating to the filing of a sequence listing as a missing part of the description under vary rare conditions, and the situations in which this may occur or alternatively in which the applicant will be invited to file a standard-compliant sequence listing. We suggest always referring to SEQ ID NOs, so that if the corresponding sequences cannot be identified in the filed description documents, it is obvious that such sequences are missing.
We also note that there are new examples of matter contrary to morality (see G-II, 4.1) and genetically modified animals as patentable biotechnological inventions (see G-II, 5.2). Finally, further to the extensive edits regarding antibodies in 2021, the description of antibodies has been slightly revised in G-II, 5.6, which now states that instead of requiring all six CDRs to be defined, it is “the number of CDRs required for binding” which ought to be defined.
Technical effects of mathematical methods
Guidance under G-II, 3.3 (Mathematical methods) and 3.3.2 (Simulation, design or modelling) has been updated to reflect G1/19, which confirmed the COMVIK approach for computer-implemented simulations. Further examples have been added, and simulations that are abstract are differentiated from those simulations that interact with physical reality. For the former, the simulation must output data with a potential technical effect, the effect being produced when the data is used in a technical manner. For the latter, a technical contribution can be made regardless the use of results coming from the simulation.
G-II, 3.5.2 (Schemes, rules and methods for playing games) and 3.6.3 (Data retrieval, formats and structures) have also been revised with new examples of technical effects, and G-VII, 5 (Problem-solution approach) also features additional references to the COMVIK approach and G1/19 for mixed-type inventions, including new examples of applying the problem-solution approach to such claims.
Identity checks in oral proceedings
Provisions for checking the identity and authorisations of participants at oral proceedings have been revised, under E-III, 8.3.1, particularly in relation to oral proceedings held by videoconference. Copies of identity documents for parties or their representatives can be filed via EPO online filing options no later than two days prior to the oral proceedings or, at the beginning of the oral proceedings, via email to the address provided to the parties.
The identification must visibly show the full name and picture of the person concerned, but these documents are not made part of the public file. Accompanying persons can have their identity confirmed by the relevant representative.
Inventor/applicant’s location
A-III, 5.3 has been revised to reflect Amended Rule 19(1) EPC (as of April 2021): it is now clearly specified that the country and place of residence may also be that of the applicant (instead of the inventor), in line with commonly accepted practice.
Note that the country and place of residence must be specified, wherein the place of residence is the city or municipality, i.e. not the province or region, where the inventor or applicant permanently resides and should preferably include the postal code.
Extension of time limits
The revised section on the scope of application of Rule 134 (E-VIII, 1.6.3.2), i.e. the extension of periods due to which at least one EPO filing office not being open for receipt of document, now specifically lists some additional periods. These include the opposition period under Article 99(1), the period for entry into the European phase under Rule 159(1), the expiry of the period to pay renewal fees with an additional fee under Rule 51(2), the expiry of the periods under Rule 51(3) and Rule 51(4), the due date for the renewal fees for a divisional application and the beginning of the four-month period under Rule 51(3) and the date of the start of the search.
Revised Guidelines for Search and Examination at the EPO as PCT authority
The Guidelines for Search and Examination at the EPO as PCT authority have also been revised, with the biggest changes in part A.
In particular, A-VI, 6 contains a new section (1.6) on the applicant’s entitlement to claim priority, similar to the changes in the main EPO Guidelines, A-III. Again, where the previous application was filed by joint applicants, all these applicants must be amongst the applicants of the later patent application or have transferred their rights in the priority application to the applicant of the later patent application.
In addition, A-VI, 1.5 now clarifies that if no request for restoration of priority has been filed by the applicant in the procedure before the EPO as RO (if the request has been rejected), the applicant may file a (new) request in the national phase (i.e. in procedures before the EPO as designated Office or any other designated Office).
A new chapter relating to languages has also been added as A-VII, which provides more detailed guidance on admissible languages on filing, international applications filed in multiple language and languages of proceedings and written submissions.
Furthermore, the revised EPO-PCT Guidelines note that the “record copy” transmitted to the IB is considered a true copy (authentic text) of the international application for the purposes of PCT procedures. If a pre-converted document has also been submitted with the international application, it can be used as a fallback in the event of conversion errors.
Summary
It is important to be aware of the revisions that will be applicable from 1 March 2022, in particular the clarifications relating to priority, biotechnology and computer-implemented inventions, and for another year running, amending the description in line with the claims.
The above is not intended to provide legal advice: if you have any questions about how these changes may affect your applications or patents, please get in touch.
Mathys & Squire Partners Anna Gregson, Dani Kramer and Martin MacLean have been featured in the 2022 edition of IAM Strategy 300 Global Leaders.
The guide highlights professionals whose approach to intellectual property is regarded by peers as truly strategic in nature, drawing from the worlds of private practice, consulting and other service providers, with specialists from the major IP markets in North America, Europe and Asia.
IAM says: A perceptive IP strategist, Anna Gregson keeps the wider commercial picture in mind in all her endeavours as a prosecution partner, counsellor and IP protector. She understands her clients at a business level and is brilliant at tailoring her approach and solutions accordingly.
IAM says: Dani Kramer practices at the cutting-edge of innovation in several high-technology fields such as AI, semiconductors and internet television and has been pivotal in securing vital protections for his diverse clients. He understands the how and the why and is both technically adept and commercial.
IAM says: Martin MacLean is a go-to for complex patent briefs thanks to his portfolio management dexterity, striking hit rate in EPO hearings and extensive deal experience. He has a deep understanding of the life sciences industry and its commercial drivers.
We would like to thank each of our clients, contacts and peers who took the time to participate in the research. IAM’s Strategy 300 Global Leaders guide for 2022 is available here.
In a development that could have a significant impact on how priority is assessed in Europe, EPO Board of Appeal 3.3.4 has just referred the following two questions to the Enlarged Board of Appeal (EBA) in case T 1513/17 (consolidated with T 2719/19) concerning formal entitlement to priority:
I. Does the EPC confer jurisdiction on the EPO to determine whether a party validly claims to be a successor in title as referred to in Article 87(1)(b) EPC?
II. If question I is answered in the affirmative
Can a party B validly rely on the priority right claimed in a PCT-application for the purpose of claiming priority rights under Article 87(1) EPC
in the case where
- a PCT-application designates party A as applicant for the US only and party B as applicant for other designated States, including regional European patent protection and
- the PCT-application claims priority from an earlier patent application that designates party A as the applicant and
- the priority claimed in the PCT-application is in compliance with Article 4 of the Paris Convention?
The first question asks whether the EPO has the power to determine whether a priority right has been validly transferred. According to established case law and practice, the EPO does have that power, as recently confirmed by Board of Appeal 3.3.8 in the CRISPR/Cas appeal case, T 844/18 (see our news items here and here). However, that power has also been questioned ex officio in communications from other Boards. The failure to introduce priority rights into a European application can of course have devastating consequences for validity, and therefore, if the EBA should answer the first question in the negative, then this would represent a significant relaxation of the EPO’s priority rules. Given established case law, it is possible the EBA will decline to answer the first question.
The second question essentially asks whether naming the applicant for a first filing as applicant for the US only in a PCT application claiming priority thereto is enough for the purposes of introducing priority rights into the European designation. This scenario commonly arises when a US provisional application is filed in the names of the inventors, and a subsequent PCT application is filed naming those inventors as applicants for the US and someone else as applicant for other jurisdictions. EPO opposition divisions have recently been applying what the Board in T 1513/17 calls the ‘PCT joint applicants approach’, whereby the EPO merely checks whether all applicants on a priority application are named as PCT applicants, irrespective of whether they are designated as applicants for Europe or whether priority rights were validly transferred to the applicants for Europe. The Board in T1513/17 concluded that the validity of PCT joint applicants approach is not clear-cut and that guidance from the EBA is required.
It is possible that the EPO will opt to stay pending proceedings in cases where formal entitlement to priority is determinative, following the approach taken in other recent referrals.
We will provide further updates as the EBA referral progresses.
