Strategic ambitions for the IPO published  

Sustainability, efficiency and creating a world-leading IP office all feature in the priorities for the UK  Intellectual Property Office (UK IPO) in its recently published strategic direction.  

The UK IPO plays a critical role at the centre of the IP ecosystem, and they are central to the UK maintaining its position as a world-leading IP environment. 

In order to deliver on this, it has recently published updated information on its refreshed corporate strategy to 2026 and its strategic priorities for 2022-2023. 

The overall strategic ambition for the IPO is still to ensure that it supports and encourages researchers, inventors, creators, businesses, and organisations to pursue innovation.  

The updated strategy discusses how it will deliver on this ambition with three main aims: 

  1. Deliver excellent IP services 
  1. Create a world-leading IP environment 
  1. Make the IPO a brilliant place to work 

These ambitions are underpinned by the IPO’s principles which are to “support our people, focus on customers and strive for efficiency.” 

Within the detail of the priorities are clear areas of focus for the IPO in the short and medium-term.  

Delivering on the ongoing transformation programme will see the IPO build a more user-friendly and digital service supporting the delivery of its customer service standards 

The IP environment in the UK will continue to be modernised to keep up with society and digital changes whilst increasing the level of awareness and education about IP and its potential for impact. The approach described in the Counter-Infringement Strategy will be further embedded as well as the development of an intelligence centre of excellence.  

The UK’s position both with the EU and internationally will continue to be strengthened via free trade agreements and the promotion of the international IP business support service.   

Within the IPO itself, the focus will be on sustainability namely the development of a carbon net-zero strategy and how, as a workplace, the IPO can support its people to thrive both now and in the future.  

In summary, these updated priorities help to provide a direction of travel for the IPO and how it is supporting the wider industry to continue to invest and benefit from innovation and new technological developments.  

 

The Unitary Patent – introducing the new patent game in town 

It is possible to obtain an EU Trade Mark and an EU Registered Design both of which are a single right which provides protection for owners against infringement anywhere in the EU.   

For over 50 years, the EU has been trying to establish an equivalent EU patent. However, political agreement between all of the EU member states has proved impossible. Rather than give up, the EU member states who want an EU patent have come together and created a compromise, a half-way house if you will, called the Unitary Patent. This new patent is called a Unitary Patent rather than an EU patent as it will only cover a subset of the member states of the EU.  

The UK had been involved in developing the Unitary Patent, but following Brexit the UK is no longer able to join the Unitary Patent system. UK based applicants will however be able to obtain a Unitary Patent. 

 The Unitary Patent will exist alongside a European Patent as something related but entirely different at the same time.  The current European Patent system is a system for examining and granting patent applications at the European Patent Office (EPO). Once granted, a European Patent becomes a bundle of national patents in countries that are contracting states of the European Patent Convention (EPC); these include both EU member states and non-EU countries including UK, Switzerland, Iceland, Turkey and Norway. Currently, if an applicant wants their European Patent to cover all of these countries, they are required to complete formalities (validation) in each country, which at the very least requires paying an annual renewal fee to the local patent office in each country. So, under the current European Patent system, if you want your European Patent to cover all of the EU member states this means validating the patent in 27 countries and then payment of annual renewal fees to 27 separate patent offices. 

With the new Unitary Patent system, an applicant will have the choice at the end of the European Patent application process to either turn it into a Unitary Patent (with a single renewal fee) or to continue as a European Patent, validating and renewing in each country that they want the patent to take effect in. 

The Unitary Patent is expected to start toward the end of 2022 and will initially commence with approximately 17 EU countries that have ratified the Unified Patent Court Agreement. These include France, Germany, Italy and the Netherlands which, along with the UK, to date have been the most popular countries for validating a European Patent in. For those countries outside of the unitary patent system, there will be no change to the current European Patent validation procedures. 

For applicants who currently validate their European Patent in a large number of EU states, the new Unitary Patent system offers significant opportunities for cost savings. For applicants, who only validate their European Patent in two or three EU member states however, it may be less attractive as the renewal costs for a Unitary Patent will be higher. This is because although the Unitary Patent has a single annual renewal fee, it is set to be equivalent to the total of the annual renewal fees for the four most popular validation countries (France, Germany, Italy and the Netherlands). 

The Unitary Patent is accompanied by a new court called the Unified Patent Court which we will discuss in a following post. 

The Top 100 Global Innovators

Clarivate has just published its latest annual “Top 100 Global Innovators” report, identifying the organisations that are excelling at the innovation game. It also gives some insights into the key current and emerging areas of technology.

Innovation Trends

Key trends reported include a doubling of both the number of aerospace and defence firms and the number of automotive firms within the Top 100. In aerospace, Rolls-Royce makes it into the Top 100 Global Innovators, while Ford, Volkswagen and Kia Motors are new automotive entries and Honda and Toyota make it into the Top 100 for the eleventh time.

Top Companies

Notable mentions include US chemicals and materials firm 3M, Swedish telecommunications firm Ericsson and Japanese electronics and computing equipment firm Sony.  

Top Countries

The report gives us a view of innovation across the globe and shows the countries and regions where innovation continues to thrive. Japan has the largest number of firms with the Top 100 from a single country, with thirty-five. The UK has two new entries on the list with industrial systems firm CNH Industrial and, as previously mentioned, aerospace and defence firm Rolls-Royce. The US has 18 firms included on the list. This is down from last year’s report but the evaluation methodology used by Clarivate has changed for 2022, so it will be interesting to see how the numbers play out next year. Energy firm Saudi Aramco has become the first ever entry from the Middle East region signalling an increase in geographical diversity of innovation activity.

Top Technology Areas

The electronics and computing equipment sector leads the way in terms of number of firms, with  twenty-eight firms in this industry sector making into the Top 100. The sector with second highest number of firms in the Top 100 is automotive, with twelve firms listed, closely followed in third place by the chemicals and materials sector with ten firms. So the electronics and computing equipment sector continues to dominate global innovation activity.

Predictions for the Future

Using their data, Clarivate present us with a forecast for the increase or decrease in performance of technological areas for the future. Industrial systems and Telecommunications are predicted to have significant increases in a matter of a few years. In our view, this will be driven by the implementation of Industry 4.0 and the continuing roll out of 5G telecoms networks. We can expect to see remote controlled factories and driverless vehicles which is made possible by the swift speeds of the 5G network. With this new technology being integrated, firms will be able to revolutionize the way they manufacture, enhance and deliver their products.

 

You can read the full Clarivate “Top 100 Global Innovators” report here.

Two IP interviewed by The Patent Lawyer

Our co-founder, Anna Molony, sat down with The Patent Lawyer magazine to talk about the new breed consultancy model that Two IP operates. She explains what Two IP offers patent and trade mark attorneys, and talks about the benefits of this new way of working and how the firm functions.

Anna also discusses Two IP’s belief in thinking differently and how this lead to designing a better way of working that gives patent and trade mark attorneys the ability to have real work/life balance – which for Two IP means more life and less work. She also talks about how Two IP’s different way of working makes for better services for our clients, and explains the core values of the firm.

Are you an experienced patent or trade mark attorney looking for a better way of working? Interested to know more about how Two IP came about and what you could expect if you were to join the firm as a consultant? Read the interview at page 86 of the March/April issue of The Patent Lawyer to find out more : The Patent Lawyer March/April 2022

Why you need a patent strategy

All companies have a business strategy and technology led companies will have an R&D strategy that supports the business strategy. The most successful technology led companies also have a patent strategy. Why is that? And what benefits does it bring to the business?

Why have a patent strategy?

Intellectual Property (IP) can be a valuable business asset both in terms of adding value to your company and supporting your business strategy. A patent strategy defines how a business will use patents and patent applications, and the information that its competitors’ patents contain, to secure the IP in its product developments and its position within the technological sector in which it operates.

Patents offer protection for new developments and can help ensure exclusivity in the market, to aid companies in building market share and margins. Patents can also help defend market share against rivals and infringers. A patent (and even a patent application) in itself can be enough to dissuade a competitor against copying a product development. And if a competitor does copy your patented product development, you can take patent litigation action to enforce your rights, make them stop and seek damages.

Patents can also help establish joint ventures and strategic partnerships. However, there are some important points to consider and manage in relation to IP to ensure a successful joint venture or partnership that supports your business strategy. We’ll look at those in more detail later.

Finally, it is possible use patent to secure financing and develop new sources of revenue. There is no reason why the patents you’ve invested enormous resources in obtaining can’t become a profit centre for your company and your IP can attract venture capital investment to enable further growth. Thinking about how a patent strategy will support financing and growth plans can be extremely useful in delivering your business strategy.

What is in a patent strategy?

A patent strategy starts in the development phase by looking at your business strategy and understanding the technical landscape. Your business goals provide a long-term blueprint to guide the development of a valuable patent portfolio. Reviewing the patenting activity of key industry competitors, partners and customers can also help to get an overview of the patent landscape in your sector.

There are millions of published patent documents, all available through public databases, such as Espacenet.  This can be an extremely valuable source of information, to enhance R&D and product development efforts. It can be beneficial to do patent searching, looking at your competitors’ patents and applications, to see what competitors are doing and where there may be gaps in the market. This is known as patent landscaping. Patent watching is also a useful tool which involves receiving alerts when competitors have applications published in technological areas that you’re interested in. Including patent searching and watching within your patent strategy can provide a great deal of commercially valuable information.

An evaluation of you existing IP should be the next part to consider in your patent strategy. What patents or applications do you currently have? Where did you file them and for what areas of technology? You may also want to assess whether the IP that you already have is still useful and is supporting your business strategy. If it is not, do you still want to maintain this IP?

The core part of a patent strategy defines which countries you will file patent applications in for each area of technology relevant to your business strategy. Different technologies will have different levels of importance within your business strategy, so different extents of patent protection may be appropriate. For example, for a core technology you may want to file a European patent application, followed by an International Patent Cooperation Treaty (PCT) application at 12 months, resulting in national patent applications in a range of countries relevant to your key markets, R&D centres and manufacturing locations, plus those of your key competitors. For a second level technology, you may decide just to protect in countries of importance to you and not cover those of importance to your competitors. And for technology having the lowest level of importance in delivering your business strategy, you may decide just to file a European or UK patent application.

Once you have your patent strategy in place, you can get on with building a patent portfolio that provides the appropriate level of protection to each of your technologies and processes needed to delivery your business strategy. And you can do this consistently and efficiently, without having go through the decision making process of where to file patent applications each time.

A patent strategy should also cover licensing – do you want to licence all or part of your patent portfolio to others in the industry? – and how you intend to assert the rights established by your patents. What would be the triggers for you to start patent litigation? Against which competitors? And in which countries? In this stage you should consider evaluating competitors’ products to see whether they might infringe any of your patents and competitors patent portfolios to assess the potential for competitor counterattacks.  Patent litigation can be an expensive and time-consuming business, so a patent strategy should also consider whether to obtain litigation insurance to cover costs of taking (or defending) patent litigation.

If you are considering a joint venture or partnership, your patent strategy can help define how IP will be handled in a way that supports your business strategy. At the very least, you need to consider background IP and foreground IP. Background IP is your pre-existing IP that you are willing to bring to the venture, and share with your business partners. Foreground IP is the IP that is generated by the joint venture project. It is vital to protect the R&D investment that you are making and agree who will own any IP generated as a result of the collaboration. What background IP are you willing to bring to the project? What foreground IP do you want out of the project?

Finally, it is possible to sell patents and patent applications if they are not relevant to your business strategy. You can also receive royalty payments for patents and applications by licensing other companies to use your technology and IP. Is your business strategy better supported by offloading patents that are not core to your business or holding on to them? How might licensing support your business strategy, and pay for future patent strategy? Both IBM and Ericsson have patent organisations that make money for their respective businesses based on license income, so don’t assume that patents are simply a cost.

R&D involves significant investment in both staff time and resources, so having a strategy in place to protect the IP that your R&D team generates is only sensible. Having the right patent strategy in place will not only protect that investment but can also help to maximise the return for the R&D investment that the business is making.

Two IP has lots of experience of working with R&D led businesses to develop patent strategies, so if you would like us to work with you to develop a patent strategy for your company get in touch with us at hello@two-ip.com

Update on ViCo Oral Proceedings at the EPO

Last year the European Patent Office (EPO), Enlarged Board of Appeal (EBA) issued its decision in G1/21 on the legality of oral proceedings held by video conference (ViCo). The EBA decided that the mandatory use of ViCo was appropriate during a state of general emergency, e.g. the COVID-19 pandemic. So how is the EPO applying G1/21 and what are its implications for the continued use of ViCo oral proceedings in appeal cases post-pandemic?


The G1/21 Decision
In 2021, to deal with the disruption to in-person oral proceedings being caused by COVID-19 related travel restrictions, the EPO introduced a new Rule of Procedure of the Boards of Appeal (RPBA), that permits a Board of Appeal to hold oral proceedings by ViCo whenever “the Board considers it appropriate to do so”. The continued use of mandatory ViCo oral proceedings sparked a referral, G 1/21, to the EBA on the legality of the new rule.


In G1/21 the EBA held that:
“During a general emergency impairing the parties’ possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a videoconference is compatible with the EPC even if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference.”


How has the EPO been applying G1/21?
Given the emergence of the Omicron variant and the resulting continued state of general emergency into 2022, applying G1/21 has been relatively straight forward for the EPO Boards of Appeal. This is because G1/21 made a clear distinction between “normal times” and a “state of general emergency” in determining whether mandatory ViCo oral proceedings are appropriate.


For example in T 1259/17, relating to Procter & Gamble’s patent (EP1712610), one of the opponents requested that oral proceedings be held by ViCo due to the travel difficulties caused by the COVID-19 pandemic. The P&G objected to the use of ViCo and requested a delay to the oral proceedings to enable them to be held in-person.


The Board of Appeal (BoA) cited G 1/21 (Reasons 44) and noted that, whilst suboptimal, the use of ViCo was “normally sufficient to comply with the principles of fairness of proceedings and the right to be heard”. However, the BoA also interpreted G 1/21 as meaning that a request for proceedings to be held in-person can only be refused if ViCo is considered to be a suitable format for a particular case and if there are circumstances affecting the parties’ ability to attend (Reasons, point 1.4). In T 1259/17 both sides provided reasons as to why they could not attend the proceedings on the scheduled date (citing restrictions to travel and quarantine obligations). The question then became whether the BoA considered ViCo as a suitable format this this case.


P&G argued that the case was highly complex, involving several opponents, a large number of objections and the cited documents included experimental data. The BoA was not persuaded and held that that the number of documents and opponents did not make the use of ViCo inappropriate, since the ViCo software (Zoom) could easily deal with multiple participants. In face, the BoA suggested that Zoom would improve the oral proceedings experience, since “it is even easier to look at multiple presenters as all of them are shown in frontal view”, and that users “have the possibility of highlighting the speaker by individually choosing the ‘speaker view’ in Zoom”.


Important to the BoA’s decision in this case is the fact that the oral proceedings had already been postponed four times, resulting in a delay of almost two years. The opposition decision dated back to 2017, more than 4 years before the scheduled ViCo oral proceedings. Ultimately, the BoA decided that the use of ViCo oral proceedings was justified in this case (Reason, point 1.9). As a result of the Appeal oral proceedings, the patent was revoked.


Other decisions applying G 1/21 include T 0158/19, T 2817/19, T 1197/18 (IPKat), T 2030/18, T 1499/16, T 1870/16, T 2186/17, T 2474/17, T 0779/18. In each of these decisions the Boards of Appeal refused a request for in-person proceedings (and/or a postponement of proceedings) on the basis of G 1/21. Interestingly however, in T 1807/15, the case from which G1/21 arose, the BoA decided to grant the parties their request for in-person proceedings. In this case, in contrast to the other decisions applying G 1/21, both parties requested in-person proceedings in preference to ViCo.


What next?
As COVID-19 restrictions continue to be relaxed across Europe, how will the EPO Boards of Appeal now apply G1/21? Has the “state of general emergency” passed? It will be interesting to see whether there is another referral to the EBA on this matter. The EPO has a clear digital strategy and has made clear that it wants to make greater use of ViCo oral proceedings, a move which the Chartered Institute of Patent Attorneys, representing the UK patent attorney profession, is very much supportive of.


We believe that ViCo oral proceedings can be of great benefit to applicants – you can read our thoughts here.

Review of CIPA Webinar featuring Two IP

Two IP’s Dr Anna Molony was part of an expert panel at a recent CIPA webinar – Career Alternatives to Private Practice.

The purpose of the event was to provide insights and experiences about different career paths patent attorneys can take in the profession

It included perspectives from attorneys working in-house, those who have set up their own firm and viewpoints from people who have work as consultants in ‘new consultancy model’ firms.

This article summaries some of the different options discussed by the panel:

In-house

Neil Parkinson from Ericsson shared his experience of working in-house and how he has found it offers the ability to work across a wide variety of technologies and projects. Working inside an organisation like this means that he doesn’t have the same requirements in terms of billing targets or client development.

In a company like Ericsson, the work is varied and seen as a key strategic part of the business but that isn’t the case everywhere. It would be important to understand the value that is attached to IP in a firm if you were considering an in-house role.

Companies like Ericsson do offer a lot in term of flexibility but clearly not to the same level of freedom that you have when working for yourself.

The advice from the panel when considering in-house roles is to ensure that the work is going to remain interesting, that there is a good team in place that you can feel part of, and that IP is seen commercially important.

Setting up your own firm

For some attorneys this can feel like a very attractive option. It can offer a level of autonomy and it provides the ability to build a firm in the way that suits them. It can however create additional responsibilities and stress especially if that firm grows and begins to take on employees.

Phil Sanger who has recently started a firm on his own after leaving the previous firm that he founded, said working for yourself is exciting and helps to teach you a lot about running a business which you don’t see in private practice or when working in-house. This learning curve can be hugely rewarding and fulfilling. It can also be very stressful though, and can result in working long hours. Both Phil and Anna, who has also founded two firms before developing Two IP, said that there is a lot more to running a patent and/or trade mark firm than you first think and as the business owner it is up to you to do all of the business admin. This often means that you are taken away from doing the client work you enjoy, and instead are required to focus on the back-office and management work that running a business requires.

Consultant at a ‘new consultancy model’ firm

New consultancy model firms have developed and operate very successfully in other areas of the legal profession. Two of the experts on the panel are consultant solicitors at two law firms that operate the new consultancy model and were able to share their experiences of this new breed of firm. Deborah Niven from Gunnercooke and James Daglish from Keystone Law both discussed their appreciation of the freedom that working as a consultant at this new type of firm gives them. This freedom goes beyond office flexibility. They are in complete control of how and when they work, which allows them to manage their lives much more easily than they did before.

As with any self-employed position, it does require a leap of faith and a confidence that you will find clients but neither of them had found that to be an issue. Having the support of the central infrastructure, systems and network has allowed them to focus on doing the work they enjoy and bringing clients on board, without the constraints of being employed.

Two IP operates a very similar model to Gunnercooke and Keystone Law, but for the patent and trade mark profession, said her experiences were the same. The new consultancy model with its fee share structure means that attorneys can earn the same or even more than in private practice employment but with less work. The reason she founded Two IP was to give patent and trade mark attorneys the ability to benefit from this way of working.

A recording of the webinar can be found on the CIPA website here and is free to access for CIPA members – just click on ‘Purchase Past Recording Access’ and login to the CIPA website.

If you are a patent or trade mark attorney interested in finding our more about how being a consultant at Two IP works, then you can find all the details here.

EPO consulting users about a “grace period” for patents

The European Patent Office (EPO) is consulting users about the novelty requirement under the European Patent Convention (EPC) and the lack of a so-called “grace period” in the European patent system, in what appears to be the start of the EPO considering whether to introduce a “grace period” into the EPC.

Scope of the EPO’s survey

The survey, which will explore the impact of the strict novelty requirement on the filing and business practices of EPO applicants, will be complemented by a consultation of user and stakeholder associations. The survey will focus on users’ experiences of the current novelty requirement under the EPC.

The survey participants have been selected from a random sample of EPO applicants selected from the latest published patent documents. Participants will be asked about their organisations’ patenting activities in Europe and how they currently deal with the EPC’s strict novelty requirement when filing patent applications at the EPO. The EPO will also present participants with a number of different grace period options and ask for their thoughts on each.

The EPO’s survey aims to understand:

– How different categories of EPO applicants manage the strict novelty requirement
– How this requirement impacts disclosure and patent commercialisation strategies
– What effect different grace period scenarios might have

What is a “grace period”?

One of the most important features of the EPC is the strict novelty requirement which means that an invention must not have been publicly disclosed prior to their earliest filing date. Under some patent systems, most notably the US, this strict novelty requirement is partly mitigated to allow inventors to make disclosures of their inventions during a “grace period” of, for example, six or twelve months prior to filing their patent application. During such a “grace period” an invention can be disclosed to the public without losing its novelty, so that the invention remains patentable.

The resulting feedback will be published by the EPO in the spring of 2022.

5 ways to improve how you manage your IP

Managing your intellectual property (IP) can seem like a daunting task at times. However, it can be easier than you think. We’ve put together 5 simple things you can do to make IP portfolio management easier and more efficient.

  1. Request client access to your attorneys’ case management system – this contains details of all of your applications and granted patents, trade marks etc, plus upcoming deadlines, all in one place (and it will be regularly updated)
  2. Ask your attorney to set up a regular (monthly/quarterly) meeting to discuss outstanding actions and upcoming deadlines – it’s a really efficient way to instruct your attorney.
  3. Form a patent board to review new invention disclosures and make decisions on whether to file patent applications – to be most effective you need to have the key decision makers on the patent board (usually CTO, CFO, IP manager/responsible) and meet regularly (monthly or quarterly, depending on how many inventions are being reported)
  4. Write a patent filing strategy detailing where (and whether) you will file patent applications for different areas of technology – next time you have a decision to make about where to file a patent application all you need to do is refer to your strategy. Ask your patent attorney to help you do this, looking back at what you have done before and what your business strategy is for the next 3-5 years
  5. Provide an Invention Disclosure Form for your engineers to complete to report details of new inventions to the patent board – your patent attorney can provide you with one that includes guidance on what they should include, so that the patent board has all the information it needs to make a decision and your attorney has all the information they need to draft a patent application.

If you’re looking for further advice on how to manage your IP portfolio or if you would like a template Invention Disclosure Form that you can use, email us hello@two-ip.com we will be happy to help.

What next for Artificial Intelligence and IP Protection?

AI (Artificial Intelligence) based innovation is increasing rapidly, as is the number of patent applications filed for AI based inventions, with the number of applications filed at the European Patent Office (EPO) quadrupling in the last five years.

The UK government has also launched a National AI Strategy, a “ten-year plan to make Britain a global AI super power” intended to make AI technologies “central to our development as a global science and innovation superpower”. The strategy states that an effective Intellectual Property (IP) system is fundamental to achieving its ambition of being a “science superpower” and the UK Intellectual Property Office (UK IPO) is considering how AI impacts on the existing UK intellectual property framework and what impacts it might have for AI in the near to medium term.

Alongside this however, the Court of Appeal has ruled that an AI system cannot be an inventor on patent applications because it isn’t a person. So what will the future of IP protection for AI innovations look like?

What is AI?

AI (Artificial Intelligence) is the ability of a machine to display human-like capabilities such as reasoning, learning, planning and creativity. After receiving data, the computer processes and responds to it by distinguishing its environment, handling what it has distinguished, solves problems and acts to achieve a specific goal. AI systems can adapt on their own by surveying the effects of previous actions and independently choosing the next action to take to solve the problem.

In 1950, renowned mathematician Alan Turing changed history with a simple question: “Can machines think?”

AI and Innovation

Bringing Turing’s question into today’s world, AI exists that can support innovation and creativity. It can assist in enabling new human inventions and creations. Some believe that AI will soon be able to invent and create things in a way that makes it impossible to identify the human input in the final invention or work. But can AI truly create its own intellectual property (IP)? Can AI invent things and should an AI system be allowed to be an inventor on a patent application?

Questions have also been raised on the balance in the copyright system between the protection of human works and AI created works. What should happen to copyright in works created by AI? Should AI created works be protected by copyright and who should own it?

To look at these questions, the UK IPO carried out a public consultation in 2020. Most responses to the consultation visualized a positive future where AI supports human researchers, creators and inventors in the development of new technologies. However, there were some stark warnings that AI could take the humanity out of the creative process and harm the human creators that IP is designed to protect and reward. There was also a consensus that AI itself should not own IP rights.

Currently, it is possible to patent AI based inventions as computer programs – there are specific ways you need to define the invention in the patent claims though, to meet the EPO’s requirement for a “further technical effect”.

The DABUS case

In 2019, a team of academics lead by Dr Stephen Thaler filed patent applications naming an AI system called DABUS as the inventor.

The UK patent application was refused by the UK IPO on the grounds that DABUS could not be considered to be an inventor because it is not a person – the UK Patents Act 1977 restricts inventorship to “natural persons”, so an AI system cannot be an inventor. Dr Thaler appealed the UK IPO decision through the Court of Appeal, but it agreed with the UK IPO and ruled that DABUS didn’t qualify as an inventor because “it wasn’t a person”.

The EPO also recently refused the European DABUS patent application. The applicant argued in the application that the inventions had been autonomously created by DABUS but the EPO concluded that only a human could be an inventor within the meaning of the European Patent Convention, EPC, as designating a machine as the inventor did not comply with requirements of the EPC. Also, the EPO ruled that a machine could not transfer it’s rights in an invention to the applicant because as a machine, it lacks the required legal capacity to do so.

The DABUS patent application has also been filed in other jurisdictions. The South African patent court held that the DABUS machine could be an inventor and the patent should be granted and IP Australia has decided that the rights to the DABUS patent could be assigned to the AI system’s owner and creator, Dr Thaler. The US patent court, like the UK and the EPO, have also refused the patent applications on the grounds that an AI system cannot be an inventor.

What will the future of IP protection of AI look like?

In October 2021, the UK IPO published another consultation to seek evidence and views on a range of options on how AI should be dealt with in the patent and copyright systems. The UK IPO is interested in views on whether AI-devised inventions should be protected, and if so, how should they be protected. Given that the UK Government’s National AI Strategy includes the IP system, the responses to this consultation could prove be to very influential on how AI based inventions and copyright works can be protected in the future. We’ll report further when the results of the consultation are published

Two IP attorneys are experts on protecting “computer implemented inventions” and can advise on protecting AI based inventions.