Inside IP - Venner Shipley
←
→
Page content transcription
If your browser does not render page correctly, please read the page content below
Inside IP Venner Shipley’s Intellectual Property Magazine Spring/Summer 2015 Patent protection for video game technology Can patents in the video game industry be used to greater advantage than they currently are? PAGE 4 More broccoli (patents), Protecting non-conventional An overview of please! trade marks design law Page 12 Page 16 Page 26 European Patent & Trade Mark Attorneys
What’s inside?
An update on SPCS – Page 4
Dan Day and Catrin Petty update on important decisions regarding Supplementary
Protection Certificates.
Video Games, tax and intellectual property – Page 8
Jan Walaski explores the beneficial environment enjoyed by the video games sector in the
UK, including the specific tax relief available to the sector.
Patent protection for video game technology – Page 9
Rob Cork investigates whether patents in the video game industry might be used to greater
advantage than they currently are.
Patent box update – page 11
More broccoli (patents), please! – Page 12
Sian Gill updates on two new decisions announced by the Enlarged Board of Appeal of the
European Patent Office (EPO) with regards to plant patents.
Data Mining – Page 14
Paul Derry discusses the challenges that can arise when attempting to patent data mining
inventions at the EPO.
Protecting non-conventional trade marks – Page 16
Nora Fowler highlights cases where non-conventional trademarks have been applied for.
Warner-Lambert v Actavis – Page 18
Tim Russell highlights the Warner-Lambert v Actavis case, where the infringement of Swiss
type medical use claims has been questioned for the first time at the UK high court.
eBay succeeds in its cancellation action against “BEAUTYBAY” marks – Page 20
An ongoing dispute between eBay and Dotcom demonstrates once again that achieving
registration of a trade mark is not the “be all and end all” of trademark protection if the
mark was already at risk when filed; Yoann Fouquet discusses.
The Enlarged Board of Appeal’s decision on clarity in opposition proceedings – Page 22
The EPO’s Enlarged Board of Appeal has recently issued a major decision, on the extent to
which the clarity of claims should be examined during opposition proceedings. The decision
confirms that clarity is only to be examined to the extent that an amendment introduces a
clarity issue to the claims; Katie Cowley and Steven Cuss explain further.
Venner Shipley News – Page 24
Update on the EPO – Page 25
Matt Handley explains the recent goings on at the European Patent Office.
An overview of design law – Page 26
George Hudson recaps on the fundamentals of the Intellectual Property Act 2014
surrounding the various forms of design protection available in the UK, and explains some
of the more important changes introduced by the Act.
Toxic priority and poisonous divisionals – Page 29
The related concepts of “toxic priority” and “poisonous divisionals” have caused a great deal
of recent debate; Tanya Heare discusses.
2
www.vennershipley.co.uk
A word from the editor
This issue brings the end of an era. Matthew Read, who many of you
will know, will be stepping down from the role of Senior Partner on
30 June 2015 to take on a more ambassadorial role for the firm. The
whole of Venner Shipley would like to thank Matthew for his immense
contributions to the firm over the last 30 years.
This is not the only change at the top, with Jan Walaski taking over from
Tim Jump as Managing Partner on 1 July 2015, and Tim taking the role of
Senior Partner. Once he is bedded into the role, I am sure Jan would like
to use these pages to set out his vision for the future. For now, I would like to wish him the
best and thank Tim for the sterling job that he did for the firm.
Our cover topic this issue is patents in video games. On pages 8 to 11 Rob Cork discusses
various issues surrounding obtaining patents for video games and Jan Walaski discusses
ways the UK is incentivising this sector.
In the rest of the issue, there is a thorough update on SPCs by Dan Day and Catrin Petty on
pages 4 to 7, and an important update for those interested in protecting plants and plant
produce on pages 12 and 13 from Sian Gill. Paul Derry discusses patents for data mining
on pages 14 and 15, and Tim Russell reviews an important case relating to medical use on
pages 18 and 19. There is also a comprehensive article on the sometimes confusing subject
of “toxic priority” by Tanya Heare on pages 29 to 31.
On the trade mark side, Yoann Fouquet discusses a successful cancellation action against
a registered trade mark, and provides some useful advice for rights holders. There is also a
useful review of design law in Europe on page 26 to page 28 by George Hudson.
Simon Taor
Partner
About Venner Shipley:
Venner Shipley is a leading firm of European patent
and trade mark attorneys, representing a broad
range of clients including major domestic and
international corporations, SMEs, universities and
individual inventors.
We are ranked among the best firms in both patents
and trade marks by the Legal 500, Chambers
Directory and Managing Intellectual Property
Magazine and we pride ourselves on our high
standards of service and quality.
3
An update
on SPCs
We last reviewed the case law affecting
“Many of these
supplementary protection certificates (SPCs) in our products have
Spring/Summer 2014 issue of Inside IP. A number enormous
of important decisions have since issued and we commercial value
take this opportunity to provide an update. and this value could
be under threat
As many readers will be aware, SPCs • the product must not have been if biosimilar and
were introduced by the European the subject of a previous SPC
Union (EU) in the 1990s to provide (Article 3 (c)). biobetter products
a greater incentive for research and
development into pharmaceutical These seemingly straightforward
are deemed not to be
products by allowing companies requirements have raised a number covered by SPCs.
to effectively obtain an extension
of patent protection. SPCs extend
patent protection where it has not
of important questions. For instance,
what exactly constitutes placing a
product on the market? And, if a first
”
been possible for the proprietor to product is the subject of an SPC, may
market the patented product because a second product, which differs from
of delays in obtaining regulatory the first only by comprising a further
approval. However, an SPC is a active ingredient, be the subject of
separate right to a patent and does an SPC?
not extend the duration of a patent
as a whole. An SPC comes into force The following decisions
at the end of the term conferred by made within the last
the patent and can only extend the few months help to
duration of the proprietor’s monopoly answer some of
of the medicinal product for which these questions.
regulatory approval has been
obtained.
According to the SPC Regulation of
the EU, the following conditions must
be satisfied in order to obtain an SPC:
• the product must be protected by a
basic patent (Article 3 (a)),
• a valid marketing authorisation
must have been obtained to place
the product on the market (Article
3 (b)),
• the product must not have been
placed on the market before
obtaining the valid marketing
authorisation (Article 2),
4
www.vennershipley.co.uk
Arne Forsgren v The first question was whether, The third and final question was
assuming all other conditions are whether an SPC may be granted
Österreichisches Patentamt met, an SPC may be granted for a for the substance protected by the
(C-631/13) medicinal product containing an basic patent where the marketing
European Patent No. 0594610 B1 active ingredient protected by a basic authorisation only describes the
was granted in September 1998 to patent if the product only contains the substance as a “carrier” for the actual
Arne Forsgren. The patent protects active ingredient covalently bonded to active ingredient, but where the
an IgD-binding protein (“protein D”) another active ingredient, but where substance, as an adjuvant, enhances
and describes how the protein may the active ingredient nonetheless the effect of the actual active
be used as a vaccine for H. Influenzae. retains an effect of its own. ingredient.
Mr Forsgren applied for an SPC at the
Austrian Patent Office in September The CJEU concluded that it is possible, The CJEU said that it may be possible
2009. in principle, for an SPC to be granted for an SPC to be granted under these
under these circumstances. More circumstances. More specifically, the
The Austrian Patent Office refused to specifically, the Court decided that Court decided that an SPC may be
grant an SPC for protein D because the SPC Regulation does not preclude granted only if it is established that
the medicinal product covered by the an SPC being granted where the the substance, as a carrier protein
marketing authorisation on which active ingredient of the basic patent covalently bonded to a polysaccharide
the application was based does not is covalently bonded to another antigen in the medicinal product,
contain protein D per se. Regulatory active ingredient in the medicinal produces a pharmacological,
approval had only been obtained for product covered by the marketing immunological or metabolic action
the medicinal product, Synflorix®, authorisation. of its own which is covered by
a vaccine for S. pneumonia in which the therapeutic indications of the
protein D is a carrier molecule The second question was whether an marketing authorisation, this being up
covalently bonded to a polysaccharide SPC may be granted for the substance to the national Court to decide.
antigen. covered by the basic patent where
the substance has a therapeutic In summary, this case has helped
Mr Forsgren twice appealed the effect of its own (i.e. as a vaccine for to clarify the extent to which the
decision. This led to three questions H. Influenzae in this case) but where molecule covered by a basic patent
being referred to the Court of Justice the marketing authorisation for the must correspond to molecules
of the European Union (CJEU) on the medicinal product does not relate to present in the medicinal product for
interpretation of the SPC Regulation this effect. which regulatory approval has been
of the EU. obtained. The CJEU has established
The CJEU came to the conclusion that that an SPC can be granted for the
it is not possible for an SPC to be molecule of a basic patent even if
granted under these circumstances. the molecule is covalently bonded
More specifically, the Court decided to another chemical species in the
that the SPC Regulation precludes medicinal product – but only if certain
the grant of an SPC for an active conditions are met.
ingredient whose effect does not fall
within the therapeutic indications Actavis v Boehringer
covered by the wording of the
marketing authorisation. (C-577/13)
Boehringer Ingelheim Pharma GmbH
& Co. KG filed European patent
application no. 92101579.8 on 31
January 1992, and the application
eventually granted as EP 0502314 B1
on 20 May 1998. The claims of the
patent protect a number of active
molecules, one of these being a
molecule known as telmisartan.
Marketing authorisation was obtained
in December 1998 for a medicinal
product, Micardis®, a drug for treating
hypertension containing telmisartan
as the sole active ingredient.
Boehringer was therefore able to
obtain an SPC for Micardis®.
The expiry date for an SPC is
calculated as the earlier of five
years from the normal expiry date
of the basic patent or fifteen years
from the date of the first marketing
5
authorisation in the European protection certificate, as well as
Economic Area (EEA). Accordingly, a subsequent claim to a product
the SPC for Micardis® expired in comprising a combination of that active
December 2013 – fifteen years ingredient and another substance, that
from the date that the marketing provision precludes the holder from
authorisation was granted. obtaining a second supplementary
protection certificate for that
In April 2002, a second marketing combination.
authorisation was granted for another
medicinal product, Micardis Plus®, It is not altogether clear what is meant
a drug for hypertension containing by the term “sole subject matter of
telmisartan and a further active the invention”. Due to the post grant
ingredient, hydrochlorothiazide. amendment, EP 0502314 B1 claims
the combination of telmisartan and
Boehringer applied to the United hydrochlorothiazide, so it is not
Kingdom Intellectual Property Office entirely clear if this combination Pharmaq v Intervet
(UKIPO) for a second SPC to cover comprises “subject matter of the (E-16/14)
Micardis Plus®, but an objection was invention”.
Intervet International BV developed
raised by the UKIPO that EP 0502314
a vaccine against viral pancreatic
B1 did not include a claim drawn In the present case,
disease in salmonid fish, based on
to the combination of telmisartan hydrochlorothiazide has been
an inactive virus strain isolated from
and hydrochlorothiazide, and so the known since 1958, and the judgment
pancreatic disease infected salmon
new product could not be said to suggests that the parties had agreed
in Ireland. The virus strain is the first
be protected by a basic patent, as that telmisartan constituted the “sole
of six strains of Salmonid Alpha Virus,
required by Article 3 (a) of the SPC subject matter of the invention”.
and is referred to as SAV-1. Intervet
Regulation.
obtained a European patent, as well
Due to the decision of the CJEU,
as patents in the United Kingdom and
However, while there was no claim and in light of the agreement
Norway, for the virus.
to the combination per se, there between the parties that telmisartan
was basis in EP 0502314 B1 for such constituted the “sole subject matter
From 2003 to 2011 Intervet sold its
a claim. Accordingly, Boehringer of the invention”, it is likely that the
vaccine, Norvax® Compact PD, in
successfully applied to the UKIPO High Court will rule that Boehringer’s
Norway and Ireland under “Special
to amend the patent post-grant by second SPC is invalid.
Approval Exemptions” granted by the
inserting a new claim defining the
State Medicines Agency in Norway
combination of telmisartan and In summary, it appears that it is not
and a corresponding scheme in
hydrochlorothiazide. The SPC for possible to obtain a second SPC for
Ireland. Additionally, in 2005 Intervet
Micardis Plus® was allowed in light of a combination product for active
was granted, under exceptional
this new claim with an expiration date ingredients A and B where the basic
circumstances, a provisional
in January 2017 – five years after the patent has already been used to
marketing authorisation in the United
date when the patent would expire. apply for a first SPC for a product
Kingdom.
comprising active ingredient A as
Actavis UK Ltd subsequently alleged the only active ingredient, unless the
Intervet obtained a marketing
that Boehringer’s SPC for Micardis combination constitutes part of the
authorisation in Norway on 18 August
Plus® was invalid and started subject matter of the invention.
2011 and on this basis were able
revocation proceedings. In the course
to obtain an SPC in Norway. The
of these proceedings, four questions However, the fact that the term “sole
provisional marketing authorisation
were referred by the High Court to subject matter of the invention” is not
granted in the United Kingdom
the CJEU. In summary, the questions defined, renders the judgment slightly
was viewed as the first marketing
asked whether the first SPC precludes unclear. Accordingly, where a first
authorisation in the EEA, and the SPC
the grant of the second SPC, and SPC has been granted for a product
was therefore given an expiry date in
whether it is allowable to obtain an comprising active ingredient A, before
2020.
SPC by amending the basic patent deciding whether to apply for a
after grant to enable the patent second SPC for a combination product
Intervet’s marketing authorisation
to cover the medicinal product for A and B the basic patent should be
was granted for “Inactivated Salmon
which regulatory approval has been reviewed to determine whether it can
Pancreatic Disease Virus Strain F93-
obtained. be argued that the combination of
125”. However, the SPC granted by
A and B, is inventive and/or that B is
the Norwegian Patent Office used
On 12 March 2015 the CJEU issued a inventive per se.
the broader terms which were used
decision:
in the patent claims, and which go
Frustratingly, the CJEU did not address
beyond the scope of the marketing
Where a basic patent includes a claim the questions concerned with post-
authorisation, encompassing
to a product comprising an active grant amendment of the claims.
genetically distinct viruses.
ingredient which constitutes the sole Accordingly, we shall have to wait for
subject matter of the invention, for further decisions to issue before we
The validity of the SPC and its scope
which the holder of that patent has can conclude whether SPCs obtained
was challenged before the Oslo
already obtained a supplementary in this way are allowable.
6
www.vennershipley.co.uk
District Court (Oslo tingrett). This of a marketing authorisation would interesting to see whether the Oslo
case raised six questions which were not affect the validity of the SPC. The District Court will follow the EFTA
submitted to the European Free Trade circumstances are complicated in this reasoning, especially as it appears to
Association (EFTA) Court. The Court particular case, with Intervet having have introduced a new requirement
was not able to make a referral to made substantial sales before the for interpreting the scope of Article
the CJEU because Norway is not a grant of the marketing authorisation 4, namely whether the same active
member of the EU. and also having had the opportunity ingredient in another, separate
to compile clinical data for over product would have “therapeutic
The Oslo District Court sought seven years before the grant of a full effects falling within the therapeutic
guidance on whether the SPC is marketing authorisation. indication” for which the marketing
invalid given the circumstances under authorisation was granted. This
which the product, Norvax, had been Article 4 of Directive 2001/82 of the test is not derived from the SPC
“placed on the market” prior to an EU provides that an SPC “shall only Regulation but may be found in the
administrative authorisation. extend to the product covered by the CJEU’s decision in Forsgren, C-631/13
authorisation” and Recital 9 of the (discussed above).
In addition, the court also asked SPC Regulation confirms that the
whether the SPC was invalid since the protection granted should be “strictly The impact of the EFTA Court’s
broad wording of the granted SPC confined” to the authorised product. judgment on other biological products
extends beyond the “product covered remains unclear. Many of these
by the authorisation to place the The EFTA Court ruled that the scope products have enormous commercial
corresponding medicinal product on of protection conferred by an SPC value and this value could be under
the market”. More specifically, whilst can extend to cover a specific strain threat if biosimilar and biobetter
the authorisation was limited to the of a virus covered by the basic products are deemed not to be
SAV-1 virus, the wording of the SPC patent (even if it is not referred to covered by SPCs. Future referrals to
covered other virus strains (which are in the marketing authorisation), but the CJEU on the scope of protection
genetically distinct and, whilst having only if the specific strain constitutes of Article 4 are therefore inevitable,
an equivalent therapeutic effect, “the same active ingredient as the and we will keep you informed of
are subject to a separate marketing approved medicinal product” and has developments.
authorisation). “therapeutic effects falling within the
therapeutic indications for which the
The EFTA Court ruled that given marketing authorisation was granted”.
the restrictions on the supply of a
medicinal product under the first The EFTA Court noted that the SPC
paragraph of Article 8 of Directive granted to Intervet is expressly limited
2001/82 of the EU, any product to the F93-125 strain and it confirmed
supplied in light of permission that an SPC can only be granted for
granted in accordance with national the active ingredient in the product
provisions implementing this Directive which is the subject of the relevant
is not viewed as having been placed marketing authorisation. An SPC is Dan Day
on the market within the meaning of invalid to the extent that it is granted dday@vennershipley.co.uk
Article 2 of the SPC Regulation. with a wider scope than the marketing
authorisation.
The EFTA Court left it to the referring
Oslo District Court to determine The issue of the scope of the SPC
whether the “special approval will now be considered by the Oslo
exemptions” in Norway and Ireland District Court, based upon the facts of
were issued in accordance with this case.
national provisions implementing
the first paragraph of Article 8 of Unlike the situation where questions
Directive 2001/82, in which case the are referred to the CJEU, the referring
supply of Norvax® Compact PD in court is not actually bound by the Catrin Petty
Norway and Ireland prior to the grant decision of the EFTA Court. It will be cpetty@vennershipley.co.uk
7
Video gaming has rapidly developed from primitive
graphics on early computers and arcade consoles
to a global industry that is worth tens of billions of
pounds. The UK is a major player in this industry,
and the UK government recognises the cultural
and economic contribution that it makes to the UK
through policies aimed at promoting the sector.
This article explores the beneficial
environment enjoyed by the video
games sector in the UK, including
the specific tax relief available to the
sector, and, in conjunction with Rob
Cork’s article on Patent Protection
for Video Game Technology, explores
whether patents might be used to
greater advantage than they currently
are. contribution, the location of the
Encouraging and game’s development and
nationalities of key personnel
protecting investment working on the project.
Governments have many tools at
their disposal to promote industries While this specific tax relief
companies that carry out research
that are considered beneficial to their has been widely welcomed by
and development activities in science
country – these include intellectual companies who are able to meet the
and technology. More recently, the
property laws and tax policy. “culturally British” requirement, the
Patent Box scheme, which applies
a lower rate of corporation tax relief available from the Patent Box
Intellectual property laws exist to scheme mentioned above should not
to profits derived from patented
protect, and therefore in turn to be dismissed, since patents may well
inventions, is aimed at encouraging
promote, innovation. In the field of be available on video game technology
companies to commercialise their
video games, copyright ensures that in appropriate circumstances. The
patents and R&D in the UK. More
the contribution made by developers accompanying article by Rob Cork
information on the Patent Box
cannot be misappropriated, for explores the extent to which patents
Scheme can be found on page 11.
example through copying of are available for video games and
substantial elements or wholesale related technology.
piracy. Of course, legal action needs New video games tax relief
to be taken against infringers to On 19 August 2014, a new industry
enforce such rights. specific tax relief came into force,
allowing UK video games companies
More direct financial incentives are to claim up to 25% tax relief on
provided by the UK government their production costs. To ensure
to promote innovation, using tax that the relief is properly targeted,
policy to encourage investment in it is only available to companies
economically beneficial industries. producing games that are certified
One example of this is the long- as “culturally British”. To achieve this,
standing R&D tax credit scheme, video games are assessed based Jan Walaski
which provides tax credits to on their cultural content, cultural jwalaski@vennershipley.co.uk
8
www.vennershipley.co.uk
Patent
protection for
video game
technology
Patent law in Europe precludes patents being granted
for inventions in which the only novelty lies in the use of
computer software, the manner in which information
is presented, or a method of playing a game.
On the face of it, it might seem that Usually, to determine where the Nevertheless, some insight can be
these statutory exclusions would boundary between patentable and gleaned from looking at granted
make it difficult, if not impossible non-patentable subject matter lies patents relating to computer game
to obtain patents relating to video in a particular field, we would turn to features. Even though their validity
games in Europe. However, it is the guidance of national courts or the may not have been tested in court
well-established that new software EPO Boards of Appeal. Unfortunately, proceedings, granted patents still
can be patentable when it produces there is precious little case law in the provide useful examples of features
a technical effect, and there are field of computer game patents, the that EPO examiners have found to be
numerous examples of patents notable exception being the KONAMI both technical and inventive.
having been granted for novel case (T0928/03). [See below]
technical features in computer games.
KONAMI/Video Game System and Storage Medium T0928/03 (2006)
The inventive feature in this case concerned a ‘guide area around the active player character; on the other
mark’ (labelled ‘G3’ in the accompanying figure) to hand, the physical limits of the computer monitor
denote a character to which the player can pass may mean that the available display area is then too
the ball. When the character moves off-screen, the small to show the entire field of play.
guide mark continues to be displayed at the edge
of the display screen to indicate the location of the
off-screen character. In deciding to grant the patent
application, the Board of Appeal drew an important
distinction between an objective that may be dictated
by game rules, which is not in itself patentable,
and the technical means by which the objective is
realised, which may well be patentable. In the words
of the Board of Appeal: “while the fact that the team
mates’ locations should be known by the user may
be regarded as a direct consequence of the game
rules, the technical realisation of how such locations
are made known is not related to the game rules.”
The Board of Appeal held that the guide mark was
a technical feature, since it addressed conflicting
technical requirements: on the one hand, there is a
desire to display a zoomed-in portion of the playing
9
SEGA (EP0773515 B1)
In this case, the invention focus of the player’s attention.
concerned methods and apparatus For example, when a character
for displaying objects formed in a football game receives the
from multiple polygons, such as ball it can be assumed that the
player characters. SEGA’s patent, character will become the focus
which claims a priority date of of the player’s attention, and so
27 April 1995, dates from a time the number of polygons used to
when processing power was much display the character is increased.
more limited. To avoid having to
manipulate a large number of Clearly, reducing the number of
polygons, the invention used a polygons for objects that are not
reduced number of polygons for the focus of attention involves
objects on the screen by default technical considerations, and
(Fig. 9a, below), and only increased provides a technical benefit by
the number of polygons to reducing the processing burden.
provide a more detailed character The examining division concluded
model (Fig. 9b) when that model that this constituted a patentable
becomes, or is to become, the invention.
Video game litigation Philips held patents for various Another notable case is the US
interface methods which were not case of Immersion v. Sony, in which
While early computer games were
specifically directed to gaming, but Immersion successfully sued Sony
controlled by keyboard or joystick,
were successful in proving that the for infringement of patents relating
in recent years numerous different
Wii console infringed these patents. to mechanisms for providing haptic
consoles have appeared with unique
In addition to the legal content, the (vibration) feedback in games
control mechanisms – the Microsoft
case provides a fascinating analysis controllers. The lawsuit concerned
Kinect sensor and the Nintendo Wii
of many of the seminal arcade and Sony’s PlayStation 2 controller and
balance board are two innovative
console games from the 1980s and may have influenced Sony’s decision
examples. The Wii console system
1990s, from Sega’s “Heavyweight to subsequently remove the vibration
was the subject of UK litigation in
Champ” through to id Software’s feature from the PlayStation 3
Philips v. Nintendo [2014] EWHC 1959.
“Doom”. controller, although at the time
Konami (EP2216079 B1)
In this case, the invention However, Konami’s invention data has been output, the value
concerned the synthesis of speech solved the problem in a different of T begins increasing to record
in a video game, for example way, by simply setting an index the time elapsed since the speech
commentary during a football to 0 for a particular piece of was previously outputted. The
game. The goal of the invention speech data if that data has examining division considered
was to allow the speech to be not yet been outputted during this to constitute a patentable
modified when a certain event the game. If the index remains invention, on the basis that it
occurs more than once, for at 0, the system assumes that reduced the processing burden
example by outputting “Goal!” the event associated with that required to determine whether
when a first goal is scored, and particular speech data has not a particular in-game event had
“Another goal!” when a subsequent yet occurred. Once the speech occurred previously.
goal is scored, to provide more
realistic commentary. One
possible solution would be to
maintain a detailed record of all
previous activity that has taken
place in the current game, such
as position data and performance
data for each character. When
a certain event was judged to
have occurred, the stored data
could be analysed to determine
whether that event had occurred
previously.
10www.vennershipley.co.uk
“Techniques to allow
a user to interact with
game software are among
the most likely to achieve
Patent
patent protection.
” Box
Electronic Arts (EP1299163 B1)
The invention in this case related
to the provision of episodic game
patentability under European
patent law. The issue of
update
content, in which a player is
permitted to download the next
excluded-matter in this case was
debated during oral proceedings
The Patent Box
module of game content once before the examining division, scheme came into
they reach a certain point in the
game. Specifically, the invention
in July 2009. The examining
division came to the conclusion
force in the UK in April
concerned episodic reality-based that the problem of controlling 2013, and reduces
games, where the game-maker and synchronizing progress of
might want to incorporate current players in a game was technical
the UK corporate tax
events into the next episode. As in nature, and that the solution rate on profits that a
such, it was important to ensure defined in claim 1, expressed
that all players reached the same as “making available clues company derives from
point in the game at a similar required to proceed to a next patented inventions
time. The invention addressed stage available only on a time
this problem by providing a basis”, constituted a patentable down as far as 10%.
centralized server which controls invention. This provides a strong
the pace of the game by making
clues available to players who are In this case, the examining incentive to protect
lagging behind, ensuring that all
players reach the same points in
division appears to have
followed similar reasoning
innovations in the UK.
the game in approximately the to that in the KONAMI case
same time. discussed above (T0928/03), by Patent Box has been successful
drawing a distinction between and has increased the importance
At first glance, the invention an objective which arises as a of patents to UK companies. The
might appear to be nothing consequence of the game rules, scheme has, however, attracted
more than a method of playing and the technical means used to some criticism from other EU
a game, which is excluded from realise that objective. member states on the basis that it
could potentially breach EU rules by
providing an incentive for profits to
be shifted artificially to the UK from
Sony claimed that this was due to game software are among the most other countries in order to benefit
technical incompatibilities between likely to achieve patent protection from the reduced tax rate.
the haptic feedback generator and – the recent emergence of virtual
in-built motion sensor. The parties reality headsets such as Oculus Rift, Towards the end of 2014, Germany
finally settled in 2007, with Sony Microsoft Hololens and the Google and the UK agreed to changes
agreeing to pay Immersion around Glass project, being a case in point. to the Patent Box. The current
$150m including damages, costs and Patents not only provide protection scheme, that is open to all, will
compulsory license fees. This case for the invention, but also open be closed to new entrants in
illustrates that patents for video- up the possibility of favourable 2016 and will close completely in
game related technology can have tax treatment, as discussed by Jan 2021. Far from being the end of
significant commercial value. Walaski in his article Video Games, Tax the Patent Box, it is anticipated
and Intellectual Property. that the existing scheme will be
Conclusion replaced by a new scheme that is
open to companies that carry out
Video gaming continues to evolve a minimum amount of R&D in the
and spread onto any technical UK. The proposals are expected to
platform that can support it, including take shape over the course of 2015.
mobile and, more recently, wearable
devices. Many developments As a result, any reports of the
associated with such platforms have “death” of the Patent Box appear
applications in gaming and can be to be exaggerated, and it is likely
protected by patents, in the US, that these changes will have little
Europe and elsewhere. Techniques Robert Cork effect on UK companies using the
to allow a user to interact with rcork@vennershipley.co.uk scheme.
11More broccoli
(patents), please!
Two new decisions of the Enlarged The two decisions are virtually identical and they
offer some welcome clarity to the interpretation
Board of Appeal of the European Patent of Article 53(b) of the European Patent
Office (EPO) were published on 25 March Convention (EPC), which specifically excludes
from patentability plant and animal varieties and
2015 and they represent good news for essentially biological processes for the production
of plants and animals.
those wishing to patent plants and plant
produce in Europe. The background – Broccoli and
Tomato Part I
Two European patents have faced close scrutiny
following their grant and subsequent opposition
by third parties. Both have now twice given rise
to questions on the interpretation of the law in
this area, which have been answered in Enlarged
Board of Appeal decisions.
In the so-called “Broccoli” case, a European patent
(EP1069819) was granted with claims directed
to a method for the production of broccoli
with elevated levels of certain compounds
by crossing one of two wild broccoli species
with another broccoli breeding line and then
selecting the progeny with the aid of molecular
markers predictive of the presence of the desired
compounds. There were also product claims in the
originally granted patent.
In the so-called “Tomato” case, a European patent
(EP1211926) claimed a method involving crossing
tomatoes, allowing the fruit on the resultant plants
to remain on the vine past the point of normal
ripening and screening for reduced fruit water
content as indicated by extended preservation
and wrinkling of the fruit’s skin, by performing
a visual inspection. This patent also included
product claims when it was granted.
These patents both therefore claimed processes in
which crossing and selection steps are enhanced
or completed by a further step of a different
nature. In both cases, patents were granted and
opposed by third parties who argued that the
claims contravened Article 53(b) EPC because the
processes included classical breeding steps.
In the Enlarged Board of Appeal decisions G
2/07 and G 1/08, it was held that a process for
the production of plants which is based on
the sexual crossing of whole genomes and on
the subsequent selection of plants, in which
human intervention, including the provision of
a technical means, serves to enable or assist the
12www.vennershipley.co.uk
performance of the process steps,
remains excluded from patentability
The revised Broccoli and Tomato
patents were once more considered
“Although individual
as it remains an essentially biological
process. A breeding process thus
by the Enlarged Board of Appeal of
the EPO and the patentability of their
plant varieties are
remains a breeding process even product claims was confirmed in the not patentable,
if technical steps, such as marker- recently published decisions.
aided selection, are incorporated into plants in general
it and it should not be possible to The Enlarged Board of Appeal can be patented.
avoid the exclusion simply by adding
ancillary technical steps to what is
fundamentally a breeding process.
decisions G 2/12 and G 2/13
confirmed that the exclusion of
essentially biological processes for the
”
production of plants in Article 53(b)
As a result, it is very difficult to obtain EPC does not have a negative effect
a patent for a method or process on the patentability of a product
which includes crossing/selection claim directed to plants or plant
steps. Even claims that begin with a material such as plant parts. Indeed,
non-breeding (e.g. transformation) a plant or plant material (other than
step but then include breeding steps a plant variety) is not excluded from
downstream have been objected to patentability even if the product is
by EPO Examiners under Article 53(b) defined in terms of the method used
EPC. to produce it (a so-called product-
by-process claim), and even if the
The new decisions – method is an essentially biological
process.
Broccoli and Tomato Part II
After the decisions on the Broccoli These new decisions from the
and Tomato patents from the Enlarged Board of Appeal confirm that
Enlarged Board of Appeal, the patent protection may be obtained
owners of both patents removed the for non-transgenic plants and plant
unpatentable method claims and the material in Europe. Such products
remaining claims related to products. should be patentable provided they
The validity of these claims was then meet the normal requirements
considered. of novelty, inventiveness and
enablement, and are not directed
The “Broccoli” case had claims towards individual plant varieties.
directed to “An edible Brassica plant
produced according to a method Although individual plant varieties
for the production of Brassica are not patentable, plants in general
oleracea with elevated levels of can be patented. In particular, claims
4-methylsulfinylbutyl glucosinolates, to plants are, in principle, allowable
or 3-methylsulfinylpropyl provided that they are drafted at a
glucosinolates, or both” with the taxonomic level higher than that of
method of production specified and a single variety, even though such
as claimed in the originally granted claims may well encompass multiple
patent. Further claims were directed varieties that could not be claimed
to an edible portion of the plant and a at an individual level. How the
seed of the broccoli plant. plants were produced, whether by
transgenic methods or by “classical”
The “Tomato” case had claims (essentially biological) breeding, is not
directed to “A tomato fruit of the relevant.
species Lycopersicon esculentum which
is naturally dehydrated, wherein
natural dehydration is defined as
wrinkling of skin of the tomato fruit
when the fruit is allowed to remain on
the plant after a normal ripe harvest
stage, said natural dehydration
being generally unaccompanied by
microbial spoilage”. Also claimed
was “A tomato fruit of the species
Lycopersicon esculentum characterized Sian Gill
by an untreated skin, dehydration sgill@vennershipley.co.uk
of the fruit and wrinkling of the skin,
said dehydration being generally
unaccompanied by microbial
spoilage”.
13Data
mining
Data mining is not new.
However, advances in mining
algorithms coupled with a
huge increase in the amount
of usable data to mine over
recent years have given rise
to very significant benefit to
humankind. This article explains
data mining at a high level,
discusses the challenges that can
arise when attempting to patent
data mining inventions at the EPO,
and provides practical suggestions
for improving the chances of
obtaining a granted patent.
Data mining is computerised or been increasingly applied to medical from the files of applications that were
computer-assisted analysis of data, data to improve treatment and granted, and those that were refused,
typically very large quantities of identify new treatments with known to help us understand how to frame
data, to extract previously unknown medicaments, and to geographic data specifications to give them the best
patterns, anomalies or associations. to facilitate decision-making. Mining of chance of being granted.
It is an interdisciplinary science, geo-referenced data is helping to find
involving aspects of artificial explanations for disease clustering. Data mining inventions fall into IPC and
intelligence, statistics, visualisation, CPC code G06F 17/30 – the ‘Information
machine learning and database Inventions in the field of data mining Retrieval’ subheading under the
systems. The term is actually a are often patentable in Europe, but ‘Electrical Digital Data Processing’
misnomer: data mining is not mining examination can be challenging. heading – although much else is also
for data but instead is mining for Depending on what the invention covered. Some European patent
information from data. Data mining is, there may be potential issues applications relating to data mining
falls into “big data”, a term which in relation to the programs for are categorised according to the use
defines a sector that is rapidly computers, mathematical methods, to which the data mining is put. This is
increasing in size. discoveries, scientific theories and/ not a problem in many cases. However,
or presentation of information applications that are classified to G06Q
The jobs of scientists and business exclusions to patentability in Article – ‘Data processing systems or methods,
people have been made easier 52 of the European Patent Convention specially adapted for administrative,
by data mining since the 1990s. (EPC). This is in addition to the usual commercial, financial, managerial,
The earliest publicly advertised requirements of novelty, inventive supervisory or forecasting purposes’
uses of data mining include the step and sufficiency of disclosure. – will be handled in the examining
classification of objects from telescope group that is particularly used to
data, investment management, In this field, experience of prosecuting refusing applications as relating to
fraud detection, manufacturing patent applications before the EPO excluded subject matter. Framing the
problem diagnosis and prediction, counts for a lot. However, there is patent specification, particularly the
telecommunications alarm-sequence existing case law that can be used to background, summary and abstract
analysis and even the US’s National assess the prospects for any given sections, so to avoid classification
Basketball Association game data invention. This case law can be used in G06Q can be a very worthwhile
analysis. Since 2010, data mining has in conjunction with observations endeavour.
14www.vennershipley.co.uk
Semi-automated data mining tools
ordinarily utilise visualisations of data
“By appropriate framing of the patent
and information contained within specification, examiners can reach an
data to allow a human operator to
identity patterns and anomalies. understanding of the contribution provided
Attempting to patent the visualisation
features of such tools can run into
by the invention that is favourable to the
the ‘presentation of information’ applicant as regards the exclusions from
exclusion. T49/04 in 2006 decided
patentability.
”
that a feature which relates to
how the cognitive content (such as
images) is conveyed to the user can
in deciding whether claim features by: identifying word sequences
be considered as contributing to
are technical, and thus can be taken comprising the word, calculating
a technical solution to a technical
into account when assessing inventive relative frequencies of occurrence
problem. This is particularly the
step, or non-technical, and so can be for distinct word sequences, and
case when this specific manner of
ignored in patentability assessment. generating fuzzy sets comprising
conveying the information enables
Once an objection has been raised corresponding fuzzy membership
the user to perform their task more
based on some claim features being values calculated from the relative
efficiently. Happily, this decision
deemed to be non-technical, there frequencies. The Board of Appeal
was quoted in the EPO Examination
is usually little that can be done to decided that these distinguishing
Guidelines for a number of years.
persuade the examiner to change features have to be considered
Whilst this decision would appear to
their mind as regards those features. non-technical aspects which cannot
give the green light to visualisation
By far the preferred situation is for contribute to inventive step, citing
inventions that allow a user to identify
the examiner to have understood passages from the specification which
patterns and anomalies more easily,
from reading the specification that discussed how the features gave a
other BoA decisions have decided
the effects/advantages of the claimed measure of ‘semantic suitability’ and in
differently and EPO examiners are
invention are in the technical realm. effect characterising the distinction as
particularly inconsistent in their
By appropriate framing of the patent lying in the field of linguistics. This is
assessment of such inventions.
specification, examiners can reach the latest in a line of Board of Appeal
Constructing the main claims such
an understanding of the contribution decisions relating to text mining where
as to include some user-interactivity
provided by the invention that is the use of semantics was not found to
helps to avoid the exclusion.
favourable to the applicant as regards contribute to patentability.
Describing in the specification main
the exclusions from patentability. In
embodiments that process data
such cases there may be objections The applications that fail to be granted
relating to finance, administration or
to novelty or ‘classical’ inventive step by the EPO usually fall down on
retail/marketing very often results in
(considering all distinctions over inventive step, either because the
objections that cannot be overcome
the closest prior art), however it is prior art is relevant or because some
by amendment or argument.
relatively rare for the exclusions or all of the distinctions over the prior
from patentability to be raised late in art are deemed not to be technical in
There have not so far been any
examination if they were not raised in nature. The applications that succeed
EPO Board of Appeal decisions on
the first examiner’s report. do so because the patent specification
inventions relating to mining of
helped the examiner to see that the
medical data, but many such patent
There are some areas, though, where invention solved a technical problem
applications have been processed
the EPO is generally consistent. Text (i.e. provided a technical advantage)
by EPO examiners. An invention that
mining, which is a subset of data through features that could be said
results from mining medical data
mining, is a good example, although to be technical (rather than linguistic,
is patentable if it meets the usual
one that is negative for applicants. purely mathematical, administrative
criteria; the way in which it was
The recent Board of Appeal decision etc.). When patents are granted,
made does not normally come into
T598/14 (British Telecommunications) they can be of considerable value to
the assessment. For inventions that
considered the patentability of an the patentee. This perhaps helps to
constitute a novel manner of mining
invention relating to a method for explain the unusually high proportion
medical data, the mining itself must
generating, from an input set of of data mining patents that are
use technical features to solve a
documents, a word replaceability opposed after grant.
technical problem in an inventive way.
matrix defining semantic similarity
Very often such mining techniques
between words occurring in the
are more broadly applicable, however
input document set. The word
describing in the specification the
replaceability matrix can be used for
mining of medical data to bring about
determining document similarity and
some medical advance can do the
to enhance search queries for retrieval
chances of success no harm.
of information from the document
set. Claim 1 was determined to
Part of the difficulty of prosecuting
be distinguished from the closest
applications at the EPO stems from
prior art by the calculation of a
the fact there is no accepted definition
probability that a first word of a pair is Paul Derry
of ‘technical’. Consequently, EPO
semantically suitable as a replacement pderry@vennershipley.co.uk
examiners have considerable leeway
for the second word of the pair
15Protecting
non-conventional
trade marks
Lately, the news has been full of stories of celebrities “trademarking” their
catch phrases, baby names and lyrics. Most recently it has been reported that
Taylor Swift has applied for a number of trade mark registrations with the
US Patent and Trademark Office (USPTO) to register lyrics such as “THIS SICK
BEAT”, “NICE TO MEET YOU, WHERE YOU BEEN?” and “PARTY LIKE IT’S 1989”
as trade marks in relation to a broad range of goods and services (including
clothing, bags and cosmetics).
Taylor Swift already owns numerous representation of the sign must be case filed by Cadbury against its
trade mark registrations in the US clear, precise, self-contained, easily application as the Trade Mark Registry
for, inter alia, her name, initials accessible and intelligible (C-273/00, held that the mark consisted merely
and signature, so it is not entirely Sieckmann case) in order to be of a shape which is dictated by a
surprising that she is continuing registered. This is where things can technical function. This decision has
to look for ways to protect her IP become a little more complicated. been appealed and it remains to be
rights as well as her brand from seen whether the fact that a large
unauthorised use. Types of non-traditional number of consumers associate the
mark with Nestlé’s goods is sufficient
The USPTO must now decide whether trade marks to allow the mark to be registered
or not to grant the registrations for Non-traditional trade marks include, by having acquired distinctiveness
the lyrics. However, is it even possible but are not limited to, shapes, through use. Interestingly, the EU
to register a lyric as a trade mark and slogans, sounds, colours and even Office (OHIM) allowed the registration
would this be possible in Europe? In smells. In practice, these types of of the mark on the basis of acquired
short, the answer is yes. However, in marks often fall foul of either one or distinctiveness.
reality it may not be quite so simple. both of the above requirements. This
does not, however, mean that such Sounds
What can be protected as problems cannot be overcome. Examples of sound marks which have
been registered include the Intel jingle
a trade mark? 3D shape marks and the McDonald’s jingle. In relation
Most people, when they think of trade The main problem with this type of to sound trade marks, the graphical
marks, will think of simple names mark is whether it will be capable representation poses the biggest
or logos (such as APPLE and the of functioning as a trade mark. Will issue. The UK registry will accept a
apple logo or NIKE and the “swoosh” consumers see the shape and know musical stave divided into measures
symbol). However, theoretically, it is which company the product comes and showing a clef, musical notes,
possible to register almost anything from? Consumers may be used to sharps, flats, etc. It does not have a
as a trade mark, subject to a few recognising names and logos as clear position on sonograms and will
requirements. an indication of origin but are less not accept a written description of
accustomed to relying on 3D shapes the sound. This, of course, creates
A trade mark must be capable of to indicate the source of goods or problems when attempting to register
distinguishing one entity’s goods services. In order to function as a sounds which cannot be presented
and services from those of its trade mark, the shape must not in musical note form (the roar of a
competitors so that consumers will merely be dictated by a technical lion for example). OHIM, on the other
know whose products or services function of the product or add hand, will accept sonographs, but only
they are purchasing. The mark must decorative value. if they are accompanied by a sound
be distinctive and not descriptive file (in MP3 format).
of the goods or services for which Recently Nestlé has been battling to
registration is sought. The sign also protect the 4-finger shape of its KitKat A song sound mark would be
has to be “capable of graphical chocolate bar in various jurisdictions. graphically represented with a
representation” meaning that the In the UK Nestlé lost in an opposition combination of musical notation and
the lyrics of the song.
16www.vennershipley.co.uk
Colours
The registration as a trade mark of a
“the registry will need be particularly distinctive in itself but
Nestlé were able to show that it had
colour per se (or colour combinations) to consider whether acquired distinctiveness through use,
tends to be quite difficult. In order to even though that use had been as
meet the requirement of graphical lyrics from songs part of the registered mark “Have a
representation the applicant cannot
simply submit a sample of the colour.
can function as Break… Have a Kit Kat”, so that the
relevant public perceived “Have a
This is because colour on paper could indicators of origin Kit Kat…” as an indication that the
fade and colour in electronic format product originated from Nestlé
may show up differently on different for the goods and (C-353/03 Nestlé v Mars).
screens (the representation would services applied for
not be clear or precise). However, it
is relatively easy to overcome this
problem by submitting a description mark for purple Pantone 2685C on
” So what about the lyrics?
So far, Taylor Swift has not filed
or using an internationally recognised the UK trade mark register. applications to register the lyrics with
colour identification code (such as OHIM or the UKIPO. If she does, the
Pantone). Smells registry will need to consider whether
Unlike many other types of non- lyrics from songs can function as
The real problem lies in the ability of conventional trade marks, there are indicators of origin for the goods and
a colour to inform consumers about currently no valid CTM registrations services applied for, or will the public
the origin of products. Consumers are for smells. In fact, the only smell mark simply see the lyrics as funny slogans
generally not accustomed to seeing which has ever successfully been or decoration on products which do
colours as indicating which company registered with OHIM was for “the not provide any information to the
goods or services come from and smell of fresh cut grass” for tennis consumer as to where those products
will often consider colours merely as balls. However, this mark lapsed in originate.
decorative or as enhancing the value 2006. In the UK, Goodyear Dunlop
of a product. Furthermore, there is a Tyres successfully registered “a floral On the one hand, the phrases such as
strong argument that, due to the fact fragrance/smell reminiscent of roses “THIS SICK BEAT” are not descriptive
that there are only a limited number as applied to tyres” in 1994. This of most goods and services applied
of colours, when colours are allowed registration has now also lapsed. for in the US (the applications filed
to be registered as trade marks, with the USPTO cover a very wide
the number of remaining colours The main hurdle for smell marks range of goods and services). On the
available for use by others becomes is the graphical representation other hand, Ms Swift may struggle in
even more restricted which would be requirement. In the 2002 Sieckmann relation to some goods and services
against general interest (the leading decision the CJEU held that a sample, a if it is found that the public will not
case in relation to this is the CJEU description and the chemical formula perceive the phrases as indicators of
decision in C-104/01 Libertel). did not meet the criteria for graphical origin. After all, it is not unusual to see
representation as they were not t-shirts and other merchandise bearing
Despite the above, it is still possible to precise or accessible enough. The parts of song lyrics. Consumers may
protect colours per se as trade marks. practical result of this decision is that, not automatically assume that those
However, the brand owner will have in the EU today, it is almost impossible items originate from any particular
to show that the colour has acquired to register a smell as a trade mark. company or person. It will be
distinctiveness through use. Brand interesting to see the outcome.
owners will need to demonstrate Slogans
consistent use of the colour in relation Slogans are used by many brands Although non-conventional trade
to their goods and/or services over a in order to promote their products. marks can face difficult obstacles,
prolonged period of time so that to However, slogans are notoriously these can often be overcome with
the consumer the colour becomes an difficult to register as trade marks the help of careful filing strategies
indicator of origin. The colour trade because they regularly fall foul of and use of the brands on the market
mark, if granted, will also generally the requirement that the mark must and in advertising. For pop stars
be restricted to quite a narrow be distinctive. Many slogans are and other businesses alike it is well
specification of goods or services. refused registration because they worth considering some of these
are considered only to convey a less conventional trade marks when
Companies which have successfully promotional message or information looking at options to protect brands
registered colour trade marks in about the goods or services. The and business interests.
the EU include Deutsche Telekom distinctiveness of a trade mark has
(magenta – for telecommunications to be considered in relation to the
services), Black & Decker (yellow and goods/services for which registration
black – for various tools), M3 (yellow is sought as well as in relation to how
– for self-stick notes) and UPS (brown the public will perceive the mark.
– for transportation and delivery Will it be perceived as an indicator of
services). Kraft (who own Cadbury) origin? (CJEU case: C-311/11 P Smart
also own a registration for the colour Technologies ULC v OHIM)
purple in relation to confectionary in
the EU. However, after a long fought As with other trade marks slogans
battle with Nestlé in the UK, Cadbury can become distinctive through use. Nora Fowler
was refused registration of its trade The slogan “Have a Break…” may not nfowler@vennershipley.co.uk
17You can also read
