A revival in the making - IP - Withers & Rogers LLP
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IP
review
Inside...
Hydrogen fuel cells vs. rechargeable batteries
Which will power vehicles in the future?
Augmented reality: IP protection
The rise of new technologies
European examination: the clock is ticking...
A major shake-up for patent examination
A revival in
the making
The reinvention of
human gene therapy
summer 2018
withersrogers.com
2
Contents
3-5 The reinvention of
human gene therapy
A revival in the field, with a
number of approved medicines
now on the market.
6-7 European examination:
the clock is ticking...
A major shake-up for patent Welcome to the Summer
examination.
8-9 The power of forward
2018 edition of IP Review
citations
Patents can teach you about First of all, I would like to thank Matthew Howell for his efforts
the inventions they describe. in editing the IP Review over the last four years. Matthew has
However, patent metrics can tell
you a lot more.
now passed the editor’s reins over to me and I hope to do
as good a job as him in putting together a broad variety of
10-11 Hydrogen fuel cells articles that you will find both interesting and informative.
vs. rechargeable batteries
In this issue, we continue the Add to this a recap on correctly
Which will power vehicles in
theme of focusing on emerging claiming priority, an age old issue but
the future?
technologies. We have the second one which still catches people out,
part of our review of augmented as demonstrated in the recent EPO
12-13 Priority: lessons to reality, this time focusing on how decision relating to the high profile
be learnt innovators can maximise their gene-editing technology CRISPR.
The issue of priority at the chances of obtaining patents in There is also a piece on an innovative
European Patent Office has this area. We also delve into the way of analysing patent data, in this
been brought to the forefront competition between hydrogen-fuel case looking at ‘forward-citation’
of people’s minds in light of a cells and batteries as the future searching.
high profile decision. power source in modern transport.
Further, we have a look at the recent Finally, on the trade mark side, we
14-15 Augmented reality: success of gene therapy in the find out that trolling is not restricted
IP protection treatment of genetic diseases, an old to patents.
The rise of new technologies. concept only now coming to fruition.
I hope you enjoy the issue and look
Looking more at the practicalities forward to hearing your thoughts.
16 The rise of the trade of patent procedure, we have an
mark troll article on the efforts of the European
Whilst trolling behaviour is well- Patent Office (EPO) to speed up
known for patents, it can also examination and the knock-on
affect trade marks. effects this could have on applicants.
Justin Wilson
Editor
IP review summer 2018
3
Cover Story
The reinvention
of human gene
therapy
The concept of gene therapy has been around for over 25 years. At its inception, it was
hailed as a powerful new technique for treating previously incurable genetic disorders.
Unfortunately, the initial hype did not materialise into approved medicines and the field went
out of favour, with many biotech companies looking for alternative therapies for human
disease. However, in recent years, there appears to have been a revival with a number of
approved medicines on the market and more in the pipeline.
Gene therapy is a technique in which the blood clotting system not to sought to insert a correct version of
a correcting gene is delivered to a work correctly. the ADA gene so that the children’s
patient in order to treat or prevent immune system could work effectively.
disease. In many instances, this gene The first gene therapy trial was Whilst it was shown that the
replaces a defective gene which is the approved in 1990. The therapy was functional ADA enzyme was present
underlying cause of the disease. For given to two children who had severe in the children following treatment,
example, some forms of haemophilia combined immunodeficiency (SCID) unfortunately, the level of ADA was
are the result of a mutation in a single which was caused by a defect in the too low to show a clinical benefit in
gene which causes a key protein in gene encoding the enzyme adenosine treating the SCID.
deaminase (ADA). This gene therapy
+
4
...The reinvention of
human gene therapy
In the following years, the number All these factors resulted in much of However, with no further commercial
of gene therapy trials grew rapidly. the research in this area being halted, successes, it was not long before the
However, that all changed in October especially by the big pharmaceutical trials declined in number, bottoming out
1999 when an 18-year-old volunteer companies. This left mostly academic in 2011 to their lowest level since 1998.
died from multiple organ failure after researchers to progress the field
being administered a gene therapy to during the 2000s. This is illustrated These trends are also supported by
treat a genetic disease of his liver. His in Figure 1 below which shows the the number of gene therapy related
body experienced a severe immune number of clinical trials approved year patent applications being filed.
reaction to the virus being used to by year for gene therapies. As can As shown in Figure 2, the number
carry the replacement gene into his be seen, the number of trials being increased rapidly between 1990 and
body (referred to as a viral vector) approved peaked in 1999, after which 2000, after which there was a sharp
which brought about the multiple there was a decline until 2003. decrease until 2003.
organ failure. This tragedy dampened
the enthusiasm around gene therapy
and led to much stricter controls
Gene Therapy Clinical Trials Approved
for researchers wishing to carry out
Worldwide
human trials.
In 2003, a further significant set-back
occurred when a French patient,
being treated for an immune disorder,
developed a leukaemia-like condition
as a direct result of the gene therapy
treatment. The viral vector used in the
therapy caused an unexpected
mutation in an otherwise healthy
gene which triggered the onset of the
leukaemia in the patient.
In addition to these unfortunate Figure 1
developments, there were problems
getting different gene therapies to In 2003, the first commercial gene In 2004, possibly following the
work effectively. For example, whilst therapy product Gendicide received authorisation of Gendicide, there
researchers showed it was possible to a marketing authorisation in China was a rise in the number of patent
deliver replacement genes to patients for the treatment of cancers caused applications filed. However, after this,
using gene therapy, it was very difficult by a mutation in the p53 gene which the numbers again declined such that
to get the gene to function at a suppresses tumour formation. This between 2006 and 2014 the number
sufficiently high level so as to have a authorisation may have reinvigorated was around or just below 400 per
therapeutic effect on the disease. research into gene therapies as year, less than half that seen during
the number of clinical trials being the peak in 2000. This shows that
approved again started to rise. far less innovation was occurring in the
IP review summer 2018
5
commonplace, such as haemophilia
Gene Therapy Patent Applications Filed
and sickle-cell disease. They are
1200
expected to be granted marketing
authorisations over the next few years
1000
with estimates of there being two in
800 2018, up to 10 in 2019 and possibly as
many as 13 in 2020.
600
This surge in commercial development
400
and success of new gene and cell
therapies is on the back of a large
200
increase in investment. Figure 3 below
illustrates the increasing annual
global investment into gene and cell
therapy companies since 2013, with
Figure 2 a jump from $3.3 billion in 2016 to
$4.2 billion in 2017. This increase in
field, likely due to a significant drop in Following this, Spark Therapeutics’ investment also seems to correlate
research and development. gene therapy product Luxturna with the increase in patent filings in
was granted the first US marketing this period. Patent filing data is not yet
Encouragingly, things started to change authorisation towards the end of completely available for 2017 but it
for the better in 2012. The Dutch 2017 for the treatment of an inherited will be interesting to see if the upward
company uniQure obtained the first form of vision loss that may result in trend continues in line with investment
European marketing authorisation for blindness. and as the field continues to grow.
their gene therapy product Glybera
for the treatment of lipoprotein lipase There have also been authorisations At the end of 2017, there were almost
deficiency, a rare inherited disorder to allow the commercial use of CAR-T 2,000 gene therapy clinical trials
which can cause severe pancreatitis. cells in Europe and the US. CAR-T cells ongoing, including about 100 trials in
This helped to prove the concept that are a type of immune cell engineered pivotal Phase 2/3 or Phase 3 studies.
gene therapy works and can be taken to detect and destroy cancer cells. Remarkably, gene therapy is now the
to the market, although Glybera itself Although these are not true gene second largest class of drugs being
was never a commercial success. therapy products, the production developed, bigger than antibodies
This is perhaps partly due to very of these cells uses a gene transfer and only behind more traditional New
low patient numbers (about 1-2 in technique similar to gene therapy. Chemical Entities (NCEs). Therefore,
1,000,000 people are affected with it seems that gene therapy is finally
the disease) and the large price tag of Although only three gene therapy fulfilling its early promise.
about €1 million. products and two CAR-T cellular
products have received marketing
With Glybera demonstrating that it authorisations in the US or Europe to To find out more contact
date, a whole raft of further products Justin Wilson
could be done, there was a big jump
jwilson@withersrogers.com
in clinical trial approvals from 2012 are being developed for a range of
to 2015 to the highest ever level (as diseases, some of which are more
shown in Figure 1), showing there was
renewed interest in gene therapies.
Further, for the first time since the late
1990s, there was a significant increase Annual Sum of Amount raised by Financing Type
in patent filings from 2014 to 2016,
showing that innovation in this area is All IPO financings All follow-on financings All venture financings
on the increase as biotech companies
once again believe it has legitimate
commercial potential.
Since then, Strimvelis, GlaxoSmithKline’s
gene therapy product for ADA-SCID
(the same condition treated in the first
ever gene therapy clinical trial in 1990)
received a marketing authorisation in 2013 2014 2015 2016 2017
2016 in Europe.
Figure 3
6
Patents
European examination:
the clock is ticking...
In what promises to be a major shake-up for patent examination, the European Patent Office
(EPO) is aiming to shorten substantive examination to an average of 12 months by 2020 from
an average of 30 months in 2016. Is this feasible, how will it work in practice and what can
applicants do now to prepare?
Why is the EPO doing this? four years looks suspiciously like blue- are a series of internal policy changes
sky thinking, given the record number that will have profound implications for
To remain competitive. As with other of applications filed in recent years applicants.
major patent offices around the globe, and the limited number of Examiners
the EPO has been troubled with available. But the EPO has a track record An EPO examination report typically
escalating pendency times over the of achieving ambitious productivity goals. allows four months in which to respond,
past decade. These delays increase The first ‘early certainty’ initiative reduced extendible to six months by right. A
application costs due to spiralling the average time taken to issue prior art summons to attend oral proceedings,
annual renewal fees and frustrate searches to 4.9 months, against a target normally the final opportunity for
applicants seeking legal clarity over their of 6 months that was widely viewed as applicants to make their case during
inventions. This ultimately weakens overly ambitious. More recently, the EPO examination, is issued four to six months
the competitiveness of the EPO versus is well on its way to reducing the time before the date of the oral proceedings.
national patent offices across Europe, taken for most post-grant oppositions From this, it is feasible to hit the
where pendency times and renewal fees to 15 months, down from 26 months 12-month target by issuing a summons
can be more attractive. Never one to rest in 2016. In terms of examination, there to attend oral proceedings as the second
on its laurels, the EPO has launched a has already been a 45% increase in examination report during examination.
series of streamlining initiatives applications being granted since 2015. In fact, the EPO has authorised
under the banner of ‘early certainty’ It would take a brave person to bet Examiners to issue a summons to attend
over the past five years, and substantive against the EPO succeeding again. oral proceedings as the first examination
examination is next to receive the report. This is in stark contrast to the
efficiency treatment. How will the EPO achieve this? previous system, which would often see
Examiners issue three to four regular
Is this target feasible? The number of EPO Examiners has been examination reports before running out
gradually increasing, rising from 3,600 in of patience and issuing a summons to
Yes, but it won’t be easy. Reducing the 2007 to 4,300 in 2016. But hiring more attend oral proceedings.
average examination time by 60% over Examiners and asking them to work
harder will only get the EPO so far. The Applicants and Examiners are also being
IP review summer 2018 main weapons in the productivity arsenal encouraged to shorten examination
7
through amicable means. The EPO is decisive responses before examination for granting extensions of time so this
proactively reminding applicants that begins. All EPO applications receive option may be restricted depending
partial/full refunds of the examination an initial view on patentability before on the circumstances under which
fee are available for withdrawing their examination, which provides applicants extensions will be granted. Further, only
application before certain milestones - with an opportunity to pre-emptively partially addressing objections raised
a 100% refund is available for withdrawal overcome anticipated examination in an examination report may be less
before examination begins and a 50% objections. In the past, pre-examination attractive as it could increase the risk
refund is available for withdrawal responses were often used to try of provoking a summons to attend oral
before a response is filed to the first ambitious response strategies, safe in proceedings. Therefore, it may be much
examination report. Examiners are also the knowledge that more conservative more difficult to stretch out examination.
increasingly telephoning applicants to strategies could be adopted during
suggest ways of overcoming objections, examination if the initial strategies However, the EPO is considering
rather than issuing a full examination fail. This could now run the risk of a whether to allow applicants to formally
report. summons to oral proceedings being defer examination for a period of three
issued whilst the application is bogged years, following intense lobbying from
What can applicants do to prepare? down in formal objections under the new the biotechnology and pharmaceutical
system, such as objections raised due sectors. This proposal seems likely to
The EPO has been gradually to the notoriously strict approach of the come into force, with a more formal
implementing these policies over the EPO towards claim amendments, rather decision expected in the second half of
past 12 months, but it is clear that than progressing to more subjective 2018. The proposed system would not
the next 24 months will see a major issues like inventive step. achieve an outright three-year hiatus,
acceleration for the EPO to meet however, because it looks likely that
its target. This means that pending For applications yet to be filed, interested third parties would be able
applications and all new applications applicants may wish to amend their to initiate examination by writing to the
will be processed under the strictest patent specifications before filing to add EPO to raise their own objections against
implementation of the new polices. more EPO-specific basis for possible an application (an existing mechanism
future amendments. This would help to known as ‘third party observations’).
For applications already under EPO avoid delays encountered when claim Further, this will not affect the 12 month
examination, applicants should be amendments are rejected due to the target when examination does eventually
mindful of the increased risk of being strict approach of the EPO mentioned start.
summoned to attend oral proceedings as above, as can often occur for applications
the next examination report. If a regular originating from outside Europe where Given the changes happening at the EPO,
examination report is issued, applicants the hurdles associated with claim it seems likely that applicants will have
may wish to take more decisive action amendments are often lower. to be more flexible in their prosecution
to overcome outstanding objections strategy to complete examination within
rather than face a summons, such as Can applicants resist the increase the 12 month target. In addition, having
by taking a conservative approach to in speed? more proactive engagement with the
claim amendments or telephoning the Examiner can only help to resolve issues
Examiner to gauge their likely reaction to At present, it is possible to slow down more quickly.
an intended response strategy. the pace of examination by obtaining
For pending applications awaiting EPO extensions of time and only partially To find out more contact
examination, applicants can prepare addressing objections raised in Greg Stepney
for the increasingly time-constrained examination reports. Under the new gstepney@withersrogers.com
examination procedure by filing more system, the EPO may require justification
8
Patents
The power of
forward citations
Patents can teach you about the inventions they describe.
However, patent metrics can tell you a lot more. One powerful
patent metric is forward citations. Forward citations can allow you
to gauge the potential value of your patent portfolio, and give you
insight on new competitors.
Master vs Improvement
The Market
To understand what forward citations
are, and how they can be used, it is first
important to fully understand the concept of
The Market Patent 2
Master Patents and Improvement Patents. Master Patent
A patent gives you the right to stop others
doing what the patent covers. For this
reason, patents are often described as Improvement
‘negative rights’. Anyone else who is doing Patent
what the patent covers is infringing, and you
Patent 1
have the right to stop them.
The scope of a patent is a bit like territory
within a new piece of land. Figures 1a and
1b give a couple of examples.
Figure 1a Figure 1b
IP review summer 2018
9
Looking at Figure 1a: you might own Patent Forward citations are the opposite of As you can imagine there are lots of
1 and a competitor might own Patent 2. backward citations. So looking again at indicators you could use for this task;
Both are in the same market, but cover Figure 2: an Improvement Patent cites the however, knowing if this competitor has
completely different territory. However, this description of your patent. This is a forward cited your patent gives you an indication of
is not always the case: Figure 1b shows the citation. whether they need your patent.
situation where an Improvement Patent
is within the territory of an earlier Master It’s all a matter of perspective. From your The sheer number of forward citations can
Patent. This can happen if the Improvement perspective, the prior art is a backwards also be a strong indicator of value. If there
Patent covers an inventive improvement on citation and the Improvement Patent is a are a lot of forward citations, there may well
a generic invention covered by the Master forward citation. be a lot of demand for your invention from
Patent. So for example the Master Patent competitors.
covers a mouse trap, and the Improvement Feel the power of
Patent covers a better mouse trap. forward citations Consider another scenario: you own a large
portfolio of patents and want to rank them
In this case, the owner of the Improvement Competitors in order of commercial value and abandon
Patent cannot sell the better mouse trap the bottom 10% to save money. Forward
because it would infringe the Master Patent Citations can be used to understand the citations - normalised for age - can be a
- i.e. it falls within the territory of the Master competitive landscape of the market helpful metric to help with this daunting
Patent. The opposite is also true: the owner sector the invention, and by extension your task.
of the Master Patent cannot sell the better business, is in.
mouse trap either since it falls within the Search tools
territory of the Improvement Patent. Backwards citations tell a story of the past
and how the innovation in that market sector A number of free search tools are available
Forward citations? has grown. Known competitors inhabit this to look for forward citations. However, they
space, so backward citations might not be can generally only return citations linked to
When you read the word “citation” you very helpful if you are already aware of them. a single patent.
may be thinking of a backward citation. Sometimes prior art patent holders might
This is when you are writing something have even gone out of business! Withers & Rogers can provide you with a
and reference a previous work. Figure 2 search which returns all forward citations
illustrates this point. When a patent office Forward citations however, might tell (from within a limited period) which cite a
examines your patent application, they you about a new (previously unknown) patent in the name of your business.
will find previously published documents competitor; or new activity of a known
usually in the same technical field. These competitor. We can set up regular alerts which notify
documents are called ‘prior art’. In order you immediately when one of your patents
to get the patent application granted, you Information about competitor activities has been cited by a competitor. In the alert,
must persuade the patent office that your might benefit your business strategy. The you can receive extra information analysing
invention is new and clever, compared with Improvement Patent from Figure 1b might the strength of the opportunity, or the legal
the cited ‘prior art’. be a new patent application which has cited status of the Improvement Patent.
your existing patent (which now has the
During this process the patent office exulted title of ‘Master Patent’). Knowledge Forward citations can, if fully utilised, be
focuses their searching on the claims of the Improvement Patent might lead incredibly useful for any business. Forward
of your patent application. The claims you to licence, cross-licence, or even sell citations can clarify the competition and
define the invention - i.e. they map out the your Master Patent to the new competitor. potential patent value. Finally, there are
territory shown in figures 1a and 1b. The Alternatively, you may put them on notice. tools available that can easily help you
“description” of your patent, on the other or your business take advantage of your
hand, gives a detailed example of your Patent valuation patent portfolio.
invention with all the bells and whistles.
Consider this scenario: a competitor has Contact your Withers & Rogers Attorney
Figure 2 shows how prior art is being approached your business and wants a for more information on how we can use
cited against the claims in your patent. licence to your patent. How much do you forward citations to advance your business
This information is stored and publically licence it for? interests.
accessible.
Figure 2
To find out more contact
Forwards Improvement
Jim Ribeiro
Description Citation Patent jribeiro@withersrogers.com
Backwards
Prior Art Citation
Claims
Theo Worsley
Your tworsley@withersrogers.com
Patent
Time
10
Clean Tech
Hydrogen fuel cells vs.
rechargeable batteries
- which will power vehicles in the future?
The worldwide need to reduce CO2 emissions and improve air quality is accelerating the
international development of vehicles powered by hydrogen fuel cells and rechargeable batteries.
Here in the UK, the Government has
published the Clean Air Plan and is Comparison Fuel Cell vs Battery Pack Families filed in B60L
proposing to ban the sale of all new petrol 900
Battery Pack
and diesel cars and vans from 2040. 800
Hence, there is a genuine local urgency
700
for alternative-powered vehicles.
600
Having mapped European patent filings 500
for alternative-powered vehicles, we have 400
Fuel Cell
found that innovation in hydrogen fuel cell 300
powered vehicles has resulted in a steady
200
stream of approximately 200 to 300
100
0
2006 2007 2008 2009 2010 2011 2012 2013 2014 2015 2016 2017
IP review summer 201811
Alstom Coradia iLint hydrogen powered train’ and (c) Alstom / Michael Wittwer
European patent application filings each currently inefficient. However, wind farms Just over a year ago, Alstom introduced
year. In direct contrast, the development are now increasingly being used to power the new Coradia iLint train, marketed as
of rechargeable battery powered vehicles electrolysis plants, so no CO2 is produced the world’s first “zero-emission” hydrogen
has grown rapidly, and since 2013 when generating the hydrogen fuel in this powered train. The iLint is intended
approximately 800 European patent way. Also, the Israel Institute of Technology to run on non-electrified tracks at 140
applications have been filed each year. has recently found a way of improving km/h, with a 600 to 800 km/tank load
the efficiency of the electrolysis process autonomy, and accommodate up to 300
Does this mean that rechargeable by up to 100%. With the formation of the passengers. A total of 14 fuel cell trains
batteries are better suited to powering Hydrogen Council in 2017, the energy have already been commissioned by
vehicles than hydrogen fuel cells? and transport industries are working the Local Transport Authority of Lower
together to see hydrogen technology play Saxony in Germany and are scheduled
The trend in patent filings seems to be an essential role in global energy needs to convey travellers between Cuxhaven,
mirrored by the current sales numbers and they have pledged to invest 10 billion Bremerhaven, Bremervörde and
and increased consumer perception euros in hydrogen technologies and Buxtehude from December 2021.
in the automotive sector. Last year, the infrastructure over the next five years.
number of battery powered cars on the Without a doubt, the need to find
roads worldwide rose to a record high of Indeed, with 8,000 worldwide patents alternatives to the internal combustion
two million, according to research by the related to hydrogen technology, it engine will continue to spur on
International Energy Agency. seems that Toyota are committed to the innovation. Although battery powered
commercialisation of this particular type vehicles have taken an initial lead,
In the UK, we are becoming familiar with of alternative power and it has recently it seems that hydrogen power has
battery powered car brands such as Tesla, launched the hydrogen powered Mira car. advantages and there is a commitment
Lucid and Faraday. Many of the major car to utilising it effectively for vehicles. So,
manufacturers have introduced their own It is recognised that hydrogen fuel cells returning to the original question of
versions of battery powered cars as well. offer certain advantages over their hydrogen fuel cells vs. rechargeable
Rechargeable batteries are also used in rechargeable battery counterparts. For batteries, it seems that both hydrogen
the rail sector and Bombardier’s Talent 3 example, hydrogen has a much higher fuel cell and rechargeable battery
EMU is a battery powered train suitable energy density, which gives a hydrogen technology will become mainstream
for short distances, for example in tunnels powered vehicle a longer distance power sources for transportation.
where overhead cables are difficult to range. This higher energy density also
install. means that hydrogen fuel cells are
particularly well suited for powering To find out more contact
For hydrogen fuel cell technology, the heavier vehicles such as trains, buses and Rosie Hardy
main barriers to market have been the lorries. Consistent with this, ITM Power, rhardy@withersrogers.com
supply of hydrogen fuel and infrastructure who develop local hydrogen generating
requirements. The hydrogen fuel is systems, have reported a strong order
obtained from water using an electrolysis book linked to international growth in Frank Harner
process. Whilst hydrogen is available hydrogen powered buses and trains. fharner@withersrogers.com
in abundance, the electrolysis process
requires electrical power and this is12
Patents
Priority: lessons
to be learnt
In recent months, the issue of priority at the European Patent Office
has been brought to the forefront of people’s minds in light of the
high profile decision to revoke a patent covering the gene editing
technology CRISPR.
When a patent is filed in a country that initial application, whether this is a Alternatively, if the Applicant of the
is a signatory of the Paris Convention natural person or an entity with legal later application is not the person
or a member of the World Trade personality (e.g. a corporation). Where who filed the initial application, the
Organisation, the Applicant, or their the Applicant is multiple persons, they Applicant must be that person’s
successor in title, may, within twelve are generally treated as each owning a successor in title when the later
months, apply for protection in all the share of an indivisible legal right. application is filed. In practice, this
other member countries. This is known means that an assignment from the
as the right to claim priority. This allows In view of the fact the right to claim Applicant of the initial application to his
the later applications to be treated as if priority is an indivisible right, it is successor must take place before the
they were filed on the same day as the a principle of European case law filing date of the later priority claiming
initial application for the purpose of that, in the situation where an application.
determining relevant prior art and for initial application has multiple joint
assessing patentability. Applicants, a later application has to In the case of the CRISPR decision,
name all the Applicants of the initial the CRISPR gene editing technology
This right to claim priority is enjoyed application to enjoy a valid claim to provides a cheap, efficient and easy
by the Applicant who filed the priority from the initial application. way to precisely edit DNA. As such, the
patents and applications directed to
this technology have received much
IP review summer 2018 attention and are of high value.13
It is very important to make sure you
have the proper priority chain of title in
place at the appropriate time because
it is not possible to retroactively correct
any errors.
The patent in question, EP2771468, application had not been correctly a separate and distinct right from
was granted to the Broad Institute, assigned from the inventors named ownership rights in any invention(s)
MIT and Harvard University and on the provisional application to the that may be disclosed in the
was revoked after the filing of nine Applicants named on the European application and/or patent rights
oppositions. This European application application. Therefore, the priority ultimately granted in respect of such
was filed naming Broad, MIT and claim was considered invalid and the invention(s).
Harvard University as Applicants Applicants of the European application
and claimed priority from twelve US were not entitled to claim the filing • All Applicants identified in an initial
provisional applications, some of which date of the earliest US provisional application must either be named on
named the inventors as Applicants. application. Consequently, the claims the later application, or have assigned
of the patent were found to lack their share of the right to claim priority
There were four US provisional novelty over a number of documents to one or more of the Applicants
applications at issue before the which, as a result of the invalid named on the later application.
European Patent Office but we need priority claim, became relevant prior
only consider one by way of example. art, including the Applicant’s own • If there is to be any change to
The earliest US provisional application disclosures. Accordingly, the European the Applicant(s) between the initial
named only inventors as applicants, Patent Office revoked the patent. application and the later application,
as was traditional practice in the US. it is imperative that the right to claim
All but one of these inventors were In view of recent case law of the priority be transferred, via a written
employees of, and had assigned their European Patent Office, for example legal document, prior to filing the later
rights to, Broad, MIT, or Harvard. T0577/11, the decision was not a application.
Therefore, these inventors had surprise to many. Furthermore, the UK
assigned their right to claim priority. courts reached the same conclusion • If this is not possible, then it is
in Edwards Lifesciences AG v Cook advisable to name all the Applicants of
However, one inventor, Marraffini, was Biotech Inc [2009] EWHC 1304. the initial application (or applications,
(and still is) a researcher at Rockefeller in the case of multiple priority claims)
University. The European Patent Following the decision, The Broad on the later application. It is always
Office considered that he was a joint Institute immediately released a possible to transfer ownership of the
Applicant, and he was therefore a joint statement indicating that they intend application after filing.
holder of the right to claim priority to appeal the decision. It will therefore
from that application. Marraffini did be some time before this story reaches It is very important to make sure you
not appear as an Applicant on the later its conclusion and the Appeal will be have the proper priority chain of title in
European application, and no evidence followed closely. place at the appropriate time because
was submitted to the proceedings it is not possible to retroactively
that he had assigned his rights to The In the meantime, there are some correct any errors, as was shown the
Broad Institute before the filing date of practical points to follow to ensure hard way in the recent CRISPR case.
the European application. that the right to claim priority is not
compromised: To find out more contact
As a result, the European Patent Kirsty Simpson
Office held that the right to claim • Remember that the right to claim ksimpson@withersrogers.com
priority in respect of this provisional priority from an initial application is14
Augmented Reality
Augmented
reality:
IP protection
The drive for augmented reality (AR) has
given rise to a breadth of new technologies,
especially in the areas of image processing, data
processing, optics and communications.
As you may have seen from our article intellectual property ownership will virtual world using their smartphone.
in the previous edition of the IP Review, most likely have to navigate around Firstly, the claim was rejected for relating
AR technologies can be grouped into patentability exclusions which exist for to an abstract idea - a direct exclusion
handheld AR, which is a key space for AR computer related inventions, methods of from patentability under US law. The
content developers, and head-mounted gaming and abstract ideas, especially in patent examiner particularly contended
displays (HMDs). With increasing the US and Europe. that the claim related to using a
amounts of investment and public computer to perform a series of mental
interest in AR, there comes the need Niantic, Inc. found themselves facing steps that can be regularly performed
to protect sufficiently the intellectual these problems of originality and by a human, and the claimed computer
property (IP) in the technologies being patentability exclusions when pursuing elements of the claim such as a “game
developed to ensure a return on R&D their US patent application for “Linking server” do not add meaningful technical
investment costs. In this second article, Real World Activities with a Parallel contributions since they perform
we will take a closer look at how current Reality Game” [1]. Niantic initially conventional and generic tasks.
patent applicants have been navigating claimed “a computer-implemented Secondly, the Examiner contended that
the patent system to seek protection method for providing a parallel reality the invention was fully disclosed in and
for handheld AR content and HMD game”. Paraphrasing their claim, this thereby anticipated by existing prior art
technology. involved: hosting a virtual world on patent publications, including one from
a game server with a geography that Microsoft [2]. Microsoft’s publication
Handheld AR content parallels the real world so that a user related to “combining real-world
can navigate the virtual world by moving actions and virtual actions in a gaming
The space of AR content is growing in the real world; and introducing game environment”, which particularly involved
rapidly, especially since smartphones elements [i.e. Pokémon] linked to the users travelling to specific locations to
became AR enabled. Because this is an real world into the virtual world and complete virtual location-based tasks to
area of significant expansion, overlaps modifying these game elements based gain rewards. This effectively highlights
between the concepts and ideas of on player interactions. In other words, an overlap between Niantic’s broad
different inventors can be expected. this describes the player interactions claim to location-based parallel reality
Additionally, since most AR content is taking place in Pokémon GO, where a games and existing similar concepts that
embodied as software or as a computer player would view and interact with game could fall within that claim. However,
program, AR content developers seeking features linked to the real world from the Niantic’s specific implementation of a15
parallel reality game became a point a HMD package. Firstly, we have seen IP protection for HMDs does not
for establishing novelty over the prior patent applications directed towards end with patents. Undoubtedly, the
art. They stepped away from the broad the more fundamental operations aesthetics of HMDs are almost of
concept of simply interacting with game and mechanical aspects of HMDs. For parallel importance to their technical
elements in a parallel reality game, and example, Daqri successfully made claim performance, since this will be a
instead limited the claim to specify that to a novel HMD with a retractable display, determining factor of their success when
game elements are introduced to certain albeit after having to amend their claim they hit the marketplace. In this respect,
locations in the virtual world based on to distinguish their HMD over a combat there are plenty of registered designs
requests made by external real-world weapon-site helmet by explicitly claiming being filed for HMDs, including by Magic
sponsors. its application for more commercial Leap and Daqri who have registered 10
AR [3]. Magic Leap may find success and 5 US designs, respectively. The term
Whilst the first objection that the initially- in protecting HMDs that use light field of registered design protection often
claimed invention is an unpatentable technology as opposed to “conventional” exceeds the term of a patent, therefore
abstract idea may seem unwarranted screen overlays [4]. can be a strong way to protect the
on the surface, the patent examiner’s aesthetic appearance and non-functional
thoughts can find sympathy if the direct However, novelty could fast become an aspects of HMDs.
language of the initial claim is considered. issue when attempting to claim the more
The initial claim lacked any indication as “conventional” fundamental aspects of
to the technical mechanisms that would HMDs. For example, Microsoft currently
allow for modifications and interactions have a US patent pending for a Mixed
with the virtual world to take place, whilst Reality Display Device [5] which broadly
merely stating that such steps occur. attempts to claim a HMD that comprises
Hence, in the patent examiner’s eyes, the a display, lens system and a curved
claim only presented an idea or abstract Fresnel combiner. As expected for such
concept of parallel-reality gaming, rather a broad claim, the US Patent Office has
than a tangible invention that could found there to be a significant overlap
execute this idea. In addition to the with existing HMD technologies and has
above amendments made to establish cited several patent publications that
novelty, Niantic made amendments are believed to be relevant, including
to ensure that each feature or step Google’s “eyepiece for see-through head
of the claim was linked to a technical wearable display” which uses Fresnel
component of the system. As an overall reflections to guide the display light [6].
result, they were able to argue that their Overall, HMD developers can gain a
new claim solved a technical problem HMD developers may therefore package of IP protection to compensate
which led to improvements in how virtual find more value in claiming patent for both the technical and aesthetic
elements can be placed in a virtual world, protection in more low-level functional aspects of HMDs through a combination
and therefore the new claim should be or application specific features with of patent and design protection. Where
considered as both non-abstract and respect to their use with HMDs. For it might become difficult to establish
technical. example, Daqri have successfully made novelty over the more fundamental
claim to a HMD comprising conventional technology in HMDs, developers can
Considering what happened to Niantic’s features, and additionally memory find value in claiming more functional or
application, it is increasingly important to storing instructions that can be executed application specific features, where the
ensure that AR content developers file to interpret visual gestures of a user in claimed features are grounded in HMD
patent applications with a clear technical a specific technical way [7]. Similarly, hardware.
advantage or contribution to the AR Microsoft have successfully claimed for
field in mind, whilst containing enough a HMD with conventional components, References
[1] US Patent Publication No. US9669296(B1), Niantic
technical content and implementation with the processors configured to detect [2] US Patent Publication No. US2011/0319148 (A1),
details to establish novelty over similar or and feedback emotions of a user [8]. Microsoft
[3] US Patent Publication No. US9625724 (B2), Daqri
overlapping ideas. From the perspective In such cases, it could be tempting to
[4] US Patent Publication No. US2017293141 (A1),
of patentability exclusions, although abstract the claimed features away Magic Leap
only the US Patent Office’s abstract idea from HMDs in order to gain broader [5] US Patent Publication No. US2018003972 (A1), Microsoft
[6] US Patent Publication No. US2016131907 (A1), Google
exclusion was discussed above, the protection, e.g. for interpreting visual
[7] US Patent Publication No. US9652047 (B2), Daqri
European and UK Patent Offices have gesture or detect emotions not [8] US Patent Publication No. US9824698 (B2), Microsoft
similar attitudes where they require for necessarily with a HMD. However, this
To find out more contact
there to be a technical advantage or may open the claimed invention up to
John-Paul Rooney
contribution by the invention for it to be citations of prior-art that may not be
jprooney@withersrogers.com
patentable as a computer program or related to HMDs or even AR technology.
method of gaming. However, as we have seen above, there
is a risk of abstracting the idea too far
Rajan Chauhan
HMDs and landing in the patentability exclusion
rchauhan@withersrogers.com
zone.
HMD developers can gain IP protection
for a number of aspects that complete16
Trade Marks Contact Us
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The rise of the 1 Redcliff Street
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trade mark troll
United Kingdom
Tel: +44 117 925 3030
Fax: +44 117 925 3530
The spectre of patent trolls has been around British Airways trade marks, including B.A. and
since the late 1990s. However, whilst this CONCORDE. One of British Airways’ marks Leamington Spa:
trolling behaviour is most well-known for was completely cancelled and six of the marks
Nicholas Wilson House
patents, it can also affect companies and their were partially cancelled, meaning Gleissner’s
trade marks. action against British Airways was successful. Dormer Place
Further, in this kind of situation, a tactic that Leamington Spa
One example of this is Michael Gleissner, a has been used by trolls is to subsequently file Warwickshire CV32 5AE
German-born entrepreneur, who is thought trade mark applications corresponding to the
United Kingdom
to own over 1,000 UK company names revoked marks to arguably ‘steal’ a registered
which have been listed as the applicant on mark by re-filing it as their own. Tel: +44 1926 310700
thousands of trade mark applications filed Fax: +44 1926 335519
all over the world. In particular, Gleissner It is worrying for brand owners that a third
has successfully registered popular English party can file non-use revocations and sit back
forenames, such as ELIZABETH, JOHN and while the burden of proof falls on the brand Sheffield:
PETER. Subsequently, Gleissner has sought owner to compile evidence to demonstrate Derwent House
to ‘block’ trade mark applications that include use of the mark in question. It is rare to see 150 Arundel Gate
these names by filing oppositions and seeking such actions but there are still third parties
Sheffield S1 2FN
a cost award in his favour. who possess the financial means to bully
trade mark owners for material gain. United Kingdom
The UK Intellectual Property Office (UKIPO) has Tel: +44 114 273 3400
become wise to this sort of behaviour and, Overall, putting a stop to trolling behaviour
Fax: +44 114 275 5788
for example, has refused to register the name is difficult. However, there may be steps that
ALEXANDER for Gleissner as a trade mark. It brand owners can take to mitigate against
was found to be in ‘bad faith’ as the absence such threats: Munich:
of any sound business reason to use the mark Steinerstr. 15 A
amounted to an abuse of the legal system. • If you find yourself on the receiving end of
81369 Munich
a non-use action, we recommend re-filing
Further, the UKIPO has also dismissed actions your trade mark for the goods and/or Germany
by Gleissner to cancel other companies’ trade services under attack. Tel: +49 89 50222 4020
marks on the basis of non-use, again as these
actions were in bad faith. • Furthermore, we would also advise trade
mark, domain name and company name
The UKIPO’s tough stance is good news for watches so that the registration of any
brand owners as it is helping to prevent abuse blocking trade marks can be identified and
of the UK trade mark system. However, it potentially challenged.
seems that it is still possible for third parties
to attack brands for financial gain, especially
as no equivalent approach has been taken by
To find out more contact
the EU Intellectual Property Office.
Pollyanna Savva
psavva@withersrogers.com
For example, Michael Gleissner filed eight
non-use revocation actions against severalYou can also read
