Use Your Imagination

I get quite tired of reading decisions from the UK IPO each month on section 1(2), largely because there are so many of them and they tend to follow the same basic structure, which is:

1. Examiner objects that the invention is excluded as a computer program / business method / mathematical method etc.
2. Applicant ('s attorney) disagrees and argues, often making inconsequential technical sounding amendments.
3. Hearing officer follows the usual route of assessing the invention with the Aerotel 4-step test and AT&T/CVON 'signposts' (see here for more about a technical effect, which has not really changed since 2013 at least).
4. None of the signposts indicate the presence of a relevant technical contribution.
5. Application is refused. 

The stream of applications following this route and being refused as a result has been pretty steady for the past few years, with usually a handful each month. Occasionally there will be a different result, where the applicant has managed to pull out a technical effect that persuades the hearing officer there is something there after all, but these are few and far between and do not affect the general procedure of how borderline cases are assessed. Every so often though, there is one that bucks the trend and comes up with something potentially interesting. There was one last month that I thought interesting enough to comment on, which related to applications in the name of Imagination Technologies Limited (BL O/420/21). 

The applications (there are several) related to a data processing system for determining median values for a stream of data, in which intermediate values were used to allow values already calculated to be used in calculating a subsequent median value, somewhat similar to calculating a rolling average. The applicant had already managed to get one application granted (GB2587590B) to this way of calculating median values for a data stream that was specified as being audio samples of an audio signal or signal samples of a transmitted signal. They also, however, filed three divisional applications to versions of a more general system that was not specifically linked to what the data represented. The difference was in how the invention was claimed, in that the divisional claims included much more specific detail about the system being embodied in hardware on an integrated circuit. The extent of disclosure in the applications of the type of hardware used was limited to the (fairly usual) way of representing hardware, the most detailed one being in Figure 7, shown below. 

The examiner had objected that the way the invention was claimed did not make any difference, and considered that the invention was not allowable because the type of data stream was not specified and the claims had not therefore been 'tethered' to the real world. This, of course, brings to mind the well-established case law dating back to Vicom (T 208/84) at the EPO, which is still being followed at the EPO and UK IPO. According to this case law, provided the data being processed relates to something technical, for example an image (in the case of Vicom), it is possible to be patentable if the method is new and inventive. If this is the case, it does not matter what form the invention is claimed, and claims to computer programs themselves, in whatever form, are also allowable provided they have this 'further technical effect'. Following this principle, it should be clear that it would not make an invention patentable just by specifying that it is embodied on hardware. The Court of Appeal decision in Gale's Application [1991] RPC 305 makes this clear in the UK too. 

In this case, the applicant argued that the invention was technical because it was specifically embodied in hardware and was not therefore a computer program or a mathematical method as such. The hearing officer tended to agree with this and thought that the application did point towards a hardware implementation, largely because the claimed inventions referred to "fixed function circuitry" and "dedicated hardware", which in the hearing officer's view meant the same thing. The invention had therefore to be construed as a piece of hardware and not a computer program. 

On the mathematical method question, the situation was complicated by Gale's Application, in which a ROM was programmed to perform an improved square root calculation method. Substance should rule over form, according to the Court of Appeal, and this could not be enough to escape the exclusion. Nevertheless, the hearing officer agreed with the applicant that, because the invention was in "fixed function circuitry", its implementation was not conventional and was not simply a generic ROM including programmed instructions. This was enough to distinguish it from Gale. This got the application over the line and the remaining steps in Aerotel and AT&T/CVON were passed, resulting in the claimed inventions being allowable. 

There was, however, a twist in the tale. Before sending the applications back to the examiner to get them allowed, the hearing officer noticed that there were still claims in the applications directed to a computer program that would cause the integrated circuit to carry out the claimed method. Rather than finding that this would entirely contradict the applicant's arguments that the way the invention was implemented was specifically on dedicated hardware and not on a computer program, the hearing officer instead simply stated that these claims had to be deleted. 

This is only a decision of a hearing officer at the UK IPO and therefore not precedential. Further decisions may well disagree with it. It does, however, suggest that applications directed to what are in reality mathematical methods embodied on software could be patentable in the UK if they are described as being specifically implemented on hardware. This tends to go against everything that I have seen on this subject since I first started looking, but I expect there will now be others that will want to have a go at the same kind of arguments. Let's see how that works out.

Cargo Cult Patenting

I wrote a while ago about an important point to learn when training to become a scientist or a patent attorney, which comes originally from a lecture given in 1974 by Richard Feynman to students at Caltech. My point then, which was about not taking anyone's word for it (nullius in verba), is of course important and still very relevant in today's world, if not more so. It recently occurred to me, however, that there is another way of looking at it when considering why some people file patent applications.

The key story in the lecture is that, during the second world war, some islands in the Pacific were taken over by the USA and used as bases for air raids on Japan. Some of these islands were inhabited, often by relatively primitive and technologically unsophisticated people. These people were fascinated by all the amazing stuff that was brought in by American aeroplanes. By the end of 1945, however, this all stopped as the war ended and the military went away. The islanders, who by then had become used to all this stuff, were upset and wanted it to continue. Not understanding why the aeroplanes came in the first place, they did what they thought was necessary, which was to try to reproduce everything that they could remember happening at the time the aeroplanes did come. As Feynman tells it, the islanders "arranged to make things like runways, to put fires along the sides of the runways, to make a wooden hut for a man to sit in, with two wooden pieces on his head like headphones and bars of bamboo sticking out like antennas—he’s the controller—and they wait for the airplanes to land. They’re doing everything right. The form is perfect. It looks exactly the way it looked before. But it doesn’t work. No airplanes land".

This brings me on to thoughts about why people decide that they want to get a patent. The fundamental reason, of course, is to try to get protection for an invention so that the invention can be monetised in some way, whether this is by selling the product or service protected by the patent to the exclusion of others or licensing the patent to get royalties from others who want to use your invention to make money and need your permission. Patents are also an important tool in raising and securing investment. If you are starting up a new company to develop new technology, it is often crucial to be able to get some patent applications filed so that investors can have more confidence that there is something that the value of their investment can attach to. Even if the company cannot hope to make the patented product themselves, there is the possibility of using a patent as leverage to make others pay. Sometimes this can turn into patent trolling, where companies acquire patents solely for this purpose, but in many cases the patents did at some point result from actual innovation, even if the patents have changed hands since then.

A further reason why someone might want to get lots of patents has, however, now occurred to me. If, let's say, you are in a position where you know enough about a technical field to bamboozle most people, but have not actually come up with any new and useful inventions yourself (because you don't actually understand the field in a practical way), it may be possible to fool some people with lots of money that you are very innovative and worth investing in by filing patent applications that hardly anyone can understand, especially (and most importantly) the people with money. It may even be possible to draft your patent applications in such a way that they look to the untrained eye very much like real inventions and even have features that provide a genuine novel distinction over the prior art and to which a non-obvious technical effect can be associated. If you file enough of these applications, it is practically certain that some will get through the system and be granted, even by an office as strict as the EPO. The inventions themselves will, of course, be actually worthless because they do not represent a real advance on anything. Their  real worth is instead in generating patents that keep the money flowing rather than protecting any new and inventive developments. While the money keeps coming in, their worthlessness in terms of innovation doesn't matter. You can even start making vaguely threatening noises about how your patent armoury is becoming larger and that others should start to watch out in case you decide to start infringement proceedings. You should not, of course, be too specific about what is being infringed and how to avoid being pinned down to specifics. All this can be drawn out over a period of years while the market is still rising and the money keeps coming in. At some point, however, the likely outcome is that it will all come to an end and some people will lose lots of money. By that point you will hopefully have moved on with your huge gains and left someone else holding the can containing the worthless collection of junk you have built up with other people's money. 

I wonder if this might ring true to anyone?

UNION-IP Winter Roundtable 2021

 

The Union IP Roundtable, held annually towards the end of February, is a regular feature in my calendar. In previous years I have attended the meeting at the DPMA in Munich to hear discussions of various topics relevant to patent practitioners across Europe. I attended my first one as a speaker, presenting my ideas on partial priority a little while before the Enlarged Board of the EPO agreed with me. Since then, topics have covered "Smart IP", literal and non-literal infringement, and indirect infringement. The topics and speakers are always carefully chosen to encourage a range of views from different European jurisdictions, which often highlight the differences that still exist in the patent world across Europe, despite extensive harmonisation over the past few decades. 

The topic for this year's roundtable relates to the one thing it has been impossible to avoid for the past 12 months or so. The title is "IP strategy and challenges in an era of cooperation", which in essence is about what we can do in response to new challenges such as Covid-19 and how IP can help (or possibly hinder). Two main topics will be covered: how governments can balance patent rights and public health (e.g. crown use provisions and when they should be used), and whether or not to patent in the age of Covid-19 (e.g. whether it is acceptable to patent treatments to protect public health). I have my own views on these subjects, but I will certainly be interested to hear what others have to say.

The speakers at the event include Michael Fysh QC SC (former Patents County Court judge), Matthieu Dhenne (Partner at Ipsilon), Jorge Contreras (University of Utah & Open Covid Pledge co-founder), Keiko Higuchi (Mitsubishi), David Rosenberg (former GSK vice president of IP) and Nigel Clarke (patent information expert at the EPO). The full programme can be viewed here. 

As with everything else these days, the meeting will be held entirely online, so there is no excuse not to go this time. The registration fees are consequently lower than normal, being only 20 Euros for Union members and 80 for non-members. Registration is required by 25 February 2021, so book your place now. 

Craig Wright and nChain's European patents

Craig Wright is, to put it mildly, a controversial character. I will not go into the details why, as others have done this in much more detail (see for example Arthur van Pelt's website). It is sufficient to say here that Mr Wright has claimed, and continues to claim, to be Satoshi Nakamoto, the pseudonymous creator of Bitcoin. His claims are at best dubious and are very much contested. For what it is worth, in my opinion it is abundantly clear that he is definitely not Satoshi Nakamoto. The consequences of this, which are many, have yet to be fully worked out.

Despite not being able to prove that he is who he says he is, Mr Wright has over the past few years managed to build up, via the company nChain Holdings Limited in which he plays a key role, what is now a very substantial portfolio of patent applications. On 1 February 2017, nChain started filing GB patent applications. The total number of GB applications filed in the name of nChain now stands at 290, the latest being filed on 23 December 2020. There are also a further 73 applications, all filed in 2016 in the name of EITC Holdings Limited, which have since been assigned to nChain. These applications, which invariably do not progress beyond the first 12 months in the UK, have been used as priority claims for subsequent PCT, EP, US, CN and other applications. The current state of the patent portfolio is consequently now absolutely massive and clearly represents an investment amounting to many millions of whatever fiat currency you choose to use. For a small company based in London (but registered in Antigua), this is an enormous effort, making it very much an outlier in the patent world.

To summarise the entire portfolio would be a task that is far beyond my limited abilities and available time, let alone my readers' attention span. Instead, I will just concentrate on what nChain has managed to achieve so far at the European Patent Office, which Mr Wright has acknowledged is the toughest one to get applications past. It is still relatively early days, given that we are only a few years from the earliest filing dates, but there have already been some successes. A spreadsheet I have created, which is available here, lists all 19 European patents that have been granted to nChain to date (February 2021). None of the patents has yet been opposed, and 12 have already passed the nine month opposition period. An interesting point to note is that all of them are very much computer-implemented and presumably rely on the EPO's established view that applications of cryptography are very much within the allowable area of patentability. 

Given the controversy around nChain and Mr Wright (see here), the fact that their patents have so far attracted no serious attention seems surprising to me. From my limited research so far, there is certainly the possibility that some (see for example here) may be invalid, although it is also possible that the technical relevance of nChain's patents is simply too low to be significant. However, given the huge investment so far, it would be surprising if nChain did not intend to use their patents in some way, otherwise it would be an awful lot of money to spend on what many would consider to be a narcissistic and possibly fraudulent vanity project. It would be interesting to see what others think of it, in particular if there is any relevant prior art on the granted patents that the EPO have not considered.

Update 6-10 Feb 2021: In light of the comments received so far by devoted followers of Mr Wright, I would like to add that it is very easy to verify ownership of any particular bitcoin address. Here's an example:

I, Tufty Sylvestris, confirm that I am the owner of the following address.

bc1quklwszfchvfzpxa7wk8pge7ykczcg0pv54wc8a

IA0TdtltWrzK62rDVw/WkZ36hNOGshhw8UFXySK7VFY9Nv5mQWr6B3aXpDpFH15gPH7uUJsPzlLB/T+eKkXjMWo=

Anyone can verify this unambiguously, for example by plugging the text, address and signature into a bitcoin wallet verification tool (e.g. Electrum, which I use). Craig Wright has not been able to do this for any address containing coins owned by Satoshi Nakamoto (e.g. the single address mentioned in block 0, which was definitely owned by Satoshi, who should therefore have the corresponding private key enabling the address to be signed). Therefore Craig Wright's claims to be Satoshi Nakamoto can be discounted. Hitchen's razor applies.

A allaf gael patent os gwelwch yn dda?

Something has been lost in translation. Source here.

Amser maith yn ôl ym mis Rhagfyr 2007, er fy mod yn dal i fod yn atwrnai patent dan hyfforddiant, diweddarwyd Rheolau Patentau'r DU 1995 i Reolau Patentau 2007. Arweiniodd hyn at lawer o newidiadau, gan gynnwys ail-rifo llwyr. Un o'r newidiadau gweddol fach oedd caniatáu i'r Gymraeg gael ei defnyddio fel iaith achos ar gyfer ceisiadau patent y DU, wedi'i galluogi gan newid i Reol 14 (1). Ers hynny, rwyf wedi cadw llygad o bryd i'w gilydd a fydd rhywun byth yn canfod bod angen defnyddio'r ddarpariaeth newydd hon. Gan nad wyf yn dda iawn gydag ieithoedd, yn enwedig Cymraeg, nid oedd byth yn mynd i fod yn fi. Rhaid i rywun, roeddwn i'n meddwl, deimlo ar ryw adeg yr angen i ffeilio cais am batent yn Gymraeg, o gofio bod dros 800,000 o siaradwyr Cymraeg a rhaid bod ychydig o atwrneiod patent cymwys yn gallu eu helpu.

Ychydig flynyddoedd ar ôl i'r darpariaethau ddod i rym, gofynnais i IPO y DU faint yr oeddent wedi'i dderbyn. Yr ateb bryd hynny oedd dim. Ychydig flynyddoedd yn ddiweddarach, roeddwn i'n meddwl y byddwn i'n gofyn eto, gan feddwl yn sicr erbyn hynny mae'n rhaid bod rhywfaint wedi bod. Yn anffodus yr ateb oedd na.

Mae bron i 13 mlynedd bellach ers i'r Rheolau gael eu newid, felly roeddwn i'n meddwl y byddwn i'n diweddaru fy nghais Rhyddid Gwybodaeth yn yr IPO. Rwyf newydd gael gwybod nad yw'r IPO erioed wedi derbyn unrhyw geisiadau patent a ffeiliwyd yn Gymraeg. A all rhywun fy atgoffa beth oedd pwynt y newid yn y Rheolau?

Corrections and Conflicts of Interest

Rule 7 of the IPReg Rules of Conduct, which applies to Chartered Patent Attorneys in the UK, states (in part) that "A regulated person must not act where his interests conflict with those of a client or of a former client". There is a proviso that allows such a conflict to continue, provided "all of the parties have given their informed consent in writing", but a regulated person "must, however, refuse to act on behalf of conflicting or potentially conflicting parties in contentious matters, in circumstances where the regulated person's actions would not be seen to be neutral or where accepting instructions from both parties would risk a breach of Rule 5 [carrying out professional work in a timely manner and with proper regard for standards of professional service and client care] or Rule 8 [keeping the affairs of clients and former clients confidential] cannot be observed".

Bearing the above in mind, I will set out a possible situation. Let's say you are a patent attorney doing a typical task of engaging a new client (Mr S), who wants to get a UK patent application prepared and filed. You work with Mr S and get the application prepared and filed in November 2017, filing it in his name without paying any fees. So far so good. All seems to be in order, and you wait until near the time for sorting the fees out by the first anniversary. However, ten months afterwards in September 2018 you find out that your client has decided to engage the services of a different patent attorney by filing a Form 51 himself. While unusual, this is not unheard of and Mr S is perfectly within his rights. You then, for the avoidance of doubt, on 17 September 2018 confirm to the UK IPO that you withdraw your representation. Normally that would be an end of it as far as you are concerned. While you might be disappointed to lose your client to a bigger firm of patent attorneys, there is nothing you can do about it. However, shortly after withdrawing your representation you are contacted by Mr H, who says that he worked with Mr S in developing the invention you prepared and filed the patent application for. Mr H is in an ongoing dispute with Mr S about the invention and the company Mr S has set up to commercialise it, and there is a disagreement about who should be named as inventor and applicant on the application. Mr H seeks your advice on what you can do to help him with this, now that you no longer represent Mr S.

At this point, even without having to consult the IPReg Rules of Conduct, you should of course inform Mr H that you unfortunately cannot act for him because this would conflict with the interests of Mr S, your former client and doing so would be against the rules. You advise Mr H that there are plenty of other patent attorneys he can choose from, pointing him in the direction of the register of patent attorneys on the IPReg website. Although unhappy not to be able to engage your services because you already have a good knowledge of the invention, Mr H would then go off to engage someone else and you can then get on with other less contentious things. 

However, this is not what actually happens. Instead, three days after confirming your withdrawal of representation to the UK IPO, you write to the IPO seeking a correction under Section 117 to the applicant, which you had previously identified as Mr S on filing the application, asking that Mr H is also named as applicant and inventor. After some head-scratching, the IPO informs the new representative about the request for correction. Unsurprisingly, the new representative objects and the IPO then decides to refuse the request, suggesting that a reference under Section 8 (entitlement) should be filed to resolve any dispute over who should be identified as inventor and applicant. You nevertheless persist in arguing that a correction under Section 117 should be allowed. The new representative, of course, disagrees and the dispute eventually results in a hearing being held to resolve the issue. In the view of the hearing officer, Section 117 cannot be used to circumvent the more specific legal provisions of Sections 8 and 13, in line with the well known principle generalia specialibus non derogant (the general cannot overrule the specific). You argue that you knew that Mr H was a co-inventor at the time of filing the application but failed to enter his name in error. The hearing officer, however, does not believe you because the error was not the result of a single isolated oversight on Form 1 but also involved stating that all the applicants were inventors and that there were no other inventors. In other words, in the hearing officer's view, you positively affirmed that there were no other inventors when filing the application, making the possibility of this being an error very unlikely. The error was also not noticed until nearly a year afterwards, and only shortly after you withdrew your representation. The hearing officer, unsurprisingly, refuses your request for correction. 

What I am wondering about now is not whether the decision to refuse the correction was correct, as it was clearly a complete non-starter, but instead what position you, as a regulated patent attorney, are now in. Have you acted in accordance with the Rules of Conduct? If not, what should happen? As you might have guessed by now, the situation is not hypothetical but actually happened*. The case can be easily found by those who know where to look.

*UPDATE 17/9/20: Based on information I have received since the above post was published, the hypothetical case could have been slightly different to how I have put it, although given that the actual details are not on the public record it not possible to tell. Let's suppose instead that you were acting for both Mr H and Mr S originally, being instructed principally by Mr S. After the application was filed, Mr S got involved in a dispute with Mr H and, being named as sole applicant, took the patent application with him to the new representative. Does this alter the conclusion about whether there was a conflict?

UPDATE 18/9/20: Following several discussions about how the scenario might possibly be interpreted as not resulting in a conflict, one possibility raised is that your client was originally, and continued to be, Mr H. It might then be argued that continuing to represent Mr H would not be a conflict, since he was always your client and he was the one who paid the bills, while Mr S was only the inventor and applicant. This would require Rule 7 to be interpreted to exclude Mr S from being your client, thereby excluding you from being conflicted. Unfortunately for you, this runs against the definition of "client" provided in Rule 1, which is given as "the principal on whose behalf a regulated person acts as agent and includes any person for whom the regulated person is address for service for any right regardless of the nature of any current relationship". Mr S was the named applicant and you were identified as the address for service in communications from the IPO before Mr S took representation elsewhere. Mr S was therefore a client within the meaning of the rules, becoming a former client afterwards, whether or not Mr H was as well. I wonder if anyone can think of a plausible way around this. 

Patent Office Opinions - s73 Revocations

Since 1 October 2014 it became possible for a request for a Patent Office Opinion under Section 74A to result in revocation, as a result of Section 73 being amended to include subsections 1A-1C, which state:

(1A) Where the comptroller issues an opinion under section 74A that section 1(1)(a) or (b) [novelty or inventive step] is not satisfied in relation to an invention for which there is a patent, the comptroller may revoke the patent.

(1B) The power under subsection (1A) may not be exercised before

(a) the end of the period in which the proprietor of the patent may apply under the rules (by virtue of section 74B) for a review of the opinion, or

(b) if the proprietor applies for a review, the decision on the review is made (or, if there is an appeal against that decision, the appeal is determined).

(1C) The comptroller shall not exercise the power under subsection (1A) without giving the proprietor of the patent an opportunity to make any observations and to amend the specification of the patent without contravening section 76.

Regular readers will know that I have been keeping an eye on the outcomes of Opinions for the past few years, and have written a few posts on the subject. It has now been nearly six years since the amendment came into force, and it seems a good time to provide an update on where things are now. 

Out of around 90 Opinions that have issued to date, 43 have found the patent in question to be invalid for lack of novelty and/or inventive step. Of these, a final decision has been made in 36 cases, whether this is to take no action, maintain the patent as amended or to revoke. The IPO has indicated that revocation will only be done in 'clear cut' cases. In practice this means that if an Opinion finds a patent invalid and the proprietor does nothing about it, there is a strong chance that the decision will be to revoke. In cases where the proprietor contests the Opinion's finding, however, the chances of getting the patent revoked, based on the information to date, reduces to zero. In some cases the proprietor will want to amend their patent, while in others they might contest the finding by filing arguments or requesting a review under section 74b. In all cases so far this has resulted in the IPO deciding not to proceed with revocation. 

The chart below summarises the 36 cases where a decision has been made. In half of them, no action was taken, i.e. the Comptroller decided that the patent was not sufficiently clearly invalid to justify being revoked. Of the other half, 12 have resulted in the patent being amended, either via post-grant amendments under section 27 or central limitation via Article 105a EPC. In only 6 cases has the patent been revoked. The details of each of these cases are provided in the table below, with links to the Opinion, patent register and the decision. In each case the proprietor did nothing in response to the initiation of revocation proceedings under section 73(1A). 

It is perhaps not surprising that the IPO decide in the great majority of cases not to proceed with revocation following a negative Opinion, given that the procedure under section 74a is strictly time-limited and decided only on the papers after a single round of correspondence with the patent proprietor. The opportunity to provide evidence that would normally be possible during court proceedings is not available under section 74a so the benefit of any doubt, whether reasonable or not, is clearly given to the proprietor. Anyone who might think that the Opinion service could be a quick and cheap way to get rid of a troublesome patent is therefore very likely to be disappointed if the patent proprietor decides to put up any level of resistance. However, given that there are no estoppel issues that would prevent similar, or expanded, arguments being put later in revocations proceedings, the Opinions service could be seen as a useful way of trying out a case to see what might work without committing to any particular aspect, the only downside being that the proprietor will then be forewarned and ready next time. This seems to have been used in only one case so far though, based on the information available from the IPO Ipsum register. 

What is surprising, to me at least, is how little the Opinions service has been used. Is this due to a general reluctance to put arguments on the public record, or is it something else? Are enough people even aware of the possibility of requesting an Opinion when an issue of validity or infringement comes up? Could it be a factor that those who are experienced in litigation proceedings are unwilling to advise their clients to use it? It is still a puzzle to me. 

 

Opinion	Proprietor	Patent No.	Opinion Result	Status (23/7/20)
04/15	Fujifilm Corporation	EP1837182	Lack of novelty	Revoked
14/15	Albertus Abraham Petrus de Groot	GB2508152	Lack of novelty	Revoked
02/16	Shane Kelly	EP2160936	Lack of novelty	Revoked
22/16	De La Rue International	EP2493707	Lack of inventive step	Revoked
18/17	IMMOSPA AG	EP2700769	Lack of novelty	Revoked
21/18	Spectrum Technologies Plc	EP1641572	Lack of novelty	Revoked