Inside IP Autumn Winter 2018

A word from the editor: Simon Taor

When I was growing up, Artificial Intelligence (AI) featured in things like science fiction films or documentaries about future life. Nowadays, AI and Machine Learning (ML) are becoming an increasingly normal part of everyday life, with AI/ML inventions powering many devices and technologies that we take for granted. We at Venner Shipley have a very strong AI/ML team, and we handle a large number of cases in this field. Richard Kennedy and Peter Thorniley both have vast experience in this area, and they provide an in-depth look at the issue of patenting AI/ML inventions at the EPO. On a similar EPO theme, Catrin Petty discusses some important updates to the EPO Guidelines and Matt Handley has a review of some developments at the EPO, including the election of a new president. In addition, Ruth Shelton discusses some important issues relating to SPCs in our regular SPC series. Like AI/ML, the Internet of Things (IoT) is another technology area that has seen a significant increase of patent activity over the last few years. Rob Cork runs through some of the challenges in protecting IoT inventions. Furthermore, the internal combustion engine (ICE) has been around for a long time, but are we at the end of the ICE age? Jack Rogan provides a detailed discussion of this in our latest edition.

Regarding trade marks, we have a number of interesting articles in this issue. Julia McFarlane provides some analysis and discussion on the issues of protecting trade marks for cannabis related goods, David Birchall discusses some issues relating to trade marks for whisky, Yoann Rousseau discusses the implications of the new EU Trade Mark Directive and Camilla Sexton discusses the implications of two recent UK High Court decisions on trade mark specifications.

A round up of the latest edition:

Patenting Artificial Intelligence
Following its widely attended “Patenting Artificial Intelligence” conference in May this year, the European Patent Office has published new Guidelines on the patentability of Artificial Intelligence and Machine Learning. In this article Richard Kennedy and Peter Thorniley take a look at the patentability criteria for AI/ML inventions in the light of this new guidance.

CJEU clarifies the scope of the ‘Specific Mechanisms’ in case C-681/16 Pfizer v Orifarm
Since 2004, 13 additional Member States have joined the European Union. As part of the expansion of its membership, the EU has had to deal with the situation where new Member States may not have offered the same level of patent or Supplementary Protection Certificate protection for pharmaceutical products prior to their joining, Ruth Shelton explains.

Is it the end of the ICE age?
Jack Rogan discusses whether we are coming to the end of the “Internal Combustion Engine” age.

Trade mark protection for a growing cannabis market
Julia McFarlane examines the fast changing, and potentially lucrative, cannabis market and seeks to discover if brand protection is becoming increasingly important for cannabis marks and products.

Yes, it’s German, but is it Scotch?
David Birchall looks at Scotch whisky trade marks, and how so many begin with GLEN.

CERN: the Large Hadron Collider
In September 2018, the Large Hadron Collider at CERN marked its 10th anniversary. Kathryn Rose discusses this milestone for CERN, and looks how its open science policy can sometimes be conflicted with the commercialisation of its IP.

Updates to the EPO Guidelines
Every year the EPO updates the Guidelines to not only reflect changes in the law, including important case law decisions, but also changes to the EPO’s internal practice. The latest revisions have now been announced by the EPO, and came into effect on 1 November 2018, Catrin Petty provides an overview.

New EU Trade Mark Directive
Yoann Rousseau provides an update on the new EU Trade Mark Directive. The Directive is aimed at harmonising the trade mark laws of EU Member States, who have until 14 January 2019 to transpose its provisions into their national laws.

Trade mark specifications
Two recent decisions in the UK High Court by the same Judge, have considered similar questions concerning registered trade mark specifications in the UK and the EU. Camilla Sexton discusses the cases.

European Patent Office news
Matt Handley provides an update on the new EPO president. António Campinos has now taken office having been elected to succeed Benoît Battistelli by the Administrative Council of the European Patent Organisation, the EPO’s legislative body, for a five-year term.

Patenting the Internet of Things
As the Internet of Things revolution gathers pace, Rob Cork takes a look at the challenges that are likely to face applicants seeking to protect new IoT-related inventions.

One year on – the impact of Actavis v Eli Lilly in the UK courts
David Pountney analyses the impact of one year on decision that the Supreme Court made over its groundgreaking case in Actavis v Eli Lilly.