2 December 2019

Inside IP Autumn Winter 2019

Venner Shipley’s Intellectual Property Magazine featuring a roundup of the latest cases and developments in IP.

A word from the editor: Simon Taor

European patent practice is heavily influenced by the case law of the Boards of Appeal at the European Patent Office (EPO). Every year there are hundreds of decisions made by the EPO Boards of Appeal, but decisions of the Enlarged Board (which carry the greatest weight) are much rarer, with only two or three cases being referred a year. Regarding computer implemented inventions, there have been well over a thousand Boards of Appeal decisions about what is patentable, but no Enlarged Board has fully wrestled with the issue. This will change with Enlarged Board case G1/19, which is the subject of our Autumn Winter 2019 cover article. This case is being handled by Venner Shipley’s Pawel Piotrowicz and Pawel provides an overview of this very important European patent matter.

On the subject of the EPO Boards of Appeal, the Rules of Procedure of the Boards of Appeal undergo some important changes on 1 January 2020, and our appeals expert Tim Russell provides a detailed overview of the changes in this this edition. It will not be a surprise to many that there has been a huge growth in the filing of patents related to AI technology, and Richard Kennedy discusses the issue of whether an AI can be considered to be an inventor of a patent, with reference to a test case that is being processed by various patent offices. In addition, Robert Peake and Ronique Hossain discuss data protection considerations in the development of AI. Before joining Venner Shipley, Gary Whiting gained extensive experience as an in-house patent attorney. Gary draws upon this experience to discuss effective use of outsourcing for developing patent portfolios. The UK has a tax incentive scheme called Patent Box, which enables companies to benefit from a reduced rate of corporation tax for the profits derived from innovative products and processes protected by a qualifying IP right. Ian Grey provides an update on this scheme.

As part of our series of articles relating to graphical user interfaces, George Hudson provides an overview of how design protection can be used to protect graphical user interfaces. Regarding trade marks, David Birchall discusses issues related to sound trade marks and Camilla Sexton provides an interesting summary of a recent decision relating to bad faith concerning a trade mark for MONOPOLY. Also, Jan Walaski and David Birchall provide an insight into the implications of the UK General Election on Brexit.

As a final point, I am very pleased to note that Venner Shipley has been recognised by Legal 500 UK as a Tier 1 firm for PATMA: Patent Attorneys. This recognition means a lot to us, and is the result of the hard work of all of our attorneys and the wider Venner Shipley team.

A round up of the latest edition:

AI Inventorship
Richard Kennedy explores if an invention is created by an AI, should the AI be named as the inventor?

MONOPOLY: Trade Mark Edition
Camilla Sexton highlights the recent case of Hasbro, which had one of its EU trade mark registrations for MONOPOLY struck out in part.

Protecting a New Medical Use of a Known Substance
Catrin Petty looks at how patent protection can be pursued for a new medical use of a known substance in five key jurisdictions.

Effective Use of Outsourcing for Developing Patent Portfolios
Based on his experiences, Gary Whiting highlights how in-house departments can make effective use of outsourcing when developing patent portfolios.

What’s in the Patent Box for SMEs?
Ian Grey provides an update on the UK tax incentive scheme, Patent Box.

G1/19: Just What do Those Questions Mean?
Pawel Piotrowicz has been at the forefront of developing EPO law regarding computer-implemented inventions following the EPO Board of Appeal referring questions to the EBA on G1/19. In this issue Pawel discusses the referral and highlights the wider implications for the patentability of simulations surrounding the decision.

Designing for Compliance – Data Protection Considerations in the Development of Artificial Intelligence
Richard Kennedy, James Tumbridge, Robert Peake and Ronique Hossain explore how the application of AI, and ML, to support decision making and accelerate innovation has experienced exponential growth in recent years.

New Year, New Rules: Changes to the Rules of Procedure of the EPO Boards of Appeal January 2020
Tim Russell looks to 1 January 2020 when new Rules of Procedure of the Boards of Appeal of the EPO come into force.

Integrated Circuits
To celebrate the 60th anniversary of the invention of the integrated circuit, Rob Cork looks back on the pioneering work of two US inventors, Jack Kilby and Robert Noyce, whose research paved the way for virtually all modern electronic devices.

Implications of the UK General Election on Brexit
We provide an insight into the implications of the UK General Election on Brexit.

Design Protection of Graphical User Interfaces
We continue our series of articles on GUIs. George Hudson explores the extent to which GUIs can be protected under the various design law systems covering the UK.

Sound Marks
David Birchall highlights the topic of sound trade marks.

100 Engineering Ideas That Have Changed The World
We continue our series of articles, where we look at some of the greatest engineering ideas that have had an effect on our everyday lives. The list of 100 engineering ideas was compiled by The Institution of Engineering and Technology (IET).

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