T 1741/22 - no credible technical effect produced by deriving additional data from medical measurements
An interesting “B” decision from Board 3.5.05 was published yesterday relating to the generation of new data from medical measurements being relied on for a technical effect. The decision is summarised with the catchword: “The mere generation of further data from measurement data already collected from the human body is not a technical effect (T 2681/16 and the Guidelines for Examination not followed)”. The patent at issue in T 1741/22 related to a system for analysing glucose monitoring data indicative of a glucose level in a bodily fluid. Most of the inventive step discussion revolved around Auxiliary Request 10, wherein the Patentee stated that the distinguishing features over the prior art were the steps involving determining and displaying minimum / maximum glucose values. In essence, the Patentee was arguing that “new data” was being generated from glucose monitoring data, which provided for improved analysis for guidance of a patient or physician. They even had an analogous case (T 2681/16) and an example in the Guidelines (G-II, 3.3) on their side! The Board was not convinced. In their view, the claims did not relate to a new “measurement” with technical character, which must involve the calculation of the physical state of an object, such as the human or animal body (G 1/19). Rather, the claims involved processing already measured data to then generate and display further data. The Board found that such subsequent processing of certain measurement data amounts to merely cognitive or mathematical exercise that is inherently non-technical (reasons 2.3). In the decision, the Board fully sets out why they have deviated from T 2681/16 (reasons 2.3.6) and also discusses the “clearly erroneous” section of the Guidelines (reasons 2.3.7). All in all, the appeal was dismissed and the patent was revoked. We can perhaps expect a brief update to the Guidelines next year…
Spotlight
New hire at EIP’s regional hub in Sweden
As the second anniversary of its opening approaches, EIP’s Sweden office hires Rasmus Fredlund, a Swedish and European Patent Attorney. The expansion to Sweden solidified EIP’s commitment to growth in the Nordics – well known for their innovation across the region – and has brought the firm closer to both existing and new clients. The team is steadily growing, first with paralegal Anna Moberg who joined last year, followed by Senior Associate Filip Jörgensen who joined in April, and now with Rasmus starting at Managing Associate level in the Stockholm office. Rasmus has over 15 years’ experience dealing with patents in electronics and mechanical fields. Before entering private practice, Rasmus was an in-house Patent Attorney at Suzlon Technology Group in Germany which makes him very aware of both the intellectual property and commercial challenges of R&D departments. Inga-Lill Andersson, Head of the Stockholm office and EIP’s practice in Sweden, said: “We are thrilled that Rasmus is joining our team! His skills and enthusiasm will be a valuable addition to our offering and align perfectly with the spirit of Samverkan* and joy that defines us at EIP.” Rasmus Fredlund said: “I’m excited for this new chapter and to join this thriving, growing team at EIP. My mixed in-house experience so far has allowed me to build a balanced view and understanding of the challenges innovative businesses face and I look forward to applying my skills to support EIP’s clients.” *cooperation , collaboration , working together External coverage to date: EIP—Rasmus Fredlund | New Law Journal | The leading weekly legal magazine EIP bolsters Sweden regional hub | Careers | World IP Review
No Country for New Laws
Trailblazing developments in Artificial Intelligence have left a litany of complex legal cases in their wake, and judges are tasked with deciding how old law should be interpreted against the backdrop of this technological revolution. Comptroller-General of Patents, Designs and Trade Marks v Emotional Perception AI Limited [2024] EWCA Civ 825 raises the important question of whether an invention involving an Artificial Neural Network (“ANN”) is excluded from patentability as a “program for a computer” under the Patents Act 1977 (“the Act”). After the High Court’s resounding “no”, it appeared that the UK may have become a more favourable jurisdiction than the European Patent Office (EPO) for patenting ANN-related inventions. Last week, however, in a mood of apparent legal conservatism, the Court of Appeal (Nicola Davies, Arnold and Birss LJJ) unanimously decided to overturn the lower court’s decision: the ANN is excluded after all. Emotional Perception’s Case In its patent application, Emotional Perception AI Ltd (“EPAI”) claims a system that contains an ANN. Consider a media file such as one encompassing a music track. The song captures the right mood. How to find more of the same? EPAI’s ANN can identify a “semantically similar” music track, which the system may recommend and send to a listener. To do this, the ANN analyses features of the song, such as the bpm, and estimates distances from that song to other candidate songs in an abstracted embedding space of those features. In the course of training, the ANN learns to correlate distances in the feature embedding space with separations in a semantic embedding space—think, “groovy” versus “romantic”—as predicted by a natural language processor. As a result, the system can return a semantically similar file to the user. EPAI’s system has a noble cause: because it recommends songs based on characteristics of the music itself, rather than statistics such as numbers of streams, it allows budding artists to be promoted on an equal footing with the Swifts and Beatles of the industry. EPAI’s patent application was refused by the UK Intellectual Property Office (UKIPO). Section 1(2)(c) of the Act asserts that “a program for a computer” is excluded from patentability when claimed “as such”. The leading precedent for applying this exclusion, and the additional exclusion for “mathematical methods” under Section 1(2)(a), is Aerotel v Telco Holdings (“Aerotel”). Central to the Aerotel approach is determining whether the “contribution” of the invention is “technical” in nature. On this point, the hearing officer at the UKIPO rejected EPAI’s argument that an equivalence between a hypothetical implementation of the ANN on dedicated hardware, and its software equivalent, meant that the software implementation was inherently technical. Even if the software ANN could be “decoupled” from the hardware ANN, the hearing officer asserted that it would be excluded as a mathematical method. Furthermore, the subjectivity of the semantic descriptions used during training meant that providing a semantically similar recommendation was not a technical contribution—a failed application either way. EPAI appealed. Turning the hearing officer’s logic on itself, the High Court rejected both of his findings. The judge, Sir Anthony Mann, concluded that because a hardware implementation does not involve a computer program, the equivalent software implementation ought not to include one either. Though a semantically similar recommendation may be an inherently subjective judgement, it is also a product of the ANN’s internal logic, i.e. the “technical criteria” that it had worked out for itself over the training process. The Comptroller appealed. The Court of Appeal’s Assessment Reading the Court of Appeal’s judgment, Birss LJ notes that all four of the Comptroller’s grounds for appeal are tied to a fundamental question of law: Should a “program for a computer”, wording from a statutory clause drafted in 1977 to implement the European Patent Convention (EPC) of 1973, be understood in 2024 to encompass ANNs? Only if the answer is “yes” does the need to assess the technicality of the contribution arise. When the answer is “no”, one still needs to consider whether an ANN is a mathematical method. In his own answer to the fundamental question, Birss LJ deftly avoids defining either a computer or a program in scientific terms. He reasons that pillars of British case law support the use of ordinary meanings instead: a computer “is a machine which processes information” in the form of instructions, and a program is a “set of instructions for a computer to do something”. The definitions hold regardless of what the something is, or what the instructions are. In the courtroom, Birss LJ posed another question: “Is there magic in the word ‘instruction’?” The judgment suggests no such “magic” exists—Birss LJ rejects the submission that instructions of a computer program must be in a logical series of ‘if-then’ type statements, or that they must be created by a human author. In a somewhat creative flourish, Birss LJ interprets an ANN as a computer (a machine for processing information), and the ANN’s weights as a computer program (the set of instructions for the computer). Quite how the ANN is different from its own weights is not explained—perhaps the former refers to the network architecture—however the distinction appears to rest on the Comptroller’s contrasting, at the hearing, of a “generic” untrained ANN and a “specific” trained ANN. Regardless, the adopted interpretation means that the ANN falls under the Section 1(2)(c) exclusion. (Birss LJ cites EPO case law to postulate that the same approach would be taken in Europe.) The fact that the exclusion is engaged means that “ANN-implemented inventions are in no better and no worse position than other computer-implemented inventions”. Accordingly, Birss LJ moves on to the question of whether there is a technical contribution. In this regard, EPAI argued that the nature of analysis of the inputs, and/or the external transfer of an electronic file, confer the system with the requisite technical character, and emphasised during the hearing the need to consider the “whole contribution” of the claimed invention. Birss LJ, however, conducts his assessment based solely on the contribution identified by the lower court, and rejects its finding that that contribution is technical, for two reasons: first, the step of sending a recommended file is a “presentation of information”, which is excluded under Section 1(2)(d) of the Act, and second, the running of the program (the ANN’s weights) does not improve the computer (the ANN itself). Rather, the claimed system merely provides an improved file recommendation, and what makes the recommended file “worth recommending” are its semantic qualities, which are subjective rather than technical. Ramifications The Court of Appeal’s decision may disappoint certain members of the UK patent profession and would-be applicants, who have been licking their lips at the prospect that the UK may have become a more favourable jurisdiction than the EPO for patenting inventions involving ANNs. After all, the UK has sought to position itself as a world leader in AI innovation, and it could be argued that a wider availability of patent protection for such inventions could support this aim. However, in the absence of a successful appeal to the Supreme Court, the UK remains close to the EPO, and with a considerably higher hurdle than the US. With such a hurdle in place, it is more important than ever for prospective applicants to get candid advice from a patent attorney who knows where the line is (and how it can be pushed) before going ahead. A Pragmatic Counterpoint In the courtroom, Birss LJ posed an intriguing thought experiment. Imagine that EPAI’s ANN was a mechanical jukebox with in-built “clever technicality” that allowed it to provide a semantically similar track recommendation in the same way as the ANN. The implication was, of course, that the jukebox would be technical, suggesting that the ANN ought to be technical by analogy. The Comptroller’s retort was that a computer program with clever technicalities is excluded because of “policy considerations” and not due to qualities intrinsic to a computer program. Specifically, the exclusion of computer programs from patentability is usually justified by the policy consideration that protection of programming expressions belongs to the realm of copyright law. This exclusion, it is argued, avoids overlapping IP rights and thus promotes legal certainty for competitors and third parties. Although the High Court and the Court of Appeal reached opposite conclusions, both decisions follow a literalist approach, turning on whether a “program for a computer” can be read as an “ANN”. An alternative approach—both purposive and pragmatic in nature—would have assessed whether the purpose of the exclusion applies equally to ANNs: unlike computer programs, it is not clear that ANNs enjoy copyright protection. The exclusion of ANNs from patentability arguably perpetuates a gap in their legal protection: they are neither patentable nor protected by copyright. The Court of Appeal pursues its assessment of the “program for a computer” exclusion on the doctrine that a statutory clause is “always speaking”, meaning it can be broadened in scope over time whilst retaining its original wording. Still, Birss LJ finds there to be “no justification for drawing a distinction in law between instructions created by a computer and those created by a human”. ANNs increasingly contribute to inventions alongside human inventors, and in Thaler v Comptroller-General, the UK Supreme Court recently held that an AI system cannot be an inventor. Evidently, the UK’s highest court has already drawn the distinction for which Birss LJ finds no justification. At the hearing, Arnold LJ ventured into a historical consideration of the types of protection for computer programs debated during the drafting of the Patents Act 1977. Three possibilities were considered: patent, copyright, and a sui generis right. In the absence of either patent or copyright protection for AI models, should the notion of a sui generis right be revisited?
€325 million Funding for Semiconductor Research and Innovation in the UK and the EU
Europe’s Chips Joint Undertaking has bolstered its support for the semiconductor industry by announcing three funding calls with a combined value of up to €325M. The funding calls are to create: a pilot line for photonic integrated circuits (PICs), semiconductor chip competency centres, and a cloud-based design platform. As the UK is part of the Chips Joint Undertaking, the funding is available to both EU and UK companies. This first funding call is up to €180M for pilot lines for the development, testing, and small-scale production of PICs. This aims to facilitate companies making the treacherous leap “from lab to fab”. The up to €120M of funding for chip competency centres aims to provide access to expertise and facilities for experiments. These services are primarily for start-ups and SMEs and will reduce the barrier-to-entry for small companies. Further, the centres will augment the development and design capabilities of existing companies. The design platform funding is up to €25M to create a cloud-based platform for semiconductor chip design. To enhance collaboration and support smaller companies without the capacity to develop their own in-house platform, the design platform will be open access. This funding will reenforce Europe’s strong community of PIC companies and provide opportunities to produce valuable IP. Much of the innovation and creation will be collaborative and state-sponsored. Whilst this can dramatically increase the output of these projects, it also places rights-holders in a minefield of joint development agreements, joint ownership, and licensing agreements. The EU often directs companies to co-ownership of IP. Whilst this can initially provide a simple solution, co-ownership often proves problematic later. For example, when an owner wants to sell or licence their IP, deals can be hamstrung by co-owners. It will be important for companies to carefully consider IP before undertaking such projects. Having an effective IP strategy and IP agreements in place before collaboration and innovation starts will prove vital in the long-term success of such projects - even when dealing with open access or open-source platforms. Companies can apply for funding through the Chips Joint Undertaking’s website. The deadline to apply for funding for the PIC pilot line, the competence centres, and the design platform are 5pm CEST on 17 September 2024, 2 October 2024, and 10 October 2024 respectively. This funding is part of the Chips for Europe initiative under the Chips Act see Andrew Thompson’s article on the EU Chips Act here.
EIP welcomes Litigation experienced Patent Attorney in Germany
EIP is continuing its growth in Germany. Earlier this year, Isabelle Schaller and Sebastian Fuchs became part of a quartet of partnership promotions. This was reflective of the positive development of the German office over the past years. A further progression of EIPs German patent litigation capabilities is the addition of a skilled and experienced patent attorney. We are delighted to announce that we are today adding Felix Hütt to our German team. Felix is a litigation experienced German and European Patent Attorney, who, besides handling litigation related validity challenges, is also an experienced UPC Representative. Before joining EIP, Felix honed his skills in the patent litigation team of Hogan Lovells International LLP. Felix's work in major patent litigation campaigns, including standard essential patents (SEPs), has equipped him with extensive experience across various technology fields. His specialties include information and communication technology, semiconductor technology, electrical engineering, software, and optics. This experience makes him an excellent addition to EIP’s already widely recognised team of communications, computing, and electronics experts. Felix said: “I am thrilled to be joining a dynamic team that has made a name for itself in big litigation. I look forward to bringing my experience and expertise to the table to work with the team in advising and representing clients on the most complex and significant matters.” Christof Höhne, Partner at EIP’s Düsseldorf office said: “It is great to see EIP’s team in Germany growing and developing. Earlier this year, we had two Partner promotions within the team. Now, with Felix joining, we are complementing our skillset. We are confident that Felix will play a key role in the continued growth of EIP.” External coverage to date: EIP Hires Patent Litigator From Hogan Lovells In Germany, Law360 Hogan Lovells patent litigator joins EIP in Germany, WIPR EIP welcomes litigation-experienced patent attorney in Germany, The Patent Lawyer Managing IP weekly update
An Ocean Apart – Differences in US and EPO claim interpretation
Recent cases from the US Federal Circuit and the EPO Boards of Appeal highlight how the two jurisdictions have reached strict, and completely opposite, approaches to interpreting claims in light of the description. These cases demonstrate the need for care when drafting and amending specifications during examination, and consideration of different practices in different jurisdictions. We start in Europe, with decision T1628/21 (Nike Innovate C.V v Adidas AG), an appeal from an EPO Opposition about sports clothing that helps the wearer ‘feel’ body position, to help improve their form. Key to the case was a lower back position feedback system. To avoid prior art, Nike needed to argue that the feedback system was a separate component, distinct from the item of clothing itself. Nike’s patent claimed: “An article of apparel, comprising a garment structure (200)... characterised by a lower back position feedback system (202) engaged with the garment structure at the lower back portion”. The question for the Board was whether this formulation was restricted to a separate lower back position feedback system, or whether it could include a feedback system integral with the garment structure. To US eyes, this would be an easy question. Nike had explicitly stated in the description that integrally formed feedback systems “do not form part of the present invention”. Surely Nike’s claim could not encompass such disclaimed matter? Indeed, the EPO Board of Appeal did find this an easy question to answer, but reached completely the opposite conclusion. The Board stated that the “principle of primacy of the claims” excludes the use of the description and drawings for limiting the claims if an interpretation of the claim in the light of common general knowledge already leads to a technically meaningful result. In other words, if the claim is clear on its face, the EPO will not even look to the description to help with interpretation. The Board found that both possible interpretations (distinct and integral) were clear and valid from the claim alone, and so the claim lacked novelty over the prior art. Nike may have tried to disclaim subject-matter in the description, but the Board would only consider a disclaimer in the claim itself. It’s worth noting that one of the reasons the Board gave for considering “engaged with” to encompass the ‘integral’ meaning was the use of “characterised by” in the claim, which the Board suggested can be understood as introducing further limitations to the garment structure, rather than defining a necessarily "separate" further component. The wording “characterised by” was actually added by the examiner, not Nike, just before grant of the patent. This is part of the EPO’s insistence on using the “two-part form”, a form similar to the US Jepson-style claiming (without the Jepson format’s assumed admission of prior art). Although likely not decisive in this case, this is a reminder to at least consider arguing against use of the two-part form before the EPO. Turning to the US, the Federal Circuit’s decision in Chewy, Inc. v. International Business Machines Corp., 2022-1756 (Fed. Cir. Mar. 5, 2024) makes clear that the wording of the description is very important to US claim interpretation. The patent here related to presenting “advertising objects” on a computer. The question was whether the claim limitation “selectively storing advertising objects” necessarily involved pre-fetching the objects. Pre-fetching was described in the description, but not included in the claim. The Federal Circuit concluded that pre-fetching was required, because the written description “consistently describe[d]” pre-fetching. The Court took particular aim at the “Summary of the Invention” section of the description, which included the pre-fetching feature. Judge Moore noted this did not say a “preferred embodiment”, but rather “the invention”. Judge Moore also highlighted that the method in this section was described as a “method for presenting advertising in accordance with this invention”, which the Judge deemed to be “magic language...language that binds you, whether you like it or not”. Thus, the claim had to be read as including the pre-fetching limitation from the written description. In summary then, in Europe a patentee tried unsuccessfully to bind themselves with a disclaimer in the description. In the US, a patentee accidentally bound themselves by using, among other things, standard (at least in Europe) terms such as “summary of the invention”. So what is the moral of this story? Perhaps “the grass is always greener on the other side”? The patentees here would likely have appreciated the other jurisdiction’s rules. Or, more helpfully, ensure that your applications are drafted and prosecuted with an awareness of the conflicting rules on both sides of the Atlantic. And maybe even seek the help of a friendly trans-Atlantic patent firm, like EIP.
News Flashes
T 1741/22 - no credible technical effect produced by deriving additional data from medical measurements
An interesting “B” decision from Board 3.5.05 was published yesterday relating to the generation of new data from medical measurements being relied on for a technical effect. The decision is summarised with the catchword: “The mere ge...
New hire at EIP’s regional hub in Sweden
As the second anniversary of its opening approaches, EIP’s Sweden office hires Rasmus Fredlund, a Swedish and European Patent Attorney. The expansion to Sweden solidified EIP’s commitment to growth in the Nordics – well known for th...
Company
T 1741/22 - no credible technical effect produced by deriving additional data from medical measurements
An interesting “B” decision from Board 3.5.05 was published yesterday relating to the generation of new data from medical measurements being relied on for a technical effect. The decision is summarised with the catchword: “The mere ge...
New hire at EIP’s regional hub in Sweden
As the second anniversary of its opening approaches, EIP’s Sweden office hires Rasmus Fredlund, a Swedish and European Patent Attorney. The expansion to Sweden solidified EIP’s commitment to growth in the Nordics – well known for th...
EIP Talks Podcast
Internships at EIP with Emily Owen
EIP Career Talks is a special edition of EIP Talks where Chris Ball, Head of Talent Acquisition at EIP, speaks to a panel of EIPers about what it's like to build a career in the IP sector. In this episode, Chris talks to Emily Owen, Trainee Patent Att...
Women in STEM - Celebrating International Day Of Women And Girls In Science
11th February is International Day of Women and Girls in Science. To bring more awareness to the gender gap that still exists in STEM but also to some positive developments towards equality, we invited two of our Patent Attorneys to talk about their ex...
Resources
What's Next For Medtech?
Medical technology is booming. Statistics from the EPO show that medtech and healthcare patents have been the leading area of innovation for many years. It has always been an innovative area but medtech is now home to a growing trend for different te...
The Ultimate Patent Guide For SMEs: Prepare, Protect & Enforce
With SMEs accounting for the majority of businesses worldwide, it is no surprise that we are seeing more and more innovation coming from SME businesses. Effectively understanding how to take that innovation to market, and then to optimise profit genera...