Patent and Design Law Update
July 25, 2019
Swindell & Pearson has a law committee that convenes on a monthly basis to review recent changes in legislation and case law. This article presents a summary of some of the items discussed by the committee in a recent meeting.
UK - Patents
The UK Intellectual Property Office (UKIPO) made a decision to allow a patent application for a software based invention. Software-based inventions are patentable in the UK if they are not computer programs “as such”. The law in this area was analysed in our previous articles “Addressing misconceptions: Can You Patent Software?” and “Can software be patented?”. In this recent decision, the patent application was allowed because the invention enables configuration of technical equipment by propagating configuration changes from a master to a duplicate whilst checking for any conflicts. The hearing officer stated: “Taking a step back it is clear to see that the purpose of the invention is to enable a change in the configuration of a real item of equipment so as to have an actual effect on the way it operates. As such the contribution lies firmly in a technical field of endeavour and it is apparent that defining the configuration of that equipment is a technical process which has real world implications”.
Europe - Patents
The highest judicial body in the European Patent Office (EPO), the Enlarged Board of Appeal, looks at points of law when there is conflict between decisions made by a lower judicial body. The following point of law has been referred to the Enlarged Board of Appeal: “In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation's implementation on a computer, if the computer-implemented simulation is claimed as such? “ We will report the outcome in due course.
PCT - Patents
The PCT Yearly Review for 2019 has been published by the World Intellectual Property Office (WIPO). It analyses the long‑term trends for the international and national phases of the PCT, the emergence of additional key global economic players and the development of new technologies. It looks at which applicants have made the greatest use of the PCT, and in which countries and regions of the world applicants have applied the most for patent protection through the PCT over time.
US - Patents
In the US, Congress is in the process of discussing patent eligibility requirements. On 22 May, a bill was proposed which, if enacted would remove the judicial exceptions to patent eligibility and potentially make the US the most permissive jurisdiction. There’s no indication that this bill will be enacted, but it is generating a lot of discussion.
Ironically, the US courts seem to be coming more into line with the European Patent Office’s approach to what is and what is not patentable, at least as far as business methods are concerned. The EPO, when considering whether or not an innovation is patentable ask whether or not it is a “technical solution to a technical problem”. In a couple of recent decisions (Trading Technologies International, Inc. v. IBG LLC, Interactive Brokers, LLC) relating to business method patents, the court indicates that there is a need for a “technical solution to a technical problem” and asks what is meant by “technical solution to a technical problem”.
UK – Designs
A recent decision (O/323/19) at the UKIPO discusses the relevance of surface decoration of an object (a folding dice tray) for a design registration as regards both the prior art and the representations. This case is a reminder of the skill and care required when selecting how to represent a design in a design application.
If you would like more information on any of these matters please contact the author, Paul Higgin, by email at [email protected] or Dominic Bosher at [email protected]. Paul and the rest of the team at Swindell & Pearson has experience in obtaining patent and registered design protection around the world and, in particular, of obtaining patents which enable UK corporations to reduce the Corporation Tax paid on profits earned from patented inventions to an effective 10% using Patent Box tax relief.
Swindell & Pearson is a UK based firm of patent and trade mark attorneys that has been helping businesses and individuals protect and defend their ideas, innovations and brands for over 135 years. Based in the East Midlands, the firm has offices in Derby, Stoke, Wolverhampton and Stafford as well as in Sheffield. To find out how Swindell & Pearson can help you and your business with any intellectual property requirements please get in touch via [email protected] or by telephone on 01332 367 051.