New IP Trends in Europe: 2023

The COVID-19 pandemic has had widespread impact on business operations of patent offices across the world. Several countries have acquired patents but there is a need to leverage international filing protocols in order to decide the validity of their patents. Owing to information available in a centralized database, agreements such as Madrid Protocol and the Patent Cooperation Treaty (PCT) have helped to streamline IP filing and search procedures.

For example, the Patent Cooperation Treaty enables deferment of major expenses for international filings. The developments in Europe have shown new IP trends that can be highlighted.

Patent office’s review thousands of patent applications. Ensuring that each one of them meets all formal requirements is time intensive. There are certain fields where getting a patent in an accelerated manner becomes pivotal to protect all R&D efforts. E-filing online systems for filing and managing IP rights applications, implementing smart contracts to automate IP license and royalty agreements, using blockchain to secure and protect IP rights through digital authentication and tracking of IP transactions, using AI assisted IP search as well as IP enforcement and litigation and using Big Data analytics to identify and monitor IP infringements become critical legal aspects to keep in mind while considering IPR for technology businesses.

Hence, a unified institution that can ensure patents are protected legally and recognised is necessary. Only when you know the value of your patents would you be able to make use of it appropriately.

 

Unified Patent Court (UPC)

The Unitary Patent (UP) system will allow applicants to get uniform patent protection in 25 EU Members systems by submitting one single request to the European Patent Office (EPO) after publishing of the granted European patent. The Unified Patent Court (UPC) will comprise judges from all participating Member States of the European Union. (UPC) covers patents legally through e-filing, electronic signatures that are recognized and legally binding in the UPC, providing online access to its case management system and digital storage. These legal tech aspects aim to improve the efficiency, accessibility, and fairness of the UPC’s patent dispute resolution process.

The court was set up to decide on the infringement and validity of both Unitary Patents and all European Patents. A three-month window for intellectual property owners to opt in or opt out of their European patents was expected to start on 1 January 2023. But IT challenges delayed this and the UPC is likely to start by 1 June 2023.

Once the UPC is set up, it should have a major impact on securing Intellectual Property Rights  across the EU. However, it raises the question about whether companies will risk putting their intellectual ideas into the new system? Which company will take the lead and file a case? What steps will the courts take to manage the cases filed? Can German and other European patent firms merge to bolster the UPC offerings? In the coming months, can non-practising entities journey across the Atlantic Ocean to use the UPC and will litigation funders be interested in Europe?

It is not easy to find answers to these issues but 2023 promises to see the UPC as a more active legal organisation.

Read here: How UPC can help in redefining your patent monetization strategy?

 

Main Advantages of Using UP

  1. National validation processes will not be required. A renewal fee will have to be paid to the EPO. It will also reduce the costs and time of the administration team.
  2. Post six-year period, no translations will be needed. During the transitional period, a complete translation of the European patent is required, however, the translation has no legal effect.

 

Revamp the Standard Essential Patents (SEP) 

The world of standard essential patents will be revamped in 2023. It is important for businesses to constantly assess whether all the IP assets are adequately protected.  A UKIPO review will take place on whether the SEP system is working as expected and how to make it run more effectively. In 2022, government reports stated that the volume of SEP litigation had risen dramatically.

In August 2022, the UK Intellectual Property Office (UKIPO) discussed whether government intervention was necessary to promote advanced forms of alternative dispute resolution (ADR), including arbitration and meditation. It would make suggestions to the government after detailed reviews and report its findings to the ministers in 2023. Any major policy interventions would be subject to further consultation and discussions.

It is obvious that there is no single solution to global concerns hence consensus is always difficult. Once the UPC comes into force it can try to make implementers agree to the advantages of the use of ADR.

SEP reform is also on the agenda in the EU in 2023. The European Commission, Managing IP is keen towards use-based licensing in the new and revised SEP framework.

In 2020, the commission had declared the launch of an Action Plan for Intellectual Property that aimed to lay down the base for creating a transparent, predictable and efficient system of SEP. However, the EU is still not provided an estimate on when the plan is to be completed. There is a need to identify IP assets in order to manage IP. This involves finding the patents, trademarks, brand names, domain names, and any other tangible and intangible assets of the company that is being investigated.

 

Brexit Issues for IP Practitioners

In 2023, the main Brexit-related issue for IP practitioners and Legal experts is the Retained EU Law Bill (Revocation and Reform), passed on 23 September 2022. It plans to repeal any retained EU law, covering more than 60 pieces of IP legislation, by 31 December 2023.

The government has to decide whether to repeal law, convert it into national law, or make modifications in it. Several practitioners believe that the government has underestimated the scale of this task. IP assets like copyrights and patents are only valid for a certain period of time. Hence there is a need to study the local IP laws of each directory to check the validity.

 

For IP practitioners, here are a few critical legal pointers to be kept in mind in Brexit space:

  1. Jurisdiction and governing law in IP disputes: Disputes over IP rights may now involve conflicting laws and jurisdiction between the UK and EU.
  2. Trademark registration and protection: The UK and EU trademark systems are no longer harmonized, requiring separate registrations in each jurisdiction.
  3. Copyright protection and enforcement: The UK’s copyright regime has diverged from the EU, leading to potential inconsistencies in protection and enforcement.
  4. Patent protection and litigation: Changes in the patent landscape may result in the need for re-examination and grant of supplementary protection certificates for pharmaceuticals.
  5. Data protection and privacy: The UK’s exit from the EU may affect the flow of personal data between the two territories, requiring companies to adopt alternative mechanisms for data transfer.
  6. Customs enforcement and IP rights: The UK’s departure from the EU customs union may create challenges in enforcing IP rights at the border, including counterfeit goods and parallel imports.

 

Currently, over 60 laws ranging from statutory instruments and interpretations of EU directives to direct regulations have been shortlisted for review and modifications. In the near future there could be many more that come under the review of the UK government.

There will be discussions and analysis over the existing laws that were operational for a long period of time.

 

Rise in Third Party Funding Trend

Practitioners expect to see more cases funded by third parties in 2023. The UPC could contribute to this trend. In 2022, litigation funders observed increased cases of funded IP. They indicated further increase once the UPC became fully operational in the EU.

Investors like Erso Capital, declared a $500 million amount exclusively for patent cases. The decision to accumulate money specifically for patent litigation was a result of the rising demand in the tech and life sciences sectors in the EU. James Blick, co-founder of Erso Capital confirmed that this money would be available to companies across the globe. Erso was keen to expand in Europe. EU displayed a gap in the market left by funders that traditionally preferred the US. The nature of, and expectations in such funded cases with third party funding is going to be a significant area to observe in 2023. The investor fund would also be used to fund legal fees and expenses and help law firms that agreed to contingency fee arrangements. These examples show that countries need to be investor ready in order to expand business and patents.

 

Relevance of AI

In 2023, the UK Supreme Court is set to take up around four IP cases. A significant example is the DABUS case. This case could mark the end of artificial intelligence (AI) inventorship as it relates to patent applications. The court hearing will take place in March 2023, and could change the course of patent law in the UK and in other countries.

AI deployment in Intellectual Property Rights (IPR) can be used to analyse patent applications, identify prior art, improve efficiencies and accuracy of the patent examination process. AI can be used for Trademark Infringement detection, contract analysis to improve the efficiency of legal research, IP portfolio management and legal predictive analysis to predict outcomes of legal disputes, helping parties to make informed decisions. These legal tech aspects demonstrate how AI is being used to improve the efficiency and effectiveness of the IPR process and to better protect the rights of IP owners.

Judges and legal practitioners are divided on one hand expressing sympathy for the idea of AI creators but on the other hand, also noted that the current letter of the law does not allow it.

The UKIPO wants to study and consider AI more closely, so conversations in this domain can increase. This should be seen in the context of the UK’s stated goal of becoming a “global AI superpower”. The UK government plans to enhance engagement with the legal and AI sectors, on issues of inventorship.

 

Conclusion:

Businesses need to follow unified patent protocols in order to continue the path to innovation and avoid legal disputes and disturbances.

Researchwire is an ISO 27001 certified, specialised IP research and R&D support company. We work closely with IP & legal teams to provide patent portfolio services and all types of patent searches & patent drafting. We provide enterprises and R&D centres with insightful and effective solutions to address their technology development challenges and roadmap planning.

If you are looking to speed up your patent process, we look forward to service you and guide you in the right direction.

Get in Touch.

 

Read more

How UPC (Unified Patent Court) can help in redefining your patent monetization strategy?

UPC (Unified patent court) is a new system, which was agreed upon by EU member states almost seven years back, and is finally set to go into effect on 1st June 2023, following numerous delays. The new court will be responsible for resolving all disputes regarding the infringement and validity of new Unitary Patents, as well as similar disputes regarding European patents that have been opted out of the system. The UPC will have exclusive jurisdiction rights granted by the European Patent Office (EPO) for UPC countries.

 

The new system will assist companies across Europe in two key areas of concern, by allowing them to: 

  • Obtain a Unitary patent that covers the right of patent owner across all the EU member states 
  • Secure and enforce their patent rights through centralized litigation at the UPC if necessary

The process for securing patent protection and enforcing patent rights in the European Union will soon become simpler, opening up new patent portfolio monetization strategies that previously might have been beyond the reach of mid-size companies.

 

There are some major factors that one must consider while devising their patent monetization strategy:

Ease in applying for patents –

The ability to opt for a Unitary patent, which grants coverage for multiple European countries with one patent, as opposed to obtaining bundle of “classic patents through the traditional European patent system. This can be more appealing and will definitely reduce costs and administrative workload in comparison to validation and dealing with national patent offices in multiple countries.

 

Ease in enforcing the patent rights – 

The introduction of the UPC would provide an opportunity for companies, particularly small and medium-sized ones, who rely on patents to protect their intellectual property, to access the European market which might have been unattainable for them earlier due to the costs and complexity. The opportunity to litigate in multiple countries in a single action in the UPC will significantly reduce the complexity and length of the litigations and lead to a higher degree of compliance with patent rights.

 

Cost Effectiveness –

The Unitary Patent, which will have lower annual renewal costs than obtaining patents in individual countries, will be a more cost-effective option for companies seeking to validate their patent application in multiple countries. Additionally, with the Unitary Patent, there is no need to separately validate it in each country, avoiding the expenses of local patent office fees and the need to hire local attorneys. Another important benefit of a Unitary patent is that it needs only to be translated into one other EU official language after the grant whereas in the current European patents (non-unitary), translations are to be filed for the different states in different territories where the patent needs to be validated. 

Currently, enforcing patent rights in the EU requires separate legal action in each member state, which can be very costly for most companies. The UPC will provide an opportunity to litigate in multiple countries through a single action, which will greatly reduce the cost of multinational litigation. This will make it more appealing for companies to validate patents in additional countries, as there will be little to no incremental cost in including smaller countries in litigation cases.

 

Simplicity and Efficiency –

The cumbersome process of the need to validate and renew a granted patent on a country-by-country basis will be simplified with the introduction of the Unitary patent, which allows for a single renewal fee. This will reduce the administrative costs and expenses for the innovator, allowing them to focus more on R&D and strategy costs to monetize its patent.

The introduction of a Unitary patent allows for any litigation related to it to be handled by the UPC, a specialized court for patent disputes in Europe, which means that parties no longer need to navigate separate legal processes in different countries. Instead, they can use a single procedure in a common court and receive a single decision that applies to all countries where the Unitary patent is valid.

This creates a centralized, efficient, and cost-effective system for handling post-grant proceedings, such as infringement claims.

The UPC’s ability to quickly resolve cases will significantly decrease the cost of prolonged litigation and provide businesses with more certainty in a shorter period. This will also enable businesses to bring their cases to court more swiftly if necessary.

 

Primary language: English –

The Unitary patent system will primarily use English as its language, with all patents having an English version, making it easier for businesses in English-speaking countries such as the UK and US to participate in UPC hearings in their native language, eliminating the need for expensive translations. Additionally, once the system is in place, obtaining post-grant translations will no longer be required, simplifying the processes, and reducing costs.

Overall, the UPC has the potential to make the process of enforcing and monetizing patents more efficient and effective for patent holders, which could help to encourage innovation and the development of new technologies. Additionally, the UPC could help to reduce the risk of patent litigation by providing a more predictable and consistent legal framework for patent disputes. This could make it easier for companies to assess the potential risks and rewards of licensing or using patented technology, which could also contribute to the monetization of patents.

With the advent of UPC, we at Researchwire believe that all companies will be able to protect and monetize their patents more effectively. Our team at Researchwire can work with you on identifying your valuable patents and help them monetize by providing the evidence of use charts that will be crucial in supporting your arguments while enforcing your patent rights in a Unified patent court.

CONTACT US

Read more

Things To Do When The Patent Examiner Rejects Your Patent

Filing your patent application is an exciting part of the process. But the chances of your patent being rejected will always loom large over your head. Thankfully, there are steps that you can take when the patent examiner rejects your patent.  

Dealing with your patent getting rejected is also a part of the process. In a Yale University study of over 2.15 million US patent applications from 1996 to mid-2013, more than 90% of them were rejected. So if you have filed a patent and it has been rejected, do not fret, you can argue against the examiner’s rejection and get things fixed. 

Before you go about arguing against the rejection, make sure that you know why your patent application has been rejected in the first place. When you understand the reason behind the rejection, you will be able to find a common ground and will also be in a position to seek the right kind of counsel. 

Who denies your patents?

The rejection or approval of patents happens at the patent office. Since there are a large number of patent applications that they receive, you should make it easy for the patent examiner to go through your application with ease. Ensure that your invention is patentable, unique, and non-obvious. Indulge in patent search to make sure that there is nothing similar to your invention. Give enough reasons for the patent examiner to approve your patent application. 

Why do patent requests get rejected? 

For your patent to be approved, it has to pass the patentability criteria. Below are some of the criteria.

Your invention is obvious- If your invention is not unique enough, then the chances of your application getting rejected is high. Your invention must at least be different from other inventions that are similar to yours. 

Poorly filled application- If your application is dotted with errors, you run the risk of getting your application rejected. Ensure that you follow all the guidelines that are to be met when drafting the application. To bring validity to your claims, add as much technical details as possible in a way that everyone can understand. 

Your invention is not novel- The invention for which you are seeking a patent should be the first of its kind. Before you file the application, it is wise to do a patent search to find the novelty of your invention. 

The importance of hiring a patent firm:

While there are a number of measures that you can take to increase the chances of your patent application being accepted, there is a crucial step that you can take to swing things in your favor. If you want a highly efficient solution, then it is wise to seek the expertise of a patent firm. They will not only help you in drafting the patent application, but will also be available throughout the entire process. A reputed intellectual property (IP) firm will have a team of experts who will help you wade through the process efficiently. 

 

Steps to take when the patent examiner rejects your patent:

  • Show why your invention is different:

There are chances that the patent examiner is misinterpreting the prior art incorrectly or too broadly. Or they may be applying the prior art references wrongly. What you can do in such a scenario is to argue how certain claim features are not found in the referenced prior arts. The examiner will then review your arguments, and two things can happen. 

  1. They can review your arguments, agree with them and find new references (or)
  2. Disagree with your arguments and maintain their stance on rejecting your patent. 

Here is what you can do in this scenario. Take the drawings that have been filed in the initial application and highlight a component or a processing step which isn’t shown in the records. You can ask the examiner-”Our invention has X, can you find X in the art of record?” 

  1. Adjust or modify your claims:

There are times when the examiner wants you to make the application easy to understand, so they would advise you to phrase your claims differently. If you make the changes that they have suggested, then the issue could be resolved. 

How you phrase your invention on your patent application has a huge impact. Using irregular terminology or slang is one reason why many patent applications get rejected. Having the advice of an experienced IP team will solve this issue as they are more careful while writing down your invention in the application and are better equipped to handle the entire process.  

  1. Show how your invention works:

There are times when the patent examiner gets back with a comment that reads-”Does the invention work?” 

Here’s what you need to do in this scenario. 

  1. Explain the landscape of relevant technology which existed before your invention.
  2. Explain how your device works.

One of the best ways to explain your invention clearly is to make a video where you outline everything about your invention. If you can schedule a direct meeting with the patent examiner, you can describe your invention directly. 

  1. Check if your patent application is complete:

The first thing that the patent office will review is your application and see if it includes all the necessary parts. To move your application to the next process, the examiner will even go through the technical aspects of your patent application. 

For your patent application to be complete, the following should be included:

  1. At least one patent claim
  2. Inventor’s oath or declaration
  3. Payment for filing the application
  4. Drawings to describe the invention, if necessary

If any of these are not met, the patent office will get back to you saying that you have submitted an ‘incomplete’ application. 

Conclusion:

Your objective should be to convince the patent examiner to allow your claims by modifying them and also by presenting your case properly. It may take a bunch of responses before you can find a middle ground and get your patent application approved. Do not worry about getting your patent rejected, you can make changes to address the objections raised by the examiner.

If you are looking for a one-stop IP solution, ResearchWire is more than happy to onboard you as a partner.When you are not sure about what to do when the patent examiner rejects your patent, get in touch with us- and we can help with next steps.

GET IN TOUCH

Read more

Different Patent Classification Techniques: When to use What!!

Different Patent Classification Techniques: When to use What!!

Patent classification is the most important phase for analyzing different technological trends. Patents are classified according to different parameters or different technological features present. It is to be noted that a single patent may disclose more than one technological feature and therefore, a patent can be classified more than once.

A technology classification/taxonomy can be defined before the start of the classification process or a technology classification/taxonomy is built progressively as patents are classified one by one.

Depending upon the requirements and the scope of the project, different patent classification methods can be used to provide different insights into the patenting strategies and market dominance of one’s competitors.

  1. Class-based bucketing: Based on a pre-defined taxonomy (according to the technology sub-domains of the product/service line of the client), different relevant IPC/CPC classes are identified. This class-based classification is then replicated onto the extracted patent dataset, thus classifying the patents into various categories and sub-categories.

For example: Let us consider Wireless and Broadcast communication technology (broad category). Various relevant classes can be identified such as H04W and H04H, and then, on basis of the definitions of its various child classes, they are put into different buckets (based on the taxonomy) representing different sub-categories such as

H04W80/00: Wireless network protocols

H04W88/00: Devices for wireless networks

H04W40/00: Communication routing

H04H20/00: Arrangements for broadcast

H04H2201/00: Aspects of broadcast communication

Publications having these classes are hence bucketed. In Class-based bucketing, a patent may be bucketed multiple times into different categories. The accuracy achieved in class-based bucketing is moderate and the time required is less to moderate depending on the number of categories present in the taxonomy.

  1. String-based bucketing: Based on a pre-defined taxonomy, strings are formed for each of the sub-categories using keywords specific to that domain and their linguistic synonyms. By analyzing hits of the strings, the strings are refined to avoid any noise that may come. After a few iterations, the desired dataset for a sub-category of technology is obtained.

For example, The string for Wireless and Broadcast communication can be as follows:

ALL=(((wireless OR broadcast) NEAR5 communicat*) OR (wireless NEAR5 protocol*) OR ((antenna OR radio) NEAR3 construct*) OR (remote OR distant OR tele* OR online)) OR (Communicat* NEAR3 (rout* OR path)) OR ((frequency OR amplitude) NEAR3 modulat*) OR (transceiver OR receiver OR transmitter) OR (base station))

 

Though the strings are very specific, a small percentage of the publications might go undetected by the search algorithm of the database because of linguistic barriers (since translations of some of the non-English publications might not be available). Due to this, keywords+ class-based strings are formed, giving optimized and reliable results. Hence, the patent portfolio is classified into various categories. Its accuracy is slightly less than that of class-based bucketing, but the time needed to invest in it is the same.

 

  1. Manual Bucketing: Each patent in the dataset is analyzed thoroughly by experienced researchers. Depending on the type of invention and the key features that the publication discloses, it is classified into one of the categories, according to the pre-defined taxonomy or a taxonomy that gets build up during the manual analysis process. When compared with the above two methods of bucketing, manual bucketing has the highest accuracy (human intelligence being the contributing factor) as well as it takes most of the time.

 

  1. Automated Patent Classification using the NLP model: The adoption of NLP and AI-based auto-classification of patents has been sporadic. Automation for patent classification not only helps to reduce human error but also accelerates the classification process. Keywords and synonyms are identified pertaining to specific sub-categories (according to the pre-defined taxonomy) and are fed into the Natural Language Processing model for context analysis and lexical semantics to determine the central idea behind the invention. Hence classifying the patent portfolio into different categories. The accuracy achieved using such a model is moderate and the time required is less.

 

Choosing one of the above-mentioned classification methods depends on the size of the portfolio, the accuracy needed and the time allotted to the project along with the budget of the client for competitive benchmarking and hence the resources (number of people) allotted to the project are decided accordingly. In the case of highest accuracy, we need manual analysis as even NLP is not enough to do that. NLP can be used for a helicopter view of the overall portfolio.

Depending upon customer needs, At ResearchWire Knowledge Solutions, we follow a strong methodology and robust process to evaluate patent data and deliver what the client requires. ResearchWire Team consists of experienced Patent and Data Analysts who come from different industries. We understand the client requirements well and deliver useful insights using advanced data visualization tools to make the client’s decision-making process more effective and easier.

Read more

Whitespace analysis: A smart step towards research, innovation and securing patent rights

Whitespace analysis: A smart step towards research, innovation and securing patent rights

How to find whitespaces

Recently during a client discussion about White space analysis where it was pointed that in his technology domain, not many companies file for the patents. Therefore, it is inaccurate to find whitespaces just by analyzing patent data set.

So, the question was, what could be the smart way to find whitespaces in such cases.

Before jumping straight to the answer, let’s look at what the whitespace analysis actually is and how is it important for any company or organization to capture the market ahead of their competitors.

Whitespace analysis helps to identify overcrowded and sparse areas in a technology domain. It helps in identifying new opportunities for innovation in less competitive areas.

How to go about the whitespace analysis         

For any whitespace analysis, a scope is defined in terms of what is expected from the whitespace analysis. For e.g. whitespaces can be identified in terms of

Technology,

Applications,

Material, etc.

Similarly, many other parameters can be selected. After the scope is defined, relevant patents are identified using combination of keywords and classes. All the patents are analyzed then according to parameters defined. Patent classification is done according to different methods. Generally, after the classification is done, the areas with a smaller number of patent filings are considered as whitespaces.

But this approach may not give a full-proof idea about the whitespaces due to many reasons

  1. It is not necessary that company files for patent in a particular technology domain
  2. It may happen that technology is old enough and therefore the patents could not be captured into the dataset due to date restriction.

Therefore, a 360-degree analysis is needed to shortlist the whitespaces. Apart from the patents, it is important to look into the Non-patent literature which includes both the research papers and products available in the market for the related technology domain.

To answer the client’s question, we suggested that Whitespaces can’t be decided on the basis of the number of filed patents only. The inclusion of other literature is also necessary such as existing products, research work, etc. in the technology domain.

GET IN TOUCH

Read more