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An EPO decision has instigated a radical change in the understanding of the last point in which a divisional may be filed.

A decision J1/24 from the Legal Board of Appeal of the European Patent Office (see also factually corresponding J2/24) has recently been handed down. J1/24 has radically changed the long‑understood view that a divisional patent application of a European patent application can only be filed up until the day before the date of the mention of grant of a European patent.

Following a criminal complaint filed by the EU Intellectual Property Office (EUIPO), in September 2024 the criminal court of Munich, Germany has convicted three fraudsters for sending misleading payment requests to trade mark owners.

The defendants’ conduct was considered commercial fraud, leading to a sentence of 22 months imprisonment for each defendant and the confiscation of €200,000 (the amount unlawfully obtained) to be used for compensation.

What’s the UPC and what’s changing?

The commencement of the new Unified Patent Court (UPC) and Unitary Patent System on 1^st June 2023, was the culmination of decades of work to further harmonise and unify the patent law landscape in Europe. With the arrival of the new court, rights holders have been granted a new forum for litigation and patent enforcement which allows a single decision to have a binding effect in multiple national European states, while a single Unitary Patent (UP) can be maintained to preserve rights in all of the UPC signatory states.

From its inception in 2023, the Agreement on a Unified Patent Court (UPCA) has had effect in 17 European countries: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands and Sweden, a region home to more than 330 million people.

WP Thompson was among the winners in SME News Magazine's 2024 UK Legal Awards.

The UK Intellectual Property Office (UKIPO) has recently updated its guidelines for examining patent applications relating to artificial intelligence (AI) following the landmark court decision in Emotional Perception AI Ltd v Comptroller-General of Patents. This decision has significant implications for the patentability of AI inventions in the UK, particularly those involving artificial neural networks (ANNs). In this article, we explore the key takeaways from the Emotional Perception decision, the updates to the patent examination guidelines, and provide practical advice for those seeking to protect their AI innovations.

In its decision of 17 April 2024*, the EU General Court has confirmed that the trade mark “Pablo Escobar” must be refused registration on the ground that it is contrary to public policy or to accepted principles of morality.

The EPO is due to increase its fees on 1st April, 2024.  There are some large increases planned in relation to renewal fees, particularly the third- and fourth-year renewal fees that are to increase by approximately 30%.

High growth businesses, despite experiencing rapid expansion in terms of revenue, profits, and market capitalization, often possess few tangible assets.  However, they frequently own intangible assets, such as goodwill, brands, digital assets, intellectual property (IP), and know-how.

To continue to grow, these high growth businesses must consider ways to finance their expansion.  Unlike tangible assets, it is difficult to value these intangible assets because they have no physical shape or form.  The question is, how do these ‘tangible asset poor’ businesses raise funding via traditional methods such as bank loans?

On 15 January 2024 the validation agreement between the European Patent Organisation (EPO) and Georgia entered into force.  Georgia now joins the four other non-EPO member states Morocco, Republic of Moldova, Tunisia, and Cambodia to become one of the “Validation States” of the EPO. 

With the current agreement’s entry into force and the extension agreement with Bosnia and Herzegovina, the number of countries for which patent protection can be obtained on the basis of a single European patent application rises to 45. Applicants can now effectively obtain patent protection in Georgia using the same procedure before the EPO as for obtaining national patents in the 39 member states.

In a long-running dispute centred around whether DABUS, an Artificial Intelligence(AI)-based creativity machine, can be named as an inventor of two GB patents, the UK Supreme Court finally issued the long-awaited decision. Dr Stephen Thaler, the creator and owner of DABUS has ultimately failed in his landmark bid to register two GB patent applications protecting inventions created by DABUS, specifically naming the machine as inventor. The Supreme Court has ruled that while AI machines may have the ability to generate work, these machines are not inventors within the meaning of the 1977 Act.

Our offices will be closed on Christmas and Boxing Days 25 & 26 December 2023 and New Year’s Day 1 January 2024.

In a recent High Court decision, Justice Mann overturned the UK Intellectual Property Office's (UKIPO) refusal to grant a patent for an artificial intelligence system utilising artificial neural networks (ANNs) to recommend similar songs to users[1].

The invention developed by Emotional Perception AI Ltd leverages a deep learning model based on ANNs. ANNs comprise layers of interconnected nodes like neurons in a brain, which process and transmit data signals. By training the ANN model on numerous song pairs labelled with both musical properties and semantic descriptions, it learns to map songs with proximate vectors in musical property space to songs with similar vectors in semantic space. Once trained, the ANN model can analyse an input song's properties, generate a corresponding semantic vector, and find the songs with the closest vectors in its database to recommend.

The site of Alan Turing's pioneering codebreaking achievements during World War II recently hosted another momentous gathering—the 2023 Bletchley Park AI Summit.

Held on November 1-2, 2023, and convened by the UK government, the summit brought together government representatives and industry leaders from major AI powers to address the opportunities and risks posed by advanced artificial intelligence.

We at WP Thompson are proud to recognise the contributions of our Dr Julian Potter and Ranveer Riyat in the authorship of a new book titled "Artificial Intelligence and Patents: An International Perspective on Patenting AI-Related Inventions."

Summary of Facts and Decision

In a recent decision J5/23, the Legal Board of Appeal rejected a request by the applicant to record a transfer of the application from Gyrus ACMI Inc. to Olympus Medical Systems Corporation on the European Patent Register.  The applicant relied on the use of an e-signature to sign an assignment document and, when rejected by the EPO, tried to rely on a previous publication by the EPO that e-signatures would be accepted for the purposes of assignment documents.

The relevant legal provision to be applied is Article 72 EPC, which states that for a valid assignment of a European patent application, the request must be made in writing and signed by all parties to the contract.  The key question in this decision was the definition of the word “signature” and what the role of electronic signatures play in this Article.

We are delighted to celebrate our ranking as a leading Intellectual Property firm in Chambers 2024 rankings.  This year’s ranking marks the twelfth consecutive year in which WP Thompson has been recognised as leading Intellectual Property firm by Chambers.

On the 1^st of November this year the European Patent Office’s (EPO’s) 10-day rule will come to an end, removing the safeguard for late filed submissions whilst providing a more consistent and simplified approach to the calculation of deadlines in Europe. 

A significant shift in the assessment of the validity of priority claims has been confirmed by the EPO’s Enlarged Board of Appeal (EBoA) in the handing down of its combined decision for G1/22 and G2/22. In addition to confirming the competency of the EPO to assess the validity of Paris Convention priority claims, the new decision lessens the restrictions on the right to claim priority in European applications stemming from PCT applications which have been filed with different applicants or groups of applicants listed for different designated states, and which claim priority to an earlier application identifying only one of these applicants or groups of applicants.

A known risk when trying to register a trade mark is the existence of earlier conflicting trade mark rights owned by third parties, which may be an obstacle to the registration of your trade mark. This is particularly true in countries such as China and the US, where the local trade mark office refuses registration of a trade mark on its initiative if they believe there is a risk of confusion with an earlier registered mark, giving the applicant a deadline to respond.

We extend our congratulations to Dr Julian Potter, partner in the firm, who has been named one of the “Top 10 Most Influential UK Intellectual Property Patent Attorneys” by Business Today for his excellent knowledge and understanding of physics, computer science, and business, as well as his expertise and skills in court-based patent litigation.

WP Thompson welcomes the long-overdue announcement that the UK will be joining Horizon Europe – the EU’s key transnational funding programme for research and innovation.

Superconductors are a class of materials that display a number of exotic phenomena, most famously their lack of resistivity under the right conditions, allowing them to carry electrical current with no resistance.

These materials have many scientific applications, where high currents are desired (for example magnets for MRI machines) or where high sensitivity is achieved using superconductors to eliminate noise.

We extend our congratulations to Dr Julian Potter, partner in the firm, who has passed the Nottingham Law School Higher Courts Advocacy course and been awarded the IPReg Higher Courts Advocacy Certificate which entitles him to refer to himself as a Patent Attorney Advocate and conduct advocacy before the English courts up to and including the Supreme Court. Julian made the observation that as usual with Nottingham Law School courses, it was detailed and demanding with an excellent balance of tutorial delivery and practical application of what was taught.  The advocacy element was particularly useful and challenging.

A referral, G1/23 has been made to the Enlarged Board of Appeal to clarify when a disclosure to the public is an enabling disclosure via the interpretation of Decision G1/92.

The established case law for deciding the extent to which the prior use of a product is “made available to the public” stems from an earlier decision of the Enlarged Board of Appeal (G1/92).

In the last week WP Thompson marked 150 years of the firm with events in London and Liverpool.