International Intellectual Property - England – Catriona Collerton

PWF primarily provides strategic IP advice to clients for the purpose of protecting their intellectual property using the most suitable IP rights. Predominantly, PWF prepares and files patent applications, and prosecutes these applications through to grant, in order to obtain patent protection for inventions across various technology sectors. PWF has particular strengths and expertise in fast-moving, cutting-edge technologies, such as AI and machine learning, quantum computing and blockchain technologies. We have particular expertise in handling startups and scaleups through their journey from entrepreneur to exit, adapting the IP strategy to fit available budgets in the early stages.
My colleagues, Virginia Driver and Tom Woodhouse, have contributed to the IP chapter of “The Law of Artificial Intelligence”, which delivers insights on the most recent legislation and trends in IP protection for AI.

Patents provide protection for technical inventions. For a patent to be granted, it must define a new invention, as judged on the date of filing the patent application. The defined invention is compared to information in the public domain, including any information released by the applicant.

Therefore, in order to secure patent protection, it is key to file the patent application before the release date of a product related to the patent application, and in many instances before marketing of the product begins. Similarly, the patent application needs to be filed before the invention is presented at a conference or in a scientific paper.

To prepare a patent application, we discuss the invention with the inventors, capturing the technical ways in which the invention is implemented and identifying the new features. We then prepare the patent application, consisting of a technical description, a set of drawings and the claims that define the scope of protection sought. This process would normally take in the region of four weeks.

However, in some instances, there is a need to act more quickly – when information is about to be published. At PWF, we work with a number of startups, who often run into this problem. We are able to prepare and file provisional patent applications to meet tight deadlines, drawing on our expertise in the technical areas to ensure there is no loss of protection. We act as gatekeepers, preventing our clients’ valuable IP from escaping.

In one example, our firm assisted a blockchain technology company with drafting a patent application in time to meet an upcoming priority deadline. The blockchain technology company had entered into a partnership with a sole inventor to develop and launch a new platform. It came to the attention of the blockchain technology company that the sole inventor had filed a provisional patent application in the US almost a year earlier and, therefore, there was a priority date deadline fast approaching.

On reading the provisional patent application, it was clear that the description would need to be further developed before any application claiming priority therefrom could be filed. The blockchain technology company provided our firm with some additional technical documentation. Based on the information we were provided with, and our expertise in the field, we were able to significantly expand the details of the patent application and draft claims for filing. The patent application was prepared and filed in the US and as a PCT (international) patent application, claiming priority from the US provisional patent application, in less than a week.

By meeting the priority date deadline, our firm was able to ensure that the blockchain technology company and the sole inventor can protect their developments based on the US provisional application.

From the perspective of a Patent Attorney firm specialising in cutting-edge technologies, the area we have noticed that is rapidly growing is patent applications filed related to these fast-moving technologies, particularly in the area of AI. In Europe, the number of patent applications filed annually directed towards AI technologies has increased at an average rate of 54.6% since 2010. Globally, the number of AI patent applications published rose from 12,473 in 2011 to 55,660 in 2017. Such remarkable increases show the rapid developments in the technical field, as well as the importance of seeking protection for these developments.

The main challenges that arise when trying to safeguard IP are cost and timing. Our largest challenge for early-stage companies is that they are seeking advice too late. Any form of registered IP right – for example, patents, trademarks or registered designs – are territorial rights. This means that the right must be registered in the territory for the proprietor to have the associated monopoly in that territory.

At PWF, we work closely with startups to protect their IP, who may not have the funds to register their IP. We have a good knowledge of the grants available to startups and investment groups who may be able to provide the funds needed to enable these startups to grow.

We often see companies who have come to us too late in their process to be able to protect their core technologies, because they believe that patents are “too expensive”.

We offer our clients IP portfolio strategy advice through which they can decide which patent applications to pursue where. We can leverage international treaties to keep costs down in the early years. We consider the likelihood of success of the patent application in a given jurisdiction based on the local laws, the client’s markets, the costs involved and the client’s financial position. We also consider the client’s current stage of growth and their reasons for pursuing IP protection. A startup, for example, may be looking for investment with a patent application acting as a badge of innovation, while a larger company may be looking to license or enforce their patents. Based on our advice, our clients are able to obtain an IP portfolio best suited to them and their available budget.

Another reason that companies fail on their IP strategy through lack of advice is that it is difficult for a company to identify which aspects of the products or innovations are suitable for patenting. There are some technologies that are not patentable based on their subject matter or the problem they are solving. Many companies believe this exclusion applies more broadly than it does (particularly in software, where many innovations are patentable). Also, many inventors assess their inventions to be “obvious” (and therefore non patentable) without understanding the legal frameworks that are applied to assess this important criterion.

Under our guidance, clients can explore their developments in the context of patentability to identify which areas of development to focus their patents on. We offer invention capture sessions for identifying and discussing these areas. We also offer IP training to clients, and particularly their R&D and engineering teams, to provide these employees with the tools they need to identify what from their own work may be suitable for a patent application.

Our firm assisted a well-known hotel chain in Europe to recover a domain name, including a variation of their brand in the UK. The case was not straightforward, as there was limited evidence of bad faith, and the domain name comprised arguably weakly distinctive terms. The domain name complaint was defended, but the hotel chain ultimately prevailed. The decision went our way because our evidence cast doubt on the Registrant’s intentions in registering the domain name. Further, the Registrant could not produce any genuine evidence of preparatory acts, and the hotel chain’s repute was such that the Registrant should have become aware of the hotel chain if he had indeed intended to launch his business. The domain name was transferred to the hotel chain for whom we were acting.

Laws surrounding IP are different around the world. Differences lie in what technology can be protected, the way the criteria for granting a patent are assessed, and how the cases are litigated. We act for companies having applications in a range of countries, and we have a strong grounding in US patent prosecution in particular, in addition to our European experience. We have a well-established network of patent attorneys across the globe who we can use for filing application documents where we are not legally qualified, or from whom we can ask advice on local laws if needed.

IP rights are territorial. This introduces complexities, especially in the case of distributed systems for AI models of which only part is located in a territory in which there is IP protection. There is currently an open question about the fair use of data obtained from the Internet for training AI models, and whether data obtained legally in one territory can be used in another in which it would not be legally obtained.

The preparation required before an IP case depends on the type of case.

When preparing a patent application, it may be useful to perform a patent search. This can help to identify the novel features of the invention – such that the scope of the patent application can be directed towards these identified novel features from the offset. However, if the client has a fair knowledge of the developments within the field, such a search may be an unnecessary expense.

In the case of bringing an infringement action against an infringer, collecting market information is important for ensuring the infringing action is taking place. For example, buying one of the infringing items can be used as proof of infringement. The actual infringer should also be identified before bringing the action or sending a cease-and-desist letter to prevent any accusations of unwarranted threats. This information can be found by requesting information from the potential infringer, or through market research. Other due diligence exercises should also be performed before bringing the action. These include ensuring the patent renewal fees have been paid, and checking the proprietor and inventor details are correct, etc.

If instead, the party is the defendant, one defence mechanism is to file a counterclaim for invalidity of the patent. In this case, a prior art search should be performed to try to identify any prior art documents that may provide arguments as to why the patent is invalid. Another useful exercise, involving market research, would be to compare the applicant’s products to any patents held by the defendant. If the applicant is found to be infringing one of the defendant’s patents, a cross-licence agreement might be proposed, which avoids costly litigation fees.

My colleges at PWF regularly attend IP conferences, such as AIPPI, APAA, AIPLA and FICPI. We also have good connections with other IP law firms around the world, with whom we exchange updates and can consult for local law advice.

There is currently a lively discussion around how to protect large AI models that would not, in use, be accessible to users. That is, the AI models themselves would remain hidden. Here, there is a decision to be made over whether to file a patent application – thereby securing protection for the AI model, but at the cost of disclosing how the model works and is trained – or to maintain the details of the model as a Trade Secret.

The EU is working on an AI Act, which will regulate the development and use of AI in the EU. In the proposed legislation, AI systems will be assigned a risk level, with the regulations applied to them being dependent thereon. High-risk AI systems, such as Biometric identification and categorisation of natural persons, autonomous vehicles and medical devices to name just a few, will require rigorous testing, proper documentation of data quality and an accountability framework that details human oversight. In light of this, we may see an even greater increase in the number of AI patent applications filed – as companies operating in the EU are required to provide formal documentation about their models to comply with the regulations.

PWF has far-reaching experience in advising companies throughout their growth journey, from starting out, all the way through to exit – ensuing protection is obtained for IP in quickly advancing technological fields.