Free live Webinar on Computer Implemented Inventions (CII) in Latin America on Wednesday July 8th at 12;00 EDT.
Join Jose Santacroce, Head of Moeller’s Patent Department, and Mariano Municoy, Head of our Legal Department in this live webinar where they will analyze the most important issues when filing, prosecuting and enforcing patents protecting CII in Latin America, particularly in Argentina, Brazil and Mexico
Mr. Santacroce retired as Director at the European Patent Office in the field of Computers (Human-Computer Interaction) after working there for 30 years and since early 2018 has led Moeller Patent Department.
Mr. Municoy has 20 years of legal experience and teaches regularly IP courses both in the US at Chicago-Kent as well as in Argentina at Austral and San Andres Universities.
Even though in absolute terms the number of CII patent applications in Latin America is still very low when compared to those of developed countries/regions, relatively speaking they have been growing faster than applications in other fields of technology, which very likely will accelerate in the near future as we all adapt to the new ways of living and working in an-after-COVID 19-world
During the webinar, they will present both a general picture and some particular insights about the best ways to achieve the optimal legal patent protection for CII inventions in Latin America.
At the end, there will be some time available for live Q&ARead More
Patent applications in SDV
On November 6th 2018, the European Patent Office (EPO) in cooperation with the European Council for Automotive Research and Development (EUCAR) released the study “Patents and self-driving vehicles”. The key findings of said study are summarized below:
The patent applications in SDV have been divided into two main technology sectors:
Automated vehicle platform, which encompasses technologies that are embodied in the vehicle itself. It includes inventions that enable vehicles to make autonomous decisions (Perception, analysis and decisions), inventions in the automated parts of the vehicle (Vehicle handling), and inventions in the underlying hardware and software (Computing).
Smart environment, which comprises technologies that enable SDVs to interact with each other and with their surroundings. It includes inventions in vehicle connectivity and related communication infrastructure (Communication) and inventions in traffic management, vehicle identification, automated parking and interfaces between vehicles and the electricity grid (Smart logistics).
The EPO´s study mentions that over the past decade, the EPO has received around 18,000 patent applications in SDV technologies, almost 4.000 of them in 2017 alone.
Annual patent applications in SDVs increased by 330% compared with 2011, a growth rate that is more than 20 times faster than that for patent applications in general at the EPO for the same period.
Perception, analysis and decision is the largest SDV technology field, while Communication and Computing technologies have grown the fastest since 2011.
Top 20 patent applicants
Patent applications in SDV involve both automotive and Communication & Computing (ICT) industries, being the top 20 applicants: Samsung, Intel, Qualcomm, LG, Bosch, Toyota, Nokia, Ericsson, Microsoft, Continental, Sony, Boeing, Volvo, Google, Panasonic, Huawei, Audi, Hitachi, Siemens and Honda.
Europe (EPC) and the USA have a strong lead in SDV innovation, with about 1.400 patent applications each in 2017.
European applicants stand out in the field of Vehicle handling, Smart logistics and Perception, analysis and decision. US applicants dominate in ICT.Read More
On 30 October 2018, the Brazilian National Institute of Industrial Property (INPI) in order to reduce its current backlog published Rule 227/2018, regulating for the analysis of patents using the results of searches in other national or regional patent offices.
The Rule is applicable to patent applications which:
1. have not already been submitted to technical examination of the INPI;
2. have not applied to any other form of priority examination by the INPI;
3. have not received any pre-grant opposition;
4. have a counterpart application with prior art searches realized by national or regional patent offices in other countries.
Once the above conditions are fulfilled, the INPI will publish an opinion (under code 06.20) setting out prior art documents cited by foreign patent offices and inviting applicant to submit a new set of claims and/or arguments as to the patentability of the claimed invention. Thereafter, the applicant will have 60 days from the date of publication to answer such queries.
The new Rule is based on the findings of an existing pilot program introduced in January 2018, with the objective of evaluating the possible simplification and streamlining of technical procedures for examination of patent applications by using the work already done by other patent offices in the world. Such strategy is in line with the INPI Action Plan of 2018, which seeks to reduce the backlog of patents in the INPI (currently there are approximately 200,000 patent applications pending examination).
Source: INPI BrazilRead More
by Moeller IP Advisors
In the prestigious Bloomberg’s 2017 Innovation Index published last year, Mexico failed to rank among the first 50 top countries. Brazil and Argentina ranked respectively 46th and 49th.
The index is developed on the basis of benchmarks that include spending on research and development, manufacturing, the presence of hi-tech companies and of course, the number of patents filed in the country within the year. From a legal point of view, this last aspect is particularly worth analyzing.
Patents filed in Mexico and the role of Patent Prosecution Highways
In the period 2011-2015, 79019 patent applications were filed, according to data released by the IMPI, the Mexican Intellectual Property Institute. Only around 8% of all the patent applications came from Mexican applicants, a number that is particularly striking if compared with China, where 85% of the applications in the country are filed by Chinese applicants.
In practice, in Mexico, there was one patent application per 100,000 inhabitants per year, while in China there was an average of 50 applications per 100,000 inhabitants per year.
Patent applications in Mexico come especially from public educational and research centres like the UNAM – the National Autonomous University of Mexico, the CINVESTAV – the Center for Research and Advanced Studies of the National Polytechnic Institute and the UAEH – the Autonomous University of the State of Hidalgo. These entities are usually interested in licensing their patents to foreign companies.
There are, however, examples of successful Mexican private companies, like the pharma company Laboratorios Senosiain or Laboratorios Silanes, that have developed a treatment for venomous snake bites, entering the U.S. market this year.
As said, the vast majority of patent applications in Mexico come from foreign applicants, especially Norway, Turkey, Canada and United States residents. This is certainly an indicator of the interest of foreign companies in the Mexican market, triggered by the lower cost of labour, the good infrastructure and the interest toward pharmaceuticals and biotechnology, two areas that have seen several legal developments in the latest years.
WIPO World Intellectual Property report 2017 showed that IMPI is still one of the slowest offices to issue a final decision on a patent application, with an average of 3 years. For this reason, Mexico has heavily relied on Patent Prosecution Highway procedures to speed up the analysis and filing of patent applications that have been previously filed in another country.
As of 2017, Mexico had 11 Patent Prosecution Highways with foreign entities, namely the US, Japan, Spain, South Korea, Singapore, China, Canada, Portugal, Austria, the European Patent Office and the Pacific Alliance.
Since 2011 (the year in which the first agreement with the USPTO was signed) by 2016, the Mexican patent office has received 1188 PPH applications, of which 785 have already been granted.
Patents filed by Mexican companies abroad
However, the country suffers from a low innovation potential that mirrors in the number of patents filed by Mexican residents abroad. In 2015, patents received by Mexican companies in front of the USPTO were only 172. As a comparison, South Korean residents filed 17924 patents the same year and Chinese residents 8116.
To trigger innovation, the Mexican President Enrique Pena Nieto has declared he intends to increase the government’s funding of science to 1 percent of GDP by the end of his term in 2018.Read More
The European Patent Office (EPO) held on 30 May 2018 a conference on Patenting Artificial Intelligence (AI).
Koen Lievens, Director Operations at the EPO, presented as keynote speaker the topic “How does the EPO deal with the challenges of AI in patents”.
The key concepts are the following:
Computer-Implemented Inventions would also apply to the inventions relating to AI, therefore to examine AI inventions the EPO two-hurdle approach should be used.
Are AI and Machine Learning (ML) just mathematical methods?
According to Articles 52 (2) and (3) EPC, mathematical methods as such are considered non-inventions and therefore not patentable.
Algorithms used for the purpose of, among other things, classification, clustering, regression and dimensionality reduction would be mathematical method as such and therefore not patentable subject-matter.
Algorithms applied, among other things, to data of technical nature, parameters of technical nature and trainable based on training data would not be considered mathematical method as such and therefore would not be excluded from patentability according to Articles 52 (2) and (3) EPC.
To overcome the second hurdle the mathematical method (steps) should contribute to the technical character of the invention.
There are two dimensions to contribute to the technical character of the invention:
1)The AI and ML method (steps) is adapted to a specific technical implementation, 2)The AI and ML method (steps) is applied to a field of technology.
In the case 1), the AI algorithm should be specifically adapted to a specific technical implementation, and, furthermore, the AI design should be motivated by technical considerations of the internal functioning of the computer.
Usually, generic technical implementation, mere programming or algorithm being merely more efficient than in prior art will not be sufficient to contribute technical character.
In the case 2), the AI and ML method (steps) should serve a technical purpose by means of a technical application, i.e., to solve a technical problem in a technical field. AI technical application fields would be image processing, speech processing, fault detection/predictive maintenance, medical analysis, self-driving cars, etc.
A generic statement like “controlling a technical system” would not be sufficient to contribute technical character.
Sources: www.epo.orgRead More