Patent

Argentina and Europe to cooperate on patents

by Moeller IP Advisors

On February 5, 2018, the European Patent Office (EPO) and the National Institute of Industrial Property of Argentina (INPI) signed a Memorandum of Understanding (MoU) on the introduction of the Cooperative Patent Classification (CPC) by INPI. The MoU was signed during a meeting held between EPO President Benoît Battistelli and Argentina’s Commerce Secretary Miguel Braun in Buenos Aires to discuss recent developments in patents and innovation and the cooperation between the two regions in this field. According to the MoU, INPI will start classifying its publications with the CPC by January 2019.

The CPC, which was launched by the EPO and the USPTO in January 2013, is now considered the new global standard for refined patent classification. It is already in use, or will soon be used, by 26 patent offices around the world. Argentina has joined other Latin American countries, including Mexico, Brazil and Chile, in the adoption of the CPC.

At the meeting, progress was discussed on other joint projects laid out in a MoU on bilateral co-operation signed by the EPO and INPI in May 2017. This agreement covers areas such as access to information, sharing data and tools, improved patent procedures, and training.

In addition to EPO and INPI cooperation on patent matters, the European Union is currently negotiating a free trade agreement with the four founding members of Mercosur – Argentina, Brazil, Paraguay and Uruguay -, where the adhesion of Argentina to the Patent Cooperation Treaty (PCT) is being discussed.

As part of the cooperation, Battistelli wanted to meet representatives of the European chambers of commerce in Argentina to hear concerns and difficulties European companies face at INPI concerning patent matters. Jose Santacroce, head of patent technical advisors for Moeller IP, participated in the above-mentioned meeting representing the firm through the Austrian-Argentine Chamber of Commerce.

Santacroce outlined specific challenges, such as the huge backlog existing at the INPI as well as the lack of tools and resources to deal with it, and the current problems regarding the obtaining of pharmaceutical patents. He also requested Battistelli to lend all possible support, including general training for INPI examiners. In particular, Santacroce requested training for complex and rapidly evolving technical areas such as Computer-Implemented Inventions, Biotechnology and Nanotechnology, and all types of tools to facilitate online access to databases.

Source:

https://www.epo.org

http://ec.europa.eu

The state of Innovation in Mexico: the role of patents

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.

Patenting Artificial Intelligence (Part II)

By José Santacroce, Head of Patent Department

The three levels of Artificial Intelligence (AI) can be defined as follows:

• Artificial Narrow Intelligence (ANI) refers to a computer´s ability to perform a specific (single) task.
• Artificial General Intelligence (AGI) which is capable of transferring knowledge from one domain to a new domain, e.g. when a computer program can perform the same intellectual task as a human being.
• Artificial Super Intelligence (ASI) which is theoretically capable of surpassing human intellect.

Today, most experts would agree that we are seeing tangible results from ANI only. AGI is at least two decades away from being perfected (only scientific studies but no more), and ASI is even farther off (still kind of science fiction).

There is a diffused sentiment that the trend is that software will widely become AI, which in turn will become “Super Software” implemented everywhere, in every field of technology, well beyond ICT.

Key elements to be considered when drafting/prosecuting a patent application in the field of AI are the following:

• The technical effect(s) of the invention should be explicitly defined by means of technical features.
• The AI invention must be a technically implemented.
• The AI invention must be applied to a field of technology.

Theoretical and futuristic aspects include the following issues:

• Who is the inventor, a person or AI?
• Reverse engineering will be more and more difficult: How to detect infringement?
• Who is the skilled person for assessing inventive step, a person, AI or a combination of both?

New Measures to Cut Down on Brazil Patent Backlog

By Moeller IP Advisors

It is very well known that the backlog is probably the main issue affecting the Brazilian patent system. A patent may take an average of 7-10 years for being granted – and although the Brazilian Patent Office, the INPI, has established a series of special programs or patent prosecution highways to speed up the process for some categories of patents or applicants, these solutions have only partially reduced the issue.

The Automatic Grant System

The Brazilian Government is expected to launch soon an emergency and very controversial measure to cut down on the country patents backlog. According to the plan, INPI will automatically grant around 231.000 patents by 2020, provided the applications do not concern pharmaceutical products.

What does “automatically” mean? The plan provides that all the unopposed applications filed before the rules become effective will be examined by the INPI through a simplified and accelerated examination procedure, not the traditional substantial procedure.

Although these measures seem extreme and even some INPI examiners threatened to go on strike in the wake of the new plan- the patents and international law committees of the Brazilian Intellectual Property Association established that the new rules are not in breach of articles 27 and 62 of the TRIPS Agreement.

Opt-out Clause

The measure contains  an “opt-out” clause that provides that the applicant may opt out from the automatic procedure within 90 days and request that the application be subject to the traditional, substantive procedure.

The exact details and the timing of implementation of the measure are unknown. Strategically, it may be a good idea to decide to opt-out if the application concerns a commercially very important patent. Indeed, there are chances that obtaining a patent without substantial examination will reduce the likelihood of obtaining preliminary injunctions by Courts.

On the other hand, applications concerning products with a short lifespan could fully benefit from a shorter, automatic granting procedure.

Pre-grant oppositions

Competitors also have the possibility to file oppositions to the applications, that will be removed from the automatic grant system. These pre-grant submissions must be filed before the emergency measure comes into effect.

Strategically thinking, companies may decide to submit oppositions with the sole intent of  removing a competitor’s applications from the automatic grant system.

Conclusions

The plan had been made available for public comments – that could have been submitted until the 31st of August 2017. It  seems, however, that the INPI will disregard some of the proposals made by local associations that are likely to burden the process, like, for instance, giving the applicants the possibility of amending claims prior to the grant or requesting substantive examination after grant.

Therefore, it is to be expected that the INPI will not accept any amendments made after an application is filed and the applicants need to make sure that the original claims provide adequate coverage.

The new measure, although controversial, could really help reduce the backlog burden that has been plaguing the INPI. Under normal conditions, the Brazilian INPI would take 13 years to examine all the pending applications and even if the number of examiners was doubled, as many suggest,  it would still take eight years to eliminate the backlog.

When Patents Can Help Protect Breeders Interests in Brazil

By Moeller IP

Brazil, in line with other South American countries, like Mexico or Argentina, does not consider new plant varieties eligible for patent protection. Cultivars can be protected through the  Brazilian Plant Variety Protection Law enacted in 1997, Law 9456/1997, and that has incorporated the provisions of the 1978 UPOV Convention.

The PVP law grants the breeder a substantial set of rights: the breeder has the exclusive right to produce and commercialize the plant variety in Brazil and third parties need to obtain a previous authorization from the owner in order to do that. The protection starts from the date of the Provisional Certificate of Protection and lasts for 15 years for all the vegetal species except for grapevines, fruit trees, and ornamental trees, including their rootstock, in which case it lasts for 18 years.

Patentability of New Plant Varieties

Article 10 incise IX and article 18 incise III and single paragraph of the Brazilian IP law, Law 9279/96, expressly deny patentability to new plant varieties. In particular, article 10 caput and incise IX state that “all or part of natural living beings and biological materials found in nature (…) including the genome or germoplasm of any natural living being, and the natural biological processes are not considered inventions “, so they are not patentable. To reinforce this idea, article 18 caput, incise III and single paragraph states that  “all or part of living beings” are non-patentable, except: “transgenic microorganisms that satisfy the three requirements of patentability … and which are not mere discoveries.”

In the single paragraph, transgenic microorganisms are defined as “organisms, except for all or part of plants or animals, that express, by means of direct human intervention in their genetic composition, a characteristic normally not attainable by the species under natural conditions.”

Moreover, according to the criteria set by INPI Brazil in the Resolution No. 144/2015, are to be considered microorganism all the bacteria, archaea, fungi, unicellular algae that are not classified in the kingdom Plantae or the Protozoa.

Combined protection through patents and PVP law

Therefore,  microorganisms which have been genetically modified and are used for transforming or improving a plant variety could be entitled to protection through patents, provided they present the requisites of novelty, inventive step and industrial applicability. However, the protection by patent doesn’t include the plant itself, which, being not patentable, will still be protected through the PVP law.

In this sense, the breeder would have a different set of legal tools to protect its interests: a patent to protect the transgenic microorganism, the process of plant modification using or not a microorganism and the traditional PVP law to protect the genetically modified cultivar obtained.

This would not amount to a case of a double protection and therefore it would be perfectly legal under the UPOV – as the object of protection is not exactly the same: the microorganism in the former case, the plant in the latter.

Plant varieties and inventions, which are the basis for the granting of intellectual property rights, are in this sense ontologically different: plant varieties result from the improvement work of breeders while the invention can be,  for instance, a controlled process of gene insertion into the plant which makes the plant resistant to a pesticide or to a parasite.

In other words, coexistence between plant variety protection and patent protection is possible and it is advisable to fully protect breeders’ interests and investments.

Patenting Artificial Intelligence

By José Santacroce, Head of Patent Department

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.org