European Patent Office Issued Opinion G 3/19 (Pepper) on 14.05.20

By José Santacroce. Partner and Head of Patent Department.

The Enlarged Board of Appeal of the European Patent Office issued opinion G 3/19 (Pepper) on 14.05.20 and concluded that plants and animals exclusively obtained by essentially biological processes are not patentable.

The key concepts of opinion G 3/19

The Enlarged Board of Appeal of the European Patent Office adopted a dynamic interpretation of the exception to patentability under Article 53(b) of the European Patent Convention (EPC) and held that the non-patentability of essentially biological processes for the production of plants or animals also extends to plant or animal products that are exclusively obtained by means of an essentially biological process.

Background

The Enlarged Board of Appeal is the highest judicial authority under the EPC, which provides for an autonomous legal system that is separate from the European Union. The Enlarged Board’s main task is to ensure the uniform application of the EPC.

Under Article 53(b) EPC, European patents shall not be granted in respect of plant or animal varieties or essentially biological processes for the production of plants or animals. Rule 28(2) EPC provides that under Article 53(b) EPC, European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.

Rule 28(2) EPC was introduced by the decision of the Administrative Council of the European Patent Organisation and came into force on 1 July 2017.

In 2015, the Enlarged Board had concluded in its decisions G 2/12 and G 2/13 within the then applicable legal framework, i.e. before the introduction of Rule 28(2) EPC, that the non‑patentability of essentially biological processes for the production of plants or animals under Article 53(b) EPC did not extend to products that are exclusively obtained by means of an essentially biological process.

In 2018, a Technical Board of Appeal held in decision T 1063/18 that new Rule 28(2) EPC had no impact on the interpretation of Article 53(b) EPC, and followed the Enlarged Board’s earlier decisions G 2/12 and G 2/13.

In 2019, the President of the European Patent Office referred a point of law to the Enlarged Board of Appeal under Article 112(1)(b) EPC concerning the interpretation of Article 53(b) EPC in view of legal and other developments occurring after decisions G 2/12 and G 2/13, and in particular in view of new Rule 28(2) EPC.

Key considerations

In its opinion issued today, the Enlarged Board of Appeal held the referral by the President of the European Patent Office to be admissible within the terms of a re‑phrased question. On the merits of the referral, the Enlarged Board endorsed its earlier findings on the scope of Article 53(b) EPC, which were based on the classical (i.e. the grammatical, systematic, teleological and historical) methods of interpretation. However, the Enlarged Board found that a particular interpretation which has been given to a legal provision can never be taken as carved in stone, because the meaning of the provision may change or evolve over time. This meant that decisions G 2/12 and G 2/13 did not settle the meaning of Article 53(b) EPC once and for all.

Taking account of the Administrative Council’s decision to introduce Rule 28(2) EPC, the preparatory work on this provision and the circumstances of its adoption, as well as legislative developments in the EPC contracting states, the Enlarged Board concluded that new Rule 28(2) EPC allowed and indeed called for a dynamic interpretation of Article 53(b) EPC.

In adopting this dynamic interpretation, the Enlarged Board abandoned its earlier interpretation of Article 53(b) EPC in decisions G 2/12 and G 2/13. It held that, after the introduction of new Rule 28(2) EPC, Article 53(b) EPC was to be interpreted to exclude from patentability plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process.

In order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board ruled that the new interpretation of Article 53(b) EPC given in G 3/19 had no retroactive effect on European patents containing such claims which were granted before 1 July 2017, or on pending European patent applications seeking protection for such claims which were filed before that date.

Source: www.epo.org

The ePrivacy Regulation: the European Union’s Final Piece to the Digital Privacy Puzzle

By Ivan Blomqvist.

ePrivacy Regulation (ePR)

The “Regulation of the European Parliament and of the Council concerning the respect for private life and the protection of personal data in electronic communications and repealing Directive 2002/58/EC (Regulation on Privacy and Electronic Communications)”, known also as the ePrivacy Regulation (ePR), is a proposed legal act of the European Union, enforceable as law in all member states, that intends to focus on a more expansive regulation of electronic communications by outlining data security laws and reinforcing rules regarding the electronic transfer of data.

Noncompliance of ePrivacy Regulation could mean penalties of up to 20 million euros or, in the case of an undertaking, up to 4% of the total worldwide annual turnover of the preceding financial year, whichever is higher.

ePrivacy Regulation objectives

The ePrivacy Regulation plans to account for the new players providing electronic communications services like WhatsApp and Skype, while benefiting from one single set of rules across all of the European Union.

It also looks to simplify the provision of cookies by utilizing rules that are friendlier to users and to prohibit unsolicited electronic communications, commonly referred to as spam, such as emails, text messages and automated calls. Additionally, the ePR seeks to repeal the Privacy and Electronic Communications Directive (Directive 2002/58/EC), also referred to as the ePrivacy Directive (ePD), while also overriding the General Data Protection Regulation (GDPR) on specific matters (lex specialis).

Since its inception in 2017, the ePR has been the subject of many discussions in the Council of the European Union. But, despite its progress, common ground could not be found on the some matters like the protection of terminal equipment information, the processing of electronic communications data by third parties, and the cooperation among data protection and telecommunications regulatory authorities.

In 2020, the current Presidency of the Council of the European Union released a newly revised draft of the ePrivacy Regulation in which it focuses on metadata and what can be considered as “legitimate interests” to process it and to also place cookies on end-users’ devices.

Companies obligations  

Under the new draft, businesses would require to conduct data protection impact assessments, consult the relevant supervisory authority body, implement appropriate security measures, provide information to end-users about data processing activities and the right to object to such data processing, and to not share metadata or information collected through the use of cookies or similar technologies with third parties, unless it has been anonymized.

In March 2020, the current presidency invited all delegations to provide their final comments on the proposed draft, so that negotiations with the European Parliament can begin as soon as possible. Should the ePR be finally approved, it will finalize the European Union’s framework regarding the protection of data and the confidentiality of electronic communications.

Source: https://ec.europa.eu/digital-single-market/en/news/proposal-regulation-privacy-and-electronic-communications

The European Patent Office – Patent Index 2019

By José Santacroce. Partner and Head of Patent Department

Patent Index 2019

The European Patent Office (EPO) just published its Patent Index 2019, below a summary of the key statistics.

The EPO received last year a record 181 000 patent applications, 4% more than in 2018.

In total, nearly half of all patent applications came from companies based in Europe, with Germany alone accounting for some 15%. From the other regions, US firms dominated with a quarter of all applications, followed by companies from Japan, China and South Korea.

Origin of patent applications in 2019

In terms of growth, patent applications filed by European companies increased modestly. There was a strong rise in demand from the US. The steepest growth rates were posted by Asian companies, in particular Chinese and South Korean firms.

Top 10 applicants at the EPO in 2019

• 1.HUAWEI 3 524

• 2.SAMSUNG 2 858

• 3.LG 2 817

• 4.UNITED TECHNOLOGIES 2 813

• 5.SIEMENS 2 619

• 6.QUALCOMM 1 668

• 7.ERICSSON 1 616

• 8.ROYAL PHILIPS 1 542

• 9.SONY 1 512

• 10.ROBERT BOSCH 1 498

Top 10 countries for patent applications at the EPO in 2019

Among European countries with large volumes, the greatest increases in filings came from Sweden, the UK, and Switzerland. Filings from Germany remained stable and Italy saw moderate growth, while France and the Netherlands saw decreases.

Looking at countries with mid-range patenting volumes, Spain saw the biggest rise in applications. There were also increases in filings from Belgium and Austria.

Further significant growth was seen from companies in Portugal, Ireland, and Norway, albeit from small overall patenting volumes.

The patent applications filed with the EPO in 2019 also indicate Europe’s position as a key market for the next wave of digital transformation technologies.

Technical fields with most patent applications in 2019

Digital communication: The new top technology field at the EPO

Digital communication was the new top technology field at the EPO, reflecting the rapid development of 5G technologies.

China, the US, and Europe were the most active regions of origin. They each account for roughly a quarter of the patent applications in this field.

Computer technology: The second fastest-growing field

It was fuelled by the growing importance of Artificial Intelligence. Patent applications concerned especially machine learning, data retrieval, image data processing, and pattern recognition. Overall, US companies led this field, with European applicants not far behind.

The dominant position of digital technologies was clearly reflected in the list of leading applicants. Huawei topped the table, followed by Samsung, LG, United Technologies and Siemens.

Overall, European companies retained the largest share in seven of the ten most active technology fields. These include transport, where Europe continued to excel in the automotive sector. The same was also true for clean energy technologies.

Source: www.epo.org

Let The Data Be Free!

By Manuel Lobato. Patents Lawyer.

Regulation for the Free Flow of non-personal data

On May 28^th, 2019, the Regulation for the Free Flow of non-personal data in the European Union- (EU) 2018 / 1807- entered into force in the territory of the European Community, accompanied by a Guide dedicated to the same theme.

The main objective of said regulation is to grant a regulatory framework to the free movement of data and its processing, as well as to complement the Regulation on the Protection of personal data. Its ultimate purpose is to break down the barriers imposed by the UE States to the treatment and storage thereof and tend to the development of the data economy in and between the countries of the Union.

The regulation in comment deals with the figures related to big data, the implementation of self-regulation codes of companies and entities of all kinds in terms of data, the use of data under the principles of responsibility, seriousness, effectiveness, accessibility, and solidarity among the agents involved in the process, the free mobility of non-personal information, eliminating territorial and/or legal and/or contractual obstacles.

Acces to the data

The access to the data and its free flow in these documents is presented with a hint of fundamental Human Law, allowing endless activities, ranging from the request for information to know in what part of a given territory the price of gasoline is cheaper – consumer rights – until the free exchange of scientific data between public entities, universities, and individuals.

Free flow of information

However, it is noteworthy that the so-called free flow of information has its limits, which are mainly in matters related to public safety, public order and national defense or when a fundamental right is currently or imminently injured.

Mixed data

Likewise, and focusing on the relationship between the Free Flow Regulation and the Protection of Personal Data, it should be noted that these interact between each other when the “mixed data” is treated. Mixed data are those that are made up of personal and non-personal information. In the event that there is a set of mixed data that are undeniably linked, the Free Flow Regulation will prevail over that of Protection, as prescribed by art. 2.2 of the indicated document.

Finally, and as regards the scope of application of the aforementioned instrument, it is of a cross-border nature, and its provisions must be accepted and appropriate to the standards prescribed by it, even when the data processing service provider of countries from the Union, is established there or not. -art. 2, ap. 1 a) –

Sources: ec.europa.eu/commission/presscorner/detail/en/IP_17_3190, ec.europa.eu/commission/presscorner/detail/en/IP_19_2749

The European Patent Office (EPO) Publishes Grounds for its Decision to Refuse Two Patent Applications Naming a Machine as Inventor

By José Santacroce. Partner and Head of Patent Department.

EPO – Applications refused

The EPO has published on 27 January 2020 its decision setting out the reasons for its recent refusal of two European patent applications in which an Artificial Intelligence (AI) system was designated as the inventor.

Filed by an individual in autumn 2018, the applications EP 18 275 163 and EP 18 275 174 were refused by the EPO following oral proceedings with the applicant in November 2019, on the grounds that they do not meet the legal requirement of the European Patent Convention (EPC) that an inventor designated in the application has to be a human being, and not a machine.

The machine called “DABUS”

In both applications, the machine called “DABUS”, which is described as “a type of connectionist artificial intelligence”, is named as the inventor. The applicant stated that he had acquired the right to the European patent from the inventor by being its successor in title, arguing that as the machine’s owner, he was assigned any intellectual property rights created by this machine.

In its decisions, the EPO considered that the interpretation of the legal framework of the European patent system leads to the conclusion that the inventor designated in a European patent must be a natural person. The Office further noted that the understanding of the term inventor as referring to a natural person appears to be an internationally applicable standard and that various national courts have issued decisions to this effect.

Moreover, the designation of an inventor is mandatory as it bears a series of legal consequences, notably to ensure that the designated inventor is the legitimate one and that he or she can benefit from rights linked to this status. To exercise these rights, the inventor must have a legal personality that AI systems or machines do not enjoy.

Finally, giving a name to a machine is not sufficient to satisfy the requirements of the EPC mentioned above.

The decisions to refuse the two patent applications can be appealed by the applicant within two months at the EPO’s independent judiciary, the Boards of Appeal.

Source: www.epo.org

The European Patent Office (EPO) Officially revoke the Broad Institute´s CRISPR patent

By José Santacroce. Partner and Head of Patent Department.

European patent EP 2771468

European patent EP 2771468 relates to the CRISPR/Cas9 gene-editing technology held by the Broad Institute of Harvard and MIT, Massachusetts.

The EPO opposition division had revoked the patent for lack of novelty in view of intermediate prior art. This prior art became relevant because the opposition division did not acknowledge the patentee’s claim to priority from a US provisional application naming more applicants than the subsequent PCT application from which EP 2771468 is derived. Since the omitted applicant had not transferred his rights to the applicants of the PCT application the priority claim was considered invalid.

On 16 January 2020, the EPO Board of Appeal in case T 844/18 dismissed the patent proprietor’s appeal against the decision of the opposition division and thus confirmed the revocation of the patent. The board did not refer questions to the Enlarged Board of Appeal.

Reasons for revocation

The reasons for the board’s decision will be issued in writing in due course.

In 2012, Professor Jennifer Doudna of the University of California, Berkeley and Professor Emmanuelle Charpentier were the first to file a patent for the discovery of CRISPR/Cas9. Subsequently, Professor Feng Zhang at the Broad Institute was granted a fast-tracked patent based on the use of CRISPR to edit the genomes of eukaryotic cells. Since then, both institutions have competed for numerous patents with overlapping rights across multiple jurisdictions.

The Broad’s EPO patent was originally granted based on evidence of their original US patent filings. However the Broad’s earliest US applications, filed in 2012, listed Professor Luciano Marraffini of Rockefeller University, New York, as one of the inventors, but subsequent Broad applications, in the US and Europe do not include him. Because the list of inventors is not the same, the EPO declared the early US filings are not valid evidence that their claim dates back to 2012, and as such cannot be used to show the Broad’s claim predates that of competitors, including UC Berkeley.

The Broad has said that nine of their 21 CRISPR/Cas9 patents in Europe could be affected by the ruling which “does not involve the actual scientific merits of the patent application, but the interpretation of rules that dictate what happens when the names of inventors differ across international applications.”.

Source: epo.org

EPO and Cambodia Renew Bilateral Cooperation

By José Santacroce. Partner and Head of Patent Department.

A delegation from Cambodia visits the EPO

Source: www.epo.org

Brazilian PTO and EPO Launch Technical and Strategic Patent Partnership

By Carlos Cavalcanti. Lawyer, Managing Partner at Moeller IP Brazil.

Agreement between Brazil and Europe

Memorandum of Understanding – Enhanced Technical and Strategic Partnership

Brazilian PTO and the European Patent Office (EPO) signed a Memorandum of Understanding on an Enhanced Technical and Strategic Partnership on Tuesday, November 26th, aiming to improve cooperation between Brazil and Europe in the area of patents. The agreement was signed by BrPTO President Claudio Vilar Furtado and EPO President Antonio Campinos at the Institute’s headquarters in Rio de Janeiro.

BrPTO’s president Claudio Vilar Furtado stressed the importance of the agreement to stimulate investment in innovation and industrial property, focusing on the generation of new patents, especially in partnership.

Agreement aims

– In this agreement between BrPTO and EPO, Brazilians and Europeans are united so that patents are a central element of a business environment that drives innovation – said the president of BrPTO.

The agreement between the EPO and the largest patent office in Latin America aims to strengthen the patent system in Brazil and Europe to encourage innovation and economic development, as well as to promote trade and investment between companies. two regions.

– Brazil is an essential partner for the EPO and an important market for European companies – said EPO President Antonio Campinos, who added: – This agreement is a milestone in our cooperation and is proof of the economic importance of close ties between our regions. Cooperation aims to ensure efficient patent examination and the granting of high-quality patents. This will benefit local innovative agents and international patent applicants, who can increasingly expect similar conditions to protect their inventions around the world.

Memorandum of Understanding – Patent Prosecution Highway (PPH)

During the ceremony, both offices also signed a Memorandum of Understanding to renew their Patent Prosecution Highway (PPH) pilot program. The new PPH, effective December 1st, will be open to patent applications in all technology fields.

In relation to the enhanced technical and strategic partnership agreement, BrPTO and EPO will cooperate in strengthening local capacity to search and analyze patent applications by training and discussing best practices, sharing tools and exchanging databases. patent data. In addition, by examining patent applications corresponding to applications already processed by the EPO, BrPTO will leverage the search reports in its own review process to further enhance quality and efficiency, freeing up resources to support local innovation. The agreement’s activities will be based on the two-year work plan agreed between the two institutions.

Brazil is the largest economy in Latin America and its trade with Europe accounts for over one third of the total European Union (EU) trade with the region. The EU is also the largest foreign investor in Brazil, with investments in various sectors of the Brazilian economy.

Source: http://www.inpi.gov.br/noticias/inpi-e-epo-lancam-parceria-tecnica-e-estrategica-na-area-de-patentes/view

Copyright Doesn’t Wear Prada

By Maria Sol Porro. Trademarks Lawyer and University Professor.

Conflict “G-Star” against “Cofemel”

After determining last year that the taste (of cheese) is not susceptible (for now) to be protected by copyright, the Court of Justice of the European Union (CJEU) resolves again in another conflicting case related to this right, this time about the textile design.

The conflict in question began with the demand of G-Star Raw CV (“G-Star”) against Cofemel- Sociedades de Vestuario S.A. (“Cofemel”) -both companies dedicated to the design, production and marketing of clothing- for the infringement of the ¨copyright¨ of its design models related to the marketing of its jeans, sweatshirts and t-shirts. Specifically, G-Star highlighted that its clothing items were original creations and should be classified as works that are subject to copyright protection.

Before this claim, submitted by the Superior Court of Portugal, the CJEU conducted an analysis of the degree of originality required of the designs to be susceptible to copyright protection and, in particular, whether the circumstance of generating a ¨ visual effect of its own and considerable from the aesthetic point of view¨ constitutes a fundamental element to grant copyright protection.

Intelectual human creation

In this context, the Court of Justice of the European Union recalls in its opinion that, in principle, it is the ¨works¨ which are the result of intellectual human creations that are protected by copyright. Then, it establishes that, although in certain cases the drawings and models can be considered as works, it must be demonstrated “with sufficient precision and objectivity” that these are the result of an intellectual human creation, which reflects the freedom of choice and the personality of his actor. Therefore, the Court clarifies that no clothing design is protected by copyright only for its ¨aesthetic effect¨, since this is the result of a subjective feeling of beauty, and can only benefit from this right when it is an original work.

In this way, the CJEU resolves once again against the expansion of ¨copyright protection¨ to other human creations by highlighting the limits that this intellectual property right requires in order to be claimed.

Source: aladda.es

The CJEU gives a “like” to Data Protection

By Maria Sol Porro. Trademarks Lawyer and University Professor.

Conflict about the processing of data protection 

Last August, the CJEU settled a new conflict about the processing of data protection, Facebook and the popular “like” icon.

Data protection case

The conflict took place when ¨Fashion ID¨, a German e-commerce company that sells clothing, inserted the “like” Facebook button on its website. This insertion seems to have the consequence that, when a visitor visits the “Fashion ID” website, personal data of that visitor is transmitted to Facebook Ireland. As it was analyzed in this ruling, this transmisión of data is made without the said visitor being aware of it and regardless of whether they are a member of the Facebook social network or if they clicked on the “like” button.

For this reason, ¨Verbraucherzentrale NRW¨, a German public association defending the interests of consumers, made a complaint against ¨Fashion ID¨ for having transmitted to Facebook Ireland personal data of visitors to its website. On one hand, without the consent of the latter and, on the other, breaching the information obligations established in the provisions related to the protection of personal data.

Resolution of the case

Having reached the conflict in the German Court of First Instance, the matter was finally sent to the EU Court of Justice in order to find a final resolution.

After analyzed the case, the CJEU ruled that the administrator of an Internet site with the aforementioned “like” button on its website may be responsible, together with the social network, for the collection and transmission to Facebook of the personal data of visitors to its site.

In this case, it is particular, the joint responsibility is due to the fact that, on one side, the insertion by “Fashion ID” of the “like” button of Facebook on its website allows the fashion site to optimize the advertising for its products by making them more visible on the social network.

On the other hand, Facebook Ireland obtains as a counterpart the power to have this data for its own commercial purposes.

Therefore, such processing operations are carried out in the economic interest of both, “Fashion ID” and Facebook Ireland. Therefore, the company ¨Fashion ID¨, as a co-responsible entity for certain consumer data processing operations that access to its website, must request prior consent for operations in which as co-responsible collects and transmits personal data. However, the CJEU clarified that it will not be responsible, in principle, for the further processing of such personal data made solely by Facebook.

Prior consent to data protection

Furthermore, the CJEU also analyzed for this case one of the exceptions to the obligation to obtain prior consent: ¨legitimate interest¨.

In these cases, the court pointed out that both, the administrator of the website in question and the provider, must pursue a legitimate interest with the collection and transmission of data, which will make such operations justified. So the legitimate interest that justifies one of the actions will not justify the other one.

Conclusion: General Data Protection Regulation

In conclusion, and as we have mentioned in other blog posts since the entry into force of the General Data Protection Regulation last year, the European Union has been implementing through its laws and judicial decisions a strict line of thinking about how It intends that the data of its citizens be treated.

Therefore, any activity that is not within these guidelines cannot be carried out freely, making good legal advice important to avoid sanctions or any other obstacles.

Contact us if you need intellectual property legal advice. 

Source: curia.europa.eu