Can you protect Artificial Intelligence inventions at the European Patent Office?

In recent years there has been a resurgence of interest in machine learning and so-called “artificial intelligence” systems. Much of this resurgence is based on advances in so-called “deep learning”, neural networks with multiple layers of connections. For example, convolutional neural networks now provide state-of-the-art performance in many image recognition tasks and recurrent neural networks have been used to increase the accuracy of many commercial machine translation systems. Machine learning may be considered a subdiscipline of “artificial intelligence” that deals with algorithms that are trained to perform tasks such as classification based on collections of data. This recent resurgence has meant that more companies wish to protect innovations in this field. This quickly brings them into the realm of computer-implemented inventions, and the nuances of protection at the European Patent Office.

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Obligatory “Terminator” Patent Attorney Stock Image

Computer-Implemented Inventions

“Computer-implemented invention” is the European Patent Office term for a software invention. Claims that specify machine learning and artificial intelligence systems are almost certainly to be considered “computer-implemented inventions”. The innovation in such systems occurs in the design of the algorithms and/or software architectures. Claims for new hardware to implement machine learning and artificial intelligence systems, such as new graphical processing unit configurations, would not be classed as computer-implemented inventions and would be considered in the same manner as conventional computer devices.


What Do We Have To Go On?

As key advances in the field have only been seen since 2010, there are few Board of Appeal cases that explicitly consider these inventions. It is likely we will see many Board of Appeal decisions in this field, but it is unlikely these will filter through the system much before 2020. However, applications in the field are being filed and examined. The following review is based on knowledge of these applications, evaluated in the context of existing Board of Appeal cases.


Prior Art

A first issue regarding machine learning and artificial intelligence systems is that many of the underlying techniques are public knowledge, given the rapid turn-over of publications and repositories of electronic pre-prints such as arXiv. Hence, many applicants may face novelty and inventive step objections if the invention involves the application of known techniques to new domains or problems. For patent attorneys who are drafting new applications, it is recommended to perform a pre-filing search of such publication sources and ensure that the inventors provide a full appraisal of what is public knowledge.


Domain of Invention

A second issue is the domain of the invention. This may be seen as the context of the invention as presented in the claims and patent description.

Inventions that apply machine learning approaches to fields in engineering are generally considered more positively by the European Patent Office. These fields will typically either operate on low-level data that represents physical properties or have some form of actuation or change in the physical world. For example, the following domains are less likely to have features excluded from an inventive step evaluation for being “non-technical”: navigating a robot within a three-dimensional space; dynamic adaptive change of a Field Programmable Gate Array; audio signal analysis in speech processing; and controlling a power supply to a data centre.

On the other hand, inventions that apply machine learning approaches within a business or “enterprise” domain are likely to be analysed more closely. These inventions have a greater chance of claim features being excluded for being “non-technical”. These domains typically have an aim of increasing profit. The more this aim is explicit in the patent application, the more likely a “non-technical” objection will be raised. For example, the following inventions are more likely to have features excluded from an inventive step evaluation for being “non-technical”: intelligent organisation of playlists in a music streaming service; adaptive electronic trading of securities; automated provision of electronic information in a company hierarchy; and automated negotiation of online advertising auctions.


Exclusions from Patentability

A third issue that arises is that individual features of the claims fall within the exclusions of Article 52(2) EPC.  In the field of machine learning and artificial intelligence systems, there is an increased risk of claim features being considered to fall into one of the following categories: mathematical methods; schemes, rules and methods for performing mental acts or doing business; and presentations of information. These will briefly be considered in turn below.

Mathematical Methods

The field of machine learning is closely linked to the field of statistics. Indeed many machine learning algorithms are an application of statistical methods. Academic researchers in the field are trained to describe their contributions mathematically, and this is required for publication in an academic journal. However, the practice of the European Patent Office, as directed by the Boards of Appeal, typically regards statistical methods as mathematical methods. In their pure, unapplied form they are considered “non-technical”.

Schemes, Rules and Methods for Performing Mental Acts

A claim feature is likely to be considered part of schemes, rules and methods for performing mental acts when the scope of the feature is too broad or abstract. For example, if a claimed method step also covers a human being performing the step manually, it is likely that the scope is too broad.

Schemes, Rules and Methods for Doing Business

Claim features are likely to be considered schemes, rules and methods for doing business when the information processing relates to a business aim or goal. This is especially the case where the information processing is dependent on the content of the data being processed, and that content does not relate to a low-level recording or capture of a physical phenomenon.

For example, processing of a digital sound recording to clean the recording of noise would be considered “technical”; processing row entries in a database of information technology assets to remove duplicates for licensing purposes would likely be considered “non-technical”.

Presentation of Information

Objections that features relate to the presentation of information may occur when the innovation relates to user experience (UX) or user interface (UI) features.

For example, a machine learning algorithm that adaptively arranges icons on a smartphone according to use may receive objections on the grounds that features relate to mathematical methods (the algorithm) and presentation of information (the arrangement of icons on the graphical user interface). As per Guideline G-II, 3.7.1, grant is unlikely if information is simply displayed to a user and any improvement occurs in the mind of the user. However, it is possible to argue for a technical effect if the output provides information on an internal state of operation of a device (at the operating system level or below, e.g. battery level, processing unit utility etc.) or if the output improves a sequence of interactions with a user (e.g. provides a new way of operating a device). Again, a technical problem needs to be demonstrated and the machine learning algorithm needs to be a tool to solve this problem.


Subfields of ML and AI

In certain subfields of machine learning and artificial intelligence, there is a tendency for Boards of Appeal and Examining Divisions to consider inventions more or less “technical”. This is often for a combination of factors, including field of operation of appellants, the history of research and traditional applications, and the background and public policy preferences of staff of the European Patent Office.

For example, machine learning and artificial intelligence systems in the field of image, video and audio processing are more likely to be found to have “technical” features that can contribute to an inventive step under Article 56 EPC. A convolutional neural network architecture applied to image processing is more likely to be considered a “technical” contribution that the same architecture applied to text processing. Similarly, it may be argued that machine learning and artificial intelligence systems in the field of medicine and biochemistry have “technical” characteristics, e.g. if they operate on data originating from mass spectrometry or medical imaging.

However, advances in search, classification and natural language processing are more likely to be found to have “non-technical” features that cannot contribute to an inventive step under Article 56 EPC. These areas of machine learning and artificial intelligence systems are often felt to be “technical” by the engineers and developers building such systems. However, it is a nuance of European case law that these areas are often deemed to have claim features that fall into an excluded “business”, “mathematical” or “administrative” category.

A recent example may be found in case T 1358/09. The claim in this case comprised “text documents, which are digitally represented in a computer, by a vector of n dimensions, said n dimensions forming a vector space, whereas the value of each dimension of said vector corresponds to the frequency of occurrence of a certain term in the document”. The Board agreed with the appellant that the steps in the claim were different to those applied by a human being performing classification. However, the Board concluded that the algorithm underlying the method the claim did not “go beyond a particular mathematical formulation of the task of classifying documents”. They were of the opinion that the skilled person would have been given the (“non-technical”) text classification algorithm and simply be tasked with implementing it on a computer.


What Should We Not Do?

Managers and executives of commercial enterprises are often habituated into selling innovations to a non-technical audience. This means that invention disclosures often describe the invention at an abstract “marketing” level. When an invention is described in a patent application at this level, inventive step objections are likely.

The fact that mathematical formulae may comprise excluded “non-technical” features is difficult for inventors and practitioners to grasp. Often equations at an academic-publication level are included in patent specifications in an attempt to add technical character. This often backfires. While such equations may be deemed “technical” according to a standard definition of the term, they are often not deemed “technical” according to the definition applied by European case law.

In general, objections are more likely in this area when the scope of the claim is broad and attempts to cover applications of a particular algorithm in all industries. Applicants should be advised that trying to cover everything will likely lead to refusal.


What Should We Do?

Chances of grant may be increased by ensuring an examiner or Board of Appeal member can clearly see the practical application of the algorithm to a specific field or low-level technical area.

Patent attorneys drafting patent applications for machine learning and artificial intelligence systems should carefully consider the framing and description of the invention in the patent specification. In-depth discussions with the engineers and developers that are implementing the systems often enable innovations to be described more precisely. Given this precision, innovations may be framed as a “technical” or engineering innovation, i.e. a technical solution to a technical problem. This increases the chance of a positive opinion from the European Patent Office.

Often features of an invention will have both a business advantage and a “technical” advantage. For example, a machine learning system that learns how to dynamically route data over a network may help an online merchant more successfully route traffic to their website; however, this improved method may involve manipulation of data packets within a router that also improves network security. A patent specification describing the latter advantage will have a greater chance of grant than the former, regardless of the actual provenance of the invention. A practitioner may work with an inventor to ensure that initial business advantages are distilled to their proximate “technical” advantages and effects. For cases where data does not relate to a low-level recording or capture of a physical phenomenon, it is recommended to ensure that any described technical effect applies regardless of the content of the data.

When considering exclusion for “mental acts”, a risk of a “non-technical” objection may be reduced by ensuring that your method steps exclude a manual implementation. Note that this exclusion does not necessarily prevent other objections being raised (see T 1358/09 above).

When drafting patent applications,  it is also important to describe the implementation of any mathematical method. In this manner, pseudo-code is often more useful than equations. It is also important to clearly define how attributes of the physical world are represented within the computer. Good questions to ask include: “What data structures and function routines are used to implement the elements of any equation?”, “How is data initially recorded, e.g. are documents a scanned image such as a bitmap or a markup file using a Unicode encoding?”,  “What programming languages and libraries are being used?”, or “What application programming interfaces are important?”.

Practitioners do need to be concerned with including overly limiting definitions within the claims; however, a positive opinion is more likely when specific implementation examples are described in the patent specification, followed by possible generalisations, than when specific implementation examples are omitted and the description only presents a generalised form of the invention along with more detailed mathematical equations.

To be successful in search, classification and natural language processing,  one approach is to determine whether features relating to a non-obvious technical implementation may be claimed. This approach often goes hand in hand with a knowledge of academic publications in the field. While such publications may disclose a version of an algorithm being used, they often gloss over the technical implementation (unless the underlying source code is released on GitHub). For example, is there any feature of the data, ignoring its content, which makes implementation of a given equation problematic? If inventors have managed to reduce the dimensionality of a neural network using clever string pre-processing or quantisation then there may be an argument that the resultant solution is implementable on mobile and embedded devices. Reducing a size of a model from 3 GB to 300 KB by intelligent selection of pipeline stages may enable you to argue for a technical effect.


Do Not Believe The Hype?

Despite the hype, machine learning and artificial intelligence systems are just another form of software solution. As such, all the general guidance and case law on computer-implemented inventions continues to apply. A benefit of the longer timescales of patent prosecution is that you ride out the waves of Gartner’s hype cycle. In fact, I still sometimes prosecute cases from the end of the dotcom boom…

Patent Economics

Often you are faced with the question: should I patent my invention? A quick, back-of-the-envelope calculation can help with this decision.

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CAVEAT: these are all roughly sketched out figures. This post is written in my spare time between cooking, cleaning, childcare and work. It does not constitute legal or financial advice. The figures are rough generalisations that allow you to work out whether it’s worth investigating further but may vary considerable for each individual case. Always get professional help with the details. 

Patenting Costs

Obtaining a patent is not a cheap process. As of 2017, my very rough rule-of-thumb is to budget £50k per country over the 20 year lifetime (excluding taxes – ~$75k).

This is based on, for a typical case:

  • ~£10k for initial work (e.g. searching), drafting an application and the costs of first (i.e. priority) filing.
  • ~£10k for developing strategy after an initial patent office search (e.g. UKIPO or in the International phase) and for filing an International patent application within a year of the first filing.
  • ~£5k per country to enter the national or regional phase after the end of the International phase for the International application. This is about right for a simple US and European entry; countries requiring translations may be up to £10k per country.
  • ~£15k per country for prosecution and grant. This is likely the most variable figure, with variance typically being on the upside (i.e. more expensive) if you are unlucky with prior art or a particular obstinate examiner.
  • ~£10k per country for renewal fees over 20 years. Again, this varies per country.

In terms of the distribution with time, this breaks down to:

  • ~£10k / year for first 3-4 years.
  • ~£0.5-1k / year for next 16-17 years.

Hence, most of the costs are front-loaded to the first 3-4 years: you need ~£30k over this period to properly take part in the patenting process.

Return on Investment

For a decent return, you want the patent’s value over its 20 year life to be at least 3x its cost (excluding inflation). Say this is £150k.

This works out as a real return of at least 5-6% per year over the lifetime of the patent.

The value of a patent is unlikely to be gained evenly over its lifetime. Statistics show that much of a patent’s value is realised towards the end of its life, e.g. 10-15 or 15-20 years post filing.

Anything less than this and your business would be better off just investing in the stock market.

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How to Determine Value

This is normally the hard part. However, there are a few short-cuts.

Patent Box

For a UK patent this may be an easy calculation.

Under the UK Patent Box scheme https://www.gov.uk/guidance/corporation-tax-the-patent-box, you can claim for a reduction in corporation tax (to 10%) for profits associated with a patented product or service.

Looking at the statistics for the period 1 April 2013 to 31 March 2014, we see that an average patent box claim was ~£500k, with the average claim for small businesses being £17k.

Most of the claims, understandably, were made by large companies. As such, the £500k / year average claim may include a number of different patented products. However, small businesses often only have one or two patents or products. Hence, the small business claim may be closer to a lower bound on yearly value per patent.

Of course, you can perform your own calculations. For a very rough upper bound on the benefit, simply add up the profits derived from each of your main products or services and multiply by 0.1. (This does assume you are making a profit.) For a lower bound, multiply this 10% saving by 0.5.

Now remember this is a yearly saving. The total saving will thus depend on the lifetime of your product.

Assuming a rough product lifetime of 10 years, and a lower bound on the tax claim of £15k / year, this means that an average UK patent provides a saving of £150k over its lifetime. This just happens to be the number we came up with above for a decent return.

From these rough calculations we see a couple of things:

  • To justify a UK patent’s value based on a Patent Box claim, you need to be making around £150k / year in profit for at least one product or service.
  • If this applies, a UK patent covering the product or service will pay for its costs and make a decent return.
  • Patenting can thus be economically justified in this case.

Licensing

Another way a patent can provide a return is through licensing. (Someone pays you for your permission to use the technology of the patent.)

Looking at our rough figures, you would need licence fees of ~£150k over 20 years, or approximately £7.5k / year.

Hence, if you feel that you can get one or more companies to pay £10k / year for the technology, patenting is worthwhile.

The recent case of Unwired Planet v Huawei https://www.judiciary.gov.uk/wp-content/uploads/2017/04/unwired-planet-v-huawei-20170405.pdf provides some useful information on industry licensing rates that can information these calculations.

In this case, an average worldwide FRAND licence rate for major markets for mobile equipment and infrastructure for a portfolio of 2G, 3G and 4G patents was deemed to be 0.05%. Now Unwired Planet have around 2,500 patents. Some googling indicates total infrastructure and handset sales to be around $150 billion (split 1:2). If everyone licensed at this rate, the annual licensing revenue would be $7.5 billion, divided by 2,500 patents gives you an average licensing income of $3 million (~£2 million) per patent per year.

Of course this is an upper-upper-bound estimate, you won’t get a licensing fee from each sale and this may be time-limited (e.g. the value of 2G technology not used in current handsets is falling). However, it does show that a licensing revenue of £20 million per patent over its lifetime is not completely pie-in-the-sky and may be relevant if you are lucky and patent a subsequent core technology.

We can do another quick cross check using IBM. Figures circling around (and seen personally in talks by IBM) are that it takes in about $1 billion USD in patent licensing revenue per year (see here – https://www.forbes.com/sites/chuckjones/2016/01/19/if-patents-are-so-valuable-why-does-ibms-intellectual-property-revenue-continue-to-decline/#335ebe9f1433). IBM has around 200,000 granted patents (see here http://www.patsnap.com/resources/company-innovation-reports/ibm). This works out at ~$5k / patent / year in licensing revenue (~£4k). Extended for 20 years, this gives us a figure of £80k per patent in licensing revenue over its lifetime.

In this case, IBM covers its patenting costs, but there is only a small real return from licensing alone. Hence, for IBM licensing is a useful aspect to cover costs, but must form only a portion of the value of a given patent.

Selling Patents

Valuing individual patents is tricky. This article here is interesting – http://www.hayes-soloway.com/patent-valuation . It suggests a lower bound on patent transactions of around $90,000 (£70k), a median of around $200k (£150k) and an average of around $400k (£300k). Each of Kodak’s patents was valued at around $500k when recently sold in 2012.

These valuations are consistent with the numbers discussed so far. The lower bound on the value of patents when sold is a little above cost (but not below cost). The median amount provides the magical £150k figure discussed above, i.e. a real return of around 5-6%. If you are lucky and/or skilled (delete depending on your political persuasion), a value of around £300k provides a decent market-beating return of around 10%. The higher figures also compensate for the fact that average patent grant rates are around 50% – hence, there is a certain amount of survivor bias and each of these sells would need to factor in the sunk costs of their unsuccessful brethren.

Another caveat here – patents tend to be very illiquid and most patent transactions involve large companies with large patent portfolios. Hence, while these figures may be applicable to similar sized entities, they may not apply as much to small and medium sized businesses. The distribution of values is also likely to be a power law distribution, with a few patents having astronomical valuations, and a long tail of patents with low valuations.

Here, we see that if you are a large company, it is worth patenting for the value you realise if you sell your patents.

Access to Market

We now move into the more hand-wavy aspects of patent valuation.

Underlying all this discussion is the fact that patents allow you to sue those who are providing products without your permission that fall within your patent claims . Licensing is one way to realise this value by providing permission for cash.

Another way patents can provide value is by allowing you access to a market at a low cost through cross-licensing. This is where another entity has at least one patent that covers your product or service. They could thus prevent you from accessing the market by either refusing permission or demanding high licensing fees. However, you have a patent that covers their product or service. Hence, each side has a potential weapon they can deploy and the sensible outcome is to come to an agreement to provide permission to use each other’s technology.

The problem with cross-licensing is that these deals are typically performed in confidence. There is thus little data to quantify the transaction. Standard public licensing rates provide some indication of the value. Hence, the licensing figures from above may be used here.

Average licensing rates can vary from 0.01% to 30% depending on the technology, product and market. Most are probably below 5-10%, with higher rates for low volume, high profit products (e.g. software services) and lower rates for commodity items (e.g. phone handsets).

One (very rough) way you can value access to a market is thus to:

  • determine the size of the potential market for your product;
  • determine an average revenue for you for this market over a 20-year period; and
  • times this by 10%.

Working backwards from our figures above, this gives us an average revenue of £150k / 0.1 = £1.5 million over 20 years (which may be £300k / year for a 5 year lifespan, £150k / year for a 10 year lifespan, and £75k / year for a 20 year lifespan etc.).

If you are not selling your product yet, you can look at figures for the size of the potential market by dividing these figures by an estimated, percentage market share. For example, if you believe you can gain 10% of a market, the market needs to be worth £15 million over the 20 years (e.g. £3 million / year for a 5 year lifespan, £1.5 million / year for a 10 year lifespan, and £750k / year for a 20 year lifespan etc.).

The other flip-side to this is to look at the cost of litigation. If cross-licensing can avoid the costs of litigation then this also provides value. If we say an average court case costs between £1-3 million, then the value of your patent depends on the likelihood of litigation. In this case, if a chance of litigation is above 15%, patenting is cost effective. Here, you can also ask for a quote for litigation insurance in your market and use that to determine the value of any patent on a competitor’s product or service.

These simple calculations mean that, for a product with a 5 year lifespan and a potential market of only £100k per year, patenting may not be cost effective if looking at access to market.

Getting Investment

One reason why small businesses obtain patents is to gain investment.

Likewise, one reason venture capitalists invest in small businesses with patents is because they perform similar calculations to those above (although with prettier and more accurate spreadsheets) and realise they can obtain an above market return (or a market return for a given risk – 90% of small businesses fail folks).

Now venture capitalists have requests for funding from many small startups (understatement). Most of these will be refused. One way you can cut through the noise as a company is to show you have at least a strong chance of obtaining a patent. Hence, a patent application may provide an immediate effect by enabling leverage – i.e. the patenting costs may facilitate a much large amount of funding.

Of course, there are many different factors that influence funding, and most of these may be more important than a patent portfolio (such as founders / founder experience, market proposition, existing capital raised, and existing profit). Let’s say, conservatively, that having a patent increases your chance of funding from 0% to 10%. In this case, funding of £200k plus would justify an initial £20k patent spend (e.g. initial filing and International application).

Another way of looking at this may be to compare patenting costs and engineer costs. Say an engineer costs £50k / year, where on-costs are £75k (i.e. actual cost to company is 1.5x salary). The question to then ask is: what would increase your chances of funding more: 4 months of that engineer’s time or having a patent application?

If the answer is that, at your current stage of development, 4 months engineer time would greatly enhance your offering and increase your chance of funding by 50%, then limited funds may be better spent on that rather than patenting.

If you are at a stage where development has been kept confidential, and 4 months of engineer time would make only small incremental improvements to attract funding, then patenting becomes a better choice.

You can also run similar arguments with consultant costs and other areas such as marketing.

Marketing

Patented products make for good marketing.

This may only be a small proportion of a patent’s value but should not be overlooked.

For example, an average marketing budget may be 10% of sales. If a patent replaces 1% of that (i.e. has the same effect as 1% of the sales budget), then a patent could start to make a decent return if revenues are £15 million or more over 10 year (i.e. £1.5 million / year).

What Have We Learnt

Often it is difficult to provide an answer to the question: should I get a patent?

Patent attorneys typically err on the side of saying “yes”, as that is what they do day-in-day-out. It can be like asking a decorator: should I paint my house? (I decided not to say it may be like asking a car salesman: should I buy a car? :))

In certain businesses the answer is often “yes”, but the reason is “because that’s what we do”. Similar, in other businesses (I’m looking at you software), the answer is often “no”, with the reason being “because we don’t do that here”.

Hopefully, in the discussion above, I have tried to explain some of the areas and conditions where there may be an economic justification for obtaining a patent.

In particular, assuming a product with a 10 year lifespan, patenting may be cost effective:

  • if you are paying UK corporation tax and your product will earn £150k / year in profit;
  • if your market is worth more than £1.5 million per year and you can capture at least 10% of this;
  • if the patented technology is of interest to one or more acquirers;
  • if the chance of litigation is above 15% in your market;
  • if it increases your chance of funding from 0 to 10%; or
  • if it increases sales by 1% of products with revenues of more than £1.5 million / year.

Some of these value factors may be gained independently.  For example, a patent may allow you to reduce UK corporation tax, increase sales, provide access to a market and reduce litigation risk. The more the factors apply cumulatively, the lower the figures above need to be.

By sketching these numbers out on the back of an envelope, say over 30 minutes, you can get a feel for how relevant patenting is for your company.

If you look at these figures and gasp, then patenting may not be right for you. Although patenting is open to anyone, practically you need to be a business with actual or projected revenues of hundreds of thousands of pounds for the system to work properly.

If you are close to break-even thresholds, there need to be other good reasons to patent, or prospects for future growth need to be good, otherwise patenting may not be worthwhile economically.

If you are way over the thresholds, and you do not have a patenting strategy, then this provides strong basis for an argument to your Board of Directors to get one. It may justify spending a few thousand pounds on professional advice to fill in the details of feasibility.

If you have an existing patenting strategy, running these calculations once a year or so may enable you to make decisions on maintaining patents and patent applications, and provide justification to support existing budgets (or even to ask for more funds).

Making the Most of Early Patent Prosecution

Obtaining a patent is an uncertain process. It is difficult, if not impossible, to predict the prior art that may be located or the examiner you are assigned. Grant rates often vary from 5 to 50%, and it is rare for patent claims to be allowed without limitations during prosecution.  However, there are techniques to manage this uncertainty. Some of these are discussed below.

The International Patent Application

For many businesses, the US and Europe are core markets. To obtain patent protection in these markets, many patent attorneys advise filing an International patent application (also called a Patent Cooperation Treaty – PCT – application). An International patent application only needs to be converted into specific national or regional applications 30 months from an initial filing or priority date. This provides time for a product or service to develop in parallel with a pending application and leaves open the possibility of obtaining protection in states such as Japan, China, Korea and Australia.

An International patent application is searched and a written opinion is drawn up by an examiner. The written opinion resembles an examination report. For applicants from Europe, the European Patent Office prepare these documents. The European Patent Office is seen internationally as one of the tougher patent offices; I often see cases with favourable opinions from examiners in the US, Korea and China hit objections when the case is examined by the European Patent Office.

Costs

There are also costs to consider. Patenting is not cheap. Depending on length and scope, a patent application will likely cost between £5-10k (all figures are excluding taxes and at 2017 rates) to be drafted. Filing costs for an International patent application are £4-5k (most of this being official fees). Filing costs for national or regional applications at the end of the International phase will cost between £5-10k (a chunk of this being official fees and/or translation costs). Then it may cost between £5-15k to prosecute an application and pay grant fees. A good rule of thumb is £30k per country over a 3-7 year period.

A Strategy

Faced with this, a strategy I often suggest is set out below:
Patent Prosecution Workflow

Initial UK Patent Filing

First, it is worth noting that I would not attempt the patenting process unless I could budget around £10k per year over the first 3 years.

Second, it is good to take advantage of the ease and low cost of the UK Intellectual Property Office for a first filing. Official fees are only £230 for filing, search and examination (a bargain really – European Patent Office fees are 10x this). Unlike the US there is no need for assignments and declarations to be filed. You can register this first filing with the priority document access service as well, which makes supply of a certified copy of the priority document a doddle.

UK Combined Search and Examination Report

The UK Intellectual Property Office provide a combined search and examination report with 4-6 months. You can ask to accelerate this and if you have a good reason the request is often granted, shortening the time to 4-8 weeks. While a UK search is often not quite as thorough as an European search, it is quick and cheap (e.g. as compared with Europe or US). It is thus a useful way of identifying any “low-hanging” prior art that may be problematic.

For example, if “knock-out” prior art is located you can choose to withdraw the application within the first 12 months before publication. This helps to cap your loss at the £10k or so of initial costs; it prevents you spending another £20k only to get a refusal on subsequent national or regional applications (or even to have a patent that would easily get knocked out in court). Withdrawing before publication means the content of the patent application will not become public and count against future applications you may make. This is useful if the patent application relates to a product in development; you may come up with an improvement after a year that could support a further patent application that can reuse much of the initial material.

Even if “knock out” prior art is not found, the UK combined search and examination report can help you strengthen your patent claims. For example, prior art may be cited that anticipates your main claims but an amendment is possible that renders the claims novel and inventive over the cited documents. It is definitely better to work this out over a leisurely 4 month period (e.g. iterating with the inventors who may still remember the case), rather than rush this just before priority-claiming applications need to be filed at the 12-month point. While you can never be sure that subsequent searches by other patent offices will not find other, more relevant prior art, an amendment at this stage is often going to be taking your application in the right direction and will be making favourable opinions more likely. Engineers may like to see this as a first “stress test” for the patent application.

The UK combined search and examination report may also flag other issues such as clarity or support that are best dealt with early on. For example, a term you and your inventors thought was well-known may be considered by the UK examiner to be unclear; the specification may then be amended to provide a more in-depth definition from text-books or Wikipedia.

If you do need to amend the claims at this 6-12 month stage, another advantage is that you can make sure that you maximise the scope of positions covered by your patent claims. For example, you first filing may have 20 patent claims. If a number of these claims are deemed obvious over the general knowledge or certain claims need to be added to the main independent claims, then claims may be deleted and other improved fall-back positions added.

Typically, it is good to set aside some inventor time, and a budget of £1-2k to review the UK combined search and examination report and cited art. I often see those who choose not to make this investment at this stage be subject to avoidable higher costs later on in prosecution.

International Phase

If you have a set of patent claims that are novel and inventive over the prior art cited by the UK Intellectual Property Office, the next stage is to file an International patent application within 12 months of the initial filing date.

If you are a UK company, the European Patent Office will perform another search and issue a written opinion setting out any objections. They are pretty good at issuing this within 4-6 months of filing the International patent application. The European search and written opinion provides the second “stress test” of the claims.

Often the European examiner will locate new prior art. One way to reduce this risk is to amend the background of the patent specification before filing the International patent application to make reference to the prior art located in the UK search. In 25-50% of cases, if the UK-cited prior art is relevant and reasonable, the European examiner will (understandably) take the easier option of citing it again. At the very least, referencing the UK-cited art can help you “seed” the European search towards areas you have had time to analyse.

If the European examiner does locate new prior art, then again it is recommended to repeat the same analysis that was performed for the UK combined search and examination report. Often you still have over a year before choices regarding national or regional applications need to be made. A relatively leisurely 4-8 weeks review cycle, incorporating comments from inventors or other engineers, at an attorney cost of £1-2k, can again reap cost savings later on in prosecution.

For example, if the European cited art is “knock out”, costs can be capped at around £15k (e.g. drafting, UK filing, PCT filing and review costs). It may not be possible to have the search results in time to be able to stop publication (which is why the UK search is good). This may seem a lot but it prevents additional spends of £15-20k per country (e.g. £30k < spend < £80k) only for you to receive multiple refusals 2-3 years later.

If amendment is possible, then this can be determined following a review of the prior art and a claim set prepared for national and regional applications. At this stage you may have more confidence in the claims as you know they have been through both UK and European examination. This may make it easier to justify patent applications in multiple countries to a company board or budget comittee.

If a strong position is possible following review and amendment, you may have an option to accelerate prosecution in Europe based on the amended claims. For example, you may wish to file the amended claims and comments on entry, waive the Rule 161 EPC period and file an acceleration request (https://www.epo.org/law-practice/legal-texts/html/guidelines/e/e_viii_3_3_1.htm). This may result in a notice of allowance as the first communication. This could be issued within 3 months of entry to the European regional phase (https://www.epo.org/law-practice/legal-texts/html/guidelines/e/e_vii_4_2.htm). This could be used as part of a Patent Prosecution Highway scheme in other national offices (e.g. US or China).

Cost Savings

This process represents an additional spend of up to £4k in attorney time. However, this easily pays for itself:
  • It can avoid spending up to £40k+ on patent applications worldwide that are unlikely to be granted.
  • It can avoid long and protracted European Patent prosecution. 
  • It often simply represents front-loading of costs that would be occurred in normal prosecution.
  • It allows leisurely review while the case may still be fresh in inventors minds (with touch points at 6 and 18 months following the filing process). This can also promote inventor engagement with the patent process.
  • The possibility of Patent Prosecution Highways could avoid long and protracted prosecution In multiple countries.
  • If you do obtain a patent it is likely to be stronger and hence of more value.

Why is it hard to patent software?

Obtaining a strong, enforceable patent that protects your software invention is often difficult. Here I will touch on some approaches to stack the odds in your favour.
Software

Why is it difficult to patent software?

There are a number of hurdles that must be overcome to obtain a patent for a software invention. These include:
  • Being new: at least one aspect of your invention must differ from other solutions available to the public. This includes solutions described in other patent applications, blog posts, manuals, online documentation and white papers.
  • Being inventive: not only must your invention have a differing feature, that differing feature needs to be non-obvious. If the differing feature is common knowledge, e.g. is a common feature described in text books or on Wikipedia, and it is straightforward to use it in the context of the other known features, then your invention will be deemed obvious. Likewise if the differing feature is described in another document, and it would be obvious to combine this other document with the pre-existing solution providing the other features, then your inventive will be said to lack an inventive step.
  • Being patentable: your software invention must meet requirements set by law for patentable subject matter. Each jurisdiction has slightly different rules. Normally, statute sets some very broad categories of excluded subject matter. Individual cases and hearings then provide a body of case law that says which areas are allowable and which areas are not. For example, in Europe you need to show that the differing feature provides a ‘technical’ effect, which is often an engineering improvement.

Patenting software also taxes patent attorneys and patent examiners. With mechanical products, you can often see and feel the invention. Similarly, pharmaceutical inventions may be defined through sets of well-defined chemical formulae. Software is harder to visualise – there may be multiple technology layers in an implementation stack and many non-essential interoperating parts. This can often lead to poor patent specifications and misunderstandings.

Also if a patent claim is too specific then it will be easy for a software developer to work around. Most inventions will need to transcend a particular programming language or technology to cover ports to different platforms and to future-proof a patent’s value. However, if a patent claim is too broad, it is often deemed too abstract to be patentable and may also run afoul of clarity provisions.

What do these difficulties mean in practice?

In practice these difficulties often lead to:
  • Low grant rates;
  • Validity challenges;
  • High prosecution spend; or
  • Patent avoidance.

These factors often interact to form a vicious cycle of mutual distrust: too many poor quality patent specifications are filed, leading to cynicism from patent examiners and the public, which leads to knee-jerk rejections and lobbying, which in turn undermines confidence in the system from businesses.

What can we do?

The first thing software companies can do is to find the right patent attorney or attorney firm. There are a few attorneys who deal with software day-in-day-out. These need to be sought out. Look for an attorney with experience of working for a large software company, e.g. Microsoft, IBM, Hewlett-Packard, Oracle, SAS, Amazon, Google. The European Patent Office allows you to search by representative to see example applicants.

The second thing software companies can do is to set high standards for their patent specifications. The recent change in practice in the US will hopefully catalyse this. Technical or engineering features should be defined in detail; any high-level marketing terms or IT jargon should be jettisoned. A strong technical problem should be eluded to, and there should be a good set of tiered fall-back positions, each with their own defined engineering advantages.

The third thing software companies can do is to keep on top of the case law in different jurisdictions. Your patent attorney may offer to help you with this. At a simple level, a one page table can show what kind of inventions have been allowed and what kind of inventions have been refused. For example, UK hearing officers often find that database management improvements are not allowed, whereas European examiners find these are technical.

How To Be a Smart Buyer of Patent Services – A Guide for SMEs

As you work as a patent attorney you meet many small to medium enterprises (SMEs – businesses with under 250 employees – also known as “small entities” in the US). Everyone has a different level of knowledge, and some companies are unaware of how they can get a better deal. To remedy this, here is my guide to commissioning patent work.

Light on an important subject
The advice is roughly split into the following areas:

  • Use competition to your advantage;
  • Prepare to better use your time;
  • Meet the people doing the work;
  • Look for a commercial and technical fit;
  • Agree on costs and timings in advance; and
  • Agree on workflow in advance.

Use competition to your advantage 

Patent firms (at least in the UK) will offer a free 30-minute consultation to potential new clients. Patent firms do this to get new business. It is often recommended to meet at least three firms to compare costs, people and approach. This means you can get up to 1.5 hours of free legal advice.

You can create a shortlist by looking for local patent firms. For SMEs, local firms (i.e. outside of London) are often a better fit on price and people, and organising company visits is easier. Many university cities have patent law firms, so a good play to start is to pick your nearest and search the Internet for “patent firm [nearest city]”. Have a look at the firms’ websites. You can normally get a feel for the size of a firm and their area(s) of expertise from their website.

If you are in a main patent hub (e.g. London or Munich), look for firms involved in activities that over lap with yours, e.g. firms that have talked at a nearby incubator or known industry group.

Firms are often split into four or so subject areas: pharma & biotech; chemistry; mechanical / heavy engineering; and IT & electronics. Many firms are better in one of these areas and weaker in others. Look for numbers of attorneys, their backgrounds and mentions of key clients to work out strengths and weaknesses. Try to shortlist firms with a strong practice group in your area of business.

Arrange meetings with your shortlist of firms by email or phone.

Prepare to better use your time

Ahead of your initial meetings, there is some preliminary work you can do to maximise your free legal advice and test your prospective firms. This often needs to be an hour or so of preparation: one page of A4 is about right.

First, attempt to write down why you need patent services. Do this in plain English. For example:

  • I need to stop my competitors doing X.
  • I have a new product that in launching in two months. We have spent Y on R&D.
  • We need investment. We have seed/series A/series B funding. We are looking at acquisition in as an exit in two to three years.
  • We have a few patents. We wish to monetise our portfolio.

Information that is useful to a patent attorney includes:

  • Your key markets (current and future);
  • Where you manufacture;
  • Your competitors (and their key markets / places of manufacture);
  • Your launch schedule; and
  • Your general business direction over the next 5-10 years (at a brief, high level).

If you have this information in pre-existing material (e.g. an investor or shareholder pack), you can provide this ahead of your meeting. It is worth keeping this high level and keeping as much as possible to publicly known details.

If you have a new product or idea, it may also be worth doing an hour or so of Internet searching and selecting the three most relevant finds. These may be supplied ahead of your meeting (e.g. send three URLs with brief notes – “This blog post describes something similar to the first step”).

If you can send this information, in confidence, ahead of your meeting then it is likely your prospective patent firms will do at least an additional 30 minutes of preparation before your meeting, and you will get better advice to compare. It also frees up time in the meeting to discuss strategy rather than go over these points. If you prefer not to send confidential details ahead of time, take your page of A4 as a meeting prompt.

Meet the people doing the work

A traditional way of law firms acquiring new clients is as follows:

  1. Prospective client meets charismatic partner at an event / on the golf course;
  2. A meeting is arranged with law firm via charismatic partner, who attends;
  3. The work starts and charismatic partner vaporises – a series of unknown associates impersonally deal with the work.

There is nothing necessarily malicious in this, some partners are better at sales, associates often do a bulk of the work due to the “leverage” model of law firms. It can, however, leave a bad taste if unexpected.

One way to avoid this is to ask to meet all those who will be potentially working with the company. Most patent firms should be happy to oblige. Be a little wary of those that refuse.

Look for a commercial and technical fit

A perfect technical match may be difficult to find. If there is a perfect match, there is often a conflict, e.g. the firm may work for one of your competitors. If you need to discuss sensitive commercial details in your initial meeting, you may wish to ask the patent firms you are meeting to perform a conflict check and confirm there is no conflict *before* you meet (or before you send them non-public information).

Sometimes you may get lucky and a technical fit may exist due to a recent client change (e.g. a past client was acquired and the work was moved to the patent firm of the parent company). This is probably the exception rather than the rule.

For a general technical fit look for:

  • Patent attorneys with a technical degree in your area of technology;
  • Current or recent experience in a neighbouring non-competing field;
  • Familiarity with at least general core concepts of your technology (if not your particular niche); and
  • Rapid understanding.

For a commercial fit look for:

  • Experience of similar size companies (e.g. revenue-wise) ;
  • Experience with your business model (e.g. software licensing vs. chemical manufacturing); and
  • General knowledge of your industry and market (e.g. at a Bloomberg, Economist or FT level).

Look for those that listen.

Agree on costs and timings in advance 

When you are obtaining cost estimates ask for prospective costs over the next year. Also ask to identify one or two key billing points over the year for costs to be charged.

An often heard criticism from companies is the stream of small bills from patent firms after a particular piece of work has been done. This is often due to the nature of the hourly billing module – small bits of work are often needed after an event of when miscellaneous communications arrive. Firms also wish to avoid having unpaid work sitting on their systems. One way to avoid this is to either include small future predictable costs in initial charges (firms often avoid doing this as it raises their estimates in comparison with other firms) or to have agreed billing points. For example, filing an application and filing a response are two normal billing points – you can ask that all others charges are also billed at these points with the substantive work.

Companies should also ask for caps or fixed prices for the work. Most patent firms should oblige if these are reasonable. This makes costs more predictable for the company, avoids surprise charges and often gets them a better deal.

Agree on workflow in advance

Patent attorneys charge for their time. Companies thus have a trade-off when commissioning patent work: they can save their time (e.g. engineer or C-level time) at the expense of higher patent attorney charges; or they can agree to do more on their end to save patent attorney costs.

For example, one substantial part of responding to examination reports is reviewing the cited prior art (typically 2-4 20-50 page patent publications). If a company wish to save on patenting costs, they can perform this work in-house (e.g. make it part of an engineer role). If a company provides guidance on differences and advantages (even if these are not put in legal terms), they can negotiate lower charges for responding to an examination report. If, on the other hand, engineer time is at a premium, they may ask that the patent attorney provides options or a proposal for their review (this should be provided at an executive summary level).

Similarly, to avoid drift, loss of momentum or extra charges, a timescale for work on both ends should be agreed at a high level. For example, it may be agreed that a draft will take 4 weeks to prepare and that engineers will review within 1 or 2 weeks of receipt. Similarly, it may be agreed that all official communications and filings are to be reported with 5 working days, or that engineers need 4 weeks to review cited prior art.

It is also a good idea to agree who is going to be the main point of communication on both sides, and whether any additional stakeholders need to be cc-ed by default (e.g. engineering managers, directors, secretaries, etc.).

This should not take too long to work out (e.g. a 30 min phonecall or a quick email exchange) but it pays dividends later on in the relationship (and avoids “surprise” charges cropping up).

Measuring Patent Success – The Devil in the Detail

In a previous post, we looked at some measures of patent attorney (or firm) success:

  • Low cost;
  • Minimal mistakes;
  • Timely actions; and
  • High legal success rate.

In this post, we will look at how we can measure these.


Legal Success 

Let’s start with legal success. For legal success rate we identified the following:

  • Case grants (with the caveat that the claims need to be of a good breadth);
  • Cases upheld on opposition (if defending);
  • Cases revoked on opposition (if opposing);
  • Oral hearings won; and
  • Court cases won.

When looking to measure these we come across the following problems:

  • It may be easy to obtain the grant of a severely limited patent claim (e.g. a long claim with many limiting features) but difficult to obtain the grant of a more valuable broader claim (e.g. a short claim with few limiting features).
  • Different technical fields may have different grant rates, e.g. a well-defined niche mechanical field may have higher grant rates than digital data processing fields (some “business method” areas have grant rates < 5 %).
  • Cases are often transferred between firms or in-house counsel. More difficult cases are normally assigned to outside counsel. A drafting attorney may not necessarily be a prosecuting attorney.
  • During opposition or an oral hearing, a claim set may be amended before the patent is maintained (e.g. based on newly cited art). Is this a “win”? Or a “loss”? If an opponent avoids infringement by forcing a limitation to a dependent claim, that may be a win. What if there are multiple opponents?
  • In court, certain claims may be held invalid, certain claims held infringed. How do you reconcile this with “wins” and “losses”?

One way to address some of the above problems is to use a heuristic that assigns a score based on a set of outcomes or outcome ranges. For example, we can categorise an outcome and assign each category of outcome a “success” score. To start this we can brainstorm possible outcomes of each legal event.

To deal with the problem of determining claim scope, we can start with crude proxies such as claim length. If claim length is measured as string length, (1 / claim_length) may be used as a scoring factor. As automated claim analysis develops this may be replaced or supplemented by claim feature or limiting phrase count.

Both these approaches could also be used together, e.g. outcomes may be categorised, assigned a score, then weighted by a measure of claim scope.

For example, in prosecution, we could have the following outcomes:

  • Application granted;
  • Application abandoned; and
  • Application refused.

Application refused is assigned the lowest or a negative score (e.g. -5). Abandoning an application is often a way to limit costs on cases that would be refused. However, applications may also be abandoned for strategic reasons. This category may be assigned the next lowest or a neutral score (e.g. 0). Getting an application granted is a “success” and so needs a positive score. It maybe weighted by claim breadth (e.g. constant / claim_length for shortest independent claim).

In opposition or contentious proceeding we need to know whether the attorney is working for, or against, the patent owner. One option maybe to set the sign of the score based on this information (e.g. a positive score for the patentee is a negative score for the opponent / challenger). Possible outcomes for opposition are:

  • Patent maintained (generally positive for patentee, and negative for opponent);
  • Patent refused (negative for patentee, positive for opponent).

A patent can be maintained with the claims as granted (a “good” result) or with amended claims (possibly good, possibly bad). As with prosecution we can capture this by weighting a score by the scope of the broadest maintained independent claim (e.g. claim_length_as_granted / claim_length_as_maintained).

Oral hearings (e.g. at the UK Intellectual Property Office or the European Patent Office) may be considered a “bonus” to a score or a separate metric, as any outcome would be taken into account by the above legal result.

For UK court cases, we again need to consider whether the attorney is working for or against the patentee. We could have the following outcomes:

  • Patent is valid (all claims or some claims);
  • Patent is invalid (all claims or some claims);
  • Patent is infringed (all claims or some claims);
  • Patent is not infringed (all claims or some claims);
  • Case is settled out of court.

Having a case that is settled out of court provides little information, it typically reflects a position that both sides have some ground. It is likely better for the patentee than having the patent found invalid but not as good as having a patent found to be valid and infringed. Similarly, it may be better for a claimant than a patent being found valid but not infringed, but worse than the patent being found invalid and not infringed.

One option to score to partial validity or infringement (e.g. some claims valid/invalid, some claims infringed/not infringed) is to determine a score for each claim individually. For example, dependent claims may be treated using the shallowest dependency – effectively considering a new independent claim comprising the features of the independent claim and the dependents. A final score may be computed by summing the individual scores.

So this could work as a framework to score legal success based on legal outcomes. Theses legal outcomes may be parsed based on patent register data, claim data and/or court reports. There is thus scope for automation.

We still haven’t dealt with the issues of case transfers or different technical fields. One way to do this is to normalise or further weigh scores developed based on the above framework.

For technical fields, scores could be normalised based on average legal outcomes or scores for given classification groupings. There is a question of whether this data exists (I think it does for US art units, it may be buried in an EP report somewhere, I don’t think it exists for the UK). A proxy normalisation could be used where data is not available (e.g. based on internal average firm or company grant rates) or based on other public data, such as public hearing results.

Transferred cases could be taken into account by weighting by: time case held / time since case filing.

Timely Actions

These may be measured by looking at the dates of event actions. These are often stored in patent firm record systems, or are available in patent register data.

It is worth noting that there are many factors outside the control of an individual attorney. For example, instructions may always be received near a deadline for a particular client, or a company may prefer to keep a patent pending by using all available extensions. The hope is that, as a first crude measure, these should average out over a range of applicants or cases.

For official responses, a score could be assigned based on the difference between the official due date  and the date the action was completed. This could be summed over all cases and normalised. This can be calculated from at least EP patent register data (and could possibly be scraped from UKIPO website data).

For internal timeliness, benchmarks could be set, and a negative score assigned based on deviations from these. Example benchmarks could be:

  • Acknowledgements / initial short responses sent with 1 working day of receipt;
  • Office actions reported with 5 working days of receipt;
  • Small tasks or non-substantive work (e.g. updating a document based on comments, replying to questions etc.) performed within 5 working days of receipt / instruction; and
  • Substantive office-action and drafting work (e.g. reviews / draft responses) performed within 4 weeks of instruction.

Minimal Mistakes

This could be measured, across a set of cases, as a function of:

  • a number of official communications issued to correct deviations;
  • a number of requests to correct deficiencies (for cases where no official communication was issued); and/or
  • a number of newly-raised objections (e.g. following the filing of amended claims or other documents).

This information could be obtained by parsing document management system names (to determine communication type / requests), from patent record systems, online registers and/or by parsing examination communications.

Low cost

One issue with cost is that it is often relative: a complex technology may take more time to analyse or a case with 50 claims will cost more to process than a case with 5. Also different companies may have different charging structures. Also costs of individual acts need to be taken in context – an patent office response may seem expensive in isolation, but if it allows grant of a broad claim, may be better than a series of responses charged at a lower amount.

One proxy for cost is time, especially in a billable hours system. An attorney that obtains the same result in a shorter time would be deemed a better attorney. They would either cost less (if charged by the hour) or be able to do more (if working on a fixed fee basis).

In my post on pricing patent work, we discussed methods for estimating the time needed to perform a task. This involved considering a function of claim number and length, as well as citation number and length. One option for evaluating cost is to calculate the ratio: actual_time_spent / predicted_time_spent and then sum this over all cases.

Another approach is to look at the average number of office actions issued in prosecution – a higher number would indicate a higher lifetime cost. This number could be normalised per classification grouping (e.g. to counter the fact that certain technologies tend to get more objections).

The time taken would need to be normalised by the legal success measures discussed above. Spending no time on any cases would typically lead to very high refusal rates, and so even though a time metric would be low, this would not be indicative of a good attorney. Similarly, doing twice the amount of work may lead to a (small?) increase in legal success but may not be practically affordable. It may be that metrics for legal success are divided by a time spent factor.

Patent billing or record systems often keep track of attorney time. This would be the first place to look for data extraction.

Final Thoughts

An interesting result of this delve into detail is we see that legal success and cost need to be evaluated together, but that these can be measured independently of timeliness and error, which in turn . may be measured independently of each other. Indeed, timeliness and error avoidance may be seen as baseline competences, where deviations are to be minimised.

It would also seem possible, in theory at least, to determine these measures of success automatically, some from public data sources and others from existing internal data. Those that can be determined from public data sources raise the tantalising (and scary for some?) possibility of comparing patent firm performance, measures may be grouped by firm or attorney. It is hard to think how a legal ranking based on actual legal performance (as opposed to an ability to wine and dine legal publishers) would be bad for those paying for legal services.

It is also worth raising the old caveat that measurements are not the underlying thing (in a Kantian mode). There are many reasonable arguments about the dangers of metrics, e.g. from the UK health, railways or school systems. These include:

  • the burden of measurement (e.g. added bureaucracy);
  • modifying behaviour to enhance the metrics (e.g. at the cost of that which is not measured or difficult to measure);
  • complex behaviour is difficult to measure, any measurement is a necessarily simplified snapshot of one aspect; and
  • misuse by those in power (e.g. to discriminate or as an excuse or to provide backing for a particular point of view).

These, and more, need to be borne in mind when designing the measures. However, I believe the value of relatively objective measurement in an industry that is far too subjective is worth the risk.

What makes a good patent attorney?

This is a question that has been on my mind for a while. The answer I normally get is: “well, you just kind of know don’t you?” This isn’t very useful for anyone. The alternative is: “it depends”. Again, not very useful. Can we think of any way to at least try to answer the question? (Even if the answer is not perfect.)

The question begets another: “how do we measure success?”


For a company this may be:

  • the broadest, strongest patent (or patent portfolio) obtained at the lowest cost;
  • a patent or patent portfolio that covers their current and future products, and that reduces their UK tax bill; and/or
  • a patent or patent portfolio that gets the company what it asks for in negotiations with third parties.

For an in-house attorney or patent department this may be:

  • meeting annual metrics, including coming in on budget;
  • a good reputation with the board of directors or the C-suite; and/or
  • no surprises.

For an inventor this may be:

  • minimum distruption to daily work;
  • respect from peers in the technology field; and/or
  • recognition (monetary or otherwise) for their hard work.

For a patent firm this may be:

  • a large profit;
  • high rankings in established legal publications; and/or
  • a good reputation with other patent firms and prospective or current clients.

For a partner of a patent firm this may be:

  • a large share of the profit divided by time spent in the office; and/or
  • a low blood pressure reading.

As we can see, metrics of success may vary between stakeholders. However, there do appear to be semi-universal themes:

  1. Low cost (good for a company, possibly bad for patent attorneys);
  2. Minimal mistakes (good for everyone);
  3. Timely actions (good for everyone but sometimes hard for everyone); and
  4. High legal success rate (good for everyone).

High legal success rate (4) may include high numbers of:

  • Case grants (with the caveat that the claims need to be of a good breadth);
  • Cases upheld on opposition (if defending);
  • Cases revoked on opposition (if opposing);
  • Oral hearings won; and
  • Court cases won.

I will investigate further how these can be measured in practice in a future post. I add the caveat that this is not an exhaustive list, however, rather than do nothing out of the fear of missing something, I feel it is better to do something, in full knowledge I have missed things but that these can be added on iteration.

Cost is interesting, because we see patent firms directly opposed to their clients. Their clients (i.e. companies) typically wish to minimise costs and patent firms wish to maximise profits, but patent firm profits are derived from client costs. For patent firms (as with normal companies), a client with a high profit margin is both an asset and a risk; the risk being that a patent firm of a similar caliber (e.g. with approximately equal metrics for 2-4 above) could pitch for work with a reduced (but still reasonable) profit margin. In real life there are barriers to switching firms, including the collective knowledge of the company, its products and portfolio, and social relationships and knowledge. However, everything has a price; if costs are too high and competing firms price this sunk knowledge into their charging, it is hard to reason against switching.

There is a flip side for patent firms. If they can maximise 2-4, they can rationalise higher charges; companies have a choice if they want to pay more for a firm that performs better.

On cost there is also a third option. If patent firms have comparative values for 2-4, and they wish to maintain a given profit margin, they can reduce costs through efficiencies. For most patent firms, costs are proportional to patent attorney time, reduce the time it takes to do a job and costs reduce. The question is then: how to reduce time spent on a matter while maintaining high quality, timeliness and success? This is where intelligence, automation and strategy can reap rewards.

In-house, the low cost aim still applies, wherein for a department cost may be measured in the number of patent attorneys that are needed or outside-counsel spend, as compared to a defined budget.

In private practice, and especially in the US, we often see an inverse of this measurement: a “good” patent attorney (from a patent firm perspective) is someone who maximises hourly billings, minimises write-downs, while anecdotally maintaining an adequate level for 2-4. One problem is maximising hourly billings often leads to compromise on at least 2 and 3; large volumes of work, long hours, and high stress are often not conducive to quality work. This is why I have an issue with hourly billing. A base line is that a profit per se is required, otherwise the business would not be successful. Further, a base line of profit can be set, e.g. allowing for a partner salary of X-times the most junior rate, an investment level of Y%, a bonus pool for extra work performed etc.. However, beyond that, the level of profit is a factor to maximise, subject to constraints, i.e. 1-4 above, where the constraints take priority. The best solution is to align profit with the constraints, such that maximising 1-4 maximises profit. That way everyone benefits. How we can do this will be the subject of a future post.

So, let’s return to our original question: what makes a good patent attorney?

From the above, we see it is a patent attorney that at least makes minimal mistakes, operates in a timely manner, has a high legal success rate and provides this at a low cost. In private practice, it is also a patent attorney that aligns profit with these measures.

Why do I work as a patent attorney?

I was lucky enough to attend a session with Debra Baker of Law Leaders Lab / GrowthPlay. One of the many good points raised by Debra was that we often need to ask ourselves: “why are we doing this?”

This follows on from the talks of Simon Sinek*.

It’s the kind of question that you answer in a covering letter for a job or in an interview. You often answer it when you have no experience of the job. You tend to forget the question more than a decade later.


So: why do I work as a patent attorney?

I love technology. Growing up my favourite possessions were a box of Lego, a BBC Micro, a cheap Bush walkman and my Casio calculator watch. In conversation I get excited about  machine learning and natural language processing. Blade Runner and Terminator 2 are my favourite films. I find the Promethean ability to breath life into inert matter fascinating. Working as a patent attorney means I am immersed in technology of all kinds every day.

I like helping inventors and innovative companies. As a patent attorney you get to work with some of the smartest, most creative engineers on the planet. You also work in the real commercial world, as opposed to the more artificial confines of academia.

I enjoy diving deep into new subject matter and linking it to existing understanding. I have a “systematic” mind, I enjoy figuring out what makes things work. As a kid, I devoured Encylopedias and practically slept with a copy of the Usborne Book of Knowledge. I studied hard, partly through sheer curiosity.  I always find how we know what we know fascinating. I may be the only one of my school and University peers who uses their subject knowledge everyday. Each new invention builds upon strata of past learning in a way that is deeply satisfying.

I like an intellectual challenge (the flip-side to being easily bored by the surface of things). I like wrestling an idea into language.

And the more quotidian reasons: I like being able to pay the bills; I like working in a place with free Nespresso and apples; I like having good colleagues and leadership.


Why you need the why

You need these reasons to keep going through the day-to-day work and the ups-and-downs of commercial reality.

For example:

  • Nine out of ten small businesses fail, typically despite great inventions and people.
  • Human contact is often lost beneath the required bureaucratic machinery of large organisations.
  • Cases can be granted or refused based solely on the luck of the examiner draw.
  • The gap between the hyperbole needed to sale a product and the prosaic hardwork to get the product working.
  • The size of the body of previously-published materials.
  • Cases you work on for years are left behind as companies pivot and cost-cut.
  • There’s always a deadline or five.
  • Every other patent attorney is just as driven and smart and is competing against you.

If you align why you are doing something with what you are doing then things become a lot easier.

* Caveat: I understand that this can seem a little MBA-gimmicky, and I do share your skepticism, but the underlying question is a sound one. Reflection is also a good thing, and needed now more than ever with the iPhone buzzing and blinking. 

Computer-Related Board of Appeal Decisions from 2014 Case Law Summary

The European Patent Office has now published a case law summary for 2014 as Official Journal supplementary publication 4/2015. Sections I-C-4.1, I-C-5.1, II-A-1, and II-E-1.4 discuss case law that relates to computer-related inventions. The relevant passages are extracted and commented on below.

Skilled Person

T 407/11 held that the relevant skilled person in the context of providing computer-system users with operating assistance via a user interface (e.g. error messages or warnings) was an expert in software ergonomics concerned with the userfriendliness of human-machine interfaces rather than an expert in software programming or in computer technology in the strict sense.

The objective problem to be solved by that skilled person was to prevent a situation whereby the user’s action caused an electronic data-processing system to execute a called function differently from intended (or even to fail to execute it at all).

In the board’s view, however, the technical effect claimed in the application (simpler operation of an object-oriented user interface, facilitating initial use and subsequent familiarisation, especially for beginners or upgrading users, and so making the resulting method easier and more intuitive to learn) could not be considered a directly derivable consequence of the distinguishing features, because attributes such as “simpler operation” or “easy and intuitive familiarisation” were generally subjective, i.e. depended on the user’s individual preferences and experience or intellectual capabilities, while the classification of users as “beginners”, “upgraders” or “advanced” was generally based on a variety of criteria which were not clearly defined.

This suggests that providing objective definitions of technical effects (e.g. millisecond time savings) may help to support an inventive step under European practice. It also further indicates a need to avoid reference to “user”-based advantages.

Applications of Algorithms

In T 2035/11 the application mainly related to navigation systems that could be tailored to a user’s particular wishes. The focus of the application was on the route-planning functionality of a navigation system.

The board held that the subject-matter of claim 1 lacked an inventive step within the meaning of Art. 52(1) and 56 EPC. It noted that mathematical algorithms may contribute to the technical character of an invention only in so far as they serve a technical purpose (see e.g. decision T 1784/06). The purpose of the algorithm was the mere display of an optimal path to the user for cognitive processing. The user could act on the information, but did not need to.

As stated in decision T 1670/07, a technical effect may arise from either the provision of data about a technical process, regardless of the presence of the user or its subsequent use, or from the provision of data (including data that on its own is excluded, e.g. produced by means of an algorithm) that is applied directly in a technical process.

In the case at issue, the data was produced by means of an algorithm and was not applied directly in a technical process, so neither possibility applied.

Warning on Generalisation

In T 2231/09 the patent in suit concerned a method of representing and analysing images. Claim 1 of the main request set out that “… at least one said descriptor element is derived using only a subset of pixels in said image.”

The board considered the expression “subset of pixels” to be problematic under Art. 84 EPC 1973 and stressed that, while a certain degree of generalisation may be permitted, features as claimed should make it possible to clearly identify features of embodiments that are covered by the terms of a claim. Moreover, the generalised subject-matter as claimed should make it possible to understand the technical problem to be solved.

When amending claim 1, the applicant had put forward a new interpretation according to which a “region” could mean the whole image, and a “subset” could correspond to all pixels of the region. The board considered this interpretation to be inconsistent with essential parts of the described embodiments, according to which a subset corresponded to only some of the pixels of a region. The subject-matter of claim 1 was thus unclear when interpreted in the light of the description.

The board also stated that the requirements of clarity and support by the description in Art. 84 EPC 1973 were designed to reflect the principle that the terms of a claim should be commensurate with the invention’s technical contribution to the art. Taking into account the description, the board regarded the division of the image into regions and subsets as essential for achieving the technical effect underlying the invention. Therefore, the subject-matter of claim 1 was not supported by the description. The board concluded that claim 1 did not comply with Art. 84 EPC 1973.

This indicates the need, when drafting claims for computer-related inventions, to provide clear and unambiguous definitions of terms used within the claims. This is especially important when features of the claims relate to abstract entities, e.g. data within a data processing system.

Added Subject Matter and Features without Technical Contribution

In T 1779/09 the board considered that the appellant had found itself exactly in the situation envisaged in decision G 1/93 (OJ 1994, 451). As emphasised in Headnote II of G 1/93, “a feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of Art. 123(2) EPC.” These principles were confirmed in G 2/98 (OJ 2001, 413) and G 2/10 (OJ 2012, 376). The board in the case at issue concluded that a limiting feature which generally would not be allowable under Art. 123(2) EPC could, under certain conditions, nevertheless be maintained in the claim of an opposed patent in the particular situation addressed in decision G 1/93. It then complied with Art. 123(2) EPC by way of a legal fiction. In the case at issue, the term “only” was introduced during the examination proceedings and successfully objected to under Art. 100(c) EPC in proceedings before the opposition division by the former respondent. Since the board considered the term to be truly limiting, its deletion would extend the protection conferred and thereby infringe Art. 123(3) EPC. However, the board held that the exclusive limitation did not influence the solution of the technical problem as understood from the application as originally filed, and hence provided no technical contribution to the claimed invention (see also decision T 384/91, Headnote II). It merely excluded protection of part of the invention described in the application, thus not giving any unwarranted advantage to the applicant. Claim 1 of the appellant’s sole request was therefore deemed to comply with Art. 123(2) EPC.

Updated US Guidance on Patent Eligibility (or “Stuff =/ Patents”)

The USPTO issued updated guidance on Patent Subject Matter Eligibility (i.e. things you can get a patent for in the US) at the end of July.

The materials are fairly dense and help address some of the criticisms raised by applicants. Further explanations of the approach are provided as well as an expanded list of examples.

Reading between the lines, it appears the USPTO is moving towards a position that is harmonised with European, Chinese and UK approaches on excluded subject matter.

Having a relatively simple mind, I found the following page from the guidance summary useful.

Stuff What You Can't Patent