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Insights and news

Presenting expert-driven insights and relevant industry updates from our team

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05

Opposition Advocacy Workshop Launch

9th July 2024

By Nick Watson, Director

Trusted Technology Network (TTN) is delighted to announce that, following a successful pilot, we are launching our Opposition Advocacy Workshop, in partnership with Oxon IP, the European patent opposition specialists.

 

Patent opposition advocacy is a uniquely complex and demanding discipline that requires highly specialised expertise and skills. TTN and Oxon IP offer an in-depth training workshop to equip European patent attorneys and in-house counsel with an understanding of the key aspects of opposition oral proceedings advocacy at the European Patent Office (EPO). Our in-person workshop, preceded by online preparation, provides practical coverage of many classic issues that arise at oral proceedings, as well as the opportunity to practise advocacy skills under expert tuition.

 

The course starts with two online sessions, covering key topics such as the EPO opposition environment, and preparation of argumentation around a specific simulated case suitable for all technical disciplines. The main workshop day is held in person, with participants taking part in a mock oral proceedings before former EPO Opposition Division and Board of Appeal members.  

 

As the case unfolds, they prepare, present and analyse proprietor and opponent arguments during interactive sessions, interspersed with presentations and discussion areas such as inventive step, prior use, clarity, auxiliary requests, late-filing and admissibility. Participants also receive one-to-one feedback and advice with respect to their own interventions.

 

The workshop is limited to a maximum of ten participants to enable an exceptionally low coach/participant ratio and an unparalleled opportunity for discussion and benefit from the in-depth expert knowledge of the coaches.  For more information, including on the experience and qualifications of the coaching team, visit https://www.trustedtn.com/training and https://www.oxonip.com.

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04

IP-backed financing highlights value of intellectual property

18th June 2024

By Nick Watson, Director

IP-backed financing is gaining traction as a viable alternative to traditional venture capital, providing companies with a unique way to leverage their intellectual property (IP) for funding. This approach is particularly advantageous for businesses in tech sectors such as software (including AI), biotech and green technology and pharmaceuticals, where intangible assets form a significant portion of the company's valuation. By using patents, trademarks, copyrights or other IP such as proprietary processes as collateral, companies may be able to secure financing without the need to dilute equity or surrender control.  

 

For businesses and their founders, this offers a strategic advantage in their ability to pursue growth, research and development initiatives without dilution of ownership. For investors, IP-backed financing presents an appealing opportunity for collateralised investments, diversifying the financial landscape beyond conventional equity-based funding. The news in April this year that one of the UK’s leading banks, NatWest, had made its first IP backed initiative shows that this approach is becoming more mainstream.

 

The rise of IP-backed financing suggests a welcome increase in recognition that intellectual property is a critical economic asset for a tech company, and something that can be appraised and monetised. In an increasingly technical world, it may also highlight a shift towards the prioritisation of knowledge and innovation. These factors are spurring the development not only of specialised financing platforms but also entities designed to navigate the intricacies of IP protection and valuation, offering bespoke planning and strategy services to complement the financing solutions in the marketplace. 

 

As such, IP-backed finance platforms will offer a more inclusive option, by making capital accessible to start-ups and SMEs with strong IP assets that may not align with the traditional venture capital profile. As a result, it should not only enrich the array of financing options available, but also promote innovation and growth in sectors where IP development and protection are paramount. However, for both the finance platforms and the companies they support, a clear understanding and articulation of the quality and value of the IP to be used as collateral will be even more vital.

 

For independent, qualitative support on your company’s or investment target’s technological innovation and IP, talk to Trusted Technology Network (TTN). TTN’s team of subject matter experts and practitioners, many of them with extensive patent examiner experience, provides in-depth advice on IP strategy, protection and value creation for both tech firms and their investors. To learn more please browse the other pages of our website at https://www.trustedtn.com or contact us at info@trustedtn.com.

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03

New US associates

12th June 2024

Trusted Technology Network (TTN) is delighted to announce the expansion of our US credentials through a number of new American expert associates who have recently joined our team. They include:

 

  • Maria Holtmann, who finished her career at the USPTO as Associate Commissioner for International Cooperation, where she led the creation of the Global Dossier and a number of other strategic global projects;

 

  • Rinaldi Rada, whose responsibilities at the USPTO included management of patent examination groups in the fields of transportation, construction, electronic commerce and agriculture; and

 

  • Peter Hoffman, who retired from Boeing in 2020 as VP Intellectual Property Management and CEO of the Boeing Intellectual Property Licensing Company.

 

To see their full bios and learn more about our other highly qualified experts in tech and IP, and the services we provide, please visit the “About” page of our website https://www.trustedtn.com/about or contact us on info@trustedtn.com.

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02

New European associates

6th June 2024

Trusted Technology Network (TTN) is delighted to welcome a number of new expert associates to our team, all of whom have at least 30 years’ European Patent Office (EPO) and global IP experience, as well as in-depth knowledge of specific technological fields. They include: 

 

  • Daniel Closa, who holds deep procedural knowledge and expertise in Computer Implemented Inventions (software, including Artificial Intelligence);

 

  • Siobhan Yeats, a biotech and biopharmaceuticals specialist who has extensive experience in life sciences patenting and opposition procedure and led a team of 30 EPO patent examiners in biotechnology;

 

  • Domenico Golzio, whose career focused on electronic circuits, telecoms, electric motors and power electronics;

 

  • Jose Alconchel Ungria, who spent 13 years leading patent examination of vehicles and general technology before specialising in classification and global projects; and

 

  • Marios Sideris, who led teams focused on internal combustion engines, semiconductors and automotive engineering, before project managing the design and implementation of the Cooperative Patent Classification system in the EPO and the USPTO.

 

To see their full bios and learn more about our other highly qualified experts in tech and IP, and the services we provide, please visit the “About” page of our website https://www.trustedtn.com/about or contact us on info@trustedtn.com.

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01

The seven challenges of patenting Artificial Intelligence

21st May 2024

By Yannis Skoulikaris, Director

Patenting AI-related technology is not a simple task. Patent laws were originally drafted with very different technology in mind, at a time when there was a more or less clear-cut divide between the three major technology areas of mechanics, chemistry and electronics. This immediately presents a challenge, since AI combines every area of technology, producing an interesting cocktail. Patent attorneys and patent examiners therefore have to deal with two or more areas of technology in the same application. This calls for inter-disciplinary skills and a creative approach in a traditionally conservative field of law.

The second challenge is more subtle and has to do with the make-up of AI technology and the exclusions of patentability enshrined in patent law. Conventional wisdom has it that AI progress is due to extremely powerful computers, highly sophisticated algorithms implemented in software, simulation of human learning and availability of big data. Almost all of these essential elements, with the exception of computers, are excluded from patentability when claimed for themselves, at least according to European patent law.  So, it is difficult for the inventor to explain to the patent examiner why a new learning algorithm or the use of specific big data can make the inventive contribution in a particular case.

A third challenge arises from the fact that the function of an AI system is not entirely transparent. In other words, one cannot expect that the reasoning and outcome of an AI system can be completely explained, as would be the case for a conventional, non-AI computational system. The lack of a full and traceable line of argumentation and an explainable outcome from a machine learning-related process creates difficulties, especially in those cases where the logic and reasoning have to be transparent, such as in a diagnostic system.

The fourth challenge is not a purely patent law-related one, as it has to do with the lawful use of training data for a machine learning system. If such data were used without authorisation, the data owners could be eligible to seek damages. In December 2022, the Financial Times sued OpenAI and Microsoft, accusing them of using a vast number of FT articles without permission in order to train chatbots in Open AI’s systems. Even if, strictly speaking, this case is based in copyright law, it remains to be seen whether patent law will be affected.

The fifth challenge has to do with obviousness (in patent jargon ‘inventive step’) and the notion of the skilled person, two essential elements of patent law. When judging obviousness, the patent examiner asks themselves whether a skilled person (defined as a person in the field who is knowledgeable, but does not have to use inventive skill, imagination or creativity) would have thought of the invention after having knowledge of the documents in the search report. If the examiner judges that the skilled person would have thought of the invention, then the invention is obvious and cannot be patented. However, if the skilled person uses AI as a standard tool, this changes the rules of the game. A possible consequence would be to raise the threshold of inventive step, i.e. ask for a more substantial inventive contribution.

The sixth challenge is around inventorship: should an AI system be named as inventor in a patent application? Most jurisdictions specify a human inventor, but the development of AI has stirred up a lot of discussion, especially following the well-known DABUS case, where numerous patent applications were filed across many jurisdictions, designating an AI system (DABUS) as inventor. The majority of those jurisdictions decided this was unallowable, and in certain others the case is still pending.

Finally, the seventh challenge is quite unique to the patenting world: in European patent law there is a prohibition against patenting technology that is deemed unethical. The current lively discussion about ethical use of AI, for instance regarding bias towards gender and/or age in training machine learning systems, is potentially caught by this. Moreover, regulatory bodies such as the European Commission and international organisations such as OECD and UNESCO have issued guidelines on AI that add further complexity. How examiners will treat applications that might contravene the ethics provisions of patent law remains to be seen.

For the time being, patent offices do not appear to be unduly disrupted by these developments, but as the intensive research and commercialisation of AI continues to gather pace, they are likely to surface and make the headlines at various points. We at TTN have particular expertise on AI patenting. As such, we continue to monitor closely such developments, and the practice of the patent offices, in this fascinating technology. Watch this space!

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