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EU Patent Office publishes preview of guidelines on patenting AI applications

The preview-version of the EPO’s Guidelines for Examination is out now (link here), and, for the first time ever, there is specific guidance on patenting AI applications – Are there any surprises in the Guidelines?

Earlier this year the European Patent Office (“EPO”) held its first ever conference on patenting artificial intelligence (“AI”). Following intensive discussions on the impact of AI in the patents sector, the EPO promised to update its Guidelines for Examination, to provide specific guidance on the examination of AI applications under existing computer-implemented inventions (“CII”) practice and case law.

The EPO has delivered on its promise. A preview-version of the new Guidelines is now available on its website. These Guidelines are set to take effect on 1 November 2018. Plot spoiler alert – the new section on AI and machine learning now appears in section 3.3.1 of Part G of the Guidelines.  Those of you who are familiar with the Guidelines will immediately spot that this new section on AI and machine learning has been inserted under the part of the guidelines that deals with mathematical methods. Unsurprisingly, then, the new section begins by saying that, whatever other labels “AI” and “machine learning” might carry, they are based on computational models and algorithms, and (it appears) are to be treated as such for the purposes of examination:

Such computational models and algorithms are per se of an abstract mathematical nature, irrespective of whether they can be “trained” based on training data.

The Guidelines go on to say that, when examining whether the claimed subject-matter has a technical character as a whole, expressions such as “support vector machine“, “reasoning engine” or “neural network” are “looked at carefully“, because “they usually refer to abstract models devoid of technical character.” (Emphasis added.) Noted. What the EPO seems to be saying is that terms alone will not necessarily in and of themselves convey a technical function, rather they will be examined to see whether what they are describing  actually contributes something that is considered technical in nature. This isn’t a new principle, although perhaps it needs restating in the context of AI, which, some might say, can be particularly jargon-heavy. Continue Reading

AI, machine learning & legal tech: The 6th Hamburg Legal Tech Meetup at Google with Hogan Lovells

On September 6, the sixth Hamburg Legal Tech Meetup took place at Google’s German headquarters in Hamburg. The Hamburg Legal Tech Meetup is an event series initiated by Nico Kuhlmann (Hogan Lovells). The gathering of stakeholders aims at elaborating new ways of adapting legal services to digitalisation by further enhancing interdisciplinary and inter-industry exchange in the field of legal tech.

This meetup’s technical focus was on artificial intelligence and particularly machine learning while the legal spotlight focused on how in-house counsel and external law firms are going to cooperate well under the influence of legal tech. Continue Reading

Domain names: .DK – A safe zone

The Registry Dansk Internet Forum (DIFO), responsible for the management of the Top Level Domain (TLD) .DK, recently announced that it had reduced by 3,000 the number of Internet websites selling counterfeit goods or involved in some form of scam.

This was largely due to DIFO introducing a more efficient identity check of the person or company behind a given .DK domain name.  Pursuant to this, Danish customers must be validated with NemID, a common secure login that can be used on many Danish Internet sites, while all foreign customers are assessed based on a risk assessment.  DIFO were subsequently able to remove domain names registered to persons that had not been able to or had refused to reveal their identity.

In March 2018, DIFO carried out an independent study that clearly showed the positive results that the introduction of the intensified identity checks had brought to the .DK zone.  At the last count there were only around 50 scam websites remaining, which represents around 0.12% of all .DK domain names.  The .DK zone is now surely one of the safest places to shop online.

As part of the exercise to make .DK a safe and trusted zone, DIFO have been working with e-mark, a not for profit organisation that represents more than 2,200 Danish companies with an online commercial presence by certifying websites that are deemed safe and trusted.

“We are very pleased with the excellent result DIFO has achieved by reducing the number of scam web shops that end with .dk. One scam shop is one too many, but at the current level, the .dk zone can be considered to be one of the safest zones in the world,” said the CEO of e-mark, Jesper Arp-Hansen.

This post is selected from our Anchovy News publication: Anchovy® is our comprehensive and centralised online brand protection service for global domain name strategy, including new gTLDs together with portfolio management and global enforcement using a unique and exclusive online platform developed in-house. For more information please contact us at  anchovynews@hoganlovells.com 

Hogan Lovells IP on board at LES 2018 Annual Meeting

We are delighted to be participating in the Licensing Executives Society (U.S.A. and Canada) 2018 Annual Meeting in the “birthplace of innovation“, Boston, Massachusetts.

IP Partner Jeff Whittle will be joined by Senior Associate Mark Shelley speaking on the following Negotiating Skills sessions as part of this year’s “dynamic program for professional development, networking opportunities, and fun!”

  • 13 October: Negotiations Skills 1 – Jeff Whittle & Mark Shelley
  • 14 October: Negotiations Skills 2 – Jeff Whittle

Jeff and Mark will be joined by colleagues from our international network including IP Partner Cullen Taylor and Shanghai IP Counsel Yu-An Chang. We look forward to seeing you there!

For the conference overview, schedule, and more – visit the LES 2018 event page here

Brexit and IP: impact of a no deal exit

On Monday the UK government published a series of notices on the impact of a no-deal Brexit on intellectual property right-holders. The notices are part of a series of notices the government has published recently setting out what would happen for key industries in the event of a no-deal Brexit and what industry should do now to prepare. Most of the government’s proposals for what will happen in the event of a no-deal are well-known to industry and reflect the terms that have been agreed in principle with the EU (and will form part of the Withdrawal Agreement if a deal can be done – see our earlier blog on the terms of the Withdrawal Agreement here). However, there were a few new proposals, including the introduction of a new UK unregistered design right to match the existing unregistered Community design right; a new UK regime for geographical indications and a new process for Supplementary Protection Certificates (SPCs). Here are the key points to note on each of the notices:

Trade Marks and Designs

  • Registered trade marks and designs: The notice on trade marks and designs indicates that, even in the event of a no-deal Brexit, the government intends to ensure continued protection for unitary rights (EU trade marks and community designs) by creating equivalent protection under UK law that will arise automatically without any involvement or action from the rights holder. However, where applications for unitary registered rights are pending at Brexit, the government has now said that, in the event of a no-deal Brexit, applicants will have to re-file any pending EU applications, within nine months of Brexit day, as applications for UK equivalent rights. Going forward clients may therefore want to factor UK applications into existing filing strategies and consider filing UK applications now in parallel with EUTM and Community registered design applications, or as a separate designation within a Madrid or Hague application. For more detail read our blog on trade mark and design protection planning for Brexit here.


  • Correspondence addresses for registered trade marks and designs: currently when a right holder applies for a UK trade mark or design at the UK Intellectual Property Office, they must provide an address for service in the EEA. The UK government has said there will be “no immediate changes” to this regime and the current rules will remain in place after Brexit, at least, it is implied, in the short term. This suggests an EEA address for service which is not in the UK will still suffice post-Brexit.


  • Unregistered designs: The government has said that it will ensure that all existing unregistered Community designs will continue to be protected and enforceable in the UK post-Brexit, for the remaining period of the protection of the right. In addition, the UK will create a new “supplemental” UK unregistered design right, equivalent to the unregistered Community design, which will apply to all designs disclosed after Brexit. The government has also said that the current UK unregistered design right will continue to exist post Brexit meaning a design first disclosed in the UK could be protected by both the supplemental unregistered design right for a period of three years and the UK unregistered design right, for a period of up to fifteen years (each for different and overlapping aspects of the design). The UK government has given no further indication of how this overlapping regime will be implemented in practice but it has said that “the UK will amend legislation to ensure that it functions effectively” post Brexit.

Geographical Indications (GIs) Continue Reading

US Patents and the potential global monopoly effect for software

Earlier this summer, the Supreme Court held that the Patent Act’s damages provision, 35 U.S.C. 284, allowed a patent holder to recover foreign lost profits when patent infringement liability is based on 35 U.S.C. 271(f)(2). WesternGeco LLC v. ION Geophysical Corp., 138 S. Ct. 2129 (2018).

Section 271(f)(2) provides that a company “shall be liable as an infringer” if it supplies certain components of a patented invention “in or from the United States” with the intent that they “will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States.” In contrast, the Federal Circuit has held that a company that makes or sells an entire infringing device within the United States is not liable for lose sales in foreign markets under section 271(a). Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1370 (Fed. Cir. 2013). Thus, by allowing the recovery of foreign lost profits, WesterGeco creates a new incentive for patent plaintiffs to find liability based on sales of infringing components.

In the wake of the Court’s opinion, however, uncertainty remains with respect to whether the sale of software will constitute sale of an infringing component. Software is inoperative alone, but rather must be combined with appropriate hardware. Therefore, it would seem to qualify as a component. In light of WesternGeco, is software developed in the U.S. also “supplied in or from the U.S.?” If that software is then installed on foreign devices abroad, does that expose the software developer to world-wide lost profit damages for infringement of a competitor’s U.S. patent? Continue Reading

U.S.: Innovation Lounge networking event, October 17

Join us on October 17 for our Hogan Lovells Innovation Lounge, a networking event in our Washington, D.C. office aimed for associate-level attorneys and professionals with an interest in tech. Catch up with old friends and make new connections as a panel of industry disruptors discuss their cutting-edge technologies and the legal issues that arise in development and commercialization. Hors d’oeuvres and drinks will be served before the presentations and a cocktail reception will follow.

We are delighted to be joined by the following presenters:

  • William Kowalski – CFO, Atomos Nuclear. Atomos Nuclear and Space is a provider of in-space transportation services for commercial, civil, and military space operations. Atomos is building spacecraft to move other spacecraft, precision-placing new assets, recovering misplaced satellites, removing defunct satellites, and opening access to deep space.
  • Jon Luzader – Founder, Blink Cloud. blink.cloud is a cybersecurity startup based in the Washington, D.C. area that specializes in encrypted messaging services. One of its first products is an API platform that makes it simple to use encrypted ‘burn after reading’ messages across all modern web applications.
  • Anuja Sonalker  – CEO, Steer Tech. Steer Tech created the first fully-autonomous, parking technology to transform everyday cars into driverless vehicles that self-park in designated lots. The autonomous parking system is installed in a car by a certified provider and corresponds with a mobile app that is paired with the vehicle.
  • Pat Bahn – CEO, TGV Rockets. TGV Rockets has been involved in reusable suborbital launch technology since 2003. TGV is developing a new class and generation of rocket engine that will facilitate the development of space commercialization.

Please join us for this free networking event, and feel free to forward this invitation to colleagues who may be interested in attending.

Date: October 17, 2018

Venue: Hogan Lovells, 555 13th St NW, Washington, D.C.

Please RSVP for the event here. If you have any questions, please contact Keith O’Doherty.

A game changer? China enacts first e-commerce law

In stark contrast to the rapid development of e-commerce in China, it has taken nearly five years and no less than four drafts for China to finalise its first e-Commerce Law. The new law will enter into force on 1 January 2019.

This new law has a remarkably broad scope, encompassing many aspects of e-commerce, including, for example, e-payments, product safety, data protection, cybersecurity, anti-competitive conduct, and intellectual property infringement. The law also covers all the main players in the e-commerce industry in China, from the platform operators (like Taobao or JD.com), the in-platform operators (e.g. those with an online shop on T-Mall)  and other operators who conduct e-commerce through their own websites (e.g. websites of bricks and mortar retailers) or any other network services (e.g. public account sellers on WeChat). The long-drawn-out legislative process points to the protracted debates going on behind the scenes between the various stakeholders in this space, with the stakes being particularly high for many of them. In particular, this note asks the question whether this law has struck a fair balance between the often competing interests of e-commerce platform operators, in-platform operators and consumer rights? Does it come down too hard on or is it too lenient on e-commerce platforms and in-platform operators who sell defective or infringing products? Should even the smallest and most vulnerable of the online sellers be required to register and pay taxes so that consumers have some recourse? In the end, the answer depends on which side of the fence you sit.

This new law may not be a complete game changer, but it definitely touches most businesses in China, one way or another; for those that are not in the market yet, it is a market that has huge potential and drawing power, with the huge spending power of the Chinese consumer being the pot of gold at the end of the rainbow. Please click here to read the full article.

No deal Brexit: Trade mark and design right protection planning

Following the UK government’s notice on trade marks and designs if there is no Brexit deal (the “Notice”) and the increasing likelihood of the UK leaving the EU with no deal as to the future trading arrangements with the EU, clients should be reviewing their trade mark and designs portfolios now and reconsidering their brand protection strategy for the UK.

The Notice, published on Monday, is one of a series of notices the government has published recently setting out what would happen for key industries in the event of a no-deal Brexit and what industry should do now to prepare.

The government’s aim is to ensure continued recognition of existing unitary rights (EU trade marks and community designs) by creating equivalent protection under UK law. This has been agreed in principle with the EU as part of the draft Withdrawal Agreement. However, the government has now set out what will happen if the Withdrawal Agreement is not agreed by 29 March 2019 and the UK leaves the EU with no deal.

The Notice indicates that, even in the event of a no-deal Brexit, the government still intends to ensure continued protection for unitary rights by creating equivalent protection under UK law that will arise automatically without any involvement or action from the rights holder. However, where applications for unitary registered rights are pending at Brexit, the government has now said that, in the event of a no deal Brexit, applicants will have to re-file any pending EU applications, within nine months of Brexit day, as applications for UK equivalent rights.

Our recommendations:

  • If you have existing UK trade mark rights or registered designs, which you were considering abandoning or claiming seniority from in respect of an equivalent EUTM, don’t abandon them!
  • Factor UK applications into your existing filing strategies and consider filing them now in parallel with your EUTM and Community registered design applications, or as a separate designation within a Madrid or Hague application.

If you have any questions about how this affects your portfolio, please contact Sahira Khwaja or Charlie Winckworth in our London office, or Imogen Fowler or Andreas Renck in our Alicante office.

Follow LimeGreenIP News for further comment on the impact of Brexit on intellectual property rights and visit our Brexit Hub for the big picture… in detail.

Provider liability: First YouTube, now “uploaded” – next case before the CJEU

Only two weeks ago, the Federal Court of Justice (BGH) referred various questions to the Court of Justice of the European Union (CJEU) concerning the liability of the video platform YouTube. There, the court’s queries focused on who is actually responsible for unlawfully uploaded content – just the uploader himself or the service provider as well? Last week, the German judges yet again sat over a case dealing with this issue. Once again they decided to initiate preliminary proceedings before the CJEU in Luxembourg (see the decision of 20 September 2018, file no.: I ZR 53/17uploaded).

One might ask why the second case also had to be referred to the CJEU with fairly similar questions being asked. The answer is quite simple: one platform is not the same as another and one service does not necessarily reflect the features of the next. Since case law builds on and develops on the basis of judges handing down more than one judgment on a certain subject, it is crucial that the CJEU examines the matter and explains its views on such an important issue (the liability of service providers) on the basis of differing factual situations. In this respect, it is fair to say that these two German cases differ widely.

It’s important to keep in mind that provider liability is currently also a major concern for the European legislator. In the course of the copyright reform pending in the legislative process, the Commission, Parliament and the Council are endeavoring to find a compromise as to the conditions under which providers could be held liable for uploaded content. Unsurprisingly, Article 13 of the current draft is one of the most controversial standards in the draft law (see our video and blog).

Background Continue Reading