The complex nature of global patent systems was laid bare in a panel discussion at the Managing IP International Patent Forum 2019 in London on March 7.
On what was the second and final day of the conference, Calum Smyth, global head of IP at Barclays, moderated the session. He was joined by Cassandra Derham, senior IP attorney at travel technology company Amadeus, and Yannis Skulikaris, an EPO director.
Smyth began by noting that patent examiners have said they find it difficult to examine software patents, before mentioning the well-known Alice v CLS Bank decision by the US Supreme Court. The 2014 ruling has extremely restricted software patents in the US, said Smyth, who is based in the UK himself.
Offering some insight on Europe, Skulikaris was on hand to discuss “technical character,” which is just one requirement for an invention to be patentable. He gave two examples of this test being met; the first where the invention shows a technically skilled person (in contrast to a sales manager or a financial expert, for example) how to solve a technical problem, using technical means. He added that the problem solved by the invention must be technical, in contrast to one that is purely financial or mathematical.
But Skulikaris explained that when the EPO says an invention lacks technical character, it does not take a dogmatic approach. Rather, he said that the decision is open to debate and the examiner will typically ask the applicant to explain why they think that the invention is technical.
For Derham at Amadeus, some of the challenges she faces are industry-specific. She showed a slide on the International Air Transport Association (IATA), an airline trade body which helps formulate industry policy and standards. In its licensing terms for the IATA PSC Data Exchange Specification, the association says that licensees must not register any relevant IP rights for themselves and must assign to IATA any IP in breach of this obligation.
Derham argued that this situation is the opposite of that in place in the telecoms industry: “We’re stuck with not being encouraged to innovate except for our own wellbeing.”
Managing IP will provide key takeaways from the conference later this week.
