Series: The IP in AI

3 October, 2023

Uses of machine learning and AI are expanding rapidly, and IP rights play a critical role in both regulating the use of AI and protecting the rights of inventors and creators. In this series, we will explore the key challenges governments worldwide are currently grappling with in order to provide the right level of protection to AI and ML systems.

HSF comments for Managing IP on Milan UPC Central Division confirmation

19 May, 2023

On 18 May 2023, the Italian government confirmed that the third Central Division seat of the Unified Patent Court (UPC) will be hosted in Milan.

The statement issued by the Italian Ministry of Foreign Affairs and International Cooperation has said that the new seat will be operational within one year. However, with the UPC launch date approaching on 1 June 2023, Paris and Munich will initially share the caseload until Milan is operational, as confirmed by the UPC Presidium on 16 May 2023 (see our previous blog post).

Milan-based Joint Global Head of Intellectual Property, Laura Orlando, discussed the recent developments with Rory O’Neill at Managing IP.

Responding to the UPC’s statement on 16 May, Laura said: “The announcement of that provisional split, in the absence of any reference to Milan, had led many readers and part of the Italian press to think that Italy would no longer have the third seat.”

“This is a great achievement for the Italian IP and life sciences community, as much as for Milan and Italy,” Laura said following Thursday’s confirmation. She continued: “We have eventually arrived at the result that we have been working on for years.”

The competency allocations between the three seats are yet to be finalised.

The original article “Milan confirmed for UPC central division” was published by Managing IP on 19 May 2023.

More information about the UPC and unitary patent can be found on our dedicated UPC & UP Hub.

Our fully integrated, market leading European patent litigation team is ready to advise on all aspects of the practical and strategic issues which you should be considering in preparation for the UPC.

Contact

Laura Orlando

Partner, Milan

+39 02 3602 1386

The IP in AI: Can IP rights protect AI systems?

23 March, 2023

With the expanding popularity of ML and AI systems, developers and investors expect those systems to be protected from unauthorised use by others.

Providing suitable protection to encourage and reward investment in the creation of intellectual property – but balancing that against the rights of the public to use those creations – is one of the core aims of the intellectual property system. Striking this balance correctly has proved difficult in this emerging area of technology, and considerable uncertainty remains in legal systems around the world as to the extent of protection afforded to ML and AI systems.

Read the full article here

For more on the developing area of intellectual property protection and risks for AI and ML systems, follow our blog series The IP in AI.

Key contacts

Aaron Hayward

Senior Associate, Australia

+61 2 9225 5739

Anna Vandervliet

Senior Associate, Australia

+61 2 9322 4868

Byron Turner

Solicitor, Australia

+61 2 9322 4155

Rachel Montagnon

Professional Support Consultant, UK

+44 20 7466 2217

Alex Wang

Patent Attorney, China

+86 10 6535 5156

Giulia Maienza

Associate, Europe

+44 20 7466 6445

Peng Lei

Partner, Kewei, China

+86 10 6535 5151

Sophie Yates

Solicitor, Australia

+61 455 304 922

HSF shares insights on what US lawyers should be considering ahead of the UPC’s start date for Bloomberg Law

23 December, 2022

The new European Unified Patent Court (UPC) has been a long time coming – and now just a little bit longer with the two month delay recently announced. The new start date is 1 June 2023 with the sunrise period in which to pre-register opt-outs of European patents from the UPC’s jurisdiction now starting on 1 March 2023.

Despite the short delay, businesses around the world must continue to consider their strategies for the UPC and, in particular, opt-out, ahead of the revised start date. Herbert Smith Freehills’ Joint Global Head of Intellectual Property, Laura Orlando, recently spoke to Bloomberg Law to share her insights on what US lawyers should be considering in advance of its launch.

Discussing some of the key areas patent owners should be monitoring once the first cases are brought before the court, Laura says: “Patent owners should further pay attention to the regional dynamics that develop among courts of first instance, which could inform where in Europe they choose to launch UPC actions”.

Laura continues: “Patentees should be considering which might be more likely to award a preliminary injunction or be more generous with damages… some local flavour could develop at least initially before there has been any conformity of approach applied by the Court of Appeal.”

The UPC will have a Court of First Instance (divided into local, regional and central divisions) and a Court of Appeal (Luxembourg). Cases will commence in any one of these divisions according to the subject matter and the prescribed division set out in the UPC Agreement and the UPC Rules.

The original article “What US Lawyers Should Know as the EU Unified Patent Court Looms” was published by Kelcee Griffis at Bloomberg Law on 22 December 2022.

More information about the UPC and unitary patent can be found on our dedicated UPC & UP Hub.

For any questions relating to the UPC, please contact Laura Orlando or another member of our European patents team.

Our fully integrated, market leading European patent litigation team is ready to advise on all aspects of the practical and strategic issues you should be considering in preparation for the UPC.

Laura Orlando

Partner, Milan

+39 02 3602 1371

Start date for UPC postponed to 1 June 2023 and sunrise period for opt-out to 1 March 2023

5 December, 2022

The UPC website has announced today that the start date for the sunrise period (in which European patents can be opted out of the UPC’s jurisdiction in advance of the UPC starting to accept cases) will be delayed until 1 March 2023 to allow users to prepare themselves for the strong authentication required to access the UPC’s case management system (CMS) and to sign documents. Previously the sunrise period was due to start on 1 January 2023. This delay means that that start date for the UPC will also be pushed back by two months, to 1 June 2023 (rather than 1 April). The UPC site says that no further delay is anticipated. This June start date would require Germany to deposit its instrument of ratification of the UPC Agreement in February.

This short delay to the sunrise period and UPC start date, may be welcomed by those who are still considering their strategies for the UPC and, in particular, opt-out. It may also lead to more cases being brought to the court at the start date, given the increased period in which to assess the benefits of the new patent system and prepare for it.

The motivation for the postponement is to allow users to equip themselves with both a client authentication (hard device) and a qualified electronic signature. In order to address concerns from users in regards to suitable providers for the CMS authentication that comply with UPC requirements, the UPC IT team contacted by e-mail all the service providers available in the EU Trusted List. Based on the feedback it received from these service providers, an initial list (downloadable as a pdf on this page) was compiled, sorted by country, with information about the providers’ compliance with UPC requirements. The UPC site page detailing this carries a disclaimer that the list is not exhaustive and that it will be updated regularly; it is “an open ended list which will be amended as additional providers communicate their readiness to the UPC”. The UPC IT team recommends that users contact their chosen provider before ordering certificates to ensure service availability.

The UPC site comments: “As strong authentication is required already for the Sunrise Period the initial timeline seems insufficient in view of the legitimate interests of users who have to find a provider and acquire the required authentication tools.”

The site says that no further delay is expected as all secondary legislation needed has been adopted and the judges have been appointed and the Presidium has been formed and the Presidents of both the Court of Appeal and the Court of First Instance have been elected and have assumed their offices. “The Presidium of the UPC has concluded the interviews of candidates for the position of Registrar and Deputy Registrar completing the Court’s administration as of the beginning of next year, in time for the start of the Sunrise period on 1 March 2023. The functionalities of the CMS have been positively tested. The training of the UPC judges and the clerks is under way. No amendments to the roadmap are required in these areas.”

Our fully integrated, market leading European patent litigation team is ready to advise on all aspects of the practical and strategic issues you should be considering in preparation for the UPC. Please contact us for further information.

For a short video discussion of how to prepare for the advent of the UPC – watch/listen to Andrew Wells and Rachel Montagnon discuss how businesses should prepare for the UPC and unitary patent, including strategies to employ, licensing and co-ownership issues, as well as applications for opt-out and unitary effect.

For further background and comment on the UPC, see our recent UPC blog posts and the HSF UP and UPC hub.

Key Contacts

Frederic Chevallier

Partner, France

Ina vom Feld

Partner, Dusseldorf

+49 211 975 59091

Andrew Moir

Partner

+44 20 7466 2773

Sebastian Moore

Partner, London/ Milan

+44 207 466 2801

Laura Orlando

Partner, Milan

+39 02 3602 1386

Pietro Pouche

Partner - Milan

+39 02 3602 1394

Jonathan Turnbull

Partner, London

+44 20 7466 2174

Andrew Wells

Partner, IP

+44 20 7466 2929

Emily Bottle

Senior Associate, London/Milan

+39 02 3602 1402

Rachel Montagnon

Professional Support Consultant, IP

+44 20 7466 2217

The UPC and unitary patents: preparing for the new system – an HSF video podcast for Practical Law

28 November, 2022

Concerned about the new patent system planned for European patents starting in 2023? Andrew Wells and Rachel Montagnon have filmed a video podcast for Practical Law on what businesses can do to prepare for the advent of the UPC and unitary patent (published on 28 November 2023). The discussion covers:

An overview of the UPC and unitary patent system
The advantages of the UPC and the potential risks
Opting out of the UPC
Considerations for patent co-owners and licensees

Watch the video here (available to Practical Law subscribers along with a transcript).

Andrew Wells

Partner - London

+44 20 7466 2929

Rachel Montagnon

Professional Support Consultant - London

+44 20 7466 2217

HSF shares insights on the Milan local division UPC judges for Managing IP

18 November, 2022

Following the Unified Patent Court (UPC) Administrative Committee’s appointment of 85 legal and technical judges last month, including the appointment of two legally qualified judges in the Milan local division, Herbert Smith Freehills’ Joint Global Head of Intellectual Property Laura Orlando shares her insights with Managing IP on what this may mean for the UPC.

Commenting on the appointment of Pierluigi Perrotti and Alima Zana from the District Court of Milan, Laura says “there has been a high turnover recently in the domestic courts and that a number of new judges have joined the IP division. Conversely, Zana and Perrotti have been at the division for several years. Certainly, they are the judges with the most experience of patent cases.”

Discussing their respective styles, Laura says that “both Zana and Perrotti tend to carefully consider the established case law and approach previously taken in similar cases at the Italian and foreign courts, as well as the European Patent Office’s (EPO) approach to patent validity. This also stems from the standard Italian practice of using European patent attorneys as court experts in patent cases”.

Laura adds “Perrotti, in addition to his work as a judge, has always been very active in non-judicial activities, such as panel discussions at universities.”

The original article “Experience will benefit Italy’s UPC judges” was published by Max Walters at Managing IP on 17 November 2022. The full article is available to subscribers-only.

More information about the UPC and unitary patent can be found on our dedicated UPC & UP Hub.

For any questions relating to the UPC, please contact Laura Orlando or another member of our European patents team.

Laura Orlando

Partner, Milan

+39 02 3602 1371

Emma And Rebekah Talk IP: Patents for the clean energy transition: The debate continues

16 November, 2022

In this podcast series, Australian partners Rebekah Gay and Emma Iles explore a variety of topics, issues and areas of intellectual property law.

In episode 16, Emma and Rebekah are joined by Andrew Wells from Herbert Smith Freehills’ London office to talk about the role of intellectual property rights in a rapid and fair renewable energy transition. Global players are competing to set increasingly ambitious net-zero emissions targets. Do patents help or hinder the innovations needed to achieve these goals?

Continue reading →

Patent filing trends signal boom in low emissions technologies

8 November, 2022

By Rebekah Gay, Emma Iles, Andrew Wells, Natasha Daniell, Catherine Chan

Filings – the current landscape

IP Australia has recently released its patent analysis of low emission technologies (LET), based on patent filings for the period 2015 – 2020 (see report here). The data serves to ‘identify holdings of specific expertise, helping to analyse the potential for further specialisation and investment in the future’.

Patent filings between 2015 and 2018 trended upwards for all areas of LET that were under analysis (carbon capture and storage, grid energy storage, solar photovoltaic technology, soil carbon measurements and low emission steel, aluminium and iron ore).

Globally, over 50,000 applications were filed since 2015 for carbon capture and storage, grid energy storage and solar photovoltaic technology respectively. This aligns with what can be seen commercially, with large-scale projects that will use these types of technology emerging. For example, Exxonmobil is currently evaluating the potential for a carbon capture and storage hub in south-east Australia. The project would be capable of capturing 2 million metric tonnes of carbon dioxide per year beginning in 2025. And in June of this year, it was announced that Edify Energy had secured financing for a 150MW/300MWh battery energy storage system in south-west NSW.

Of all those applying for patents in LET, applicants from China were consistently the top filers globally across all LET fields. Sungrow (headquartered in China), who was one of the top applicants for solar photovoltaic inverter patent filings, recently received the green light for a solar farm in Derby, Victoria. Construction is set to start early next year and is projected to power 25,000 households per year once established.

LET patent filing trends have also recently been analysed by the UK Intellectual Property Office (IPO) in its 2021-2 innovation and growth report (see report here). The report revealed that carbon capture and storage patenting activity worldwide has more than doubled over the last decade. Australia was regarded as the most specialised country with respect to carbon capture and storage technologies, meaning it files more patents in the field than would be expected given absolute levels of filing in the country.

With governments and private businesses around the globe gunning for a net zero future, the increase in innovation demonstrated by these patent filing trends is unsurprising. It is also in line with the trends we recently reported on with respect to hydrogen technologies (see article here).

Funding – future proofing LET

Innovation in the LET sphere is also being prioritised through government funding and strategic partnerships:

Earlier this month, the CSIRO (Australia’s national science agency) announced that an initial $90 million would be invested in its new Towards Net Zero Mission. The initiative seeks to bring together ‘research, industry, government, and communities to help Australia’s hardest to abate sector halve their emissions by 2035’.
Governments have also entered into bilateral agreements with one another in a bid to make LET more scalable and commercially viable. These partnerships often entail the co-funding of LET research and demonstration projects, and purport to drive down the cost of LET in order for it to be competitive with higher emitting alternatives. Australia has recently entered into such partnerships with India, Germany, Singapore, Japan, the Republic Korea and the United Kingdom.

What next?

The monitoring of patent filings (and analysis of IP rights more generally) is important in capturing an understanding of innovation in the market, and can also assist to identify opportunities for R&D, licensing or M&A investment. This has been recognised by the UK IPO, who has flagged further analysis with respect to green technologies (including analysis of other IP rights such as trade marks). The translation of these new technologies into commercial outcomes with an impact on the ability to reach net zero is only just beginning. But the level of innovation, coupled with both private and public initiatives to support the creation and dissemination of these technologies, certainly looks promising.