Wish to be better next week

Not all IPKat readers may be aware of the European Intellectual Property (IP) Helpdesk. The European IP Helpdesk provides free-of-charge, first-line support and information on all matters related to IP management. By registering a free account on its website, users can get in touch with a Helpline team to get assistance with their individual IP questions.

To help bring the European IP Helpdesk’s services to the attention of readers and potential users, I conducted a brief interview with Ms Stephanie Weber, the Helpdesk's Communication Manager. Big thanks to Stephanie for taking the time to answer my questions

Q: What is the purpose of the European IP Helpdesk?

A: The European IP Helpdesk is an initiative of the European Commission and provides free-of-charge, first-line support on any IP-related issue to help potential and current participants in EU-funded projects, as well as European Small and Medium Enterprises (SMEs) to manage their IP assets. We seek to contribute to the management, dissemination and valorisation of innovative technologies by supporting those developing them, particularly internationally operating SME's and research partners.

To this end, we offer a broad range of information materials, on-site and online training events and a Helpline. The main goal is to support IP capacity building throughout the innovation process: from awareness of IP, to strategic use and application of IP, to successful application.

Q: What kind of questions does the European IP Helpdesk receive?

A: The scope of potential questions is very broad. We receive many queries from partners in EU-funded, collaborative research projects, for instance those falling within the ambit of Horizon 2020. They have questions relating to issues such as joint ownership of IP arising from research results, rights of access to existing IP, or uncertainties linked to IP exploitation, which we help them to address. The answers we provide are general and geared towards a first orientation: we do not provide advice on IP strategies in individual cases. Other questions relate to the management of IP portfolios, IP rights in general and different types of IP protection available in Europe.

In addition, we regularly receive questions from SMEs that face potential IP issues. For instance, we were contacted by a SME that produces wooden toys and wanted to develop a new line of games based on existing contemporary art works. The European IP Helpdesk advised the SME on the relevant legal framework and general strategies to avoid liability, such as using works that are in the public domain. We suggested engaging an IP lawyer to perform the necessary rights clearance. In another case, a SME was asked by a large multinational company to join a Horizon 2020 project as a subcontractor, and it had questions about its rights and possibilities to keep its know-how confidential. We highlighted best practices for these types of collaborations, such as use of contractual Non-Disclosure Agreements (NDAs), and the rights that subcontractors can derive from the grant conditions of Horizon 2020 projects. In both cases, we were able to help the SME better understand the legal situation it was facing as a starting point for making its business plans or seeking specialist advice.

Q: So the European IP Helpdesk provides free legal support on IP-related issues?

A: Up to a point, yes. The European IP Helpdesk’s services are all free of charge, but it is important to keep in mind that we only offer first-line assistance. That means we provide orientation to individuals, companies and research partners seeking to understand the IP system and the possibilities it offers, and we can give high-level support on how to tackle certain IP issues.

We do not, however, provide in-depth, legally binding advice of the type clients typically receive at specialized law firms. Where users are in need of more comprehensive advice or legal representation, we generally advise them to seek professional legal counsel.

Your AI overlords demand to be recognized...

Oh, inventorship and AI. As much as Crispr has been preoccupying the IP agendas of IP conferences the last couple of years, inventorship and AI looks to be taking its place. The IPKat has also been a fan of the topic (see Kat posts here). For the AmeriKat's part, she thinks that, for the time-being, AI inventorship is (for the most part) a non-event, but not everyone agrees.  Indeed some issue warnings about not recognizing the role of AI in inventorship.

"Last week the European Patent Office stated that an inventor must be a ‘natural person’. This provides the basis for the EPO’s decision in December to reject two patent applications which had named the artificially intelligent system Dabus as the sole inventor. The patent applications were made by Dr Thaler’s team at Surrey University and described a flashing beacon light and plastic food container.

Dr Thaler’s failed ‘AI inventor’ applications have raised an important question - can AI be inventive? However, in this article, I shall not dwell on the specific merits of Dr Thaler’s applications but instead focus on Google DeepMind’s artificially intelligent system AlphaGo.

In 2016, AlphaGo was capable of reading and understanding the prior art of the game Go, finding novel and inventive solutions to defeat its opponent Lee Sedol (the world champion) 4 games to 5 and effectively communicating that solution to Aja Haung, the DeepMind team member who placed stones on AlphaGo’s behalf. However, the technology behind AlphaGo is not limited to board games, it also extends to sectors with patentable subject matter such as telecommunications and pharmaceuticals.

This article argues that AI can be inventive, that AI differs from other platform technologies and for the sake of transparency, AI inventorship should be recognised.

AlphaGo

In 1997, Garry Kasparov became the first chess world champion to lose a match to a computer which had been programmed by expert chess players. In 2016, Lee Sedol became the first Go world champion to lose to a computer that had taught itself - AlphaGo.

Prior to Sedol’s defeat it was thought that humans would retain the upper hand in Go because in any one position there are 200 possible moves, whilst in chess there are 20. To put this into perspective the number of possible configurations of a Go board is greater than the number of atoms in the universe. In fact, even if you took all the computers in the world and ran them for a million years, this would still not be enough computing power to calculate all the possible variations. Therefore, AlphaGo cannot simply compute every possible move, it must rely on something else – intuition.

In the second game AlphaGo made Move 37 and gave us a glimpse of a future shaped by computer intuition and inventiveness. However, Move 37 appeared at first to be a mistake because no competent human player would have made it. In fact, AlphaGo knew that there was only a 1 in 10,000 chance a human would have made Move 37, yet despite this, it ignored the games received wisdom or prior art and made an inventive move.

Post-match analysis concluded that Move 37 was the pivot on which the game had turned in AlphaGo’s favour. Lee Sedol later described it as a “really creative and beautiful” move. The lessons that AlphaGo has taught and continues to teach human Go players amounts to an improvement in the game’s prior art and if Move 37 were patentable, it would be an inventive step.

How AI differs from other platform technologies e.g. mouse models

Aja Haung was the DeepMind team member who placed stones on the Go board for AlphaGo in its victory over Lee Sedol. However, it is unreasonable to suggest that Haung was the creative mind behind Move 37 because at no point did he exercise choice. Move 37 would have occurred irrespective of whether it was Haung or this author placing the stones.

Mouse models on the other hand still require scientists to exercise choice either when selecting the antigenic challenge or in determining which antibody therapeutics may be suitable for use in humans. The scientist in making these choices must rely on their experience and intelligence, which is why the scientist rather than the mouse is the named inventor. A useful antibody therapeutic would not exist irrespective of whether a scientist skilled in the art or this author were conducting the experiment.

I have used AlphaGo as an example because the human operator is an automaton but mouse models do pose an interesting problem; namely making a choice based on a menu of limited options does not appear particularly inventive. Is there a difference between a mouse model and an artificially intelligent system that still requires the human operator to exercise choice?

The difference is that the immune system of a mouse is static, in that it does not get better over time at identifying antibody therapeutics for use in humans. Artificially intelligent systems on the other hand are dynamic in that over time they do get better at their given task. For example, DeepMind went onto develop AlphaGo Zero in 2017, which with no prior knowledge of the game Go and only the basic rules as an input had at three days surpassed the abilities of AlphaGo Lee, the version discussed above. It had achieved this entirely from self-play, without human intervention or historical data. In just a few weeks AlphaGo Zero had accumulated thousands of years of human knowledge but it had also discovered new knowledge. It developed unconventional strategies and creative new moves that echoed and surpassed Move 37. Mouse models will always require an intelligent human scientist but artificially intelligent systems will over time make their human operators increasingly redundant. How will we know when humans have become redundant in the inventive process if an AI cannot be named as an inventor?

Furthermore, Google recently announced that its Sycamore quantum processor had performed a specific task in 200 seconds that would have taken the world’s best supercomputer 10,000 years to complete. One of the major applications of quantum computing is in artificial intelligence and if successfully applied will make AlphaGo Zero appear prehistoric in comparison.

The dual purpose of patents - ownership and transparency

In return for the grant of a twenty-year monopoly society demands transparency from the owners of patents. But in denying the existence of ‘AI inventors’ society risks losing this transparency because it encourages human inventors to either down play the extent of AI assistance in a patent application or alternatively to rely on trade secrets. In either scenario transparency is lost but does this matter?

The creative outputs of both Aja Haung and AlphaGo are owned by Google but that ownership should not make it irrelevant which of the two’s creativity was responsible for defeating Lee Sedol. Without the legal fiction of AI inventorship we are headed for a society in which Aja Haung became the Go world champion in 2016. "

The CJEU decision

Sky applied for large numbers of trade marks for a very broad range of products, including products far removed from its core business, such as whips, furs or fire extinguishers. This practice made Arnold J (as he then was) conclude that "the reason for including such goods and services was that Sky had a strategy of seeking very broad protection of the Trade Marks regardless of whether it was commercially justified" [par. 250 of the referring decision], and he wanted to know the limits set to such strategies by EU law.

The CJEU called to mind its recent decision in C-104/18 Koton and reiterated that the concept of bad faith "presupposes the presence of a dishonest state of mind". In Koton, the CJEU held that a finding of bad faith is not limited to situations where the applicant had knowledge of use of a similar or identical trade mark by a third party [par. 55]. Rather, bad faith must be established in light of "all the relevant factual circumstances as they appeared at the time that the application was filed" [par. 59], including the "commercial logic" of the registration [par. 62].

Building on this in Sky, the CJEU held that a trade mark application "without any intention to use it in relation to the goods and services covered by that registration may constitute bad faith, where there is no rationale for the application for registration" in light of the aims of trade mark law [par. 77]. However, the mere absence of an intention to use is not enough. Rather, to establish that an unused trade mark was registered in bad faith, it must be shown that there existed (a) a dishonest intention of undermining the interests of third parties, or (b) an intention to obtain an exclusive rights for purposes falling outside the functions of the trade mark [par 75].

Where such a finding is made, bad faith will arise only for the goods concerned, so that a partial finding of bad faith is possible [see also Koton at par. 61].

Lastly, the CJEU held that Section 32(3) of the UK Trade Marks Act 1994 is, in principle, compatible with EU trade mark law. This provision requires applicants to state that the trade mark is being used, or that the applicant has a bona fide intention to use the trade mark. The CJEU held that if this is a "mere procedural requirement relating to the registration" of a mark, it is acceptable [par. 86].

But what can be the effect of this statement? It seems that, under English law, a finding of bad faith is likely where the statement turns out to have been falsely made [see the discussion of the case law in the referring decision, pars. 209-233]. But the CJEU seems to reject this possibility: Member States are precluded from introducing grounds of refusal or invalidity not mentioned in the EU Trade Mark Directive or Regulation. Thus, while the infringement of an obligation to make the use statement "may constitute evidence for the purposes of establishing bad faith", the infringement in and of itself cannot "constitute a ground for invalidity of the trade mark concerned" [par. 86].

Lucrezia has no intention to use her study materials according to their function

Bad faith as a safety valve for the trade mark system…

Insofar as it concerns the issue of bad faith, the CJEU's decision in Sky came as no surprise to this Kat. Since Koton, we have known that bad faith must be given a broad application, in the sense that it can potentially cover any trade mark registration made with a "dishonest state of mind". The decisions in Koton and Sky pave the way for increased use of bad faith arguments in case of abuse of the trade mark system, regardless of the form it takes.Thus, in my post on the opinion of Advocate General (AG) Tanchev, I suggested that his approach to bad faith was sensitive to the issue of deliberately abusive filings. The so-called "Gleissner Files" offer a notorious example: they describe in detail the various practices of a Mr. Michael Gleissner, which include filing hundreds of trade mark applications covering popular names and terms as part of a massive blocking strategy. This is apparently a viable business proposition, probably because, whilst in theory there are no limits to signs that can constitute trade marks, in practice there is a finite supply of signs that are in actual fact suitable and attractive for use as a trade mark [an argument developed in more detail in a recent study by Professors Beebe and Fromer].

Courts have been able to adequately deal with these kinds of abusive practices by weaponizing the bad faith requirement. For instance, in T-82/14 Copernicus, the General Court (GC) confirmed that utilizing a "priority trap" – whereby trade marks are filed, withdrawn prior to having to pay fees, and then re-filed until a later applicant registers a similar sign – constituted bad faith [par. 148]. Likewise, the United Kingdom Intellectual Property Office (UKIPO) held repeatedly that comparable strategies could constitute bad faith [e.g. here, here and here].

The requirements for bad faith formulated by the CJEU in Sky fit these types of situations like a glove: indeed, "obtaining an exclusive right for purposes other than those falling within the functions of a trade mark" concisely but aptly describes the business models of the likes of Mr. Gleissner. It is hoped that European courts will now make short shrift of such practices.

… but how far does it go?

Sky, however, was about trade mark registrations by a company that holds a widely reputed trade mark – Sky – and holds a strong position on the market in respect for a number of services, mostly related to television broadcasting.

The real question is what kinds of limitations these kinds of parties face in registering their trade mark also for other goods, no doubt with a view of keeping the trade mark register clear of other Sky-registrations and to thus help protect the distinctiveness of its core mark. This is not an uncommon strategy, though Sky perhaps went a bit overboard: the referring decision noted that two of the registrations invoked by Sky were over 8 000 words long.

In my view, it will be much more difficult to prove bad faith for these kinds of parties. Perhaps Sky did not intend to ever use its mark for whips, furs or fire extinguishers. But that is not enough, the CJEU tells us. In addition, the applicant must aim to undermine the interests of third parties or seek to obtain exclusive rights not justified by the functions of the trade mark system.

My feeling is that it will not be very easy to establish this in cases where the trade mark is used and has a strong reputation for a wide range of goods, since it will often be legitimate for these kinds of parties to protect their brand also in ancillary markets. Then again, invoking several 8 000+ word trade mark registrations against a company that offers services quite far removed from Sky's core business won't win much sympathy from most courts, and it certainly did not in the referring court. Those courts certainly can read in the CJEU's decision encouragement to severely trim down such registrations.

Will a statement as required by Section 32(3) UK Trade Marks Act 1994 help? Most likely, no. If a trade mark is not used after five years, it is clear that no intention to use existed or was lived up to. In that case, it is unclear what the added value is of a statement that such an intention existed at the time of registration if that cannot by itself establish bad faith. After the Brexit transition period, UK courts may become effectively free to disregard the decision in Sky so they may attach more severe consequences to falsely stated intentions to use. But in the rest of Europe, this Kat expects comparable restrictions will do little to reign in applicants like Sky.

All in all, Sky does not really seem to empower courts to deal with the important issues the case raised. As noted last week, the CJEU's solution to the lack of clarity issue is not really satisfactory. The bad faith issue is left sufficiently open for courts to potentially act against overbroad trade mark applications like Sky's; but it will not be easy to determine a clear boundary. The good part is that Sky seems to be just the beginning, so that exciting developments on these issues no doubt await us.