About Alexander Esslinger

I am German and European patent attorney at Betten & Resch in Germany

The EPO rejects two patent applications designating AI system DABUS as inventor


The EPO rejected two European patent applications, which both named an AI system as inventor, on the ground that the designation of inventorship did not fulfill the requirements of the EPC accepting only human persons as inventors.  The EPO states in the decision that AI systems or machines cannot be holders of the rights conferred to an inventor by the EPC.

A closer look at the two patent specifications reveals that these do not contain any evidence that AI was plausibly involved in the inventive process of devising the claimed inventions.

The recent decision of the European Patent Office (EPO) to reject two patent applications for failure to name a natural person as inventor has attracted attention recently. Earlier this week the reasons for the decisions to refuse EP 3 564 144 and EP 3 563 896 were published on the EPO register website.

The identical applicant of both patent applications claims that the true inventor of the inventions disclosed in the applications is an Artificial Intelligence (AI) system called DABUS, a machine intelligence system developed by the applicant based on artificial neural networks allegedly being able to perform creative work. The applicant designated “DABUS” as the sole inventor of both patent applications and stated that he had obtained the right to the European patent from DABUS as a successor in title.

The EPO refused both applications under Art. 90(5) of the European Patent Convention (EPC) for formal reasons, because the requirements of Art. 81 EPC

“The European patent application shall designate the inventor. If the applicant is not the inventor or is not the sole inventor, the designation shall contain a statement indicating the origin of the right to the European patent.” 

and Rule 19(1) EPC

“(1) The request for grant of a European patent shall contain the designation of the inventor. However, if the applicant is not the inventor or is not the sole inventor, the designation shall be filed in a separate document. The designation shall state the family name, given names and full address of the inventor, contain the statement referred to in Article 81 and bear the signature of the applicant or his representative.” 

were not met. These requirements were interpreted by the EPO in such a way that the designated inventor has to be a human person. Mentioning the name of a machine thus does not fulfill the requirements.

In defense of his request to designate the AI system DABUS as the inventor, the applicant relied in particular on the following arguments:

  • The Al system DABUS would be the actual deviser of the invention underlying the application. It would be a fundamental principle of patent law that the applicant must indicate the true inventor of the invention.
  • Rule 19(1) EPC would not require that the inventor is a human person.
  • Allowing an AI system or machine to be designated as inventor would be in line with the purpose of the patent system, namely to incentivise disclosure of information, commercialisation and development of inventions.
  • Not accepting Al systems as inventors would exclude inventions made by Al from patentability, contrary to Articles 52-57 EPC.

The EPO based its decision to reject the application essentially on the following reasons:

  • The legal framework of the EPC provides only for natural persons and legal persons to act within the system created by the EPC. Non-persons, i.e. neither natural nor legal persons do not have any role in proceedings before the EPO. In the context of inventorship reference is made only to natural persons. This indicates a clear legislative understanding that the inventor has to be a natural person.
  • Names given to things may not be equated with names of natural persons. Names given to natural persons serve not only the function of identifying them but enable them to exercise their rights and form part of their personality. Things have no rights which a name would allow them to exercise.
  • Under the EPC, the inventor has particular rights including the initial right to the European patent (which she can assign to a third party) and the right to be mentioned and designated as inventor on the publications of the application and the granted patent. Al systems or machines have at present no rights because they have no legal personality comparable to natural or legal persons. Legal personality is assigned to a natural person as a consequence of their being human, and to a legal person based on a legal fiction. Such legal fictions are either directly created by legislation, or developed through consistent jurisprudence. In the case of Al inventors, there is no legislation or jurisprudence establishing such legal fiction. It follows that Al systems or machines cannot have rights derived from being an inventor, such as the right to be designated as an inventor in the patent application. AI systems or machines also cannot transfer any rights such as the right to a European patent to a successor of title.

Consequently, the patent application was refused, because the designation of inventor filed by the applicant naming the machine “DABUS” as inventor does not meet the requirements of Art. 81 and Rule 19(1) EPC recited above. The decision is open to appeal by the applicant.

The EPO in accordance with Rule 19(2) EPC did not verify the claim that the AI system DABUS in fact is the inventor of the claimed invention. In the following we take a brief look at the two disclosures itself to check whether the AI system plausibly could be the inventor of the alleged inventions.

The first invention titled “Device and method for attracting enhanced attention” describes a device looking like a torch or pocket lamp having an LED light source 6 emitting light pulses having a fractal structure:

Claim 1 as amended after receipt of the search report from the EPO reads as follows:

  1. A device (2) for attracting enhanced attention, the device comprising:

(a) an input signal of a lacunar pulse train having characteristics of a pulse frequency of approximately four Hertz and a pulse-train fractal dimension of approximately one-half generated from a random walk over successive 300 millisecond intervals, each step being of equal magnitude and representative of a pulse train satisfying a fractal dimension equation of ln(number of intercepts of a neuron’s net input with a firing threshold)/ln(the total number of 300 ms intervals sampled); and

(b) at least one controllable light source (6) configured to be pulsatingly operated by said input signal;

wherein a neural flame is emitted from said at least one controllable light source as a result of said lacunar pulse train.

According to the description (paragraph [0017]), these particular light pulses defined in claim 1 should attract particular human attention:

Even to the naked eye, and without the use of an anomaly detector, fractal dimension 1/2 pulse streams preferentially attract the attention of human test subjects. The most attention-grabbing aspect of such streams is that the ’holes’ or lacunarity between pulses occur as anomalies in what would otherwise be a linear stream of events. In other words, the pattern is frequently broken, such anomalous behavior possibly being detected by the TRN within the human brain as inconsistencies in the established arrival trend of visual stimuli. In contrast, should fractal dimension drop significantly below 1/2, the frequency of anomalous pulses drops, making them less noticeable to humans should either attention or gaze be wandering.

The allegedly inventive light pulses having a fractal structure, however, are not generated by AI or machine learning but are simply received as an “input signal”. It is therefore not apparent at all, where the alleged machine intelligence system DABUS could have contributed to the invention. No evidence is submitted for the involvement of AI or neural networks or the like in conceiving the invention as defined by the above-recited claim 1. The claim features are not the result of a machine learning or other AI process. The allegation that DABUS is the real inventor seems not to be justified by the disclosure of the patent application.

The same applies to the second invention relating to a food or beverage container having a wall formed of fractal structures.

These fractal structures allegedly allowing coupling a plurality of such containers by inter-engagement, however, are likewise not described to be generated by AI. Again, a contribution of AI to the alleged invention is spurious.

The intention behind the two patent applications may actually be marketing-driven, namely to obtain a patent as an indication that the DABUS system indeed is able to perform creative tasks. The title “Device and method for attracting enhanced attention” then is aptly chosen.

The End of the “automatic” injunction in German patent Law ?


A proposed new draft legislation to amend the German Patent Act (PatG) clarifies the right of the patentee to injunctive relief against a patent infringer and takes measures to accelerate patent nullity (invalidity) lawsuits to mitigate the so-called “injunction gap”.

The right of the patentee to injunctive relief in the form of a permanent injunction against a patent infringer is maintained. Based on an equitable assessment of the interests of the patentee against those of the infringer, however, an injunction may be delayed to mitigate hardship on the side of the infringer. The relevant aspects considered for the assessment of proportionality are the interests of the patentee in an injunction including its type of business (operating company or licensing entity), the economic consequences of an injunction for the infringer, the complexity of the products involved, and the conduct of the parties. The right to damages for patent infringement and the possibility of compulsory licenses (e.g. in the case of SEPs) are not affected be the proposed draft legislation.


The German Ministry of Justice has published on 14 January 2020 a draft legislation to amend patent law (PatG) and other IP laws.

Besides some formalities and adaptions to international treaties, the main two issues of the draft legislation are a clarification of the right to injunctive relief of a patentee against a patent infringer and measures to accelerate patent nullity lawsuits before the German Federal Patent Court.


Concerns have been raised in particular by the Information and Telecommunications Industry and the Automotive Industry that for complex industrial products like smartphones or cars the economic consequences of an injunction against a patent infringer with the result of having to stop selling the complex product or to cease operation of a communication network are disproportionate to the interests of a patentee covering an invention which relates only to a small part of the whole product.

This problem may be exacerbated by the so-called “injunction gap” caused by the German bifurcated patent litigation system: Patent infringement lawsuits are handled by the specialized patent chambers of the Regional Courts (Landgerichte), i.e. in Duesseldorf, Mannheim or Munich, whereas patent validity complaints (nullity lawsuits) are decided by the Federal Patent Court in Munich. The patent infringement lawsuits (where different regional courts compete for lucrative “business”) take roughly 12 months for a first instance decision, which in the case of finding infringement is provisionally enforceable against a bond given as security by the patentee. In contrast, the first instance nullity lawsuit (which is typically started about 3-6 months after beginning of the infringement action) before the Federal Patent Court presently takes about 24 to 30 months. There is therefore the risk that a company has to stop selling its products in Germany based on a patent which later is found to be invalid.

Both the “automatic” right to injunctive relief of the patentee against the patent infringer and the “injunction gap” are perceived by some industries as inequitably favoring patentees over potential patent infringers. This has been a concern in particular towards patent licensing entities, which are not manufacturing or selling products and therefore are not themselves exposed to patent infringement lawsuits, allegedly allowing them to extract higher license fees than would otherwise be possible.

A particular aspect are standard-essential patents (SEPs), which have to be utilized to implement a particular standard as e.g. the 4G or 5G mobile communication standards. SEPs are an internationally highly debated matter involving antitrust issues and compulsory licenses according to § 24 PatG. The newly published draft legislation, however, does not deal with SEPs.

  1.  Accelerating the patent nullity lawsuits

§ 83 (1) PatG now includes a new statutory deadline for the defendant of a nullity lawsuit (the patentee) to provide within 2 months (extendable to 3 months with proper reasoning) a comprehensive defense against the nullity lawsuit. The Patent Court in turn is urged to provide within 6 months from notification of the nullity lawsuit a comprehensive provisional opinion on the validity of the patent, which is then directly forwarded to the district court handling the infringement action for consideration in its judgement.

In principle, this compressed (front-loaded) patent nullity procedure appears to be functional to serve its purpose to give the infringement court a proper basis for the assessment of patent validity before imposing a (provisionally enforceable) injunction against the patent infringer. The amendments, however, would require huge efforts and substantial organizational changes on the side of the Federal Patent Court. I expect that this issue will therefore cause considerable discussion. Furthermore, in order to preserve the balance between patentee and accused infringer, the latter should be likewise given a deadline of two months from notification of the patent infringement lawsuit to bring the nullity action if the patent invalidity defense is raised in the infringement lawsuit (which is almost always the case). Otherwise only the patentee would be under time pressure to prepare the whole patent validity defense within two months, whereas the accused infringer has no time constraints to prepare and bring the patent nullity complaint.

  1. The principle of proportionality for granting Injunctive relief against the patent infringer

So far, German courts broadly grant injunctive relief against patent infringers under § 139 PatG. The proposed draft legislation now introduces in § 139 in a new clause a balancing of the interests of the patentee with those of the accused infringer:

The claim [to injunction] is excluded to the extent that the enforcement of the right to injunctive relief is disproportionate when, due to special circumstances taking into account the interests of the patentee vis-à-vis the infringer and the principle of good faith, it constitutes a hardship not justified by the exclusive right.

According to the published reasoning for the draft legislation, however, the amendments are to be understood as a “clarification”, not as a substantial change of current practice (page 32 of the German text):

Against this background, it seems appropriate to expressly clarify with the proposed addition to § 139 (1) – in line with Article 3(2) of Directive 2004/48/EC – that the enforcement of a patent injunction may exceptionally be disproportionate in individual cases.

The explicit consideration of the principle of proportionality in § 139 PatG must not, however, lead to a devaluation of patent law. A continuing strong injunctive relief is indispensable for the enforcement of patents for German industry. The draft therefore provides that the restriction of the right to injunctive relief remains – as laid down in the case law of the FCJ – limited to exceptional cases.

This general principle of a clarification and not a restriction of the injunctive relief is reflected by the statement on page 51 of the reasoning that the burden of proof is on the patent infringer to show disproportionality of the injunctive relief and not on the patentee to give evidence that the injunction in proportionate.

According to the published reasoning (pages 51-53 of the German text), the main aspects to be considered when balancing the interests of patentee and patent infringer are:

(a) Interest of the patentee in an injunction

Here, a difference is made between operating companies and licensing entities, although framed in careful language:

If the patent infringer sets out special circumstances which may in individual cases give rise to unjustified hardship, it may exceptionally be relevant in the context of an overall assessment of all circumstances whether the patent proprietor himself manufactures or has manufactured corresponding products or partial components which are in direct competition with the infringing product, or whether the patent proprietor is primarily concerned with the monetization of his rights and not with the execution of inventions as an expression of the innovative function of the patent system. The latter is usually the case with pure patent exploiters. In these cases, the patent holder’s interest may be primarily directed towards concluding a license agreement and not towards securing his own development and production activities. Clearly excessive license claims, which are to be enforced against good faith with the injunction, can also count against granting an injunction in such cases. However, the mere fact that the patentee does not use the patent himself through his own or licensed production is in itself not sufficient for the granting of a conversion- or use-up period; such a situation is therefore not necessarily to be taken into account to the detriment of the patentee. That is, claims for injunctive relief can also be a necessary corrective to the patent law, for example, when individual inventors or universities use the patent system to protect their rights using third parties.

It appears that the identity of the patent proprietor as an operative company or licensing entity may lead to a postponement of injunctive relief and the grant of use-up terms, but does not restrict the right to permanent injunction against the patent infringer.

(b) Economic consequences of the injunction

In the case of severe economic consequences of an injunction against the patent infringer, the injunction may be postponed, as stated in the reasoning:

A restriction of the effect of the patent by granting a use-up period can be justified if the economic consequences of the immediate observance of the injunction in the individual case affects and disadvantages the infringer to a particularly high degree due to special circumstances beyond the impairments associated with his claim as intended.

The right to permanent injunction, however, is not affected.

(c) Complex products

If the value of the patent in completely out of proportion to the costs of interruption of production of the infringing product, injunctive relief may be disproportionate:

The consequences – such as the prolonged interruption of production – can in individual cases be so completely disproportionate to the value of the infringed patent that the interests of the patentee in the unconditional enforcement of his injunctive relief must exceptionally take second place.”

(d) Conduct of the parties

On the infringers side it can be taken into account if he has taken adequate measures to avoid a patent infringement by e.g. conducting a “freedom to operate” analysis or trying to obtain a license. On the patentee´s side, undue delay of the patent lawsuit despite knowledge of the infringement may be an argument against injunctive relief.

In any case, the right to damages for patent infringement is in no way affected be the proposed draft legislation. The possibility of compulsory licenses under § 24 PatG is likewise not affected by the draft legislation.

EPO Enlarged Board of Appeal to Decide on the patentability of computer simulations


The following questions are referred to the Enlarged Board of Appeal for decision:

  1. In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation’s implementation on a computer, if the computer-implemented simulation is claimed as such?
  2. If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?
  3. What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?

1. Introduction

The EPO case law on computer-implemented inventions has been quite stable for the last fifteen years. In particular, there has not been any decision of the Enlarged Board of Appeal (EBA) on this topic since G 3/08 of 12 May 2010.

Basically, a computer-implemented invention can be patented if it solves a technical problem by producing a technical effect. For the assessment of inventive step over the prior art only those features are taken into account, which contribute to the technical character of the invention.

There is, however, no general definition of what is “technical”.

The Technical Board of Appeal 3.5.07 (TBA) now has with decision of 22 February 2019 referred to the EBA the above three questions relating to the patentability of computer-implemented simulation methods. A decision by the EBA could have far-reaching consequences for applicants of computer-implemented inventions in Europe.

2. The invention

The invention disclosed in European patent application No. 03793825.5 and published as  WO 2004/023347 A2 relates to a computer-implemented method of modelling the pedestrian crowd movement in an environment such as a train station.

The modelling can be used to help design or modify the venue (e.g. train station) and for that purpose achieve a more accurate and realistic simulation of pedestrian crowds in real-world situations. The application is based on the insight that human interaction can be expressed and modelled in the same way as interactions of physical objects as e.g. electrons in a semiconductor device.

Claim 1 of the patent application according to the main request of the applicant reads as follows:

“A computer-implemented method of modelling pedestrian crowd movement in an environment, the method comprising:

simulating movement of a plurality of pedestrians through the environment, wherein simulating movement of each pedestrian comprises:

providing a provisional path (9) through a model of the environment from a current location (6) to an intended destination (7);

providing a profile for said pedestrian;

determining a preferred step (112′), to a preferred position (123′), towards said intended destination based upon said profile and said provisional path, wherein determining said preferred step comprises determining a dissatisfaction function expressing a cost of taking a step comprising a sum of an inconvenience function expressing a cost of deviating from a given direction and a frustration function expressing a cost of deviating from a given speed;

defining a neighbourhood (29) around said preferred position (123′);

identifying obstructions in said neighbourhood, said obstructions including other pedestrians (21) and fixed obstacles (25);

determining a personal space (24) around said pedestrian;

determining whether said preferred step (112′) is feasible by considering whether obstructions (21, 25) infringe said personal space over the course of the preferred step (112′).”

3. The Reasoning of the TBA

The TBA is of the view that the claimed invention lacks inventive step over a general purpose computer on the following grounds (section 11 of the decision):

“In the Board’s view, a technical effect requires, at a minimum, a direct link with physical reality, such as a change in or a measurement of a physical entity. Such a link is not present where, for example, the parabolic trajectory followed by a hypothetical object under the influence of gravity is calculated. Nor can the Board detect such a direct link in the process of calculating the trajectories of hypothetical pedestrians as they move through a modelled environment, which is what is claimed here. In fact, the environment being modelled may not exist and may never exist. And the simulation could be run to support purely theoretical scientific investigations, or it could be used to simulate the movement of pedestrians through the virtual world of a video game.”

In the proceedings before the TBA, the applicant has cited the earlier decision T 1227/05 relating to a computer-implemented method for the numerical simulation of an electronic circuit. T 1227/05 states: “An electronic circuit having input channels, noise input channels and output channels, the behavior of which is described by a system of differential equations is a sufficiently determined class of technical subjects, the simulation of which can be a functional technical feature.”

In other words, if the system or method to be simulated is sufficiently technical (expressed in engineering-heavy language ?), then the simulation method itself is also a technical method and for the assessment of inventive step has to be compared with prior art simulation methods, not with the functioning of a general purpose computer.

The TBA consequently held that if the board were “to follow decision T 1227/05, it would have to acknowledge that some or all of the steps of the simulation method of claim 1 contribute to a technical effect of the invention and could thus not be ignored when assessing inventive step” and that it “would hence be necessary to compare the invention with prior art other than a general-purpose computer.

The TBA, however, still found that it “would tend to consider the subject matter of claim 1 of the main request to lack inventive step over a general-purpose computer” since the claimed method would “assist the engineer only in the cognitive process of verifying the design of the circuit or environment, i.e. of studying the behavior of the virtual circuit or environment designed.” And, “the cognitive process of theoretically verifying its design appears to be fundamentally non- technical.

4. The referral questions

The TBA therefore referred the case to the EBA for reconciling its own view (citing a number of other earlier decisions as support) with the inconsistent view of T 1227/05. The questions are:

  1. In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation’s implementation on a computer, if the computer-implemented simulation is claimed as such?
  2. If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?
  3. What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?

In effect, the question to decide here is if the required technical effect of a simulation method can be provided not only in the way the simulation program is running on the computer – then the relevant prior art is a general purpose computer – or if this technical effect can be provided also by technical properties of the simulated system (here: the design of the train station; in T 1227/05: the electronic circuit). If the design of a train station with staircases, exits, shops etc. is regarded in the same way as a technical subject matter as the design of an electronic circuit (which in my personal view should not be in doubt), then questions 1 and 2 have to be answered in the affirmative.

The outcome of the referral has in my view implications far beyond simulation programs, for example also to inventions based on machine learning (ML). If you replace in the referral questions “simulation” by “machine learning process”, the same issues arise.

There can be no doubt: If the first two questions of the referral are not answered in the affirmative by the EBA, applicants of various types of computer-implemented inventions in Europe will be in trouble.


Twitter: @patentlyGerman

IP5 offices CS&E pilot project: 500 PCT applications over the next 2 years will receive within 9 months an International Search Report jointly prepared by the five largest IP offices (CN, US, EP, JP, KR)

The world´s five biggest IP offices (collectively named IP5) started on July 1, 2018 a Collaborative Search and Examination (CS&E) pilot project to allow applicants of PCT applications upon request to receive an early search report including a provisional written opinion on patentability drawn up jointly by examiners of the Chinese, US, Japanese, Korean and European patent offices. This allows applicants to get an early assessment of the chances of success of a patent application based on a broader perspective of different prior art databases, search strategies, languages, and examiner expertise.

The applicant-driven procedure (see official illustration) starts with a request filed by the applicant with the Receiving Office, which will be transmitted to the International Bureau (IB) and the competent International Searching Authority (ISA), which has to be one of the IP5 offices.

IP5 pilot

The competent ISA will then assesses whether the requirements (see below) are met and will notify the applicant and the IB whether or not it accepts the request for participation in the pilot. The competent ISA (now main ISA) then carries out a search, prepares a search report and a provisional opinion on patentability. These are made available to the “peer” examiners at the other four IP offices through a safe ePCT-based platform. The peer examiners will provide the main examiner with their contributions, taking into consideration the provisional international search report and written opinion of the main ISA. The final international search report and written opinion will be established by the main examiner after consideration of the contributions from the peer examiners, which is in turn submitted to the applicant or its representative, if possible, within the time limit under Rule 42.1 PCT, i.e. within nine months from the earliest priority date of the PCT application.

Each of the participating offices will admit about 100 PCT applications to the pilot throughout a two-year period starting on July 1, 2018 such that in total 500 PCT applications will be participating. A common set of quality and operational standards will be applied by all collaborating offices. The CS&E pilot project is scheduled to continue until June 1, 2021 and will then be jointly assessed by the participating offices.

During the pilot phase the cost of the jointly prepared search report and written opinion is that of a normal PCT chapter I search at the competent ISA. The applicant thus gets the additional search and examination results from the other four offices for free. If the CS&E will be implemented as a regular product, however, higher fees are to be expected.

The requirements for participating at the CS&E pilot project are the following:

  • The request for participation in the pilot must be submitted using the standard form and filed together with the international application at the Receiving Office or the IB.
  • Until languages other than English are accepted into the pilot, the participation form and the international application must be filed in English.
  • One applicant cannot file more than 10 requests for participation in the pilot at a same main ISA.

If the pilot turns out to be successful, the collaborative work of peer examiners of the IP5 offices could bring a huge benefit for patent applicants. It may also allow a glimpse at a future international patent system harvesting international cooperation and standardization to avoid duplicated work and bringing faster, more cost-effective procedures for the applicants. Earlier knowledge about the patentability of an application also brings benefits to the industry as a whole and contributes to make the patenting process itself more transparent and efficient.

twitter: @patentlyGerman


CRISPR EP patent update: 7 oppositions filed against Berkeley CRISPR EP patent

The patent dispute relating to the revolutionary CRISPR-Cas9 gene-editing technology between the Broad Institute (jointly operated by Harvard and MIT) on the one side and UC Berkeley on the other side is is heating up in Europe.

On January 17, the Broad Institue lost its first granted CRISPR EP patent in first instance opposition hearings. An appeal against this decision has immediately been filed on January 18 by the patent proprietor.

On the other hand, the University of Berkeley (together with the University of Vienna and Emmanuelle Charpentier) filed it´s first patent relating to CRISPR technology even before the Broad Institute already on March 15, 2013 claiming the earliest priority on May 25, 2012. The resullting patent EP 2 800 811 was granted with main patent claim 1 as follows:

1. A method of modifying a target DNA, the method comprising contacting the target DNA with a complex comprising:

(a) a Cas9 polypeptide and
(b) a single-molecule DNA-targeting RNA comprising:

(i) a DNA-targeting segment comprising a nucleotide sequence that is complementary to a sequence in the target DNA, and

(ii) a protein-binding segment that interacts with said Cas9 polypeptide, wherein
the protein-binding segment comprises two complementary stretches of nucleotides that
hybridize to form a double stranded RNA (dsRNA) duplex,

wherein said two complementary stretches of nucleotides are covalently linked
by intervening nucleotides,
wherein said contacting is in vitro or in a cell ex vivo; and
wherein said modifying is cleavage of the target DNA.

A restriction to either eukaryotic or procaryotic cells (which played a major role in the parallel US interference proceedings) seems not to be present. The contacting of the target DNA to be modyfied by the method according to the claim, however, has to take place in vitro or in a cell ex vivo. 

The mention of grant of the patent was published on May 10, 2017.

Within the 9-month opposition term ending February 10, 2018 seven parties have filed an oppositions, namely:

Opponent 1: DF-MP Dörries Franck-Molnia & Pohlman
Opponent 2: Onno Griebling
Opponent 3: TL Brand & Co. Ltd.
Opponent 4: HGF Limited
Opponent 5: Jones Day
Opponent 6: Allergan Pharmaceutical International Ltd.
Opponent 7: Elkington & Fife LLP.

Of these opponents only one, Allergan Pharmaceutical International Ltd., is clearly identifiable, the other six oppositions are filed by IP firms acting as so-called “strawmen” for opponents which do not want to be identified. This practice explicitly allowed by the EPO is common in the pharmaceutical industry in Europe.

All opposition grounds are raised, namely lack of novelty and lack of inventive step, lack of enabling disclosure of the patented technical teaching, and extension beyond the content of the original application (added matter). Despite the huge amount of documents filed, a first instance decision in these opposition proceedings can be expected in approximately 18 months.


Disclaimer: Neither I myself nor the patent firm Betten & Resch, of which I am a partner, are representing clients involved in any patent cases relating to CRISPR-cas9 technology.

Twitter: @patentlyGerman

Blockchain patent activity increases – but granted patents are still rare in this field

Since late 2015 a considerable media hype could be observed around cryptocurrencies and blockchain technology, or, more generalized, distributed ledger technology. Is this hype reflected by a corresponding rapidly rising number of patent applications ?

The following diagram shows the number of US-, EP- and PCT patent applications (source: Derwent Innovation patent database) since 2011 as well as granted US and EP patents containing the expressions “blockchain” or “bitcoin” or “distributed ledger” in the title, the abstract, or the claims. The x-axis represents the year of the first filing date (priority date) of a patent family; applications filed both e.g. in the US and in Europe are thus counted only once.

Blockchain patents Feb 2018

The diagram shows a siginificant increase of the patent activity from 20 patent applications in 2013 to 324 patent applications in 2016, but not a hype. One must keep in mind, however, that patent applications are in general published only 18 months after the earliest filing date. The development in the last 18 months is thus not visible in this diagram. Moreover, many blockchain projects are open source and do not seek patent protection.

The number of patent grants (which are publidhed without delay) shows only very modest numbers. In 2017, 21 US patents and 1 EP patent relating to blockchain technology have been granted.

The top 10 patent applicants (assignees) are shown in the following diagram:


Blockchain patent applicants Feb 2018

US applicants dominate, lead by Mastercard with 44 applications, bearing in mind that Chinese national applications are not included. The most important applicants from Europe are Nchain, the vehicle of “would-be Satoshi Nakamoto” Craig Wright and British Telecom, owning the single granted European patent relating to blockchain technology.


CRISPR EP Update: Broad Institute loses fundamental patent EP 2 771 468 at opposition hearing on 17 January 2018

The patent dispute relating to the revolutionary CRISPR-Cas9 gene-editing technology between the Broad Institute (jointly operated by Harvard and MIT) on the one side and UC Berkeley on the other side is followed by the biotech community with great interest .

Broad Institute has been the first one to get a patent issued on CRISPR-Cas9 technology in Europe, namely EP 2 771 468. Against this patent, 9 oppositions have been filed, most of which so-called strawman oppositions. The oral hearing finalizing the first instance of the opposition proceedings has been scheduled to take place on 16-19 January at the EPO in Munich. In the preliminary opinion issued together with the summons to the oral hearing, the oppisition division took a non-binding provisional view that the four priorities P1, P2, P5, and P11 cannot be validly claimed by the patentee, because the priority right had not been validly transferred to the applicants of PCT application forming the basis of the granted EP patent.

The decision was issued already in the early afternoon of the second day of the hearing: The opposition division maintained its position laid out in the provisional opinion and decided that the patent proprietor cannot validly claim priorities P1, P2, P5, and P11. As a consequence the claims as granted (main request) were revoked on the ground of lack of novelty. The 64 auxiliary requests filed by the patent proprietor were not admitted to the proceedings. The patent was thus revoked in full. The course of the oral proceedings can be seen in this twitter thread.

In short, the grounds for losing the essential priority rights are as follows: In order to validly claim priority right of a European patent application either directly filed or as a national phase of a PCT application (as in the present case), either (i) the applicant of the priority application and of the later application are identical or (ii) the applicant of the priority application assigns the application to the applicant of the later application, or (iii) the applicant of the priority application assigns the priority right to the applicant of the later application.

The assignments of the application or the priority right must have occurred before the filing of the later application (here: the PCT application), since, for reasons of legal certainty, a retroactive effect is excluded. However proof of such transfer may be provided later.

Furthermore, in case of more than one joint applicants of the priority application, each applicant of the priority application must either be also applicant of the later application or have assigned the application or the priority right to one of the applicants of the later application before the later application date. This was not the case for the priority applications P1, P2, P5, and P11. One of the applicants (and inventors) of these US provisional priority applications was no longer applicant of the PCT application and did not assign the right to the application or the priority right to one of the applicants of the PCT application. As a harsh consequence, the applicants of the PCT application and proprietors of the European Patent lost priorities P1, P2, P5, and P11. Without entitle-ment to these priorities, the subject-matter of the granted claims lacked novelty over the prior art on record.

The written decision of the opposition division can be expected in approximately two to three months. In a press release issued shortly after the decision on priority and before announcement of the full decision, the Broad Institute already announced to lodge an appeal against the finding of the opposition division.

Disclaimer: Neither I myself nor the patent firm Betten & Resch, of which I am a partner, are involved in any patent cases relating to CRISPR-cas9 technology.

(picture by sporst)   Twitter: @patentlyGerman