Multiple patent portfolio management for global location technology player

Summary

Employing some 9000 people, with some 200 offices in 56 countries, HERE Technologies is an international player in automotive navigation services, with clients including Amazon, Audi, BMW Group, Alpine, Garmin and Oracle amongst others. HERE provides a location data and technology platform providing a development environment (HERE Workspace), a data exchange (HERE Marketplace), map creation and visualisation capabilities (HERE Studio) and a set of location services (HERE Location Services). These capabilities leverage the Reality Index, a rich source of location contextual data that captures the relationship between places and things. Potter Clarkson is proud to be entrusted to handle their highly valuable patent applications in Europe, with hundreds of active client cases on our records.

EP0 case 3255659.9 is an example of the quality service we deliver for the company. It relates to a method of representing a road network in a geographic database that facilitates determining routes between locations along the road network. We took over representation of this application from another firm of patent attorneys following two rounds of prior examination and then received a summons to attend oral proceedings as the first action on this case.

We filed focused and directed written submissions comprising a main request, first auxiliary request and second auxiliary request to address the inventive step objection, and then called the First Examiner to discuss the submissions before the oral proceedings. Nevertheless, the inventive step objection, and thus the oral proceedings, were maintained.

Potter Clarkson then attended the hearing by video conference in 2014. During the hearing, we filed third, fourth and fifth auxiliary requests to supplement the requests on file, but the application was ultimately refused for a lack of inventive step.

Value delivered

In this stand-out case, we subsequently filed an appeal from the Decision of Refusal maintaining each of the requests currently on file, securing a preliminary, all-important opinion from the Board of Appeal in our favour. In particular, the main request was deemed allowable, subject to addressing some minor formalities. A favourable decision was then issued by the Board of Appeal, and a decision to grant a patent was issued on 11 April 2019, representing a significant victory for this important client.