Industry news and case law
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CJEU gets Bullish: filling of packaging does not amount to trade mark infringement | 30th January, 2012
In the recent decision of Frisdranken Industrie Winters BV v Red Bull GmbH, the Court of Justice of the European Union (“CJEU”) confirmed that the act of filling packaging which bears a potentially infringing trade mark does not constitute &ld...more...
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Fast-Track your US Patent Applications | 20th January, 2012
In late 2010 in Munich I bumped into Bob Stoll, then Commissioner for Patents at the United States Patent and Trademark Office (USPTO). He told me that he was in the process of creating a three-track patent examination process at the USPTO to ...more...
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Supplementary Protection Certificates: Court of Justice provides answers ... but more questions too! | 7th December, 2011
We have reported previously on the progress of two cases (“Medeva” and “Georgetown”) concerning the requirements for an SPC (supplementary protection certificate) to protect a combination medicinal product (see here). These c...more...
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A stirring across the pond - Changes to US patent law | 5th December, 2011
The US Congress recently passed the Leahy-Smith America Invents Act, thereby introducing the most significant change to the US patent system since 1952. The America Invents Act intends to harmonise the US patent system with the patent systems employ...more...
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Unitary EU patents to be available from 2014 - but will the new Court be ready in time? | 5th December, 2011
The European Parliament has issued a press release stating that agreement has been reached on plans to introduce a unitary EU patent. The original proposal was reported by Withers & Rogers earlier in 2011 and, in substance, has survived the political ...more...
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New website launches listing citations on pending European, Japanese and US patent applications | 18th November, 2011
As part of the trilateral cooperation programme between the EPO, JPO and USPTO, a new website has been launched. Called the Common Citation Document, the website compiles citations on pending European, Japanese and US patent applications. This docum...more...
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Industrial applicability of inventions - Hurdle laid low by the Supreme Court | 14th November, 2011
The case of Human Genome Sciences (HGS) v Eli Lilly is more likely to be remembered not for its content, but for being the first patent case to reach the Supreme Court since its creation. However, as the first case in which the UK courts have really...more...
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End of the road for stem cell patents in Europe? | 20th October, 2011
The Court of Justice of the European Union indicated this week that any invention which necessitates, or has required, the destruction of a human embryo is not patentable in Europe. The Court’s decision on the patentability of inventions involving o...more...
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Halliburton wins appeal on software patentability issue | 11th October, 2011
One of the world’s largest providers of products and services to the global oil and gas industry, Halliburton, has won an important appeal hearing in the UK on the issue of software patentability. more...
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A blooming result for brand owners, but beware of thorns | 25th September, 2011
The recent decision (22nd September) from the Court of Justice of the European Union (CJEU) in the case of Interflora vs Marks & Spencer (M&S) is a welcome boost for brand owners seeking to protect their brand online, but a loophol...more...
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G 2/10 - The Enlarged Board on disclaimers (again) | 19th September, 2011
The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) has recently issued its decision on the allowability of disclaimers relating to subject matter which is positively disclosed in a European patent application. This decision (G 02...more...
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.xxx Blocking Strategies May Not Be Cost-effective | 18th September, 2011
Using blocking strategies to prevent the misuse of brand names in association with the new .xxx domain names may not be cost-effective, says Withers & Rogers. more...
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Patent Infringement - Repair or Renew Revisited | 21st August, 2011
The Court of Appeal has handed down judgment in the case of Schütz (UK) Ltd v Werit UK Ltd. This is an appeal from a case heard in the Patents Court and reported on our web site. more...
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When is a Product "Protected" by a Patent for the Purposes of an SPC? | 11th August, 2011
During the past year or so, questions concerning how the requirements for obtaining supplementary protection certificates (SPCs) should be applied to combination products were referred to the Court of Justice of the European Union (CJEU) by the UK Court o...more...
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Surgical Methods Given the EPO Treatment | 10th August, 2011
A Technical Board of Appeal (TBA) of the European Patent Office (EPO) has recently issued a decision which appears to be in favour of the patentability of certain methods comprising surgical procedural steps. The decision, T663/02, accepted that commonp...more...
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Novel Approach To Inventive Step | 17th July, 2011
A recent decision of the UK Court of Appeal - Merck, Sharpe & Dohme Corporation v. Teva UK Ltd - is of interest because of the radical arguments used to defend the patent against accusations of lack of inventive step. more...
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EPO Oppositions - The importance of filing amendments early | 28th June, 2011
Owners of European patents who choose to withhold claim amendments during European Patent Office (EPO) opposition proceedings are precluded from making those amendments during subsequent opposition appeal proceedings, according to a recent Technical Boa...more...
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Play-Doh or Play Don't? | 14th June, 2011
Hasbro Inc (“Hasbro”) produces the well-known children’s modelling product “PLAY-DOH” and is the owner of several registered trade marks for the product. The defendant, 123 Nahrmittel (“Nahrmittel”) began pr...more...
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The Importance of the 'Designated Product' in Obtaining Supplementary Protection Certificates | 5th April, 2011
A recent decision of the UK Intellectual Property Office (UK IPO) highlights, once again, the care applicants must take when applying for marketing authorisation and a subsequent Supplementary Protection Certificate (SPC) for a medicinal product.&...more...
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Opinion in war of roses case is a boost for brand owners | 25th March, 2011
Yesterday’s Advocate General Opinion (AGO) in the case of Interflora vs Marks & Spencer (M&S) will be a welcome boost for brand owners seeking to protect their brand online, according to Fiona McBride, Partner and Head of the Trade Mark Gr...more...
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Contributory Infringement Revisited | 15th February, 2011
In Grimme v Scott, the Court of Appeal assessed the provision in the UK Patents Act relating to contributory infringement. It was decided that the finding of contributory infringement depended not on the intention of the party being supplied with the re...more...
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The UK inventive step test - Have you picked the right team? | 5th November, 2010
A recent decision of the UK Court of Appeal (Schlumberger Holdings Ltd v Electromagnetic Geoservices AS (“EG”)) provides useful guidance on the make-up of the notional “team skilled in the art”. Importantly, the composition o...more...
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Divisional applications - A rare moment of leniency from the EPO | 5th November, 2010
The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) has confirmed that an application which has been refused by an Examining Division is still ‘pending’ until the expiry of the time limit for filing an appeal. This decision ...more...
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No 'Reformatio in Peius': will the EPO abide by this principle whatever the cost? | 27th September, 2010
When considering an appeal from a decision of an Opposition Division to maintain a European patent in amended form, the Technical Board of Appeal (TBA) adheres strictly to the principle of no reformatio in peius. more...
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Best Buy Case Provides Warning on Trade Mark Threats | 27th September, 2010
Under UK law, recipients of correspondence threatening trade mark infringement proceedings (or which could be construed as such) can bring proceedings for a declaration from the trade mark owner that the threats lack justification. more...
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The Patents County Court: A Coming of Age? | 7th September, 2010
At present, claimants in intellectual property disputes often have a choice between the Patents County Court and the High Court. Although the Patents County Court is considered to be marginally cheaper and quicker for certain cases, there have been insu...more...
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Rolls-Royce presses ahead with US patent infringement claim | 26th August, 2010
Rolls-Royce’s decision to file a complaint alleging infringement of its swept fan blade patent by United Technologies Corporation (UTC) - owner of jet engine giant, Pratt & Whitney – highlights the importance of being prepared to police inventions a...more...
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ECJ ruling in 'smell alike' case is victory for brand owners - Court of Appeal reluctantly follows ECJ guidance | 24th August, 2010
The UK Court of Appeal has reluctantly confirmed the decision of the Court of Justice of the European Union (formerly the ECJ) in the case of L’Oreal and Bellure. The ECJ’s decision was issued in 2009 and answered questions originally referred to ...more...
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Can a Priority Document "Kill" its Children? | 26th July, 2010
In a recent decision of a Technical Board of Appeal (TBA), T680/08, the European Patent Office emphasised the strict approach that they take to entitlement to priority. more...
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EPO Enlarged Board to Consider Disclaimers Again | 22nd July, 2010
A Technical Board of Appeal (TBA) of the European Patent Office (EPO) has recently referred a question to the Enlarged Board of Appeal (EBA) concerning disclaimers in patent claims. In particular, the EBA has been asked to consider whether it is pos...more...
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ECJ decision limits the scope of protection for DNA patents, says Withers & Rogers | 13th July, 2010
A decision by the Court of Justice of the European Union has significantly limited the scope of patent protection for DNA and other genetic material and is cause for concern for UK biotechnology companies, according to Withers & Rogers LLP – a leading...more...
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SPCs for Multi-ingredient Medicines to be considered by European Court | 6th July, 2010
Medeva B.V. has been seeking to extend the patent protection available for its Pertussis family of vaccines using the Supplementary Protection Certificate (SPC) system. more...
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Medical uses in the EPO: The importance of a new effect | 28th June, 2010
It can often be instructive to compare apparently conflicting European Patent Office (EPO) decisions in an attempt to understand certain subtleties of how patentability requirements are assessed. This brief article compares two recent decisions, each re...more...
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Bilski ruling in US Supreme Court provides possibilities to patent business methods | 28th June, 2010
The recent US Supreme Court decision on the case of Bilski allows the patenting of some business methods and could provide opportunities for software and financial companies with business in the US. The decision can be read here ht...more...
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Double patenting becoming clearer in the EPO? | 16th June, 2010
In 2009, a Technical Board of Appeal (TBA) of the European Patent Office (EPO) issued a decision (T 307/03) indicating that a European patent application could be refused on the ground of double patenting; that is, two European patents cannot be granted t...more...
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ECJ ruling in Google v Louis Vuitton is a blow for brand owners | 26th May, 2010
Google operates the “AdWords” paid referencing programme which allows advertisers to bid on registered trade marks of third parties. This has the effect that if an internet user enters these keywords into the Google search engine, the ad...more...
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Enlarged Board decision on software patent means no change at the EPO but what about the UK? | 13th May, 2010
As reported previously (http://www.withersrogers.com/news/113/113) the President of the European Patent Office (EPO) referred four questions to the Enlarged Board of Appeal (EBA) that were intended to define “the limits of patentability in the field o...more...
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When does repair to an article constitute patent infringement? | 15th April, 2010
George Washington had an axe; John Locke had some socks; and Theseus had a ship - all of which needed mending. When does an article undergoing repair become a new article? more...
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ECJ ruling in Google v Louis Vuitton is a blow for brand owners | 23rd March, 2010
Google operates the “AdWords” paid referencing programme which allows advertisers to bid on registered trade marks of third parties. This has the effect that if an internet user enters these keywords into the Google search engine, the ...more...
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Opinion on DNA patents is cause for concern | 23rd March, 2010
Who would have thought that a relatively straightforward dispute between a global agrochemical company and a group of Dutch importers of Argentine soy meal could escalate to the European Court of Justice and potentially limit the rights of biotech inven...more...
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Google phone's trade mark rejection is unlikely to block launch | 16th March, 2010
Google is expected to object to the decision by US trade mark officials, seeking to prevent it from using the Nexus One as the brand name for its new mobile phone, according to Withers & Rogers LLP. more...
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Out with the old, in with the new | 10th March, 2010
Despite being around for more than 30 years, GPS is only now finding favour as the technology of choice for use in an ever-widening range of mobile electronic devices – everything from giraffe’s collars and ski goggles to cameras and mobile ph...more...
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Humble pudding at the heart of naming controversy | 8th March, 2010
The majority of food outlets and restaurants in the UK could be forced to remove home-made ‘yorkshire puddings’ from their menus if a campaign to seek special EU protection for the food product is successful. more...
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EPO's medicine has a bitter aftertaste | 23rd February, 2010
The recent decision, G2/08, of the EPO's Enlarged Board of Appeal EBA, hopefully brings to an end the confusion surrounding the patentability of dosage regimens in Europe. The EBA has clarified that dosage regimens are patentable, bringing the EPO b...more...
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EPO Enlarged Board decides which surgical methods should be cut out | 19th February, 2010
The recent decision from the EPO Enlarged Board of Appeal (EBA), G1/07, sheds new light on the patentability of surgical methods, particularly those forming part of diagnostic methods, in Europe. The exclusion of surgical methods from patentability has ...more...
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Selection Inventions - has the bar been raised or lowered? | 18th February, 2010
In UK patent law, it has for many decades been the case that "selection" inventions are capable of patent protection. The principles were first judicially established in the case of I.G. Farbenindustrie's Patents in 1930 and have become known as t...more...
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A brick is a brick, not a trade mark. | 10th February, 2010
The Advocate-General has recommended to the European Court of Justice (ECJ) that they refuse Lego’s appeal to maintain their brick registration as a Community Trade Mark. more...
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The problem of multi-ingredient medicines | 26th January, 2010
In a recent decision of the UK Intellectual Property Office, five applications for supplementary protection certificates (SPC’s) were rejected as being for products which were either not protected by a basic patent, or not covered by a valid marketing...more...
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The importance of assigning priority rights | 31st December, 2009
A recent decision of the UK High Court (Edwards Lifesciences AG v. Cook Biotech Inc, PC) reinforces the accepted principle of the law of priority that the right to claim priority must be properly assigned before any priority claiming application is file...more...
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Inventor compensation issue takes a fresh twist | 15th December, 2009
The issue of employee inventor compensation has once more hit the headlines, following the recent judgement in Shanks v Unilever plc and others. This decision could leave employers in a worse position if they assign or license a patent...more...
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Daimler AG v Sany Group Co Limited | 30th November, 2009
In a case brought before the UK High Court in July 2009, Daimler AG alleged that Sany's use of a 3 pointed device (depicted below) in respect of construction machinery gave rise to a likelihood of confusion with its famous Mercedes logo. It was al...more...
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Bilski v Kappos (US Supreme Court) - Oral Arguments | 26th November, 2009
The US Supreme Court is currently deciding whether to change the test for deciding which software and business method applications are eligible for patents. Given the commercial significance of the US market, the outcome is likely to be of great importa...more...
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Director liability and patent infringement | 19th November, 2009
Directors of companies, particularly of small companies where the directors are involved in the day-to-day running of the company, should pay careful attention to situations where there is a likelihood that activities of the company could be found to co...more...
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Copyright dispute could scupper Skype sale. | 18th September, 2009
A copyright dispute which came to light earlier this week, brought by a company called Joltid, which is part-owned by Skype founders, Janus Friis and Niklas Zennstrom, could scupper Ebay's plans to sell a majority stake in Skype, announced earlier t...more...
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Sugar patent withdrawn | 11th August, 2009
Controversy over patentability of second non-medical uses of substances is set to continue, says Withers & Rogers LLP. more...
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Bi-Monthly digest of stem cell patent publications introduced | 29th July, 2009
The United Kingdom National Stem Cell Network, which is an independent body for the promotion of research across stem cell science, is now generating, in co-operation with the UK Intellectual Property Office, a bi-monthly digest of patent publication...more...
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Software Patents in Europe - Will the EPO grasp the nettle? | 1st July, 2009
In October 2008, the President of the European Patent Office (EPO) referred a set of four questions to the Enlarged Board of Appeal (EBA) that were intended to define "the limits of patentability in the field of computing." The debate regardin...more...
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Court of Appeal Decision emphasises the importance and protectability of enantiomers | 30th June, 2009
In a recent case the Court of Appeal was asked to decide whether the Marketing Authorisation (MA) for a racemate constituted the first MA for a pure enantiomer of the same compound. The decision of the Court affected the validity of the Supplement...more...
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ECJ Ruling makes it more difficult for famous brands to claim dilution | 23rd June, 2009
A ruling by the European Court of Justice (ECJ) will make it more difficult for owners of famous and well known trade marks to claim dilution, according to Withers & Rogers LLP trade mark attorneys. more...
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Green channel for fast-tracking environmentally-friendly patent applications proves its worth | 17th June, 2009
A new ‘green channel’ for fast-tracking patent applications for environmentally-friendly inventions is already winning the support of British inventors. But while the benefits of faster processing are considerable, in some instances they may...more...
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Google Adword trade mark case is in the balance | 27th May, 2009
A decision on whether use of third party registered trade marks as sponsored Google Adword search terms constitutes trade mark infringement is in the balance, awaiting guidance from the European Court of Justice (ECJ). more...
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Corevalve v Edwards Lifesciences: The Experimental Use Defence and Insufficiency in the field of | 31st March, 2009
Edwards Lifesciences AG and Edwards Lifesciences PVT, Inc. (“Edwards”) own EP (UK) 0592410 (“the patent”) The patent concerns artificial valves for implantation in the human body. These valves may be used to replace a...more...
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Actavis v Novartis: Developing the concept of Secondary Common General Knowledge | 1st March, 2009
A decision in the case of Actavis UK Ltd. v Novartis AG has recently been issued by the Patents Court, revoking EP (UK) patent 0948320 for lack of inventive step. The decision included some interesting discussion of common general knowledge....more...
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Generics v Lundbeck: The Law on Insufficiency Clarified | 1st February, 2009
The decision of the House of Lords in the case of Generics (UK) Ltd v H. Lundbeck A/S was issued this week, dismissing the appeal by Generics. more...
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High Court awards compensation to employee inventors (Kelly & Another v GE Healthcare) | 1st February, 2009
Duncan Kelly and Kwok Wai ("Ray") Chiu were involved in the first synthesis of a compound called P53 while they were research scientists at Amersham International. P53 became a key component of a patented radioactive imaging agent ("...more...
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Controversial opinion could give green light to smell-a-likes | 1st February, 2009
A controversial opinion, announced yesterday by the Advocate General, could give the green light to ‘smell-a-like’ perfumes and significantly limit the rights of trade mark owners to protect their branded products, according to us at Wi...more...
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No room for Bratz in doll's house | 4th December, 2008
Sales of children’s favourite Bratz dolls will cease after Christmas following a successful four-year legal dispute led by toy giant and makers of Barbie dolls, Mattel, against rival doll producer, MGA Entertainment. However, Mattel might...more...
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Software and business patents in the UK, USA and Europe | 1st December, 2008
The end of 2008 saw major decisions in the UK and the USA concerning the allowability of software and business method patents. Also, the European Patent Office’s (EPO’s) highest authority has been asked to clarify the extent to which s...more...
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Appeal panel ruling will not mean the end of stem cell research. | 27th November, 2008
A ruling by the European Patent Office’s (EPO) appeal panel, published in a statement yesterday, will not mean the end of stem cell research, according to Withers & Rogers LLP – a leading firm of UK patent and trademark attorneys. more...
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Pandora's box open on patentability of software inventions following EPO President decision to refer | 27th October, 2008
The issue as to whether a software invention can or can’t be patented has been thrown open by the European Patent Office (EPO)’s move to refer the matter to an Enlarged Board of Appeal. In the short term, this move will bring more uncertaint...more...
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Expiring GSM patents will spark a fresh wave of innovation in the global mobile phone industry | 19th October, 2008
Expiring GSM patents will spark a fresh wave of innovation in the global mobile phone industry, more...
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Patent strategies bring rewards | 11th September, 2008
In the fast-moving area of biopharma research and development, efficient intellectual property strategies are becoming even more important as companies seek to protect their innovations at every stage of development. But what is best practice and wha...more...
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Inventive Step - House of Lords Delivers Patent-Friendly Decision | 30th June, 2008
In Conor Medsystems Inc v Angiotech Pharmaceuticals Inc, the House of Lords has delivered a key decision clarifying the law in relation to whether a patented invention is “obvious”. In coming to this decision the House of Lords overturned...more...
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Spy-threat will continue if Formula 1 teams fail to seek patent protection | 7th March, 2008
The spy-threat will continue if Formula 1 teams fail to seek patent protection for innovative automotive technologies, according to Withers & Rogers LLP, one of the UK’s leading patent and trade mark attorney firms. more...
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Trade Mark Fast Track | 1st March, 2008
From 7 April 2008 it will be possible for the first time to file "fast track" trade mark applications in the UK. This development is as a result of the Trade Marks and Trade Marks (Fees) (Amendment) Rules 2008 which come into force in April. ...more...
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Not more fashion rip-offs? | 5th February, 2008
Ahead of London Fashion Week (10 – 16 February 2008), the world’s leading fashion houses should be doing more to protect their new collections, according to Withers & Rogers, a top ten UK firm of patent and trademark attorneys. more...
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UK retailers are unable to protect e-commerce | 18th January, 2008
Amid reports of record online sales in December, UK retailers are increasingly concerned that they are unable to protect vital online trading systems adequately, according to a leading firm of patent and trademark attorneys, Withers & Rogers LLP. ...more...
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UK Allows Computer Program Claims | 1st January, 2008
In the High Court, Mr Justice Kitchin has made an important ruling concerning Computer Implemented Inventions. This result is sure to be welcome news for software developers wishing to file at UKIPO, who should find it easier to take action against infr...more...
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New UK Practice for Business Methods & Software | 1st December, 2007
The UK Patent Office has issued a new practice note following the recent decision by the Court of Appeal in Macrossan and Aerotel. In that case, the Court of Appeal established a new four step test for examining inventions which relate to “exclude...more...
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EPO may Exclude Essentially Biological Processes for Plant Production | 31st August, 2007
A recent interlocutory Decision of a Technical Board of Appeal (T 83/05) of the European Patent Office has been referred to the Enlarged Board of Appeal in order to define the boundaries for the exclusion from patentability established in Article 53(b) ...more...
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Drug Dosage Claims Rejected Again in UK | 31st May, 2007
The UK Courts have again invalidated a patent which was granted on the basis of a new dosage regimen for a known drug. more...
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Microsoft Free to Export Software from the US | 31st May, 2007
The US Supreme Court has decided that the export of Microsoft’s Windows software from the US does not infringe AT&T’s patent rights. more...
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Paediatric Medicines Regulation Enters into Force | 22nd January, 2007
On 12 December 2006, the European Parliament and the Council adopted Regulation (EC) No. 1901/2006 on medicinal products for paediatric use (see our previous News article, ‘Patent Term Incentives to Improve Paediatric Medicines’). The regula...more...
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AstraZeneca share price fall highlights value of patents | 20th December, 2006
A share price fall of 4% on 19 December 2006, following an announcement of an adverse decision at the European Patent Office (EPO) against the substance patent for Nexium®, represents a value of about £1.5 Billion for a single patent. more...
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Steady as she goes for Gowers | 8th December, 2006
In the Chancellor of the Exchequer’s Pre-Budget Report in 2005, Gordon Brown commissioned a comprehensive review of the UK intellectual property system. Andrew Gowers, former editor of the Financial Times was tasked to carry out the review. His revi...more...
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Colour Makes a Comeback: The Curious Case of Ms Block | 1st October, 2006
A recent case brought by Withers & Rogers LLP’s client Louise Block has identified circumstances in which the colours of an article may contribute to it being protected under the UK's unregistered design right law, clarifying the apparentl...more...
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