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  • Battery secrets – Celgard v Senior injunction

    11 August 2020

    The UK High Court has recently granted an interim injunction in a battle between two battery separator manufacturers, Celgard and Shenzhen Senior Technology Material Company (“Senior”), over accusations of the unlawful acquisition of trade secrets. The judgement can be found here. Celgard (a US manufacturer of battery separators) brought proceedings against Senior (a Chinese manufacturer […]

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  • Is it now harder to obtain an interim injunction in the UK?

    21 July 2020

    The UK Court of Appeal has recently upheld a judgement of the UK High Court (see here), refusing an application for a preliminary injunction (see here). The case concerns two anti-insomnia drugs, Circadin and Slenyto, marketed by the claimants Neurim Pharmaceuticals and their licensee Flynn Pharma, respectively. The claimants sought interim injunctive relief to restrain […]

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  • Neurim No More

    13 July 2020

    CJEU reverses Neurim and rejects possibility of SPCs for new therapeutic applications of previously authorised products On 9 July 2020, the Court of Justice of the European Union (CJEU) handed down its decision in Santen SAS v Directeur général de l’Institut national de la propriété industrielle (C-673/18), concluding that it is not possible to obtain […]

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  • Regeneron Pharmaceuticals Inc v Kymab Ltd Supreme Court ruling

    26 June 2020

    The UK Supreme Court has overturned a decision from the Court of Appeal to find two of Regeneron’s transgenic mouse patents invalid for sufficiency. The effect of this judgement is that the bar on sufficiency has been returned to requiring that the disclosure of a patent supports substantially every embodiment of the claims. For the […]

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  • Major European IP offices and COVID-19 Reaction

    23 June 2020

    The major IP offices that we deal with have reacted to the COVID-19 outbreak in various ways as follows: European Patent Office: The EPO has published a dedicated webpage tracking their response to COVID-19 disruption. Their earlier blanket extension provision has been lifted, and from 2 June 2020, extensions to deadlines, and forgiveness for missed […]

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  • Plants and animals produced by essentially biological processes are now NOT patentable

    20 May 2020

    This Enlarged Board is for turning – Plants and animals produced by essentially biological processes are now NOT patentable The Enlarged Board of Appeal of the European Patent Office has issued its decision in G3/19 (Pepper), concluding that plants and animals exclusively obtained by essentially biological processes are not patentable (see the opinion here). G3/19 […]

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  • How to spring-clean your IP portfolio during lockdown

    15 May 2020

    It could be a good time to spring-clean your IP portfolio – how to go about it In these unusual times of lockdown, many people have turned to tidying up their gardens and spring cleaning their houses.  Let’s face it, we’re all spending a lot more time at home and many people have a bit […]

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  • Sky is in fact the limit – High Court confirms SkyKick infringes Sky

    5 May 2020

    In the latest development in the SkyKick saga, the UK High Court has handed down its judgment, finding SkyKick liable for infringement of Sky’s trade marks. Those following the case will be aware that the CJEU handed down its judgment earlier this year following a referral from the High Court on questions of the validity […]

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  • Partial Red Light For UPC from German Court

    20 March 2020

    The German Constitutional Court today partially upheld the complaint by Ingve Stjerna that the UPC (Unified Patent Court) is unconstitutional in Germany. The Court ruled that the failure of the Bundestag to secure a two-thirds majority of all Members for the UPC legislation, a matter concerning constitutional change, was unlawful. This will undoubtedly further delay […]

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  • EUIPO to extend deadlines in response to COVID-19 pandemic

    17 March 2020

    “The EUIPO has issued a Decision stating that all EUIPO deadlines falling due from 9 March 2020 to 30 April 2020 inclusive are extended until 1 May 2020 (because of the COVID-19 pandemic). We understand that this will not apply to Paris Convention cases filed with the EUIPO. We intend to send you individual emails on […]

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  • Response to likely EPO extended deadlines (COVID-19 pandemic)

    16 March 2020

    The EPO has issued a courtesy advance notice stating that it expects to extend EPO deadlines falling due from 15 March to 16 April 2020 inclusive until 17 April 2020 (because of the COVID-19 pandemic). We understand that this will not apply to Paris Convention cases filed with the EPO, or possibly divisional deadlines, but will […]

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  • IP Rights Post-Brexit: Publication of draft agreement on the withdrawal of the UK from the EU

    31 January 2020

    Published on 19 March 2018, the legal text of the draft Withdrawal Agreement sets out the terms upon which UK and EU negotiators have reached a settlement, subject to minor technical legal revisions. In particular, the text provides some clarity on the extended protection of European Union trade mark registrations (EUTMs) (including International Registrations designating […]

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  • Simplistic branding: Avoiding the pitfalls

    3 December 2019

    Cosmetics and personal care brands are increasingly selecting short, snappy and simplistic trade marks to capture consumers’ attention in a saturated market. The digital age continually presents new challenges, prompting brands to shift their focus from traditional over-the-shelf transactions to the multi-dimensional online realm in which endorsements by social media influencers and hashtag led marketing […]

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  • Design Sector Focus – Taking care of your Intellectual Property (IP) Rights

    28 November 2019

    What are the benefits? When I talk to product or brand designers who haven’t concerned themselves much with Intellectual Property (IP) rights, be it manufacturers of consumer products, or designers themselves, they quite rightly want to know why it’s worth spending the money to get rights registered. Some designers consider IP purely a client problem, […]

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  • Building a strong cosmetics brand in a dupe culture

    25 November 2019

    According to market research, the global cosmetics industry is forecast to be worth $675 billion by 2020. However, the trend for bloggers and social media influencers to actively encourage consumers to buy cheap copies of higher-end products known as “dupes” has made creating and maintaining a strong, cosmetics brand particularly challenging.  Dupes tend to have […]

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  • Large companies not “too big to pay” inventor compensation

    5 November 2019

    The UK Supreme Court has handed down their judgement in Shanks v Unilever [2019] UKSC 45 (found here)  in which they considered the issue of employee compensation, and under what circumstances would an employee be entitled to further compensation for an invention they had invented as part of their normal duties. The decision of the […]

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  • Text intended for grant, or “unintended” for grant as the case may be

    4 November 2019

    A recent case (T1003/19) has highlighted what can go wrong at the grant stage of a European patent, but gives hope for applicants that have not checked the text intended for grant as closely as they might have done. The decision by the Board of Appeal essentially found that if there is enough evidence that […]

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  • Home or Away – All Due Care still required for the EPO

    1 August 2019

    Anyone involved with patent prosecution will know that deadlines are an everyday fact of life.  Missing a time limit set by the European Patent Office (EPO) can result in a loss of rights, which can be irreversible. This article discusses a decision by the EPO Board of Appeal on a case where a deadline was […]

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  • Innovation by Artificial Intelligence and the role of AI in pharmaceutical discovery

    31 May 2019

    Through the ability of Artificial Intelligence, the health care sector can find solutions to effective treatment to cure diseases.   Partner, Adrian Tombling explores why AI is huge for drug research and what impact this could have on the pharmaceutical industry. As AI is created by a computer, it does raise the question, who owns […]

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  • Dosage regime relief!

    11 April 2019

    A unanimous decision by the Supreme Court is being hailed as a relief for innovators in the pharmaceutical sector, and confirms that novel and inventive dosage regimes are patentable. Tadalafil (Cialis) is a second in class PDE5 inhibitor for the treatment of erectile dysfunction. This use of tadalafil was first disclosed in EP 0839040 (the […]

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  • Pain for Warner-Lambert at the Supreme Court

    13 December 2018

    The eagerly awaited Supreme Court judgment in the Warner-Lambert V Generics (UK) and Actavis case has recently been issued (see here), a full nine months after the hearing in February 2018. This is the final step in a saga which has been ongoing for years, and which is of huge importance to the pharmaceutical industry. […]

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  • Before and after snapshot – how Actavis affects infringement

    28 November 2018

    In a recent decision by the Court of Appeal, Judge Lord Kitchin applied the principles of Actavis vs Eli Lilly (Actavis) to rule upon a patent infringement dispute in Icescape v Ice-World (see here). As previously reported, the landmark Actavis judgement was a 2017 decision from the Supreme Court that essentially changed the decades-old understanding […]

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  • Unwired Planet v Huawei – Court of Appeal decision

    5 November 2018

    Court of Appeal gives verdict on long running Unwired Planet v Huawei dispute For several years litigation has been rumbling on between Unwired Planet and Huawei regarding Standard Essential Patents (SEPs) held by Unwired Planet. For the uninitiated, SEPs are patents that must be used to comply with an industry standard, and are common in […]

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  • Patent protection for Blockchain Technology and Blockchain’s role in anti-counterfeiting

    18 October 2018

    Why should you consider patent protection for your Blockchain technology? Partner, Philip Horler explains the role of Blockchain in anti-counterfeiting and the benefits of protecting the technology.  Philip Horler Electronics, Computing & Physics group If you require further information on anything covered in this briefing, please contact Philip Horler (; +44 207 940 3600) […]

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  • No-deal Brexit: UK government issues guidance on EU Trade Marks

    11 October 2018

    On 24 September 2018, the UK government released guidance on the impact of a no-deal Brexit on EU trade marks. The guidance has not yet been enacted as legislation; and its sole aim is to clarify the UK’s intended actions should we encounter a no-deal Brexit, resulting in the UK leaving the European Union on […]

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  • Mind the Overlap

    16 August 2018

    Many inventions require their features to be defined in terms of a numerical range. For example, a manufacturing process may be operable over a range of temperatures, or a material composition may be produced using components combined in a range of proportions. A patent application usually provides one or more examples of the working invention […]

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  • Protecting the unpatentable: Arrow declarations

    2 August 2018

    A recent decision of the Court of Appeal to overturn the High Court ruling in an ongoing dispute between GSK and Vectura Limited has once again brought the validity of Arrow declarations to the forefront of UK patent law. An Arrow declaration provides commercial certainty or freedom to operate surrounding the marketing of a product […]

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  • Canada to join Hague Agreement

    25 July 2018

    Canada has ratified the Hague Agreement for the International Registration of Industrial Designs. Canada can be designated in new Hague design filings from 5 November 2018. The Hague Agreement enables applicants to seek protection of registered designs/design patents in 69 territories (that includes all European Union member states, USA, South Korea, Japan, Russia and the […]

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  • Protection for indications of geographical origins: A case of Scottish Glens and German Whisky

    24 July 2018

    On 7 June 2018 in the case of Scotch Whisky Association v Michael Klotz[1], the Court of Justice of the European Union (CJEU) was asked to determine whether use of the term “Glen” by Michael Klotz, a producer of a German whisky called “Glen Buchenbach”, indirectly and unlawfully infringed the Protected Geographical Indication (PGI) “Scotch […]

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  • UK signals intent to stay in Unified Patent Court after Brexit

    16 July 2018

    The UK Government published its white paper regarding “The future relationship between the United Kingdom and the European Union” (found here). This provides the strongest indication yet that the UK Government will act to stay a part of the Unitary Patent Package (UPP) after Brexit. The UK Government had already stated that it is planning […]

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  • UK joins the Hague Agreement – Further details

    10 May 2018

    Further to the news of the ratification of the Hague Agreement by the UK on 13 March this year, the World Intellectual Property Office (WIPO) has published the following declarations with further information for applicants wishing to register their designs in the UK and abroad in a single application: –  International registered design applications designating […]

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  • UK ratifies the UPCA

    27 April 2018

    Sam Gyimah MP, Minister of State for Universities, Science, Research and Innovation, announced yesterday (26 April 2018) that the UK has ratified the Agreement on a Unified Patent Court (UPCA). The announcement came during Mr Gyimah’s speech at the IPAN World IP Day event held in the House of Commons. Mr Gyimah said “Ratification of […]

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  • SPC update – further insight to the meaning of “protected”

    25 April 2018

    For a product to qualify for SPC protection, the product must be “protected” by a basic patent in force.  The CJEU has previously stated that “protected” means something more than simply falling within the granted claim scope.  In a referral from the High Court of England and Wales in Teva v Gilead (C-121/17), Mr Justice […]

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  • Tania Clark elected as new CITMA President

    11 April 2018

    The Chartered Institute of Trade Mark Attorneys (CITMA) has elected Tania Clark, partner in Withers & Rogers’ Trade Mark group, as its new President. Tania commenced her two-year term on 10 April 2018.

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  • EPO allows eighth petition for review

    9 April 2018

    Earlier this year, the European Patent Office (EPO) published a decision allowing a petition for review (see R4/17), bringing the grand total of allowed petitions to eight, out of a total of 151 filed. As is evident from this small total, the petitioner rarely triumphs. In brief, a petition for review is a formal request […]

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  • SPC update – further question referred to CJEU regarding meaning of “protected”

    6 April 2018

    One of the requirements for obtaining SPC protection for a product is that the product must be subject to a marketing authorisation and the product must also be “protected” by a patent.  The CJEU ruled that the meaning of “protected” is narrower than simply infringing the claim, without saying where exactly the boundary between protected […]

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  • Changes to payment of European renewal fees

    4 April 2018

    Following a Decision of the Administrative Council of the European Patent Organisation (found here), it is now possible to pay the third year renewal fee for European patent (EP) applications up to six months in advance of the due date. Previously, with regard to all renewal fees due for an EP application, it was only […]

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  • EPO fee changes – effective from 1 April 2018

    29 March 2018

    In June 2017, the European Patent Office (EPO) announced a freeze on inflation-based official fee increases for 2018. Instead, the EPO will selectively adjust certain official fees, effective from 1 April 2018. These fee adjustments, summarised below, relate to the handling of PCT applications, online filings and appeal fees. International (PCT) applications where the EPO […]

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  • Patentability of Artificial Intelligence and Machine Learning Inventions in Europe

    22 March 2018

    Introduction Artificial intelligence (AI) is an interdisciplinary field of computer science with the goal of enabling machines to behave and reason in an intelligent manner.  Early approaches to AI centred on rule-based systems.  Such systems were configured to operate within highly constrained environments where the behaviour of the AI system was specified beforehand using formal […]

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  • UK ratification of Hague Agreement

    15 March 2018

    The UK has now ratified the Hague Agreement for the International Registration of Industrial Designs.  This means that from 13 June 2018 the UK can be designated in new international design applications under the Hague system. International design applications allow applicants to submit a single design application to the International Bureau of the World Intellectual […]

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  • UK IPO announces fee increases

    24 January 2018

    Following the UK IPO’s consultation[1] on patent fees, the UK IPO has decided to go ahead with a number of changes[2] to the fees for applying for patent protection and renewing granted patents. These changes include both increases to current fees, and the introduction of new fees. These changes will come into effect on 6 […]

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  • EPO revokes Broad’s CRISPR-Cas9 patent

    18 January 2018

    This week saw the first decision from the EPO Opposition Division related to the CRISPR-Cas9 genome editing technology.  The patent in question, EP2771468, which was granted to the Broad Institute, MIT and Harvard University was revoked after the filing of nine oppositions. The PCT application from which EP2771468 derived was filed naming Broad, MIT and […]

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  • Russia to join Hague Agreement in 2018

    3 January 2018

    The Russian Federation has ratified the Hague Agreement for the International Registration of Industrial Designs. Russia can be designated in new Hague design filings from 28 February 2018. The Hague Agreement enables applicants to seek protection of registered designs/design patents in 67 territories (that includes all European Union member states, USA, South Korea and Japan) […]

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  • Clarification on Undisclosed Disclaimers provided by EPO Enlarged Board of Appeal

    22 December 2017

    A decision by the EPO Enlarged Board of Appeal has been published with respect to some questions raised in relation to undisclosed disclaimers.  Undisclosed disclaimers are a common means of amending a claim to exclude subject that: a) is disclosed in an earlier patent document under Article 54(3) EPC; b) represents an accidental anticipation in […]

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  • European Commission notice regarding Brexit and EU IP rights

    21 December 2017

    On 5 December 2017 the European Commission together with the European Union Intellectual Property Office published a notice regarding the effect of Brexit on EU trade marks and community designs. The notice confirms that as of the date of withdrawal of the UK from the EU (expected to be 29 March 2019) and subject to […]

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  • Outstanding Benefit and Multinational Companies

    21 December 2017

    Earlier this year the Court of Appeal dismissed an appeal by Professor Ian Alexander Shanks (Shanks) against an earlier dismissal of his appeal against the decision of Hearing Officer, Mr Julyan Elbro, dismissing his claim for employee compensation in favour of the defendants Unilever PLC, Unilever NV and Unilever UK Central Resources Limited (Unilever). The […]

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  • Assigning priority rights in Europe – How to stay out of trouble

    1 December 2017

    At first glance, it seems straightforward to assign intellectual property rights from one entity to another.  A recent decision by the EPO’s Board of Appeal in T1201/14 (see here) shows that it can, and relatively often does, go wrong. According to European jurisprudence it is generally accepted that the right to claim priority arising from […]

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  • SPCs for drug/device combinations?

    24 November 2017

    Supplementary protection certificates (SPCs) (as provided under EU Regulation (EC) No. 469/2009) are intended to compensate patent proprietors for any potential loss of exclusivity due to the long regulatory approval procedures required to get new drugs onto the market. To this end SPCs can provide up to five years of patent term extension in relation […]

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  • London Taxi Company loses Black Cab case in the Court of Appeal

    20 November 2017

    On 1 November 2017, the Court of Appeal upheld the ruling against The London Taxi Corporation Ltd (“LTC”) in favour of defendants Frazer-Nash Research Limited (“FRN”) and Ecotive Limited (“Ecotive”). LTC had argued that their UK and EU registered trade marks, which depict models of its taxis, were being infringed by FRN and Ecotive’s model […]

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  • Life after Actavis – questions answered

    16 November 2017

    In July 2017 the Supreme Court judgment in the Actavis v Eli Lilly case (“Actavis”) changed the way we will assess the scope of patent claims in the UK (see here for an overview).  The Actavis judgment did not touch on whether the change to the way that scope of claims is determined for the […]

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  • The Intellectual Property (Unjustified Threats) Act 2017

    13 November 2017

    The Intellectual Property (Unjustified Threats) Act 2017 came into force on 1 October 2017. The new law comes as the result of a consultation process triggered by the Law Commission in April 2013. UK law provides for protection against groundless threats of infringement proceedings by the holder of a patent, trade mark, unregistered design right […]

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  • Introduction of the EU Certification Mark

    29 September 2017

    Under the UK Trade Marks Act 1994, a certification mark is defined in Section 50(1) as: “a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy […]

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  • New UK provisions for webmarking for Registered Designs

    15 September 2017

    Webmarking Since 1 October 2014, patent holders have been able to better protect their patents through webmarks, a system whereby patent holders use a web address to mark their patented products instead of patent numbers. This system benefits patent holders as it removes the difficulties associated with having to include the patent number on every […]

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  • IP rights post Brexit: European Commission position paper

    12 September 2017

    On 7 September, the European Commission released their position paper on the treatment of all intellectual property (IP) rights post Brexit. IP rights include EU trade marks, registered and unregistered community designs, geographical indications and community plant variety rights. The Commission’s guiding principle is that the protection of unitary rights enjoyed in the United Kingdom […]

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  • Lithuania ratifies the UPCA

    25 August 2017

    On Thursday 24 August, Lithuania ratified the Agreement on a Unified Patent Court (UPCA), bringing the total number of ratifications to fourteen. As it stands, applicants will be able to protect their inventions in at least 16 countries (the existing 14 plus UK and Germany) with a single Unitary Patent (UP) when the system is […]

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  • Sound plausible? How much data does your patent application really need to include?

    15 August 2017

    Inventors and applicants are often surprised to learn that the European Patent Convention (EPC) does not formally require a patent application to include experimental data. However, it has long been understood that any technical effect of an invention can only be relied upon to support an inventive step to the extent that the application as […]

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  • Estonia ratifies the UPCA

    4 August 2017

    Estonia has ratified the Agreement on a Unified Patent Court (UPCA). Estonia’s ratification means that the geographical protection provided by the Unitary Patent (UP) upon implementation will cover to at least 15 countries. The complete list of countries to have ratified the UPCA can be found here but must also include the UK and Germany […]

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  • Eli Lilly reigns Supreme

    13 July 2017

    The long running patent dispute between Actavis and Eli Lilly (Lilly) has now reached its zenith, with the UK Supreme Court decision issued 12th July (see here).  The Supreme Court allowed Lilly’s appeal and held that Actavis’ products directly infringe Eli Lilly’s patent in the United Kingdom, France, Italy and Spain.  This momentous decision has […]

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  • UK’s preparations for the Unified Patent Court are back on track

    26 June 2017

    The UK has set in motion the legislative process to remove the final legal impediment to ratification of the UPCA. The UKIPO has confirmed today that the Unified Patent Court (UPC) related Statutory Instrument (the “Order on Privileges and Immunities”) has been laid before Parliament, alongside equivalent legislation for Scotland being scheduled for discussion in […]

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  • Adwords and honest concurrent use: Victoria Plum v Victorian Plumbing

    13 June 2017

    Victoria Plum Ltd v Victorian Plumbing Ltd [2016] EWHC 2911 was a trade mark case in which the issues of keyword advertising and honest concurrent use were intertwined.  The case highlights the fact that the ‘honesty’ of trade mark use can differ between the online and offline environments. The case also saw a successful counterclaim for […]

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  • SPCs can be used for compounds hidden within generic claims

    23 May 2017

    Please note: This High Court decision has been overturned and referred to the CJEU. Click here to read our latest update. In good news for pharmaceutical patent owners, the England and Wales High Court has confirmed here that an SPC is allowable for a compound that is not specifically identified in a patent but (a) […]

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  • Court of appeal ruling in KitKat case is a blow for Nestle

    17 May 2017

    Tania Clark, partner and trade mark attorney said: “This decision is a blow for Nestle and its attempt to register a trade mark for the four-fingered shape of its KitKat chocolate bar, which began in 2010, has been rejected by the Court of Appeal. “The Court of Appeal’s decision means rival manufacturers such as Cadbury […]

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  • UK to join Hague Agreement in 2018

    9 May 2017

    It has been announced that the UK intends to ratify the Hague Agreement for the International Registration of Industrial Designs by 31st March 2018 and will be in a position to launch the service on 6th April 2018. The Hague Agreement enables applicants to seek protection of registered designs/design patents in over 66 territories through a […]

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  • What is FRAND? Unwired Planet v Huawei

    25 April 2017

    The UK High Court holds that there can only be one set of licencing terms that are fair, reasonable and non-discriminatory (FRAND) for a given situation, FRAND royalties should be based on a common portfolio benchmark rate for all licensees, and in this case a licence restricted to one jurisdiction is not FRAND. It is […]

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  • Italy ratifies the UPCA

    13 February 2017

    On Friday 10 February 2017, Italy became the latest country to ratify the UPCA, bringing the total number of ratifications to twelve. As ten other non-mandatory countries, plus France, have already ratified the Agreement (listed here), the ratification of Italy was not required to initiate the UPC. However, with Italy being the fourth largest economy […]

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  • Bespoke Brexit and Intellectual Property – business as usual

    26 January 2017

    Following UK Prime Minister, Theresa May’s speech of 17 January 2017 and subsequent comments, we now have greater clarity regarding the “bespoke” nature of the UK’s leaving of the European Union. There is no doubt, following her speech, that the intent of the UK executive government is that the UK will no longer be a […]

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  • Unitary Patent Package expected to enter into force in December 2017

    16 January 2017

    An official statement from the Unified Patent Court (UPC) website, published today (found here), has outlined a rough timetable for the UPC becoming operational. If all continues as expected, the Agreement on the Unified Patent Court (UPCA) and the Court itself should be up and running in December 2017. This would mean that the ‘Unitary […]

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  • Court of Appeal provides clarification “about” numerical values

    3 January 2017

    The use of numerical ranges and values to accurately describe the amount of ingredients present in a composition or formulation is a widely used approach in patent specifications, especially in the field of pharmaceuticals and formulation chemistry.  Patentees need to clearly define the limits of various active ingredients, excipients and the like in order to […]

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  • Michael Jaeger unpacks HMRC’s report on the initial uptake of the UK’s Patent Box

    23 December 2016

    The UK’s Patent Box came into effect on 1 April 2013. Under the scheme UK companies are able to pay a reduced rate of Corporation Tax on certain profits derived from patented technology. HM Revenue & Customs (HMRC) published its first report¹ on the uptake of the scheme on 14 September 2016, and that report […]

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  • EPO puts brakes on essentially biological processes

    15 December 2016

    In frustrating news for the biotech industry, we can report that the European Patent Office (EPO) has decided to suspend all examination and opposition proceedings for inventions concerning plants/animals that are obtained by means of essentially biological processes.  This follows a recent non-binding Notice from the European Commission (EC) regarding the interpretation of certain aspects […]

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  • The Final Twist: Rubik’s Cube Trade Mark Declared Invalid by EU Court

    1 December 2016

    On 10 November 2016, the Court of Justice of the European Union (CJEU) decided that the famous Rubik’s Cube could not be a registered trade mark. This marks the end of a ten year tussle over the registrability of one of the world’s best-selling toys of all time. The trade mark in question is Seven […]

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  • Taking the sting out of poisonous divisionals

    30 November 2016

    The Enlarged Board of Appeal (EBoA) of the European Patent Office (EPO) has today indicated in case G1/15 that the so-called issue of “poisonous divisionals” has been put to rest.  The background context to this is that there had been concerns that it might be legally possible for a divisional patent application to be held […]

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  • The UK will ratify the UPCA!

    28 November 2016

    At the EU competitiveness council meeting today the UK Minister of State for Energy and Intellectual Property, Baroness Neville-Rolfe, indicated that the UK will ratify the Unified Patent Court Agreement (see official press release here). UPC specialist and W&R Partner Russell Barton said: “We, at Withers & Rogers, are delighted the UK government has chosen […]

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  • Name change for the Institute of Trade Mark Attorneys (ITMA)

    17 November 2016

    The Institute of Trade Mark Attorneys (ITMA), the organisation, which represents the interests of the trade mark and design profession will be changing its name with effect from Thursday 24 November. Going forward the organisation will be known as The Chartered Institute of Trade Mark Attorneys (CITMA) following the grant of a Royal Charter back […]

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  • The UK IPO introduces timeliness target for re-examination of patent applications

    14 November 2016

    In most jurisdictions a patent will not be granted until it has been examined and approved by the relevant patent office. This examination process is referred to as ‘patent prosecution’ and often entails multiple rounds of Examination Reports issued by the patent office and ‘responses’ filed on behalf of the patent applicant. Consequently, the patent […]

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  • The value of intellectual property to the European economy is growing

    2 November 2016

    The contribution made by IP-led industries to the European economy has increased according to a second EU-wide study published by the European Patent Office (EPO) and the European Union Intellectual Property Office (EUIPO). The study has revealed that industries described as ‘IPR-intensive’ – those that file a high number of Community Trade Marks, Registered Design […]

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  • Undisclosed disclaimers update

    1 November 2016

    When it comes to amending the scope of protection of your claims, the European Patent Office applies very strict requirements that any new scope of protection sought must have already been directly and unambiguously disclosed somewhere in the application as filed. There is one exception to this rule, undisclosed disclaimers.  They are ‘undisclosed’ because the […]

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  • Opposition process streamlined at EPO

    12 October 2016

    As of 1 July 2016, the European Patent Office (EPO) is aiming to increase the speed with which opposition proceedings are brought to a conclusion and thereby improve legal certainty for all parties concerned. The opposition procedure allows any person to centrally challenge the validity of a European patent within nine months of its grant […]

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  • WIPO introduces new chemical structure searching capability

    12 October 2016

    Earlier this month, the World Intellectual Property Office announced the addition of a new patent searching tool, which will allow users to locate International patent applications based on chemical structures.  Whilst perhaps not of interest to many, this facility has the potential to revolutionise the searching of chemical subject matter. Making it an exciting addition […]

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  • The Royal Assent of the Finance Act 2016 brings “Patent Box II” into effect

    30 September 2016

    The Patent Box scheme was introduced by the UK Government in April 2013 to allow UK companies to pay less Corporation Tax on profits generated from the sale of patented products and from the use of patented processes and machinery. Shortly after its introduction, the scheme faced criticism from foreign governments.  This led to a […]

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  • Amendments to the Patents Rules 2007

    23 September 2016

    What is changing? The UK Intellectual Property Office (UK IPO) is introducing a package of changes to the Patents Rules. The Patents Rules 2007, together with the Patents Act 1977, govern the patent system in the UK. The Rules set out the procedural and administrative requirements which apply to patents and patent applications. None of […]

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  • Report released on the initial uptake of the UK’s Patent Box

    22 September 2016

    The UK’s Patent Box regime came into force on 1 April 2013, through which companies are able to pay a reduced rate of UK Corporation Tax on profits derived from patented technology. More than three years after its introduction, HM Revenue & Customs have, for the first time, published a report on the uptake of […]

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  • CIPA – Securing the UK’s continued participation in the Unified Patent Court and Unitary Patent following Brexit

    20 September 2016

    The legal position, that it is possible for the UK to remain in the UPC and UP has already been widely supported as reported here. This view already included support from CIPA (the Chartered Institute of Patent Attorneys) and now has further heavyweight backing from a newly published Counsel’s opinion. CIPA, the IP Federation and […]

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  • The Netherlands ratifies the UPCA

    20 September 2016

    The Netherlands recently became the eleventh country to ratify the Unified Patent Court Agreement. This marks a key point in the implementation of the UPC, as now only the mandatory ratification by Germany and the UK is necessary to bring the UPC Agreement into force. Prior to the recent EU Referendum, the UK was expected […]

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  • UK IPO fee changes to encourage multiple design filings post Trunki

    9 September 2016

    From 1 October 2016 the UK IPO fee structure for registering designs in the UK will change. For many years applicants have had the option of filing one or several designs within a single application but the cost of filing lots of designs to protect various aspects of a product has been prohibitive for many, […]

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  • European IP Leaders’ Brexit perspective

    8 September 2016

    Withers & Rogers Chairman Karl Barnfather was delighted to moderate the opening panel session, on the Implications of Brexit and the UPC, to the MIP European Patent Reform Forum in Munich on Tuesday 6 September 2016.   On the panel was Margot Fröhlinger of the European Patent Office and Professor Tilmann of the University of Heidelberg. […]

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  • McDonald’s v MacCoffee: a family affair

    2 August 2016

    T-518/13 Future Enterprises v EUIPO Can ownership of a family of trade marks help to prove infringement? According to the EU’s General Court, the answer is yes. In this case, McDonald’s were able to invalidate a third party’s registration for MACCOFFEE. The Court held that where a party owned a set of earlier registrations, all […]

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  • Cartier v BSkyB – Court of Appeal confirms website blocking orders for Trade Mark infringement

    20 July 2016

    The Court of Appeal has handed down its decision in Cartier International and Others vs BSkyB and Others [2016] EWCA Civ 658 and has upheld the High Court’s decision. Our earlier report of the High Court decision can be found here. High Court Summary The Claimants (Cartier, Mont Blanc and Richemont) own trade mark registrations for […]

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  • An update on the revamped UK IPO Opinion Service

    21 June 2016

    With the implementation of the Intellectual Property Act 2014, the UK Intellectual Property Office (UK IPO) received increased powers with respect to its Opinion Service. Thirty months later, we have delved into the cases that have been heard to look at the effect the revamp has had. It serves as a timely reminder of a […]

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  • Eligibility of medical devices for SPCs

    15 June 2016

    Supplementary Protection Certificates (SPCs) provide valuable patent term extensions that compensate both the pharmaceutical and agricultural industries for the delays suffered in bringing their products to market as a result of complex regulatory processes. Despite sometimes requiring similar levels of regulation to pharmaceutical products, medical devices are still not entitled to SPC protection. Whilst this […]

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  • High Court Trade Mark Decision Leaves Tobacco Companies Fuming

    10 June 2016

    British American Tobacco & others v Department of Health [2016] EWHC 1169 This case concerns the introduction of plain packaging legislation for tobacco products in the United Kingdom.  The decision was handed down on 19 May ahead of the introduction of the Packaging of Tobacco Products Regulations 2015 (“the Regulations”) on 20 May, the UK’s […]

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  • Bulgaria becomes the tenth country to ratify the UPC Agreement

    9 June 2016

    On 3 June 2016, Bulgaria became the tenth country to ratify the Unified Patent Court Agreement by depositing its instrument of ratification. This now leaves the UK, Germany and one other country to ratify before the Agreement takes effect. Please see our updated UP and UPC pages for the latest information.   James Mitchell Electronics, […]

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  • The Strength of a Settlement

    3 June 2016

    Stretchline Intellectual Properties Ltd v H&M Hennes & Mauritz UK Ltd [2016] EWHC 162 (Pat), 21 January 2016 Following a long running dispute involving Stretchline’s patent for a tubular fabric composition, this recent High Court decision explores remedies that are available for alleged infringement following a settlement. This decision provides useful guidance on the finality […]

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  • A “RAW” Deal for H&M in Trade Mark Infringement Decision?

    1 June 2016

    A “RAW” Deal for H&M in Trade Mark Infringement Decision? Hague Court of Appeal March 2016 Case Comment The Hague Court of Appeal has found H&M liable for infringement of G-Star Raw’s trade marks in the word RAW. In 2011, G-Star Raw (“G-Star”) brought trade mark infringement proceedings against H&M, the Swedish fashion company, after […]

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  • Inventions made by university employees – entitled or not?

    25 May 2016

    In the UK, deciding whether or not an invention belongs to an employee or an employer is governed the UK Patents Act 1977. Whilst it can be generally assumed that an invention which is produced during the course of normal duties of the employee belongs to the employer, it is interesting to consider how the […]

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  • Clearing the way: the tests for obviousness and insufficiency clarified

    20 May 2016

    A recent High Court decision explains the tests for obviousness and insufficiency resulting from a “clearing the way” action brought by Actavis against Eli Lilly (Lilly).  Actavis intended to invalidate Lilly’s patent on the basis of a lack of inventive step and insufficiency. Lilly’s patent relates to the second medical use of atomoxetine in the […]

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  • Recruitment begins for UPC judges

    16 May 2016

    The recruitment process for selecting the first group of UPC judges is now open. Candidates may apply to become a full-time or part-time judge until the closing date of 4 July 2016. Information on the selection process can be found here. The opening of the selection process marks a major step in the implementation of […]

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  • OHIM changes name to EUIPO

    21 March 2016

    With effect from Wednesday 23rd March there will be a number of name changes implemented in relation to Intellectual Property organisations and rights. ·    The Office for Harmonisation in the Internal Market (OHIM) will be known as the European Union Intellectual Property Office (EUIPO). ·    Community Trade Marks (CTM’s) will change to EU Trade Marks. […]

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  • Case closed: Supreme Court dismisses Trunki’s design appeal

    10 March 2016

    PMS International Group Plc (Respondent) v Magmatic Limited (Appellant)  [2016] UKSC 12 This case came before the Supreme Court following earlier proceedings at the High Court and Court of Appeal. Two designs were at issue (pictured, left to right): the ‘Trunki’, Magmatic’s Registered Community Design (RCD), and the Kiddee Case by PMS, in various iterations, […]

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  • ECJ upholds General Court decision in favour of Adidas

    9 March 2016

    Case C-396/15 P Shoe Branding Europe BVBA v Adidas AG European Court of Justice, 17 February 2016 The European Court of Justice (ECJ) has upheld a decision of the General Court allowing Adidas to oppose the registration of a trade mark consisting of two parallel stripes placed on the side of footwear. Shoe Branding Europe, […]

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