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  • EPO Boards for Appeal (T 0209/22)

    3 June 2024

    A recent case at the EPO Boards for Appeal (T 0209/22) demonstrates an important distinction between “direct and unambiguous disclosure” (for novelty), and credibility that the treatment effect is attained (for sufficiency) for the medical use of known products at the EPO. “Hope to succeed” versus “expectation of success” was also assessed for demonstration of […]

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  • Tackling counterfeiters: Luxury brands must be enforcement ready

    5 March 2024

    Mariana Köpf, Withers & Rogers attorney at law based in our Munich office, has given her thoughts to Brands Journal about how luxury brands must be enforcement ready to tackle counterfeiters. High-profile court cases such as that between Christian Louboutin and Amazon in 2022, has given clarity to brand owners about who is liable when […]

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  • Reduced EPO fees for ‘micro entities’

    26 February 2024

    From 1 April 2024 the European Patent Office are introducing reduced fees for smaller and less experienced patent filers at the EPO. The new scheme offers a 30% fee reduction on a variety of EPO fees for ‘micro entities’ who have filed fewer than 5 European patents in the last 5 years. The applicable ‘micro […]

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  • Victoria & Lawrence Osborne v Louis Vuitton Malletier, 0/0026/24, 16 January 2024

    12 February 2024

    Yet another David v Goliath trade mark dispute before the UKIPO with David coming out on top. The UKIPO delivers another lesson to big brands on the pitfalls of being overzealous in their trade mark enforcement strategy before the UKIPO. It also brings to mind Zara’s failed attempt to oppose a UK trade mark application […]

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  • Clarity on G2/21 from the EPO Board of Appeal in T0116/18

    10 January 2024

    Last year we reported here that the Enlarged Board of Appeal had established in G2/21 new guidance for determining when post‑published evidence can be relied upon to support an inventive step at the EPO.   It was, however, unclear how this guidance would be applied going forward.  The written decision of the Board of Appeal in […]

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  • Supreme Court judgement in Thaler v Comptroller-General

    20 December 2023

    The UK Supreme Court have issued their judgement in Thaler v Comptroller-General thus bringing the DABUS saga to a close in the UK (for now…). Initial headline summary: *Appeal dismissed* (a) Does section 13(2)(a) of the Patents Act 1977 (the “1977 Act”) require a person to be named as the inventor in all cases, including […]

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  • “Gasteiner” as a reference to the “Gasteinertal mountain region” is not protectable as a trade mark for beverages

    22 November 2023

    My latest comment on the decision of the Austrian Supreme Court of 22.11.2022 – 4 Ob 171/22, – “Gasteiner Energy Water” which will be published in GRUR-Prax – issue 22- on November 24, 2023, deals with the question of whether the sign “Gasteiner” can be registered as a trade mark for beverages. The Austrian Patent […]

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  • UK High Court patent decision regarding the patentability of AI

    22 November 2023

    Yesterday, the High Court issued the first patent decision regarding the patentability of AI. The decision seems to have positive implications for the patentability of AI based inventions in the UK. The decision suggests that an Artificial Neural Network (ANN) is not necessarily excluded from patentability as a program for a computer. Both a trained […]

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  • EBA decides on the right to priority (G1/22 and G2/22)

    20 October 2023

    The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) issued a decision on 10 October 2023 in consolidated cases G1/22 and G2/22, dealing with two questions relating to the right to priority: Is the EPO competent to assess whether a party is entitled to claim priority under Article 87(1) EPC? If the […]

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  • EPO’s Deep Tech Finder

    17 October 2023

    The European Patent Office (EPO) have recently released a new tool to help find investment-ready startups with European patent applications. By allowing other businesses as well as investors search for startups filing patent applications with the EPO, additional information regarding new technologies entering the market will become more widely available. This provides greater investment opportunities […]

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  • Calling time on the EPO’s “ten day rule”

    3 October 2023

    The European Patent Office’s “ten day rule” will come to an end later this year following a decision made by the EPO’s Administrative Council in 2022. Under the existing “ten day rule” (provided by Rules 126(2) and 127(2) EPC), postal and electronic notifications from the European Patent Office are deemed to have been received ten […]

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  • Invalidity can only be declared in respect of registered EU trade marks

    20 September 2023

    Trade mark applicant Grzegorz Mordalski, filed for registration of a trade mark with the Polish Trademark Office on January 21, 2016 for class 30. The Trademark Office refused registration of this trade mark due to an earlier similar European Union trade mark, No. 008291056 ANITA, registered by Anita Food SA for classes 30 and 43, […]

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  • X marks the spot for Musk’s rebrand strategy, but could it backfire?

    28 July 2023

    Elon Musk’s decision to rename Twitter as ‘X’ and implement the changes almost immediately, has attracted widespread public attention. But could the speedy rebrand have unwelcome repercussions? The rebranding is thought to be part of a strategic plan by Elon Musk to reinvent Twitter, which he acquired in October 2022 as a multi-purpose platform for […]

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  • Decision of the Federal Patent Court 25 W (pat) 526/21 KÖLNER DOM of 19 January 2023

    27 July 2023

    “KÖLNER DOM” cannot be protected as a trade mark The “KÖLNER DOM” or Cologne Cathedral, is a world-famous cathedral and a very popular cultural site in Germany. The applicant had applied for the registration of “KÖLNER DOM” as a trade mark in order to commercialise the name for various goods and services, including clothing, souvenirs, […]

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  • New Referral to the Enlarged Board of Appeal (G1/23)

    7 July 2023

    On 27 June, a new referral was made to the Enlarged Board of Appeal (EBA) in case T 0438/19. The referral seeks clarification on whether a commercially available product, with an undisclosed composition or internal structure, should be excluded from the state of the art for patentability within the meaning of Article 54(2) EPC. “State […]

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  • Plausibility hurdle in the UK shifted up a notch, as invalidity of BMS patent confirmed by Court of Appeal

    22 May 2023

    Summary The UK Court of Appeal (CoA) confirmed the invalidity of Bristol-Myers Squibb (BMS)’s apixaban patent on 4 May 2023.1  The appeal decision centred on the question of plausibility and is the first UK decision to consider plausibility since the EPO Enlarged Board of Appeal’s decision G2/21. The CoA held that BMS had not presented […]

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  • Success at the Federal Court of Justice

    19 April 2023

    The Federal Court of Justice (Bundesgerichtshof, BGH) comments on the extent to which the installation of spare parts leads to a new production displacing the exhaustion effect. On 8 November 2022, the Federal Court of Justice delivered its judgement (8 November 2022, X ZR 10/20) in the legal dispute concerning the question of a new […]

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  • EPO referral to the Enlarged Board of Appeal (G2/21) – Post-published evidence of a technical effect

    24 March 2023

    In 2021, a referral was made to the Enlarged Board of Appeal (EBA) in case T116/18 concerning whether post-published evidence (i.e., information not available until after the filing date of a patent application) can be used to demonstrate a technical effect in the assessment of inventive step.  The EBA issued its preliminary opinion in October […]

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  • Brazil joins Hague International Designs System

    2 March 2023

    Brazil has ratified the Hague Agreement for the International Registration of Industrial Designs. This means that from 1 August 2023 Brazil can be designated in new international design applications under the Hague system. Brazil is the largest economy in Latin America. International design applications allow applicants to submit a single design application to the International […]

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  • Global Trends in Battery Technology: A Patent Perspective

    24 February 2023

    As the drive towards renewable energy use gains pace, there has been an increase in global patent filings relating to battery technology. While lithium-ion batteries currently dominate the battery market, they have several disadvantages. For instance, the manufacture of lithium-ion batteries requires large quantities of energy and water to extract raw materials.1 The high demand […]

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  • Aldi loses battle with M&S over festive gin

    22 February 2023

    When Aldi launched a festive gin bottle with a snow globe effect in a light up bottle few could help but draw comparison with the very similar M&S product launched a year earlier. The visual similarity and the price differential between the M&S version and the Aldi version were out of the playbook that is […]

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  • Germany completes the UPC jigsaw

    17 February 2023

    The start date for the Unified Patent Court (UPC)  is now confirmed as 1 June 2023. German ratification of the UPC Agreement occurred today on 17 February 2023. The UPC will allow companies and inventors to enforce their patents in 17 EU countries in a single court action. The court coming into operation will also complete […]

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  • IP funding launched for European SMEs

    13 February 2023

    The European Commission and the European Union Intellectual Property Office have announced a €60.1 million fund to support EU-based small and medium-sized enterprises (SMEs) in protecting their intellectual property rights. The “Ideas Powered for business SME Fund” is a grant scheme which will run from 23 January 2023 to 8 December 2023.  The fund will […]

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  • Twist and shout… about sub-ranges

    10 February 2023

    In 2019, the European Patent Office’s (EPO) Guidelines for Examination were updated to remove the “purposive selection” requirement when assessing the novelty of sub-ranges. This meant it was no longer necessary for an applicant to demonstrate that the selected sub-range was associated with a particular technical effect. This recent decision from the Board of Appeal […]

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  • The importance of commas

    7 February 2023

    In a recent decision, T 1473/19, the Board of Appeal of the European Patent Office (EPO) revoked a patent for added matter due to the lack of a single comma in the claims. Patent attorneys are often accused of pedantry when it comes to word selection and grammar. This case is a prime example of […]

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  • Is Amazon liable for trade mark infringements committed by third parties?

    9 January 2023

    ECJ, Judgment of 22.12.2022 – C-148/21, C-184/21 Louboutin’s best-known goods are luxury red-soled women’s shoes. He has registered the red colour of the outer sole as a protected trade mark in the EU, among other countries. Third-party adverts appeared on the online marketplace Amazon for shoes with red soles, which Louboutin says are being marketed […]

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  • Bad faith in filing applications

    8 November 2022

    Bad faith in filing applications (ECJ 07.09.2022 – T-627/21 – Segimerus/EUIPO [Monsoon]) It is to be considered abusive if an EU trade mark is filed claiming priority according to Art 34 (1) EUTMR and, before the expiry of this six-month period, national trade mark applications were filed in succession every six months, alternately in Germany […]

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  • Risk of confusion between “NORTH FACE” and “THE DOG FACE”

    28 October 2022

    Risk of confusion between “NORTH FACE” and “THE DOG FACE” due to the highly distinctive character of the earlier mark (OLG Frankfurt am Main, Beschl. v. 28.06.2022 – 6 W 32/22 – “THE NORTH FACE”/“THE DOG FACE”) In principle, there is no high degree of similarity between the mark “THE NORTH FACE” and the contested sign […]

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  • The end of the “Ten-Day Rule” at the EPO

    24 October 2022

    It has recently been reported by CIPA that the “ten-day rule” will come to an end following a decision from the Administrative Council of the EPO. Under the existing “ten-day rule” (provided by Rule 126(2) EPC), postal notifications from the European Patent Office are deemed to have been received ten days after their date of […]

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  • EPO referral to the Enlarged Board of Appeal (G2/21)

    20 October 2022

    In 2021, a referral was made to the Enlarged Board of Appeal (EBA) in case T116/18 concerning whether post-published evidence (i.e., information not available until after the filing date of a patent application) can be used to demonstrate a technical effect in the assessment of inventive step.  The EBA has now issued its non-binding preliminary […]

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  • When is making the first move the best defence?

    9 May 2022

    After a few attempts, a competitor has finally managed to get the famous Moon Boot’s 3-D European Union Trade Mark (EUTM) No. 10168441 cancelled. Read on to hear how they did it. On 20 March 2012, Tecnica Group SpA’s 3-D EUTM application for protection of the Moon Boots was registered under No. 10168441 for Classes […]

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  • China joins Hague designs on 5 May 2022

    4 May 2022

    China can be designated in new Hague International design filings from 5 May 2022. What does this mean? Designs can now be protected in China and other countries of the Hague system, including the EU, Japan, Korea, the US and the UK, in one application. This will be of benefit to international applicants and Chinese […]

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  • China joins Hague International designs system

    8 February 2022

    China has now ratified the Hague Agreement for the International Registration of Industrial Designs. This means that from 5 May 2022 China 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 Property Office and […]

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  • UPC reason ten: Simplicity

    2 February 2022

    The unitary patent (UP) system offers much greater simplicity for users. Instead of having to validate and renew a granted European patent on a country-by-country basis, innovators would be able to achieve the same protection with a single Unitary Patent maintained by a single renewal fee. That means fewer deadlines to remember and fewer reminder […]

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  • UPC reason nine: Impressive geographical coverage

    1 February 2022

    The first Unitary Patents (UP) are expected to be registered and in effect before the end of 2022 and will cover at least 17 countries. With a population of over 300 million people and a GDP valued over $13 trillion, a Unitary Patent would cover the majority of the European Economic Area. Future Unitary Patents […]

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  • UPC reason eight: Clear court processes and timeline

    31 January 2022

    The Unitary Patent Court (UPC) would have a common process and timeline for all of its divisions throughout Europe. This would increase the clarity of procedure before the UPC and reduce complexity and delay. It means that a UPC litigator can be assured that a case brought in Stockholm would be handled the same as […]

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  • UPC reason seven: English as the primary language

    28 January 2022

    English will be the primary language of the Unitary Patent (UP) system. All UPs will have an English version. For businesses in the UK, US and other English-speaking countries, there is a clear advantage to being able to litigate in one’s mother tongue. This will be possible at all Unified Patent Court hearings. Costly translations […]

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  • UPC reason six: “Bonus” countries

    27 January 2022

    Where previously a European patent may have only been validated in, say, five EU countries, the Unitary Patent will cover at least 17 of the 27 member states for a lower cost to that of the five previously. These “bonus” countries could provide unexpected benefits to companies. Infringements can arise anytime and anywhere, so the […]

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  • UPC reason five: Quick and efficient

    26 January 2022

    The Unified Patent Court (UPC) would resolve cases much more quickly than is possible under the current system. If a case is brought, it would be processed, and a judgment passed down within a year. This means that businesses can bring their cases to court more quickly if needed. The Court also intends to hear […]

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  • UPC reason four: Great for SMEs

    25 January 2022

    SMEs can greatly benefit from the Unitary Patent (UP) and the UPC. Not only does the UP provide substantial savings on renewal fees across the entire (at least) 17 UP territories, but the UPC also offers several other benefits to SMEs. Firstly, the UPC offers a centralised approach for European IP disputes (substantially cheaper than […]

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  • UPC reason three: Well-run Unified Patent Court

    24 January 2022

    It is expected that the Unified Patent Court (UPC) would provide robust decisions as a result of the standardised practices between divisions and the diverse and well-trained pool of judges. This ensures that issues can be expertly tried, and decisions relied upon in territories previously unaccustomed to handling large volumes of patent litigation. This consistency […]

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  • UPC reason two: Pan-European enforcement

    21 January 2022

    Firstly, the use of a single court system avoids the scenario of different courts in different countries reaching conflicting opinions on the issue of infringement. Even more appealingly, as the Unitary Patent (UP) covers a large number of European territories, it would be possible to use the court to seek relief for infringing activities happening […]

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  • UPC reason one: Cost-effective system

    20 January 2022

    The Unitary Patent system would be cost effective for everyone. It becomes cheaper per country when compared to the traditional bundle of European patents as you seek to protect your invention in an increasing number of countries. Specifically, the annual cost of renewing a Unitary Patent would be equivalent to the cost of renewing individual […]

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  • The Provisional Application Period of the UPC has begun

    19 January 2022

    On 18th January, Austria deposited its instrument of ratification of the Protocol on the Provisional Application of the Unified Patent Court Agreement (UPCA). Since Austria was the 13th country to do so, this protocol has now entered into force, such that many of the articles of the UPCA have now entered into “provisional application”.  This […]

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  • Slovenia ratifies the UPCA

    19 October 2021

    On 15 October, Slovenia deposited its ratification the Agreement on a Unified Patent Court (UPCA), bringing the total number of ratifications to sixteen. As it stands, applicants will be able to protect their inventions in at least 17 countries (the existing 16 plus Germany) with a single Unitary Patent (UP) when the system is implemented. […]

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  • Chemical Purity at the EPO

    14 October 2021

    Purifying a compound or polymer is an important step during product development, with seemingly small changes potentially having a pronounced effect on product performance.  Yet chemical purity is often overlooked as a source of patentable inventions.  ‘Purity patents’ can, however, be used to extend the patent lifecycle for a product many years beyond expiry of […]

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  • Brexit – the changes you still need to know about

    30 September 2021

    The Brexit transition period came to an end on 31 December 2020 and the real effects on IP rights of the UK leaving the EU took effect from 1 January 2021. For detailed questions, your Withers & Rogers patent, trade mark or design attorney can advise you on specific cases. The brief message is that […]

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  • UPC Preparatory Committee Announce Timetable

    19 August 2021

    With the recent announcement that German President has approved the UPC (Unified Patent Court) agreement, the UPC preparatory committee has announced estimated timings for the start of UPC operations. The committee has indicated that it currently expects the UPC to commence operations around mid-2022. Before the UPC becomes fully operational it will first enter a […]

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  • Germany approves ratification of UPC Agreement

    13 August 2021

    German President, Frank-Walter Steinmeier, has now approved the UPC (Unified Patent Court) agreement. This constitutes the final step for the UPC agreement to be brought into German law. The UPC will allow companies and inventors to protect their inventions in at least 16 EU countries in a single court action should the system be implemented. The […]

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  • Plant Breeders’ Rights

    4 August 2021

    Plant Breeders’ Rights (PBRs) are rights granted to the breeder of a new variety of plant to give the breeder exclusive control over the propagating material (including seeds, cuttings, divisions and tissue culture) and harvested material (cut flowers, fruit, foliage) of the new variety. Acts done by third parties for non-commercial, private or experimental purposes or for the purpose of breeding a new variety […]

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  • Patent filings rocket in the space industry

    27 July 2021

    A new study conducted by the European Patent Office (EPO) and the European Space Policy Institute (ESPI) in collaboration with the European Space Agency (ESA) has found overwhelming levels of growth in terms of patent filings in the space industry. The report shows that since 2010, the number of patent families being filed each year […]

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  • Patenting Animals, Plants, Stem Cells and Microorganisms

    21 July 2021

    Inventions in biotechnology are subject to the same requirements as any other invention, i.e. they must be novel, inventive and industrially applicable. However due to the ethical implications of technology in this field there are some specific exclusions to patentability that apply. Animals and Plants Plant or animal varieties or essentially biological processes for the […]

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  • Football and patents

    9 July 2021

    As the UEFA Euro 2020 and Copa América come to their conclusion, the use of technology on and beyond the pitch is more common than ever. It’s worth having a look at some of the patents protecting the latest innovations, from VAR and player tracking, to football balls and football shoes. The Video Assistant Referee […]

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  • Amendments to the PatModG

    8 July 2021

    Now that the last reform of Intellectual Property by the Act on the Simplification and Modernisation of German Patent Law was more than 10 years ago, it was time to review whether the current legal regulations still meet the requirements that effective and balanced protection of Intellectual Property Rights demands. In patent and utility model […]

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  • When are Diagnostic Methods Patentable at the EPO?

    7 July 2021

    Both the European Patent Convention (EPC) and the UK Patents Act prohibit the patenting of diagnostic methods practised on the human or animal body[1]. The intention behind this exclusion is to avoid patent infringement being a concern for medical and veterinary practitioners when carrying out diagnostic examinations. However, in practice the exclusion is interpreted quite […]

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  • Patent Term Extension

    23 June 2021

    Patent Term Extension – Supplementary Protection Certificates A Supplementary Protection Certificate (SPC) is a special extension to the period of protection provided by a patent. SPCs are only available for patents relating to active ingredients in medicinal, veterinary or plant protection products. The purpose of an SPC is to compensate the patent holder for the […]

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  • Plausibility – An Important Consideration

    9 June 2021

    The concept of plausibility is not mentioned in either the UK Patents Act or the European Patent Convention. However, it has become an increasingly common talking point and has featured in numerous decisions of both the UK courts and the Boards of Appeal of the European Patent Office. The requirement for “plausibility” can be considered […]

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  • Important to know your enemies? Not according to the EPO.

    14 May 2021

    Ever been attacked by a “straw man”? No? Well that might be because this normally happens only in horror movies. Nevertheless, to a patent attorney this could be a real possibility when representing clients in opposition proceedings at the EPO. It has long been established in EPO case law that an opposition against a European […]

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  • Protecting antibodies

    12 May 2021

    The fundamental importance of antibodies can be seen in the pharmaceutical industry’s response to the Covid-19 pandemic. Antibodies are a vital part of the adaptive immune system, enabling the recognition of a plethora of different antigens. In healthcare, the specific binding of antibodies to a particular target protein means that they are also immensely important […]

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  • What’s in a chemical claim?

    10 May 2021

    If you’re reading this article you will probably know that it is a patent claim that defines the monopoly sought. Because of this, it is often regarded as the most important part of a patent application and whilst this may or may not be true, it is certain that the claims are subject to the […]

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  • Zoom-ing towards an IP crash?

    15 March 2021

    Nick Wallin is a Partner at Withers & Rogers and head of our Electronics, Computing & Physics group. He recently shared his thoughts with Computing about how a lack of IP protection could make Zoom’s success short-lived. In the space of just a few weeks in the Spring of last year, video conferencing platform Zoom […]

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  • All software patents are equal! – EPO Decision G1/19

    12 March 2021

    A recent judgement relating to software patents has put to rest earlier concerns about the law being of an Orwellian nature similar to… ‘All software patents are equal – but some software patents are more equal than others.’ The G1/19 decision by the European Patent Office issued on 10 March gives absolute clarity on a […]

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  • Claiming Priority at the EPO

    10 March 2021

    It is important to ensure that a patent application correctly claims priority.  There have been a number of cases before the EPO where this has not been done and the priority date has been lost, resulting in the application being refused, or the granted patent being revoked, due to prior art published during the priority […]

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  • UK Budget – tackle corporation tax with Patent Box

    4 March 2021

    In our previous article ‘UK companies still overpaying corporation tax’, we examined the slow uptake of the Patent Box scheme and how UK-based businesses are still missing out on significant corporate tax savings. As the Chancellor of the Exchequer, Rishi Sunak, unveiled his 2021 budget, it became evident that the Patent Box scheme could now […]

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  • UK companies still overpaying corporation tax

    16 February 2021

    Data1 recently released by HMRC indicates that relief claimed under the Patent Box scheme in the 2018-2019 fiscal year increased by only 2.6% from the previous year, suggesting that companies are still missing out on huge savings in corporation tax. What is the Patent Box scheme? The Patent Box enables companies who have patented their […]

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  • When is a Selection not a Selection?

    14 February 2021

    One of the requirements for an invention to be patentable before the EPO is that the invention is novel. Novelty over a prior art disclosure is commonly conferred by the presence of at least one feature which is not disclosed in the relevant prior art document. However, this is not the only method. For example, […]

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  • Sufficiency and chocolate teapots: Illumina v MGI

    9 February 2021

    Last June saw the UK Supreme Court in Regeneron v Kymab overturn a decision from the Court of Appeal on sufficiency. They raised the bar to require that the disclosure of a patent supports substantially every embodiment of the claims (for our previous report of this case, see here). We have now seen the first […]

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  • Brexit: The end of the transition period

    4 January 2021

    The Brexit transition period came to an end on 31 December 2020 and changes to IP rights started to take effect on 1 January 2021. As a European firm, we can continue to cater for your needs in both the EU and the UK. There’s no need to change how you interact with us to […]

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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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  • 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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  • 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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  • 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 (phorler@withersrogers.com; +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 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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  • 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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