You are here: Home > Knowledge bank > News
  • 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 […]

    Read more >
  • 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  The patent in question, EP2771468, which was granted to the Broad Institute, MIT and Harvard University was revoked after the filing of nine oppositions.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 […]

    Read more >
  • 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) […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • SPCs can be used for compounds hidden within generic claims

    23 May 2017

    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) where there is a generic claim that covers the product and (b) where the product embodies the technical advance of the […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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, […]

    Read more >
  • 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. […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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, […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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 […]

    Read more >
  • 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. […]

    Read more >
  • 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, […]

    Read more >
  • 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, […]

    Read more >
  • Final UPC court fees announced

    26 February 2016

    The UPC Preparatory Committee has today announced the finalised court fees, including some notable changes. Now that much of the procedure for opting out of the UPC has been finalised, the committee has recognised that the administrative burden involved in processing a request to opt out would not be as complex as first anticipated.  As […]

    Read more >
  • Brexit – the UK’s referendum on staying in the European Union

    26 February 2016

    The UK’s Prime Minister David Cameron recently announced that a referendum will be held on 23 June 2016 to decide whether the UK will remain a member of the European Union. It is widely expected that the UK will vote to remain in the EU, but we are happy to confirm that, regardless of the […]

    Read more >
  • Court of Appeal Rejects Rovi’s Claim Construction

    27 January 2016

    Claim language remains all important in determining the scope of protection of a granted patent. Whilst the disclosure of the patent as a whole should be considered in order to understand a claimed invention, it is the specific language that is used in the claims that sets out the scope of the protection. In the […]

    Read more >
  • Finland becomes ninth country to ratify UPC Agreement

    21 January 2016

    On 19 January 2016, Finland deposited its instrument of ratification, becoming the ninth country to ratify the Unified Patent Court (UPC) Agreement. This means that only four more countries, including the UK and Germany, are required to ratify the Agreement before it takes effect. Please see our updated UP and UPC pages for the latest […]

    Read more >
  • EU Trade Mark Law Reform

    18 January 2016

    The European Council has published news of impending changes to the Community Trade Mark Regulation and a new Trade Mark Directive, most of which will come into effect in March 2016. The changes do away with some of the idiosyncrasies which have made European trade mark law less accessible to the non-professional public. Most saliently, […]

    Read more >
  • Medical Use Claims – The More the Better after all?

    4 January 2016

    It has been common drafting practice to include both pre-EPC 2000 Swiss-type claims and post-EPC 2000 purpose-limited second medical use claims in the same patent application.  Once again, whether this is allowable or not, has been considered by the EPO Boards of Appeal. At the start of last year we reported to you that the […]

    Read more >
  • UK Government publishes draft legislation on ‘Patent Box II’

    1 January 2016

    Patent Box is a UK tax scheme whereby UK companies pay a reduced rate of corporation tax on profits generated from patented technology.  Shortly after the scheme came into effect in April 2013 it came under attack from foreign governments and this led to the Organisation for Economic Co-operation and Development (OECD) issuing its requirements […]

    Read more >
  • IP Review Autumn 2015

    19 November 2015

    Our latest IP Review is now available online here: www.withersrogers.com/ebrochure/ip-review/autumn-2015/ In this issue we report on some interesting developments, including a wave of altruism that has swept over some of the world’s best known companies in recent times, changes in US practice that affect the patentability of biodiagnostics, and recent developments in China to strengthen its […]

    Read more >
  • Patent Box consultation reassures UK businesses

    23 October 2015

    A government consultation opened on 22 October on the Patent Box Scheme and will run until December 4 2015. The aim is to ensure that the UK’s tax regimes comply with the Organisation for Economic Cooperation and Development’s (OECD) recommendations. According to patent attorney, Michael Jaeger: “The launch of the consultation is welcome news as […]

    Read more >
  • Another step forward for the Unified Patent Court

    9 October 2015

    On Thursday 1 October 2015, seven EU Member States, including the UK, France and Germany, signed the Protocol to the Agreement on a Unified Patent Court (UPC) on provisional application. This Protocol allows for the implementing of IT systems and recruitment of judges as well as other key provisions which must be completed before the […]

    Read more >
  • Italy joins Unitary Patent

    7 October 2015

    The European Commission confirmed on 30 September 2015 that Italy has become the 26th state to join the enhanced cooperation of the Unitary Patent protection. Given Italy’s previous reluctance to join, including pursuing a legal challenge against the Unitary Patent, this is a major success for the future of the Unitary Patent and the Unified […]

    Read more >
  • Portugal becomes eighth country to ratify UPC Agreement

    2 September 2015

    After completing the required formalities on 28 August 2015, Portugal became the latest country to ratify the UPC agreement, bringing the total number to eight. In order for the Unified Patent Court and the Unitary Patent to come into effect, 13 EU countries must ratify the Agreement, including the three largest member states in terms […]

    Read more >
  • Wind turbine speed control patent win for Siemens AG

    6 August 2015

    Wobben Properties, the IP holding company of Germany’s Enercon – the world’s 4th largest wind turbine manufacturer, holds a European patent on Enercon’s Storm Control technology relating to a method of operating a wind turbine. Wobben asserted that Siemen’s High Wind Ride Through (HWRT) technology installed in turbines in the UK infringed their patent, to […]

    Read more >
  • Court of Appeal overturns cross jurisdiction award of DNIs to Actavis

    27 July 2015

    Last year we reported the decision of the UK High Court in the case of Actavis v Lilly, concerning the anti-cancer drug pemetrexed disodium (see here). To recap briefly, the UK High Court ruled that Actavis’ pemetrexed dipotassium product did not infringe Lilly’s patent directed to pemetrexed disodium either under direct infringement, or under indirect […]

    Read more >
  • Can a FRAND SEP stop ZTE? The CJEU rules on the rules

    22 July 2015

    The CJEU has set out criteria to determine when the owner of a FRAND encumbered patent may seek an injunction when the owner is in a dominant market position. Significantly, a patent owner in that position is now required to offer a licence at a specific royalty to the infringer before seeking an injunction. This […]

    Read more >
  • EPO grant procedure more efficient as of 1 July 2015

    21 July 2015

    The EPO recently announced slight changes (found here) to the procedure regarding Rule 71(3) EPC communications, which allows an applicant a final opportunity to amend or correct their application before grant. Prior to 1 July 2015, when an applicant responded to a R71(3) communication with amendments, a new R71(3) communication had to be issued if […]

    Read more >
  • Scope of protection: around and around the numbers

    21 July 2015

    In the recent case of Smith & Nephew Plc v ConvaTec Technologies Inc (see here), the Court of Appeal issued an interesting decision concerning how the boundaries of a range in a claim should be interpreted. In a surprise move, they concluded that a claimed range of “between 1{e27634494e39db391c4a3c1babcce9c96667e0da0c02f00a98e80c871bbff07c} and 25{e27634494e39db391c4a3c1babcce9c96667e0da0c02f00a98e80c871bbff07c}” of an agent should […]

    Read more >
  • See our Summer IP review for the latest news and developments

    3 July 2015

    Please click on the link below for our Summer 2015 client magazine – IP Review. IP Review – Summer 2015 Older editions can be found here. We hope you find the publication interesting. If you would like to discuss any of the issues raised in the magazine or any intellectual property matter, please contact us. […]

    Read more >
  • The select committee adopts the “true top 4” fee proposal for the Unitary Patent

    25 June 2015

    On Wednesday, the EPO announced that the Select Committee of the Administrative Council had adopted the “True Top 4” proposal tabled by the European Patent Office on renewal fees applicable to the unitary patent. The “True Top 4” proposal, as we explained here, fixes the unitary patent renewal fees at levels equal to the sum […]

    Read more >
  • ECJ decision is victory for Lego’s round-headed men

    23 June 2015

    The European Court of Justice (ECJ) has ruled that the shape of the famous Lego man is still a protected trade mark after a rival firm challenged the registration. In September 2010, the ECJ rejected Lego’s appeal to protect a trade mark registration for its eight-studded bricks following a legal challenge brought by rival company, […]

    Read more >
  • First mover advantage valued highly by the Court of Appeal

    17 June 2015

    In a recent decision the Court of Appeal upheld the finding of the Patents Court that the claimant, Astra Zeneca (AZ), should pay £27 million in damages to the defendants Krka and Consilient, as settlement of a cross-undertaking that AZ agreed to, as part of an interim injunction. This is said to be the largest […]

    Read more >
  • A departure from established UK case law on passing off? Not NOW, says UK Supreme Court

    15 June 2015

    Where an undertaking has no paying customers in the UK for goods sold under a mark and therefore no goodwill, can a claim for passing off succeed on the basis of the mark’s reputation alone? This was the focus of a recent Supreme Court decision, a matter, as the presiding judge Lord Neuberger reflected, “of […]

    Read more >
  • Innovative relief for second medical use patent holders

    8 June 2015

    In ongoing UK High Court litigation between Warner-Lambert and Actavis, Mr Justice Arnold has taken the unprecedented step of granting an order mandating the National Health Service (NHS) to issue guidance to doctors and pharmacists that the drug pregablin must only be prescribed for the treatment of neuropathic pain (a patented indication) under the brand […]

    Read more >
  • The EPO’s Unitary Patent adjusted fee proposal

    29 May 2015

    On 7 May 2015, the President of the European Patent Office, Benoît Battistelli, submitted an adjusted proposal for the renewal fees of the Unitary Patent for review by the Select Committee of the Administrative Council. The document, found here, begins with a brief discussion of the previous proposal. The first option in the previous proposal […]

    Read more >
  • Streamlined global design rights protection becomes a reality as the US and Japan sign up to the Hague System

    19 May 2015

    A streamlined system for protecting industrial designs globally has been bolstered by the addition of two major markets – the US and Japan. With effect from 13 May 2015, the US and Japan have become official members of the Hague system, which allows applicants to protect their industrial designs in multiple countries simultaneously and cost-effectively. […]

    Read more >
  • UPC fees and recoverable costs

    8 May 2015

    Public consultation opened today regarding the court fees and recoverable costs at the Unitary Patent Court. The consultation period shall last 12 weeks, closing at midnight on 31 July. Responses should be sent to secretariat@unified-patent-court.org, preferably in English. We’ve picked out some key points from the document below, however, should you wish to review the consultation […]

    Read more >
  • Spanish Unitary Patent objections dismissed by CJEU

    7 May 2015

    Arguably the last major hurdle to the introduction of the Unitary Patent was overcome Tuesday as the Court of Justice of the European Union (CJEU) dismissed the two challenges presented by Spain regarding a lack of compliance with EU law. Back in December 2012, Spain challenged the two Regulations which aim to govern the unitary […]

    Read more >
  • Products of essentially biological processes deemed patentable

    1 May 2015

    Please note that an important update regarding this case law can be found here. In good news for the biotech industry, the Enlarged Board of Appeal ruled in “Tomato II” and “Broccoli II” cases (G2/12 and G2/13) that the patentability exclusion for essentially biological processes does not extend to the products of those processes. By […]

    Read more >
  • TickeToGo decision opens the door to transparency in patent licensing negotiations

    1 May 2015

    In an unprecedented decision Mr Justice Arnold has ordered disclosure by a patent proprietor, TickeToGo Limited, to an alleged infringer, The Big Bus Company Limited, of patent licences issued by the patent proprietor, prior to commencement of any patent infringement proceedings between the two parties. This decision may break down the walls of secrecy that […]

    Read more >
  • Withers & Rogers life sciences team attend opening of prestigious GE Innovation Village

    27 April 2015

    Elizabeth Swan, Senior Associate in the Withers & Rogers Life Sciences and Chemistry team, will today (Monday 27 April) be attending the opening of the GE Healthcare Innovation Village. She will be attending as one of a number of leading life science specialists from industry and academia. GE Healthcare is setting up the Innovation Village […]

    Read more >
  • Withers & Rogers Partner promotion

    2 April 2015

    Withers & Rogers is pleased to announce the promotion of Denis Keseris to Partner as of 1 April 2015. Denis is a patent attorney in our Electronics, Computing & Physics group. He joined the firm in the London office in 2012 and specialises in information and communications technology, with a particular focus on optical and […]

    Read more >
  • Important lessons on unregistered design right from the fashion industry

    2 April 2015

    A recent High Court case (G-Star Raw CV v Rhodi Ltd & Others [2015] EWHC 216 (Ch)) has provided helpful guidance on the assessment of unregistered design right infringement in the UK. This case, one of few fashion designs cases that has reached the High Court in recent times, saw G-Star, a leading European denim […]

    Read more >
  • The enlarged board of appeal adds clarity

    2 April 2015

    The Enlarged Board of Appeal has recently given guidance on the extent to which amendments should be examined for clarity in EPO opposition proceedings in its decision G 3/14 (see here). In a decision that will be welcomed by patent proprietors (but not opponents), the Enlarged Board decided that the clarity of an amendment to […]

    Read more >
  • Practical advice for protecting software

    27 March 2015

    In addition to protecting software functionality through obtaining patents, it is also advisable to take the following steps to help deter and or prove copying of your code: • Machine code distribution The distribution only of machine code executed directly by a computer’s processor avoids the need to present higher level code that is more […]

    Read more >
  • Medical devices left out in the cold

    12 March 2015

    A recent decision from the EPO has confirmed that medical devices cannot be protected using second medical use claims. T773/10 concerns an appeal from an Examination Division decision to refuse a patent application for a dialysis membrane. The membrane itself was known. The applicant was attempting to get patent protection based on its new use […]

    Read more >
  • US & Japan set to join the Hague System

    16 February 2015

    The Hague System is administered by the World Intellectual Property Office (WIPO) and allows a single registered design application to be made that can designate several countries, instead of filing separate design applications in multiple countries. On 13 February 2015 the US and Japan will deposit their instruments of accession (by the Geneva Act of […]

    Read more >
  • Patentable Parthenotes

    12 February 2015

    In decision C-364/13 the CJEU classified human parthenotes, the result of artificially stimulating human egg cells to divide, as being outside the definition of embryos.  This means that parthenotes, and the stem cells that form them, are not excluded from patent protection by the European Biotechnology Directive. Ethical issues reign over questions of whether the […]

    Read more >
  • A new patent eligibility test from the USPTO – a step in the right direction?

    10 February 2015

    The USPTO has recently issued guidelines for deciding whether a claim is eligible for US patent protection. The guidelines are welcomed by those considering patenting computer-implemented inventions in the US because they clarify the brief and unclear guidance issued shortly after the US Supreme Court’s Alice Corp. v. CLS bank International decision of 19 June […]

    Read more >
  • Ruling out the prior art

    28 January 2015

    The EPO Board of Appeal decision T 1488/10 examines whether or not a feature in a figure of a prior art document can be measured to assert that a claim is not novel, if the figure appears to be to scale.   Previous case law on this matter generally indicates that schematic drawings, unlike construction […]

    Read more >
  • UK Court of Appeal orders re-trial in Interflora v M&S keyword advertising battle

    16 January 2015

    In the latest decision in the long-running dispute between Interflora and Marks and Spencer (‘M&S’), which concerns M&S’ use of the INTERFLORA trade mark in internet keyword advertising, the UK Court of Appeal (‘CoA’) has ordered that the case undergo re-trial in the High Court. In doing so, the CoA overturned Mr Justice Arnold’s (‘Arnold […]

    Read more >
  • Second medical use claims: time to drop the Swiss?

    14 January 2015

    In T1570/09, the Board of Appeal of the European Patent Office (EPO) had to decide on a claim set that included both a Swiss-type claim and a purpose-limited product claim under Article 54(5) EPC 2000. The two second medical use claims were formulated as follows (emphasis added). 1. Use of at least one member selected […]

    Read more >