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Find out about the Unitary Patent and the Unified Patent Court here.
13 May 2022
Technical Board of Appeal 3.5.07 has now applied the opinion given by the Enlarged Board of Appeal in G 1/19 (discussed in our Briefing here) to the pedestrian simulation application where the referral was made. As reported in our roundup of decisions in 2021, the Technical Board decided at oral proceedings in November 2021 to refuse the pedestrian simulation application but the reasoned decisions have only been published in the last few weeks. The applicant made a very thorough effort to obtain some protection for their invention, filing a total of eleven requests covering several different approaches to defining technical...
12 May 2022
Those following the widespread (and largely unsuccessful) attempts of the “DABUS” legal team in attempting to get an AI machine recognised as an inventor by patent offices will recall that their only real success to date came in Australia where the Federal Court decided that DABUS could be validly recognised as an inventor (see our earlier report). However, now even that ray of light appears to have been blocked out as the Full Federal Court has reversed that decision. After substantial analysis of the statutory background to the requirement to name an inventor, the five judges found unanimously that “only a...
27 April 2022
J A Kemp’s Cambridge office has won the “Intellectual Property/IT Team of the Year” category in the Cambridgeshire Law Society (CLS) Legal Excellence Awards 2022. The category included IP teams in large law firms as well as specialist patent and trade mark firms like J A Kemp. The award was sponsored by AstraZeneca. In addition to the firm award, recently promoted J A Kemp partner, Joe Simon-Brown was ‘highly commended’ in the rising star category.
8 April 2022
A recent Decision of Technical Board of Appeal 3.5.01, T 0550/14 (Catastrophe relief/SWISS RE) of 14.9.2021, discusses the approach Examination and Opposition Divisions should take to raising objections of non-technical subject matter and the detail they must provide to support such objections. Significantly, the Board states that the Division is entitled to raise an objection that a feature or problem is prima facie non-technical supported only by the assertion that it lies in one of the excluded matters listed in EPC Art 52(2) “or a related or analogous field”. Thereafter, the burden of proving that the feature or problem is...
7 April 2022
WTR 1000, the guide that identifies the top trade mark professionals in key jurisdictions around the globe, has called J A Kemp “One of the most reputable firms in the UK.” in its latest edition. It goes on to recognise that the firm “serves a prestigious client base which includes a significant number of US and Japanese names; while its separate French entity ensures it can still act before the EUIPO and prosecute trade marks across the continent post Brexit.” Five J A Kemp attorneys are singled out for praise. Head of the group, James Fish, is “a formidable operator … always an...
6 April 2022
The EPO has announced that it is once again extending the use of video conference for opposition division oral proceedings. The current measures, whereby all opposition division oral proceedings take place by video conference, were due to expire on 31 May 2022. We understand that this announcement means that no opposition division oral proceedings will take place in-person until after 31 December 2022. These measures do not apply to the Boards of Appeal, who continue to conduct both in person oral proceedings and video conference oral proceedings, on a case by case basis. For more information on video conference oral proceedings at...
6 April 2022
J A Kemp is pleased to announce the promotion of two associates to the position of partner.Joe Simon-Brown is a member of the firm’s Engineering and IT Group and started his career in London before joining the Cambridge team in 2018 to help service the firm’s client base there. Joe is passionate about supporting growing businesses and is involved with various programmes within the start-up ecosystem in Cambridge. With a technical background in physics, he covers a wide range of technical areas including software, scientific instruments, medical devices, and aerospace. Joe also frequently works on cases with an element of...
18 March 2022
The government of the Russian Federation has adopted on 7 March 2022 a decree which provides that no compensation is payable when a patent, utility model or industrial design is subjected to a compulsory license, if the proprietor is from a country carrying out “unfriendly activities”. The list of countries deemed to be carrying out “unfriendly” activities in relation to the Russian Federation was published on 5 March 2022, and includes 48 states. The list includes the United Kingdom, all of the member states of the European Union, several other European countries, the United States of America, Japan, South Korea,...
7 March 2022
Just over 3 months after we reported a referral from the Finnish Market Court concerning Article 3(c) for combination products (see our news item, here), the Irish Supreme Court has now made its own, similar referral. Both the Finnish and Irish referrals involve Merck Sharp & Dohme Corp as the SPC holder, although the Irish case is concerned with a different product (Inegy® - a combination of ezetimibe and simvastatin), patent (EP0720599), and respondent (Clonmel Healthcare Limited). In essence, and similar to their colleagues in Finland, the Irish court has identified that there is tension between the definition and interpretation of...
2 March 2022
If you are holding or applying for patents granted by the European Patent Office (EPO), you should ensure that you are well-informed about a major change to European patent law which is expected to come into being late in 2022 or in early 2023. The anticipated introduction of the Unified Patent Court (UPC) and Unitary Patent (UP) is expected to present opportunities and challenges regarding costs, territorial scope of protection, litigation speed and legal certainty across a part of Europe. The introduction of the Unitary Patent and the Unified Patent Court will affect all holders of existing European Patents. It will...
22 February 2022
The 2022 edition of the EPO’s Guidelines for Examination will come into force on 1 March 2022. A preview of the 2022 Guidelines has been published and can be found here. Amendments have been made to all eight parts of the Guidelines, with the aim of bringing the text into line with current practice and recent Board of Appeal and Enlarged Board of Appeal decisions. We reported last year on a number of changes made in the 2021 Guidelines to the sections discussing adaptation of the description for conformity with the claims. These changes appeared to be requiring a more extensive revision...
14 February 2022
On 5 February 2022 China announced it is joining the Hague System for International Registration of Industrial Designs. From 5 May 2022, Applicants will be able to designate China as part of an International Design Application along with other major jurisdictions that include the USA, EU, UK, Japan and Canada. The announcement also states that the Chinese office have made Declarations requiring that an Application must meet the need for unity of design and provides an explanation of the characteristic features of the design. Specific views of the design must also be provided. Further information as to the full list...
We set great store by what our clients say about us. These comments are all from leading legal and IP directories or provided directly by our clients.
J A Kemp was awarded "Best UK Patent Prosecution Firm" at the Managing Intellectual Property Awards 2020.
"J A Kemp demonstrates excellent technical prowess matched by legal sophistication. Unlike many other European patent attorneys, I view the partners there as collaborators rather than as service providers."
"Unified team culture, deep concentration of technical expertise and ability to effortlessly switch to another gear in times of extreme need.”
“J A Kemp is second to none in my experience.”
"I don’t work with anyone as good. I recommend J A Kemp because it’s good for my clients."
"If I want an opinion I’ll go with J A Kemp."
"They identify with our priorities, are immediately responsive and generate confidence in their technical ability."
“A very sharp firm, nimble on its feet and able to really deliver, J A Kemp is timely, professional and excellent value for money.”
"Clients are most impressed with the work of J A Kemp. The team are highly responsive, intensely hard-working, and uniformly thoughtful in their handling of prosecution and post-prosecution matters (e.g. oppositions). They are proactive and induce a high degree of confidence."
"J A Kemp offers some of the finest patent services in Europe, delivers cast-iron protection for inventions of all types and conducts sterling opposition and appeal work at the EPO."
"I am really impressed with them. The team is very proactive, strategic and thinks about the best way to move forward."
"J A Kemp’s team of trade mark attorneys are true experts and above all extremely commercial."
"The whole team is extremely knowledgeable of the underlying subject matter and also of EU patent practice - they do a valuable analysis of the specifications to optimise the patent’s strength."
"J A Kemp gives good, clear, commercial recommendations."
"J A Kemp is my preferred firm because the level of service and understanding of the client’s technology is great."
J A Kemp is "a go-to for UK and European trademark matters – its expert practitioners provide practical advice quickly and for a fair price, and impress at every turn".
"J A Kemp has a very 'can do' attitude for jobs which are complex."
"These are some of the most detailed and thorough instructions that I have ever seen. They evidence a keen understanding of US practice."
"J A Kemp is extremely knowledgeable and does a fantastic job."
"I cannot thank you enough for your expert advice and careful strategic thinking in this matter."
"We want the best protection available and I give J A Kemp the highest marks possible."