You appear to be using an older version of Internet Explorer. We suggest you upgrade your browser for the best viewing experience. Upgrade to a Modern Browser
J A Kemp LLP continues to provide a full service to all clients during the pandemic. Please use email to contact the firm and, in particular, to issue any instructions. Click here for information on how disruption caused by the pandemic may affect your intellectual property rights.
19 July 2021
The EPO’s Enlarged Board of Appeal (EBA) has been considering in case G1/21 the legality of holding oral proceedings by video conference without the consent of the parties (see our earlier reports here, here, here and here). Following the postponed oral proceeding on Friday 2 July 2021, the EBA has now issued an order stating: “During a general emergency impairing the parties’ possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a videoconference is compatible with the EPC even if not all the parties to the...
9 July 2021
Two applications at the German Constitutional Court (FCC) for preliminary injunctions against German ratification of the Unified Patent Court Agreement (UPCA) have been rejected, according to today’s Press Release of the FCC. The rejection clears the path for the German Federal President to sign the bill passed by both houses of parliament in December 2020 into law. Signing of the bill is the last step necessary before the UPCA and Protocol on Provisional Application (PPA) ratifications can be deposited by Germany. The applications for preliminary injunctions were refused on the basis that the complaints lodged in the principle proceedings are inadmissible as...
5 July 2021
The EPO’s Enlarged Board of Appeal (EBA) is currently considering in case G1/21 the legality of holding oral proceedings by video conference without the consent of the parties (see our reports here, here and here). On Friday 2 July 2021, the postponed oral proceeding took place before the EBA. The appellant (opponent) initially raised further objections to the composition of the board and requested a further postponement, but after some non-public discussion these requests were rejected. The main issue of the legality of oral proceedings held by video conference without the consent of the parties involved was then discussed. The representatives of...
2 July 2021
On 29 April 2021, legislation giving powers to the UK Government to scrutinise transactions on grounds of national security (the UK National Security and Investment Act, “NSIA”) was enacted into UK law. The NSIA includes various provisions relating to mandatory and voluntary notifications of transactions that may be relevant to UK national security, including transactions relating to intellectual property (IP) in sensitive areas of technology. A formal commencement date for the notification regime put in place by the NSIA is yet to be announced but is likely to be in late 2021. Ahead of this, we here provide a brief...
22 June 2021
We reported in March 2020 that questions concerning double patenting were being considered by the Enlarged Board of Appeal in case G4/19. The Enlarged Board of Appeal has now issued its decision, which can be found here. The EPO has also provided a helpful summary of the decision here. The legal background behind the referral, and the specific questions referred, are discussed in our earlier news item. In brief, an examining division had rejected a European patent application on the basis that it claimed “100% identical” subject matter to its already-granted European priority application. The applicant was apparently pursuing this filing strategy because...
8 June 2021
The EPO’s Enlarged Board of Appeal (EBA) is currently considering in case G1/21 the legality of holding oral proceedings by video conference without the consent of the parties (see our reports here and here). Oral proceedings took place before the EBA on 28 May 2021 by video conference. However, the substantive issues were not considered during the hearing and the oral proceedings were instead postponed until 2 July 2021. The appellant (opponent) had previously objected to the composition of the EBA on the grounds of suspected partiality and, as reported here, the Chairman and a legally qualified member were replaced. On...
27 May 2021
The high court has handed down a judgement in the case Facebook v Voxer. The case concerned European Patent (UK) No. 2 393 259, entitled “Telecommunication and multimedia management method and apparatus” and forms part of an international dispute between the parties relating to the live broadcast features offered by Facebook and Instagram over iOS devices. Voxer alleged that these live broadcast features infringed the patent. The proceedings were started by Facebook as an action for revocation, denying infringement and asserting invalidity of the patent, with Voxer counterclaiming for infringement. The invention of the patent was intended to enable two modes...
24 May 2021
As reported here and here, a referral was made to the Enlarged Board of Appeal (EBA) concerning the legality of holding oral proceedings by video conference without the consent of the parties. The case is proceeding before the Enlarged Board of Appeal as G1/21, and the hearing will take place on 28 May 2021 by video conference. On 17 May 2021, 11 days before the hearing, the EBA published a decision regarding a change to the composition of the EBA panel dealing with G1/21. The published order shows the new composition of the EBA panel, i.e. that the Chairman and a...
21 May 2021
The EPO has announced that it is extending the use of video conference for opposition division oral proceedings until 31 January 2022. The current measures, whereby all opposition division oral proceedings take place by video conference, were due to expire on 15 September 2021. We understand that this announcement means that no opposition division oral proceedings will take place in-person until after 31 January 2022. These measures do not apply to the Boards of Appeal. While the Boards of Appeal have also been conducting video conference oral proceedings, they have retained the possibility of in-person oral proceedings in Munich. As we...
21 May 2021
The European Patent Office (EPO), the European Union Intellectual Property Office (EUIPO), the UK Intellectual Property Office (IPO) and the International Bureau (IB) of WIPO all remain operational and will allocate filing dates for newly filed cases and accept other submissions/fee payments as normal. However, a number of measures have been adopted by the offices to assist applicants in view of the ongoing COVID-19 pandemic. The current position at each office is discussed below. Measures Taken by the EPO The EPO is no longer applying a blanket extension of “periods”, as it did between 15 March 2020 and 2 June 2020, but...
10 May 2021
In decision T 579/19 handed down on 14 April 2021, the European General Court (EGC) has ruled that the EUIPO is wrong to require that, for a valid priority claim, a Registered Community Design (RCD) always be filed within 6 months of an earlier application. Instead, the EGC has ruled that the nature of the earlier right, from which priority is claimed, is decisive for the duration of the priority period. Whilst there is no change for RCDs claiming priority to earlier design rights, the decision means that an RCD can validly claim priority from a PCT application as long...
27 April 2021
This might sound like the start of a festive cracker joke, but is in fact the one of the main points of contention in the recent judgment, Claydon v Mzuri. The comparison was made in relation to an assessment of whether there had been a prior public disclosure during testing of a prototype agricultural seed drill. The prevailing case law, Mishan v Hozelock, relates to garden hoses. For a patent to be valid, the claimed invention must be novel over the state of the art at the time of filing. The state of the art includes any public disclosure of the...
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."