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.
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...
1 April 2021
J A Kemp is pleased to announce the promotion of two associates to the position of partner. Hermione Thompson joined J A Kemp in 2011. She has a technical background in engineering and has handled a wide range of electrical, electronic and mechanical patent cases. She has experience working in a large variety of fields, for example, those related to medical devices, software, power tools, packaging and manufacturing methods, and lithographic apparatus. Hermione often works on cases with subject matter relating to life sciences as well as engineering. In particular, she is familiar with the considerations of agricultural companies and has...
25 March 2021
Following an open consultation calling for views on the impact of AI on IP rights, the UKIPO has now issued the results of the consultation together with the government’s response in some key areas. The UKIPO issued the consultation at a time when questions regarding the development of AI systems and whether the IP system is keeping up with these developments were increasing. The responses to the consultation and the government’s opinions on these topics therefore provide an interesting insight into potential changes in the IP system in the future. The consultation was divided into four topics: 1) the aims of...
24 March 2021
We recently reported that the EPO’s Enlarged Board of Appeal has scheduled a hearing date of 28 May 2021 for the referral regarding the legality of video conference oral proceedings without the consent of one or more of the parties. The EPO has today announced (see here and here) that it will continue to hold oral proceedings by video conference as under current practice, i.e. “without requiring explicit agreement of the parties”. This outcome is perhaps not altogether surprising under the circumstances: the EPO has explained that “avoiding a further delay in access to justice is a priority”. By contrast, had...
18 March 2021
As reported here , a referral has been made to the Enlarged Board of Appeal concerning the legality of holding oral proceedings by video conference without the consent of the parties. The case is now proceeding before the Enlarged Board of Appeal as G1/21, and a hearing has been scheduled to take place on 28 May 2021 by video conference. The parties and the President of the EPO have been invited to file observations by 27 April 2021. We will continue to report on further developments.
16 March 2021
Board of Appeal 3.5.02 in appeal case T1807/15 has issued a decision referring a question to the Enlarged Board of Appeal on the legality of holding oral proceedings by video conference without the consent of the parties. As reported earlier here, doubt had been cast on whether the referral would in fact proceed, since the party who initially made the request for a referral subsequently withdrew the request. Now it has been confirmed that the referral will go ahead, and the Board of Appeal has referred the following question: “Is the conduct of oral proceedings in the form of a videoconference...
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."