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European and UK Patent and Trade Mark Attorneys

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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.

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News

24 November 2021

EPO Further Extends Videoconference for Opposition Division Oral Proceedings until 31 May 2022

The EPO has announced that it is further extending the use of videoconference for opposition division oral proceedings until 31 May 2022. The current measures, whereby all opposition division oral proceedings take place by videoconference, were due to expire on 31 January 2022. We understand that this announcement means that no opposition division oral proceedings will take place in-person until after 31 May 2022.  These measures do not apply to the Boards of Appeal, who resumed in-person oral proceedings in Munich to a limited extent on 18 May 2020 and are currently conducting both in-person oral proceedings and videoconference oral proceedings, on...

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24 November 2021

Measures Being Taken by EPO, EUIPO, WIPO and UK IPO in Relation to COVID-19 Pandemic

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...

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22 November 2021

Current Patenting Issues in Europe Facing Life Sciences/Biotech Innovators and Effective Claim Drafting Strategies to Avoid Pitfalls

This paper was originally submitted to the American Intellectual Property Law Association (AIPLA) ahead of its 2021 Annual Meeting and was the subject of a presentation at a plenary session there on 28 October 2021. The author, Andrew Bentham , is a partner in the Biotechnology and Life Sciences group of J A Kemp LLP (Cambridge, UK). If you wish to discuss any of the issues covered in the paper, please feel free to contact Andy direct. Current Patenting Issues in Europe Facing Life Sciences/Biotech Innovators and Effective Claim Drafting Strategies to Avoid Pitfalls

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11 November 2021

DABUS Team Seeks Permission for Further Appeal

As previously reported, the UK Court of Appeal rejected an attempt to name a computer system (DABUS) as an inventor on a UK patent application. As suggested in that report, and unsurprisingly given the widespread attempts by the DABUS team to gain acceptance of computer inventors (and indeed the hype that they have sought to generate around these cases), we understand that the applicants have now applied to the Supreme Court for permission to appeal that decision. Whilst the applicants may be encouraged by the “split” in the Court of Appeal decision, an appeal to the Supreme Court would represent...

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29 October 2021

Written Decision Referring Questions Concerning the Doctrine of Plausibility to the Enlarged Board of Appeal in G2/21 Now Available

We reported in August 2021 that the EPO’s Enlarged Board of Appeal (EBA) would be considering the doctrine of plausibility at the EPO. The written decision of Board of Appeal making the referral is now available (see here), and the referral has been assigned the number G2/21. The final questions referred to the EBA are as follows: “If for acknowledgement of inventive step the patent proprietor relies on a technical effect and has submitted evidence, such as experimental data, to prove such an effect, this evidence not having been public before the filing date of the patent in suit and having...

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29 October 2021

UPC Preparatory Committee Suggests a Declaration can clear the Path to the UPC

Commentators have been concerned that implementation of the Unitary Patent (UP), which is intended to be a single patent right having effect in the territory of participating EU members, overseen by the Unified Patent Court (UPC), could be delayed due to the UK’s withdrawal. This is because of the express mention of the UK and London in the Unified Patent Court Agreement (UPCA), the Protocol for Provisional Application (PPA) and the Protocol on Privileges and Immunities (PPI), all of which need to come into force in order for the project to go ahead. The UK has indicated that it will...

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28 October 2021

EPO Issues Written Decision in G1/21 Concerning Videoconference Oral Proceedings

The EPO’s Enlarged Board of Appeal (EBA) has today issued its written decision in case G1/21, which concerns the legality of holding oral proceedings by video conference without the consent of the parties. As previously reported (see here), the EBA issued an order (without detailed reasoning) in July 2021, which stated: “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 proceedings have given their...

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21 October 2021

J A Kemp Retains its Top Tier Ranking in Chambers and Partners 2022

J A Kemp has been listed in the top tier of Patent and Trade Mark Firms in the 2022 edition of Chambers and Partners. Clients commented: "J A Kemp have been outstandingly good tactically, strategically and operationally. They manage patent prosecution matters efficiently and effectively." They went on to say that the firm’s attorneys are "Very good technically and on top of their subject."  An interviewee said the team is "packed with brilliant people and the firm offers dedicated practitioners who are at the top of their cases," adding: "The team goes straight to the core of the matter, providing clear and concise advice informed by a deep understanding of...

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19 October 2021

Another Step Closer to the Unitary Patent

The EU “unitary patent” took a step closer to being established on 15 October when a further EU state ratified the preparatory protocol. The EU unitary patent is intended to be a single patent right having effect in the territory of the participating EU members, overseen by a new Unified Patent Court (UPC). According to the Preparatory Committee of the Unified Patent Court, Slovenia has become the twelfth state to ratify the Protocol on the Provisional Application of the UPC Agreement (PAP-Protocol) and the sixteenth state to ratify the UPC Agreement. The PAP-Protocol brings certain aspects of the UPC Agreement into...

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12 October 2021

UK Court Rules Apple Must Unconditionally Commit to a FRAND License to Avoid an Injunction

In a recent judgment (Optis Cellular Technology LLC & Ors v Apple Retail UK Ltd & Ors [2021] EWHC 2564 (Pat), 27 September 2021), Meade J, sitting in the England and Wales High Court, gave a decision in a series of trials relating to eight of Optis’s patents in the field of telecommunications.  Each of these patents is asserted to be a standard-essential patent (SEP) and was declared to the European Telecommunications Standard Institute (ETSI). In two of the earlier trials (Trials A and B), it was found that Apple did indeed infringe two of Optis’s SEPs.  The present decision (Trial...

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30 September 2021

J A Kemp Ranked in the Top Tier for Patents and Trade Marks in The Legal 500 2022

J A Kemp continues to be ranked in the top tier for both patents and trade marks by Legal 500. The 2022 edition of the guide also recommends seventeen J A Kemp partners. The guide quoted comments from patent clients, who said: ‘The team’s client commitment is outstanding. They combine high-level legal expertise with practical and business sense.’ and ‘They are great strategic advisers in the field of IP. We typically work with one partner, however, the firm has various attorneys on board with specific expertise in certain areas. And these can be swiftly pulled on board – if the case...

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28 September 2021

Important Step Forward for UPC as Germany Ratifies PAP-Protocol

Following rejection of the constitutional challenge against Germany’s participation in the Unified Patent Court (UPC) reported here, on 27 September 2021 Germany ratified the Protocol on the Provisional Application of the UPC Agreement (PAP-Protocol). The PAP-Protocol brings certain aspects of the UPC Agreement into force provisionally, allowing the UPC to be set up as an institution before the UPC system itself is fully operational. This includes the recruitment of judges and budgeting arrangements for the court. Two further countries are required to ratify the PAP-Protocol before the phase of provisional application of the UPC agreement can officially start. It has been...

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What's Your Business?

Why Choose Us?

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.

Managing Intellectual Property

J A Kemp was awarded "Best UK Patent Prosecution Firm" at the Managing Intellectual Property Awards 2020.

Chambers and Partners

 "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."

IAM Patent 1000

"Unified team culture, deep concentration of technical expertise and ability to effortlessly switch to another gear in times of extreme need.”

Managing Intellectual Property

“J A Kemp is second to none in my experience.”

Overseas Attorney Firm

"I don’t work with anyone as good.  I recommend J A Kemp because it’s good for my clients."

J A Kemp Client

"If I want an opinion I’ll go with J A Kemp."

Chambers and Partners

"They identify with our priorities, are immediately responsive and generate confidence in their technical ability."

World Trademark Review 1000

“A very sharp firm, nimble on its feet and able to really deliver, J A Kemp is timely, professional and excellent value for money.”

Managing Intellectual Property

"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." 

IAM Patent 1000

"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."

Chambers and Partners

"I am really impressed with them.  The team is very proactive, strategic and thinks about the best way to move forward."

The Legal 500

"J A Kemp’s team of trade mark attorneys are true experts and above all extremely commercial."  

IAM Patent 1000

"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 Client

"J A Kemp gives good, clear, commercial recommendations."

Overseas Attorney Firm

"J A Kemp is my preferred firm because the level of service and understanding of the client’s technology is great."

World Trademark Review 1000

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 Client

"J A Kemp has a very 'can do' attitude for jobs which are complex."

Overseas Attorney Firm

"These are some of the most detailed and thorough instructions that I have ever seen. They evidence a keen understanding of US practice."

IAM Patent 1000

"J A Kemp is extremely knowledgeable and does a fantastic job."

Overseas Attorney Firm

"I cannot thank you enough for your expert advice and careful strategic thinking in this matter."

J A Kemp Client

"We want the best protection available and I give J A Kemp the highest marks possible."

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