Briefings

22 April 2024 general Antibodies in the European Patent Office – Advanced Guide to Drafting and Prosecution The European Patent Office (EPO) applies the same basic patentability criteria to antibodies as to other inventions. However, the high volume of applications in this area means that examiners have developed standardised approaches to assessing “antibody-specific” issues and these have been formalised in a dedicated section of the EPO’s Guidelines for Examination (G, 11, 6). For an explanation of the... Read more

22 April 2024 general Antibodies in the European Patent Office – Basic Principles Over recent years, antibodies have become increasingly important as therapeutic drugs and large numbers of patent applications are filed in this area (>1000 granted by the European Patent Office (EPO) in 2019). Whilst patentability is assessed in the same way as for any other invention, the high volume of cases means that examiners have developed standardised approaches to assessing “antibody-specific”... Read more

28 February 2024 topical Plant Variety Rights in the EU and UK Plant Variety Rights (PVRs) are available to breeders of new plant varieties that meet certain conditions. In most countries, plant varieties are not patent-eligible, so PVRs are the only IP available for new varieties. 1 However, though laws vary globally, some patent claims to plants may nonetheless be available, alongside patents and trade marks for other IP in the agricultural... Read more

19 February 2024 topical Review of EPO Software Decisions in 2023 Decisions of the EPO Board of Appeal in 2023 can largely be regarded as a continuation of the trends established in 2022. The findings of Enlarged Board Decision G1/19 from 2021 continue to dominate, with an emphasis on the whole scope of the claim having a technical effect and some popular earlier precedents being overruled. Although we have not collected... Read more

22 January 2024 topical Biological Deposits: Strategic Considerations It is a fundamental requirement of patent law that, in exchange for a monopoly right, a patent must disclose the claimed invention in sufficient detail to allow a person skilled in the relevant technical field to reproduce the invention. This requirement is known as sufficiency of disclosure in European practice and enablement in the US. Therefore, a biological deposit is... Read more

19 December 2023 topical AI Patents in the UK – Artificial Neural Networks Are Not Computer Programs On 21 November 2023, the High Court of England and Wales issued a significant judgment in Emotional Perception AI v Comptroller-General of Patents1 which represents a turning point for patentability of AI inventions in the UK. Sir Anthony Mann held that an artificial neural network (ANN) per se is not a computer program and therefore not excluded from patentability. Furthermore,... Read more

7 December 2023 topical The UPC’s Approach to Validity – What Can We Learn From The Reasoned Decision In The 10X Genomics v NanoString Technologies First PI Application? The UPC Munich local division’s decision (ACT_459746/2023 –available here) on 10x Genomics’ first application for a PI against NanoString Technologies provides a valuable insight into the approach of the UPC when considering the validity of a patent, including in the context of applications for preliminary measures. It is of particular interest to note the references in the decision to various... Read more

28 November 2023 topical EPO Enlarged Board of Appeal Significantly Relaxes Formal Requirements for Making a Valid Priority Claim The EPO’s Enlarged Board of Appeal has recently made a key ruling on the issue of priority entitlement in decision G1/22 and G2/22. The decision represents a significant relaxation of the formal requirements that were previously imposed on applicants and patentees to demonstrate the validity of a priority claim. It will be welcome news to rights holders. Previous EPO position... Read more

23 November 2023 introductory Using IP to Succeed in Tech Transfer Transforming research carried out in institutions such as universities and hospitals into commercial products and services can be a long and complex journey, but the results can provide significant income for the institutions involved, as well as improving the lives and prosperity of the public. IP often plays a central role in the success or failure of a project. It... Read more

23 November 2023 introductory Overview of Intellectual Property Intellectual property (IP) rights are legal rights which provide protection for your innovative and creative endeavour. For example, IP could relate to something that you have created, such as a brand, an invention or a design, or could relate to information that you have developed or collated. When people talk about IP, they usually mean IP that can be registered:... Read more

22 November 2023 general Determining The Deadline For Requesting Re-Establishment at the EPO Patent offices across the globe have various restoration provisions that may be used to remedy a missed deadline. At the European Patent Office, re-establishment of rights under Article 122 EPC may be used to recover rights if a deadline is missed that directly results in loss of rights relating to a European patent application or granted patent. As set out... Read more

14 November 2023 general Disclaimer Practice at the EPO The European Patent Office (EPO) uses the term “disclaimer” to refer to a negative feature in a claim of a patent application. Negative features are those which exclude certain subject-matter from the scope of protection. While a positive feature in a claim may for instance take the form “wherein the composition comprises X”, a disclaimer would take the form “wherein... Read more

14 November 2023 topical Patenting Human Gesture Recognition The EPO has previously considered the patentability of human gesture recognition. Two previous decisions of an EPO Technical Board of Appeal have recognised that recognition of human gestures, e.g. as a method of computer input, is technical. The Board overturned refusal of two European patent applications relating to the recognition of specific sequences of human gestures using a computer touch... Read more

12 November 2023 introductory Introduction to Registered Designs Since Apple asserted a Community Registered Design against Samsung in 2012 in connection with their tablets’ design rights, design rights have risen in profile.  Although Apple were ultimately unsuccessful at proving infringement in some countries, the case illustrates that even a simple registered design can be a useful tool that cannot be ignored by competitors. For example, in the UK,... Read more

12 November 2023 general The Hague System for the International Registration of Industrial Designs The Hague system is the international application and registration procedure for designs and offers a very attractive and efficient way of obtaining design protection in multiple states with the filing of just a single application. Widespread use of the Hague system was previously limited due to the absence of some major states from the system. However, recent expansion of the... Read more

10 November 2023 topical The Exclusion from Patentability of Diagnostic Methods at the European Patent Office Article 53(c) of the European Patent Convention (EPC) specifies various exceptions to patentability, one of which includes: “diagnostic methods practised on the human or animal body”. In Decision G1/041, the Enlarged Board of Appeal identified the requirements that must both be met for a diagnostic method claim to be excluded from patentability. Read more

7 November 2023 general Inventive Step for Software Inventions at the EPO The EPO has long adopted an approach to consideration of inventive step known as the problem and solution approach. Although this approach is fundamentally the same across most technical areas, special considerations apply for software related inventions. Firstly, the EPO looks for an invention to be the technical solution to a technical problem and so disregards non-technical aims/features, which are... Read more

7 November 2023 general Software – Virtual Disclosure at the EPO In the 2016 decision T 2440/12-Fluid flow simulation/SIMCON, Technical Board of Appeal 3.5.07 has found that a commercially available software package makes the methods it embodies available to the public because it could be run byline in a virtual machine (VM). Read more

31 October 2023 general Patent Box – Patent Strategy Considerations The Patent Box makes the existence of a patent more attractive, whatever the breadth of the patent’s claim, so long as it covers the product (or process or service). A company may wish to optimise its strategies both for filing and prosecuting patent applications and for patent and patent application abandonments bearing in mind the tax savings available through the... Read more

31 October 2023 general Patent Box – Are you a Qualifying Company? In order to benefit from the Patent Box, the beneficiary must be a qualifying company as defined in the legislation. We discuss here the requirements of a qualifying company. Read more

31 October 2023 general Patent Box – What is Relevant IP Income? We discuss here issues relating to which income streams can qualify for the Patent Box. The Patent Box legislation defines what income streams count as relevant IP income. The calculation of relevant IP income is used in determining an amount deductable from the profits of the trade for the calculation of UK Corporation Tax liability. Determining the amount deductable from the profits of... Read more

31 October 2023 general When Should you Elect In to the Patent Box? A company must elect in to the Patent Box regime in order to take advantage of the reduction in payable UK Corporation Tax. For some companies there may be advantages in delaying entry into the Patent Box. This Briefing looks at this issue. Read more

31 October 2023 general How to Calculate the Patent Box Benefit We outline here the accounting steps which are necessary to calculate the Patent Box benefit. We also present a simplified example calculation which may help you to estimate the amount of saving in UK Corporation Tax you might expect to make if you were to elect in to the Patent Box regime. You will need to seek the advice of... Read more

24 October 2023 general Re-Establishment of Rights at the European Patent Office Under Article 122 EPC Re-establishment of rights under Article 122 EPC may be used to recover rights lost as a result of missing a deadline set by the European Patent Office. The requirements of this provision are shared with a number of restoration systems worldwide. There is much variation from regime to regime. However, the European Patent Office approach is well established, with a... Read more

20 October 2023 general What Constitutes Making a Patented Product? – Schuetz v Werit The Supreme Court, the highest Court for England and Wales, has given guidance as to considerations to take into account when deciding whether an activity can be regarded as “making” a patented product and thus infringing a patent.  This Decision has relevance for activities including reconditioning and repairing of patented articles and for sale of spare parts and even consumables... Read more

19 October 2023 general Basing a Patent Prosecution Highway (PPH) Request on an allowed UK or EP Patent Application The efficacy of PPH varies from territory to territory. In some patent offices there is a history of examination being influenced by the granting of a patent by particular patent offices; PPH may work well for such patent offices. In other patent offices, requesting PPH only results in acceleration and does not guarantee allowance. Read more

19 October 2023 general Requesting Patent Prosecution Highway (PPH) in the EPO or UK IPO The aim of the Patent Prosecution Highway (PPH) is to provide a way for applicants to use positive examination results from one patent office to streamline prosecution in a second patent office. An evolving network of different PPH agreements exists between various patent offices, including most major patent offices. For both the European Patent Office (EPO) and the UK Intellectual... Read more

10 October 2023 general The Exclusion from Patentability of Surgical Methods at the European Patent Office Article 53(c) EPC specifies a number of exceptions to patentability in the field of medicine, including “methods for the treatment of the human or animal body by surgery”. These exceptions to patentability were included in the EPC on socio-ethical and public health grounds to ensure that medical and veterinary practitioners remain free to take any action necessary to treat or... Read more

9 October 2023 general Late-Filed PCT Application This briefing explores the options available to applicants in the event that the deadline for filing a PCT has been missed. In this context we refer to the deadline for filing a PCT application that is set by the twelve month deadline for claiming priority under the Paris Convention. A successful claim to priority may be important, particularly if the... Read more

9 October 2023 general Demonstrating Due Care Many patent offices worldwide operate a re-establishment procedure, under which a patentee or applicant may be able to recover lost rights after missing a final deadline in relation to a patent or application. However, this procedure is usually not available as of right. The patentee or applicant often has to give some explanation as to why the deadline in question... Read more