Briefings

6 October 2023 introductory Introduction to Patents What is a patent? A patent is a legal monopoly granted by a government in return for public disclosure of an invention. A granted patent gives the proprietor the right to prevent others using the invention in the territory to which the patent applies. A patent does not, however, give a positive right to use an invention. There may be... Read more

6 October 2023 general IP Due Diligence Whatever the technology, IP can form a significant intangible asset for a company. In addition to legally protecting the company’s products and activities from being copied by competitors, IP can generate revenue through licensing or sales, it can protect market share and increase return on a company’s R&D investment. IP therefore plays a vital role in establishing the value of... Read more

18 September 2023 general Obtaining a Granted Euro-PCT Patent Before PCT National Phasing Deadline In 2014, the EPO launched the Early Certainty initiative to speed up the patent granting process. This initiative has resulted in speedier establishment of search reports and a shorter examination procedure. Read more

15 September 2023 topical Update on the Windsor Framework and its Relevance to SPCs and Paediatric Extensions in the UK The EU and the UK formally adopted the Windsor Framework (WF) on 24 March 2023. Subsequently, the UK government has issued some additional guidance1 on the application of the “Medicines” measures in the WF. These measures will replace the corresponding elements of the Northern Ireland Protocol (NIP) and so will change the regulation of medicines in Northern Ireland. In particular,... Read more

15 September 2023 introductory What to Do When Someone Is Infringing Your IP Right Do Not Immediately Contact the Infringer! You may discover or suspect that someone is infringing one or more of your IP (intellectual property) rights. It could be a patent at the core of your business, a trade mark protecting your main brand or an important product design. When you become aware of the situation, you may be tempted to go... Read more

15 September 2023 general Protecting Your IP when Crowdfunding Crowdfunding can be a great way of raising funds. However, if you fund your business in this way you need to consider carefully how to protect your valuable intellectual property (IP). Crowdfunding involves wide and rapid disclosure of information. This can be beneficial to your business but may also pose some risks to your IP. Read more

15 September 2023 general Conducting Oral Proceedings at the European Patent Office by Videoconference The European Patent Office (EPO) uses oral proceedings as a means to bring pre-grant examination and post-grant opposition proceedings to a close. Oral proceedings are appointed when the EPO considers it expedient to discuss outstanding issues face to face and/or at the request of any party to the proceedings. Consequently, the majority of EPO oppositions conclude with oral proceedings. Oral... Read more

14 September 2023 introductory Where to File Your Patent Applications When seeking patent protection, most companies start with a single national patent application but may then wish to seek protection in other countries. This briefing outlines points to consider in selecting the countries to cover, the international schemes available and the timing of the decisions to be taken. There are several advantages to filing a UK application first, even if... Read more

13 September 2023 general Patenting Polymorphs at the European Patent Office Obtaining patents for polymorphs can be challenging. However, before the European Patent Office, there is no general rule which makes polymorphs less patentable in principle than other subject matter. With careful drafting and consideration of any specific advantages associated with the polymorph of interest, European patents directed to polymorphs of commercial significance can be obtained. Such patents can act as... Read more

8 September 2023 general The Scope and Infringement of Patents Claiming Strains of Bacteria Understanding the scope of a patent claim is of utmost importance when assessing the strength and value of a portfolio and making appropriate commercial decisions, and when drafting new applications or overcoming objections in examination. Read more

5 September 2023 general Data Exclusivity and Market Protection in the EU / EEA and UK In order to place a new medicinal product on the market in Europe, it is necessary first to obtain a marketing authorisation. Most applications for marketing authorisations are made through a centralised procedure with the European Medicines Agency (EMA) which effectively leads to authorisation in all EU/EEA member states1, although other routes are available. Regardless of the route, an application... Read more

5 September 2023 general Orphan Drugs in the EU/EEA and UK An orphan drug, or orphan medicinal product, is a medicine that is developed to treat a rare disease, defined as a disease affecting a relatively small number of people as a proportion of the population. In recognition of the fact that the commercial market for such medicines is small, regulators have sought to provide economic incentives for their development. In... Read more

5 September 2023 general European Patent Office Opposition Procedure European Patent Office (EPO) opposition procedure comprises two parts: opposition division (first instance), and, if relevant, appeal. A typical procedure is set out on the attached flow chart. It is also possible to petition the Enlarged Board of Appeal for review of the appeal decision under certain very limited circumstances. There are some fixed time limits in the overall procedure,... Read more

5 September 2023 general Double Patenting in the EPO The issue of “double patenting” arises in the EPO when one applicant files two European patent applications with closely related claims and the same effective filing date. Two situations where double patenting commonly needs to be considered are: when the claims of a divisional application overlap with the claims of its parent application; and when a first European patent application... Read more

4 September 2023 general The Unified Patent Court (UPC) The European Patent Convention (EPC), as applied by the European Patent Office (EPO), is one of the main sources of law of the Unified Patent Court Agreement. The procedure of the Unified Patent Court is also expected, to a large extent to mirror the Opposition procedure at the EPO. European Patent Attorney UPC Representatives will thus have unique skills required... Read more

4 September 2023 general The Unitary Patent A Unitary Patent may be obtained from any European Patent Office (EPO) application that has a filing date of 1 March 2007 or later. Following grant of a European Patent based on such an application, it is possible to request that the patent have unitary effect for all countries available as part of the Unitary Patent system. Electing for a... Read more

4 September 2023 introductory Patent Strategy and Portfolio Building Which new ideas are worthy of a patent application? How should the applications be drafted and prosecuted? When should they be filed? Where in the world should they be filed? How long should applications and granted patents be maintained? A systematic answer to these questions is provided by a patent strategy. A patent strategy is part of an overall intellectual... Read more

4 September 2023 general Why Does My Startup Need Patents? A patent is a legal monopoly granted by a government in return for public disclosure of an invention. A granted patent gives the proprietor the right to prevent others using the invention in the territory to which the patent applies. Read more

1 September 2023 introductory Introduction to Biological Deposits at the European Patent Office and under the Budapest Treaty This introductory briefing sets out what a biological deposit is, why a biological deposit may be needed, and basic requirements for making a biological deposit and relying on it in a patent application, with a particular focus on practice before the European Patent Office (EPO). A complementary briefing goes on to consider strategic aspects relating to biological deposits, including how... Read more

1 September 2023 general Marking Products as Patented in the UK In the UK, marking patented products as patented is not compulsory. However, there are several benefits to marking products as patented and both guidance from the UK Intellectual Property Office, and UK law, effectively encourage this practice. However it is important for patentees considering marking their products as patented to ensure that this is done correctly because failure to do... Read more

30 August 2023 introductory Third Party Intellectual Property A common misconception is that ownership of IP rights associated with a product gives an automatic right to make and sell that product. However, IP rights such as patent and design rights are best viewed as ‘negative’ rights, which allow the owner to prevent other parties from using the invention, mark or design. They do not provide an automatic right... Read more

30 August 2023 introductory Introduction to Trade Marks What is a trade mark? A trade mark, often known as a brand, is a sign (whether it is a word, logo or something else capable of graphic representation) which identifies your goods or services from those of another.  It is the badge by which customers find your product or services in the marketplace, and know how to find it... Read more

30 August 2023 introductory Introduction to Supplementary Protection Certificates for Plant Protection Products This document is intended to provide a brief introduction to Supplementary Protection Certificates (SPCs) for plant protection products. For more detailed information, please speak to your usual J A Kemp contact. Read more

30 August 2023 introductory Patent Filing: Validity and Timing Considerations You have a new technical idea. When will you be ready to draft a patent specification? When will it be appropriate to file an initial application at the Patent Office? Are there any potential issues with filing an application early and making a follow-up application later? This Briefing sets out some of the factors to consider in addressing such questions. Read more

30 August 2023 general Small Entity Status in the USA Claiming small entity status on a US application or patent provides a reduction in official fees. Most fees (e.g. basic filing fee, examination fee, search fee, etc.) are reduced by 50%, so the saving is significant. There are some risks but these may be mitigated. Where available, small entity status is attractive to many applicants. Read more

30 August 2023 general Paediatric Extensions to Supplementary Protection Certificates in the EU / EEA and UK Introduction Supplementary Protection Certificate (SPCs) for medicinal products are intellectual property rights intended to compensate patent holders for the loss in effective patent term that results from the time taken to receive marketing authorisations for such products. An SPC takes effect at the expiry of the normal term of the patent on which it is based, and expires at whichever... Read more

30 August 2023 general Does an SPC for a Biological Product Cover a Biosimilar? To what extent will a Supplementary Protection Certificate (SPC) for a biological product be considered to encompass closely-related alternatives such as biosimilars? This question will become increasingly important as more and more biological medicinal products, and their competing biosimilars, enter the marketplace. We expect to see the issue arise before the national courts of the EU and the UK, and... Read more

30 August 2023 introductory Introduction to Supplementary Protection Certificates for Medicinal Products This document is intended to provide a brief introduction to Supplementary Protection Certificates (SPCs) for medicinal products. For more detailed information, please see our full briefing on this topic. Read more

30 August 2023 general Supplementary Protection Certificates for Medicinal Products What are SPCs? A Supplementary Protection Certificate (SPC) is an intellectual property right available for active ingredients of human and veterinary medicinal products requiring marketing authorisation1. The highest tribunal hearing disputes involving SPCs for EU member states is the Court of Justice of the European Union (CJEU). Historically there have been numerous referrals to the CJEU on points of law... Read more

29 August 2023 general Parameters at the EPO – Issues Concerning Clarity and Sufficiency Parameters are generally used in patent claims to define subject matter which cannot be expressed in terms of structural features. They are often relied upon for inventions in the chemical field, but can in fact be used in any technical area. Parameters can relate to features that can be measured directly, such as the density or melting point of a... Read more