Briefings

1 August 2023 general EU SPC Reform – A Marathon Not A Sprint Introduction A few months after the European Commission released its long-awaited proposals for reform of Supplementary Protection Certificates (SPCs)1, most interested readers will not be surprised to hear that it may still be some time before we see any enactment of reform. The proposals themselves arise from consultations which date back many years, notably including a study published in 2018... Read more

31 July 2023 topical Unitary Patent Translation Compensation Scheme Translation Requirements for Requesting Unitary Effect During the transitional period, in order to request the unitary effect, the patent proprietor must file one translation of the complete European patent specification. The language of the translation depends on the language of proceedings of the patent as follows: If the language of the proceedings before the European Patent Office (EPO) was English,... Read more

26 June 2023 introductory Trade Secrets – What They Are And How To Protect Them Trade secrets, and the law relating to them, can seem a bit of a ‘black art’, but the basics are very simple. Companies should 1) know what their trade secrets are and 2) take steps to make sure that they stay secret. Trade secrets are becoming increasingly important both legally and commercially. In recent years, trade secret standards and remedies... Read more

12 April 2023 topical UK Registered Design Infringement: The Battle Against Look-a-Likes British retailer Marks and Spencer (M&S) recently succeeded in proceedings brought against budget supermarket chain, Aldi, for infringement of its UK registered design rights. The case was heard by His Honour Judge Hacon (Hacon J) sitting in the Intellectual Property Enterprise Court (a specialist division of the High Court). Specifically, the case concerned Aldi’s sale of flavoured gin liqueurs, all... Read more

13 March 2023 topical What Happens if I Miss the Deadline for Requesting a Unitary Patent? Of the 38 countries that are members of the European Patent Convention (EPC), the Unitary Patent currently covers 17 EU countries and will ultimately 24 countries when all have ratified. The Unitary Patent provides a cost-effective way to obtain protection across a large part of Europe because only a single translation is required to request a Unitary Patent. In contrast,... Read more

9 March 2023 topical Translation Requirements for Validation of European Patents A patent that has been granted by the European Patent Office may subsequently be made effective in any of the countries for which a designation, extension or validation fee has been paid. This process is commonly known as “validation” of the European patent. Read more

7 March 2023 introductory Introduction to Pharmaceutical Trade Marks A pharmaceutical trade mark is the same as any other trade mark in terms of the process for securing protection and the law governing the rights conferred on trade mark owners, but there are certain considerations which are unique to pharmaceutical trade marks 1. Read more

16 February 2023 topical Review of UKIPO SPC Decisions in 2022 In this review we examine decisions relating to SPCs issued in 2022 by the UKIPO’s hearing officer and discuss the potential consequences for rights holders. The decisions cover a range of different SPC provisions, and provide some clarity on the UKIPO’s position on the interpretation of Article 3(d) of the SPC regulation following the UK’s exit from the European Union,... Read more

11 February 2023 topical Review of EPO Parameter Decisions in 2022 Before the EPO, parameters can be used to define a claim scope which appropriately captures an invention. Parameters are based on measurable values and can relate to any property of a product or a process. They are often used in the chemical sphere and are particularly useful in situations where it is not possible to reflect the characteristics of an... Read more

2 February 2023 topical Review of EPO Antibody Decisions in 2022 Last year we provided a review of 17 EPO Board of Appeal cases relating to “antibody inventions” that were decided between January and December 2021. We noted that this number had increased from our previous analysis, suggesting that the trend of minimal case law concerning antibodies may be reversing. We have now reviewed the decisions published in the calendar year... Read more

27 January 2023 topical Review of EPO Software Decisions in 2022 The Enlarged Board Decision G1/19 relating to simulations was the most significant event in the field of computer implemented inventions in 2021, but it is only in 2022 that its full impact has become apparent. Whilst initial expectations were that it would not be transformative since it primarily endorsed case law, it has resulted in an increased focus in the... Read more

6 January 2023 topical Suspension of Opposition Proceedings Involving International Trade Mark Registrations at the UKIPO The UK Intellectual Property Office (“IPO”) is currently suspending all inter partes proceedings involving International Registrations (“IRs”) designating the UK where no UK-based address for service has been specified, while it considers whether its practice must be changed following the decision of the Appointed Person (“AP”) in Tradeix Ltd v New Holland Ventures Pty Ltd BL O/681/22 (the “Marco Polo... Read more

3 March 2022 topical Infringement by Overseas Servers Revisited Since the UK Court of Appeal judgment in Menashe v William Hill, it has not been safe to assume that infringement of a patent claim including a processor or a processing step can be avoided by performing the processing on a server outside the UK. A third judgement on this topic has recently been issued – making the score two... Read more

3 March 2022 topical Updates to the EPO Guidelines for Examination Relating to CII This is the fourth year in a row that sections of the EPO guidelines for examiners relating to computer implemented inventions (CII) have been significantly amended. These amendments have come about as a result of a project within the EPO to harmonise the treatment of inventions involving computers and software across all examining divisions. In the EPO, inventions not relating... Read more

3 March 2022 topical Claiming an Abstract Idea in a Technical Context at the EPO Two recent decisions of an EPO Technical Board of Appeal emphasise the need for a proper technical context to be set out in claims to render an abstract idea patentable. The two appeals, by Ab Initio Technology LLC, related to inventions in the field of parallel processing, a field that seems on the face of it highly technical. However, the... Read more

3 March 2022 topical Clarification of the Concept of the “Notional Business Person” In May 2017, we reported on two “CardinalCommerce” decisions1 by EPO Technical Board of Appeal 3.5.01 that introduced the concept of a “notional business person” into in the examination of mixed inventions (inventions including both technical and non-technical features). A new decision by the same Board (T0630/11/Waterleaf) provides some clarification of this approach, warning against over limiting what the notional business person can do... Read more

3 March 2022 topical The Notional Business Person – A New Actor on the IP Stage? In two Decisions published on 27 April 2017, EPO Technical Board of Appeal 3.5.01 has given valuable guidance on the treatment of inventions that implement business methods and given rare positive verdicts on two related applications. In the process, the Board has introduced the “notional business person” whose hypothetical actions need to be considered alongside the venerable “person skilled in... Read more

11 February 2022 topical Review of EPO Parameter Decisions in 2021 Parameters are characteristic values of a product or process which are generally based on directly measurable properties. Typical examples of such features are the melting point of an alloy, the particle size of a powder or the performance of a material when subjected to stress in a particular way. Parameters can usefully be relied upon to define an invention before... Read more

10 February 2022 topical Wheels Come Off “Trunki” Child’s Wheeled Suitcase Design Enforcement in Court of Appeal In a previous briefing (Design For “Trunki” Child’s Wheeled Suitcase Successfully Enforced), we reported the successful enforcement of Magmatic’s Community design for the “Trunki” against PMS International’s “Kidee Case”.  PMS were, however, successful in their appeal, leading to the decision at first instance being overturned in the Court of Appeal. The appeal addresses some important questions regarding the interpretation of... Read more

10 February 2022 topical When is a Medical Device a Medicinal Product? The Court of Justice of the European Union (CJEU) has recently handed down a decision on a reference from the Finnish Courts in Case C-109/12 Laboratoires Lyocentre v Lääkealan turvallisuus– ja kehittämiskeskus (the Centre for Safety and Development in the pharmaceutical sectors), Sosiaali– ja terveysalan lupa– ja valvontavirasto (Social and Health Authorisation and Supervision Authority). Read more

9 February 2022 topical Review of EPO Software Decisions in 2021 In 2021, reporting of the case law of the EPO Boards of Appeal in the field of IT & computer-implemented inventions has been dominated by two topics: the Enlarged Board’s decision relating to simulation and the rejection of two applications for inventions created by the artificial intelligence “DABUS” for failure to designate a human inventor. The simulation decision could well... Read more

1 February 2022 general Patent Box – Do you Hold Qualifying IP Rights? In order to benefit from the Patent Box, a company must hold or have an exclusive license to a qualifying IP right. Here we discuss the definition of a qualifying IP right. Read more

31 January 2022 topical Expediting Prosecution of UK Patent Applications Patent protection may be obtained in the UK either by filing a European patent application with the European Patent Office and then validating a granted European patent in the UK, or by filing of a UK national patent application with the UK Intellectual Property Office (UK IPO). It is possible to file a UK patent application directly with the UK... Read more

25 January 2022 topical Enforcing a Process Claim in a European Patent Against a Chinese Manufacturer The High Court of England and Wales was asked for permission to serve proceedings for UK patent infringement on a Chinese manufacturing company.  In considering whether or not to grant permission, the court had to consider the burden of proof when establishing infringement of a process claim.  It also considered whether or not the Chinese company could properly be said... Read more

19 January 2022 topical PCT Direct Procedure – Opportunity to Comment on International Application The EPO operates a PCT service, PCT Direct, available to PCT applications which: name the European Patent Office as International Searching Authority; and claim priority from an earlier patent application which was searched by the EPO. If a new PCT application fulfils both of these criteria, the Applicant may file a “PCT Direct letter” providing informal comments with the application.... Read more

19 January 2022 topical Review of EPO Software Decisions in 2018 2018 has been a year of increased productivity for at least those Boards of Appeal that cover software inventions (Boards 3.5.01 and 3.5.03 to 3.5.06). In particular Board 3.5.01 has returned to a similar level of productivity as the other Boards now that it has a Chairman. The main controversies continue to be the proper treatment of mixed inventions (those... Read more

19 January 2022 topical Review of EPO Software Decisions in 2019 2019 has been another busy year for the EPO Boards of Appeal covering computer-implemented inventions, although the most significant case has not reached a conclusion. In T 0489/14 (Pedestrian simulation/CONNOR) of 22.2.2019 questions relating to the patentability of simulations and modelling were referred to the Enlarged Board of Appeal, which has not yet set a timetable for a hearing and decision. Although... Read more

19 January 2022 topical Review of EPO Software Decisions in 2017 2017 was a year of change for the Boards of Appeal of the EPO: a new President1 and a move out of the EPO’s oldest building in the centre of Munich to a suburb, Haar. There has been some recruitment, but overall it appears there are still many vacancies on various Boards. Overall the relevant Boards issued 10% more decisions than... Read more

19 January 2022 topical Review of EPO Software Decisions in 2015 In 2015 the Boards of Appeal of the EPO continued to develop the “Comvik” approach to examining mixed inventions, that is inventions involving both technical and non-technical features, but again declined to define what is and is not technical.  This article discusses some statistics from 2015 of the various Boards of Appeal that consider software inventions and some interesting or... Read more

19 January 2022 topical Review of EPO Software Decisions in 2016 Notwithstanding surprising electoral developments in the UK and the US, 2016 was a continuation of business as usual for the Boards of Appeal of the EPO at least in relation to computer-implemented inventions. The Boards continued to apply the “Comvik” approach to examining mixed inventions, that is inventions involving both technical and non-technical features, but still did not offer any... Read more