Briefings

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

1 January 2022 topical Everything You Need To Know About Brexit And How It Affects Your IP The UK withdrew from the European Union (EU) on 31 January 2020 and the transitional period expired on 31 December 2020. Brexit had no effect on patents. The European Patent Convention (EPC) and the European Patent Office (EPO) are not instruments of the European Union. The UK remains a full member of the EPC. European Union Trade Mark (EUTM), Registered... Read more

31 December 2021 topical Review of EPO Antibody Decisions in 2021 Last year we provided a review of 21 EPO Board of Appeal cases relating to “antibody inventions” that were decided and published between January 2018 and January 2021. At the time, we observed that this relatively small number of decisions was consistent with our view that there had been relatively little case law in this field, despite the high number... Read more

7 September 2021 topical Still No Break for KitKat – CJEU Dismisses Nestlé’s Appeal on Acquired Distinctiveness of the KitKat Bar The CJEU has dismissed Nestlé’s appeal on the acquired distinctiveness of the KitKat bar. The Court has re-affirmed the principle that, for an EU trade mark to be registered on the basis of acquired distinctiveness through use, the acquisition of distinctive character needs to be shown in every Member State of the EU in which it did not, ab initio, have... Read more

7 September 2021 topical Retailing of Services in Trade Mark Specifications Until 2008, it was not possible to register trade marks in the UK in respect of retailing of any sort. Retailing was considered not a service as such and as simply ancillary to a business providing its own goods and/or services, and thus not protectable. In 2008, the CJEU Praktiker Decision paved the way for acceptance of retailing of goods.... Read more

7 September 2021 topical No Break for Nestle: The CJEU Verdict In Nestle v Cadbury on KitKat The lengthy saga of Nestlé’s attempt to secure a three dimensional trade mark for its Kit Kat shape has taken a further (and perhaps final?) turn, with the decision of the Court of Appeal dated 17 May 2017. Read more

7 September 2021 topical Next Step For EU Trade Mark Regulation: Further Reforms Coming Into Force Amendments to the EU Trade Mark Regulation on 23 March 2016 brought about substantial changes to the EU trade mark system. However, not all of the changes were implemented with immediate effect. Read more

7 September 2021 topical Sieckmann Strikes Again – EUIPO Board of Appeal Cancels “Imprecise” Colour Combination Mark The EUIPO Board of Appeal recently upheld a request for a declaration of invalidity against the following grey/orange colour combination trade mark, on the grounds that its imprecision allows for multiple different combinations of the two colours. Read more

7 September 2021 topical Still no Break for Nestlé – Advocate General Delivers Opinion on Acquired Distinctiveness of the KitKat Bar The ongoing struggle of Nestlé to register a three-dimensional trade mark for the shape of its KitKat bar has been dealt a further blow by the opinion of the Advocate General delivered on 19 April 2018. Advocate General Wathelet’s opinion supports the conclusion of the General Court that Nestlé’s evidence of acquired distinctiveness in 10 of the relevant 15 EU... Read more

7 September 2021 topical WIPO UDRP Cases Up for Fifth Straight Year: What That Means for Brand Owners On Friday 15 March 2019 the World Intellectual Property Organization released its UDRP statistics for the 2018 calendar year. As always the information is useful for brand owners and particularly those interested in knowing more about what their peers are doing in the online brand protection space. Read more

7 September 2021 topical EU Design Strategies: Maximising the Chances of Enforcement Success Registered Community designs have been enforced with varying success. However, several steps are available to maximise the scope of the protected design, making it easier to combat infringers. Since becoming available in 2002, registered Community designs have been enforced with varying degrees of success. The body of case law built up since then offers some useful guidance on how to... Read more

7 September 2021 topical URS Procedure – What it is and What it Does The URS procedure is a domain name dispute rule set similar to the better-known UDRP, but with a number of key differences – primarily, that it applies mainly to new gTLDs and provides only for suspension (not transfer) of the domain name. The URS procedure has consistently served as a valuable, low-cost alternative to the UDRP. However, it remains underused... Read more

16 August 2021 topical Exhausted by Brexit? Impact on Import and Export of IP-protected Goods in UK When IP-protected goods are placed on a particular market by, or with the consent of, the IP right holder, there is a generally accepted legal concept worldwide that the corresponding IP rights are ‘exhausted’ at least in the market in question. This means that the owner of the IP rights cannot subsequently rely on them to prevent the further distribution... Read more

12 August 2021 topical Enlarged Board of Appeal to Consider the Doctrine of Plausibility It is fairly common at the EPO in the fields of chemistry and biotechnology for applicants/patentees to rely upon data that are not present in the application as filed, and that were generated after the priority/filing date, to support arguments in favour of inventive step. Such data are often referred to as “post-published data”. They are often used to evidence... Read more

28 June 2021 topical Priority Entitlement in Europe – Current Best Practice Following Board of Appeal Decision T844/18 The Technical Board of Appeal of the European Patent Office (EPO) issued its written decision in case T844/18 on 6 November 2020. The central issue was whether the patentees were legally entitled to claim priority. If not, the patent would be invalid for lack of novelty. Read more

24 June 2021 topical EPO Practice on Post-filed Experimental Evidence Approved by the UK Court of Appeal In its decision in Generics (Mylan) V Yeda & Teva, the UK Court of Appeal considered the extent to which subsequent evidence can be relied upon for the determination of inventive step. The Court closely followed the approach adopted by the EPO to the consideration of such evidence. The decision provides a useful summary of the manner in which the... Read more

14 June 2021 topical Examination of Clarity of Amendments in EPO Opposition Proceedings In G 3/14 the EPO Enlarged Board of Appeal ruled on the extent to which amendments made in EPO Opposition (and Opposition Appeal) proceedings may be examined for clarity, conciseness and support (Article 84 EPC). They confirmed that compliance with Article 84 EPC may be examined only when, and to the extent that, the amendment introduces non-compliance with Article 84 EPC. In... Read more

9 June 2021 topical Unwired Planet v Huawei: UK Supreme Court Confirms that English Courts can Determine Global FRAND terms The UK Supreme Court has handed down an important judgment1 which is likely to have global implications for how standard essential patents (SEPs) are licensed in the future. Background A standard essential patent (SEP) is a patent which covers technology which is required (i.e. is essential) to be used in order to implement a technical standard (for example such as 2G,... Read more

4 June 2021 topical EPO Accelerated Prosecution Procedure (PACE) It is possible at the EPO to accelerate the search and/or examination of any application using the accelerated prosecution procedure (PACE)1. To use the procedure, it is necessary to file a PACE request online using the appropriate form. Other than this, there are no special requirements to qualify for PACE: the request can be filed at any time, no official fee... Read more

5 May 2021 topical Shanks v Unilever – Supreme Court Concludes an “Outstanding” Legal Saga on Employee Inventions On 23 October 2019, Kitchin LJ handed down a judgment, available here, which brought to an end a 13-year long dispute between Professor Ian Shanks OBE FRS FREng and Unilever. The case concerns a compensation claim made by Professor Shanks, in connection with several patents owned by Unilever directed towards glucose monitoring devices, for which Professor Shanks was the sole inventor... Read more

5 May 2021 topical The Enlarged Board of the EPO Establishes a Definitive Approach to Patentability of Simulations The Enlarged Board of Appeal of the EPO has, in case G 01/19 (Pedestrian simulation), issued a decision regarding the patentability of simulations under the EPC. This decision was eagerly awaited as the referral to the Enlarged Board raised fundamental questions about the patentability of simulations at the EPO. Given that simulations of technical systems had generally been considered patentable with some... Read more

3 May 2021 topical SPC Manufacturing Waiver With the entry into force of Regulation (EU) 2019/933 on 1 July 2019, the EU introduced a so-called “manufacturing waiver” by amending existing Regulation (EC) 469/2009 concerning supplementary protection certificates (SPCs). Scope of the manufacturing waiver The amendments to the existing SPC Regulation have excluded certain acts from the protection conferred by SPCs. In particular, a third party (referred to as a... Read more

27 April 2021 topical G 1/15 EPO’S Enlarged Board of Appeal Prescribes an Antidote to Poisonous Divisionals In decision G 1/151, the EPO’s Enlarged Board of Appeal ruled that an entitlement to partial priority arises for a generic claim in a European patent application in respect of subject-matter, disclosed in the priority filing, that is encompassed by the generic claim. The Enlarged Board’s conclusions prevent so-called “poisonous divisional” attacks, as well as the possibility of “self-collision” with... Read more

23 April 2021 topical CJEU Confirms Strict Interpretation of Article 3(a) for SPCs On 30 April 2020 the CJEU gave its ruling in C-650/17 (Royalty Pharma). The judgment, which is reviewed in detail below, confirms that SPC applications are allowable when the product is not explicitly recited in the claims. However, it is implied that the product will need to be disclosed to a high degree of specificity elsewhere in the patent. The case was... Read more

23 April 2021 topical CJEU Overturns Neurim – no SPCs for New Therapeutic uses of Old Active Ingredients The CJEU issued on 9 July 2020 its judgment in the Santen C-673/18 case. The full text of the judgment can be found here. The Santen decision overturns the earlier Neurim C-130/11 decision, which had held that it is possible under certain circumstances to obtain an SPC for a new therapeutic application of an active ingredient, even if that active ingredient... Read more

1 April 2021 topical Beware of Firms Requesting Payment for Registering or Publishing Patent Applications and Patents The UK Intellectual Property Office (UK IPO) and the European Patent Office (EPO) continue to receive reports of applicants and proprietors being approached for payment by firms offering to perform official processing such as registering patents and publishing patent applications. These firms often use names, abbreviations and/or logos which are confusingly similar to those used by official offices such as... Read more

8 March 2021 topical Illumina vs MGI: the High Court Considers Sufficiency, the Doctrine of Equivalents and Obviousness The High Court of England and Wales has recently handed down its judgment in Illumina Cambridge Limited vs Latvia MGI Tech SIA and others. This is one of the last judgments handed down in the High Court by Mr Justice Birss, who was recently elevated to the Court of Appeal. The judgment touches on a number of important aspects of patent... Read more

16 February 2021 topical Review of EPO Parameter Decisions in 2020 Before the EPO parameters are defined as features which are based on directly measurable properties or combinations of several variables in the form of formulae. This might be a claim defined by the viscosity of a composition, or the particle size of a powder, for example. Relying on such features to define an invention is commonplace within the chemical sphere... Read more

10 February 2021 topical Review of EPO Antibody Decisions January 2018 – January 2021 In our previous discussions of antibody practice at the EPO, we observed that there was a (perhaps surprising) lack of case law to support the evolving practice of the examining divisions. Despite the high number of applications and patents relating to antibodies that have been prosecuted at the EPO more recently (>1000 granted in 2019), the quantity of Board of... Read more

27 January 2021 topical Review of EPO Software Decisions in 2020 It does not seem possible to write any review of 2020 without mentioning Covid-19. However in this case we shall limit it to noting that the cancellation of most in-person oral proceedings at the EPO lead to a comparatively low number of published decisions by the electronic and software-focused boards of appeal (247 vs 339 in 2019) and that Board... Read more