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Briefings

01 April 2021

Topical

Beware of Firms Requesting Payment for Registering or Publishing Patent Applications and Patents

These firms do not act on behalf of the official offices and the services they offer cannot replace processing that is carried out by the official offices. To the extent that these firms offer to replicate such processing, applicants and proprietors are therefore under no obligation to pay any invoices issued by such firms.   In relation to publication of applications and registration of patents in particular, it is noted that only the official offices themselves can carry out these acts with the proper legal effect. The UK IPO, EPO and WIPO all publish pending applications automatically without additional steps needing to...

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31 March 2021

General

Patenting Polymorphs at the European Patent Office

Introduction A solid form of a small molecule may be amorphous (when there is no long range order in the orientation of the small molecules) or crystalline (when the small molecules are arranged in a periodic crystal structure). Many small molecule pharmaceutical compounds exist in a number of different crystalline forms, often known as polymorphs. Different polymorphs typically have different properties and those properties must be understood during the development of a pharmaceutical compound. The identification and assessment of the available polymorphs of a pharmaceutical compound is therefore an important area of drug development. There are certain considerations which should be taken...

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08 March 2021

Topical

Illumina vs MGI: the High Court Considers Sufficiency, the Doctrine of Equivalents and Obviousness

Background to the case The technology at issue concerned reagents and processes to carry out “sequencing by synthesis”, a method of using four different fluorescently labelled nucleotides to sequence DNA. Despite the technology relating to DNA sequencing methods, many of the explanations provided in the judgment are of course of relevance to other technical fields.                                           The DNA sequencing method at issue involves successive reaction cycles comprising the steps of (i) adding a capped, labelled nucleotide to a growing DNA chain, (ii) reading...

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01 March 2021

General

Antibodies in the European Patent Office - Advanced Guide to Drafting and Prosecution

We have focussed on therapeutic antibodies, but similar considerations apply to antibodies used in other applications, such as diagnostics. We have also generally assumed that the antibody molecule presents its binding domains in a traditional format comprising two heavy and two light chains. An increasing number of alternative formats are now known, but in practice we find that this does not make a significant difference to prosecution because the EPO takes the view that the underlying techniques required to generate those formats are also routine. Thus, while references to human or humanised antibodies, or to an antibody fragment or other...

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01 March 2021

General

Antibodies in the European Patent Office - Basic Principles

This briefing provides an introduction to possible claim types for antibody inventions, and also looks at how such claims will be considered by the EPO. The briefing also considers portfolio building to maximise the scope of protection for an antibody invention. We have focussed on therapeutic antibodies, but similar considerations apply to antibodies used in other applications, such as diagnostics. As will be established below, antibody applications should be carefully drafted in order to maximise the chances of allowance. For more comprehensive advice on the drafting and prosecution of antibody applications please see our related briefing “Antibodies in the European Patent...

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16 February 2021

Topical

Review of EPO Parameter Decisions in 2020

Introduction When a claim includes a parameter, the skilled person needs to be able to appropriately determine a value for the feature in question. This can be of relevance to determining whether the claim fulfils the requirements of clarity and sufficiency. Which ground an objection relates to can often be of importance, in particular since lack of clarity is not a ground for opposition. However, the general principles applied by the EPO in this regard are well established. In essence, for a well-known parameter any defects in the protocol which mean that the feature cannot be accurately determined are likely to...

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10 February 2021

Topical

Review of EPO Antibody Decisions January 2018 - January 2021

We do not believe that any of these 21 decisions represents a significant shift in EPO practice, or that any of them will compel changes in the way examination is conducted. Instead the picture that emerges is that the EPO largely treats antibody inventions no differently to any other form of technology. In decisions where “antibody-specific” considerations may be applied, the EPO does this consistently and in line with the (now largely established) basic principles that are further explored in our advanced guide to drafting and prosecuting antibody inventions at the EPO. In general, the decisions support the current practices...

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01 February 2021

General

Marking Products as Patented in the UK

Why Mark Products? Patentees may seek to mark their products as being protected by patent for a variety of reasons. The most common reason for marking a product as being protected by a patent is to increase the chances of financial remedies being awarded if a third party is found to infringe the relevant right(s). Secondary considerations for some patentees include product marking primarily for marketing reasons, to demonstrate legitimacy and to encourage consumers to select one product over another. For example, in some markets, being able to refer to a patented product or process adds significantly to a brand’s cachet – consider...

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27 January 2021

Topical

Review of EPO Software Decisions in 2020

Below we give some statistics and discuss some of the more interesting cases published in 2020. Statistics Figure 1 below shows clearly the reversal of the trend of the past few years in Boards 3.5.01 and 3.5.03 to 07 to publish more decisions. We can hope that there will be a reversion to the previous trend as there seems to be no reduction in either the backlog or time to decision.   Figure 1 Figure 2 shows the trend in outcomes. Whilst there seems no clear change in the high rates of refusal and revocation, there does seem to have been an increase in the...

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Insights

Patenting Artificial Intelligence

Patenting Artificial Intelligence

It is hard to avoid the AI revolution that is taking place around us. Indeed, in a lot of areas this revolution is already mature. We have come a long way from teaching computers to play draughts and chess or tell the differences between cats and dogs and it often seems like your smartphone knows more about what where you are likely to go next (and what the weather, traffic and COVID infection rates are there) than you do. This “revolution” is not just evident in the high-tech, computer-focused fields that are traditionally associated with AI. The latest breakthrough in biological...

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Can My Computer Own a Patent?

Can My Computer Own a Patent?

In recent years, interest has been growing in the development of artificial intelligence (AI) and the potential use of AI in different technologies for improving our lives. One example of high interest is the application of AI in self-driving cars. Other areas of technology such as medicine, where AI might be used in automated diagnosis of disease, are also of interest. However, recent advances in the AI field has led to a particular question – if AI development becomes advanced enough that some form of AI might itself develop a new invention, how would the patent system deal with this? AI...

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An Introduction to SEPs

An Introduction to SEPs

A Standard-Essential Patent, or SEP, is a patent that protects an invention that must be used if a product is to comply with a technical standard.  Technical standards are used across many sectors and technologies to ensure that products from different manufacturers are compatible and interoperable, both for physical products and software. For example, technical standards underpin the field of information and communication technologies, ranging from the dimensions of USB connectors and CDs, to the specific communication protocols used in WiFi, Bluetooth, and 4G/5G mobile communication technologies. Technical standards are developed by standards organisations working with partner organisations to develop and decide...

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Branding in Product Design – Finding Your Sweet Spot

Branding in Product Design – Finding Your Sweet Spot

Brands are all around us. Consumers will be familiar with brands associated with the names of companies and their products, and at the next level the logos, stylised fonts and colours that they use to present themselves in advertising or online usage. But did you know that brands can also extend into designs applied to the products themselves? It is at this point that the law strikes a tricky balance between protecting valuable goodwill that may exist or be acquired through a particular trading style and not stifling competition by preventing competitors from using standard decorative (or functional) features. This was...

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Space Technology: Back on Earth

Space Technology: Back on Earth

The National Aeronautics and Space Administration (NASA) is at the forefront of technological development for use in space travel and exploration. However, many of the innovations that are developed by, or in collaboration with, NASA are actually used a lot closer to home as well – we take a look at some of NASA’s technologies which have really taken-off here on Earth. Aerogels: outer space to outerwear Traditionally, NASA has used hard aeroshells for delivering payloads, such as rovers, to other planets. These generate drag to slow the payloads in descent, while also acting as heat shields for atmospheric re-entry.  In order to...

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A Microbiome of Opportunity

A Microbiome of Opportunity

The human body includes tens of trillions of cells, but not all of them are human! This article focuses on the at-least 30 trillion non-human cells that we each carry with us – our microbiome. These non-human cells include bacterial and fungal species, together with viruses, and can be found throughout our bodies, including the skin, respiratory tract, and gut.  There are many hundreds of species of non-human cell present in varying combinations in different sites throughout the body, with the result that even within one individual there are many incredibly diverse microbiomes. There is also considerable variation between individuals, with...

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3D Printing: An Overview

3D Printing: An Overview

With the recent boom in the consumer 3D printing market, it is perhaps easy to forget that early attempts at the technology were made as far back as the 1980s. Indeed, the patent application for the material extrusion technology used in most consumer machines today, namely Fused Deposition Modelling (granted as US 5,121,329), was filed in this period. 3D printing may have started off as a fanciful idea, but it would quickly turn into an effective option for small-scale manufacturing. A breakthrough was made in 1999 when scientists succeeded in printing a human bladder. By 2008, advances in materials science and...

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The Startup Patent Dilemma

The Startup Patent Dilemma

“I need a patent to get investment, but I need investment to get a patent!” This is something I hear quite frequently when I meet people involved with very early stage technology businesses, or those with aspirations to start a business.  My first response is usually to commend them on the fact that they are considering an intellectual property (IP) strategy at this point. As many readers will know, patents are time-sensitive. Most jurisdictions, and all the popular ones, now grant patents on a “first-to-file” basis, rather than “first-to-invent”. This means the first one to file a patent application to an invention...

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Patents in an Academic Environment

Patents in an Academic Environment

The word “inventor” tends to conjure a picture of an eccentric working late into the night in a garden shed to create weird and wonderful devices. Everything from novelty snowmen to squirrel-proof bird feeders has been patented over the years but most inventions, and inventors, do not in fact fit this stereotype at all. Many inventions arise during the course of in-house commercial research in major industries such as electronics, pharmaceuticals, telecoms or biotechnology and increasingly the academic sector is a major contributor as well. The US Bayh-Dole Act of 1980, which gave US universities control of federally funded inventions that...

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Bioinformatics: Revolutionising Healthcare?

Bioinformatics: Revolutionising Healthcare?

You have probably heard talk of bioinformatics - it is an increasingly popular field of research – but do you really know what it is, and how it is affecting research carried out in your area? In short, bioinformatics is about applying statistical and computational techniques to the analysis of biological systems. This is of particular interest in relation to the genome, where a growing number of academics and companies are interested in the applications of genetic analysis in the fields of clinical care, digital health, and personalised medicine. Since the completion of the Human Genome Project in 2003, a number...

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Women in STEM: Unsung Heroes of Vaccinology

Women in STEM: Unsung Heroes of Vaccinology

The Covid-19 pandemic has brought STEM out of the lab and into the wider public domain in a way that is relevant to us all. At the start of the pandemic in early 2020, engineers were in a race against the clock to build more mechanical ventilators; mathematical modelling was used to predict how the number of cases could grow; smartphone apps were developed to track the progress of the virus; we clapped for our healthcare professionals; and more recently we have had positive news on the rapid development of a new vaccine. As part of the Ada Lovelace Day...

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Understanding IP: Some Common Misconceptions

Understanding IP: Some Common Misconceptions

There is a growing awareness of IP in our society, and the potential value of an IP portfolio is gaining more and more attention. However, misconceptions abound. Let’s debunk five common misunderstandings:  “We have a patent, so we have the right to exploit our invention.” Unfortunately, this is not the case. In fact, IP only provides the right to stop others from doing something - it does not provide the right to do something yourself. Before you exploit your invention, you need to check to see if there are patents owned by third parties that might cover what you plan to...

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J A Kemp Webinar: Claim Scope and Sufficiency: When Does a Broad Claim Fall for Insufficiency?

J A Kemp Webinar: SPCs – Update on Recent Political and Legal Developments

J A Kemp Webinar: Priority Entitlement in Europe – Current Best Practice

J A Kemp Webinar: The Clinical Trials Dilemma

J A Kemp Webinar: Brexit - The Final Countdown - What will change for Trade Marks and Designs

J A Kemp Webinar: The Microbiome and Claiming Bacteria

J A Kemp Webinar: Strategies for Speeding up or Slowing Down Patent Prosecution

J A Kemp Webinar: Sufficiency at the EPO

J A Kemp Webinar: Dosage Patents in the UK, Europe and Beyond

J A Kemp Webinar: Opposition Practice at the EPO

J A Kemp Webinar: Obtaining Patent Protection for Polymorphs of Drug Compounds

J A Kemp Webinar: Legal Entitlement To Priority – A European Perspective

J A Kemp Webinar: Inventive Step for CII at the EPO

J A Kemp Webinar: Practical Tips On Patent Prosecution In India And China

J A Kemp Webinar: Restoration – Are you taking enough care?

J A Kemp Webinar: Infringement Matters

J A Kemp Webinar: Pregabalin

J A Kemp Webinar: When Patents Go Wrong ... And What To Do About It

J A Kemp Webinar: Is Your Patent Portfolio SPC Ready?

J A Kemp Webinar: Patenting Antibodies at the EPO

J A Kemp Webinar: How to Secure and Exploit Patents for Combination Therapies

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