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Independent Thinking Collective Excellence

Briefings

05 May 2021

Topical

The Enlarged Board of the EPO Establishes a Definitive Approach to Patentability of Simulations

Computer-implemented inventions such as simulations are dealt with at the EPO using the well-established Comvik approach for determining patentability. However, questions have been raised by some technical boards of appeal regarding the application of the Comvik approach to inventions based on simulations, particularly those which as claimed did not have a physical effect or interact with the real world in some way. In general, older case law was generally cited as precedent that the design or simulation of a technical system was itself technical and eligible for patent protection. However, more recent cases have perhaps limited the extent to which...

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03 May 2021

Introductory

Third Party Intellectual Property

When developing a new product, it is therefore important to check whether any third parties hold IP rights that could prevent you from carrying out your intended commercial activities and, where necessary, clear the way by ensuring that you will not infringe such IP rights.  Checks for potentially relevant third party patent or design rights are generally referred to as “freedom to operate” (FTO) studies. Checks and analysis for prior trade mark rights involve a wholly different set of parameters and concerns, and are not the subject of this briefing note.  They are however extremely important to carry out before...

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03 May 2021

Topical

SPC Manufacturing Waiver

The rights of manufacture include authorisation for ancillary activities which are “strictly necessary” to enable the manufacture and export of the product. These include, for example, the importation of API into the EU to enable the preparation of a formulated medicinal product and the temporary storage of product or medicinal product within the EU for the exclusive purpose of export to countries outside the EU. Rights will also extend to contract manufacturing organisations and distributors acting on behalf of the party which is exporting the medicinal product. In addition, for the final six months prior to SPC expiry, the right to...

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29 April 2021

General

Basing a Patent Prosecution Highway (PPH) Request on an allowed UK or EP Patent Application

The Main PPH Agreements There is a large network of different PPH agreements, with new agreements regularly being made. In practice, however, the requirements for requesting PPH are very similar in most patent offices. Some of the main PPH pathways are: IP5 PPH – an agreement between five of the biggest patent offices: the Chinese Intellectual Property Office (SIPO), European Patent Office (EPO), Japanese Patent Office (JPO), Korean Intellectual Property Office (KIPO), and the United States Patent and Trademark Office (USPTO). A PPH request in a participating patent office may be based on the results of examination of an application in another...

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29 April 2021

General

Requesting Patent Prosecution Highway (PPH) in the EPO or UK IPO

The Main PPH Agreements There is a large network of different PPH agreements, with new agreements regularly being made. The main PPH pathways are: IP5 PPH – an agreement between five of the biggest patent offices: the Chinese Intellectual Property Office (SIPO), Japanese Patent Office (JPO), Korean Intellectual Property Office (KIPO), EPO and the United States Patent and Trade Mark Office (USPTO). A PPH request in a participating patent office may be based on the results of examination of an application in another participating patent office or based on a PCT work product produced by a participating patent office. A PCT work...

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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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Insights

Sailing Close to the Wind: Budget Brands

Sailing Close to the Wind: Budget Brands

What do hair serums, salmon fillets and caterpillars all have in common? The answer is of course that they have all been the subject of high-profile trade mark disputes. The arrival of budget supermarkets in the UK has increased competition and provided consumers with greater choice. However, in seeking to compete with more familiar and established household names, these lower-cost retailers have often ‘sailed close to the wind’ by bringing to market a wide range of so-termed ‘copycat’ or ‘imitation’ brands. Whilst some may argue that these ‘copycat’ brands simply provide busy shoppers with helpful ‘visual cues’ to familiar product types,...

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Marvellous Messenger – The Magic of mRNA Vaccines

Marvellous Messenger – The Magic of mRNA Vaccines

The human body is constantly encountering agents with the potential to make us ill. Most of the time these pathogens either fail to pass our physical barriers (like skin and mucus) or they lose the arms race with our ever-vigilant immune systems. Sometimes, though, we could do with some extra help – which is where vaccines come in. The modern concept of “vaccination” originated with Edward Jenner, who showed in 1796 that an extract from a cowpox pustule could protect against smallpox, although the same principle had been used around the world long before that. Jenner’s vaccine worked by training the...

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Loose Lips Might Sink IP Ships

Loose Lips Might Sink IP Ships

You have just come up with a new and exciting invention. Understandably, you are keen to disclose your invention – perhaps to a potential investor or external collaborator. However, disclosing your invention in the wrong way, at the wrong time, or to the wrong person, may prevent you from being able to effectively commercialise your invention. In particular, you may find that you are unable to obtain useful patent protection for your invention. So it is important to understand how the inevitable tension between disclosing and patenting your invention can be effectively managed. Two of the fundamental requirements to get a...

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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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Webinars

J A Kemp Webinar: Patenting Antibody Pharmaceuticals at the EPO

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: 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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