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                            21 September 2021
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 ultimately – at least for EU member states – the question is likely to require a referral to the CJEU. Until that happens, however, arguably the best available guidance is that provided by the EFTA court in 2015, in its...
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                            20 September 2021
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 this briefing we review the major aspects of orphan drug legislation and the available incentives in the EU/EEA and UK. 
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                            20 September 2021
General Data Exclusivity and Market Protection in the EU / EEA and UKIn 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 for marketing authorisation must be supported by a dossier, referred to at the EMA as the common technical document (CTD), which demonstrates the quality, safety and efficacy of the medicinal product. The dossier will include non-clinical pharmacology and toxicology data,...
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                            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 or resale of those goods within the relevant market. 
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                            12 August 2021
Topical Enlarged Board of Appeal to Consider the Doctrine of PlausibilityIt 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 some technical advantage associated with the claimed invention, as compared with disclosures in the prior art. That enables the patentee or applicant to define the “objective technical problem” solved by the claimed invention as that of providing an improved product...
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                            28 July 2021
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 it might be possible to remedy certain deficiencies relating to them. 
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                            28 July 2021
Topical Biological Deposits: Strategic ConsiderationsIntroduction
It is a fundamental requirement of patent law that, in exchange for a monopoly right, a patent must disclose the claimed invention in sufficient detail to allow a person skilled in the relevant technical field to reproduce the invention. This requirement is known as sufficiency of disclosure in European practice and enablement in the US. Therefore, a biological deposit is often made, usually with an International Depositary Authority (IDA) under the Budapest Treaty, to ensure that subject matter relating to biological material that is not publically available and/or which cannot be adequately described by other means, is sufficiently disclosed. The sufficiency/enablement...
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                            23 June 2021
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. 
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                            04 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 particular an amendment which introduces the feature of a dependent claim may not be examined for Article 84 where the feature introduced corresponds to the complete dependent claim or is a simple alternative in such a claim. 
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                            04 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 is payable and no special reasons need be given.  
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                            04 June 2021
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 substance; measured indirectly, such as the tacticity of a polymer; or that can be calculated, such as the superficial velocity of a flow in a reactor.  They can also be expressed in terms of relationships between such features. 
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                            04 June 2021
General European Patent Office Opposition ProcedureEuropean 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, such as the deadline for filing an opposition and an appeal. However, there is also some flexibility in the procedure. The EPO announced in June 2016 that it aims to issue first instance decisions on “straightforward” oppositions within 15 months....
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                            24 May 2021
General IP Due DiligenceWhatever 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 a company. When looking to invest in a company that holds IP, a good understanding is needed, not only of what IP a company holds, but how that IP adds value to the company. IP is not just a matter...
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                            05 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 caveats to be applied on a case by case basis, this decision had the potential to have wide reaching consequences regarding a significant and growing area of innovation in Europe.  
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                            03 May 2021
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 to practice the invention or to use the design. 
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                            03 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 “maker”) is permitted to manufacture a medicinal product protected by an SPC for the exclusive purpose of export to countries outside the EU 1 . 
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                            29 April 2021
General Basing a Patent Prosecution Highway (PPH) Request on an allowed UK or EP Patent Application The efficacy of PPH varies from territory to territory. In some patent offices there is a history of examination being influenced by the granting of a patent by particular patent offices; PPH may work well for such patent offices. In other patent offices, requesting PPH only results in acceleration and does not guarantee allowance. 
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                            29 April 2021
General Requesting Patent Prosecution Highway (PPH) in the EPO or UK IPO The aim of the Patent Prosecution Highway (PPH) is to provide a way for applicants to use positive examination results from one patent office to streamline prosecution in a second patent office. An evolving network of different PPH agreements exists between various patent offices, including most major patent offices. 
 For both the European Patent Office (EPO) and the UK Intellectual Property Office (UKIPO) requesting PPH results in acceleration of examination and does not guarantee allowance. 
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                            01 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 the UK IPO, the EPO, and the World Intellectual Property Organization (WIPO).    
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                            31 March 2021
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 additional barriers to entry of generic products onto the market, and can thus be very useful in managing the life cycle of a patent estate for pharmaceutical and other biologically active compounds. 
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                            08 March 2021
Topical Illumina vs MGI: the High Court Considers Sufficiency, the Doctrine of Equivalents and ObviousnessThe 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 infringement and validity, including the first application of the recent Supreme Court decision in Regeneron Pharmaceuticals Inc vs Kymab Ltd relating to sufficiency.
In this briefing we consider four aspects of the judgment: one relating to sufficiency of disclosure, one...
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                            01 March 2021
General Antibodies in the European Patent Office - Advanced Guide to Drafting and ProsecutionThe European Patent Office (EPO) applies the same basic patentability criteria to antibodies as to other inventions. However, the high volume of applications in this area means that examiners have developed standardised approaches to assessing “antibody-specific” issues and these have recently been formalised in a new section of the EPO’s Guidelines for Examination (G, 11, 5.6; issued March 2021). For an explanation of the basic approach adopted by the EPO, please see our related briefing Antibodies in the European Patent Office – Basic Principles or ask your usual J A Kemp contact. This briefing is intended to develop those Basic...
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                            01 March 2021
General Antibodies in the European Patent Office - Basic Principles Over recent years, antibodies have become increasingly important as therapeutic drugs and large numbers of patent applications are filed in this area (>1000 granted by the European Patent Office (EPO) in 2019). Whilst patentability is assessed in the same way as for any other invention, the high volume of cases means that examiners have developed standardised approaches to assessing “antibody-specific” issues. These informal principles have recently been formalised in a new section of the EPO’s Guidelines for Examination ( G, 11, 5.6 ; issued March 2021). 
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                            16 February 2021
Topical Review of EPO Parameter Decisions in 2020Before 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 and can be very useful. However, their utility is not limited to such subject matter and they could be used to define characteristic features in a broad range of technologies.
The EPO has developed a large amount of case law which...
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                            10 February 2021
Topical Review of EPO Antibody Decisions January 2018 - January 2021In 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 Appeal decisions concerned with “antibody inventions” remains relatively low. We counted only 21 published decisions in the last 3 years that we considered meet this definition.
Each of the 21 decisions arises from an application with a filing date between 1999...
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                            01 February 2021
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 so can potentially lead to adverse consequences. 
 This briefing provides an overview of patent marking in the UK and some practice points for patentees to bear in mind when considering whether and how to mark their products. 
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                            27 January 2021
Topical Review of EPO Software Decisions in 2020It 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 3.5.03 held the first appeal hearing by video conference in May 2020. Previously only Examining Division Oral Proceedings had been held by video conference and rarely; it will now be quite routine, saving costs for applicants.
On substantive issues it was...
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                            07 December 2020
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. 
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                            07 December 2020
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. 
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                            02 December 2020
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 authorisation 1 . 
 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 relating to SPCs and this is expected to continue. Some of the key decisions are discussed below. 
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                            24 November 2020
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. 
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                            18 November 2020
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 will be 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 proceedings are rarer during pre-grant examination, but are typically appointed when the EPO intends to refuse the application. The Boards of Appeal also hold oral proceedings during the appeal procedure.  
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                            28 August 2020
Topical Unwired Planet v Huawei: UK Supreme Court Confirms that English Courts can Determine Global FRAND termsThe 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, 3G and 4G in the telecommunications industry). Conforming to the technical standard allows devices from different manufacturers to operate together and to use the same infrastructure. Standard Setting Organisations (SSOs) bring participants together to evaluate technologies for inclusion in a new standard....
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                            22 July 2020
General Late Entry Into European Regional Phase The deadline for requesting entry of a PCT application into the European regional phase is 31 months from the filing date or, if priority has been claimed, from the priority date (Rule 159(1) EPC). However, if this deadline is missed, remedies are available that may permit entry into the European regional phase later than this deadline. 
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                            10 July 2020
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 has previously been authorised for other therapeutic applications.   
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                            10 June 2020
Topical European Plant Patent-Eligibility Update – Enlarged Board of Appeal Decision G3/19 On  14 May 2020 , the EPO’s enlarged board of appeal  issued  its  decision in case G3/19  (“Pepper”). This derives from a referral made to the enlarged board by the EPO president in April 2019, which aimed at resolving some outstanding questions regarding patent-eligibility of plants under  Article 53(b) EPC . Contrary to earlier case law, G3/19 confirms that plants that are the products of essentially biological (i.e. breeding) processes are   not   patent-eligible. 
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                            01 June 2020
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 earlier patents for other inventions that an inventor may need to license to exploit his own invention.   
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                            27 May 2020
Topical Sky v SkyKick  The High Court has issued its decision in the  Sky v SkyKick  case. The judgment follows the Advocate General’s opinion and the Court of Justice of the European Union’s (CJEU) decision of 29 January 2020 on questions referred to it by the High Court regarding broad specifications of goods and services. 
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                            30 April 2020
Topical CJEU Confirms Strict Interpretation of Article 3(a) for SPCsOn 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 previously joined with C-114/18 (Sandoz and Hexal) because both referrals concern the interpretation of Article 3(a) of the SPC Regulation. Article 3(a) requires that:
“A[n SPC] shall be granted if…    the product is protected by a basic patent in force”
However,...
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                            25 March 2020
Topical Expediting Prosecution of UK Patent ApplicationsPatent 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 IPO, with or without a claim to priority from an earlier (e.g. foreign) patent application, or to enter the UK national phase from a PCT application.
The official fees payable to the UK IPO for prosecution of a UK national application...
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                            22 January 2020
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 the questions asked are primarily related to the narrow field of simulation of physical systems, it is possible that the answers given could have a broader impact by affecting what is considered technical. 
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                            16 January 2020
Topical URS Procedure – What it is and What it DoesThe 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 and over-criticised. In 2018 approximately 3,447 UDRP cases were filed with the WIPO, the most frequently used UDRP tribunal. Forum, the most frequently-used provider of URS disputes, saw approximately 152 URS decisions issued in the same year, down from a high...
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                            12 November 2019
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 (the “Shanks patents”). Professor Shanks considered that his patents were of outstanding benefit to Unilever and, in accordance with Section 40(1) of the UK Patents Act 1977 (PA ’77), that compensation was due. 
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                            04 October 2019
Topical New Rules of Procedure of the Boards of Appeal for 2020 The EPO has recently revised the Rules of Procedure of the Boards of Appeal (RPBA) 1 . The revised RPBA will come into force on 1 January 2020. The revisions are fairly extensive and are primarily concerned with harmonising the practices of the various different Boards of Appeal. The EPO is also hoping that the changes will increase the overall efficiency of the appeal procedure. Many of the changes may require users of the European patent system to modify their day-to-day practice, both during first instance proceedings and in subsequent appeals.  
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                            01 October 2019
Topical EU Design Strategies: Maximising the Chances of Enforcement SuccessRegistered 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 represent a new design in order to make the job of enforcement that much easier. This article considers the lessons that can be taken from those cases to inform a protection and registration strategy for new designs within the European Union....
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                            08 May 2019
Topical Claiming an Abstract Idea in a Technical Context at the EPOTwo 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 inventions were claimed as processes for converting computation graphs into a form better adapted for parallel processes but without specifying any steps of performing any processing, parallel or otherwise. At this level of generality the Board considered the inventions to...
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                            18 March 2019
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. 
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                            05 March 2019
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.  A situation where double patenting commonly needs to be considered is when the claims of a divisional application overlap with the claims of its parent application.  Under such circumstances it is necessary to determine how much overlap between the claims of the two applications should be permitted.  The case law has developed such that the EPO will generally allow substantial overlap between the claims.  
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                            28 February 2019
Topical Questions About Patent Eligibility Of Technical Simulations Referred To EPO Enlarged Board Of AppealEPO Technical Board of Appeal 3.5.07 has, in case T 0489/14 (Pedestrian simulation/CONNOR), referred questions to the Enlarged Board of appeal concerning what is to be considered technical in the fields of design and simulation. The cases of Designing optical systems/Philips and Circuit Simulation I/Infineon have long been cited as precedent that the design or simulation of a technical system is itself technical and eligible for patent protection. However, some more recent cases have put limits on that proposition, suggesting that the technical system must be defined with sufficient specificity and that the purpose of the simulation might also be...
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                            13 February 2019
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. As can be seen from the chart, the result is that the number of EP patents granted since the launch of the initiative has increased far more quickly than the number of patent applications filed. This is confirmed by our experience, in which a quicker turnaround time has been noticeable, with an increasing number of applications proceeding to grant directly after a response to the search report is filed. 
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                            13 February 2019
General Late-Filed PCT Application This briefing explores the options available to applicants in the event that the deadline for filing a PCT has been missed. In this context we refer to the deadline for filing a PCT application that is set by the twelve month deadline for claiming priority under the Paris Convention. A successful claim to priority may be important, particularly if the applicant has disclosed their invention after filing their first application and wishes to proceed with national and/or regional phases in which no grace period is provided for disclosures by the inventor/applicant. 
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                            13 February 2019
General Re-Establishment of Rights at the European Patent Office Under Article 122 EPC Re-establishment of rights under Article 122 EPC may be used to recover rights lost as a result of missing a deadline set by the European Patent Office. The requirements of this provision are shared with a number of restoration systems worldwide. There is much variation from regime to regime. However, the European Patent Office approach is well established, with a history of case law that makes it clear what is needed to successfully recover rights in Europe. 
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                            13 February 2019
General Demonstrating Due Care The central issue when seeking restoration or re-establishment of rights in many countries is establishing that due care was taken. This is certainly true of cases before the European Patent Office. This paper reviews what issues may need to be addressed in order to demonstrate due care to the European Patent Office when preparing grounds for re-establishment of rights. Other offices, such as the International Bureau, follow a similar approach to the European Patent Office. 
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                            31 January 2019
Topical Review of Software Patent Appeals at the EPO 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 involving non-technical aims or features as well as technical ones) and how to determine what is and is not technical. 
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                            04 December 2018
Topical Warner Lambert v Actavis: Supreme Court Considers Medical Use Claims The Supreme Court in the UK handed down its decision in  Warner-Lambert v Actavis  on 14th November 2018 (and a copy of the complete decision is available  here ). The Supreme Court considered the following issues in its judgment: 
 
 how much data is required in the application as originally filed to support a second medical use claim; and 
 the circumstances under which “cross label use” for the patented indication of a drug sold by a competitor company can constitute infringement of a second medical use claim. 
 
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                            06 November 2018
Topical Unwired Planet International Ltd & Anor v Huawei Technologies Co Ltd & Anor [2018] EWCA CIV 2344 (23 October 2018)The Court of Appeal has given its decision in the appeal against Birss J’s decision in Unwired Planet International Ltd v Huawei Technologies Co Ltd  relating to standard essential patents (SEPs) and how to determine fair, reasonable, and non-discriminatory (FRAND) terms. The Court of Appeal upheld Birss J’s decision (which we reported here) in all respects except one, holding, in summary, that a global licence was FRAND in this case, and that the FRAND requirement does not require the patentee to grant licences on equal terms to all third parties. The Court of Appeal overturned Birss J’s decision that there...
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                            19 October 2018
Topical Updates to the EPO Guidelines for Examination Relating to CIIThis 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 to computer science per se are handled in various examining divisions according to the function performed by the computer and its software. Thus, significant variation in practice had arisen between different examining divisions. This year’s set of amendments is the...
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                            18 October 2018
Topical Retailing of Services in Trade Mark SpecificationsUntil 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. In 2014, the CJEU Netto Marken Decision confirmed that retailing of services can also be a commercial activity in its own right and capable of protection. The UKIPO subsequently published guidelines on how to word retailing of services specifications to...
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                            04 October 2018
Topical Company Names and Trade Mark Infringement - The UK Company Names Tribunal The Company Names Tribunal (CNT) was established on 1 October 2008 in order to provide brand owners with a cost-effective method of enforcing their trade marks against the registration of similar company names. The CNT has proven a useful tool against so-called “opportunistic” company name registrations, although there are some limitations to what it can achieve. 
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                            02 August 2018
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 such character. It remains to be seen whether the CJEU decision signals the end for Nestlé’s trade mark registration, or is merely one decision in a series of appeals set to continue for some years to come. 
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                            25 July 2018
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. The Search Examiner is obliged to consider those comments when preparing the International Search Report and the Written Opinion on patentability. 
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                            06 July 2018
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. Some countries impose translation requirements as part of the validation procedure. In general, any required translations must be submitted within three months of the grant date of the patent. 
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                            15 June 2018
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. In summary, companies should 1) know what their trade secrets are and 2) take steps to keep them secret. 
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                            14 June 2018
General Inventive Step for Software Inventions at the EPOThe EPO has long adopted an approach to consideration of inventive step known as the problem and solution approach. Although this approach is fundamentally the same across most technical areas, special considerations apply for software related inventions. Firstly, the EPO looks for an invention to be the technical solution to a technical problem and so disregards non-technical aims/features, which are common in software fields. Secondly, the EPO Boards of Appeal often have quite high expectations of the capabilities of the ordinary person skilled in the art and thus a high threshold for inventive step. We discuss these issues below with...
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                            26 April 2018
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 member states was not enough to establish acquired distinctive character in the relevant territory as a whole, though noting that in some cases it may be possible to extrapolate evidence for one country to another. 
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                            04 April 2018
Topical Obscure Disclosures - Burden of Proof is on the Right Holder   
 The novelty requirements for EU registered designs have peculiar provisions aiming to protect the validity of designs from obscure disclosures outside the EU. The Crocs case ( T-651/16 ) provides some pointers as to when an internet disclosure might be considered obscure but holds that there is a presumption that a website will have been seen by someone from the relevant sector within the EU despite the fact that the designer’s business was located outside the EU. 
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                            20 March 2018
Topical Functional Designs in Europe - A New Approach to Judging Functionality Design law in Europe 
 Design law in Europe has long sought to deny protection to “functional” designs but stops short of requiring that a design must have an aesthetic quality. This is achieved in the Community Designs Regulations 6/2002/EC (CDR), Article 8(1), by denying protection to designs which are “solely dictated by [a product's] technical function”.  
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                            07 March 2018
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. 
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                            05 March 2018
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. 
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                            17 January 2018
Topical Review of EPO Board of Appeal Decisions in 2017 Relating to Software Inventions 2017 was a year of change for the Boards of Appeal of the EPO: a new President 1  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 in 2016 and Board 3.5.01 in particular has significantly increased its output in the latter part of the year as it now has a chairman. 
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                            10 January 2018
General Disclaimer Practice at the EPO The European Patent Office (EPO) uses the term “ disclaimer ” to refer to a negative feature in a claim of a patent application.  Negative features are those which exclude certain subject matter from the scope of protection.  While a positive feature in a claim may for instance take the form “ wherein the composition comprises X ”, a disclaimer would take the form “ wherein the composition does  not  comprise X ”.  
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                            14 December 2017
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 for infringement and one for non-infringement – so it is instructive to consider what factors affect a finding of infringement. We review the relevant points of the three cases and draw some practical conclusions. 
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                            30 November 2017
Topical Guidelines for Examination: EPO's Revised Procedures for User Interfaces The EPO has published its yearly update to the Guidelines for Examination, which came into force on 1 November 2017. The updated Guidelines for Examination can be found  here , with a list of the amendments made compared to the current version available  here . 
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                            16 November 2017
Topical Guidelines for Examination: EPO's Revised Procedures for Presentations of Information The EPO has published its yearly update to the Guidelines for Examination, which came into force on 1 November 2017. The updated Guidelines for Examination can be found  here , with a list of the amendments made compared to the current version available  here . An overview of the changes is provided in our news item  here . 
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                            14 November 2017
Topical Clarification of the Concept of the "Notional Business Person" In May 2017, we  reported  on two “CardinalCommerce” decisions 1  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 and perhaps limiting the utility of the CardinalCommerce to applicants seeking to patent mixed inventions. 
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                            26 July 2017
General How to Use Experimental Evidence in English Patent LitigationExperimental evidence can play a valuable role in patent litigation. It is not uncommon in patent validity proceedings for an expert will say to they would, when presented with a piece of prior art, have conducted a particular experiment in order to progress the research. Without then conducting the actual experiment that they said they would have done, it is impossible to know what the result of that experiment would have been. Knowing the result of that experiment is sometimes critical to a case, such as when the defendant argues the patent is invalid due to lack of novelty or...
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                            21 July 2017
Topical Lilly v Actavis - Supreme Court Introduces a Doctrine of Equivalents in the UK The UK Supreme Court’s judgment in Lilly v Actavis has profound implications for the scope of protection provided by patent claims in the UK. 
 The judgment moves away from the principle that the patentee should enjoy the full extent, but no more than the full extent, of the monopoly that a reasonable person skilled in the art, reading the claims in context, would think he was intending to claim. Rather, following this new decision, a patent claim in the UK can be infringed by products or processes that are not within the ambit of the language used in the claims. 
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                            01 July 2017
Topical EU Wide Patent Court Will Miss December Start Targets The planned European Union-wide patent court and related patent right will not launch in December as planned. 
 The Unified Patent Court preparatory committee said June 7 that the delay was caused by several countries failing to agree to the protocol on UPC Provisional Application. The protocol allows parts of the UPC agreement, the controlling document for the court, to come into effect earlier. 
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                            20 June 2017
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. 
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                            31 May 2017
Topical Patent Box for the Software Industry The software industry has been a major beneficiary of the R&D tax credit regime in the UK. Although more obviously suited to the manufacturing and pharmaceutical industries, the software industry can also benefit from UK Patent Box legislation. 
 One aim of the Patent Box legislation is to provide an additional incentive to locate in the UK high-value jobs associated with the development and exploitation of patented technologies. To achieve this the Patent Box legislation allows companies to pay a lower rate of UK corporation tax for profit attributable to qualifying patented technology. 
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                            29 May 2017
Introductory Overview of Intellectual PropertyIntellectual property (IP) rights are legal rights which provide protection for your innovative and creative endeavour.  For example, IP could relate to something that you have created, such as a brand, an invention or a design, or could relate to information that you have developed or collated.  When people talk about IP, they usually mean IP that can be registered: trade marks, patents and designs.  However some IP rights arise automatically (so-called unregistered rights), such as copyright and unregistered designs.  Each form of IP right has a different purpose in protecting a different aspect of your work and can be...
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                            25 May 2017
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. 
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                            12 May 2017
Introductory Where to File Your Patent ApplicationsWhen 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 you are not UK based.  The UK Intellectual Property Office carries out searches quickly and cheaply; this can give you an indication of the patentability of your invention before you incur the costs of filing in other countries.  UK applications must...
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                            03 May 2017
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 the [technical] art". 
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                            11 April 2017
General Made in China - Trade Mark Perils, Pitfalls and Possibilities China produces nearly a quarter of all global manufacturing output.  It is therefore no surprise that a large proportion of Western companies are partially or wholly reliant on the Chinese manufacturing industry for the production of their products, and that many such companies are keen to go a step further and establish a presence in China. 
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                            04 April 2017
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. 
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                            04 April 2017
Introductory The Intellectual Property Enterprise Court - A Streamlined ProcedureThe Intellectual Property Enterprise Court (IPEC) is an alternative venue to the High Court of England and Wales for intellectual property litigation, patent, design, trade mark, copyright and trade secret cases.  The IPEC typically hears less complex cases than the High Court (Patents Court), and provides monetary caps on claims.  The IPEC (formerly known as the Patents County Court) has proved attractive, in particular for small and medium sized enterprises (SMEs), as a fast and cost effective IP litigation forum.  There is a cap on the monetary value of claims before the IPEC of £500,000.
J A Kemp’s Litigation and Dispute...
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                            04 April 2017
General Is it Worth Filing in China?Whether or not it is worth filing intellectual property rights IPRs in China is likely to be influenced by how you plan to develop your business.  Are you planning to exit by selling your business, or assigning or licencing your product globally?  Most investors and buyers will look for Chinese IPRs, and if you have none then this may affect the level of interest, or the price you can obtain.  If on the other hand you are planning to grow your business yourself, then you should consider whether the cost of filing and maintaining an intellectual property right in China...
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                            01 April 2017
General What Constitutes Making a Patented Product? - Schuetz v WeritThe Supreme Court, the highest Court for England and Wales, has given guidance as to considerations to take into account when deciding whether an activity can be regarded as “making” a patented product and thus infringing a patent.  This Decision has relevance for activities including reconditioning and repairing of patented articles and for sale of spare parts and even consumables of larger patented articles.
The Decision makes it clear that the question of whether an activity is “making” is “one of fact and degree”.
The Decision concludes that there are no fixed principles nor any single simple test to assess what constitutes...
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                            29 March 2017
Topical Supreme Court Agrees to Call a Ladybird a Ladybird The 9 March 2016 judgment of the Supreme Court concludes the saga between PMS International Group Plc and Magmatic Limited.  Magmatic, who make the “Trunki” suitcase, have exhausted all avenues available for obtaining a decision that the PMS “Kiddee Case” infringes their design rights. 
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                            01 February 2017
Topical G 1/15 EPO'S Enlarged Board of Appeal Prescribes an Antidote to Poisonous DivisionalsIn 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 the priority application, provided that the claims of the priority-claiming European application contain exclusively broadening amendments compared with the disclosure in the priority filing. However, the wider reasoning in the decision emphasises the continuing importance of carefully drafting both priority applications...
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                            02 January 2017
Topical EPO Board of Appeal Decisions on Software Patents in 2016Notwithstanding 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 definition of what is and is not technical. Backlogs appear to have risen, due no doubt to the freeze on recruitment of Board members and consequent vacancies. This article discusses some statistics from 2016 of the various Boards of Appeal...
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                            08 December 2016
Topical Design Rights in Lockers Secured We are pleased to report the successful enforcement of our client Action Storage Systems Limited’s UK unregistered Design Rights in their highly successful eXtreme plastic locker.  The IPEC judgement, handed down by Judge Hacon on 7 December, demonstrates the power of the unregistered Design Right in restraining copying and the power of disclosure in revealing evidence of copying.  Various defences were raised and although none displaced the fact of infringement of the overall design, they did give rise to some interesting points of law. 
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                            01 November 2016
Topical UK Extends Copyright Terms for Artistic Works In July, the U.K. repealed a provision that provided a shortened term of copyright protection for ‘‘artistic works.’’ Because this change also revives protection that had expired under the old law but would be revived under the new, rights holders in certain industries such as furniture makers may now have resurrected rights that can be asserted against those copying their works. 
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                            31 August 2016
General Protecting Software Inventions in Europe The protection of software inventions in Europe and the United States has often been described in terms of a pendulum swinging between a liberal position, in which almost anything can be protected, and a restrictive position, in which it is much harder to obtain patents for inventions relating to or using software.  While the United States has recently taken a decisive swing to the restrictive side, the position in Europe has been relatively stable for the best part of a decade. 
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                            29 June 2016
Topical Fujifilm Kyowa Kirin Biologics v Abbvie Biotechnology LtdSince April 2014, it has been possible to file multiple divisional applications from any European patent application pending at the European Patent Office (EPO).   Divisional applications can be filed from a European application which is itself a divisional application.  Further, the EPO’s rules on double patenting are relatively liberal1. 
In some cases, Applicants have used these rules to file multiple divisional applications with similar claims.  These divisional applications can then be kept pending at the EPO while challenges to the parent patent are determined in EPO opposition proceedings and/or in national litigation.  If the parent patent is revoked, or is found...
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                            19 May 2016
General Software - Virtual Disclosure at the EPO In the 2016 decision T 2440/12-Fluid flow simulation/SIMCON, Technical Board of Appeal 3.5.07 has found that a commercially available software package makes the methods it embodies available to the public because it could be run line-byline in a virtual machine (VM). 
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                            12 May 2016
General Patent Box - Patent Strategy Considerations The Patent Box makes the existence of a patent more attractive, whatever the breadth of the patent’s claim, so long as it covers the product (or process or service).  A company may wish to adapt its strategies both for filing and prosecuting patent applications and for patent and patent application abandonments. 
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                            12 May 2016
General Patent Box - Are you a Qualifying Company? In order to benefit from the Patent Box, the beneficiary must be a qualifying company as defined in the legislation. We discuss here the requirements of a qualifying company. 
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                            12 May 2016
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. 
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                            12 May 2016
General Patent Box - What is Relevant IP Income?We discuss here issues relating to which income streams can qualify for the Patent Box. The Patent Box legislation defines what income streams count as relevant IP income. The calculation of relevant IP income is used in determining an amount deductable from the profits of the trade for the calculation of UK Corporation Tax liability. Determining the amount deductable from the profits of the trade will ultimately lead to the amount of UK Corporation Tax due being equivalent to paying a rate of 10% on the relevant IP income (following certain deductions as explained in our separate Briefing “Patent Box...
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                            12 May 2016
General When Should you Elect In to the Patent Box? A company must elect in to the Patent Box regime in order to take advantage of the reduction in payable UK Corporation Tax.  For some companies there may be advantages in delaying entry into the Patent Box.  This Briefing looks at this issue. 
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                            12 May 2016
General How to Calculate the Patent Box Benefit We outline here the accounting steps which are necessary to calculate the Patent Box benefit. 
 We also present a simplified example calculation which may help you to estimate the amount of saving in UK Corporation Tax you might expect to make if you were to elect in to the Patent Box regime under either the pre- or post- 1 July 2016 Patent Box rules. 
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                            21 March 2016
Topical EU Trade Mark Reforms Come into Force - Time to Review Your Specifications Following several years of discussion on proposed reforms to trade mark law in the EU, a new Trade Mark Regulation comes into force in the EU today, 23 March 2016.  The reforms also impact on the laws of EU Member States, who have three years to implement a new Trade Mark Directive into their national laws. 
 From today, the Office for Harmonisation in the Internal Market (OHIM) will be known as the European Union Intellectual Property Office (EUIPO), Community Trade Marks (CTMs) will be known as European Union Trade Marks (EUTMs), and various other changes come into effect. 
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                            11 March 2016
Introductory Introduction to Registered Designs Since Apple asserted a Community Registered Design against Samsung in 2012 in connection with their tablets' design rights, design rights have risen in profile.  Although Apple were ultimately unsuccessful at proving infringement in some countries, the case illustrates that even a simple registered design can be a useful tool that cannot be ignored by competitors.  For example, in the UK, the Intellectual Property Enterprise Court means that there is now an effective mechanism for enforcing registered designs that is relatively cheap, quick and efficient. 
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                            10 February 2016
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 to be a joint tortfeasor. 
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                            03 February 2016
Topical EU Trade Mark Reforms Adopted by EU Parliament On 15 December, the European Parliament approved a new package of proposed reforms to trade mark law in the EU, marking an important step towards entry into force of a new Trade Mark Regulation, and the implementation of a new Trade Mark Directive.  The reforms, which were discussed in detail in our briefing of 29 October, constitute some of the most important changes to EU trade mark law since the introduction of the Community Trade Mark system in 1996. 
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                            28 January 2016
Topical EPO Board Of Appeal Decisions On Software Patents 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 notable decisions.  
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                            26 November 2015
General Why Does My Start-Up 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. 
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                            09 November 2015
Topical CJEU Decision on Geographical Extent of CTM Reputation Article 4(3) of Directive 2008/95/EC [and corresponding Article 9(1)(c) of Council Regulation (EC) No 207/2009] deal with rights based on CTMs that have a reputation in the EU.  The wording of Article 9(1)(c) reads: 
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                            29 October 2015
Topical Reform of EU Trade Mark LawEarlier this year, and following several years of discussion and consultation, the EU Council published the latest versions of a new package of proposed reforms to trade mark law in the EU.  The reforms encompass a new Trade Mark Directive and Regulation, intended to foster innovation and economic growth in the EU by providing accessible and efficient trade mark registration systems in terms of costs, complexity, speed, predictability and security.  The reforms aim to ensure coexistence and complementarity between the trade mark systems of the EU, to modernise the existing provisions and streamline procedures.  Whilst the wording of the latest...
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                            05 October 2015
General The Hague System for the International Registration of Industrial DesignsThe Hague system is the international application and registration procedure for designs and offers a very attractive and efficient way of obtaining design protection in multiple states with the filing of just a single application. 
Widespread use of the Hague system was previously limited due to the absence of some major states from the system.  However, recent expansion of the Hague system to include the United States of America and Japan means that a single application can now lead to design protection in the US, Japan, Republic of Korea and the European Union, as well as over 50 other states around...
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                            24 September 2015
General Attacking Patents and Applications in Europe and the UK Third party patents can represent significant obstacles to achieving a commercial goal.  The opposition procedure at the European Patent Office (EPO), if used successfully, can provide a cost-efficient mechanism for removing or limiting a troublesome patent.  As a general rule, it is relatively cheap compared to national litigation and the centralised procedure means that revocation or limitation of a European patent in the opposition procedure applies in all of the validation states.  However, EPO oppositions are often slow, in particular when the appeal stage is taken into account. 
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                            03 September 2015
Topical Amendments to the UK Patents Act to Extend the Bolar Exemption for Clinical Trials The UK Patents Act was amended on 1 October 2014 to clarify the extent to which conducting clinical trials to assess the safety and efficacy of a patented drug can constitute patent infringement.  This briefing contains a discussion of the amendments and of the situation before the future European Unitary Patent Court (UPC). 
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                            01 July 2015
Topical Is Use Alone Enough to Defend a Community Trade Mark from Non-Use Challenge?A Community trade mark is liable to be revoked “if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; …" (CTMR Article 51(1)(a)). In The Sofa Workshop Ltd v Sofaworks Ltd [2015] EWHC 1773 (IPEC), His Honour Judge Hacon held that “genuine use in the Community” will in general require use in more than one Member State and that two CTMs which had been used in the...
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                            23 June 2015
Topical Court of Appeal Divided Over Use of 'Own Name' Defence to Trade Mark Infringement The Court of Appeal has delivered its decision on Roger Maier and Assos of Switzerland SA v. ASOS plc and ASOS.com Limited, the latest in a long-running series of trade mark disputes between Assos, the manufacturer of high-quality cycling clothing and sportswear, and Asos, the online fashion retailer.  The case considers the extent to which an infringer is able to rely on the “own name” defence to trade mark infringement under Article 12 of the Community Trade Mark Regulation (CTMR). 
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                            16 June 2015
Topical When Can Shape Trade Marks Be Registered? On 11 June 2015, the Opinion of Advocate General Wathelet was delivered in Case C-215/14, Nestle v Cadbury,   a case concerning the registrability of the shape of the well-known Kit-Kat chocolate bar. 
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                            04 March 2015
Topical Enterprise v Europcar - High Court Rules in Favour of Enterprise in the Battle of the LogosIn the first High Court trade mark judgement of 2015, Mr Justice Arnold recently delivered his decision in Enterprise Holdings, Inc v Europcar Group UK and Another [2015] EWHC 17 (Ch).  The well-known car rental companies were in dispute over the fact that both use an ‘e’ logo on a green background, with Enterprise claiming that Europcar’s use of its ‘e’ logo infringed Enterprise’s earlier rights in its own ‘e’ logo.
Arnold J held that, although the marks were only similar to a low degree, there was a likelihood of confusion, and found in Enterprise’s favour on the grounds of trade...
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                            19 December 2014
Topical CJEU Rules on the Registrability of Shape Trade Marks The CJEU has delivered its decision on Case C-205/13 Hauck GmbH v Stokke A/S & others regarding the registrability of shapes as trade marks.  The case concerns the grounds for refusal or invalidity of a shape trade mark under Article 3(1)(e) of the Trade Marks Directive (2008/95/EC), which provides that a sign shall not be registered as a trade mark or, if registered, shall be liable to be declared invalid, if it consists exclusively of: 
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                            21 November 2014
Topical Court Of Appeal Upholds UK Approach To SoftwareEarlier this month a Judgment1 was issued by the Court of Appeal which reiterated the UK Courts’ approach to the exclusion of an invention relating to computer programs (as such).  The Court of Appeal rejected the Lantana application, upholding the Judgment issued by the Patents Court last year. 
The Lantana claim includes two computers and a data retrieval system which allows a user at a first, local computer to obtain a file from a second, remote computer.  On request of the file, the local computer sends an email via the Internet to the remote computer, the email containing machine-readable instructions and an...
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                            18 September 2014
Topical A Narrowing of the Scope of Protection of Black and White Marks in Europe On 15 April 2014 the European Trade Mark and Design Network (Europeantmdn) published   The Common Communication   on the Common Practice of the Scope of Protection of Black and White Marks.  This publication stems from the Convergence Programme, a joint project between the European Community Trade Marks Office (OHIM) and the National Trade Mark Offices (TMO) of the EU, whose goal is to achieve practice convergence in several areas  where different practices exist across the EU.  OHIM updated its Guidelines to reflect the new practice on 2 June 2014 but other participating Offices, including the UKIPO, have yet to do so. 
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                            25 July 2014
Topical Store Design Capable of Trade Mark Registration The decision of the CJEU as to whether a representation of the layout of a retail store, in this instance a flag-ship Apple ®  store, was capable of registration as a trade mark was delivered in July (Case -421/13 Apple Inc. vs. Deutches Patent and Markenmat (DPMA)).  The mark applied for is below: 
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                            15 June 2014
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 straight into battle and take immediate action.  Your first instinct may be to contact the infringer straight away and tell them to stop infringing. 
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                            05 March 2014
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 the registered design and on what level a comparison should be made with an alleged infringement. 
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                            05 March 2014
Topical Providing "Proof of Right" - An Unwelcome Additional Burden on Applicants in India Section 7(2) of the Indian Patents Act requires that when an application is made  “by virtue of an assignment of the right to apply for a patent for the invention” , then it is necessary to file  “proof of the right to make the application” .  The so-called “proof of right” is normally a “Form 1” signed by the applicant and the inventors.  Alternatively, a certified/notarised copy of an assignment of rights in the invention in India from the inventors to the applicant can be filed in place of a “Form 1”.  
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                            11 February 2014
Topical Evidence of Co-Existence of Limited Use in Trade Mark Opposition Proceedings The General Court (GC) has handed down a judgment in Case T-285/12 The Cartoon Network, Inc. v OHIM and Boomerang TV, SA.  On 2 October 2013, the GC upheld the Decision of OHIM’s Board of Appeal and allowed an opposition to a CTM application for the plain word mark BOOMERANG on the basis of an earlier figurative registration for BOOMERANG. 
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                            13 January 2014
Topical Parallel Imports - Speciality European Pharma Ltd v Doncaster Pharmaceuticals Group Ltd The term “parallel imports” describes the purchase of trade marked or patented goods in one member state of the European Union (EU) and the subsequent export of those goods to another member state for resale.  Where EU law provides that a trade mark owner’s rights are exhausted after goods bearing the mark are first put on sale with his consent anywhere within the European Economic Area (EEA), the practice of parallel importation is permissible, subject to compliance with certain principles and procedures. 
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                            18 November 2013
Topical Compulsory Licences in India Many countries have provisions which allow for compulsory licences to be granted under exceptional circumstances.  However, in recent years, these provisions have only rarely, if ever, been used. 
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                            18 October 2013
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). 
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                            01 October 2013
Topical Patenting Human Gesture Recognition Two recent decisions of an EPO Technical Board of Appeal recognise that recognition of human gestures, e.g. as a method of computer input, is technical.  The Board overturned refusal of two European patent applications relating to the recognition of specific sequences of human gestures using a computer touch pad.  In these refusals, the Examining Division had asserted that human gestures are inherently non-technical as a matter of policy and cannot therefore contribute to inventive step. 
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                            19 September 2013
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 technical contribution provided by a patent is assessed. 
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                            18 September 2013
Introductory Using IP to Succeed in Tech Transfer Transforming research carried out in institutions such as universities and hospitals into commercial products and services can be a long and complex journey, but the results can provide significant income for the institutions involved, as well as improving the lives and prosperity of the public. 
 IP often plays a central role in the success or failure of a project.  It is crucially important to adopt the right strategies, both in terms of how an IP portfolio is grown and how it is used. 
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                            28 August 2013
Topical The Exclusion from Patentability of Diagnostic Methods at the European Patent Office Article 53(c) EPC specifies various patentability exclusions, including “diagnostic methods practised on the human or animal body”. This exclusion was considered in opinion G1/04 1  of the Enlarged Board of Appeal. The Enlarged Board identified two requirements that must both be met for a claim to be excluded from patentability. Firstly, the claimed method must include all the steps necessary to reach a medical decision on diagnosis. Secondly, all the technical steps of the method must require the presence of the human or animal body. This two-part test has subsequently been developed in several Technical Boards of Appeal decisions. 
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                            16 August 2013
General The Exclusion from Patentability of Surgical Methods at the European Patent Office Article 53(c) EPC specifies a number of exceptions to patentability in the field of medicine, including “ methods for the treatment of the human or animal body by surgery ”.  These exceptions to patentability were included in the EPC on socio-ethical and public health grounds to ensure that medical and veterinary practitioners remain free to take any action necessary to treat or diagnose illnesses. 
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                            29 July 2013
Topical Genuine Use of Figurative Marks and Significance of Colour in Infringement ProceedingsThe Court of Justice of the European Union (CJEU) has recently issued its decision in response to a reference from the English Court of Appeal.  In Case C-252/12, 18 July 2013, Specsavers International Healthcare Ltd, Specsavers BV, Specsavers Optical Group Ltd, Specsavers Optical Superstores Ltd v Asda Stores Ltd, the CJEU held that a figurative mark is put to genuine use where a word mark is superimposed over it, provided that the distinctive character of the figurative mark remains intact.  The CJEU has also held that where a figurative mark is registered in black and white, but has been used...
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                            20 March 2013
Topical Community Trade Marks and Genericism: The Perception of the Mark by the End Consumer will Trump the View of Any Trade IntermediariesThe Court of Justice of the European Union (CJEU) has recently handed down a rare judgment concerning the circumstances in which a trade mark can be found to have become the generic name of a product.  In Case C-409/12 Backaldrin Osterreich The Kornspitz Company GmbH v Pfahnl Backmittel GmbH, 6 March 2014, the CJEU found that it is the perception of the end consumer, rather than intermediaries within the supply chain, which is determinative.  If these consumers recognise a sign as the name of the product, rather than an indication of its trade origin, then the mark has become generic,...
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                            01 March 2013
Topical The Unclean Shower - Kohler Mira v Bristan This recent Patents County Court Judgment illustrates two points very well: how the UK unregistered Design Right allows a rightsholder to decide the extent of their rights after the event and the difficulty of proving a clean, independent design process.  
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                            12 March 2012
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 again.  Following use, a trade mark becomes a symbol with which your reputation and goodwill are associated.  It is therefore likely to be one of your most important assets, deserving the best possible protection. 
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                            12 March 2012
Introductory Patent Filing: What to Expect During Patent Prosecution After your patent application has been filed at one (or more) of the many Patent Offices around the world, it will be processed by that Patent Office.  This is known as the patent “prosecution” process. 
 This Briefing provides an overview of what to expect.  However there are many local differences to take into account.  The law and practice that govern the details of the procedures followed by the Patent Office vary widely from country to country.  The cost involved and the time taken to process applications also vary from country to country, and indeed from case to case. 
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                            12 March 2012
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 property (IP) strategy.  It is usually the most important part of such a strategy for technology-based companies.  The IP strategy should follow the company’s R&D strategy which in turn should follow its overall business strategy. 
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