News

23 February 2021 New Referral to EPO Enlarged Board of Appeal on Non-consensual Oral Proceedings Held by Video Conference It has been reported that an EPO technical Board of Appeal has referred a question to the Enlarged Board of Appeal concerning the legality of holding oral proceedings by video conference before the Boards of Appeal without the consent of the parties. It appears that the referral was made by technical Board of Appeal 3.5.02 in appeal case T1807/15 during... Read more

23 February 2021 High Court Judgment Highlights Importance of Professional Representation The recent case of Reaux-Savonte v Comptroller-General of Patents ([2021] EWHC 78 (Ch)) concerns an appeal from a decision of the Comptroller General, dated 19 May 2020, in which the Comptroller held that a patent application (GB1520019.9) should be refused because the application was excluded from patentability under section 1(2)(c) of the Patents Act 1977 as a program for a... Read more

5 February 2021 EPO Publishes Draft Version of Updated Guidelines for Examination The new version of the EPO’s Guidelines for Examination is due to come into force on 1 March 2021. In advance of the Guidelines entering into force, the EPO has now published a draft version of the Guidelines here. Previously, the Guidelines were published in November each year. However, the EPO departed from this schedule last year and the EPO... Read more

26 January 2021 Restrictive Preliminary Injunction Practice in Germany Challenged Following Referral to CJEU Over the last few years certain Regional Courts in Germany have refused to grant preliminary injunctions to patentees unless the patent has been held valid in opposition proceedings at the European Patent Office (EPO), or in nullity proceedings before the German Federal Patent Court. This contrasts with practice elsewhere in Europe, including in the UK, where a preliminary injunction can... Read more

13 January 2021 Further Delay to German UPCA Ratification Following the passing in Germany of the Bill for Re-ratification of the Unified Patent Court Agreement (UPCA) in December 2020, two constitutional complaints against German ratification were filed at the German Federal Constitutional Court (FCC). The FCC has now confirmed to journalists that the FCC has asked the Federal President not to sign the bill into law. Signing of the... Read more

18 December 2020 German Federal Council Passes Bill for Re-ratification of UPCA Today the Federal Council (Bundesrat) unanimously passed the bill required for German ratification of the Unified Patent Court Agreement (UPCA) thereby achieving the two-thirds majority of the members mandated by the Federal Constitutional Court (FCC). The bill must now be signed by the German Government and the Federal President before UPCA and Protocol on Provisional Application (PPA) ratification can be... Read more

17 December 2020 When Can a Claim be Broadened After Grant? It is well established that under Article 123(3) EPC, a patent (i.e. after grant) “may not be amended in such a way as to extend the protection it confers”. The rationale behind this legal provision is to provide legal certainty to third parties. The patent considered in T 2202/19 is directed to a coffee capsule. In the patent as granted,... Read more

16 December 2020 Hindsight in Expert Evidence – A Warning from the High Court The UK High Court recently found a patent for a breathing tube to be valid and infringed on the basis of expert evidence submitted by the parties. The judge clearly preferred the evidence of one expert over the other and this was decisive for the case result. The case concerned Fisher & Paykel Healthcare Limited’s EP(UK) patent for expiratory limbs... Read more

11 December 2020 English High Court Declines to Refer SEP/FRAND Questions to CJEU In a recent judgment (Optis Cellular Technology LLC v Apple Retail UK Ltd & Ors [2020] EWHC 2033 (Pat)), the England and Wales High Court refused an application to refer questions to the Court of Justice of the European Union (CJEU) in a case related to standard essential patents (SEP) and licensing on fair, reasonable and non-discriminatory (FRAND) terms. Apple,... Read more

27 November 2020 German Parliament Passes Bill for Re-ratification of UPCA On 26 November 2020 the German Parliament (Bundestag) passed the bill required for German ratification of the Unified Patent Court Agreement (UPCA) with 570 votes in favour, easily achieving the two-thirds majority of the 709 Bundestag members mandated by the Federal Constitutional Court (FCC). The bill must now be approved by the Federal Council (Budesrat) before signature by the German... Read more

23 November 2020 UK Changes Allowable Location of Address for Service for 2021 The UK government has announced that it intends to proceed with changes to UK legislation governing the “address for service”that may be used for intellectual property rights, with associated legislation currently being laid before Parliament. An address for service is a correspondence address given to the UK Intellectual Property Office (UKPIO) by proprietors of IP rights. Usually the IP attorney... Read more

16 November 2020 IPCom vs HTC: Worldwide Damages not Available Based on UK Patent Infringement The UK High Court has recently ruled in the case of IPCOM GmbH & Co Kg v HTC Europe Co Ltd & Ors [2020] EWHC 2941 (Pat) that damages following the infringement of a UK standard essential patent may be based only on patent infringements that occur within the UK. IPCom were the proprietors of patent EP(UK) 1,841,268 that expired... Read more

11 November 2020 EPO Makes Video Conference Mandatory for Opposition Division Oral Proceedings The EPO announced on 10 November 2020 (further details of which can be found in the EPO’s notice and decision), that all opposition division oral proceedings scheduled to take place between 4 January 2021 and 15 September 2021 will take place by video conference, rather than in-person on the premises of the EPO. No opposition division oral proceedings will take... Read more

9 November 2020 EPO Approach to Priority Entitlement Clarified by Board of Appeal in Case T0844/18 In a press communiqué dated 6 November 2020 the Technical Board of Appeal of the European Patent Office (EPO) issued its written decision revoking European patent number EP2771468 owned by the Broad Institute, Inc. and others. The patent claimed a fundamental aspect of the CRISPR/Cas9 gene editing technology platform. The patent was initially opposed by nine opponents during first instance... Read more

5 October 2020 High Court Decides “Card Clash” Computer-Implemented Invention not Excluded from Patentability The UK High Court has issued a rare favourable decision to the applicant in a case dealing with the patentability of computer-implemented inventions (Lenovo (Singapore) PTE Ltd v Comptroller General of Patents – judgment available here). UK decisions on this point are rare and do not follow the same approach as the EPO. Section 1(2) Patents Act 1977 (UKPA) excludes... Read more

30 September 2020 Actavis Strikes Again: Edwards Lifesciences Find Success in Second High Court Heart Valve Case of 2020 For the High Court of England and Wales, Mr Justice Birss judged that Meril’s Navigator device, a catheter based delivery system for their MyVal transcatheter heart valve, infringed an Edwards Lifesciences patent covering their SAPIEN valve, under the doctrine of equivalents. The decision provides further guidance on the application of Actavis vs Lilly and is another example of its positive... Read more

25 September 2020 UK High Court Confirms AI Cannot be an Inventor In a decision published earlier this week, the high court has confirmed a decision by the UKIPO that a machine learning system or algorithm cannot be regarded as the inventor of a patent under the UK Patents Act 1977 as such a system is not a “natural person”. The court further confirmed the UKIPO decision that such a system cannot... Read more

14 September 2020 EPO to Trial Zoom as a Platform for Oral Proceedings by Video Conference The EPO announced today that it will be testing Zoom as a platform for “oral proceedings involving multiple opponents and/or requiring simultaneous interpretation”. Up until now, the EPO has been using Skype as the platform for video conference oral proceedings. However, a limitation of Skype is that it does not allow for multiple distinct audio channels, which would be necessary... Read more

11 September 2020 UKIPO is Calling for Views on the Impact of AI on IP Rights The UKIPO has issued an open consultation including a call for views in relation to artificial intelligence and intellectual property. The consultation includes a number of questions in various fields of intellectual property (IP) including patents, designs, trademarks and copyright, inviting respondents to contribute their opinions on the present and future legal framework of how these rights interact with developments... Read more

28 August 2020 Unwired Planet v Huawei: UK Supreme Court Confirms that English Courts can Determine Global FRAND terms The UK Supreme Court has upheld the landmark judgement by Birss J in 2017 that an English court can grant an injunction to restrain infringement of declared standard essential UK patents, with a proviso that the injunction would cease to have effect if the defendant entered into the FRAND licence settled by the English court. Also upheld by the UK... Read more

29 July 2020 EPO Postpones all Opposition Division Oral Proceedings for the Remainder of 2020 The EPO has announced today that all opposition division oral proceedings scheduled to take place in 2020 are being postponed. There remains the option for opposition division oral proceedings to take place by videoconference under the EPO’s pilot project (see our briefing on videoconference oral proceedings here), but only with the consent of all parties. The EPO has not been... Read more

20 July 2020 UK Withdraws from UPC Agreement Further to a previous announcement that the UK government would not be seeking involvement in the UP/UPC system, the UK today announced its official withdrawal from the Unified Patent Court (UPC) Agreement. The UP/UPC system is an EU initiative to establish a Unitary Patent (UP) having unitary effect throughout the EU member states, and to establish the Unified Patent Court... Read more

10 July 2020 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 judgment, which is reviewed in more detail in our briefing (here), overturns the earlier Neurim decision and concludes that SPCs are not available for new therapeutic uses of old active ingredients. If you have any concerns or queries about the impact of this decision please... Read more

16 June 2020 German Proposal to Proceed with UPCA Enactment a Second Time As reported here, the German Constitutional Court ruled in March 2020 that the Bundestag did not effectively pass the Act of Approval of the Unified Patent Court Agreement (UPCA) rendering the Act of Approval void. The UP/UPC system is an EU initiative to establish a Unitary Patent (UP) having unitary effect throughout the EU member states, and to establish the... Read more

5 June 2020 The EPO Abolishes the Option to Waive the Right to a Further Notice of Allowance When Filing Amendments/Corrections The EPO has decided to abolish the option to waive the right to a further communication under Rule 71(3) EPC (notice of allowance) when filing amendments/corrections in response to an initial communication under Rule 71(3) EPC. The option was originally introduced by the EPO in 2015 in order to improve procedural efficiency. However, the EPO has found that applicants very... Read more

29 May 2020 EPO Temporarily Waives the 50% Surcharge for the Late Payment of Renewal Fees In view of the ongoing COVID-19 pandemic, the EPO has decided (see here and here) to introduce a temporary waiver of the additional fee payable when a renewal fee is paid late. Usually, under Rule 51(2) EPC, if a renewal fee is not paid by the due date (which is the last day of the month containing the anniversary of... Read more

28 May 2020 Conducting Oral Proceedings at the European Patent Office by Videoconference In view of worldwide travel restrictions caused by the COVID-19 pandemic, the EPO has recently expanded its ability to conduct oral proceedings before examining divisions, opposition divisions and Boards of Appeal via videoconference, rather than at the offices of the EPO. This change in practice gives rise to a number of practical implications for users of the European patent system,... Read more

14 May 2020 EPO Enlarged Board of Appeal Rules Against Claims to Plants Produced by Essentially Biological Processes The EPO’s Enlarged Board of Appeal (EBA) has today issued its decision on referral G3/19 relating to patent-eligibility of plants obtained by essentially biological processes. This is the latest development in a chain of events and controversies in this area, in which Article 53(b) EPC excludes from patentability “essentially biological” processes for the production of plants by breeding as opposed... Read more

30 April 2020 CJEU Confirms Strict Interpretation of Article 3(a) for SPCs On 30 April 2020 the CJEU gave its ruling in C-650/17 (Royalty Pharma). The judgment, which is reviewed in detail in our briefing (here), 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... Read more

30 April 2020 US PTO follows EPO and UK IPO in Rejecting Applications with AI Inventor We previously reported that the EPO had issued decisions refusing two applications that attempted to name a computer system (“DABUS”) as the sole inventor. The US PTO has now issued a similar decision rejecting what appears to be the US application corresponding to EP18275174. Again, the application was rejected for failure to comply with the formal requirements regarding the naming... Read more

21 April 2020 EPO Announces Pilot Project for Holding Opposition Division Oral Proceedings via Videoconference The President of the EPO issued a decision on 14 April 2020 concerning a pilot project to hold oral proceedings before opposition divisions via videoconference. A notice was also issued, which provides additional information regarding oral proceedings held by videoconference. Although the EPO has offered the possibility of oral proceedings before examining divisions via videoconference since 1998, and has recently... Read more

15 April 2020 UK Court of Appeal Refuses to Allow Late Payment of SPC Fees: Genentech Inc. v The Comptroller General of Patents The UK Court of Appeal recently issued a judgment concerning late payment of SPC fees for the product “ranibizumab”, which is an active ingredient of Genentech’s medicine “Lucentis” for age-related macular degeneration. The SPC was granted to Genentech in 2007 for a period expiring in January 2022, provided that the annual fees required for the SPC were duly paid. This... Read more

14 April 2020 FICPI Issues Summary of Covid-19 Extensions at Worldwide IP Offices The IP attorney membership organisation FICPI has produced a guide on changes to deadlines and arrangements for national, regional and international IP offices as a consequence of coronavirus. Here you will find a regularly updated spreadsheet (follow this link) of information updated frequently by members of FICPI’s global community. For the latest on extensions available at the EPO, UK IPO... Read more

9 April 2020 Arrow Declarations and Refrigerant Technology: Mexichem vs Honeywell The UK Court of Appeal has recently issued an interesting decision in Mexichem UK Limited vs Honeywell International Inc relating to Arrow declarations. This illustrates the availability of such declarations in patent cases relating to any technology and not just to life science inventions where they have previously been deployed by generic and biosimilar companies. Arrow declarations are used by... Read more

2 April 2020 EPO Announces that Examining Division Oral Proceedings will be via Videoconference The President of the EPO issued a decisionon 1 April 2020 concerning oral proceedings before examining divisions. A noticewas also issued, which provides additional information regarding oral proceedings held by videoconference. According to the President’s decision, oral proceedings before examining divisions will take place by videoconference, unless there are serious reasons for the oral proceedings to take place on the... Read more

20 March 2020 UPCA Enactment in Germany Found Unconstitutional The German Constitutional Court has found that the Bundestag did not effectively pass the Act of Approval of the Unified Patent Court Agreement (UPCA) rendering the Act of Approval void. The UP/UPC system is an EU initiative to establish a Unitary Patent (UP) having unitary effect throughout the EU member states, and to establish the Unified Patent Court (UPC) to... Read more

3 March 2020 Enlarged Board of Appeal Now Considering the EPOs Approach to Double Patenting in Case G4/19 We reported in February 2019 that questions concerning double patenting had been referred to the Enlarged Board of Appeal by the Board of Appeal in case T0318/14. Despite the oral proceedings (during which the referral was made) having been held in February 2019, the Board of Appeal did not issue a written decision until December 2019. Consequently, the Enlarged Board... Read more

28 February 2020 UK Government Will Not Seek UK Participation in UP/UPC System Following publication of the UK Government’s paper relating to the future relationship of the UK with the EU, a government spokesperson has confirmed that the UK will “not be seeking involvement in the UP/UPC system”. The UP/UPC system is an EU initiative to establish a Unitary Patent (UP) having unitary effect throughout the EU member states, and to establish the... Read more

5 February 2020 EPO to Increase Official Fees from 1 April 2020, Including an Increased Appeal Fee for Most Corporate Appellants The European Patent Office (EPO) has announced that the official fees charged for European patent applications will be increasing from 1 April 2020. More details of the fee increases can be found here and here. Most official fees are increasing by an “inflationary” amount of 4-5%. An exception is the appeal fee, which will be increasing by nearly 20% for... Read more

5 February 2020 EPO Increases Options Available for Obtaining a Refund of the Appeal Fee During Appeal Proceedings The EPO has announced changes to Rule 103 EPC, which governs reimbursement of the appeal fee. These changes will come into force on 1 April 2020, at the same time as increases to many EPO official fees, including the appeal fee. The intention of the changes to Rule 103 EPC is to provide appellants with further financial incentives to withdraw... Read more

31 January 2020 EPO Rejects Patent Applications with AI Inventor The EPO has recently issued decisions refusing two applications (EP18275163 & EP18275174) that attempted to name a computer system as the sole inventor. In both cases the applications were refused for failure to comply with the formal EPC provisions regarding the designation of the inventor. The applications relate to a food container with a fractal wall profile (EP18275163) and a... Read more

12 November 2019 Georgia Set to Allow Validation of European Patents as National Patents It has been announced that the European Patent Office (EPO) has signed an agreement with the government of Georgia to enable European patents to be validated in Georgia. The validation agreement will enter into force once it has been adopted into Georgian law. A date for this has not yet been provided. Georgia will not be a member of the... Read more

28 October 2019 EPO Publishes Updated Guidelines for Examination The EPO has published its yearly update to the Guidelines for Examination, which will come into force on 1 November 2019. The updated Guidelines for Examination can be found here, with a list of the amendments made compared to the current version available here. In general, the changes seek to bring the Guidelines for Examination into line with current practice... Read more

11 October 2019 CJEU Declines to Issue Judgment on Squatter SPCs The CJEU has declined to issue a judgment in C-239/19 (Eli Lilly v Genentech). The case concerned a referral from the UK High Court, requesting clarification as to whether grant of an SPC is precluded if the application is made without the consent of the marketing authorisation holder. In other words, it concerned the validity of so-called “squatter” SPCs. By... Read more

3 October 2019 Decision from the Enlarged Board of Appeal in G2/19 The EPO has issued a press release (see here), which summarises the full decision (currently only available in German here) from the Enlarged Board of Appeal in G2/19. Decision G2/19 arises from a referral in March this year of three questions from the Board of Appeal in decision T0831/17. That case had somewhat unusual facts, as summarised in our earlier... Read more

20 September 2019 Advocate General Opinion on Approach to Article 3(a) of the SPC Regulation On 11 September 2019 Advocate General Hogan issued his Opinion in connection with the combined referrals to the CJEU in Royalty Pharma C-650/17 and Sandoz C-114/18. Both referrals concern the interpretation of Article 3(a) of the SPC Regulation, which requires that: “A[n SPC] shall be granted if… the product is protected by a basic patent in force” If the CJEU... Read more

23 July 2019 Decision from the Enlarged Board of Appeal in G1/18 The EPO has issued a press release (see here) regarding the decision from the Enlarged Board of Appeal in G1/18. The Enlarged Board has concluded that an appeal is deemed not to have been filed if the notice of appeal is filed and/or the appeal fee is paid after expiry of the two month time limit under Article 108 EPC.... Read more

18 July 2019 EPO Boards of Appeal Staying Put in Haar In March of this year the Board of Appeal in decision T0831/17 referred the following questions to the Enlarged Board of Appeal: In appeal proceedings, is the right to oral proceedings under Article 116 EPC limited if the appeal is manifestly inadmissible? If the answer to the first question is yes, is an appeal against the grant of a patent... Read more

5 July 2019 Revised Rules of Procedure of the Boards of Appeal to Come Into Force from 1 January 2020 The EPO’s Administrative Council approved amendments to the Rules of Procedure of the Boards of Appeal (RPBA) at its 160th meeting on 26 and 27 June 2019 (see here). The full text of the revised RBPA can be found here. Together with the European Patent Convention itself, the RPBA govern the appeals procedure at the EPO. The revised RPBA will... Read more

27 June 2019 Board of Appeal Moves an Oral Proceedings from Haar to Munich We reported earlier this year (see here) that the EPO’s Enlarged Board of Appeal has been asked to consider whether the Boards of Appeal can hold oral proceedings in Haar (which is a suburb of Munich) without violating the EPC. The Boards of Appeal moved from a central Munich location to Haar in 2017. This move was not universally popular,... Read more

13 June 2019 A Further Blow to Second Medical Use SPCs? Swedish Court Refers Question to the CJEU In a judgment issued 3 May 2019, the Swedish Patent and Market Court of Appeal has referred the following question to the CJEU: “Does Article 3(c) <of the SPC Regulation>… prevent an applicant which previously has been granted an SPC for a product protected by a valid basic patent for that product per se, from being granted an SPC for... Read more

11 June 2019 SPC Manufacturing Waiver Regulation Will Enter Into Force on 1 July 2019 On 11 June 2019, the EU published Regulation (EU) 2019/933, which amends Regulation (EC) 469/2009 concerning supplementary protection certificates (SPCs). The amendments to the SPC regulation will permit third parties to manufacture a medicinal product protected by an SPC for the exclusive purpose of export to countries outside the EU. The amendments will also permit third parties to stockpile such... Read more

23 May 2019 The Central Division of the UPC in Paris will be located at the Quai de la Mégisserie It has been reported that the Central Division of the Unified Patent Court (UPC) in Paris will be located at the Quai de la Mégisserie. The building that will house the UPC looks directly across the Seine to the Ile de la Cité and specifically to the Cour de casssation (the French Supreme court – pictured). Only a short distance... Read more

10 May 2019 EPO Stays Examination of Applications Relating to Technical Simulations in Light of Enlarged Board Referral As reported recently, an EPO Board of Appeal has referred questions to the Enlarged Board of Appeal seeking clarification on the extent to which a computer-implemented simulation of a technical system or process can solve a technical problem by producing a technical effect and thus contribute to an inventive step.The referral is pending as case G1/19. In the underlying case... Read more

11 April 2019 EPO Stays Examination of Plant Applications in Light of Enlarged Board Referral As reported recently, the President of the EPO has in the last few days referred questions to the Enlarged Board of Appeal on the controversial issue of patent-eligibility of plants obtained by essentially biological processes. The referral is now pending as case G3/19 but it is uncertain at present whether or not this referral will be admissible in the absence... Read more

9 April 2019 EPO Plant Patent-Eligibility Update – Political Pressure Brings Further Uncertainty For Applicants Recent weeks have seen important developments in the debate on patent-eligibility of plants in Europe, with the EPO’s Boards of Appeal and its President, Administrative Council and member states pulling in opposite directions. The President has now referred questions, published today, to the Enlarged Board of Appeal, but the admissibility of the referral is uncertain, so it is unclear how... Read more

28 March 2019 Supreme Court Affirms Current Practice on Inventive Step in Actavis v Icos The Supreme Court issued its judgment in Icos v Actavis yesterday 27 March, considering the issue of inventive step. The case concerned a patent claiming a specific low dose of the drug tadalafil, known for use in treating male erectile dysfunction. The patentee had argued that it would not have been obvious, prior to the relevant Phase II clinical trials,... Read more

25 March 2019 EPO Announces Further Cooperation with Standards Bodies The EPO has announced a cooperation with European Committee of Standardization (CEN) and the European Committee for Electrotechnical Standardization (CENELEC) under which the three organisations will work together to improve and disseminate knowledge about the relationship between standards and patents. The agreement builds on existing co-operation in this area between the EPO, the European Telecommunications Standards Institute (ETSI) and the... Read more

22 March 2019 EPO Extends Participation in WIPOs Digital Access Service (DAS) for the Exchange of Certified Copies of Priority Documents As reported previously here, the EPO has been participating in WIPO’s Digital Access Service (DAS) for the exchange of certified copies of priority documents since 1 November 2018. DAS allows for certified copies of priority documents to be exchanged electronically between the various participating patent offices, a complete list of which can be found here. The EPO’s initial implementation of... Read more

22 March 2019 No SPCs for New Formulations of Old Active Ingredients, but Neurim Survives (for Now) The CJEU issued on 21 March 2019 its judgment in the Abraxis C-443/17 case. The full text of the judgment can be found here. The CJEU held that SPCs are not available for new formulations of old active ingredients. Whilst the CJEU’s conclusions regarding the unavailability of SPCs for new formulations of old active ingredients will not be popular with... Read more

6 March 2019 Is the Location of the Boards of Appeal in Haar Contrary to the EPC? The Board of Appeal in decision T0831/17has referred the following questions to the Enlarged Board of Appeal (our English translation, original questions in German): 1. Is the right to oral proceedings according to Article 116 EPC limited in appeal proceedings, when the appeal is prima facie inadmissible? 2. If the answer to question 1 is yes, is an appeal against... Read more

4 March 2019 No More Squatter SPCs? High Court Refers Question to the CJEU In a judgment handed down on 1 March 2019 Mr Justice Arnold has referred the following question to the CJEU: “Does the SPC Regulation preclude the grant of an SPC to the proprietor of a basic patent in respect of a product which is the subject of a marketing authorisation held by a third party without that party’s consent?” The... Read more

28 February 2019 Questions About Patent Eligibility Of Technical Simulations Referred To EPO Enlarged Board Of Appeal EPO 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... Read more

26 February 2019 Questions Concerning Double Patenting Referred to the Enlarged Board of Appeal The Board of Appeal in case T0318/14 has indicated in the minutes of oral proceedings held on 7 February 2019 that the following questions concerning double patenting are being referred to the Enlarged Board of Appeal. 1. Can a European patent application be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent granted to... Read more

21 February 2019 SPC Manufacturing Waiver Compromise Text Approved On 28 May 2018 the European Commission published a proposal for a change in the law which would permit third parties to manufacture a medicinal product protected by a Supplementary Protection Certificate (see discussion here). Earlier this month we reported the Council’s position for negotiations with the European Parliament (see discussion here). The European Parliament published its own position and... Read more

19 February 2019 Manufacturing Waiver to Include Stockpiling On 28 May 2018 the European Commission published a proposal for a change in the law which would permit third parties to manufacture a medicinal product protected by a Supplementary Protection Certificate (see discussion here). Earlier this month we reported the Council’s position for negotiations with the European Parliament (see discussion here). The European Parliament published its own position and... Read more

11 February 2019 European Council Position on Commission Proposal for SPC Manufacturing Waiver On 28 May 2018 the European Commission published a proposal for a change in the law (see discussion here), which would permit third parties to manufacture a medicinal product protected by a Supplementary Protection Certificate for the exclusive purpose of export to countries outside the EU. The European Council has now responded to the proposal. The Council’s position is set... Read more

13 December 2018 The End of Second Medical Use SPCs? AG’s Opinion in Abraxis C-443/17 Suggests that Neurim C-130/11 Should be Over-turned The Advocate General, Henrik Saugmandsgaard Øe, has today issued his Opinion in connection with the referral to the CJEU in Abraxis C-443/17. The full text of the Advocate General’s Opinion is available here. The Opinion is not binding on the CJEU. It is the role of the Advocates General to propose to the Court, in complete independence, a legal solution... Read more

5 December 2018 Products of Essentially Biological Processes Patent-Eligible Again? At an oral hearing held on 5 December 2018 in relation to case T1063/18 concerning an application entitled “New pepper plants and fruits with improved nutritional value”, EPO Technical Board of Appeal 3.3.04 held that Rule 28(2) EPC introduced in July 2017 is in conflict with Article 53(b) EPC. Once confirmed, this will have important implications for EPO practice regarding... Read more

15 November 2018 Draft Agreement on the Withdrawal of the UK from the EU and Political Declaration The UK Government Cabinet yesterday approved a draft agreement on the Withdrawal of the United Kingdom (UK) from the European Union (EU). The draft agreement sets out a proposed manner of the UK’s withdrawal from the EU. The draft agreement includes provisions relating to a 21 month transitional period following the UK leaving the EU on 29 March 2019. A... Read more

9 November 2018 CJEU Confirms that SPCs Are Not Available for Medical Devices On 25 October 2018the Court of Justice of the EU (CJEU) issued its decision in C-527/17 Boston Scientific. The Court held that award of a CE-mark for a medical device comprising an active ingredient as an integral part (a medical device/drug combination) is not considered to be a marketing authorisation which can support an application for an SPC (Supplementary Protection... Read more

31 October 2018 EPO Joins WIPO’s Digital Access Service (DAS) for the Exchange of Certified Copies of Priority Documents The EPO has decided to participate in WIPO’s Digital Access Service (DAS) for the exchange of certified copies of priority documents from 1 November 2018 (for further details please see the EPO announcements hereand here). DAS allows for priority documents to be exchanged electronically between the various participating patent offices, a complete list of which can be found here. The... Read more

19 October 2018 EPO Publishes Updated Guidelines for Examination The EPO has published its yearly update to the Guidelines for Examination, which will come into force on 1 November 2018. The updated Guidelines for Examination can be found here, with a list of the amendments made compared to the current version available here. This is the fourth year in a row that significant changes have been made to the... Read more

7 August 2018 Referral to the Enlarged Board of Appeal by the Outgoing President of the EPO Shortly before the end of his term as President of the EPO, Benoît Battistelli referred (see here) the following question to the Enlarged Board of Appeal: If notice of appeal is filed and/or the appeal fee is paid after expiry of the two month time limit under Article 108 EPC, is the appeal inadmissible or is it deemed not to... Read more

30 May 2018 Proposed SPC Manufacturing Waiver On 28 May 2018the European Commission published a proposal for a change in the law which would permit third parties to manufacture a medicinal product protected by a Supplementary Protection Certificate. The Commission aims to have the Regulation in place by 2019. Manufacturing Permitted by the Proposed Amendment Legislation The proposed amendment to the SPC Regulation would permit third parties... Read more

26 April 2018 UK Announces Ratification of the Unified Patent Court Agreement Sam Gyimah, the UK Minister for Intellectual Property, has announced that the UK has today ratified the UPCA. The UK becomes the sixteenth state to ratify the UPCA. The other countries are: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal and Sweden. The UK ratification leaves Germany as the only remaining country which needs... Read more

6 April 2018 Luxembourg Ratifies UPC Protocol on Privileges and Immunities On 3 April 2018, Luxembourg became the third country (together with France and the Netherlands) to deposit its ratification of the Protocol on Privileges and Immunities (PPI) of the Unified Patent Court (UPC). This is recorded on the European Council website here. The PPI gives legal status to the UPC. There are four countries which must ratify the PPI in... Read more

26 March 2018 Update on the Availability of Reductions in the Filing and Grant Fees for European Patent Applications The EPO announced earlier this year a series of amendments to the rules relating to fees, which will come into force on 1 April 2018. These changes are discussed in our earlier news item here. One of the changes is a reduction in the filing and grant fees for European patent applications when certain requirements relating to the format of... Read more

13 February 2018 The UK Moves a Step Closer to Ratifying the UPC (Unified Patent Court) Agreement On 8 February the Privy Council approved the draft Unified Patent Court (Immunities and Privileges) Order 2017. Both Houses of the UK Parliament had already approved the draft in December. As the next step, the Order is expected to be put forward as a formal motion in the UK Parliament. The Foreign and Commonwealth Office must then ratify the Order... Read more

13 February 2018 Cambodia to Allow Validation of European Patents as National Patents It has been announced that it will be possible, from 1 March 2018, to validate European patents in Cambodia (KH). This development marks the culmination of an agreement between the European Patent Office (EPO) and the Cambodian Ministry of Industry and Handicraft (MIH) first signed on 23 January 2017. Cambodia will not be a member of the EPC, nor a... Read more

8 February 2018 EPO Discontinues Reduced Search Fee for Most European Regional Phase Applications At present, the supplementary search fee that falls due upon entry into the European regional phase is reduced by EUR 190 if the international search report was drawn up by the US, Japanese, Korean, Chinese, Russian or Australian patent office. The EPO has announced that for applications that enter the European regional phase from 1 April 2018, the 190 EUR... Read more

8 February 2018 EPO Expands Window in which the Third Year Renewal Fee can be Paid The EPO has announced an amendment to Rule 51(1) EPC, which at present states that renewal fees cannot be paid more than three months before they fall due. Under the amended wording of Rule 51(1) EPC (please see here), it will be possible to pay the third year renewal fee up to six months before it falls due. The third... Read more

8 February 2018 EPO Announces Changes to Fee Structure, Including an Increased Appeal Fee for Most Corporate Appellants The EPO has announced a series of amendments to the rules relating to fees, which will come into force on 1 April 2018. The EPO has decided not to apply inflationary increases to all fees, and so the majority of fees will remain unchanged from 1 April 2018. However, as discussed further below, a number of changes to the fee... Read more

24 January 2018 Latvia Becomes the Fifteenth State to Ratify the Agreement on the Unified Patent Court (UPC) On 11 January 2018, Latvia became the fifteenth country to deposit its ratification of the UPC Agreement with the EU Council’s General Secretariat. The full list of countries which have deposited their ratification of the UPC Agreement is now as follows: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Portugal and Sweden. The UPC Agreement... Read more

22 January 2018 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 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... Read more

21 December 2017 Enlarged Board of Appeal Issues Decision G1/16 Relating to Disclaimers The Enlarged Board of Appeal recently issued decision G 1/16, which provides welcome clarity regarding the allowability of undisclosed disclaimers. The caselaw of the Boards of Appeal has distinguished between “undisclosed disclaimers” and “disclosed disclaimers”. Undisclosed disclaimers are those in which a claim is amended to disclaim an embodiment which is not disclosed in the application as originally filed, but... Read more

21 December 2017 Update on UPC Progress Alexander Ramsay, the Chair of the Preparatory Committee for the Unified Patent Court (UPC) has issued an update regarding the progress of the UPC. While the tone of the update remains positive, it does acknowledge that the timeline for the opening of the UPC is still uncertain. This is due to the case currently pending before the German Federal Constitutional... Read more

14 December 2017 Infringement by Overseas Servers Revisited Since the UK Court of Appeal judgment in Menashe v William Hill, it has not been safe to assume that infringement of a patent claim including a processor or a processing step can be avoided by performing the processing on a server outside the UK. A third judgement on this topic has recently been issued – making the score two... Read more

7 December 2017 Preparations for Ratification of UPC Agreement by UK Nearing Completion Yesterday, the Grand Committee of the House of Lords in the UK approved the draft Unified Patent Court (Immunities and Privileges) Order 2017. This follows approval by the UK House of Commons on 4 December 2017. The Order confers legal status on the Unified Patent Court and is required for the Unified Patent Court to have a Division in the... Read more

24 November 2017 How to Use Experimental Evidence in English Patent Litigation Experimental 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... Read more

7 November 2017 Guidelines for Examination: EPO’s Revised Procedures for Computer-Implemented Inventions The EPO has published its yearly update to the Guidelines for Examination, which will come 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. In addition to the... Read more

20 October 2017 EPO Publishes Updated Guidelines for Examination The EPO has published its yearly update to the Guidelines for Examination, which will come 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. One significant procedural change is that it will be possible from 1 November 2017 for the... Read more

18 October 2017 UPC Legislation Progresses Through Scottish Parliament The Scottish Parliament is now set to approve the draft Statutory Instrument put before it relating to the Protocol on Privileges and Immunities of the Unified Patent Court. This follows a recommendation from the Scottish Parliament’s Justice Committee. The Scottish Parliament is therefore near completion of the latest step required for the UK to ratify the UPC agreement. Read more

18 October 2017 J A Kemp Retains Top Tier Ranking in The Legal 500 Leading UK and European patent and trade mark attorney firm J A Kemp has retained its top tier ranking inThe Legal 500, with 12 of its partners also being recommended. Noting the firm to be ‘a premium, top-tier European firm’, the directory praised J A Kemp’s patent team for their ‘excellent response times and appropriate advice’, commenting that the patent... Read more

18 October 2017 UKIPO to Introduce New Patent Fees The UK Intellectual Property Office (UKIPO) has recently announced changes to patent fees taking effect 6 April 2018. This follows a consultation on changes to the existing fee structure. The Government’s response to the consultation setting out the changes to be implemented can be found here. An excess claims fee and an excess page fee is to be newly introduced... Read more

18 October 2017 EPO elects new President and Chairman of Administrative Council The Administrative Council of the EPO has elected António Campinos to succeed Benoît Battistelli as President of the EPO. Mr Campinos, who is currently Executive Director of the European Union Intellectual Property Office (EUIPO), will start his five-year term as president of the EPO on 1 July 2018. The EPO’s press release with further details can be found here. In... Read more

18 October 2017 Tunisia to Allow Validation of European Patents as National Patents It has been announced that it will be possible, from 1 December 2017, to validate European patents in Tunisia. This development marks the culmination of an agreement between the European Patent Office (EPO) and the Tunisian Patent Office (INNORPI) first signed in July 2014. Tunisia will not be a member of the EPC, nor a so-called extension state. Instead, the... Read more

25 September 2017 News on UPC Timetable The Preparatory Committee of the UPC have acknowledged that it “is now difficult to predict any timeline” for the introduction of the UPC. This is because of the case currently pending in the German Federal Constitutional Court (FCC) reported here, which has prevented Germany from ratifying the UPC. German and UK ratification are still required in order for the UPC... Read more

12 September 2017 Divisional Deadline Repealed from 1 April 2014 As reported in Octoberhere, from today, 1 April 2014, the deadline for filing divisional patent applications at the EPO (European Patent Office) will no longer apply. The rule setting the deadline was introduced in 2010 but was unpopular with applicants. After a period of consultation, the EPO decided to scrap the rule and return Rule 36 to a form closer... Read more

12 September 2017 EPO Announces New Streamlined Opposition Proceedings The EPO announced on 1 June 2016 that it will be seeking to streamline first instance opposition proceedings, with the aim of issuing a first instance decision on straightforward cases within 15 months from expiry of the opposition term. Further details of the changes, which will come into force on 1 July 2016, can be found here and here. It... Read more