IP Litigation

11 April 2024 A First Substantive Decision of the UPC Court of Appeal – 10x Genomics vs Nanostring In a recent decision in case UPC_CoA_335/2023, the UPC’s Court of Appeal overturned a preliminary injunction granted by the Court of First Instance (Munich Local Division) to 10x Genomics, Inc. against Nanostring Technologies based on EP 4108782. As previously reported, the Munich Local Division held at first instance that there was a sufficient degree of certainty that the asserted patent... Read more

6 June 2023 English Further Established as a Key Language of the Unified Patent Court In announcements coinciding with the opening of the Unified Patent Court (UPC) on 1 June, the French, German and Italian local divisions of the UPC designated English as an available language of proceedings. This follows a period of uncertainty as to whether these local divisions would allow use of English in proceedings as an alternative to the official language of... Read more

1 June 2023 Unified Patent Court Agreement Enters into Force The Unified Patent Court Agreement has formally come into effect today, 1 June 2023. The much anticipated Unified Patent Court (UPC) opens its doors, enabling litigants to lodge actions in relation to European patents at the new Court. Patentees are also now able to obtain Unitary Patents (UPs) based on patents granted by the European Patent Office. As UPC representatives,... Read more

3 April 2023 UPC Sunrise Opt Outs – One Month Down, Two Months to Go After a false start, the IT systems of the Unified Patent Court seem finally to be up and running as expected. J A Kemp has already filed nearly 800 opt out requests, including patents, applications and patents with SPCs, using the software it developed in-house for bulk automatic opt outs. This is about 6% of the total number of opt... Read more

1 March 2023 UPC Sunrise Period Now Open Today, 1 March 2023, marks the start of the “sunrise period” before the Unified Patent Court (UPC) Agreement enters into force on 1 June 2023. This three-month period provides patentees, and applicants, with the opportunity to opt out non-unitary European patents from the jurisdiction of the UPC, before the UPC opens its doors to litigants. Our European Patent Attorneys will... Read more

17 February 2023 German Ratification of UPC Agreement Complete Germany has today deposited its instrument of ratification of the Agreement on a Unified Patent Court with the Council of the European Union. This represents the final step required for the UPC Agreement to come into effect, initiating the most significant changes in European patent law for several decades. In line with the most recent timetable suggested by the UPC... Read more

26 January 2022 EPO to Allow Applicants to Defer Grant of European Patents to Obtain a Unitary Patent The President of the European Patent Office has decided that applicants will soon be able to request, at the EPO, a delay in the issuance of a European patent until entry into force of the Unified Patent Court (UPC) Agreement, which will make “Unitary” Patents available based on a granted European patent (see also the accompanying EPO notice on the... Read more

24 November 2021 Measures Being Taken by EPO, EUIPO, WIPO and UK IPO in Relation to COVID-19 Pandemic The European Patent Office (EPO), the European Union Intellectual Property Office (EUIPO), the UK Intellectual Property Office (IPO) and the International Bureau (IB) of WIPO all remain operational and will allocate filing dates for newly filed cases and accept other submissions/fee payments as normal. However, a number of measures have been adopted by the offices to assist applicants in view... Read more

19 October 2021 Another Step Closer to the Unitary Patent The EU “unitary patent” took a step closer to being established on 15 October when a further EU state ratified the preparatory protocol. The EU unitary patent is intended to be a single patent right having effect in the territory of the participating EU members, overseen by a new Unified Patent Court (UPC). According to the Preparatory Committee of the... Read more

12 August 2021 Enlarged Board of Appeal to Consider the Doctrine of Plausibility Those active before the EPO in the pharmaceutical and biotech fields will be aware that a “hot topic” at the EPO is the requirement for a “plausible” disclosure of efficacy in the application as originally filed. This is a complex topic, and it is perhaps fair to say that the case law of the boards of appeal is not always... Read more

21 May 2021 EPO Extends Mandatory Video Conference for Opposition Division Oral Proceedings until 31 January 2022 The EPO has announced that it is extending the use of video conference for opposition division oral proceedings until 31 January 2022. The current measures, whereby all opposition division oral proceedings take place by video conference, were due to expire on 15 September 2021. We understand that this announcement means that no opposition division oral proceedings will take place in-person... 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

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

16 October 2020 Update on the UK Medicines Regulator Post Brexit The UK’s Medicines and Healthcare products Regulatory Agency (MHRA) has joined the Australia-Canada-Singapore-Switzerland (ACSS) Consortium, with effect from 1 January 2021. The group will be renamed as the Access Consortium to reflect the addition of the UK, which increases the combined population of the participating countries to approximately 145 million. Pharmaceutical companies that submit applications to some or all of... 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

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

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

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

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

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

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

26 April 2019 Exclusive Jurisdiction Clause in Contract Overridden His Honour Judge Hacon has held that the High Court of England and Wales has exclusive jurisdiction over a dispute relating to the scope of a licence which included a clause granting exclusive jurisdiction to “the Court of Brussels“. The decision confirms that an exclusive jurisdiction clause in a licence cannot override the exclusive jurisdiction over patent validity of the... Read more

28 March 2019 High Court Grants Injunction Against Standard Essential Patent Implementer The English High Court has granted an injunction (decision here) against an implementer of a Standard Essential Patent which had been ‘holding out’ and refusing to engage constructively in the RAND (reasonable and non-discriminatory) process. Mr Justice Carr had held, in a judgment dated 11 March available here, EP 1 453 268 (the ‘268 patent) to be valid, essential and... 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

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

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

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

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

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 Update on Costs in English Intellectual Property Litigation Three recent English High Court cases provide guidance on the question of how to determine the amountof the recoverable costs, and emphasize the importance of the costs budgets filed at the initial stages of litigation. The general rule, with some exceptions, in English litigation is that the unsuccessful party will be ordered to pay the legal costs of the successful... 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

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

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 1 October 2014 Changes Coming into Effect Following the IP Act 2014 With immediate effect (1 October 2014), the first set of changes to designs law in United Kingdom brought about by the United Kingdom Intellectual Property Act 2014 have been implemented. These include changes dealing with presumed design ownership, the protection afforded to a prior user of a design in the case of an alleged infringement and, criminal provisions dealing with... Read more

12 September 2017 Agreement Reached on Unitary Patent Renewal Fees The Select Committee of the Administrative Council of the European Patent Office (EPO) endorsed on 24 June the so-called True Top 4 proposal tabled by the EPO on renewal fees applicable to the unitary patent. At the meeting held in Munich by the EPO and the EU Member States participating in the unitary patent, the proposal was adopted with the... Read more

31 August 2017 Lithuania Becomes the Fourteenth State to Ratify the Agreement on the Unified Patent Court (UPC) On 24 August 2017, Lithuania became the fourteenth country to deposit its ratification of the UPC Agreement with the EU Council. The full list of countries which have deposited their ratification of the UPC Agreement is now as follows: Austria, Belgium, Bulgaria, Denmark, Estonia, France, Italy, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Sweden and Finland. The status of the UPC Agreement... Read more

3 August 2017 Estonia Becomes the Thirteenth State to Ratify the Agreement on the Unified Patent Court (UPC) On 1August 2017, Estonia became the thirteenth Member State to ratify the Unified Patent Court Agreement (UPCA). The UPCA will come into effect on the first day of the fourth month after both the UK and Germany have ratified the Agreement. The process for ratification by the UK is underway. If this proceeds as expected, the final major obstacle to... Read more

24 July 2017 Germany progresses Towards UPC Ratification Shortly after 1.30 in the morning of Friday 10 March, the German Bundestag unanimously passed, without amendment, a first Bill which enables Germany to ratify the Protocol on Privileges and Immunities of the Unified Patent Court (UPC) and a second Bill which authorises ratification of the UPC Agreement. This is a further key step in bringing the UPC into effect.... Read more

24 July 2017 UK Triggers Article 50 as Unified Patent Court Prepares to Open In Late 2017 Today the UK Prime Minister invoked Article 50 of the Lisbon Treaty. This is expected to lead to the UK’s exit from the European Union (EU) in two years’ time. After exiting the EU, the UK will remain a member of the European Patent Convention and J A Kemp will continue to represent its clients at the European Patent Office... Read more

24 July 2017 Unwired Planet International v Huawei Technologies Co Ltd Mr Justice Birss gave an important decision on 5 April 2017 concerning FRAND undertakings. FRAND stands for ‘fair, reasonable and non-discriminatory’ and the FRAND undertaking is the undertaking a patentee has to give when declaring a patent to be essential (‘essential’ meaning that it would inevitably be infringed by operating in accordance with a given standard) to the standards setting... Read more

24 July 2017 German Constitutional Court Holds up German Ratification of Unitary Patent Court Agreement It is being reported today that the German Constitutional Court has asked the German Federal President not to ratify the Unified Patent Court Agreement (UPCA) for the time being. The request is the result of a complaint (Az.:2BvR 739/17) made to the Constitutional Court by an unnamed person. Details of the complaint are somewhat unclear at present, but the Court... Read more

24 July 2017 Unwired Planet v Huawei – Mr Justice Birss Grants First FRAND Injunction, and Publishes Terms of FRAND Licence We reported on 12 May 2017 that Mr Justice Birss had given an important decision concerning FRAND undertakings. On 7 June 2017, Mr Justice Birss gave a follow-up decision dealing mainly with the FRAND licence agreed between the parties and the decision as to whether to grant Unwired Planet an injunction to restrain patent infringement by Huawei, along with some... Read more

24 July 2017 UK Closer to Ratifying UPC Legislation Secondary legislation required to bring the Protocol on Privileges and Immunities for the Unified Patent Court into effect in the UK (The Unified Patent Court (Immunities and Privileges) Order 2017) was laid before Parliament on 26 June 2017. The protocol establishes the legal personality of the Unified Patent Court in the UK. The Order requires approval from both the House... Read more

24 July 2017 UK Progress on Unitary Patent (UP) and Unified Patent Court (UPC) The UK has become the ninth state to depositthe document required to apply the Protocol on Provisional Application (PPA) which is an essential step towards formation of the UPC. Four more deposits, including that of Germany, are required for the PPA to come into force which will allow the UPC to gain legal personality and start the process of selecting... Read more

24 July 2017 Bloomberg World Intellectual Property Report – How to Use Experimental Evidence in English Patent Litigation An article written by J A Kemp partnerTom Carverentitled ‘How to Use Experimental Evidence in EnglishPatent Litigation’has been featured in Bloomberg BNA’s July issue. The article looks in detail at the valuable role that experimental evidence can play in patent litigation, exploring procedure, minimisation of risk, dealing with the other side’s experiments and other jurisdictions. Read more

14 February 2017 Italy Ratifies UPC Agreement On 10 February 2017, Italy became the twelfth Member State to deposit its ratification of the Unified Patent Court Agreement (UPCA). Ratification by Italy means that a further key European market will be covered by the UPC system. At this stage, ratification by Italy is not an essential step in bringing the UPCA into effect. The remaining States which must... Read more

9 February 2017 UPC Still on Track There have been several recent developments which indicate that the UPC is still on track to become operational within the timeframe set out by the UPC Preparatory Committee here. The intention is that the UPC will start accepting cases in December 2017 with a sunrise provision (during which opt-outs may start to be filed) starting in September 2017. At present,... Read more

30 January 2017 Illumina, Inc. and Others v Premaitha Health PLC. Mr Justice Roth gave a decision on 16 December 2016 concerning the documents provided during litigation by the Claimants, as part of the disclosure (known as discovery in the US) procedure. During litigation in the High Court of England and Wales, each party is generally required to disclose to the other side any document in its control which could adversely... Read more

27 January 2017 High Court Refers SPC Issues to the CJEU In two judgments handed down on 13 January 2017 Mr Justice Arnold decided to send questions on the SPC Regulation to the CJEU for a preliminary ruling. In each case the question reflects the lack of clarity provided by earlier key CJEU decisions, Medeva and Neurim. For more information, please see our briefing on this topic, here. Read more

15 December 2016 Merck Sharp and Dohme Limited v Shionogi and Co Limited Mr Justice Arnold gave a decision on 25 November in the matter Merck Sharp and Dohme Limited v Shionogi & Co Limited. The case concerned EP (UK) 1 422 218 B1 which relates to the use of integrase inhibitors of a particular formula for the preparation of the pharmaceutical composition for use as an integrase inhibitor for preventing or treating... Read more

15 December 2016 Sony Communications International AB vs SSH Communications Security Corporation Roger Wyand QC, sitting as a deputy High Court Judge, gave a decision on the order for costs to be made following the trial of the action between Sony Communications International AB and SSH Communications Security Corporation. Cases with a value over Ô£10 million, as this case was, do not automatically fall within the cost budgeting rules but SSH had... Read more

13 December 2016 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... Read more

28 November 2016 UK to Ratify the UPC Agreement The UK government today announced that the UK intends to ratify the UPC agreement. Following the expected ratification of the UPC by the UK, the UPC will come into effect after ratification by Germany. It is expected that the Unitary Patent and the Unified Patent Court will come into effect during 2017. European patent applicants and proprietors are encouraged to... Read more

21 November 2016 Thoratec Limited v AIS GMBH Aachen Innovative Solutions Mr Justice Arnold gave a decision on 28 October in the case between Thoratec Limited v AIS GMBH Aachen Innovative Solutions relating to patents concerned with ventricular assist devices. There was no dispute as to the applicable legal principles but there were some practical points to be taken from the decision. First, there was overlap between the evidence given by... Read more

21 November 2016 Hospira UK Limited v Cubist Pharmaceuticals LLC Mr Justice Carr gave a decision on 17 October in the case Hospira UK Limited v Cubist Pharmaceuticals LLC on the question of recoverable costs. The general rule in English litigation is that the winner, Hospira in this case, is entitled to its general costs of the litigation. However, Hospira did not win all points and Cubist therefore argued that... Read more

25 October 2016 UPC Update: Judicial Appointments Delayed and Questions Directed to UK Government The Unified Patent Court (UPC) has issued a statement that recruitment of UPC judges has been delayed in view of the result of the UK referendum on EU membership. Following the referendum result, it is unclear if or when the UK ratification required at present to bring the UPC agreement into effect will take place. As a result, the judicial... Read more

19 October 2016 Bloomberg World Intellectual Property Report – UK Extends Copyright Terms for Artistic Works An article written by J A Kemp partners Alan Bryson and Tom Carver on the subject of UK extension of copyright terms for artistic works has been featured in Bloomberg BNA’s October issue. The article looks in detail at the impact that the recent repealing of Section 52 will have and explores what constitutes a work of artistic craftsmanship according... Read more

15 September 2016 The Netherlands Becomes the 11th State to Ratify the Agreement on the Unified Patent Court (UPCA) On 14 September 2016, the Netherlands announced itself as the 11th state to complete ratification of the Agreement on the Unified Patent Court (UPCA). Germany and the UK are now the only remaining states that are required to ratify the UPCA in order for the Agreement to come into effect. The UPCA will come into effect on the first day... Read more

14 September 2016 J A Kemp Partner Tom Carver Speaking at the Patent Information Annual Conference of China (PIAC) 2016 J A Kemp Partner and Solicitor Tom Carver will be speaking at the Patent Information Annual Conference of China (PIAC) 2016, which is being held this year in Beijing on 19-20 September. Tom is chairing a breakout session titled New Forms of Patent Monetization; Part 2 Europe: Next Main Venue for Patent Transactions? in the morning session on Tuesday 20... Read more

23 August 2016 High Court of England and Wales Upholds Dosage-Regime Patent The case of Teva v ICOS concerns the validity and infringement of two patents for tadalafil, and gives a good example of how the Court applies the fair expectation of success ‘ test for inventive step. If something is obvious to test in a research program with a fair expectation of success then it will likely be found to be... Read more

7 June 2016 Guidance Relating to Calculating Unified Patent Court (UPC) Fees The UPC has recently issued Updated FAQs on Court fees. In particular these provide guidance on how the value of a case is to be assessed for the purpose of determining value based fees and the ceiling of recoverable costs. Read more

7 June 2016 Bulgaria Becomes the Tenth State to Ratify the Agreement on the Unified Patent Court (UPCA) As of 3 June 2016, Bulgaria has become the tenth EU member state to ratify the Agreement on the Unified Patent Court (UPCA). Now it remains for the UK, Germany and a thirteenth EU member state to ratify the UPCA. The UPCA will come into effect on the first day of the fourth month after the remaining required ratifications have... Read more

24 May 2016 Unified Patent Court (UPC) issues draft Code of Conduct Following consultation with the Institute of Professional Representatives before the European Patent Office (epi) and other professional bodies including the UK Chartered Institute of Patent Attorneys (CIPA), a draft Code of Conduct for representatives who appear before the UPC has been published. The document sets out the general principles under which dealings with the UPC should be conducted. This is... Read more

3 March 2016 UK Parliament approves UPC legislation The UK Parliament has now given approval to secondary legislation introducing changes to the UK Patents Act to implement the Agreement on a Unified Patent Court (UPC) and EU Regulation establishing the European Patent with Unitary Effect (EPUE). The draft secondary legislation previously prepared by the UK Intellectual Property Office following conclusion of a public consultation can be found here,... Read more

29 February 2016 Opt-out Fee Scrapped by UPC Preparatory Committee The UPC preparatory committee today published the rules on the court fees and recoverable costs for the UPC (Unified Patent Court). They can be found here. It will be of particular interest to many current proprietors of European patents, who wish to avoid the jurisdiction of the UPC, that the preparatory committee has abandoned the proposal for an opt-out fee.... Read more

15 February 2016 Locations of the European Union ‘s Unitary Patent Court (UPC) The UPC ‘s website has been updated to show the location of several confirmed UPC divisions (here). This site shows (with photos) the locations of: – the Court of Appeal in Luxembourg; – the Nordic-Baltic Regional Division in Stockholm, Sweden; – the German Central Division and one of the German Local Divisions in Munich; and – the three other German... Read more

20 January 2016 Finland Becomes the Ninth State to Ratify the Agreement on the European Union’s (EU’s) Unitary Patent Court (UPC) The agreement on the UPC was signed on 19 February 2013 by all of the EU ‘s member states, except Croatia, Poland and Spain. Finland became the ninth state (after Austria, France, Sweden, Belgium, Denmark, Malta, Luxembourg and Portugal) to ratify the agreement on 19 January 2016 (see here). The UPC preparatory committee is aiming to complete its work on... Read more

18 January 2016 The UK Government Takes Another Step Towards Ratification of the Unified Patent Court (UPC) Agreement The UK Government has concluded its consultation on the secondary legislation implementing the Agreement on a Unified Patent Court (UPC) and EU Regulations establishing the European Patent with Unitary Effect (EPUE). The UK Intellectual Property Office (UK IPO) ran a technical review and call for evidence between 10 June 2014 and 2 September 2014 on draft secondary legislation which proposed... Read more

23 November 2015 The Member States Participating in the European Patent with Unitary Effect (EPUE) Agree the Distribution of Revenue from EPUE Renewal Fees We reported in June 2015 that the Select Committee of the Administrative Council of the European Patent Office (EPO) endorsed the so-called True Top 4 proposal tabled by the EPO on renewal fees applicable to the European Patent with Unitary Effect (EPUE) (see here). This essentially means that the renewal fees for the EPUE will be the equivalent to the... Read more

4 November 2015 The Unified Patent Court (UPC) Preparatory Committee Adopts the Rules of Procedure of the UPC At its last meeting on 19 October 2015, the UPC preparatory committee adopted the rules of procedure of the UPC, subject to some further adaptations once the committee has decided on the court fees. This represents a significant milestone in the progress of the UPC because the rules underpin the court ‘s framework and functioning. The agreed rules are the... Read more

15 October 2015 Announcement on Early Application of Parts of the UPC Agreement On 1 October 2015, representatives of member states party to the agreement on a Unified Patent Court (UPC) signed a protocol allowing for the provisional application of certain aspects of the court agreement. The protocol enables the early application of certain provisions necessary for the operation of the UPC, such as the setting up of IT infrastructure and the recruitment... Read more

11 September 2015 Warner-Lambert Loses at First-Instance in the Pregabalin Dispute 2015 has seen a series of preliminary judgments from the High Court and one from the Court of Appeal concerning a dispute between Actavis and Warner-Lambert (part of the Pfizer group) over the drug pregabalin. Warner-Lambert sought to enforce against Actavis a patent with a Swiss-style second medical use claim directed to the use of pregabalin in treating pain. This... Read more

2 September 2015 Portugal Becomes the Eighth State to Ratify the Agreement on the European Union’s (EU’s) Unitary Patent Court (UPC) The agreement on the UPC was signed on 19 February 2013 by all of the EU’s member states, except Croatia, Poland and Spain. Portugal became the eighth state (after Austria, France, Sweden, Belgium, Denmark, Malta and Luxembourg) to ratify the agreement on 28 August 2015 (see here). The agreement will not enter into force until the three biggest validation states,... Read more

12 August 2015 The London Section of the Central Division and the UK ‘s Local Division of the Unified Patent Court (UPC) will be located in the Aldgate Tower It was announced yesterday that the UK Intellectual Property Office (UKIPO) has signed a lease for space in the Aldgate Tower for the London section of the Central Division and the UK ‘s Local Division of the UPC (see here). This location is particularly convenient for J A Kemp ‘s patent attorneys representing clients before the UPC. Read more

29 May 2015 Luxembourg Becomes the Seventh State to Ratify the Agreement on the European Union’s (EU ‘s) Unitary Patent Court (UPC) The agreement on the UPC was signed on 19 February 2013 by all of the EU ‘s member states, except Croatia, Poland and Spain. Luxembourg became the seventh state (after Austria, France, Sweden, Belgium, Denmark and Malta) to ratify the agreement on 22 May 2015 (see here). The agreement will not enter into force until the three biggest validation states,... Read more

19 May 2015 The Italian Ministry of Economic Development Indicates that Participation in the Unitary Patent System is now a Priority for Italy The proposals for a European Patent with Unitary Effect (or Unitary Patent) and associated Unified Patent Court are proceeding under the European Union ‘s (EU ‘s) so-called Enhanced Cooperation procedure by means of which a group of member states can proceed without others. Italy is one of four member states (along with Croatia, Spain and Poland) that are currently not... Read more

12 May 2015 Proposals Made for Unified Patent Court Opt-Out Fee The preparatory committee for the Unified Patent Court (UPC) has issued a consultation document providing two alternative proposals for court fees and a scale of ceilings for recoverable costs. The proposals table a set of fixed fees for certain UPC actions and procedures. The range of proposed fees is extensive. The smallest, set at 80 EUR, is the UPC opt-out fee... Read more

5 May 2015 The Court of Justice of the European Union (CJEU) Dismisses the Spanish Challenges to the Unitary Patent Spain brought actions before the Court of Justice of the European Union (CJEU) (Cases C-146/13 and C-147/13) against Regulations 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection (OJ 2012, L 361/1) and 1260/2012 on the applicable translation arrangements. The Court today issued its Decision in connection with both cases. The Court dismisses both of... Read more

10 March 2015 EPO Proposes Two Unitary Patent Renewal Fee Options After many months of anticipation, the EPO has put forward two proposals setting the level at which renewal fees will be payable for unitary patents. Both proposals set the fees at a level that is considered to be high in the later years of patent life. The proposals will now be considered by a select committee who are asked to... Read more

23 December 2014 Court of Justice of the European Union (CJEU) Rules on the Extent to which Parthenotes Fall within the Patentability Exclusion in Article 6(2)(c) of Directive 98/44/EC (C-364/13) Article 6(2)(c) of the European Union’s Directive 98/44/EC on the Legal Protection of Biotechnological Inventions states that uses of human embryos for industrial or commercial purposes shall be considered unpatentable. This is reflected in Rule 28(c) of the European Patent Convention (EPC) and Section 76A and Schedule A2 of the UK Patents Act 1977 (as amended). Henry Carr QC (sitting... Read more

10 December 2014 Malta Becomes the Sixth State to Ratify the Agreement on the European Union ‘s (EU ‘s) Unitary Patent Court (UPC) The Agreement on the UPC was signed on 19 February 2013 by all of the EU ‘s member states, except Croatia, Poland and Spain. The Agreement will enter into force as soon as it has been ratified by 13 member states, including the United Kingdom (UK), France and Germany (who are the three mandatory participants). Malta became the sixth state... Read more

18 November 2014 The Advocate General proposes that the Court of Justice of the European Union (CJEU) dismiss the Spanish challenges to the Unitary Patent Spain has brought actions before the Court of Justice of the European Union (CJEU) (Cases C-146/13 and C-147/13) against Regulations 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection (OJ 2012, L 361/1) and 1260/2012 on the applicable translation arrangements. The Advocate General, Yves Bot, has today issued his Opinion in connection with both cases.... Read more

24 October 2014 The Opinions of the Advocate General on the Spanish Challenges to the Unitary Patent have been Delayed Spain has brought actions before the Court of Justice of the European Union (CJEU) (Cases C-146/13 and C-147/13) against Regulations 1257/2012 implementing enhanced cooperation in the area of the creation of unitary patent protection (OJ 2012, L 361/1) and 1260/2012 on the applicable translation arrangements. The Opinions of the Advocate General of the CJEU in connection with these two cases... Read more

24 June 2014 Denmark Becomes the Fifth State to Ratify the Agreement on the European Union’s (EU’s) Unitary Patent Court (UPC) The Agreement on the UPC was signed on 19 February 2013 by all of the EU’s member states, except Croatia, Poland and Spain. The Agreement will enter into force as soon as it has been ratified by 13 member states, including the United Kingdom (UK), France and Germany (who are the three mandatory participants). Denmark became the fifth state (after... Read more

13 June 2014 Belgium Becomes the Fourth State to Ratify the Agreement on the European Union’s (EU’s) Unitary Patent Court (UPC) The Agreement on the UPC was signed on 19 February 2013 by all of the EU’s member states, except Croatia, Poland and Spain. The Agreement will enter into force as soon as it has been ratified by 13 member states, including the United Kingdom (UK), France and Germany (who are the three mandatory participants). It is our understanding that Belgium... Read more

9 June 2014 Sweden Becomes the Third State to Ratify the Agreement on the European Union’s (EU’s) Unitary Patent Court (UPC) The Agreement on the UPC was signed on 19 February 2013 by all of the EU ‘s member states, except Croatia, Poland and Spain. The Agreement will enter into force as soon as it has been ratified by 13 member states, including the United Kingdom (UK), France and Germany (who are the three mandatory participants). We are pleased to announce... Read more

28 March 2014 France has Ratified the Agreement on the European Union’s (EU’s) Unitary Patent Court (UPC) The Agreement on the UPC was signed on 19 February 2013 by all of the EU ‘s member states, except Croatia, Poland and Spain. The Agreement will enter into force as soon as it has been ratified by 13 member states, including the United Kingdom (UK), France and Germany (who are the three mandatory participants). We are pleased to announce... Read more

19 March 2014 An Announcement of a Delay in the Operation of the European Union’s Unified Patent Court (UPC) The Preparatory Committee of the European Union’s Unified Patent Court (UPC) has just announced a change in the likely time by which the Court will be operational. It is now not expected to be in operation until the end of 2015 at the earliest. The following is a quote taken from the Committee’s website click here. “After one year of... Read more

14 March 2014 Publication of the 16th Draft of the Rules of Procedure of the Unified Patent Court The Preparatory Committee responsible for the Rules of Procedure of the new Unified Patent Court has published the 16th Draft of the Rules of Procedure of the Unified Patent Court. The Committee has also prepared a helpful table summarising the changes made following the lengthy public consultation from 25 June to 1 October 2013: http://www.unified-patent-court.org/images/documents/rop-digest.pdf This publication is for information... Read more