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UPC Delays Due to Difficulties in Serving Proceedings Under the Hague Service Convention Summary Serving proceedings out of the jurisdiction in which they have been issued can be a time-consuming exercise. Two recent decisions of the UPC’s Munich Local Division concerning service of applications for preliminary measures in related cases between Air Up Group GmbH (the German Applicant) and Guangzhou Aiyun Yanwu Technology Co., Ltd (the Chinese Defendant) illustrate the nature and extent... Read more
Oral Proceedings Scheduled for the Enlarged Board of Appeal Case G 1/24 Regarding Use of the Description When Interpreting the Claims The Board of Appeal in T 0439/22 referred questions to the Enlarged Board of Appeal in order to clarify the extent to which the description should be referred to when interpreting the claims. The case is pending as G 1/24 and in-person oral proceedings have now been scheduled for 28 March 2025. The questions referred by the Board of Appeal... Read more
New Referral to the EPO Enlarged Board of Appeal Regarding the Status of an Intervener – G 2/24 The EPO has announced here that the Technical Board of Appeal in decision T 1286/23 has referred questions to the EPO’s Enlarged Board of Appeal regarding the status of a third party intervener in appeal proceedings. A third party can “intervene” in ongoing opposition proceedings if either (a) infringement proceedings have been brought against that third party by the patentee,... Read more
EPO’s Technical Board of Appeal Applies Relaxed Standards for Assessing Priority Entitlement In a recently-published decision T2360/19, the EPO’s Technical Board of Appeal applied new liberal standards when assessing legal entitlement to priority, following a relaxation of this aspect of the law. The opposed patent, covering gene editing technology known as CRISPR, was granted from a divisional application stemming from parent EP2771468. The parent patent had previously been revoked by the Technical... Read more
J A Kemp Authors the Whitepaper ‘Patent Filing Considerations in View of Revised EU Clinical Trial Regulation Transparency Rules’ with DLRC In collaboration with DLRC, a leading Regulatory Affairs Consultancy, we’ve developed a white paper outlining key patent filing considerations. Authored by Karen Ng, and James Biddlecombe (Business Transformation & CTR Lead at DLRC Regulatory Consultancy), this paper emphasises the importance of early and ongoing collaboration between legal and regulatory teams throughout the life cycle of clinical trials to optimise patent filing opportunities. Download... Read more
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
The EPO’s Legal Board of Appeal Tightens Formal Requirements for Recording Assignments Electronic signatures have revolutionized the way we execute agreements and other documents in the digital age. Their use in the past few years has accelerated, in part driven by the COVID-19 pandemic, but also because they are often more convenient and are generally considered to be more secure than handwritten signatures. Despite the widespread and increasing acceptance of digitally signed... Read more
EPO Stays Examination and Opposition Proceedings Relating to Prior Use in Light of Enlarged Board Referral G1/23 As reported recently, the issue of anticipation by prior use has been referred to the Enlarged Board of Appeal. The referral is pending as case G1/23. The EPO has now issued a notice in which it immediately stays all cases currently in examination or opposition in which the decision depends entirely on the outcome of the referral to Enlarged Board. This is a... Read more
Decision from the Enlarged Board of Appeal in G2/21 Regarding the Doctrine of Plausibility The EPO’s Enlarged Board of Appeal (EBA) has now published the hotly anticipated decision G 2/21 together with a Press Communiqué. The decision relates to the requirement for a “plausible” disclosure of efficacy in the application as originally filed. The Press Communiqué provides an overview of the background to the decision and the key outcomes. The Press Communiqué can be... Read more
Windsor Framework Expected to Simplify SPC Applications in the UK Provided that they are formally ratified and implemented, the “Medicines” elements of the Windsor Framework (WF)1 for Northern Ireland are expected to simplify SPC applications in the UK. Instead of new drugs generally requiring one marketing authorisation for Great Britain (issued by the UK’s Medicines and Healthcare products Regulatory Authority (MHRA)) and another for Northern Ireland (issued by the EU’s... Read more
Another Referral to the CJEU on the Validity of SPCs for Combination Therapy Products Last year we reported two referrals from the Finnish and Irish courts concerning SPCs for combination therapy products (“Combi-SPCs”). Those referring decisions identified that there is tension between the definition and interpretation of “product” in earlier decisions of the CJEU concerned primarily with Article 3(c), and an apparently contradictory approach taken in more recent decisions concerned primarily with Article 3(a).... Read more
Videoconferencing Will be the Default Format for Most Oral Proceedings at the EPO The EPO has announced that, from 1 January 2023, all oral proceedings before the opposition divisions will take place by videoconference by default, rather than in-person on the premises of the EPO. This announcement does not substantially change the current practice of the EPO, as opposition division oral proceedings have been conducted by videoconference as default since 4 January 2021... Read more
UK IPO Publishes Detailed Guidance on Examination of Patent Applications Relating to AI Inventions In the UK Government’s response to their call for views on artificial intelligence and intellectual property in March 2021, it was stated that the government would “publish enhanced IPO guidelines on patent exclusion practice for AI inventions and engage AI interested sectors, including SMEs, and the patent attorney profession to enhance understanding of UK patent exclusion practice and AI inventions.”... Read more
Possible Settlement of CJEU Referral for SPCs from Finland As reported previously, courts in both Ireland (in February 2022, concerning Inegy®) and Finland (in November 2021, concerning Janumet®) have recently identified an apparent discrepancy in CJEU case law with respect to the interpretation of “product” in the SPC Regulation. In short, the courts in both countries determined a need for the CJEU to clarify whether the same criteria should apply for the purposes... Read more
EPO Further Extends Video Conference for Opposition Division Oral Proceedings until 31 December 2022 The EPO has announced that it is once again extending the use of video conference for opposition division oral proceedings. The current measures, whereby all opposition division oral proceedings take place by video conference, were due to expire on 31 May 2022. We understand that this announcement means that no opposition division oral proceedings will take place in-person until after 31 December... Read more
Russian Government Takes Powers to Appropriate IP Rights Without Compensation Where Proprietors are from “Unfriendly Countries” The government of the Russian Federation has adopted on 7 March 2022 a decree which provides that no compensation is payable when a patent, utility model or industrial design is subjected to a compulsory license, if the proprietor is from a country carrying out “unfriendly activities”. The list of countries deemed to be carrying out “unfriendly” activities in relation to the Russian... Read more
EPO Board of Appeal Finds “No Legal Basis” for Requirement to Adapt the Description to Conform to the Claims Background As applicants and representatives will be well-aware, the EPO has, for a very long time, required that the description of a patent application be amended prior to grant to ensure that it “conforms” to the allowed claims. Traditionally such amendments took the form of amending the “summary of the invention” or similar introductory portion of the application to recite... Read more
EPO Announces End of Arrangements to Automatically Obtain Priority Documents from Certain Other Patent Offices The European Patent Office (EPO) has been participating in WIPO’s Digital Access Service (DAS) for the exchange of certified copies of priority documents since 2018 (see our earlier report here). Initially, the EPO’s participation in DAS did not affect pre-existing arrangements through which the EPO automatically obtained copies of Japanese, Chinese, Korean and US priority applications even when a DAS... Read more
EPO Further Extends Videoconference for Opposition Division Oral Proceedings until 31 May 2022 The EPO has announced that it is further extending the use of videoconference for opposition division oral proceedings until 31 May 2022. The current measures, whereby all opposition division oral proceedings take place by videoconference, were due to expire on 31 January 2022. We understand that this announcement means that no opposition division oral proceedings will take place in-person until... Read more
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
Current Patenting Issues in Europe Facing Life Sciences/Biotech Innovators and Effective Claim Drafting Strategies to Avoid Pitfalls This paper was originally submitted to the American Intellectual Property Law Association (AIPLA) ahead of its 2021 Annual Meeting and was the subject of a presentation at a plenary session there on 28 October 2021. The author, Andrew Bentham, is a partner in the Biotechnology and Life Sciences group of J A Kemp LLP (Cambridge, UK). If you wish to... Read more
Written Decision Referring Questions Concerning the Doctrine of Plausibility to the Enlarged Board of Appeal in G2/21 Now Available We reported in August 2021 that the EPO’s Enlarged Board of Appeal (EBA) would be considering the doctrine of plausibility at the EPO. The written decision of Board of Appeal making the referral is now available (see here), and the referral has been assigned the number G2/21. The final questions referred to the EBA are as follows: “If for acknowledgement... Read more
EPO Issues Written Decision in G1/21 Concerning Videoconference Oral Proceedings The EPO’s Enlarged Board of Appeal (EBA) has today issued its written decision in case G1/21, which concerns the legality of holding oral proceedings by video conference without the consent of the parties. As previously reported (see here), the EBA issued an order (without detailed reasoning) in July 2021, which stated: “During a general emergency impairing the parties’ possibilities to... Read more
Important Step Forward for UPC as Germany Ratifies PAP-Protocol Following rejection of the constitutional challenge against Germany’s participation in the Unified Patent Court (UPC) reported here, on 27 September 2021 Germany ratified the Protocol on the Provisional Application of the UPC Agreement (PAP-Protocol). The PAP-Protocol brings certain aspects of the UPC Agreement into force provisionally, allowing the UPC to be set up as an institution before the UPC system... Read more
High Court Judgment Highlights the Importance (or not) of the Location of Physical Servers when Considering Infringement The High Court has handed down a judgment in the case of Promptu Systems Corporation v Sky UK Limited et al. The case related to the alleged infringement by Sky’s Sky Q subscription television service of a European (UK) patent owned by Promptu. A number of issues were considered relating to infringement and validity, with the court eventually finding that... Read more
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