Webinars

Broadcast date: 4 March 2021 Claim Scope and Sufficiency: When Does a Broad Claim Fall for Insufficiency? The interface between claim scope and sufficiency has increasingly come under the spotlight in recent years. When can a broad claim be justified as providing legitimate protection for a principle of general application, and when should such a claim fall for lack of sufficiency? In this webinar we will review the key EPO and UK cases in this field and further consider... Read more and watch

Broadcast date: 2 February 2021 SPCs – Update on Recent Political and Legal Developments A Supplementary Protection Certificate (SPC) is a unique intellectual property right for active ingredients of human and veterinary medicinal products requiring marketing authorisation. Its purpose is to compensate patent holders for loss in effective patent term resulting from the time taken to receive such marketing authorisation. SPCs are available in EU/EEA member states, and other European countries including Switzerland and... Read more and watch

Broadcast date: 14 January 2021 Priority Entitlement in Europe – Current Best Practice Challenging a patentee’s legal entitlement to claim priority is a common tactic in contentious proceedings in Europe.  If successful, the patent can be held invalid by the effect of intervening prior art.  This situation arose in a recent high-profile case before the Board of Appeal of the European Patent Office in decision T844/18.  A high-value patent in the field of... Read more and watch

Broadcast date: 10 December 2020 The Clinical Trials Dilemma There is a tricky decision to make for any patent attorney in relation to a proposed clinical trial: do you file a patent application before publication of the trial protocol and when results are not yet known, or do you wait until you have your results? In this webinar we will discuss possible strategies for filing patent applications in light... Read more and watch

Broadcast date: 8 July 2020 The Microbiome and Claiming Bacteria Increasing numbers of patent applications directed to bacteria are being filed and granted as the microbiome field rapidly develops. However, drafting and prosecuting applications claiming bacteria is challenging due to the complexity of the technology and the products, and limited guiding case law. In this webinar we consider the areas of uncertainty, review the available guidance and discuss best practices... Read more and watch

Broadcast date: 17 June 2020 Strategies for Speeding up or Slowing Down Patent Prosecution There are a number of reasons why a patentee might want to speed up patent prosecution as part of their wider filing strategy. In this webinar we will look at the procedural options that the EPO offers to streamline prosecution as well as initiatives to increase speed of processing. However, there may also be motives for avoiding fast grant, especially... Read more and watch

Broadcast date: 21 May 2020 Sufficiency at the EPO Sufficiency is an area of law that increasingly gives rise to difficulties for patentees and applicants. Whilst some years ago a successful challenge for lack of sufficiency was a rare event, increasingly the EPO is finding a lack of validity under this ground. In this webinar, we will consider the law surrounding sufficiency in particular in relation to the biotechnology and chemical fields. We... Read more and watch

Broadcast date: 21 April 2020 Dosage Patents in the UK, Europe and Beyond Securing patents for new dosages of pharmaceutical products is now an established practice before the European Patent Office. However, the Supreme Court’s decision on this topic last year in Actavis v ICOS has caused some to question whether such patents can ever be maintained in the UK Courts. In this webinar, we will consider the law surrounding dosage patents at... Read more and watch

Broadcast date: 12 March 2020 Opposition Practice at the EPO Opposition practice at the EPO continues to develop, particularly in view of the changing procedure before the Boards of Appeal. This webinar makes use of the significant experience of J A Kemp’s attorneys, both in attacking patents in opposition at the EPO, as well as defending cases which have been opposed. We will consider opposition practice, including how to set... Read more and watch

Broadcast date: 28 January 2020 Obtaining Patent Protection for Polymorphs of Drug Compounds Identifying different polymorphic forms of pharmaceutical compounds is an important part of drug discovery and development. There is a perception that it is difficult to secure patent protection for new polymorphs. However, with careful drafting and consideration of the specific advantages associated with the polymorph of interest, patents directed to polymorphs of commercial significance can be obtained. This webinar will... Read more and watch

Broadcast date: 18 June 2019 Legal Entitlement To Priority – A European Perspective Attacking a patentee’s legal entitlement to priority is now a well-established tactic in European Patent Office opposition proceedings and in invalidity actions during national litigation. If successful, the patent claims can be rendered invalid by the effect of intervening prior art. Challenges to priority entitlement can also arise during examination proceedings via third party observations, and they are increasingly being... Read more and watch

Broadcast date: 30 April 2019 Inventive Step for CII at the EPO Under EPO practice considerations for what is technical and what is not technical are intrinsically bound up with assessment of inventive step: the problem to be solved must be technical and only technical features can contribute to inventive step. In addition, the Boards of Appeal have on occasion attributed a high level of skill to the person skilled in the... Read more and watch

Broadcast date: 12 March 2019 Practical Tips On Patent Prosecution In India And China Prosecuting a global portfolio can be a challenging business. Moves in recent years to harmonise IP law across the major jurisdictions have not resulted in any great changes so far. Patent practitioners need to be familiar with the laws across the globe, not only to be ready to face challenges as they arise, but to ensure that any newly filed... Read more and watch

Broadcast date: 5 February 2019 Restoration – Are you Taking Enough Care? For many jurisdictions around the world missed deadlines relating to patents and patent applications can be recovered if one can show that the deadline was missed despite due care having been taken. Applicants and their attorneys should, therefore, ensure that they take an appropriate level of care when monitoring deadlines, partly to avoid missing a deadline and partly to provide... Read more and watch

Broadcast date: 30 November 2018 Infringement Matters The “Doctrine of Equivalents” has long been used by the German courts to extend patent claims so that they cover products and processes not covered by the specific language used in the claims, but which differ from the language used only in one or more “inessential variants”. In a landmark decision (Actavis v Eli Lilly) in 2017, the UK Supreme... Read more and watch

Broadcast date: 16 November 2018 Pregabalin The Supreme Court in the UK handed down its long-awaited judgment in Warner-Lambert v Generics, concerning the drug pregabalin, on 14 November 2018. The judgment included extensive considerations on the thorny issues of “plausibility” and the infringement of “Swiss-style” second medical use claims. The doctrine of “plausibility” has been applied in many recent European Patent Office and national court decisions.... Read more and watch

Broadcast date: 1 November 2018 When Patents Go Wrong … And What To Do About It Everyone involved with IP knows by heart the patent timeline: first-filing before any disclosure, PCT and/or other filings at 12 months, national phase entry at 30, meet Patent Office deadlines and pay renewal fees thereafter. But sometimes it does not work out that way. Mistakes happen, fortunately not often but somehow always seemingly on a key case! This practical session... Read more and watch

Broadcast date: 27 July 2018 Is Your Patent Portfolio SPC Ready? A Supplementary Protection Certificate (SPC) is a unique intellectual property right available in the EU/EEA for active ingredients of human and veterinary medicinal products requiring marketing authorisation. The SPC regime was introduced as a mechanism to compensate patent holders for loss in effective patent term resulting from the time taken to receive such marketing authorisation. There are only four basic... Read more and watch

Broadcast date: 17 May 2018 Patenting Antibodies at the EPO Antibody therapeutics is a rapidly developing field, with many antibody-based therapies now on the market and in the clinic. Patenting of antibodies, particularly for known targets, is proving increasingly difficult. The day-to day practice at the European Patent Office is constantly evolving, moving forward much faster than the Case Law. This webinar makes use of the significant experience of J... Read more and watch

Broadcast date: 20 March 2018 How to Secure and Exploit Patents for Combination Therapies Combination therapies present a fertile area for future drug development. Obtaining patent protection for combinations of known drugs, however, remains a challenge. This practical webinar delivered by J A Kemp’s expert attorneys will provide you with advice on how to navigate the complexities of prosecuting patents in this field, whilst also taking a practical view of the value of these... Read more and watch