Webinars

Broadcast date: 22 February 2022 Update on Plausibility The law on plausibility continues to be a hot topic in the pharmaceutical and biotech fields.  This webinar will cover recent developments in the assessment of whether a “plausible” disclosure of efficacy is present in the application as filed.  This will include discussion of the decision T 116/18 which has for the first time referred the topic of plausibility to... Read more and watch

Broadcast date: 26 January 2022 EPO における追加データの利用 欧州でも日本と同様に審査・異議申立で追加実験データが多用されます。欧州では進歩性の判断における検討事項が多いこと、異議申立の件数が日本の無効審判と比べて10倍近くあることから、日本よりも実験データを提出することは多いように思えます。 今回は実験データを用いて拒絶理由・異議理由を克服するためのストラテジー及び実験データを用いて異議理由を補強する方法について練習問題を交えながら解説致します。 欧州特許を既に経験されている日本の実務家に向けて少し踏み込んだ内容を５０分程度で解説し、その後質疑応答の時間を用意します。講義資料は日本語です。欧州弁理士が解説を担当する部分は日本語字幕が付きます。質疑応答も日本語で対応します。 Read more and watch

Broadcast date: 25 January 2022 User Interfaces – What can you Patent? User interfaces can be seen as crucial bridges between humans and machines. User interfaces can also be seen as, effectively, computer-implemented presentations of information. European patent law excludes computer programs and presentations of information (as such) from patentability. So how do so many patents get granted for user interfaces in Europe? Why do other applications for seemingly similar user interfaces... Read more and watch

Broadcast date: 8 December 2021 EPOでの中間的（部分的）一般化 今回のウェビナーでは新規事項の追加について解説します。欧州特許実務では新規事項の追加は厳格に審理され、これが原因で登録後に取り消される特許も少なくありません。 新規事項の追加のなかでも特に日本・米国などの実務家が無意識のうちに行いがちなIntermediate Generalisationについて練習問題を交えて解説します。 EPOの補正要件を把握することは欧州代理人に補正を指示する際に重要となってきます。特に欧州には予備的請求の制度があるため、段階的な予備的請求を構築するためにはEPOの補正要件の理解が不可欠です。 欧州特許を既に経験されている日本の実務家に向けて少し踏み込んだ内容を３０-４０分程度で解説し、その後質疑応答の時間を用意します。講義資料は日本語です。欧州弁理士が解説を担当する部分は日本語字幕が付きます。質疑応答も日本語で対応します。 Read more and watch

Broadcast date: 2 November 2021 IP for Plants and Plant Protection Products in Europe and UK Agriculture is an increasingly technology-driven sector in which IP is ever more important. Ag sector IP can relate to a broad range of technologies: from plant breeding and biotechnology, to agri-tech ranging from traditional farm machinery to sophisticated robotics and software/AI, to the chemistry of plant protection products such as herbicides and pesticides. As such, IP considerations vary quite widely... Read more and watch

Broadcast date: 1 November 2021 Can my Computer own a Patent? As the capabilities of AI and machine learning expand to address a wider range of challenges, the question has arisen of whether a computer can be considered to be an inventor within the framework of the patent system and, if so, how the connected issue of ownership should be dealt with. These issues are currently the subject of legal debate... Read more and watch

Broadcast date: 1 November 2021 To Amend or not to Amend Description Amendments at the EPO Compared to many patent offices, the European Patent Office (EPO) imposes a high burden on patentees to ensure the description remains fully consistent with the granted claims and to satisfy various other formal requirements that could cast the scope of the claims in doubt. While description amendments may seem of little import, getting things wrong can have fatal consequences for... Read more and watch

Broadcast date: 1 November 2021 Bioinformatics – Do Patents Help? It’s boom times for bioinformatics, but how do you protect your R&D investment in an increasingly competitive market? In traditional fields the answer is patents; but are patents desirable, or even possible, for bioinformatics inventions? In this webinar we will cover why you (probably) can patent bioinformatics, and the factors to consider in preparing a patent application to keep on the right... Read more and watch

Broadcast date: 1 November 2021 Software in Vehicles – How Can I get my Patent to the Chequered Flag? Patent applications relating to software inventions and business methods often require particular care in Europe. These considerations are increasingly applicable across all areas of technology. In this webinar, we will review two recent decisions from EPO boards of appeal relating to software and business method type inventions in the automotive field. We will also discuss lessons that we can learn... Read more and watch

Broadcast date: 1 November 2021 Success in Inventive Step In recent case Emson v Hozelock [2020] EWCA Civ 871, the England and Wales court of appeal found that a new and successful garden hose design lacked an inventive step over prior art in the completely different technical field of aerospace. This webinar explores why, in a deep dive on inventive step. The webinar will detail how inventive step is... Read more and watch

Broadcast date: 13 October 2021 EPOにおけるProblem-solutionアプローチ 今回のウェビナーではProblem-solutionアプローチの詳細を説明します。 EPO実務では発明の進歩性の有無はProblem-solutionアプローチに沿って判断されます。Problem-solutionアプローチは以下の３つの過程で行われます。 「最も近似する先行技術」を選定する過程 解決すべき「客観的な技術的課題」を設定する過程 最も近似する先行技術及び客観的な技術的課題に基づき当業者にとって本件発明が自明であるかどうかを検討する過程 各過程に関連するファクターをより良く理解することがEPOでの審査をスムーズに進め、望ましい結果を得るうえで有用であると考えます。本ウェビナーでは日欧の進歩性の判断手法を比較し、上の各過程における判断方法を練習問題を交えて解説します。 欧州特許を既に経験されている日本の実務家に向けて少し踏み込んだ内容を３０-４０分程度で解説し、その後質疑応答の時間を用意します。講義資料は日本語です。欧州弁理士が解説を担当する部分は日本語字幕が付きます。質疑応答も日本語で対応します。 Read more and watch

Broadcast date: 7 October 2021 Green Technologies – Patenting Trends and Technology Development The UN Climate Change Conference (COP 26) is fast approaching and will bring politicians together to accelerate action towards achieving the goals of The Paris Agreement.  However, it is the development of new green technologies (greentech) that is key to mitigating the effects of climate change.  In recent years, there has been a dramatic growth of greentech with multi-national companies... Read more and watch

Broadcast date: 1 September 2021 EPOにおける予備的請求の利用 欧州特許庁（EPO）での審査及び特許付与後の手続きでは予備的請求を提出できることがユニークな点として挙げられます。予備的請求は、権利化の主眼となる請求の範囲（主請求）と同時に提出される予備の請求の範囲です。予備的請求は主請求が特許査定できない場合に限り審査で考慮されます。予備的請求は書面での審査過程や異議申立手続で提出することができます。また口頭審理の直前に予備的請求を提出することは欧州実務で常套的に用いられる手法です。今回のウェビナーでは予備的請求とは何かをご説明し、予備的請求を提出すべきタイミングや請求項の立て方等の戦略的な側面についても解説致します。 Read more and watch

Broadcast date: 27 July 2021 Drafting and Prosecuting Potential Standard Essential Patents in the UK and Europe With the increasing connectedness of all areas of technology, from autonomous vehicles to “smart” climate control devices, standards to ensure interoperability and interconnectivity are becoming part of the technological landscape in more and more fields. The potential reward for innovative companies whose patented technology is included in a standard is a reliable and growing source of licence revenue from all... Read more and watch

Broadcast date: 30 June 2021 Patentability of Simulations at the EPO In recent case G 01/19 (Pedestrian Simulation), the Enlarged Board of Appeal of the EPO set out a comprehensive position on the patentability of simulations under the EPC. Since the patentability of simulations, which had generally been considered patentable with some caveats, is intertwined with the patentability of other computer-implemented inventions, this decision has wider consequences. This webinar will detail... Read more and watch

Broadcast date: 20 May 2021 Auxiliary Requests at the EPO A unique feature of pre- and post- grant procedures at the European Patent Office is the ability to file auxiliary requests. An auxiliary request is an auxiliary claim set which is filed at the same time as the main claims which are being pursued. The auxiliary request is only considered if the EPO deem the main request claims to be... Read more and watch

Broadcast date: 15 April 2021 Patenting Antibody Pharmaceuticals at the EPO Antibody therapeutics remain 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 challenging as the field becomes more crowded and practice tightens up. Although (perhaps surprisingly) there is still a relative lack of case law from the Boards of Appeal of the EPO,... Read more and watch

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