7 June 2017
J A Kemp Ranked as Leading Firm by IAM 1000
J A Kemp has been ranked as a leading UK patent prosecution firm in “IAM Patent 1000 - The World’s Leading Professionals 2017”.
The directory says that J A Kemp “responds quickly, creatively and thoroughly, and is always professional and reliable”.
The directory makes the following recommendations of individual J A Kemp partners:
“An authority in the pharmaceutical field, Ravi Srinivasan has vast experience filing international applications and – as a qualified litigator – performs adroitly in opposition and appeal hearings before the EPO. He recently successfully defended Durect Corporation’s Relday anti-psychotic medication against an opposition filed by Mylan.”
“Getting into new matters very quickly, asking the right questions and developing effective strategies for opposition cases, Mark Roberts knows where weak spots might be and effectively balances what is relevant for a case and what can be kept at the side to prevent resource drain.”
“Technically knotty cases – such as a defence of Bristol Myers Squibb and Ono Pharmaceutical’s Opdivo immunotherapy treatment against four opposing parties – are in safe hands with biotechnology doyenne Sarah Roques, who has also cultivated an extensive opposition practice.”
“Simon Wright’s 30 years in the game are invaluable for life sciences clients ranging from multinationals to embryonic academic organisations.”
“Mike Nicholls blazes a trail in the engineering and IT sectors.”
IAM Patent 1000 is Intellectual Asset Management’s (IAM’s) guide to leading private practice patent professionals and firms in the world’s key jurisdictions.
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 organisation (SSO) that it will grant licences on FRAND terms. Until this decision it was not clear exactly what ‘fair, reasonable and non-discriminatory’ meant nor the exact legal standing of the FRAND undertaking and while this decision cannot provide all the answers for all situations, it has shed some light on how the FRAND undertaking operates.
This action started in April 2014 when Unwired Planet sued Huawei together with Google and Samsung for infringement of six patents, five of which were claimed to be essential. The cases with Google and Samsung settled but Huawei and Unwired Planet failed to come to an agreement. Rather than try to deal with all issues in a single trial, the dispute was split into its issues with a technical trial to determine the validity, infringement and essentiality of each of the patents followed by a non-technical trial to determine the FRAND and competition issues, injunctive relief and damages for past infringements. Only three of the technical trials were held, with two of the patents held valid and infringed, and this judgment concerns the non-technical trial.
To read more about the recent decision and its impact on FRAND undertakings, please see our briefing on the subject here.
9 May 2017
India Introduces New Trade Mark Rules
New trade mark rules have taken effect in India which have introduced a number of changes in practice. For many applicants, the main difference will be a substantial increase in official fees. However, individuals, startups and small entities will benefit from a new differential application fee which is 50% lower than that for other applicants.
Other key changes include the ability to submit MP3 recordings when filing sound marks, the possibility of requesting that a mark be designated as a “well-known” mark, and the requirement that applicants claiming use of a mark in India submit an affidavit attesting to use and supporting evidence.
In two Decisions published on 27 April 2017, EPO Technical Board of Appeal 3.5.01 has given valuable guidance on the treatment of inventions that implement business methods and given rare positive verdicts on two related applications. In the process, the Board has introduced the “notional business person” whose hypothetical actions need to be considered alongside the venerable “person skilled in the [technical] art”.
The two decisions are T 1463/11 (Universal merchant platform/CardinalCommerce) and T 1658/15 (Universal merchant platform II/CardinalCommerce). The cases concerned a parent and a divisional, both of which were rejected by the Examining Division as uninventive. Both inventions relate to e‑commerce.
Please click here to read the full briefing.
3 April 2017
Four Partner Appointments at J A Kemp
J A Kemp today announced the promotion of three of its associates to the role of partner.
Jo Roberts and Heidi Aston are both members of the firm’s Biotechnology and Life Sciences Group. Jo is based in the London office and Heidi in the Cambridge office. James Main is a member of the firm’s Engineering and IT Group, based in the London office.
In addition to these internal appointments, the firm today announced the arrival of partner, Isobel Creek. Isobel will be a member of the firm’s Chemistry and Pharmaceuticals Group, based in the Oxford office.
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 to obtain European patents.
Preparations are at an advanced stage for the introduction of the Unitary Patent system and the opening of the Unified Patent Court (UPC) in late 2017. The UK continues to take a leading role in the UPC project. On 15 March the UPC Preparatory Committee finalised the key documentation required for the provisional application phase.
For more information, please email or call on +44 20 3077 8600 your usual J A Kemp contact or Martin Jackson.
J A Kemp is sponsoring the Future of Swedish and Danish Life Science Conference in Lund, Sweden on 30 March 2017. The conference is being held at Medicon Village Science Park in Lund and aims to examine how Sweden and Denmark can become more internationally competitive in life science fields through strong collaboration.
Partners Chris Milton and Ben Mooneapillay will attend the conference. Chris will speak on the topic of ‘Building an IP position that is attractive to investors and partners – establishing both your own IP and your FTO’.
To view the agenda please click here.
24 March 2017
BioStars Winners Mentored by J A Kemp
Aberdeen-based EuroBiotix (pictured below), a company that supports doctors in treating diseases with helpful bacteria, won the final of the 2017 BioStars accelerator programme. Oxford-based HyperC, an emerging business focused on compound labelling solutions for preclinical in vivo MRI research and diagnostics, won the Rising Star Award. Both companies were mentored through the programme by J A Kemp.
There were 40 teams in the programme. The competition final, hosted by Panacea Innovation, took place on 21 March at Lady Margaret Hall, Oxford. In the course of the evening, each of the finalists made a pitch to the competition judges in a format similar to the BBC’s “Dragon’s Den”.
J A Kemp mentored 8 of the 40 teams in the programme. We were delighted to see two of our teams win the top prizes.
The House of Commons passed a Bill yesterday amending provisions relating to unjustified threats to bring proceedings for infringement of patent, trade mark and design rights. The amended legislation can be enacted into the UK’s national law following royal assent.
Full details of the amended provisions can be found here. The amendments follow a Law Commission project to simplify and clarify threats provisions and harmonise these across different IP rights. The law as amended clarifies communications relating to IP rights that will be regarded as actionable unjustified threats of infringement. It also introduces guidance on permitted communications exempt from threats actions. The revised threats provisions will be applicable to threats in relation to infringement in the UK of Unitary Patents under the jurisdiction of the planned Unified Patents Court.
If you have any queries in relation to actions that can be taken when an IP right is suspected to have been infringed, please feel free to contact us.
13 March 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. The next stage is for the Bills to be approved by the Bundesrat.