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.


23 March 2017
Intellectual Property (Unjustified Threats) Bill Passed by Parliament

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.

10 March 2017
EPO to Provide Opinions on Patentability with Partial Search Reports

The EPO has announced that, from 1 April 2017, it will issue an opinion on patentability even in cases where a partial search report is drawn up.  At present, if the EPO identifies that the claims cover more than one invention, then it issues a partial search report covering the invention mentioned first in the claims and invites the applicant to pay additional search fee(s) to get the other invention(s) searched.  This partial search report is not accompanied by an opinion on patentability.  After the deadline for paying additional search fees has passed, the EPO issues a final search report, which covers all inventions for which search fees have been paid and which is accompanied by an opinion on patentability for each of those inventions.

From 1 April 2017, the EPO has announced that it will now issue an opinion on patentability for the invention mentioned first in the claims with the partial search report.  This change will apply to both (a) European patent applications on which a search report is to be drawn up, and (b) International applications where the EPO is the International Searching Authority.  The procedure will not otherwise change, in that the partial search report will still be accompanied by an invitation to pay additional search fees and a final search report will subsequently be issued covering all inventions for which search fees have been paid.

This is a welcome development, because it means that the applicant will have more information as to how the EPO views the patent application when deciding whether or not to pay additional search fees.  Further information on the changes can be found here

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 ratify the Agreement before the UPC can become operational are the UK and Germany.  The UPCA will come into effect on the first day of the fourth month after ratification by those two states.

As mentioned here, Slovenia and Lithuania are also expected to ratify the UPCA in the near future, further expanding the geographical scope of the UPC system. 

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, Germany and the UK are the remaining Participating States which must ratify the UPC agreement before the agreement can come into effect. 

Arrangements for proceeding with ratification of the UPC Agreement by Germany have recently progressed with draft legislation to be presented to the German Bundestag for a 13 to 15 February sitting.  Germany is likely to delay ratification of the UPC until after the UK has ratified.      

In the UK, ratification of the UPC agreement could occur in March or April 2017. The Protocol on Privileges and Immunities of the UPC was put before parliament on 20 January 2017.  Once this Protocol has received parliamentary approval and has been ratified, the UK should then proceed to pass the necessary legislation to ratify the UPC Agreement itself. 

The Protocol on Privileges and Immunities sets out the legal standing of the premises, documentation and employees of the courts constituting the UPC.  It will come into force 30 days after the date on which the last of France, Germany, Luxembourg and the UK (those countries hosting a Central Division or Appeal Court of the UPC) deposit their instruments of ratification.  As of 9 February 2017, only the Netherlands has deposited their ratification of the Protocol.  It is expected that other states will follow in the near future. 

As regards the other Participating States, it is expected that Italy, Slovenia and Lithuania will ratify the UPC Agreement in the near future. This would take the number of states participating in the UPC when it opens to at least 16.   

8 February 2017
London Cleantech Cluster Special Interest Group - Managing IP in Cleantech R and D with External Funders and Partners - 8 March 2017

On Wednesday 8 March 2017 J A Kemp is hosting the 11th London Cleantech Cluster IP Special Interest Group at its offices in Holborn.

The session is called “Managing IP in Cleantech R & D with External Funders and Partners”.

Investors look at IP from their own unique perspective and attach great importance to IP protection to reduce the risks associated with the investment. This seminar will examine case studies involving clean technologies, look at the implications of various types of funding and collaboration on IP ownership and highlight potential pitfalls.

Attendees will have the opportunity to ask specific questions about their own IP situation and learn about the fundamental concepts involved in protecting their intellectual property. There will also be refreshments and plenty of time for networking. This event is open to all cleantech businesses and is free to attend.


17.30 - 18.00 - Registration and networking

18.00 - 19.00 - Talk

19.00 - 19.30 - Questions and networking


To register yourself or a colleague for this event, please click here.

2 February 2017
EPO Enlarged Board of Appeal Prescribes an Antidote to Poisonous Divisionals

The EPO’s Enlarged Board of Appeal has just provided (here) its detailed reasoning in response the questions concerning partial priority that were posed in referral G1/15.  This full decision follows on from the brief answer that was provided in November 2016 (as reported here).  

The central issue in this referral was the extent to which a narrow disclosure in a priority document may give rise to a right to partial priority, in the priority-claiming application, for a broader claim that encompasses the narrow disclosure.  The Board concluded that the EPC contains no other requirements for recognising a right of partial priority except that the same invention as that disclosed in the priority document is encompassed by the claim of the priority-claiming application.  This means, for example, that it is not necessary to consider whether applying a partial priority approach leads to the “claiming of a limited number of clearly defined alternative subject-matters” (wording derived from an earlier Enlarged Board decision, G 2/98, and the interpretation of which had led to divergent case law amongst the Boards of Appeal).

The Enlarged Board set out a two-step process for assessing whether partial priority can be enjoyed.  The first step involves determining the relevant disclosure in the priority document.  The second step involves determining whether this disclosure is encompassed by the claim in the priority-claiming case.  If the answer is yes, then the claim is de facto conceptually divided into a part enjoying priority and a part not enjoying priority.

This welcome clarification means that most objections based on the so-called “poisonous divisional” theory, which rely on there being “other requirements” for enjoying partial priority, are unlikely to succeed.  Similarly, there should now be much reduced risk of self-collision between a priority application that has been published and a later European patent application that claims priority to it.  Nonetheless, it should be emphasised that careful drafting remains imperative in view of other complexities in European practice in this area, such as the EPO’s strict interpretation of the “same invention” test for establishing a valid priority claim.

For more information please contact Andrew Clark or your usual J A Kemp contact.

2 February 2017
Does an SPC for a Biological Product Cover a Biosimilar? Guidance from Norway

In December 2016 the Norwegian Court of Appeal handed down its decision in Pharmaq v Intervet, which concerns the validity of Intervet’s SPC for a viral vaccine for preventing pancreatic disease (PD) in salmonid fish.  The case is of general interest in that it relates to the extent to which an SPC for a biological product may be considered to encompass closely-related alternatives such as biosimilars. 

For more information, please see our briefing on this topic, here.

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 affect his own case, or support another party’s case.  Civil Procedure Rule (CPR) 31.22, however, restricts the circumstances under which such documents can be used outside the context of the specific litigation at issue.

The document at issue here was an agreement between two of the claimants called the “Pooled Patents Agreement”.  A version of the document with confidential information deleted (redacted) had been disclosed in the English patent proceedings.  A second version of the document, including the confidential information (unredacted), had then been disclosed to certain members of the defendant’s legal team for the purpose of formulating a competition law defence to the patent action.

The defendants wanted to make submissions relating to the confidential parts of the document to the European Commission in a related but separate competition law investigation.  They therefore wished to be notified when the European Commission had been provided with the unredacted version of the document, and sought permission to use the unredacted version of the document to make submissions to the European Commission.

The Judge noted that the disclosure of the unredacted version of the Pooled Patents Agreement was akin to pre-action disclosure in relation to the competition law defence to the patent action.  If that English competition law case never proceeded, but the defendants were allowed to use the confidential content of the Pooled Patent Agreement to make submissions to the European Commission, then the defendants would have won an advantage in relation to the European Commission procedure without there being any domestic competition law issues live.

The Judge therefore refused to grant the order that the defendants be notified when the European Commission received an unredacted version and refused to allow the defendants to use the unredacted Pooled Patents Agreement to make submissions to the European Commission.  He took the view that doing that would encourage other parties to ask for disclosure from the English Court at the outset of competition proceedings in order to secure a collateral advantage of furthering a public authority’s enquiry or investigation.

The Judge did, however, leave it open for the defendants to apply again in the future if and when competition law issues became live in the English litigation.

The full decision is available here.

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