12 October 2017
J A Kemp Retains Top Tier Ranking in The Legal 500

Leading UK and European patent and trade mark attorney firm J A Kemp has retained its top tier ranking in The Legal 500, with 12 of its partners also being recommended.

Noting the firm to be ‘a premium, top-tier European firm’, the directory praised J A Kemp’s patent team for their ‘excellent response times and appropriate advice’, commenting that the patent team ‘is knowledgeable and current on EPO practice and fully understands the industry-relevant aspects of clients’ inventions’. Nine of the firm’s patent partners were ranked in the directory.

J A Kemp’s trade marks team was singled out for its ‘excellent technical knowledge, strength in depth, commercial awareness and responsiveness’ and identified as ‘one of the go-to firms for complex trade mark advice and trade mark related litigation’. Three of the firm’s trade mark partners were ranked for the fourth year in succession.

To visit The Legal 500 website for more information on J A Kemp, please click here

11 October 2017
EPO elects new President and Chairman of Administrative Council

The Administrative Council of the EPO has elected António Campinos to succeed Benoît Battistelli as President of the EPO.  Mr Campinos, who is currently Executive Director of the European Union Intellectual Property Office (EUIPO), will start his five-year term as president of the EPO on 1 July 2018.  The EPO’s press release with further details can be found here.

In addition, Christoph Ernst replaced Jesper Kongstad as Chairman of the Administrative Council as of 1 October 2017.  Mr Kongstad held the position from 1 July 2010 to 30 September 2017.

6 October 2017
Tunisia to Allow Validation of European Patents as National Patents

It has been announced that it will be possible, from 1 December 2017, to validate European patents in Tunisia. This development marks the culmination of an agreement between the European Patent Office (EPO) and the Tunisian Patent Office (INNORPI) first signed in July 2014.

Tunisia will not be a member of the EPC, nor a so-called extension state. Instead, the validation agreement is a bilateral arrangement between the EPO and the INNORPI. Similar bilateral agreements between the EPO and Morocco came into force on 1 March 2015 and between the EPO and Moldova on 1 November 2015.

For users of the European patent system, the practical result of this announcement is that it will now be possible to cover up to 43 countries with a single European patent application. Anyone filing a European patent application (or a PCT application designating Europe) on or after 1 December 2017, will be able to request validation in Tunisia, and a validation fee will need to be paid to the EPO within the same period as for paying designation and extension fees. The system is similar in effect to the current extension state system.

Tunisian validation will not be available for European patent applications filed before 1 December 2017, or any European patents resulting from such applications.

The EPO's announcement (currently only available in French) can be seen here.

29 September 2017
UK - New Provisions Around Unjustified Threats of IP Infringement to Take Effect 1 October 2017

Changes to provisions in UK law relating to unjustified threats to bring proceedings for infringement of patent, trade mark and design rights are to enter in force on 1 October 2017. The changes generally harmonise threats provisions across all of the different IP rights and provide some further guidance on communications to third parties in relation to IP rights that will not be regarded as actionable threats.

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. Detailed information is also provided in our briefing on this topic.

29 September 2017
UK Registered Design Right - Webmarking of Products

With effect from 1 October 2017, UK registered design owners will have the option to indicate their design rights by webmarking protected products with a web address providing the relevant registered design number(s).  A similar system has been in place for patents since 1 October 2014.  Such webmarking will reduce the risk of alleged infringers avoiding a finding of damages by claiming a defence of “innocent infringement”. 

The web address marked on a product should be freely accessible and lead directly to information on which UK registered design number(s) a product is associated with.  Any relevant model numbers and variants protected by a UK design right should be clearly set out.  A general link to a home page will likely not be accepted as a clear and direct indication of a UK design right. 

It will remain an option to mark a product with a design number (and not a web address leading to the design number) to indicate UK design rights.  However, the new option of webmarking should simplify product labelling and ensuring that labels are up-to-date. 

Further details on the newly available webmarking can be found in the UKIPO’s briefing "Webmarking of Products Protected by Registered Designs – Business Guidance".

 

25 September 2017
News on UPC Timetable

The Preparatory Committee of the UPC have acknowledged that it “is now difficult to predict any timeline” for the introduction of the UPC. This is because of the case currently pending in the German Federal Constitutional Court (FCC) reported here which has prevented Germany from ratifying the UPC. German and UK ratification are still required in order for the UPC Agreement to come into effect.

The UK parliament is continuing with the ratification process. Statutory Instruments have been laid before the UK Parliament and the Scottish Parliament. The Statutory Instrument laid before the UK parliament requires a debate, for which no date has yet been set.  The Statutory Instrument laid before the Scottish Parliament must be recommended, by 29 October 2017, for approval by the Justice Committee in order to be passed. If the two Orders are passed, they will give effect to the Protocol on Privileges and Immunities of the UPC and allow the UK to ratify both the Protocol on Privileges and Immunities and the UPC Agreement itself.

18 September 2017
J A Kemp Event - IP Essentials for Tech Transfer: The UPC and Unitary Patents - 5 October 2017

The patent system in Europe is set to undergo its biggest change in decades with the introduction of a new Unified Patent Court (UPC) and the availability of a new pan-European “Unitary Patent” (UP).  With the UK having recently taken steps towards ratifying the Unified Patent Court agreement, we could see changes starting to come into effect before the year is out.  Patent owners and applicants should be considering both what action to take with their existing portfolio and whether they want to obtain unitary patents in the future.

Join us for a late-afternoon session where we address this topic, providing some practical advice on managing these up-coming changes in the technology transfer arena, and taking a look at how the implementation of the UPC and the Unitary Patent might affect your day-to-day decision making.

The seminar, which will take place from 4.00 – 7.30pm on Thursday 5 October, is specifically targeted at those working in the technology transfer field.

Attendees will have the opportunity to ask specific questions about their own situation and there will be plenty of time for networking over drinks.


Who should attend?

Anybody working in technology transfer organisations or university spinouts, and other university-based scientists, inventors or entrepreneurs.


Date

Thursday 5 October 2017


Location

Etc. Venues Farringdon - The Hatton, 51-53 Hatton Garden, London EC1N 8HN


Timings

16.00 - 16.30 - Arrival, registration and refreshments

16.30 - 18.30 - Presentations and discussion

18.30 - 19.30 - Networking and refreshments

 
Register

To register you and/or a colleague for this event, please click here.

12 September 2017
New Trade Mark Law in the Cayman Islands

A new trade mark law has come into effect in the Cayman Islands.  The primary change brought about by the new law is the abolition of the “re-registration” system.  Previously, those wishing to register trade marks in the Cayman Islands were required to have an existing trade mark registration with effect in the UK, which was then re-registered in the Cayman Islands.  Following the implementation of the new law, only national applications filed in the Cayman Islands will be accepted.  We will be pleased to arrange any such registrations upon request.

Existing Cayman Islands registrations based on UK or EU rights will no longer require proof of renewal of the UK/EU right in order to renew the Cayman Islands registration.

31 August 2017
Lithuania Becomes the Fourteenth State to Ratify the Agreement on the Unified Patent Court (UPC)

On 24 August 2017, Lithuania became the fourteenth country to deposit its ratification of the UPC Agreement with the EU Council.  The full list of countries which have deposited their ratification of the UPC Agreement  is now as follows: Austria, Belgium, Bulgaria, Denmark, Estonia, France, Italy, Lithuania, Luxembourg, Malta, Netherlands, Portugal, Sweden and Finland.  The status of the UPC Agreement is available here.  The UPC Agreement will not come into effect until the UK and Germany have ratified the Agreement.  In view of the constitutional challenge regarding the UPC underway in Germany, it is unlikely that the required ratifications will be deposited until spring 2018 at the earliest.  

31 August 2017
UKIPO Invites Comments on the Latest CJEU Referral for SPCs

The CJEU has invited EU member states to file observations on the referral by the English High Court in Abraxis Bioscience LLC v The Comptroller General of Patents. This case was previously reported in our news item of 27 January 2017 and considered in more detail in our related briefing. The question referred to the CJEU reflects the lack of clarity provided by the court’s earlier “Neurim” decision (C-130/11).  In particular, clarification is sought on the issue of whether “Neurim-type” SPCs can be granted for a new formulation of an old active ingredient.  The specific question referred to the CJEU is:

“Is Article 3(d) of the SPC Regulation to be interpreted as permitting the grant of an SPC where the marketing authorisation referred to in Article 3(b) is the first authorisation within the scope of the basic patent to place the product on the market as a medicinal product and where the product is a new formulation of an old active ingredient?”

The UKIPO has invited the public to submit any comments to policy@ipo.gov.uk by 6 September 2017.  The EU member states then have until 2 October 2017 to file observations with the CJEU.  Assuming that the referral leads to a hearing at the CJEU, it is likely that we will not receive an answer to the question until 2018.


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