The UK Supreme Court’s judgment in Lilly v Actavis has profound implications for the scope of protection provided by patent claims in the UK.
The judgment moves away from the principle that the patentee should enjoy the full extent, but no more than the full extent, of the monopoly that a reasonable person skilled in the art, reading the claims in context, would think he was intending to claim. Rather, following this new decision, a patent claim in the UK can be infringed by products or processes that are not within the ambit of the language used in the claims.
The legislative provisions governing the scope of protection conferred by a patent in the UK are governed, as in the other EPC States, by Article 69 EPC and the Protocol thereto. The text of Article 69 EPC and its Protocol are set out in the Annex.
Article 2 of the Protocol requires that “due account” must be taken of any element that is “equivalent” to an element specified in the claims. However, the UK courts have long been reluctant to recognise a doctrine of equivalents, in the sense that a claim should protect subject matter that is different from, but equivalent to, that specified in the claim. Rather, the courts have applied a doctrine of “purposive construction”, in which they seek to determine what the person skilled in the art would have understood the patentee to be using the language of the claim to mean.
The leading case explaining this approach of purposive construction was House of Lords case Kirin-Amgen v TKT That case involved a claim for recombinant erythropoietin, prepared in a eukaryotic host cell.
In Kirin-Amgen v TKT, the court noted that other jurisdictions, such as the United States, did apply a doctrine of equivalents, but opined that such a doctrine was “born of despair” and that the correct approach was simply to assess what the person skilled in the art would have understood the patentee to be claiming. On the facts of the case, the court held that a skilled person would understand a “host cell” to be a cell that is host to a foreign DNA sequence that encodes erythropoietin or an erythropoietin analogue. TKT’s product was not prepared via such a cell, and therefore did not infringe.
The claims of Lilly’s patent related to the use of the disodium salt of pemetrexed in the manufacture of a medicament for use in combination with vitamin B12 for the treatment of cancer. A corresponding medicament including pemetrexed disodium and the vitamin (Alimta®) had been successfully marketed by Lilly since 2004. In order to clear the way for marketing of competing products, Actavis applied for declarations of non-infringement in relation to various pemetrexed products comprising the diacid (non-salt) form of pemetrexed or alternative salt forms to disodium (such as dipotassium).
Actavis’ position was that their products should not infringe directly because in no sensible way could pemetrexed dipotassium (for example) be said to fall within the expression “pemetrexed disodium” as recited in claim 1 of the patent. Given the background outlined above, and following Amgen v TKT, Actavis could reasonably have expected the courts to take the view that there was no direct infringement of Lilly’s patent, and indeed the first instance court and the Court of Appeal did just that. In the UK it is, though, possible to ask the Supreme Court to hear an appeal from a ruling from the English Court of Appeal on a point of law of general public importance, and in this instance the Supreme Court agreed to hear such an appeal.
On appeal, the Supreme Court recognised that the expression “pemetrexed disodium” set out in claim 1 of the patent could not in any sensible way be interpreted so as to cover, for example, pemetrexed dipotassium. However, contrary to the reasoning in Amgen v TKT, the court then held that this should not be the definitive question for determining infringement. Rather, Lord Neuberger, who gave judgment for the court, ruled that a variant that is not covered by the claims as a matter of normal interpretation could nevertheless infringe if it varies from the claimed invention only in an immaterial way.
In reaching this conclusion, the judge noted that Article 2 of the Protocol to Article 69 EPC makes it clear that there is potentially a difference between the interpretation of a claim and the extent of protection conferred by the claim and that, when assessing that difference, equivalents must be taken into account. He also reviewed relevant case law in other EPC states (Germany, France, Italy, Spain and the Netherlands), and noted that many of these states already apply a doctrine of equivalents.
A new three-part test for determining whether a variant outside the normal meaning of the claims can infringe was then set out. The three questions to be answered are:
It is noteworthy that the first question refers to the “inventive concept revealed by the patent”. The judge did not explain in detail what is meant by the “inventive concept”. He viewed it as requiring consideration of how the invention works, and equated it to terms he identified from other EPC jurisdictions, including a consideration of “the problem underlying the invention” and “the inventive core”. Presumably, identification of the “inventive concept” should involve an assessment of the features central to distinguishing the invention over the prior art.
The second question requires an assessment of whether at the priority date of the patent it would be obvious that the variant achieves substantially the same result in substantially the same way as the invention. The judge held that it was important that the knowledge that the variant exists, and that it achieves substantially the same effect, must be ascribed to the skilled person before the question is asked. It follows that it is possible to have an affirmative answer to the second question even where the variant was unforeseeable at the priority date.
As regards the third question, the judge clarified that the relevant issue is whether or not the feature at issue is essential to the “invention”, not whether or not it is essential to the product or process of which the inventive concept is part. For example, a distinction can be drawn between features that contribute to the inventive concept and conventional features that are merely essential to the operation of a particular product or process that embodies the inventive concept (e.g. a conventional wheel might be an essential component of a new and inventive bicycle, but not essential to the corresponding “invention”).
The judge further held that the third question should be considered in the light of the specification as a whole and the knowledge and expertise of the skilled person. He also pointed out that the fact that the language of the claim excludes the variant on any sensible reading is not enough to justify the answer “yes”. Finally, he emphasised that it is necessary to imbue the skilled person with the knowledge of the variant and the fact that it achieves substantially the same effect as the claimed invention when assessing the third question.
On the facts of the case, the first question was answered positively on the basis that all of Actavis’ products worked in the same way as the invention, involving a medicament that is a combination of pemetrexed and vitamin B12. The judge defined the inventive concept of the patent as the manufacture of a medicament which enables the pemetrexed anion to be administered with vitamin B12.
The second question was also answered affirmatively since it was held that it would be appreciated at the priority date that the Actavis products would work in the same way as pemetrexed disodium when administered with vitamin B12. Earlier findings of fact had been made in the first instance Patents Court judgment to the effect that the preparation of other suitable salt forms of a given molecule would not be a predictable exercise. However, the second question presupposes knowledge that the particular variants in question are indeed functional, i.e. they achieve substantially the same result as the invention.
Finally, the third question was answered in the negative on the basis that the specification did not teach any essentiality to the disodium salt of pemetrexed, but rather contained a more general disclosure of antifolates and their administration with vitamin B12. Also, there was a finding that the skilled person would know, as a matter of common general knowledge, that different salt forms may be used and screened for routinely in drug development. The fact that the particular specific disclosure of the patent and its examples related only to pemetrexed disodium did not justify, in the view of the judge, the conclusion that the patentee intended to limit the scope of protection of the granted patent to this salt form only. In this regard, the judge drew a clear contrast between the disclosure of the specification of a patent and the scope of protection provided by the claims.
The judge thus concluded that, subject to a consideration of the prosecution history, the Actavis products infringe claim 1 of the patent.
The judge generally held that contents of a prosecution file should be treated with some scepticism. However, he held that a reference to the file would be appropriate if:
An example of a situation arising under (ii) may, for example, be where a statement had been clearly made by the patentee that the scope of the claims do not extend to the relevant variant now claimed to be infringing.
The review of Lilly’s prosecution of the application at the European Patent Office established that limitations had been made to original broader claims relating to antifolates generally, in response to objections of lack of disclosure (Article 83 EPC) and lack of clarity (Article 84 EPC). A claim to pemetrexed generally had then been further limited to pemetrexed disodium on the basis of an objection of added subject matter (Article 123(2) EPC).
The judge noted that these limitations had been made to address objections based on the disclosure of the patent, and held that they were not relevant to the question of whether pemetrexed salts other than disodium should be within the scope of the patent pursuant to a doctrine of equivalents. It is possible, of course, that a different conclusion would have been reached if the limitations had been necessary to distinguish the claimed invention from prior art cited by the Patent Office Examiner.
For the reasons given above, all of Actavis’ products were held directly to infringe Lilly’s patent, as being immaterial variants of the claimed invention.
Given the findings on direct infringement, the debate on indirect infringement became moot. However, Actavis were also held to be liable under Section 60(2) of the UK Patents Act as supplying means essential for putting the invention into effect, on the basis that the Actavis products would inevitably be dissolved in saline, which would lead to a dissolved sodium salt of pemetrexed.
Findings of infringement were also made for Actavis’ products under French, Italian and Spanish law based on the original application made for the UK court to determine infringement in these jurisdictions, and applying the doctrine of equivalents provisions that exist in these EPC states.
The Supreme Court’s judgment significantly changes previous UK practice for assessing infringement. It has the effect of bringing UK law more in line with other European countries and so may be viewed as a nod towards the Unitary Patent system in which a more harmonised approach to infringement will be required.
Given this development in the law in the UK, it may be appropriate for both patentees and those seeking to develop new products and processes to review any advice they have previously received on infringement, based on the previous Amgen v TKT precedent. It may be that a different conclusion could be reached on the same facts following this new judgment.
When drafting and prosecuting patent applications, it may now be more important to include disclosure in the specification relating to the nature of the invention that is framed at a general level. This can then be used for assessing the inventive concept. It also remains important to avoid unnecessary suggestions that particular features are essential to the working of the invention.
If you would like to discuss the impact of this decision on any specific situation you face, please do not hesitate to contact your usual J A Kemp contact.
The extent of the protection conferred by a European patent or a European patent application shall be determined by the terms of the claims. Nevertheless, the description and drawings shall be used to interpret the claims.
Article 1: General principles
Article 69 should not be interpreted in the sense that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Neither should it be interpreted in the sense that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patentee has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties.
Article 2: Equivalents
For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims.
 Kirin Amgen v Hoechst Marion Roussel  UKHL 46 ( RPC 169). The judicial function of the House of Lords was succeeded by the Supreme Court in 2009.
21 July 2017
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12 November 2019
On 23 October 2019, Kitchin LJ handed down a judgment, available here , which brought to an end a 13-year long dispute between Professor Ian Shanks OBE FRS FREng and Unilever. The case concerns a compensation claim made by Professor Shanks, in connection with several patents owned by Unilever directed towards glucose monitoring devices, for which Professor Shanks was the sole inventor (the “Shanks patents”). Professor Shanks considered that his patents were of outstanding benefit to Unilever and, in accordance with Section 40(1) of the UK Patents Act 1977 (PA ’77), that compensation was due.
04 October 2019
The EPO has recently revised the Rules of Procedure of the Boards of Appeal (RPBA) 1 . The revised RPBA will come into force on 1 January 2020. The revisions are fairly extensive and are primarily concerned with harmonising the practices of the various different Boards of Appeal. The EPO is also hoping that the changes will increase the overall efficiency of the appeal procedure. Many of the changes may require users of the European patent system to modify their day-to-day practice, both during first instance proceedings and in subsequent appeals.
20 September 2019
On 11 September 2019 Advocate General Hogan issued his Opinion in connection with the combined referrals to the CJEU in Royalty Pharma C-650/17 and Sandoz C-114/18. Both referrals concern the interpretation of Article 3(a) of the SPC Regulation, which requires that: “A[n SPC] shall be granted if… the product is protected by a basic patent in force” The full text of the Advocate General's Opinion is available here. The Opinion is not binding on the CJEU. It is the role of the Advocates General to propose to the Court, in complete independence, a legal solution to the cases for which they are...
12 June 2019
On 11 June 2019 the EU published Regulation (EU) 2019/933. This introduces a so-called “manufacturing waiver” by amending existing Regulation (EC) 469/2009 concerning supplementary protection certificates (SPCs). The new Regulation is the result of a trilogue inter-institutional negotiation procedure between the European Commission, Council and Parliament, which concluded in February 2019 and is discussed here . The compromise text underwent a formal first reading at the European Parliament on 17 April 2019. It was approved by Council on 14 May 2019 and signed by the European Parliament and Council on 20 May 2019.
08 May 2019
Two recent decisions of an EPO Technical Board of Appeal emphasise the need for a proper technical context to be set out in claims to render an abstract idea patentable. The two appeals, by Ab Initio Technology LLC, related to inventions in the field of parallel processing, a field that seems on the face of it highly technical. However, the inventions were claimed as processes for converting computation graphs into a form better adapted for parallel processes but without specifying any steps of performing any processing, parallel or otherwise. At this level of generality the Board considered the inventions to...
09 April 2019
Recent weeks have seen important developments in the debate on patent-eligibility of plants in Europe, with the EPO’s Boards of Appeal and its President, Administrative Council and member states pulling in opposite directions. The President has now referred questions, published today, to the Enlarged Board of Appeal, but the admissibility of the referral is uncertain, so it is unclear how or when the Enlarged Board will react. Applicants in this field will therefore face further delay and uncertainty. More generally, this is also a highly unusual, polarised situation that highlights the potential for conflict between different branches of the European...
27 March 2019
Whatever the technology, IP can form a significant intangible asset for a company. In addition to legally protecting the company’s products and activities from being copied by competitors, IP can generate revenue through licensing or sales, it can protect market share and increase return on a company’s R&D investment. IP therefore plays a vital role in establishing the value of a company. When looking to invest in a company that holds IP, a good understanding is needed, not only of what IP a company holds, but how that IP adds value to the company. IP is not just a matter of numbers: the strengths...
22 March 2019
The CJEU issued on 21 March 2019 its judgment in the Abraxis C-443/17 case. The full text of the judgment can be found here . The referral in Abraxis C-443/17 was made by Mr Justice Arnold of the English High Court in a case concerning an application for an SPC for the oncology product ABRAXANE®. This product comprises the active ingredient paclitaxel formulated in albumin-bound paclitaxel nanoparticles. Paclitaxel had been the subject of earlier marketing authorisations, albeit in different formulations.
18 March 2019
On Friday 15 March 2019 the World Intellectual Property Organization released its UDRP statistics for the 2018 calendar year. As always the information is useful for brand owners and particularly those interested in knowing more about what their peers are doing in the online brand protection space.
05 March 2019
The issue of “double patenting” arises in the EPO when one applicant files two European patent applications with closely related claims and the same effective filing date. A situation where double patenting commonly needs to be considered is when the claims of a divisional application overlap with the claims of its parent application. Under such circumstances it is necessary to determine how much overlap between the claims of the two applications should be permitted. The case law has developed such that the EPO will generally allow substantial overlap between the claims.
01 March 2019
The UK Government has now approved draft regulations, The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019, which set out what will happen to European Union Design rights on “exit day". A link to the text can be found here. We have already reported the position in relation to Trade Marks and Brexit, a link to which can be found here. The draft Regulations will come into effect on exit day, currently set to be 29 March 2019 in the event of a 'hard' or 'no deal' Brexit. However, the effect of the Withdrawal Agreement, if it is ultimately...
28 February 2019
EPO Technical Board of Appeal 3.5.07 has, in case T 0489/14 (Pedestrian simulation/CONNOR), referred questions to the Enlarged Board of appeal concerning what is to be considered technical in the fields of design and simulation. The cases of Designing optical systems/Philips and Circuit Simulation I/Infineon have long been cited as precedent that the design or simulation of a technical system is itself technical and eligible for patent protection. However, some more recent cases have put limits on that proposition, suggesting that the technical system must be defined with sufficient specificity and that the purpose of the simulation might also be...
27 February 2019
Following formal notice by the UK Government under Article 50 of the Treaty to the European Commission to exit the European Union (EU), a 2 year deadline was created. The UK exit from the EU or so-called ‘Brexit’ is due to occur on 29 March 2019. In the absence of an extension or retraction of the Article 50 Notice the UK will cease to be part of the EU on 30 March 2019.
13 February 2019
In 2014, the EPO launched the Early Certainty initiative to speed up the patent granting process. This initiative has resulted in speedier establishment of search reports and a shorter examination procedure. As can be seen from the chart, the result is that the number of EP patents granted since the launch of the initiative has increased far more quickly than the number of patent applications filed. This is confirmed by our experience, in which a quicker turnaround time has been noticeable, with an increasing number of applications proceeding to grant directly after a response to the search report is filed.
13 February 2019
This briefing explores the options available to applicants in the event that the deadline for filing a PCT has been missed. In this context we refer to the deadline for filing a PCT application that is set by the twelve month deadline for claiming priority under the Paris Convention. A successful claim to priority may be important, particularly if the applicant has disclosed their invention after filing their first application and wishes to proceed with national and/or regional phases in which no grace period is provided for disclosures by the inventor/applicant.
13 February 2019
The deadline for requesting entry of a PCT application into the European regional phase is 31 months from the filing date or, if priority has been claimed, from the priority date (Rule 159(1) EPC). However, if this deadline is missed, remedies are available that may permit entry into the European regional phase later than this deadline.
13 February 2019
Re-establishment of rights under Article 122 EPC may be used to recover rights lost as a result of missing a deadline set by the European Patent Office. The requirements of this provision are shared with a number of restoration systems worldwide. There is much variation from regime to regime. However, the European Patent Office approach is well established, with a history of case law that makes it clear what is needed to successfully recover rights in Europe.
13 February 2019
The central issue when seeking restoration or re-establishment of rights in many countries is establishing that due care was taken. This is certainly true of cases before the European Patent Office. This paper reviews what issues may need to be addressed in order to demonstrate due care to the European Patent Office when preparing grounds for re-establishment of rights. Other offices, such as the International Bureau, follow a similar approach to the European Patent Office.
11 February 2019
On 28 May 2018 the European Commission published 1 a proposal for a change in the law (see discussion here and here ), which would permit third parties to manufacture a medicinal product protected by a Supplementary Protection Certificate for the exclusive purpose of export to countries outside the EU.
31 January 2019
2018 has been a year of increased productivity for at least those Boards of Appeal that cover software inventions (Boards 3.5.01 and 3.5.03 to 3.5.06). In particular Board 3.5.01 has returned to a similar level of productivity as the other Boards now that it has a Chairman. The main controversies continue to be the proper treatment of mixed inventions (those involving non-technical aims or features as well as technical ones) and how to determine what is and is not technical.
04 December 2018
The Supreme Court in the UK handed down its decision in Warner-Lambert v Actavis on 14th November 2018 (and a copy of the complete decision is available here ). The Supreme Court considered the following issues in its judgment: how much data is required in the application as originally filed to support a second medical use claim; and the circumstances under which “cross label use” for the patented indication of a drug sold by a competitor company can constitute infringement of a second medical use claim.
06 November 2018
The Court of Appeal has given its decision in the appeal against Birss J’s decision in Unwired Planet International Ltd v Huawei Technologies Co Ltd relating to standard essential patents (SEPs) and how to determine fair, reasonable, and non-discriminatory (FRAND) terms. The Court of Appeal upheld Birss J’s decision (which we reported here) in all respects except one, holding, in summary, that a global licence was FRAND in this case, and that the FRAND requirement does not require the patentee to grant licences on equal terms to all third parties. The Court of Appeal overturned Birss J’s decision that there...
23 October 2018
Following the changes that took place within the EU trade mark system as of March 2016 and October 2017, the UK government is now in the process of implementing the EU Trade Mark Directive 2015. The UK government has recently published guidelines on the amendments that will be made to UK Trade Marks law as of 14 January 2019 in order to give effect to the Directive. The amendments will bring about several important changes which are highlighted below.
19 October 2018
This is the fourth year in a row that sections of the EPO guidelines for examiners relating to computer implemented inventions (CII) have been significantly amended. These amendments have come about as a result of a project within the EPO to harmonise the treatment of inventions involving computers and software across all examining divisions. In the EPO, inventions not relating to computer science per se are handled in various examining divisions according to the function performed by the computer and its software. Thus, significant variation in practice had arisen between different examining divisions. This year’s set of amendments is the...
18 October 2018
Until 2008, it was not possible to register trade marks in the UK in respect of retailing of any sort. Retailing was considered not a service as such and as simply ancillary to a business providing its own goods and/or services, and thus not protectable. In 2008, the CJEU Praktiker Decision paved the way for acceptance of retailing of goods. In 2014, the CJEU Netto Marken Decision confirmed that retailing of services can also be a commercial activity in its own right and capable of protection. The UKIPO subsequently published guidelines on how to word retailing of services specifications to...
15 October 2018
On 12 October 2018 the UK Government published a further series of Technical Notices addressing various scenarios in which the UK leaves the European Union without an agreement, the so-called “no deal” or “hard” Brexit scenario. The Technical Notice dealing with plant variety rights and marketing of seed and propagating material is here. It had previously issued, on 24 September 2018, a Technical Notice relating to importing and exporting plants and plant products in the event of a “no deal” scenario, which is here. Its notice on trade marks and designs in a “no deal” scenario, which can be found...
04 October 2018
The Company Names Tribunal (CNT) was established on 1 October 2008 in order to provide brand owners with a cost-effective method of enforcing their trade marks against the registration of similar company names. The CNT has proven a useful tool against so-called “opportunistic” company name registrations, although there are some limitations to what it can achieve.
25 September 2018
On 24 September 2018 the UK Government published a series of Technical Notices addressing various scenarios in which the UK leaves the European Union without an agreement, the so-called “no deal” or “hard” Brexit scenario. The Technical Notice dealing with Patents/SPCs, the unitary patent and the Unified Patent Court is here .
25 September 2018
On 24 September 2018 the UK Government published a series of Technical Notices addressing various scenarios in which the UK leaves the European Union without an agreement, the so-called “no deal” or “hard” Brexit scenario. The Technical Notice dealing with geographical indications is here .
25 September 2018
On 24 September 2018 the UK Government published a series of Technical Notices addressing various scenarios in which the UK leaves the European Union without an agreement, the so-called “no deal” or “hard” Brexit scenario. The Technical Notice dealing with exhaustion of IP rights is here .
25 September 2018
On 24 September 2018 the UK Government published a series of Technical Notices addressing various scenarios in which the UK leaves the European Union without an agreement, the so-called “no deal” or “hard” Brexit scenario. The Technical Notice dealing with copyright is here .
25 September 2018
On 24 September 2018 the UK Government published a series of Technical Notices addressing various scenarios in which the UK leaves the European Union without an agreement, the so-called “no deal” or “hard” Brexit scenario. The Technical Notice dealing with trade marks and designs is here .
02 August 2018
The CJEU has dismissed Nestlé’s appeal on the acquired distinctiveness of the KitKat bar. The Court has re-affirmed the principle that, for an EU trade mark to be registered on the basis of acquired distinctiveness through use, the acquisition of distinctive character needs to be shown in every Member State of the EU in which it did not, ab initio, have such character. It remains to be seen whether the CJEU decision signals the end for Nestlé’s trade mark registration, or is merely one decision in a series of appeals set to continue for some years to come.
26 July 2018
On 25 July 2018 the CJEU gave its ruling in C-121/17 Teva UK Ltd and others v Gilead Sciences Inc.
26 July 2018
What are SPCs? A Supplementary Protection Certificate (SPC) is an intellectual property right available for active ingredients of human and veterinary medicinal products requiring marketing authorisation  . The highest tribunal hearing disputes involving SPCs for EU member states is the Court of Justice of the European Union (CJEU). Historically there have been numerous referrals to the CJEU on points of law relating to SPCs and this is expected to continue. Some of the key decisions are discussed below.
25 July 2018
The EPO operates a PCT service, PCT Direct, available to PCT applications which: name the European Patent Office as International Searching Authority; and claim priority from an earlier patent application which was searched by the EPO. If a new PCT application fulfils both of these criteria, the Applicant may file a “PCT Direct letter” providing informal comments with the application. The Search Examiner is obliged to consider those comments when preparing the International Search Report and the Written Opinion on patentability.
20 July 2018
This document is intended to provide a brief introduction to Supplementary Protection Certificates (SPCs) for plant protection products. For more detailed information, please speak to your usual J A Kemp contact.
18 July 2018
This document is intended to provide a brief introduction to Supplementary Protection Certificates (SPCs) for medicinal products. For more detailed information, please see our full briefing on this topic.
06 July 2018
A patent that has been granted by the European Patent Office may subsequently be made effective in any of the countries for which a designation, extension or validation fee has been paid. This process is commonly known as “validation” of the European patent. Some countries impose translation requirements as part of the validation procedure. In general, any required translations must be submitted within three months of the grant date of the patent.
15 June 2018
Trade secrets, and the law relating to them, can seem a bit of a ‘black art’, but the basics are very simple. In summary, companies should 1) know what their trade secrets are and 2) take steps to keep them secret.
14 June 2018
The EPO has long adopted an approach to consideration of inventive step known as the problem and solution approach. Although this approach is fundamentally the same across most technical areas, special considerations apply for software related inventions. Firstly, the EPO looks for an invention to be the technical solution to a technical problem and so disregards non-technical aims/features, which are common in software fields. Secondly, the EPO Boards of Appeal often have quite high expectations of the capabilities of the ordinary person skilled in the art and thus a high threshold for inventive step. We discuss these issues below with...
01 June 2018
The European Commission published on 28 May 2018 a proposal 1 for a “manufacturing waiver” to permit third parties to manufacture a medicinal product protected by a Supplementary Protection Certificate for the purposes of export to countries outside the EU. The Commission aims to have the new legislation in place by 2019.
17 May 2018
The European Patent Office (EPO) applies the same basic patentability criteria to antibodies as to other inventions, but it can sometimes appear that antibodies are treated as a special case. For an explanation of the basic approach adopted by the EPO, please see our related briefing Antibodies in the European Patent Office – Basic Principles or ask your usual J A Kemp contact. The present briefing is intended to develop those Basic Principles into a guide to the drafting and prosecution of patent applications for antibody inventions.
16 May 2018
Although it is not unique to the field, the approach of the European Patent Office (EPO) can present significant challenges to applicants seeking to pursue claims to conventional antibody molecules. This briefing explores what we consider to be the basic principles of the EPO’s approach to this type of invention.
26 April 2018
The ongoing struggle of Nestlé to register a three-dimensional trade mark for the shape of its KitKat bar has been dealt a further blow by the opinion of the Advocate General delivered on 19 April 2018. Advocate General Wathelet’s opinion supports the conclusion of the General Court that Nestlé’s evidence of acquired distinctiveness in 10 of the relevant 15 EU member states was not enough to establish acquired distinctive character in the relevant territory as a whole, though noting that in some cases it may be possible to extrapolate evidence for one country to another.
04 April 2018
The novelty requirements for EU registered designs have peculiar provisions aiming to protect the validity of designs from obscure disclosures outside the EU. The Crocs case ( T-651/16 ) provides some pointers as to when an internet disclosure might be considered obscure but holds that there is a presumption that a website will have been seen by someone from the relevant sector within the EU despite the fact that the designer’s business was located outside the EU.
20 March 2018
Design law in Europe Design law in Europe has long sought to deny protection to “functional” designs but stops short of requiring that a design must have an aesthetic quality. This is achieved in the Community Designs Regulations 6/2002/EC (CDR), Article 8(1), by denying protection to designs which are “solely dictated by [a product's] technical function”.
07 March 2018
The EUIPO Board of Appeal recently upheld a request for a declaration of invalidity against the following grey/orange colour combination trade mark, on the grounds that its imprecision allows for multiple different combinations of the two colours.
05 March 2018
Claiming small entity status on a US application or patent provides a reduction in official fees. Most fees (e.g. basic filing fee, examination fee, search fee, etc.) are reduced by 50%, so the saving is significant. There are some risks but these may be mitigated. Where available, small entity status is attractive to many applicants.
09 February 2018
The EPO announced in January 2018 a number of changes to the rules and fee structure that come into force on 1 April 2018. The key changes are (a) discontinuation of the reduced search fee for most European regional phase applications, (b) expansion of the window in which the third year renewal fee can be paid, and (c) changes to fee structure, including an increased appeal fee for most corporate appellants. These changes are discussed in further detail below.
17 January 2018
2017 was a year of change for the Boards of Appeal of the EPO: a new President 1 and a move out of the EPO’s oldest building in the centre of Munich to a suburb, Haar. There has been some recruitment, but overall it appears there are still many vacancies on various Boards. Overall the relevant Boards issued 10% more decisions than in 2016 and Board 3.5.01 in particular has significantly increased its output in the latter part of the year as it now has a chairman.
10 January 2018
The European Patent Office (EPO) uses the term “ disclaimer ” to refer to a negative feature in a claim of a patent application. Negative features are those which exclude certain subject matter from the scope of protection. While a positive feature in a claim may for instance take the form “ wherein the composition comprises X ”, a disclaimer would take the form “ wherein the composition does not comprise X ”.
14 December 2017
Since the UK Court of Appeal judgment in Menashe v William Hill, it has not been safe to assume that infringement of a patent claim including a processor or a processing step can be avoided by performing the processing on a server outside the UK. A third judgement on this topic has recently been issued – making the score two for infringement and one for non-infringement – so it is instructive to consider what factors affect a finding of infringement. We review the relevant points of the three cases and draw some practical conclusions.
30 November 2017
The EPO has published its yearly update to the Guidelines for Examination, which came into force on 1 November 2017. The updated Guidelines for Examination can be found here , with a list of the amendments made compared to the current version available here .
16 November 2017
The EPO has published its yearly update to the Guidelines for Examination, which came into force on 1 November 2017. The updated Guidelines for Examination can be found here , with a list of the amendments made compared to the current version available here . An overview of the changes is provided in our news item here .
14 November 2017
In May 2017, we reported on two “CardinalCommerce” decisions1 by EPO Technical Board of Appeal 3.5.01 that introduced the concept of a “notional business person” into in the examination of mixed inventions (inventions including both technical and non-technical features). A new decision by the same Board ( T0630/11/Waterleaf ) provides some clarification of this approach, warning against over limiting what the notional business person can do and perhaps limiting the utility of the CardinalCommerce to applicants seeking to patent mixed inventions.
20 October 2017
The efficacy of PPH varies from territory to territory. In some patent offices there is a history of examination being influenced by the granting of a patent by particular patent offices; PPH may work well for such patent offices. In other patent offices, requesting PPH only results in acceleration and does not guarantee allowance.
20 October 2017
The aim of the Patent Prosecution Highway (PPH) is to provide a way for applicants to use positive examination results from one patent office to streamline prosecution in a second patent office. An evolving network of different PPH agreements exists between various patent offices, including most major patent offices. For both the European Patent Office (EPO) and the UK Intellectual Property Office (UKIPO) requesting PPH results in acceleration of examination and does not guarantee allowance.
26 July 2017
Experimental evidence can play a valuable role in patent litigation. It is not uncommon in patent validity proceedings for an expert will say to they would, when presented with a piece of prior art, have conducted a particular experiment in order to progress the research. Without then conducting the actual experiment that they said they would have done, it is impossible to know what the result of that experiment would have been. Knowing the result of that experiment is sometimes critical to a case, such as when the defendant argues the patent is invalid due to lack of novelty or...
01 July 2017
The planned European Union-wide patent court and related patent right will not launch in December as planned. The Unified Patent Court preparatory committee said June 7 that the delay was caused by several countries failing to agree to the protocol on UPC Provisional Application. The protocol allows parts of the UPC agreement, the controlling document for the court, to come into effect earlier.
20 June 2017
Amendments to the EU Trade Mark Regulation on 23 March 2016 brought about substantial changes to the EU trade mark system. However, not all of the changes were implemented with immediate effect.
09 June 2017
Parameters are generally used in patent claims to define subject matter which cannot be expressed in terms of structural features. They are often relied upon for inventions in the chemical field, but can in fact be used in any technical area. Parameters can relate to features that can be measured directly, such as the density or melting point of a substance; measured indirectly, such as the tacticity of a polymer; or that can be calculated, such as the superficial velocity of a flow in a reactor. They can also be expressed in terms of relationships between such features.
05 June 2017
Inventors are often unaware of the potential variety of IP rights they could obtain to protect their technology, particularly design rights and how they can complement patents. This paper aims to assist new and developing businesses, by exploring key points in connection with patent and design protection, and suggests strategies for developing and managing an IP portfolio that can be used to protect and grow a business.
31 May 2017
The software industry has been a major beneficiary of the R&D tax credit regime in the UK. Although more obviously suited to the manufacturing and pharmaceutical industries, the software industry can also benefit from UK Patent Box legislation. One aim of the Patent Box legislation is to provide an additional incentive to locate in the UK high-value jobs associated with the development and exploitation of patented technologies. To achieve this the Patent Box legislation allows companies to pay a lower rate of UK corporation tax for profit attributable to qualifying patented technology.
30 May 2017
Crowdfunding is a new and exciting way of raising funds. However, if you fund your business in this way you need to consider carefully how to protect your valuable intellectual property (IP). Crowdfunding involves wide and rapid disclosure of information. This can be beneficial to your business but may also pose some risks to your IP.
29 May 2017
Intellectual property (IP) rights are legal rights which provide protection for your innovative and creative endeavour. For example, IP could relate to something that you have created, such as a brand, an invention or a design, or could relate to information that you have developed or collated. When people talk about IP, they usually mean IP that can be registered: trade marks, patents and designs. However some IP rights arise automatically (so-called unregistered rights), such as copyright and unregistered designs. Each form of IP right has a different purpose in protecting a different aspect of your work and can be...
25 May 2017
The lengthy saga of Nestlé’s attempt to secure a three dimensional trade mark for its Kit Kat shape has taken a further (and perhaps final?) turn, with the decision of the Court of Appeal dated 17 May 2017.
12 May 2017
When seeking patent protection, most companies start with a single national patent application but may then wish to seek protection in other countries. This briefing outlines points to consider in selecting the countries to cover, the international schemes available and the timing of the decisions to be taken. There are several advantages to filing a UK application first, even if you are not UK based. The UK Intellectual Property Office carries out searches quickly and cheaply; this can give you an indication of the patentability of your invention before you incur the costs of filing in other countries. UK applications must...
12 May 2017
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...
03 May 2017
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".
01 May 2017
A common misconception is that ownership of IP rights associated with a product gives an automatic right to make and sell that product. However, IP rights such as patent and design rights are best viewed as ‘negative’ rights, which allow the owner to prevent other parties from using the invention, mark or design. They do not provide an automatic right to practice the invention or to use the design.
11 April 2017
China produces nearly a quarter of all global manufacturing output. It is therefore no surprise that a large proportion of Western companies are partially or wholly reliant on the Chinese manufacturing industry for the production of their products, and that many such companies are keen to go a step further and establish a presence in China.
04 April 2017
You have a new technical idea. When will you be ready to draft a patent specification? When will it be appropriate to file an initial application at the Patent Office? Are there any potential issues with filing an application early and making a follow-up application later? This Briefing sets out some of the factors to consider in addressing such questions.
04 April 2017
The Intellectual Property Enterprise Court (IPEC) is an alternative venue to the High Court of England and Wales for intellectual property litigation, patent, design, trade mark, copyright and trade secret cases. The IPEC typically hears less complex cases than the High Court (Patents Court), and provides monetary caps on claims. The IPEC (formerly known as the Patents County Court) has proved attractive, in particular for small and medium sized enterprises (SMEs), as a fast and cost effective IP litigation forum. There is a cap on the monetary value of claims before the IPEC of £500,000. J A Kemp’s Litigation and Dispute...
04 April 2017
Whether or not it is worth filing intellectual property rights IPRs in China is likely to be influenced by how you plan to develop your business. Are you planning to exit by selling your business, or assigning or licencing your product globally? Most investors and buyers will look for Chinese IPRs, and if you have none then this may affect the level of interest, or the price you can obtain. If on the other hand you are planning to grow your business yourself, then you should consider whether the cost of filing and maintaining an intellectual property right in China...
01 April 2017
The Supreme Court, the highest Court for England and Wales, has given guidance as to considerations to take into account when deciding whether an activity can be regarded as “making” a patented product and thus infringing a patent. This Decision has relevance for activities including reconditioning and repairing of patented articles and for sale of spare parts and even consumables of larger patented articles. The Decision makes it clear that the question of whether an activity is “making” is “one of fact and degree”. The Decision concludes that there are no fixed principles nor any single simple test to assess what constitutes...
29 March 2017
The 9 March 2016 judgment of the Supreme Court concludes the saga between PMS International Group Plc and Magmatic Limited. Magmatic, who make the “Trunki” suitcase, have exhausted all avenues available for obtaining a decision that the PMS “Kiddee Case” infringes their design rights.
27 March 2017
The EPO introduced a revised accelerated prosecution procedure (PACE) on 1 January 2016. One key difference from the previous procedure is that it will now be possible to request PACE only once during the search procedure and only once during the examination procedure.
01 February 2017
In decision G 1/15, the EPO’s Enlarged Board of Appeal ruled that an entitlement to partial priority arises for a generic claim in a European patent application in respect of subject-matter, disclosed in the priority filing, that is encompassed by the generic claim. The Enlarged Board's conclusions prevent so-called "poisonous divisional" attacks, as well as the possibility of "self-collision" with the priority application, provided that the claims of the priority-claiming European application contain exclusively broadening amendments compared with the disclosure in the priority filing. However, the wider reasoning in the decision emphasises the continuing importance of carefully drafting both priority applications...
01 February 2017
To what extent will a Supplementary Protection Certificate (SPC) for a biological product be considered to encompass closely-related alternatives such as biosimilars? This question has been addressed by the EFTA court in Pharmaq v Intervet, and subsequently applied by the Norwegian Court of Appeal. This briefing provides an analysis of the case as well as our conclusions and recommendations for those seeking SPCs for biological products.
12 January 2017
In two judgments handed down on 13 January 2017 Mr Justice Arnold decided to send questions on the SPC Regulation to the CJEU for a preliminary ruling. In each case the question reflects the lack of clarity provided by earlier key CJEU decisions, Medeva 1 and Neurim 2 . Article 3(a) is the product “protected by a basic patent in force”.
02 January 2017
Notwithstanding surprising electoral developments in the UK and the US, 2016 was a continuation of business as usual for the Boards of Appeal of the EPO at least in relation to computer-implemented inventions. The Boards continued to apply the “Comvik” approach to examining mixed inventions, that is inventions involving both technical and non-technical features, but still did not offer any definition of what is and is not technical. Backlogs appear to have risen, due no doubt to the freeze on recruitment of Board members and consequent vacancies. This article discusses some statistics from 2016 of the various Boards of Appeal...
08 December 2016
We are pleased to report the successful enforcement of our client Action Storage Systems Limited’s UK unregistered Design Rights in their highly successful eXtreme plastic locker. The IPEC judgement, handed down by Judge Hacon on 7 December, demonstrates the power of the unregistered Design Right in restraining copying and the power of disclosure in revealing evidence of copying. Various defences were raised and although none displaced the fact of infringement of the overall design, they did give rise to some interesting points of law.
01 November 2016
In July, the U.K. repealed a provision that provided a shortened term of copyright protection for ‘‘artistic works.’’ Because this change also revives protection that had expired under the old law but would be revived under the new, rights holders in certain industries such as furniture makers may now have resurrected rights that can be asserted against those copying their works.
12 September 2016
The UK population voted in the referendum on 23 June 2016 to leave the European Union (EU). This does not bring about any immediate changes to IP law. EU trade mark (TM) registrations and EU registered designs remain in force in the UK. This will continue at least until the moment that the UK leaves the EU. At that point, new laws that have not yet been devised are expected to take effect.
31 August 2016
The protection of software inventions in Europe and the United States has often been described in terms of a pendulum swinging between a liberal position, in which almost anything can be protected, and a restrictive position, in which it is much harder to obtain patents for inventions relating to or using software. While the United States has recently taken a decisive swing to the restrictive side, the position in Europe has been relatively stable for the best part of a decade.
13 July 2016
European Patent Office (EPO) opposition procedure comprises two parts: opposition division (first instance), and, if relevant, appeal. A typical procedure is set out on the attached flow chart. It is also possible to petition the Enlarged Board of Appeal for review of the appeal decision under certain very limited circumstances. There are some fixed time limits in the overall procedure, such as the deadline for filing an opposition and an appeal. However, there is also some flexibility in the procedure. The EPO announced in June 2016 that it aims to issue first instance decisions on “straightforward” oppositions within 15 months. ...
29 June 2016
Since April 2014, it has been possible to file multiple divisional applications from any European patent application pending at the European Patent Office (EPO). Divisional applications can be filed from a European application which is itself a divisional application. Further, the EPO’s rules on double patenting are relatively liberal. In some cases, Applicants have used these rules to file multiple divisional applications with similar claims. These divisional applications can then be kept pending at the EPO while challenges to the parent patent are determined in EPO opposition proceedings and/or in national litigation. If the parent patent is revoked, or is found...
19 May 2016
In the 2016 decision T 2440/12-Fluid flow simulation/SIMCON, Technical Board of Appeal 3.5.07 has found that a commercially available software package makes the methods it embodies available to the public because it could be run line-byline in a virtual machine (VM).
12 May 2016
The Patent Box makes the existence of a patent more attractive, whatever the breadth of the patent’s claim, so long as it covers the product (or process or service). A company may wish to adapt its strategies both for filing and prosecuting patent applications and for patent and patent application abandonments.
12 May 2016
In order to benefit from the Patent Box, the beneficiary must be a qualifying company as defined in the legislation. We discuss here the requirements of a qualifying company.
12 May 2016
In order to benefit from the Patent Box, a company must hold or have an exclusive license to a qualifying IP right. Here we discuss the definition of a qualifying IP right.
12 May 2016
We discuss here issues relating to which income streams can qualify for the Patent Box. The Patent Box legislation defines what income streams count as relevant IP income. The calculation of relevant IP income is used in determining an amount deductable from the profits of the trade for the calculation of UK Corporation Tax liability. Determining the amount deductable from the profits of the trade will ultimately lead to the amount of UK Corporation Tax due being equivalent to paying a rate of 10% on the relevant IP income (following certain deductions as explained in our separate Briefing “Patent Box...
12 May 2016
A company must elect in to the Patent Box regime in order to take advantage of the reduction in payable UK Corporation Tax. For some companies there may be advantages in delaying entry into the Patent Box. This Briefing looks at this issue.
12 May 2016
We outline here the accounting steps which are necessary to calculate the Patent Box benefit. We also present a simplified example calculation which may help you to estimate the amount of saving in UK Corporation Tax you might expect to make if you were to elect in to the Patent Box regime under either the pre- or post- 1 July 2016 Patent Box rules.
21 March 2016
Following several years of discussion on proposed reforms to trade mark law in the EU, a new Trade Mark Regulation comes into force in the EU today, 23 March 2016. The reforms also impact on the laws of EU Member States, who have three years to implement a new Trade Mark Directive into their national laws. From today, the Office for Harmonisation in the Internal Market (OHIM) will be known as the European Union Intellectual Property Office (EUIPO), Community Trade Marks (CTMs) will be known as European Union Trade Marks (EUTMs), and various other changes come into effect.
15 March 2016
In the UK, a successful claimant in a patent infringement action is entitled to claim ‘damages’, that is monetary compensation for damage actually caused by the infringement (but not punitive damages), or an account of the infringer’s profits derived from the infringement. Damages are more commonly claimed than an account of profits so Design and Display v OOO Abbott provides useful, and rare, guidance from the Court of Appeal on how an account of profits should be assessed.
11 March 2016
Since Apple asserted a Community Registered Design against Samsung in 2012 in connection with their tablets' design rights, design rights have risen in profile. Although Apple were ultimately unsuccessful at proving infringement in some countries, the case illustrates that even a simple registered design can be a useful tool that cannot be ignored by competitors. For example, in the UK, the Intellectual Property Enterprise Court means that there is now an effective mechanism for enforcing registered designs that is relatively cheap, quick and efficient.
10 February 2016
The High Court of England and Wales was asked for permission to serve proceedings for UK patent infringement on a Chinese manufacturing company. In considering whether or not to grant permission, the court had to consider the burden of proof when establishing infringement of a process claim. It also considered whether or not the Chinese company could properly be said to be a joint tortfeasor.
03 February 2016
On 15 December, the European Parliament approved a new package of proposed reforms to trade mark law in the EU, marking an important step towards entry into force of a new Trade Mark Regulation, and the implementation of a new Trade Mark Directive. The reforms, which were discussed in detail in our briefing of 29 October, constitute some of the most important changes to EU trade mark law since the introduction of the Community Trade Mark system in 1996.
28 January 2016
In 2015 the Boards of Appeal of the EPO continued to develop the “Comvik” approach to examining mixed inventions, that is inventions involving both technical and non-technical features, but again declined to define what is and is not technical. This article discusses some statistics from 2015 of the various Boards of Appeal that consider software inventions and some interesting or notable decisions.
26 November 2015
A patent is a legal monopoly granted by a government in return for public disclosure of an invention. A granted patent gives the proprietor the right to prevent others using the invention in the territory to which the patent applies.
13 November 2015
The UK Intellectual Property Office (UK IPO) and the European Patent Office (EPO) continue to receive reports of applicants and proprietors being approached for payment by firms offering to perform official processing such as registering patents and publishing patent applications. These firms often use names, abbreviations and/or logos which are confusingly similar to those used by official offices such as the UK IPO, the EPO, and the World Intellectual Property Organization (WIPO).
09 November 2015
Article 4(3) of Directive 2008/95/EC [and corresponding Article 9(1)(c) of Council Regulation (EC) No 207/2009] deal with rights based on CTMs that have a reputation in the EU. The wording of Article 9(1)(c) reads:
29 October 2015
Earlier this year, and following several years of discussion and consultation, the EU Council published the latest versions of a new package of proposed reforms to trade mark law in the EU. The reforms encompass a new Trade Mark Directive and Regulation, intended to foster innovation and economic growth in the EU by providing accessible and efficient trade mark registration systems in terms of costs, complexity, speed, predictability and security. The reforms aim to ensure coexistence and complementarity between the trade mark systems of the EU, to modernise the existing provisions and streamline procedures. Whilst the wording of the latest...
05 October 2015
The Hague system is the international application and registration procedure for designs and offers a very attractive and efficient way of obtaining design protection in multiple states with the filing of just a single application. Widespread use of the Hague system was previously limited due to the absence of some major states from the system. However, recent expansion of the Hague system to include the United States of America and Japan means that a single application can now lead to design protection in the US, Japan, Republic of Korea and the European Union, as well as over 50 other states around...
24 September 2015
Third party patents can represent significant obstacles to achieving a commercial goal. The opposition procedure at the European Patent Office (EPO), if used successfully, can provide a cost-efficient mechanism for removing or limiting a troublesome patent. As a general rule, it is relatively cheap compared to national litigation and the centralised procedure means that revocation or limitation of a European patent in the opposition procedure applies in all of the validation states. However, EPO oppositions are often slow, in particular when the appeal stage is taken into account.
03 September 2015
The UK Patents Act was amended on 1 October 2014 to clarify the extent to which conducting clinical trials to assess the safety and efficacy of a patented drug can constitute patent infringement. This briefing contains a discussion of the amendments and of the situation before the future European Unitary Patent Court (UPC).
01 July 2015
A Community trade mark is liable to be revoked “if, within a continuous period of five years, the trade mark has not been put to genuine use in the Community in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; …" (CTMR Article 51(1)(a)). In The Sofa Workshop Ltd v Sofaworks Ltd  EWHC 1773 (IPEC), His Honour Judge Hacon held that “genuine use in the Community” will in general require use in more than one Member State and that two CTMs which had been used in the...
23 June 2015
The Court of Appeal has delivered its decision on Roger Maier and Assos of Switzerland SA v. ASOS plc and ASOS.com Limited, the latest in a long-running series of trade mark disputes between Assos, the manufacturer of high-quality cycling clothing and sportswear, and Asos, the online fashion retailer. The case considers the extent to which an infringer is able to rely on the “own name” defence to trade mark infringement under Article 12 of the Community Trade Mark Regulation (CTMR).
16 June 2015
On 11 June 2015, the Opinion of Advocate General Wathelet was delivered in Case C-215/14, Nestle v Cadbury, a case concerning the registrability of the shape of the well-known Kit-Kat chocolate bar.
02 April 2015
In G 3/14 the EPO Enlarged Board of Appeal has ruled on the extent to which amendments made in EPO Opposition (and Opposition Appeal) proceedings may be examined for clarity, conciseness and support (Article 84 EPC). They confirmed that compliance with Article 84 EPC may be examined only when, and to the extent that, the amendment introduces non-compliance with Article 84 EPC. In particular an amendment which introduces the feature of a dependent claim may not be examined for Article 84 where the feature introduced corresponds to the complete dependent claim or is a simple alternative in such a claim.
04 March 2015
In the first High Court trade mark judgement of 2015, Mr Justice Arnold recently delivered his decision in Enterprise Holdings, Inc v Europcar Group UK and Another  EWHC 17 (Ch). The well-known car rental companies were in dispute over the fact that both use an ‘e’ logo on a green background, with Enterprise claiming that Europcar’s use of its ‘e’ logo infringed Enterprise’s earlier rights in its own ‘e’ logo. Arnold J held that, although the marks were only similar to a low degree, there was a likelihood of confusion, and found in Enterprise’s favour on the grounds of trade...
19 December 2014
The CJEU has delivered its decision on Case C-205/13 Hauck GmbH v Stokke A/S & others regarding the registrability of shapes as trade marks. The case concerns the grounds for refusal or invalidity of a shape trade mark under Article 3(1)(e) of the Trade Marks Directive (2008/95/EC), which provides that a sign shall not be registered as a trade mark or, if registered, shall be liable to be declared invalid, if it consists exclusively of:
21 November 2014
Earlier this month a Judgment was issued by the Court of Appeal which reiterated the UK Courts’ approach to the exclusion of an invention relating to computer programs (as such). The Court of Appeal rejected the Lantana application, upholding the Judgment issued by the Patents Court last year. The Lantana claim includes two computers and a data retrieval system which allows a user at a first, local computer to obtain a file from a second, remote computer. On request of the file, the local computer sends an email via the Internet to the remote computer, the email containing machine-readable instructions and...
18 September 2014
On 15 April 2014 the European Trade Mark and Design Network (Europeantmdn) published The Common Communication on the Common Practice of the Scope of Protection of Black and White Marks. This publication stems from the Convergence Programme, a joint project between the European Community Trade Marks Office (OHIM) and the National Trade Mark Offices (TMO) of the EU, whose goal is to achieve practice convergence in several areas where different practices exist across the EU. OHIM updated its Guidelines to reflect the new practice on 2 June 2014 but other participating Offices, including the UKIPO, have yet to do so.
25 July 2014
The decision of the CJEU as to whether a representation of the layout of a retail store, in this instance a flag-ship Apple ® store, was capable of registration as a trade mark was delivered in July (Case -421/13 Apple Inc. vs. Deutches Patent and Markenmat (DPMA)). The mark applied for is below:
15 June 2014
Do Not Immediately Contact the Infringer! You may discover or suspect that someone is infringing one or more of your IP (intellectual property) rights. It could be a patent at the core of your business, a trade mark protecting your main brand or an important product design. When you become aware of the situation, you may be tempted to go straight into battle and take immediate action. Your first instinct may be to contact the infringer straight away and tell them to stop infringing.
05 March 2014
In a previous briefing (Design For “Trunki” Child’s Wheeled Suitcase Successfully Enforced), we reported the successful enforcement of Magmatic’s Community design for the “Trunki” against PMS International’s “Kidee Case”. PMS were, however, successful in their appeal, leading to the decision at first instance being overturned in the Court of Appeal. The appeal addresses some important questions regarding the interpretation of the registered design and on what level a comparison should be made with an alleged infringement.
05 March 2014
Section 7(2) of the Indian Patents Act requires that when an application is made “by virtue of an assignment of the right to apply for a patent for the invention” , then it is necessary to file “proof of the right to make the application” . The so-called “proof of right” is normally a “Form 1” signed by the applicant and the inventors. Alternatively, a certified/notarised copy of an assignment of rights in the invention in India from the inventors to the applicant can be filed in place of a “Form 1”.
11 February 2014
The General Court (GC) has handed down a judgment in Case T-285/12 The Cartoon Network, Inc. v OHIM and Boomerang TV, SA. On 2 October 2013, the GC upheld the Decision of OHIM’s Board of Appeal and allowed an opposition to a CTM application for the plain word mark BOOMERANG on the basis of an earlier figurative registration for BOOMERANG.
13 January 2014
The term “parallel imports” describes the purchase of trade marked or patented goods in one member state of the European Union (EU) and the subsequent export of those goods to another member state for resale. Where EU law provides that a trade mark owner’s rights are exhausted after goods bearing the mark are first put on sale with his consent anywhere within the European Economic Area (EEA), the practice of parallel importation is permissible, subject to compliance with certain principles and procedures.
18 November 2013
Many countries have provisions which allow for compulsory licences to be granted under exceptional circumstances. However, in recent years, these provisions have only rarely, if ever, been used.
18 October 2013
The Court of Justice of the European Union (CJEU) has recently handed down a decision on a reference from the Finnish Courts in Case C-109/12 Laboratoires Lyocentre v Lääkealan turvallisuus– ja kehittämiskeskus (the Centre for Safety and Development in the pharmaceutical sectors), Sosiaali– ja terveysalan lupa– ja valvontavirasto (Social and Health Authorisation and Supervision Authority).
01 October 2013
Two recent decisions of an EPO Technical Board of Appeal recognise that recognition of human gestures, e.g. as a method of computer input, is technical. The Board overturned refusal of two European patent applications relating to the recognition of specific sequences of human gestures using a computer touch pad. In these refusals, the Examining Division had asserted that human gestures are inherently non-technical as a matter of policy and cannot therefore contribute to inventive step.
19 September 2013
In its decision in Generics (Mylan) V Yeda & Teva, the UK Court of Appeal considered the extent to which subsequent evidence can be relied upon for the determination of inventive step. The Court closely followed the approach adopted by the EPO to the consideration of such evidence. The decision provides a useful summary of the manner in which the technical contribution provided by a patent is assessed.
18 September 2013
Transforming research carried out in institutions such as universities and hospitals into commercial products and services can be a long and complex journey, but the results can provide significant income for the institutions involved, as well as improving the lives and prosperity of the public. IP often plays a central role in the success or failure of a project. It is crucially important to adopt the right strategies, both in terms of how an IP portfolio is grown and how it is used.
28 August 2013
Article 53(c) EPC specifies various patentability exclusions, including “diagnostic methods practised on the human or animal body”. This exclusion was considered in opinion G1/04 of the Enlarged Board of Appeal. The Enlarged Board identified two requirements that must both be met for a claim to be excluded from patentability. Firstly, the claimed method must include all the steps necessary to reach a medical decision on diagnosis. Secondly, all the technical steps of the method must require the presence of the human or animal body. This two-part test has subsequently been developed in several Technical Boards of Appeal decisions.
16 August 2013
Article 53(c) EPC specifies a number of exceptions to patentability in the field of medicine, including “ methods for the treatment of the human or animal body by surgery ”. These exceptions to patentability were included in the EPC on socio-ethical and public health grounds to ensure that medical and veterinary practitioners remain free to take any action necessary to treat or diagnose illnesses.
29 July 2013
The Court of Justice of the European Union (CJEU) has recently issued its decision in response to a reference from the English Court of Appeal. In Case C-252/12, 18 July 2013, Specsavers International Healthcare Ltd, Specsavers BV, Specsavers Optical Group Ltd, Specsavers Optical Superstores Ltd v Asda Stores Ltd, the CJEU held that a figurative mark is put to genuine use where a word mark is superimposed over it, provided that the distinctive character of the figurative mark remains intact. The CJEU has also held that where a figurative mark is registered in black and white, but has been used...
20 March 2013
The Court of Justice of the European Union (CJEU) has recently handed down a rare judgment concerning the circumstances in which a trade mark can be found to have become the generic name of a product. In Case C-409/12 Backaldrin Osterreich The Kornspitz Company GmbH v Pfahnl Backmittel GmbH, 6 March 2014, the CJEU found that it is the perception of the end consumer, rather than intermediaries within the supply chain, which is determinative. If these consumers recognise a sign as the name of the product, rather than an indication of its trade origin, then the mark has become generic,...
01 March 2013
This recent Patents County Court Judgment illustrates two points very well: how the UK unregistered Design Right allows a rightsholder to decide the extent of their rights after the event and the difficulty of proving a clean, independent design process.
12 March 2012
What is a patent? A patent is a legal monopoly granted by a government in return for public disclosure of an invention. A granted patent gives the proprietor the right to prevent others using the invention in the territory to which the patent applies. A patent does not, however, give a positive right to use an invention. There may be earlier patents for other inventions that an inventor may need to license to exploit his own invention.
12 March 2012
What is a trade mark? A trade mark, often known as a brand, is a sign (whether it is a word, logo or something else capable of graphic representation) which identifies your goods or services from those of another. It is the badge by which customers find your product or services in the marketplace, and know how to find it again. Following use, a trade mark becomes a symbol with which your reputation and goodwill are associated. It is therefore likely to be one of your most important assets, deserving the best possible protection.
12 March 2012
After your patent application has been filed at one (or more) of the many Patent Offices around the world, it will be processed by that Patent Office. This is known as the patent “prosecution” process. This Briefing provides an overview of what to expect. However there are many local differences to take into account. The law and practice that govern the details of the procedures followed by the Patent Office vary widely from country to country. The cost involved and the time taken to process applications also vary from country to country, and indeed from case to case.
12 March 2012
Which new ideas are worthy of a patent application? How should the applications be drafted and prosecuted? When should they be filed? Where in the world should they be filed? How long should applications and granted patents be maintained? A systematic answer to these questions is provided by a patent strategy. A patent strategy is part of an overall intellectual property (IP) strategy. It is usually the most important part of such a strategy for technology-based companies. The IP strategy should follow the company’s R&D strategy which in turn should follow its overall business strategy.