Briefing Notes, News & Events - Carpmaels & Ransford

The very latest briefing notes, news & events from Carpmaels & Ransford

Latest briefing notes, news & events

AG opinion – Abraxis Bioscience C-443/17

The Advocate General’s opinion in case Abraxis Bioscience C-443/17 is published

13
Dec
2018

Who cares, wins…

Restoring lost IP rights

13
Dec
2018

SPCs for medical devices?

CJEU rules against an SPC for a medical device authorised under the Medical Devices Directive

15
Nov
2018

The European Commission’s “Export Manufacturing Waiver”

What can innovators do to prepare themselves?

08
Nov
2018

Chambers & Partners rankings 2019

Carpmaels & Ransford recognised as a leading firm for the 12th consecutive year

06
Nov
2018

Munich office move

The firm is delighted to announce its new office location in the heart of Munich

06
Nov
2018

Forthcoming changes to UK trade mark law

Implementing the EU Trade Mark Directive 2015

05
Nov
2018

Court of Appeal guidance and the Doctrine of Equivalents

Icescape Ltd v Ice-World International BV applies Actavis v Lilly

05
Nov
2018

New SPC reference to the CJEU

The CJEU is asked to consider specific aspects of the Neurim test

02
Nov
2018

Legal 500 rankings 2018

Carpmaels & Ransford recognised for excellence in the Legal 500 2018 directory

31
Oct
2018

Unwired Planet: Many FRANDs make light work for SEP owners

The UK courts are open for business to grant global FRAND licences and recognise that more than one set of licence terms can be FRAND

24
Oct
2018

The EPO updates its guidelines with a section dedicated to AI

The update to the guidelines provides clarity on how the EPO’s existing legal framework will be applied to AI inventions

04
Oct
2018

Can AI inventions be patented in Europe?

A brief review of the EPO’s approach to assessing AI-based inventions

25
Sep
2018

News on the UK’s involvement in the UPC after Brexit

The UK government has published additional information about how the UK might participate in the Unified Patent Court after Brexit

24
Aug
2018

IP Stars Handbook 2018

Eight of our partners recognised as IP Stars by Managing IP

16
Aug
2018

An update on IP and Brexit

UKIPO helps to clarify the future relationship between the UK and EU on intellectual property

31
Jul
2018

“No Break” for Nestlé in CJEU ruling

The CJEU recently gave the latest ruling in the chocolate trade mark wars between Nestlé and Mondelez

31
Jul
2018

Teva v Gilead C-121/17

The CJEU further describes the criteria for obtaining an SPC for a combination of active ingredients

25
Jul
2018

UK Government publishes Brexit White Paper

An update on the United Kingdom’s plans for withdrawal from the European Union, including in relation to intellectual property rights

18
Jul
2018

UK Supreme Court rules on who should pay for website blocking orders

Brand owners not ISPs to foot the bill for implementing blocking orders against websites offering infringing goods

11
Jul
2018

Carpmaels & Ransford announces new additions to the partnership

The firm is delighted to announce that it will welcome two new partners on the 1st July

25
Jun
2018

Crikey! The PCT filing deadline has passed inadvertently

How to still save your priority date

25
Jun
2018

Who’s Who Legal

Eight Partners from Carpmaels & Ransford have been recognised in the most recent publication: Who's Who Legal, Patents 2018

18
Jun
2018

Christian Louboutin, Christian Louboutin SAS v Van Haren Schoenen BV, Case C‑163/16

18
Jun
2018

IAM Patent 1000 rankings 2018

The firm and its partners are highly recommended in the IAM Patent 1000 directory

15
Jun
2018

Second medical use claims to medical devices

A decision (T1758/15) from the EPO Boards of Appeal helps to clarify the requirements for second medical use claims to medical devices under Article 54(5) EPC

21
May
2018

Top 250 Women in IP

Carpmaels & Ransford Partner recognised for excellence

03
May
2018

UK ratifies the UPC Agreement

The UK moves forwards with the biggest update to European patent law in 40 years

27
Apr
2018

Teva v Gilead C-121/17

A legal opinion prepared for Europe’s highest court recommends an approach to Article 3(a) of the SPC Regulation

25
Apr
2018

Brexit and the impact on .eu domain names

Practical steps for UK owners of .eu domain names to consider in light of Brexit

20
Apr
2018

Because the licensee is worth it, L’Oréal v RN Ventures Limited

Claiming costs and expenses in UK High Court litigation as a licensee

12
Apr
2018

The same, but better – Shire v European Medicines Agency (T 80/16)

The General Court approves of innovator’s improved follow-on orphan drug with same active as its earlier product

29
Mar
2018

Brexit: business as usual until 2020 and beyond

The UK’s recent agreement with the EU confirms that EU IP rights will continue to be effective in the UK after Brexit

21
Mar
2018

Intellectual property rights – what does the future hold after Brexit?

Recent publications from the European Commission and the UK Government shine some light on the future of IP rights after the UK’s departure from the EU

16
Mar
2018

EUIPO publishes Q&A on the impact of a “no-deal” Brexit

The Q&A guide is the EUIPO’s interpretation of what will happen under existing laws in the event that no agreement is reached between the UK and EU

15
Mar
2018

United Kingdom joins the international design system

Increased flexibility when seeking protection in the UK via the international route

14
Mar
2018

G 1/16 (Disclaimer III)

Clarification of disclaimer practice at the EPO

12
Mar
2018

UK Patent Prosecution Firm of the Year 2018

Carpmaels & Ransford again recognised for excellence by MIP

09
Mar
2018

World Trademark Review 2018 – The World’s Leading Trademark Professionals

Trade Marks and Dispute Resolution teams receive recognition in the latest edition of WTR 1000

01
Mar
2018

Cantel Medical (UK) Ltd v Arc Medical Design

Valid and infringed: Carpmaels & Ransford successfully defends Arc Medical’s IP rights in the High Court

23
Feb
2018

Are UK companies making best use of the patent system?

Rachel Taylor reports on recent research published by the UK Intellectual Property Office

13
Feb
2018

Restorations – the UK landscape

IP rights are essential to many businesses but in some circumstances they may be lost

08
Feb
2018

Restoring lost IP rights: Prevention is better than cure

Unintentional loss of valuable registered IP rights, whether patents, trade marks or other rights can be extremely distressing

31
Jan
2018

Sandoz v Searle

CJEU referral on Article 3(a) of the SPC Regulation

30
Jan
2018

Best IP Advisor: UK & Ireland

Carpmaels & Ransford is recognised for excellence by Leaders League

26
Jan
2018

UKIPO announces fees for excess claims and excess pages

John Snape and Philip Naylor report on the upcoming introduction of new fees at the UK Intellectual Property Office

24
Jan
2018

Pharmaceutical branding: trade mark and regulatory considerations

There are many considerations when adopting a new pharmaceutical brand. These cover a range of creative and legal issues

17
Jan
2018

Hot Off the Press: Clarity on disclaimers in Enlarged Board decision G1/16

The Enlarged Board of Appeal of the EPO has just handed down its decision G1/16, clarifying the different standards for allowability of “disclosed” and “undisclosed” disclaimers.

19
Dec
2017

Some effort required

Lara Elder explains why a Primark slogan prevailed

14
Dec
2017

Progress for the UPC Agreement

The UK moves forwards with the biggest update to European patent law in 40 years

13
Dec
2017

Carpmaels in the Community 2017

Carpmaels & Ransford staff have supported the local community through a variety of activities this year

13
Dec
2017

SPCs: clarity on claims with functional features?

A new referral asks for more clarity regarding the type of patent claim required for an SPC

07
Dec
2017

Will dosage regime patents stand up in the UK courts?

24
Nov
2017

Reasons for recordal 1, 2, 3…

Failure to register intellectual property rights (IPRs) can lead to significant consequences for the interested parties

16
Nov
2017

Method of treatment inventions in Europe: new patentability hurdles and moving goalposts

Practical Insights webinar

13
Nov
2017

IP Litigation and Advocacy Prize

Carpmaels & Ransford senior associate recognised for examination achievement

10
Nov
2017

Chambers & Partners rankings 2018

Carpmaels & Ransford recognised as a leading firm for the 11th consecutive year

08
Nov
2017

SPCs for medical devices?

A new reference to the CJEU may make it easier to get SPCs for certain medical devices

03
Nov
2017

BrewDog in the doghouse over an Elvis mark

O/291/17ELVIS JUICE (Opposition), UK IPO, 23rd June 2017

17
Oct
2017

Legal 500 rankings 2017

Carpmaels & Ransford recognised for excellence in the Legal 500 2017 directory

17
Oct
2017

Carpmaels & Ransford technical assistants come top in examinations

06
Oct
2017

The status of European States

By extending protection by up to five and a half years, SPCs are one of the most valuable forms of intellectual property. The following document demonstrates availability in most European countries.

01
Oct
2017

SPC Summer Review 2017

Recent developments in Supplementary Protection Certificate law and practice

21
Sep
2017

FRAND – using the UK for settling disputes

Practical Insights webinar

15
Sep
2017

Row, row, row your boat

Carpmaels & Ransford row London’s Great River Race for charity

14
Sep
2017

Post-Brexit protection of IP rights

A recent paper from the European Commission sets out principles for the continued protection of intellectual property rights following Brexit.

08
Sep
2017

Changes to the EU Trade Mark Regulation applying from 1st October 2017

The amended EU Trade Mark Regulation came into force on 23rd March 2016. A number of provisions, which had to be developed by secondary legislation, will apply from 1st October 2017

17
Aug
2017

IP Stars Handbook 2017

Seven of our Partners have been recognised by Managing IP

03
Aug
2017

UK Supreme Court decision alters UK approach to infringement by equivalents

This decision on Eli Lilly’s Alimta patent reverses lower Courts’ rulings and finds claims limited to “disodium” to be directly infringed by other salts and free acid

25
Jul
2017

Home-grown talent

Carpmaels & Ransford promotes two new partners

03
Jul
2017

The potential effect of Brexit on your trade mark portfolio

What should you consider?

28
Jun
2017

Unwired Planet v Huawei – one FRAND to rule them all

The High Court’s finding that there is a single, potentially worldwide FRAND royalty rate applicable to any given set of SEPs and circumstances will have significant implications for UK SEP litigation

21
Jun
2017

Germany’s ratification of the UPC Agreement put on hold

The Unitary Patent and the Unified Patent Court could be delayed following a request from the German Federal Constitutional Court

16
Jun
2017

Highly Recommended

The firm and its partners are recognised in the IAM Patent 1000

14
Jun
2017

Who’s Who Legal

Four partners from Carpmaels & Ransford have been featured in the most recent publication

15
May
2017

Keeping up in the patent race for connected cars

The interplay across technology sectors and competition between car manufacturers in the development of connected cars means that the established car manufacturers should ensure that they are not left behind in building and exploiting their patent portfolios

26
Apr
2017

The UK will still apply EU law post-Brexit

The UK Government plans to provide continuity after Brexit by incorporating all EU law into UK law, thus minimising any changes when Brexit is complete.

12
Apr
2017

Unwired Planet v Huawei – essentially fair?

In his judgment, Mr Justice Birss has demonstrated that the UK court is willing to lay down some ground rules which can be used by parties involved in licensing SEPs

05
Apr
2017

The UK moves forward with Brexit

The UK has now formally notified the European Council that it plans to leave the European Union, in accordance with Article 50 of the Lisbon Treaty

29
Mar
2017

Carpmaels in the Community

Giving our local environment a helping hand

21
Mar
2017

The day formed part of a legal study into the workings of the SPC system and included a wide-ranging discussion of possible changes to the SPC system

20
Mar
2017

Tea rooms & passing off

The Willow Tea Rooms - a very British trade mark case

20
Mar
2017

UK patent prosecution firm of the year

Carpmaels & Ransford is again recognised for excellence by MIP

10
Mar
2017

Italy ratifies the UPC agreement

Italy has become the 12th member state to ratify the UPC agreement

14
Feb
2017

Partial priority – G 1/15

A new decision from the EPO’s Enlarged Board of Appeal marks a radical change in the EPO’s approach to assessing priority entitlement.

03
Feb
2017

Employee inventor compensation – guidance from the UK Court of Appeal

The UK Court of Appeal has upheld the decision of the High Court and the UK Intellectual Property Office that an employee of Unilever, Professor Shanks, was not entitled to inventor’s compensation

01
Feb
2017

Carpmaels & Ransford ranked by World Trademark Review

Trade Marks and Dispute Resolution teams awarded a Silver ranking in WTR 2017

19
Jan
2017

UPC expected to open in 2017

The UPC Preparatory Committee has announced today that the UPC is expected to open its doors in December 2017

16
Jan
2017

Two new SPC references to the CJEU

Two new references to Europe's highest court consider what constitutes the 'first' marketing authorisation for a supplementary protection certificate and what it means for a product to be 'protected by a basic patent in force'

13
Jan
2017

It is not what you say – it is what you do that counts

Maintaining confidentiality of information under the EU Trade Secrets Directive

22
Dec
2016

Community Spirit

We are passionate about supporting and developing our local community

12
Dec
2016

UK participation in UPC confirmed

The UK intends to participate in the Unitary Patent (UP) and Unified Patent Court (UPC)

28
Nov
2016

IP Inclusive reception

A successful first year for the IP Inclusive Charter

22
Nov
2016

New guidelines for assignment recordal at the EPO

Welcome clarification or just more red tape?

17
Nov
2016

IP awareness workshops at LSBU

Providing students with a better understanding of IP

04
Nov
2016

Carpmaels ranked by Chambers as a leading firm for the 10th consecutive year

Intellectual Property: Patent & Trade Mark Attorneys - UK wide

03
Nov
2016

Intellectual property for start-ups

What are the key considerations for getting IP right from the outset?

25
Oct
2016

Post-Brexit options for the UP and UPC

Legal opinion shows UK could remain in the Unitary Patent and Unified Patent Court post-Brexit

03
Oct
2016

Carpmaels & Ransford has been recognised for excellence by the latest Legal 500 directory.

22
Sep
2016

IPO Annual Meeting

Corporate patent portfolio strategies in Europe in light of Brexit

19
Sep
2016

Accelerating patent prosecution in the UK via the Green Channel

Early grant of a patent can be desirable not only for enforcement purposes but also for businesses for whom it is crucial to attract investors and secure funding.

22
Aug
2016

Update: Brexit and intellectual property rights in Europe

Following the UK's vote to leave the EU a few months ago, the UK is slowly beginning the long process of a negotiated exit.

19
Aug
2016

IP Stars Handbook 2016

We are delighted that five Carpmaels partners have been recognised by Managing IP.

19
Aug
2016

Forthcoming Changes to the UK Patents Rules

Following consultation earlier this year, the UK Intellectual Property Office (UKIPO) has accepted eleven proposed amendments to the Patents Rules 2007.

15
Aug
2016

De minimis – how low do you need to go?

Napp Pharmaceuticals Holdings Limited vs Dr Reddy’s Laboratories and Sandoz Limited

11
Aug
2016

The Unitary Patent & Unified Patent Court

Guide to Key Features & Perspectives

11
Aug
2016

English courts will not exercise jurisdiction over foreign designations of European patents where validity is also challenged

The High Court has recently dismissed a request to hear an infringement action in respect of the German designation of a European patent.

22
Jul
2016

“A bee is an exquisite chemist”

A bee hive has been installed on the roof of Carpmaels & Ransford’s central London office.

16
Jul
2016

The Patent Prosecution Highway: FAQs

The Patent Prosecution Highway (PPH) programme has now been running for over 10 years. Although most patent applicants have, in that time, become familiar with the concept of the PPH, many potential users have unanswered questions about its mechanics and are yet to route any of their patent applications along it.

15
Jul
2016

Brexit and intellectual property rights in Europe

In a referendum held on 23rd June 2016, the UK voted to leave the European Union

04
Jul
2016

EPO streamlines opposition process

From 1st July 2016, the EPO will initiate a new streamlined opposition process. The intention is to bring opposition proceedings to a speedy conclusion and thereby establish legal certainty for all parties to the opposition proceedings and the public.

02
Jun
2016

Maintain the chain. Failure to maintain a precise and timely chain of title between priority and subsequent applications can cause loss of priority entitlement in Europe.

01
Jun
2016

The Patent Box is Changing Shape

The current UK Patent Box system is closing to new entrants from 30th June 2016.

05
May
2016

Patents Court rules in third technical Unwired Planet trial

The UK Patents Court recently handed down its judgment in the third technical trial in the ongoing dispute

15
Apr
2016

Carpmaels boosts litigation practice with new hires

Leading patent litigator joins the firm to complete the jigsaw of offerings

09
Mar
2016

European Trade Mark Reform. Changes to the Community Trade Mark…

On 23 March 2016, an amended European Trade Mark Regulation will come into force. What are the key changes?

09
Mar
2016

The UK Supreme Court dismisses Trunki’s Registered Community Design appeal

Trunki is the ride-on child’s suitcase that has been critically acclaimed and a commercial success. Unfortunately for Trunki, this success did not extend to the Supreme Court.

09
Mar
2016

Court battle over Unwired Planet patents continues

The UK Patents Court recently handed down judgment in the ongoing dispute between Unwired Planet and various mobile phone and infrastructure manufacturers.

24
Feb
2016

Carpmaels & Ransford ranked by World Trademark Review

Trade Marks team awarded a Silver ranking in WTR 2016

18
Jan
2016

Carpmaels in the local community

Our staff have volunteered to support a weekly Maths Booster Club

03
Dec
2015

Unwired Planet v Samsung & Huawei

UK Court finds SEP valid and necessarily infringed through compliance with LTE standard

04
Nov
2015

Carpmaels ranked by Chambers as a leading firm for the 9th consecutive year

Intellectual Property: Patent & Trade Mark Attorneys - UK wide

30
Oct
2015

Paul Bettridge gets interactive with LSBU

Budding entrepreneurs acquired some valuable insights into design rights this week

28
Oct
2015

Seattle Genetics (C-471/14): CJEU confirms that SPC terms are to be calculated from the date of notification

CJEU confirms that SPC terms are to be calculated from the date of notification of the marketing authorisation. It’s good news from the CJEU for those SPC owners who have been hoping for additional SPC term in Europe.

06
Oct
2015

Seattle Genetics: Advocate General’s opinion points towards longer SPC terms

Good news could be on the horizon for SPC owners hoping for additional SPC term in Europe, following the Advocate General’s (AG) opinion in the Seattle Genetics SPC referral currently being considered by the CJEU (C-471/14).

10
Sep
2015

All change for priority at the EPO?

The EPO’s highest instance, the Enlarged Board, has been asked to provide an updated test for assessing priority.

13
Aug
2015

The Patents Court in the UK recently handed down an interim judgment in Unwired Planet v Huawei & Samsung et al., which considered a number of issues concerning the transfer of a FRAND obligation.

31
Jul
2015

Claimed numerical ranges scrutinised by the English courts

English Court of Appeal rules in favour of ConvaTec in the latest chapter of the dispute over silverised wound dressings, holding that Smith & Nephew’s process falls within the claimed numerical range, despite an attempted work around to avoid explicit numerical limits.

23
Jul
2015

European Union Community trade marks (CTMs)

If you are interested in selling your products or offering services in a number of countries that are members of the European Union, you may find that the CTM system offers you the best route for securing protection of your trade mark.

30
Jun
2015

The EPO – time for talk?

The requirements of examining increasing numbers of patent applications whilst maintaining efficiency and quality have always been testing for the EPO.

07
May
2015

CJEU rejects Spanish unitary patent challenge

After a longer than expected gap, the CJEU issued a press release announcing its judgments on Spain’s most recent challenges to the legality of the unitary patent and Unified Patent Court system.

05
May
2015

SPCs for biologics

Guidance on product definitions, scope and validity from the EFTA Court in Pharmaq v Intervet (E-16-14).

23
Apr
2015

An introduction to clarity in EPO oppositions

In March 2015, the EPO’s Enlarged Board of Appeal decided on the extent to which amendments made during opposition proceedings can be examined for clarity, following a referral from a lower Board.

16
Apr
2015

Tomatoes and Broccoli at the Enlarged Board again – patent protection is available for plants and fruit.

In its second bite at the Tomatoes and Broccoli cases, the Enlarged Board has confirmed that plants and plant materials produced by biological processes are not excluded from patentability.

07
Apr
2015

Software and business method patents in Europe and the UK

Patents for software and business methods have been a contentious topic of discussion amongst patent practitioners in Europe for a long time. Our briefing note on the subject has been updated to take account of recent developments, and aims to explain the current situation and resolve common misconceptions.

01
Apr
2015

Actavis v Boehringer (C-577-13): What is the “sole” subject matter of an invention?

On 12th March 2015, the CJEU handed down its judgment in the Actavis v Boehringer referral. This judgment deals with questions referred by the High Court of England and Wales that relate specifically to SPCs for combinations of active ingredients.

12
Mar
2015

English courts tackle Swiss claims and off-label use

The English courts have recently considered a question pivotal to the perceived value of Swiss-type claims: to what extent can such claims be used to restrict off-label use where other uses of a drug are no longer protected by a patent?

05
Feb
2015

Partial priority referred to the EPO’s Enlarged Board – an antidote to “toxic divisionals”?

The EPO’s Enlarged Board of Appeal is to consider how to assess partial priority, in a decision that could signal the end of the controversial "toxic divisional" novelty attack.

06
Jan
2015

UPC – Licensing considerations

Licensors and licensees of European patents and patent applications should consider whether their agreements are suitable for the establishment of the UP and UPC.

04
Jan
2015

Will the public suffer? Let’s stay!

A recent decision from the UK Court of Appeal in Adaptive Spectrum and Signal Alignment Inc. v British Telecommunications Plc. has shown that the UK courts are prepared to impose injunctions on big telecoms operators, but that in doing so consideration may well be given to the effect an injunction will have on the public.

18
Dec
2014

It all depends on the facts

The UK Court of Appeal recently issued a judgment in Lantana Ltd’s application which provides a useful summary of tests for excluded subject matter in the UK set out in previous cases. However, the judgment does little to clarify what continues to be a rather opaque and fact-specific area of the law.

04
Dec
2014

A sting in the tail of the UK Intellectual Property Office’s new opinions service

The UK Intellectual Property Office (UKIPO)’s opinions service has been given more substance, and the Office has been given the power to revoke patents in certain situations. Since the request for an opinion by a third party is likely to grab the attention of the patentee, what opportunities does this new service provide?

27
Nov
2014

EU proposes reining in the rights of holders of Standard Essential Patents.

Advocate General issues his opinion in Huawei v ZTE in its referral to the Court of Justice.

25
Nov
2014

The IPEC leaves its cap on

The caps that are in place for the Intellectual Property Enterprise Court (IPEC), formerly known as the Patents County Court (PCC), provide claimants and defendants alike with certainty with regard to damages/account of profits and orders in relation to costs. This case (Abbott and another v Design & Display Ltd and another [2014] EWHC 3234 (IPEC)) focussed on how the cap relating to awards of damages/account of profits should be applied in actions involving more than one defendant.

20
Nov
2014

UK court decides milk bottle patent case without trial

UK courts have the power to dispose of all or part of a case without a trial if there is no real prospect of success. In a decision upheld by the Court of Appeal, the defendant in the patent case of Nampak Plastics Europe Limited and Alpha UK Limited has successfully made use of these powers, receiving a favourable declaration of non-infringement from the High Court without the need for a trial.

06
Nov
2014

Second medical use claims for devices – an uneven playing field?

European patent law offers extra protection for pharmaceuticals that is not available for medical devices. Second medical use claims for pharmaceuticals are routinely accepted in Europe, whereas the same style of claim is generally not permissible for medical devices. Recent case law has seen a shift towards rewarding new uses for existing medical devices, but achieving such protection requires care during prosecution.

30
Oct
2014

IP Act 2014 – Changes to UK designs law come into force

In an earlier briefing note, we summarised the main changes to UK law introduced by the Intellectual Property Act 2014. A number of these changes come into effect today (1st October 2014), including measures intended to modernise, simplify and strengthen the law relating to designs – an area of protection often overlooked by IP owners. This short article reviews some of the more significant changes to designs law brought about by provisions in the Act.

01
Oct
2014

Extended protection for medical devices – a hot topic in the UK

Manufactures of medical devices are requesting an increasing number of patent term extensions in a bid to recover the cost of getting regulatory approval. Recent decisions show that the UK IPO is taking a strict approach when examining patent term extensions for medical devices, but there are still situations where extra protection might be available.

21
Aug
2014

Patentable parthenotes? Advocate General says yes

In the latest development to the patentability of human stem cells, the AG has recommended that stem cells derived from parthenogenically activated oocytes should not be excluded from patentability any longer. The AG drew the distinction between totipotent and pluripotent cells, noting that cells that do not have the capacity to develop into a human being should not be excluded from patentability.

31
Jul
2014

UK High Court makes sense of CJEU’s decision on interpretation of Article 3(a)

In a pro-patentee judgment, the UK High Court suggests that SPCs can be based on most types of claim provided that the product which is the subject of the SPC falls within the scope of the claim.

29
Jul
2014

Intellectual property rights and 3D printing: a threat or an opportunity?

The latest developments in 3D printing and the implications for IP protection.

28
Jul
2014

Should High stay, for EPO? Actavis and Pharmacia clash in the High Court

Mr Justice Arnold in the Patents Court of the High Court of England and Wales (the ‘Patents Court’) initially refused a request by the patentee, Pharmacia, for a stay of UK revocation proceedings brought by Actavis, pending the outcome of opposition proceedings at the EPO based on three undertakings.

24
Jul
2014

Changes to searches on applications entering Europe via the PCT

As of 1st November 2014, the EPO is changing the way it searches PCT applications entering the European regional phase which are considered to relate to more than one invention. These changes will result in increased flexibility for the applicant and should help to reduce the likelihood of encountering unexpected costs.

14
Jul
2014

A measure of outstanding employee inventor compensation – Shanks v Unilever

In a decision dated 23rd May 2014, Mr Justice Arnold in the UK High Court dismissed Professor Shanks’ appeal and upheld the UKIPO decision not to award Professor Shanks any employee inventor compensation.

19
Jun
2014

Patchy report from a gynaecology conference is enough to stop morning after pill patent

The UK’s High Court has decided that Richter Gedeon’s patent for a single dose of the emergency contraceptive levonorgestrel is invalid in view of a report published a few months before the priority date revealing the preliminary results from an incomplete study of the drug

12
Jun
2014

Clinical trials in the UK are given immunity to patent infringement

New legislation introduced by the UK government should shield clinical trials in the UK from the risk of patent infringement from 1st October 2014.

05
Jun
2014

Board of Appeal finds Swiss-type claims have different scope to EPC 2000 second medical use claims

A decision (T1780/12) from the EPO technical boards of appeal indicates that Swiss-type claims of the form “Use of [product X] in the manufacture of a medicament for the treatment of [disease Y]” provide a different scope of protection than EPC 2000 second medical use claims of the form “[product X] for use in the treatment of [disease Y]”

29
May
2014

EDS v Synergy and Gravitas [2014] EWHC 1306

This recent decision of the Intellectual Property Enterprise Court (IPEC) demonstrates the importance of parties being clear in their pleadings about the technical field of the skilled person when seeking to invalidate a patent for obviousness in the UK. It also highlights problems that can arise in selecting expert witnesses.

22
May
2014

EU spells out its approach to standards and patents

On 29th April 2014, the European Commission released two significant decisions concerning standard essential patents (“SEPs”) in respect of Motorola Mobility (“Motorola”) and Samsung.

02
May
2014

Genentech’s Herceptin purification patent fails to pass the acid test

The UK’s High Court has decided that Genentech’s patent relating to a composition of Herceptin with reduced acidic variant content is invalid

01
May
2014

The procedural and legal complexities which can result from differing decisions handed down by the EPO and UK courts was illustrated recently in a judgment from the UK Patents Court.

01
May
2014

Less is more, but still not enough, for Genentech’s dosing schedule patent

The High Court has decided, in a single judgment, that Genentech’s patents relating to a dosage regimen for Herceptin and a purified composition of non-acidic variants of Herceptin are invalid. This article focuses on the dosage regimen patent.

24
Apr
2014

No sitting on the fence for IPEC

IPEC holds that groundless threats of patent infringement proceedings were made.

03
Apr
2014

“I want you to stay”: UK Court of Appeal agrees to await outcome of EPO central limitation

The EPO central limitation procedure has shown its potential to disrupt infringement and validity hearings in the UK courts, after the Court of Appeal agreed to adjourn an appeal in the ongoing dispute between Apple and Samsung.

27
Mar
2014

Cosmetic Warriors Ltd and Lush Ltd v Amazon.co.uk Ltd and Amazon EU Sarl

A High Court decision concerning Amazon’s use of the LUSH trade mark as a Google AdWord and as a suggested term on the Amazon website when, as a matter of fact, LUSH products are not available for sale through Amazon.

14
Mar
2014

Jack Wills Ltd v House of Fraser (Stores) Ltd

The High Court of England & Wales has found that House of Fraser’s use of a "Pigeon logo" infringed Jack Wills’ "Mr Wills logo" trade mark on the basis of a likelihood of confusion and also on the basis that the "Pigeon logo" took unfair advantage of the reputation in the "Mr Wills logo".

11
Mar
2014

The Patent Prosecution Highway

The Patent Prosecution Highway (PPH) offers a system through which patent prosecution can be accelerated in one participating jurisdiction provided the claims of interest have been found to be acceptable in another participating jurisdiction.

05
Mar
2014

Financial pitfalls associated with an interim injunction

In AstraZeneca v KRKA, d.d. Novo Mesto and Consilient Health Ltd. ("KRKA"), the Mr Justice Sales of the UK High Court has considered the merits of arguments put forward when trying to recover damages following a cross‑undertaking in respect of an interim injunction that was subsequently discharged.

27
Feb
2014

ConvaTec fails to find a silver lining in its latest dispute with Smith & Nephew

The High Court decided that Smith & Nephew’s DURAFIBER AgTM wound care product does not infringe ConvaTec’s patent relating to silverised wound dressings, and refused to grant springboard relief to ConvaTec based on infringing experiments carried out by Smith & Nephew to obtain regulatory approval for their product.

20
Feb
2014

European Trade Mark Proceedings & Litigation

Fast, cost-effective dispute resolution by professionals working exclusively on IP matters.

12
Feb
2014

Preliminary injunctions readily available for process patents in the UK.

The UK High Court has again shown its willingness to grant preliminary injunctions in its decision BASF SE v Sipcam (UK) Ltd. This decision highlights the importance of pre-trial conduct and the need for cooperation between parties if they are to avoid adverse decisions in actions for injunctive relief in the UK.

23
Jan
2014

CJEU allows multiple SPCs per patent under a qualified test, but uncertainties remain

On 12th December 2013, the CJEU handed down its rulings in three cases, Georgetown II (C-484/12), Actavis (C-443/12) and Eli Lilly (C-493/12), which have had SPC practitioners on tenterhooks for some time.

19
Dec
2013

Appeal to stay proceedings dismissed in favour of the patentee

A decision of the Patents Court of the High Court of England and Wales (the 'Patents Court') to refuse a stay of proceedings pending the outcome of proceedings at the European Patent Office (EPO) has been unsuccessfully appealed by HTC in IPCom v HTC.

05
Dec
2013

Our recent guide, published in conjunction with the British Private Equity and Venture Capital Association (BVCA), notes that conducting intellectual property (IP) due diligence is essential when assessing whether and how to invest in a business.

29
Nov
2013

Extending pharmaceutical patents in the UK

The contentious world of patent extensions for pharmaceutical products has come under the spotlight again in a recent UK decision: Actavis v Boehringer. The decision signals that the UK courts are keen to extend pharmaceutical patents, even where the product is a combination of two known active ingredients, but the final say will now go to Europe’s highest court (the CJEU).

07
Nov
2013

Shopping for a technical effect (T 1670-07)

We report on a recent Technical Board of Appeal decision at the EPO which gives us a glimpse at how arguments often used when attempting to establish an inventive step may be perceived by the Boards.

25
Oct
2013

Is EU Community design the top dog in design protection?

It can be hard to choose the most appropriate and cost-effective means of protecting designs within the European Union. This article looks at the issues that parties may wish to consider if they import, distribute or sell products within the European Union by reference to their innovative, visual appeal.

17
Oct
2013

New “fast track” trade mark oppositions in the UK

A new "fast track" trade mark opposition procedure was introduced in the UK on 1st October 2013 as an alternative to the standard opposition procedure in some cases.

08
Oct
2013

Change in European law on customs & anti-counterfeiting measures

Owners of IP rights can record their rights with customs authorities in some or all EU countries to help protect against counterfeiters.

04
Oct
2013

The risk of threatening a competitor with a UK patent infringement action

Threatening to sue for patent infringement in the UK courts can result in significant financial liability for the person making the threat if the patent is found to be invalid and the threat therefore unjustified, as illustrated recently by the UK Court of Appeal in Sudarshan v. Clariant.

05
Sep
2013

Plausibility and the role of post-published evidence in UK litigation

The Court of Appeal has dismissed Mylan’s appeal against the High Court’s decision upholding the European patent (UK) protecting Teva’s largest branded drug, the multiple sclerosis treatment Copaxone®.

29
Aug
2013

hES cell patents in Europe – what’s the point?

The ECJ’s previous decision has been interpreted to mean that use of hES cells from established cell lines obtained by "destructive methods" is not patentable. In spite of this, you may be able to get claims granted by the European Patent Office (EPO) which on their face encompass hES cells. But is there any point in getting claims like this granted, or is there freedom to operate?

22
Aug
2013

Broccoli and tomatoes

EPO Enlarged Board of Appeal defines the extent to which plant crossing and selection processes are excluded from patentability as essentially biological processes under Article 53(b) EPC.

20
Aug
2013

Supreme Court puts to bed the principle leading to damages for infringing an invalid patent

In a significant recent judgment the Supreme Court (the UK’s highest court) has revisited and overturned a legal principle developed by the UK courts over 100 years.

25
Jul
2013

Preliminary injunctions available in the UK despite first instance invalidity finding

The UK Court of Appeal (CoA) has reversed an earlier decision of the High Court and granted Novartis a preliminary injunction (PI) against Hospira, preventing sales of generic zoledronic acid for treating osteoporosis.

13
Jun
2013

Nespresso® patent roasted in the High Court

The High Court judgment regarding Dualit’s supply of disposable ground coffee capsules compatible with Nectec’s patented machines examined whether display at a convention and field tests destroyed novelty, and assessed whether indirect infringement had taken place.

13
Jun
2013

UK Court of Appeal considers the patentability of touchscreen-related inventions

A recent judgment of the UK Court of Appeal in HTC v Apple considered whether computer implemented methods utilised in touchscreen devices were excluded from patentability.

30
May
2013

A Court of Justice reference breathes life into Sigma’s parallel importation appeal

The Court of Appeal has recently handed down a decision indicating its intention to refer questions relating to the Specific Mechanism to the Court of Justice (Europe’s highest court; the CJEU) on an appeal from the Patents County Court.

02
May
2013

When is making a patented product not an infringement? Werit is making a repair

The recent judgment in Schütz v Werit from the Supreme Court provides guidance on the question of when repairing a patented product by replacing a component part infringes a patent to the product as a whole. This guidance will be welcomed by those who repair patented products in the UK.

18
Apr
2013

Samsung v Apple, again

As the war for world smartphone domination rages on, the latest battle between two of the major belligerents, Samsung and Apple took place in the UK.

11
Apr
2013

Inventive step – what to develop?

Where a patent's novel feature provides no new effect the UK courts may still consider arguments for inventive step, as illustrated by the recent decision of the UK High Court regarding the patent for the anti-malarial Malarone®.

07
Mar
2013

But finishing was never part of the (paediatric investigation) plan…

The UK's High Court recently decided upon Dr Reddy's application to revoke the 6 month paediatric extension of Warner-Lambert's SPC for atorvastatin (Lipitor), which is used for lowering blood cholesterol.

17
Jan
2013

UK disclosure is a powerful tool in patent litigation

The disclosure process under English law creates powerful opportunities during patent litigation. Careful use of disclosure can reduce costs and speed up proceedings across Europe, as shown in recent litigation between Danisco and Novozymes.

29
Nov
2012

Apple loses appeal on “cool” design

The much-publicised dispute between Samsung Electronics (UK) Limited and Apple Inc. continues.

01
Nov
2012

Victorious Samsung “not as cool” as Apple, rules Birss

The business and technology pages of newspapers and websites across the globe have been awash with stories of the so-called "smartphone wars", which have thrust intellectual property issues to the forefront of the world's media.

26
Jul
2012

Neurim – “the most important SPC judgment ever”

On 19th July 2012 the CJEU, Europe's highest court, issued its ruling in case C-130/11 Neurim Pharmaceuticals.

22
Jul
2012

HTC prevails against Apple in the UK Patents Court

IP news has been dominated by a series of on-going disputes between Apple and other major players in the smartphone market; the so-called “smartphone wars”.

19
Jul
2012

Furrowed brows for L’Oréal at end of Allergan BOTOX® battle

On 10th May 2012 the First Chamber of the Court of Justice of the European Union (CJEU) gave its judgment on the appeal brought jointly by Helena Rubenstein and L’Oréal against the 16th December 2010 judgment of the General Court of the European Union, which dismissed appeals filed by the two parties.

21
Jun
2012

Merck’s silence irrelevant as Sigma is left gasping

Merck Canada Inc. holds a UK patent and a UK SPC covering the active ingredient in the asthma treatment Singulair. It started an action for infringement of these rights by Sigma Pharmaceuticals PLC, which was importing Singulair from Poland into the UK.

31
May
2012

Regeneron and Bayer caught in Genentech’s VEGF Trap

In the UK leg of the litigation relating to the potential blockbuster drug Eylea, marketed by Regeneron Pharmaceuticals, Inc. and Bayer Healthcare, the High Court has handed down a judgement ruling that Eylea infringes a patent held by Genentech, Inc.

05
Apr
2012

An Important Day for Supplementary Protection Certificates

On Friday 10th February, the UK High Court had a busy morning applying recent decisions of the Court of Justice of the European Union (CJEU) in Medeva (C-322/10) and related referrals, to real world situations involving Supplementary Protection Certificates (SPCs).

23
Feb
2012

SPCs – Decisions rain down from the Court of Justice of the European Union (CJEU)

Between late November and mid-December, there was a flurry of activity at the CJEU, with a number of decisions being handed down that are relevant to Supplementary Protection Certificates (SPCs) - a unique form of intellectual property right that provides an additional monopoly that comes into force after expiry of a patent.

26
Jan
2012

Exclusion of “uses of human embryos for commercial or industrial purposes” from patentability in EEA

The Court of Justice of the European Union (CJEU) considered the scope of the exclusion from patentability of "uses of human embryos for commercial or industrial purposes" in its judgment C-34/10 handed down on 18th October 2011.

08
Dec
2011

Medeva – Georgetown (C-322-10 and C-422-10)

The EU's highest court explains how to get an SPC for a combination drug, and confirms that an SPC for a single active ingredient can be used to stop sales of a combination drug containing the same active ingredient.

30
Nov
2011

The transfer of priority rights

The question of who is a “successor in title” to the right to claim priority has recently been considered again by the UK Patents Court in KCI Licensing. Serious doubt remains over the validity of retroactive (nunc pro tunc) assignments to rectify defects.

09
Sep
2010

Court of Justice decision in Monsanto v Cefetra (C-428-08)

The scope of protection of DNA claims insofar as they protect material incorporating a DNA that is not able to perform the function for which it was patented has been decided in a recent ECJ Judgment.

09
Jul
2010

The patentability of diagnostic and surgical methods in the EPO

Decisions G1/04 and G1/07 address the extent to which a diagnostic method and a method involving an invasive intervention on the body are excluded from patentability under the EPC.

07
Jul
2010

EPO to get tough on multiple independent claims

From 1st April 2010, the European Search Report will be limited to a single independent claim in each category.

01
Jan
2010

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