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Found in Pages…Mandanten bei Verletzung seiner Rechte betrifft. Wir beraten Sie auch bei der Lizenzierung von geistigem Eigentum und übernehmen für Sie u. a. die damit verbundene Führung von Vertragsverhandlungen und die…
Clearing the way: the tests for obviousness and insufficiency clarified
Found in NewsA recent High Court decision explains the tests for obviousness and insufficiency resulting from a “clearing the way” action brought by Actavis against Eli Lilly (Lilly). Actavis intended to invalidate…
Global Trends in Battery Technology: A Patent Perspective
Found in News…as enhancing ion conductivity at room temperature.9 It is hoped that the enhanced focus on this important technical area will soon yield commercially available solid-state batteries. 5 https://www.autoweek.com/news/technology/a36189339/solid-state-batteries/ 6 https://www.epo.org/news-events/news/2020/20200922.html…
Affiliations
Found in Pages…to solve growth-inhibiting challenges. Verein der Zellstoff- und Papier-Chemiker und -Ingenieure (ZELLCHEMING) The Association of Pulp and Paper Chemists and Engineers (Verein der Zellstoff- und Papier-Chemiker und -Ingenieure – ZELLCHEMING)…
Is Amazon liable for trade mark infringements committed by third parties?
Found in News…its own commercial communication. Amazon could not therefore be regarded as a mere website hosting provider or as a neutral intermediary, especially since it provided assistance to third parties, in…
Frequently asked questions
Found in Pages…trade mark attorney? Information on how to become a patent or trade mark attorney can be found in the careers section of our website, or at www.insidecareers.com, www.cipa.org.uk, and www.citma.org.uk….
EPO fee changes – effective from 1 April 2018
Found in News…April 2018. These fee adjustments, summarised below, relate to the handling of PCT applications, online filings and appeal fees. International (PCT) applications where the EPO is the ISA/IPEA The EPO…
Privacy Notice
Found in Pages…Information Commissioner’s Office. Use of cookies For more information our policy on the use of cookies, please follow this link: https://www.withersrogers.com/cookies/ To unsubscribe All marketing emails will include an option…
Ernst-Ulrich Wittmann
Found in Team members…und -Ingenieure) and the Academic Association of paper engineers at the Dresden Technical University (Akademischer Papieringenieurverein an der Technischen Universität Dresden e.V.). Education & background While studying for his Dr.-Ing….
Michael Jaeger unpacks HMRC’s report on the initial uptake of the UK’s Patent Box
Found in News…This means that only 1 in every 1,600 of the Corporation Tax paying companies took advantage of the Patent Box scheme. Company size and Patent Box Company size Companies Relief…
There’s no silver bullet
Found in News…resources, even highly effective inventions may not make it all the way to commercialisation and large-scale deployment. This is where intellectual property comes in. Patents in particular provide a legal…
IP Review Autumn 2015
Found in NewsOur latest IP Review is now available online here: www.withersrogers.com/ebrochure/ip-review/autumn-2015/ In this issue we report on some interesting developments, including a wave of altruism that has swept over some of…
Adwords and honest concurrent use: Victoria Plum v Victorian Plumbing
Found in News…Defendant’s duty to act fairly to the legitimate interests of the trade mark proprietor whether the acts complained of constitute unfair competition whether the use complained of exacerbates the level…
SPC update – further insight to the meaning of “protected”
Found in News…CJEU hands down its opinion in Sandoz v Searle, relating to SPC protection for a compound that is within the scope of a Markush definition but is not individualised anywhere…
Itchy combinations and the power of common general knowledge
Found in News…(Leo) (See here), relates to a combination treatment for psoriasis and provides an interesting commentary on the assessment of obviousness and common general knowledge in such inventions. The two patents…
SPCs can be used for compounds hidden within generic claims
Found in News…Such patent owners can now take comfort in that if one particular compound in that space is later identified as particularly effective, but it was not specifically identified by name…
When are Diagnostic Methods Patentable at the EPO?
Found in News…on or including laboratory tests are usually eligible for patent protection. Which diagnostic methods are excluded from patentability? EPO case law[2] states that a patent claim relating to a diagnostic…
Adrian Tombling
Found in Team membersAdrian has diverse experience and works for pharmaceutical and biotechnology companies, as well as medical device companies. He has specific expertise in patent work relating to recombinant DNA technology, recombinant…
The Earthshot Prize – Highlighting Innovation
Found in News…as human beings and our continual ability to lead, innovate and problem-solve. People can achieve great things. The next ten years present us with one of our greatest tests –…
Overseas Registration of Patents, Trade Marks and Designs
Found in Pages…Kiribati* Montserrat Nauru Saint Helena Saint Lucia Samoa*2 Seychelles Sierra Leone Solomon Islands* Tanzania – Zanzibar Turks & Caicos Islands*3 Tuvalu* Virgin Islands* 1 Registration may be applied for any…
Terms of use
Found in Pages…the contents in any form is prohibited other than the following: You may print or download to a local hard disk extracts for your personal and non-commercial use only. You…
Timelines
Found in Pages…International Trade Mark Application Timeline Timeline for Opposition Procedure Download the whole collection Timelines You may well find it useful to refer to these timelines when your attorney explains your…
“Simplification” can lead to design right abuse.
Found in NewsThe Intellectual Property Act 2014 (the 2014 Act) received Royal Assent on 14 May 2014 and will be implemented via a series of commencement orders over the coming months. In…
Withers & Rogers Helps #ShakeYourPower Project
Found in News…Manufacture and distribute the product Develop assembly kits to enable the end user to build their own SPARK. To watch a video about the project click http://vimeo.com/97523490#t=0s @shakeyourpower #shakeyourpower www.shakeyourpower.com…
Our Brand & Purpose
Found in News…believe it is important that you understand who we are and how we can help you realise your ideas. To understand more please watch the short video below: https://www.youtube.com/watch?v=o8kYkr1EJRA ©…
Unified Patent Court
Found in Pages…courts. Moreover, proprietors who rely on low numbers of high value patents may be reluctant to try the new system, owing to the increased threat of single-action revocations. [1] https://www.juve-patent.com/news-and-stories/people-and-business/alexander-ramsay-the-london-question-wont-delay-the-upc/…
Withers & Rogers shortlisted for the This Can Happen Awards 2019
Found in News…This Can Happen Awards will be announced at a ceremony in London on Thursday 21st November 2019. For the full shortlist for the This Can Happen Awards 2019, visit https://www.thiscanhappenawards.com/shortlist…
New UK provisions for webmarking for Registered Designs
Found in News…onerous or costly process. Registered Designs From the 1 October 2017, the same webmarking process will be optional for UK registered design holders[1] under s.33 of the Digital Economy Act…
All software patents are equal! – EPO Decision G1/19
Found in News…direction for future intellectual property protection. Details of the decision can be found via the following link: https://documents.epo.org/projects/babylon/eponet.nsf/0/99f4b971c9e3eb2fc125869400340179/$FILE/G_1_19_decision_of_the_Enlarged_Board_of_Appeal_of_10_March_2021_en.pdf and https://www.epo.org/law-practice/case-law-appeals/communications/2021/20210310.html Diego Black Electronics, Computing & Physics group This publication…
Funding available through the Coventry & Warwickshire Innovation Programme
Found in News…an innovative thermoplastics compound that has the property to be thermally moulded at a temperature comfortable for skin contact, but which is a semi-rigid rubber like solid at body temperatures….
Cookies
Found in Pages…The use of cookies and similar technologies is commonplace and cookies in particular are important in the provision of many online services. Using such technologies is not prohibited by the…
Cartier v BSky B – Website blocking orders extended to Trade Mark Infringement
Found in News…trade mark registrations for a number of well known marks, including CARTIER, MONTBLANC and IWC. They were seeking orders compelling the ISPs to block access to six websites offering counterfeit…
UK joins the Hague Agreement – Further details
Found in News…filed through WIPO in Geneva, they cannot be filed at the UK Intellectual Property Office (UK IPO) directly. Typically online filing is used as this attracts reduced official fees. –…
UK IPO fee changes to encourage multiple design filings post Trunki
Found in News…carefully scoping out designs for registration with an eye to what competitors may do in future to avoid infringement of design IP rights, was brought into sharp focus in the…
UK IPO announces fee increases
Found in News…renewing granted patents. These changes include both increases to current fees, and the introduction of new fees. These changes will come into effect on 6 April 2018. We have summarised…
Cartier v BSkyB – Court of Appeal confirms website blocking orders for Trade Mark infringement
Found in News…earlier report of the High Court decision can be found here. High Court Summary The Claimants (Cartier, Mont Blanc and Richemont) own trade mark registrations for a number of well-known…
Amazon Bombs: Lush Successful Against Amazon in Keyword Advertising Case
Found in NewsLush is a well-known manufacturer and supplier of cosmetic products, primarily under the LUSH brand. Amazon, the world’s largest online shopping retailer, used Lush’s trade mark, LUSH, as a Google…
UK Court of Appeal orders re-trial in Interflora v M&S keyword advertising battle
Found in News…Court of Appeal (‘CoA’) has ordered that the case undergo re-trial in the High Court. In doing so, the CoA overturned Mr Justice Arnold’s (‘Arnold J’s’) earlier decision in favour…
Diego Black
Found in Team members…and sensors. Diego’s experience in the computing area includes user interfaces, operating systems, display system technology, encryption protocols, logistics, application software, consumer devices, computer modelling, speech recognition, online content delivery…
Intellectual property bill receives royal assent
Found in News…rights in commissioned designs to the commissioning organisation. Accession of the UK to the international “Hague system” for registration of designs in many countries of the world via a single…
Patent Protection
Found in Pages…chemistry and biotechnology. This in-depth technical knowledge, combined with market knowledge and professional expertise, provides clients with the reassurance that our patent service is fully aligned with your commercial goals….
IAM Strategy 300: The World’s Leading IP Strategists
Found in News…the go-to for many companies in that space.” These leading IP strategists are primarily identified through confidential nominations online. However, the extensive research process also involves face-to-face and telephone interviews,…
Renewals
Found in Pages…to our clients’ requirements and adapt our services to meet with their specific needs. Key features of W&R Renewals’ service Competitive fees Clear and comprehensive IP portfolio management support, including…
IP Audit FAQs
Found in PagesHow will an IP audit help my company? An IP audit can provide a company with: an overview of its IP assets; an understanding of the ownership of any IP…
Yannick Biron
Found in Team members…early 2021 before moving to private practice at Withers & Rogers. He has been Secretary of the European Patent Institute (epi) Online Communications Committee since 2017 and is the current…
Mark Caddle
Found in Team members…many sectors, including consumer electronics, food and drink, pharmaceuticals and financial services. As well as working with multinational companies, he has particular expertise in advising start-ups and SMEs how best…
Evidence Unscrambled: SCRABBLE Unsuccessful in Trade Mark Dispute at UK High Court
Found in News…game has been extremely successful, having been downloaded more than 13 million times worldwide. Mattel is the owner of the following European Community trade marks: SCRABBLE Scrabble SCRAMBLE On the…
Can a FRAND SEP stop ZTE? The CJEU rules on the rules
Found in News…David Nicholls (dnicholls@withersrogers.com; +44 1926 310700), Russell Barton (rbarton@withersrogers.com; +44 1926 310700), or your usual contact at the firm. This publication is a general summary of the law. It should…
Patentability of Artificial Intelligence and Machine Learning Inventions in Europe
Found in News…At present, the patentability issues for AI and machine learning inventions remain largely the same as any other computer related invention. The fundamental algorithms per se remain excluded under European…
UK ratification of Hague Agreement
Found in News…design applications under the Hague system. International design applications allow applicants to submit a single design application to the International Bureau of the World Intellectual Property Office and obtain design…
The Intellectual Property (Unjustified Threats) Act 2017
Found in NewsThe Intellectual Property (Unjustified Threats) Act 2017 came into force on 1 October 2017. The new law comes as the result of a consultation process triggered by the Law Commission…
EPO revokes Broad’s CRISPR-Cas9 patent
Found in News…the provisional applications had not been correctly assigned from the inventors named on the provisional applications to the Applicants named on the PCT application. Consequently, the claims were found to…
Russia to join Hague Agreement in 2018
Found in News…in this briefing, please contact Richard Worthington (rworthington@withersrogers.com; 44 20 7940 3600) or your usual contact at the firm. This publication is a general summary of the law. It should…
European Commission notice regarding Brexit and EU IP rights
Found in NewsOn 5 December 2017 the European Commission together with the European Union Intellectual Property Office published a notice regarding the effect of Brexit on EU trade marks and community designs….
Outstanding Benefit and Multinational Companies
Found in News…of outstanding benefit to the employer and that by reason of those facts it is just that the employee should be awarded compensation ……”. As a brief background to this…
Assigning priority rights in Europe – How to stay out of trouble
Found in News…to timely transfer the right to priority. Referring to the above numbering, the Board found: Although retrospective assignments are allowed under US national law, this is not compatible with established…
SPCs for drug/device combinations?
Found in News…been fairly clear. But what about drug/device combinations? SPCs are administered by the national patent offices of EU member states and, until now, there has been little common ground between…
London Taxi Company loses Black Cab case in the Court of Appeal
Found in News…J continued to conclude that, even if the two LTC trade marks had been valid, FRN and Ecotive would still not have been found liable for infringement under the UK…
Life after Actavis – questions answered
Found in News…To give some commercial context, Teva markets GA under the trade mark Copaxone. Worldwide sales of Copaxone last year were about $4.2 billion, representing nearly a fifth of Teva’s worldwide…
Sound plausible? How much data does your patent application really need to include?
Found in News…filed was directed to an extremely broadly defined group of compounds, indicated by a general chemical formula, with 580 specific compounds disclosed as falling within the group, one of which…
Introduction of the EU Certification Mark
Found in NewsUnder the UK Trade Marks Act 1994, a certification mark is defined in Section 50(1) as: “a mark indicating that the goods or services in connection with which it is…
IP rights post Brexit: European Commission position paper
Found in News…community designs, geographical indications and community plant variety rights. The Commission’s guiding principle is that the protection of unitary rights enjoyed in the United Kingdom before the withdrawal date is…
Lithuania ratifies the UPCA
Found in News…by the UK and Germany is still required before the Unitary Patent Package can come into force. As we previously reported here, German ratification is currently stalled. For further information…
Estonia ratifies the UPCA
Found in News…can come into force. German ratification is currently stalled, whilst a constitutional complaint is evaluated Germany’s Federal Constitutional Court. The extent to which that complaint will delay the implementation of…
Eli Lilly reigns Supreme
Found in News…equivalents, reformulates the historic “Improver” questions, and comments on the relevance of the prosecution history. Background To recap briefly, the case concerns Lilly’s patent relating to the use of the…
UK’s preparations for the Unified Patent Court are back on track
Found in News…constitutional complaint raised by a private person in Germany may cause delays to German preparations. Germany is the other country whose ratification is required before the UPC comes into force….
Court of appeal ruling in KitKat case is a blow for Nestle
Found in News…products that look similar, with a reduced risk of litigation. “This case highlights the difficulties that often accompany attempts to obtain commercial protection for the shape of a product. To…
Italy ratifies the UPCA
Found in News…Russell Barton Electronics, Computing & Physics group If you require further information on anything covered in this briefing, please contact Russell Barton (rbarton@withersrogers.com; +44 207 940 3600) or your usual…
Unitary Patent Package expected to enter into force in December 2017
Found in NewsAn official statement from the Unified Patent Court (UPC) website, published today (found here), has outlined a rough timetable for the UPC becoming operational. If all continues as expected, the…
EPO puts brakes on essentially biological processes
Found in News…added). The Notice specifically relates to recent decisions by the EPO Enlarged Boards of Appeal in the combined “Tomato I” and “Broccoli I” cases (G2/07 and G1/08) and the combined…
The Final Twist: Rubik’s Cube Trade Mark Declared Invalid by EU Court
Found in News…of the cube is a functional element that should not be protected by trade mark law. Decision The underlying rationale in assessing 3D shape trade marks is that registered trade…
Changes to payment of European renewal fees
Found in News…application may be filed, at the latest, 31 months after the priority date. Commonly, this is around 19 months after the PCT application has been filed. This means that EP-PCT…
IP Rights Post-Brexit: Publication of draft agreement on the withdrawal of the UK from the EU
Found in News…Commencement Date. Comment It is welcome news that the European Commission has provided greater clarity in these areas but there still remains a lot left unsaid and to be agreed…
Environmental, Social & Governance
Found in Pages…towards becoming an increasingly environmentally friendly business. Our social focus will centre around building trusting relationships with our people. We want our teams to be comfortable with bringing their full…
SPC update – further question referred to CJEU regarding meaning of “protected”
Found in News…of what “protected” means. The latest referral relates to a compound that falls within the scope of a Markush definition, but the compound is not an individualised embodiment in the…
Text intended for grant, or “unintended” for grant as the case may be
Found in News…for Grant When the EPO intends to grant a patent application, it issues a communication under Rule 71(3) EPC containing the ‘text intended for grant’ or ‘Druckexemplar’. The final responsibility…
Tackling counterfeiters: Luxury brands must be enforcement ready
Found in News…counterfeiters. High-profile court cases such as that between Christian Louboutin and Amazon in 2022, has given clarity to brand owners about who is liable when it comes to third-party sellers…
The UPC is continuing its upward trajectory
Found in NewsAlmost nine months after launch, the Unified Patent Court has received around 250 actions, an average of nearly 28 actions per-month. Compared to January, the UPC has seen an uptake…
The UPC has around 190 actions, almost eight months after launch
Found in NewsSince launching on 1 June 2023, the Unified Patent Court has received around 190 actions. This includes 67 infringement actions, 25 revocation actions, 79 counterclaims for revocation and some applications…
The UK will ratify the UPCA!
Found in NewsAt the EU competitiveness council meeting today the UK Minister of State for Energy and Intellectual Property, Baroness Neville-Rolfe, indicated that the UK will ratify the Unified Patent Court Agreement…
Diversity and Inclusion
Found in Pages…of eight high-level commitments and the individual practical steps, each will take to drive diversity, equality, and inclusion. There are some shared commitments that deliver against our diversity and inclusion…
The end of the “Ten-Day Rule” at the EPO
Found in NewsIt has recently been reported by CIPA that the “ten-day rule” will come to an end following a decision from the Administrative Council of the EPO. Under the existing “ten-day…
Thank you for your RSVP
Found in Pages…& Rogers’ winter casino event. We will be in touch closer to the date with more information. In the meantime, if you have any queries please contact Savannah Hockley, shockley@withersrogers.com….
Sky is in fact the limit – High Court confirms SkyKick infringes Sky
Found in News…are the comments on ‘computer software’. Despite Sky’s use in relation to certain types of software, Lord Justice Arnold considered that bad faith had been proven insofar as Sky had…
Thank you for registering
Found in Pages…our mailing list and we will be in touch with more information on our future webinars. In the meantime, if you have any queries please contact Mica Warner, mwarner@withersrogers.com. …
Design Sector Focus – Taking care of your Intellectual Property (IP) Rights
Found in News…needed in or anywhere near court and a commercial solution was arrived at. In this case, the result included some financial compensation, but more importantly for the designer, ultimately resulted…
Large companies not “too big to pay” inventor compensation
Found in News…when compared to the investment made, risk undertaken and amount of effort undertaken by the company to monetise, as opposed to a mere comparison of the reward from the invention…
Unwired Planet v Huawei – Court of Appeal decision
Found in News…(SEPs) held by Unwired Planet. For the uninitiated, SEPs are patents that must be used to comply with an industry standard, and are common in the telecommunications sector. Because SEP…
EPO allows eighth petition for review
Found in News…found in Article 112a EPC and can be summarised as: a problem concerning the composition of the Board (e.g. a member of the Board involved in the decision was not…
Home or Away – All Due Care still required for the EPO
Found in News…Board found that the new US attorney did not show all due care when she considered the previous attorney’s communication (which indicated an “interest in further processing”), to be an…
Innovation by Artificial Intelligence and the role of AI in pharmaceutical discovery
Found in News…research and what impact this could have on the pharmaceutical industry. As AI is created by a computer, it does raise the question, who owns the IP? In this second…
Dosage regime relief!
Found in News…was subsequently challenged by a number of generic drug manufacturers on several grounds including a lack of inventive step. However, the judge at first instance found the claims to be…
Pain for Warner-Lambert at the Supreme Court
Found in News…on one side, Warner-Lambert Company LLC (Warner-Lambert), a company in the Pfizer group. Warner-Lambert was the proprietor of an initial patent for a compound called pregabalin, which was first used…
Before and after snapshot – how Actavis affects infringement
Found in News…v Ice-World (see here). As previously reported, the landmark Actavis judgement was a 2017 decision from the Supreme Court that essentially changed the decades-old understanding of infringement in the UK…
Patent protection for Blockchain Technology and Blockchain’s role in anti-counterfeiting
Found in News…Computing & Physics group If you require further information on anything covered in this briefing, please contact Philip Horler (phorler@withersrogers.com; +44 207 940 3600) or your usual contact at the…
No-deal Brexit: UK government issues guidance on EU Trade Marks
Found in News…rights in the UK is undertaken. International Trade Marks (Madrid Protocol) – Further Guidance Needed The UK government has not offered guidance on the impact of Brexit on EU designations…
Mind the Overlap
Found in News…composition may be produced using components combined in a range of proportions. A patent application usually provides one or more examples of the working invention across the stated range. However,…
Protecting the unpatentable: Arrow declarations
Found in News…Arrow declarations to the forefront of UK patent law. An Arrow declaration provides commercial certainty or freedom to operate surrounding the marketing of a product or process, by ruling that…
Canada to join Hague Agreement
Found in News…briefing, please contact Richard Worthington (rworthington@withersrogers.com; 44 20 7940 3600) or your usual contact at the firm. This publication is a general summary of the law. It should not replace…
Protection for indications of geographical origins: A case of Scottish Glens and German Whisky
Found in News…comparable to the spirit drink registered under that geographical indication or insofar as such use exploits the reputation of the registered geographical indication; (b) any misuse, imitation or evocation, even…
