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A new patent eligibility test from the USPTO – a step in the right direction?
Found in News…that Alice’s patent was invalid on the basis that it was an abstract idea that had simply been computerized. A test has been established in the US to determine whether…
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…
EPO allows eighth petition for review
Found in News…Appeal to review a decision by the Board of Appeal, and it is only permitted under certain circumstances. The grounds for which a petition for review may be requested are…
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….
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…
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…
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…
Patentability of Artificial Intelligence and Machine Learning Inventions in Europe
Found in News…based software systems and traditional software systems, the approach to patenting such systems remains largely the same. As with any computer related invention, AI and machine learning inventions will need…
See our Summer IP review for the latest news and developments
Found in NewsPlease click on the link below for our Summer 2015 client magazine – IP Review. IP Review – Summer 2015 Older editions can be found here. We hope you find…
Digital Video & Audio
Found in Pages…but the presentation, searchability and interactivity of digital television content is becoming crucial to the success of content providers, and also to those providing content delivery infrastructure. We understand these…
Unitary Patent
Found in Pages…be possible to obtain unitary protection and also validate in individual participating EU Member States for the same patent. Those countries that are currently covered by the European Patent Convention…
Twist and shout… about sub-ranges
Found in News…decision was based on the three-step test, in which the Opposition Division concluded that: The claimed sub-range of 56 to 59 degrees was not narrow compared to the known range…
Some more equal than others! – EP (UK) patent not always the same as a UK patent
Found in News…908 patent, as amended, was valid but had not been infringed; the 734 patent was valid and Zodiac had threatened to infringe it; and the grant of the 908 was…
Patentable Parthenotes
Found in News…from patent protection will come as welcome news to those active in the regenerative medicine field, particularly those looking to tackle the regulatory hurdle and bring stem cell derived medicines…
SPC update – further insight to the meaning of “protected”
Found in News…the active ingredient in question”. Mr Justice Arnold suggested that a “core inventive advance” test could make a good replacement test, with certain countries suggesting both tests should be used…
An update on the revamped UK IPO Opinion Service
Found in News…of a patent, 19 requests to consider the validity of a patent and two requests to consider both infringement and validity. If we consider those opinions relating to validity, of…
Is it now harder to obtain an interim injunction in the UK?
Found in News…launching a competing generic product (pending outcome at trial). This case is noteworthy as it represents a departure from previous cases, where the ‘unquantifiable’ effect of a new competitor entering…
Free consultation
Found in PagesAt Withers & Rogers we offer a free introductory half hour meeting or telephone conversation, to help clarify your thought process regarding your next steps. Alternatively, you may have more…
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,…
EU Trade Mark Law Reform
Found in NewsThe European Council has published news of impending changes to the Community Trade Mark Regulation and a new Trade Mark Directive, most of which will come into effect in March…
IP resources
Found in Pages…Law Update is a e-newsletter that rounds up key articles we have published on our website. The content covers a broad range of subject matter and commentary on pivotal cases…
Bespoke Brexit and Intellectual Property – business as usual
Found in News…negotiations have been completed. Registered designs in Europe Existing Portfolio There is no need to do anything different with your current portfolio of Registered Community Designs in the EU. New…
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…
The importance of commas
Found in NewsIn a recent decision, T 1473/19, the Board of Appeal of the European Patent Office (EPO) revoked a patent for added matter due to the lack of a single comma…
EBA decides on the right to priority (G1/22 and G2/22)
Found in News…to the right to priority: Is the EPO competent to assess whether a party is entitled to claim priority under Article 87(1) EPC? If the EPO is competent, is a…
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…
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…
WIPO introduces new chemical structure searching capability
Found in News…international standard naming method for chemical compounds), or combinations thereof are often used to describe compounds. As a result, it should come as no surprise that word searching in chemical…
The EPO on Second Medical Use Claims, Witness Testimony and Oral Disclosures
Found in News…use claim will be whether or not the therapeutic effect is achieved by means of a chemical entity or composition of chemical entities. Witness Testimony The appellant-opponent’s arguments for lack…
Brexit: Impact on IP in Europe
Found in News…UK. As a result of this, pre-existing trade mark rights will not be lost and their owners will be granted new “cloned” UK registrations free of charge. After the transition…
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…
Privacy Notice
Found in Pages…or other information which we think you may find interesting; Internal record keeping; and To manage our business performance, assessing client satisfaction, conducting tests on new or existing new systems….
Plausibility – An Important Consideration
Found in NewsThe concept of plausibility is not mentioned in either the UK Patents Act or the European Patent Convention. However, it has become an increasingly common talking point and has featured…
Renewals
Found in Pages…new inventions, brands and designs. Withers & Rogers Renewals LLP is a leading provider of IP renewals and portfolio management support and is a separate but related business to Withers…
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/…
Patent Box Services
Found in Pages…place that can be directly linked to a product or service generating the qualifying profits. How can Withers & Rogers help? Withers & Rogers can help review the potential for…
Chemical Purity at the EPO
Found in News…composition to be a product and the individual components to be starting materials used to produce the composition. For example, a composition comprising a solvent (ethyl lactate) having a purity…
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…
Intellectual property bill receives royal assent
Found in NewsThe Intellectual Property Bill received royal assent on 15 May 2014, and will come into force as the Intellectual Property Act 2014. Many of the new measures are expected to…
Are supplementary protection certificates for medical devices on the horizon?
Found in News…obtained by exposing blood components to photoactivated compounds. The applicant had obtained a valid marketing authorisation for the decontamination procedure and argued that the marketing approval obtained under the relevant…
New Referral to the Enlarged Board of Appeal (G1/23)
Found in NewsOn 27 June, a new referral was made to the Enlarged Board of Appeal (EBA) in case T 0438/19. The referral seeks clarification on whether a commercially available product, with…
Affiliations
Found in Pages…for new business. Compagnie Nationale des Conseils en Propriété Industrielle (CNCPI) The French Patent & Trade Mark Attorneys Institute (Compagnie Nationale des Conseils en Propriété Industrielle – CNCPI) is a…
Accessibility
Found in PagesThis website is built using semantically correct, accessible HTML, giving access to content to as wide an audience as is reasonably possible. We use real textual links wherever possible, ‘jump…
Neurim No More
Found in News…“product” because of this new therapeutic use. The Court further addressed whether an MA granted for a new therapeutic application of a known active ingredient or combination of active ingredients…
Reduced EPO fees for ‘micro entities’
Found in News…micro entities, unlike the existing language-related fee reductions currently in place for small entities. The new 30% fee reduction is available in addition to those language-related fee reductions. The new…
Amendments to the PatModG
Found in News…be asserted later in the event that the patent-in-suit is declared invalid, the actual consequences of a market exclusion based on the injunction can usually no longer be fully compensated….
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 –…
Before and after snapshot – how Actavis affects infringement
Found in News…cooling member was valid and infringed by the defendant. The patent (EP (UK) 1462755) discloses an ice-rink cooling system, comprising a feed and a discharge manifold, which are connected in…
Clarification on Undisclosed Disclaimers provided by EPO Enlarged Board of Appeal
Found in NewsA decision by the EPO Enlarged Board of Appeal has been published with respect to some questions raised in relation to undisclosed disclaimers. Undisclosed disclaimers are a common means of…
How to spring-clean your IP portfolio during lockdown
Found in News…information about this. Review the complete list and map it onto your products. Which product or products are covered by each item on the list? Might some of the items…
Assigning priority rights in Europe – How to stay out of trouble
Found in News…explicitly in a written contract before the date of filing of the European patent application, their priority claim was still valid, since: The priority application was filed in the US,…
Regeneron Pharmaceuticals Inc v Kymab Ltd Supreme Court ruling
Found in News…but invalid. The Court of Appeal overturned the decision on validity, to find the patents were valid and infringed. Kymab appealed to the Supreme Court. State of the art…
Unitary Patent Package FAQs
Found in Pages…Union. Unitary Patents can be obtained using the existing European patent application procedure and are enforceable throughout the participating member states in a single action brought before the new Unified…
The Australian High Court Upholds Patentability of Methods of Medical Treatment in Apotex v Sanofi-Aventis
Found in News…of the Court applied the principle of a process which does not produce a new substance but results in “a new and useful effect”. If the new result is “an…
The Royal Assent of the Finance Act 2016 brings “Patent Box II” into effect
Found in News…company (i.e., a group company, whether in or outside the UK), the new scheme pares back the amount of tax relief available. This change is to ensure that the tax…
Patent Box FAQs
Found in Pages…companies exists, one of those companies may be an Intellectual Property holding company which owns the rights and licences them to another company within the group, which is a trading…
UK Government publishes draft legislation on ‘Patent Box II’
Found in News…the existing Patent Box until 31 December 2016. – where R&D is undertaken by other companies on behalf of the beneficiary company, the extent to which the company can benefit…
New UK provisions for webmarking for Registered Designs
Found in News…products instead of patent numbers. This system benefits patent holders as it removes the difficulties associated with having to include the patent number on every new product, which could be…
Funding available through the Coventry & Warwickshire Innovation Programme
Found in NewsSmall and medium sized companies in Coventry & Warwickshire have the opportunity to obtain grants of typically between £25-50,000 to assist with costs relating to intangible assets (such as patents,…
Success at the Federal Court of Justice
Found in NewsThe Federal Court of Justice (Bundesgerichtshof, BGH) comments on the extent to which the installation of spare parts leads to a new production displacing the exhaustion effect. On 8 November…
The Final Twist: Rubik’s Cube Trade Mark Declared Invalid by EU Court
Found in News…applied to invalidate Seven Towns’ registration on the basis that the trade mark is a shape which is “necessary to obtain a technical result”, i.e. that the internal rotating capability…
Andrew Hey
Found in Team membersAndrew assists clients ranging from multinational electronics companies to higher education institutions and local SMEs, over a wide variety of different technological sectors falling under the electronic, computing and physics…
When is making the first move the best defence?
Found in News…November 2016, the District Court of Venice issued a decision on an action brought by Zeitneu GmbH, one of Tecnica Group’s competitors. The action sought to obtain a declaration of…
First permanent injunction in final first instance decision at the UPC
Found in News…that the patent was invalid in its granted form due to obviousness, but accepted that claims in an auxiliary request were valid and accepted that they had been infringed by…
IP funding launched for European SMEs
Found in News…in contact with an IP expert designated from a national IP office who will work with the company to review their business model, products/services and growth plans. SMEs can use…
Adam Hirst
Found in Team membersAdam has experience drafting and prosecuting UK and European patent applications covering a range of technologies, primarily related to telecommunications, consumer electronics, and lone-worker systems. Education & background Adam completed…
Modern Slavery Act
Found in Pages…part in stopping modern slavery in global supply chains. Withers & Rogers LLP (“W&R”) is committed to being a responsible business and complying with the requirements of the Act. Section…
No-deal Brexit: UK government issues guidance on EU Trade Marks
Found in News…obtain a corresponding UK trade mark application. The UKIPO will not notify existing EU trade mark application owners of the possibility of obtaining a corresponding UK trade mark application. For…
Software patentability in the US – Supreme court to have another go!
Found in News…the two parties. CLS Bank sought a declaratory judgement that the patents were invalid as they related to an abstract idea. In May 2013, ten CAFC judges ruled on the…
Overseas Registration of Patents, Trade Marks and Designs
Found in Pages…covering the UK cannot be registered. 11 Registration must be applied for within 12 months of filing the registered trade mark. If you would like to download a copy…
“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…
Business as usual for IP in Europe
Found in News…European Community registered designs – Continued Protection Like European Union trade marks, European Community registered designs are EU-wide rights. Once the UK leaves the EU, European Community design registrations will…
Ten reasons to welcome UPC
Found in Pages…has not previously considered trading. Equally, companies could consider licensing opportunities to third parties in countries in which patent protection has been obtained via the Unitary Patent, but no active…
Home or Away – All Due Care still required for the EPO
Found in News…in combination to treat a variety of neuropsychiatric and related disorders. An Examination Report was issued, in which a deadline for response was set. This deadline was extended and reported…
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…
China joins Hague International designs system
Found in NewsChina has now ratified the Hague Agreement for the International Registration of Industrial Designs. This means that from 5 May 2022 China can be designated in new international design applications…
Brazil joins Hague International Designs System
Found in News…provides a streamlined, cost-effective process for obtaining and renewing design protection in several countries. The addition of Brazil makes the Hague system truly global. To comply with Brazilian national law,…
Products of essentially biological processes deemed patentable
Found in News…This narrow interpretation of excluded subject matter is good news for the biotech industry. Carefully drafted claims should allow companies developing improvements to plant-derived products to protect their work as…
UK ratification of Hague Agreement
Found in News…and renewing design protection in several countries. At present, design protection can be obtained in the UK through national registered design applications, registered community (EU) designs and international designs designating…
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…
Dosage regime relief!
Found in News…invalid due to a lack of inventive step. In short, the Court of Appeal was of the view that the skilled person would have tested a 5mg dose of tadalafil…
Medical devices left out in the cold
Found in News…a patent application for a dialysis membrane. The membrane itself was known. The applicant was attempting to get patent protection based on its new use in dialysis for the treatment…
Marie-Claude Pellegrini
Found in Team members…patent applications, enforcing patent rights, managing and auditing patent portfolios, freedom-to-operate opinions, litigation in relation to patent infringement and validity, including opposition and appeal proceedings at the European Patent Office,…
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…
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 ©…
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…
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…
The EPO’s Unitary Patent adjusted fee proposal
Found in News…response to committee meetings and comments from delegations, the adjusted proposals have opted to forgo use of the EPO fees during the early years. Instead, the new proposals use a…
London Taxi Company loses Black Cab case in the Court of Appeal
Found in News…LTC and a victory for FRN and Ecotive, as well as other rival companies, who can now freely manufacture and release similar black cabs without fear of being held liable…
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…
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…
Outstanding Benefit and Multinational Companies
Found in News…interestingly, Patten LJ went on to state that “a straightforward comparison of profitability may be sufficient, in the case of a much smaller company, to satisfy the test of outstanding…
Legal Notices
Found in Pages…All rights over the content of this website are owned by Withers & Rogers LLP. Withers & Rogers is a trading name of Withers & Rogers LLP, a limited liability…
Understanding induced infringement in the US after Limelight v Akamai
Found in News…Akamai Technologies Inc. was the exclusive licensee of a patent for a content delivery network (CDN) process. Limelight Networks Inc. was also operating a CDN. However, in Limelight’s CDN, one…
UK companies still overpaying corporation tax
Found in News…of value claimed was by large companies in 2017-2018, despite a larger portion of small (and micro) companies signing up for the scheme. Manufacturing companies, and those based in the…
Patent Term Extension
Found in News…result of the Northern Ireland Protocol. Accordingly, SPC protection in the UK can now be obtained for either or both of these regions, depending on the type of MA obtained,…
Food & Drink
Found in Pages…patent strategy for selling products directly to market, licensing to commercial partners companies, and/or obtaining tax relief through the Patent Box scheme. Our specialist team of chemists has experience in…
Sufficiency and chocolate teapots: Illumina v MGI
Found in News…Illumina’s patents to be valid and infringed by various MGI sequencing systems, with a fifth patent held to be infringed but invalid for obviousness. The High Court reviewed the principles…
Are the public interested in patent infringement? Not according to the supreme court
Found in News…Canadian patent was declared valid and infringed. In the UK, the cross-undertaking came into play, providing compensation from Servier to Apotex for lost sales of 3.6 million packs of perindopril…
Amazon Bombs: Lush Successful Against Amazon in Keyword Advertising Case
Found in News…Amazon did not refer to LUSH in conjunction with the products for sale on its website did not provide it with a valid defence. In particular, the Court said that…
