IP, Industry and Case Law

A recent decision of the Court of Appeal to overturn the High Court ruling in an ongoing dispute between GSK and Vectura Limited has once again brought the validity of 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 […]

Canada has ratified the Hague Agreement for the International Registration of Industrial Designs. Canada can be designated in new Hague design filings from 5 November 2018. The Hague Agreement enables applicants to seek protection of registered designs/design patents in 69 territories (that includes all European Union member states, USA, South Korea, Japan, Russia and the […]

On 7 June 2018 in the case of Scotch Whisky Association v Michael Klotz[1], the Court of Justice of the European Union (CJEU) was asked to determine whether use of the term “Glen” by Michael Klotz, a producer of a German whisky called “Glen Buchenbach”, indirectly and unlawfully infringed the Protected Geographical Indication (PGI) “Scotch […]

Further to the news of the ratification of the Hague Agreement by the UK on 13 March this year, the World Intellectual Property Office (WIPO) has published the following declarations with further information for applicants wishing to register their designs in the UK and abroad in a single application: –  International registered design applications designating […]

For a product to qualify for SPC protection, the product must be “protected” by a basic patent in force.  The CJEU has previously stated that “protected” means something more than simply falling within the granted claim scope.  In a referral from the High Court of England and Wales in Teva v Gilead (C-121/17), Mr Justice […]

The Chartered Institute of Trade Mark Attorneys (CITMA) has elected Tania Clark, partner in Withers & Rogers’ Trade Mark group, as its new President. Tania commenced her two-year term on 10 April 2018.

Earlier this year, the European Patent Office (EPO) published a decision allowing a petition for review (see R4/17), bringing the grand total of allowed petitions to eight, out of a total of 151 filed. As is evident from this small total, the petitioner rarely triumphs. In brief, a petition for review is a formal request […]

One of the requirements for obtaining SPC protection for a product is that the product must be subject to a marketing authorisation and the product must also be “protected” by a patent.  The CJEU ruled that the meaning of “protected” is narrower than simply infringing the claim, without saying where exactly the boundary between protected […]

Following a Decision of the Administrative Council of the European Patent Organisation (found here), it is now possible to pay the third year renewal fee for European patent (EP) applications up to six months in advance of the due date. Previously, with regard to all renewal fees due for an EP application, it was only […]

In June 2017, the European Patent Office (EPO) announced a freeze on inflation-based official fee increases for 2018. Instead, the EPO will selectively adjust certain official fees, effective from 1 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 […]

Introduction Artificial intelligence (AI) is an interdisciplinary field of computer science with the goal of enabling machines to behave and reason in an intelligent manner.  Early approaches to AI centred on rule-based systems.  Such systems were configured to operate within highly constrained environments where the behaviour of the AI system was specified beforehand using formal […]

The UK has now ratified the Hague Agreement for the International Registration of Industrial Designs.  This means that from 13 June 2018 the UK can be designated in new international 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 […]

Following the UK IPO’s consultation[1] on patent fees, the UK IPO has decided to go ahead with a number of changes[2] to the fees for applying for patent protection and 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 […]

This week saw the first decision from the EPO Opposition Division related to the CRISPR-Cas9 genome editing technology.  The patent in question, EP2771468, which was granted to the Broad Institute, MIT and Harvard University was revoked after the filing of nine oppositions. The PCT application from which EP2771468 derived was filed naming Broad, MIT and […]

The Russian Federation has ratified the Hague Agreement for the International Registration of Industrial Designs. Russia can be designated in new Hague design filings from 28 February 2018. The Hague Agreement enables applicants to seek protection of registered designs/design patents in 67 territories (that includes all European Union member states, USA, South Korea and Japan) […]

A 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 amending a claim to exclude subject that: a) is disclosed in an earlier patent document under Article 54(3) EPC; b) represents an accidental anticipation in […]

On 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. The notice confirms that as of the date of withdrawal of the UK from the EU (expected to be 29 March 2019) and subject to […]

Earlier this year the Court of Appeal dismissed an appeal by Professor Ian Alexander Shanks (Shanks) against an earlier dismissal of his appeal against the decision of Hearing Officer, Mr Julyan Elbro, dismissing his claim for employee compensation in favour of the defendants Unilever PLC, Unilever NV and Unilever UK Central Resources Limited (Unilever). The […]

At first glance, it seems straightforward to assign intellectual property rights from one entity to another.  A recent decision by the EPO’s Board of Appeal in T1201/14 (see here) shows that it can, and relatively often does, go wrong. According to European jurisprudence it is generally accepted that the right to claim priority arising from […]

Supplementary protection certificates (SPCs) (as provided under EU Regulation (EC) No. 469/2009) are intended to compensate patent proprietors for any potential loss of exclusivity due to the long regulatory approval procedures required to get new drugs onto the market. To this end SPCs can provide up to five years of patent term extension in relation […]

On 1 November 2017, the Court of Appeal upheld the ruling against The London Taxi Corporation Ltd (“LTC”) in favour of defendants Frazer-Nash Research Limited (“FRN”) and Ecotive Limited (“Ecotive”). LTC had argued that their UK and EU registered trade marks, which depict models of its taxis, were being infringed by FRN and Ecotive’s model […]

In July 2017 the Supreme Court judgment in the Actavis v Eli Lilly case (“Actavis”) changed the way we will assess the scope of patent claims in the UK (see here for an overview).  The Actavis judgment did not touch on whether the change to the way that scope of claims is determined for the […]

The 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 in April 2013. UK law provides for protection against groundless threats of infringement proceedings by the holder of a patent, trade mark, unregistered design right […]

Under 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 used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy […]

Webmarking Since 1 October 2014, patent holders have been able to better protect their patents through webmarks, a system whereby patent holders use a web address to mark their patented 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 […]

On 7 September, the European Commission released their position paper on the treatment of all intellectual property (IP) rights post Brexit. IP rights include EU trade marks, registered and unregistered 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 […]

Inventors and applicants are often surprised to learn that the European Patent Convention (EPC) does not formally require a patent application to include experimental data. However, it has long been understood that any technical effect of an invention can only be relied upon to support an inventive step to the extent that the application as […]

The long running patent dispute between Actavis and Eli Lilly (Lilly) has now reached its zenith, with the UK Supreme Court decision issued 12th July (see here).  The Supreme Court allowed Lilly’s appeal and held that Actavis’ products directly infringe Eli Lilly’s patent in the United Kingdom, France, Italy and Spain.  This momentous decision has […]

Victoria Plum Ltd v Victorian Plumbing Ltd [2016] EWHC 2911 was a trade mark case in which the issues of keyword advertising and honest concurrent use were intertwined.  The case highlights the fact that the ‘honesty’ of trade mark use can differ between the online and offline environments. The case also saw a successful counterclaim for […]

Please note: This High Court decision has been overturned and referred to the CJEU. Click here to read our latest update. In good news for pharmaceutical patent owners, the England and Wales High Court has confirmed here that an SPC is allowable for a compound that is not specifically identified in a patent but (a) […]

Tania Clark, partner and trade mark attorney said: “This decision is a blow for Nestle and its attempt to register a trade mark for the four-fingered shape of its KitKat chocolate bar, which began in 2010, has been rejected by the Court of Appeal. “The Court of Appeal’s decision means rival manufacturers such as Cadbury […]

It has been announced that the UK intends to ratify the Hague Agreement for the International Registration of Industrial Designs by 31st March 2018 and will be in a position to launch the service on 6th April 2018. The Hague Agreement enables applicants to seek protection of registered designs/design patents in over 66 territories through a […]

The UK High Court holds that there can only be one set of licencing terms that are fair, reasonable and non-discriminatory (FRAND) for a given situation, FRAND royalties should be based on a common portfolio benchmark rate for all licensees, and in this case a licence restricted to one jurisdiction is not FRAND. It is […]

Following UK Prime Minister, Theresa May’s speech of 17 January 2017 and subsequent comments, we now have greater clarity regarding the “bespoke” nature of the UK’s leaving of the European Union. There is no doubt, following her speech, that the intent of the UK executive government is that the UK will no longer be a […]

The use of numerical ranges and values to accurately describe the amount of ingredients present in a composition or formulation is a widely used approach in patent specifications, especially in the field of pharmaceuticals and formulation chemistry.  Patentees need to clearly define the limits of various active ingredients, excipients and the like in order to […]

The UK’s Patent Box came into effect on 1 April 2013. Under the scheme UK companies are able to pay a reduced rate of Corporation Tax on certain profits derived from patented technology. HM Revenue & Customs (HMRC) published its first report¹ on the uptake of the scheme on 14 September 2016, and that report […]

In frustrating news for the biotech industry, we can report that the European Patent Office (EPO) has decided to suspend all examination and opposition proceedings for inventions concerning plants/animals that are obtained by means of essentially biological processes.  This follows a recent non-binding Notice from the European Commission (EC) regarding the interpretation of certain aspects […]

On 10 November 2016, the Court of Justice of the European Union (CJEU) decided that the famous Rubik’s Cube could not be a registered trade mark. This marks the end of a ten year tussle over the registrability of one of the world’s best-selling toys of all time. The trade mark in question is Seven […]

The Enlarged Board of Appeal (EBoA) of the European Patent Office (EPO) has today indicated in case G1/15 that the so-called issue of “poisonous divisionals” has been put to rest.  The background context to this is that there had been concerns that it might be legally possible for a divisional patent application to be held […]

The Institute of Trade Mark Attorneys (ITMA), the organisation, which represents the interests of the trade mark and design profession will be changing its name with effect from Thursday 24 November. Going forward the organisation will be known as The Chartered Institute of Trade Mark Attorneys (CITMA) following the grant of a Royal Charter back […]

In most jurisdictions a patent will not be granted until it has been examined and approved by the relevant patent office. This examination process is referred to as ‘patent prosecution’ and often entails multiple rounds of Examination Reports issued by the patent office and ‘responses’ filed on behalf of the patent applicant. Consequently, the patent […]

The contribution made by IP-led industries to the European economy has increased according to a second EU-wide study published by the European Patent Office (EPO) and the European Union Intellectual Property Office (EUIPO). The study has revealed that industries described as ‘IPR-intensive’ – those that file a high number of Community Trade Marks, Registered Design […]

When it comes to amending the scope of protection of your claims, the European Patent Office applies very strict requirements that any new scope of protection sought must have already been directly and unambiguously disclosed somewhere in the application as filed. There is one exception to this rule, undisclosed disclaimers.  They are ‘undisclosed’ because the […]

As of 1 July 2016, the European Patent Office (EPO) is aiming to increase the speed with which opposition proceedings are brought to a conclusion and thereby improve legal certainty for all parties concerned. The opposition procedure allows any person to centrally challenge the validity of a European patent within nine months of its grant […]

Earlier this month, the World Intellectual Property Office announced the addition of a new patent searching tool, which will allow users to locate International patent applications based on chemical structures.  Whilst perhaps not of interest to many, this facility has the potential to revolutionise the searching of chemical subject matter. Making it an exciting addition […]

The Patent Box scheme was introduced by the UK Government in April 2013 to allow UK companies to pay less Corporation Tax on profits generated from the sale of patented products and from the use of patented processes and machinery. Shortly after its introduction, the scheme faced criticism from foreign governments.  This led to a […]

What is changing? The UK Intellectual Property Office (UK IPO) is introducing a package of changes to the Patents Rules. The Patents Rules 2007, together with the Patents Act 1977, govern the patent system in the UK. The Rules set out the procedural and administrative requirements which apply to patents and patent applications. None of […]

The UK’s Patent Box regime came into force on 1 April 2013, through which companies are able to pay a reduced rate of UK Corporation Tax on profits derived from patented technology. More than three years after its introduction, HM Revenue & Customs have, for the first time, published a report on the uptake of […]

From 1 October 2016 the UK IPO fee structure for registering designs in the UK will change. For many years applicants have had the option of filing one or several designs within a single application but the cost of filing lots of designs to protect various aspects of a product has been prohibitive for many, […]

Withers & Rogers former Chairman Karl Barnfather was delighted to moderate the opening panel session, on the Implications of Brexit and the UPC, to the MIP European Patent Reform Forum in Munich on Tuesday 6 September 2016.   On the panel was Margot Fröhlinger of the European Patent Office and Professor Tilmann of the University of […]

T-518/13 Future Enterprises v EUIPO Can ownership of a family of trade marks help to prove infringement? According to the EU’s General Court, the answer is yes. In this case, McDonald’s were able to invalidate a third party’s registration for MACCOFFEE. The Court held that where a party owned a set of earlier registrations, all […]

The Court of Appeal has handed down its decision in Cartier International and Others vs BSkyB and Others [2016] EWCA Civ 658 and has upheld the High Court’s decision. Our 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 […]

With the implementation of the Intellectual Property Act 2014, the UK Intellectual Property Office (UK IPO) received increased powers with respect to its Opinion Service. Thirty months later, we have delved into the cases that have been heard to look at the effect the revamp has had. It serves as a timely reminder of a […]

Supplementary Protection Certificates (SPCs) provide valuable patent term extensions that compensate both the pharmaceutical and agricultural industries for the delays suffered in bringing their products to market as a result of complex regulatory processes. Despite sometimes requiring similar levels of regulation to pharmaceutical products, medical devices are still not entitled to SPC protection. Whilst this […]

British American Tobacco & others v Department of Health [2016] EWHC 1169 This case concerns the introduction of plain packaging legislation for tobacco products in the United Kingdom.  The decision was handed down on 19 May ahead of the introduction of the Packaging of Tobacco Products Regulations 2015 (“the Regulations”) on 20 May, the UK’s […]

Stretchline Intellectual Properties Ltd v H&M Hennes & Mauritz UK Ltd [2016] EWHC 162 (Pat), 21 January 2016 Following a long running dispute involving Stretchline’s patent for a tubular fabric composition, this recent High Court decision explores remedies that are available for alleged infringement following a settlement. This decision provides useful guidance on the finality […]

A “RAW” Deal for H&M in Trade Mark Infringement Decision? Hague Court of Appeal March 2016 Case Comment The Hague Court of Appeal has found H&M liable for infringement of G-Star Raw’s trade marks in the word RAW. In 2011, G-Star Raw (“G-Star”) brought trade mark infringement proceedings against H&M, the Swedish fashion company, after […]

In the UK, deciding whether or not an invention belongs to an employee or an employer is governed the UK Patents Act 1977. Whilst it can be generally assumed that an invention which is produced during the course of normal duties of the employee belongs to the employer, it is interesting to consider how the […]

A 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 Lilly’s patent on the basis of a lack of inventive step and insufficiency. Lilly’s patent relates to the second medical use of atomoxetine in the […]

With effect from Wednesday 23rd March there will be a number of name changes implemented in relation to Intellectual Property organisations and rights. ·    The Office for Harmonisation in the Internal Market (OHIM) will be known as the European Union Intellectual Property Office (EUIPO). ·    Community Trade Marks (CTM’s) will change to EU Trade Marks. […]

PMS International Group Plc (Respondent) v Magmatic Limited (Appellant)  [2016] UKSC 12 This case came before the Supreme Court following earlier proceedings at the High Court and Court of Appeal. Two designs were at issue (pictured, left to right): the ‘Trunki’, Magmatic’s Registered Community Design (RCD), and the Kiddee Case by PMS, in various iterations, […]

Case C-396/15 P Shoe Branding Europe BVBA v Adidas AG European Court of Justice, 17 February 2016 The European Court of Justice (ECJ) has upheld a decision of the General Court allowing Adidas to oppose the registration of a trade mark consisting of two parallel stripes placed on the side of footwear. Shoe Branding Europe, […]

The UPC Preparatory Committee has today announced the finalised court fees, including some notable changes. Now that much of the procedure for opting out of the UPC has been finalised, the committee has recognised that the administrative burden involved in processing a request to opt out would not be as complex as first anticipated.  As […]

The UK’s Prime Minister David Cameron recently announced that a referendum will be held on 23 June 2016 to decide whether the UK will remain a member of the European Union. It is widely expected that the UK will vote to remain in the EU, but we are happy to confirm that, regardless of the […]

The 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 2016. The changes do away with some of the idiosyncrasies which have made European trade mark law less accessible to the non-professional public. Most saliently, […]

It has been common drafting practice to include both pre-EPC 2000 Swiss-type claims and post-EPC 2000 purpose-limited second medical use claims in the same patent application.  Once again, whether this is allowable or not, has been considered by the EPO Boards of Appeal. At the start of last year we reported to you that the […]

Patent Box is a UK tax scheme whereby UK companies pay a reduced rate of corporation tax on profits generated from patented technology.  Shortly after the scheme came into effect in April 2013 it came under attack from foreign governments and this led to the Organisation for Economic Co-operation and Development (OECD) issuing its requirements […]

Our 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 the world’s best known companies in recent times, changes in US practice that affect the patentability of biodiagnostics, and recent developments in China to strengthen its […]

A government consultation opened on 22 October on the Patent Box Scheme and will run until December 4 2015. The aim is to ensure that the UK’s tax regimes comply with the Organisation for Economic Cooperation and Development’s (OECD) recommendations. According to patent attorney, Michael Jaeger: “The launch of the consultation is welcome news as […]

Wobben Properties, the IP holding company of Germany’s Enercon – the world’s 4th largest wind turbine manufacturer, holds a European patent on Enercon’s Storm Control technology relating to a method of operating a wind turbine. Wobben asserted that Siemen’s High Wind Ride Through (HWRT) technology installed in turbines in the UK infringed their patent, to […]

Last year we reported the decision of the UK High Court in the case of Actavis v Lilly, concerning the anti-cancer drug pemetrexed disodium (see here). To recap briefly, the UK High Court ruled that Actavis’ pemetrexed dipotassium product did not infringe Lilly’s patent directed to pemetrexed disodium either under direct infringement, or under indirect […]

The CJEU has set out criteria to determine when the owner of a FRAND encumbered patent may seek an injunction when the owner is in a dominant market position. Significantly, a patent owner in that position is now required to offer a licence at a specific royalty to the infringer before seeking an injunction. This […]

The EPO recently announced slight changes (found here) to the procedure regarding Rule 71(3) EPC communications, which allows an applicant a final opportunity to amend or correct their application before grant. Prior to 1 July 2015, when an applicant responded to a R71(3) communication with amendments, a new R71(3) communication had to be issued if […]

In the recent case of Smith & Nephew Plc v ConvaTec Technologies Inc (see here), the Court of Appeal issued an interesting decision concerning how the boundaries of a range in a claim should be interpreted. In a surprise move, they concluded that a claimed range of “between 1{e27634494e39db391c4a3c1babcce9c96667e0da0c02f00a98e80c871bbff07c} and 25{e27634494e39db391c4a3c1babcce9c96667e0da0c02f00a98e80c871bbff07c}” of an agent should […]

Please 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 the publication interesting. If you would like to discuss any of the issues raised in the magazine or any intellectual property matter, please contact us. […]

The European Court of Justice (ECJ) has ruled that the shape of the famous Lego man is still a protected trade mark after a rival firm challenged the registration. In September 2010, the ECJ rejected Lego’s appeal to protect a trade mark registration for its eight-studded bricks following a legal challenge brought by rival company, […]

In a recent decision the Court of Appeal upheld the finding of the Patents Court that the claimant, Astra Zeneca (AZ), should pay £27 million in damages to the defendants Krka and Consilient, as settlement of a cross-undertaking that AZ agreed to, as part of an interim injunction. This is said to be the largest […]

Where an undertaking has no paying customers in the UK for goods sold under a mark and therefore no goodwill, can a claim for passing off succeed on the basis of the mark’s reputation alone? This was the focus of a recent Supreme Court decision, a matter, as the presiding judge Lord Neuberger reflected, “of […]

In ongoing UK High Court litigation between Warner-Lambert and Actavis, Mr Justice Arnold has taken the unprecedented step of granting an order mandating the National Health Service (NHS) to issue guidance to doctors and pharmacists that the drug pregablin must only be prescribed for the treatment of neuropathic pain (a patented indication) under the brand […]

A streamlined system for protecting industrial designs globally has been bolstered by the addition of two major markets – the US and Japan. With effect from 13 May 2015, the US and Japan have become official members of the Hague system, which allows applicants to protect their industrial designs in multiple countries simultaneously and cost-effectively. […]

Please note that an important update regarding this case law can be found here. In good news for the biotech industry, the Enlarged Board of Appeal ruled in “Tomato II” and “Broccoli II” cases (G2/12 and G2/13) that the patentability exclusion for essentially biological processes does not extend to the products of those processes. By […]

In an unprecedented decision Mr Justice Arnold has ordered disclosure by a patent proprietor, TickeToGo Limited, to an alleged infringer, The Big Bus Company Limited, of patent licences issued by the patent proprietor, prior to commencement of any patent infringement proceedings between the two parties. This decision may break down the walls of secrecy that […]

Elizabeth Swan, Senior Associate in the Withers & Rogers Life Sciences and Chemistry team, will today (Monday 27 April) be attending the opening of the GE Healthcare Innovation Village. She will be attending as one of a number of leading life science specialists from industry and academia. GE Healthcare is setting up the Innovation Village […]

Withers & Rogers is pleased to announce the promotion of Denis Keseris to Partner as of 1 April 2015. Denis is a patent attorney in our Electronics, Computing & Physics group. He joined the firm in the London office in 2012 and specialises in information and communications technology, with a particular focus on optical and […]

A recent High Court case (G-Star Raw CV v Rhodi Ltd & Others [2015] EWHC 216 (Ch)) has provided helpful guidance on the assessment of unregistered design right infringement in the UK. This case, one of few fashion designs cases that has reached the High Court in recent times, saw G-Star, a leading European denim […]

The Enlarged Board of Appeal has recently given guidance on the extent to which amendments should be examined for clarity in EPO opposition proceedings in its decision G 3/14 (see here). In a decision that will be welcomed by patent proprietors (but not opponents), the Enlarged Board decided that the clarity of an amendment to […]

In addition to protecting software functionality through obtaining patents, it is also advisable to take the following steps to help deter and or prove copying of your code: • Machine code distribution The distribution only of machine code executed directly by a computer’s processor avoids the need to present higher level code that is more […]

A recent decision from the EPO has confirmed that medical devices cannot be protected using second medical use claims. T773/10 concerns an appeal from an Examination Division decision to refuse 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 […]

The Hague System is administered by the World Intellectual Property Office (WIPO) and allows a single registered design application to be made that can designate several countries, instead of filing separate design applications in multiple countries. On 13 February 2015 the US and Japan will deposit their instruments of accession (by the Geneva Act of […]

In decision C-364/13 the CJEU classified human parthenotes, the result of artificially stimulating human egg cells to divide, as being outside the definition of embryos.  This means that parthenotes, and the stem cells that form them, are not excluded from patent protection by the European Biotechnology Directive. Ethical issues reign over questions of whether the […]

The USPTO has recently issued guidelines for deciding whether a claim is eligible for US patent protection. The guidelines are welcomed by those considering patenting computer-implemented inventions in the US because they clarify the brief and unclear guidance issued shortly after the US Supreme Court’s Alice Corp. v. CLS bank International decision of 19 June […]

The EPO Board of Appeal decision T 1488/10 examines whether or not a feature in a figure of a prior art document can be measured to assert that a claim is not novel, if the figure appears to be to scale.   Previous case law on this matter generally indicates that schematic drawings, unlike construction […]

In the latest decision in the long-running dispute between Interflora and Marks and Spencer (‘M&S’), which concerns M&S’ use of the INTERFLORA trade mark in internet keyword advertising, the UK 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 […]

In T1570/09, the Board of Appeal of the European Patent Office (EPO) had to decide on a claim set that included both a Swiss-type claim and a purpose-limited product claim under Article 54(5) EPC 2000. The two second medical use claims were formulated as follows (emphasis added). 1. Use of at least one member selected […]

A decision has been issued in the cases of Volvo Trademark Holding AB v OHIM (Case T-524/11 and Case T-525/11). The car manufacturer Volvo has failed in its most recent attempt to prevent the registration of two figurative trade marks containing the sign LOVOL.   The European General Court has agreed with the OHIM Opposition […]

Mr Justice Arnold sitting in the Chancery Division of the High Court of England & Wales has recently handed down his decision in Cartier, Montblanc and Richemont v BSkyB, BT, TalkTalk, EE and Virgin (Open Rights Group intervening) in which he granted orders requiring Internet Service Providers to block access to websites which infringe trade […]

In Les Laboratoires Servier & another (Servier) v Apotex Inc & others (Apotex) (see here) the Supreme Court ruled that patent infringement does not engage the public interest. It appears that the “illegality defence”, which relies on harmful effects on public well-being, cannot be used to avoid paying injunctive damages relating to potential patent infringement. […]

The 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 this article, originally published in the CIPA Journal in September 2014, Withers & Rogers Patent Attorneys Michael Jaeger and Nick Wallin discuss how one order […]

The 17th Draft of the Rules of Procedure of the Unified Patent Court was recently published and a marked up version can be found here. The Oral Hearing in respect of this new draft was held on 26 November 2014 at the Academy of European Law in Trier. We highlight below 7 of the most […]

The decision by Mr Justice Birss in the Patents Court in the case of Teva UK Limited and Teva Pharmaceuticals Limited (Teva) v Leo Pharma A/S and Leo Laboratories Limited (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 […]