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Added matter at the European Patent Office

The European Patent Office (EPO) is strict in only permitting amendments during prosecution of European patent applications which are "clearly and unambiguously" derivable from the application as filed.  Any amendments which are not derivable from the application as filed are found to add matter.  In T 99/13, an EPO Technical Board of Appeal considered whether an amendment to the claims added matter.  

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20 June 2017 by Chris Bond

The UK Unjustified Threats Act receives royal assent

On 27 April 2017, the long awaited Intellectual Property (Unjustified Threats) Act received royal assent. The Act now requires secondary legislation before it is expected to take effect in October 2017. 

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14 June 2017 by Kate Selwyn

Triple combination SPC held invalid

In March 2017, the UK High court held that Merck Sharp & Dohme Corporation's (MSD) SPC for an anti-HIV triple combination product was invalid. 

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12 June 2017 by Dr Ryan Mitchell

Another raft of questions concerning patent term extensions (SPCs) referred to the CJEU

The CJEU has been bust recently answering questions concerning the SPC Regulation, which is aimed at providing a patent term extension in Europe, known as a supplementary protection certificate (SPC) which compensates patentees for the regulatory delays experienced in bring pharmaceutical products to the market.  

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08 June 2017 by Charlotte Teall

UK court grants declarations allowing biosimilar companies to “clear the way” of secondary patents

In the latest of a series of related judgements between the parties, the UK High Court has granted so-called "Arrow" declarations to Fujifilm Kyowa Kirin Biologics Company Limited ("FKB"), Samsung Bioepsis UK Limited, and Biogen Idec Limited (SB/Biogen) in respect of their biosimilar adalimumab product, thereby clearing the way of Abbvie's secondary patents.

Could this decision pave the way for other biosimilar companies to obtain similar declarations in the UK? 

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07 June 2017 by Charlotte Fox

The latest on the Unitary Patent (UP) and the Unified Patent Court (UPC)

For the unitary patent package (which includes a Unitary Patent and a Unified Patent Court structure) to come into effect, Germany, France and the UK must ratify the relevant agreements.  This is because it is a requirement that the three Contracting Member States with the highest number of European patents in force in the year before the agreement is signed ratify the agreement.  However, the fate of the unitary patent package is uncertain because of the UK's decision to leave the EU (of which the unitary patent package is a part through a procedure known as enhanced co-operation) and the forthcoming general election - we currently don't know whether the UK will ratify the package.

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05 June 2017 by Dr Jack Gunning

More trouble for the UPC

It is  reported that the German Federal Constitutional Court (BVerfG) has asked the German President not to sign the instruments of ratification of the Unitary Patent package until certain constitutional cases have been decided upon. This means that ratification of the UPC will be further delayed, at least until the cases are decided later this year.

 

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14 June 2017 by Dr Matt Barton

G1/15 – the death knell for poisonous divisionals

Executive summary:

The threat of poisonous divisional attacks at the European Patent Office has been creating uncertainty for some years.  The February 2017 reasoned decision of the EPO's Enlarged Board of Appeal in G1/15 offers welcome respite.  In summary, whilst this decision does not directly address the question of whether or not a divisional application can be cited against its parent (or vice versa), if we follow the reasoning in the decision, the concept of a "poisonous divisional" necessarily disappears. This decision will be a strong tool to dispose of poisonous divisional attacks.

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13 February 2017 by Lloyd Hoarton

Unitary Patent and Unified Patent Court

The unitary patent package includes a unitary EU patent and a new unified patent court for litigation of unitary patents and EPO-granted patents. While the package is not yet in force, the preparatory committee has stated that the package should come into effect during 2017.

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27 January 2017 by Dr Matt Barton

The impact of BREXIT on Intellectual Property

On 23 June 2016, the UK voted to leave the EU.  As you can imagine, the terms of the UK's exit from the EU will be the subject of complex negotiations between the UK and the remaining EU member states.

At the time of writing, the UK Government has not yet triggered Article 50 of the Lisbon treaty, the formal mechanism for leaving the EU, and this is unlikely to happen until 2017.  Triggering Article 50 starts an extendable two-year negotiation period for leaving the EU, so the UK appears likely to remain in the EU until at least 2019.

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18 January 2017 by James Cornford

UK Patent Box

Beyond securing the monopoly right to use an invention, how else can a patent be a useful asset to your business?  Just as R&D tax credits are available for companies that invest in creativity and innovation, so now is UK Patent Box relief.

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18 January 2017 by Stephanie Thomas

Brexit - European Community (EU) Designs and protection in the UK

As you have no doubt heard, on 23 June 2016 the UK voted to leave the EU. It will take some considerable time before this happens - we estimate at least two years from June 2016. So what impact does this have on European Community (EU) designs?

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27 June 2016 by James Cornford

Brexit – EU Trade Marks and Protection in the UK

As you have no doubt heard, on 23 June 2016 the UK voted to leave the EU. It will take some considerable time before this happens - we estimate at least two years from June 2016. So what impact does this have on EU trade marks and the protection of trade marks in the UK?

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27 June 2016 by Steven Wake

Brexit - “Business as usual” in Europe for Forresters clients - now and in the future

Despite the UK's decision to leave the European Union (EU), it is business as usual for clients of Forresters.

We are one of the few UK firms with a permanent presence in Europe. 

Forresters clients are with a firm that has taken and will take the necessary steps to allow Forresters to offer BOTH European IP services and UK IP services, regardless of the "Leave" result - www.forresters.co.uk.

If you are reading this and you are not already a client of Forresters and you would like to move your IP portfolio to Forresters, offering both European IP services and UK IP services, then please contact cleardirection@forresters.co.uk.

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24 June 2016 by Lloyd Hoarton

Brexit - The UK’s referendum to “Remain” or “Leave” the European Union (EU) – implications for our clients

On 23rd June, 2016 the UK population vote to "Remain" in the EU or to "Leave" the EU.  What would the two results mean for clients of Forresters?

Forresters has positioned itself with offices in the UK and Germany and staff from around the world, including non-UK EU citizens, to continue to represent our clients' interests.

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23 June 2016 by Lloyd Hoarton

New streamlined EPO opposition proceedings

The European patent office (EPO) recently announced that it is streamlining the opposition procedure, starting 1 July 2016.

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20 June 2016 by Jack Gunning

10 Facts about the EU Trade Mark Reform

10 things you should know about the recent EU Trade Mark Reform.

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18 May 2016 by Janette Hamer

The EU Trade Marks Change

The new EU Trade Mark Regulation came into force on 23 March 2016, bringing with it numerous changes to the EU trade mark system, one of the major changes being the way the OHIM - now the European Union Intellectual Property Office ("EUIPO") - handles the classification of goods and services. 

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24 March 2016 by Leona Ogier

EPO fee increases - 1 April 2016

The EPO announced increases to some official fees with effect from 1 April 2016 - see EPO Fee Increase Announcement

 

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29 February 2016 by Lloyd Hoarton

EPO applies the brakes to accelerated prosecution

In 2015 we looked at ways of speeding your patent application at the European Patent Office (EPO), here {link to CKF piece of 25 May 2015].  We recommended the prosecution acceleration programme, PACE.

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18 January 2016 by Jon Gowshall

EPO changes requirements for patent assignments

From 1 November 2016, the European Patent Office (EPO) will no longer accept patent assignment documents which are signed only by the assignor; both parties' signatures must appear.

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01 November 2016 by Charlotte Fox

New and Improved Trade Mark System for the European Union

We are pleased to announce that on 15 December 2015 the EU Parliament adopted the Trade Mark Reform Package. The package includes a Regulation (amending existing EU trade mark law) and a Directive (requiring member states to further harmonise national trade mark laws). The new Directive was published on 23 December 2015 and entered into force 20 days later (but member states have a 3 year term to implement most of the changes required). The amended Regulation came into force on 23 March 2015, 90 days after its publication on 24 December 2015. 

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30 May 2016 by Steven Wake & Kate Cruse

New and Improved Trade Mark System for the European Union

We are pleased to announce that on 15 December 2015 the EU Parliament adopted the Trade Mark Reform Package. The package includes a Regulation (amending existing EU trade mark law) and a Directive (requiring member states to further harmonise national trade mark laws). The new Directive was published on 23 December 2015 and will enter into force 20 days later (but member states have a 3 year term to implement most of the changes required). The amended Regulation will enter into force on 23 March 2016, 90 days after its publication on 24 December 2015.

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07 January 2016 by Kate Cruse

Preparing for the new Patent Box scheme

A new Patent Box scheme is due to commence on 1 July 2016 and, for some businesses, the new scheme will not offer the same generous corporation tax relief as the current scheme.

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08 June 2016 by Dan Rusby-Gale