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Status of assumed infringers intervening in appeals (G2/24 referral)

There has been a new referral to the European Patent Office’s Enlarged Board of Appeal which may result in a broadening of

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Low energy coffee

Spray-dried coffee and freeze-dried coffee powders are well-known staples in your local supermarket. Freeze-dried coffee has characteristic shard like grains, whereas spray-dried

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UK’s AI assurance platform – the latest addition to UK’s services industry sector

The UK Government has recently announced their plans to launch a new platform to provide AI assurance services. With a recent increase

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UPC decides on first doctrine of equivalents case

The first Unified Patent Court (UPC) decision (Plant-e v. Arkyne) discussing the doctrine of equivalents has recently published. In the decision, the

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UPC Court of Appeal clarifies when Opt-Outs can be validly withdrawn

Summary In a decision dated 12 November 2024 the Court of Appeal (“CoA”) of the Unified Patent Court has clarified that Art.

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“Clean label” foods

Only a decade ago, the primary focus of patents in the food industry seemed to be on increasing yields or producing the

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European Council approves revised designs protection package

The Council of the European Union has recently adopted two legislative acts under the design package: a revised directive on legal protection

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EU AI Pact – A preview to the success of the Act itself?

Back in 2023, we reported on the European Parliament passing the EU AI Act. Over a year later, on 1 August 2024,

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Benchmarking new brands – a case of lookalikes

Benchmarking is commonplace within the retail market. This is the process in which a company compares its products and methods with those of the most successful companies in

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“Blanding”- the loss of value in fashion logos

What is “Blanding”? Blanding is the paradox of branding: it refers to the repetitive and growing trend of brands adopting similar minimalist

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T56/21 – No legal basis for requiring description amendments

Key points Last year, my colleague Ross Chapman reported the latest on the ongoing description amendments saga at the EPO (link). This

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European Inventor Awards 2024 – A celebration of women in Life Sciences

The European Patent Office (EPO) annually recognises exceptional individuals whose inventions are making a significant contribution across sectors to drive technological progress,

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Preliminary Opinion on G 1/23

Previous case G1/92 referred questions to the Enlarged Board of Appeal regarding whether the chemical composition of a product is made available

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Impact of counterfeiting on consumer goods brands

As online sales rise and technology advances, counterfeiting of goods is becoming increasingly problematic for many brands. Counterfeit goods are imitations of

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When can an SPC be granted for combination medicinal products?

Opinion of the Advocate General regarding joined cases Teva II (C-119/22) and MSD (C-149/22) Two referrals have been made to the Court

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Romania joins the UPC today

Today, 1 September 2024, Romania joins the Unitary Patent system. This is the first territorial extension of the Unitary Patent since it

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How should patentability be assessed in the era of increasing AI-generated content? USPTO releases request for public comment

Artificial intelligence (AI) is a powerful tool which can, and most likely already has, impacted tasks you perform on a day-to-day basis.

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UKIPO Designs Practice – products consisting of multiple components

There has long been a debate as to the extent to which UK registered design law can protect a product formed of

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Can you get a US patent for an AI-assisted innovation? New Guidance released by the US PTO

With recent advances in artificial intelligence (AI), there has been discussion around the world as to whether innovations assisted by AI are

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Successes at the UPC

The Court of First Instance of the UPC, in decisions dated 4 and 31 July 2024, ordered the revocation within the relevant

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Start-Ups and SMEs – Get funding for an intellectual property audit

The UK Intellectual Property Office (UKIPO) has reintroduced its IP Advance scheme which enables eligible start-ups and SMEs to receive funding for

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UPC Central Division revokes an antibody patent in landmark first decision on the merits

On 16 July 2024, the UPC Munich Central Division issued its first decision on the merits in the dispute between Sanofi and

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Regression toward the mean: UK Court of Appeal looks for harmony with the European Patent Office on Artificial Neural Networks

Not quite eight months have gone by since, at a snap, the High Court judgement in favour of Emotional Perception AI Ltd

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Sustainable consumer goods and IP

In an era where sustainability and environmental consciousness are increasingly critical to consumers, companies are leveraging IP to innovate, protect, and promote

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The UPC in numbers: one year on

Since the UPC opened its doors and the first Unitary Patents were filed in the summer of 2023, the unitary route for

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New referral to the Enlarged Board of Appeal on claim interpretation

A European Patent Office (EPO) Board of Appeal has recently referred three questions to the Enlarged Board of Appeal to seek clarity

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UPC’s first infringement judgement has issued

On 3 July 2024, the Local Division in Düsseldorf issued the UPC’s first ever full judgement on an infringement action in the

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UPC news – the Milan section opens its doors

As of today (27 June 2024) the Milan section of the central division of the Unified Patent Court (UPC) has officially opened

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Brand building, trade marks and the fashion industry – an overview

In the highly competitive fashion industry, protecting the uniqueness of a fashion brand and its products from pressure and copycatting by competitors

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Extension of UPC to Romania from 1 September 2024

The Unitary Patent system entered into force on 1 June 2023. In the first year, the European Patent Office received 28450 requests

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Romania to join UPC in Autumn 2024

On 11 April 2024, Romania published its ratification of the UPC Agreement. The ratification now needs to be deposited with the EU.

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First Court of Appeal decision issued on validity of UPC opt outs

On 4 June 2024 the UPC Court of Appeal provided their first decision on the validity of opt outs in the case

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Xiaomi vs HM (Beijing) Laser & Nc Development Co., Ltd (“HM Ltd”)

Case overview In the recent invalidity decision, the proprietor was HM Laser, a manufacturer of laser cutting machines. The Applicant was Xiaomi,

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Fast track patent programmes for green technology

The importance of green technology to society has seen the implementation a number of fast-track patent programmes for green technology by patent

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“And another thing…” UK IPO publishes updated AI Guidelines following last year’s Emotional Perception decision

Until late last year, the law relating to the patentability of AI-innovations at the UK Intellectual Property Office (UK IPO) had been

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EU trade mark registrations are no longer effective in Jersey

In a declaration in March 2024, as a part of the consultation on primary trade mark legislation, the Government of Jersey has

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Digital signatures on assignments are acceptable at the EPO

In a third (and we hope final) update on whether or not the EPO accepts digital signatures on assignments/licences/other agreements, we can

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The UPC in numbers – June 2023 to February 2024

The Unified Patent Court (UPC) has recently released updated details of the case load of the Court* since it commenced operations in

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Fee reductions for micro-entities – EPO announces new Rules providing broader fee reductions

The EPO has recently announced, among other fee changes, new Rules enabling specific types of small companies to claim a discount of

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February deadline for Retained EU Plant Variety Rights in the UK

Following the UK’s exit from the European Union (EU), Retained EU Plant Variety Rights were awarded to provide continuing protection in the

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“Just one more thing…” – UK IPO appeals recent UK High Court decision on patentability of artificial neural networks in the UK

Just as it looked like Sir Anthony Mann’s High Court judgement in the Emotional Perception AI case would be the last most

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“It’s been emotional” – UK IPO AI guidelines temporarily suspended and new statutory guidance on artificial neural networks following decision from the UK High Court

Sometimes things move very fast in UK patent law. Today, eight days after the England and Wales High Court decision overturning a

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The EPO returns to requiring handwritten signatures on assignments

Further to our previous bulletin reporting that the EPO were now accepting electronic signatures on assignments, a recent decision by an EPO

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Priority following consolidated cases G1/22 and G2/22

The Enlarged Board of Appeal’s recent decision in consolidated cases G1/22 and G2/22 has greatly simplified the consideration of priority entitlement at

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EPO Board of Appeal aims to clarify the correct approach to claim interpretation when assessing patentability

In Opposition and Appeal proceedings at the EPO, the questions of when and how to turn to the description to interpret the

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The EPO’S guidelines and machine learning

The EPO has published its Guidelines to provide guidance on various proceedings before the EPO, such as for the search and examination

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Training data in patent specifications – the direction of travel

With the recent expansion in artificial intelligence (AI) and machine learning technologies, and an associated rise in the number of AI related

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EPO Board of Appeal highlights difficulties in establishing inventive step in machine learning cases

A recent decision from the EPO’s Technical Boards of Appeal (T2803/18) highlights a pitfall for applicants wishing to patent systems and methods

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Assessing patentability in artificial intelligence patent applications at the EPO

As artificial intelligence (AI) continues to advance and transform various industries, the protection of AI-related inventions through patents becomes increasingly important. Artificial

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China’s consultation proposes significant amendments to its trademark law

China is proposing to overhaul its trade mark law, largely in an effort to combat the scourge of bad faith filings. On

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The end of the EPO’s ten-day notification rule

The EPO’s plans to abolish the 10-day notification rule will come into force on 1 November 2023. With just a month to

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UKIPO guidance update: Address for Service

The UK Intellectual Property Office (IPO) has recently updated its guidance relating to Address for Service (AFS) in the UK. The guidance

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Proposed changes to US patent law – patent eligibility, inter partes review and post grant review

In June 2023, the US Senate proposed changes to US patent law to address patent subject matter eligibility, inter partes reviews and

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T 56/21 – The latest in the EPO’s ongoing saga of description amendments.

In a previous bulletin we reported on the EPO’s ever more onerous requirements for amending the description to conform with any amendments

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Plant Breeders Rights – action required on Retained EU Plant Variety Rights in the UK.

Following the UK’s exit from the European Union (EU), Retained EU Plant Variety Rights were awarded to provide continuing protection in the

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G1/23 – A burdensome new referral to the EPO’s Enlarged Board regarding the state of the art.

Can a product be simultaneously available and unavailable to the public? In T 0438/19 , the Board grappled with questions regarding the criteria

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The EPO’s guidelines and machine learning.

The EPO has published its Guidelines to provide guidance on various proceedings before the EPO, such as for the search and examination

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The CJEU rules against second medical use SPCs

On 9 July 2020 the Court of Justice of the European Union (CJEU) handed down its decision in Case C-673/18, a referral

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Proposals for reform of the EU’s SPC system.

On 27 April 2023 the European Commission published proposals concerning supplementary protection certificates (SPCs) for medicinal products and plant protection products. SPC protection

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The UPC begins with revocation actions in the life sciences

On the 1 June 2023, the Unified Patent Court (UPC) opened its doors for business and some of the first customers were

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Initial thoughts after one week of the Unified Patent Court

After years in the planning, the Unified Patent Court (UPC) opened its doors for business on 1 June 2023, also bringing an

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New UPC Central Division location announced to be Milan

Jo Pelly, Partner, wrote recently about the Unified Patent Court’s division of work between its Central Divisions in the article: UPC Central Divisions

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The normalization and regulation of AI – IP protection now that AI has hit the mainstream

Of course, the first rule of writing any article is try not to include references that date it – when it comes

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UPC Central Divisions: How will work be split between Paris and Munich?

The Unified Patent Court (UPC) has a complicated Court structure, including a Court of First Instance made up of Central, Local and

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2023 Changes to the EPO Guidelines – Section F-IV, 3.4 – Inconsistencies

Background One of the more unique, and often debated, aspects of prosecution before the EPO is the requirement that the description and

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EPO Notice regarding the 10 day rule

The EPO have published further information in a Notice in the Official Journal dated 6 March 2023 in preparation for the abolition

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EPO Notice regarding the 10 day rule

The EPO have published further information in a Notice in the Official Journal dated 6 March 2023 in preparation for the abolition

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Return of the Big Mac: EUIPO Board of Appeal flips decision of Cancellation Division

In 2019, the EUIPO’s Cancellation Division raised some eyebrows in the trade marks world when they revoked in full the BIG MAC

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G2/21.

The Enlarged Board of Appeal of the European Patent Office issued the decision in referral G2/21 on 23 March 2023. This referral concerned the admissibility of post-published evidence in the assessment of inventive step.

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EWHC 178 (IPEC) between Marks and Spencer PLC and Aldi Stores Limited.

Following an earlier dispute over a trademark relating to a certain caterpillar cake, Marks and Spencer PLC (M & S) and Aldi

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Increases in the European Patent Office’s Official Fees.

The EPO are increasing their official fees on 1 April 2023. This fee increase is unusual in that the EPO has historically raised its fees every two years.

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EPO Board of Appeal highlights the difficulties in establishing inventive step in machine learning cases.

A recent decision from the EPO’s Technical Boards of Appeal (T2803/18) highlights a pitfall for applicants wishing to patent systems and methods

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Changes to the EPO Guidelines for Examination.

The EPO introduced the latest version of the Guidelines for Examination on 1 March 2023. Some of the revisions are highlighted below.

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Patentability of AI at the EPO: Is the Dust Settling?

A recent decision from the EPO’s Boards of Appeal (T 0702/20) provides a practical example of where the boundary lies in terms of

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BREAKING NEWS: The UPC is due to open on 1st June 2023.

After years of uncertainty in the timeline of the Unified Patent Court (UPC), it has just been announced that Germany will ratify

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BREAKING NEWS: The UPC is due to open on 1st June 2023

After years of uncertainty in the timeline of the Unified Patent Court (UPC), it has just been announced that Germany will ratify

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Clinical trials and prior disclosure – a difficult balancing act for patentees.

The European Patent Office (EPO) has recently ruled that patients in a clinical trial were not members of the public such that

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Change to compliance period of UK divisional applications.

The way of determining the compliance period of a UK divisional application is changing on 1 May 2023. From 1 May 2023

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EPO confirms that practice of conducting oral proceedings by videoconference will continue, including before opposition divisions.

The EPO has recently issued a decision confirming that oral proceedings before examining divisions, the Legal Division, the Receiving Section and now,

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UPC Announces Two Month Delay to Start Date

The Unified Patent Court (UPC) have today announced that the start of the Sunrise Period for the new UPC is being delayed

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EPO announces transitional measures for the Unitary Patent to encourage an early uptake

As we wait to see if the previously indicated start date for the sunrise period of the opening of the #UnifiedPatentCourt is

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EPO introduces systematic top-up search for earlier national rights.

As of 1 September 2022, the EPO are providing a new, free of charge, service that involves carrying out a top-up search

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From the G 2/21 preliminary opinion.

Plausibility: Insights from the G 2/21 preliminary opinion The EPO’s Enlarged Board of Appeal (EBA) referral G 2/21 will hopefully clarify the

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The “10 Day Rule” is Going.

The Chartered Institute of Patent Attorneys (CIPA) has reported that the Administrative Council of the EPO passed a package of rules, on

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Brazil one step closer to joining Hague system for International Designs.

Registered design protection is an effective way of protecting a product’s market share from similar looking competing products and obtaining registered designs can significantly improve a company’s position in case a dispute arises.

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UPC Roadmap Published

The Preparatory team for the Unified Patent Court (UPC) has just issued an ‘implementation roadmap’ outlining the key activities and milestones of

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The art of the possible – UKIPO publishes its AI patent guidelines.

The fading of summer is often one of those times to finish off all of those tricky projects that have built up.

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New US Trade Mark Application in the blocks for Usain Bolt.

It has been almost exactly five years since the legendary sprinter Usain Bolt last took to the track: in fact, I was

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Montenegro to Become the Thirty-ninth EPC Contracting State.

For some time now, there have been 38 EPC member states. However, from 1 October 2022, Montenegro (ME) will become the 39th

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AI inventorship in the UK – Consultation says “no”.

Just as the days (in the UK at least) start getting shorter the UK government has published its response following the consultation

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AI inventorship: snakes and ladders at the Australian courts.

Whilst the dispute continues as to who (if any) among the Artificial Intelligence (AI) “DABUS” and its creator Dr Stephen Thaler can

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Updated UPC timeline just announced

A few months into the Provisional Application Phase, the Unified Patent Court (UPC) is definitely gaining momentum. Judges are being interviewed and

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Updated UPC timeline just announced.

A few months into the Provisional Application Phase, the Unified Patent Court (UPC) is definitely gaining momentum. Judges are being interviewed and

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China to join Hague system for International Designs.

Registered design protection is an effective way of protecting a product’s market share from similar looking competing products and obtaining registered designs

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Electronic signing of assignments.

Assignment documents filed electronically may now be signed using ‘qualified electronic signatures’. Previously Previously, assignments, licences and other agreements for recordal were

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The UPC moves another step closer: The Provisional Application Phase Has Begun!

The Provisional Application Phase (PAP) of the Unified Patent Court (UPC) has finally started! Austria deposited their ratification of the PAP-Protocol on

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The UPC moves another step closer: The Provisional Application Phase Has Begun!

The Provisional Application Phase (PAP) of the Unified Patent Court (UPC) has finally started! Austria deposited their ratification of the PAP-Protocol on

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UKIPO acknowledges the possibility of a Formstein defence.

Ever since the Supreme Court shook up the patent landscape in the UK with their decision in Actavis v Eli Lilly there has

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Plausibility and Post-Published Evidence (G2/21).

The Enlarged Board of Appeal of the European Patent Office has been challenged with a new referral (G2/21) concerning the admissibility of

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The UPC – Should I opt out my patent or not?

The new Unified Patent Court (UPC) is expected to open its doors in late 2022 or early 2023. The UPC will be

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Austria brings the UPC a step closer

We’ve known for a while that the Unified Patent Court (UPC) was getting closer to becoming a reality after a very bumpy

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In-Person Oral Proceedings are the Gold-Standard

The Enlarged Board of Appeal of the European Patent Office (EPO) has been grappling with the question of when videoconference oral proceedings

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Reheating The UPC

The UPC Preparatory Committee met on 27 October 2021, and it seems that preparations for the Unified Patent Court (UPC) are warming

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Trick or Treat? UK Government asks for views on AI inventorship

Hot on the heels of the UK Court of Appeal judgement in Thaler v Comptroller General of Patents (reported in our previous

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The Unitary Patent is coming

The European Unitary Patent is slowly entering the home straight. The Federal Constitutional Court in Germany rejected the constitutional complaint against the

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AI inventorship: dissent at the UK Court of Appeal?

The long running saga of the AI “DABUS” and its creator Dr Stephen Thaler reached yet another milestone this week with the

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Lego A/S v. EUIPO.

The Second Chamber of the General Court in Lego A/S v. EUIPO (Case T-515/19) have issued their decision to annul the decision

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Will the sun ever rise over the UPC?

The Unified Patent Court (UPC) reminds me of a soap opera story line where you are always wondering if two particular characters

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Decision of the Enlarged Board of Appeal in G4/19.

With no provision in the European Patent Convention (EPC) prohibiting double patenting, is the European Patent Office (EPO) nevertheless allowed to refuse

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Public Prior Use: What Can the Skilled Person See?

It is a well-known principle under UK patent law that any subject matter that the public can access without breaching a duty

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Upcoming deadline for filing UK applications.

The deadline for filing Plant Breeders’ Rights (PBR) applications based on EU Community Plant Variety Rights (CPVR) applications which were pending at

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Clarifications on EPO examination of data management systems and information retrieval.

The European Patent Office (EPO) has recently undertaken revisions to its Guidelines for Examination. Included in the changes, due to come into

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EPO Guidelines for Examination: Patentability of antibodies

The latest changes to the EPO Guidelines for Examination provide several updates to (i) the patent protection of antibodies, and (ii) the interpretation

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Updates to the EPO Guidelines for Examination: Patentability of plants and animals, human-derived cells, and methods of treatment by therapy

The latest changes to the EPO Guidelines for Examination provide several updates in relation to the patent protection of (i) plants and

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Clarifications on EPO examination of data management systems and information retrieval

The European Patent Office (EPO) has recently undertaken revisions to its Guidelines for Examination.  Included in the changes, due to come into

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EPO changes concerning inventor address information.

The European Patent Office (EPO) has recently published upcoming changes to the rules regarding the providing of inventor address information to the

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A Unified Approach to Unity

The EPO has recently published an advanced preview of the new Guidelines for the Examination which will come into force on 1

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Interim declaration unavailable on queries of patent infringement

In cases of UK patent infringement, the courts may grant a variety of remedies to successful claimants (including damages, court-ordered injunctions, and

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Changes to unregistered designs right after Brexit

Many designers rely on Unregistered Design Rights to protect their products in the UK and the EU. However, designers need to be

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Trade Marks and design rights after Brexit

This bulletin covers some important changes to trade mark and design rights in the UK that will take place on 1 January

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High Court confirms that an Artificial Intelligence cannot be named as an inventor

Last year, the UK Intellectual Property Office (UKIPO) rejected two UK patent applications (GB1816909.4 and GB1818161.0) on the grounds of an invalid

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T0161/18 – Sufficiency and Machine Learning at the EPO

In recent years, the European Patent Office (EPO) has made it eminently clear that European patents may be granted for machine learning

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Renewal fee increases in Australia

The Australian Patent Office will be changing various official fees for patents, trademarks and designs from 1 October 2020. Notably, patent renewal

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Neurim Overturned – CJEU severely restricts availability of second medical use SPCs

The Court of Justice of the European Union (CJEU) has ruled in Santen (C‑673/18) that a Supplementary Protection Certificate (SPC) cannot be

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Apportionment of costs at oral proceedings

Oral Proceedings are a common occurrence during the opposition procedure at the European Patent Office.  Importantly, these proceedings provide the patentee and

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Emson v. Hozelock: Public prior use and a “mere paper proposal”

On 8 July 2020, the Court of Appeal issued its decision in the Emson v. Hozelock case ([2020] EWCA Civ 871). The

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UK confirms non-participation in the Unified Patent Court

It was recently announced that the UK has notified the European Council that it has withdrawn its ratification of the Unified Patent

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Patentability of simulations – Decision of the Enlarged Board of Appeal for G1/19.

The thorny issue of the patentability (or otherwise) of inventions involving computer simulations at the EPO has been provided with an ending,

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The CJEU Confirms that Copyright Can Cover Products Designed to Achieve a Technical Result

When does a technical product become eligible for copyright protection? This is the question the Court of Justice of the European Union

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Criteria for basing SPCs on functional claims clarified by CJEU in Royalty Pharma

In the latest of a series of judgments concerning the interpretation of Article 3(a) of the SPC Regulation, the Court of Justice

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Reaffirmation of the Allowability of Technical Implementations of Business Methods at the EPO

On 3 April 2020, the Technical Board of Appeal of the European Patent Office issued a decision for Appeal T1749/14 against refusal

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Special reasons? Remittals from the EPO Boards of Appeal

One of the changes to the Rules of Procedure of the Boards of Appeal (RPBA) which came into force on 1 January

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The EPO rules that plants and animals exclusively obtained by essentially biological processes are not patentable

The Enlarged Board of Appeal (EBA) of the EPO has confirmed in decision G3/19 that plants, plant material or animals exclusively obtained

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Further Blow for UPC

In a further blow for the Unified Patent Court(UPC), the German constitutional court has today announced that the German ratification of the

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Changes to unregistered designs right after Brexit

Many designers rely on Unregistered Design Rights to protect their products in the UK and the EU. However, designers need to be

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Continued growth for UK filings at the EPO

The European Patent Office (EPO) has published its latest statistics for European patent applications in 2019. In addition to overall surges in

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Reconsideration Of Claims Previously Held Invalid Barred

In the latest instalment of a prolonged and litigious saga between Eli Lilly and Genentech, the UK High Court has ruled that,

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Description Amendments Required by the EPO

The EPO’s updated Guidelines for Examination for March 2021 introduces a significant change regarding amendments required to the description before a European

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DABUS applications refused by the EPO

As was widely reported last year, a series of patent applications has been filed in the name of Dr Stephen Thaler, for

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Draft of a new patent law in Germany

Although substantive law regarding the grant of patents is largely harmonized across Europe, post grant infringement and validity procedures differ from country

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BREAKING: Sky v SkyKick ruling from CJEU

The Court of Justice of the European Union (CJEU) has today issued its eagerly-awaited judgment in the SkyKick case no. C 371/18.

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The UPC: 2020 and beyond

As 2019 drew to a close, a statement was issued by the Chairman of the UPC Preparatory Committee, Alexander Ramsay.  As well

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UPC update: “U” for uncertainty

Previously, the main obstacle to implementation of the Unified Patent Court and Unitary Patent system was the ratification of the UPC Agreement