Boult Wade Tennant
/de

image
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

image
“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

image
“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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
Insights: 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

image
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

image
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

image
New CJEU Referral requesting clarification of the term “human embryo” for patent purposes.

The patenting of inventions relating to human embryonic stem cells remains a controversial topic in Europe.

image
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.

image
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

image
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.

image
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

image
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.

image
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

image
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

image
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

image
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

image
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

image
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,

image
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

image
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

image
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

image
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

image
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

image
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

image
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.

image
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

image
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

image
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.

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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

image
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,

image
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

image
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

image
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

image
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

image
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

image
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

image
Insights: 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

image
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

image
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

image
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