WP IP

News and commentary on IP issues

Claiming Antibodies in European Patent Applications

Immune
In the past year, we have all heard more about antibodies in the general news than anyone ever desired. When we are exposed to pathogens, antibodies form a vital part of our immune systems in protecting us from deadly diseases.Isolated from the body or synthetically produced, antibodies can have many uses and are particularly important as therapeut...
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210 Hits

Defining Amino Acid and Nucleic Acid Sequences in European Patent Applications

BioSeq
Welcome guidance on the interpretation of claims to amino acids and nucleic acids defined by their sequences is provided by updated Guidelines for Examination at the European Patent Office now in force. New section F-IV-4.24 sets out that both amino acid sequences and nucleic acid sequences can be defined by "percentage identity". The percenta...
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220 Hits

Breaking News - DABUS granted Right to Appeal UK Judgement

We are delighted that the UK Court of Appeal has today granted Dr Thaler the right to appeal the DABUS decision, which involves the important issue of patentability of inventions created by AI systems. Williams Powell is handling the DABUS patent applications as well as the UK and EPO appeals. The cases had been rejected by the UK High Court. The o...
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  539 Hits
539 Hits

Brexit: UK address for service to be required for UK IP rights

The UK IPO have confirmed that from 1 January 2021, any new trade mark, design or patent applications or oppositions filed will require a UK address for service. This is subject to the parliamentary timetable allowing the change to be implemented. For the UK IP profession this is a very positive and welcome development. We would be delighted to ass...
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664 Hits

European Patent Office pushes use of video conferences in Opposition Division oral proceedings

 As of January 2021, parties will no longer have free choice on whether a hearing (oral proceedings) during examination or opposition is in person or via video conferencing before the European Patent Office (EPO). Video conferences will be the default. 12 months ago, we would have had to fight for a hearing (oral proceedings) to be held with t...
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  410 Hits
410 Hits

Register your designs and avoid the headaches and politics of unregistered rights

In the EU, a designer is able to benefit from both unregistered and registered design rights. Although cheap and easy to obtain, many designers have chosen to rely on registered designs only for the more important designs/products and fall back on unregistered rights for the rest. However, that may not be possible in certain situations as of 1 Janu...
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  478 Hits
478 Hits

File Direct for UK Trade Mark Protection

To get trade mark protection in the UK, you will, from today, need to file protection nationally and not rely on protection from a new EU application. You no longer stand any mathematical chance of registering at EU trade mark before the end of the transition period. The EUIPO is not open for business from 24-31 December, and any official dead...
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  455 Hits
455 Hits

DABUS Appeal Rejected by High Court

The DABUS appeal was rejected by the High Court this week highlighting further the need for fundamental review of patent laws to keep up with the very technological advances they exist to protect. Dr Thaler is attempting to establish that DABUS (the AI machine) is the creator of its inventions. In the original decision by the UK IP Office it was ac...
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  448 Hits
448 Hits

Supplementary Protection Certificates: Only for First Use of an Authorised Product

A Supplementary Protection Certificate (SPC) can provide up to five years additional protection for a patented active ingredient of a pharmaceutical product that has received a marketing authorisation. The objective is to compensate a patent holder for the delay in being able to use the patent by the need to obtain the marketing authorisation. An S...
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  291 Hits
291 Hits

UK IPO Calls for Views on Patents for AI Inventions

We have previously written about our involvement in filing and prosecuting patent applications for two inventions created by the AI inventor DABUS, and naming DABUS (the true deviser of the inventions) as the inventor.The UK IPO found the inventions to be both novel and inventive, and therefore, in principle, protectable by patent.  ...
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  268 Hits
268 Hits

UK Withdraws from Unified Patent Court system - but likely with less impact than you would expect

On 20 July 2020, the UK Government announced its official withdrawal from the Unified Patent Court (UPC) Agreement.  This is a disappointment but not unexpected.   Does this mark an end to over 40 years of efforts to produce a harmonised IP litigation process in Europe?  Of course not.  The UPC has, in recent year...
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  634 Hits
634 Hits

UK Patent Courts Warn Against Greedy Claims

Ever since the Decision issued back in 1997 in the case of Biogen v Medeva the concept of insufficiency has been extended, particularly in the chemical and biotech fields, to include claims that have "excessive breadth" (so-called "Biogen insufficiency"). The Courts in the UK have applied this frequently to revoke patents that they decide clai...
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  605 Hits
605 Hits

UK Supreme Court invalidates transgenic mouse patents for insufficiency

Regeneron Pharmaceuticals' European patent EP 1360287 and its divisional EP 2264163 relate to methods of producing transgenic mice able to produce antibodies having human sequences, and the mice produced thereby. These patents covered the idea of producing mice having mixed human-murine gene sequences that could be subsequently modified t...
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  797 Hits
797 Hits

European Patent Office Suspends Late Payment Fees on Renewals

The European patent office has announced here that until 31 August 2020, no surcharge is payable for late paid renewal fees.  This provision applies to EPO renewal fees having a deadline (without extension) between 15 March 2020 and 30 August 2020.  Cases falling into this provision, will be deemed validly paid if the renew...
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  727 Hits
727 Hits

Plants Produced by Essentially Biological Processes are not Patentable in Europe

vegetables
You might think that an article dealing with broccoli, tomatoes and peppers ought to be on a recipe blog. However, these are the names of high profile cases in an area that, over recent years, has seen more change in European patent law than perhaps any other. It now seems that the European Patent Office wants closure. We reported here on the most ...
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  968 Hits
968 Hits

Clarification on patentability of plants and animals at European Patent Office?

The European Patent Office's Enlarged Board of Appeal, decided that "dynamic interpretation" on legal issues is possible and has issued a ruling that reverses its previous position and significantly changes the patentability of plants, plant materials and animals at the European Patent Office. The Enlarged Board of Appeal, ...
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  928 Hits
928 Hits

German Constitutional Court deals blow to Unified Patent Court

On Friday 20 March 2020 the German Federal Constitutional Court dealt a blow to the Unified Patent Court (UPC), issuing a decision to uphold a constitutional complaint lodged against the German ratification of the UPC agreement. The complainant (a German patent attorney), had argued that the ratification of the UPC agreement was contrary to the Ger...
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  659 Hits
659 Hits

European Patent Office Fee Increases

The European Patent Office (EPO) has announced its biennial fee increases.  These take effect from 1 April 2020. Details can be found here. As in the past, the majority of the increases are explained to be inflationary with an average increase of 4-5%. An notable exception is the appeal fee, which will be increasi...
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  794 Hits
794 Hits

No change to EU trade marks and designs during transition period

The UK left the EU at 11pm GMT 31 January 2020. It now enters a transition period during which the status quo is preserved and all EU trade mark and design rights continue to cover the UK. The transition period is presently due to end on 31 December 2020 (although extensions are possible). At that point, the EU rights will cease to cover the U...
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1710 Hits

Brewdog in Doghouse

In a recent UK opposition decision.  Brewdog have been denied trade mark registration for BREWDOG DOGHOUSE for brewing services and crucially, hotel accommodation services.  Crucial because Doghouse is the name of the brand’s hotel in the US and according to many news reports, UK hotels are planned.

Brewdog filed a UK trade mark application for BREWDOG DOGHOUSE which was then opposed by Doghouse Distillery Limited on the basis of its earlier registration for:

 

The Hearing Officer concluded that the marks were at least similar to a medium degree and that some of the goods and services applied for by Brewdog were similar and so there would be a likelihood of confusion.  As a result, Brewdog have had their application limited, and have been ordered to pay Doghouse Distillery costs of £328.  Brewdog can appeal the decision and this seems likely given how crucial the name appears to be to their brand expansion.

Brand owners should consider their trade mark strategy in all countries of interest prior to launch.  Much of the evidence submitted by Brewdog relied on their use of the name pre-dating Doghouse Distillery’s trade mark, however they neither opposed Doghouse Distillery’s application, nor applied to cancel the registration (yet).  Had they applied for trade mark protection before their claimed first use date in October 2015, it would have pre-dated Doghouse Distillery’s trade mark which was not filed until August 2016.  There are still things Brewdog can do to try and clear the way for their planned use of Doghouse for a hotel in the UK but not without further headache and cost. 

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  1486 Hits
1486 Hits

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