J A Kemp LLP continues to provide a full service to all clients, operating within the guidelines issued by European governments. The firm’s attorneys and the colleagues supporting them are working remotely. As far as possible, please use email to contact the firm and, in particular, to issue any instructions.
10 July 2020
The CJEU issued on 9 July 2020 its judgment in the Santen C-673/18 case. The judgment , which is reviewed in more detail in our briefing ( here ), overturns the earlier Neurim decision and concludes that SPCs are not available for new therapeutic uses of old active ingredients. If you have any concerns or queries about the impact of this decision please speak to your usual J A Kemp contact.
3 July 2020
The European Patent Office (EPO), the European Union Intellectual Property Office (EUIPO), the UK Intellectual Property Office (IPO), the International Bureau (IB) of WIPO and other intellectual property offices are taking measures in view of the world-wide COVID-19 pandemic. Measures Taken by the EPO The EPO has adopted a number of measures in view of the disruption caused by the COVID-19 pandemic. First, the EPO initially extended all “periods” expiring on or after 15 March 2020 until 2 June 2020 for all parties and their representatives, under the provisions of Rule 134(2) EPC, second sentence. In accordance with Article 150(2) EPC, this extension...
19 June 2020
J A Kemp has once again been ranked as a leading patent prosecution firm in “IAM Patent 1000 - The World’s Leading Professionals 2020”. The directory comments: “J A Kemp retains its ‘first-class’ reputation this year thanks to its meticulous prosecution for household names across a range of sectors. With three UK offices and outposts in Paris and Munich, the firm is ideally placed to provide a joined-up service not only to clients from across the continent, but also to players from the United States and Japan seeking to protect their innovations in the region. It has a particular facility for...
18 June 2020
The Financial Times has revealed the results of its 2020 survey of Europe’s patent law firms. This listing is based on recommendations by clients and peers, as compiled by the FT’s research partner Statista. A total of 160 recommended firms feature in the overall list. J A Kemp was ranked across all the main areas of patent technology: Biotechnology, Chemistry and Pharmaceuticals; Mechanical Engineering and Electrical Engineering, scooping a top tier gold for Biotechnology and Food. The full list is available here .
16 June 2020
As reported here, the German Constitutional Court ruled in March 2020 that the Bundestag did not effectively pass the Act of Approval of the Unified Patent Court Agreement (UPCA) rendering the Act of Approval void. The UP/UPC system is an EU initiative to establish a Unitary Patent (UP) having unitary effect throughout the EU member states, and to establish the Unified Patent Court (UPC) to hear disputes relating to the Unitary Patent, and also relating to European patents having effect in the EU member states. The German Ministry of Justice and Consumer Protection has now issued a new draft UPCA approval proposal...
5 June 2020
The EPO has decided to abolish the option to waive the right to a further communication under Rule 71(3) EPC (notice of allowance) when filing amendments/corrections in response to an initial communication under Rule 71(3) EPC. The option was originally introduced by the EPO in 2015 in order to improve procedural efficiency. However, the EPO has found that applicants very rarely make use of the waiver procedure, and consequently the desired improvement in efficiency has not be realised. This simplification of the EPO’s grant procedure is likely to be welcomed by users of the European patent system. When the EPO intends...
29 May 2020
In view of the ongoing COVID-19 pandemic, the EPO has decided (see here and here) to introduce a temporary waiver of the additional fee payable when a renewal fee is paid late. Usually, under Rule 51(2) EPC, if a renewal fee is not paid by the due date (which is the last day of the month containing the anniversary of the date of filing of the European patent application), then the renewal fee can be validly paid within six months of the due date provided that an additional fee of 50% of the renewal fee is also paid. The EPO has decided...
28 May 2020
In view of worldwide travel restrictions caused by the COVID-19 pandemic, the EPO has recently expanded its ability to conduct oral proceedings before examining divisions, opposition divisions and Boards of Appeal via videoconference, rather than at the offices of the EPO. This change in practice gives rise to a number of practical implications for users of the European patent system, which are discussed in our briefing here .
28 May 2020
The High Court has issued its decision in the Sky v SkyKick case. The judgment follows the Advocate General’s Opinion and the Court of Justice of the European Union’s (CJEU) decision of 29 January 2020 on questions referred to it by the High Court regarding broad specifications of goods and services. Read our analysis of the decision in this briefing .
14 May 2020
The EPO’s Enlarged Board of Appeal (EBA) has today issued its decision on referral G3/19 relating to patent-eligibility of plants obtained by essentially biological processes. This is the latest development in a chain of events and controversies in this area, in which Article 53(b) EPC excludes from patentability “essentially biological” processes for the production of plants by breeding as opposed to biotechnological processes but contrasting Board of Appeal decisions and EPC Rules have at different times led to different outcomes for product claims to the plants obtained by breeding processes. This led last year to the EPO’s President referring to...
30 April 2020
We previously reported that the EPO had issued decisions refusing two applications that attempted to name a computer system (“DABUS”) as the sole inventor. The US PTO has now issued a similar decision rejecting what appears to be the US application corresponding to EP18275174. Again, the application was rejected for failure to comply with the formal requirements regarding the naming of the inventor. The US PTO has long had much stricter and more substantial requirements regarding inventors than other patent offices; it is not so long ago that US applications could only be filed in the name of the inventors and...
30 April 2020
On 30 April 2020 the CJEU gave its ruling in C-650/17 (Royalty Pharma). The judgment, which is reviewed in detail in our briefing ( here ), confirms that SPC applications are allowable when the product is not explicitly recited in the claims. However, it is implied that the product will need to be disclosed to a high degree of specificity elsewhere in the patent. If you have any concerns or queries about the impact of this decision please speak to your usual J A Kemp contact.
We set great store by what our clients say about us. These comments are all from leading legal and IP directories or provided directly by our clients.
J A Kemp was awarded "Best UK Patent Prosecution Firm" at the Managing Intellectual Property Awards 2020.
"J A Kemp demonstrates excellent technical prowess matched by legal sophistication. Unlike many other European patent attorneys, I view the partners there as collaborators rather than as service providers."
"Unified team culture, deep concentration of technical expertise and ability to effortlessly switch to another gear in times of extreme need.”
“J A Kemp is second to none in my experience.”
"I don’t work with anyone as good. I recommend J A Kemp because it’s good for my clients."
"If I want an opinion I’ll go with J A Kemp."
"They identify with our priorities, are immediately responsive and generate confidence in their technical ability."
“A very sharp firm, nimble on its feet and able to really deliver, J A Kemp is timely, professional and excellent value for money.”
"Clients are most impressed with the work of J A Kemp. The team are highly responsive, intensely hard-working, and uniformly thoughtful in their handling of prosecution and post-prosecution matters (e.g. oppositions). They are proactive and induce a high degree of confidence."
"J A Kemp offers some of the finest patent services in Europe, delivers cast-iron protection for inventions of all types and conducts sterling opposition and appeal work at the EPO."
"I am really impressed with them. The team is very proactive, strategic and thinks about the best way to move forward."
"J A Kemp’s team of trade mark attorneys are true experts and above all extremely commercial."
"The whole team is extremely knowledgeable of the underlying subject matter and also of EU patent practice - they do a valuable analysis of the specifications to optimise the patent’s strength."
"J A Kemp gives good, clear, commercial recommendations."
"J A Kemp is my preferred firm because the level of service and understanding of the client’s technology is great."
J A Kemp is "a go-to for UK and European trademark matters – its expert practitioners provide practical advice quickly and for a fair price, and impress at every turn".
"J A Kemp has a very 'can do' attitude for jobs which are complex."
"These are some of the most detailed and thorough instructions that I have ever seen. They evidence a keen understanding of US practice."
"J A Kemp is extremely knowledgeable and does a fantastic job."
"I cannot thank you enough for your expert advice and careful strategic thinking in this matter."
"We want the best protection available and I give J A Kemp the highest marks possible."