13 January 2021
Following the passing in Germany of the Bill for Re-ratification of the Unified Patent Court Agreement (UPCA) in December 2020, two constitutional complaints against German ratification were filed at the German Federal Constitutional Court (FCC). The FCC has now confirmed to journalists that the FCC has asked the Federal President not to sign the bill into law. Signing of the bill is the last step necessary before UPCA and Protocol on Provisional Application (PPA) ratifications can be deposited by Germany. It is unclear at present whether the delay will be short (for example if the FCC declines to admit the complaints for...
1 January 2021
The UK withdrew from the EU (Brexit) on 31 January 2020, and the transition period ended on 31 December 2020. The UK is no longer subject to EU law or the jurisdiction of the European Court of Justice. EU Trade Mark and Design rights no longer have territorial effect in the UK. It is therefore now a practical necessity to dual file in both jurisdictions, if registered protection for a trade mark or design is required in the EU and UK. Comparable registrations have been created in the UK as of 1 January 2021 from all existing Registered EU Trade Marks...
18 December 2020
Today the Federal Council (Bundesrat) unanimously passed the bill required for German ratification of the Unified Patent Court Agreement (UPCA) thereby achieving the two-thirds majority of the members mandated by the Federal Constitutional Court (FCC). The bill must now be signed by the German Government and the Federal President before UPCA and Protocol on Provisional Application (PPA) ratification can be deposited. There is a possibility of a further complaint to the German Federal Constitutional Court (FCC). If such a complaint is received, the FCC could again ask the Federal President not to ratify the UPCA and so delay German ratification. Assuming that Germany...
17 December 2020
It is well established that under Article 123(3) EPC, a patent (i.e. after grant) “may not be amended in such a way as to extend the protection it confers”. The rationale behind this legal provision is to provide legal certainty to third parties. The patent considered in T 2202/19 is directed to a coffee capsule. In the patent as granted, claim 1 defined, inter alia, a closing member (12) comprising “a plurality of discrete blind openings (14)… said blind openings not being concentric grooves”. At opposition, the feature of “said blind openings not being concentric grooves” was found to add subject-matter,...
16 December 2020
The UK High Court recently found a patent for a breathing tube to be valid and infringed on the basis of expert evidence submitted by the parties. The judge clearly preferred the evidence of one expert over the other and this was decisive for the case result. The case concerned Fisher & Paykel Healthcare Limited’s EP(UK) patent for expiratory limbs of breathing circuits. Fisher & Paykel (‘F&P’) sued Flexicare Medical Limited and Flexicare (Group) Limited (together ‘Flexicare’) for infringement. Flexicare admitted their products fell within the claims of the patent, but argued the patent was invalid and counterclaimed for revocation. As part...
11 December 2020
In a recent judgment (Optis Cellular Technology LLC v Apple Retail UK Ltd & Ors  EWHC 2033 (Pat)), the England and Wales High Court refused an application to refer questions to the Court of Justice of the European Union (CJEU) in a case related to standard essential patents (SEP) and licensing on fair, reasonable and non-discriminatory (FRAND) terms. Apple, the defendant in the case, requested that a number of questions related to licensing on FRAND terms be referred to the CJEU even though these questions related to issues due to be heard at a later trial. The reason Apple brought...
27 November 2020
On 26 November 2020 the German Parliament (Bundestag) passed the bill required for German ratification of the Unified Patent Court Agreement (UPCA) with 570 votes in favour, easily achieving the two-thirds majority of the 709 Bundestag members mandated by the Federal Constitutional Court (FCC). The bill must now be approved by the Federal Council (Budesrat) before signature by the German Government and the Federal President. There is a possibility of a further complaint to the German Federal Constitutional Court (FCC). If such a complaint is received, the FCC could again ask the Federal President not to ratify the UPCA and so delay...
23 November 2020
The UK government has announced that it intends to proceed with changes to UK legislation governing the “address for service” that may be used for intellectual property rights, with associated legislation currently being laid before Parliament. An address for service is a correspondence address given to the UK Intellectual Property Office (UKPIO) by proprietors of IP rights. Usually the IP attorney of the proprietor is listed as the address for service. Currently, any address in the European Economic Area (EEA) is accepted. The changes will require use of a UK, Gibraltar or Channel Islands address for service in relation to all new...
16 November 2020
The UK High Court has recently ruled in the case of IPCOM GmbH & Co Kg v HTC Europe Co Ltd & Ors  EWHC 2941 (Pat) that damages following the infringement of a UK standard essential patent may be based only on patent infringements that occur within the UK. IPCom were the proprietors of patent EP(UK) 1,841,268 that expired on 14 February 2020. The patent covered an aspect of the operation of 3G mobile telephones. The patent was declared essential to the relevant telecommunications standards and subject to a FRAND (Fair, Reasonable And Non-Discriminatory) undertaking from IPCom. In another previous case...
11 November 2020
The EPO announced on 10 November 2020 (further details of which can be found in the EPO’s notice and decision), that all opposition division oral proceedings scheduled to take place between 4 January 2021 and 15 September 2021 will take place by video conference, rather than in-person on the premises of the EPO. No opposition division oral proceedings will take place in-person until after 15 September 2021. This development represents a progression of the measures the EPO has taken in response to the ongoing COVID-19 pandemic. In particular, no examining division or opposition division oral proceedings have been carried out in-person...
11 November 2020
The European Patent Office (EPO), the European Union Intellectual Property Office (EUIPO), the UK Intellectual Property Office (IPO) and the International Bureau (IB) of WIPO all remain operational and will allocate filing dates for newly filed cases and accept other submissions/fee payments as normal. However, a number of measures have been adopted by the offices to assist applicants in view of the ongoing COVID-19 pandemic. The current position at each office is discussed below. Measures Taken by the EPO The EPO is no longer applying a blanket extension of “periods”, as it did between 15 March 2020 and 2 June 2020, but...
9 November 2020
In a press communiqué dated 6 November 2020 the Technical Board of Appeal of the European Patent Office (EPO) issued its written decision revoking European patent number EP2771468 owned by the Broad Institute, Inc. and others. The patent claimed a fundamental aspect of the CRISPR/Cas9 gene editing technology platform. The patent was initially opposed by nine opponents during first instance proceedings. The Opposition Division revoked the patent on the ground of lack of novelty following a loss of priority date. The opponents had argued that the Broad Institute, Inc., together with co-applicants Massachusetts Institute of Technology and President and Fellows of...
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