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Licences and Assignments of Unitary Patents and the Relevance of German Law

EU flagThe law governing licences and assignments of future European patents with unitary effect (unitary patents) is determined by a residency/place of business test for applicants based in the states of the EU participating in enhanced cooperation (member states); German law will apply to licences and assignments for other applicants. This may sound esoteric, but will in fact be of practical significance to many UK-based practitioners, because many large corporations based outside the member states file all their patents in their own name, including for inventions devised by UK-based affiliates. (more…)

Reports of the death of the UK Patent Box are greatly exaggerated

hmrc-eu-patent boxFollowing the recent joint announcement from the UK and Germany on the patent box regime we’ve encountered clients who believe the UK patent box is to shut completely. By way of reassurance here’s a short piece from Richard Turner of FTI Consulting.

Given the recent announcements on the deal struck with Germany there has been some concern over the wellbeing of the only recently introduced UK patent box. It is true that the existing rules will be phased out. However, a new regime will be introduced which is likely to be similar to the existing regime in many ways. 

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What’s my line? The role of a paralegal

paralegalRoy Scott, Keltie LLP’s Senior Paralegal and a member of the ITMA Seminar Working Group, recently had an article published in the ITMA Review regarding the role of paralegals. Here is a copy.

The Oxford Dictionary definition of the role of a paralegal is “a person trained in subsidiary legal matters but not fully qualified as a lawyer” – an interesting definition that is interpreted in many different ways in both the UK and US.

It also provided a stimulating topic for discussion at ITMA’s July and August roundtable discussions for Trade Mark Administrators. ITMA President Chris McLeod opened proceedings by addressing the audience and giving his interpretation of the role of a paralegal and how this varied from firm to firm. To highlight this point, the later discussions were focused around the role of a paralegal in-house, in a law firm and in a Trade Mark Attorney business. (more…)

New Fast Track Examination for CTMs

ohimlogo_enOn 24th November 2014, the Office for Harmonization in the Internal Market (OHIM) introduced a “Fast Track” application process for European Union (CTM) trade marks. This allows for certain trade mark applications to be processed, examined and – if accepted – published much faster than under the current examination turnaround times. The typical “fast-track” publication is expected to take only 3-4 weeks from the filing date of the application, if no objections are raised. (more…)

When is a Biotech Invention Completed? How Much Data is Needed?

MyriadIn the field of biotech showing that the invention works by means of providing the appropriate data can be an important part of ‘making’ the invention. At the European Patent Office (EPO) and the UK Courts not having enough data in a patent specification can lead to problems of sufficiency, support and industrial applicability. Where patentability relies on a particular technical effect then not having enough data can also lead to lack of inventive step, i.e. it has not been shown that the problem has been solved. The issue often arises in the case of patent applications that cover new treatments, though it is also relevant to other areas of biotech. (more…)

EPO Strikes

epologoThe World IP Review is reporting that EPO staff have voted on a series of strikes commencing with a one day strike on Thursday 20th November and then increasing the number of strike days per week by one day per week until there is a whole week of strikes in the week beginning 15th December. (more…)

Patent Box 2.0 – changes afoot for the UK’s Patent Box Regime

This is not just any box. This is an HMRC Patent Box

This is not just any box. This is an HMRC Patent Box

Back in January David Cameron gave his EU speech and said the following: I want the European Union to be a success and I want a relationship between Britain and the EU that keeps us in it……When we have negotiated that new settlement, we will give the British people a referendum with a very simple in-or-out choice. To stay in the EU on these new terms; or come out altogether.

Quite what that new settlement will be and how effective DC’s negotiating skills will be is something of a slight unknown. However, if last week’s joint announcement that George “I’ve secured us a discount” Osborne made with Germany on the subject of the Patent Box is anything to go by then the EU negotiation may prove interesting! (more…)

An Important Market: Software Patenting in Japan

code_invertedToday on IPcopy we have a guest post from Mr. Kenji Sugimura and Ms Rebecca Chen of Sugimura International Patent & Trademark Attorneys on the subject of software patents in Japan. This post appears on the Sugimura website and has been reproduced with the permission of the authors.

Software is one of the most innovative and fastest growing industries in the world, leading corporations to turn increasingly to patents to protect their software-related inventions. Businesses have begun to leverage the value of software-related patents, evidenced by the prolific mobile patent wars and the wave of multibillion dollar patent portfolio acquisitions.

Including Japan in a company’s international patent prosecution strategy is crucial for several reasons. Japan is the third largest economy in the world. Additionally, Japan has the second highest number of registered software-related patents in the world. These registered patents cover a wide range of technologies including embedded software in consumer goods and appliances and developments in vehicle network technology. Japanese companies also rank among the top patent filers.

As the applicability of software inventions continues to broaden, more opportunities are created for inventors to license their patented inventions to these Japanese companies. Given the importance of the Japanese industry and the opportunities within the software-related technology in the global marketplace, it is imperative for companies to develop international patent prosecution strategies with Japan in mind. Specifically, foreign companies should be aware of the similarities and differences in prosecuting software-related patents in Japan and in their home countries. (more…)

‘Expectation of Success’ as Part of Inventive Step Analysis

MyriadThis is the second in a series of articles on biotech inventions (the first article can be found here). The present article discusses ‘expectation of success’ which is often considered as part of assessment of inventive step for biotech inventions and also in other life science areas such as pharmaceuticals. Whilst this article is written from the perspective of how the test is used at the European Patent Office (EPO) and in the UK Courts, ‘expectation of success’ is also applicable in other territories. (more…)

An Overview of Biotech Patenting

MyriadThis is the first in a series of articles about biotech inventions. The articles will explore how Patent Offices deal with biotech inventions and how the demands of biotech research and financing impact on patent strategy.

The present article provides an overview of the issues that are relevant in patenting biotech inventions. (more…)

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