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Notes from an EPO video-conference

trial by video conferenceFor several years now, it has been possible to attend Oral Proceedings with the Examination Division of the European Patent Office by video-conference. Despite this extended availability, this ipcopywriter found that there was surprisingly little information online about how these are carried out, and so provides an account of a recent experience below. (more…)

USPTO Guidance on Subject Matter Eligibility

USThe USPTO has issued Interim Guidance on Patent Subject Matter Eligibility for US Examiners determining eligibility under 35 U.S.C. 101 in view of the recent decisions in Alice, Myriad and Mayo. The guidance is interim in nature only and the USPTO expects to update it in response to feedback. Comments may be submitted to the USPTO until 16 March 2015. (more…)

The Unitary Patent Package: Two years on. Where are we now? (Overview of the Court)

Unified patent courtBack in December 2012 it was announced, in an historic agreement, that the European Parliament had adopted two regulations relating to the creation of the unitary patent. A third element of the unitary patent package, the agreement on the unified patent court, was signed in February 2013 and the EPO expected the first unitary patent to roll off the production line in Spring 2014. It’s now nearly the end of 2014 and we’ve not met the original, highly ambitious implementation date but there has been significant progress in delivering the new system.

Starting this week IPcopy is taking a look (in traditional IPcopy Q&A styleTM) at what the unitary patent package is and where we are. Unbelievably we’ve never really covered the actual structure of the new Unified Patent Court and so here, as your starter for 10, is an overview of the UPC itself. (more…)

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…)

Unitary Patent Package – The Ratification Game (Malta Ratifies the UPC Agreement)

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Update (10 December 2014)

According to the website of the Council of the European Union, Malta deposited its instrument of ratification on 9 December 2014 to become the sixth country to complete its ratification formalities. Malta joins Denmark, Belgium, Sweden, France and Austria as one of the six countries who have completed their ratification processes.

Now that Malta has joined the “ratification” group it means that the “Malta Problem”, which is discussed in depth here, will kick in once the unitary patent system is up and running. In a nutshell, no European patent application filed before 1 March 2007, and which is still pending, will be eligible to become a unitary patent (assuming it grants after the unitary patent system goes live).

Recent unitary patent themed seminars have given the impression that additional UPC ratifications in 2014 were unexpected so this news is something of a surprise. However, we had heard suggestions back in January this year that Malta might have ratified. If the news story we picked up on earlier in the year was correct then presumably Malta delayed depositing its instrument of ratification for nearly a year for some reason.

IPcopy’s ratification infographic has been updated to reflect the news from Malta (for an answer to the question “What’s up with this infographic?“, please see the bottom of the post!”).

Ratification Dec 2014 - Malta

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Unitary Patent: News Nuggets (ERA Conference – December 2014)

EU flagOn 4th and 5th December IPcopy attended the ERA conference “Preparing for the Unitary Patent Package” at the Old Hall in Lincoln’s Inn*.

The latest progress and developments relating to the implementation of the Unitary Patent Package (UPP) were on the menu and the conference included a distinguished group of speakers, many of whom are involved directly in the implementation process. We’ll try and post some more in depth comment in the next week or so on a couple of the talks/subjects discussed but in the meantime here’s some nuggets of news…. (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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UKIPO: Green Patents – Statistics

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This may not be what the UKIPO had in mind for “green technology”!

Have you ever had a client go a little bit “Maverick and Goose” and scream “I feel the need…..the need for speed!”?

No, me neither, but sometimes a client does want to know what can be done to speed up the often painfully slow prosecution process and secure a patent grant (or at least decision) as soon as possible.

The UKIPO offers three options for speeding up prosecution of a patent application: combined search and examination (CSER); accelerated search and/or examination; and, early publication. While CSER and early publication are available on request, justification needs to be given to get accelerated search and/or examination. One reason may be that you believe there is an infringement occurring and you need an early grant to enable action to be taken.

An alternative route to requesting accelerated search and/or examination however is via the Green Channel which allows applicants to request accelerated prosecution if their invention has some kind of environmental benefit. But, how popular is this option? (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…)

Unitary patent: 17th Draft of Rules of Procedure – What’s changed?

Unified patent courtThe 17th draft of the Rules of Procedure of the Unified Patent Court Agreement appeared online recently in advance of the oral hearing in Trier tomorrow (26 November 2014). We’ve taken a quick look over the changes to highlight a few points that have changed. (more…)

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