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Government consultation opens on a proposal for Superfast Grant of Patents in UK

A proposal for a premium “superfast” patent processing service is now out for consultation from the UK IPO. This new service, which could potentially be available from later this year, promises a tremendously shortened time-line for patent processing of around 90 days. We believe that one of the primary reasons behind this potential new service is to assist applicants seeking faster grant in order to qualify for the UK Patent Box regime, which opened for business on April 1st 2013. HGF has been monitoring the situation with the Patent Box closely and in general welcomes proposals which assist innovative companies in obtaining rapid ROI on their technology. However, we believe that should the presently proposed relatively high fee for the service survive the consultation, this may well dissuade applicants from making use of the new process, particularly those within the SME community.

The key features of the proposed service are:

On request the IPO will accelerate all stages of the application process and aim to achieve grant within 90 days, for applications claiming priority, but at least 120 days for first filing applications not claiming priority (this would be to enable reasonable prior art searches).
An additional new superfast processing fee would be payable, anticipated to be in the region of £3500-£4000.
No reason would be required to request superfast processing, which is a welcome feature and a change from the current accelerated processing service.
Publication would occur on or after 50 days from filing, and a minimum of 1 month before grant, to allow 3rd parties to file observations.
Post-grant searching will still be carried by the IPO, for prior art filed before the superfast application, but not published till after grant.

The consultation is open until June 2013 and we shall report further as the process moves forward. If you would like to respond to the consultation, we are always happy to file this on your behalf, or assist in the preparation of a response.

HGF Comments on the proposal: It is already possible to achieve relatively fast-grant in the UK (in about 10 months - 1 year) with no additional processing fee, using the currently available optional accelerated processing service under either the Green Channel for environmentally friendly technology, or by requesting accelerated search, examination and publication in any other area of technology – where an acceptable reason is provided. Alternatively, for applications already underway, UK examination may be accelerated using either the Patent Prosecution highway (PPH) or the PCT (UK) Fast Track services, where applicable.

Although these existing options may well provide sufficient acceleration for many applicants, none has such a short, relatively fixed, time-frame for grant proposed by the new “superfast” service. We would anticipate the new service will be of most interest to those applicants considering filing an application for a product having projected high sales, but a time-limited life-cycle, perhaps in a quickly developing and highly competitive area of technology, because fast-grant in itself would be desirable, with faster access to the Patent Box being a “bonus” feature. Alternatively, there may be merit in using the proposed new process in circumstances where a degree of legal certainty is required exceptionally quickly on what sort of granted UK claims may be achieved.

It is noted that “normal rules” will still apply for prior art under the proposed “superfast” regime, and so the IPO will complete a further (top-up) prior art search after grant. As such, there will always be a risk that earlier-filed documents will publish at later date and pose a risk to the superfast granted claims. This may occasion either amendments or even revocation, but the new service does anticipate this issue by providing an opportunity to file comments or amendments as necessary.

If it is introduced, the projected “superfast” grant within 90 or 120 days would potentially provide grant up to 6 months earlier than is presently possible using accelerated processing at the UK IPO. However, the added-value provided by this faster-processing needs to be considered carefully in view of the cost, as well as the underlying risks.

If you would like to discuss this topic further, please do get in touch with your usual HGF representative.

Happy 10th Birthday European Community Design

What is it, how to get it and how to protect it: we take a look at the registered design a decade after its inception.

The Patent Box - Fixed price, maximum benefit.

From 1 April 2013, the “patent box” will reduce the rate of UK corporation tax on qualifying profits from patented products to 10%. We can provide a fixed-price patent filing programme for new products to take advantage of these tax benefits. The programme is cost-neutral for products that are expected to generate more than £600,000 of total global sales over the 20-year life of the patent.

Considerations in light of US Patent Reform

On 16 March 2013, US Patent Law will change from a “first-to-invent” (“FTI”) system to a “first-inventor-to-file” (“FITF”) system. This change benefits inventors who are the first to file their patent applications, rather than inventors that are the first to invent. The FITF system also means an increase in the scope of prior art that may be used against a US patent application.

Possible Second Chance Deadline for Filing Divisional Applications

Following a recent EPO legal decision, the European Patent Office has issued a notice to advise that the date the EPO has been using to calculate the deadline for filing divisional applications may not be correct. Therefore, some applicants that still have applications pending at the EPO, may still be within the time limit to file a first or further divisional application.

The Unitary Patent Package

On 11 December 2012, the European Parliament voted to approve the “unitary patent package”. This new patent regime gives businesses the option to protect their inventions across all 25 participating EU Member States through a single application administered by one organisation.

Avoiding More Stringent Examination of Australian Patent Applications

The Australian Patents Act will be amended on 15 April 2013 to impose a greater burden on applications. It is possible to avoid the increased examination standard by requesting early examination of pending Australian applications.

OMEL/ONEL - What constitutes genuine use in the EU

Community Trade Mark Registrations are of great value to any brand owner given that they cover all twenty seven member states of the European Union.

Reduced costs of US patent Applications for Micro Entities

The USPTO has established the rules governing the claiming of Micro-Entity status which will become effective in March next year. Micro-Entities are entitled to a 75% reduction in official fees.

Samsung vs Apple - Win to Samsung

Apple ordered to publicise its defeat as Court of Appeal upholds judgement of HHR Birss QC that Samsung Galaxy Tablets do not infringe Apple’s registered design.

The lesson from recent EPO Enlarged Board Decisions re Patent Defence

EPO Enlarged Board decisions on referrals from Appeal Decisions provide important guidance to patentees on claiming strategy in opposition defence.

Combination pharmaceutical products and multi SPC patents

In Actavis v Sanofi [2012] EWHC 2545 (Pat) a UK Court has referred questions to the Court of Justice of the European Union (CJEU) relating to the interpretation of Articles 3(a) and 3(c) of Regulation EC 469/2009 (regarding SPCs for medicinal products). The issues at stake relate to:

• what is a “product” specified in the wording of the claims of a patent; and

• whether you can have more than 1 SPC on a patent, e.g. allowing a second SPC directed to a combination product that expires later than a first SPC directed to a single active.

The attached briefing note summarises the legal issues and contains some practical advice for practitioners.

EPO ends opportunity for correcting patents post-grant

In a recent decision (G1/10), the Enlarged Board of Appeal of the European Patent Office (EPO) held that Rule 140 EPC is not available to correct the text of patent specifications.

Trade Marks Team: Fashion+IP Summer Bulletin 2012

The importance of IP, specifically trade marks and designs, in the world of fashion is growing rapidly. The fashion sector encompasses a whole host of companies and individuals with different stakes in the market.

The trade mark group here at HGF advises across the whole spectrum from well known high street retailers through to individual designers. HGF has produced the second Fashion+IP bulletin for 2012. HGF will be continuing with these bulletins throughout the year, thus if you are not already a client of our firm and would like to receive the bulletins by email, please contact our marketing team who can arrange this marketing@hgf.com.

The Patent Box: Innovation Becomes Less Taxing

The new Patent Box offers UK corporation tax discounts to businesses with patented technologies. In this briefing note we explore the Patent Box, its benefits and the impact it will have on IP strategy.

Benefits for Applicants via relaxed Patent Prosecution Highway (PPH) criteria at the EPO

The trial Patent Prosecution Highway (PPH) programmes at the EPO which enable applicants to request accelerated prosecution of a corresponding EP application based on allowed/patentable claims in a national US (US), national JP (JP), or international (PCT) application have been extended to 2014.

CJEU Brustle Stem Cell Decision

A recent decision of the European court of justice severely restricts the availability in Europe of patents for stem cell-based inventions. The court’s ruling indicates that inventions based on use of human embryonic stem cells cannot be patented. This decision applies to both stem cells obtained directly from human embryos, and also to inventions using human embryonic stem cell lines.

Disclaimers return to limelight at the EPO

A disclaimer is a “negative” feature introduced into a patent claim that excludes a specific embodiment from the scope of the claim. In the life science and chemical fields, disclaimers are often used to exclude a specific gene sequence or chemical compound from the scope of a patent claim.

Seismic Software Shift by UK Courts

On 5 October 2011 the UK High Court handed down a judgment in Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat) concerning the patentability of computer-implemented inventions in the UK.

Interflora Adword Decision

The Court of Justice of the European Union handed down its keenly anticipated decision on the use of trade marks in keyword advertising campaigns relating to the INTERFLORA trade mark on the 22nd September 2011.

US Brings Patent Law into Line with Rest of the World

The US is close to bringing its patent law into line with the rest of the world in turning to the First-to-File system.

Other important changes include increased USPTO fees (but reduced for universities and small companies), changes in what constitutes prior art and the introduction of an opposition system against granted US patents.

DNA-based diagnostics - the incentives for filing IP are reinforced

A report issued earlier this month by the Human Genetics Commission (HGC) entitled “Intellectual Property and DNA Diagnostics” draws attention once more to the tension between a commercial diagnostics sector, with desire to exploit the financial value of biomarker patents, and a public sector laboratory community which appears reluctant to acknowledge such property rights;

Launch of .XXX Domains: A Concern for Trade Mark Owners

ICANN (Internet Corporation of Assigned Names and Numbers) has approved the addition of .xxx as a top-level domain (“TLD). Not surprisingly, .xxx is for adult entertainment industry websites and the creation of the TLD provides an internet address where adult entertainment can be located

Online Ambush Marketing and London 2012

The London Organising Committee of the Olympic Games (“LOCOG”) recently announced that it intends to actively police online keyword bidding on protected Olympic terms in the run up to the Olympic Games in London next year.

The Patent Box - Proposed Corporation Tax Reduction for Profits Attributable to Patents

The UK government is planning to introduce a significantly reduced 10% corporation tax rate for company profits that are attributable to patents. The scheme is called the Patent Box and is aimed at supporting the innovative businesses located in the UK. It is still at the formal consultation stage, but the final legislation is expected to be enacted in the autumn.

EPO Rule Changes of 1st May Could Influence Patent Filing Strategies

On 1st May the European Patent Office introduced amendments to Rules 161 and 162 EPC which govern the time limits for making amendments to the specification, responding to the IPRP and paying excess claims fees for international applications entering the European regional phase. Many applicants will welcome the additional time that is made available to them although those applicants requiring expedited prosecution may need to adapt their strategy when filing an application before the EPO.

UK Statutory Holidays

The UK has four statutory holidays over the coming Easter period. The European Patent Office, OHIM and the UK Intellectual Property Office are closed on the following two dates:

22 April 2011 - Good Friday
25 April 2011 - Easter Monday

Deadlines expiring on these two dates are automatically extended to the next business day and no special provisions are needed.

However, there are two further UK public holidays when our office will be closed. Both the European Patent Office and OHIM are OPEN for business (although the UKIPO will be closed) on these dates:

29 April 2011 - Royal Wedding
2 May 2011 - May Day Holiday

European Commission Forges Ahead with Unitary EU Patent

On 13 April the European Commission presented The Single Market Act which contains a proposal for a unitary EU patent. It is hoped that the first unitary EU patents may be granted in 2013 covering 25 participating EU member states. The implementation of the EU patent offers the prospect of significantly reduced grant costs for a European patent, albeit with a transitional period of up to twelve years during which a translation of the patent into another language may be required.

The Interflora Opinion - some cheer for brand owners

On the 24th March 2011, the Advocate General published his Opinion in Interflora Inc and Interflora British Unit v Marks & Spencer plc and Flowers Direct Online Limited. This is a reference to the Court of Justice of the European Union (ECJ) for a preliminary ruling from the UK High Court of Justice. The interflora case deals with the issue of the use if registered trade marks in keyword advertising.

Major changes to Advertising Standards Authority's remit in internet regulation

Significant changes are due to take place on March 1 which will shake up the regulatory landscape for internet based advertising on company websites.

EPO Rule change from 1 January 2011 - UPDATE

Decision of the President of the European Patent office dated 9 December 2010 exempting applicants claiming the priority of a first filing made in Japan, the United Kingdom or the United States of America from filing a copy of the search results under Rule 141(1) EPC-utilisation scheme.

The President of the European Patent Office, having regard to Rules 141(1) and (2) and 70b(1) and (2) of the European Patent Convention (EPC), has decided as follows:

Genesis 2010

Genesis 2010, are you going?

If you are, then please come and visit us at stand 73 just opposite the internet hub. We will be delighted to see you and if you are not already working with us we can introduce you to one of the largest and experienced life sciences teams in the UK.

EPO Rule change from 1 January 2011

New EPC rules from 1 January 2011 require search results from Patent Office of first filing (i.e. priority
application(s)) to be submitted at time of filing or EP Regional entry.

In order to make further efficiencies in search and examination, the EPC will be introducing an
amendment to rule 141 and a new rule 70b, both effective from 1 January 2011. This follows from
collaboration between major patent offices in the Utilisation Pilot Project.

UK IP Office Reduces Opposition Period By One Day

On the 30^th September 2010, the United Kingdom Trade Mark Registry announced a change in the way it calculates the period for filing oppositions against United Kingdom trade mark applications.

Google Relaxes Adword Policy in Europe

On the 4th August Google announced a relaxation of its policy on the purchasing of trade marks in its own Adwords keyword advertising system bringing its European practice much more into line with that which it applies in the United States.

The relaxation of the Google policy follows a series of recent judgements by the European Court of Justice on the use of trade marks in keyword advertising. Although the limits of what does and does not constitute trade mark infringement in such situations is still to be fully defined, and the upcoming case of Interflora, Inc vs. Marks & Spencer Plc may shed more light on this important issue, Google has obviously taken heart from the recent judgements and the courts are slowly developing some guidelines on the interaction between trade mark law and keyword advertising which can be applied for the first time across the whole of the European Union.

European Court of Justice Monsanto decision diminishes the scope of European patent rights

On 6th July 2010 the European Court of Justice (ECJ) issued its much anticipated judgement in connection with the Monsanto "Soya Bean" case that was referred to it by the Dutch courts.

Harshness of UK Law on Priority Set to Remain Following Appeal Decision

We have previously reported on the pitfalls, in various European jurisdictions, of priority claims made by companies filing patent applications relying on priority applications not filed in the companies’ own names, e.g. priority cases filed in the names of inventors. In our summary, we referred to a 2009 decision in the England and Wales High Court (Patents Court): Edwards Lifesciences AG v. Cook Biotech Incorporated ([2009] EWHC 1304 (Pat)).

In that case, Edwards sought to invalidate Cook’s European Patent (UK) 1 255 510 protecting stent valves and claiming priority from a US patent application. One article raised with regard to inventive step against the Cook patent had been published after Cook’s US priority application but before its PCT filing date.

Copad SA v Christian Dior Couture SA

We are pleased to attach a link to an article written by Lee Curtis and Rebecca Tilbury of Harrison Goddard Foote which appears in the Oxford Journal of Intellectual Property Law and Practice. The article discusses the practical implications of the decision of the European Court of Justice in Copad SA v Christian Dior Couture SA. The decision concerns how brand owners can control the use of their brands through selective distribution channels in the European Union. The decision significantly strengthens the hand of brand owners and although of relevance to all trade mark owners, the decision is of particular importance to retailers. http://jiplp.oxfordjournals.org/cgi/content/full/jpq062?ijkey=qIX93OmkMKZQmBT&keytype=ref

The concept that trade mark rights cannot be used to partition the single market is a key concept of European Trade Mark Law. There are obviously exceptions to this rule, most notably that a trade mark owner can object to the free movement of branded goods that it has put on the market, if the physical condition of the branded products have been altered or impaired in some way. However, a new exception has developed over time, in that the condition of a branded product not only covers the ‘physical’ condition of the products, but also the ‘image’ surrounding the product deriving directly from the brand itself. The case at hand is the latest in a line of such decisions, but introduces new concepts such as ‘the aura of luxury’ associated with high end branded products.

However, the decision has been worded in such a way that it impacts not only on luxury products, but all branded products and is of huge significance to any trade mark owner or retailer.

If you have any questions on the issues raised in the article please do not hesitate to contact Lee Curtis, Rebecca Tilbury or your usual HGF adviser.

Some owners of European rights are already caught in a ferocious invalidity trap in Europe

European practitioners await with baited breath the result of an appeal scheduled for 8th June in a case which has shaken international patent practice. Last year, the UK Patents Court in Edwards - v- Cook denied a valid priority claim in circumstances where the original priority applicants (inventors) failed to transfer their rights to the PCT applicant company before the PCT filing date. Timing of any necessary assignment remains critical and, most worryingly, failure to get the timing right on this when filing a PCT or EP application results in a currently irreparable situation. Loss of priority can lead to incurable patent invalidity in the face of relevant disclosure after the priority date, often via self-disclosure. Will the Appeal in Edwards - v - Cook move towards clarifying and alleviating to some degree what is a punishingly harsh and stringent regime for many applicants, not least US-domiciled applicants because of the USPTO first to invent provisions?

EPO Issues Long-awaited Decision on Software Applications

In 2008 the EPO president referred questions to the EPO's Enlarged Board of Appeal (EBA) relating to the patentability of computer-implemented inventions (CIIs). On 12 May 2010 the EBA rejected the opportunity to change the EPO's practice in relation to applications for CIIs. Thus, applications for CIIs having a technical character will continue to be accepted. For advice on the implications of this decision for your business, please get in touch with your usual HGF contact or Chris Benson (cbenson@hgf.com) of our Electronics Group.

To read a copy of the EPO decision, click here.

Greater Clarity regarding Google AdWords - Implications for Brand Owners and Advertisers

A recent European Court of Justice decision concerning Google AdWords and the implications this has for brand owners and advertisers.

EPO Enlarged Board of Appeal Rules on Interpretation of Surgical Methods Exclusion

The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) has issued their decision (G1/07) on when a surgical method is to be excluded from patentability.

Dosing regimes and therapy-related claims in Europe: Enlarged Board of Appeal Decision

The Enlarged Board of Appeal of the EPO has issued Decision G 2/08 relating to dosing regimes.

Genuine use of CTM's - will use in only one EU state maintain validity of a CTM?

A recent decision of the Benelux Intellectual Property Office in the OMEL/ONEL case could have profound consequences for the owners of CTMs. The case has provoked significant debate which is far from resolved.

Every Little Counts! - Upcoming Changes in Official Fees at the UK-IPO

As from first October the official application fee for trade mark registrations will be reduced from £200 to £170. Not a huge reduction, but in the current climate a welcome one.

European Court Confirms the Value of Protecting Product Get-up

A recent judgment by the ECJ has confirmed the value of registering Trade Marks covering the get-up*of products. (*Get-up is known as “trade dress” in North America.)

Register your FacebookURL - Before somebody else does

On 9th June 2009, Facebook Inc., the highly popular social networking company based in the United States, publicly announced that beginning Saturday 13th June at 12:01am US EDT pre-existing Facebook account holders will be permitted to create personalised URLs to direct interested parties to their Facebook pages.

Imminent EPO Rule Changes will increase onus and burden on Applicants

Starting 1 April 2010, new Rules will be implemented by the EPO with no transitional period. The new Rules form part of the drive to substantially accelerate patent prosecution and to minimise burden on EPO Examiners.

European Patent Office Introduces Time Limits for Filing Divisional Applications

On 26 March 2009 the Administrative Council of the European Patent Office (EPO) voted to introduce a time limit to restrict the filing of divisional European patent applications. The restriction takes effect on 1 October 2010 and applicants are recommended to complete a review of their pending European patent applications before then.

Significant Reduction in CTM Official Fees

The Community Trade Mark Registry, OHIM, has announced there will be a significant reduction in CTM fees. This is subject to final approval by the EU Commission. Approval and implementation is expected in a matter of weeks.

European Patent Office rules on human embryonic stem cell case

The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) has recently considered the patentability of human embryonic stem (ES) cells and in particular the scope of Rule 23d(c) EPC (Rule 28 EPC 2000) which prevents patents being granted for inventions which involve commercial or industrial use of human embryos.

Preserving IP Assets During Insolvency

Intangible intellectual property (IP) assets are often the major value component of any business, especially amongst technology-rich enterprises. IP assets include patents, trade marks, copyright, design rights, domain names, know how and trade secrets. Some estimates have suggested that 71% of the value of BP, 96% of the value of Coca Cola and 97% of the value of Kellogg resides in IP assets.

UK - Enhanced rights for brand owners

A Company Names Tribunal has been formed. It will consider objections to the registration of company names.

Is It Full Circle For Patentability Of Computer Programs In The UK?

On 8 October 2008 the UK Court of Appeal handed down a judgment dismissing an appeal by the UK IPO against a decision of the UK High Court to allow Symbian Ltd’s patent application (GB 325145.1).

Important Changes to UK Trade Mark Rules

Important changes to the UK Trade Mark Rules 2008 are due to come into effect on 1st October 2008.

China - Taking Patents Seriously

China has recently (December 2001) acceded to the World Trade Organisation (WTO). This means that effective enforcement of Intellectual Property (IP) Rights, as required by the TRIPS Agreement (Trade Related aspects of Intellectual Property rights), is now possible.

Effect of the London Agreement in the UK

Official advice from the UK Intellectual Property Office (UKIPO) that it is not required to file English language translations in respect of French or German language European patents granted on or after 1 February 2008 has been contradicted by advice from patent counsel.

New Community Trade Mark Search Procedures

A Change in the rules covering applications for Community Trade Marks (CTMs) has meant that national searches as part of the examination process are now optional from 10 March 2008.

Huge increase in EPO claims fees and recommended

From 1st April 2008, the European Patent Office will change the rules for excess claims fees, with the effect that many applications will see a sharp rise in the amounts incurred.

European Patent Oppositions

The European Patent Convention (EPC) provides the framework for a central procedure allowing third parties to oppose a granted European patent and to secure its limitation or revocation.

London Agreement finally enters into force

The London Agreement will come into force on 1 May 2008 and will apply to European patents granted on or after that date. This results from France having deposited its instrument of ratification on 29 January 2008.

Implications of EPC 2000 for claiming second medical uses

Second medical indications are currently claimed in Europe by means of Swiss-type use claims or method of manufacture claims of corresponding scope.

The London Agreement

The London Agreement is an International Convention between some but not all signatories to the European Patent Convention. The London Agreement seeks to reduce the cost of registering a granted European Patent by eliminating the need for a local language translation of the specification in the signatory countries. Recent announcements have indicated that France is due to ratify the Agreement in November 2007, triggering commencement within the first half of 2008.

Divisionals at the EPO

The decision of the EPO Enlarged Board of Appeal in combined cases G1/05 and G1/06 has finally been issued. The previously established practice of the EPO in respect of divisional applications has been affirmed, bringing a welcome conclusion to a period of considerable uncertainty.

EPC2000

In the year 2000, an amended version of the European Patent Convention ("EPC") was agreed, and this became known as "EPC2000". The new law must take effect by 13 December 2007 and is expected to enter into force exactly on that date, although there is a possibility that it will take effect before this date, depending on when the final EPC contracting state adopts the treaty into its national law. The EPC2000 will apply to all European patents granted at the date the EPC 2000 takes effect and retrospectively to all European patent applications pending at the time.