The Court of Appeal has now reached a decision on the Trunkie litigation.  The Trunkie is a suitcase in the form of a novelty animal which allows for the user (child) to ride on it, while no doubt the user’s grateful parent pulls, advancing the party with  indecent speed to an airline gate.

The proprietor of Trunkie, Magmatic, secured a design registration which resulted in litigation when a competitor PMS launched a similar product.   Initially the lower court found infringement which was reversed on appeal.

The Supreme Court maintained the Appeal decision and for reasons which all persons registering designs should note when filing their applications for registration. 

In assessing matters of infringement, the court will assess what is the overall impression created on the user by the registered design by considering the drawings used in the application. 

In the case to hand, the design drawings included a two tone representation in which the wheels were depicted as significantly darker than the rest of the product.  In the competitor’s product the wheels were not contrasting.

Infringement was not found as the PMS design created a different overall impression to that registered.

This case highlights the importance of considering very carefully how best to depict your product design in the representations used in the application.  Where there is more than one aspect of the design that is important, a number of applications should be made each being directed to the important features.   Non-significant features may be depicted in broken outline or otherwise delimited.  This is particularly so where those parts of the product may be upgraded or varied as the product is developed, for example, the shape of a button on an electronic device.

Viewed as a critical factor in determining the success of the Unified Patent Court, practitioners and users of the patent system have been eagerly awaiting word on the level at which renewal fees will be set. Too high and potential applicants will be dissuaded from adopting the new scheme. Too low and the UPC runs the risk of not being capable of funding itself.

Proposals for renewal fee levels made by the UPC preparatory committee have now been made public, and the purported figures are consistent with EPO president Benoit Battistelli’s 2014 warning that the renewal fees would be “higher than many would hope, but lower than some might fear.”

It appears that the preparatory committee are considering two options. Both options are similar, each being based on the renewal fees of the states currently most commonly validated under the EPC. In the first option, the UPC renewal fees are calculated on the basis of the sum of the renewal fees of the four most validated signatory states. In the second option, the UPC renewal fees are calculated on the basis of five states but with the concession of a 25% reduction for SMEs, natural persons, non-profit organisations, universities, and public research organisations, though only for the first 10 renewals of the patent.

However, there is a further layer of complication caused by the present reservations of Spain and Italy concerning the language requirements of the UPC. When the UPC is implemented, separate validations in these states will be required in addition to validation as a UP right.

As can be seen from the table, taking into account Spain and Italy adds nearly €12,000, or 25-30%, to the cost renewing a patent for its full 20 year term.

Whichever option is finally implemented, the combined renewal fees of France, Germany, and the UK are much lower than either of the proposed UPC renewal fees whilst still covering a significant proportion of the market. Even taking into account the 25% concession (on the first ten years) for certain eligible entities, the total renewal fees would be more than €2000 less in the three states separately than under the UPC. Accordingly, validation under the EPC in those states alone can be expected to remain a popular and economical choice for many applicants, though those requiring protection in more than the top three would certainly be advised to consider the expanded market covered by a Unitary Patent.

For applicants requiring more extensive coverage, protection in 27 states for the price of 7 will be attractive. All the more so as it will be achieved through a single renewal, simplifying the management of large portfolios. For these reasons, the Unitary Patent could prove to be a preferred choice for corporates.

Whether these costs remain essentially unchanged by the time they are officially formalised remains to be seen. As it stands, the two options set the fees at a level that may not attract a huge share of the applications generated by SMEs, but may prove to be popular with larger companies.

The BBC News has a nice piece on “mash-ups” the creation of new works by use of the works of others. This will be permitted under the parody exception providing the court finds it is a parody and does not compete with the original!
http://www.bbc.co.uk/news/entertainment-arts-29408121.

The changes for UK copyright exceptions have now been passed by the UK Parliament. They came into force on October 1st . https://www.gov.uk/government/news/changes-to-copyright-exception

We are delighted to announce that Maschio Soames founder and director Dr. Candi Soames will be presenting a keynote speech on IP at the Annual European Antibody Congress in November 2014.  The three day conference is now a landmark event in the yearly calendar of the biopharma field and is sure to be well attended.  Participants already include global presences GE Healthcare, Novartis, Pfizer, Merck, Roche, Amgen, and Astra Zeneca.

 The event provides stakeholders with a one-stop platform to discover what’s new in the field of antibodies and Antibody-Drug Conjugate (ADCs). Topics discussed at previous congress sessions have included ADC therapeutics, bispecifics, characterisation methods, state-of-the-art technologies being developed by the various attendees and Intellectual Property.                                                                          

This year Candi will be presenting in a plenary session on Intellectual Property considerations when developing antibody and next generation therapeutics.  She will be alongside representatives of the European Patent Office and the federal Drug Agency who will also be holding plenary talks to close the congress for this year.  The session is likely to be of great interest, as it uniquely brings together intellectual property practitioners, patent granting organisations and regulatory authorities for an exchange of perspectives.

Maschio & Soames IP Limited is committed to this sector and is once again a Gold Sponsor of the Congress.  As in previous years, we look forward to meeting colleagues and clients and participating in the stimulating sessions.

Trade marks create a link between a consumer and the proprietor of the mark.  Where a trade mark is sufficiently distinctive it may be registered.  It is great fun walking through shopping centres spotting the various marks.  Most readily evident will be the word or logo emblazoned over the store front.  But what about the layout of the store itself? Well the German Federal Patent Court thinks that yes, such could be sufficiently distinctive in a decision concerning Apple Inc’s attempt to register its store layout, a decision the Court of Justice agreed with, further stating that protection from the mark would cover not only goods but also services provided by the proprietor (CJ (Third Chamber); C-421/13).

Today we hear of the passing of the materials chemist Stephanie Kwolek, responsible for discovering the high-strength low-weight fibre commonly known by its trademark name Kevlar.

After living through World War Two, Stephanie was hired by DuPont, and reportedly kept quiet about her 1965 discovery until she had exhaustively scrutinised the substance to be certain of what she’d found.

Kevlar has been an astounding commercial success, due in no small part to its versatility. It can be found in a wide range of equipment and products, from military and self-protective applications such as armour and motorcycle jackets, to sporting products such as bicycle tires and paragliders, and to more obscure applications such as lining frying pans, fire-poi, and even experiments in particle physics.

For more about the life of Stephanie Kwolek, please read this article on the Telegraph website.

Time flies and is fast running out for voting on the 2014 Longitude Prize.

The first Longitude prize was offered by the British Government in 1714 for the solution of the seemingly intractable problem of determining a ship’s longitude at sea. The prize of ~£20,000 (nearly £2.5m in 2014) was awarded to John Harrison in 1765 for his invention of a pendulum-free mechanical clock that could keep accurate time under the unstable conditions at sea.

This year sees a renewal of the prize to the tune of £10m for a solution to an as yet undecided problem, to be selected from one of six categories – Antibiotics, Water, Dementia, Food, Paralysis, and Flight – by a public vote.

Voting to select the problem to be addressed ends 25^th June 2014.

It just shows that by defining a problem and providing a significant financial award can lead to great innovation.  Hopefully, the 2014 award will be just as successful as the first.

To read more about the Longitude Prize 2014, and to vote, visit the Longitude Prize website.

Read more about the first Longitude Prize and the contribution made by John Harrison on Wikipedia.

Researchers at the University of Leeds claim to have created a novel composition that can stimulate the body’s natural ability to repair tooth enamel.

The Swiss company Credentis was founded and granted an exclusive licence to develop the technology into a commercial product.

Some commentators are heralding this news as the beginning of the end for the dentist’s drill, at least as far as repairing small cavities is concerned.

Read more on the Channel 4 News website.
Dentist’s drill phobics wishing to seek further comfort may care to review WO2014027012 (A1)

The EPO has announced an amendment of the provisions of the European Patent Convention dealing with the requirements for the filing of divisional applications, namely Rules 36, 38, and 135 EPC.

The decision enters into force on 1. April 2014 and will apply to divisional applications filed on or after that date. It enables the filing of divisional applications as long as the earlier (parent) application is pending. The 24-month time limits for the filing of divisional applications will be repealed.

In addition, there will be an additional fee as part of the filing fee for divisional applications of second or subsequent generation.

The EPO has indicated that amended Rule 164 EPC will come into force on 1.11.2014. The draft amended Rule gives an opportunity to pay further search fees on a PCT-derived application during the European regional phase; this will be useful when unity is considered to be lacking and the claims of interest to the applicant have not been searched.  There will also be flexibility for the applicant to continue prosecution by selecting from any of the searched claims.  Regardless of whether the EPO acts as the Searching Authority in the International Phase, there will be freedom in the European regional phase for applicants to direct their application to the claims of choice. These changes will hopefully prevent the need for filing at least some divisional applications that might otherwise be necessary for the applicant under the current procedure.

IP5 offices agree on joint PPH pilot programme

Austria Becomes First Country To Ratify The Agreement On Establishing The Unified Patent Court (UPC)

The EPO has announced that the number of patent filings at the EPO from the 38 EPO member states has reached a new peak in 2012.  Last year, the EPO received a total of 257 744 patent filings from all over the world. This is a 5.2% increase over 2011 (244 934) and is a new record. The EPO also published 65 687 granted patents, 5.8% more than in 2011 (62 115).

Innovation is thriving.  

In 2010 the EPO introduced rules relating to 24-month time limits for the filing of divisional applications.  This was the EPO’s attempt to avoid divisional applications being used prolong the pendency of patent applications before the EPO. 

The rule changes have attracted wide ranging criticisms from users.  The calculation and triggering of the time limits are complex to calculate.  An even further layer of complexity was introduced when the EPO introduced a Notice in December 2012 advising that a certain communication from the EPO did not actually trigger the divisional time limit.  

The EPO wishes to give all interested parties a say in the course it should take regarding the conditions for filing divisional applications.  Users are being invited to (anonymously) submit their views online here.  The consulation will expire on 5 April 2013. 
 
The EPO expects that the outcome of this process will enable them to decide whether to make a proposal for a further amendment of Rule 36 EPC.  Hopefully, this will bring some long overdue clarification to this complicated set of rules.   
  

 

In 2012, the European Patent Office (EPO) received 258 000 patent applications. This represents a 5.7% increase over 2011 (244 000) and sets a new record. In the same year, the EPO published 65 700 granted patents, 5.8% more than in 2011 (62 115).

For more information click here. 

 

Oxbridge Biotech Roundtable has teamed up with SR One, the venture capital arm of GlaxoSmithKline, to launch the largest idea competition in the world – OneStart.  They are looking for ideas for innovative technologies with the potential to deliver meaningful impact on patients’ lives. 

OneStart is open to aspiring life science entrepreneurs aged 35 and younger, who are studying or working in the UK/Europe.  The competition will be run in stages and covers four tracks: drug discovery, medical devices, diagnostics and health IT.

Entrants can join individually or as a team, and are encouraged to recruit other scientists and even business students.  There is a £100k cash prize.  For more information click here. 

It has been recently reported on MSN that Kia will now be unable to use its planned name for a flagship car in Europe because its use would conflict with the earlier trade mark of another company. 

Before committing to significant advertising and promotional expenditure and launching a product, parties are well advised to search for earlier potentially conflicting intellectual property rights.  This also applies to patents and  design registrations.  In certain jurisdictions, punitive damages are available for “wilful” infringement . By carrying out such prior right searches and, using an attorney to consider the scope of any rights relative to your product, you may have a defence against this.    

Whilst the results of searches cannot be guaranteed to find all relevant pre-existing rights, they will usually reduce the risk of having to perform an expensive re-branding or design around exercise to avoid infringement of the existing rights of others.   

Due to the problems caused by Hurricane Sandy in the US on 29 October 2012, the European Patent Office (EPO) has issed a notice drawing attention to the legal remedies provided under the European Patent Convention and under the PCT in case of non-observance of time limits.

If you think that you might have missed a deadline at the EPO or the UKIPO due to the problems caused by Hurricane Sandy then please contact us urgently for advice.     
  

Whilst patent applications are submitted to an examination process some patents are granted that are later held to be invalid.  This has been reported to have occurred in the case of the Pfizer patent in Canada for the penile erectile malfunction drug called Viagra.

Third parties should always seek advice from a patent attorney in respect of a patent which is of concern to their business activities in case its validity can be challenged.  For example, in Europe, the opposition procedure before the European Patent Office can be used to challenge the validity of a European patent within nine months of grant.