PATENTS, TRADE MARKS AND DESIGNS
WE HELP INDIVIDUALS AND BUSINESSES OF ALL shapes and SIZES
Schlich is a unique team of European Patent and Trade Mark Attorneys based in the South of England. Since 2004, we’ve helped our clients acquire, and defend, their IP assets, helping them to build and grow successful businesses based on their IP assets.
We draft and file patent applications, get them granted and enforce them. We also prepare and file trade mark applications and prosecute them to registration.
To enforce our clients’ rights, we also represent them in court and other inter partes proceedings (and, where necessary, attack and remove competitors’ rights).
Recent Insights
Read the latest news and briefings from the team at Schlich about real cases involving patents, trade marks and designs.
Pitfalls of Changing Definitions from a Priority Application
T1303/18 – This case acts as a useful reminder that changing definitions of the invention or important features thereof, between the priority application and subsequent filing, can be dangerous, and care is needed.
Free speech prevails in Lite-Netics, LLC v. Nu Tsai Capital LLC, d/b/a Holiday Bright Lights
Lite-Netics, LLC ‘Lite-Netics’ and Nu Tsai Capital LLC, d/b/a Holiday Bright Lights ‘HBL’ sell string lights primarily for use in decorating buildings during the holiday season. Lite-Netics brought an infringement action against HBL before the District Court of Nebraska with respect to two US patents. It also sent notices to some of its customers, also customers of HBL, asserting infringement and its intent to enforce its rights. HBL filed counterclaims, including for state-law torts, and requested a temporary restraining order (TRO) and subsequent preliminary injunction to prevent Lite-Netics making accusations with respect to patent infringement. The District Court granted both the TRO and subsequent preliminary injunction but on appeal the Federal Circuit found that the District Court abused its discretion in issuing the preliminary injunction because the bar to stopping free speech was clearly not met.
The UKIPO confirms that an SPC is for the product in the marketing authorisation on which it is based and not further uses for the product
It is well known that a pharmaceutical product can find alternative uses than the application for which it was originally developed. Furthermore, further patents can be granted to additional usage and dosage regimes for such pharmaceutical products. The question considered by the Hearing Officer in this case was whether a marketing authorisation for a single active compound (safinamide) was also sufficient to support a supplementary protection certificate (SPC) application for the use of safinamide in combination with levodopa/PDI for the treatment for Parkinson’s disease.
Daybreak at last! The UPC start date is confirmed
The implementation of the Agreement on a Unified Patent Court has been a slow process, with many unexpected hurdles and delays being encountered along the way. However, it seems the Unified Patent Court is now ready to start taking cases, and thus Germany has recently ratified the UPC Agreement, setting into stone 1 June 2023 as the date on which this long-awaited court will finally open for business.
Gold Standard for Novelty of Subranges
A recent EPO Board of Appeal decision has dismissed the common test for novelty of a subrange and has instead proposed that the so-called “gold standard” test should be used. Under the gold standard novelty test, a claimed subrange is considered novel simply if there is no direct and unambiguous disclosure of the claimed subrange – regardless of whether the subrange is “sufficiently far removed” from any range in the prior art.
Enlarged Board of Appeal grants 10th Petition for Review
Any party to appeal proceedings adversely affected by the decision of the Board of Appeal can file a Petition for Review of the decision by the Enlarged Board of Appeal. However, such petitions may only be filed on the grounds that: (i) the composition of the board was not correct, (ii) a fundamental violation of the right to be heard occurred (iii) a fundamental procedural defect occurred (iv) a criminal act had an impact on the decision. Historically, the success rate of Petitions for Review at the EPO has not been high, falling at around 5%. That said, November saw the granting of the 10th Petition for Review. Read on to get a flavour of what it takes to succeed.
Videoconferencing becomes the norm at the EPO
Following the start of the COVID-19 pandemic in March 2020, the EPO quickly adopted videoconferencing as an alternative to holding in-person oral proceedings at the EPO sites in Munich and The Hague. The EPO has been running a pilot project since then to determine whether videoconferencing should continue to be used now that many countries have dropped the restrictions they introduced as a result of the pandemic. Accordingly, the President of the EPO has recently decided that videoconferencing should in future be adopted as the default format for all first instance oral proceedings before the EPO, with in-person oral proceedings only being held if there are “serious reasons” justifying this. For oral proceedings before the Boards of Appeal, the format of the oral proceedings will continue to be decided on a case-by-case basis.
After a short break, the EPO’s description amendment debate is back!
A third Board of Appeal has concluded there is no legal basis in the EPC for the description of a European patent application to be amended to bring this into conformity with the allowed claims. This decision reinforces the conclusions reached in decisions T 1989/18 and T 1444/20, and is in stark contrast to the comments made by the EPO in its recent press release.
EXCELLENCE IN PATENT AND TRADE MARK LAW
The Schlich Team
Our clients expect and receive a responsive, friendly, high quality and great value service thanks to our experienced professionals. Our UK and European Patent Attorneys and Chartered Trade Mark Attorneys have a broad range of scientific and technical degrees and Ph.Ds from top UK Universities, and have decades of experience advising at cutting edge of legal and commercial issues and technologies.
We build on our deep experience of prosecution and inter partes proceedings to give the best strategic and practical advice, and to secure the best patent and trade mark protection for our clients’ innovations. Our team does this efficiently, and in a friendly and clear manner, supported by a wider team of highly skilled and experienced legal support staff.
Latest Firm News
Collaboration between PDT Solicitors and Schlich offers clients a strong choice of representation before the EU’s ground-breaking Unified Patent Court.
Notwithstanding Brexit and the UK’s withdrawal from the UPC, UK-based European patent attorneys, such as those at Schlich, will have the right to represent clients before the UPC. Therefore, it remains possible for clients to use a UK-based legal team for UPC infringement and revocation actions. Schlich and PDT have joined forces to provide clients with a strong choice of representation before the UPC, drawing on Schlich’s impressive expertise in substantive patent law and extensive experience handling contentious matters before the European Patent Office, and PDT’s wealth of experience handling litigation in the UK and a growing number of European jurisdictions.
Zeus Sleep’s anti-snoring device makes sleeping easy again
Our client, Morgan Innovation & Technology Ltd (MIAT), in a joint venture with King’s College London and Guy’s and St Thomas’ NHS Foundation Trust, recently formed Zeus Sleep Ltd in order to commercialize Zeus®, a sleekly designed, non-invasive anti-snoring device that gently stimulates muscles in the tongue, keeping the airway open and preventing snoring, allowing for a revitalizing night’s sleep.
Schlich recommended as a top UK patent filing firm by JUVE
Schlich has in particular been noticed for our work on patent filings for some of our well known clients such as AbbVie, Dimension Genomics, Fred Hutchinson Cancer Center, ONK Therapeutics, Vector...
