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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).

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Recent Insights

Read the latest news and briefings from the team at Schlich about real cases involving patents, trade marks and designs.

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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.

Daybreak is on the horizon, but the sunrise is still a little way off

The start date of the European Union’s new Unified Patent Court has been delayed several times, but it was widely expected that the 1 April 2023 start date would be adhered to this time. However, in view of some technical difficulties encountered by many who are due to start using this system when it comes into effect, a decision has been taken to delay the start of the new system by a further two months.

Enlarged Board of Appeal issues Preliminary Opinion in “Plausibility” referral G 2/21.

The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) has issued a Preliminary Opinion in the Plausibility referral G 2/21. Unsurprising is the EBA’s answer to the first question: post-published evidence should not be disregarded. More thought provoking, however, is the EBA’s answer with respect to when and how to use it (questions two and three): reliance on post-published evidence for establishing inventive step is permitted provided that (1) the technical effect relied upon is encompassed by the technical teaching in the application as filed and embodies the same invention and (2) there are no significant reasons to doubt it; however, if significant doubts exist reliance on the post-published evidence is ‘questionable’. Of course, at this stage we have just the Preliminary Opinion, which is non-binding, and so close attention needs to be paid to both the Oral Proceedings set to take place on 24 November 2022, and to the ensuing decision which is expected in the first half of 2023. Further updates will be provided as developments occur.

Can You “Unadmit” a Document Filed during EPO Proceedings?

Whether a document is admitted to proceedings before the European Patent Office (EPO) can often be a highly contested and charged matter. This is because proceedings can hinge on conclusions drawn from a particular document and thus a case can turn on whether a document is admitted to proceedings.

A long night, but the sun is coming up over Europe

Those interested in the European Union’s new Unitary Patent System will know the start of this new system has been delayed several times since it was originally agreed upon by the participating EU Member States. However, this new aspect of European patent practice now seems highly likely to open for business in early 2023. Now is therefore the time for applicants of European patent applications and proprietors of European patents to familiarise themselves with the options available to them once the Unitary Patent System enters into force.

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.

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