Professional
Patents
Patents represent a key aspect of our clients’ intellectual property and may have significant commercial value, whether used to protect core technology, keep competitors out of a particular technical/commercial space, or as a source of revenue through licencing or assignment of rights. We understand that the role of patents may vary depending on the nature and life-stage of our clients’ businesses and seek to offer practical and tailored advice.
In drafting patent applications, we seek to define your inventions in a way that offers commercially-relevant protection, provides flexibility to address any unforeseen objections arising during prosecution, and ultimately provides valuable rights that can be defended and enforced, if required.
The Schlich attorneys adopt a creative and practical approach to prosecution, and have experienced considerable success through direct interaction with EPO and UKIPO Examiners. We can also advise on effective strategies for accelerating prosecution, or deferring costs, to reflect your commercial needs. We are also able to coordinate patent prosecution worldwide, either directly through the European and International (PCT) patent systems or by working through established relationships with trusted foreign law firms.
The Schlich patent team have developed considerable experience, and a proven track record of success, in EPO opposition and appeal proceedings (both offensive and defensive). We are also able to advise on, and propose practical solutions to, potential freedom-to-operate and infringement issues.
Recent Insights
Read the latest insights from the Schlich team reporting recent cases and updates to patent law.
UK Patents Court Confirms the Importance of Knowing Who Owns What in Infringement Proceedings
In a recent decision of the Patents Court, the judge found that the person who started infringement proceedings was not, in fact, the proprietor of the patent and thus did not have any rights in the patent to enforce. Similarly, the judge held the defendant liable for infringement of the patent despite the defendant claiming to be the proprietor. This decision highlights the problems that can arise when ownership of intellectual property is unclear.
Today’s The Day – The UPC Has Opened!
After several years of delays, formalities, constitutional disputes, and doubts in the minds of many as to whether the European Union’s new Unified Patent Court would ever open for business, this new court has finally opened its doors and will start taking cases from today.
Not all epitopes are equal: patent rights in antibodies for challenging targets.
T0435/20 demonstrates the limit of obviousness of the “standard” procedure of generating antibodies for peptide epitopes. T0435/20 also serves to teach us that non-routine methods for generating antibodies for rare or “challenging” epitopes must be fully disclosed and apply to all of the antibodies that are claimed.
DECISION IN THE EBA PLAUSIBILITY REFERRAL (G2/21)
In summary, in support of inventive step in a claim in a European patent: yes, post-filed evidence can be used; and yes, it can be used to prove a technical effect. But this is subject to a proviso that the technical effect to be proved can be derived from the application as filed and is directed at the same invention as disclosed in the application as filed.
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.
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.
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.
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.
Get in touch
Our team of UK and European Patent Attorneys and Chartered Trade Mark Attorneys are highly knowledgeable and experienced in assisting clients with all aspects of their IP needs.
Contact us now to find out more about how we could help you and your business.
