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30 November 2023

Inside IP Autumn 2023

A word from editors Kirsty Dolphin and Simon Taor

Welcome to our Autumn 2023 Inside IP edition!

In this edition you will find our perspective on sector trends, the UPC, updates from the EPO and interesting UK court cases together with insightful updates from designs and trade marks.

Thanks again to all contributing authors, and we appreciate your time spent reading and engaging with our world of intellectual property. We trust you discover something captivating! Should you have additional questions or wish to dive further into topics such as the Unified Patent Court (UPC) or any other intellectual property matters, feel free to reach out to our team in the UK and Germany. Remember, we are just an email or call away.

To read further click below

The proof is in the patent – on the question of experimental data in AI-related patent applications before the EPO
Darren Hau takes a look at recent decisions issued by the Boards of Appeal in the field of AI.

Moving apart – diverging approaches to broad functional antibody claims in Europe and the US
Matthew Handley and Kyle Struthers-Burgess discuss how recent decisions issued by the U.S. Supreme Court (Amgen v Sanofi), and the European Patent Office’s Boards of Appeal (T 0835/21), highlight the increasingly divergent approaches to the patentability of functional antibody claims in Europe and the US.

Vaccine patent filings – recent trends in this dynamic and fast-moving field
Anton Hutter and Charlotte Wilding explore recent developments in the field of vaccines and considers important patent filing trends in this dynamic and fast-moving field.

5G Advanced – the big developments and the big innovators
Henry Aldridge takes a look at some of the big expected development areas for 5G Advanced in Release 18 and beyond, and who the big innovators are.

High-altitude electric aircraft development -a high-level view
Jack Rogan looks at how significant progress has been made and patents filed in a broad spectrum of technology areas including battery systems, propulsion systems, airframe design, control systems, and lightweight and durable airframes and materials.

The European Patent Office (EPO) ends the “10-day rule”
Kirsty Dolphin reminds that since 1 November 2023, the EPO no longer follows the ’10-day rule’ and all communications from the EPO will be considered as delivered on the date they display, eliminating the current practice of being recognised ten days after.

G1/22 and G2/22 Enlarged Board Decision regarding priority
Kirsty Dolphin and Emma Longland reviews the answers to last month’s Enlarged Board of Appeal decision which showed a departure to current practice and may significantly affect EPO Opposition and Appeal Practice where priority rights are routinely challenged in the default position that an applicant is entitled to claim priority.

AI inventions – a new permissive regime in the UK?
The UK Intellectual Property Office (UK IPO) attitude towards the patenting of AI inventions has been fairly strict. However, a High Court decision handed down last week has adopted a much more permissive approach which puts the UK out of step with the practice of the European Patent Office (EPO). Richard Kennedy, Peter Thorniley and Mahdi Godazgar explain.

Protecting “hidden” consumables
Earlier this year the EU General Court issued a decision in case T-617/21, confirming that registered design protection is allowed for an electrode, a consumable, even though the electrode is not externally visible when used within a plasma cutting torch. Caroline Allen takes a closer look.

Costs at the UPC – Where do you stand?
Peter Thorniley explores how practitioners have been reading the runes of the early decisions for signs of how the new European legal order for patents will shake out. One area that is still open to a degree of speculation is the costs regime.

Protective letters at the UPC
The UPC allows for the filing of protective letters, which can be a useful strategy if there is a risk of a competitor applying for a preliminary injunction or other provisional measures. Caroline Allen takes a closer look.

Series of marks – Enjoy them while they last?
As part of the UK IPO’s review of its digital services a consultation recently invited comments on trade marks, designs, mediation and other matters and one of the topics of the consultation was “series of marks”, with the IPO seeking to review their value and either reduce the number of marks that can constitute a series or abolish them altogether. Yoann Rousseau explains.

Use a Trade Mark CORRECTLY or ….. lose it….
Gloria Parmesan looks into the case of DPG Deutsche Pfandsystem (DPG) v Užstato sistemos administratorius VšĮ, DPG where it was not able to rely on its trade mark registration in an opposition even though it proved without doubt that the mark had been used.

JACK DANIEL’S is not the victor/UKIPO considers brand extension and family of marks arguments
In this article David Birchall considers this case which is an important reminder that there are sometimes limits on the powers of even well-known brands to prevent the use of marks for identical and closely similar goods and services.

Trade Marks, Designs and PVRs – secure representation for duplicated UK rights to minimise the risk of loss of rights
Clare Turnbull explains what you need to do as the three year transition period allowing attorneys based in the European Union to continue to act as professional representatives for duplicated UK registrations following the UK’s separation from the EU Trade Mark and Design System (EU IPO) and the Community Plant Variety Office (CPVO) comes to an end on 31 December 2023.

Cipla v Salix Pharmaceuticals – Arbitrator backed who refused to allow additional expert evidence late in proceedings
James Tumbridge and Benedict Sharrock-Harris look at the case where a party was challenging an award based on a patent licence, and whether a patent claim was infringed the Court found that the Arbitrator’s refusal to admit new evidence on one particular issue at a late stage in proceedings was not a serious irregularity by the Arbitrator which would be in breach of his duty to act fairly.

Newron Combination Lock – UK Patents Court restricts combination SPCs
The UK Patents Court recent decision in Newron Pharmaceutical Spa provides a useful review of the SPC Regulation Article 3 and the debate over the meaning of ‘product’ in pharmaceutical marketing authorisations. James Tumbridge and Benedict Sharrock-Harris take a closer look.

VS News
A round-up of the latest Venner Shipley news.