22 August 2023

Inside IP Summer 2023

A word from editors Kirsty Dolphin and Simon Taor

Welcome to our new Inside IP edition and welcome to our new brand! We felt it was time to present ourselves in a new light and to truly reflect the dynamic European IP firm we now are, based on our desire to go the extra mile for our clients. We see what others miss and empower creators and innovators to maximise their potential, rather than just giving them what they think they need. This essence of going beyond aligns with the theme of unique perspectives, giving us a clear direction for our brand.

Have a look at our new website and read more about our rebrand journey here.

In this edition you will find our perspective on sector trends, the UPC, updates from the EPO, recent cases in designs and decisions from UK courts, together with insightful updates from our trade marks team.

Once again, a big thank you to all our contributing authors, and thank you for your time reading this and sharing our world of IP. We hope you find something of interest! If you have any further questions or would just like to discuss more on the UPC or anything else IP related, please do not hesitate to reach out to us. We are, together with our colleagues across the UK and Germany, looking forward to seeing you soon and as always, we are only an email or call away.

To read further click below

FemTech patenting trends
Hannah Auger & Jessica Wilkinson look at five ground-breaking companies in the FemTech industry, all of whom have filed patent applications to protect their technology.

Patenting materials informatics inventions in Europe
Pawel Piotrowicz, Anwar Gilani and Robert Holbrook discuss the growth in patent filings in the field of material informatics and European patent law in this field

Welcome to the Unitary Patent and Unified Patent Court
European patents can now be enforced across 17 participating countries in a single action, while third parties can also challenge patent validity in the same way. You can access our UPC Hub here.

A changed landscape for patents in Europe
Anton Hutter is discussing what the introduction of the UP and UPC has changed if you are looking to protect your invention and if there is something you need to do if you already own patents in Europe.

Description amendments at the EPO – a light at the end of the tunnel?
Rob Cork discusses how an update to the EPO’s Guidelines for Examination in March 2021 precipitated a significant change in EPO practice in cases where there are perceived inconsistencies or contradictions between the claims and the description, which typically result from the claims having been amended during prosecution.

G1/23: new referral to the Enlarged Board of Appeal (EBoA) whether a product was “made available to the public”
Martin Crow looks at how this new referral concerns the interpretation of “made available to the public” within the context of Article 54(2) EPC and the standard set by G 1/92 for determining if a prior use of a product may be considered “state of the art”.

The impact of G2/21 on biotech patent drafting – extraordinary claims require extraordinary evidence
Matthew Handley & Anton Hutter explore G2/21, a recent Decision issued by the European Patent Office’s highest law-making court, the Enlarged Board of Appeal (EBoA) which has important implications for patent Applicants, in the biotech field in particular, in relation to the amount of data that should be included in a patent application in support of the technical effect of a patent claim.

Change to compliance period of UK Divisional Applications
Kirsty Dolphin looks into guidance and provides examples on how this change has an impact on cascading divisionals, as all divisionals will now follow the non- extended compliance period of the original parent application.

Occasionally visible parts – and protecting them as designs
The Court of Justice of the European Union (CJEU) has issued a judgement on questions referred to it by the Bundesgerichtshof seeking guidance on how to assess the visibility of a design in normal use. The CJEU’s response opened the door to arguing that some occasionally visible component parts should be protected as registered designs instead of applying an objective assessment, such as if the design forms part of an external surface of a product use. Caroline Allen is having a closer look.

Marks & Spencer win latest supermarket IP battle against Aldi
Daniel Ridley is reflecting on the the M&S v Aldi design dispute over the much-reported Christmassy gin bottle.

VW’s GTX challenge backfires
Camilla Sexton looks closer at how VW has failed in opposing registration of XTG in the EU based on GTX.

Paris 2024 Olympic games and “golden” Intellectual Property Rights
The popularity of the Olympic games is such that even non-affiliated businesses try to capitalise on the public enthusiasm for the games. However, as the Olympic games are protected by robust intellectual property rights that is a very risky strategy as Yoann Rousseau & Mechthild Liebelt explore in this article.

UKIPO makes procedural changes to representation for trade marks
The UK intellectual Property Office (IPO) has recently implemented a significant change to the rules concerning the representation of certain types of trade marks and design rights in inter partes contentious proceedings which Clare Turnbull covers in this article.

When is a bag not a bag? The METABIRKIN and BEVERLY HILLS / GREENWICH POLO CLUB cases
Clare Turnbull and Vivek Patel are looking at two interesting decisions in the luxury brands industry and how these highlight the importance of a well-drafted specification of goods and services to ensure comprehensive protection is in place, along with regular reviews of the protection in place and filing of new applications to cover expansion of product ranges.

A Work Life Balance? – How software produced at home can still be considered ‘during the course of employment’
James Tumbridge & Benedict Sharrock-Harris explore how in the case of PQ Systems Europe Ltd & Anor v Aughton & Anor, we saw how the age of hybrid working muddies the waters on what is done ‘in the course of employment’ and look at what it means for the employee as well as the employer.

Digital Currency – Court finds Arbitration Clause in platform T&Cs does not deprive the Court of Jurisdiction in consumer claim
Benedict Sharrock – Harris discusses the growing interest in disputes concerning digital currency, as the technology is not widely understood and the jurisdiction issues are not always clear.  Knowing in what circumstances the English Courts are willing to take jurisdiction and their attitude toward arbitration proceedings in this arena is important.

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