News & insights

Events

5 October 2021 - The chemistry perspective: Sufficiency – A fatal attack or harmless argument?

Join us for an interactive live webinar as we look at how the EPO approaches sufficiency, illustrated by case studies from the front line before the EPO Examining Divisions, Opposition Divisions and B...

News

The UPC: the latest news and a quick refresher

Germany has recently moved forward on steps to bring the “Agreement on a Unified Patent Court” (UPC Agreement) into force, and the Unified Patent Court Preparatory Committee has laid out an ambitious ...

Case law

Patenting AI-devised inventions: a look at the approach being taken in the UK and globally

Patent applications are pending around the world for inventions said to be devised by DABUS, an artificial intelligence (AI) “creativity machine” built by Dr. Stephen Thaler. Existing legal frameworks...

Thoughts

Changing the game: Tomorrow’s tech in the video game space (2021)

Happy National Video Games Day 2021! To celebrate, I am again combining my main areas of interest in life, patents and video games, to take another look at recent patent trends in video game technolog...

Events

7 September 2021 - Managing your IP portfolio in a post-Brexit world: 30 September and beyond

Beyond the 30 September deadline, what else should companies consider as they evaluate their UK trade mark and design portfolios?

News

IAM Strategy 300: The World’s Leading IP Strategists

The World’s Leading IP Strategists has recognised Kilburn & Strode partners in this year’s ranking.

Food & Drink

Trade marks and geographical indications in a post-Brexit landscape

This month saw Gower Salt Marsh Lamb becoming the first new product to be granted Geographical Indication status under the UK’s new post-Brexit scheme. More will surely follow from both the UK and EU,...

Case law

Oatly loses trade mark lawsuit against Glebe Farm

Following Oatly’s successful appeal and registration of the slogan “It’s like milk but made for humans”, on Thursday 5 August the High Court ruled in the latest instalment of the Oatly trade mark saga...

Updates

Patents and the energy transition

In April 2021, the European patent office published their report on patents and the energy transition1. The report comes amidst both the Covid-19 pandemic and a concerted commitment from many compani...

Case law

Impossible inventions

Every now and then, a patent attorney will come across an invention which seems too good to be true, for example, inventions which purport to ‘disprove’ or ‘violate’ various well-established theoretic...

Thoughts

Later, data! Possible new Enlarged Board of Appeal referral on the use of post-filed data

When can data generated after the filing date of a patent (“post-filed data”) be used to support inventive step at the EPO? A possible new referral to the Enlarged Board of Appeal may clarify this.

News

Top-tier European IP firm Kilburn & Strode expands partnership with hire of Peter Gray into the firm’s Tech group

Bringing over 25 years of experience, Peter’s wealth of knowledge spans a wide range of physics-based technologies. His particular work in the telecoms sector and knowledge of semiconductors strengthe...

Analysis

Bottoms up – what’s brewing in the beer industry?

A recent report published the news that the Netherlands was the largest beer exporter in the EU in 2020. Not only for your regular bottle of beer, but also in the area of non-alcoholic beers. Besides ...

News

Kilburn & Strode partners sign IP Inclusive Leaders’ Pledge

We were one of the first signatories of the IP Inclusive Charter and we are part of IP Inclusive’s senior leaders’ think tank, which has now launched the new ‘Leaders’ Pledge’.

Events

28 July 2021 - How to avoid the mechanical elephant trap: insufficiency

Please join us, as experts Jim Miller and Gail Taylor run through accidental red flags in patent drafts.

CRISPR

How should human genome editing be regulated?

Two reports published by WHO provide the first global recommendations on appropriate institutional, national, regional and global governance mechanisms for human genome editing.

Thoughts

How to progress in your career and stay true to yourself

Even today, it is more difficult for a woman to reach a senior position in IP than it is for a man. While the IP industry seems to be going in the right direction, there are still issues and behaviour...

Events

Patenting MedTech in Europe: key take-aways from part 2 of our Patent Power Half Hour webinar

Here is a summary of the key take-aways from the webinar that ran on 14 July 2021, covering AI in MedTech. We discussed the strategic considerations of patenting your AI inventions and explore two sec...

Updates

Guidance on the correct use of trade marks in a business — checklist

Carrollanne Lindley and Lorraine Lowell Neale have produced a handy checklist as a simple method of creating clear and concise steps for both internal and external teams to adhere to.

Events

14 July 2021 - Patent Power Half Hour - Patenting medical technology in Europe (Part 2)

This concise 30-minute session will cover the very latest on protecting MedTech innovations in Europe where AI is involved. We'll discuss the strategic considerations of patenting your AI inventions a...

Case law

Insufficient Optics - Sufficiency through the objective lens of the EPO (T0123/16)

It is not often that the world of optics produces contentious patents. It is even rarer for a patent in this field to be revoked on the basis of insufficient disclosure.

Case law

Oatly’s appeal is udderly successful

In an appeal brought by Oatly AB, the General Court recently overturned the decision of the Board of Appeal, and allowed the slogan ‘IT’S LIKE MILK, BUT MADE FOR HUMANS’ to be registered (Case T-253/2...

News

‘A mighty prosecution shop’ our 2021 IAM Patent 1000 results

Kilburn & Strode is excited to announce that eleven of our esteemed patent attorneys have been recognised and praised in the 2021 edition of IAM Patent 1000.

Updates

Read our guide: Managing a trade mark portfolio

To help businesses understand and capitalise on the hidden value of their brand, we have partnered with LexisNexis – to produce a guide that contains a wealth of strategic and practical advice.

Events

1 July 2021 - Clearing the way – attacking patents in Europe

Kilburn & Strode’s Chemistry team invites you to discuss the patentability of chemical inventions before the European Patent Office.

Case law

Double take: Enlarged Board of Appeal confirms in G 4/19 that patent applications can be refused on the basis of double patenting

Answering the questions referred in T 0318/14 the Enlarged Board of Appeal confirms patent applications can be refused on the basis of double patenting.

Events

Patenting MedTech in Europe: key take-aways from part 1 of our Patent Power Half Hour webinar

Patent Power Half Hour is Kilburn & Strode’s information-packed, supercharged webinar series. Here is a summary of the key take-aways from the webinar that ran on 23 June 2021, covering the fundamen...

Events

23 June 2021 - Patent Power Half Hour - Patenting medical technology in Europe (Part 1)

The first session will cover what you need to know when patenting MedTech inventions at the EPO, how to maximise protection and dive into examples at what the EPO considers to be the edge of allowabil...

Case law

AI claim-drafting strategies

One issue with patenting AI-related inventions is how to claim subject matter that will be of commercial value to the applicant. This is not as straightforward as in many other technical fields.

Thoughts

Voices of Pride: LGBTQ+ Allies

We don’t just celebrate diversity this month. It’s something our firm celebrates every minute of every day. We work our best inclusively, both with clients and with each other.

News

Managing IP’s IP Stars 2021 rankings released

Kilburn & Strode retains tier 1 status in the Patent prosecution category and in the Trade mark prosecution (patent & trade mark attorney firms) category.

Events

15 June 2021 - The chemistry perspective: Added matter at the EPO

Kilburn & Strode’s Chemistry team invites you to discuss the patentability of chemical inventions before the European Patent Office.

News

Partnership announcement: Kilburn & Strode appoints new partner to expand Chemistry offering

Jo Bradley has joined Kilburn & Strode’s Life Sciences & Chemistry group. The appointment is part of the firm’s growth strategy, with the expansion of the chemistry offering.

News

Why a waiver won’t work

The World Trade Organization is considering waiving IP protections to promote the manufacture and distribution of COVID-19 vaccines.

Case law

BL O/264/21 - Brew dares wins!

In April, the UK Intellectual Property Office issued its decision on the inventorship and entitlement of patent no. GB2571465, building on earlier case law.

Case law

Anti-counterfeiting Day 2021

Counterfeiters are circumventing online marketplaces’ anti-counterfeiting measures in various ways, including using fake or stolen addresses and hacking legitimate user accounts to sell fake goods.

News

G 1/21: hearing on using ViCo postponed for entirely non-ViCo-related reasons

Last Friday, the Enlarged Board of Appeal (EBA) heard the case on G1/21 “Oral proceedings by videoconference”. However, the hearing was postponed for procedural reasons.

Updates

Four tips for handling description amendments in light of EPO practice changes

The EPO's Guidelines have been updated to set out in more detail the changes that need to be made to the description and figures to ensure that they are brought into line with the allowable claims pri...

Events

Patenting software in Europe: key take-aways from part 2 of our Patent Power Half Hour webinar

A summary of the key take-aways from the Patent Power Half Hour webinar that we ran on 25 May 2021 on patenting software in Europe.

Case law

Uplifting results for patent owner in IPEC judgement

Find out the results of a two-year legal battle between fashion competitors. Freddy SpA created a uniquely different range of jeans which was globally popular and commercially successful.

News

Kilburn & Strode retains its 2-star ranking in the Best Companies survey and gains new awards

We are thrilled that, despite the stressful year COVID has dealt us, we have again earned a 2 Star accreditation in Best Companies to Work For.

News

New European Commission report signals appetite for revised GMO regulation in light of CRISPR/Cas9

The European Commission published a report on 29 April 2021 which reviewed the current legislative framework for the regulation of new genomic techniques (NGTs).

Thoughts

Considerations for formulation and combination patents in Europe

We consider patent applications to new drug formulations and combinations. Where a substance or composition is already known for a medical use, it may still be patentable for treating the same conditi...

Thoughts

Five ways to improve wellbeing

This week many firms have been observing Mental Health Awareness Week, engaging in activities and events designed to help us improve our wellbeing and reconnect through nature.

News

Top-tier European IP firm Kilburn & Strode cements strategic trade mark offering with hire of Rowena Tolley as a partner in the firm’s trade mark group

As one of MIP’s “Top 250 Women in IP” and with a wealth of experience across a wide range of sectors, Rowena will be a cornerstone of Kilburn & Strode’s impressive trade mark practice.

Events

Patenting software in Europe: key take-aways from part 1 of our Patent Power Half Hour webinar

A summary of the key take-aways from the Patent Power Half Hour webinar that we ran on 5 May 2021 on patenting software in Europe.

Case law

Specifically ignoring efficiencies in AI?

The current Guidelines for Examination at the EPO consider AI and Machine Learning to be pure mathematical methods, in contrast to other areas of computer technology such as database technology.

Thoughts

Patenting visual effects inventions in Europe

We take a look at some of the films that have been under the spotlight in the Visual Effects category for their innovative use of face replacement technology. Can these be patented in Europe?

Thoughts

Cannabis: A brief overview of US and European approaches

Cannabis laws and regulations in the US and Europe can be complicated. That’s why we’ve produced a handy comparison of key aspects regarding medical and recreational cannabis laws you should know.

News

Kilburn & Strode pro bono activity for NHS Charity leads to successful appeal

Our dedication to helping individuals and communities obtain justice for their patents and trade mark disputes is one of the stand-out reasons why many clients choose to work with us.

Case law

Assessing the scope of Genuine Use – Replacement parts, accessories and second hand goods

Comparing the CJEU’s decision regarding the Ferrari TESTAROSSA case with the UK High Court’s decision on the AIWA Co. Vs AIWA Corp. case.

News

Kilburn & Strode’s Tech and Life Sciences & Chemistry groups strengthen their top-tier service offering with new partner and counsel promotions

We are delighted to announce that Harry Harden, from the Tech group, has been promoted to Partner and Juliet Hibbert has been promoted to Counsel.

Updates

A week is a long time at the EPO…

Following our recent thoughts on the referral to the EPO’s Enlarged Board of Appeal regarding compulsory video conference (ViCo) oral proceedings, there have been some interesting developments.

Case law

T 0755/18 - An answer, but what is the question?

This past month the Boards of Appeal issued the (unpublished) decision in T 0755/18 (Semi-automatic answering/3M INNOVATIVE PROPERTIES).

News

Speak, and ye shall be heard (unless you’re on mute)

Referral to the Enlarged Board of Appeal regarding legality of non-voluntary video conference appeal hearings to go ahead

Case law

G1/19 - The written decision is in!

The written decision from the Enlarged Board is in! We've been through the decision, picking out the details, and our thoughts on their impact are below.

Thoughts

If I could say one thing ...to male allies

Welcome to the third instalment of our series for international Women’s Day “If I could say one thing”. We will hear words of wisdom and advice from three leading women in Intellectual Property.

Thoughts

If I could say one thing ...to women working in a male-dominated environment

Welcome to the second instalment of our series for international Women’s Day “If I could say one thing”. We will hear words of wisdom and advice from three leading women in Intellectual Property.

Thoughts

From Titanic to the Internet of Things – the role of patents in communication technology

The Covid-19 pandemic has brought home how much we rely on communication technology. Innovations ranging from fibre broadband to 5G and from video calls to cloud file storage help people keep in touc...

Thoughts

If I could say one thing …to my younger self at the start of my career

Welcome to the first instalment of our series for international Women’s Day “If I could say one thing”. We will hear words of wisdom and advice from three leading women in Intellectual Property.

Case law

End of the road - review of an opinion issued by the UKIPO (BL O/417/20)

Review of an opinion issued by the UKIPO (BL O/417/20)

Thoughts

Me, myself & AI – an interview with Professor Ryan Abbott

Partner Alex Korenberg and Associate Tom Hamer sit down at the virtual table with Artificial Intelligence expert and author Professor Ryan Abbott.

Case law

An evolution of AI case law?

An appeal brought by a private applicant against a decision by the patent office to refuse an application related to an Artificial Intelligence able to evolve without human intervention.

Thoughts

Talk innovation podcast

Our Chair, Gwilym Roberts, moderated a podcast on oral proceedings by videoconference in the series produced by the EPO called ‘Talk innovation’.

Updates

Kilburn & Strode’s “superlative” trade mark team maintains top tier ranking in WTR 1000 2021

Kilburn & Strode is once again delighted to be ranked as a top-tier firm in this year’s World Trademark Review 1000.

Thoughts

How business is shaping IP

In this article, part of our series on the impact of COVID-19, we look at business trends and how they will affect IP rights.

Thoughts

What impact will Brexit have in the long term?

While the news in 2020 was dominated by the COVID-19 pandemic, the year also saw the conclusion of the Brexit process. What will it mean for IP in the coming years?

Thoughts

The new social attitudes

The pandemic has changed the ways we work, shop and socialise. This will have knock-on effects for the management and protection of IP rights.

Case law

Designated survivor (J 0012/18)

In the recent case concerning the decision of the #EPO Board of Appeal (J 0012/18), the applicant failed to ensure that designated states were not withdrawn before filing divisional applications.

News

EPO Guidelines go gender neutral

Last week the EPO published an advance copy of one of its core texts, and we are delighted to see the include the introduction of gender neutral language.

News

Top-tier European IP firm Kilburn & Strode expands in the Netherlands with the hire of Rike Dekker

Bringing a unique blend of private practice and in-house experience, Rike is well-positioned to build the Dutch operation for Kilburn & Strode within the Life Sciences & Chemistry fields.

Thoughts

What will business as usual look like for IP in 2021?

In the first of a series of articles looking at trends for 2021, Kilburn & Strode attorneys discuss new ways of working arising from the COVID-19 pandemic.

Thoughts

How the law will change in 2021

The changes brought by the COVID-19 pandemic have had an impact across society, and courts and IP offices are no exception.

Thoughts

What’s changing IP strategies?

New ways of working; budget pressures; and legal precedents: all these trends are likely to change IP strategies in 2021.

Case law

Does shiny black and coloured foil count? General Court partially annuls three decisions on the comparison of 3D Champagne bottle marks

Ace of Spades recently brought oppositions against Munich Accessories GmbH’s EUTM applications for a total of three different champagne bottles.

News

The rise of the Cyber Examiner

Crisis is an innovation accelerator, often driving mass uptake of existing technologies and the current pandemic is no exception.

News

Strategies for promoting patenting among academics and researchers

This article explores the challenges involved in the transfer of knowledge and technology from universities and research centres to industry.

Thoughts

Cannabis Trade marks and commercialisation in the US, UK and EU.

The commercialisation of cannabis products is resulting in one of the fastest growing and unpredictable emerging markets globally.

Technical Tips January 2021

Reasons why the CRISPR priority appeal failed

The Board of Appeal in the infamous CRISPR priority appeal recently issued its written reasons for dismissing the appeal.

Technical Tips January 2021

Superficial Intelligence (T 0161/18 – Sufficiency of AI inventions)

The algorithm used by AlphaGo to defeat 9-dan professional Go player Lee Sedol in 2016 was a major milestone in artificial intelligence research. However, while filing numbers for patent applications ...

Technical Tips January 2021

Essential Inventive Step Reminders (T 686/18)

A recent Board of Appeal decision at the European Patent Office (EPO) has reaffirmed a key practice point in the demonstration of inventive step when drafting and prosecuting patent applications in Eu...

Technical Tips January 2021

UK Supreme Court hands down judgment in landmark standard essential patents cases

The UK Supreme Court (UKSC) recently handed down its judgment in Unwired Planet v Huawei and Conversant Wireless v Huawei & ZTE.

Thoughts

A short primer on patenting AI and machine learning inventions at the European Patent Office

AI is booming. From banking to medical devices to self-driving vehicles, it's ubiquitous. But what can be patented in this area?

Thoughts

Cannabis: Patents in Europe

Patents are a powerful tool in Europe to protect inventions in the rapidly-growing field of cannabis-derived therapeutics.

News

UK IPO issues clear guidelines for SPC applications after Brexit

The UKIPO has issued further clear guidance on changes to the application process for Supplementary Protection Certificates (SPCs) in the UK from 1 January 2021.

News

Juve Patent UK 2021 ranking

Juve Patent has published its second annual ranking of the UK’s patent firms. The publications recommends Kilburn & Strode in five key fields of expertise within the Patent filing category.

News

Why standard essential patents are now essential to you

As a patent attorney I have been involved in the world of mobile telecommunications and standard setting organisation proceedings for coming up for 25 years of my life now so it has taken up a large p...

Case law

A patentable computer program could only be one button press away

We have published the following article in the Journal of Intellectual Property Law and Practice reporting the decision in Lenovo (Singapore) v Comptroller

Case law

Surgical Complications: T1631/17 and implicit surgical steps

It is well known that “methods of treatment of the human or animal body by surgery” are not patentable at the EPO in accordance with Article 53(c) EPC. What may not be so well known is that method cl...

News

Invigorating your portfolio: a summary

IP relevance, portfolio value, managing the patent process, interacting with IP offices, the impact of COVID-19 on counterfeiting and how the pandemic is affecting working practices: these were just a...

Brexit

Brexit and UK comparable rights: are you ready?

From 1 January 2021, the UK will no longer be covered by EUTM trade mark registrations, Registered Community Designs and International Trade Marks designating the EU.

Brexit

Customs Applications for Action post Brexit - and EORI numbers

Before the end of 2020 rights holders are advised to check the basis for their EU Customs Application for Action (AFA).

News

The value of a global patent portfolio

For countless corporations across the globe, their commercial prowess and competitive edge rests upon innovation—and, along with it, upon their ability to develop and implement a successful global pat...

Covid-19

Counterfeit Christmas

Christmas is a counterfeiter’s high season, and with UK e-commerce expected to be worth almost GBP200 billion at the end of 2020 it is likely this year’s festive period will provide even more opportun...

News

T 509/18 – Less is not always more when it comes to disclosure…

An appeal decision for European case T 0509/18 addresses the question of what the EPO considers to be an enabling disclosure in the field of machine learning. The appellant was TK Holdings Inc. and th...

Updates

Kristina Cornish, Richard Howson, Alexander Korenberg, Jim Miller and Gwilym Roberts listed as the world’s foremost patent experts in IAM Global Leaders 2021

Kilburn & Strode is excited to announce that Kristina Cornish, Richard Howson, Alexander Korenberg, Jim Miller and Gwilym Roberts have all been recognised as some of the world’s leading experts in IP ...

Case law

Patenting video games in Europe – the EPO’s Board of Appeal decide in favour of Nintendo (T1504/17)

The video game industry is hugely competitive and finding success involves significant investment in innovation. Sony’s PlayStation 5 and Microsoft’s Xbox Series S and X have each been seven years in ...

Thoughts

World Diabetes Day - Why Innovation Matters for Type 1 Diabetes

I’m reminded of technology every day. This isn’t because I’m a patent attorney. It’s because it keeps me alive. As someone living with type 1 diabetes in 2020, I’m fortunate to have an insulin pump, ...

News

Video killed proceedings in Haar

The European Patent Office has been edging towards videoconferencing (VC) hearings for several years. The advent of coronavirus drove an almost instant shift towards compulsory VC for lower level case...

CRISPR

BREAKING: CRISPR priority appeal written decision issued

Following its decision in January 2020 to uphold the Opposition Division’s decision to revoke EP2771468 (reported here), the Board of Appeal has now issued its written reasons for that decision.

News

SPCs and combination medicinal products: a cautionary tale

This article provides an overview of the decision C-121/17 and considers the impact on claim drafting in patents directed to combination pharmaceutical products.

Brexit

Disclose it by Design, not by Accident

On 1 January 2021 (after the end of the TP), UCDRs will no longer be valid in the UK and will be immediately and automatically replaced by new UK unregistered design rights. If you own an existing ri...

Thoughts

Marathon musings – patenting running watch algorithms in Europe

While many marathons (including Boston, New York and San Francisco) went completely virtual this year amid the ongoing COVID-19 pandemic, the delayed London Marathon was one of a small number to go ah...

News

Managing IP’s IP Stars 2020/21 recognises fourteen patent and trade mark practitioners

Kilburn & Strode is delighted to announce that 14 patent and trade mark practitioners have received recognition in the annual publication by MIP. IP Stars is based on rigorous and impartial research o...

News

Chambers UK 2021 ranking released: Tier 1 for Kilburn & Strode’s patent and trade mark practices

In their largest guide to date, Chambers and Partners reviewed over 20,000 respondents. Kilburn & Strode is delighted to receive a Tier 1 ranking and we congratulate all fellow practitioners.

Thoughts

Nobel Prize in Chemistry 2020 Winners from a Patent Perspective

Further to my recent article about the 2020 Nobel Prize announcements, the winners of the 2020 Chemistry Nobel Prize were announced as Emmanuelle Charpentier and Jennifer Doudna on 7 October 2020 "for...

News

Kilburn & Strode’s Trade marks team stays on growth trajectory with the hire of new attorney based in the Netherlands

Since opening its office in Hilversum at the start of 2019 (as reported here), the team, led by partner Claudia Festen, has gone from strength to strength.

Thoughts

Nobel Prize 2020: A Chemistry Patent Attorney’s View

The Nobel Prizes in Chemistry, Physics, Medicine, Literature and Peace were first awarded in 1901 after being established in the will of Alfred Nobel in 1895. As patent attorneys, it’s easy to get ...

News

Our 2020 Tier 1 Legal 500 Ranking

We are pleased to announce our Tier 1 ranking in the latest edition of The Legal 500 for UK Patent and Trade Mark Attorneys. The firm has been praised for its exemplary work and our partners have been...

News

“Leading lights” of trademark practice: WTR recognises Carrollanne Lindley and Iain Stewart in the latest GLOBAL LEADERS 2020 guide

Kilburn & Strode is pleased to announce, Trade mark partners Carrollanne Lindley and Iain Stewart have both been named in the latest edition of the World Trademark Review’s Global Leaders for 2020.

Thoughts

I’m an academic, get me out of patents: strategies for promoting patenting among academics and researchers

Academics are a curious bunch. They range from the head in the clouds, eccentric clichés to the business savvy company executives, and yet, they have one thing in common: the public trusts them to tel...

Technical Tips September 2020

UK Supreme Court (UKSC) allows Kymab’s appeal as Regeneron’s patents relating to transgenic mice ruled invalid for insufficiency

In a judgment handed down on 24 June 2020, the UK Supreme Court (UKSC) overturned an earlier Court of Appeal ruling and decided two patents asserted by Regeneron against Kymab (EP1360287 and EP2264163...

Technical Tips September 2020

EPO Enlarged Board of Appeal Decision G 3/19 and the patentability of plant and animal products in Europe

EPO Enlarged Board of Appeal (EBA) Decision G 3/19 decision sets out detailed and fundamental principles for interpretation of the law relating to the patentability of plants and animal products in Eu...

Technical Tips September 2020

EPO Oral Proceedings by videoconference – what you need to know

Kilburn & Strode attorneys have been attending oral proceedings by video conference for some time, usually using the facilities in our London office. However, the current global situation has prompte...

Technical Tips September 2020

Added subject-matter and selections from multiple lists – are things getting easier?

In T 1621/16 the Board of Appeal reversed an Opposition Division decision to revoke a patent for added subject matter on the basis the claims comprised multiple selections from lists of converging alt...

Technical Tips September 2020

Less is more when seeking patent protection for chemical compounds possessing a therapeutic effect

This case concerns important aspects of UK patent law in relation to: • sufficiency, • infringement by virtue of the doctrine of equivalents, and • threatened indirect infringement of medical u...

Technical Tips September 2020

Essential guidance on patenting software-based inventions at the EPO

A recent Board of Appeal decision at the European Patent Office has reaffirmed a key practice point in the drafting of software-based patent applications for Europe: make the technical considerations ...

Case law

Breaking – UK Supreme Court hands down judgment in landmark standard essential patents cases

The UK Supreme Court (UKSC) has just handed down its judgment in Unwired Planet v Huawei and Conversant Wireless v Huawei & ZTE.

Thoughts

Prior Use ''Pitfalls'' in EPO Oppositions

This practical update takes a look at how best to use public prior use in an EPO opposition and the potential pitfalls to avoid. A public prior use attack in opposition may seem like a sure thing, b...

Thoughts

How to lose priority in 3 ways

“Priority”. A word that can strike fear into even the most seasoned of IP attorneys. While on the face of it, the law concerning priority at the EPO can seem fairly straightforward, there are a few ...

Brexit

Teddy v PMS – Unregistered Community Design Rights (UCDRs), Brexit and the pre-Socratic Greek philosophers

A recent referral from a UK court to the Court of Justice of the European Union (CJEU) seeks to clarify if disclosure of a design outside the EU may impact the protection conferred to the design in th...

News

G1/19 Hearing – law through a lens

The EPO’s recent Enlarged Board of Appeal hearing on patentability of computer simulations was important not only for its legal ramifications. The participants were present, but for the first time eve...

News

How is COVID-19 changing patent practice?

We have all had to adapt in the past few months, as we have become used to widespread lockdowns, home working and reliance on technology rather than face-to-face contact.

Thoughts

Take away the office and what happens?

For many years, many professional services organisations were afraid of allowing people to work at home. As an HR person I heard that all the time.

Thoughts

Post-Pandemic Innovation – Part 3

An examination of innovation and patenting in previous crises has identified some consistent trends and here we look at whether we can extrapolate these to the aftermath of the coronavirus pandemic, b...

Case law

An important lesson for the pharmaceutical industry: Less is more when seeking patent protection for broad chemical formulae

This article reviews the main findings of Lord Justice Arnold in Akebia v FibroGen, a “clearing the way” patent dispute that raises important questions of UK patent law in relation to Biogen insuffici...

News

G1/19 – Referral to the Enlarged Board of Appeal – Simulation Inventions

Tomorrow, we will be following and tweeting live updates on the Enlarged Board hearing for simulation-type inventions. The hearing itself will be virtual (not simulated) and open to the public.

Thoughts

Wellbeing - Adding health to the trademark practice agenda

Whether working in the corporate or law firm environment, trademark practice leaders should ensure that they have a considered wellbeing strategy in place

Updates

Crystal clear? Patenting polymorphs in Europe

Crystal clear? Patenting polymorphs in Europe. Polymorphs of drug compounds can have significant commercial value. However, obtaining patents for polymorphs at the EPO can be challenging. Here are s...

News

Regeneron v Kymab and the effect of claim scope on the requirement of sufficiency of disclosure

In a judgment handed down today (24 June 2020), the UKSC overturned an earlier Court of Appeal ruling and allowed Kymab’s appeal on the basis the patents asserted by Regeneron were invalid for reasons...

Thoughts

Essential guidance on patenting software-based inventions at the EPO - Part 2

Following on from our analysis of T 697/17 and the guidance to consider when drafting a new software related application, we analyse recent decision T 1749/14 and outline what steps you should take to...

News

AI in Drug Repurposing

To solve the greatest challenges, it often makes sense to turn to the most advanced technology. In healthcare, the present challenge has never been greater: how to combat the coronavirus pandemic.

Thoughts

Innovation from crisis - Part 2

We have seen that patenting activity naturally levels during crises which affect subsistence or economy, though against a background of robust long-term growth.

Updates

IAM Patent 1000: The World’s Leading Patent Professionals

Kilburn & Strode is excited to announce that eight of our esteemed patent attorneys have been recognised and praised in the 2020 edition of IAM Patent 1000, the market-leading annual directory that id...

Thoughts

Destined for perpetual refusal, or verging on a new everlasting movement?

Industrial applicability, alongside novelty and inventive step, is one of the conditions an invention must meet in order to be considered patentable at the EPO and the UK IPO .

Thoughts

Why it is now easier to patent high-purity chemicals at the EPO, and how to do it

Making the initial discovery of a new and potentially useful compound is just the first stage in a long road to market for a new commercial product.

Covid-19

Second medical uses at the EPO

The COVID-19 pandemic has highlighted the importance of investigating the use of known medications for the treatment of new diseases.

Thoughts

Essential guidance on patenting software-based inventions at the EPO

Thoughts

Crisis and Innovation - Part 1

In this time of extraordinary change and uncertainty, reaction has been rapid, well-meaning and often effective at the individual, enterprise and nationwide level.

News

EPO Enlarged Board of Appeal Decision G 3/19 and the patentability of plant and animal products in Europe

Last week the EPO released another decision (G 3/19, “Pepper”) from the Enlarged Board of Appeal (EBA) regarding the patentability of plant and animal products.

Covid-19

The worldwide pharma response to coronavirus – Part 2: Promising leads

Rapid spread of the novel coronavirus, SARS-CoV-2, presents an enormous challenge for the global community.

Covid-19

How the engineering industry is aiding the fight against COVID-19

New technologies continually define and guide responses across the globe to the new challenges at hand. They ultimately save lives by enhancing our ability to harness resources in original and efficie...

News

World IP Day

Sunday 26 April is world intellectual property day – a day to celebrate the role that intellectual property (IP) rights play in encouraging innovation and creativity.

News

Opposition by videoconference is now in progress at the EPO

The European Patent Office (EPO) has announced a pilot project for holding hearings, known as oral proceedings, by videoconference before EPO Opposition Divisions.

News

The long road to gender parity

It’s time to talk. Using excerpts from PWC’s report “Time to talk” as a starting point for discussion, Senior Associate Juliet Hibbert shares her thoughts on the gender parity issue in the legal sect...

Thoughts

AI Diagnostics & Digital Healthcare

The human brain is a biological marvel with an enormous amount of raw processing power.

Covid-19

European Patents just outside of their 9 month Opposition Period can still be Opposed under the EPO COVID-19 extensions

It is common-place to await the end of the EPO 9 month Opposition period before using any recently granted EP patent in an enforcement, letter before action or negotiation regarding the monopoly right...

Covid-19

EPO calls time on most face-to-face hearings in favour of videoconferences

Prompted by the coronavirus pandemic, the European Patent Office (EPO) has announced a significant change to the way it will hold hearings – known as ‘oral proceedings’ – moving forward.

Covid-19

Will COVID-19 alter the IP systems indefinitely?

The current world-wide restrictions on travel have potentially monumental impact on the administration of legal systems.

Covid-19

A note from Gwilym Roberts, Chair

We like to say we understand what our clients are going through, but never has it been truer than now! Coronavirus (or COVID-19) has flipped everyone’s worlds upside down, creating a driving need for ...

Case law

A Game of Cubes: O/039/20 – invalidation proceedings for three registered designs

On 26 March 2019, Lin Bing (an individual) applied for invalidation of each of three registered designs owned by Wild Boards Limited (a UK online retailer) on the grounds that they were not new and di...

Covid-19

COVID-19: The worldwide pharma response to coronavirus disease

As expected in these life-threatening times, the pharma companies respond by doing what they do best: research and development.

News

Another bump in the road for the UPC… (?)

The long-awaited Unified Patent Court (UPC) and Unitary Patent system in Europe has been dealt a blow today with the decision of the German Constitutional Court that the ratification process in German...

Thoughts

Gender inequality — How many patent offices does it take to fix a leaky pipeline?

The fact that gender imbalance still permeates our society is acutely reflected in inventorship figures: only 12.7% of inventors named on patent applications are female.

News

The Sunday Times ‘Top 100 Best Companies’ recognises Kilburn & Strode with a 2-star ranking

Kilburn & Strode has been recognised as a 2-star company Trainee Daniel Wood gives us an overview of how we have got here and what this means.

Updates

Top tier ranking: Kilburn & Strode’s Trade mark team on ‘rocket ride’ in glowing review by WTR 1000

World Trade Mark Review release 2020 rankings, recognising the firm’s leading individuals and ambitious European outlook.

CRISPR

CRISPR priority appeal still alive?

Although the oral proceedings in the CRISPR priority appeal, T 844/18, concluded on 16 January 2020 with the Board of Appeal upholding the opposition division’s decision to revoke CRISPR patent EP2771...

Case law

Mission Impopsicle? – Japanese ice cream maker Akagi Nyugyo, the UKIPO, and implicit disclosure

Relatively unknown outside Japan, Akagi Nyugyo is Japan’s biggest ice cream manufacturers with a staggering 400 million of its popsicles sold annually.

Updates

Kilburn & Strode receives UK Patent Attorney Firm of the Year award

We’re extremely proud to announce, the firm’s patent team has been selected as the recipient of the UK Patent Attorney Firm of the Year award at the Global IP Awards by IAM and WTR.

Brexit

Brexit - Quick tips for holders of EU-wide registered rights

Things to consider for EU-wide rights holders.

Brexit

2020 Brexit: what you need to know

Since the deadline to agree a Brexit deal of 31 October 2019 was extended to 31 January 2020, the UK’s legal landscape has changed. We look at the effects on legislation, and the practical effects for...

News

EPO refuses to name machine as legal inventor

The EPO has now issued its first-instance decision refusing the DABUS applications in which the applicant tried to specify DABUS, a computer program, as the inventor of two European patent application...

Thoughts

AI and drug discovery

Once upon a time, drug discovery was limited by the imagination of the scientists involved. But Artificial Intelligence (AI) / Machine Learning (ML) is pushing the old boundaries of drug discovery in ...

News

Breaking News – Board upholds decision to revoke CRISPR patent

The Board of Appeal has today confirmed that the Opposition Division (OD) was correct in deciding that priority claims of CRISPR patent EP2771468 are invalid and therefore the claimed subject matter l...

Updates

Kristina Cornish, Richard Howson, Alexander Korenberg, Jim Miller and Gwilym Roberts named ‘IP elite’ in IAM Global Leaders 2020

Kilburn & Strode is pleased to announce that Kristina Cornish, Richard Howson, Alexander Korenberg, Jim Miller and Gwilym Roberts have all been recognised as some of the world’s leading experts in IP...

Thoughts

Are you building a culture of innovation?

Creating a culture of innovation, being open to change and opportunity, and capitalising on new ideas can all act as catalysts for that change to happen. The groundwork needs to be laid and those who ...

News

CRISPR priority appeal - what you need to know ahead of the hearing

Arguably the highest profile appeal at the EPO in recent years (T 0844/18) will be heard before the Board of Appeal in Munich on 13-17 January 2020.

News

National Route Closure for EPC - what does this mean in practice?

It was announced at the end November that, effective 1 January 2020, San Marino has closed the national route and thus will no longer accept European patent applications, or act as a receiving office ...

Thoughts

Capturing innovation: A snapshot of the magic mix

In our article Innovation Capture 101, we show how mastering the basics of invention capture can help organisations achieve competitive advantage and long-term business success. The practical tips dis...

News

“The UK Patents Act leaves no doubt that an inventor is a person…”

Alex Korenberg, Partner & AI Expert, comments on the recent response from the UK patent office whether an AI can be named an inventor.

News

Prioritising the Priority Claim

The Board of Appeal (BoA) recently issued its preliminary comments in preparation for Oral Proceedings in, arguably, the most high profile appeal at the EPO in recent years (T 0844/18).

Updates

Jeffrey Parker joins Kilburn & Strode to expand the firm’s offering

“We are delighted to welcome Jeffrey to our ranks. His flair and wealth of experience will further enhance our leading Trade Mark practice.”

Updates

Kilburn & Strode welcome 11 Trainee Patent and Trade Mark Attorneys and launch Paralegal Academy

Crossing a range of sectors and functional expertise, we’re very proud to announce the arrival of our new trainee attorneys. We are also excited to launch our new Paralegal Academy which saw us hire f...

News

Good news - an update on ORKAMBI availability for cystic fibrosis patients in the UK

News last month reports that an agreement has now be made, after years of dispute, for patients in England to have access to ORKAMBI though NHS England. The drug was authorised over four years ago, bu...

News

Too big to pay – has Shanks v Unilever changed the way the courts interpret ‘outstanding benefit’?

On 23 October 2019, the Supreme Court handed down its judgment on whether Professor Ian Shanks is entitled to compensation under section 40 of the Patents Act 1977 for his contribution to an invention...

News

Kilburn & Strode uphold Band 1 ranking in Chambers and Partners

We are delighted to announce our Band 1 ranking for Intellectual Property: Patent & Trade Mark Attorneys UK-wide. The report states that we are a ‘leading destination for filing, portfolio management ...

Thoughts

Innovation Capture 101

How knowing the basics of innovation capture can lead to competitive advantage and long-term business success.

News

Kilburn & Strode uphold Tier 1 ranking in Legal 500 for patents and trade marks

The firm has been noted for all-round excellence and our partners have been individually acknowledged for their industry expertise.

Thoughts

Mastering the business of patents

How understanding the stable EPO approach to patent eligibility for business method and software inventions could improve your success rates in Europe, the US and beyond

News

Kilburn & Strode builds on success of San Francisco Liaison Office venture by expanding team in San Francisco

Emily Collins and Tom Hamer bolster the firm’s offering in the United States by responding to market demand for European IP in California.

News

C 239/19 – CJEU rules UK SPC referral inadmissible – no guidance on when the patent holder for an SPC is not also the Marketing Authorisation holder

The CJEU has decided that there is no issue to be heard in this referral and has ruled it inadmissible. The matter relates to a dispute between Genentech and Eli Lilly, where Genentech has applied for...

News

SPC News – Advocate General (AG) Opinion in CJEU referrals C-114/18 (Sandoz) and C-650/17 (Royalty Pharma)

As expected, the AG published his opinion in the above CJEU referrals on the 11th September 2019. The issue at hand is the interpretation of Article 3(a) of the SPC Regulation (EC 469/2009) which sta...

Thoughts

Changing the game: Tomorrow’s tech in the video game space (2019)

It’s National Video Game Day! To celebrate, we’re exploring innovation in this exciting area by taking a look at patent trends in video game technologies at the European Patent Office (EPO).

Brexit

EUIPO and UK Proceedings (Ex Parte/Inter Partes) After Brexit

In the event of Brexit, the trade mark landscape in the UK and EU will change. This paper considers the effect on proceedings before the EU and UK Intellectual Property Offices.

Brexit

Cloning rights and filing strategy for trade marks post Brexit

Once the UK leaves the EU, the European Union Trade mark (EUTM) will no longer cover the United Kingdom.

Brexit

Brexit – Counterfeits and EU exhaustion of rights

THE UKIPO’s IP Crime Group has just issued its 2018/9 report and counterfeit activity is on the increase. Criminal trade in counterfeits increased to $509 billion in 2019; approximately 3.3% of world ...

Brexit

EU trade marks and Brexit - Known Unknowns!

These are questions which you can address with your clients who have interests in the UK or the EU.

Brexit

Ministerial merry-go-round hits IP again

Britain has a lot to be worrying about at the moment, and the resignation of Jo Johnson as (amongst other things) IP Minister today is part of a much bigger picture. However, it is worth reflecting on...

Brexit

Brexit and IP rights: what you know, what you don’t know, and what you should know.

The UK is set to leave the European Union on 31 October 2019 (“Exit Day”). There will be fundamental changes to how EU-wide rights, including EU Trade Marks and Registered Community Designs, are prote...

News

The SPC manufacturing waiver enters into force

Regulation (EU) 2019/933 of the European Parliament and of the Council of 20 May 2019 (also referred to as “the SPC manufacturing waiver”) entered into force on 1 July 2019 following publication in th...

Updates

Sharing the joy: A patent attorney's view on Kilburn & Strode’s shared parental leave policy

Training as a patent attorney requires commitment. Professional exams need to be passed. This takes time. For many, the need to sit exams coincides with a stage of life when we may consider starting a...

News

New Rules of Procedure of the Boards of Appeal approved

The Administrative Council of the EPO has just approved revised Rules of procedure of the Boards of Appeal. The new RPBA will come into force on 1 January 2020.

News

Actavis v ICOS - The Supreme Court rules on Dosage Regimes

On 27 March 2019, the Supreme Court handed down its judgement in Actavis v ICOS1, unanimously agreeing with the Court of Appeal that ICOS’ patent to a new dosage regime for tadalafil lacked inventive ...

Thoughts

Standing proud

Voices from across industry speak openly about inspiration, impact, and the essence of Pride.

Thoughts

Making an impact: Treatments for HIV and pre-exposure prophylaxis (PrEP)

Recent advances have led to enormous progress in preventing transmission of HIV. We’re looking at the history of the virus, the impact of recent developments on the LGBTQ+ community and some of the in...

Thoughts

Product launch and risk – the role of patent landscaping

We are often asked to carry out a “Landscaping” exercise for clients and the first thing that we always do is to check exactly what is required. The term is used for a whole range of different approac...

News

Accelerated prosecution of European patent applications - PACE

Accelerating the prosecution of a patent application can be useful. The grant of a patent can be critical in terms of its value with regards to investment and enforcement.

Thoughts

Gender disparity in innovation

Associate Emily Collins from our Technology team has published an article in IP Magazine titled “Gender disparity in innovation”.

Updates

IAM Patent praise the firm’s global outlook, wealth of expertise and modern attitude with another top-tier ranking

Our patent professionals have been given a rave review by legal directory IAM Patent with the release of their 2019 publication.

News

Online counterfeiting – how you can protect your brand

The global counterfeit goods industry is estimated to be worth over US$500 billion a year, accounting for 3% of international trade. Online sales make up a vast proportion of that figure and protectin...

Thoughts

The era of IP Practice 3.0

We’re all beginning to see the impact of artificial intelligence tools across aspects of work, leisure and travel. The focus of the third and final article in our series on AI and IP is therefore: how...

Updates

Kilburn & Strode signs the Time to Change employer Pledge

At Kilburn & Strode we value diversity and inclusion. We want everyone to be themselves at work. Our goal is support and promote good mental health and that means we are happy to talk about it and pro...

Thoughts

Using prosecution history in UK infringement proceedings

In the UK, prosecution history has rarely been considered during infringement proceedings. Lord Hoffman famously stated in Kirin v Amgen (2005) that “life was too short” to assess the prosecution hist...

News

SPC manufacturing waiver adopted by European Parliament

The SPC manufacturing waiver has recently been adopted by European Parliament. It is still to be adopted by the Council of the European Union, although the Council is expected to do so in a matter of ...

Updates

Kilburn & Strode’s Innovation for All Foundation enables young people embarking on a career in STEM and tackles digital exclusion

On World IP Day 2019, Kilburn & Strode is proud to announce the first grants from its Innovation for All Foundation to charities Generating Genius and Lifeshare.

News

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