News & insights

Events

2 February 2023 - FTO and beyond - join the next event in our in-house knowledge sharing series

Should I FTO and, if I do, what happens next? How to determine whether FTO is the right thing for you and, just as importantly, how to deal with the results.

Events

30 January 2023 - Unitary Patents and the UPC for paralegals

This webinar is tailored to patent paralegals looking to uncover the mysteries around the incoming Unitary Patent system and the UPC

Events

24 January 2023 - Gearing up for revocation at the UPC

This 30-minute webinar will take a look at revocation proceedings at the UPC, including the mechanics of participating in one, and will consider their role alongside opposition proceedings at the EPO

Thoughts

AI technology and patenting in the life sciences part 3: Innovations made using AI

Drug discovery and development is perhaps the most prominent area where AI can be used to make discoveries. This article explores the ramifications, if any, of using AI when seeking patent protection.

Thoughts

AI technology and patenting in the life sciences part 2: When should AI-based life science innovation be patented?

Broad protection for AI-based life science inventions may be difficult to obtain and the pace of technological development can mean that a patented technology becomes obsolete early on in the life of ...

Food and Drink

Turning up the heat: Sustainability & branding in the F&D sector

Sustainability is becoming more critical for businesses across all markets, nowhere more so than in Food & Drink. But what are the challenges in branding innovative products which are sustainable?

Drinking dining and disruption series

Drinking, dining & disruption: the revolutionaries in the Food & Drink industry – Lucky Saint

About to embark on a Dry January? Or just newly resolved to cut back a bit this year? We’re delighted to talk to Luke Boase and Emma Heal of alcohol-free lager brand Lucky Saint

Updates

Prepare for launch – how to get ready for the unitary patent and Unified Patent Court

Following the announcement of a two-month delay, the new unitary patent system is now set to launch on 1 June 2023.

Thoughts

AI technology and patenting in the life sciences part 1: Is AI-based life science innovation patentable?

AI technology has been around for about 80 years and has gone through several cycles of optimism followed by disillusionment. Yet recent years have seen unprecedent growth of this technology in terms ...

Thoughts

How the tech transfer scene is changing in Europe: an end-of-year fireside chat between Marco Morbidini and Andrea Alunni

Partner Dr Marco Morbidini meets Dr Andrea Alunni, Special Adviser to the Executive Director at the EUIPO, for an end-of-year fireside chat.

AI musings

Cycling outside the computer

The decision BL O/938/22 of the UKIPO hearing officer considers the patentability of optimisation / simulation methods, the results of which have an effect outside the computer.

AI musings

Technicality: you can’t just make it up…

The recent EPO Board of Appeal decision T 0698/19, while more concerned with the field of business-driven innovation provides a handy summary of how the EPO looks at matters that are a mix of technica...

AI musings

Digital Health and AI as medical device

As part of a wider overhaul of medical device regulation in the UK, the UK government recently published a roadmap for patient-centric regulation of software, including AI, as a medical device.

AI musings

Large Language Models – a basic explainer and look at IP developments

One of the most active areas of AI currently is the field of Large Language Models (LLMs). There is also plenty of controversy regarding these models and their use.

Events

12 December 2022 - Impact of the UPC on…businesses worried about NPEs

Part of the UPC webinar series exploring the impact of the UPC on businesses worried about NPEs. How realistic is this concern and what can businesses do about it?

Case law

Colour cohesion: the secret to registering your alcohol bottle shapes?

This article explores Swedish vodka giant The Absolut Company’s successful appeal to register one of their bottles as a 3D shape mark at the EUIPO.

Thoughts

The most revolutionary invention in sport - A Sailor’s View

When looking at the technology currently in the sport of sailing, one would imagine that it is now that the most revolutionary boating inventions are being made. We’d counter that by suggesting lookin...

Events

05 December 2022 - UPC event series: How to win a case at the UPC

There’s been plenty of discussion about the big jurisdictional questions but it’s time to start looking at how cases might actually progress and the most important question of all: how to win a case a...

Thoughts

Take 10: German Utility Models – the killer IPR in Europe

The new Unitary Patent is being lauded as the new killer Intellectual Property Right (IPR) in Europe. However, there is one IPR in Europe that is too often overlooked. Instead, it has quietly been doi...

Events

30 November 2022 - Drafting for success in Europe – pharmaceutical focus

In this webinar, we’ll walk through best-practice drafting tips for different types of patent applications filed over the lifetime of a typical pharmaceutical product, to ensure they have the best cha...

Food and Drink

AI in the kitchen: The future of food technology

The idea of robots in the kitchen once seemed like a strange and alien concept. Fast forward to today and AI is well on its way to making itself at home among our slow cookers and air fryers.

News

News on plausibility at the EPO: G2/21 Oral Proceedings

Oral Proceedings for G2/21 were held on 24 November 2022 before the Enlarged Board of Appeal to discuss plausibility and the admissibility of post-published evidence in proceedings before the EPO.

News

ViCo is go at the EPO

Following significant positive feedback, the EPO has confirmed that video conferencing (ViCo) is here to stay for both examination hearings and oppositions at first instance.

AI musings

AI and IP: Where are we headed? An industry perspective

In an insightful interview, AI Lead and Partner Alexander Korenberg sits down with computer scientist and fellow AI expert Anita Shaw to discuss patenting AI, the importance of data and the question o...

Events

16 November 2022 - Impact of the UPC on… FRAND/SEP

How will the UPC impact the world of SEP and FRAND patents?

European software patentability series

European software patentability: Zooming back in

The long and winding code - a short history of European software patentability through the lens of pop culture: Instalment XII

Thoughts

Deposits of biological material at the EPO: steps to take at PCT filing

In this briefing note, we review the necessary actions to take at the PCT filing stage when the depositor is not the applicant, in order to avoid potential problems in the European phase.

Drinking dining and disruption series

Drinking, dining & disruption: the revolutionaries in the Food & Drink industry – Hampton Court Gin

These days, gin is absolutely booming and craft gin is the hip drink of choice whatever your age. But how hard is it to stand out in such a crowded market?

Thoughts

FTO and beyond

We recently held an exciting virtual event aimed at in-house counsel, on the topic of Freedom to Operate (FTO). For those who missed the event (and those who want a refresher), here is the transcript ...

Events

2 November 2022 - Patent Power Half Hour: EPO appeals - strategy update

With post-grant EPO procedures taking on a new importance in the UPC era, optimising your appeals strategy has never been so important.

Case law

Plausibility and post-filed data at the EPO part III – a deeper dive into the case law

This is the third part of our three-part article on EPO Enlarged Board of Appeal referral G 2/21. Here, we take a deep dive into the case law for those looking for the detail, and include insights tha...

Case law

Plausibility and post-filed data at the EPO part II – the technical and legal facts of G 2/21

In the second part of our three-part series, we analyse the technical/legal facts of the appeal behind G 2/21 and provide a digest of post-filed data/plausibility issues in practice.

Case law

Plausibility and post-filed data at the EPO part I – a practical guide

The EPO is currently wrestling with (arguably) one of the most significant legal challenges of the last few decades.

Case law

Place of use – wrong standard?

In a rare case of the General Court going against the Board of Appeal’s decision, a luxury hospitality operator sought to retain their EUTM despite rendering the services outside the relevant territor...

European software patentability series

European software patentability: The Business Person is Boss

The long and winding code - a short history of European software patentability through the lens of pop culture: Instalment XI

Events

27 October 2022 - FTO and Beyond - Join the next event in our in-house knowledge sharing series

Should I FTO and, if I do, what happens next? How to determine whether FTO is the right thing for you and, just as importantly, how to deal with the results.

Thoughts

What's in a name? Jose Mourinho

Chelsea Football Club Limited employed Mourinho as manager between 2004-2007 and 2013- 2015, and are still the registered proprietors of European Union Trade Mark (EUTM) and UK registered trade mark r...

Case law

These boots are made for walkin’: Fairfax & Favor Limited v The House of Bruar Limited

Spanish-style riding boots stepped into the Intellectual Property Enterprise Court this spring in an infringement trial between Fairfax & Favor Limited (“F&F”) and the House of Bruar Limited (“HoB”).

News

News on plausibility at the EPO: G 2/21 preliminary opinion released

The EPO Enlarged Board of Appeal (EBA) has issued a preliminary, non-binding, opinion on the pending G 2/21 referral. In brief: G 2/21 (introduced in our previous articles here and here) asks how the ...

News

“A leading destination for filing and portfolio management” Kilburn & Strode secures another Band 1 ranking in Chambers and Partners 2023

Kilburn & Strode is proud to be featured in Band 1 for the 12th year in succession in the Intellectual Property: Patent & Trade Mark Attorneys category in Chambers and Partners’ 2023 edition.

Analysis

IP in Sport – A game of branding and tech transformations, transfer and trickle-downs

In the highly competitive world of professional sport, technology delivers the marginal gains that can be the difference between success and failure. What role does IP play in this context?

Events

13 October 2022: Berkeley Center for Law & Technology and Kilburn & Strode are pleased to introduce you to our 2022 intellectual property series!

The ideal IP portfolio – how to ensure your AI, semiconductor or healthcare technologies portfolio is optimized for success

News

Managing IP recognises three Kilburn & Strode “Rising Stars” in 2022 rankings

IP Stars has ranked three Kilburn & Strode Rising Stars for 2022, adding to the firm’s top rankings as a Tier 1 firm in the Patent Prosecution and the Trade Mark Prosecution categories.

News

Kilburn & Strode partners Carrollanne Lindley and Iain Stewart named Global Leaders by World Trademark Review 2022

Carrollanne Lindley and Iain Stewart have been named Global Leaders by World Trademark Review 2022.

News

“Creative and proactive” with “excellent commercial knowledge,” “friendliness and jargon-free advice” - The Legal 500 2023 awards Kilburn & Strode Tier 1 rankings in patents and trade marks

Kilburn & Strode has once again been recommended as a Tier 1 firm for Patent Attorneys and Trade Mark Attorneys in The Legal 500 United Kingdom Solicitors 2023 edition.

European software patentability series

European software patentability: Let's get physical

The long and winding code - a short history of European software patentability through the lens of pop culture: Instalment X

European software patentability series

European software patentability: Breaking Bad

The long and winding code - a short history of European software patentability through the lens of pop culture: Instalment IX

Events

22 September 2022 - Women in IP event series: Intersectional Neurodiversity

Join our expert panel as we learn more about the intersectionality between gender and neurodiversity. This is a hybrid event, so we’re looking forward to welcoming some participants to London HQ!

Thoughts

Create, secure and stabilise – the vital role of patents in supply chains

Now that the world has witnessed supply chains becoming disrupted, it is perhaps the right time to focus on the vital role that patents can play in creating, securing and ultimately stabilising new or...

Events

16 September 2022 - Back to basics: Q&A on the UP and UPC from a European and US perspective

Join Kilburn & Strode and Hickman Becker Bingham Ledesma LLP for a one-hour webinar which will bring us back to basics with the new UP and UPC.

Events

14 September 2022 - The Unitary Patent: Extent of protection vs cost of protection

Join us for a 30-minute webinar which will explore cost implications of the Unitary Patent (UP).

News

West coast-based European team expands with the arrival of James Snaith from the firm’s Life Sciences & Chemistry Group

Top-tier European IP firm Kilburn & Strode continues its California expansion with the addition of another key team member in the San Francisco liaison office.

European software patentability series

European software patentability: The lovable constant

The long and winding code - a short history of European software patentability through the lens of pop culture: Instalment VIII

Drinking dining and disruption series

Drinking, dining & disruption: the revolutionaries in the Food & Drink industry - Russell & Atwell

How do disrupters in the Food & Drink sector see things themselves and what do they think the future holds? We speak to the passionate Giles Atwell, co-founder of Russell & Atwell to find out.

AI musings

Artificial Intelligence in the Life Sciences – EPO patenting trends

My colleague Sarah Lau and I have recently published an article with an overview of AI and patenting strategies and issues in the life sciences.

AI musings

T1560/19 and T1561/19: black boxes and drafting lessons

With appeal cases specific to machine learning inventions still rare, it is often a good idea to look at the wider case law around mathematical methods to see what we can learn.

AI musings

Infringing AI Patents: Who’s liable, a UK perspective?

Co-authored with Toby Bond, Bird & Bird and first published by Law360. The past year has seen a steep uptake in private investment and impressive technical achievements in AI and machine learning, acc...

Updates

UPC Rules of Procedure enter into force on 1 September 2022

1 SEP 2022: The UPC Rules of Procedure will enter into force on 1 September 2022. This is another step in the UPC coming into effect as a working forum to resolve patent disputes in Europe.

European software patentability series

European software patentability: I’m Football Crazy, but Football’s Mad

The long and winding code – a short history of European software patentability through the lens of pop culture: Instalment VII

European software patentability series

European software patentability: Cutting through the noise

The long and winding code – a short history of European software patentability through the lens of pop culture: Instalment VI

European software patentability series

European software patentability: Cheating your way to the finish line

The long and winding code – a short history of European software patentability through the lens of pop culture: Instalment V

AI musings

T0874/19: still not technical

As in the previous decision, advantages associated with doing this were not considered technical as they were not applied to solve a technical problem / in a field of technology.

AI musings

The future of AI regulation in the UK: light-touch and pro-innovation

The UK government has published a policy paper on where it sees AI regulation heading in the UK and has put out a call for views.

AI musings

Debunking AI with a chuckle: "YOU LOOK LIKE A THING AND I LOVE YOU"

One thing that stands out for AI compared to other types of technology is the confusion and myths it has created in public discourse. AI seems like this magical thing that can solve all problems or ta...

Thoughts

Innovation, collaboration and the ever-present climate crisis – Interview with Faustine Delaselle, SYSTEMIQ Ltd

To find out more about the challenges that heavy industry faces, the need for collaboration and the impact of COP26, Kilburn & Strode spoke to Faustine Delaselle of SYSTEMIQ.

European software patentability series

European software patentability: The big split

The long and winding code – a short history of European software patentability through the lens of pop culture: Instalment IV

News

We are excited to announce a long-term partnership between Practical Action and Kilburn & Strode’s Innovation for All Foundation

This year, along with our annual Innovation For All grant, we are proud and excited to announce a long term partnership with Practical Action.

Analysis

Gone in a flash - EUIPO cancels two Polaroid marks over simple shape

We examine, in detail, the two EUTM cancellation actions and decisions owned by PLR IP Holdings, a holding company of Polaroid.

Food and Drink

CRISPR Beef: coming to a plate near you soon?

We recently covered 5 challenges faced by the cultured meat industry. Now, a start-up has announced a major breakthrough which could address two of these – price and scale-up of production.

News

Go-to European IP firm Kilburn & Strode opens new office in Eindhoven

Top-tier European IP firm, headquartered in London, with offices throughout The Netherlands and Europe, and a liaison office in San Francisco, broadens its European reach with a new Eindhoven office.

European software patentability series

European software patentability: Sex, drugs and rock ‘n’ roll – the rise of the further technical effect

The long and winding code – a short history of European software patentability through the lens of pop culture: Instalment III

European software patentability series

European software patentability: That’s not technical, this is technical

The long and winding code – a short history of European software patentability through the lens of pop culture: Instalment II

European software patentability series

European software patentability: A new hope

The long and winding code – a short history of European software patentability through the lens of pop culture: Instalment I

AI musings

T 1989/17: Bump mapping math

In T 1989/17, the Board considered the technical effect of a purely mathematical distinguishing feature in the context of a computer graphics rendering algorithm (“bump mapping”).

AI musings

No artificial inventors at the EPO: detailed reasoning of the Board

Following on from the decision at the DABUS appeal hearing in December, the EPO has now issued the formal decision providing detailed reasoning.

AI musings

Response to the second AI consultation: status quo x2 and news for TDM

Last week, the UK government published its response to the second consultation on AI and IP.

News

Kilburn & Strode announces the recipients of its Innovation for All Foundation 2022 grants

Everyone at Kilburn & Strode had the chance to be part of selecting the three winning charities, who have now received 1% of our annual profits.

Thoughts

AI in life sciences: Will AI make structural biologists redundant?

With the likes of AlphaFold at CASP14 in existence, could it be argued that protein crystallographers are effectively redundant? Find out what this will mean for the future of structural biologists.

Updates

New Unitary Patent system to be “early in 2023"

15 JULY 2022: The Administrative Committee of the Unified Patent Court (UPC) has provided a further public statement on its website on 14 July 2022 about the progress on setting up the new court.

News

Managing IP: the IP Stars of 2022 have been released

We are pleased to announce we have maintained our tier 1 status in the Patent Prosecution category and in the Trade Mark Prosecution category (patent & trade mark attorney firms) for IP Stars 2022.

News

‘Superior technical ability and client care’ - Our 2022 gold ranking for IAM Patent 1000

Kilburn & Strode is excited to announce that nine patent attorneys have been recognised and praised in the 2022 edition of IAM Patent 1000, where we are ranked as a Gold Firm for our expertise.

News

Patent risk: the new boardroom priority

Patent risk management has been moving up the boardroom priority list in recent years because the cost of ignoring the risks posed by third party patents is simply too great.

Events

27 June 2022 - Medical and digital healthcare inventions: the inside line in Europe and the US

Join us for a virtual event as Kilburn & Strode and Fish & Richardson’s patent experts dive into the world of medical and digital healthcare inventions.

Updates

Kilburn & Strode wins UK Trademark Prosecution Firm of the Year accolade at Managing IP EMEA Awards 2022

Kilburn & Strode has been recognised as UK Trademark Prosecution Firm of the Year in the esteemed Managing IP Awards. The award is testimony to the team’s stellar reputation among clients and peers.

Thoughts

The semiconductor materials bringing clarity to the metaverse

Since the rebrand of Facebook to Meta, there has been a lot of buzz around the metaverse and how it will impact our society. The extension of ourselves that we present in virtual spaces is quickly cha...

Case law

Anti-counterfeiting and the rise of NFTs

On World Anti-Counterfeiting Day 2022, brands are looking to new technologies such as the Metaverse, Blockchain, and non-fungible tokens (NFTs) to disrupt counterfeit activity.

Thoughts

Kilburn & Strode global teams together again

Great to see everyone from our London, Netherlands and San Francisco offices all together again after nearly 1000 days!

AI musings

BL O/303/22 and BL O/410/22: with the right data, triggering alerts can be technical

This duo of decisions dealt with an application at the UKIPO claiming a system that would trigger alerts when a trend reversal in data was detected.

AI musings

T2681/16: is your data good enough?

The BoA decision is not concerned with AI or ML as such, it is relevant in that the decision turned on whether the claim was limited to using enough data points to be supported by the description and ...

AI musings

Cache in advance: safeguarding data

Guest post by Mark Marfe, Pinsent Masons. Development of AI systems adds a new twist to the typical considerations when licensing technology from third parties.

AI musings

Plus ca change – ML patenting on both sides of the Atlantic

More and more, the approaches on each side of the pond are getting closer to each other. One aspect of this is whether machine learning is (and should) be seen as abstract math or as a field of techno...

AI musings

Machine learning is obvious...

The latest EPO appeal case hot off the press.

Events

27 April 2022 - Future IP leaders

We are hosting a series of events for IP's rising stars and we have invited top industry leaders to share their experiences, advice, and the odd pearl of wisdom they wish they'd been told at the start...

Events

27 April 2022 - Patent Power Half Hour: UPC primer

This concise 30-minute session, tailored for practitioners based in Asia and Oceania, will discuss what the UP and UPC are, the costs and benefits of filing a request for grant of a UP and opting-out ...

News

World IP Day 2022 - IP and youth: innovating for a better future

To mark World IP Day 2022, we’ve interviewed some of Kilburn & Strode’s trainees, as this year’s theme is about IP and youth: innovating for a better future.

News

Law update on sentencing guidelines for trade mark infringement

The Sentencing Council have finally provided clear guidance for both magistrates and Crown Courts, this is excellent news for rights holders.

Thoughts

134,947 t-shirts: a behind the scenes look at how MOO make our business cards

MOO, our supplier of business cards, has just produced an article on how their cotton stock has come to be.

Case law

Caterpillar or copy-cat? – a look at copycatting in the food and drink sector

With news that an out of court settlement has been reached between Marks & Spencer (M&S) and Aldi in the widely publicised dispute over caterpillar shaped cakes, we take a deeper look at copycatting i...

Thoughts

Healthcare technology and EPO oppositions: why your dependent claims matter

Advances in diagnostic devices like X-ray machines and MRI scanners, as well as prosthetic implants and surgical tools, has led to a boom in patenting in the field of medical technology.

Technical Tips

Healthcare wearables – Five useful things to know about patenting their use (part 2: treatment by surgery or therapy)

As discussed previously, recent years have seen an explosion in the field of healthcare wearables and patenting this emerging technology is of paramount importance to many innovator companies.

Thoughts

Latest lessons from the EPO – our webinar on the most important 2021 EPO case law

We were delighted to host our ‘Latest lessons from the EPO’ webinar on 28 March 2022 covering the most important decisions made by the Boards of Appeal and Enlarged Board of Appeal at the EPO in 2021....

News

Kilburn & Strode is delighted to announce our newly promoted partners and counsel

This year we have had a record six partners promoted across our Tech and Life Sciences and Chemistry Practices.

Updates

5 interesting questions asked about the UPC: Answered

31 MAR 2022: Over the last few months, Kilburn & Strode’s San Francisco Office has hosted many sessions with clients and contacts in the US, with the aim of getting America up to speed on the new Unit...

News

Kilburn & Strode continues expansion of successful San Francisco Liaison Office

Harry Harden, Partner of the firm’s London office, is relocating to our San Francisco Liaison Office to spearhead growth and expansion of our Bay Area European offering.

AI musings

Artificial Inventors again

While there has been a lull in news stories about DABUS and the Artificial Inventor project, the appeal hearing at the Federal Court of Australia last month notwithstanding the debate has continued on...

AI musings

AI patenting across the pond, relevant also this side – IPO whitepaper

Looking across the pond, the Intellectual Property Organisation has put together a whitepaper on best practices in protecting inventions relating to AI.

AI musings

Access denied – another AI decision from the UKIPO

The UKIPO issued another decision last month that sheds some light on how the UKIPO views inventions in the AI space.

Updates

Opting out – now’s the time to get prepared

24 MARCH 2022: The time has now come to start considering whether or not you should opt your existing European patents, applications and SPCs out of the Unified Patent Court (UPC) system.

Events

28 March 2022 - Latest lessons from the EPO - 2021 case law review

To make sure no stone is left unturned, we take a look at some of the decisions from the Enlarged Board of Appeal (EBA) and boards of appeal at the EPO.

Case law

Overcoming the technicality requirement for software inventions at the EPO (T 2653/16)

A recent Board of Appeal decision at the European Patent Office ensured that an applicant was not robbed of their banknote processing machine’s patent protection.

Updates

I get patents at the EPO – what do I need to do about the new Unitary Patent NOW?

23 MAR 2022: Here’s a quick guide to all you need to know for now about a system that may appear at the end of the year.

Thoughts

Kilburn & Strode feature in Healthcare Markets International - Patent protection in fertility innovation

Around 15% of reproductive-aged couples worldwide are affected by infertility. This field is a consistent focus for research and development. However, technology surrounding IVF remains difficult.

Updates

UPC update - 21 March 2022

21 MAR 2022: The Administrative Committee of the Unified Patent Court (UPC) has just published the final version of the Rules on Representation before the UPC which affect European Patent Attorneys.

News

'An unmatched level of knowledge in IP' - WTR 1000 ranks Kilburn & Strode "among Europe’s elite trade mark attorney outfits"

Kilburn & Strode has once again received a gold ranking in the WTR 1000. The guide classes the team “among Europe’s elite trademark attorney outfits”.

Events

8 March 2022 - Patent Power Half Hour: Get ready for the UPC

It’s finally happening! After years of uncertainty, the Unified Patent Court and Unitary Patent (UPC/UP) have been confirmed. Join us for a punchy 30-minute session covering the very latest.

Thoughts

International Women’s Day 2022 - #BreakTheBias

Our Director of People & Culture, Anne Clarke, had the pleasure of asking some of our wonderful women at Kilburn & Strode about their experiences with bias.

Events

4 March 2022 - Evolving patent filing strategies in the semiconductor sector

Evolving patent filing strategies in the semiconductor sector – 4 March (date now full, sign up to hear about upcoming events)

Technical Tips

Not such a perfect match! M&S’ latest blunder

Hot on the heels of Colin v. Cuthbert the Caterpillar and “Glitter Globe Gin Gate”, M&S has kindly (if unintentionally) provided us with yet another case study in the world of Food & Drink copycats.

AI musings

2022 EPO Guidelines – What’s new for AI?

Like every year around this time, the EPO updates their Guidelines for Examination. The new Guidelines will come into effect on 1 April, and the EPO has made a draft preview available.

AI musings

Why is it so hard to patent AI (or is it?)

Indeed, when you look at data comparing success rates in Community Patent Classification class G06N patenting AI seems hard work.

Case law

Adding matter even when there is verbatim language - T2842/18

In T2842/18, the BoA considered the basis required to include a therapeutic effect in a second medical use claim.

Events

23 February 2022 - The Innovative Paralegal: Demystifying the complex European patent system

Aimed at paralegals and patent administrators who are unfamiliar with EPO procedures or want to sharpen their knowledge.

Case law

Description amendment at the EPO – latest developments

Many observers have concluded that the significant description changes forced by the EPO to bring the description into accordance with the claims are too onerous and ultra vires.

Thoughts

Destined for the digital scrap heap?

Machine learning in healthcare is an extremely hot topic, with the ability to accelerate innovation. However, a common problem for AI/ML approaches is the quality of data.

Drinking dining and disruption series

Drinking, dining & disruption: the revolutionaries in the Food & Drink industry - Moorish

How do disrupters in the Food & Drink sector see things themselves and what do they think the future holds? We decided to speak to some of the sector’s most innovative and passionate founders to find ...

Case law

High Priority: New Enlarged Board of Appeal referral on legal entitlement to priority (G 1/22 and G 2/22)

We recently reported on an expected new referral to the EBA on a point of priority entitlement, for consolidated appeals T1513/17 and T2719/19. A referral has now been made.

News

Big news, yet no news: UK Government retains status quo for exhaustion of IP rights – at least for now…

Ever since the Government’s consultation on the exhaustion of IP rights ended in August 2021, businesses which trade between the UK and EU have been waiting for further developments to this conundrum.

AI musings

AI case law catch-up: (T0872/19)

This case (T0872/19) seems to have slipped the net of my case law feed until last week although the decision came down in October. I am reporting it here for AI case law aficionados, as there was lit...

AI musings

Neural networks are obvious …

Neural networks are obvious? There are of course many applications of neural networks or machine learning in general where the way neural networks are used is far from obvious.

AI musings

AI is technology (or so you would think)

AI is a field of technology – to most of us, this statement would not be controversial as reported in a recent survey by McKinsey, 55% of us said their organisation had adopted AI in at least one func...

Updates

Unified Patent Court (UPC) and Unified Patent system – updates on “Protocol on Provisional Application of the UPC Agreement”

28 JAN 2022: The Preparatory Committee of the Unified Patent Court has announced the entry into force of the Provisional Application Protocol of the UPC Agreement following the recent ratification.

Events

27 January 2022 - Priority at the EPO: Spotlight on critical issues

Our Life Sciences and Chemistry team invites you to our latest event on priority at the EPO, as we discuss and answer your questions towards two critical topics in an interactive live discussion.

Food and Drink

Spice up your life: intellectual property for the recipe revolution

With recipe repertoires growing post-pandemic, and an increased trend for buying recipe kits, intellectual property is of ever-increasing importance in the food industry.

Case law

Mechanical insufficiency: how to avoid the elephant trap

When drafting patents for mechanical inventions, insufficiency issues are rare. However, there are still some nasty traps that one can fall into.

News

Kilburn & Strode grows tech capabilities with new partner hire Frodo Ferro in the Netherlands

Kilburn & Strode is delighted to announce the appointment of Frodo Ferro as Partner in the firm’s Tech practice group in the Netherlands.

News

Edging towards a circular model: recent innovation in the design and recycling of plastics

No matter how much we may try and move away from plastics, especially those that are single-use, they are wonder-materials with properties we can’t seem to do without.

AI musings

AI patentability & case law review 2021

This year AI case law kicked off with this England & Wales High Court appeal from a patent office decision by an individual against the refusal of their patent application by the patent office.

AI musings

AI inventors in 2021

As you will be aware from reading the musings, the DABUS saga on whether a machine can be named an inventor has taken some twists and turns this year.

Thoughts

Christmas 2021: Counterfeits are coming to town

In recent months, we have seen a tightening of restrictions of goods entering and leaving the UK. Figures show that the economic annual loss through counterfeiting and piracy is at least £9 billion.

Thoughts

Live long and prosper? How longer lifespans will impact IP

Who wants to live forever? Eternal life is not yet something that humans can look forward to, but more people are living longer throughout the world.

News

The Unified Patent Court (UPC) and Unitary Patent (UP) in Europe – key points as the system moves forward

12 DEC 2021: The UPC/UP project in Europe has seen many ups and downs, but where are we now? This note will summarise some of the key features and take - home messages.

Case law

Priority: A possible new referral to the Enlarged Board of Appeal?

Last week, we observed oral proceedings for consolidated appeals T1513/17 and T2719/19, because a fundamentally important priority entitlement question was at stake.

Events

AI in healthcare technology: key take-aways from our Patent Power Half Hour webinar

Here is a summary of the key take-aways from the webinar that re-ran on 8 December 2021, covering AI in MedTech. We discussed the strategic considerations of patenting your AI inventions and explore t...

Drinking dining and disruption series

Drinking, dining & disruption: the revolutionaries in the Food & Drink industry - Nc’Nean

How do disrupters in the Food & Drink sector see things themselves and what do they think the future holds? We decided to speak to some of the sector’s most innovative and passionate founders to find...

Events

25 November 2021 - The effect of globalization on IP

Join us and RWS IP Services to learn about the effect of globalization on intellectual property and how IP plays a key role in driving innovation and economic growth.

AI musings

EPO case law – when the context of a technical application is not enough 

The EPO guidelines for examination consider AI and ML to be abstract maths but acknowledge two routes to the all-important technical character for AI and ML features:  technical implementation and tec...

AI musings

AI inventions, yet again – the UKIPO’s consultation on AI created copyright works and inventions devised by AI 

With the excitement of the Court of Appeal Dabus case just settled, the UKIPO keeps AI-devised inventions in the limelight in this recently issued consultation.

AI musings

Analog neural network chips and real brains

San Francisco-based Rain Neuromorphics is developing an analogue chip for machine learning that is based on brain architecture, reports EE Times.

Events

15 November 2021 - Patent drafting masterclass

Join us for the ultimate virtual masterclass on drafting patents. The drafting masterclass is comprised of two separate webinars, both of which are 45 minutes long with 15 minutes for questions.

Thoughts

Latest data! Update on new Enlarged Board of Appeal referral on the use of post-filed data

The EPO's Technical Board of Appeal's referral to the EBA has happened (G2/21), so one of the most controversially discussed issues at the EPO should soon be clarified.

Events

11 November 2021 - UK vs EPO tests for obviousness – one inventive step at a time

Kilburn & Strode’s Life sciences and Chemistry team invites you to our latest breakfast event contrasting the UK Court's with the EPO's approaches to the patentability of chemical inventions.

Analysis

Do semiconductor patent strategies need to swing towards Europe?

As focus grows on the robustness of the semiconductor supply chain, Europe is looking towards increasing market share over the coming decade. For patent strategies, this likely means only one thing: s...

Analysis

Improving the enforceability of patents in the semiconductor sector

Generally, it is not possible simply to look at a semiconductor device and discern how it works – at least not with the naked eye. When considering patent protection for innovations in the sector, pra...

Food and Drink

Novel food and new technologies: are we ready for insect proteins in Europe?

For just the second time ever, an insect has reached the final authorising step as a novel food before the EU’s Standing Committee on Plants, Animals, Food and Feed.

Food and Drink

5 challenges faced by the cultured meat industry

Cultured meat, or lab-based meat, is meat grown from animal cells in tissue culture. The food industry is looking to ever more technologically advanced solutions to feed the world.

Thoughts

Why am I black? My experiences growing up Afro-European in the UK

This article is about my experiences growing up in the UK. This is not a universal account but it is instead a deeply personal one.

Thoughts

Afro-texture: a hair-story

You could be forgiven for asking “Why is afro-textured hair any different to other types of hair?” On the surface, it is no different, and there is no doubt that it ought to be no different.

Food and Drink

Eating in a cashless, virtual world: how has the COVID-19 pandemic changed how we buy our food?

Answering the need for social distancing, an ever increasing number of grocery stores and restaurants adopt cashless technology to keep their customers safe in a COVID-19 world.

Food and Drink

Don’t be afraid of the dark: how has the COVID-19 pandemic changed where our food comes from?

The pandemic saw the rise of dark stores (such as Getir, Weezy and Gorillas Grocery). They're local fulfilment centres where grocery retailers are able to store their produce and distribute therefrom.

News

Kilburn & Strode attorneys ranked Band 1 in the Chambers and Partners 2022 ranking

Kilburn & Strode continues to be recognised for its excellent work with Chambers UK 2022 describing us as a “leading destination for filing, portfolio management and rights strategy”.

Thoughts

Nobel Prize in Chemistry 2021 winners from a patent perspective

The winners of the 2021 Chemistry Nobel Prize were announced as Benjamin List and David MacMillan for their development of “a precise new tool for molecular construction: organocatalysis”.

Events

18 October 2021 - Get your designs in shape - a practical guide to the UK and EU registered design systems

Learn how to get your designs into shape. For 45 minutes we will take a deep dive into the key topics of UK and EU registered design systems. Followed by a 15 minute Q&A.

Technical Tips

Trade marks in bad faith ruling upheld: Chinese tyre distributor ‘threatened’ out of Bulgarian market

In a twist on the usual narrative, a Bulgarian company found to have been ‘taking advantage’ of a Chinese company operating in the EU, has had their registered mark struck out, on the grounds of bad f...

News

Kilburn & Strode enhances Life Sciences & Chemistry offering with the hires of Andrea Hadfield and Bethany Myers

We are delighted to welcome two qualified attorneys, Andrea Hadfield and Bethany Myers, to our Top Tier Life Sciences and Chemistry team.

News

Fast track your eco-friendly patents with the UKIPO’s Green Channel

Did you know that the UKIPO offers accelerated processing for applications if the invention has an environmental benefit? This is via a scheme known as the 'Green Channel'.

Thoughts

Seven patent applications challenging the narrative for mental health; from VR therapy to “software as a drug”

This world mental health day we look at seven patent applications relating to technological advances in mental health, and the impact of our digital lives on our mental wellbeing.

News

The Legal 500 continues top recognition of Kilburn & Strode in two practice areas in United Kingdom Solicitors 2022 edition

Kilburn & Strode LLP has been once again recommended as a top tier in two practice areas in The Legal 500 United Kingdom Solicitors 2022 edition.

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, when it has been either a terminal problem or an empty allegation.

Thoughts

Kilburn & Strode feature in Healthcare Markets International: protecting cannabis IP

Cannabis is touted as a wonder-drug by many. Its effects on the human body are numerous and these approved therapies are the tip of the iceberg, and more will surely follow.

Analysis

UK Court on AI inventorship: Thaler v Comptroller [2021] EWCA Civ 1374

The UK Court of Appeal handed down its judgement on two patent applications in the UK devised by DABUS, an artificial intelligence (AI) “creativity machine” built by Dr. Stephen Thaler.

Technical Tips

Healthcare wearables – Five useful things to know about patenting their use (part 1: diagnostic uses)

The wearable medical device market is expected to reach over US $47,000 million by 2026 and the current COVID crisis has only driven innovation in this area.

Thoughts

Patenting healthcare inventions at the EPO

There are three EPO medical exclusions to patentability: methods for treatment of the human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body.

News

Kilburn & Strode announces the recipients of its Innovation for All Foundation 2021 grants

Everyone at Kilburn & Strode had the chance to be part of selecting the three winning charities, who have now received 1% of our annual profits.

Thoughts

Patenting AI innovation in healthcare

AI and machine learning have embedded themselves as crucial tools in all fields of technology and healthcare is no exception.

Thoughts

Solving in-house counsel challenges in European IP: Transatlantic teamwork

We're delighted to have taken part in the IP East 2022: New Beginning’s Virtual Summit. The calibre of speakers and delegates was truly outstanding thanks to everyone who took part in the discussions.

News

European Inventor Award highlights importance of cross-sector technologies

Sarah Lau of Kilburn & Strode’s Life Sciences and Chemistry Group looks at the role of interdisciplinary research in some celebrated inventions, and the questions this raises for IP protection.

News

The UPC: the latest news and a quick refresher

17 SEP 2021: Germany has recently moved forward on steps to bring the “Agreement on a Unified Patent Court” (UPC Agreement) into force. An ambitious time plan has laid out for the UPC.

Case law

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

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

AI musings

AI Inventors and beyond – the Court of Appeal has spoken

The eagerly awaited judgement of the English Court of Appeal has come out this week.

AI musings

Patenting implementations of AI – at least specific hardware is enough in the UK

In my last musings, I wrote about how the EPO looks at the patentability of AI inventions on the basis of their technical implementation and what the EPO case law suggests this should mean.

AI musings

Pause for thought

As this short piece discussing the second installment of the Stamford AI 100 report points out, as AI systems become more ubiquitous in predicting human behaviour, they amplify the biases and prejudic...

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 a look at recent patent trends in video game technologies.

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 and Drink

Trade marks and geographical indications in a post-Brexit landscape

This month saw the first product granted Geographical Indication status under the UK’s new post-Brexit scheme. More will surely follow as food & drink producers get use to the new way of doing things.

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...

AI musings

More about patenting implementations of AI - is specific hardware needed? 

In a recent note, I looked at how the EPO applies (or should apply) the “technical implementation” route to the all-important technical character that can lead to the patentability of AI inventions at...

AI musings

AI Inventors and beyond – The DABUS saga

The question of AI inventorship, specifically the DABUS patent applications have received some attention: DABUS was recognised as AI inventor in South Africa and Australia. The English Court of Appeal...

Technical Tips

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 and directors 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...

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.

Technical Tips

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

Bag a bargain? – Amazon sues influencers for promoting "luxury" counterfeits

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.

Technical Tips

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

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

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

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

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

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

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

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

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

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

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...

Covid-19

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...

Covid-19

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

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 ...

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… (?)

20 MAR 2020: The long-awaited Unified Patent Court / Unitary Patent system in Europe has been dealt a blow today. Germany's Constitutional Court decided the ratification process was unconstitutional.

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...

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

“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

Unlocking the patent system - five reasons to file

“File! File! File!” The clarion call comes from patent attorneys and inventors alike when the golden glimmer of an invention is revealed amid empty coffee cups and biscuit crumbs of an invention minin...

News

EPO President adds further spice to patents on peppers

The EPO President, António Campinos, has referred the decision of the EPO Technical Board of Appeal in case T1063/18 to the Enlarged Board of Appeal (EBA).

News

Double trouble: Should doubling down on patent protection be allowed?

A new referral to the Enlarged Board of Appeal of the European Patent Office on double patenting has the potential to influence patent filing strategies in Europe. Kristina Cornish and Oliver Lam ta...

Updates

Kilburn & Strode volunteers help homeless people get ahead on the job market

Facilitated by the 999 Club, a charity committed to sustainable employment and housing solutions for people affected by homelessness, the partnership is designed to help those in need improve their em...

Updates

Kilburn & Strode announces partnership expansion

Kilburn & Strode is further strengthening their top-tier service offering with the promotion of Mark Abthorpe and Jeremy Smith to partner, effective April 1 2019.

Brexit

Brexhaustion of IP rights - Moving patented products to Europe after Brexit

Changes to the exhaustion of rights doctrine could affect your business after Brexit. Read on to find out how.

Brexit

UK Intellectual Property Office issues guidance notice on SPCs in case of no-deal Brexit

The UK Intellectual Property Office has posted a guidance notice on its website on 8 March 2019 relating to the situation for Supplementary Protection Certificates (SPCs) if the UK leaves the European...

Thoughts

Femtech: The next big market disruptor is here, and it’s fearlessly female

Femtech, or Female Technology, is the merging of modern technology and women’s health to address age-old issues. The market is booming, and it’s long overdue. Here we look at the recent market growth...

Thoughts

An act of balance: Voices of leading female trailblazers

This year, International Women´s Day runs under the themes #BalanceforBetter. How is it possible that in this day and age, we still don’t live in a world of gender balance and equal rights?

News

Albert Keyack, former EPO attaché to the United States, joins Kilburn & Strode to expand the firm’s US offering

Top-tier European IP firm Kilburn & Strode further expands its reach into the US with the hire of Albert Keyack, former EPO attaché to the United States, as Vice President.

News

Computer simulation - referral to the EPO’s Enlarged Board of Appeal

In a rare referral to the Enlarged Board of Appeal, the EPO’s highest appeal board that decides on points of fundamental importance

News

On the rise of ‘Robin Hood’ pharmacies

2.6 billion British pound sterling. That is the average cost of bringing a new drug to market. Pharmaceutical companies willing and able to make such an investment will, in the first instance, try to...

News

Patent eligibility of cultured cells in the US: A European perspective

Michael Newton from our highly respected Life Sciences team has published an article in the journal European Intellectual Property Review (EIPR) titled “Differences in Culture: Expanded Cells Held Pat...

News

Patentability of plant products obtained by an essentially biological process

In a decision issued by the Technical Board of Appeal on 5 February 2019 (T 1063/18, 5 December 2018), plant products obtained by an essentially biological process were found to be patentable subject ...

News

LexisNexis IP analysis - Big Mac trade mark action – they’re not lovin' it

The EU trade mark registration ‘BIG MAC’ has been revoked by the EUIPO Cancellation Division on the basis of lack of genuine use.

Updates

Top-tier ranking of our trade marks team revealed with the publication of the 2019 edition of the WTR 1000.

Our trade marks group has again received a top ranking, citing our excellent client service and straight-talking advice in the UK World Trademark Review 1000 2019 (WTR).

Gamechangers 2019

Inventions, Innovators and IP

In the last few years technology has evolved to a new level, and society needs to take a breather to make sure it’s happy with what’s coming next.

Gamechangers 2019

Plastic waste: cost or opportunity?

Against a backdrop of over 300 million tonnes of worldwide plastic production annually, with some plastics taking 400 years or more to break down, the planet is facing a significant crisis of plastic ...

Gamechangers 2019

5G – It’s about time (delays)

For many years, efforts have been made to collaboratively improve and harmonise the technical standards that underpin global telecommunication networks, such as 3G and 4G.

Gamechangers 2019

Robots on the rise

A tale as old as time is our obsession with machines. Based on the notion that our bodies are essentially (complex) machines, scientists and engineers have been trying to overcome the limits of our bo...

Gamechangers 2019

Protecting the protector: The intersection of IP and Immuno-Oncology

Immunotherapy uses the body’s natural immune system to fight cancer, rather than direct killing of cancer cells with chemo/radiation therapy, which can lead to undesirable reduced immunity and may not...

Brexit

Brexit: what does 2019 hold for trade marks?

The UK is set to leave the European Union on 29 March 2019. However, there remains much uncertainty over how, when and even if the United Kingdom will exit the European Union (“Brexit”).

Brexit

Brexit & IP - Business as usual?

On 16 Jan 2019, Theresa May’s Brexit deal saw a historic defeat, and what happens next remains uncertain. But, no matter the outcome, we can advise on your intellectual property.

Updates

Top-tier European IP firm Kilburn & Strode strengthens European offering with new Amsterdam team

Kilburn & Strode has further expanded its European capabilities with the addition of a trade marks team based in Hilversum, just outside of Amsterdam.

Updates

Happy Holidays from Kilburn & Strode

We're wishing you a wonderful festive season and a happy start to 2019!

Thoughts

Patents versus prizes: A Nobel case study

Is the patent system the best way to incentivise innovation? This has been a longstanding question in scientific and technological spheres. Patents enable companies and institutes to see a return on t...

Thoughts

AI’s threat to trade mark rights

The internet is the world’s marketplace, storefront, and trading floor, with businesses and brands vying for attention. While the machines are still learning, they are already influencing consumer hab...

News

Assessing the EPOs new guidelines on AI

The new edition of the EPO’s Guidelines for Examination came out last month, but what has changed for AI and machine learning inventions?

News

International Patent Litigation

Proud of our Chairman Professor Gwilym Roberts for contributing & editing the 2nd edition of International Patent Litigation.

Thoughts

Ingenious machines: Inventive Step and the Fourth Industrial Revolution

It is a requirement of most, if not all, patent systems that an invention should be non-obvious over the state of the art in order to warrant patent protection.

Updates

The firm welcomes 11 new Trainee Patent and Trade Mark Attorneys

From PhDs in astrophysics to tenures in-house at luxury brands, this year’s group is one of our most diverse. Crossing a range of sectors, functional expertise and backgrounds we’re very proud announc...

Updates

Our patent and trade mark teams again receive a Band 1 ranking in Chambers and Partners

We are pleased to announce our top-tier ranking in the latest edition of Chambers and Partners for UK patent and trade mark attorneys.

News

The new edition of the EPO's Guidelines for Examination comes into effect today

The changes to the Guidelines relate to a range of issues, such as the test for removing or replacing features in a claim, new sections on exclusions to patentability including AI and machine learning...

Updates

Top Tier ranking in Legal 500 for patent and trade mark teams

Kilburn & Strode is pleased to announce our Top Tier ranking in the latest edition Legal 500 for UK Patent and Trade Mark Attorneys.

News

Waking up from 'The (Native) American Dream'...?

The global pharmaceutical company took the eyebrow-raising step of transferring these patents to the Native American St. Regis Mohawk Tribe, who benefit from “sovereign immunity” status.

Thoughts

The EPO and computer-implemented inventions: an appeal for more?

Since 2015 we have seen a series of extensive updates to the computer-implemented invention (CII) sections of the European Patent Office’s Guidelines for Examination, the practice guide for EPO examin...

Thoughts

EPO Draft Guidelines on patenting AI published – level playing field? Asks Alexander Korenberg

Following a recent announcement by the EPO, a preview of the next version of the Guidelines for Examination is now online. One of the changes highlighted was a section on the patentability of AI and M...

Thoughts

AI Meets IP: The patent challenge

This, the first of a series of articles looking at AI and IP, focuses on using patents and other IP rights to protect AI-related inventions and machine learning.

News

Broad Institute wins CRISPR Appeal

This week saw the latest instalment in the now infamous multijurisdictional CRISPR patent war between two heavyweight academic institutions, the Broad Institute and the University of California - a wi...

News

Novelty of overlapping ranges before the UK Courts - Jushi v OCV

The use of numerical ranges in patent claims is common in many technological fields. The question of novelty of a numerical range over a range disclosed in the prior art is often faced and, in particu...

Thoughts

Don't treat a subject; treat a disease

How closely must the language of a subsequent medical use claim match the language approved by the European Patent Office (EPO)?

Thoughts

Computer says no - AI given powers in Australian draft IP legislation

We were very intrigued recently when our friend at the UKIPO, James Porter, alerted us to an interesting part of some draft legislation in Australia.

News

Accelerated examination of SPCs in the UK

The European Commission recently announced a proposal to amend the relevant legislation governing Supplementary Protection Certificates (SPCs).

Thoughts

LexisNexis - Trade Mark Directive 2015 - next steps towards implementation

Carrollanne Lindley, partner and head of the trade marks group spoke to LexisNexis about the government’s proposed amendments to the Trade Marks Act 1994 in order to implement the new EU Trade Mark Di...

Brexit

A glass half-full: a chance to improve SPCs post-Brexit?

The United Kingdom (UK) government is currently pursuing its stated policy of leaving the European Union (EU). Negotiations between the remaining 27 EU member states (the EU-27) and the UK are ongoing...

Brexit

Brexit: what it means for Intellectual Property

As members of the UK’s parliament continued to slog it out over the Brexit Bill (the UK negotiating with itself), the European Commission and UK published a joint statement on how negotiations between...

Brexit

UK doubles down on Unitary Patent system

Following the surprise ratification of the Unified Patent Court Agreement by the UK on World IP Day 2018, a new Brexit white paper published last week confirms that the UK intends to explore how it ca...

News

A Tale of Two Dasatinibs

Things could be looking up for Bristol-Myers Squibb after a tumultuous year that saw the EPO Board of Appeal confirm the revocation of EP1169038, a patent protecting the successful cancer drug dasatin...

Thoughts

Why LGBTQAI+ pride is important

Partner Tom Leonard muses on the history of LGBTQAI+ Pride and why it is as important as ever.

Actavis v. ICOS The death knell for dosage regime patents in the UK?

On 1 November 2017, the UK Court of Appeal handed down its decision in Actavis v ICOS1 in which Lords Justice Kitchen, Floyd and Lewison overturned the first instance decision of Mr. Justice Birss.

Updates

Kilburn & Strode launches Innovation for All Foundation on World IP Day 2018

Giving back to create change: On World IP Day 2018, Kilburn & Strode launches our Innovation for All Foundation.

Thoughts

Inventions that made the modern running shoe

With the London Marathon just around the corner, Gregory St Clair Jones and Nico Cousens take a look at some of the many inventions that have shaped the modern running shoe we know today.

News

EPO update - Postponement postponed!

On 9 February 2018, CIPA was invited to attend an EPO consultation in Rijswijk to discuss a proposal for postponed examination

News

Who's Who Legal says 'Kilburn & Strode lead the way in the European market'

We are very pleased to announce Kilburn & Strode has achieved six listings in the Patent Agents & Attorneys 2018: Analysis conducted by Who’s Who Legal

Updates

Improving Employee Well-being: Drop by Drop

Employers are always thirsty for ways to keep their people healthy and well.

Thoughts

Updated LexisNexis Practice Note - 'Managing a trade mark portfolio’

Carrollanne Lindley and Lorraine Lowell Neale from our highly regarded trade marks team have worked with LexisNexis to update the Practice Note titled ‘Managing a trade mark portfolio’.

News

Industrial design rights: UK ratifies the Hague Agreement

The UK government has announced that, as of 13 June 2018, the Hague Agreement Concerning the International Registration of Industrial Designs will enter into force in the UK.

Thoughts

How likely is Little Miss Inventor to be awarded a patent?

A new member will be joining the Mr Men and Little Miss series, and we couldn’t be happier with Adam Hargreaves’ choice of character.

Thoughts

Strut of the drones: fireworks to fashion

Over the last few weeks drones have been swarming our headlines.

News

EPO patent practice update

On 8 December 2017, we attended a meeting that CIPA hosted with EPO Directors to discuss a range of topics related to current practices and proposed developments at the EPO.

Thoughts

Should we bother with experts?

Victoria Barker looks at how the EPO handles submissions from technical experts, and what contribution having a technical expert on your side really makes.

News

EPO announces Patent Prosecution Highway pilot scheme with Russian patent office

The European Patent Office has announced a Patent Prosecution Highway pilot scheme with the Russian Patent Office. Information on the scheme can be found here.

Thoughts

The latest CJEU referrals relating to SPCs Article 3(a) still not clear?

The last few months have brought us two new CJEU referrals for disputes relating to SPCs – Decision 14 W (pat) 12/17 of the Bundespatentgericht (the “sitagliptin” reference) and Sandoz Limited & Hexal...

News

New European Strategy for Plastics presents opportunities for Biome Bioplastics

On 16 January 2018, a first-ever European Strategy for Plastics was launched with the aim of revolutionising the design, use, production and recyclability of plastics in the European Union. Against a ...

Thoughts

The case for UK litigation: Quality v Cost

Litigating is expensive. Naturally, therefore, determining a strategy for whether and where to enforce patent rights can provoke tough decisions. A recent report by the UK IPO, burnishes the UK’s repu...

Thoughts

EPO Decision G 1/16 - A victory for common-sense?

At the highest level of the EPO, the Enlarged Board of Appeal continues to deliver EPO binding decisions on technical and legal issues. For those of you interested in the ever relevant matter of discl...

News

Dear Santa, this year, I gift my wish to brand owners combatting counterfeit goods this Christmas

Dear Santa, as Christmas fast approaches my wish is for brand owners to combat counterfeit goods with some simple measures.