Inside IP - Venner Shipley
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Inside IP
www.vennershipley.co.uk
Venner Shipley’s Intellectual Property Magazine Spring/Summer 2021
Summary of Enlarged Board of Appeal
decision G1/19 (Pedestrian Simulation)
PAGE 39
IP audits: What? When? New EPO Guidelines: Just Changes to UK Trade
And why? the Antidote for Antibody Mark Practice (the Brexit
Patents in Europe Effect)
PAGE 16 PAGE 42 PAGE 10
European Intellectual
Property Attorneys
1
What’s inside?
Page 4 Parallel imports into the UK and Page 24 New regimes for protecting trade
the EU after Brexit marks, designs, geographical indications,
Mechthild Liebelt discusses keys considerations for and plant variety rights in the UK post
companies importing and exporting IP protected
Brexit and for recording IP rights with UK
goods into the UK and EU post Brexit.
Customs
Page 6 Cell and Gene Therapy Boom in David Birchall discusses the new regimes post Brexit.
the UK Page 26 Sufficiency – From transgenic
Kirsty Simpson highlights some great stats and key
considerations for the cell and gene therapy industry
mice to a chocolate teapot
Sian Gill discusses the Regeneron v Kymab UK
in the UK.
Supreme Court decision and why it is an important
Page 8 IT’S LIKE MILK, BUT MADE FOR reminder for all practitioners.
HUMANS Page 28 Ever Heard of Software
Gloria Parmesan discusses Oatly’s controversial
slogan and why the EUIPO refused the EU trade mark
Forensics?
Michael Fischer explores the importance of software
application.
forensics.
Page 10 Changes to UK Trade Mark
Page 30 New EPO Guidelines – 1 March
Practice (the Brexit Effect)
Yoann Rousseau provides a number of dates to be
2021
Kathryn Rose and Sophie Newgas have summarised
aware of and different rules in place for a limited
the updated version of the Guidelines for Examination
period of time, even though the Brexit transition
at the EPO.
period has technically ended.
Page 12 EPO embraces VICO Page 34 Are solid-state batteries the
Tim Russell looks at how the EPO has adapted to the solution to liquid electrolytes
“new normal”. Is videoconferencing here to stay? Jack Rogan discusses battery electric vehicles and
fuel cell electric vehicles, the two major technologies
Page 14 A Round-up of recent Decisions competing to be the vehicle that drives us into the
from the Boards of Appeal at the EPO future.
Henry Aldridge and Nick Burrow cover the important
decisions over the last six months.
Page 36 Connected Vehicles - New
regulatory guidance highlights the
Page 16 IP Audits: What? When? and importance of data protection laws in the
Why? design process
Thinking about getting an IP audit? Gary Whiting and Robert Peake provides insight into the data protection
Christopher Dunleavy cover what to expect and how laws in the automotive design process.
to get the best out of the process.
Page 39 Summary of Enlarged Board
Page 18 Post Brexit – UK Supplementary of Appeal decision G1/19 (Pedestrian
Protection Certificates Update Simulation)
Following the UK’s exit from the European Union Pawel Piotrowicz, Jan Walaski, Richard Kennedy and
(EU), we now have UK SPCs but with some important Peter Thorniley discuss G1/19.
differences to the former arrangements, explained by
James Tumbridge and David Pountney. Page 42 An antidote to antibody patent
confusion in Europe
Page 21 Protection of medical devices in Anton Hutter and Matthew Handley provide a
Europe summary of the new EPO guidelines on antibody
George Hudson and Henry Aldridge explain the key patents in Europe.
components of the European Patent Convention.
2
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A word from the editor
While COVID-19 has continued to dominate the headlines across the world,
there has been plenty going on in the world of IP as well. Clearly, no recent
Inside IP would be complete without Pav Piotrowicz covering the recent
decision in the G1/19 EBA referral on page 39. Don’t forget to check out our
G1/19 hub on our website!
The new EPO Guidelines which came into force on 1 March 2021 are covered
on page 30. On page 42 my colleagues in our chemical and life sciences team
have a closer look at antibody-related patent claims (G-II-5.6). This is the first
time the EPO has issued guidance in this area.
My new colleague Kirsty Simpson looks at the boom in cell and gene therapy as the UK is
establishing itself as a hub for the development of advanced therapeutics using gene or cell
therapy. Sian Gill takes a look at sufficiency in the light of the Regeneron v Kymab decision,
and George Hudson and Henry Aldridge look at the challenges of protecting medical devices in
Europe in the light of Article 53(c) EPC.
COVID-19 has brought about procedural changes and advances in technology and my colleague
Tim Russell provides an update on the EPO embracing VICO.
All things automotive is another focus with my colleague Rob Peake in our legal team exploring
connected vehicles and the importance of data protection laws in the design process, and Jack
Rogan provides a discussion on solid-state batteries.
We have recently been inundated with IP Audits, so check out the What? When? and Why? article
by my colleagues Gary Whiting and Chris Dunleavy.
Brexit is also still a topic after the UK has formally left the EU. Whilst it’s been business as usual
for our trade mark and design attorneys in the UK and in Germany, there are some changes we
are setting out across four articles covering parallel imports into the UK and the EU (Mechthild
Liebelt), changes to UK trade mark practice (Yoann Rousseau), UK Supplementary Protection
Certificates Update (James Tumbridge & David Pountney), as well as new regimes for protecting
trade marks, designs, geographical indications and plant variety rights (David Birchall).
A big thank you to all our contributing authors, and I hope you find something of interest!
Staying connected is of the upmost importance to us so please reach out if you have any
suggestions, questions or ideas for future content. I am, together with my colleagues across the
UK and Germany, as always, only an email away.
Simon Taor
Partner
About Venner Shipley:
We are an innovative intellectual property firm based in Europe. Our
firm has a long history and a vast amount of experience in relation to
all aspects of intellectual property.
3
Parallel imports into
the UK and the EU after
Brexit
Parallel trade is the import and export of genuine intellectual property
protected goods. Parallel trade occurs when the intellectual property rights
to these goods have been "exhausted". That is, they have been put on the
market within a certain territory by or with the permission of the rights holder.
Exhaustion of intellectual property rights means that the intellectual property
rights cannot be used to prevent further distribution or resale of those goods.
The goods have been manufactured without the manufacturer's consent. in the EU and in the UK. Thus, goods
by or under licence from the trade The manufacturer may prohibit the placed on the market in the UK by or
mark owner and are therefore not distribution of its products on the with the consent of the intellectual
counterfeits, but they may have been basis of its intellectual property rights property right holder by 31 December
manufactured or packaged for a if it has placed the products on the 2020 will also be deemed to be
particular territory of distribution and market outside the EEA and they were exhausted in the rest of the EU and
are imported into another territory not intended for countries in the EEA. vice versa.
contrary to the trade mark owner's Within the EEA, the principle of
“property
Intellectual
intention. exhaustion means that once the right
holder has given consent to place the
Intellectual property exhaustion refers intellectual property protected goods exhaustion
to the extent to which an intellectual on the market, they cannot revoke
property rights holder can control it. Once the protected goods have refers to the
the distribution of its branded goods.
Under the concept of exhaustion,
been placed on the EEA market by the
intellectual property rights holder, or
extent to which
once an intellectual property rights with their consent, they can no longer an intellectual
holder has sold a product to which prohibit the further distribution of
its intellectual property rights are those goods within the EEA. property rights
attached into a particular territory of
distribution, it must allow the resale Thus, a product bearing a trade mark,
holder can control
of that product in that territory of for example, can be resold within the the distribution of its
”
distribution. The trade mark rights EEA without the consent of the trade
covering the product are said to have mark right holder and can therefore branded goods.
been "exhausted" by the first sale. be imported into another country
After the UK's withdrawal from the within the EEA. The transitional period expired on
EU, Union law continued to apply in 31 December 2020 and thus the
the UK until 1 January 2021. The UK left the EU on 31 January question arises as to which regulation
2020. Thereafter, pursuant to the applies to exhaustion with regard to
Thus, products in which intellectual Withdrawal Agreement of October parallel imports in the EU and the UK
property rights exist could previously 2019, a transitional period applied from 1 January 2021.
be imported from the UK into the until 31 December 2020, during which
other EU and EEA (EU + Iceland, EU law continued to apply in the UK. The EU rules now no longer apply
Liechtenstein, Norway) states The principle of EEA-wide exhaustion to the UK. The UK and the EU have
according to the exhaustion principle thus remained in place. concluded a trade agreement that
without infringing trade mark, design, entered into force on 1 January
patent or other intellectual property Art. 61 of the Withdrawal Agreement 2021. However, Article IP 5 of the
rights. expressly provides that intellectual agreement explicitly left the question
property rights which were exhausted of exhaustion open and gave the
If a product legally protected in the under the terms of EU law both in the contracting parties the freedom
EEA is placed on the market outside EU and in the UK before the end of to determine whether and under
the EEA by the manufacturer, it the transitional period, i.e. before 1 what conditions the exhaustion of
may not be distributed in the EEA January 2021, remain exhausted both intellectual property rights occurs.
4
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In the UK, "The Intellectual Property Thus, so far, there is an asymmetric
(Exhaustion of Rights) (EU Exit) regional exhaustion with respect to
Regulations 2019" currently apply the EU and the UK and it remains to
until further notice. These provide be seen whether this will continue or
that the system of EEA-wide whether a bilateral arrangement can
exhaustion will be maintained as be found between the EU and the UK
far as possible. From 1 January with respect to exhaustion.
2021, rights in goods placed on the
market in the EU or EEA by or with Companies importing intellectual
the consent of the right holder will property protected goods from the
therefore continue to be deemed UK into the EU/EEA will therefore
exhausted in the UK. need to review their business
agreements and supply chains to
The UK government has been in the ensure that they include the right
process of conducting a consultation holder's consent to import the goods
on how parallel trade should be into the EU/EEA, as they will need
managed in the UK in the future since the right holder's consent to import
the beginning of 2021. So far, no plans intellectual property protected goods
for changes have been announced. into the EU/EEA from 1 January 2021.
In the EU imports from the UK
into the EU are considered third
country imports since 1 January
2021. Therefore the rule after the
end of the transitional period is that
an intellectual property right is not
exhausted in the European Union if
goods protected by that right have
been lawfully put on the market in
the UK. This means that the right
holder or a person with their consent Mechthild Liebelt
may prohibit the importation of mliebelt@vennershipley.co.uk
such a good by a third party into the
European Union or the placing on the
market, resale or other commercial
exploitation of such a good on the
European Union market, where
such importation or commercial
exploitation would constitute an
infringement of the intellectual
property right concerned.
5
Cell and gene therapy
boom in the UK
The UK is establishing itself as a hub for the development of advanced
therapeutics which refers to new medical products that use gene or cell
therapy. Whereas gene therapy involves the transfer of genetic material,
usually in a carrier or vector, into the appropriate cells for uptake of the genetic
material, cell therapy is the transfer of cells with relevant function into a patient.
therapies, delivering them to patients
rapidly, efficiently and effectively”.
© ASGCT
At the time of the report, there
were 154 ongoing trials in the UK,
representing more than a 20%
increase from last year, with a
majority (70%) employing viral vector
mediated gene transfer. For in vivo
gene therapy clinical trials, 81% are
dominated by adeno-associated viral
(AAV) vectors. The number of Phase
III trials has grown by 27% since last
year with an increase reported across
the board. In fact, the number of trials
has been growing by an average of
25% per year since 2013.
The data also suggests that trials
are progressing through set up and
reaching active recruitment more
quickly. In contrast to traditional small
molecule therapies, the development
of cell and gene therapies requires
novel approaches to deliver these
lifesaving solutions to patients. The
The cell and gene therapy industry the UK cell and gene therapy sector administration of cell and gene
in the UK is part of a thriving biotech is booming. By 2035 it is expected therapies needs to be expertly done
community supported by a large that the industry could be worth £10 and carefully tracked to identify any
contingent of specialist manufacturing billion and provide 18,000 jobs. potential adverse effects. The UK now
companies. Recently these companies has a network of Advanced Therapy
have come to light as being key Each year, the Cell and Gene Treatment Centres, the first of their
to the UK’s outstanding COVID-19 Therapy Catapult publishes data kind in the world, which will develop
vaccine manufacturing response; from its clinical trials database. these new systems and processes,
utilising analogous processes for virus This government-supported body and alongside the NHS, will provide
production. aims to build a world-leading cell the right environment for allowing
and gene therapy sector in the UK. innovative therapies to reach patients,
According to data released this year It enables the translation of early establishing the UK as a global-leader.
by the UK Cell and Gene Therapy stage research into commercially
Catapult¹, the UK accounts for over viable and investable therapies by The main therapy area for cell
12% of global gene and cell therapy bridging the gap between scientific and gene therapies clinical trials
(or advanced therapy medicinal research and full-scale marketing. remains oncology (35%) followed
product – ATMP) clinical trials. In 2020 Its vision is for the UK to be “a global by ophthalmology (12%) and
over 3,000 jobs had been created leader in the development, delivery haematology (12%).
in the sector with over 90 advanced and commercialisation of cell and gene
therapy developers based in the UK. therapies, where businesses can start, For cell-based therapies, T cells
With a £300 million turnover in 2020, grow and confidently develop advanced remain the dominant cell type under
6
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methods of modifying cells, the
modified cells per se, the use of
the vector/cells in therapy or for a
particular medical condition. There
are multiple avenues of protection to
consider.
Inventors are often under pressure to
get their technology protected prior
to academic publication and there
is a need to find a balance between
early filing and developing supporting
data for the patent application. It is
important to be strategic in using the
time available to generate the best
kind of data to support the invention.
Broad supporting data is important
for platform-type inventions, in order
to demonstrate that the invention
can be used across a wide range
of applications. For an incremental
invention, more focused data may
be appropriate. Your patent attorney
will be able to advise you as to the
right balance between early filing
and supporting data depending
on your overall strategy and
investigation accounting for 44% 100,000 genomes from NHS patients commercialisation goals.
of clinical trials. This is perhaps to affected by a rare disease or cancer.
be expected since research into To date, actionable findings have As the gene and cell therapy space
oncology, the largest therapeutic been found for approximately 1 in 4 is becoming crowded, it is also
sector, is largely T cell focused. rare disease patients and around 50% important to not only consider
of cancer cases contain the potential what is new and inventive from a
The UK Cell and Gene Therapy for a therapy or a clinical trial . patentability point of view, but also
Catapult data further showed that to remember to review third party
just under 75% of UK cell and gene Despite the incredibly exciting future IP rights to avoid any potential
therapy trials are now sponsored ahead, there are currently very few infringement and consider obtaining
by commercial organisations; a advanced therapy products approved suitable licenses.
huge increase when compared with for use in the UK. Due to the length
only 25% in 2013. The majority of of time and costs associated in taking At Venner Shipley we have several
commercially sponsored trails are an advanced therapy to approval, it is attorneys who are experts in the field
backed by non-UK based companies, important for companies to have an to help companies navigate their
demonstrating the appeal of the effective IP strategy to maintain their commercial strategies, patentability
UK ecosystem in terms of both market advantage. requirements and operational
expertise and regulation. In 2020 freedom to practice their inventions.
there were more than 90 companies Gene and cell therapies require If you would like any assistance in this
developing advanced therapies different IP considerations to regard, please do not hesitate to get
in the UK (with 24% of European traditional small molecule drugs. in touch.
developers headquartered in the UK), Furthermore, different jurisdictions
25 manufacturing facilities, and three have different requirements for the
companies that have each reached patenting of biological material, stem
over $1 billion in value. It is evident cells and methods of treatment and
that international companies are surgery and it is important that such
recognising the appeal of the UK cell considerations are taken into account
and gene therapy community for the during the drafting of any patent
development and manufacture of application.
advanced therapies.
It is further important to consider
As a further example of the UK the different aspects of cell and gene Kirsty Simpson
commitment to gene therapies, therapies which can be afforded ksimpson@vennershipley.co.uk
the UK has delivered the 100,000 patent protection. For example: cell
Genomes Project via Genomics harvesting, the gene therapy vector
England. The project sequenced or therapeutic nucleic acid sequence,
1. https://ct.catapult.org.uk/clinical-trials-database
7
IT’S LIKE MILK, BUT
MADE FOR HUMANS
The rise in popularity of vegan diets and plant based food products is driving a
rapidly growing market no less so than in the field of plant based beverages. It
is not therefore surprising that businesses try to increase their market share of
this sector by means of catchy or controversial slogans.
Creating the perfect slogan which a degree subjective. There is a sliding quest to register IT’S LIKE MILK BUT
imparts just the right nuanced scale of distinctiveness and slogans MADE FOR HUMANS as an EU Trade
meaning to accompany an advertising very often fall on the borderline of Mark.
campaign is no easy task and rightly what is and is not acceptable. As a
businesses seek as much benefit result, applications to register slogans Oatly filed an application to register
and competitive advantage from as trade marks are often rejected the slogan IT’S LIKE MILK BUT MADE
this creative endeavor as possible. at first instance and subjected to FOR HUMANS at the European
One way of doing this is to protect the wisdom and decisions of higher Union Intellectual Property Office
the slogan by means of a trade mark authorities. This was the case for (the EUIPO) in March 2019 for a
registration. A trade mark registration Oatly AB’s application to register the variety of goods including various
is a powerful legal monopoly which, slogan IT’S LIKE MILK BUT MADE FOR dairy and milk substitute products
broadly speaking, affords the owner HUMANS. in class 29, oat based beverages in
the right to take legal action against class 30 and preparations for making
“must
third party uses of either an identical beverages in class 32. The EUIPO
or similar trade mark used in the ...the slogan refused the application in relation
context of identical or similar goods/
services.
be distinctive, to these goods on the basis that the
slogan was devoid of any distinctive
it must not be character because it would “simply
Newly created slogans are registrable
as trade marks provided they meet descriptive or be perceived by the relevant public as
a laudatory promotional slogan, the
the general qualifying criteria applied generic in the function of which is to communicate
to all trade marks. These are that the an inspirational or motivational
slogan must be distinctive, it must context of the goods statement. The relevant public will
not be descriptive or generic in the
context of the goods or services
or services for which not tend to perceive any particular
indication of commercial origin in
for which it is used and it must not it is used and it the sign beyond the promotional
already be registered by another information conveyed, which merely
entity. must not already serves to highlight positive aspects of
Invariably the most difficult hurdle to
be registered by the goods in question, namely that
they are or contain milk substitutes
overcome when seeking registration another entity. which are like real milk …….but
of a slogan is proving that the slogan contain ingredients that are more apt
is sufficiently distinctive such that it the distribution of for human consumption than real
can fulfil a trade origin identifying
function. At its most fundamental,
the question to be asked is whether
its branded goods. ” cow’s milk”.
Oatly appealed the decision to the
consumers will, on seeing the slogan, Oatly is no stranger to legal battles General Court of the European
immediately associate it with the or controversy. It slogan IT’S LIKE Union. As with virtually all cases
goods/services of a single commercial MILK BUT MADE FOR HUMANS was concerning the registrability and
undertaking. Because slogans by deemed to disparage and discredit inherent distinctiveness of slogans,
definition seek to explain something cow’s milk by a Swedish court. More the arguments and submissions of
about a business, for example, its recently it has come under fire for its both parties centred on whether
ethos or the quality of its product, investment decisions and has been the slogan could perform a trade
they can very easily fall into the accused of driving a wedge between origin identifying function. A slogan
category of trade marks which, children and parents as a result of an should only be refused registration
from the legal perspective, are too advertisement which questioned how if it would be perceived solely as
descriptive or possibly just too bland “woke” the parents of Gen Z are. It a mere promotional statement. If,
to qualify for registration. However, will no doubt therefore be pleased to on the other hand, a slogan would
assessing the distinctiveness of trade have scored a victory at the General be perceived as an indicator of the
marks is not an exact science and is to Court of the European Union in its commercial origin of goods then,
8
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even if it also performs a promotional MADE FOR HUMANS advertising
function, it qualifies for registration. campaign. This included complaints
A useful question to be considered to the Spanish advertising regulatory
in this context is whether consumers organisation that the slogan falsely
would be in a position to make a implies that milk is not for human
repeat purchase of the product if they consumption. The very fact that the
enjoyed it, or alternatively to avoid slogan incited such heated debate
buying the product again, simply by was evidence in itself that the slogan
reference to the slogan. did not merely inform the public
about the suitability of the product
The Court reiterated the well-known for human consumption. Because
legal principles relevant to the consumers overwhelmingly associate
registration of slogans as trade marks; milk with a human foodstuff, the
slogans should not automatically slogan IT’S LIKE MILK BUT MADE FOR
be denied registration simply by HUMANS has the effect of jolting
virtue of being a slogan, slogans can consumers into remembering that
have both a promotional and origin this is not necessarily the case. The
indicating function and the former slogan is therefore provocative and,
should not invalidate the latter and in trade mark legal speak, it triggers
slogans do not have to display more a “cognitive thought process” which
imaginativeness than any other type makes it easy to remember and
of trade mark. therefore capable of indicting a trade
origin. The General Court agreed with
“decision
Oatly adding that the presence of the
This is a welcome coordinating conjunction “but” in the
for brand middle of the slogan had the effect of
calling into question the commonly
owners who often held perception of milk as a human
face an uphill battle foodstuff.
when seeking to This is a welcome decision for brand
owners who often face an uphill battle
protect slogans as when seeking to protect slogans as
trade marks. ” trade marks. Slogans are frequently
labelled as too banal, simplistic or
laudatory to qualify for registration.
The EUIPO’s view was that there is a This decision shows that a cleverly
commonly held belief in society that constructed and memorable slogan
animal derived milk is not good for can benefit from the legal protection
the human body. It was also of the afforded by a registered trade mark.
opinion that consumers understand
the primary purpose of milk is as a
foodstuff for calves rather than for
humans. Accordingly, the EUIPO held
there is nothing intriguing about
the juxtaposition of “IT’S LIKE MILK”
with “BUT MADE FOR HUMANS”. The
slogan conveys the simple factual
message that Oatly’s goods are similar
to milk but more suitable for humans
than is animal derived milk. Because Gloria Parmesan
consumers know that the main gparmesan@vennershipley.co.uk
function of milk is to feed animals, the
slogan IT’S LIKE MILK BUT MADE FOR
HUMANS would be perceived solely
as a promotional slogan, the function
of which is to communicate a value
statement.
Oatly on the other hand argued that
the dominant perception of milk in
society is as a product for human
consumption rather than food for
calves. It pointed out that there had
been a significant and controversial
reaction to the IT’S LIKE MILK BUT
9
Changes to UK trade
mark practice (the
Brexit effect)
The United Kingdom left the European Union at the beginning of last year;
however, that exit only became effective once the transition period established
under the Withdrawal Agreement ended on the 31st of December 2020 (11.00
pm UK time). This article discusses the impact Brexit has had on trade mark
practice at the UK Intellectual Property Office (“UKIPO”).
Preliminary remarks in relation to IR(EU)s that had to registration or are still pending,
reached “accepted” status by the although in the case of the latter,
Prior to Brexit, trade mark protection
end of the transition period. It this is subject to them subsequently
in the UK could be obtained via two
is worth noting that the owners being registered or protected. New
main channels: (1) the filing of a UK
of these IR(EU)s have not been comparable UK marks (or new UKTMs
trade mark (“UKTM”) or (2) the filing
granted a new UK designation re-filed during the nine-month
of an EU trade mark (“EUTM”) which,
to their existing international window discussed above) cannot be
once registered, was protected across
registration but a standalone new substituted for the EU rights.
the EU’s 28 member states (including
UKTM. The number given to these
the UK). Since EUTMs gave protection
new UKTMs is the last eight digits It is worth noting that the situation
in the UK, a prior UKTM could be
of the IR(EU)s they mirror, with is very different for oppositions (or
used to oppose a new, conflicting,
the prefix UK008. cancellation actions) filed before the
EUTM application (or to request the
EU Intellectual Property Office on
cancellation of a EUTM registration).
• Where EUTM applications were the basis of prior UK rights which
Similarly, UKTMs could be attacked on
still pending by the end of the were still pending at the end of
the basis of prior EUTMs.
transition period (or in the case 2020. As of 1 January 2021, UK rights
of IR(EUs the registration process ceased to have any standing in the
As of 1 January 2021, EUTMs (but
was not completed by that date) EU; therefore, ongoing opposition
also EU designations of international
new comparable UK marks have or cancellation proceedings filed
“Madrid” trade mark registrations
not been created. Instead, the exclusively on the basis of UK rights
(“IR(EU)s”)) have ceased to have effect
owners of these applications have ceased to have a valid basis and will
in the UK. However, UK legislation has
been given a nine-month window be dismissed in full, if that has not
been agreed to ensure that owners
(which will finish at the end of already happened.
of existing EU rights have not lost
September 2021) during which
protection in the UK:
they can re-file their mark in the In that situation, not all is lost for the
UK and claim the benefit of the opponent. Although the opposition
• For every EUTM that had
filing date (or priority/seniority against the EUTM will fall away, if
registered status at the end of the
date, if applicable) of the EU right the EUTM eventually proceeds to
transition period, an equivalent
they mirror. registration, it will not be protected in
UKTM (called comparable UK
the UK automatically. While the owner
mark) was created automatically.
So, what impact has Brexit had on of the EUTM application can re-file
These new comparable UK marks
trade mark proceedings before the the mark in the UK (within the nine-
mirror the EUTMs from which
UKIPO? month period mentioned above) this
they are based; they have the
new UK application can be opposed
same filing date (including the
same priority or seniority date, Proceedings started on the basis of the same UK rights
before 1 January 2021 relied upon in the EU opposition. It
if applicable), registration date,
is recommend that UK rights owners
renewal date, goods and services Nothing has changed for these UK have trade mark watching services in
and, of course, the same owner. proceedings. EUTMs and IR(EU)s used place, to ensure they are notified if a
The new comparable UK marks to oppose UKTM applications (or UKTM application is filed for the mark
keep the last eight digits of the cancel existing UKTM registrations) they opposed in the EU.
EUTMs they mirror, with the continue to be treated as valid earlier
prefix UK009 added. rights in such pending proceedings.
This is the case whether these
Proceedings started on or
• New comparable UK marks have EUTMs or IR(EU)s have proceeded after 1 January 2021
also been created automatically
10www.vennershipley.co.uk
Three situations need to be this application will be 15 April it can be revoked on the basis of
distinguished: 2021 (provided a request to extend non-use (if the mark has not been
the original two-month deadline used for a continuous period of five
1. UKTM applications filed before was filed). Therefore, if a potential years) or cancelled because the mark
the end of the transition period opponent wants to rely on the re-filing was descriptive (or non-distinctive)
can still be opposed on the of its EUTM, the new UKTM needs to or conflicts with prior rights. As
basis of EUTMs and IR(EU)s. For be re-filed before 15 April 2021. explained above, for every EUTM or
example, a UKTM application IR(EU) protected as of 31 December
filed on 29 December 2020 could 2020, a UK comparable mark was
still be opposed on the basis of Professional granted automatically. However, what
EUTMs and IR(EU)s since they Representation happens if the EUTM was the subject
were binding on the UK at the From 1 January 2021, new address for of a cancellation action?
filing date of the opposed UKTM service rules apply and a UK address
application. for service is now needed for UK Provided the cancellation action was
proceedings filed on or after 1 January filed but not finally decided before 1
2. UKTM applications filed after 1 2021. However, this is an exception January 2021, its outcome will affect
January 2021, cannot be opposed for owners of comparable UK marks; the resulting comparable UK mark,
on the basis of registered EUTMs they can continue to use an address unless it was based on grounds
and IR(EU)s. However, owners of for service in the EEA for these marks that would not have applied to the
EUTMs and IR(EU)s protected at until the end of 2023 and use this UK comparable mark had this UK
the end of the transition period address for opposition proceedings comparable mark existed when the
have been granted mirroring based on these comparable UK cancellation action was filed.
UK rights; therefore, these marks. It is worth noting that
new comparable UK marks this exception does not apply to For example, if the EUTM registration
can be used to oppose UKTM comparable UK marks which derived is cancelled on the basis of an
applications filed after 1 January from IR(EU)s; owners of these marks earlier mark protected in one of the
2021. must comply with the new address for remaining EU member states (for
service rules. example Spain), the comparable
3. Owners of EUTMs and IR(EUs UK mark will not be affected by the
still pending by the end of the decision since a Spanish mark cannot
Comparable UK marks –
transition period, can re-file their be used to cancel a UKTM. Similarly,
trade marks in the UK within use and reputation if the EUTM registration is cancelled
the above-mentioned nine- In the course of opposition or because its meaning is descriptive
month period retaining the filing cancellation proceedings, the in French (but not in English), the
date (and any relevant priority/ opponent (or the applicant for the comparable UK mark will not be
seniority date) of the EU rights cancellation action) may have to affected. Should an EU cancellation
they mirror. As a result, and until prove use (or reputation) of its earlier affect a UK comparable mark, the
the end of September 2021, any registration. Proof of use may also UKIPO needs to be informed by way
new UKTM application filed after be needed if a registered trade mark of a “Cancellation Notice” and the
1 January 2021 could be opposed is the subject of a revocation claim owner of the UK comparable mark
on the basis of later-filed UKTM based on non-use for a continuous can contest it by filing a “Derogation
applications that mirror EUTM period of five years. Notice” setting out why there should
applications and are therefore not be equivalent cancellation of
granted earlier filing dates. It is In the case of comparable UK marks, the UK comparable mark and filing
therefore advisable to conduct and where all or part of the period supporting evidence.
searches of EUTM applications where use has to be proven falls
that were still pending on 31 before 31 December 2020, use of the Conclusion
December 2020 before filing original EUTM (or IR(EU)) anywhere
new applications for registration The landscape for trade marks in the
in the EU will count as use of the
of UKTMs before the end of UK has changed considerably since
comparable UK mark for that specific
September 2021. Brexit was finalised, and there are a
period. For example, if the owner of a
number of dates to be aware of and
comparable UK mark must prove use
Although owners of EUTMs and different rules in place for a limited
of the mark in the period 1 October
IR(EU)s still pending by the end of the period of time, even though the Brexit
2019 to 31 December 2020, use of
transition period have until the end of transition period has technically
the corresponding EUTM (or IR(EU))
September 2021 to re-file their mark ended.
within the EU will support use of the
in the UK, they should not delay these comparable UK mark for that period.
re-filings if they want to enforce their The same principle applies for the
rights in the UK. Opposition periods assessment of reputation.
will not be extended to await the re-
filing of a UKTM application based on Effects of pending EU
a pending EUTM/IR(EU).
cancellation actions on
For example, in the case of a UKTM comparable UK marks
application published on 15 January A registered EUTM can be cancelled
2021, the final deadline to oppose on various grounds. For example,
Yoann Rousseau
yrousseaau@vennershipley.co.uk
11EPO embraces VICO
The events of the last 12 months or so will no doubt have lasting effects on the
way we work in the IP sector, and the future of in person hearings at IP offices
around the world will also be affected.
The EPO is no exception and since the videoconference for deliberation and project (here). This version of the
pandemic began at the beginning of voting. The new rules also enable the pilot is the pilot project currently
2020, it has had to balance the need applicant and their representative in place. Significantly, the new pilot
for each party’s right to be heard and to connect to oral proceedings from removed the need for all parties to
their own need to process cases as different locations. consent to VICO being used. Hence,
efficiently as possible. As a result of oral proceedings before opposition
COVID-19, many oral proceedings at Opposition Division divisions being held by VICO is now
the EPO have had to be postponed. the default. There are exceptions.
In contrast to examining division
In response, the EPO has embraced For example, the opposition division
proceedings, opposition division
videoconferencing (VICO) in an itself can decide to hold the oral
proceedings involve at least two
attempt to allow as many oral proceedings in person. Also, a party
parties (patentee and opponent) and
proceedings as possible to continue may request that the oral proceedings
because of this, the practicalities of
during the disruption caused by the is held on the premises of the EPO if
conducting opposition division oral
pandemic. there are serious reasons. However,
proceedings by VICO are greater.
such requests are considered at the
Nevertheless, the EPO quickly
The following is a summary of how discretion of the opposition division
implemented a pilot project for
the EPO adapted during 2020 and and refusal of such a request is not
opposition division oral proceedings.
what the current arrangements are. separately appealable. The project
In May 2020, the EPO introduced
allows members of the opposition
its first pilot project in which oral
Examining Division proceedings were only held by VICO
division to connect remotely from
different locations and a separate
The EPO had an advantage in that at the discretion of the opposition
communication channel is provided
it had already held examining division and then only if all parties
to allow them to deliberate. Likewise,
division oral proceedings by VICO agree. The pilot was therefore
the parties and their representatives
for a number of years. However, all voluntary. Aa a result, it was possible
may also connect to the VICO from
oral proceedings before examining for one party to prevent oral
different locations, however the
divisions are now held by VICO unless proceedings going ahead by declining
opposition division has the right
there are serious reasons against to take part in the pilot. If a party
to limit the number of additional
holding the OP by VICO. Therefore, refused, the EPO had no other option
locations if they think it would impair
VICO is now the default. but to postpone the oral proceedings,
the efficient conduct of the oral
most likely until the disruption caused
proceedings.
Another important change is that the by COVID-19 was over. Anecdotally
new rules expressly allow members the number of oral proceedings
Members of the public are also
of the examining division to connect actually going ahead was relatively
allowed to follow oral proceedings
to the proceedings remotely from low.
by VICO either remotely upon giving
different locations. In such situations,
prior notice or on the premises of the
the members of the examining From the beginning of 2021, the EPO
EPO. The decision came into force on
division will conduct their own private modified and extended the pilot
12www.vennershipley.co.uk
4 January 2021 and is intended to run by VICO is consistent with the VICO are compatible with the EPC,
until 15 September 2021, although it European Patent Convention (EPC) it seems likely that at least some of
could of course be extended and/or was considered in an appeal case these arrangements will continue
modified at any time. (T1807/15 – here). In particular, it was to be in place well after the current
argued that new Article 15a of the disruptions end.
Board of Appeal Rules of Procedure of the Boards of
Appeal is incompatible with Article Although there are clearly
The Board of Appeal is the last
116 EPC (the right to oral proceedings) disadvantages of VICO and some
practical recourse for parties at the
& Article 113(1) EPC (protecting a legitimate concerns that oral
EPO. The arrangements around oral
party’s right to be heard). Despite proceedings by VICO are not as
proceedings before the Boards of
the party requesting the referral effective or efficient as in person
Appeal have therefore been more
withdrawing their request, the Board hearings, there are undoubtedly
carefully considered. In particular,
of Appeal continued and decided to advantages. In particular, it has given
the official Rules of Procedure of the
refer the following question to the clients who usually do not attend
Boards of Appeal were amended by
EPO’s Enlarged Board of Appeal: oral proceedings the ability to take
decision of 23 March 2021 to allow
Is the conduct of oral proceedings part in oral proceedings or at least
oral proceedings to be held by VICO.
in the form of a videoconference observe. It also reduces the amount
The amendment introduced new
compatible with the right to oral of travel required for participants not
Article 15a “Oral proceedings by
proceedings as enshrined in Article based in Munich. For representatives,
videoconference” (here).
116(1) EPC if not all of the parties there is also the advantage of being
to the proceedings have given based in the office (or even at home);
Board of Appeal hearings are still
their consent to the conduct of despite significant improvements in
held in person by default. However,
oral proceedings in the form of a the facilities provided for attorneys
the Board may now hold oral
videoconference? at EPO premises in recent years, they
proceedings by VICO if the Board
are not as good as what is available in
considers it appropriate to do so,
From the EPO’s perspective, there their own office.
either upon request by a party or
is a need to settle this quickly. The
of its own motion. The new rules
Enlarged Board has already set a Based on the feedback of
also allow a party, upon request,
date for the oral proceedings. Oral representatives, the parties and
to attend by VICO even if the oral
proceedings are to be held on 28 the EPO themselves, in due course
proceeding are being held on the
May 2021 – by videoconference! We the EPO will need to decide if
premises of the EPO. Therefore the
await the outcome of the hearing they continue with examining and
new rules introduce, for the first time,
with interest. In the meantime, the opposition division oral proceedings
so-called “hybrid” oral proceedings
President of the EPO in a decision by VICO as the default. As with so
in which one party attends in person
dated 24 March 2021 (here), many aspects of our new lives – is this
and another party attends by VICO.
announced that “following a careful the new normal – we will have to wait
Members of the Board may also
weighing up of the impact for legal and see?
participate by VICO if required.
certainty and access to justice”, oral
The Boards of Appeal do not
proceedings before examining and
therefore require the consent of the
opposition divisions will continue to
parties to hold oral proceedings by
be held by VICO as under current
VICO. In practice, we have seen many
practice, i.e. without requiring explicit
Boards begin to use VICO.
agreement of the parties.
G1/21 – is VICO legal at the
The Future
EPO?
Assuming that the Enlarged Board
In March 2021, the question of
confirms that oral proceedings by
whether holding oral proceedings Tim Russell
trussell@vennershipley.co.uk
13A round-up of recent
decisions from the
boards of appeal at the
EPO
Whilst a recent referral to the Enlarged Board of Appeal in T 1807/15,
questioning the legality of holding Board of Appeal oral proceedings by
videoconference without the consent of all parties, has the potential to disrupt
future appeal proceedings during this pandemic, there are still plenty of
decisions to consider for now. Here, we take a look at some of the decisions
from the technical and legal Boards of Appeal.
1) T0944/15 – Can 2) T0799/16 – The bar for of sufficiency of disclosure is met,
computer programs be sufficiently disclosed and since the person skilled in the art has
the necessary technical information
excluded as surgical/ inventive second medical to perform the treatment”. What
diagnostic methods for use dosage regimes constitutes “a relevant proportion”
treatment under Article For a claim directed to a second/ will depend on the facts of the case.
53(c) EPC? further medical use of a compound However, it appears that the bar may
or composition to satisfy Article 83 be lower for therapeutic indications
It is well-established that claims to
EPC (sufficiency of disclosure), it that are particularly difficult to
methods for treatment of the human
must be credible that the compound demonstrate efficacy in.
or animal body by surgery or therapy
or composition shows therapeutic
and diagnostic methods practised
efficacy in the claimed patient Not only did the Board find the
on the human or animal body are
population. In T0799/16, the Board claims in question to be sufficiently
excluded from patentability under
of Appeal considered arguments that disclosed, it also deemed the claims
Article 53(c) EPC. However, it is equally
the applicant’s data demonstrated inventive by virtue of the claimed
well-established that this exclusion
that only a sub-population of patients dosage regime (10 mg bid). This
does not apply to products for use
with multiple sclerosis (MS) would was even in light of prior art that
in these methods. The question of
respond to a claimed treatment (not described the same 10 mg bid dosage
how to apply these provisions to a
MS patients in general, as recited in regime. In the Board’s opinion, the
claim directed to a computer program
the claims in question) and therefore prior art did not explicitly state
which, when running on a computer,
whether the claimed treatment was that the dosage regime resulted
causes the computer to perform an
sufficiently disclosed. The Board in the claimed efficacy (increasing
excluded method was considered in T
acknowledged that the data showed the walking speed of MS patients)
0944/15.
that a population of non-responders and, due to the extreme difficulty in
existed (only about one third of the demonstrating said claimed efficacy,
In a decision that will be surprising to
patient population tested responded the person skilled in the art would
some, the Board of Appeal came to
to the claimed treatment). However, have failed to appreciate the utility
the conclusion that such a computer
it was reasoned that the existence of the 10 mg bid dosage regime in
program can be excluded under
of non-responders is not a reason to the prior art. In fact, a new statistical
Article 53(c) EPC. In reaching this
deny sufficiency of disclosure (groups method was required to demonstrate
decision, the Board of Appeal directly
of non-responders are common in the claimed efficacy. Whether this
contradicted the EPO’s Guidelines
many treatment areas) and further method would have been obvious to
for Examination, G-II, 4.2.1, which
that the non-responders do not have the skilled person was not addressed
explicitly state that such computer
to be excluded from the claims. and in absence of this discussion,
programs “are not to be objected to
the Board decided that the efficacy
under Art. 53(c) EPC”. As such, this
The Board stated “If it can be shown associated with the claimed dosage
seems to be a controversial decision
that a relevant proportion of patients regime was not obvious based on the
and it may well not be the last we
benefits from a treatment and that available prior art.
hear on this point.
it has acceptable safety, the criterion
14www.vennershipley.co.uk
3) T0265/20 – The 5) T0552/14 – Avoiding the opportunity to state that the
importance of checking the concept of ‘technical EPO’s approach to sufficiency and
inventive step has been developed
the text intended for novelty’ to take account of the technical
grant The question of ‘technical novelty’ (the contribution actually disclosed in
T0265/20 is unusual in that it was an concept that only technical features a patent application and to avoid
appeal against a decision to grant a can provide novelty) occasionally patent protection resulting from
patent. The appellant’s issue with this arises at the EPO, and there have unreasonable speculation. Some
decision was that the granted patent been indications from the Boards speculation is of course allowed
was missing all of the drawings. It of Appeal that it may well be the (even in the field of medicine) but
transpired that this was caused by the case that only technical features can propositions that are prima facie
accidental omission of the drawings provide novelty. However, the Boards implausible should not be.
from the text intended for grant when have generally appeared reluctant to
the Rule 71(3) EPC communication make any definitive decision on this In the present case, the Board noted
was issued, an omission that was point, tending to find other grounds that sufficiency of disclosure cannot
not noticed by the applicant when for making their decisions on specific be acknowledged if an invention
reviewing this text. Unfortunately cases.In the decision leading to the goes against a prevailing technical
for the appellant, the Board of appeal of T0552/14, however, the opinion and the patent fails to give
Appeal could not be persuaded that examining division was clearly of the even a single reproducible example.
there was any legal basis for the view that these indications from the In the application in question, the
allowance of an appeal rectifying this. Boards of Appeal were sufficient to claims related to aclidinium for use
In particular, the Board argued that establish the existence of ‘technical in the treatment of asthma, whereas
“the "true will" of the members of novelty’. As such, citing G2/88, the examples in the application
the examining division when editing T0172/03 and T0154/04 as support for demonstrated effectiveness only
the communication pursuant to Rule its approach, the examining division in treating chronic obstructive
71(3) EPC is of no relevance.” This took into account only technical pulmonary disease (COPD). However,
case stands as a useful reminder of claimed features in its assessment the Board reasoned that the
the importance of a detailed review of novelty, and thus refused the description of the application stated
of the text intended for grant. Many application as lacking novelty. that aclidinium could be used to treat
errors concerning the contents of the asthma and that the prior art did not
patent, even when made by the EPO, In considering this on appeal, and teach against this effect (instead it
cannot be fixed after grant. perhaps not unexpectedly, the corroborated the effect). As such, the
Board of Appeal avoided making a claimed invention did not go against
4) J0010/20 – Legal decision on the existence of ‘technical the prevailing technical opinion and
novelty’, by instead considering the claimed invention was therefore
justification for the EPO’s inventive step. Interestingly, the sufficiently disclosed.
COVID-19 extensions Board did not appear to provide
At the beginning of the pandemic, any specific indication as to whether The Board also considered whether
the EPO issued a notice (OJ EPO 2020, the examining division was right the claimed invention (optimised
A29) announcing the extension of or wrong to refuse the application dosage of aclidinium for treating
all deadlines. The EPO justified the as lacking novelty on the basis of asthma) was inventive. The Board’s
extension by referring to disruptions a ‘technical novelty’ analysis, but reasoning relied on its assumption
due to the COVID-19 outbreak, stating instead explained that it did not need that an optimised dosage for treating
that there was a general dislocation to decide on this issue because there COPD also represented an optimised
in Germany, and indicating that this was a lack of inventive step in any dosage for treating asthma. Prior
was in accordance with Rule 134(2) case. art data relating to the use of
EPC. Through subsequent notices, this aclidinium in the treatment of COPD
turned into a substantial extension of Given the ease of the way in which was therefore considered but found
deadlines, only ending months later in non-technical features can be to teach away from the claimed
June 2020. disregarded in the assessment of optimised dosage regime which was
inventive step, rendering the issue of thus found to be inventive.
Despite not appearing entirely ‘technical novelty’ moot, we may be
convinced that these COVID-19 waiting a long time for any definitive
extensions necessarily had legal decision on the existence of technical
basis within the meaning of Rule novelty.
134(2) EPC, the Board of Appeal in J
0010/20 ensured that the announced
extensions could be relied on by 6) T2015/20 – Sufficiency,
instead focusing its analysis on the inventive step and
principle of legitimate expectations.
In particular, the Board noted that it
speculation
did not need to decide whether the In T2015/20 the Board of Appeal
Henry Aldridge
COVID-19 extensions had legal basis, considered whether a second
haldridge@vennershipley.co.uk
because the notices issued by the EPO medical use claim reciting a dosage
amounted to a source of legitimate regime satisfies the requirements of Nick Barrow
expectation that the appellant was sufficiency of disclosure and inventive nbarrow@vennershipley.co.uk
entitled to rely on in any case. step. Interestingly, the Board took
15IP audits: What? When?
and Why?
You have decided to perform an IP Audit. Maybe you have received a grant
from the UK Intellectual Property Office to assist with the cost. What do you
expect to achieve with the Audit? How can you get the best out of the process?
IP Audits are often generated by be registerable. An IP audit is a good involvement with the business can be
early stage companies. However, opportunity to consider whether close to impossible.
companies at all stages of further registered rights (e.g. for
development can benefit from an branding, graphical user interfaces An IP Audit is an ideal time to take
IP audit. For example, established or inventions that have not yet been stock of agreements with all relevant
companies with extensive IP disclosed to the public) could be parties to ensure that any IP rights
portfolios should take the time potentially valuable. that should have passed to the
to consider the strengths and business have done so. For example,
weaknesses of their IP portfolio and IP Ownership it is much better to discover you need
their IP strategy. a confirmatory assignment to perfect
An IP Audit should investigate your title to an important IP right
An IP Audit should be a focussed whether the business actually during an internal audit, than to find
piece of work that takes an overall owns the IP rights that have been out for the first time when the issue
look at the current and future IP generated. This is an area where is raised by a potential investor or
position of the business and seeks many companies can make significant acquirer during due diligence checks.
to come to some conclusions. To this improvements.
end, IP audits do not generally cover:
IP rights flow from the activities of
IP Risks
individuals. These individuals may Documenting IP Assets may be the
1. Preparing and filing applications
be employees, in which case the key part of the IP audit from the point-
for patents, trade marks, designs
rights often (but not always) pass to of-view of the business owners, but
or other registered rights.
the business. But does the business understanding IP risks may be the
2. Conducting significant searching
own the IP for developments made more important to existing and future
and analysis, for example patent
by contractors, collaborators and investors.
landscapes or freedom-to-
operate (FTO) work. customers? What about part-
time employees? Do they have Perhaps the key risk is whether the
another employer who might claim IP rights of others might be infringed
Some thoughts on the key
ownership? – often referred to as “freedom-to-
components of typical IP Audits are
operate” (FTO).
provided below.
Long-established companies are not
immune from ownership problems. The priority for early stage companies
IP Assets For example, multi-nationals may is often developing products/services
Documenting the registered IP have complex legal structures and finding customers. Thus, FTO is
assets of a business (such as including many legal entities and often deferred to a later stage. This
patents, trade marks and registered many external collaborators. Further, is often the correct approach. For
designs) is generally a relatively companies of all sizes, particularly example, during early development,
easy process. However, many early in high tech areas, make extensive a product specification can be
stage companies do not have many use of academics and PhD students somewhat fluid, and a freedom-
registered IP rights; unregistered for whom the ownership of IP can be to-operate analysis attempted too
rights (such as copyright, unregistered more complex in the absence of a soon risks becoming irrelevant as
trade marks, domain names and clear contract put in place before the the product develops. The balance
technical know-how) may be of start of a project. between going too soon and
more value. These are often poorly potentially needing to redo such
understood. Ownership of registered IP is often analysis closer to product launch,
resolved before filing. However, versus the risk of investing too much
Many IP rights may not be recognised ownership of unregistered IP time and capital into a route which is
as such by the business. Accordingly, may never be resolved. Trying to unviable due to third party rights is
the process of simply documenting determine who owns the copyright often delicate, and may depend on
these rights can be useful. Moreover, in a piece of software written by a the nature of the products concerned.
some unregistered rights may still contractor who no longer has any
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