Beck Greener Promoted to Silver Tier in IAM Patent 1000 Rankings

Beck Greener News

We are delighted to announce that Beck Greener has been promoted to the silver tier in the recently published 2024 IAM Patent 1000 listings for patent prosecution. IAM Patent 1000 is a highly respected guide for clients seeking to find world class expertise in the patent field. Every year it conducts in-depth qualitative research with hundreds of patent lawyers and attorneys, in-house counsel and other experts. So this great result for Beck Greener means that it has received high praise from sources across the market. This can be seen in the commentary:

“Beck Greener delivers exactly what is needed from a high-end IP firm; its attorneys are highly professional, efficient, friendly and customer focused. They demonstrate a deep understanding of what their clientele are trying to achieve with their IP strategy and are highly organised when it comes to managing large patent portfolios. The team highlights all possibilities and makes clear recommendations, but is ultimately led by clients’ interests and decision making, providing a service that is cleverly tailored to their needs.”

The individual patent attorneys at the outfit also receive enthusiastic client commendations:

“Leading the electronics, physics and mechanical engineering side, Avi Freeman is a highly skilled and trustworthy patent practitioner who delivers a work product that is consistently of a high quality. He is always very responsive to queries and makes clear recommendations on the best way to move matters forward.”

Nick Bebbington deftly drafts patent applications for highly innovative companies and comfortably guides patrons through the complex landscape of software inventions, to achieve patent protection that will last.”

“Captaining the chemical, pharmaceutical and chemical engineering group, James Stones is very switched on when it comes to the science. He provides useful guidance and works efficiently to manage instructions within the budgets of his clients, and makes each step of prosecution very clear. He is proactive, provides straightforward advice and is always one step ahead when meeting deadlines for multiple patent offices.”

Deborah Selden, John Hull, Anna Hatt and Catherine Jewell strengthen the chemistry bench and come highly recommended.”

“It is always a completely positive experience working with Deborah. She is simply an excellent attorney in the field of organic chemistry and biochemistry. Deborah is very skilled at handling patent prosecution and post-grant issues, and collaborates closely with her clientele to find the best strategy that suits their needs. She solves issues swiftly through thorough analysis, clear and proper argumentation, and fantastic performances at oral proceedings.”

“John is an excellent practitioner who is very knowledgeable, pragmatic and easy to work with. He has in-depth experience working with global corporations and does an excellent job at juggling their demands.”

“Hatt and Jewell are versatile attorneys who adroitly manage portfolios and represent patrons with precision in post-grant proceedings at the EPO. They position themselves as extensions of the client’s in-house team, to deliver thoughtful and highly tailored advice.”

“Heading up the life sciences team, Ben Muir is skilled on the pharmaceuticals and biotech side as well as chemistry: Ben is a go-to practitioner without any doubt. He is equally – and excellently – skilled in both the law and the science. Ben has time after time impressed by finding hard-to-detect errors in complex chemical claims, thus saving them from later attack. His knowledge and application of the law has never permitted question and his patrons take his advice confidently.”

“Joining his colleagues in the guide for the first time this year, Jonathan Markham comes highly recommended for his technical expertise in the fields of mechanical devices, electronics and telecommunications. His patrons appreciate his “detailed and professional advice, which has resulted in the grant of a series of commercially useful patents and trade secrets that will have positive implications and outcomes for the business across the globe. Jonathan is insightful and always works with his clients’ best interests in mind through developing an intimate understanding of their business and intellectual property.”

Click here to read more about the rankings.

This year nine Beck Greener partners are recommended as leading attorneys within the guide: Avi Freeman, Ben Muir, John Hull, James Stones, Anna Hatt, Nick Bebbington, Deborah Selden, Catherine Jewell and Jonathan Markham.

We would like to thank our clients for their contribution to the IAM Patent 1000 research process and their enthusiastic feedback and IAM Patent 1000 for ranking Beck Greener in its listings for patent prosecution.

Romania Joins UPC System

Author: Anna L. Hatt
IP News

Romania has ratified the Unified Patent Court Agreement and will accede to the agreement on 1 September 2024, as the first additional country to join since the system opened. Any unitary patent registered on or after this date will cover 18 countries, rather than 17 as at present. However, this does not apply to unitary patents registered before 1 September 2024.

The EPO is offering the possibility of delayed registration of unitary patents to allow proprietors to benefit from this wider territorial scope. If you would like further information, please contact us.

Qatar Joins the Madrid System of International Trade Marks

IP News

Qatar has filed instruments of accession to the Madrid Protocol with the World Intellectual Property Organization (WIPO) in Geneva, resulting in the Madrid System of International Trade Marks now covering 131 countries.

The Madrid System makes it possible for people and businesses to apply for trade mark protection in numerous jurisdictions at the same time and in a single application. Subject to certain exceptions, applicants can elect for their application to cover one, some or all of the territories which are members of the system. These so-called ‘International Applications’ are usually based on an earlier application or registration in the applicant’s home jurisdiction, and remain dependent on the life of that ‘basic’ application or registration for the first five years of their lives.

If certain formal requirements are met, International Applications are formally registered by WIPO, who forward them on to the national Registries of each of the countries the applicant listed in the International Application, who decide whether or not to grant protection in their territories under their own national laws. If objections or issues arise, local counsel usually needs to be engaged to address the matter.

Whilst an International Application does not itself guarantee protection in all of the countries it lists, or that costs of engaging local counsel around the world can always be avoided, it provides a streamlined, cost-effective means for applicants to file, renew and transfer rights to a trade mark in many jurisdictions around the world, without the need to file separately on a territory-by-territory basis.

From 3 August 2024, applicants for International Trade Mark Registrations will be able to list Qatar as one of the countries in which they wish to seek protection for their marks.

Beck Greener are experts in the Madrid System, and have been successfully filing, administering, and prosecuting International Trade Marks around the world for decades. If you are interested in protecting your trade mark in multiple jurisdictions, we would be happy to assist.

Beck Greener Sponsors IBSA International Business Structuring Spring Conference

Beck Greener is pleased to be sponsoring the IBSA’s International Business Structuring Spring Conference on Thursday 9 May in London, with Catherine Jewell on the panel of international speakers.

The conference will explore a fictitious case study centred around an entrepreneur’s ambition to develop a task management software company across several jurisdictions. The conference will look to develop clients’ understanding of their Intellectual Property, how they can Finance the growth of their business, Personal Residence Planning, Tax Aspects of Offshore Trusts and many other Private Client advisory needs. For full details of the IBSA’s International Business Structuring Spring Conference programme and to book ticket click here.

New EPO fee reductions for micro-entities from 1 April 2024

Author: Harry O'Brien
IP News

Following up from our recent article on increases to EPO fees (see link below), the EPO is simultaneously introducing a new fee reduction scheme for micro-entities which will also enter into force on 1 April 2024.

The new scheme aims to support the growth and development of smaller entities by making it easier for them to access the European patent system. It complements the existing language-related fee reductions, where small entities (SMEs, natural persons, non-profit organisations and universities etc.) which have their residence or principal place of business in an EPC contracting state can request a fee reduction when filing a European patent application or request for examination in an official language of that state other than English, French or German.

Unlike the language-related fee reduction scheme, micro-entities will be eligible for the scheme irrespective of their nationality or domicile. Micro-entities include the above-mentioned small entities, with the exception of SMEs which instead must be ‘microenterprises’ (an enterprise that employs fewer than 10 persons and whose annual turnover does not exceed EUR 2,000,000).

Micro-entities will be eligible for a 30% reduction to the following fees:

– the filing fee;
– the search fee;
– the examination fee;
– the designation fee;
– the fee for grant; and
– the renewal fees for the European patent application.

The same reduction will also be available for a selection of Euro-PCT fees where the EPO acts as the International Searching Authority.

To benefit from the micro-entity fee reductions, applicants must declare their status to the EPO at the latest when the relevant fee is being paid. For applications with more than one applicant, each applicant must be a micro-entity to obtain the fee reduction. Any changes to the status of a micro-entity after a declaration will only take effect for future fees to be paid and will not affect any reduced fees already paid. For transfers of applications, the fee reduction will continue to apply only if the new applicant is also eligible (and the new applicant must also file a new declaration).

It will be possible for applicants who are eligible for both the present language reductions and the new reductions for micro-entities to receive two reductions for certain fees e.g., the filing fee.

It is imperative that the applicant informs the EPO if there is any change to the micro-entity status. Random checks regarding the status of applicants will be carried out by the EPO and where there is any reasonable doubt regarding the applicant’s status, evidence to prove the applicant’s status may be requested. The consequence of an incorrect declaration is that any unduly reduced fee will be deemed to have not been validly paid and the application will be deemed withdrawn. Although it will be possible to revive the application, this could be a costly procedure for the applicant.

The reduced fees will also only be available for the first five applications filed within a five year period. This applies irrespective of whether the previous applications filed within the five year period were subject to a fee reduction and irrespective of the status of the previous applications.

The new changes represent a positive move for small organisations and individuals wishing to make use of the European patent system, particularly when considering the fee increases due to take effect from 1 April 2024.

Please note that this article does not constitute legal advice. For more information, contact Harry O’Brien or Anna Hatt.

Click here to see our recent article on fee increases from 1 April 2024

 

Post-Grant Litigation Pathways for European Patents

IP News

Now that the Unitary Patent is available and the Unified Patents Court (UPC) is open for business, what does this mean in terms of jurisdiction, in respect of classically validated patents and unitary patents? The possible litigation pathways are illustrated by the diagram below.

When a European patent application grants, the Proprietor must decide whether to use the long-standing “classical” validation systems to obtain a bundle of independent national patents, or to request unitary effect in order to obtain a Unitary Patent, i.e. a single indivisible patent that covers all of the EPC member states that are signatories to the UPC Agreement and have ratified this. Often a combination of the two systems is needed, in order to cover all the EPC Member States of interest.

There has been some confusion between the Unitary Patent and the Unified Patents Court because of their similar names: the Unitary Patent is a patent litigated via the Unified Patents Court, whereas the Unified Patents Court is a court for litigating unitary patents but also some other European patents (classically validated).

Only the Unified Patents Court has jurisdiction over unitary patents.

For patents that are classically validated and are opted out of the jurisdiction of the Unified Patents Court, the National Courts have jurisdiction.

However, for patents that are classically validated but are not opted out (or where the opt-out has been withdrawn), jurisdiction is decided by where the first action is brought during the transitional period. In this period, actions can be brought in either the Unified Patents Court or the National Courts and jurisdiction remains with whichever is the court where the first action is brought, for the lifetime of the patent. If no action is brought during the transitional period, then the Unified Patents Court will have jurisdiction once the transitional period ends. The transitional period will last at least seven years, i.e. until at least 2030.

After the transitional period, the Unified Patents Court will have jurisdiction over both classically validated and unitary patents and it will no longer be possible to opt out.

For more detailed advice, our patent attorneys will be happy to help.

WTR 1000 Ranks Beck Greener as a Silver Tiered Firm for Prosecution & Strategy for 6th Year Running

Beck Greener News

We are delighted to announce that Beck Greener has been recognised as a Silver Tier firm for prosecution and strategy in the 2024 edition of the World Trademark Review (WTR) 1000: The World’s Leading Trademark Professionals for the 6th consecutive year.

The WTR 1000 reveals the leading national and international trademark practitioners from around the world.

Five Beck Greener trade mark attorneys (Ian Bartlett, Duncan Morgan, Rowland Buehrlen, Catherine Jewell and Kashif Syed) have once again been highlighted as trade mark experts within the guide.

Commentary from the guide was as follows:

“Beck Greener can be relied on for an excellent, responsive, forward-thinking service, and expert IP advice in the UK and EU. Its outstanding professionals are knowledgeable, reliable and insightful, as well as understanding and sympathetic to the needs of their clientele. They always provide a first-class service irrespective of the size or stature of the client.” Leading the trademark team, Ian Bartlett is “the first port of call for any UK matter. He is an expert in his field and a trusted adviser to many household-name brands, with whom he has long, established relationships.” He has recently been working closely with The Official UK Charts Company to successfully overcome an attempt to prevent the registration of its key OFFICIAL CHARTS trademark, which is widely used, including on BBC Radio One. Catherine Jewell, Duncan Morgan and Kashif Syed are also keeping busy seeing trademark applications through to successful grant and managing large trademark portfolios. They earn glowing reviews in the process: “Catherine is a highly skilled practitioner who has an excellent track record of securing trademarks. She is knowledgeable, friendly and patient – she explains in simple terms what needs to be done and brings a personal touch, which is so well received by patrons.” “Duncan and his team are always incredibly responsive to requests, deliver work on time, and provide detailed, commercially minded reports on the results found. Duncan brings a pragmatic approach and has a very solid knack for taking ownership and making progress, whilst keeping both client and co-counsel informed and educated all along the way.” “Kashif brings a friendly, courteous, forward-thinking approach and a broad knowledge of his clients’ portfolio to develop tailored strategies and advice on a case-by-case basis.” Captain of the Alicante office, Rowland Buehrlen brings a profound understanding of EU trademark law and represents his patrons’ interests to the hilt in cancellation and opposition proceedings before the EUIPO and UKIPO.

We are very grateful to our clients for their contribution to the World Trademark Review 1000 research and for their positive feedback as quoted by the WTR 1000.

View the full WTR 1000 firm and individual rankings here.

EPO Validation in Georgia

Author: Anna L. Hatt
IP News

From 15 January 2024 it is possible to validate European patents in Georgia. Georgia thus joins the list of validation states which are not members of the European Patent Convention, which also includes Morocco, Moldova, Tunisia, and Cambodia.

Validation in Georgia is available for applications filed on or after 15 January 2024 upon request and payment of a fee.

For more information, please contact Anna Hatt or Matthew Ng.

Increase to EPO Fees from 1 April 2024

Author: Avi Freeman
IP News

The EPO is to increase official filing fees for new applications with effect from 1 April 2024. This will apply to ex-PCT applications as well as first and convention filings.

A decision of the EPO Administrative council, yet to be published in the official journal (EPOJ), indicates that a number of the official filing fees for new applications are to increase by about 4%.

Not all fees are to increase but the search, exam and designation are all scheduled to increase.
The search fee is to increase from €1460 to €1520. The examination fee is to increase from €1850 to €1915 and the designation fee is to increase from €660 to €690.

The fee for grant and printing, payable in response to a notice of allowance (communication pursuant to Reule 71(3) EPC), is to increase from €1040 to €1080.

Publication of the decision is expected in the upcoming EPOJ of January 2024. Further details will follow on our website once this has been published.

Applicants with applications having filing due dates on or shortly after 1 April 2024 might consider getting the applications filed before this date to benefit from the current, lower, official fee rates.

For more information contact Avi Freeman or Matthew Ng.

Patent law and the Modern World – Can an AI system be an inventor?

DABUS and the UK Supreme Court

On 20 December 2023, the UK Supreme Court delivered its judgement that DABUS, the AI machine owned by Dr Stephen Thaler, cannot be an inventor of a UK patent application as an inventor must be a natural person. Secondly, simply being the owner of a machine that “makes an invention”, does not entitle you to file a patent application for and obtain a patent for the invention.

The court ruled that DABUS “..was not an inventor of any new product or process described in the patent applications. It is not a person, let alone a natural person and it did not devise any relevant invention. Accordingly, it is not and never was an “inventor” for the purposes of… [UK Law].”

The two patent applications in question were therefore refused as the statutory requirement to name an inventor had not been satisfied.

If UK patents are to be pursued and granted for AI-generated inventions, some way will have to be found to deal with this problem in the law.

There perhaps could have been a simple way to avoid the problem: Dr Thaler could have named himself as the inventor, i.e. the devisor of the invention. I write without any detailed knowledge of the facts of the invention or process by which it was created, and generative AI, as its name suggests, clearly does some generating. However, it would not seem to me too much of a twisting of language to say that a human that controlled and provided the training and inputs to an AI system can be thought of as devising the output. Whether or not if challenged down the line a court would have questioned Dr Thaler’s right to be named as inventor is an interesting question. Putting all this uncertainty to one side, it seems likely that the UKIPO would have accepted that the formal requirement had been satisfied if Dr Thaler named himself as inventor.

This case, to many appeared an attempt to test the law to see how far it would go in its interpretation of the statutory provisions relating to the concept of “inventor”. So, although there might be a subtle question to answer, i,e. “what is an inventor?”, in the end this case was more simple and the court did not choose, or need, to concern itself with such high ideas. The Supreme Court, and lower courts before it, was and are bound by the fact that UK patent law defines an inventor as human, and having an inventor is essential for a patentable invention.

Perhaps the law will one day change and allow for an AI system to be recognised as a joint inventor, or even allow the controller/creator/operator of the AI system to be named as the inventor. Such changes would have their own associated problems. However, the way the law currently stands, the judgement does not seem surprising.

This is the world as it is coming up against law written in an era in which the way the world now works could never have been predicted. This is not uncommon in the world of patents where technology moves on and the law, inevitably, is always stuck in the past. The exclusions from patentability of, say, certain types of software, is another good example. When most modern patent laws were first laid down, they were more about nuts and bolts inventions. Nowadays (and for the last decade or more) so much of the development and improvement in the world has been in the area of software. Courts in the UK and elsewhere have found ways to recognise certain types of software as patentable, even though many patent laws, read simply, say otherwise. Unless and until statutes change, perhaps courts will do the same with AI-generated inventions.

Full judgement can be found here.

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