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However, for patents that are classically validated but are not opted out (or where the opt-out has been withdrawn), jurisdiction is decided by where the first action is brought during the transitional period.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.

Case report: R 872/2023-4 EU Designation of International Trade Mark Registration No. 1660878 Device of a Gummy Bear

Case Reports

A recent decision from the Board of Appeal at the EU Intellectual Property Office (EUIPO) serves as a useful reminder that, just because an image can be used decoratively, that does not mean that it is not capable of being relied on by the public to determine the trade source of goods. Hence such images may be registrable as trade marks.

The decision itself can be viewed here. The facts of the case are straightforward. In 2021, Rigo Trading S.A. (a holding company for the various trade marks used for Haribo sweets) sought protection in the European Union for a trade mark consisting of the appearance of a gummy bear, specifically:

for a broad range of non-food goods.

When considering whether to grant the application, the examiner at the EUIPO decided to refuse protection as regards a broad range of the goods in the application (including computer cases, gemstones, printed matter, bags, household linen, clothing, carpets and toys) on the grounds that they did not consider the mark to have distinctive character for such goods (i.e. it could not be relied on by the public to determine the trade source) for the following reasons:

  • The appearance of the mark does not depart significantly from the norm or customs of the relevant sector, and consumers normally pay more attention to a label or name of a product than to its shape, packaging or decorative elements.
  • The true to life portrayal of a gummy bear or its figurative representation is commonly used for decorative, artistic or aesthetic purposes. Therefore, the sign at issue is a mere variation of various shapes, forms of packaging or decorations commonly used in trade for the contested goods.
  • The examiner had located various examples of such goods in, or depicting the shape of, a gummy bear online.

Their arguments trying to persuade the examiner to waive the objection having been unsuccessful, the Applicant appealed the refusal to the EUIPO’s Board of Appeal, arguing inter alia that:

  • It is established law that purely figurative trade marks (such as that in their application) are registrable with the exception of simple geometric devices that are unable to convey any message that can be remembered by consumers (and the shape of the gummy bear clearly does not fall within this exception).
  • The mark applied for has at least a minimum degree of distinctive character. It does not consist of a simple geometric device and is also not a common decorative element or representation of the contested goods.
  • The sign applied for is not a real-life version of a bear but a stylised, linear and abstract version of a bear. Gummy candy products from competitors look very different. The internet extracts displayed in the decision of the examiner show products with ‘normal’ bear shaped gummy candies but not the original HARIBO Gold bear depicted in the mark in the application.

The EUIPO’s Board of Appeal duly reversed the examiner’s decision, finding that the mark crossed the necessary threshold of distinctiveness, on the basis that, inter alia:

  • The more closely the shape resembles the shape most likely to be taken by the product, the greater the likelihood of the shape being devoid of any distinctive character.
  • The appearance of a gummy bear or a figure of an animal has no connection with the contested goods, none of which belongs to the market sector of confectionery or sweets, and is unrelated to the likely or customary appearance of these goods.
  • The fact that some of the contested goods may (emphasis added) take the shape of a gummy bear, is not in itself sufficient to establish that the contested mark consists of a representation of the shape of the goods at issue.
  • The contested goods may take a variety of shapes, including that of a gummy bear. However, it cannot be established that the relevant public will associate the motif of a gummy bear with the contested goods, as they are totally unrelated.
  • Since the sign does not resemble the shape that the contested goods are most likely to take and it has not been demonstrated that it is a commonplace motif for these goods, it must be held that the sign has at least the minimum degree of distinctive character necessary to be protected as a trade mark in the European Union.

Beck Greener has been registering, administering, and enforcing trade marks for its clients around the world for decades. If you are interested in protecting your trade marks, we would be happy to assist.

Beck Greener ranked in legal directory Chambers & Partners for 5th year running

Beck Greener News

Beck Greener has been ranked as a leading firm in the Intellectual Property: Patent and Trade Mark Attorneys UK-wide section of the legal directory Chambers & Partners for the 5th year running.

This is how the guide describes the firm:

“Beck Greener advises on patent and trade mark prosecution strategy and represents clients seeking, defending and opposing registrations in the UK, Europe and jurisdictions around the world. The firm is sought after by clients from all strands of science, technology and industry. The trade mark team offers a significant specialism in media, entertainment, publishing and cosmetics brands, while the patent team has expertise in chemistry, pharmaceuticals, electronics, engineering and software. The firm also has an office in Alicante in Spain.”

Client testimonials within the directory noted the following:

• “Members of the Beck Greener team are diligent, professional and technically competent.”
• “The firm fields great expertise and bench strength across a range of areas.”
• “I have found them to be prompt and clear communicators and fast to understand unfamiliar concepts from foreign jurisdictions.”

Partners Avi Freeman and Ian Bartlett have once again been listed as Band 1 lawyers for patents and trade marks respectively in the latest UK edition of Chambers & Partners. Clients noted Avi Freeman is “friendly, responsive and client-oriented” as well as being “an experienced and trusted adviser.” Clients said that Ian Bartlett has “a lot of expertise in trade marks.”

We would like to thank our clients for their excellent feedback.

A link to the full ranking and commentary can be found here.

Beck Greener highly ranked in latest Legal 500 directory rankings

Beck Greener News

We are very pleased to announce that Beck Greener has once again been ranked as a leading IP firm for both patent and trade mark matters in the latest edition of The Legal 500 directory rankings.

Commentary from the Legal 500 is below:

Beck Greener LLP ‘has an excellent reputation and is one of the strongest IP law firms in the UK’. The team has expertise in supporting multinational corporations across a broad range of sectors, including media and entertainment, financial services, life sciences, fashion, and beauty, and it is highly adept at managing global trade mark portfolios. It expertly handles both EU and UK matters, including IP strategy, clearance, prosecution, and litigation. Additionally, anti-counterfeiting mandates and design enforcement matters are also with in the group’s capabilities. Ian Bartlett heads up the team and is praised by one client for having ‘a strong theoretical and practical knowledge in all areas of IP’; Bartlett frequently appears before the UKIPO and Appointed Persons in contentious proceedings. He is supported by Catherine Jewell, who has expertise in defending brands in opposition proceedings, Rowland Buehrlen, who heads up the firm’s Alicante office, associate trade mark attorneys IP litigator Duncan Morgan, and associates Kashif Syed and Jessica Vallis.

Beck Greener LLP’s ‘exceptionally experienced team’ acts for international clients on their EU and global patent-related matters, and the group has notable expertise in handling contentious matters, including oppositions and appeals before the EPO. It also manages European and global patent portfolios. The practice is jointly led by Avi Freeman, who heads up the electronics, physics, and mechanical engineering group, James Stones with expertise in chemistry, pharmaceuticals, and chemical engineering, and Ben Muir, medical and life sciences lead. Catherine Jewell is another notable name, regularly representing major chemical companies in prosecutions, oppositions, and appeals before the EPO.

Client comments include:

‘Beck Greener has an excellent reputation and is one of the strongest IP law firms in the UK.’
• ‘Ian Bartlett has a strong theoretical and practical knowledge in all areas of IP. He is extremely smart, pragmatic, and thorough. He is equally effective as a strategist and tactician, and he tailors his advice to the individual needs of his clients and to the specific requirement of each situation.’
• ‘Catherine Jewell is able to understand very easily what we want to protect and write it in a simple manner. She is smart, fast, and trustworthy.’
• ‘The team’s strengths are its creativity, common sense, and ability to adjust the scale and scope of a project based on a client’s business needs.’
• ‘Ian Bartlett and Duncan Morgan are strategic problem solvers that know how to win when winning is what’s most important and otherwise know how to reach positive solutions for clients.’
• ‘The team has a deep understanding of trademark law from all aspects.’
• ‘Kashif Syed is dedicated, responsive, and creative.’
• ‘Duncan Morgan is pleasant, clever, highly reliable, and operates at high standards.’
• ‘An exceptionally experienced team skilled in all areas of patent law. It is very well networked with connections in the private and public sectors.’
• ‘John Hull, Catherine Jewell, and Anna Hatt are excellent patent practitioners, and they particularly stand out for their ability to apply European patent law to navigate complex opposition issues.’
• ‘Anna Hatt is a go-to patent attorney. She provides clarity about costs upfront, works fast, and delivers a high-quality product.’
• ‘The firm’s patent attorneys are excellent. They have had strong technical training and quickly understand new scientific and engineering concepts. Another strength of Beck Greener is the firm’s diversity of people.’
• ‘Excellent communication skills and outstanding legal skills. They continuously come up with alternative approaches to attack legal issues and provide the risks and benefits to allow the client to make the best decision going forward.’
• ‘James Stones and Catherine Jewell are highly capable patent lawyers who have the ability to simplify complex problems when explaining the best course of action for their clients. Both work very quickly under pressure, are able to think on their feet, and always provide innovative solutions to the problems at hand.’
• ‘James Stones provides outstanding services. He is proactive, cost conscious, and highly competent, and he can explain patent-related issues in words that are understandable to the non-patent lawyer people.’
• ‘Catherine Jewell and John Hull’s knowledge of oppositions and case law is impressive; John quickly identifies the key issues and case law that would be most relevant to the matter, and Catherine’s ability to quickly take on complicated matters is unsurpassed.’

Partners Avi Freeman and Ian Bartlett have been recommended as leading individuals within the guide. Partner Catherine Jewell has been ranked as a next generation partner within the guide.

Twelve of our attorneys have been recommended as key individuals in their respective fields. Patent attorneys include Avi Freeman, James Stones, Ben Muir, Anna Hatt, John Hull, Jonathan Markham, Nick Bebbington and Deborah Selden as well as trade mark attorneys Ian Bartlett, Rowland Buehrlen, Catherine Jewell, Duncan Morgan, Kashif Syed and Jessica Vallis.

Click here to see the latest editorial in the Legal 500 directory.

We would like to thank our clients and colleagues for giving such excellent feedback.

Discontinuation of Advance Information on European Regional Phase Entry

Author: Richard Sulston
IP News

The abolition of the ten-day rule is not the only procedural change being made at the European Patent Office (EPO) in November 2023.

With effect from 1 November 2023, the EPO will no longer send Form 1201 to representatives and applicants of International (PCT) patent applications. Form 1201 provides the European Application Number that has been assigned to the international application and offers instructions for entering the European Regional phase.

As a result of the abolition of Form 1201, the European Application Number assigned to PCT applications must be accessed via the EPO register by searching for the International Application Number or International Publication Number. Further, the instructions and information for entering the European phase can now be accessed at any time via the EPO website, here.

The EPO expects that this change will allow them to save over 500,000 sheets of paper per year, helping to achieve their ongoing environmental goals.

It is anticipated that this change will not have any noticeable, adverse impact on the International or European Regional phase of a patent application, especially since the European Patent Application number is not required when completing online Form 1200E for European phase entry. However, to prevent confusion, applicants should be aware of the change, in case it affects their internal monitoring of international applications intended for European Regional Phase entry.

Beck Greener Expands In-House Litigation Capabilites

Beck Greener News

We are delighted to report that Beck Greener Associate, Kashif Syed, has passed both the written and practical examinations set by Nottingham Law School to qualify as a Higher Courts Advocate. The IPReg Higher Courts Advocacy Certificate is a new qualification and allows Kashif to act as an advocate in intellectual property matters before the UK Courts. This is equivalent to the combined rights of a barrister and solicitor in IP cases. Kashif now has full rights of audience before the UK Courts including the High Court, the Court of Appeal and the Supreme Court.

Beck Greener continues to expand its litigation services and currently has 5 people with Litigator status (Ian Bartlett, John Hull, Susan Davey, Duncan Morgan and Kashif Syed). Following Kashif’s recent qualification, Beck Greener is now one of the few IP firms in the UK able to offer a complete IP service to its clients from creation and registering of IP to enforcement of those rights by representing clients in litigation matters before the UK’s highest courts. To find out more about Beck Greener’s enforcement & litigation capabilities and experience please click here.

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