Latest insights

Read the latest news and briefings from the team at Schlich about real cases involving patents, trade marks and designs.

Media Contact

Keira Denton | Practice Manager

EPO
UK
UPC
US & International
Trade Marks
Designs & Copyright
All

Latest developments in the EPO’s description amendment saga

A second Board of Appeal has decided there is no legal basis in the EPC for the requirement for the description of a European patent application to be amended to bring this into conformity with the allowed claims. This has breathed new life into the conclusions in T 1989/18, which previously seemed to have been suppressed by several other recent Board of Appeal decisions.

June 2022

CJEU set to decide who is liable when advertising infringing products online

The CJEU is set to consider whether the operator of an online marketplace may be held liable for infringement when a third party advertises goods bearing a trade mark without the authorisation of the mark’s owner on its marketplace. In particular, the CJEU will decide the circumstances under which the operator can be held liable, and the circumstances under which liability rests with the third party only.

May 2022

EPO Board of Appeal Confirms Requirement for Description Amendments

In our previous article, we reported an EPO Technical Board of Appeal decision, T 1989/18, that found there to be no legal basis for the long-established practice of requiring applicants to amend the description of their European patent applications prior to grant so that they conform with the allowed claims of the application. However, in this decision (T 1024/18), a different Board of Appeal has effectively overturned the earlier decision, concluding that amending the description is necessary to meet the support requirement of Art. 84 EPC.

April 2022

New SPC Referral to CJEU

There has been a new referral to the CJEU from the Supreme Court of Ireland on the interpretation of Articles 3(a) and 3(c) of the European SPC Regulation in relation to combination products.

April 2022

T 0013/20 – Internet Publication Dates

What constitutes proof of disclosure to the public?

April 2022

New EPO Guidelines Enter Into Force

The EPO has introduced new versions of the Guidelines for Examination in the European Patent Office and the Guidelines for Search and Examination at the EPO as PCT Authority. Both sets of Guidelines took effect on 1 March 2022, as part of the EPO’s regular two-yearly cycle of revisions.

March 2022

Neurim’s Insomnia Treatment Patents Giving the High Court Sleepless Nights?

This judgement relates to a number of preliminary issues in connection with proceedings relating to the validity of a divisional patent in the name of Neurim and alleged infringement by Viatris (previously Mylan). During the proceedings, Neurim amended the claims of the divisional patent to correspond to the claims of the parent patent, which had been held to be valid by the UK High Court but subsequently revoked by the EPO. The preliminary issues relate to whether Mylan is issue estopped from challenging the validity of the divisional and whether Neurim’s conduct is abusive.

March 2022

Legal Board of Appeal confirms an AI cannot be the inventor of a patent

The Legal Board of Appeal has confirmed that an AI system cannot be the inventor of a patent application at the EPO, agreeing with the decision of the Receiving Section (reported by us in our article of February 2020).

February 2022

Can vacuum cleaner bags be protected by design registration?

The Board of Appeal of the EUIPO has concluded that vacuum clear bags are entitled to design protection and are not excluded as complex products. This decision seems to confirm that consumable products are eligible for design protection.

February 2022

Pages: 12345678910111213141516171819202122232425262728293031