Chemical & Pharmaceutical
INVENTIONS
Filing
We draft and file patent applications for new chemical inventions, ranging from pharmaceuticals to cosmetics to food products. Our clients range from small to medium sized enterprises to large multinational corporations. As a result of our wide variety of work, we are able to tailor our services to an individual client’s needs – no matter how big or small.
Prosecution
We have a vast amount of experience in obtaining patents not only in the UK and Europe but in countries across the globe from the Americas to Asia and everywhere in between, with the assistance of trusted patent attorneys in other jurisdictions. A detailed understanding of patent law across multiple jurisdictions helps us to assist our clients with preparing and executing global patent prosecution strategies in an effective manner.
Chemical & Pharmaceutical
Oppositions & appeals
Contentious Work
Our Oppositions and Appeals teams are also active in contentious matters, be that attacking or defending patents. The team has decades worth of experience in handling multi-party EPO oppositions and appeals, including collaborating with other opponents where advantageous, and effectively presenting arguments in the written and oral parts of the proceedings.
Freedom-to-Operate
In addition to securing patents for our clients, we also regularly advise on infringement risks arising from third party patent rights. We are able to conduct searches for relevant third-party patent rights that may be of relevance to our client’s commercial activities and advise accordingly on any infringement risks that we identify along with steps that can be taken to mitigate these risks.
Recent Insights
Read the latest insights from the Schlich team reporting recent cases relevant to the chemical & pharmaceutical sector.
UniQure’s Haemophilia B gene-therapy patent found valid – and infringed by Pfizer
The range of gene-therapies available to patients is ever expanding and it was only a matter of time before a conflict arose that had to be considered by the UK patent courts. Now uniQure has defended its patent for a Haemophilia B gene therapy against a revocation action brought by Pfizer.
The Federal Circuit clarifies conflicts arising between Patent Term Adjustment and Obviousness-type Double Patenting
We perceive a sigh of relief from some patent holders following issue of the US Federal Circuit’s decision in Allergan USA v. MSN Labs, 24-1061 (Fed. Cir. August 13, 2014) (“Allergan”). This decision appears to forestall the revocation of some patents following the concerning precedential Federal Circuit decision In re Cellect (No. 22-1293) (“Cellect”).
What Satisfies the Palate of the EPO’s Boards of Appeal? Fish Oil and Fruit Juice, Apparently…
In a recent decision, the EPO’s Boards of Appeal have confirmed the importance of filing data to support arguments relating to sufficiency of disclosure in EPO opposition proceedings. The patent concerned related to a mixture of fish oil and fruit juice which was alleged to have anticancer properties. The opponent argued the constituents required to achieve the anticancer effect were not sufficiently disclosed, but failed to provide enough data to convince the Board of Appeal. Hence, the Board was satisfied the claimed composition was sufficiently disclosed and ordered that the patent be maintained in amended form.
Boards of Appeal Introduce New Broad Interpretation of “Substance or Composition” in the Context of Second Medical Use Claims
In this decision the Board has diverged from previous case law establishing that second medical use claims were restricted to products having a chemical mode of action and instead the Board ruled that “substance or composition” should stretch to any product which may be defined by its chemical composition, regardless of the mode of action.
Food for fork: stretchy cheese and contradictory post-filed evidence
T 0629/22 considered how the credibility of a claimed invention should be addressed in the face of contradictory evidence
Therapeutic Effect – a Higher Bar for Novelty than for Sufficiency at the EPO
EPO medical use claims are interpreted to include the physiological or technical effect of the treatment as being a functional feature of the claim. However, this interpretation yields different bars for novelty and sufficiency, as confirmed by EPO TBA Decision T 0209/22.
Clarity Once Again: The EPO’s Enlarged Board of Appeal Suggests the Current Test for Whether to Admit Post-Filed Evidence into Proceedings Should Stand
Following G 2/21, the referring board in the case underpinning that referral (T 116/18) established a test based on the principles set out by the EPO’s Enlarged Board of Appeal for deciding whether to admit post-filed evidence into proceedings. The opponent then filed a petition for review of that decision, rendering it unclear whether the new test would be upheld or overturned. The Enlarged Board has now issued its preliminary opinion on that petition, which strongly suggests the test established by T 116/18 will be upheld and the petition dismissed.
Back in the Maze: Is the Decision of the Referring Board in G 2/21 About to be Overturned?
When the referring board’s written decision was issued in the case underpinning the “plausibility” referral (G 2/21) late last year, it provided much-needed certainty about how the EPO would apply G 2/21 in the future. However, that certainty has been short-lived because the opponent in that case has filed a petition for review of the decision by the Enlarged Board of Appeal.
Get in touch
Our team of UK and European Patent Attorneys and Chartered Trade Mark Attorneys are highly knowledgeable and experienced in assisting clients with all aspects of their IP needs.
Contact us now to find out more about how we could help you and your business.
