Partners Rebecca Tew and Adam Gilbertson have been featured in a special IP report by Birmingham Business. In their article, ‘Ten things every SME should know about intellectual property’, they explore the essential IP knowledge that every business should have in order to maximise the value of its assets and support growth.

The article breaks down the fundamentals of IP to help businesses understand the role it can play throughout every stage of their development. It also highlights the importance of taking a proactive approach and covers topics such as licensing, negotiation, revenue generation and more.

Click to read the full article on Birmingham Business here.

We are delighted to be featured in IP STARS 2026, which recognises outstanding law firms and practitioners across IP practice areas worldwide.

Managing IP’s IP STARS is a leading legal directory that identifies the IP professionals and firms best placed to advise on both contentious and non-contentious matters. Widely recognised as a trusted benchmark of excellence in the profession, the rankings are based on extensive independent research, firm submissions, market analysis and client feedback.

In the 2026 edition, Partners Gary Johnston and Rebecca Tew have been recognised as ‘Trade Mark Stars’, and Partner Hazel Ford has been featured as a ‘Patent Star’. In addition, Partners Philippa Griffin, Nicholas Fox, David Hobson, Martin MacLean, Laura Clews, Andrew White, and Consultant Partner Jane Clark, have been praised as ‘Notable Practitioners’.

The 2026 Rising Star rankings are due to be released later this year.

For more information and to view the rankings in full, visit the IP STARS website here.

The use of AI across every sector, public and private, is now undeniable – and the CleanTech sector is no exception. However, AI’s growth comes with a big issue. As the International Energy Agency (IEA) put it in its 2025 Energy and AI report, “there is no AI without energy.” Data centre electricity demand rose 17% in 2025 alone, far outpacing the 3% growth in global electricity demand overall, and AI-focused demand specifically is projected to triple by 2030 (IEA, 2026).

Whilst this is a real cost, it is not the whole story. The IEA’s 2025 Energy and AI report is equally clear that, if used well, AI can meaningfully accelerate the search for climate solutions through faster R&D, cheaper experimentation, and more efficient data analysis across energy, industry, and the built environment. The question for the CleanTech sector is not whether to use AI, but how to use it for applications with genuine, measurable climate impact.

This Climate Action Week, we take a look at where AI is already being used for good by spotlighting some of the startups doing exactly that with the support of The Greenhouse, Undaunted’s 12-month CleanTech accelerator, which has supported 180 startups since 2012 and helped its alumni raise over $1.33bn in investment. We’ll also look at why, as AI-driven CleanTech innovation accelerates, a clear IP strategy is becoming essential to turning a good idea into a defensible, fundable business.

AI Innovation in Practice

Utilities and the built environment

In the UK, the energy required to maintain buildings accounts for almost a quarter of the country’s carbon footprint. At the same time, demand for sustainable office space is rising as ESG credentials become a bigger driver of commercial property value. This leaves building owners and facilities teams with a difficult issue: how to retrofit and manage existing stock sustainably, cost-effectively, and at scale.

Carbon Shift, a Greenhouse graduate, is tackling this with AI software that improves decision-making around sustainable retrofits to help building owners identify the most cost-effective and environmentally impactful interventions before committing capital. Cosy Sense, another graduate, has developed a management system (GB2701612A) that gives facilities teams in retail, office, and hospitality settings a single platform for monitoring energy use, with automated controls that let managers act on that data directly to reduce emissions.

Both are examples of AI applied to a hard, high-impact problem. AI isn’t being used as an add on feature but as the mechanism that makes sustainability decisions faster, cheaper, and more confidently taken.

Manufacturing, engineering, and maritime

The maritime sector faces a similar challenge at a larger scale. Shipping is responsible for 3-4% of the EU’s overall carbon dioxide emissions, and although the International Maritime Organisation considers it the least environmentally damaging mode of transport, its sulphur, nitrogen oxide, and carbon dioxide emissions remain firmly in regulators’ sights. The UK’s own Maritime Decarbonisation Strategy targets net zero for the domestic maritime sector by 2050, adding commercial pressure to an already complex engineering problem.

BlueNose, another Greenhouse alumnus, addresses this with AI-driven software that models the cost and emissions impact of retrofitting existing cargo ships, then designs aerodynamic retrofit structures (US2025382031A1) that can be fitted to vessels already in service. BlueNose estimates that, if rolled out fleet-wide across active container ships, its retrofits could cut emissions by 11 million tonnes of CO₂ a year.

What connects Carbon Shift, Cosysense, and BlueNose is that each uses AI as the engine behind a specific, well-defined climate outcome – lower retrofit costs, lower energy waste, lower fuel burn. That specificity matters, both for genuine climate impact and, as we explore below, for what can actually be protected as IP.

Why This Matters for IP Strategy

Despite the potential, AI adoption in the energy sector remains surprisingly low. The IEA’s 2025 Energy and AI report found that only 2.3% of energy start-ups have an AI-related value proposition, compared with 7% in life sciences and 4.3% in agriculture, and roughly only 1% of energy-related patents reference AI as part of the claimed innovation. The Greenhouse alumni therefore seem to be the exception, not the rule.

That gap is an opportunity but it is also exactly the situation in which IP strategy matters most. When a sector is under-exploited, the startups that move first have the clearest run at building a defensible position. As more capital and attention flow into AI-driven CleanTech, that window narrows, and clear, well-drafted protection becomes the difference between a startup that can defend its market position and one that cannot.

AI-driven inventions also raise distinct patentability questions that founders should consider early, including:

• What, exactly, is being protected? A patent claim built around “using AI” in the abstract is unlikely to be allowed. Instead, applications should focus on claiming the specific technical system, method, or structure that the AI enables rather than the algorithm in isolation.
• Timing of disclosure. Early conversations with investors, pilot customers, or conference audiences can constitute a public disclosure that destroys novelty if a patent application filing hasn’t happened first. This is a particularly easy trap for AI-driven startups, who often want to demonstrate a working model before they’ve locked down what, precisely, they intend to claim.
• Patents vs. trade secrets. Not all aspects of an AI system should be protected using patents. Training data, model weights, and certain algorithmic refinements may be better protected as trade secrets, while the system or output they produce may be the more suitable subject of a patent application. Getting this split right from the outset avoids having to unpick it at a later, less convenient moment.

None of the above considerations need to slow a startup down. If done early, a review of your IP considerations can be a relatively light-touch process that runs alongside fundraising and product development rather than competing with it. It is also the kind of groundwork that investors expect to see in place before they commit capital.

Climate Action Week is a good moment to look at how far AI-driven CleanTech has come – and Carbon Shift, Cosysense, and BlueNose are a small sample of what’s possible when AI is pointed at a specific, well-defined climate problem. As more startups follow their lead, the firms that protect their innovation early will be best placed to turn that progress into a lasting commercial advantage.

At Mathys & Squire, our team has deep expertise in AI, machine learning, and CleanTech and can assist you with your IP Portfolio. For advice or any questions related to your UK and European patent or design rights, please contact Charlotte Penney, Andrew White, or your usual Mathys & Squire patent advisor.

Partner Claire Breheny has been featured in World IP Review and Retail Times offering insight into the rise in trade mark disputes involving influencer brands and “dupe” products.

Her commentary highlights how growth in the cosmetics sector has led to an influx of new companies and products entering the market. At the same time, the growing appeal of alternative “dupe” products among younger consumers has created additional challenges for brand owners. Claire emphasises the importance of securing appropriate trade mark protection to help prevent and take action against imitations.

Read the extended press release below.

• Rapid growth of social media influencer brands helping drive disputes
• 36% disputes involve skin care and make-up brands as viral tutorials boost consumer demand
• Gen-Z’s enthusiasm for dupes creates challenges

The boom in investment in beauty product sales has helped drive a 31% jump in UK trade mark disputes over cosmetics brands in the last year, jumping to 55 disputes up from 42 in the previous 12 months, shows new research by leading intellectual property law firm Mathys & Squire*.

The sector is a fertile ground for trade mark disputes as major beauty companies launch new products and new cosmetic companies, often backed by social media influencers, proliferate.

Some of the disputes centre around the growth in dupes i.e. cheaper imitations of expensive cosmetics products.

Trade marks give businesses and influencers intellectual property rights over distinctive elements of their brands, such as their name or logo. This helps them take legal action against copycats trying to encroach on their product area.

Actions brought last year include one against an online beauty brand accused of copying Anomaly, the vegan haircare brand founded by influencer Priyanka Chopra Jonas**. Another case brought in the UKIPO was against L’Oreal for applying to register “LUMI SKIN GLOW TINT” based on earlier LUMI formative trade marks.

Claire Breheny, Partner at Mathys & Squire, says: “The growth of the sector has created a very competitive environment with both claims been launched by innovative new brands and by the big cosmetics houses.”

“Many small businesses are selling beauty products on social media that imitate the names, logos or packaging of well-established brands. Fighting against them is much harder without trade mark protection.

“One of the problems that large companies now face is the enthusiasm that younger consumers have for “dupes” which are products that are often deliberate copies of, or at best “inspired by” best-selling products.”

The global beauty market is worth $450 billion and has grown by around 7% annually over the past three years***. Cosmetic products are often seen as resilient as demand for them holds up even during downturns – the so-called “lipstick effect”.

Disputes concerning skincare brands accounted for 24% of cases (13) while those involving make-up brands made up 13% (7). These sectors have attracted growing business interest as viral tutorials on social media boost consumer demand.

Claire Breheny says: “Some small businesses are taking advantage of the boom in interest in skincare to launch copycat brands. Skincare is much bigger category than it was just a decade ago.”

Generally, when demand for specific products rises rapidly and businesses rush to launch new brands, the door is left open for trade mark disputes.”

Disputes concerning haircare products accounted for 20% of cases in the last year (11) while fragrances made up 16% (9). Other categories included body care (4 cases or 7%), nail products (3 cases or 5%) and dental products (3 cases, or 5%).

* Year end 31 October 2025

** The action was brought by Maesa LLC, a beauty brand incubator that partnered with Priyanka Chopra Jonas to develop Anomaly

*** Source: McKinsey – The State of Fashion: Beauty report

Partner Rebecca Tew has been featured in The Times and World IP Review providing commentary on the increase in trade mark applications that are associated with popular sports game Padel.

The commentary highlights the growth of investment in padel-related brands and the importance of IP protection to help stay ahead in an increasingly competitive market, which has already been demonstrated in a range of categories including raquets, clubs, clothing and more.

Read the extended press release below.

• Number of people playing padel in the UK more than doubled last year to 860,000
• UK businesses move to protect an increasingly lucrative business

Trade marks filings to register new padel brands in the UK rose 148% to 270 in the year to 31 March 2025, up from 109 the previous year, shows new research by leading intellectual property law firm Mathys & Squire*.

In comparison, only 23 new brands related to tennis were registered over the same period.

The rise in padel brands comes as entrepreneurs and investors move quickly to tap into the sport’s booming growth. The number of people in the UK who played padel at least once in 2025 more than doubled to 860,000, up from 400,000 in 2024**.

Brands that registered padel related trade marks in the past year span a wide range of products and services. These include padel clubs and academies, padel racquet manufacturers, specialist padel clothing brands, a professional padel championship, and even drinks and restaurants with padel-inspired branding.

Rebecca Tew, Partner at Mathys & Squire, says “UK businesses are moving fast to establish brands that stand out in a fast-growing and increasingly competitive market. Securing registered trade mark protection can help them build long-term value into the brands they create.”

“Having a trade mark can help companies protect against competitors trying to encroach on the brand that they have developed and invested in.

“For these businesses securing their name and logo through a trade mark is key, as these are what customers recognise, trust and return to.”

“As the number of padel players continues to grow and spending increases, counterfeiters or competitors might seek to exploit successful brands. Having a trade mark allows businesses to act against these attempts quickly and effectively.”

Businesses are drawn to the higher-income demographic that padel attracts. The sport tends to appeal to urban professionals in major cities, as it can be played in compact spaces in busy areas and matches can be completed in a short time.

Padel has received increasing media attention in recent years, with famous tennis players like Andy Murray and high-profile figures such as Shakira and Cristiano Ronaldo all declaring themselves big fans of the sport.

Trade mark filings for padel have surged in recent years, leaving tennis behind

* Research based on data from the Intellectual Property Office

** Source: LTA Padel, the UK’s National Governing Body for tennis and padel

We are delighted to have been named as one of Europe’s Leading Patent Law Firms by the Financial Times in their 2026 report.

The list highlights IP firms that demonstrate excellence in patent strategy, consultation, drafting, filing and prosecution, and marks the eighth consecutive year that our firm has been included in this prestigious ranking. Featuring in the report reflects our continued commitment to delivering exceptional patent services to clients across a wide range of industries.

In addition to our overall recognition, we are proud to have been recommended in four specialist areas of expertise:

• Biotechnology, Food & Healthcare
• Chemistry & Pharmacy
• Electrical Engineering & Physics
• Mechanical Engineering

The research process is conducted by Statista on behalf of the Financial Times, gathering recommendations from clients, patent attorneys, in-house counsel and other IP professionals throughout Europe.

We would like to extend our gratitude to all of our clients and contacts who took the time to highlight our firm as part of this year’s research.

To access the full report and rankings tables, please visit the FT website here.

Skinny labels are a powerful tool for generic drug companies to avoid infringement of method of treatment/ ‘medical use’ patents after the original drug patent expires, by allowing a ‘carve out’ of the still-patented medical indications. However, as a generic drug is identical to the originator’s branded drug, physicians may prescribe it ‘off-label’ for the carved-out indication. The originator company may then try to sue the generic manufacturer for patent infringement.

The US Supreme Court’s recent decision in Hikma Pharmaceuticals v Amarin Pharma Inc., ruled that generic manufacturer Hikma did not induce infringement of Amarin’s patent.

Read more to learn what this could mean for enforcement of pharmaceutical patents against generics in the US, and how this compares to the approach taken by the UK courts.

Skinny Labels

Pharmaceutical companies can apply for method of treatment/ medical use patents to maintain patent protection for their drug (limited to the claimed medical indications) for years beyond the original drug patent’s expiry date. 

Legal systems aim to create a fair balance between IP protection and market competition; and health systems are motivated to bring down the cost of medicines when possible. 

To try and achieve this balance, generic drugs are allowed to carry a ‘skinny label’ that omits patented medical indications. This ‘carve out’ of patented uses may allow the generic manufacturer to enter the market for off-patent indications before all of the drug’s patents expire.

Hikma v Amarin 2026 – Summary of the facts:

Amarin Pharma developed the drug Vascepa®, which was initially approved by the FDA to treat severe hypertriglyceridemia (SH). Later, Amarin obtained FDA approval and patents for a new method of use of Vascepa®: reducing cardiovascular risk (CV). 

In 2020, Hikma Pharmaceuticals obtained FDA approval to sell its ‘generic Vascepa’ under a skinny label carving out the patented use in CV. Despite Hikma’s skinny label, Amarin alleged that Hikma’s website statements, press releases, and references to its product as ‘a generic version of Vascepa’ effectively encouraged physicians to prescribe the drug for the patented CV indication – i.e., Amarin alleged that Hikma induced patent infringement under 35 U.S Code § 271(b). 

The question discussed before the US Supreme Court became:

Can a generic manufacturer be liable for induced infringement when it uses a skinny label that excludes the patented indication, but other communications allegedly encourage the patented use?

A ‘sheer possibility’ or ‘plausibility’ of inducing infringement?

The US Court considered the relevant legal question to be whether Hikma actively encouraged infringing use for CV – it was not enough for Amarin to assert that Hikma’s marketing material might, ‘passively’ encourage physicians to use the generic drug off-label for this patented indication. In the Court’s view, Amarin failed to plausibly show that Hikma – even implicitly – took the kind of ‘active steps’ to encourage infringement that are required for induced infringement liability.  

This decision is a victory for generic drug manufacturers by confirming the high standard of proof required for originators to pursue induced-infringement claims in the US. Although a skinny label  does not guarantee ‘safe harbour’, a generic manufacturer may be more confident of avoiding induced infringement in the US if they do not ‘actively encourage’ use of the generic drug in patented indications.

How does this compare to UK law?

The current position in the UK is somewhat less clear.

In the UK, the Supreme Court in Warner-Lambert Company LLC v Generics (UK) Ltd 2018 was asked to consider direct infringement of a ‘Swiss form’ 2^nd medical use patent. As they found the patent to be invalid, the Court did not need to decide on infringement: the judges made revealing ‘obiter’ (non-binding) comments but did not provide a definitive test for assessing infringement by a skinny-labelled generic drug.

Warner-Lambert v Generics

The 5 UK Supreme Court judges were split between two different proposed legal tests: 1) based on outward presentation of the generic product – including packaging and labelling – whereby a skinny label would avoid a finding of infringement; and 2) based on subjective intent – whereby other factors such as “words, conduct and even inactivity” are assessed to determine whether the generic manufacturer intended to target the patent-protected market.

Therefore, uncertainty remains as to what a generic manufacturer must do to avoid infringement of a patented medical indication in the UK and any future decision is likely to be highly fact-specific. A test based on outward presentation would certainly favour the generics industry but may be unfair to originators where off-label use is widespread. A test based on subjective intent – or even a US-style assessment of ‘active encouragement’ – places a high evidentiary burden on originators but this more ‘holistic’ approach may better reflect some ‘real world’ practices.

Whichever test is applied, it seems that a properly executed skinny label may offer protection from infringement of pharma patents in the US and UK, so long as the generic manufacturer’s conduct does not – even implicitly, or by omission – encourage off-label use of the generic drug for a patented indication.

For many growing businesses, intellectual property is one of the most important sources of commercial value. It can protect technical differentiation, support brand strength, improve investor confidence and create leverage in licensing, partnership or exit discussions.

Yet, because IP is intangible and frequently misunderstood, it is often managed reactively. Innovations may be discussed publicly or commercialised before protection has been considered. Trade mark gaps may only become apparent once a competitor enters the market. Key contracts with employees, contractors, suppliers or collaborators may be missing, outdated, or signed without properly addressing IP ownership, access rights, and risk allocation.

To bridge this gap and align your commercial goals with legal protection, businesses must take a proactive approach. So, what is an IP audit, and what is the importance of an IP audit for companies looking to scale?

What is an IP audit?

At its core, an IP audit is a comprehensive, systematic review of a company’s intellectual property assets and how intellectual property is managed. It goes beyond a simple administrative list of registered rights. An effective audit assesses the legal validity, commercial alignment, and potential risks associated with your proprietary technology, brands, designs, and trade secrets.

A thorough assessment typically addresses:

• Registered IP: Patents, registered trade marks, and registered design rights.
• Unregistered IP: Copyright, database rights, trade secrets, unregistered designs, open source software use, and know-how.
• Third-party relationships: Freelancer agreements, supplier agreements, and joint-ventures and collaborations that affect ownership.
• Internal IP governance: Founder agreements, employment contracts, IP decision-making processes, and employee training.

Why is an IP audit important?

An IP audit is not just a case of housekeeping; it’s vital for risk management and value creation. The importance of an IP audit can be broken down into two main functions: a snapshot of your current IP position, and mapping out the steps to secure and enhance your IP strategy for the future.

Identifying and cataloguing existing assets

Many businesses do not realise they possess valuable IP until a formal audit brings it to light. For example, a specialised software script, a proprietary manufacturing process, or a proprietary formulation may contain highly protectable innovations. An audit helps you systematically identify and assess these assets, decide how they should be protected, and understand how they may support commercial value

Spotting the ownership and application gaps

Crucially, a robust audit uncovers what you don’t securely own or protect. This is where businesses face the highest risk. A successful audit can reveal gaps such as:

• Missing registrations: Identifying core brand names, logos, or technical inventions that have been deployed commercially but lack formal trade mark or patent filings.
• Ownership vulnerabilities: Exposing weaknesses where contractors, freelancers, or joint-venture partners have contributed to your product development without explicitly assigning the IP rights over to your company.
• Freedom to operate (FTO) risks: Flagging products, services, markets or technical areas where further freedom-to-operate analysis may be needed, and identifying practical steps to reduce or manage third-party IP risk.

How do you conduct an IP audit?

Conducting an IP audit takes your business from a purely compliance-focused position to a commercial, growth-focused one. But if you’ve not engaged with the process before, you may not know where to start.

If you want your audit carried out to the highest possible standards, our experts can help. We work with businesses of all sizes to identify intangible assets and map out a prioritised IP strategy to help you grow.

As a general overview, the IP audit process looks like this:

Step 1 – Scope and Objectives: Start by defining what the audit aims to achieve. Is it preparing the company for an impending Series A funding round, evaluating a brand expansion into new geographical markets, or assessing a newly acquired technical asset?

Step 2 – Information Gathering: Collate internal information, including product plans, marketing collateral, trade secret records, and key IP agreements. We use digital tools to simplify this process for you.

Step 3 – Legal & Commercial Analysis: Evaluate whether your IP is adequately protected. Are your trade marks registered and in the correct classes? Is there technical evidence, such as comparative testing, prototype results, or performance data, that supports the claimed technical advantage of the invention? Are your trade secrets protected by appropriate confidentiality agreements and access controls?

Step 4 – The Audit Report: A well-run IP audit should produce more than a list of registered rights. It should result in a clear, prioritised report identifying the company’s key IP assets, ownership position, protection gaps, third-party risks, contract issues, confidentiality controls and recommended next steps. The most valuable output is usually a ranked action plan showing what should be fixed immediately, what should be monitored, and where future budget should be allocated.

Once these steps have been carried out, your IP audit should act as a useful reference that the business can maintain as new IP is created or acquired.

Your IP audit checklist

If you’re new to the IP auditing process, here’s a checklist that will help steer your thinking in the early stages of identifying, categorising, and managing your commercial IP:

• Inventions & Patents: Have any new technical features, codebases, or formulations been publicly disclosed (e.g., via sales, marketing, or academic papers) before making an informed decision on IP protection.
• Brands & Trade Marks: Are all current brand names, sub-brands, and core logos protected by active trade mark registrations in all your primary jurisdictions and target markets?
• Contractor & Employee Alignment: Do your employment contracts and third-party freelance agreements contain explicit, legally binding IP assignment clauses?
• Trade Secrets & Know-How: Is access to critical proprietary code, chemical formulations, or client databases restricted via technical access controls and comprehensive internal confidentiality policies?
• Third-Party Risk: What steps, if any, have you taken to reduce the risk of your current products or services conflicting with third-party patents or trade marks?

Align your IP strategy with business growth

An IP audit shouldn’t exist in isolation. But for growing businesses, it’s not feasible to recruit a full in-house IP team.

We’re here to help. Our IP specialists can help you to identify your intangible assets, develop a sustainable strategy to gain market traction, and understand your current IP value to set a benchmark from which to grow.

If you want a clearer view of what IP your business owns, where the risks sit, and which actions should be prioritised, our team can help you carry out a practical, commercially focused IP audit.

Maintaining our Gold Tier ranking, Mathys & Squire is delighted to be recommended in the 2026 edition of IAM Patent 1000: The World’s Leading Patent Professionals.

IAM is widely regarded as a leading authority in recognising excellent private practice patent expertise. Its rankings highlight top firms and practitioners through detailed qualitative research, considering elements such as previous work, technical capabilities and market presence.

We have been recognised as “a professional and well-respected firm, delivering high-quality legal work with a strong emphasis on responsiveness and efficiency.” Additionally, our team, “provides clear, practical advice and demonstrates a well-coordinated approach across matters. Overall, the experience of working with them is consistently positive thanks to their reliable and value-driven service.” 

This year we have been ranked Gold Tier for prosecution in the United Kingdom: England and Wales, and have also been awarded the Silver Tier for the European Patent Office, highlighting the consistent, high quality service we provide for our clients.

Recommended individuals

In addition to our firm ranking, our Mathys & Squire attorneys have been recognised as Recommended Individuals.

Life Sciences & Chemistry team

• Chris Hamer is “attentive and brings a creative, well-informed approach to developing and protecting patent portfolios. He provides clients with practical advice and strong commercial insight, helping them define the right IP position and align it with investor expectations. He also supports assurance and due diligence activities, including freedom-to-operate analyses, and contributes to shaping overall business and portfolio strategy. His input plays a central role in strengthening companies’ development and long-term resilience”.

• Martin MacLean  “works closely with scientists to review inventions, identify key technical details, and deliver high-quality patent applications. He supports drafting, prosecution, investor due diligence, and portfolio development. Providing pragmatic, strategically grounded advice, he combines credibility and professionalism with a clear, no-nonsense approach. From early-stage support through to core patent families, Martin helps underpin long-term success, with a strong ability to identify both technical significance and commercial potential”. 

• “Michael Stott handles a wide-ranging practice spanning pharmaceuticals, materials science and polymer technologies, including responsibility for a significant global portfolio for Stratasys Inc. relating to 3D-printed materials.”

• Philippa Griffin “provides expert support in European patent prosecution and opposition proceedings, handling complex scientific subject matter with clarity and precision. She drafts and amends claims with strong legal and technical insight and represents clients with professionalism and composure. With a deep understanding of scientific and legal frameworks, Philippa delivers robust, well-reasoned filings. Her advocacy is strategic and credible, and her clear, collaborative communication supports the effective handling of complex matters.”

• “Craig Titmus supports clients through patent approvals and subsequent grants, delivering work that is both effective and commercially balanced. He demonstrates a strong ability to align costs with value, providing practical guidance throughout the process. Craig communicates complex IP concepts in a clear and accessible way, making them understandable for non-technical stakeholders and supporting informed decision-making.”

• “Anna Gregson works on complex biochemistry patent applications, including coordinating the co-filing of multiple related applications. She is diligent and detail-oriented, delivering high-quality work with consistency. Anna responds effectively to tight timelines, maintaining strong standards of service and reliability throughout.”

• “Stephen Garner is a trusted adviser to global pharmaceutical companies, handling the drafting, prosecution and opposition of patent portfolios, including the coordination of international strategies and supplementary protection matters, ensuring that clients’ key assets are both protected and effectively managed across jurisdictions.”

IT & Engineering team

• “Dani Kramer is a key figure in computing and software, advising on large-scale European portfolios and managing complex prosecution work, including technically demanding EPO examination and appeal proceedings across high-performance computing, semiconductors and networking technologies.”

• “Telecoms expertise is anchored by Alan MacDougall, who advises on the protection and defence of patent portfolios, including opposition work before the EPO, with a focus on preserving competitive advantage in fast-moving markets. “

• “James Pitchford strengthens the physical sciences offering through close collaboration with inventors and in-house teams, overseeing the drafting of original applications and coordinating international filing strategies to secure protection for technically sophisticated innovations.”

• “Andrew White brings cross-sector experience spanning medtech, software, telecoms and automotive technologies, with particular strength in deep tech. He has worked closely with Modini Limited to develop and prosecute a patent portfolio for its UAV technologies, covering areas such as avionics, engines and launch systems.”

• “Nicholas Fox offers a rare blend of legal and technical expertise as both solicitor and patent attorney, advising on UPC strategy and aligning opposition approaches across EPO and UPC proceedings to ensure consistency in multi-forum disputes.”

Managing Associates Alex Elder and Matthew Morton (Life Sciences & Chemistry) are also featured as Recommended Individuals.

You can see our ranking on the IAM website here.

Users of the European patent system will be familiar with the EPO’s long-standing practice of requiring the description to be brought into line with amended claims, both before grant and in post-grant proceedings. The EPO stands alone among the major global patent offices in having such a requirement, and in recent years both the legal basis for this practice and the extent of amendments required (if any) have become highly controversial.

Oral Proceedings took place today, 8 May, before the EPO’s Enlarged Board of Appeal. The referral asks whether the EPC requires adaptation of the description following claim amendments, and if so, which provision supplies the legal basis. This article summarises the background, the route to the referral, the written submissions, and the main arguments at today’s hearing.

Background: what’s the debate all about?

For many years, the EPO has required applicants, before grant, to bring the description into line with any allowable amended claims. The same requirement arises post-grant where a patent is maintained in amended form. Historically, this was often a relatively light-touch exercise. However, in 2021 the EPO adopted a new policy requiring proprietors either to delete embodiments no longer covered by the amended claims, or to mark them “prominently” as not falling within the claimed invention. This turned what had been a routine procedural step into a major point of controversy.

Objections to this requirement are both legal and practical. Aside from the time and expense involved in making extensive description amendments (particularly in the case of long or complex specifications, or those originally drafted in a non-EPO style), concerns have been raised about interference with claim interpretation during litigation and the risk of introducing added matter. Inconsistent practice between different examining/opposition divisions and Boards has added to the uncertainty.

How did this end up before the Enlarged Board?

Given the controversial change in practice, it was inevitable that users of the EPO began to push back. Starting with decision T 1989/18, a minority line of Technical Board of Appeal decisions began to question whether the EPO’s practice had any legal foundation. This provoked a reaction from other Boards seeking to provide legal justification for the EPO’s practice, such as in T 1024/18 and T 3097/19.

In the case underlying today’s hearing, T 697/22, the Patentee amended the claims during opposition-appeal proceedings. The amended claims were found to meet the requirements of added matter, sufficiency of disclosure, novelty and inventive step. However, the Board found that the claims were inconsistent with the description as amended at first instance. A further amendment to the description was inadmissible for procedural reasons. The question therefore arose as to whether that inconsistency itself prevented maintenance of the patent as amended, whether under the support requirement of Article 84 EPC “or any other requirement of the EPC”.

In view of the divergence in the case law, the Technical Board of Appeal referred the following three questions to the Enlarged Board:

1. If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent, is it necessary, to comply with the requirements of the EPC, to adapt the description to the amended claims so as to remove the inconsistency?

2. If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?

3. Would the answer to questions 1 and 2 be different if the claims of a European patent application are amended during examination proceedings or examination-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent application?

Written proceedings before the Enlarged Board

In written submissions ahead of the hearing, both the Patentee and the Opponent argued against the EPO’s current practice, though their positions were not completely aligned with one another. The Patentee essentially argued that there was no requirement for adaptation whatsoever. The Opponent took a more nuanced position advocating a significant narrowing of the circumstances in which adaptation of the description could be required, essentially restricting these to situations in which inconsistencies genuinely interfered with the assessment of patentability.

Submissions on behalf of the President of the EPO unsurprisingly defended the EPO’s current practice, primarily on the basis of the “support” requirement of Article 84 EPC and grounds of public policy relating to harmonisation with national courts and the UPC and promotion of “legal certainty for the public as to the scope of the patent monopoly”.

Given the significance of the questions referred, it is not surprising that over 40 amicus curiae briefs were submitted, mainly by patent attorneys, professional associations, and representatives of industry. The vast majority of these argued against any requirement for description amendments, or for a significant restriction of the EPO’s current practice. Common arguments included a lack of clear legal basis, concerns about interference with the competence of national courts and the UPC, the absence of comparable requirements in other major jurisdictions, procedural inefficiency and the risk of unintended consequences such as introduction of added matter.

Looming large over the proceedings was the Enlarged Board’s own recent decision in G 1/24, which held that the description and drawings should always be used to interpret the claims. For the pro-adaptation side of the argument, this meant that inconsistencies now carry greater significance and must be removed. For the anti-adaptation side, G 1/24 instead meant that inconsistencies could be dealt with as an act of interpretation, taking into account the primary role of the claims for determining both patentability and scope of protection.

The Enlarged Board’s preliminary opinion, issued about two months before the hearing, shed relatively little light on its thinking. The Enlarged Board identified two types of inconsistency: those which do not cause noncompliance with the EPC (thereby necessitating no amendments), and those which do (thereby necessitating amendment). However, the Enlarged Board left it open as to how such inconsistencies were to be identified and categorised, or how they might give rise to noncompliance with the EPC.

Oral proceedings before the Enlarged Board

In line with its written submissions, the proprietor argued strongly against any requirement for description amendments. At the heart of its oral submissions was an argument that the “support” requirement of Article 84 EPC merely requires that the claimed subject matter must be derivable from the description, and that amendment of the claims does not impose a reciprocal obligation to amend the description. This argument was based on the plain wording of Article 84 in both English and French, and on a survey of secondary sources including the travaux préparatoires to the EPC.

The proprietor argued that the EPO’s practice rests on a conflation of distinct provisions relating to the role of the claims in defining the subject-matter for which protection is sought on the one hand (Article 84, first sentence) and the requirements of clarity and support on the other hand (Article 84, second sentence). Any inconsistency between the description and claims could be dealt with as a matter of interpretation, recognising that the claims remain controlling for determining the scope of protection (in line with Article 69 EPC) while the description and drawings are consulted to understand their terminology (in line with G 1/24).

The proprietor also emphasised that Article 84 is not a ground for revocation in post-grant proceedings but that a strict adaptation requirement could result in Article 84 becoming a ground of revocation through the back door. Following  G 3/14, “pre-existing” clarity or support issues under Article 84 in a granted patent cannot generally be reopened in opposition. A broad requirement for adaptation could therefore also create the odd result that some inconsistencies must be removed while others must be tolerated.

The Opponent took a more nuanced position, but also resisted any broad requirement for conformity between claims and description. It accepted that claim interpretation after G 1/24 is a unitary process in which the description and drawings are consulted together. However, it argued that any real interpretative problem should be addressed as part of the substantive examination of patentability, sufficiency or added matter. Once the claims have been found allowable, there should not be a further, separate exercise of combing through the description for possible inconsistencies, unless a specific inconsistency creates serious doubt about the scope of the claims. The opponent also argued that aggressive description adaptation can distort the balancing exercise between the interests of the patent proprietor and those of third parties as required by Article 69 EPC and its Protocol on Interpretation, tilting the balance too far toward a literal reading of the claims by excising broader subject-matter providing a wider context for their interpretation.

The EPO’s representatives defended the need for adaptation, but in contrast to their written submissions, focused principally on public policy arguments regarding the need to generate certainty for third parties rather than elaborating significantly on the underlying legal basis for current practice. The EPO devoted a significant proportion of its oral submissions to an argument that adaptation of the description would reduce the risk of divergent interpretations of the scope of protection and divergent outcomes in proceedings in different member states. The EPO did not explain how it reconciled this position with its assertion that this did not interfere with the competence of the national courts when interpreting the claims under Article 69 EPC in the context of infringement proceedings.

The Enlarged Board’s questioning was led by the English patents judge Richard Arnold, sitting as an external member of the Board. Questioning focused on several recurring issues:

• First, if G 1/24 requires the description always to be consulted when interpreting the claims, does that support a requirement for adaptation, or does it mean that courts and skilled readers can resolve inconsistencies without amendment – and if so, can such inconsistencies always be resolved as a matter of interpretation?
• Secondly, why should courts be required to deal with sub-optimal, unclear or unamended descriptions if inconsistencies can be resolved by amendment in proceedings before the EPO?
• Thirdly, if claim interpretation is truly a unitary process in which claims and description are to be read together at all stages, is the EPO’s normal practice of deferring description amendment until an allowable set of claims has been identified legally coherent, or should parties logically be required to submit an amended description with each and every amended claim set (a proposition which neither the parties, nor the EPO, nor the Enlarged Board appeared to be willing to endorse)?

Next steps

As is typical of Enlarged Board proceedings, no decision was announced at the conclusion of the hearing. The Enlarged Board’s answers and their reasoning will follow in writing, most likely at some point later this year.

If the written decision follows the contours of the Enlarged Board’s preliminary opinion and the points discussed at the hearing, it seems unlikely that the Enlarged Board will abolish the requirement for description amendments altogether. Equally, however, the maximalist position adopted by some within the EPO under its current practice appeared to be under pressure from the Enlarged Board’s questioning. The main question therefore appears to be how the Enlarged Board will define the threshold differentiating between harmless inconsistencies or those which can be resolved as a pure exercise of claim interpretation, and those which it views as genuinely problematic and necessitating amendment.