As previously reported, the EPO’s ‘10-day rule’ will cease to exist from 1 November 2023.

From that date, EPO communications will be deemed to be delivered on the same date which they show, rather than 10 days later (as occurs at present). Thus, the date of a communication will be considered the date of notification and be decisive for determining the expiry of an applicable deadline. 

Please note this only applies to EPO communications dated on or after 1 November 2023.

As a safeguard against late delivery of communications, the EPO has introduced measures to extend deadlines in cases where delivery of a document is disputed, and it can be established that a document was delivered to the addressee more than seven days after the date it bears. The burden will be on the EPO to establish when the document was actually delivered. In addition, if the EPO is unable to prove that a document has been delivered, the document in question will be reissued with a new date, and that new date will be used to determine the expiry of an applicable deadline.

Those receiving reports of EPO communications from Mathys & Squire from 1 November onwards may notice our correspondence emphasises that the ‘10-day rule’ no longer applies.

The ‘10-day rule’ originated as a ‘buffer’ to take into account delays in receiving documents by post. The abolition of this rule is part of a wider strategy to support digital transformation in the patent grant procedure at the EPO.

If you have any questions about these changes, please don’t hesitate to get in touch with your Mathys & Squire contact, or reach out to our team using our contact form here.

Managing IP has released its 2023 guide of the IP STARS legal directory, which recognises the most outstanding practitioners covering several IP practice areas and more than 50 jurisdictions. Each year, the research analysts obtain information through firm submissions, client interviews, as well as online surveys, to identify the leading IP STARS.

We are delighted to announce that Partners Jane Clark, Hazel Ford and Paul Cozens have been named as ‘Patent Stars’ and Partners Gary Johnston and Margaret Arnott, as well as Of Counsel Rebecca Tew have been recognised as ‘Trade Mark Stars.’ Additionally, Partners Philippa Griffin, David Hobson and Andrew White have been featured as ‘Notable Practitioners’ in the latest guide. The 2023 Rising Star rankings are due to be released in September 2023.

The firm is also pleased to have maintained its rankings for ‘Patent prosecution’ and ‘Trade mark prosecution’ in the 2023 directory.

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

Today, 1 June 2023, marks the launch of the Unified Patent Court (UPC) and the Unitary Patent (UP) system after many years of preparation by the European Union and its members. As of today, the UPC has jurisdiction for patent litigation throughout the 17 member states which have ratified the Agreement on a Unified Patent Court (UPCA). From today onward, newly-granted European patents can also be brought into force as Unitary Patents, providing coverage for the 17 UPC member states through a single validation.

Any existing European Patents that have not been opted out are now automatically subject to the UPC’s jurisdiction. However, you can still choose to opt your patents out throughout the initial transitional period of at least seven years, provided that those patents are not subject to litigation at the UPC. Once opted out, patents will be subject to the jurisdiction of the competent national courts instead. Opt-outs can also be registered for pending European patent applications.

During the three-month sunrise period which ended yesterday, a total of nearly 474,000 patents and patent applications were opted out. Although precise figures are hard to calculate, it has been estimated that this represents somewhere between about 40 and 60% of all eligible patents and patent applications, with the number expected to continue to rise now that the court is open for business. It will be very interesting in the coming weeks and months to see how widely the UPC is adopted as a forum for patent litigation instead of national courts, and to see if any sectoral trends begin to emerge.

In other news which was announced at a late stage of the sunrise period, it has been confirmed that (subject to a confirmatory vote by the UPC’s Administrative Committee) Milan will host the third branch of the UPC’s Central Division, which was relocated from London due to Brexit. However, no formal announcement has yet been made as to which cases will be handled in Milan, and it seems that the Milan branch will not be opening just yet. For the time being, therefore, cases at the UPC’s Central Division will be split between Paris and Munich as we reported previously.

With our patent attorneys eligible to practice before the UPC as registered European Patent Litigators, our team at Mathys & Squire is well equipped to assist you in carving out your individual filing and litigation strategy. As we step into the unknown, we are thrilled to watch the new system change patent litigation forever, and to be part of shaping its course.

Read more about UPs, the UPC and opting out of the UPC here.

As the Unified Patent Court (UPC) launch date approaches, the question on everyone’s mind regarding the placement of the third branch of the central division has finally been answered. Following Brexit and the UK’s subsequent withdrawal of its ratification of the Agreement on a Unified Patent Court, the UPC had to find a new location to host the central division’s third branch, which had originally been allocated to London.

After years of speculation and only two weeks before the official launch, the UPC has finally provided an update, although maybe not one that was widely anticipated. During a meeting on 8 May 2023, the Presidium of the UPC decided that any actions relating to patents in IPC section A (Human Necessities) will be assigned to the seat in Paris, and those relating to patents in IPC section C (Chemistry) will be assigned to the Munich branch.

Despite previous reports of Milan being all but confirmed as the third location, it has also been rumoured that the Italian, German and French governments are yet to agree on a division of technical classes between the three branches of the court. Given the Presidium’s characterisation of the reallocation of competencies to Paris and Munich as being “provisional”, it seems that negotiations in this respect may still be ongoing even as time runs out on the sunrise period.

As we anticipate the opening of the UPC’s doors on 1 June 2023, we will report on any updates that are released and will continue to support our clients and contacts on their UPC journey.

The Enlarged Board of Appeal has issued a preliminary opinion suggesting that it is minded to approve something close to the so-called ‘PCT joint applicants approach.’

As explained in our earlier article, the Enlarged Board has essentially been asked to decide whether, firstly, the EPO has the power to determine whether a priority right has been validly transferred to a successor in title, and secondly, whether naming the applicant for a first filing as applicant for the US only in a PCT application claiming priority thereto is enough for the purposes of introducing priority rights into the European designation. Oral proceedings have been scheduled for 26 May 2023 and the Enlarged Board has now issued its preliminary opinion on the issues.

First question

The Enlarged Board considers the first question admissible as it touches upon fundamental questions of law. This in itself is interesting because the tribunal could have taken the position that the first question did not require an answer in view of established case law and practice, according to which the EPO does have the power to decide entitlement to priority.

The Enlarged Board further addresses the scope of the first question and considers that it encompasses all situations where the applicant claiming priority is not clearly identical to the applicant of the priority application. This is because entitlement to priority issues are also said to arise outside the context of succession in title.

As regards how the first question should be answered, the Enlarged Board merely identifies a number of further questions that might usefully be discussed at the hearing. These are summarised as follows:

These further questions suggest that Enlarged Board is far from making up its mind. Indeed, the tribunal notes that opinion is also evenly divided between ‘yes’ and ‘no’ in the amicus curiae briefs and among the parties to the proceedings.

Second question

The Enlarged Board considers the second question admissible because it is relevant in many proceedings before the EPO and is a matter of ongoing discussion in the case law. 

As regards how it should be answered, the Enlarged Board says that it tends to support an affirmative answer (assuming there is an affirmative answer to the first question) on the basis that the joint filing of a PCT application (“i.e. with the consent of all applicants”) could serve as evidence implying an agreement on the sharing or transfer of the priority right. This approach seems to align closely with the PCT joint applicants approach, although problems could presumably arise if there is evidence proving the absence of any agreement, or worse, a disagreement between the PCT applicants vis-à-vis the sharing or transfer of priority rights. 

The Enlarged Board further notes that the written submissions have almost unanimously supported an affirmative answer to the second question. An affirmative answer would certainly be good news for many patentees!

We will provide further updates as the Enlarged Board referral progresses.

Following the Decision of the Administrative Council of 14 December 2022, the European Patent Office (EPO) has announced a general increase in official fees by 4-6% from 1 April 2023 – just a year after its last fee increase in April 2022. Full breakdown of the increases is available on the EPO website.

The fees with the largest increase include excess pages, excess claims per claim 16-50, and examination, whilst the filing fee for an application in character-coded format is the only one to decrease in price.

With the increases in mind, it might be sensible to pay certain fees early, before the rates go up. For example, requesting examination and paying renewal fees can be performed several months ahead of the official deadline so applicants may find it worthwhile to review their patent portfolios and check if any fee payments can be made ahead of the 1 April 2023.

For more information about the fee increases and how they may affect you, as well as to discuss any potential cost savings, please get in touch with your usual Mathys & Squire attorney, or send us an enquiry.

Data and commentary provided by Mathys & Squire has featured in articles by The Times, The Patent Lawyer, UK Tech News, L’Entrepreneur, Business & Innovation Magazine , Facts Chronicle, World Intellectual Property Review and The Business Magazine providing an update on the rapid growth in semiconductor patents applications.

An extended version of the press release is available below.

There have been a record 69,190 global patents for semiconductors filed in the past year*, up 59% from 43,380 five years ago and 9% more than the 62,770 filed in 2020/21, shows new research by Mathys & Squire, the leading intellectual property law firm.

 R&D in the semiconductor industry has underpinned the growth in technology and the intense competition within the sector has ensured that innovation continues at a fierce pace.

The global semiconductor industry is forecast to be worth $1 trillion by the end of this decade – up from $590 billion in 2021**.

US giants Intel and AMD have been locked in a years-long rivalry to dominate market share within computers by designing ever faster, higher-capacity processors. Meanwhile companies such as Cambridge-based Arm have targeted semiconductor design for mobile devices. Such intense commercial rivalries often lead to the active filing and enforcement of patents.

By 2030, the automotive sector is predicted to make-up 15% of global demand for semiconductors, up from 8% in 2021***. Another key area of growth is the ‘Internet of Things’, including everything from wearable tech to smart homes and even smart cities.

As rising geopolitical tensions have led to trade barriers for key technologies, Governments have taken steps to secure their access to semiconductors.

Last year, the US Congress passed the CHIPS and Science Act, which allocated $280 billion to promote the research and manufacture of semiconductors in the United States. The European Union is currently considering a European Chips Act in order to boost Europe’s semiconductor industry.

As the growth of domestic semiconductor industries becomes a feature of more countries’ industrial policies, we can expect new patent filings to continue as businesses seek to protect and monetise their technological advances.

China filed 55% of global semiconductor patents in the past year

In 2021-22, 55% of semiconductor patents (37,865) were Chinese in origin. China has placed a major focus on boosting domestic semiconductor production in order to reduce dependence on western technologies.

The largest individual filer in 2021/22 was semiconductor giant Taiwan Semiconductor Manufacturing Company (TSMC) Limited, which was responsible for 4,793 patents – 7% of all patents worldwide.

18,223 of the patents filed in the last year (26% of the total) were filed in the United States. The top US filer was California-based Applied Materials Inc, with 209 patents, followed by SanDisk (50 patents) and IBM (49 patents).

In contrast, the UK accounted for only 179 patents, just 0.26% of the global total.

Edd Cavanna, Managing Associate at Mathys & Squire, says: “Governments are increasingly concerned about the fragility of global supply chains and are taking steps to promote semiconductor research and production domestically. New technologies which emerge from this global technology race will be protected by patents which are likely to be fiercely enforced.”

“Global powers such as the US, China and the EU are competing to be leaders in semiconductor technology. That says it all regarding their importance for the future of the economy.”

“However, the UK lags behind other parts of the world in developing semiconductor technology. The UK Government may wish to consider whether current funding structures provide enough support to research and development in this vital field.”

*Year end September 30 2022, Source: World Intellectual Property Organization
**Source: McKinsey
***Source: McKinsey

Germany has finalised its approval of the Unified Patent Court (UPC), opening the UPC’s case management system and kicking off the court’s sunrise period from 1 March. The start date for the UPC is now 1 June 2023.

Germany’s move brings closer the biggest development in European IP law since the creation of the European Patent Office in 1977. The UPC has been an aspiration for the EU for half a century with several attempts at introducing a single European patent court blocked over the years before a breakthrough was finally made in 2013. Following a number of other challenges over the last few years, the UPC is on the precipice of finally coming into force.  

The UPC – presiding exclusive jurisdiction over European patent litigation – means businesses will only need to make one legal claim to enforce their patents across Europe. Costs will reduce so much that they will be comparable to making a claim in only one country previously. The new process will also make it more convenient to enforce patents across Europe for UK and EU businesses.

The start of the UPC’s sunrise period means businesses have three months to decide whether to opt their patents out of the UPC before full commencement. Businesses that anticipate having to defend their patents may wish to exercise their opt-out. Opting out would prevent competitors from ‘knocking-out’ their patent across Europe in a single judgement, making it easier to defend their patents from challenges.

Andreas Wietzke, Partner at Mathys & Squire says, “UK businesses need to seriously consider whether it is best for them to opt out of the UPC now that the Sunrise Period has begun.”

The UPC has long been a dream for the EU and provides many benefits for those wanting to enforce their patents across the single market. But for existing patent holders, it could mean an increased risk that their IP will be challenged, with a single judgement able to ‘knock-out’ patents that had applied in several jurisdictions across Europe.

The ease at which patents could be challenged may incentivise competitors to gamble and discover if they can disrupt their competition now that it is more convenient and cheaper to do so. UK businesses have three months to decide how to best protect their IP before the UPC goes into full effect.

The UPC was first agreed in 2013 but was held up for years by the domestic ratification processes of member states. Germany’s final approval of the system means that it is set to become fully operational in three months once the sunrise period elapses.

Mathys & Squire is delighted to announce that our trade mark team has been recommended in the latest World Trademark Review (WTR) 1000 guide. Praised for “having a specialised knowledge of trade marks”, as well as “adopting a client-oriented approach and delivering high quality results”, Gary Johnston and Margaret Arnott are also named as Recommended Individuals.

The WTR 1000 directory illustrates the depth of expertise available to clients, serving as the definitive tool for those seeking outstanding trade mark services worldwide. Now in its thirteenth year, the guide researchers have spent four months analysing the trade mark legal services market through an extensive interview process. Mathys & Squire has been recommended for its work in the trade mark field, specifically in the ‘prosecution and strategy’ category. Our “team of experts share their clients’ ambition, passion and entrepreneurial spirit, going above and beyond what is expected when it comes to service delivery.

Alongside our firm ranking, Partners Margaret (recommended in the categories of ‘Enforcement & Litigation’ and ‘Prosecution & Strategy’) and Gary (recommended in the category of ‘Prosecution & Strategy’) have received the following feedback:

Margaret is practically a trade mark encyclopaedia. She can answer any question that a client may have and knows how to get great results. Margaret is also very pragmatic and will always provide the full picture prior to assisting in the decision making process.”

Gary is an experienced, commercial and pragmatic lawyer who is highly knowledgeable about IP.

We would like to thank each of our clients, contacts and peers who took the time to participate in the research. For more information and to see the full WTR 1000 rankings, please click here.

According to the existing case law of the Boards of Appeal, the standard of proof applicable to allegations of public prior use – when the evidence is in the sphere of both parties – is ‘the balance of probability’. However, when the evidence lies entirely in the sphere of the opponent, usually a higher standard of proof, i.e. ‘beyond any reasonable doubt’ (up to the hilt), applies. The two standards would entail a different degree of proof that an alleged fact is correct or has occurred.

In T 464/20, the Board stresses that the most relevant question is whether the deciding body is convinced that an alleged fact is correct or has occurred. In the case at hand, the opposition division, in acknowledging the public prior use, applied the ‘balance of probability’ standard. The appellant/patentee objected that the applied standard was not the correct one, because only the respondent/opponent had the control of the evidence.

In the decision, in a quite cumbersome sentence, the Board reasoned that even if the Board followed the patentee’s view that practically all the evidence was within the opponent’s control, the Board would still have to be convinced that the choice of the ‘balance of probability’ standard was not correct. The Board was not convinced of the incorrectness of the choice of the standard by the opposition division. In this regard, the Board noted that the opposition division correctly did not base its decision exclusively on the question whether the alleged facts were probable; rather, they were convinced of their correctness. Indeed, the opposition division was convinced both that the delivery of the product at issue was not exclusively in the hands of the opponent and that it had actually occurred.

The Board further relied on two previous Boards of Appeal decisions to support its opinion.

They referred to T 548/08, in particular reasons 4 to 11. T 548/08 deals with the type of standard of proof (‘beyond any reasonable doubt’ versus ‘the balance of probability’) to be applied to assess whether an internet disclosure forms part of the prior art. The Board commented that it was aware of the different views expressed in the case law on the standard to be applied.

However, the Board stated that the European Patent Convention’s (EPC) overarching principle of free evaluation of evidence (referring to decision G 1/12, OJ EPO 2014, A114, point 31) would reconcile the two different points of view. G 1/12’s reason 31 states that the proceedings before the European Patent Office (EPO) are conducted in accordance with the principle of free evaluation of evidence and that this principle would be contradicted by laying down firm rules of evidence defining the extent to which certain types of evidence were, or were not, convincing.

Accordingly, in reason 11, the Board stressed that the facts on which any finding of public availability is to be based must be established with a sufficient degree of certainty in order to convince the competent organ of the EPO that the facts have indeed occurred. This holds true even if the determination is made on the basis of probabilities and not on the basis of absolute certainty (‘beyond any reasonable doubt’).

T 768/20, in particular reason 2.1.2, is the second decision mentioned. This decision addresses the point whether, in assessing Art. 123(2) EPC, the implicit disclosure of a certain feature had to be proven beyond any reasonable doubt. The Board found that the applicable standard is ‘beyond any reasonable doubt’. However, the Board noted in reason 2.1.2:

“Incidentally, the Board wishes to point out that the practical relevance of the distinction between the “balance of probabilities” standard and the “beyond reasonable doubt” standard is often overestimated. Both standards are only fulfilled if the deciding body is persuaded that the alleged fact is true, which is not a matter of “just tipping the balance slightly” (see decision T 545/08, point 8 of the reasons). This is also confirmed by the passage in case law, section III.G.4.3.1, according to which “the balance of probabilities standard [is] met if, after evaluating the evidence, a board [is] persuaded one way or the other” (underlining by this board).”

The Board of T 464/20 then considered the available evidence and concurred with the opposition division that the public prior use was ‘sufficiently’ proved.

Decisions T 464/20, T 545/08 and T 768/20 deal with the standard of proof in different contexts (prior use, internet disclosure, Art. 123(2) EPC). In each of these cases, the competent Board, without denying the distinction between the two standards, appears to emphasise that what matters is that the deciding body is convinced that the alleged fact is correct or has occurred. Therefore, in the case of the standard of probability, it is not sufficient to show that an alleged fact has merely “probably” occurred.