It is important to note that this vote does not affect Mathys & Squire’s ability to represent its clients in the UK or in Europe.

EP Patents

The vote to leave the EU will not affect the UK’s relationship with the European Patent Office (EPO).

The EPO is governed by the European Patent Convention (EPC) and is not an EU institution. There are already several non-EU member states that are members of the EPC, including Switzerland, Norway and Turkey.

The UK will therefore remain a member of the EPC, regardless of its departure from the EU, and patent protection in the UK will still be available by filing a European patent application at the EPO. Our European patent attorneys will continue to be able to file and prosecute European patent applications, and handle EPO oppositions and appeals on behalf of all our clients.

EU trade marks and registered designs

Although the UK’s exit from the EU will have an impact on EU trade marks and registered designs, the ramifications are not immediately clear.

For now, however, the UK is still a member state of the EU, and all the legislation that gives effect to EU law is still in place. Nothing as a matter of law has changed as a result of the vote to leave. Instead, the vote marks the beginning of a legal process whereby the UK will notify the European Council of its decision to withdraw from the EU. That will initiate the formal process of withdrawal, which is intended to be effected by negotiation and agreement in a subsequent two year period. Given the complexity of the relationship between the EU and the UK, it may be that this two year period is extended until an agreement is reached.

Thus, in the immediate future, there are unlikely to be any changes to existing rights or to new applications for EU trade marks and registered designs. However, we will closely monitor the situation and will provide updates as and when we know more.

Rest assured, we remain a European business, and will take all necessary steps to ensure that the services that we provide in respect of EU trade marks and registered designs remain unaffected.

If you have any questions about this topic please contact your attorney at Mathys & Squire for more information.

Mathys & Squire was delighted to sponsor the Health Enterprise East “NHS Innovation Awards 2016”, which took place on 9 June at the Radisson Stanstead.

Graham Spenceley and Andrew White attended the Awards on behalf of Mathys & Squire. Andrew presented the award for ‘Best Medical Technology Innovation’ to Peter Hoskin and his team for their impressive work on fixation templates for brachytherapy.  Congratulations to all winners, and in particular to Peter Hoskin and his team.

Bulgaria is now the 10th country to ratify the UPC. Ratification from one more country, in addition to the UK and Germany, is now needed to bring the UPC into force.

Ireland has also taken steps towards ratification, although a referendum is necessary before ratification.

If you have any questions about this topic or for more information please contact Caroline Warren at [email protected].

In January we published the UK Government’s proposal to reduce significantly the fees for UK registered design applications. Designers had previously stated that registered design fees were ‘prohibitively expensive’. In addition, UK registered designs were simply seen as being ‘uncompetitive compared with […] Registered [European] Designs’.

We are pleased to confirm that the Government response to the proposal has now been published, and it’s good news for designers and those wishing to register designs in the UK.

The proposal included substantial reductions to filing fees, as set out below (for online filings):

The new proposed fee regime has made filing multiple designs at the same time far cheaper than before.

In addition, renewal fees have been slashed by, on average, 60%.  The total cost of maintaining a UK Registered Design for its full term (25 years) will be £410, rather than £1,100.

The Government received 16 individual written responses to the proposal, and an additional 35 responses to an online survey. Those that responded gave near-unanimous support to the changes put forward. The majority of respondents stated that the fees had been a significant barrier to protecting their designs, with one respondent even commenting that it had acted as a barrier to moving their business forward. Overall the proposal changes were seen as a positive step forward in supporting SME businesses.

The Government has therefore confirmed that it will now take steps to amend the UK’s design legislation at the next suitable opportunity so as to introduce the proposed new fee regime.

With large reductions for multiple simultaneous filings, designers will have greater ability to protect their designs more robustly by filing multiple applications to cascade protection for their designs.  Furthermore, the proposed new fee regime will benefit designers who wish to protect UX and GUI designs, which typically have various different key design features (such as shape of graphic elements and transitions of these elements, as well as colour schemes and colour transitions).

The UK Supreme Court’s recent ‘Trunki v Kiddee’ decision serves as a powerful reminder of the importance of registering designs and how they ought to be used, which this new proposed fee regime complements. Once implemented, the changes will ensure that it is cheaper for designers to obtain comprehensive protection.

With these welcome changes we certainly seem to be witnessing something of a renaissance of Registered Designs.  Historically, the UK registered design system and the Hague international design system have been somewhat neglected due to there being little incentive to use these systems.  However, with recent changes to these systems, and with more changes on the horizon, there are now a range of desirable options (i.e. Hague, UK and/or European Registered Designs) for protecting designs in the UK and beyond.

As we previously reported, the high profile ‘Trunki’ Registered Design dispute finally came to an end as the UK Supreme Court upheld the UK Court of Appeal’s judgement that PMS International’s ‘Kiddee Case’ product does not infringe Magmatic’s European Community Registered Design for the Trunki.

Now that the dust has settled, we are pleased to provide some practical guidance for designers and businesses wishing to protect their designs in the light of this decision.

Brief review of the key points of the decision

In the decision, the Supreme Court confirmed that the tonal contrasts between the darker wheels (and strap) and the lighter body in Magmatic’s Registered Design (see images directly below) could not be ignored as an immaterial features of the design. The Registered Design could therefore only be interpreted to cover: both the shape of the suitcase and its two-tone nature (and not merely its shape, as contended at first instance and later criticised).

Above: Exemplary representations from Magmatic’s European Registered Design for the Trunki. Note the visible tonal contrast between the wheels and the body.

Above: PMS International’s alleged infringing article – the ‘Kiddee Case’. Note the mostly covered wheels. 

The Supreme Court also reinforced the Court of Appeal’s criticism that there was a failure at the High Court “to give proper weight to the overall impression of the [Registered Design] as an animal with horns, which was significantly different from the impression made by the Kiddee Case, which […] were either an insect with antennae or an animal with ears”.

Practical Guidance

The mainstream media has been largely sympathetic to Magmatic, with the broad consensus being that this decision is a heavy blow for British designers as the Supreme Court has failed to protect designers.

However, for many practitioners, the Supreme Court’s decision comes as little surprise and it is instead a welcome confirmation of what many had suspected. The decision emphasised the importance – and almost sole importance – of representations within a Registered Design, and the thoughtfulness that should be put into the preparation of suitable representations, rather than merely using whatever happens to be to hand.

In determining the representations to be used, there is a fine balance to be struck between validity and the scope of protection.  The Supreme Court offered guidance in this respect: “an applicant is entitled to make any number of applications. More broadly, it is for an applicant to make clear what is included and what is excluded in a Registered Design, and he has wide freedom as to the means he uses.”

As a result, for robust protection, multiple Registered Designs can – and should – be used to cascade protection (akin to patent claims), with tone, colour, shape, highlighting, and disclaiming used in various combinations to protect actual embodiments and – separately – key design features also.  This approach should provide thorough protection for the look and feel of a design at a comparatively low cost compared to other forms of IP protection.

With all of this in mind, one cannot help wonder whether Magmatic would have succeeded in their action against PMS had they also filed line drawing representations and/or CAD drawings in a single tone.

To this end, far from failing designers, European Registered Designs still offer the advantages of:

• Cost effectiveness
• Economies of scale
• An absolute monopoly
• Wide territorial coverage
• Options for tailoring protection
• A long term (25 years)
• A 12-month self-disclosure grace period
• Keeping the design secret (for up to 30 months)

Registered Designs are therefore as effective as ever, and we would certainly contend, fit-for-purpose, but –crucially – only when they are used properly – which, as this decision emphasises, is all about getting your drawings right.

For advice on how Registered Designs can be used to protect your designs or for further commentary regarding this judgement, please do not hesitate to get in touch.

On Thursday, 12 May CIPA held ‘The Brexit Symposium’ at the Royal College of Physicians in London.

Caroline Warren, Partner at Mathys & Squire, presented on the possible implications of Brexit to IP firms and their clients, including the impact upon Patent Box, R&D grants and foreign perceptions of IP in the UK.

If you have any questions about this topic or for more information please contact Caroline Warren at [email protected].

There has been significant progress towards the implementation of the UPC, with Bulgaria, Lithuania and Italy recently taking steps towards ratification.

Nine countries have already ratified, and it looks likely that the UPC will soon come into force. 

Fore more information about this topic please contact your attorney at Mathys & Squire, or send an email at [email protected]. 

The patenting system across the European Union is undergoing major change, and is currently the subject of the largest overhaul in 30 years. Within the next year (the exact date is shortly to be confirmed), the Unified Patent Court (UPC), a new court designed to allow pan-European patent revocation and infringement actions, will commence operating.  At the same time, the Unitary Patent (UP), a single patent with effect across all participating European Union member states, will also come into effect.  Here, we will explore the impact that the new system will have on businesses, and look at the advantages, as well as disadvantages, that it will bring with it.

The Unitary Patent

Following central examination by the EPO, a classical European Patent (EP) provides a bundle of separate national patents each effective in those states in which it is validated.  In contrast, the new Unitary Patent (UP), whilst still examined by the EPO, gives rise to a single patent right which covers all participating European Union states.

Notably, only a single fee is payable to renew a UP, rather than a separate fee per state.  The renewal fee will be set to be equivalent to the current renewal fees for the four largest states, resulting in reduced renewal fees for applicants who would normally validate an EP in a larger number of states.  However, it will not be possible to let protection lapse in some states to reduce overall renewal fees in the latter years of the patent term, as with classical EPs.

The Unified Patent Court

The UPC will enable pan-European patent revocation and infringement actions in respect of both new UPs and classical EPs, both of which will in due course be subject to the exclusive jurisdiction of the UPC.  This is intended to reduce the costs of litigation and to harmonise patent litigation and revocation proceedings across Europe.  In addition, patentees will now have access to pan-European patent infringement injunctions.

The UPC will be made up of specialist patent judges, and will consist of a number of Courts located in various participating states, including a central division split across Paris, London, and Munich and having the exclusive ability to deal with revocation actions and declarations of non-infringement, a number of local and regional divisions, and a Court of Appeal based in Luxembourg.

Transitional period and opting-out

Infringement or revocation actions in respect of a classical EP may still be brought before a national court during an initial transitional period of seven years (extendable for another seven years) following the introduction of the UPC.

Importantly, patentees will have the opportunity to opt-out of the exclusive competence of the UPC in respect of current or pending classical EPs during the transitional period.

New options for patent protection in Europe

Following the introduction of the UP and the UPC, there will be four alternative routes for seeking patent protection in Europe.

1. Unitary Patent:  Applications at the EPO are prosecuted as normal, and are then designated as a Unitary Patent at grant.  A UP covers all of the participating European Union states.  Other EU states that are not participating (such as Spain and Poland), or other European states not part of the EU, can be covered via separate validations as per a classical EP.
2.  Classical European Patent:  An application prosecuted at the EPO may alternatively be validated as usual in a number of states of the patentee’s choice.   This may be more cost-efficient for applicants who do not want coverage in more than a small number of European states.  Classical EPs are automatically opted-in to the jurisdiction of the UPC.
3. Classical European Patent (opted-out):  Classical EPs may be opted-out during the transitional period, making them subject to the jurisdiction of national courts (as in the current system), rather than the jurisdiction of the UPC.  The opt-out remains effective for the life of the patent.  There will be no opportunity to opt-out EPs following the expiry of the transitional period, but opted-out EPs may be opted back in at any time.
4. National Patent:  Both the EPO and the UPC may be avoided altogether by applying directly at the respective national patent offices of the states of interest.  This will ultimately be the only recourse to avoid the jurisdiction of the UPC for new patent applications in Europe following the expiry of the transitional period.

Strategic considerations 

Among the most pressing issues for businesses having patent interests in Europe are:

• Central attacks – The risk of a central attack via the UPC invalidating a UP or a non-opted-out EP makes these patents a riskier option for important products, as opposed to using an opted-out EP and/or national patents.
• The opt-out option – Opting-out is likely to be the preferred option initially, until applicants have a clearer understanding of how the new court will operate. However,  this should be considered on a case-by-case basis.  It is not possible to opt-out where actions are already pending before the UPC, so it is expected that there will be an early rush to opt-out patents when the UPC is first introduced.
• Filing strategy – The best option for patent protection should be evaluated based on the merits of each IP asset.  It will be possible to use the various options in combination to maximise the protection available, such as by using opted-out EPs or national patents with a broad claim scope in combination with a related UP with a narrower scope.
• More attractive patent litigation – The UPC sets up Europe as an attractive competitor to the US for litigation, as it will cover a larger population base while likely being cheaper and faster than the US system.  The provision of various different local and central courts will allow litigants to act strategically when considering where to bring an action.

Clearly, these major changes will significantly alter the patent landscape across Europe and it is important for businesses to consider their strategy now so as to ensure that they are in the best possible position for the dawn of this new era in Europe.

Fore more information about this topic please contact your attorney at Mathys & Squire, or send an email at [email protected].

Unless you have been hibernating in a cave over the winter months, you will be aware of the crucial EU referendum vote taking place in the UK on 23 June 2016, which will determine whether the UK remains in the European Union or leaves (Brexit).

The battle lines have been drawn between the two sides and the official campaigns have now begun with David Cameron fronting the ‘In’ campaign and Boris Johnson leading the ‘Out’ campaign, both fighting for pole position. The news agenda has been primarily dominated by talk of the implications regarding immigration and funding – issues that touch the hearts of the general public – but little has been discussed in regards to UK IP rights if a Brexit is to occur. This short article will look at the interesting potential consequences for UK businesses vis-a-vis their intellectual property rights across the EU and highlight what businesses should be thinking about as to how to best protect themselves in the wake of a so-called Brexit.

It is important to note that if there is a vote to leave the European Union the transition will not occur overnight. There will be a legal process whereby the UK will be obliged to officially notify the European Council of its decision to retract its membership status and negotiations will get underway in order to reach an agreement between the EU and the UK for a withdrawal of the EU treaties that bind them together. Failing to reach a mutual agreement, the UK will not be withdrawn from the EU until two years have passed since the official notification to the European Council. However, with the complexity of the relationship between the EU and the UK in mind, if a failure to agree terms occurs, this two year period will undoubtedly be extended until such an agreement is reached. In the meantime it is highly likely that transitional provisions will be put in place in relation to UK IP rights already in use.

The first thing to stress is that even in the event of a Brexit, there will be absolutely no ramifications for UK national patents or any other IP rights obtained through the United Kingdom Intellectual Property Office (UKIPO); including registered trademarks and designs. Things could be different for pan-European patents, however any obtained through the European Patent Office (EPO) will not be affected. There is a popular misconception that the EPO is governed by the EU which it is not, it is actually governed by the European Patent Convention (EPC) which is not an EU institution. Several non EU member states are still members of the EPC, including Switzerland and Norway, and it is hotly anticipated that the UK will also remain. Therefore even if a British exit occurs, the current European patent system (which is governed by the EPC) will still be applicable to all UK patents; and businesses will still be able to be granted UK patents and European patents via the same system as they do today. British patent attorneys will also be able to continue representing clients before the European Patent Office (EPO).

The water gets a little murkier, however, when looking at the potential consequences for the UK in relation to the long awaited European Unitary Patent system which brings with it the Unitary Patent Court (UPC) and the Unitary Patent (UP): a patent granted and valid in 26 EU member states. The idea of the UP was conceived in order to cut costs, administration and the red-tape of filing and enforcing patents across various EU jurisdictions. The UP is designed to file a single application that will grant patent protection in all relevant states. It is worth noting that whilst this system may make sense for a cost-efficient alternative to filing separate applications in a number of jurisdictions the cost effective nature will be more relevant to big multi-national companies and not so much for SMEs who require a filing in only one or two member states. It is likely that SMEs will continue filing under the current system in any event.

A Brexit is seen by some as a threat to the introduction of the new UP system. For the system to come in to force it needs to be ratified by the three countries in which the greatest number of European Patents are validated, which includes the UK alongside France and Germany. If the UK was to leave the EU the fourth country in line would take its place, the Netherlands, and ratification could still go ahead. The UK’s position within the system if it repeals its EU membership status is still unknown. Many believe that it would have no place in such a system but all pointers lean to the fact that it may still hold some power. The government last summer announced that it had signed a lease for a suitable site for the London Branch of the new Central Division and the London Local Division of the UPC. However, the idea of any ‘power’ is all speculation at this stage and any ratification will undoubtedly take place after the results in June.

In conclusion, whether the UK votes to leave the EU or stay in come the summer, it is unlikely that any drastic changes will take effect immediately.  We would like to take this opportunity to reassure clients that, whether the UK remains in the EU or not, our Patent Attorneys will continue to be able to represent all clients at the EPO. UK membership of the EU will not affect our ability to file and prosecute European patent applications, and handle EPO oppsitions and appeals. We will remain a European business, and the services that we provide to our clients will remain unaffected. 

We will continue to report on any developments, however if you have any questions about this topic please contact your Attorney at Mathys & Squire for more information.

We are pleased to announce that Mathys & Squire have moved to larger offices in central Manchester. Manchester continues to thrive as a dynamic business hub which has in turn provided the firm with the opportunity to grow and develop its presence.

 
We are delighted to be an integral part of the thriving business community in the North West and we look forward to assisting both new and existing clients develop and maximise commercially their intellectual property rights.
 
Demonstrating a real understanding and empathy with clients who are based on our doorstep is a real driving force for us.  The North West’s heartbeat is innovation and entrepreneurship – history has shown us that and the future shows no sign of letting up. We want to continue to be a part of that.
  
The new office can be found at Abbey House, 32 Booth Street, Manchester, M2 4AB.  For more information please contact the team at [email protected] or 0161 8705900.