Top tier intellectual property firm, Mathys & Squire is proud to act for Orb Factory Limited (“Orb”), a well-known, innovative and highly successful toy and children’s products manufacturer based in Canada. Orb operates worldwide, including in the UK and the rest of Europe and has had considerable commercial success with its Soft ‘n Slo Squishies toys.

Late last year, Orb asked us to advise them concerning several grossly misleading and inaccurate articles published on the websites of The Sun and The Mirror. These articles featured Orb’s registered UK trade mark Soft ‘n Slo Squishies, as well as Orb’s images and video content for which Orb owns the copyright.

Two of the tabloid publications referred to a European Commission report issuing a recall of a cake-shaped squishy toy product which had no connection with Orb’s products, whilst a third article referred to a ban on the sale of certain toy products in Denmark, which again were entirely unrelated to Orb’s products. The articles were written in such a way as to give the impression that Orb was associated with all of the “squishies” referred to, that its Soft ‘n Slo Squishies toys had been banned in Denmark, and that its Soft ‘n Slo Squishies toys had been the subject of a recall by the European Commission. This was entirely false as the products to which the articles referred were all different products from unrelated suppliers.

Given the extensive readership of both The Mirror and The Sun, it was of the utmost importance to Orb that the inaccurate articles were removed/rectified swiftly. This was to prevent the misleading publications from causing significant commercial damage to Orb and its business and to preserve the right for Orb to seek interim injunctions from the courts, if necessary.

Our team acted quickly and sent robust letters to The Sun and The Mirror requiring the immediate removal of all references to Orb’s brand and its products from the articles.

The letters sent by our team were forcefully followed up and were successful in securing the removal from the articles of all references to Orb’s trade mark, as well as of its copyright-protected images and video content – all references to Orb’s brand and products were removed from the websites/articles by the respective newspapers within three days of writing to them.

Through its swift action, our team assisted Orb in ensuring that the supreme reputation of its products was maintained and was not besmirched by inadequately researched and wholly inaccurate publications, and without the need for litigation. The team at Orb were delighted with this result.

Our team’s actions serve as a great example of our enviable experience of enforcing our clients’ trade marks and other IP rights, as well as our effective and robust approach to dealing with issues that arise in order to achieve a commercial result.

Our team is always on hand to take quick and direct action in cases where our clients’ intellectual property rights are at risk, whilst also ensuring that our clients’ commercial interests are prioritised.

The development of the reputation of a brand requires a significant investment, both financially and in terms of the considerable time which it can take to build. Unauthorised trade mark use undermines this investment, as it can not only be damaging to brand owners’ commercial efforts, but it can also dilute the value of a brand and its reputation – potentially resulting in irrevocable damage. It is therefore of paramount importance that brand owners take proactive steps to protect their trade mark rights.

If you are concerned about the misuse of your trade mark/branding, or you would like advice on trade marks/branding more generally, please get in touch with Margaret Arnott, Harry Rowe or Daniel Ramos today.

With over 100 years of offering the highest level of IP services to clients, this Tier 1 Legal 500 intellectual property firm, Mathys & Squire has an enviable position as one of the leading IP firms in Europe.  With offices in London, Cambridge, Manchester, York, Brighton, Oxford, Midlands, Paris, Luxembourg and Munich as well as a team in China; the firm offers a full range of services dedicated to identifying, protecting and maximising the value of clients’ innovations, technologies, brands and designs. The firm’s patent, trade mark and design attorneys are qualified at both a UK and European level, with legal expertise across a full spectrum of technical proficiencies and sectors.

Rotolight, a pioneering British technology company specialising in creating award winning LED lighting products for photographers and filmmakers, has just secured £5m in growth capital funding from Octopus Investments. 

The funding will enable Rotolight to realise its plan to develop 15 new products over the next five years. It will also help to expand the business to nearly five times its current size.

Richard Court, Head of Development Capital at Octopus Investments, commented: “The company has developed a range of market-leading products backed by substantial IP, and our growth capital will be used to further develop the product range as well as capitalising on extensive international expansion opportunities.”

Rod Aaron Gammons, CEO of Rotolight, said: “We are delighted to secure Octopus as part of our team for what will be a very exciting time ahead; delivering on our ambitious plans for growth and developing products that change the way photographers and filmmakers work with light, enabling them to be more creative and efficient in their work than ever before.” 

Elton John with Rotolight equipment.

Mathys & Squire partner Dani Kramer commented: “We have been working with Rotolight almost since its inception to protect its intellectual property. It is incredibly satisfying to see the success of the company, and the team being recognised for their product innovation.”  Rod added that Mathys & Squire has “an impeccable understanding of IP law, and draft claims to maximise value from patents.”

About Rotolight
Rotolight is known for constantly pushing the boundaries in its field and striving to create products that provide unique tools to image creators. Its lighting has been used by the likes of ITV’s Dancing on Ice, the BBC, Formula 1, CNN and Disney, and in the production of major feature films including Skyfall and Captain Phillips. Leading where others follow, Rotolight has developed industry-first features for which it has won numerous awards, including over 30 for innovation and technical excellence.

For more information about how Mathys & Squire can help your business, contact Dani Kramer [email protected]

The difficulties in obtaining protection for artificial intelligence (AI) and machine learning (ML)-related inventions, and the differences between the various approaches adopted by the national and regional offices, has been the focus of much discussion in recent years. However, as a European patent attorney sharing a stage with attorneys from around the world in a recent seminar series on the topic in Japan, what struck me was that despite the differences in legal framework, the resulting approaches to patent examination in this area are more aligned than we often think.

Focusing for example on the US where, unlike Europe, there is no statutory provision listing what is not considered to be an invention, the examination of AI and ML inventions is, nevertheless, rooted in subject matter eligibility requirements and what is, and is not, considered ‘abstract’. What is important for demonstrating that an AI or ML invention is significantly more than an abstract idea is the nature of the technological ‘improvement’ that the invention provides. However, it is not sufficient simply to explain the ‘improvement’ in the description – to obtain protection the technological ‘improvement’ should be recited in the claims.

In Europe, November 2018 saw the introduction of a new section to the EPO’s Guidelines for examination, providing guidance on when inventions related to AI and ML may be considered to have sufficient ‘technical effect’ to avoid being considered ‘abstract’. The new section treats AI- and ML-based computational models and algorithms as being per se of an abstract mathematical nature and hence as a sub-class of the statutory exclusion ‘mathematical methods’. Nevertheless, the application of these models to various fields of technology, such as image recognition or medical monitoring, can provide sufficient technical effect to avoid the exclusion. In essence the guidelines extend existing guidance that the fact that a ‘mathematical method’ serves a technical purpose is not, in itself, sufficient – to obtain protection the claim must be functionally limited to a specific technical purpose.

What was evident from the comments of the US contributors was that reciting the specific technical purpose in the European sense would, in general, meet these requirements in the US. It was also apparent that a similar approach could be applied in Japan and China. Accordingly, when preparing claims suitable for protecting AI and ML inventions throughout the world, while it is of course, important to take account of specific national differences in claim drafting practice, the overall approach to avoiding subject matter eligibility type issues is, nevertheless, similar.

What was also apparent, was that drafting AI- and ML-related applications with an eye for which part of the relevant patent office will likely be examining the application is a strategy that is common to both sides of the Atlantic.

From discussions with my US colleagues, for example, it is clear that the ‘Technology Center’ at the USPTO that is allocated a particular AI or ML-related patent application for examination, can have a significant impact both on the likelihood of receiving rejections of the claimed subject matter as being patent ineligible and on the overall allowance rate. The way in which a patent claim is drafted – even for the same subject matter – can affect the probability of being allocated to a particular Technology Center and hence the chances of having to respond to unfavourable patent eligibility rejections. For example, the rate of patent eligibility rejections could vary from less than 3% (with an 83% allowance rate) for one Technical Center to a patent eligibility rejection rate of around 25% (with a 68% allowance rate) for another.

Ironically, some US attorneys use a specialist AI tool to analyse prospective AI- or ML-related claim language before filing to provide a comparative indication of the relative probabilities of that claim language resulting in an application being allocated to different USPTO Technology Centers. The language can then be adjusted iteratively to maximise the probability of being allocated to the more favourable Technology Centers. This also has resonance for attorneys involved with protecting inventions at the borders of the statutory exclusions before the EPO where the subject matter classification attributed to a patent application can, anecdotally, also affect the prospects for successful grant. For patent applications falling in one particular subject matter classification, for example, an allowance rate of less than 10% has been reported.

Notwithstanding the care that is always necessary when drafting patent applications related to AI and ML, with the rapid growth of AI and ML technologies and their importance to society it seems likely that, over time, patent offices and legislators will develop a pragmatic approach to ensuring that those developing AI and ML-related innovations will be able to obtain fair protection for their efforts with a view to encouraging investment.

This article first appeared in the March 2019 edition of Intellectual Property Magazine. To read the full article, click here.

The Christian Louboutin (“CL”) brand is no stranger to a trade mark conflict. In the US, CL successfully appealed a decision that its red-coloured shoe sole was incapable of trade mark protection, with the US Court of Appeals deciding that the mark had acquired a secondary meaning in instances where “the red outsole contrasts with the color of the remainder of the shoe” in 2012.

The red-soled heel dates back to 1992, when a designer borrowed red nail varnish from a store assistant to lather the bottom of the shoe. Since then, the red sole has become associated with CL.

CL had registered the above Benelux mark with the mark described as consisting “…of the colour red (Pantone 18‑1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)”.

Following the (partial) success in the US, CL was also successful in the EU. A dispute had arisen between CL and the Dutch retailer Van Haren (“VH”), which had been selling red-soled footwear. CL sued VH for trade mark infringement and so began a legal battle which would span more than half a decade.

The District Court in the Hague initially issued a default judgment upholding part of CL’s claims, which VH challenged on the basis that CL’s Benelux registration was invalid under the Benelux equivalent of Article 3(1(e)(iii) of the EU Trade Mark Directive 2008/95; VH argued that the mark consisted exclusively of a shape which gives substantial value to the goods.

The Dutch Court referred the matter to the CJEU (Court of Justice of the European Union) and requested clarification as to whether the “shape” to which Article 3(1)(e)(iii) refers is limited to the three-dimensional properties of the goods, or whether it extends to other non-three dimensional characteristics, such as colour.

The CJEU found in June 2018, in a widely reported decision, that the limitation of the registration was key as it noted “while it is true that the shape of the product or of a part of the product plays a role in creating an outline for the colour, it cannot, however, be held that a sign consists of that shape in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product”. Given that the CJEU determined that the mark did not constitute a shape, the registration did not fall foul of Article 3(1)(e)(iii) and was therefore validly registered.

On account of the CJEU’s decision, the Dutch Court also found that CL’s registration was valid and that VH had infringed it. As a result, CL has been able to stop the further sale of red-soled shoes by VH, whilst a decision regarding any award of costs and damages will be issued in the future.

This case highlights that registered trade mark protection can be a useful tool when seeking to protect less conventional marks. The finding of the CJEU emphasises the level of care which must be taken when seeking to register a mark to ensure that the resulting registration will be valid and enforceable.

Mathys and Squire is well-placed to advise on trade mark protection and enforcement with its specialist trade mark and litigation practitioners. Contact us today for friendly expert advice.

In an article published by The Times, Gary Johnston has his say regarding the issue around IP rights in the fashion industry.

The recent Court of Appeal decision in Conversant Wireless Licensing S.A.R.L v Huawei Technologies Co. Ltd, ZTE Corporation and Ors [2019] EWCA Civ 38 builds on the same court’s decision in Unwired Planet International Ltd & Anor v Huawei Technologies Co Ltd & Anor [2018] EWCA Civ 2344 to firmly establish the English Courts as a forum for considering SEP disputes and the setting of global Fair, Reasonable and Non-Discriminatory (FRAND) patent licences.

We explore further what this decision means.

What are SEPs?

In the field of digital technologies, and in particular telecommunications, standards are used to ensure interoperability.  They allow products from one manufacturer to communicate and operate with products from another manufacturer.  The standards are set by standard setting organisations (SSOs).  SSOs are normally formed from a collection of industry participants, who evaluate technologies for inclusion in a new standard, encourage those participants to contribute their most advanced technologies to that standard and then promote the standard once it has been agreed.

There are various SSOs around the world and each of them operates in much the same way.  The European SSO is the European Telecommunications Standards Institute (ETSI).

Therefore an owner of a patent which relates to a standard set by an SSO (a Standard Essential Patent, SEP) may have a strong and valuable patent right.  However, to avoid this leading to potentially anti-competitive behaviour, ETSI and other SSOs require the owners of SEPs to give an irrevocable undertaking in writing that they are prepared to grant licences of their SEPs on fair, reasonable and non-discriminatory (FRAND) terms.

What is a FRAND licence?

An undertaking to grant licences of SEPs under FRAND terms is designed to ensure that any technology protected by a SEP which is incorporated into a standard is accessible to users of that standard on fair and reasonable terms and that its owner cannot impede the implementation of the standard by refusing to licence it or by requesting unfair, unreasonable or discriminatory licence fees. However, there is no one-size-fits-all solution to what FRAND is and that what can be considered fair varies from sector to sector and over time.  Solutions can therefore differ from sector to sector and depending on the business models in question.  As noted in the decision in Unwired Planet, in practice, the negotiation of licences for SEPs on FRAND terms may be far from straightforward, with the owner of the SEP using the threat of injunction to force the payment of excessive licence fees, or the infringer refusing to engage constructively or behave unreasonably in the negotiation process to avoid paying the licence fees to which the SEP holder is properly entitled, a process known as “hold-out”.

Global licensing

It should be remembered that a patent such as a SEP only applies to the countries in which it is granted and therefore has limited territorial scope.  For example, if a UK SEP is found valid and infringed, a UK Court will only grant relief in respect of the infringement of that patent in the UK.  As Aldous LJ explained in Coflexip SA v Stolt Comex [2001] RPC 9 at [18], the injunction must equate to the statutory right given; a right which has been held to have been validly granted and infringed.  So, for example, a UK Court will only grant an injunction to restrain infringement of a UK SEP.  The same applies to a claim for damages: they will only be awarded for infringement of a UK SEP.

However, the position in relation to a FRAND undertaking is rather different.  ETSI is the SSO for the EU but what is important is that its standards are of international effect.  As a result, the FRAND undertaking given by a patent owner to ETSI in return for the incorporation into the standard of the technology protected by the patent is also of international effect.  It applies to all patents which belong to the same family irrespective of the territory in which they subsist.

As noted in the Unwired Planet decision, in practice SEP holders and infringers (who normally have more or less global sales), if acting reasonably, would therefore agree on a worldwide licence.  They would regard country by country licensing as madness.  A worldwide licence would also be far more efficient.  In particular, for products with a global circulation, SEP licences granted on a worldwide basis may contribute to a more efficient approach and therefore can be compatible with FRAND.

A global licence might well have different rates for different regions and for different standards – for example, if the licensee was a Chinese multinational like Huawei, they might well agree on different rates for China as for the Rest of the World – but again they would not go for country by country licensing.

The decision in Unwired Planet International Ltd & Anor v Huawei Technologies Co Ltd & Anor [2018] EWCA Civ 2344 considered these issues at length and established the English Court as willing to tackle FRAND disputes and get involved in the fine detail of royalty calculations.

Conversant v Huawei [2019] EWCA and the UK as a forum for SEP disputes

The Appeal in Conversant v Huawei [2019] related to four UK patents that had been acquired from Nokia in 2011 as part of a large patent portfolio acquisition.  Interestingly, however, the UK represented only 0.07% of ZTE’s mobile device sales, and only 1% of Huawei’s worldwide sales on which royalties are claimed.  As such, both Huawei and ZTE sought to argue that the English Courts were a forum non conveniens and that instead the issue of a global SEP licence should be considered by the Chinese Courts.  The dispute also centred around whether a global licence would be FRAND and what relief would be granted if infringement were established.

Huawei and ZTE submitted evidence in favour of their assertion that the Chinese Courts were the correct forum by submitting Guidelines issued by Guangdon High People’s Court: “Guidelines of Guangdong High People’s Court on Adjudicating Cases of Disputes Over Standard-Essential Patents (Trial)”.  However, the English Court found that no evidence was presented in the submission of the Guidelines that the Chinese Courts would actually determine or set the terms of a global FRAND licence, and that so far the Guidelines had only been brought in for a trial period.

In the present decision the Court considered that whether or not English Court is the correct forum depends on how broadly you characterise the claim.  Too broadly means you focus on a different property right and different underlying facts.  Too narrowly and you focus only on the relief available in the English Courts.  At the end of the day it was considered that what was at issue was a number of UK rights, and an assessment of whether these UK rights are valid and infringed.

In the end, the Court held that (at point 99 of the Decision):

(i) The UK patents are SEPs;

(ii) Conversant has complied with their ETSI undertaking;

(iii) Huawei and ZTE have not so complied;

(iv) Conversant are therefore entitled to enforce their UK SEPs including a FRAND injunction.

What was potentially also relevant was that there were no equivalent family members in China for the four UK patents at issue.  As such, at point 101 of the Decision it was held that:

“Leaving Conversant to seek a remedy in China would be compel them to advance a case based on different patents.  The Chinese patents are not the UK patents viewed through the lens of Chinese law, but are different property rights applied for and registered in China. They are not even in the same families as the UK patents.  They will have different claims […] I find it impossible to view such a dispute as being the same dispute as that which would arise in the English Court.”.

The Court held (at point 107) that: “Conversant is seeking to enforce UK patents, governed by English law”.  The Court also noted that the appellants were free to pursue their claims in respect of the Chinese patents in the Chinese Courts, and the result of those Chinese proceedings would be taken into account in any global FRAND licence.

As such it was held that the English Courts are the right forum for considering this issue and the fair assessment of a global licence for these SEPs, and therefore cemented the English Court’s position as a forum for the consideration of global SEP disputes and the setting of global FRAND patent licences.

If you would like any more information regarding this article, please contact the author, Andrew White.

Starting a business can seem like a daunting prospect, given that if you Google “startups and fail” there are lots of articles on the percentage of startups that fail before they get going, which could put you off even getting started!

However, by being well prepared and informed before you start the process, you may be able to avoid some of the common pitfalls and become one of the 2 out of 10 startups that succeed.  

Here are our top tips to get you on the right track.

1. Know Your Customer

Kevin Smith of SA One Healthtech Limited is the founder of six technology businesses since 2000, and specialises in generating seed and early stage investments for startups and young, growing ventures. He said, “Before you do anything, know your customer. Know who your customers are, where they are, how many (potentially) there are, what they want, and how much they will be prepared to pay for it. Know the competitive landscape and understand the advantages of your product or service. Knowing your customer will allow you to best define how to present these advantages.”

Whether you have had an idea for an online service or you have devised an invention, a top tip is to start with rigorous market research to ensure that you know the answers to these questions, and have evidence to back it up – potential investors will want to see this, so do it well. It will, of course, also tell you whether or not it is worth pursuing the venture.

2. Sufficient Funds

Developing a successful business invariably costs more than you think it will. When you are generating your business plan, ensure you build in reserves to allow for unexpected expenses, particularly in the development phases. When asking for investment, it is much easier to ensure from the start that you have sufficient funds to complete each stage, than to go back to investors and ask for more. In the worst case, if no additional funds can be obtained, the venture could fail, even before it gets properly off the ground.

Furthermore, and as Kevin Smith points out, “Speed to market is essential, so be sure the funding allows you to deliver your product as early as possible and investors add value to your development and market access where possible.”

3. Stagger IP Protection Costs Where Possible

It is, of course, important to protect your idea (or your Intellectual Property (IP)) to the greatest extent possible, but not all IP protection necessarily needs to be put in place at the very start of the project. If you have devised a product that has some novel technical feature, then a patent application is probably the principal means of protecting it. If you have devised something that is not technically new, but is novel in its appearance (i.e. design), then design registration is probably the more appropriate form of protection for it.

Patent and design applications should usually be filed before there is any non-confidential disclosure of the product, but that does not mean that you cannot disclose the invention to a selected and containable few individuals or companies using a Confidentiality Agreement or Non-Disclosure Agreement (NDA), and some useful information, including templates that can be used, is provided on the UK Intellectual Property Office (UKIPO) website here.

For patent applications, you can file in your home country first and you then have 12 months within which to file corresponding overseas applications. For designs, a similar protocol exists, but the timeframe is six, instead of twelve, months. However, it is important not to file applications too soon in the development phase. Six and twelve months will fly by, and you may have to make expensive decisions about overseas protection before you have finished development and/or have sufficient funds to adopt an ideal protection strategy. Also, a lot can change during that time, so you will need to make sure your application is “topped up” with any additional features or changes before any overseas applications are filed.

Trade marks, whilst often an exceptionally important part of complete ‘concept to market’ process, are slightly different to patents and designs in that you do not have to register your trade mark(s) before they are used or otherwise publicly disclosed. So, whilst it may be important not to wait too long before considering trade mark registration (to minimise the chance of someone else registering something similar in the meantime), this expense can often wait until you are little further into the process, and a trade mark attorney will be able to help you decide how and when to file trade mark applications in your home and overseas markets.

4. Find the Right Manufacturer
It is essential to have the right expertise and guidance in your corner when it comes to getting your product manufactured, and to the right specification and quality. Depending on the type of product, it might seem like a good idea to get it manufactured overseas, but don’t forget that duty rates, shipping costs, cultural differences and communication can all become issues to be considered. It is worth visiting the manufacturer, if you can, and forming a business relationship with their key personnel. Another top tip, particularly when manufacturing in South East Asia, is to use a local agent (who will be familiar with the region, the language and any cultural aspects) to identify a few suitable manufacturers for you.

5. Don’t Commit to Branding and Packaging Without Checking if you are Free to Use Your Trade Mark 
Even if you don’t plan to register your trade mark until you get to the final stage and you are ready to sell your product, it can be a very costly mistake to commit to your branded packaging without checking to see if you will infringe someone else’s trade mark in any of your markets. An IP attorney can help you perform a so-called Freedom to Operate (FTO) search and provide the advice you need. Whilst this will incur some charges, they would be nothing like the expense of having to re-brand and re-package everything later if you find you are infringing someone else’s rights.

6. Protect Your Brand
Finally, do make sure your brand and ‘get up’ is properly protected against copying. Things like names and logos can, and should be protected by way of trade mark registration, but there may be other protectable elements of your brand identity that are also protectable, and an IP attorney will be able to advise. Do ensure that the relevant parts of your brand identity are protected in all of your target markets, although a staggered approach to this can be made if cash flow is an issue early on, and before sales have started to be generated.

Mathys & Squire works with a range of startups, helping them get their businesses off the ground and into the market. Our team work closely with the founders to ensure that their IP strategy aligns to the business objectives of the company. We use our expertise, innovation and creativity to become part of our clients’ success story. 

We have also prepared a downloadable pdf with more information on protecting the IP in your startup.

The issue of patentability of plants produced by essentially biological processes has been at issue since the original tomato and broccoli cases before the EPO’s Enlarged Board of Appeal issued in December 2010. The EPO attempted to put the matter to rest in 2017 by introducing a new rule (Rule 28(2) EPC) which expressly excluded such subject matter from patentability.

In the most recent twist to the story, in a Written Decision published on 5 February 2019, an EPO Technical Board of Appeal has now confirmed that plants produced by essentially biological processes are indeed patentable (T 1063/18).  This may on the face of it seem surprising given the introduction of Rule 28(2) EPC in July 2017. However, for those working in this space, or following the developments in EPO Board of Appeal case law over the last three years or so, this is perhaps not so surprising.  Numerous commentators have questioned the validity of new Rule 28(2) EPC, and arguments have been made that this could leave the member states of the EPC open to financial liability for adopting the rule.

The Enlarged Board of Appeal of the EPO settles questions of law to allow for uniform application of the EPC.  In G2/12 and G2/13 the Enlarged Board held that Article 53(b) EPC does not exclude plants and plant material produced by essentially biological processes as unpatentable.  It is also explicitly set out in the EPC that the Articles of the EPC take precedence over the Rules in case of any conflict.

The Board of Appeal in T 1063/18 found new Rule 28(c) EPC to reverse the meaning of Article 53(b) EPC, and hence to be in direct contradiction with the Article as interpreted by the Enlarged Board of Appeal, such that no conciliatory interpretation of the rule is possible.  Therefore, when faced with determining whether the pepper plants of T 1063/18 were patentable, the Board of Appeal followed the interpretation of Article 53(b) EPC provided by the Enlarged Board, allowing the patentability of such subject matter, rather than the recently introduced rule excluding it.

Some might question whether the case should have been referred up to the Enlarged Board, which would have allowed confirmation of the Enlarged Board’s interpretation of Article 53(b) EPC.  However, as noted by the Board of Appeal at the Hearing, the Enlarged Board’s reasoning and subsequent decision in G2/12 and G2/13 was unambiguous.  As the Board in T 1063/18 was not minded to diverge from the Enlarged Board’s approach, it was satisfied that no new referral was needed.

Furthermore, the Board in T 1063/18 calls into question the introduction of new Rule 28(2) EPC on the basis of an earlier Notice issued by the European Commission on the interpretation of the Biotech Directive, which the Board states has “no legal authority”.  Instead, the Board reasons that only the CJEU can provide a biding interpretation of the Biotech Directive.

Thus, as it stands, new Rule 28(2) EPC has been found to be in conflict with Article 53(b) EPC.  One would expect that other cases on this point before the Boards of Appeal would be decided in the same way.  However, there is a question as to whether EPO Examiners will be under pressure to follow Rule 28(2) EPC, given that the EPO made a policy decision to introduce this rule for consistency with the European Commission’s Notice issued in November 2016.

The EPO has yet to react to the Board’s decision in T 1063/18.  If it wishes to amend Article 53(b) EPC to exclude products of essentially biological processes from protection, this can only be achieved by an intergovernmental conference of the member states to the EPC.  There has been much political lobbying in favour of excluding this subject matter from patentability, and so it might be expected that this will be high on the EPO’s agenda.  On the other hand, this is proving a highly contentious issue, which can only truly be resolved by a decision from the CJEU providing a definitive interpretation of the Biotech Directive.  Therefore, the EPO may choose to defer further amendments of the EPC until such a time as an interpretation has been provided by the CJEU.  There is though no telling when a suitable case would be brought to the CJEU for such a decision to be made.

If you have any questions about this article, please contact Anna Gregson.

We are delighted that Mathys & Squire is in the World Trade Mark Review (WTR) 1000 directory as a recommended firm for 2019. Trade Mark lead partners, Gary Johnston and Margaret Arnott are also named as recommended WTR 1000 individuals.

Mathys & Squire’s trade mark team are leading the way by delivering unparalleled expert advice, whilst providing excellent client service.

Mathys & Squire client, Rigby & Peller said of Mathys & Squire “I find them to be highly responsive, and provide insightful commercial advice without pushing a point of view. I would not hesitate to recommend them”. Further, Kenwood stated that “Mathys & Squire are innovative about what they do. They are not just ticking boxes; they are always trying to come up with better ways of doing things, and are always open to suggestions from our side. We work very closely. Most importantly, with Mathys & Squire, [we] know [we] will be working with a stable team who know [our] business, and can deliver the technical and commercial advice [we] need to protect our IP”.

Mathys & Squire recognises that the effective management of trademark and design portfolios encompasses the delivery of a wide range of services. Our trademark services include:

• trademark portfolio management;
• trademark availability searches (including brand availability analysis for new products and services);
• the filing, prosecution and renewal of trademark applications (in the United Kingdom, the European Union and overseas);
• monitoring and watching services;
• oppositions, cancellation actions and contentious IP proceedings (including litigation);
• anti-counterfeiting and online brand protection and enforcement services;
• the preparation and recordal of trademark assignment documentation; and
• due diligence and IP audit evaluations

Get in touch with our trade mark team to find out how they can help.

Mathys & Squire wish all of our Chinese clients, contacts and friends a very Happy Chinese New Year for 5^th February, the year of the Pig.

For more information about Mathys & Squire’s China team, click here.