We are delighted to announce that Mathys & Squire has been commended in the 2026 edition of The Legal 500 in both PATMA: Patent Attorneys and PATMA: Trade Mark Attorneys categories.
Patent Partners Chris Hamer, Alan MacDougall, Martin MacLean, Paul Cozens, Andrea McShane, Dani Kramer, Philippa Griffin, James Wilding, Sean Leach, James Pitchford, Andrew White and Managing Associate Oliver Parish are all featured in the 2026 edition of the directory.
Mathys & Squire’s trade mark team also received recognition in the directory. From our trade mark practice, Partners Rebecca Tew and Harry Rowe, Gary Johnston, and Consultant Margaret Arnott have been featured in the 2026 edition.
The firm received glowing testimonials for its patent and trade mark practices:
‘The Mathys team is easy and a joy to work with. They have the experience and requisite background to digest complex scientific matters and undertake well-done patent prosecution. I quite enjoy strategizing together and our collaborative efforts. They are pleasant and appropriate in communications, as well as responsive.’
‘Dani Kramer is a pleasure to work with. He is sharp, provides excellent and cost-effective advice and professional services.’
‘I work with the team around partner Sean Leach, who is exceptionally responsive and technically highly competent, as is his team. Pleasant to work with, always transparent, flexible – highly recommended.’
‘Sean Leach is highly skilled technically, a great communicator, an excellent patent attorney, very experienced and very responsive.’
‘Paul Cozens as a standout partner, and Oliver Parish has impressive technical knowledge.’
‘Fantastic team work from an absolutely top-notch team.’
‘Very skilled and knowledgeable.’
‘They are absolutely committed to working with the customer. James Pitchford is outstanding with his knowledge and ability to apply it to IP writing.’
‘They have exceptional experience and expertise.’
‘They are a go to firm for EPO consultation.’
For full details of our rankings in The Legal 500 2026 guide, please click here.
We extend our gratitude to all our clients and connections who participated in the research, and we extend our congratulations to our individual attorneys who have earned rankings in this year’s guide.
Partner Nicholas Fox has been featured in an exclusive titled “Uptake of Unitary Patents Almost A Third of EU Total” in Law360 and “Report reveals unitary patent strategy of IT and engineering leaders” in the World Intellectual Property Review. This is following Mathys & Squire’s recent report, The Use of the Unitary Patent System in IT & Engineering by Partner Nicholas Fox and Associate Maxwell Haughey.
In these articles, Nicholas Fox offers deeper insights into why industry players within the field of IT & Engineering are becoming more open to the Unitary Patent system, whilst noting that some may still remain cautious on account of certain factors such as the likelihood of patent disputes and the cost of translation.
Read the extended press release below.
EU’s new unitary patents now account for 28% of all new patents granted – but major companies split on patent strategy
The EU’s new unitary patents (UPs) now account for 28% of all European patents granted in 2025 to date, up from 26% last year and 18% in 2023*, says leading intellectual property (IP) law firm Mathys & Squire LLP. Of the 19,000 European patents granted in 2024, 5,300 were maintained as UPs rather than as a bundle of national rights.
Mathys & Squire says that the Unitary Patent System, introduced in 2023, is cost-effective if the objective of patent proprietors is to obtain wide geographical protection in Europe. The cost of maintaining a Unitary Patent is roughly equivalent to the cost of maintaining patent protection in four European countries whilst giving inventors a single patent that applies to eighteen EU member states.
In some circumstances unitary patents can, however, be riskier than maintaining rights as a bundle of national patents. The primary risk is that a single court decision could see the patent revoked in all countries where it has effect.
According to Mathys & Squire’s Use of Unitary Patent System: IT & Engineering report, uptake of UPs varies significantly by technical field. The highest uptake of UPs is in civil engineering, where 39% of European patents granted in 2024 were maintained as UPs, up from 28% in 2023. Within the sectors sampled, the Defence sector had the lowest uptake with only 11% of defence patents granted in 2024 being maintained as UPs, that being an increase from 6% of patents granted in 2023.
Nicholas Fox, Partner at Mathys & Squire and European Patent Attorney, explains that uptake of UPs is typically lower in sectors requiring patents in only a few countries. The Oil and Gas sector is a good example of this. In many cases, oil and gas companies tend to only need patent protection only in the North Sea and hence often only in the UK and Norway. Such companies gain little from using UPs. Businesses in sectors needing broader geographical protection benefit more.
Says Fox: “In many sectors, Unitary patents are fast becoming one of Europe’s main patent types. They’re increasingly displacing the old ‘bundle’ system that requires separate validation in each country. They can be a cost-effective way of securing broad geographic protection for an invention in Europe. Adoption of unitary patents is, however, uneven across different technologies and amongst different companies even when companies operate in similar fields.”
Small businesses make proportionally greater use of unitary patents than large businesses
The slow uptake of UPs in some fields is partly due to translation requirements. In many IT and Engineering fields (e.g. telecoms), European Patents are typically maintained in countries where full translation isn’t needed, including the UK, Germany and France. Maintaining rights only in these countries can be sufficient for many companies operating in these fields.
The need for full translations to obtain a UP can be a significant factor behind the slow adoption rate of UPs in IT and Engineering. For companies with large portfolios, costs can mount up, as patents prosecuted in German or French must be translated into English, and those in English must be translated into any EU language.
This is backed up by research which finds that small and medium sized enterprises (SMEs), who normally have far smaller patent portfolios are making greater use of the unitary patent than large businesses. SMEs accounted for just 23% of European patent filings in 2024 but obtained 36% of all UPs. Large businesses accounted for 69% of all European patent filings but only 57% of UPs. Universities and public research organisations account for the remainder of filings and UPs.
Fox says another reason for lower uptake among large businesses is uncertainty over the role of the new Unitary Patent Court (UPC). The UPC centralises patent disputes in a single court with authority across Europe. However, Fox says these concerns should ease as the court builds a track record of high-quality and predictable rulings.
Adds Fox: “Small businesses appear more enthusiastic about the new unitary patent system. The annual renewal fees to maintain multiple national patents account for a bigger share of their budgets than for large businesses.”
“Some large companies have taken a wait-and-see approach to the UPC. The UPC’s rulings have been consistent so far, giving businesses greater confidence in the system. We therefore expect large businesses to gradually increase their use of the unitary patent system.”
“Businesses are still weighing the costs and benefits of the new system. Broad European coverage can be attractive, but in fields with more frequent disputes, the risk of one court deciding everything across Europe is enough to make them hesitate.”
Leading businesses in tech and engineering take sharply different approaches
Mathys & Squire’s research shows significant variations in UP uptake in different sectors and between companies operating in the same sector.
In Automotive and Aerospace, Mercedes-Benz and Airbus have obtained UPs, while BMW, Boeing and Rolls-Royce have yet to meaningfully engage with the new system. Across the wider transport sector, UPs made up 21% of all European patents granted in 2024, up from 14% in 2023.
Similar variations are to be found within the Defence sector. Overall, engagement with the Unitary Patent system in the Defence sector has been limited with only 10% of European Patents in the sector granted in 2024 being maintained as UPs. Many Defence companies have either not engaged at all with the new UP system or have been highly selective in doing so. By way of example, only 6% and 3% of European patents granted in 2024 to Leonardo and Rheinmetal respectively were maintained as UPs. In contrast, BAE Systems chose to maintain 36% of their patents granted in 2024 as UPs and ThyssenKrupp chose to maintain all its European patents granted in 2024 as UPs.
In Digital Communications, UP uptake has also lagged, climbing from 11% in 2023 only to 18% in 2024. Ericson, and Samsung each converted large numbers of their European patents into Unitary Patents. But as with other areas of technology there is significant variation amongst the biggest filers. Some companies, like Lenovo, maintained all of their European patents granted in 2024 as unitary patents, while Google and Microsoft obtained no unitary patents and instead maintained their European patents as bundles of national rights.
The research also shows some large companies vary their level of engagement strategies across different technologies. For example, Qualcomm maintained roughly two-thirds of its semiconductor patents as UPs in 2024. But in the field of digital communications, the share of patents maintained by Qualcomm as UPs was only 30%.
* The 2023 figure shows the share of European patents that were filed as UPs since the regime came into effect
Mathys & Squire Partners Chris Hamer and Laura Clews, and Head of Consulting Lyle Ellis have been featured in “Patents on a Plate” by Protein Production Technology International (PPTI). They provided commentary on how to protect innovations and manage intellectual property in the alternative proteins industry.
The article in PPTI highlights how intellectual property is a crucial pillar of the industry, as innovation within protein production is evolving rapidly in response to growing consumer interest in sustainable and ethical food, from fermentation-based proteins to cell-cultured alternatives. Intellectual property assets, including patents, trade marks and trade secrets, are vital in preventing competitors from exploiting your innovation, but they also play a significant role in shaping how innovation develops.
Partners Chris Hamer and Laura Clews discuss how recent years have seen food companies demonstrating a greater recognition of the importance of IP, for example in attracting investors, as well as the necessity of a robust IP portfolio, spanning multiple jurisdictions, for start-ups in the industry. Head of Consulting Lyle Ellis touches on the tricky balance between maintaining exclusivity and ensuring that key technologies are accessible to others in the sector, evaluating the trade-off between patents and trade secrets.
You can read the full article here.
Partner Max Thoma has recently been featured in Law360 discussing the recent proposal by the UK Government to limit AI generated design applications in ‘Sweeping UK Reforms A Mixed Bag For Simplifying Designs’.
In the article, Max discusses how applicants have previously been able to apply for IP protection on design that have solely been created by AI. The new ruling would aim to prevent the UK design system becoming overwhelmed by a large number of applications, and ensure human-created designs do not have difficulty in being validly registered as a result.
Read the extended press release below.
The UK Government is proposing to change the law to prevent a flood of requests for the registration of completely AI generated designs says intellectual property (IP) law firm Mathys & Squire.
The proposal comes as part of a wide-ranging consultation launched by the Government on the intellectual property laws related to designs. Registering designs with the Intellectual Property Office can protect the appearance, shape or decoration of a product from being copied.
Unlike in other areas of intellectual property, UK design law contains provisions that allow protection for designs entirely generated by computer and without a human “author”.
Max Thoma, Partner, of intellectual property (IP) law firm Mathys & Squire comments: “The Government is worried by the possibility that the UK design system could be flooded with thousands of AI generated design applications. In theory AI tools churning out designs that are then registered could block new products from entering the market and make it more difficult for human-created designs to be validly registered.”
The consultation also proposes the introduction of an examination process for registered design applications in some circumstances. This would mean that some design applications will need to be reviewed and approved by the Intellectual Property Office.
Max Thoma says that this change is being proposed as some designs were being registered when they were invalid. In some cases businesses had been using those invalid design registrations to request the removal of a competitor’s product from online shopping sites.
There are number of other proposals in the consultation document including a proposal to make it easier to register animated designs.
Head of Trade Marks and Partner Claire Breheny has been featured in The Grocer providing insights on the growth of the non-alcoholic drinks industry in publication, ‘Non-alcoholic beer and cider trademarks on the increase’.
In the article, Claire provides commentary on how the preferences of the younger generation is a significant factor in the growth of the non-alcoholic drinks industry, and how recent trade mark applications is a direct indicator of this shift.
Read the extended press release below.
The number of new UK trade mark filings for non-alcoholic beer and cider surged 20% to 1003 from 833 and 19% to 515 from 433 respectively in the last two years*, says Mathys & Squire, the leading intellectual property law firm.
Mathys & Squire says that the number of new alcohol-free trademarks and brands being launched reflects the growing importance of the segment to the drinks industry.
In 2024, non-alcoholic beer trade marks accounted for 37% of all 2737 beer trade marks and 66% of all the 782 filings for ciders.
These figures show that non-alcoholic brands are on the rise as beverage companies continue to respond to demographic shifts around alcohol consumption.
This surge in non-alcoholic drinks reflects a decline in alcohol consumption by Generation Z (those born between 1997 and 2012), which has a higher proportion of individuals who prefer alcohol-free options.
Many young people in Generation Z are choosing non-alcoholic options to align more with their healthy lifestyles spurred on by celebrity influencers such as Spiderman actor Tom Holland.
Also, the UK’s growing diversity means many consumers abstain from alcohol for cultural or religious reasons. These lifestyle and demographic shifts are increasing demand for alcohol-free beers and ciders.
People often choose non-alcoholic beers and ciders, as opposed to standard soft drinks, as they allow them to socialise with others who are drinking alcohol without feeling excluded.
Beverage companies are innovating in the non-alcoholic sector to meet this new demand and protect profit margins amid slower growth in the alcoholic beverage market. In the last two years, alcoholic beer and cider trade mark filings grew 7% and 6%, respectively.
Claire Breheny, Head of Trade Marks at Mathys & Squire says: “The surge in trade marks for alcohol-free drinks underlines how quickly businesses are responding to the shift in consumer priorities. By drinking less alcohol, the younger generation are redefining the R&D and marketing spend of the drinks industry. You can see the impact of that in any supermarket.”
“Companies that fail to innovate in this emerging alcohol-free space fear missing out on one of the fastest-growing areas of the industry.”
New 0.0% branding allowing big brewers to advertise at prime time
Leading brewers such as Heineken, Carlsberg, and Guinness have all launched 0.0% ranges. Alcohol-free drinks give these brewers access to prime-time advertising and sports sponsorships that are off-limits to alcoholic products under current advertising rules.
Retailers and hospitality venues have responded to the alcohol-free surge by expanding shelf space and boosting visibility for alcohol-free products in stores, bars and restaurants.
Adds Claire Breheny: “The surge in trade mark filings suggest where the market is heading.”
We are delighted to announce our partnership with MassChallenge UK, a global network for startups and innovators. Through this collaboration, we will provide our intellectual property expertise to assist with the development of patent strategies for early-stage businesses.
MassChallenge UK is an international zero-equity startup accelerator, enabling businesses to make a meaningful impact in their industries. Our partnership will bring our specialist knowledge to the impressive network of entrepreneurs at MassChallenge UK, helping to foster innovation and support the startup ecosystem.
Through our involvement with MassChallenge UK, we will encourage the growth and development of each business through vital intellectual property advice, helping founders to avoid common IP pitfalls and create strong foundations for long-term value creation.
We will deliver tailored workshops, provide 1:1 guidance for specific patent-related challenges across a diverse range of sectors, and, beyond individual support, offer thought leadership and strategic insights to the wider MCUK community.
Partner Paul Cozens said: “We’re delighted to be supporting MassChallenge UK and its inspiring cohort of founders. Protecting and leveraging intellectual property is essential to long-term innovation, and we’re proud to help startups build resilient businesses underpinned by strong legal foundations.”
David Kinsella, Managing Director at MassChallenge UK, added: “We’ve seen firsthand how crucial IP understanding is for early-stage startups. This partnership with Mathys & Squire brings invaluable expertise into our programme, enabling our founders to make confident, informed decisions about their innovations and the impact they’re creating.”
Find out more about the partnership on their website here.
As London hosts DSEI UK, one of the world’s largest defence trade shows, a look at how the patent system deals with matters of national security.
Each year, a very small number of patent applications are classified as secret and vanish into the patent system without trace, re-emerging perhaps only years later, if at all. What does that mean in practice? How can the idea of such secret patents be reconciled with the rationale for having patents? And can there continue to be a place for secret patents given the ways of modern innovation?
A not so secret history
Britain in the 1850s. The time of the Great Exhibition and the Crimean War. The government, having only recently set up the Patent Office, moves to halt publication of John Macintosh’s patent application for “Incendiary materials for use in warfare”, which proposes means for attacking the port at Sevastopol. The application is eventually allowed to publish, but only after the war concludes with a peace treaty. The appetite for secrecy having been whetted, the government soon passes an Act formalising the process of restricting publication of certain patent applications. And then for good measure establishes the first Official Secrets Act.
Secret patents (strictly, only ever applications) have existed ever since. Over the subsequent decades, restrictions were issued for various military innovations: artillery fuses, rifled ordnance, explosives and, somewhat alarmingly, mechanisms for synchronising a machine gun to fire through aircraft propeller blades. Later restrictions were applied to radar, atomic weapons and the hovercraft. We know of some of these secret patents because they were subsequently declassified. Many others have not been. Some perhaps never will be.
The usual reason given for preventing publication of certain patent applications was, and is, that they describe inventions which would be problematic for national security should they ever become public. This also prevented details of sensitive inventions moving abroad; no country would wish to cede a potential technological advantage to a foreign adversary. But another reason was that successive governments wanted to bolster their own national arms manufacturing industries.
This led to some friction between the Patent Office, which had initial access to the patent applications and insisted on maintaining inventor confidentiality, and the military, which wanted access to the inventions as early as possible.
Caught in the middle, inventors would sometimes be frustrated that commercial opportunities were lost because a patent had been classified. At other times patriotic (or commercial) offers of inventions would be ignored or rebuffed by the government. Compensation, when offered, was sometimes generous but not always.
All the while, the attitude to secret patents was evolving. World events influenced what was invented as much as what the government considered necessary to keep secret and for how long. The net effect tended to a ratcheting up of restrictions.
The 1930s saw arguments for abolition of secret patents entirely. Perhaps, it was argued, it would be more effective to publish all patent applications and so confuse adversaries as to what was actually being adopted. Or perhaps full disclosure would serve to suggest that there must be something even better being kept secret. Such thinking was scuppered by the onset of another world war, which prompted additional defence regulations, and the subsequent Cold War which saw a further tightening up of secrecy laws.
Once something makes it into law it can be difficult to remove. When the UK Patents Act was last fundamentally revised, in 1977, the Lords proposed removing security provisions from the Act altogether, only for the relevant sections to be promptly re-inserted by the Commons. “We can go on living with it for the time being,” was one legislator’s observation. And so we do.
Secret patents in practice
The process at the UK IPO for handling secret patents is governed by sections 22 & 23 of the UK Patents Act (1977), which allows for patent applications deemed “prejudicial to national security” to be withheld from publication. Not only the application, but the information disclosed within it. The process is both universal and unusual, in that all UK patent applications are subject to it, at least initially, but the latter stages are so rare that most patent attorneys are unlikely ever to encounter them.
Every patent application filed at the UK IPO – whether national, European or international PCT applications – is routed via “Room GR70”. There, one of a small team of patent examiners reviews the contents of the application and consults a document provided by the Ministry of Defence. In the vast majority of cases, patent applications proceed as normal. Very occasionally, however, an application takes a different path.
These applications are marked according to their perceived sensitivity (Official, Official Sensitive, Secret or Top Secret, with possible additional caveats) and subsequently searched and examined in the usual way, but otherwise, while the restrictions are in place, they remain in a form of patent purgatory: they cannot be published, so they cannot be granted.
While the decision to issue a secrecy direction lies initially with the UK IPO, ultimately it is for the government to decide whether or not to maintain it. Reviews are done periodically, but for the applicant the process is opaque; the restrictions may simply be lifted at any time.
Once a section 22 direction has been issued, the resulting restrictions are onerous and the overheads considerable. Patent attorneys require the relevant level of security clearance to work on such applications, and their offices need to be suitably secure. It is forbidden to communicate the content of the application to others without permission. Breaching the restrictions is a criminal offence, punishable by fine and/or up to 2 years imprisonment. Permission must be sought to discuss the subject matter for commercial purposes or for filing related patent applications abroad.
Unless the government sees fit to declassify a secret patent the restrictions remain in place, essentially in perpetuity. The only way to discharge the responsibility for keeping secret the related papers is to withdraw the patent application.
Secret patent technologies
The term “prejudicial to national security”, which determines which patents become secret, is not precisely defined. Some technologies (such as those relating to nuclear, chemical and biological weapons) are self-evidently problematic, but others become so as technologies and threats evolve. Previous concerns about IEDs are now worries about drones and AI. A partially redacted version of the list made public over a decade ago detailed over 40 categories of technology, some likely expected (“fighting vehicles”), some somewhat vague (“specialist surveillance devices”), others remarkably specific (“accelerometers of accuracy better than 10-3g”). The contents of the full list, however, are classified.
Despite the seemingly broad scope of the restricted technologies list, the bar for an application to be classified appears to be high. Even a brief search of a patents database will show many applications with an explicitly stated military purpose, albeit an applicant simply stating that an invention is of relevance to the military does not necessarily make it so. And some applicants, wary of the restrictions which might be imposed, deliberately avoid describing their inventions in ways which may result in their patent applications being classified.
Secret patents by numbers
Inevitably, there is limited information on the number of secret patent applications. From the limited statistics reported by the UK IPO, it issues a secrecy direction on average once a week, a tiny fraction of the approximately 20,000 patent filings it handles each year (so unlikely to be a good metric for assessing the current state of innovation in the defence industry). Unsurprisingly, the vast majority of applications issued with such directions are filed by defence industry applicants, directly to the secrecy office.
Of all the patent applications filed since 2000, 1,755 were subject to secrecy directions, of which 1,100 of these directions remain in force. Meanwhile, 1,255 applications were declassified. The rate of declassification has evidently decreased sharply over the last couple of decades. However, since the total number of secret patents, including those which pre-date 2000, is not publicly known, it is unclear whether this decrease is because off an increased emphasis on secrecy or simply a result of fewer secret patents remaining to declassify. Restrictions on some particularly sensitive applications, such as those relating to the development of nuclear weapons, have reportedly been in place for over 80 years and are expected to remain so indefinitely.
The future of secret patents
Secret patents have a long history. But is there a place for them in the present world? The style and pace of military innovation has changed greatly since secret patents were first introduced. Barriers to entry are lower. There is less reliance on bespoke heavy engineering, more on software and AI. Many technologies are dual-use rather than exclusively military. What is proving most “prejudicial to national security” is now often based on commercial off-the-shelf products, many of which are cheap, easily available and able to be rapidly deployed in response to changing circumstances. Digital technologies have also allowed technology to be easily, widely distributed. There has been a democratisation of military technology. Innovation is (yet again) outpacing and side-stepping legislation.
So what purpose do secret patents serve? How effective have secret patents been in preventing the dissemination of technology? They are, in a sense, an attempt by governments to prevent genies from escaping their bottles. The list of proscribed technologies is very broad. There are very many bottles; is it realistic to expect to stopper them all? Historically, the significance of some inventions has been under-appreciated. In truth, while we may wish that certain inventions should not be widely available (see nuclear weapons), it is probably wishful thinking that they will remain so (see nuclear proliferation). Neither do secret patents prevent independent invention. Or espionage. What they do provide is a sense that a tide is being held back. More reassurance than reality.
Secret patents are an anachronism and are becoming increasingly irrelevant. They exist despite their inherent contradiction. The foundation of the patent system is a deal between the state and the applicant, wherein the state grants an exclusive, time-limited commercial rights in exchange for the public receiving a full description of how the invention works. Patents ostensibly exist to encourage the dissemination of inventions. Secret patents run counter to this ethos. Yet despite minor revisions over the years, and serious proposals to abolish the secrecy provisions altogether, secret patents persist. It seems we will need to go on living with them for the time being.
Sources
- Inventions and Official Secrecy: A History of Secret Patents in the United Kingdom, T. H. O’Dell,
Oxford University Press (1994) - UK IPO Facts and figures (2024)
- UK IPO Guidance Guidance: Technology prejudicial to national security or public safety
As explored in “The Line Between Beauty and Science I: Patent Strategies for Biotherapeutic Cosmetics”, in the field of bio-cosmetics, “use” claims are a valuable tool for protecting innovations involving known biotherapeutic molecules that have been found to serve a new cosmetic purpose. However, as this article explores, patent applications for such use claims must be carefully drafted to avoid falling within the European Patent Office’s (EPO) exclusions for therapeutic methods. Below, Partner Samantha Moodie and Associate Clare Pratt examine relevant EPO case law and offer practical guidance for drafting successful patent applications in this evolving area.
Cosmetic use claims: The importance of distinguishing between therapeutic and non-therapeutic effects
Under the European Patent Convention (EPC), patents cannot be granted for methods of treating the human or animal body by surgery or therapy, or for methods of diagnosis practised on the human or animal body (Article 53(c) EPC). Nevertheless, the EPO has allowed Applicants to navigate around such exclusions and protect new and innovative medical treatments by means of purpose-limited product claims (i.e. “compound X for use in the treatment of disease Y”), wherein the use of compounds or compositions in therapeutic methods determines patentability.
Crucially, cosmetic uses or treatments are not excluded under Article 53(c) EPC.
When a known compound is identified as having a new cosmetic use, non-therapeutic method claims (rather than purpose-limited product claims) can be pursued at the EPO. For example, claims may be directed towards: “Use of compound X in the cosmetic treatment of Y,” “cosmetic use of X for purpose Y,” or “non-therapeutic use of X for purpose Y.”
The EPO has acknowledged that reciting “cosmetic use” or “non-therapeutic use” in such cosmetic use claims excludes (or disclaims) any therapeutic effects that could be considered to fall within the scope of the claim, and which would otherwise render the claim unpatentable under Article 53(c) EPC. However, as confirmed in the EPO’s Board of Appeal decision T 36/83, this disclaimer language is only allowable where products have a cosmetic effect that is clearly distinguishable from any therapeutic effect. In the case in question, a claim directed to “Use as a cosmetic product of thenoyl peroxide” was found to be allowable. The Board considered that the “cosmetic” disclaimer was allowed because the medical use of thenoyl peroxide to treat acne could be distinguished from the cosmetic use of thenoyl peroxide to cleanse healthy skin.
Drafting tip: When drafting ‘cosmetic use’ patent applications, it is advisable to include basis for disclaimer wording, such as “cosmetic use” and/or “non-therapeutic use”, to clearly exclude non-patentable therapeutic effects from falling within the scope of the claims.
Cosmetic use claims: The challenge of inextricably linked effects
Difficulties arise when a molecule exhibits both therapeutic and cosmetic effects that are inextricably linked and cannot be clearly separated. In this situation, where a cosmetic method has an underlying (even if unintended) therapeutic benefit, the exclusions under Article 53(c) EPC are often applied, even if the Applicant does not intend to cover any therapeutic application.
For example, in T 290/86, a cosmetic treatment relating to the removal of plaque from teeth was considered unpatentable as this method was held to inevitably prevent tooth decay, which has a therapeutic effect. A key factor in the Board’s decision was the discussion in the description of the beneficial effects of removing plaque. The Applicant had described that plaque is a dominant etiological factor in caries and periodontal disease and that the removal of plaque was beneficial in those conditions. The Board therefore took the view that cleaning plaque from teeth will always inevitably have a therapeutic effect which could not be separated from any cosmetic effect, and which rendered the use claims unpatentable.
Similarly, in T 780/89, claims to the use of certain compounds for non-therapeutic immunostimulation (stimulation of the body’s own defences) were not allowed. The Board of Appeal took the view that immunostimulation constituted a prophylactic treatment because infection is prevented.
In these instances, since the therapeutic use could not be separated from the non-therapeutic, cosmetic use, the inevitable therapeutic effect of the biological molecule could not be excluded by the use of the “cosmetic” or “non-therapeutic” disclaimer language.
Drafting tip: If protection is only sought for a non-therapeutic, cosmetic use, Applicants should avoid including statements in the description that relate to or describe any alleged therapeutic benefit of the cosmetic molecule. Such discussions may undermine any arguments that the claimed use is purely cosmetic.
Cosmetic use claims: When dual effects are acceptable
Despite these decisions, there are some useful examples of cases at the EPO where Applicants have successfully argued that a cosmetic use is patentable, even though the method potentially has a therapeutic effect alongside the claimed non-therapeutic effect.
In T 144/83, claims were granted to a method of weight loss using an appetite suppressant. The Board acknowledged that weight loss methods could have a therapeutic purpose for treating obesity but could also have a cosmetic purpose for enhancing appearance, and that in some cases, these therapeutic and non-therapeutic uses can be adjoined “without a sharp distinction”, meaning that it could be difficult to distinguish between them. However, in this case, the Applicant’s claim specified weight loss “until a cosmetically beneficial result is achieved,” without referring to obesity treatment. As a result of this wording, the Board held that the claim was limited to a cosmetic purpose, and the exclusion under Article 53(c) EPC should not apply.
Drafting tip: If it is difficult to distinguish between cosmetic and therapeutic effects, including carefully crafted disclaimers (“until a cosmetically beneficial result is achieved“) can be sufficient to exclude any potential overlapping therapeutic effect.
More recently, T 1916/19 provided further guidance on situations where cosmetic uses are patentable even when there is a potential overlapping therapeutic effect. The application related to a composition with antimicrobial effects. At first instance, the EPO rejected the application on the ground that the antimicrobial effect would inherently provide a prophylactic treatment for pathogenic bacteria. The Board of Appeal however reversed this decision and held that there were some realisations of the claimed method that were not therapeutic. In particular, the Board took the view that the removal of bacteria from healthy skin is not necessarily prophylactic, and that the presence of pathogenic bacteria on the skin of a healthy individual does not necessarily lead to a pathological state. Further, they also acknowledged that the removal of non-pathogenic bacteria could provide a cosmetic effect by reducing unpleasant body odour. As a result, the application proceeded to grant with both a non-therapeutic method claim, covering the cosmetic use, and a purpose-limited product claim, covering the therapeutic use.
A key persuading factor in this case was the argument that the prophylactic aspect of the claimed method would not be encompassed when the method was performed on a “healthy individual”.
Drafting tip: For those inventions involving compounds that have both a therapeutic and non-therapeutic effect, whether these are considered “inextricably linked” will depend on the information provided in the application. Where there is more than one use, these different uses should be clearly distinguished in the application. If there is a possibility of the use being considered to involve therapeutic and non-therapeutic effects that are linked, it is advisable to include separate definitions of the patient group or consumer for each use. For example, when claiming a non-therapeutic, cosmetic use, it may be useful to define the user as a “healthy individual”.
When Applicants are interested in claiming therapeutic uses alongside cosmetic uses, a clear definition of the diseases that can be treated should be included alongside data that demonstrates the intended therapeutic effect. In addition, user groups relevant for the cosmetic use and separate data demonstrating the cosmetic effect should also be included.
Conclusion
Given the blurred line between cosmetic and therapeutic effects in cosmetics containing biological molecules, precise and careful drafting is essential. Where dual effects are possible, patent applications should distinguish uses, define user groups, and support claims with appropriate data. With the right approach, both cosmetic and therapeutic claims can co-exist within the same application, offering robust and flexible IP protection.
An interview with Mathys & Squire Partner Stephen Garner was recently featured in ‘The flaw that landed Sanofi a win in the rare disease space’ by Life Sciences Intellectual Property Review. He provided commentary on Sanofi’s wins against Centogene at the European Patent Office in cases for which he was lead counsel.
The cases concerned patents for monitoring and diagnosing Gaucher’s disease, a rare, inherited metabolic disorder, by tracking the levels of a biomarker. Ultimately, the Technical Board of Appeal revoked both patents on account of a lack of key information about how to obtain the antibodies necessary for detecting the biomarker.
In the article in LSIPR, Stephen Garner, who worked alongside Partner Alexander Robinson on the cases, shares his insights on the EPO’s approach to patent disputes and how they tackled the challenges which arose in these cases. His interview highlights how patent attorneys must view each case on its own merits. Although biomarkers are generally patentable at the EPO, in this instance, the biomarker was not a standard antigen, which called into question the use of immunoassays in the claims.
To read the full article click here.
Following the release of her album ‘The Life of a Showgirl’, Taylor continues to demonstrate that intellectual property (IP) is not just a legal asset, it’s a keystone of brand power and control. Taylor has relentlessly protected her IP through several trade mark filings and reclaiming control over her master’s by re-recording her albums and branding them as ‘TAYLOR’S VERSION’. She has turned IP protection into both a business strategy and a form of artistic empowerment, but it doesn’t stop there.
Just days before announcing The Life of a Showgirl, her company, TAS Rights Management, LLC, filed a series of US trade mark applications including ‘THE LIFE OF A SHOWGIRL’, ‘TLOAS’, and ‘T.S’. These applications span a wide range of goods and services, from music and live entertainment to merchandise like jewellery, stationery, bags, and even fan clubs. It’s a clear indication that a larger rollout likely including a tour, extensive merchandise, and fan experiences is already in the works. By securing these marks early, Swift ensures she has full control over the commercialisation of her new era, while simultaneously safeguarding her brand from unauthorised use. This level of foresight highlights the strategic value of IP in the entertainment industry, not just for protection, but for monetisation and brand integrity.
This offers a timely reminder of how critical IP awareness is in any commercial venture. IP filings aren’t just a box to tick after launch, they’re part of the launch. Timing is everything as filing too early can tip off competitors, but filing too late can leave valuable assets exposed. Strategic trade mark control therefore allows artists to own their narrative, manage market timing, and prevent exposure and unauthorised use. For Taylor Swift, it’s not just about music, it’s about owning every piece of the story.
Click here to read our first article following the IP protection of Taylor Swift.
