This was the question posed in Smith & Nephew’s application for a declaration of non-infringement for their silverised wound dressing.
When considering the question, ‘What is the true construction of “between 1% and 25%”?’, at first instance, Mr Justice Birss applied the ‘significant figures’ approach. It was determined that the range “1-25” means “0.95-25.5” and does not include 0.77, thus concluding no infringement. The Court of Appeal disagreed, however, and used a ’rounding-up’ approach to determine that “1-25” means “0.5-25.5”, thus concluding infringement.
This decision presents interesting options when drafting a patent application, and careful consideration should be taken when choosing the number of significant figures provided in the description. In prosecution it seems that simply reciting a lower limit of e.g. “1” in a claimed range where there is basis for reciting “1” or “1.0”, might provide broader claim scope.
In opposition, there might be potential added-matter issues if a claim recites a lower limit of e.g “1.0”, and there is only basis for a lower limit of “1”. If a range with a lower limit of “1” indeed is a broader range than one with a lower limit of “1.0”, it would be impermissible to amend “1.0” to “1”, and it may therefore not be possible to remove the added-matter without significantly limiting the claimed range.
The full decision can be found at: http://www.bailii.org/ew/cases/EWCA/Civ/2015/607.html
Tie International Business Plan Competition is one of the world’s most prestigious business-plan and start up competitions. Companies that get through can gain exposure, prize money, and support. The competition is open to both students and non student teams, and is split into two streams. For more information please see the link below.
http://tie.org/tie-international-start-up-competition-us/
It has been announced that the UPC London Division will be based in Aldgate.
Innovative businesses based in the UK are entitled to pay significantly reduced corporation tax. Many business leaders are unaware of how generous the UK Patent Box scheme can be, or they simply assume that they won’t qualify.
With planned changes to the Patent Box scheme due to come into effect from next year, regardless of who wins the General Election, now is the time to check whether your innovation could qualify you for reduced taxation.
Patent Box is not a tax avoidance scheme, it’s a UK Government sponsored programme designed to give financial rewards to the UK’s most innovative businesses and incentivise them to keep on creating more innovation. If you already qualify for R&D tax credits, then there’s a good chance that you could also qualify for Patent Box, since the two programmes are designed to work together.
The current UK Patent Box scheme provides for a generous 10% corporation tax rate on profits derived from UK, EPO and certain other European patents. Profitable businesses already holding patents or with patents applied for should have opted into the scheme, or at least have investigated what their tax savings could be within the scheme.
Businesses who perhaps have not filed for patents in the past should seriously consider their patent and innovation strategy in the near future if they want to qualify.
Since the scheme launched in 2013 we have helped a large number of clients to file strategic patent applications in order to maximise their tax benefits, in addition to protecting their Intellectual Property.
It has recently been announced that the generous regime will be changing from July 2016, although importantly companies that qualify before this date can still benefit until 30 June 2021 from grandfathering of the current rules.
With the start of the new Tax Year, now is a good time to think about whether you can qualify. Innovative groups need to be thinking about:
• Their patent strategy and what patents they could hold
• Where their R&D functions are undertaken
• The impact of the regime on new product launches
Carol Johnson, formerly at HMRC and now a senior manager on the Innovation Reliefs & Incentives team at KPMG, has said “Businesses should be reviewing their position now, to see whether they can benefit from the current regime and grandfathering before the rules
change in 2016.”
If you are uncertain about Patent Box, and whether you might qualify, or even what’s involved in making a claim, Mathys & Squire have a dedicated team to help you plan your Patent Box strategy. We will be happy to provide an initial free of charge consultation to any business which has questions about Patent Box.
Portugal has become the 8th country to deposit it’s instrument of ratification of the UPC.
In Cambridge, we are proud to sponsor Charles Cousins, elite British Rower, who is working hard towards his goal to win gold in Rio 2016.
Charles comments, “My dream is to win an Olympic Gold medal, and through support from Mathys & Squire and a few other sponsors I am one step closer. The workman is always more important than the tool. However, in this game, where races can be won or lost by 0.01 of a second, the best tools can help. Now that I have one of the best boats (in my opinion) there is no excuse not to go out there and win some races”
We have been following Charles’ amazing achievements, and look forward to working with him in the future.
Trading, planning on trading, or manufacturing in the UAE? Protect your mark now.
The UAE is already a notoriously expensive country in which to pursue protection and it has now been brought to our attention that the Government of the UAE plans to increase official fees associated with IP protection from 29 May 2015 onwards. For trade mark protection, this will mean a 100% increase.
If you have commercial interests in the UAE market (current or future), we would advise that you seek trade mark protection as soon as possible so as to avoid these increased fees.
We of course can organise protection on your behalf and so please contact us now if you have an
interest in pursuing this.
The number of countries now party to the Madrid Protocol system for the protection of trade marks internationally breaks the 100 mark! The OAPI became the 93rd Member and will accede to the Protocol on 5th March 2015. The OAPI comprises Benin, Burkina Faso, Cameroon, the Central African Republic, Chad, Comoro Islands, Congo, Equatorial Guinea, Gabon, Guinea, Guinea-Bissau, Ivory Coast, Mali, Mauritania, Niger AND Senegal and Togo. The Madrid Protocol system is an extremely cost effective means by which to secure trade marks on a truly international stage. The beauty of the system is that it dispenses with overseas attorney fees at the point of application (often at all should no objections arise) thereby reducing costs significantly.
A Community design application can be filed with a valid priority claim at a national Patent Office, when the deadline falls on a closed day at said national Patent Office.
The design in suit had a priority period which expired on a normal working day at OHIM. However, the day was a national holiday in Croatia and the application was filed the following day at the Croatian Patent Office, taking advantage of the national holiday to preserve the priority claim.
Initially, OHIM dismissed the priority claim out of hand, on the basis that the application had been filed more than 6 months after the priority date. Reasoned arguments were filed in response, citing inter alia the relevant provisions in Council Regulation (EC) 6/2002, Commission Regulation (EC) 224/2002, the Paris Convention and Article I-4 of the EU Constitution. An appealable decision pursuant to Article 40 CDIR was also requested.
In response, OHIM issued a notice of acceptance instead of an appealable decision. The notice reiterated the loss of priority right, on this occasion indicating that only public holidays in Spain would cause the priority deadline to be carried over to the next working day. In our view this discriminated against applicants outside of Spain and is thus contrary to the founding principles of the European Union.
An appealable decision was once again requested. After a delay of around four months, a communication from OHIM was received, stating that it had “detected” an error and that the priority details had been added. In a phone call, OHIM indicated that the office had changed its practice in view of the arguments submitted in the case in suit. This is clearly a victory for common sense and provides a potential “get out of jail card”. Article 35(1)(b) of Council Regulation (EC) 6/2002 allows EU Community designs to be filed at the national Patent Office of any EU member state, at the choice of the applicant. This is irrespective of the nationality of the applicant. As there are currently 28 EU member states, there is a reasonable chance that there will be a public holiday in at least one country. The dates on which national Patent Offices are closed can be found at http://www.wipo.int/pct/dc/closeddates/faces/page/index.xhtml.
The EPO has announced that from 1 March 2015 it will be possible to validate European patents in Morocco, bringing the potential country coverage of a European patent to 41 countries.
Any European or international patent application filed on or after 1 March 2015 is deemed to include a request for validation in Morocco. However, it will be necessary to pay a “validation fee” of €240 within the same deadline as for paying the designation fee and the fees for the Extension States.
European patents validated in Morocco will confer the same protection as Moroccan national patents and will be subject to Moroccan patent law.
To validate a European patent in Morocco, it will be necessary to file a French or Arabic translation at the Moroccan Patent & Trademark Office (PTO), within 3 months of the date of grant of the European patent. The Moroccan PTO has not yet fixed the official fees or indicated if any supporting documents (e.g. Power of Attorney) will be required.
Morocco is not a member of the European Patent Organisation; rather, this development is the result of an agreement signed on 17 December 2010 by the President of the EPO and Morocco’s Minister for Industry.
Tunisia and Moldova have also signed validation agreements with the EPO, but these agreements are yet to take effect.
