New Referral to the Enlarged Board of Appeal (EBA) expected concerning the approach to claim interpretation
The long running saga of if, how and when the description can or should be used to interpret the claims of an EP patent may well be coming to a close.
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Slingsby Partners attends a networking event at the University of Bath Law Society
Slingsby Partners has been a sponsor of the University of Bath Law Society for the last three years. As part of this sponsorship arrangement, we attended a networking event hosted by the Society on 19 March 2024. Ollie, Verity and Charlotte attended, along with representatives from other law firms and law schools – Allen & Overy, Stone King and The College of Legal Practice.
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EPO to increase official fees from 1 April 2024
The European Patent Office (EPO) has announced in the January issue of the EPO Journal that the official fee schedule for European patents will be revised from 1 April 2024, resulting in an increase of roughly 4% on most fees. Full details of the fees can be found here: Official Journal, 2024 (epo.org)
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Slingsby Partners begins a third year working with Career Ready
For the last two years, Slingsby Partners has partnered with the charity Career Ready. We have so far provided insight and support to 8 young people through 1-to-1 mentoring. This year, Anna, Verity and Sam will continue this work with three new mentees.
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G 1/22 and G 2/22: EPO Publishes Decision on the ‘Implied Transfer’ Approach for Claim Priority
The Enlarged Board of Appeal answered two questions in these two G decisions:
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Slingsby Partners returns to the University of Bath Law Society
Slingsby Partners has been working with, and sponsored, the University of Bath Law Society for the last three years.
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UK Supreme Court confirms that AI cannot be an inventor
The UK has become the first jurisdiction in which the highest court has confirmed that AI cannot be an inventor, in the long running “DABUS” cases.
Good news for AI inventions in the UK
Emotional Perception AI Ltd vs Comptroller-General of Patents [2023] EWHC 2948 (Ch)
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Slingsby Partners Recommended in IP Stars 2024
We are delighted to be ranked in IP Stars 2024, with seven of our attorneys listed as either IP Stars, Notable Practitioners or Rising Stars. The researchers received the following glowing feedback from our clients:
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Slingsby Partners Recommended in Chambers UK Guide 2024
Slingsby Partners is delighted to be recommended in Chambers & Partners UK Guide to Intellectual Property: Patent & Trade Mark Attorneys. The guide has the following to say about our firm: “Slingsby Partners has a celebrated patent practice especially in the fields of engineering and electronics technology.” Philip Slingsby is listed as a notable practitioner.
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EPO takes stance on sufficiency across entire scope of mechanical claims (T 0149/21)
The Technical Board of Appeal of the EPO has issued a decision, T 0149/21, on ‘whole range sufficiency’ applied to mechanical inventions. Whole range sufficiency is the requirement that a claim be sufficiently disclosed across its entire scope and is typically required in chemistry patents where claims often have a broad scope.
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Slingsby Partners recommended in the IAM Patent 1000 2023
Slingsby Partners LLP is pleased to announce that we have been recommended in the IAM Patent 1000 2023 for UK patent prosecution. The IAM Patent 1000 2023 has the following to say about the firm:
Slingsby Partners Named as One of Europe’s Leading Patent Law Firms
We are delighted to be named one of Europe’s Leading Patent Law Firms 2023 by the Financial Times. The list of Europe’s leading firms for services around patent prosecution and patent strategy consultation has just been published. Slingsby Partners is included both in the overall list and as a firm especially recommended in the Electrical Engineering and Physics sector.
EPO to abolish the “10 day rule”
The EPO has decided that the so called “10 day rule” that gives applicants and/or representatives extra time to respond to many official communications is to be dropped as from 1 November 2023.
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G2/21 – Plausibility
The Enlarged Board of Appeal of the EPO have issued a decision, G 2/21, on plausibility. The Enlarged Board of Appeal has confirmed the established practice that post-published evidence may be considered to support a technical effect for inventive step. However, the technical effect must be derived from the application as filed.
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EPO announces increase in official fees from 1 April 2023
The European Patent Office (EPO) has announced that the official fee schedule for European patents will be revised from 1 April 2023, resulting in an increase of around 5% on most fees.
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Unitary patent (UP) and Unified Patent Court (UPC) will go live on 1 June 2023
Germany has deposited its instrument of ratification and, as such, the Unitary patent and Unified Patent Court will go live on 1 June 2023, with the sunrise period starting on 1 March 2023.
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Slingsby Partners continues partnership with Career Ready for a second year
Slingsby Partners has renewed its partnership with Career Ready to continue to provide insight and support for young people through mentoring. Alex, Anna, Ollie and Annabel are each paired with a mentee and will be offering their mentee an introduction to the business world for the next 12 months.
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Slingsby Partners presents at the University of Bath Law Society
Slingsby Partners is proud to have sponsored the University of Bath Law Society for the last two years. We have now run three events with the society. This most recent presentation provided an insight into intellectual property (IP) law, and the career options within the industry.
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EPO – Oral proceedings by Video Conference
As was widely expected, the EPO have now confirmed that oral proceedings will continue to be held by videoconference from 1 January 2023, except in exceptional circumstances.
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Appeal Oral Proceedings by Video Conference
The EPO has reaffirmed that Appeal Board oral proceedings can be held by videoconference despite disagreement from one or both parties during a general emergency. This still appears to be considered a temporary measure until restrictions that have arisen due to the pandemic fully subside.
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Slingsby Partners recommended in the IAM Patent 1000 2022
Slingsby Partners LLP is pleased to announce that we have been recommended in the IAM Patent 1000 2022 for UK patent prosecution. The IAM Patent 1000 2022 has the following to say about the firm:
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Excluded subject matter at the UK IPO: tips for succeeding in an ex-parte hearing
Last year the UK IPO conducted 56 ex-parte hearings on excluded subject-matter. Only five were decided in favour of the patentee. Slingsby Partners handled three of those successful five – a 100% success rate for our firm. Here we distil the lessons that we learnt from those hearings.
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Does new case law contradict (again) the EPO’s position on description amendments?
The decision in T 1989/18 released earlier this year raised hopes that the EPO’s increasingly onerous stance on description amendments might be due to relax, only for subsequent case law (T 1024/18 and T 0121/20) to affirm the EPO’s current position.
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Slingsby Partners engages with design and engineering students at Middlesex University
Slingsby Partners is delighted to have been involved for the second year running in providing pro-bono information and advice for up-and-coming designers and engineers at Middlesex University in relation to intellectual property.
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G1/22 and G2/22 – Entitlement to claim priority
Two questions have been referred to the Enlarged Board of Appeal regarding the entitlement to priority of a Euro-PCT application where the PCT application was filed naming different applicants for different contracting states.
Background
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EPO Guidelines 2022 – Minimal update re amendment of description
The 2022 EPO Guidelines have been released and have been updated, albeit in a very limited way, to soften slightly the EPO’s position on the requirements surrounding amendment of the description.
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Slingsby Partners is excited to partner with Career Ready
Slingsby Partners has partnered with Career Ready to provide mentoring opportunities to young people who may not otherwise have the business connections.
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Handling excluded subject matter objections at the UK IPO
There is a general perception that the UK IPO takes a stricter view on excluded subject matter than other patent offices, particularly when it comes to assessing computer implemented inventions and mathematical methods. Last year the UK IPO conducted 56 ex-parte hearings on excluded subject-matter. Only five of these were decided in favour of the patentee.
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Amendment of EP descriptions for consistency with claims
It is a well known requirement that the description of an EP patent specification should be in line with the language of the claims, that is the description should not contain statements that are contrary to the claims or might render the claims unclear in any way.
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Is this the end to AI as an inventor?
The EPO Legal Board of Appeal recently issued its decision in the appeal in the DABUS cases (J8/20 and 9/20) and confirmed the earlier decisions from the Receiving section of the EPO, meaning that the two EP applications have been refused.
English Courts continue to exercise jurisdiction over global FRAND cases
In August 2020 the Supreme Court affirmed the UK courts’ jurisdiction to determine global FRAND licences in Standard Essential Patent cases (Unwired Planet v Huawei, and Conversant v Huawei & ZTE). The Supreme Court did not claim that that jurisdiction was an exclusive one.
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Slingsby Partners Recommended by The Legal 500
We are delighted to be listed as one of the UK’s leading patent firms in the 2022 edition of the Legal 500.
CIPA Webinars
Slingsby Partners’ Director of Practice Operations, Charlotte Knight, and Senior Paralegal, Emma Norris, have held three webinars for the Chartered Institute of Patent Attorneys (CIPA) on formal aspects of filing patent applications at the US Patent Office.
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Slingsby Partners included in the FT's list of Europe’s Leading Patent Law Firms 2020
Slingsby Partners LLP is pleased to announce that they have been included in the FT's list of Europe’s Leading Patent Law Firms 2020. This listing of Europe’s leading patent law firms is based on recommendations by clients and peers.
The full listing can be found here.
Slingsby Partners recommended in the IAM Patent 1000 2020
Slingsby Partners LLP is pleased to announce that they have been recommended in the IAM Patent 1000 2020 for UK patent prosecution. The IAM Patent 1000 2020 has the following to say about the firm:
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Technetix V Telestre: Equivalence and "The Gillette Defence"
One of the questions that has preoccupied patent pundits since the Supreme Court first introduced a doctrine of equivalents into the UK patent system in Actavis v Eli Lilly ([2017] UKSC 48) is the fact of the so-called "Gillette Defence". Is it still a defence against patent infringement to do something which differs from the prior art only in non-patentable ways?
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Regen V Estar: Applying Actavis To Numerical Limitations
The Supreme Court introduced a doctrine of equivalents into the UK patent infringement system for the first time in Actavis v Eli Lilly ([2017] UKSC 48). Regen v Estar ([2019] EWHC 63) applied this new approach to a claimed numerical limitation.
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Amazon sets up simple patent infringement system
Amazon has introduced a trial system to combat patent infringement on its platform. A patentee who believes that a product for sale on the Amazon Marketplace infringes its patent can request an evaluation by paying a deposit of $4000.
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Regen V Estar: Applying Actavis To Numerical Limitations
The Supreme Court introduced a doctrine of equivalents into the UK patent infringement system for the first time in Actavis v Eli Lilly ([2017] UKSC 48). Regen v Estar ([2019] EWHC 63) applied this new approach to a claimed numerical limitation.
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Technetix v Telestre: Equivalence and “The Gillette Defence”
One of the questions that has preoccupied patent pundits since the Supreme Court first introduced a doctrine of equivalents into the UK patent system in Actavis v Eli Lilly ([2017] UKSC 48) is the fate of the so-called “Gillette Defence”. Is it still a defence against patent infringement to do something which differs from the prior art only in non-patentable ways?
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IAM Patent 1000
Slingsby Partners is a prosecution boutique whose sole focus is on patents. Superb at drafting bespoke applications to fit any engineering, electronic or physical sciences invention, it eschews a 'cookie-cutter' approach in favour of targeted, commercially sensitive advice.
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Official fee changes – April 2018
Both the EPO and the UK IPO have modified their fees from this April. The EPO has attempted to reduce the cost burden to applicants, notably avoiding inflationary increases. This is good news.
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EPO confirms Brexit will not affect European patents
The European Patent Office has confirmed that the outcome of the UK referendum on 23 June does not affect the status of European patents in respect of the UK. The UK will remain a member of the European Patent Organisation, and our firm will continue to be able to represent you and your clients before the European Patent Office in all pre- and post-grant proceedings.
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Slingsby Partners IP events in Cambridge
Slingsby Partners is bringing its IP expertise to St John’s Innovation Centre in Cambridge on 4th July 2014 with two free events:
● an intellectual property talk for start-ups and SMEs; and
● a patent advice clinic.
Practical Intellectual Property: Protecting Ideas and Securing Investment
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UPC preparatory committee decides on court fees
The Preparatory Committee for the Unified Patent Court has today announced its long-awaited decision on the costs to patentees associated with using the Unified Patent Court. The provisions would seem to work in favour of genuine claimants, especially small ones, whilst sending a warning shot across the bows of any vexatious litigants.
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Case Closed: Trunki Sent Packing by the Supreme Court
PMS International Group Plc (Respondent) v Magmatic Limited (Appellant) [2016] UKSC 12
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UK Government consultation into proposed changes to the UK patent box
Yesterday the UK Government opened a consultation into proposed changes to the UK patent box. Responses are due by 4 December 2015.
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Slingsby Partners recommended in the UK Legal 500 2015
Slingsby Partners LLP are pleased to announce that they have been recommended in the UK Legal 500 2015. The UK Legal 500 2015 has the following to say about the firm:
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MedTech Seminar: Protecting Your IP and Securing Investment
As part of London Technology Week, Slingsby Partners LLP, a Legal 500 recommended firm of patent attorneys, will be presenting a free seminar on medical technologies for startups and SMEs.
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London Technology Week 2014
Slingsby Partners is bringing its IP expertise to London Technology Week by offering a series of free patent advice clinics. Each one hour clinic provides an opportunity to receive pragmatic and commercially-minded advice from our team of patent attorneys on any aspect of intellectual property.
We have particular expertise working with start-ups and SMEs to:
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Set-Back For IPCom’s Enforcement Efforts In Germany
Two different chambers of the Mannheim Regional Court have just delivered a significant blow to patent licensing firm IPCom. The court found that Apple and HTC do not infringe patents from an IPCom patent family by implementing the 3G/UMTS standard.
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Federal Circuit confirms prosecution history estoppel applies to US design patents
Pacific Coast Marine Windshields, Ltd. v. Malibu Boats, LLC (Fed. Cir. 2014)
In a case which has significant implications for design filing strategies, the US Federal Circuit confirmed that the principle of prosecution history estoppel applies to design patents.
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US Litigation Reform Comes Closer
The Innovation Act is an attempt to deal with perceived abuses of the patent system in the US. It is designed to discourage frivolous and abusive patent litigation. The bill was introduced in October and has bipartisan support.
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Number of UK UPC Local Divisions dependent on method of counting UK patent cases
A study by Powell Gilbert [1] has revealed that if patent cases were counted in the same way as in Germany the UK could be entitled to as many as four local divisions of the UPC. Earlier estimates [2] of the number of patent cases in the UK would have meant that the UK would have been entitled to only one local division.
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EPO to reverse restrictive stance on the filing of divisional applications
In an eagerly awaited meeting of the Administrative Council of the European Patent Organisation on 16th October, it was agreed that the controversial amendments made in 2010 to the rules governing the filing of divisional patent applications would be reversed and applicants would once again be allowed to file divisional applications at any point up to grant of the parent application [i].
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Update on New Proposals for “Superfast” Patents
In a previous article, we reported that the UKIPO has outlined its initial plans for introducing a “superfast” patent application procedure which could see patents being granted in just 90 days. However, the “superfast” service is likely to come at a substantial cost, which is being proposed to be around £3500-£4000.
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Clothing abstract ideas in computer language does not make them eligible for a US patent
CLS Bank v Alice Corp.
On 10 May 2013, the Federal Circuit released an en banc decision [i] about the eligibility of Alice Corp’s computer-implemented inventions under 35 U.S.C. 101. At issue was whether the claims are excluded from eligibility for being drawn to an “abstract idea”.
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European Commission objects to potential misuse of standard-essential patents
On 6 May 2013 the European Commission (EC) gave its preliminary view[i] that Motorola Mobility’s seeking and enforcing of an injunction on the basis of its standard-essential patents (SEPs) was an abuse of a dominant position and thus prohibited by EU competition law.
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Guidelines for Determining RAND Royalty Rates for Standard Essential Patents
In Microsoft v. Motorola, the U.S. District Court for the Western District of Washington became the first US court to set fair, reasonable and non-discriminatory (FRAND or RAND) licencing terms for standard-essential patents (SEPs). The 207 page opinion[i] attempts to establish guidelines for the interpretation of RAND licencing of SEPs.
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Patent Troll Attacks on the Increase
In 2012 an astonishing 62% of all patent lawsuits in the United States were filed by Patent Assertion Entities (PAEs) or “patent trolls”. According to a survey of 116 in-house United States lawyers by Santa Clara University[i], 82% of companies surveyed said their customers had received PAE demands for using or implementing their products.
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New Proposals for “Superfast” Patents
Published:13 June 2013
The UKIPO has outlined its initial plans for introducing a “superfast” patent application procedure which could see patents being granted in just 90 days. However, the “superfast” service is likely to come at a substantial cost, which is being proposed to be around £3500-£4000.
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USPTO to trial new Glossary Pilot Program
The USPTO is to trial a new Glossary Pilot Program [1] that will offer expedited prosecution of patent applications that have an appropriate glossary of terms included within the specification. The trial is due to begin on 2 June 2014 and will last for an initial duration of six months, or until the USPTO accepts 200 grantable petitions under the program, whichever occurs first.
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Patent Grace Periods Around the World
Ordinarily, a public disclosure of an invention prior to a patent application being filed would count against the patent application because the prior disclosure would mean the invention is not novel at the time of filing.
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