23 Nov 2022

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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14 Jul 2022

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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13 Jul 2022

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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12 Jul 2022

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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20 May 2022

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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14 Apr 2022

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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01 Apr 2022

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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09 Mar 2022

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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07 Feb 2022

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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04 Feb 2022

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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02 Feb 2022

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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18 Jan 2022

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.

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07 Dec 2021

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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05 Nov 2021

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.

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02 Mar 2021

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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18 Jun 2020

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.
 

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18 Jun 2020

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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14 Apr 2020

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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14 Apr 2020

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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14 Apr 2020

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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19 Jun 2019

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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03 Jun 2019

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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14 Apr 2019

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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20 May 2018

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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13 Jul 2016

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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03 Jun 2016

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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26 Mar 2016

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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10 Mar 2016

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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23 Oct 2015

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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16 Sep 2015

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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08 Jun 2015

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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30 May 2014

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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17 Mar 2014

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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13 Feb 2014

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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22 Nov 2013

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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30 Oct 2013

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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18 Oct 2013

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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29 Aug 2013

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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03 Jul 2013

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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19 Jun 2013

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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18 Jun 2013

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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17 Jun 2013

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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13 Jun 2013

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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08 Jun 2013

London Technology Week 2015

Free advice clinics during London Technology Week 2015

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04 Apr 2013

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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28 Jan 2013

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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