Latest News, Events & IP Insights

Wynne-Jones IP Partner with Worcestershire's 2026 TechFest

Wed, 12 Nov 2025 12:00:00 Z

We are thrilled to announce our role as Official Partners for Worcestershire TechFest 2026.

Following on from a successful launch in 2025, which saw 500+ delegates attend across 10 events, Worcestershire TechFest will be returning in 2026 bigger, bolder and better.

Celebrating innovation & technology’s place at the heart of the success of the region, Wynne-Jones IP will be joining forces with BetaDen, Midlands Cyber, Worcestershire Growth Hub, Worcestershire County Council, and other partners to deliver a jam-packed two-week event calendar, showcasing the latest technologies developed here in Worcestershire, subject specialist forums, opportunities for networking & skills development, and collaboration with some of Worcestershire’s most innovative professionals.

At Wynne-Jones IP, we share a passion for innovation, creativity and the development of pioneering technologies. Our partnership with Worcestershire TechFest is a fantastic opportunity to demonstrate our commitment to the key values that drive so much of our regional growth.

Worcestershire TechFest 2026 will see even more technology entrepreneurs, leaders, and visionaries coming together to celebrate the local innovation community, and we couldn’t be prouder to be part of it!

If you want to get involved in all the action and keep up to date with breaking news around event dates and speaker announcements, then use the following link to register your interest in TechFest 2026: https://www.worcestershire-techfest.com/

We can’t wait to see you there in February 2026!

IPO Fees to Increase from 1 April 2026: What It Means for Your IP Strategy

Thu, 06 Nov 2025 12:00:00 Z

On 5 November 2025, the UK Intellectual Property Office (IPO) announced that its official fees for patents, trade marks, and designs will increase from 1 April 2026, subject to parliamentary approval. Full details of the upcoming changes are available on the IPO website: Intellectual Property Office fees to increase from April 2026.

The IPO’s fees have not been raised since 2018 for patents, 2016 for designs, and 1998 for trade marks. During that time, the IPO has absorbed cost pressures through improved internal efficiencies, investment in digital services, and the use of existing reserves. The upcoming increases are framed as necessary to maintain and modernise the IPO’s services for the benefit of UK rights holders and the wider IP landscape.

The average fee increase is set to be around 25%. For example, the trade mark application fee will rise from £170 to £205, and the single design application fee will increase from £50 to £60. Higher fees will also apply to contentious proceedings before the IPO, as well as for the renewal of existing registered IP rights.

This represents a significant shift in the cost base of the UK IP regime for rights holders. For businesses and advisers operating in the IP space, proactive planning will be essential to manage the impact.

If you have filings or renewals scheduled in the coming months, now is a good time to review your timelines and budgets, and speak with your patent or trade mark attorney about your IP strategy in light of the upcoming fee changes. As a trusted leader in intellectual property protection and portfolio management, our team remains committed to exceptional client care. We work closely with our clients to tailor our services to their specific needs. If you have any questions about the IPO’s fee increase announcement or require support with future IP planning, then please do not hesitate to contact our attorneys.

Wynne-Jones IP attorneys enjoy innovation and R&D at Bristol Technology Festival

Thu, 16 Oct 2025 09:38:14 Z

Last week, Trade Mark Attorney Anastasia Osipovich and Patent Attorney Nick Davies attended the Bristol Technology Festival, celebrating the city’s thriving technology and innovation community.

The week began with a Rebel Meetup, a vibrant networking event bringing together founders, creators, and freelancers from across the Bristol and Bath region. Anastasia particularly enjoyed hearing from Ben Akers, founder of Talk Club, who delivered an inspiring and thought-provoking talk about his charity’s mission to champion men’s mental fitness on a global scale.

Later in the week, Anastasia and Nick explored the forefront of creative technology at MyWorld’s Live Innovation Lab – Tech Showcase held at Bristol Beacon. The event offered an impressive display of innovation and R&D, featuring AI-generated games, a VR-powered theatre experience, and a hands-on introduction to robotics.

The festival provided a fantastic opportunity to connect with the region’s innovators and experience first-hand how emerging technologies are shaping the industries of tomorrow.

For businesses and creators in the Bristol area looking for guidance on protecting their intellectual property, our team would be delighted to help. Anastasia and Nick can be contacted via our Bristol office:

Office 311

Engine Shed

Station Approach

Temple Meads

Bristol

BS1 1 QH

+44 (0) 1172 032 384

New Patent Analytics Service supports the innovation of UK businesses

Tue, 16 Sep 2025 15:00:00 Z

UK businesses looking to maximise and future-proof the commercial success of their innovations can now get an in-depth picture of the market, competitors, opportunities and risks thanks to the new service launched by Wynne-Jones IP.

The intellectual property firm, which has offices in London, Bristol, Cardiff, Cheltenham, Gloucester, Malvern and Telford, has launched a Patent Analytics Service giving clients an insight into the patent landscape to support them in making informed decisions about their business strategies.

Headed by Joseph Pye, Patent Analytics will be using state-of-the-art analytics tools to deliver a tailored and detailed service.

Supporting Joseph is a team of IP attorneys and IP paralegals with specialist search skills, who collectively have an in depth understanding of the client’s business plans and technology enabling them to provide tailored advice, contextualised for the client’s business environment.

The new service can be used proactively to identify gaps in IP protection in a profitable technical field so that inventions can be focussed towards these areas and made proprietary.

The service can also be used to provide a reassuring check of the IP landscape before a product or service is launched, to minimise the risk of infringement allegations from other companies.

Wynne-Jones IP Director and Patent Attorney, Dr Elliott Davies said that this service would be vital to businesses looking to tap into established or emerging markets, helping them to uncover new opportunities or identify weaknesses in their portfolio.

He said: “Our new Patent Analytics Service is for any businesses which rely on innovation and who want to spend money on IP wisely. Using Analytics will push them ahead of the competition and help keep them there.

“Intellectual property is of vital importance to UK businesses, this service intends to allow businesses to make the most of their innovations. From talking to our existing clients and to IP-rich companies generally we have received the clear message that there is a big demand for better informed IP strategy.

“Every business needs an IP strategy. The only way to make decisions is to have the information. The best way to get information on IP, specifically patents, is to use Patent Analytics. Patent Analytics can unlock detailed insights to help forward plan and create profitable IP and Research & Development strategies.

"It not only identifies any potential risks to the patent's commercialisation, but also helps the client to focus on, and exploit the most valuable aspects of their product to drive even greater commercial success."

EPO Fee Changes

Fri, 05 Sep 2025 13:30:00 Z

On 01 April 2024, the European Patent Office (EPO) implemented fee changes on the procedural fees relating to patent filings based on the nature of the Applicant. What this means is, rather positively, very “small” businesses / organisations, or individuals, referred to by the EPO as “micro-entities”, are entitled to a reduction in EPO fees (in relation to both direct European patent applications and Euro-PCT applications entering the European phase).

In essence, if an Applicant qualifies as a micro-entity, they may be eligible for a 30% reduction in the main EPO official fees associated with the patent process. In the past, reductions have been available at the EPO for certain fees (e.g. examination fee) if the Applicant met certain language/nationality requirements. Surprisingly and indeed fortunately, micro-entities get a flat rate 30% reduction across not only all of the standard procedural fees (e.g. filing, search, examination et.), but also renewal fees.

In order to qualify as a micro-entity, the Applicant needs to meet the following criteria:

They must have filed < 5 European patent applications in the last 5 years (i.e. 5 years preceding the filing date of the application in question*);

They must be a “microenterprise” (i.e. have < 10 full-time employees and annual turnover of < €2 million), individual person, non-profit, university or public research organisation.

Where there are multiple Applicants, all of them must fulfil all of the above criteria.

Importantly, if the Applicant status changes at all, the EPO must be notified and all fees paid subsequent to said change must be paid at the full original rate (provided no other reductions apply). For example, if a European patent application is transferred from a micro-entity owner to a new non-micro-entity owner, the new owner will be required to pay any subsequent fees at the full undiscounted rate – conversely the reverse effect also applies where an application is transferred from a non-micro-entity owner to a micro-entity owner.

Although this fee reduction only came into effect in April 2024, micro-entities with any fees due after this date will benefit from the reduction. In other words, it doesn’t matter if your application was filed before 01 April 2024 – any fees due from now will still be eligible for the reduction.

A word of caution however - if an Applicant incorrectly pays a reduced fee when they were not entitled to the micro-entity status, the fee may be considered “not paid” and a possible consequence is that the application may be deemed withdrawn. Therefore, it is important to be certain that the Applicant qualifies for the micro-entity status to avoid any adverse consequences.

Overall, these fee reductions are clearly a positive incentive to encourage smaller business owners and individuals to innovate more, and in turn protect their inventions using the European patent system.

*Where the application in question is a divisional – it is the date of receipt of the divisional application to the EPO.

Ashleigh Kirs

https://www.epo.org/en/service-support/faq/applying-patent/fee-reductions-small-and-micro-entities/am-i-eligible-micro

https://www.dyoung.com/en/knowledgebank/articles/patent-support-micro-entities-epo-reduces-official-fees

https://www.mewburn.com/news-insights/epo-related-support-measures-for-small-entities-1-april-2024

G 1/23 – Can the EPO make a product disappear?

Fri, 29 Aug 2025 14:00:00 Z

Introduction

First, some patent basics. The European Patent Office (EPO) considers an invention to be new if it does not form part of the state of the art¹. State of the art means everything made available to the public prior to the relevant filing date of the patent application². But what makes something available to the public? In particular, if a product is commercially available (i.e., it is a product that has been put the market), has it inherently been made available to the public? A recent decision confirms that the answer to this question is ‘yes’. In the article below, we discuss this important decision and provide some practical guidance on its implications.

Overview

In this article, we discuss the Enlarged Board of Appeal’s (EBA) decision in G1/23³ and the consequences of this decision. In summary, the EBA answered the three questions referred to it as follows:

Is a product put on the market before the date of filing of a European patent application to be excluded from the state of the art within the meaning of Article 54(2) EPC for the sole reason that its composition or internal structure could not be analysed and reproduced without undue burden by the skilled person before that date? No, such a product is not to be excluded from the state of the art.
If the answer to question 1 is no, is technical information about said product which was made available to the public before the filing date (e.g. by publication of technical brochure, non-patent or patent literature) state of the art within the meaning of Article 54(2) EPC, irrespective of whether the composition or internal structure of the product could be analysed and reproduced without undue burden by the skilled person before that date? Yes, such technical information forms part of the state of the art.
If the answer to question 1 is yes or the answer to question 2 is no, which criteria are to be applied in order to determine whether or not the composition or internal structure of the product could be analysed and reproduced without undue burden within the meaning of opinion G 1/92? In particular, is it required that the composition and internal structure of the product be fully analysable and identically reproducible?” Answer not required.

Background

By way of background, this decision stems from an earlier decision of the EBA, namely G1/92⁴, in which it was concluded that “[t]he chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person …” and that “[t]he same principle applies mutatis mutandis to any other product” [emphasis added].

However, G1/92 does not provide any guidance as to how information that can be obtained from a product put on the market, or technical information about the product obtained from published documents (such as data sheets, brochures, etc.) and the like, is to be treated, nor the degree to which the product must be reproducible.

As a result, G1/92 has been applied in a non-uniform manner in various Board of Appeal decisions, with some decisions concluding that (i) a product on the market is to be excluded from the state of the art if the product cannot be reproduced exactly (e.g., T1833/18), (ii) analysable properties of a product on the market can form part of the state of the art irrespective of whether a full analysis of the product, so as to enable an exact reproduction of the product, is possible (e.g., T0952/92 and T1540/21) and (iii) a product on the market needs only be reproducible in relation to the features of the claim against which the product is cited (e.g., T1452/16 and T0877/11).

G 1/23

The case under appeal in G1/23 related to a patent directed to a polymer for use as an encapsulating material for a solar cell, the polymer being commercially available prior to the priority date of the patent. In particular, the appealed decision related to whether the polymer, the method of manufacture of which was not in the public domain, and publicly available technical information relating to the polymer, formed part of the state of the art and thus whether the polymer could form the closest prior art from which an inventive step attack could be launched.

The patentee argued that the polymer did not form part of the state of the art in its entirety because it could not be exactly reproduced, thus favouring a strict interpretation of G1/92. To support their position, the patentee referred to a well-established body of case law that supports the view that a non-enabled teaching in a written disclosure means that the teaching of that written disclosure does not form a part of the state of the art under Article 54(2) EPC, and that this same principle should be applied to all types of disclosures including products put on the market. The patentee also argued that a non-enabled product does not in any way foster progress in technology as the product cannot be reproduced and developed further such that the right to obtain a patent for such a product has not been exhausted.

The opponent argued that G1/92 should be interpreted more broadly such that a product, and all analysable features of the product, put on the market are made available to the public and that such information should not be disregarded simply because the product cannot be exactly, or even partially, reproduced. The opponent further argued that interpreting G1/92 more strictly would raise various issues including those revolving around the question of how close a reproduction of a product on the market needs to be before the product is deemed to have been reproduced and how this would be assessed objectively, in view of there being an essentially endless number of ways in which the internal structure of the product could be analysed and bearing in mind that the properties of the product could depend on how the product is manufactured and analysed, which could change over time as previously unknown features are identified.

The decision therefore turned on the question of whether it is a valid condition that a product put on the market must be reproducible to form a part of the state of the art.

The EBA took the ‘real world’ view that simply treating a product on the market as if it doesn’t exist directly contradicts everyday experience. In the EBA’s own words, the proposition that the product as such does not exist is “clearly far-fetched and utterly implausible, manifestly contradicting notorious facts”. The EBA went on to conclude that “reproducible” as introduced in G1/92 must be interpreted in the broader sense of the ability of a skilled person to obtain and possess the product (e.g., buying the product from a supplier) as opposed to the narrower sense of meaning the ability of a skilled person to prepare the product themselves by a route that is different from simply taking the product in its readily available form.

As a result, the EBA went on to conclude that G1/92 should be interpreted as “[t]he chemical composition of a product is part of the state of the art when the product as such is available to the public and can be analysed by the skilled person …” [emphasis added], the reproducibility requirement of G1/92 essentially being redundant if one can simply obtain a given product from the market (as opposed to requiring that a skilled person be able to prepare the product themselves).

Consequences

Perhaps the most significant consequence of the EBA’s decision is that a product put on the market forms part of the state of the art, such that it is not possible to patent such a product if all the claimed features were disclosed by said product. One upshot is that innovators who produce new products and materials should carefully consider patent protection before making the product or material available to the public in any way.

It also follows from the EBA’s decision that all analysable properties of a product put on the market will belong to the state of the art, irrespective of whether the product could be reproduced without simply obtaining it from the market. Similarly, if a product’s composition could be analysed, then this too would become part of the state of the art, irrespective of whether the skilled person could reproduce it on their own.

It also follows that any technical information about said product which was made available to the public also forms part of the state of the art.

The EBA commented that products which are only available for a limited time are to be treated like any disclosure of this type, such as oral disclosures, prior public use, and the like. In these cases, there arises a problem of proof and evidence as to what, when and how something was disclosed. In other words, a publicly disclosed product belongs to the state of the art, even if the product is no longer available to the public.

There are also questions of how this decision might affect inventive step, such as with regard to modifications to a commercially available product, which again will likely be highly fact dependent. In this vein, the EBA confirmed that a particular method of producing a product could well still be patentable, in view of the particular facts, as a distinction is to be made between the technical teaching that may be derived from the physical product itself and the technical teaching that is required for manufacturing the product.

While the case under appeal related to polymer technology, this decision will impact a broad range of technology areas, potentially including computer-implemented inventions (e.g., distributed computing systems for providing some useful output, where the skilled person may only have access to a part of the overall system).

This decision also harmonises, at least in part, European law with both US and UK law. More specifically, US law prevents patents from being obtained for products or processes which have been on-sale more than one year after a patent’s effective filing date⁵. In the UK, a leading decision is Takeda UK Limited v F. Hoffman-La Roche EWHC [2019]⁶, in which it was decided that, as long as a skilled person can obtain enough information from a commercially available product so as to enable them to make their own version of it, then this version of the product forms a part of the state of the art and a patent claim which covers it would lack novelty, irrespective of whether the original product can be reproduced exactly.

[1] Article 54(1) EPC - https://www.epo.org/en/legal/epc/2020/a54.html

[2] Article 54(2) EPC - https://www.epo.org/en/legal/epc/2020/a54.html

[3] https://www.epo.org/en/boards-of-appeal/decisions/g230001ex1

[4] https://www.epo.org/en/boards-of-appeal/decisions/g920001ep1

[5] AIA 35 U.S.C. 102(a) - https://www.uspto.gov/web/offices/pac/mpep/s2152.html

[6] https://www.bailii.org/cgi-bin/format.cgi?doc=/ew/cases/EWHC/Patents/2019/1911.html&query=(takeda)

Nick Davies (UK and European patent attorney)

Ian Lambert (Director, UK and European patent attorney)

UK Intellectual Property Office issues new guidance on Trade Mark Specifications, following Supreme Court’s judgment in SkyKick UK Ltd v Sky Ltd (SkyKick)

Fri, 04 Jul 2025 09:20:00 Z

On 27 June 2025, the UK Intellectual Property Office (UK IPO) released a new Practice Amendment Notice 1/25 (PAN 1/25) following the judgement by the Supreme Court in SkyKick (our article on this landmark ruling may be found here: The Supreme Court’s decision [Sky]kicks into touch).

The new PAN 1/25 encourages UK IPO examiners to consider whether a trade mark specification is "so manifestly and self-evidently broad” that a bad faith objection should be raised.

In light of these developments, UK trade mark applicants are advised to ensure that the coverage of their applications is proportionate and aligned with their real-world business activities and future plans.

Furthermore, care must be taken when an application is filed across numerous classes without a justifiable commercial rationale, as applicants may now be asked to explain its commercial reasoning for including the broad term(s) in respect of which an objection is raised.

Should a bad faith objection be raised by the UK IPO, applicants will have two months to respond. To seek to overcome the refusal, applicants can either provide an explanation of their commercial rationale ornarrow the specification to better reflect their commercial rationale.

It will be interesting to see how UK IPO examiners apply the new guidance and how examination practices will change over the next few months. The guidance itself acknowledges that it is not practicable to specify the exact circumstances in which an objection will be raised.

In the meantime, trade mark applicants should ensure that trade mark specifications are tailored to their actual and intended use and be cautious when adopting broad terminology in order to minimise the risk of facing a bad faith objection.

Wynne-Jones IP: A Financial Times Leading Patent Law Firm

Mon, 16 Jun 2025 08:00:00 Z

Wynne-Jones IP has, again, been identified as one of Europe’s Leading Patent Law Firms by the Financial Times.

Unlike many industry accolades and awards, Wynne-Jones IP has made no financial investment for consideration or ranking. Instead, the listing is based entirely on recommendations from clients and industry peers.

Wynne-Jones IP is recommended, in particular, for patent law by the following sectors:

· Electrical Engineering & Physics

· Materials & Nano Technology

· Mechanical Engineering

The Financial Times 2025 rankings can be found here: https://www.ft.com/content/9b2ff0e7-e6ec-422a-ad64-6c5011451040

For more information, or media enquiries, please contact: marketing@wynne-jones.com.

Patent infringement: exploring multi-territorial issues

Wed, 04 Jun 2025 10:14:40 Z

Patents are powerful tools that can be used to stop unauthorised parties from performing certain acts, such as making a patented product or using a patented process. However, patents are territorial in nature such that a patent has no effect, in terms of being useable to prevent unauthorised parties from performing infringing acts, outside of the territory in which it was granted. For example, a UK patent protecting an invention cannot be used to stop somebody from exploiting the invention in the USA, unless there are also infringing acts taking place in the UK.

Naturally, this leads to interesting, and often complex, questions of law such as: can patent infringement be avoided by performing acts across multiple territories? This question is particularly pertinent when considering computer-implemented inventions, where computing resources can be spread across multiple territories and data easily transferred between them. The short answer is: it depends.

In this article, we review some of the key pieces of UK case law looking at this issue, and what steps can be taken to strengthen patent applications in this regard.

Menashe v William Hill [2002] EWCA Civ 1702

This is an important decision that has influenced the case law surrounding the above question over the last two decades.

In this case, Menashe owned a UK patent protecting a gaming system for playing an interactive casino game, the gaming system including:

a host computer;
a terminal computer forming a player station, the terminal computer being situated at a location remote from the host computer;
a communication means for connecting the terminal computer to the host computer; and
a program means for operating the terminal computer.

William Hill allegedly infringed Menashe’s patent by supplying their UK customers with a CD containing software which, when installed on a customer’s personal computer, turned their computer into a terminal computer which was able to communicate with a host computer, thereby allowing the customer to play a casino game. In other words, William Hill were effectively enabling their customers to use a gaming system according to Menashe’s patent.

However, William Hill argued that, because their host computer was located in the Caribbean, they were not infringing the patent in question. More specifically, William Hill argued that, for there to be infringement, the CD must be intended to be combined with the other elements of the gaming system, including the host computer, in the UK in order to put the invention into effect in the UK, this test not being satisfied in view of the location of their host computer.

Menashe presented counterarguments to the effect that not all of the elements of the gaming system need to be in the UK for the CD to put the invention into effect in the UK. More specifically, Menashe argued that the fact that William Hill’s host computer is located outside of the UK does not mean that the invention is not put into effect in the UK in view of (i) William Hill’s customers and their terminal computers being in the UK, (ii) the CDs being supplied to the UK customers and (iii) the fact that William Hill were supplying the CDs with this in mind.

On appeal, it was decided that it does not matter where the host computer is located. Rather, to determine whether the supply of the CD was intended for putting the invention into effect in the UK, it is pertinent to ask the following two questions:

Who uses the claimed system?
Where do they use it?

In this case, it was decided that it was William Hill’s UK customers who were using their terminals in the UK and, effectively, using the host computer in the UK. In other words, William Hill’s customers were deemed to have been using the whole gaming system as if it were in the UK such that they were, in substance, using the gaming system in the UK.

Therefore, William Hill were deemed to have been indirectly infringing Menashe’s patent on this basis, by virtue of supplying their customers in the UK with a means relating to an essential element of an invention (i.e., the CD), where the means were suitable for and intended for putting the invention into effect in the UK.

RIM v Motorola [2010] EWHC 118 (Pat)

In this case, Motorola owned a UK patent directed to a method of operating a messaging gateway system operable to (i) receive messages from a remote messaging system, (ii) construct transmittable messages including portions of the messages received from the remote messaging system and (iii) receive, from a wireless subscriber device, a set of commands for translation and onward transmission to the remote messaging system such that a user of the subscriber device can control the operation of the remote messaging system.

RIM were allegedly infringing Motorola’s patent by operating a system including a server that periodically polled for new emails from a user’s private email server. If any emails met a user’s criteria for forwarding to a handheld device (in this case, a BlackBerry device), they were sent to a “Relay” for onward transmission, ultimately arriving at the user’s handheld device.

When considering RIM’s server to constitute a messaging gateway system according to Motorola’s patent, the judge found that (i) the method of operating the messaging gateway system was offered for use by RIM in Canada, not in the UK and (ii) when applying the questions set out in Menashe v William Hill, RIM were the users of the method of operating a messaging gateway system, and that they operated this method in Canada. Therefore, it was deemed that there would be no infringement on this basis.

Notably, the fact that subscribers in the UK could use RIM’s server (the messaging gateway system) to communicate with a remote messaging system did not change the finding that there would be no infringement, in view of the method being performed at the server’s end rather than the user’s end.

Illumina v Premaitha [2017] EWHC 2930 (Pat)

In this case, it was assessed whether a process performed by Premaitha infringed various patents, including two patents licensed to Illumina, relating to genetic testing of a foetus via a blood sample obtained from the foetus’s mother.

More specifically, Premaitha performed a process which included the steps of receiving a blood sample from a patient in the UK, carrying out preparatory steps and sequencing processes in the UK, and sending raw data comprising the results of sequencing reads electronically to Taiwan. The main data analysis was then performed in Taiwan following which a report was generated, the report being sent back to the UK for unpacking such that it could be printed, stored and shared with the patient.

Premaitha submitted that the steps of detection and analysis, crucial to the inventive concepts of the patents in question, took place outside of the UK. They submitted that Illumina’s allegations of infringement were dependent on the data analysis steps and that, because those steps were not carried out in the UK, the process was therefore not used in the UK.

Illumina contended that (i) the laboratories located in the UK are indifferent as to where the sequencing information is processed, (ii) the processes managed by human operators outside the UK are non-specialised tasks and (iii) the steps undertaken in Taiwan that are relevant to infringement were all undertaken by a computer. They submitted that a finding of non-infringement would render claims of this kind impossible to assert as a practical matter.

This decision boiled down to the question of where, in substance, Premaitha’s process was being used. It was decided that the answer to this question was in the UK because the blood test was performed in the UK, the sequencing machine was operated in the UK, and the information so obtained was transmitted to Taiwan for a pre-determined set of automated computer processes to be applied to it. The output of the computer processing was then sent back to the UK for use in the UK.

Given that the process is operated, in substance, in the UK, and based on the finding in Menashe v William Hill that it did not matter where the computer was situated, it was decided that Premaitha were infringing the patents in question.

The judge also accepted Illumina’s submission that any other result would make it far too easy to avoid infringement of patents of this nature, given the ease of digital transmission and the ability to off-shore computer processing.

Promptu v Sky [2021] EWHC 2021 (Pat)

In this case, proceedings were brought against Sky, who were allegedly infringing Promptu’s patent directed to generating speech content responses in response to receiving a multiplicity of speech channels from a multiplicity of users.

More specifically, Sky’s allegedly infringing “Sky Q” system included a voice platform hosted on servers in the UK, an automatic speech recognition (ASR) function which may or may not have been implemented in the UK, and a content engine hosted on servers in Ireland.

In Sky Q’s system, in response to a user pressing a voice activation button on their remote control, a “WebSocket”, individual to the user, was opened, which involved sending the user’s IP address to the voice platform. When multiple users activated this voice command function at the same time, the voice platform received data from each user and separated each user’s speech using their IP addresses. After receiving input from the ASR function and the content engine, the voice platform then sent a response back to each user.

In view of the preceding three cases discussed above, the judge derived the following general principles: (a) by whom and where, in substance, is the method being used and (b) it is relevant to take into account that for some steps it simply may not matter where processing power is located.

In the present case, all features were deemed to take place in the UK, apart from the speech recognition and content engine access.

It was decided that the processing of speech signals took place at a server remote from a user, and that the central part of the processing at the server involved (i) partitioning the incoming speech signals and subsequently providing a unique recognised speech content response and (ii) individually delivering services accordingly.

Content engine access and speech recognition were deemed subordinate in the Sky Q system. Therefore, it was deemed that it did not matter where these two functions took place, a conclusion reinforced by the fact that Sky did not even know themselves where the ASR function took place for any given user interaction. More specifically, the judge commented that the fact that the content engine access and speech recognition were (sometimes) performed outside of the UK did not mean that performance of the method as whole was performed outside of the UK, it not being the right principle that infringement can be avoided by performing some parts of a method outside of the UK.

Notably, the judge also commented that, even though user input triggers part of the method (i.e., sending data from the user end identifying the user), it is not the user who puts the method into effect.

It was therefore decided that the method is performed, in substance, by Sky, in the UK, such that Sky would have been infringing Promptu’s patent, had it been valid.

Sandoz v Biogen [2024] EWHC 2567 (Pat)

Biogen own a patent directed to a method of evaluating a patient’s risk of developing Progressive Multifocal Leukoencephalopathy (PML), the method including the steps of determining, in a serum or plasma sample of the patient, an anti-JC Virus (JCV) antibody titer, where the anti-JCV antibody titer is determined by an ELISA assay.

In this case, Sandoz were allegedly infringing Biogen’s patent by virtue of offering a method according to Biogen’s patent for use by clinicians in the UK.

The part of the allegedly infringing method that took place in the UK included the steps of ordering relevant materials, taking a blood sample from a patient using the materials so provided, and placing an order for JCV testing including scheduling a pickup of the patient’s blood sample. The blood sample was then taken outside of the UK, where an assay was conducted involving determining an anti-JC Virus antibody titer expressed as an index value. The result of this test was then sent back to the clinician in the UK.

The judge concluded that there is no doubt that the step of determining the anti-JC Virus antibody is carried out outside of the UK, irrespective of the fact that the blood sample is taken in the UK, because the serum or plasma sample for testing is prepared outside of the UK, along with the performance of all the other steps of the assay.

A more subtle point was the consideration of the resulting index value. If this number was greater than 1.5, then it was determined that the patent is at high risk of developing PML. This value was also determined outside of the UK, as no exercise of clinical judgement was required. Even though the clinician may go on to make their own assessment of the clinical risk, any such assessment would not have been part of the claimed method.

At best, the clinician can be said to be using the result of the of the method in the UK, which may be useful to them, but it cannot be said that the method specified in Biogen’s patent is used in the UK.

Therefore, it was concluded that there is no infringement on this basis.

Take-aways

Key points to take-away from this article include:

Infringement of a UK patent can still occur even if certain parts of an invention are performed outside of the UK, particularly when those parts involve standard computing steps, though this depends on the particular facts and how the patent is framed.
To assess whether there might be infringement of a UK patent when an invention is being implemented across multiple territories, it is important to ask the questions: who is infringing the patent, and where, in substance, are they doing so?
Having patents in multiple territories does not generally address the issue of an infringing party performing steps across multiple territories.
When preparing a patent application, it is essential to consider who would infringe the eventual patent and ensure that there is adequate protection in place. For example, it is advisable to consider whether an invention is best protected by defining the invention such that it could be performed by a single apparatus within a single territory and/or by multiple apparatuses across multiple territories, to help mitigate the risk of infringement being avoided by performing certain steps (e.g., data processing) in a territory where there is no patent protection.
Unitary Patents (UPs) partly address these issues, at least in Europe, by virtue of being effective across multiple European countries.
We strongly recommend a patent attorney is consulted to minimise issues arising in this regard. Here at Wynne-Jones IP, we regularly prepare patent applications with these considerations at the forefront of our thinking.

The Right to Repair: Does the owner of a patented product have the right to repair it?

Thu, 08 May 2025 11:00:00 Z

Does the owner of a patented product have the right to repair it?

Patents can be used in different ways, but for the most part provide a deterrent to prevent competitors from copying patented items. Patents define a legal monopoly so that manufacture or sale of competing products which are covered by the patent is an infringement of the patent holder’s rights. When an infringement occurs, patent proprietors have a variety of legal remedies available to them to prevent losses. Hence patent proprietors can protect their investments and stop sales of copy products.

Whilst the intellectual property regimes including the patent regime seek to encourage and promote innovation through the registration of rights, there are also rules around fair competition which stand in contrast to the rights of patent proprietors. Fair competition laws seek to prevent anti-competitive practices. For example, under the principle of exhaustion, a proprietor’s patent rights are exhausted once a product is sold. This means that after the initial sale, customers are generally free to resell products without restriction, creating a market for second hand goods. What happens however when a repair is required?

The infringing act of making an item usually refers to the initial manufacture of goods. However, making an item might also include compiling parts which have been separately manufactured, or adding an element or otherwise altering a pre-purchased product – such acts of making an item might also infringe a granted patent. A more difficult question arises around repair. Is it an infringement of a patent if a consumer seeks to repair a purchased item which has been damaged? On the one hand, patent proprietors may wish to prevent repairs to encourage sales and/or to maintain quality in the goods. However, there is a wider consumer interest in a right to repair, for both economic and environmental reasons.

In the UK, the Supreme Court has considered the extent to which patent holder’s rights can be enforced given the public interest in repairing items to extend their lifespan. The Court has decided that whilst consumers should have a right to repair, in practice this right to repair will be limited to certain types of repair (Schütz v Werit judgement from the Supreme Court - https://www.supremecourt.uk/cases/uksc-2011-0159). The conditions on the right to repair are:

Firstly, a right to repair should only be allowed if the part being replaced is a subsidiary part of the item i.e. not a substantial part of the item. In cases considered by the courts, replacing a substantial part of the item was determined to be in essence a re-make and would be an infringing act, whereas replacing a subsidiary part was a legitimate repair. A subsidiary part may have a much shorter lifespan that the item as a whole, and be expected to be replaced. In other words if the part in question is “physically easily replaceable and in practice relatively perishable” this may be an indicator that it is a subsidiary part.
Secondly, a right to repair will only generally be found if the part being replaced does not embody the inventive concept of the patent. On the contrary, if the part being replaced is the inventive subject of the patent, then the patent holder should be enabled to assert their patent rights to prevent a re-make.
Thirdly, a right to repair may be more likely to exist if the item and the part being replaced are free-standing items in their own right, i.e. one doesn’t cease to exist without the other. Related to this third point, it was considered whether or not there is any demolition and rebuilding of the patented item by the replacement of the part.

Overall, the legal position is favourable for patent proprietors. Some right to repair is to be expected but the court decision limits this right quite substantially to circumstances where a non-inventive consumable part of the product is being replaced. Enabling repairs under the above balance of points seeks to protect consumer rights by freeing up the market for repairs, whilst at the same time empowering patent holders to assert their patent rights to prevent re-makes at the core inventive heart of the patent, thus promoting innovation.

Looking beyond the UK, into the EU, the rules regarding the right to repair are determined separately in each jurisdiction of the EU according to the decisions of the national courts. However, the EU has wider policy aims regarding fair competition and the environment, which could sway national law in line with EU-wide objectives. For example, the EU Repair Directive (2024/1799) aims to promote easier and more transparent access for the repair of goods in line with the EU’s aims on sustainability. This is of course in tension with the rights of patent proprietors. We wait to see how the national courts will balance the different interests of businesses investing in intellectual property rights and the over-reaching aims set out in the Repair Directive.

Patents: Extensions of time at the EPO

Tue, 15 Apr 2025 13:25:00 Z

Navigating the patent application process at the European Patent Office (EPO) involves adhering to numerous time limits. Missing these deadlines can incur unexpected extra costs or risk jeopardising an application or granted patent, but the EPO offers mechanisms to extend or recover from missed deadlines.

One such mechanism was the EPO’s longstanding 10-day postal rule, however this was abolished a little over a year ago and stopped being enforceable for any Communications issued on or after the 1^st of November 2023. In practice this means we have lost over a week’s worth of time to respond to official actions. Maintaining the balance between preparing a well thought out response and adhering to the EPO’s time limits can be challenging, therefore now is a good time to explore the remaining ways in which it is possible to gain an extension of time at the EPO.

Extension of time requests

An applicant or representative may request an extension of a time limit under Rule 132 EPC. The request must be made in writing and filed before the time limit has expired. Requests are usually granted without providing evidence, provided the extension is not more than two months and the total time period does not exceed six months. During prosecution this is commonly used when responding to deadlines set out in communications requesting a response to search or examination reports. Unlike many territories, such as the US and Japan, the EPO does not charge for this.

Sufficient reasons would usually need to be provided in order to secure a time extension of longer than 2-months, especially if the total time period were to exceed 6-months. Unforeseeable or exceptional circumstances such as serious illness or the need to carry out extensive biological testing could constitute sufficient evidence. In practice, the EPO are very strict in their consideration of requests for discretionary extensions of time.

It should be noted that this is not possible where the EPC specifies that a deadline is fixed and not extendable. For instance, it is not possible to extend the deadline to pay examination and designation fees, which must be paid within six months of the date on which the European Patent Bulletin mentions the publication of the European search report.

Further Processing

Further processing is a safeguard provided by the EPO under Article 121 EPC. It allows applicants to respond to certain missed deadlines by completing the required action within an additional time period. When a deadline is missed, the applicant or representative can request further processing by filing a request and paying the prescribed fee within two months from the notification of the missed deadline. In practice, it usually takes the EPO a few weeks to issue this notification, and so further processing ‘buys’ an effective extension of a little more than two months.

The fee for further processing depends on the type of missed action. If the missed action involves payment of a fee, the further processing fee is 50% of the missed fee. Of course, this can often be a very significant amount of money. For other missed actions, such as responding to a communication from the EPO, there will be a fixed charge. At the present time, this fee is EUR 300. This mechanism applies to a broad range of deadlines, including those for responding to office actions, paying fees, and submitting required documents. However, it is important to note that further processing is not available for all time limits. Deadlines such as filing the application and claiming priority are not eligible for further processing. In these cases, missing the deadline would lead to a loss of rights. This can only be remedied by requesting a re-establishment of rights.

Re-establishment of Rights

For deadlines that cannot be extended through further processing, re-establishment of rights under Article 122 EPC provides a possible means of redress, provided that deadline is missed despite all due care being taken. A request for re-establishment of rights must be filed within two months of the removal of the cause of non-compliance, and no later than one year from the original missed deadline.

The request must contain a statement explaining the circumstances that led to the missed deadline and provide evidence that all due care was taken. Additionally, the omitted action must be completed, and the corresponding fee paid within this two-month period. The ‘all due care’ criterion sets a high bar. Applicants should be aware that there is no guarantee that a re-establishment of rights application will be successful. Also, the cost is generally high, because of the difficult ‘all due care’ standard means that applications should be meticulously prepared.

Re-establishment of rights is available for certain critical deadlines, including paying renewal fees, and submitting translations after the grant of the patent.

Renewals and Validations

Renewal payments are due at the EPO annually from the 3^rd patent year up until the patent has granted. If the deadline is missed, there is a 6-month grace period in which the renewal fee can still be paid. A late fee must also be paid if using the grace period. This fee varies depending on the year of the renewal.

The EPO offers no means to extend the 3-month deadline in which to complete national validations. However national offices may allow the deadline to be extended, for instance by requesting an extension of time or filing a request for further processing.

Conclusions

There are various ways of obtaining extra time to complete actions before the EPO, some more desirable than others. Our brief summary is presented above. For more information, please contact the authors.

Guppy, Vansittart and Holmes: Three Pioneering Women Inventors

Thu, 06 Mar 2025 15:18:29 Z

To mark International Women’s Day, we’re taking a look at three pioneering women inventors, each of whom were determined to Accelerate Action for women in engineering. These women faced an uphill battle as engineers in a “man’s world”, and each of them have contributed significantly to today’s modern technology.

Sarah Guppy (1770–1852)

While a controversial figure among inventors and engineers, Sarah Guppy was a female trailblazer who owned several patents at a time when it was challenging for engineers to gain recognition for their work, particularly women.

Born Sarah Maria Beach in Birmingham, she is most famously known as the first woman to patent a bridge, introducing a method for making safe piling for bridges. It’s said that her design was utilised by prominent engineers of the time, including Thomas Telford and Isambard Kingdom Brunel. However, it is largely understood that the credit for the bridge design isn’t hers, but a misinterpretation of the patent that she herself encouraged.

That said, her interests were diverse, and she patented things ranging from the precursor of the modern toaster to a device to prevent barnacles on ships (for which she was awarded a Royal Navy contract to create).

Sarah Guppy was a determined figure in a “man’s world”, a celebrated Victorian era female engineer.

Henrietta Vansittart (1833–1883)

Henrietta Vansittart, née Lowe, was a British engineer and inventor born in 1833. She was self-taught, as was common for women in engineering during the 19^th and early 20^th century. She gained engineering knowledge through her father, James Lowe, who was a blacksmith-inventory and who had applied for several patents in ship propulsion.

In 1868, Henrietta patented the Lowe-Vansittart propeller, an improved screw propeller that enhanced ship speed and efficiency while reducing fuel consumption, an improvement on her father’s work. This propeller was installed on various naval and commercial vessels, including HMS Druid and the SS Lusitania, contributing to advancements in marine engineering during the Victorian era.

Henrietta received many awards for work and her invention was exhibited globally. In 1876 she became the first woman to write, read and illustrate her own drawings for a scientific article, before a scientific institution. Her work is often considered “one of the most important nautical inventions of the 19^th century.”

Verena Holmes (1889–1964)

Verena Holmes was born in Ashford, Kent, in 1889. She was a pioneering mechanical engineer and inventor, her specialities included internal combustion engines, marine, locomotive and diesel engines. In 1924 she became the first woman elected to the Institution of Mechanical Engineers.

Throughout her career, Verena patented numerous inventions, including medical devices such as a surgeon's headlamp and a pneumo-thorax apparatus for treating tuberculosis, as well as engineering components like poppet valves for steam locomotives. Her work significantly impacted both medical technology and mechanical engineering.

Verena was a strong advocate for women's inclusion in engineering professions. Active in the Women’s Engineering Society (WES) she was president from 1930 to 1931. Each year, her birthday of 23^rd June, International Women in Engineering Day, celebrates the success of women in engineering across the world.

Ex Parte and Inter Partes Hearings: Insights from a Former UKIPO Hearing Officer

Tue, 25 Feb 2025 12:00:00 Z

If your trade mark application faces an objection in an examination report, your first step should be to engage with the examiner who raised it. UKIPO trade mark examiners are knowledgeable and approachable, and a constructive written or verbal exchange may persuade them to waive the objection. Building a positive relationship with the examiner not only helps in the short term but also enhances your firm’s reputation within the UKIPO. Always be polite and professional, making clear and well-reasoned submissions. Aggressive or confrontational behaviour is unlikely to help your case—and could harm both your credibility and that of your firm.

If the examiner decides to maintain their objection, it may be time to consider an Ex Parte Hearing with a Hearing Officer. These hearings can take place via video or in person, but most are held over the telephone. Keep in mind that the Hearing Officer will likely have dealt with multiple cases that day—and certainly several that week—so it’s important to be well-prepared and communicate your points clearly.

An Ex Parte Hearing is your chance to discuss the objection and strengthen your case beyond written submissions. You’ll need to be familiar with the history of your application, as the Hearing Officer may ask questions. Avoid simply repeating previous arguments—they will have already been reviewed and add little value. With most hearings limited to an hour, time is precious, so focus on clear, well-reasoned points. The aim is to determine whether the objection was correctly raised, using legal reasoning and case law to support your position. The Hearing Officer will be engaged and may suggest ways to overcome the objection, such as providing evidence of acquired distinctiveness.

The Hearing Officer will often give their decision at the end of the hearing, but if you’ve raised new points, they may need time to reflect. Don’t push for an immediate answer—if they need to consider your submissions further, it’s a positive sign that your arguments haven’t been dismissed outright.

The Hearing Officer will issue a brief decision within 10 working days. If the objection is upheld, they may still allow you to submit evidence of acquired distinctiveness. Should the objection remain, you can request a Statement of Grounds for a more detailed explanation. If you’re still not satisfied, you can appeal to the Appointed Person.

Inter Partes Procedural Hearings and Case Management Conferences (CMCs)

Procedural Hearings typically address the Tribunal’s preliminary view during the pleadings stage, while Case Management Conferences (CMCs) help resolve disputes and set the case’s timetable and framework. Both are usually held by telephone, with both parties able to attend. The Hearing Officer will normally deliver an oral decision at the end.

Inter Partes Main Hearing

A Main Hearing takes place at the end of the evidence rounds if either party requests to be heard. If you believe your written submissions and evidence clearly set out your case, you don’t have to attend a hearing requested by the other side—you can instead submit written arguments, which the Hearing Officer will consider just as carefully as verbal submissions.

Main Hearings follow court-like procedures, so this isn’t the time to introduce new arguments or engage in back-and-forth debate. It’s not a courtroom drama—there won’t be dramatic objections. Instead, the Tribunal follows a structured format, with submissions made in turn (e.g. Opponent, then Applicant, then Opponent in reply).

Unlike Ex Parte Hearings, where the Hearing Officer can offer guidance, Inter Partes disputes require them to remain impartial. As a result, the interaction will be more formal, and you’ll need to adjust your approach accordingly.

About the Author

Dafydd Collins was a Hearing Officer at the UKIPO for more than 5 years and has significant experience in both Ex Parte and Inter Partes Hearing policy, procedure and best practice. Dafydd joined the Wynne-Jones IP trade mark team in early 2024 and provides advice and assistance in relation to a wide range of trade mark matters, both contentious and non-contentious.

Wynne-Jones IP Expands National Presence with New Bristol Office

Thu, 20 Feb 2025 12:00:00 Z

Wynne-Jones IP, a leading UK-based intellectual property (IP) firm, is delighted to announce the opening of its new office in Bristol, further strengthening its presence in the South West region.

The Bristol office, located in Temple Meads reflects the company’s commitment to providing local, high-quality intellectual property services to innovative businesses, entrepreneurs, and academic institutions in one of the UK’s fastest-growing tech and creative hubs.

Dr Jayne Nation, Commercial Director at Wynne-Jones IP said: “Bristol is renowned for its vibrant innovation ecosystem, particularly in sectors such as aerospace, digital technology, and sustainable industries. By opening a dedicated office in the city, we aim to foster closer relationships with our clients and support the region’s dynamic business community with our expertise in intellectual property protection and strategy.”

The expansion follows a period of sustained growth for Wynne-Jones IP, driven by a rising demand for its specialist services, including patent, trademark, and design registration, as well as IP litigation and portfolio management.
The new office will be staffed by a team of experienced IP professionals, patent and trade mark attorney’s, and paralegals, ensuring that local clients benefit from the company’s full range of services.

For further information about Wynne-Jones IP’s Bristol office or to arrange a consultation, please visit www.wynne-jones.com/contact or contact enquires@wynne-jones.com.

Wynne-Jones IP is a UK and European IP firm specialising in trade marks, patents, designs, IP strategy, IP licensing and enforcement, IP audits and IP renewals. They’re experts in IP rights and have been helping businesses to protect their business assets for more than 60 years.

Event Success for Wynne-Jones IP

Thu, 06 Feb 2025 10:00:00 Z

BetaDen sponsors, Patent and Trade Mark Attorney firm Wynne-Jones IP, were delighted to partner with the tech accelerator and the Business & IP Centre Worcestershire for ‘AI & Innovation: How to Stay Protected’ as part of the Innovation Worcestershire TechFest.

The event, attended by 85 business guests, was hosted at Yamazaki Mazak Corporation, Worcester on Tuesday 4^th February 2025.

Guests were welcomed by an AI avatar, BetaDen’s Automation Specialist, Beatrice Taden who, in the video, can be seen standing in BetaDen’s Malvern offices. It was a fitting start to an AI-focused afternoon and the avatar quality was a demonstration on how advanced AI capability has become over recent years.

Wynne-Jones IP friend and client, and BetaDen alumnus, Clive Summerfield of FARx Group Limited delivered the first keynote talk of the day. His presentation, ‘Why Having Patents is Like Having Nuclear Weapons’ considered offensive and defensive intellectual property strategy and shared his experience as an innovator and patent owner of 20 patents across 8 families.

PhD physicist, Wynne-Jones IP director and Patent Attorney Dr Elliott Davies then explored the rapidly shifting landscape of intellectual property law, namely within patents and copyright. He set out the key considerations that business owners should bear in mind when utilising AI in their inventions and answered crucial questions regarding copyright and licensing in the emerging AI age.

The third and final keynote was delivered by Detective Inspector Michelle Ohren, Director of the Cyber Resilience Centre for West Midlands who provided guests with food for thought about how AI might be being used by staff in their business, and provided stark statistics and insights into how at risk of cyber threats most UK business are.

The final session of the afternoon was an expert panel talk, seamlessly hosted by Business Doctor, Steve Ennis. Clive Summerfield, Dr Elliott Davies and Detective Inspector Ohren were joined by Adrian Fern of Prizsm Technologies Ltd and Tim Winstanley of Axiom TKC to talk cyber security, patent protection, Large Language Models and Cyber Essential accreditation.

Unfortunately, due to time constraints, we were unable to answer all the questions from the audience. The good news is, though, you don’t have to wait until our next event to get your IP AI questions answered, please do get in touch and we’ll be happy to help.

IMPORTANT UPDATE: EU Registered Designs

Mon, 03 Feb 2025 08:00:00 Z

Changes to Renewal Periods and Fee Increases: EU Registered Designs

Renewal Periods

The calculation of renewal periods for EU registered designs is changing. From the 1^st May 2025 the basic period for renewing EU registered designs, and the so-called grace period (where a design is not renewed within the basic period) will be calculated differently, giving rise to different renewal due dates.

Until the 1^st May 2025, registered designs will expire on the last day of the expiry month. From the 1st May 2025, designs will expire on the expiry date of registration. There is then a six-month grace period to renew a design, which starts the day after it expires.

However, you can renew your registered design up to 6 months before the renewal date, namely in the so-called renewal period.

For designs with a renewal date falling due before 1st May 2025, the old system will be used to determine the renewal and grace periods. For example, for a design registered on 10^th April 2020, the renewal deadline will be 30^th April 2025 and so the renewal period will fall between 1st November 2024 and 30^th April 2025. The grace period will run from 1^st May 2025 to 31^st October 2025.

For designs with a renewal date falling due on or after 1^st May 2025 the new rules apply. For example, if a design was registered on the 18^th November 2020, the renewal deadline will be due 18 November 2025. The renewal period will fall between 19^th May 2025 and 18^th November 2025. The grace period will run between 19^th November 2025 and 18^th May 2026.

Fee Increases

How much it will cost you to renew an EU design will depend on when the request is submitted.

For renewal requests submitted before the 1^st May 2025 the official fees are:

For the first period of renewal	90 Euros per design
For the second period of renewal	120 Euros per design
For the third period of renewal	150 Euros per design
For the fourth period of renewal	180 Euros per design

For renewal requests submitted on or after 1^st May 2025 the official fees are:

For the first period of renewal	150 Euros per design
For the second period of renewal	250 Euros per design
For the third period of renewal	400 Euros per design
For the fourth period of renewal	700 Euros per design

Wynne-Jones Advice

It can be seen that EU design renewal fees are going up very significantly.

Since you can renew your registered design up to 6 months before the renewal date, EU registered designs having renewal periods starting before 1st May 2025 can be renewed before 1^st May 2025 to take advantage of the lower official fees.

Our advice is to take advantage of this payment window to renew as many of your EU designs that you want to keep in force as possible before 1^st May 2025.

If your registered design is on our books and affected by the new renewal period and/or the updated official fees your case files will be updated accordingly.

For more information or for expert advice, please contact our dedicated renewals team: renewals@wynne-jones.com

Own Thinking: How Intellectual Property Helps to Secure Your Business Future

Fri, 31 Jan 2025 12:00:00 Z

For entrepreneurs seeking to carve out a niche in technology or creative industries, ensuring their ideas and innovations are safeguarded is not only advisable, but essential. Start-up and young businesses should prioritise intellectual property (IP) protection and doing so could contribute to long-term success.

At its core, IP rights protect creations of the mind—inventions, designs, brand names, artistic works, and trade secrets—that provide businesses with a competitive edge. They allow businesses to Own Thinking. For start-ups, these assets often form the foundation of their value proposition. For example, a medical technology (MedTech) start-up might rely on a new diagnostic tool, or a tech company may have developed a unique algorithm. Without IP protection, these innovations could be copied by competitors, potentially undermining the entire business model.

By securing patents, trademarks, or other IP rights, start-ups can establish legal rights that deter infringement and unauthorised use. This not only helps protect the core assets of the business, but also provides the legal foundation to enforce those rights if infringement does happen.

Investors and venture capitalists often view strong IP protection as a marker of a start-up’s potential for success. If you watch the BBC’s Dragon’s Den, you’ll know they often ask the status of the pitcher’s IP. A robust IP strategy signals that the company has tangible, defensible assets that differentiate it in the marketplace. This can significantly enhance the valuation of the business, making it more attractive to investors who are seeking ventures with sustainable competitive advantages.

For instance, a start-up with a patent for a cutting-edge technology is likely to attract more interest than one with an unprotected idea. Investors value the exclusivity that IP protection provides, as it limits the risk of competitors copying the business’s innovations, thus diluting the commercial value of the original innovation they have invested in. Additionally, IP can be leveraged as a negotiable asset in funding rounds, partnerships, or even acquisitions, providing additional flexibility to entrepreneurs.

Trademarks, which protect brand names, logos, and slogans, are crucial for start-ups aiming to build strong brand recognition and loyalty. We live in an era of crowded markets, and a distinctive and protected brand identity helps businesses stand out and connect with their target audience.

Consider the case of a start-up in the fashion or e-commerce sector. Without trademark protection, competitors could exploit the company’s name or logo, creating confusion among customers and diluting the brand’s reputation. Securing a trademark ensures that the business’s identity remains unique and uncontested, building trust and credibility with customers.

One of the lesser-discussed advantages of IP protection is the ability to avoid costly legal disputes. Start-ups that fail to secure their IP risk facing challenges from competitors or larger corporations who may claim ownership of similar ideas or innovations. Such disputes can be financially and reputationally damaging, especially for small businesses with limited resources.

By proactively protecting their IP, start-ups can reduce these risks and operate with greater confidence. Additionally, conducting thorough IP searches and due diligence during the early stages of product or brand development can help avoid infringing on existing rights held by others.

Beyond protection, IP can also serve as a revenue-generating asset. Start-ups with strong IP portfolios can explore opportunities for licensing their technologies, designs, or patents to other businesses. Licensing agreements can provide an additional income stream, enabling the start-up to monetise its innovation without the need for extensive capital investment in production or distribution.

Intellectual property protection is not a luxury for start-ups—it’s a necessity. In a world where ideas are the currency of innovation, safeguarding those ideas ensures that entrepreneurs can focus on growth, investment, and long-term success without fear of exploitation or infringement. From enhancing business valuation and brand identity to reducing legal risks and unlocking new revenue streams, IP protection provides start-ups with the tools they need to thrive in a competitive landscape.

For a FREE digital copy of our Little Book of IP please send us a message or email marketing@wynne-jones.com.

Challenges in Technology: Limitations and Solutions

Wed, 15 Jan 2025 12:00:00 Z

Technology is advancing at a rapid rate (and faster than ever before), with innovations in sectors such as artificial intelligence (AI), quantum computing, and renewable energy driving change. These developments, however, do not occur in isolation; they feed into one another, creating an interconnected web of innovation and progress. However, as technology evolves, so too do the challenges. From heat generation in data transfer to harnessing the laws of physics in space, technological limitations demand innovative solutions. At the same time, intellectual property (IP) rights, particularly patents, play a critical role in protecting and incentivising these solutions.

One significant challenge in advancing technology is the heat generated during the transfer and processing of vast amounts of data. As our digital infrastructure scales to meet increasing demands for faster internet speeds, cloud computing, and edge processing, heat dissipation becomes a bottleneck. Data centres consume huge amounts of energy, with much of it lost as heat. Similarly, advanced microchips in consumer devices struggle to manage thermal output, limiting processing speeds and lifespan.

One avenue for overcoming this problem is leveraging the extreme cold of space. The concept of utilising "absolute zero" conditions found in the vacuum of space offers a potential solution. By placing data centres or quantum computing systems in low-Earth orbit or deep space, the natural cooling effects of these environments could be exploited, eliminating the need for complex and energy-intensive cooling systems. Companies and space agencies are already exploring this idea, with initiatives to create orbital data centres that could revolutionise computing efficiency while addressing terrestrial energy constraints.

Quantum computing, a field ready to redefine what is possible, is another area where limitations like heat and energy dissipation present significant challenges. Quantum systems require extremely low temperatures to maintain qubits—the fundamental units of quantum computation—in a stable state. The slightest heat or environmental disturbance can disrupt the quantum state, rendering the system unreliable.

Space-based solutions could also prove revolutionary here. Building quantum systems in the cryogenic conditions of space might allow for unprecedented stability and scalability. However, such solutions bring new challenges, including the cost of deploying and maintaining hardware in orbit. Partnerships between tech companies and space agencies, along with innovative IP strategies, could help overcome these barriers.

At the heart of technological advancement lies intellectual property. Patents, in particular, play a critical role in fostering innovation by protecting the rights of inventors and providing incentives for investment in research and development. For example, advances in heat management and space-based computing systems are likely to create a surge in patent applications for new cooling mechanisms, materials, and deployment strategies.

However, the IP landscape can also create obstacles to progress. Patent thickets—dense webs of overlapping patents—can stifle innovation by creating legal and financial barriers for new entrants. Collaborative licensing models, such as patent pools or open innovation frameworks, may offer a way forward. These models allow multiple stakeholders to share IP rights, reducing costs and encouraging cooperation on shared technological challenges, like data centre efficiency or space-based systems.

Another critical role of IP is ensuring equitable access to technology. As space and advanced computing become the next frontier, it will be vital to ensure that patents do not disproportionately benefit a few major corporations or nations. The emergence of global IP frameworks, which balance protection for innovators with access for users, will be key to fostering inclusive technological progress.

Beyond technical and IP-related challenges, there are also ethical and environmental concerns to be considered. For instance, space-based technologies raise questions about “space junk” and sustainability. How can we ensure that the benefits of orbital systems outweigh their environmental impact? Similarly, how can IP systems ensure that life-changing technologies—such as those that improve global connectivity or combat climate change—are accessible to all?

Solutions lie in leveraging the interconnected nature of innovation—drawing on fields like space exploration, quantum mechanics, and collaborative IP frameworks to address these issues. As we continue to push the boundaries of what is possible, the role of IP will remain essential in ensuring that progress is not only achievable but also equitable and sustainable.

The Supreme Court’s decision [Sky]kicks into touch

Fri, 29 Nov 2024 10:57:14 Z

The UK Supreme Court has recently issued its long-awaited judgment on the case of Sky vs SkyKick, overturning the previous decision of the Court of Appeal on the issue of bad faith in trade mark filings.

Background

In 2016, a well-known British broadcasting and telecommunications company, Sky, sued SkyKick, a cloud migration and backup service provider, for infringement of its SKY trade marks and passing off. SkyKick argued that Sky’s trade marks should be invalidated because they were applied for in bad faith since Sky had no genuine intention of using them in relation to all of the goods and services for which they were registered. Instead, Sky had made the applications for an extremely wide range of goods and services for purposes other than those falling within the functions of a trade mark, namely, solely for the purposes of restricting other traders.

The High Court initially found that Sky had filed its applications in bad faith in respect of some categories of goods and services. The Court of Appeal then overturned the first instance Court’s decision to partially invalidate the trade marks, indicating that there should have been no requirement for using the trade marks for each specific type of goods or services falling within a more broadly construed term.

The Supreme Court has adopted a stricter approach, and has upheld the High Court’s findings, asserting that the applicant's intention is crucial when seeking a broad scope of protection for a trade mark and, in Sky’s case, the circumstances weighed against them.

Supreme Court’s Decision

Bad Faith

The Supreme Court found that in cases where the range of goods or services is excessively wide, it can imply a lack of genuine commercial intention and indicate acting in bad faith. In particular, it was said that bad faith could be found in cases where an application covers class headings or other general descriptions, such as “computer programs” or “computer software”, which would not be sufficient to designate a legitimate commercial intent:

“Where…the broad description includes distinct categories or subcategories of goods or services, as “computer programs” and “computer services” undoubtedly do, then…the proprietor may be found to have acted in bad faith in relation to one or more of those, and it would be manifestly unjust if it escaped that consequence simply because it had framed its specification using general terminology” [323].

The Supreme Court confirmed that Sky’s approach of originally relying in its claim against SkyKick upon the full range of goods and services and later narrowing down the specification just before the trial suggested that it had registered the trade marks to use as a legal weapon against third parties.

Trade Mark Infringement

Despite the findings of partial invalidity of Sky's trade marks based on bad faith, the Supreme Court agreed with the Court of Appeal's decision that SkyKick's "cloud migration" services did not infringe Sky's trade marks, as those did not fall within the defined scope of "electronic mail services." However, infringement was found in relation to SkyKick’s "cloud backup" services as overlapping with Sky’s remaining data retrieval services.

Brexit

Another crucial aspect addressed by the Supreme Court in its judgment was Brexit and its impact on the enforceability of EU trade marks in the UK. It was confirmed that under the Withdrawal Agreement, UK courts retain jurisdiction over European trade mark cases started before the end of the Brexit transition period, i.e., 31 December 2020. This approach was taken to provide consistency and legal certainty in any ongoing disputes.

Comment

The outcome of this case will undoubtedly serve as a warning for brand owners to reconsider the coverage of their existing portfolios and re-evaluate their approach to any to future trade mark filings. The Supreme Court's emphasis on the risk of bad faith findings highlights the importance of aligning trade mark registrations with genuine commercial plans.

Furthermore, this highly anticipated judgment of the Supreme Court may potentially lead to significant changes in UK trade mark practices generally, whereby a more disciplined and precise attitude to securing trade mark protection is adopted.

Happy World Television Day!

Thu, 21 Nov 2024 12:11:00 Z

Since its invention, the television has reshaped culture, communication, and daily life, earning its title as one of the most influential creations of the modern era. Today, on World Television Day, we’re tuning in to how television has evolved through the lens of intellectual property (IP).

Television technology first flickered to life in the early 20th century. Scottish inventor John Logie Baird gave the world’s first public demonstration of the moving images in 1926. His innovations, protected by patents, placed the UK at the forefront of TV development.

While Baird pioneered mechanical TV, electronic systems—developed by inventors like Vladimir Zworykin and Philo Farnsworth, began gaining ground. In the UK, Baird’s early influence was quickly overtaken by the BBC’s adoption of Marconi-EMI’s superior all-electronic system in 1937.

The BBC, established as a public service broadcaster, shaped early British TV. Free from commercial pressures, it approached IP differently from US networks. Instead of hoarding exclusive rights, the BBC prioritised public access, laying the groundwork for a unique British broadcasting ethos.

The post-war boom saw rapid adoption of TV and a race to innovate. The BBC adopted the PAL (Phase Alternating Line) colour system, developed in Germany, licensing the technology while maintaining its public service mission.

ITV’s launch in 1955 brought commercial television to the UK, introducing advertising revenue as a driving force. This shift highlighted the importance of copyright for monetising programming. The Copyright Act 1956 gave UK broadcasters clearer rights to license and export their content, enabling hits like Doctor Who to go global and generate significant IP revenue.

By the 1980s, satellite channels like Sky entered the fray, securing exclusive rights to sports, films, and shows. This "content is king" strategy made IP central to competition, with retransmission rights and licensing deals becoming a battleground.

Digital broadcasting in the 1990s and the launch of Freeview in 2002 expanded access while raising new IP challenges. Digital piracy prompted stricter copyright laws, including the Digital Economy Act 2010, which cracked down on illegal sharing of TV content.

The 21st century saw the rise of streaming platforms like Netflix, Amazon Prime, and BritBox (a BBC-ITV collaboration). Exclusive content became the new currency, with British shows like The Crown driving global demand. UK broadcasters focused on creating and controlling original programming to monetise IP and compete globally.

Today, British broadcasters face a tricky balancing act: justifying public service investments while maximising IP revenue. The BBC, ITV, and others must navigate a competitive global market while responding to changes in copyright law post-Brexit.

As the industry evolves, one thing is clear: IP is at the heart of the TV revolution, ensuring that British creativity continues to shine on screens worldwide.

Happy World Television Day—don’t change that channel!

National Stress Awareness Day

Wed, 06 Nov 2024 12:04:00 Z

The IP profession can often prove to be stressful. Long days, complex legal issues, client-based challenges, and working to strict deadlines can often take its toll on the mental health of attorneys and support staff in this environment. At Wynne-Jones IP, we recognise that which is why we’ve branded 2024 our ‘Reset Year’ where our Charity and Social Committee have turned their intention to creating a working environment that makes wellbeing easy, encouraging physical health, good nutrition and mental wellness.

As methodical people who aim to find specific solutions to complex issues, it can be hard to accept when you are faced with a problem which simply can’t be fixed with logic. This often results in individuals becoming insular and suffering with issues such as anxiety, stress, and depression privately. So today, on National Stress Awareness Day we’re taking the opportunity to share tips for managing stress with our team and the wider community.

Stress has become a complex, multi-faceted issue that’s rooted in both the pace and structure of modern life. While commonplace, you don’t have to accept it or suffer in silence. Here’s some strategies, quick techniques and lifestyle adjustments that may help:

Try starting your day with a morning meditation or mindfulness exercise.

While it can be tricky to clear your mind, taking a few minutes to set a calm tone could be worth the investment of time, helping you to feel centred and prepared to tackle tasks with a clear mind. Here are some examples available on YouTube*:

https://youtu.be/tuPW7oOudVc?si=1J4Qj1If8_uSj10j

https://youtu.be/z6X5oEIg6Ak?si=ddUKpcEG-R0YRR4K

https://youtu.be/AbckuluEdM0?si=gX6qe6yNnri-7E28

Tackle tasks with the 80/20 Rule in mind.

Prioritise the 20% of tasks that will have the biggest impact on your day. By focusing on what’s truly essential, you can reduce overwhelm and stay clear-headed.

Try the 20-20-20 rule:

Every 20 minutes, look at something 20 feet away for at least 20 seconds. Pair this with a brief stretch or a quick walk around the office to help reset your posture, relax tense muscles, and prevent eye strain.

Breathing deeply can be a game changer.

Honestly. Deep breathing exercises, such as box breathing (inhaling for 4 seconds, holding for 4, exhaling for 4, and holding again for 4), can help slow your heart rate, lower blood pressure, and reduce stress. These can be done at your desk discreetly. Not sure where to get started? Check out these videos on YouTube*:

https://youtu.be/tEmt1Znux58?si=PMuzHegZrIDq0WwH

https://youtu.be/odADwWzHR24?si=ewq4xvq9MkglJIU0

Set boundaries on distractions.

Turn off unnecessary notifications, use “Do Not Disturb” when you need focus time, and consider blocking out specific times on your calendar for uninterrupted work.

Take short “mental holidays”

by visualising calming places or scenarios—such as a quiet beach or peaceful mountains—for a few minutes. This small mental shift can reduce stress and create a calming effect. Not convinced on the power of visualisation? Elite athletes use it as part of training and competition!

Practice gratitude.

Pause once or twice during the day to acknowledge a few things you’re grateful for. This could be as simple as a positive interaction with a colleague, a small personal achievement, or a good cup of coffee. Regularly acknowledging positives can boost mood and resilience.

Stay hydrated and snack wisely.

Dehydration and blood sugar dips can contribute to stress and fatigue. Keep water nearby and sip throughout the day. Choose snacks that stabilise energy, such as fruits, nuts, or yogurt, to avoid mood dips.

Feeling overloaded? Do a ‘brain dump’.

Write down everything on your mind in a “brain dump” to quickly organise thoughts, make sense of to-dos, and release mental clutter. This simple act can clarify priorities and help you avoid stress from mental overload.

Engage in small acts of kindness or social interactions.

Connecting positively with others at work, even in small ways, has been shown to reduce stress. Compliment a coworker, offer to help someone with a task, or simply check in with a colleague. Small acts of kindness or friendly conversations can lift your mood and lower stress.

Embrace a lunchtime reset.

If possible, step outside for a 10-15 minute walk or practice a short exercise routine to re-energise. Exposure to sunlight and a bit of movement can refresh the mind, improve focus, and help you tackle the afternoon with renewed energy.

Talk to someone.

Reach out to HR if you’re feeling overwhelmed by work – they may be able to help. For the Wynne-Jones IP team, the WPA health benefit provides resources and counselling services that are free of charge and completely confidential. Remember – you’re not alone.

*Wynne-Jones IP is not affiliated with the makers of the videos listed and is not responsible or liable for the content in any way.

Alternatives to patent protection

Tue, 22 Oct 2024 14:59:03 Z

When trying to protect valuable inventions, patents are often seen as the “gold standard”. However, in many cases, patent protection is unachievable or even not the best solution. This might be due to the inherent costs involved, the subject of the invention being excluded from patent protection or other business reasons. So what should you do in these scenarios?

The first step should be to talk to your patent attorney, who can walk you through the various options. For example, even though you may have disclosed you invention prior to filing a patent application, you might still be able to obtain a patent. However, in cases where these provisions do not apply, what other forms of protection are available?

Trade Secrets

One option is through the use of trade secrets, such as Coca-Cola’s infamous secret recipe or KFC’s mysterious blend of herbs and spices. If your invention cannot be reverse-engineered from any product or service that you provide, then you may be able to prevent your competitors from reproducing your invention simply by controlling access to information about your invention through trade secrets measures such as non-disclosure agreements and non-compete clauses.

One advantage of this method of protection is that you are effectively able to prevent any of your competitors from copying your invention for as long as you are able to keep your invention secret. If the information on your invention is unlawfully acquired, used or disclosed, as long as you have taken adequate measures to protect the information, you may be able to take measures to prevent further dissemination of the information or obtain other remedies including damages.

However, if a competitor reverse engineers your invention, or arrives at the invention independently, you will be unable to prevent them from performing the invention themselves, or possibly even seeking their own patent protection.

Therefore, if you wish to protect your invention through the use of trade secrets, it is worth expressly and confidentially documenting as much information as possible about what constitutes the secret information and the invention, both to ensure adequate documentation to address a breach of confidence and to act as a defence against a potential suit for infringement.

Utility models

Sometimes referred to as a “petty patent” or “innovation patent”, utility models are an increasingly common alternative to patent protection. In 2020 alone, over 3 million utility model applications were filed worldwide, with almost 98% of these applications being filed in China. Similar to patents, they can both act as and claim a source of priority, and, in some territories, it is possible to convert a patent application into a utility model, meaning they can be obtained through existing patent pathways and IP management.

Although many territories offer different utility model regimes, many territories do not assess the novelty or inventive step of utility model applications on filing, and instead only examine whether the application meets the respective formal requirements. This means that utility model applications are frequently granted much quicker than patent applications, and can therefore be enforced much more quickly against any potential infringer.

Furthermore, even if the novelty and/or inventive step of the invention is assessed, either on filing or when infringement is alleged, frequently the standards for novelty or inventive step are less onerous than those applied to patents. This may allow a utility model owner to obtain and enforce a broader scope of protection than may be obtained with a corresponding patent.

These reduced requirements often correspond with reduced costs when compared to patents, both in terms of the initial filing costs and maintenance costs throughout the lifetime of the utility model.

However, utility models tend to have shorter periods of protection than patents, usually conferring a monopoly for around 10 to 15 years. Additionally, in many territories, the types of subject matter that may be claimed in a utility model are narrower than those that may be protected by a patent. For example, many territories do not allow protection of processes or methods of manufacture by utility model. Furthermore, many important territories, including the UK, Europe as a whole and the USA, do not offer utility models as a form of intellectual property.

Nevertheless, utility models remain a form of intellectual property protection that is increasingly relevant in fields where improvement is rapid and incremental, and therefore where traditional patent protection may not be the best solution.

Designs

If you wish to protect an idea or product that is less technical in nature, protection may be obtain through design protection regimes worldwide. Designs can protect the appearance of all or part of a product, and can arise both through registered designs, obtained through application to IP offices in the territory in question, or unregistered design rights, which arise automatically from the creation or publication of the design.

Registered designs often provide a monopoly right for a period of time, in some cases up to 25 years, to protect the appearance of a whole or part of a product (including its inside) and may arise from the lines, contours, colours, shape, texture, material or ornamentation of the product. Usually, an applicant for a registered design must demonstrate novelty (i.e. that the design is different from prior designs by more than immaterial details) and individual character (i.e. the design creates a different overall impression on the informed user) over prior designs made available to the public by use or publication. Multiple designs can be filed for in the same application, which frequently saves costs, and the concept of priority also applies to designs, as well as international protection regimes, in a similar way to patent protection.

In some territories including Europe and the UK, unregistered design protection can arise automatically, without the need for a formal registration. However, like copyright, in order to successfully prove infringement of an unregistered design, the owner of the design must prove that the design has actually been copied by the alleged infringer, which is not always straightforward. The period of protection for an unregistered design is also usually shorter, ranging from 3 years in Europe and for some designs in the UK to 10 to 15 years for other designs in the UK.

Although they cannot protect the same subject matter as patents, designs still offer an interesting means of protecting your intellectual property in a variety of territories.

Other methods

Other methods can be used to protect your ideas and products, such as plant variety right protection. However, sometimes you do not want or need to protect a particular idea or invention yourself, but would rather prevent your competitors from claiming the same subject matter. In these cases, the concept of defensive publication can be a useful tool. Simply put, by disclosing your idea or invention to the public, either by publication or otherwise, you can prevent anyone else from claiming that subject matter in their own patent application. The obvious advantage is the minimal costs involved, but if you decide you do want to be able to protect this invention yourself, your options at that point will be much more limited.

One alternative to publication in this way is inventor certificates. Although this method of intellectual property protection almost disappeared with the collapse of the Soviet Union, North Korea still offer these as an acknowledgement of an invention, but without the monopoly rights afforded by a patent. However, these certificates are still published, and can serve as prior art against a potential patent application by a competitor for the same subject matter.

Conclusion

Even if patent protection is not the best solution to your business needs, a wide variety of intellectual property solutions are available. However, it is important to talk to your patent attorney before taking any specific action. In this way, you can ensure that the correct steps are taken to maximise your position.

Max Bertrand

US Inventor Declarations & Assignments

Tue, 22 Oct 2024 14:39:24 Z

After a patent application has been filed, the inventor may be required to sign and submit various forms. What happens if this is several years into the patent process, and the inventor can no longer be reached to sign these forms? And what can you do now to prevent any complications from arising?

One country which requires the inventor to submit signed forms is the USA. Each inventor named on the application must submit a signed declaration and assignment with the US Patent and Trademark Office before payment of the Issue Fee.

What are US Declarations and Assignments?

An inventor declaration confirms the inventor’s belief that they are the original (or joint original) inventor of the claimed invention. If an inventor declaration is not submitted by each inventor before payment of the Issue Fee, the application will be abandoned.

An assignment provides documentary evidence that the rights in the invention have been transferred from the inventor to the applicant, and that the applicant is the rightful owner of any patent granted for the claimed invention. If a signed assignment is not submitted by each inventor before payment of the Issue Fee, the application could grant in the name of the inventor(s) instead of the applicant, although this can usually be rectified post-grant.

What if the inventor cannot or will not sign these forms?

In cases where the US application is filed later in the patent process, such as at the 12 month convention deadline, or even the 30 month national phase deadline, it is possible that the inventor(s) may no longer be available to sign the required forms (for example, they have left the company). What happens then?

A substitute statement can be submitted in lieu of a declaration if an inventor is deceased, is under legal incapacity, has refused to sign the declaration, or cannot be found or reached after a diligent effort. To demonstrate a “diligent effort”, it is usually sufficient to send a copy of the forms to the inventor’s last known address, along with an explanation of what is required and specifying a reasonable time-period for returning the signed forms (for example, 28 days). If the forms are not returned by the end of this period, then it can be assumed that the inventor is no longer reachable.

If an inventor cannot or will not sign the required assignment to transfer their rights in the invention to the applicant, then one possible option where the inventor is an employee of the applicant is to submit their employment agreement in lieu of the assignment. However, for the purposes of the USA, the employment agreement must address the employee’s obligation to assign any Intellectual Property (IP) rights created during their employment to their employer. Ideally the document should contain language which indicates a present and active intent to assign any IP rights (for example, “I hereby assign…”), rather than language which merely indicates an intent to assign any IP rights in the future (for example, “I agree to assign…”).

If the employment agreement does not contain suitable language, one option is to rely on any local IP laws which legally require the employee to assign any IP rights to their employer. For example, in the UK, section 39 of the Patents Act 1977 states that an invention made by an employee will automatically belong to the employer if:

“(a) it was made in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties; or

(b) the invention was made in the course of the duties of the employee and, at the time of making the invention, because of the nature of his duties and the particular responsibilities arising from the nature of his duties he had a special obligation to further the interests of the employer’s undertaking.”

Therefore, if the employee and the employer are based in the UK and the invention falls into category (a) or (b) above, then the invention will automatically belong to the employer under UK law.

As such, in addition to filing a copy of the employment contract, a copy of the relevant local laws and a memorandum explaining why, under local law, the invention belongs to the employer can also be filed to prove full ownership of the application by the applicant.

What can the applicant do to avoid the above complications?

1/ Make use of PCT declarations if filing an International application, particularly:

(i) the declaration as to the identity of the inventor;
(ii) the declaration as to the applicant’s entitlement, as at the international filing date, to apply for and be granted a patent; and,
(iv) the declaration of inventorship (for the purposes of the designation of the USA).

For example, declaration (ii) satisfies the proof of right requirements in the Indian national phase, and (iv) satisfies the declaration requirements in the US national phase. Declarations (i) and (ii) can be signed off by the acting attorney; declaration (iv) however must be signed by each inventor.

2/ Make sure any employment agreements, particularly for research & development staff, clearly address the employee’s obligation to assign any IP rights created, and include language which actively and presently assigns those rights to the employer.

If existing employment agreements do not contain such clauses, a separate agreement can be drawn up for the employee to sign and then appended to their contract.

3/ Include a clause in the employment agreement requiring the employee to sign any necessary forms both during and after their employment. This contractual agreement can be referred to should the employee actively refuse to sign any required forms later in the patent process.

Taking the above actions now can help to avoid any problems later in the patenting process which will likely incur unnecessary costs to rectify.

Cash in the attic?

Tue, 22 Oct 2024 14:25:37 Z

Shadow Robot is a pioneer in next-generation robotic hands and their impressive array of clients include NASA, the European Space Agency, Hitachi, GlaxoSmithKline, Siemens and Beko. A whole host of universities join these notable clients and it’s amazing to think that the story of this world-class company began with a group of enthusiasts in an attic, where robotics was a fun challenge and commercial enterprise was not the original intention.

The Shadow Dexterous Hand is the only robotic hand on the market to have 24 movements and 20 degrees of freedom, which gives it unparalleled dexterity. The hand is coupled with 129 sensors that increase accuracy and enable high-level precision. It’s quickly become a favourite research tool in AI and Machine Learning among universities and in 2019 won the Alconics Award for best innovation in AI hardware. These are achievements that were never imagined during the humble beginnings of the robotic hand; Managing Director Rich Walker remembers “we built for fun, our original goal was just to build useful household robots, and then we found that we got good at things.”

Soon requests were coming in for robotic builds and so Shadow Robot was born, still the first and second robotic hands were built more for the challenge than for a commercial enterprise but securing their intellectual property quickly became important. “Other people say ‘WOW! How did you do that?’ and a lot of innovators fall into the trap of believing that they are the only one who can engineer something because they are the only one that has. The thing is, once someone has done something, it’s not hard for other people to then do the same,” Rich points out.

In 2006-2007 Shadow Robot really began its commercial journey and with the commercial vision, Rich got the hot seat as Managing Director. “We really had to figure out who we were… and we are the best people in the world at building hands. We create and build high-end, state-of-the-art robotic hands.” And, because they own their IP, their technology is unique and unrivalled allowing Shadow Robot to carve its own space in the market. Their commercial strategy is working too, with a fan base that includes Amazon Founder and then-CEO Jeff Bezos.

Rich encourages other inventors to develop a strategy and protect their IP early: “If you think you can make some money at some point then it’s important to protect early. Not too early, but early. Once you start the patent process the clock starts ticking and you will continue to incur costs, but if you’re investing it means you’re innovating and the amount of work that goes into the development of something gives it a nominal minimal value.” Dr Elliott Davies, Partner and Patent Attorney at Wynne-Jones IP agrees with Rich “Rich is right, protecting your IP early is important but some inventors really don’t know they have anything to protect. In this case, there are things you can do to help you identify your assets – like an IP audit, and we’re happy to help with that, and developing your strategy”.

Shadow Robot can boast patents that have expired through old age and innovation that solves problems. Beneficial for an array of industries that include the nuclear, pharmaceutical and engineering sectors, their clever robotics enable tasks and challenges to be tackled differently, in a safer, better and more efficient way. The technology also has other applications that reach beyond its original development intentions. The drive train mechanisms, for example, could be used by anyone that uses gears and exposed parts that move backwards and forwards. Utilising their intangible assets through licensing is something that the company is opening up to in the future and demonstrates how protecting your intellectual property not only protects your market position but also allows for additional revenue by licensing the technology to other businesses.

“IP gives you a solid foundation to not only build a commercial enterprise and leverage your technology, but financiers ask to see that you’re protected too,”

said Rich reflecting on how they have used their IP.

It’s not all plain sailing however, every business has its challenges and Shadow Robot are no exception; “Thumbs!” said Rich. “The thumb is a nightmare, it has three sets of kinematic movements that are difficult to replicate. Fortunately, we have all the important parts of the movement (like touching the little finger with the thumb) and have got it as close as we can to build it.”

If you’d like to learn more about Shadow Robot’s technology, visit www.shadowrobot.com

3D trade marks – The key trends, the success stories, and the future

Tue, 22 Oct 2024 14:15:59 Z

Three dimensional (3D) trade marks have featured prominently in the news in recent years due to the coverage given to some of the world’s biggest companies, which have achieved great successes and failures in relation to registration in equal measure.

Coca Cola, Mondelez (Toblerone), Hard Rock Café, and Chanel, to name a few, have obtained protection for their product’s shape or packaging as a result of their unique and distinctive characteristics, with their successful applications undoubtedly cementing their place in the commercial marketplace and aiding their ongoing success.

Whereas Nestle (Kit Kat), Jaguar Land Rover, and Rubik’s Brand (Rubik’s Cube), failed in their bid to claim 3D trade mark protection, despite seemingly having the necessary recognition amongst millions of consumers.

Gareth Jenkins and Don Pennant at leading intellectual property firm Wynne Jones IP, discuss why an investment in a 3D trade marks can provide unparalleled commercial benefits and industry success. However, caution is advised, and any potential owner should thoroughly research previous cases before making any application, so that a clear and realistic expectation of the scope of rights obtained can be considered.

Mr Pennant said: “In recent years we have seen a number of high-profile cases of well-known brand owners failing in securing and / or enforcing 3D trade mark rights, when many would agree that these brand owners were in fact seemingly deserving of them.

“This should not serve to discourage brand owners who feel they have a legitimate case with merit in seeking 3D trade mark protection.”

What are the differences in these cases and what criteria are in fact necessary to achieve the allusive 3D trade mark registration? To answer these important questions we must first ask what a 3D trade mark is.

What is a 3D trade mark?

A 3D trade mark is one example of the many types of trade marks that may be registered. A 3D trade mark is the same as a normal trade mark in that it needs to fulfil the standard criteria that all trade marks should for registration. It must not be descriptive and it needs to be able to distinguish goods and/or services of one undertaking from those of others.

What makes the 3D trade mark desirable is that if registered, it should provide the owner with a right to the exclusive use of the shape of the product itself or for the packaging thereof, in relation to a range of goods and/or services, providing the owner with a clear commercial advantage in the manufacture and sale of those products and / or packaging.

There is some resonance with rights protected, through registering a design or by design right, but these should not be confused, not least because all forms of designs rights are time limited. But a trade mark registration gives a monopoly in perpetuity so long as it is renewed and used.

What are the hurdles to achieving 3D trade mark protection?

As with any other form of trade mark, a 3D trade mark must not be any of the following:

The shape or other characteristic, which results from the nature of the goods themselves.
The shape, or another characteristic, of goods which is necessary to obtain a technical result.
The shape, or another characteristic, which gives substantial value to the goods.

It is worth noting that only one of the above grounds of refusal is required to prevent registration. With regard to 3D trade marks the courts have frequently held that the purchasing public is not used to distinguishing between competing products on the basis of shape alone. The closer the shape resembles the natural shape used for such products, the less likely it is to be considered as distinctive enough for registration as a trademark. This is often the real first hurdle.

The shape which results from the nature of the goods themselves.

This first criterion consists of marks where the shape of the goods is inherent to the generic function of them. The shape of a football is an example of the type of shape that will be refused protection. There are many common shapes which no one undertaking should be allowed to obtain a monopoly right in. The more uncommon or fanciful the shape the more likely the rights will be granted.

Stokke A/S was granted a 3D trade mark registration for its Tripp Trapp chair. When it sued Hauck for infringement a counterclaim was filed for invalidity on the basis that the chair shape was determined by the nature of the product itself namely a ‘safe comfortable and reliable children’s chair’. It was found that this provision applies to shapes containing essential characteristics inherent to the function of the goods i.e. characteristics purchasers would look for in competitor’s products.

The shape of goods which is necessary to obtain a technical result.

This second criterion has been the pitfall for many well known branded products such as Lego. The shape of the Lego brick was refused on the basis that the mark applied for was a shape with essential characteristics which performed the technical function of the product i.e. the most important element of the Lego brick allows it to be attached to another.

The toy brand, which is world renowned for creating its mini red building bricks, originally saw the product registered with a European Union Trade Mark in 1999. However, just two days after the registration was obtained its competitor Mega Brands contested the trade mark registration on the basis that the 3D product related directly to its ability to perform a technical function.

Following the challenge, a lengthy legal process ensued, which was eventually resolved in 2010, when the registration was ruled invalid as its shape allowed, and was necessary, for the product to achieve a technical result.

More recently, the ‘famous’ four finger chocolate bar, in the Kit Kat case, was refused on both the first and second criteria. The court found that the basic rectangular bar shape resulted exclusively from the nature of the goods. The position and depth of the grooves running length ways as well as the number of grooves making the width were simply determined by the technical effect of needing to break the fingers.

The shape which gives substantial value to the goods.

The third criterion involves marks that consist of a shape which gives substantial value to the goods. This is a trickier criterion to determine and is subject to many cases. It relates exclusively to the intrinsic value of the shape and does not take any account of the attractiveness of the goods flowing from the reputation of the trade mark or its proprietor.

In the Hauke v Stokke ( Tripp Trapp chair case) the Court of Justice explicitly stated that this ground of refusal is not limited to marks which have a purely artistic or decorative value. This can overlap with the second criterion if part of the product confers substantial value through a technical function, as discussed in the Bang & Olufsen case.

In the Bang & Olufsen case an application was filed for the ‘beautiful looking’ speaker, however the court decided that the sign consisted exclusively of the shape which gives substantial value to the goods. Consequently, it rejected the application for registration.

There is an argument to say that if such an innovative design is created, why should it not be able to be subject to exclusive rights, such as a trade mark? Well the answer may lie in the fact that the speaker design may have been more appropriately protected through design rights, whether registered or unregistered. Are IP rights mutually exclusive? This issue arose in the London Black cab case in 2016.

The London cab shape was found to consist exclusively of the shape which gives substantial value to the goods and was rejected. It is certainly arguable that the value actually came through use and therefore flowed from its reputation. The shape was, however, already registered as a design. The high court found this to be relevant. If a 3D trade mark could be protected by other IP rights (registered design in this case) this may contribute to a finding of invalidly, if it had been applied for and registered as a trade mark per se.

This case highlights the court’s attitude to preventing trade marks from being used to indefinitely extend the time-limited protection of other IP rights.

The shape of this article belongs to the genus, which should be protected and protectable by design right, which is granted for a limited time only to spur innovation in designs. Trademarks are there, in contrast, to protect distinctive signs and repute. The availability of trademark protection on top of or instead of design protection may undermine and artificially extend the time-limited character of design rights.

Naked 3D shapes seem to be viewed with a greater degree of suspicion than those which are filed along with additional features (such as graphical or word elements or even position trade marks) to the 3D shape or packaging. This reluctance on the part of the trademark offices and the courts to accept registration must stem from the fear that a trademark monopoly by way of 3D shapes could ultimately stifle legitimate competition.

This current position for this criterion is being considered in the Louboutin case which concerns an invalidation action filed against a Benelux trade mark registration for the signature red sole of Christian Louboutin’s shoes. The Court of Justice has been asked whether a shape is limited to three dimensional characteristics including its contours and measurements, or, on the contrary, does it also include non-three dimensional properties such as colour? The Court of Justice is yet to issue its decision, but an opinion has been provided by the Advocate General in which it was stated that “[t]he mark should therefore be equated with one consisting of the shape of the goods and seeking protection for a colour in relation to that shape, rather than one consisting of a colour per se”.

The opinion of the Advocate General could be interpreted in such a way that the red sole trade mark registration is invalid. However, in his opinion, the Advocate General reiterated that the assessment of substantial value “relates exclusively to the intrinsic value of the shape, and must take no account of attractiveness of the goods flowing from the reputation of the mark or its proprietor”.

Assuming that the Court of Justice decides that the criterion incorporates two dimensional characteristics of shapes, the referring court will need to decide whether substantial value is conferred on the goods by the red sole and if so, whether that is the result of the intrinsic qualities of the red sole of the shoe or whether it is the result of the way in which Christian Louboutin has marketed his goods.

If the Court of Justice follows the opinion of the Advocate General, brand owners will need to be aware that it may become more difficult to protect the shape or appearance of their products when the intrinsic qualities of its two dimensional or three dimensional characteristics confer substantial value on the goods.

Where have 3D trademarks been particularly successful?

A successful example and one of the first 3D registrations involves one of the biggest brands in the world and its iconic branding and packaging, Coca Cola. The brand’s distinctive bottle, featuring its recognisable contouring, was deemed individual enough to receive 3D trademark protection.

Coca Cola’s bottles are instantly equated with the company itself, and Coca Cola has been able to maintain exclusivity for its own bottle’s unique shape and appearance on high street shelves worldwide, helping to set it apart as a market leader.

However, having secured a 3D trade mark registration the brand owner now must now tackle the joys of enforcement. Here we look at some examples of the types of cases being reported.

Mondelez (Toblerone) is among the most recent brand owners to become embroiled in a high-profile dispute surrounding 3D trademark rights. Chocolate producer Mondelez, which produces the Toblerone chocolate bar, threatened legal action against Poundland after Poundland produced a product which was considered distinctly similar in shape and appearance to the well-known triangular bar.

The dispute came after Poundland announced the launch of its new Twin Peaks bar, which featured distinctive gold and red packaging, along with two rows of chocolate in triangular shapes filled with a nut flavouring – similar to that of Toblerone.

Concerned that the similarities could create confusion among consumers, Mondelez launched a legal challenge against the budget retailer in a bid to cease production.

After a lengthy legal case, Poundland’s Twin Peaks bar was deemed too similar to Toblerone and both businesses reached an agreement to rebrand Poundland’s bar.

This case bears similarities to the dispute between Kit Kat producer Société des Produits Nestlé SA and Cadbury UK Ltd, with Nestle attempting to register the shape of its famous four-finger bar.

However, unlike the Toblerone case, the trade mark bid was ultimately unsuccessful. Where the two cases differ lies in the distinctive shape of the packaging. In the case of Toblerone, the packaging clearly outlines and shape of the chocolate inside, following its iconic triangular design; as such consumers automatically recognise the exterior branding as belonging to Toblerone, but more importantly the shape of the packaging results in it being immediately recognisable as pertaining to that particular brand.

In contrast, Kit Kat’s packaging and the ‘Kit Kat’ name were found to be the features which consumers instantly recognised and identified as belonging to Nestle – and not the shape of the bar.

Following the filing, which was made in July 2010, the Court of Appeal ruled last year that the shape of the Kit Kat bar was not distinctive enough for consumers to solely identify it as belonging to Nestle.

In its ruling the court stated that the shape of the bar had not featured in the brand’s advertising, with the product’s wrapper and branding instead the feature by which consumers recognised Kit Kat.

The court also indicated that the wrapping did not in any way display the shape of the bar, concluding that there was insufficient evidence that consumers would identify the product as belonging to Nestle based solely on its shape.

Mr Pennant said: “As demonstrated here, successful 3D trademark registration usually follows the company’s ability to provide significant evidence that it did not fail to meet any of the three main criteria outlined by the courts.

“The more distinctive a brand is, and its individual shape, appearance, and ability to be absolutely linked exclusively with the overarching company, the greater the chance of success.

“We would urge any companies considering applying to register their product as a 3D trademark to thoroughly research the marketplace to get a genuine sense of what a successful application might entail.

“Really evaluate the three main criteria set out by the courts, and objectively analyse where a product could face any challenges.

“Success, while rare, can result in transformative benefits and brand rights for any company.”

The future of 3D trademarks – where do they go next?

3D trademark rights remain a complex and evolving area of intellectual property law.

While still relatively unusual in their application, it is clear that future decisions will help define the scope offered and thus the adoption and commercialisation of these rights.

Could cases such as those discussed above lead to brand owners taking a more considered look at the distinctive character in the shape of its products and their packaging and specifically adapt their marketing campaigns?

One thing these complex cases have taught us is that 3D trade mark applications could have a significant impact on the way producers and manufacturers approach distinctiveness of shape, brand and product creation, and ultimately brand identity going forwards.

It is clear that until such time as more rulings are made, a clear picture of the future of the 3D trademarking industry remains relatively obscure with applicants still potentially facing lengthy and costly legal cases should they apply for a shape-based trademark.

Mr Jenkins warns applicants that they could be faced with a significant wait for outcomes. For example, in the case of Nestle vs Cadbury, the Kit Kat 3D trade marking legal challenge lasted for seven years.

He added: “The coming years could spell a turning point for many brand owners who have been waiting for key decisions.

“We are hopeful that these will help to define the real scope of the protection offered by these unusual intellectual property rights.”

Despite the obvious associated pitfalls, the length of time, costly legal battles, and ultimately the high probability of failure, Mr Jenkins added that it is unlikely that 3D trade marking will become obsolete in the long term thanks to the potential benefits associated with them.

He added: “The competitive advantage that a 3D trade mark registration could give a brand owner, if it fulfils the necessary criteria and overcomes the hurdles discussed, is quite enticing. Therefore, the boundaries of the scope of protection will, as normal, be tested.”

Featured in Issue 73 of the World Trade Mark Review

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