Professional Service
Patents
Patents represent a key aspect of our clients’ intellectual property and may have significant commercial value, whether used to protect core technology, keep competitors out of a particular technical/commercial space, or as a source of revenue through licencing or assignment of rights. We understand that the role of patents may vary depending on the nature and life-stage of our clients’ businesses and seek to offer practical and tailored advice.
In drafting patent applications, we seek to define your inventions in a way that offers commercially-relevant protection, provides flexibility to address any unforeseen objections arising during prosecution, and ultimately provides valuable rights that can be defended and enforced, if required.
The Schlich attorneys adopt a creative and practical approach to prosecution, and have experienced considerable success through direct interaction with EPO and UKIPO Examiners. We can also advise on effective strategies for accelerating prosecution, or deferring costs, to reflect your commercial needs. We are also able to coordinate patent prosecution worldwide, either directly through the European and International (PCT) patent systems or by working through established relationships with trusted foreign law firms.
The Schlich patent team have developed considerable experience, and a proven track record of success, in EPO opposition and appeal proceedings (both offensive and defensive). We are also able to advise on, and propose practical solutions to, potential freedom-to-operate and infringement issues.
Our Specialist Patent Attorneys
The Patent Attorneys at Schlich offer a combination of technical knowledge and broad experience in all aspects of patent drafting, prosecution, oppositions and advising on and managing contentious issues.
Recent Insights
Read the latest insights from the Schlich team reporting recent cases and updates to patent law.
UPC Court of Appeal Suggests the Description is Relevant to Deciding Whether Certain Embodiments Are Excluded from the Scope of the Claims
The question of whether and to what extent the description should be used to interpret the claims of a patent is a disputed topic in patent law, with there being a need to construe the claims as they are written whilst also reading them in the context of the patent as a whole. In its first substantive decision, the UPC’s Court of Appeal suggests the description can be used to decide whether arguably impractical embodiments are excluded from the scope of the claims.
Updates to the Guidelines for Examination in the EPO – 2024
The Guidelines for Examination in the European Patent Office (EPO) “the Guidelines” act as an instruction manual with respect to the various aspects of the examination of European patent applications and patents before the EPO, that is they dictate the practice and procedure that should be followed under the European Patent Convention (EPC) and its Implementing Regulations “the Rules”. The Guidelines are updated on an annual basis and the latest edition, which supersedes the previous version, entered into force on 1 March 2024. Herein we provide a summary of those changes most likely to affect both clients and practitioners alike.
Up, down, discounted? EPO fees are changing
The EPO has recently announced a revised fee structure for the next two years, including new fee reductions for micro-enterprises and the reduction of some fees, as well as some increases elsewhere. At Schlich we are ready to guide you through these changes and advise whether you may benefit from paying upcoming fees before/after implementation of the new fee structure.
UK Supreme Court confirms that AI cannot be named as an inventor on UK patent applications
As part of a long, ongoing legal battle across the globe, a further blow has been delivered by the UK Supreme Court to those who believe in the correctness of naming AI systems as inventors on patent applications for AI-devised inventors. The Supreme Court has upheld the earlier decisions of the UKIPO, High Court and Court of Appeal to refuse patent applications made by Dr Thaler for inventions claimed to have been devised by the AI system, DABUS
Back in the Maze: Is the Decision of the Referring Board in G 2/21 About to be Overturned?
When the referring board’s written decision was issued in the case underpinning the “plausibility” referral (G 2/21) late last year, it provided much-needed certainty about how the EPO would apply G 2/21 in the future. However, that certainty has been short-lived because the opponent in that case has filed a petition for review of the decision by the Enlarged Board of Appeal.
Generic Drug Manufacturers Protected by the “Skinny Label” provisions of the Hatch–Waxman Act
The US Federal Circuit has given a decision that blocks a potential form of “evergreening” that pharmaceutical companies might have used to prevent launch of generic versions of their drugs through asserting later-filed method-of-use patents for the drug.
The Maze of Plausibility Case Law: The Referring Board in G 2/21 Suggests a Way Through
When the EPO’s Enlarged Board of Appeal issued its decision in G 2/21 (the “plausibility” referral) earlier this year, many were left wondering what the requirements were for a patent applicant/proprietor to be able to rely on post-filed evidence in support of inventive step. The referring board in the case underpinning the referral (T 116/18) has recently issued a decision setting out its interpretation of G 2/21 in detail, offering new insight into how the EPO is likely to apply this important decision in the future.
The EPO Examining Division are Criticized by the Boards of Appeal for Breaking the Rules of Procedure
The Board have remitted this recently refused case to the Examining Division who have been criticized for committing several substantial procedural violations, including depriving an applicant of their all-important right to oral proceedings.
Get in touch
Our team of UK and European Patent Attorneys and Chartered Trade Mark Attorneys are highly knowledgeable and experienced in assisting clients with all aspects of their IP needs.
Contact us now to find out more about how we could help you and your business.