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.
Recent Insights
Read the latest insights from the Schlich team reporting recent cases and updates to patent law.
Inventive Step Based on a “Black Box” Following G1/23
The EPO Technical Boards of Appeal (TBA) decision in T 1044/23 offers the first practical insight into how the EPO Enlarged Board of Appeal (EBA) decision in G 1/23 will shape novelty and inventive step assessments when the prior art consists of commercially available products whose manufacturing processes remain undisclosed, i.e. effectively an intellectual “black box.”
When AI is not enough: UKIPO and patentability of AI inventions
Technology with artificial intelligence has experienced an extraordinary boom in recent years. This is reflected in the increasing number of patent applications with inventions that integrate AI to their functionality. Interestingly, this has raised many legal questions regarding excluded subject matter, seeing that determining what constitutes a patentable AI invention has become an important point of debate in intellectual property law.
Claim Interpretation At The EPO: Clear Claim Language Might Not Mean What You Think It Does
Since the EPO’s Enlarged Board of Appeal issued decision G1/24, it has become clear from the number of recent decisions of EPO Technical Boards of Appeal that the description is not, in practice, being used to narrow the interpretation of otherwise clear claim language. T1849/23 has become the first case where clear claim language is broadened by definitions and/or embodiments provided in the description.
Does UK Patent Law Need Updating to Account for AI? One Recent Decision of the UK High Court Suggests It Does!
A recent decision of the UK High Court in relation to another of Dr Thaler’s patent applications highlights some of the problems caused by using patent laws written in a time before AI to govern patent practice in the modern age.
Lynk Labs asks Supreme Court of the United States to define prior art in the context of inter partes review proceedings
With the America Invents Act, Congress introduced a new administrative procedure for challenging patents – inter partes review (IPR). Any person, except the Proprietor, can file a petition for review but only on a ground that could be raised under section 102 or 103 and “only on the basis of prior art consisting of patents or printed publications” (35 U.S.C. § 311(b)). In a judgement handed down in January 2025, the Federal Circuit affirmed a decision of the USPTO’s Patent Trial and Appeal Board (PTAB) to hold several of Lynk Lab’s patent claims as obvious over a US patent application filed before, but published after, the priority date of Lynk Lab’s patent claims. Key to this finding was the Federal Circuit’s affirmation that patent applications may serve as prior art in IPR proceedings as of their filing date and fall within the ambit of the category printed publications. Now Lynk Labs has petitioned the Supreme Court for a writ of certiorari asking “Whether patent applications that become publicly accessible only after the challenged patent’s critical date are “prior art *** printed publications” within the meaning of 35 U.S.C. § 311(b)”. In Lynk Lab’s opinion, they are not.
An Appellant is an appellant, and an intervener in an appeal is an intervener – G2/24
Following our earlier article, the Enlarged Board has now provided its Decision in this matter,
Ex Parte Re-Examination at the USPTO
In the United States, third parties have very limited opportunities to influence patent prosecution, and the main post-grant challenge routes (inter partes review (IPR) and litigation) are notoriously costly and time-consuming. Ex parte re-examination offers a practical, lower-cost alternative by allowing any party to submit prior art that prompts the USPTO to reassess an issued patent’s validity.
G 1/23 confirms that products placed on the market before the effective date of a European patent application constitute prior art, regardless of whether they can be reproduced
On 2 July 2025, the EPO’s Enlarged Board of Appeal (EBA) issued its decision in G 1/23. The referral stemmed from T 0438/19, an appeal against the decision of an opposition division to reject an opposition against a European patent directed to a material for encapsulating a solar cell which comprises an ethylene/alpha-olefin copolymer with certain defined properties, including a content of aluminium element of from 10 to 500ppm. D1 disclosed a commercially available copolymer, ENGAGE® 8400, which the opponent/appellant sought to rely on as the closest prior art for their inventive step challenge; however, the Patentee argued, with reference to G 1/92, that ENGAGE® 8400 cannot be reproduced (i.e., it is not enabled) and therefore it has not been made available to the public within the meaning of Article 54(2) EPC and thus is not a suitable starting point for the assessment of inventive step. Grappling with how to interpret G 1/92, the Board in T 0438/19 referred three questions to the EBA focused on understanding whether a commercial product, put on the market before the filing date of a European patent application, can be excluded from the state of the art for the sole reason that it could not be reproduced. The EBA has now answered, and the short answer is no!
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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.
