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.
Equivalence Explained – The Court of Appeal Provides Guidance on How to Correctly Apply the Actavis Test
In the case of Salts v Pelican, the UK Court of Appeal has provided helpful guidance on how to correctly apply the Actavis test when considering infringement under the doctrine of equivalents. This case appears to establish an important precedent for the application of this test to other cases in the future.
Teva v Eli Lilly: a different route for antibody genus claims?
Overview Broad antibody claims have faced a difficult path in the US since Amgen v Sanofi, particularly where the claim covers a large functional genus. The Federal Circuit’s decision in Teva v Eli Lilly is therefore interesting because the court drew an important distinction: claims to antibodies themselves are not necessarily treated the same way […]
G 1/26: The EPO’s Unfinished Business on Claim Interpretation
Following G 1/24, which held that the description must always be consulted when interpreting claims for patentability, a new referral to the Enlarged Board of Appeal - G 1/26 - asks whether that same approach applies more broadly, including to added matter, and whether the description can go beyond merely explaining claim terms to actually influence their meaning.
From EPO to UPC: The Lasting Impact of Prosecution on Claim Interpretation
The UPC continues to develop its approach to claim interpretation, particularly regarding the role of Patentee’s statements made during prosecution. A recent decision from the Milan Local Division in Agathon v. Intercom and Knarr offers insight into how the UPC treats such statements when construing patent claims.
First UPC Referral to the CJEU: Just How Long is the Long-Arm Jurisdiction of the UPC?
In its first ever referral to the CJEU, the UPC seeks clarification over its jurisdiction to decide on infringement of European patents in EU Member States that chose not to sign up to the UPC Agreement.
Sequence Identity Claims After T 0137/24: How Broad Is Too Broad?
The recent Board of Appeal decision in T 0137/24 provides useful guidance on how sequence identity claims are assessed under the EPC, particularly in relation to added matter and sufficiency.
Claim interpretation at the EPO: Another Decision uses the description to broaden the claim scope
In this case, the Board of Appeal (BOA) considered the description to have a significant influence on claim interpretation, with the potential to both narrow and broaden the scope of the claims. This raises important questions on how description amendments may negatively affect claim interpretation post grant.
A Helping Hand: The USPTO Takes the Side of American Manufacturing
USPTO Director John Squires has recently introduced changes to the tests for institution of post-grant review and inter partes review by the USPTO’s PTAB.
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.
