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.
Has the EPO TBA Demolished the Essentiality Test?
In these proceedings the European Patent Office (EPO) Technical Boards of Appeal (TBA) revoked a patent owned by Husqvarna AB following an appeal brought by Brokk AB. With regard to assessing amendments for addition of matter under Article 123(2) EPC the TBA were clear that the decisive test with respect to added matter remains the “gold standard” test of G2/10 as to whether subject matter is “directly and unambiguously derivable from the […]
A Clear Way Forward for Description Amendments: Decision Issued in G 1/25
The Enlarged Board of Appeal of the EPO has decided in G 1/25 that claim interpretation requires the specification to be read as a unitary process, endorsing the decision in T 439/22 and potentially ending the debate about what it means to ‘consult’ the description. The decision also confirms the EPO can only require description amendments where these are necessary to ensure compliance with certain articles of the EPC.
UPC Considers Intermediate Generalizations
The UPC Court of Appeal has recently issued its decision on SiBio Technology Limited vs Abbott Diabetes Care Inc., providing important guidance with regards to added matter. This is a further example of the UPC developing its own approach to application of the European Patent Convention (EPC).
US Supreme Court Finds that Induced Infringement Requires More Than a Skinny Label
Following our earlier article, the US Supreme Court has now provided its Decision in this matter.
Formulation PTEs on the chopping block down under
Australia’s High Court is now considering a patent term extension issue with major implications for pharmaceutical formulation patents.
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.
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.
