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.
Squeezed Out! AstraZeneca overturns Wyeth’s $107.5M Infringement Award
The recent US Court of Appeals for the Federal Circuit (CAFC) decision in Wyeth LLC v AstraZeneca Pharmaceuticals LP is the story of a novelty–enablement “squeeze” triggered by an amendment during prosecution that yielded a novel claim but, ultimately, at the cost of enablement of the claim.
UPC Court of Appeal Confirms Lock-in Danger
The Court of Appeal of the Unified Patent Court (UPC) has now considered whether an action for a declaration of non-infringement can be commenced before the relevant European patent has formally been granted.
When “Monotherapy” Means Monotherapy: A Cautionary Tale on Claim Interpretation and Added Matter at the EPO
In this recent EPO Board of Appeal decision, the claims of European patent No. 3288980 were found to lack basis in the application as filed as a result of the BoA’s reluctance to accept a bespoke meaning of the term “monotherapy” advanced by the patentee. The decision serves as a useful reminder that non-standard definitions must be clear, consistent and reflected in the claim language itself, particularly as questions around claim interpretation and added matter remain under close scrutiny while we await the outcome of G 1/26.
Has the EPO TBA Demolished the Essentiality Test?
EPO TBA decision T 0417/25 (Remote-controlled demolition robot/Husqvarna), illustrates again that, when assessing amendments for addition of matter, the EPO’s approach is ever stricter.
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.
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.
