Chemical & Pharmaceutical
INVENTIONS
Filing
We draft and file patent applications for new chemical inventions, ranging from pharmaceuticals to cosmetics to food products. Our clients range from small to medium sized enterprises to large multinational corporations. As a result of our wide variety of work, we are able to tailor our services to an individual client’s needs – no matter how big or small.
Prosecution
We have a vast amount of experience in obtaining patents not only in the UK and Europe but in countries across the globe from the Americas to Asia and everywhere in between, with the assistance of trusted patent attorneys in other jurisdictions. A detailed understanding of patent law across multiple jurisdictions helps us to assist our clients with preparing and executing global patent prosecution strategies in an effective manner.
Chemical & Pharmaceutical
Oppositions & appeals
Contentious Work
Our Oppositions and Appeals teams are also active in contentious matters, be that attacking or defending patents. The team has decades worth of experience in handling multi-party EPO oppositions and appeals, including collaborating with other opponents where advantageous, and effectively presenting arguments in the written and oral parts of the proceedings.
Freedom-to-Operate
In addition to securing patents for our clients, we also regularly advise on infringement risks arising from third party patent rights. We are able to conduct searches for relevant third-party patent rights that may be of relevance to our client’s commercial activities and advise accordingly on any infringement risks that we identify along with steps that can be taken to mitigate these risks.
Recent Insights
Read the latest insights from the Schlich team reporting recent cases relevant to the chemical & pharmaceutical sector.
Claim Interpretation and Other Lessons from Otec v. Steros at the UPC Court of Appeal
This UPC Court of Appeal’s decision in Otec v. Steros provides further guidance on how claims are to be interpreted at the UPC. The Court made it clear that experimental data produced after the filing of a patent application and not disclosed in a patent specification generally cannot be used to clarify the meaning of the claims and can only be relied upon in exceptional circumstances. The ruling underscores the importance of drafting claims and descriptions that are clear and complete from the outset.
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.”
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,
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!
A Legal Framework for Considering Second Medical Use Claims at the UPC: Sanofi vs Regeneron
The jurisprudence of the United Patent Court (UPC) is relatively new and thus new aspects frequently arise. A decision of the Dusseldorf local division of the UPC may provide a framework for assessing infringement of second medical use claims, which might be persuasive to other UPC courts.
Safestand stands taller as Court of Appeal finds trestle designs valid
The recent Court of Appeal decision in Safestand Limited v Weston serves as a reminder of the importance of ensuring that representations provided as part of a design application are clear and consistent so as to ensure that upon an objective assessment, the representations are found to relate to a single product and not a collection of different embodiments.
Landmark CJEU judgement opens up new avenues for European patent litigation
In a recent landmark judgement, the CJEU confirmed the possibility of European patent holders being able to consolidate actions for patent infringement across multiple EU and non-EU member states at a single EU court. For patent holders looking to assert their IP in an efficient, and likely more cost-effective and harmonious manner, the implications of the CJEU decision on enforcement strategies before both national courts and the UPC are noteworthy.
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.
