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Press releases and law firm thought leadership

This page is dedicated to keeping readers informed of the latest news and thought leadership articles from law firms across the globe.

If your firm wishes to publish press releases or articles, please contact Shehab Khurshid on +44 (0) 207 396 5689 or shehab.khurshid@legalease.co.uk

 

Legal Developments Worldwide

Articles contributed by Boult Wade Tennant

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Boult Wade Tennant ranked top tier for Trade Mark in MIP’s IP Stars Handbook

February 2016 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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We are delighted to announce that Managing Intellectual Property (MIP) has ranked our trade mark practice in the top tier of its 2016 annual survey. MIP’s IP Stars rankings are based on extensive research among thousands of intellectual property practitioners from around the globe, creating one of the most comprehensive and authoritative surveys of the IP legal market. It covers 80 countries and identifies the best patent, trade mark and copyright firms and practitioners in the world.

10% Tax Rate for Intellectual Property Confirmed

December 2011 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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On 6 December 2011, the UK Government published further details of a lower Corporation Tax rate for IP earnings which will come into force in April 2013.

Human embryonic stem cell inventions – patentable or not?

June 2011 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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On 10 March 2011 Advocate General Bot delivered his Opinion in the case of Oliver BrĂŒstle v Greenpeace eV1, a reference to the European Union’s Court of Justice (CJ) from the German Federal Court.

Edwards and KCI make Entitlement to Priority Top Priority

June 2011 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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The validity of a patent often hangs on the validity of its priority claim, as the latter determines the effective date for assessing novelty and inventive step.

Valid until proven invalid - PLAY-DOH victorious

June 2011 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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On 11 February 2011 the High Court of Justice (Chancery Division) Intellectual Property Community Trade Mark Court handed down judgement in the case of Hasbro Inc and others v 123 NĂ€hrmittel GmbH and Marketing and Promotional Services Ltd.

Further progress towards a single Europe-wide patent

June 2011 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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Over the last few months, momentum has been gathering within the legal bodies of the EU to address the lack of a community-wide single patent. The Commission has been keen to address this matter for some time, since in their view a lack of a unitary patent across the EU creates artificial barriers in the internal market.

Broccoli and Wrinkly Tomatoes

January 2011 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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- The Enlarged Board of Appeal at the European Patent Office interprets Article 53(b) EPC in broad fashion

New EPO disclosure requirements

January 2011 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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On 1 January 2011 new Rules 141 and 70(b) EPC come into force at the European Patent Office (EPO). These new rules require applicants claiming priority of a previous application to file a copy of the results of any search carried out by or on behalf of the authority in respect of the previous application.

Some Clarification from the EPO

November 2010 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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The European Patent Office (EPO) has now published two further decisions to clarify some of the new rules that were introduced on 1 April 2010.

G1/09 – When is a patent application pending?

October 2010 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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Rule 36(1) EPC provides an applicant with the right to file a divisionalapplication relating to any pending European patent application within two yearsof the first substantive communication from the Examining Division (or anobjection of lack of unity raised by the Examining Division) in respect of theearliest application in that family. 

Change in opposition deadlines

October 2010 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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Trade Mark Opposition Proceedings and calculating the opposition period – Change of UK Intellectual Property Practice – earlier deadlines

Israel – New options for obtaining trade mark protection

August 2010 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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On 1 September 2010 Israel will join the territories that can be designated via a Madrid Protocol application for the protection of trade marks. For those with existing Madrid Protocol applications or registrations Israel can be the subject of a subsequent designation in order to extend protection into this territory. In this case, the rights would date back to the date that the request for a subsequent designation was made rather than the original filing date of the Madrid Protocol application or any priority claim.

Change in Google AdWords and AdText Policy

August 2010 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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Google has announced that, from 14 September 2010, it will no longer prevent advertisers from selecting a third party's trade mark as a keyword. Instead, trade mark owners will be able to complain abou the selection of their trade mark by a third party if they feel that it leads to a specific ad text which confuses users about the origin of the advertised goods and services. Google will then conduct a "limited investigation" and if it finds that the keyword in combination with a particular ad text is confusing as to the origin of the advertised goods and services, it will remove the ad. However, it will not prevent the use of trade marks as keywords.  

The ECJ's judgement in the case of Monsanto v Cefetra BV and others

August 2010 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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On 6 July 2010 the European Court of Justice (ECJ) handed down their judgement in the case of Monsanto Technology LLC v Cefetra BV and Others, a referral to the ECJ from the Rechtbank’s-Gravenhage of the Netherlands. This case is of particular significance for patentees in the biotech industry since it has provided one of the first opportunities for the ECJ to address the scope of gene patents in Europe in light of Directive 98/44/EC (the Biotech Directive).     

Accelerated prosecution of European patent applications

August 2010 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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The time from filing to grant of European patent applications has increased in recent years, particularly in certain technical fields such as telecommunications, software and biotechnology. In some areas, this is a result of the number of applications filed, which has risen faster than the number of examiners able to deal with such cases. Also, the volume of PCT applications designating the EPO as International Searching Authority has caused a knock on effect to increase the delays in examination of other applications. Other major patent offices are experiencing similar problems leading to backlogs. 

EPO Board of Appeal allows double-patenting where patentee has "legitimate interest"

July 2010 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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In T1423/07 (made available online May 2010), the EPO Board of Appeal allowed a European patent to be granted with claims that were identical to the claims granted in respect of the European priority application.

EPO decision reinforces strict approach to “added matter”

June 2010 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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A recent decision (T2017/07, published April 2010) from the Technical Board of Appeal of the EPO highlights how an apparent limitation to a patent claim can actually have the effect of broadening the claim beyond its scope as granted (Article 123(3) EPC). The decision also illustrates how strictly the added matter provisions of European practice are being interpreted by the EPO (Article 123(2) EPC).

A well-known, different star: Daimler AG and Sany Group Company Limited

March 2010 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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On 23 October 2009, the UK section of a multinational trade mark dispute between Daimler AG and Sany Group Limited was decided in Sany's favour as it was deemed the two marks in dispute were not similar enough.

The Enlarged Board declares ‘Swiss-type’ claims redundant under EPC 2000

March 2010 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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On 19 February 2010, the EPO Enlarged Board of Appeal (EBoA) announced their decision in G2/08, thereby providing important answers to the questions addressing the fate of ‘second medical use’ claims under EPC 2000.  Key aspects of the decision are summarised below.

Back to Nature?

March 2010 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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The Enlarged Board of Appeal of the EPO aims to interpret the exclusion from patentability of methods of treatment by surgery.

Google AdWords

October 2009 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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Trade mark infringement in relation to online advertising has been a hot topic of late. The question on the legality of the use of keywords corresponding to trade marks has been the subject of several lawsuits throughout the EU. Perhaps the highest profile of these has been the recent group of cases concerning a group of well known brand owners and Google France.

IPO changes for UK trade marks

October 2009 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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On 1 October 2009 the Intellectual Property Office (IPO) introduced a new service called 'Right Start', as well as changes to its existing fee structure for filing UK trade mark applications. Right Start is aimed at giving applicants an indication of the likely success of their application. The fee changes include a fee reduction for e-filing. The IPO has also changed the costs and practices of filing series marks and has increased the fee for extension of time. It has also temporarily suspended the fast-track examination service.

A one way street to harmony?

August 2009 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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On 2 July 2009 the UK Court of Appeal handed down its judgement in Generics (UK) v Daiichi, dismissing the appeal and holding that the patent relates to inventive subject matter. The court endorsed a more balanced approach to assessing obviousness in patent law, wherein factors such as the motive to find a solution to the problem addressed by the patent, the number and extent of alternative avenues of research, the effort involved in pursuing them and the expectation of success should all be considered. This decision reaffirms a recent trend towards harmonising the approach to assessing patentability applied by the UK courts with that of the European Patent Office (EPO) and other national courts in Europe.

Saving Face - Personalised URLs on Facebook - Make sure your marks are protected

June 2009 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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Facebook users can now register a personal URL for their profile page on the Facebook website. This raises concerns for brand owners as Facebook users may decide to choose a well known trade mark as their URL. The prospect of facebook.com/[yourmark] could become a reality. Consequently, Facebook has taken measures to reassure rights holders and prevent name squatting.

European Patent Office introduces stricter time limits on divisional applications

June 2009 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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On 1 April 2010, a new rule to the European Patent convention comes into effect1 which imposes a stricter time limit on the deadline for filing divisional applications. This new rule will apply to all applications pending on that date. Boult Wade Tennant therefore strongly recommends an early review of existing applications to determine if one or more divisional applications might be required.

European Patent Office introduces mandatory accelerated examination

June 2009 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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On 1 April 2010, a series of new rules to the European Patent Convention come into effect1 which are aimed at forcing applicants to bring patent applications into conformity with the requirements of the EPC earlier in the application process. These new rules will affect many applications that are being filed now so should be borne in mind when filing any new European patent application or when entering the European phase of an international application.

European Patent Office announces rule changes to ‘Raise the Bar’

June 2009 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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In 2007, the European Patent Office introduced their "Raising the Bar" initiative, striving for better quality patents1. They stressed their ongoing commitment to providing a quality search and examination process, but highlighted what they saw as failings on the part of applicants to enter quality applications into that process. With increasing globalisation, more applications were being received that failed to meet with European specific requirements of clarity and conciseness. In April 2008, a fee of €200 for each claim in excess of fifteen was introduced in an effort to ensure that applicants filed fewer claims. This was supplemented in April 2009 by a fee of €500 for each claim in excess of fifty.2 Further significant changes to the rules have now been announced for April 2010.3

House of Lords finds European approach “sufficient”

April 2009 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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Recent months have seen a number of decisions by the UK Courts that explicitly seek to align patent practice in the UK with the approach of the European Patent Office (EPO).  This trend has now been reaffirmed by the House of Lords in the recently-issued judgement in Generics v Lundbeck when considering the concept of sufficiency under UK law.

Protecting designs in China

April 2009 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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Companies worried about protecting their intellectual property in China can take heart from a recent decision of the Chinese court. German firm Neoplan Bus GmbH has successfully sued the Chinese automotive group Zonda for infringement of a Chinese registered design relating to a bus. The registration was found valid and Neoplan was awarded nearly US$3 million in compensation. A number of earlier attempts by vehicle manufacturers to enforce registered designs in China had not been so successful. Therefore, this decision provides reassurance that foreign companies can succeed in protecting their IP in China.

The London Agreement update

April 2009 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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The cost of obtaining patent protection in Europe has been dramatically reduced thanks to the implementation of the 'London Agreement'.

Inventors awarded ÂŁ1.5 million compensation for their inventions

March 2009 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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On 11 February 2009, the High Court of England and Wales handed down a groundbreaking judgment awarding two inventors compensation totaling ÂŁ1.5 million. The award was made in view of the benefit derived by the inventors' employer from patents granted for their inventions and this is the first time that any inventor in the UK has successfully made a claim for this sort of compensation.

Impending substantial fee reductions for Community Trade Marks

March 2009 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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The cost of obtaining Community trade mark (CTM) registrations is set to be reduced by around 40%.

Important changes to the EPC effective from 1 April 2009

February 2009 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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Amendments have been made to the Implementing Regulations of the European Patent Convention, along with the accompanying Rules relating to Fees, that will become effective for applications filed or enterig the European regional phase on or after 1 April 2009. As a result, careful consideration should be given to filing early to avoid the potential fee increases, particularly for applications that are lengthy and/or contain many claims.

New changes to search system for Community Trade Mark applications:

January 2009 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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Last year, the Community Office changed its search system.  It became optional for applicants to receive the searches carried out by the national offices for earlier conflicting rights, and if the applicant did wish to receive these search reports there was a fee payable.  Not all countries provided search reports.  There were certain countries which had opted not to take part in the search system.  If the applicant did not opt to receive the national search reports, then the Community Office carried out a search of the Community Register only and notified the applicant of possibly conflicting earlier Community applications and registrations. 

Fun Radio - UK Registry guidance on acceptable variations of registered marks

January 2009 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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Capital Radio plc had originally applied for registration of the FUN RADIO (& Device) trade mark covering various goods and services in Classes 25, 35, 38 & 41 under No. 2163342. This trade mark was subsequently assigned to Children's Radio UK Limited (CRUK). The registration procedure was concluded on 11 June 1999. On 20 May 2006, Societe d'Exploitation Radio Chic (CHIC) applied to revoke the registration on the ground that it had not been used at all since the date of registration under the provisions of Section 46 (1) (a) and (b) of the UK Trade Marks Act 1994 (Case O-230-08). Revocation was sought in relation to all the goods and services covered by the registration.

Eurohypo AG v OHIM

December 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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In the recent case Eurohypo AG v OHIM (Case C-304/06P), the ECJ handed down a decision pointing out that the grounds of refusal in Article 7(1)(b), (c) & (d) of the Community Trade Mark Regulation (CTMR) each have separate public interests underlying them.  The decision also emphasised the need to consider the correct public interest when making decisions based on these grounds.  Article 7(1)(b) prevents the registration of marks which are devoid of any distinctive character, whilst Article 7(1)(c) prevents the registration of marks which are descriptive of characteristics of the goods or services in relation to which registration is sought.  Article 7(1)(d) prevents the registration of generic marks.

The Latest BUDWEISER Development:

December 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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The latest development in the BUDWEISER trade mark dispute between Anheuser-Busch Inc (AB) and Budejovicky Budvar Narodni Podnik (BB) was an appeal to the High Court by BB following an application by AB for a declaration of invalidity of BB's UK trade mark Registration for BUDWEISER. See [2008] EWHC 263 (Ch) Mr Justice Norris Anheuser-Busch Inc (AB) v Budejovicky Budvar Narodni Podnik (BB) re BUDWEISER.

Unregistered Design Right: Scope of Protection

November 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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The scope of protection afforded by UK unregistered design right (UDR) was considered in May 2008 by the High Court in Rolawn Limited v Turfmech Machinery Limited. The case emphasises the limitations of unregistered design right and the advantages of registered design protection and patents.

Restoration of UK Patents: The Requirement for Evidence

November 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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The Patents Court has recently considered the requirements for obtaining restoration of a lapsed patent in the July 2008 case of Matsushita Electric Industrial Co v. Comptroller General of Patents.

New .TEL Domain Launch

November 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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3 December 2008 sees the opening of the sunrise period for the new .TEL domain launch. .TEL offers an innovative new way to store communications information about your company, and Boult Wade Tennant will offer a comprehensive registration service.

EPO Enlarged Board Asked to Clarify Law on Patents for Computer Programs

November 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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For several years, the UK Intellectual Property Office (UKIPO) and European Patent Office (EPO) have been applying divergent interpretations of essentially identical patent legislation. UK patent law and the European Patent Convention (EPC) both state that certain things are not to be regarded as inventions for which a patent can be granted and that one of those things is “programs for computers”. However, patentability is excluded only to the extent to which the patent application or patent relates to a program for a computer "as such".

Streamlining the application process - new Trade Mark Rules 2008

October 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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The process of registering a UK trade mark has been streamlined by the UK Intellectual Property Office (UK-IPO) with the introduction of the Trade Mark Rules 2008, which came into force on 1 October 2008.

Update - UK Court Considers Industrial Application of Genes

October 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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On 31 July 2008 a decision of the English High Court was handed down by Mr Justice Kitchen in the case of Eli Lilly v Human Genome Sciences Inc (HGS). In it the court addressed for the first time the criteria to be applied for the industrial applicability of biological molecules to be recognised.

Name-calling: Greater protection for Company Names

October 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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New provisions concerning company names came into force on 1 October 2008. These allow companies to better safeguard their company name by giving them remedies against opportunistic registrations that are comparable to those given by the dispute resolution procedures to take action against "cybersquatters" and domain name hijackers

Community Registered Designs: Defining the scope of the prior art

October 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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Court of Appeal puts laundry balls registration through the wringer A recent decision by the UK Court of Appeal provides useful guidance on the definition of prior art in Community Registered Design (CRD) cases.

A step towards uniformity in Europe

July 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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In January 2007, courts in England and the Hague handed down conflicting
decisions on the validity of the same European patent, giving rise to
concerns over the inconsistency of outcomes between European
jurisdictions. The House of Lords has now overturned the English courts'
earlier decisions and agreed with the Dutch court's findings. The decision
clarifies the way in which obviousness should be interpreted under English
law and marks a step towards a more uniform approach in the way the
national courts in Europe consider the validity of European patents.

UEFA Victorious in EURO 2008 Trade Mark Challenge

June 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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UEFA, the European football body behind EURO 2008 and previous European Football Championships, has successfully fought off a challenge to the registration of its EURO 2008 trade mark.

World Cup Willie - Jules Rimet Cup Limited v The Football Association Limited - High Court Decision

June 2008 - Intellectual Property. Legal Developments by Boult Wade Tennant.

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This is a case in which the court looked at the IP issues in a dispute over the World Cup Willie trade marks filed by Jules Remit and attacked by the FA. The decision included a finding that the FA still had residual goodwill in their 1966 mascot sufficient for passing off and that Jules Rimet had filed in bad faith despite having taken legal advice.