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Get Out On The Highway – What exactly is the PPH programme, and is it worthwhile?

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PACE vs. PPH

 

The European Patent Office (EPO) has announced as of July 2019 that the Patent Prosecution Highway (PPH) pilot programme with IP Australia is to be extended to June 2022.

 

In total, this means that the EPO has PPH programmes in effect with fifteen other patent offices. The relevant jurisdictions are: United States of America; China; Japan; Korea; Australia; Brazil; Canada; Colombia; Israel; Malaysia; Mexico; the Philippines; Russia; Singapore; and Eurasia.

 

What exactly is the PPH programme, and is it worthwhile?

 

Earlier Work Products

 

The PPH programme allows a later office to rely on ‘available work products’ from one of the partner offices, which indicates that the claims of the application are allowable.

 

This allows the EPO to fast-track the grant process of the European patent application, based on the earlier work product.

 

Requirements

 

There are specific requirements for participation in the PPH programme.

 

  1. The priority date or filing date of the earlier application must match that of European application to undergo PPH acceleration.

 

  1. The earlier application must have at least one claim therein indicated as allowable.

 

  1. The claims of the European application must be made consistent with the allowable claim(s) of the earlier application. A claims correspondence table should be provided as part of the request for PPH at the EPO.

 

  1. PPH must be requested before the EPO begins examination of the European application.

 

Effectively, the PPH programme allows the prosecution of a pending European application to catch up with that of an application in another jurisdiction, provided that the EPO has not already started examination on its merits.

 

Should I Use PPH Acceleration?

 

The EPO acknowledges that a valid PPH request will put the application into a fast-track stream, on a par with a standard request for acceleration under the PACE programme.

 

This is interesting, since there is a significantly lower administrative burden on the applicant for filing a PACE request than there is for filing a PPH request, with no apparent change to the potential timeframe to grant.

 

What is also worth noting is that the EPO Examiner is still required to assess the merits of the compliance of the European application with the requirements of the European Patent Convention. PPH acceleration does not guarantee grant – it is not a rubber-stamping exercise. The EPO has different requirements for grant when compared with, for example, the USPTO or KIPO. The EPO requirements with regards to added-matter are commonly regarded as being stricter than in some other jurisdictions

 

PACE vs. PPH

 

Therefore, there may be different factors to consider when deciding whether to request PACE acceleration or PPH acceleration.

 

  • I want to bring my European application into alignment with an already-granted patent in another jurisdiction.

 

  • In this scenario, it would seem prudent to allow the EPO to access the prior work product of the earlier office, in order to streamline grant. Provided there is no obvious reason that the application contravenes the EPC, then PPH acceleration would seem appropriate.

 

  • I have a patent in another jurisdiction, and want to align some, but not all, of the features of the European application with the granted patent.

 

  • In this situation, we would not want to just accept the allowed claims from the earlier office. As such, PACE acceleration would seem more applicable.

 

  • I have a granted patent in another jurisdiction, but I have already responded to one examination report in Europe.

 

  • A PPH request would be invalid here. PACE acceleration of the examination process could still, however, accelerate the route to grant. The timeframe between examination reports can be substantial under European procedure.

 

  • I have a granted patent in another jurisdiction, but I am not sure whether the claims would be valid in Europe.

 

  • The best thing to do here would be to assess the claims for compliance with the EPC first, potentially aligning the ‘spirit’ of the claims with those as granted overseas, and then just requesting PACE acceleration. This may shorten the examination procedure, given that any deficiencies in the claim set may be addressed first. This may not be possible in a PPH request.

 

Overall, there are scenarios in which a PPH request may be a useful tool to quickly obtain grant of a European patent. However, the more straightforward PACE scheme provides the same benefits of acceleration, without many of the restrictions associated with a PPH request.

 

The important thing is to remember that the application must still meet the requirements of the EPC for a valid patent to be issued, in particular, with regards to inventiveness and added subject-matter.

Intellectual Property Enterprise Court expands its small claims track outside London

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Bristol Civil Justice Centre – photo depositphotos / jaceksphotos

In the new IPEC guide issued last week, it was rather quietly announced that from October 2019 District Judges will be available in Birmingham, Bristol, Cardiff, Leeds, Manchester and Newcastle to hear intellectual property small claims. This will be welcome news for businesses and individuals in the regions who will now have easier access to the court system to resolve certain small-scale IP disputes.

Since it was set up in 2012, it is difficult to present the history of the IPEC small claims track as anything but a resounding success.  The value of an individual small claim is low (at least, relatively low) but the importance of being able to effectively enforce IP rights at low cost is invaluable in certain industries. Professional photographers in particular have been able to use the system to obtain good compensation for infringements that have occurred, and no doubt deter a great many infringements that as a result have not occurred.

At the same time, small business and individual defendants faced with certain spurious or unjustified allegations that they have infringed intellectual property rights have been able to have their side of the story heard, without the fear that the legal costs involved give them no option but to “settle and pay up”.

An IPEC small claim will typically be dealt with by directions being given on a judge’s review of the paper file, and a final hearing being allocated with a time estimate of one day. In the vast majority of cases it will be necessary for the Claimant to attend the final hearing themselves as a witness, whether or not they choose to be represented by a lawyer. The availability of the “Business and Property Court centres out of London” – the new and rather more descriptive name for what you may still see called the “Chancery District Registries” – is therefore a significant improvement in the accessibility of the Court to litigants far from London.

For “multi-track” cases, those which are too high-value or too complex for the small claims procedure, the IPEC guide has stated for many years that the judges are able and willing to sit outside of London.  Perhaps litigants and their lawyers were afraid to ask, because the first such trial outside London took place in Birmingham in October 2018.  HHJ Melissa Clarke, the judge in the case, commented “I do not know why it has taken so long”.

From time-to-time we have seen intellectual property cases issued in the County Court via the “money claim online” procedure.  The rules make it quite clear that this is not allowed (63.13, Civil Procedure Rules if you want to look it up).  Where a claim is wrongly issued by this route, it almost always serves to increase the time and cost of resolving the dispute.  Given the availability of IPEC small claims outside London, there is no excuse now.  An intellectual property claim must be issued in the correct court.

We look forward to the continued success of the Intellectual Property Enterprise Court and expect that this latest development will further assist those who rely on intellectual property, and a reliable and accessible court system to enforce it, for the success of their own businesses and livelihoods.

Carry On…Using Your Trade Mark!

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Branding Trade Mark

 

The “use it or lose it” principle with regards to trade mark registrations applies in numerous jurisdictions around the world. However, as highlighted in a recent decision of the UKIPO involving three Trade Marks relating to the British “Carry On” film series, it may not be as straightforward as one might think. For instance, how easy is it to prove valid use of a Trade Mark where that Mark is used under a licence, and in conjunction with another Mark?

 

This most recent “Carry On” caper begins in April 2018, whereby Brian Baker applied for revocation of three UK Trade Marks for “Carry On”, on the basis of non-use. ITV Studios Limited, proprietor of the “Carry On” Marks, was tasked with proving use of their Marks. The “Carry On” Marks were the subject of numerous internal and external licence agreements. After evaluating the evidence of use submitted by the proprietor, the Hearing Officer found in favour of Mr Baker. Two of the three Marks in question were invalidated in-part, with the remaining Mark being invalidated entirely.

 

On the face of it, you could be forgiven for thinking that proving actual use of a Trade Mark associated with such a widely known and popular film series would be easy to demonstrate. However, throughout the decision, reference is made to the inadequacy and insufficiency of the evidence put forward by the proprietor, with questions being raised as to the function of the “Carry On” Marks. For example, were they merely titular in nature? Or did they indeed indicate the origin of the goods and services in question? Further to this, the Hearing Officer was not satisfied with the proprietor’s evidence in displaying that their Mark indicated a single trade source. That is, on the end products, the Marks were used alongside a second mark, namely another Mark belonging to the proprietor, the ‘ITV Studios Logo’. This is despite the advertisements mentioning the licence arrangements (albeit in small print). The proprietor’s use of their Marks alongside other marks would not, in itself, have precluded the “Carry On” Marks from demonstrating valid use; however, by using their Mark alongside another Mark, the burden of proof in displaying valid use was increased. In this case, DVD sales of £6 million spanning 11 years, was not enough to show valid use of the “Carry On” Mark, whilst it was being used alongside the ITV Studios logo.

 

The difficulties encountered in this case appear to be more related to the proprietor’s poor accumulation and organisation of their evidence, rather than to the issue of multiple Marks appearing on the final product. It goes without saying that each case is decided on its own facts, but this decision does offer food for thought on the levels of use required, when a Mark is used alongside a second, or possibly multiple, Marks. This should serve as a wake-up call for rights holders, in-particular to those that own, and use, multiple Marks that are licensed to third parties or licensed within their own organisation. What can be taken away in this regard is that particular attention should be paid to the look of the packaging, for example: where on the packaging the Mark is located, and the size of the Mark in relation to any other Marks featured.

 

The decision of the Hearing Officer is now open to appeal, whether the proprietor will be able to sway the UKIPO during a second round of arguments remains to be seen. Regardless, the importance of documenting thorough, and concise, evidence of valid use throughout the lifecycle of the Trade Mark should not be underestimated.

 

Should you be interested in seeking advice on the use of your Trade Mark, please contact us, and our highly experienced team of Trade Mark Attorneys here at Albright IP, will be pleased to advise you further.

 

Can I wait to file a patent application?

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Can I wait to file a patent application?

 

For start-ups that are building their business around an innovative product, preventing more established companies from copying their idea by having a patent granted is essential. However, there are plenty of other essential aspects of a business which need attention when just starting out.

 

Therefore, is it possible for a start-up to defer filing a patent application, to allow funds to be spent on other areas of the business?

 

Why would I not be able to wait?

 

One of the chief requirements of obtaining a patent is “novelty”. Therefore, your idea must be completely new compared to what is already publicly available at the time of filing the patent application.

 

In general (read on to find a notable exception), patent offices do not distinguish between who made the idea available. Therefore, if you wait to file a patent application and start selling or marketing your product beforehand, then you may be prevented from obtaining a patent.

 

Even if you are not intending to publish or market your product just yet, someone else may have come up with a similar idea. Waiting to file your patent application increases the chance of someone else disclosing or filing for a similar idea – preventing you from obtaining a patent to that idea.

 

“Enabling disclosure”

 

To destroy the novelty of your invention, you would need to publish enough information to allow someone to recreate your invention.

 

In the case of a physical product, selling the product would likely destroy your chances of protecting the product itself. However, the method used to make the product may be the clever idea you want to protect.  If this method is not discernible from looking at the product, and if you have kept the method confidential, then you may still be able to protect this, even after launching. Additionally, if you only publish pictures of the exterior of your product (for example for crowdfunding campaigns), and these do not reveal how the product works, then you may still be able to obtain a patent to the workings of the invention.

 

In the case of an app, if the clever way the app works is locked away behind the scenes and is not apparent from the software which is distributed, then it may still be possible to protect this aspect of the app, even after launching.

 

In the above examples, it would be crucial that the method of production and working of the app be kept confidential. Non-disclosure agreements should always be used if such information must be disseminated to potential business partners or developers.

 

The notable exception

 

The United States (among a small number of other countries) provides a 12-month grace period for inventor disclosures. Therefore, if you publish your invention, this publication and any third-party publications going to the same published material won’t work against your US patent application. This is as long as you file for a patent within 12 months of your first publication.

 

However, other key markets (such as the UK, Europe and China) do not have such grace periods, so this strategy would result in a loss of ability to obtain protection in these markets.

 

Design protection

 

Whilst the UK and Europe do not have a grace period for patents, they do have a 12-month grace period for registered designs. Therefore, if you are only interested in protecting the way your product looks in these territories, you can market your product first, and file for a registered design within 12 months.

 

However, this strategy is not without risks as your registered design can be knocked out if a third party independently derives and publishes the same or a similar design before you file your registered design.

 

Additionally, China, among some other countries, do not have such design grace periods.

 

Conclusion

 

As a general rule of thumb, do not wait to protect your intellectual property (IP), whether that is by way of a patent, trademark and/or design. The IP in your business can be one of the most valuable assets within a few years. Stake your claim to it before someone else does.

 

Furthermore, selling or marketing your invention before filing a patent application would usually prevent you from obtaining a patent downstream. However, if the concept of your invention is not discernible from the product you sell or market, it may still be possible to protect it even after launch. But this is risky. Determining whether and where protection can be obtained in these instances can be complex. If you would like advice on this or on any other aspect of intellectual property, please do not hesitate to contact us on 01242 691 801.

 

Camborne Trevithick Day – 27th April 2019

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We are pleased to be supporting Camborne Trevithick Day on 27th April 2019.  This annual celebration commemorates Camborne’s most famous son, prolific inventor Richard Trevithick.  The first commercially useful steam engine was developed in 1712 by Thomas Newcomen, and improved by James Watt and others throughout the 18th century.  By the time Richard Trevithick began his professional career steam was already powering the industrial revolution – but Trevithick made critical improvements to efficiency and demonstrated the first working steam locomotive.  This laid the groundwork for George Stephenson’s famous locomotives and the development of the railway in the UK and around the world.

Full details of the event, including how to get there and where to park, may be found at the organiser’s website http://trevithickday.org.uk/.  Perhaps you will be inspired – as Cornwall’s newest patent attorney firm, we certainly hope that Richard Trevithick is not the last great inventor from Cambourne!

In the meantime, we thought it would be interesting to look at the legal side of Trevithick’s career.

Trevithick seems to have spent rather a lot of time trying to navigate patent law.  Initially, it was someone else’s patents – those of James Watt – which proved to be a thorn in Trevithick’s side.  As long ago as 1624, the law had set a maximum term for patents, but Watt managed to get an Act of Parliament to extend his protection for “A method of lessening the consumption of steam in steam engines” until 1800.  The nub of Watt’s patent was the separate condenser, something which led to improved fuel economy over the old Newcomen engine.

Towards the end of its extended term, it appears that Watt’s patent was being widely ignored in Cornwall, with various mining engineers adding separate condensers to old Newcomen engines.  Watt sued and, in theory at least, eventually won.

The expiry of the Watt patent in 1800, coinciding with Trevithick’s own pioneering use of high-pressure steam, represented an opportunity, and his experience with Watt had no doubt left an impression. There is a story – probably completely unverifiable – that on being served with an injunction Trevithick held Watt’s lawyer upside-down over a mineshaft.  Trevithick evidently did not gracefully accept defeat but had surely learned the power of the patent.  What’s more, the litigation over Watt’s patent lead to the important legal principle that a valid patent could be granted for an improvement to a known machine. Trevithick could turn this to his advantage.

After refining his high-pressure engine, Trevithick naturally sought to obtain his own patent.  In January 1802, with his cousin and business partner Andrew Vivian, Trevithick went to London and asked around for someone who knew how to get one.  This does not seem to have been an easy job and required personal attendance at multiple offices.  Trevithick was a busy man, visiting Merthyr Tydfil and Coalbrookdale in the same year, so it was Vivian who took his place in London and in March 1802 wrote to report that he “must call at the Patent Office for the great knob of wax”.  In those days there was no actual examination of a patent application to check that it was for a new invention, but the Patent Office made up for this in impressive bureaucracy.  Nowadays you get the photocopied signature of a middling civil servant in place of that great knob of wax.

Trevithick also took Watt’s lead when it came to charging for the use of his now patented invention.  Like Watt, Trevithick agreed with mine owners that he would be paid a percentage of the money saved on coal by the use of his modern and efficient high-pressure engines.  Unfortunately, after returning from his tour of the Americas, Trevithick found that his customers had simply stopped paying, variously claiming that they thought the patent had expired, or that it did not cover some variation in the boiler design. Trevithick managed to negotiate with a few, but – unlike Watt this time – did not pursue the matter in Court.

Trevithick nevertheless filed for patents throughout his career, ending up with fourteen to his name.  His first patent, of 1802, was numbered GB2599, in a sequence that starts with GB1 of 1617.  By the time Trevithick had obtained his last patent in the year before his death, the number was at GB6308.  More patents had been filed in Trevithick’s career than in the 200 years previous.  The age of technology had certainly arrived.

Illustration from Trevithick’s 1802 patent specification

How Disclosing Your Invention Can Prevent You From Obtaining a Granted Patent

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Starting a business is an exciting adventure to embark upon. Unfortunately, Intellectual Property (IP) is too often an after-thought and mistakes made early on in the process can be detrimental to obtaining IP rights.

 

Take patents for instance. In order to obtain a granted patent in the UK, at the time of filing a patent application, the invention must be novel (i.e. unknown in the whole world) and inventive (i.e. not obvious).

 

Looking more closely at the novelty requirement in the UK, the Patents Act 1977 states that:

 

“(1) An invention shall be taken to be new if it does not form part of the state of the art”,

 

and defines the state of the art as comprising:

 

“all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way” (see section 2 of the Patents Act 1977).

 

In essence, disclosing your invention publicly could prevent you from obtaining a granted patent because your invention will not be considered to be “new”.

 

So how do I know if I’ve publicly disclosed my invention?

 

You are likely to have disclosed your invention publicly if, before filing a patent application, you have:

  • Talked to investors, business partners, friends, or potential clients about your invention
  • Blogged, vlogged, tweeted, written about or posted images of the invention on a social media platform
  • Got a Kickstarter page in which the invention is disclosed
  • Posted a document about your invention on a website
  • Been on Dragons’ Den
  • Given a talk to an audience or displayed a poster at a conference,
  • Published a book or thesis which is on open shelves in a public library, even if no-one has ever read the book
  • Published an article, an abstract, or a grant proposal
  • Given away or sold samples
  • Shown your invention at an exhibition (with some exceptions)
  • Used the invention in a public place

 

There are, however, caveats to be voiced about the above list.

 

Confidentiality

 

Any disclosure in confidence, for example under a Non-Disclosure Agreement (NDA), will not be considered as a public disclosure. For a free, template Non-Disclosure Agreement, please click here.

 

Please note however, that any IP-related discussion you have with a chartered patent attorney or trademark attorney in the UK, such as those here at Albright IP, will be considered as confidential (i.e. not public), without you needing to sign an NDA first. This is because legal advice privilege applies to chartered patent and trademark attorneys.

 

Website postings

 

With regards to website disclosures, the European Board of Appeal provided the following two-step test to clarify when posting a document on a website constitutes a public disclosure.

 

If, before the filing or priority date of the patent or patent application, a document stored on the World Wide Web and accessible via a specific URL

 

(1) could be found with the help of a public web search engine by using one or more keywords all related to the essence of the content of that document and

 

(2) remained accessible at that URL for a period of time long enough for a member of the public, i.e. someone under no obligation to keep the content of the document secret, to have direct and unambiguous access to the document,

 

then the document was made available to the public […].

 

Therefore, if you post about your invention online, and if your posting remains online long enough and can be found by typing keywords into a public search engine (such as Google®), then the posting can be cited against your own patent application.

 

You should also, therefore, assume that the same approach will be taken by the UK Intellectual Property Office.

 

Emails

 

In a related case, the European Board of Appeal decided that the act of sending an email via the Internet does not constitute publicly disclosing the email’s contents.

 

Keep in mind, however, that the recipient of an email disclosing the invention needs to be under a confidentiality agreement – otherwise, the email contents could be considered as a public disclosure.

 

I think I’ve disclosed my idea publicly. Does that mean I can’t get a patent granted anymore?

 

Not necessarily.

 

To count as public disclosure, the disclosure also needs to be “enabling”. This means that enough detail needs to be disclosed so that someone “skilled in the art” could deduce how the invention works, for example, see Lux Traffic Controls Limited v Pike Signals Limited [1993] RPC 107, 132-135.

 

If your public disclosure is enabling, it may invalidate only part of your patent application. For example, you may have disclosed how the invention works but not how the invention is made. In this case, you may still be able to get a granted patent for the method of manufacture.

 

Where you have publicly disclosed everything about your invention, then patent protection in the UK or in Europe may no longer be an option. However, in some countries outside of the UK and Europe, you might still be able to rely on a grace period to get a patent granted, for example, in the USA. Alternatively, you may still be able to obtain another form of intellectual property in the UK or in Europe such as a registered design, due to the existence of a grace period.

 

Finally, it is worth highlighting that a public disclosure will only be detrimental if it is done before filing a patent application containing all the details disclosed.

 

In summary, avoid disclosing anything about your invention before you file a patent application, and make sure that any disclosure is done in confidence. If you are unsure on what to do, you can always talk to Albright patent attorneys or trademark attorneys for IP-related advice.

 

Victory for ‘Peppa Pig’ – Peppa’s win on Trade Mark Invalidity Claim

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The owners of a hugely popular British animated series, ‘Peppa Pig’, have successfully won their bid to invalidate a Mark, arguably evocative of their well-known ‘Peppa Pig’ character.

 

Peppa Pig first graced our TV screens back in May 2004, and has since become one of the most well-known, and most popular British children’s TV programmes of all time. The rise of ‘Peppa Pig’ has, quite naturally, created a multitude of extremely lucrative commercial opportunities for the owners, Entertainment One and Astley Baker, who are now appearing to be more actively enforcing and policing their Peppa Pig-related IP rights than ever before.

 

One of the most recent cases involving ‘Peppa Pig’ has been the invalidation claim brought against an EU Mark filed for by Xianhao Pan. The invalidity claim perhaps comes as no surprise when one views the Marks in issue side-by-side, as displayed below:

 

Xianhao Pan’s ‘TOBBIA’ Mark The ‘Peppa Pig’ Mark

 

Background

 

In 2013, Xianhao Pan was granted an EUTM for the ‘TOBBIA’ Mark in Class 25, for clothing, footwear and headgear. The Mark is in the colours, pink, red, yellow and blue, and is said to depict a ‘tapir head on a human body’, with the words ‘TOBBIA’ in bold and black text underneath.

 

This was argued to be confusingly similar to the Peppa Pig creators’ earlier black and white mark, registered for the same goods. The earlier Trade Mark depicted the famous cartoon character, Peppa, with the words ‘PEPPA PIG’ underneath, in black and bold text.

 

When the case was first heard by the EUIPO Cancellation Division, rather controversially, they ruled that the two Marks were not confusingly similar, upholding the validity of the ‘TOBBIA’ Mark. On appeal in 2017, a U-Turn decision was made, and the ‘TOBBIA’ Mark was invalidated on the finding that the Marks were visually, phonetically and conceptually similar.

 

The General Court’s Decision

 

Following a round of appeals before the Board of Appeals of the EUIPO, the General Court concluded earlier today, 21 March 2019, the invalidity of the ‘TOBBIA’ Mark. Despite noting the differences in terms of the colours of the Marks in issue, it ruled that these differences, considered overall, did not outweigh the similarities.

 

In the appeal to the General Court, the owner of the ‘TOBBIA’ Mark argued that the Board of Appeals had failed to state the reasons for going against the first decision by the Cancellation division, but the General Court was quick to confirm that it was sufficient for the Board of Appeals to only state the reasons on which its own decision is based, and that an obligation did not extend towards identifying the incorrect aspects of the Cancellation Division’s decision.

 

Undoubtedly in agreement with the preceding Board of Appeals’ decisions, it was confirmed that ‘the average consumer normally perceives a mark as a whole’, without engaging in lengthy analysis as to the various details, and therefore, it was right to find that the Marks were visually similar overall.

 

Most interestingly, the General Court also remarked approval of the Board of Appeals’ previous assessment, which found a certain correlation between the word ‘tobbia’ and ‘peppa’, in the sense that both words contain the reiteration of a strong consonant, namely, the ‘B’ in ‘tobbia’ and the ‘P’ in ‘peppa’.  Although not verbally similar therefore, it seems that there was a consensus that the structural correlation and extremely similar graphical elements in the Marks rendered an impression of similarity in the minds of the consumer, who might consequentially come to view the Marks, and also the respective goods, as being related in some way.

 

Despite assertions from the owner of the Mark that the ‘TOBBIA’ Mark depicted a tapir, rather than a pig, the court considered it unlikely that the public would at all associate the Mark with a tapir, consequently finding there to be conceptual identity in the Marks, in the sense that they both represented a pig.

 

Consequently, when considering the overall similarities from a visual, phonetic and conceptual perspective, the invalidity decision was upheld.

 

Conclusion

 

Whilst today’s decision may seem an overly generous stretch in favour of the creators of Peppa Pig, at least, when it comes to the court’s apparent approval of the ‘correlation’ between the ‘strong consonant’ elements of the Marks, the decision of the court does not appear all that surprising. A side-to-side comparison certainly highlights the ‘TOBBIA’ Mark’s eerie resemblance, highly reminiscent of the famous pig character. Given ‘Peppa Pig’s reputation, there is certainly a likelihood that consumers might come to perceive the Marks, and the respective goods, as being somehow associated and/or connected to the Peppa Pig franchise. Like it or not, what would have undoubtedly been interesting in the court’s decision would have been a more thorough discussion, or at least, a reference to the previous grounds raised by the owner of the ‘Peppa Pig’ Mark, specifically, the conflicts with the earlier copyright.

 

Mitigating the Effects of Prior Unpublished Patent Applications

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Prior art searching is one of the most difficult things to get right in the IP sector, since any search is open-ended. How do you know whether there is a knockout document which discloses something identical to your invention that has just not been found, or whether it just does not exist?

 

This issue is compounded for patents by the publication cycle. Almost all patent applications are secret for the first eighteen months of their lives, and therefore have the potential to act against later-filed applications.

 

The prospective patentee is therefore presented with an unpleasant uncertainty – even the most thorough search cannot guarantee validity if unknown non-public prior art is available. Given that preparing and filing a patent application can involve a significant outlay of initial resources for start-ups, this can be very off-putting.

 

The British Process

 

It is worth, at this stage, outlining just what happens to a British patent application once filed.

 

From the date on which the application is filed, the claimed invention is ‘patent pending’. However, only a few morsels of information are visible on the UK Intellectual Property Office Register.

 

Provided the interim steps are taken, in particular, submitting formalised drawings suitable for publication, then the application will publish in full eighteen months from the date of filing or priority, which allows third parties to inspect the content of the application.

 

Critically, though, the first person (or their successor) to apply for a patent to an invention is the only person to whom the patent can be granted. This is known as the ‘first-to-file’ system, rather than ‘first-to-invent’.

 

Double Patenting

 

This secrecy creates an inherent problem. A patent is a monopoly right, but since the applications are secret when filed, it is feasible that lots of people could independently arrive upon the same idea, and want to patent it before any of the pending applications become public.

 

To offset this issue, prior-filed or prior-priority but unpublished patent applications are deemed relevant to the patentability of later-filed applications, for the purposes of novelty (i.e. uniqueness) only, provided that the application was filed in the same jurisdiction. Such a document cannot be cited against the inventiveness of a later application.

 

This provision in the law is specifically designed to prevent ‘double patenting’, that is, two patents being granted to the same invention.

 

This provides some comfort to prospective patentees. An unpublished document can only be used to attack the validity of any later-filed patent application in very specific circumstances. It would be unjust for the unpublished document to be deemed relevant to inventiveness (i.e. obviousness), when the skilled person could not rely on that information at the time of applying for their own patent.

 

Hunting for information

 

Whilst full patent applications are not available until the date of publication, there is some information available regarding patent applications which have been filed.

 

Every Wednesday, the UK Patents Journal is published, which has a list of patent applications which have been filed recently. The visible information includes the date of filing, the name of the applicant, the title of the invention, and the application number.

 

Whilst this is a very minimal amount of information, it does allow some level of monitoring to be undertaken to see whether competitors are filing patent applications themselves, and to what type of technology. It also allows you to keep track of the status of the application over time where applicable.

 

Strategies for minimising surprises

 

If you are considering filing a patent application, you may want to take the following steps to avoid unpleasant surprises downstream:

  1. Ensure that full patent searches are conducted prior to filing a patent application so that relevant prior art documents can be uncovered in advance. See our earlier articles on how best to go about conducting free patent searches.
  2. Keep an eye out for competitors’ product launches, and monitor the patent journal for applications which have been filed shortly in advance of the product launch. This may give you an idea of the sort of things that they are looking to protect, and you then may be able to foresee potential difficulties.
  3. File early! As soon as you are ready, and have the necessary technical information to warrant filing a patent application, you should do so. Delaying increases the risk of third parties filing their own applications before you.
  4. Ensure that you have thought through optional embodiments of your invention, or other clever features which may be important. The more technical information that is provided about these features from the outset, the greater the likelihood that you will have options for overcoming surprises during the examination procedure of the application.

 

As patent attorneys, we try and provide you with a flexible application which can withstand the rigours of examination, so that if close prior art documents are found, you have options for still getting some form of patent granted, so that initial risk does not become a lingering concern as you grow your business.

 

Cost-effective biotechnology searches in the UK

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If you have an invention in the field of biotechnology, you should consider filing a UK patent application first. It could save you money on search fees, and give you an idea of patentability in Europe without even filing a European patent application.

 

UK co-operation with Europe

 

Biotechnology-related applications have been accumulating at the UK Intellectual Property Office (UK IPO) for some time, partly due to a lack of suitably qualified examiners.

 

The UK IPO has invested in recruiting and training new examiners, according to their press release, but it will take time for those examiners to become fully proficient at what they do. This is expected to remain the case until sometime in 2019, based on a letter in March 2018 from the UK IPO to the EPO (see Annex 1).

 

In the meantime, the UK IPO has established an agreement with the European Patent Office (EPO), which came into force on 1st July 2018. The agreement will see some biotechnology applications sent over to the EPO for an official search. The first batch of applications to be searched was sent to the EPO in November 2018.

 

How could this benefit you?

 

The official search fee for a UK patent application is normally £150 (GBP). The official search fee for a patent application filed at the EPO is normally €1300 (EUR). The UK IPO will decide which applications get sent to the EPO for a search, and this is expected to be around 200 to 300 applications per year. If you’re lucky, your UK patent application might be one of the ones searched by the EPO, seemingly without the need to pay the much higher European search fee.

 

In addition, if you later file an equivalent application at the EPO which claims priority to a UK application searched by the EPO, the EPO search fee will be partly or fully refunded. Details of the exact level of the refund vary – see the EPO Official Journal of January 2019 for further information.

 

Is it worth patenting in the UK first?

 

It may be a bit of a lottery as to whether your application will be searched by the EPO. However, if it is sent to the EPO for searching, then you may get a direct indication of patentability in Europe before incurring costs for filing a European patent application. Similarly, for a PCT application which has not been searched by the EPO, entering the UK national phase early could be a good strategic move, since you may get an EPO search before you decide whether to incur significant costs for European regional phase entry.

 

Even if you are certain to file in Europe, filing a UK patent application first might still be a good idea, if the EPO-sourced search report includes the usual written opinion. This could be very valuable indeed, particularly if there are objections to sufficiency or plausibility which can be difficult to resolve after filing. Instead, you may get advance knowledge of potential problems and be able to pre-emptively update the patent specification before you file in Europe.

 

If you’d like further advice on patents or any other aspect of intellectual property protection or enforcement, please contact us to speak with one of our qualified attorneys.

 

Four New Appointments Set Albright IP Up For a Strong 2019

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Albright IP has welcomed four new members of staff to its offices. Following an exceptional year of growth in 2018, the new team members will help to strengthen our offering of professional and cost-effective intellectual property (IP) protection for our clients in the UK and across the globe. Our new employees take the total number of staff up to 26 at our Montpellier headquarters.

 

These new additions to the team are a reflection of our ongoing expansion and will bolster us to meet our clients’ ever-evolving needs. We pride ourselves on providing our clients with a unique combination of IP strategy, patent and trademark services combined with the prototype design/development services offered through our in-house design consultancy, DUKU.

 

Commenting on the new arrivals, Albright IP Managing Director Robert Games said:

 

“These new team members have given us a real boost and we’re delighted to be starting 2019 on such a strong footing. They are already supporting our clients and making their individual contributions to our overall delivery of quality legal advice and practice in all matters relating to Intellectual Property. We look forward to another year of driving and protecting innovation for our clients in the UK and internationally.”

 

Meet the new team members

 

With each of the new additions bringing their own interests and insights to the team, you can find out a little about them here…

 

Christina Chan has joined as Trainee Trade Mark Attorney


Christina joins Albright IP straight from Queen Mary University of London, where she completed an MA in Intellectual Property Law. She is particularly interested in the interplay between Intellectual Property Rights, the right to freedom of expression, and their place in the age of interactive and collaborative online activity, and she brings a fresh enthusiasm to the team.

 

Adrian French has joined as Trainee Patent Attorney


Having completed a BEng in Systems Engineering and an MSc in Advanced Biomedical Engineering from the University of Warwick, Adrian worked as a UK IPO Patent Examiner for 5 years.  He is currently working on his dissertation to complete a LL.M in Intellectual Property Law.  He’ll be training as a patent attorney and will be involved in drafting, filing and general prosecution of patents.

 

Jennifer Pitman has joined as IP Administrator


Jenny holds the Patent Administrator’s qualification awarded by the Chartered Institute of Patent Attorneys (CIPA). She has many years of legal experience, both in the UK and her birthplace of Bermuda, having previously worked in IP with a focus on patents and registered designs, since 2009.

 

Helen Morris has joined as IP Administrator

 

Due to attend the CIPA Administrators’ Course later in the year, Helen will be working with patent and design matters, assisting with initial client enquires, through filing and the various stages of the application process to grant and maintenance.

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