J A Kemp LLP continues to provide a full service to all clients during the pandemic. Please use email to contact the firm and, in particular, to issue any instructions. Click here for information on how disruption caused by the pandemic may affect your intellectual property rights.
1 March 2021
The latest version of the EPO’s Guidelines for Examination comes into force today, 1 March 2021, and is available here. As discussed in our earlier news item here, one aspect of note in the new Guidelines is the introduction of a stricter approach to amending the description for conformity with the claims. Another interesting development is the introduction of examiner “consultations” by videoconference during the examination procedure (see here). For the last few years the EPO has been encouraging examiners and applicants to consider discussing substantive matters by telephone during prosecution, as part of its “early certainty” drive. It seems that the EPO...
26 February 2021
Antibody therapeutics remain a rapidly developing field, with many antibody-based therapies now on the market and in the clinic. Patenting of antibodies, particularly for known targets, is proving increasingly challenging as the field becomes more crowded and practice tightens up. Although (perhaps surprisingly) there is still a relative lack of case law from the Boards of Appeal of the EPO, the decisions that have issued recently are consistent with the basic principles applied by examiners in their day-to-day practice. This webinar will explore those basic principles, making use of the significant experience of J A Kemp’s attorneys in handling antibody...
26 February 2021
The interface between claim scope and sufficiency has increasingly come under the spotlight in recent years. When can a broad claim be justified as providing legitimate protection for a principle of general application, and when should such a claim fall for lack of sufficiency? In this webinar we will review the key EPO and UK cases in this field and further consider to what extent the recent UK Supreme Court decision in Regeneron v Kymab moves the dial in this regard. Topics will include: Review of key UK and EPO cases in this field Regeneron v Kymab from the UK Supreme Court –...
23 February 2021
World Trademark Review 1000, the guide to the world’s leading trade mark professionals, has awarded J A Kemp a “Gold” ranking in its 2021 edition. The directory comments that the “dynamic, cohesive and internationally focused patent and trade mark practice” at J A Kemp has “captured the attention of a host of US, Asian and other companies across key economic sectors.” One trade mark client is quoted as saying that J A Kemp is the only firm it deals with, referring to the firm’s “superb results” and “amazing responsiveness”. Head of the trade mark practice, James Fish, is described as “a...
23 February 2021
The recent case of Reaux-Savonte v Comptroller-General of Patents ( EWHC 78 (Ch)) concerns an appeal from a decision of the Comptroller General, dated 19 May 2020, in which the Comptroller held that a patent application (GB1520019.9) should be refused because the application was excluded from patentability under section 1(2)(c) of the Patents Act 1977 as a program for a computer. This decision was upheld in the appeal proceedings by Daniel Alexander QC, sitting as a deputy judge of the High Court. The inventor and applicant, Mr Reaux-Savonte, took a substantial risk in prosecuting this application without professional representation. Not only...
10 February 2021
It has been reported that an EPO technical Board of Appeal has referred a question to the Enlarged Board of Appeal concerning the legality of holding oral proceedings by video conference before the Boards of Appeal without the consent of the parties. It appears that the referral was made by technical Board of Appeal 3.5.02 in appeal case T1807/15 during oral proceedings held on 8 February 2021. This referral follows the announcement at the end of 2020 that a Board of Appeal may decide to conduct oral proceedings by video conference without the consent of the parties. A significant backlog of oral...
5 February 2021
The new version of the EPO’s Guidelines for Examination is due to come into force on 1 March 2021. In advance of the Guidelines entering into force, the EPO has now published a draft version of the Guidelines here. Previously, the Guidelines were published in November each year. However, the EPO departed from this schedule last year and the EPO now plans to publish the updated Guidelines in March each year. Thus, the new version of the Guidelines is the first update since November 2019. In general, the changes seek to bring the Guidelines into line with current practice and recent...
26 January 2021
Over the last few years certain Regional Courts in Germany have refused to grant preliminary injunctions to patentees unless the patent has been held valid in opposition proceedings at the European Patent Office (EPO), or in nullity proceedings before the German Federal Patent Court. This contrasts with practice elsewhere in Europe, including in the UK, where a preliminary injunction can be granted without considering the validity of the patent. This restrictive practice in Germany, which has developed from case law of the Munich Higher Regional Court, has now been challenged. Phoenix Contact GmbH & Co. KG, the owner of European patent...
13 January 2021
Following the passing in Germany of the Bill for Re-ratification of the Unified Patent Court Agreement (UPCA) in December 2020, two constitutional complaints against German ratification were filed at the German Federal Constitutional Court (FCC). The FCC has now confirmed to journalists that the FCC has asked the Federal President not to sign the bill into law. Signing of the bill is the last step necessary before UPCA and Protocol on Provisional Application (PPA) ratifications can be deposited by Germany. It is unclear at present whether the delay will be short (for example if the FCC declines to admit the complaints for...
1 January 2021
The UK withdrew from the EU (Brexit) on 31 January 2020, and the transition period ended on 31 December 2020. The UK is no longer subject to EU law or the jurisdiction of the European Court of Justice. EU Trade Mark and Design rights no longer have territorial effect in the UK. It is therefore now a practical necessity to dual file in both jurisdictions, if registered protection for a trade mark or design is required in the EU and UK. Comparable registrations have been created in the UK as of 1 January 2021 from all existing Registered EU Trade Marks...
18 December 2020
Today the Federal Council (Bundesrat) unanimously passed the bill required for German ratification of the Unified Patent Court Agreement (UPCA) thereby achieving the two-thirds majority of the members mandated by the Federal Constitutional Court (FCC). The bill must now be signed by the German Government and the Federal President before UPCA and Protocol on Provisional Application (PPA) ratification can be deposited. There is a possibility of a further complaint to the German Federal Constitutional Court (FCC). If such a complaint is received, the FCC could again ask the Federal President not to ratify the UPCA and so delay German ratification. Assuming that Germany...
17 December 2020
It is well established that under Article 123(3) EPC, a patent (i.e. after grant) “may not be amended in such a way as to extend the protection it confers”. The rationale behind this legal provision is to provide legal certainty to third parties. The patent considered in T 2202/19 is directed to a coffee capsule. In the patent as granted, claim 1 defined, inter alia, a closing member (12) comprising “a plurality of discrete blind openings (14)… said blind openings not being concentric grooves”. At opposition, the feature of “said blind openings not being concentric grooves” was found to add subject-matter,...
We set great store by what our clients say about us. These comments are all from leading legal and IP directories or provided directly by our clients.
J A Kemp was awarded "Best UK Patent Prosecution Firm" at the Managing Intellectual Property Awards 2020.
"J A Kemp demonstrates excellent technical prowess matched by legal sophistication. Unlike many other European patent attorneys, I view the partners there as collaborators rather than as service providers."
"Unified team culture, deep concentration of technical expertise and ability to effortlessly switch to another gear in times of extreme need.”
“J A Kemp is second to none in my experience.”
"I don’t work with anyone as good. I recommend J A Kemp because it’s good for my clients."
"If I want an opinion I’ll go with J A Kemp."
"They identify with our priorities, are immediately responsive and generate confidence in their technical ability."
“A very sharp firm, nimble on its feet and able to really deliver, J A Kemp is timely, professional and excellent value for money.”
"Clients are most impressed with the work of J A Kemp. The team are highly responsive, intensely hard-working, and uniformly thoughtful in their handling of prosecution and post-prosecution matters (e.g. oppositions). They are proactive and induce a high degree of confidence."
"J A Kemp offers some of the finest patent services in Europe, delivers cast-iron protection for inventions of all types and conducts sterling opposition and appeal work at the EPO."
"I am really impressed with them. The team is very proactive, strategic and thinks about the best way to move forward."
"J A Kemp’s team of trade mark attorneys are true experts and above all extremely commercial."
"The whole team is extremely knowledgeable of the underlying subject matter and also of EU patent practice - they do a valuable analysis of the specifications to optimise the patent’s strength."
"J A Kemp gives good, clear, commercial recommendations."
"J A Kemp is my preferred firm because the level of service and understanding of the client’s technology is great."
J A Kemp is "a go-to for UK and European trademark matters – its expert practitioners provide practical advice quickly and for a fair price, and impress at every turn".
"J A Kemp has a very 'can do' attitude for jobs which are complex."
"These are some of the most detailed and thorough instructions that I have ever seen. They evidence a keen understanding of US practice."
"J A Kemp is extremely knowledgeable and does a fantastic job."
"I cannot thank you enough for your expert advice and careful strategic thinking in this matter."
"We want the best protection available and I give J A Kemp the highest marks possible."