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J A Kemp LLP continues to provide a full service to all clients, operating within the guidelines issued by European governments. The firm’s attorneys and the colleagues supporting them are working remotely. As far as possible, please use email to contact the firm and, in particular, to issue any instructions.

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News

28 May 2020
Conducting Oral Proceedings at the European Patent Office by Videoconference In view of worldwide travel restrictions caused by the COVID-19 pandemic, the EPO has recently expanded its ability to conduct oral proceedings before examining divisions, opposition divisions and Boards of Appeal via videoconference, rather than at the offices of the EPO. This change in practice gives rise to a number of practical implications for users of the European patent system, which are discussed in our briefing  here . 
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28 May 2020
UK Court Shows Red Card to Sky in SkyKick Case The High Court has issued its decision in the Sky v SkyKick case. The judgment follows the Advocate General’s Opinion and the Court of Justice of the European Union’s (CJEU) decision of 29 January 2020 on questions referred to it by the High Court regarding broad specifications of goods and services.  
 Read our analysis of the decision in  this briefing . 
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27 May 2020
Measures Being Taken by EPO, EUIPO, WIPO and UK IPO in Relation to COVID-19 PandemicThe European Patent Office (EPO), the European Union Intellectual Property Office (EUIPO), the UK Intellectual Property Office (IPO), the International Bureau (IB) of WIPO and other intellectual property offices are taking measures in view of the world-wide COVID-19 pandemic.
Measures Taken by the EPO
The EPO has adopted a number of measures in view of the disruption caused by the COVID-19 pandemic.
First, the EPO extended all “periods” expiring on or after 15 March 2020 until 2 June 2020 for all parties and their representatives, under the provisions of Rule 134(2) EPC, second sentence. In accordance with Article 150(2) EPC, this extension applied...
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14 May 2020
EPO Enlarged Board of Appeal Rules Against Claims to Plants Produced by Essentially Biological ProcessesThe EPO’s Enlarged Board of Appeal (EBA) has today issued its decision on referral G3/19 relating to patent-eligibility of plants obtained by essentially biological processes. This is the latest development in a chain of events and controversies in this area, in which Article 53(b) EPC excludes from patentability “essentially biological” processes for the production of plants by breeding as opposed to biotechnological processes but contrasting Board of Appeal decisions and EPC Rules have at different times led to different outcomes for product claims to the plants obtained by breeding processes. This led last year to the EPO’s President referring to...
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30 April 2020
US PTO follows EPO and UK IPO in Rejecting Applications with AI InventorWe previously reported that the EPO had issued decisions refusing two applications that attempted to name a computer system (“DABUS”) as the sole inventor. The US PTO has now issued a similar decision rejecting what appears to be the US application corresponding to EP18275174. Again, the application was rejected for failure to comply with the formal requirements regarding the naming of the inventor.
The US PTO has long had much stricter and more substantial requirements regarding inventors than other patent offices; it is not so long ago that US applications could only be filed in the name of the inventors and...
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30 April 2020
CJEU Confirms Strict Interpretation of Article 3(a) for SPCs On 30 April 2020 the CJEU gave its ruling in C-650/17 (Royalty Pharma). The judgment, which is reviewed in detail in our briefing ( here ), confirms that SPC applications are allowable when the product is not explicitly recited in the claims. However, it is implied that the product will need to be disclosed to a high degree of specificity elsewhere in the patent. 
 If you have any concerns or queries about the impact of this decision please speak to your usual J A Kemp contact. 
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27 April 2020
Fake European Intellectual Property Office (EUIPO) InvoicesA new fake invoice scam is targeting EU trade mark owners. To date, this scam has targeted businesses in Spain but this practice may well spread further afield and perhaps to wherever EU trade mark owners are to be found.
The misleading invoice appears in the form of a fake decision issued by the European Intellectual Property Office (EUIPO). The invoice features the EUIPO logo and requests payment of a registration fee to a Polish bank account. 
The matter is being dealt with by the EUIPO and we understand that criminal proceedings have been initiated. As always, our advice is that if you...
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21 April 2020
EPO Announces Pilot Project for Holding Opposition Division Oral Proceedings via VideoconferenceThe President of the EPO issued a decision on 14 April 2020 concerning a pilot project to hold oral proceedings before opposition divisions via videoconference. A notice was also issued, which provides additional information regarding oral proceedings held by videoconference.
Although the EPO has offered the possibility of oral proceedings before examining divisions via videoconference since 1998, and has recently announced that the majority of examining division oral proceedings will occur via videoconference, videoconferencing has not previously been available for opposition division oral proceedings. The EPO has therefore decided to run a pilot project from 4 May 2020 until 30 April 2021, in...
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15 April 2020
UK Court of Appeal Refuses to Allow Late Payment of SPC Fees: Genentech Inc. v The Comptroller General of PatentsThe UK Court of Appeal recently issued a judgment concerning late payment of SPC fees for the product “ranibizumab”, which is an active ingredient of Genentech’s medicine “Lucentis” for age-related macular degeneration. The SPC was granted to Genentech in 2007 for a period expiring in January 2022, provided that the annual fees required for the SPC were duly paid.
This case is unusual in that the hearing was held by video conference on 26 March 2020, whist the UK was in a lockdown state due to the coronavirus pandemic. The court was provided access to electronic bundles using Dropbox links and...
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14 April 2020
FICPI Issues Summary of Covid-19 Extensions at Worldwide IP Offices The IP attorney membership organisation FICPI has produced a guide on changes to deadlines and arrangements for national, regional and international IP offices as a consequence of coronavirus. Here you will find a regularly updated spreadsheet ( follow this link ) of information updated frequently by members of FICPI's global community.    For the latest on extensions available at the EPO, UK IPO and EUIPO, please see our frequently updated report  here . 
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 9 April 2020
Arrow Declarations and Refrigerant Technology: Mexichem vs HoneywellThe UK Court of Appeal has recently issued an interesting decision in Mexichem UK Limited vs Honeywell International Inc relating to Arrow declarations. This illustrates the availability of such declarations in patent cases relating to any technology and not just to life science inventions where they have previously been deployed by generic and biosimilar companies.
Arrow declarations are used by potential patent infringers to forestall future infringement actions based on yet-to-be granted divisional patents. Essentially the party seeks a declaration that their product (or process) was obvious at the effective date which therefore implies that any patent infringed by that product (or...
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 2 April 2020
J A Kemp Appoints Two PartnersJ A Kemp is pleased to announce the appointment of two partners. Vicki Allen and Daniel Shaw are both members of the Biotechnology and Life Sciences Group and are based in the firm's Cambridge office.
Vicki works across all areas of biotechnology, with a particular focus on antibody therapeutics. Vicki’s other areas of interest and expertise include diagnostic assays, screening methods, personalised medicine and antimicrobials. She joined J A Kemp in 2010.Dan joined J A Kemp as an associate in 2017 after training at another top-tier patent firm. His areas of interest and expertise across the life sciences spectrum include plant...
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Why Choose Us?

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.

                        Managing Intellectual Property
                    
J A Kemp was awarded "Best UK Patent Prosecution Firm" at the Managing Intellectual Property Awards 2020.

                        Chambers and Partners
                    
 "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."

                        IAM Patent 1000
                    
"Unified team culture, deep concentration of technical expertise and ability to effortlessly switch to another gear in times of extreme need.”

                        Managing Intellectual Property
                    
“J A Kemp is second to none in my experience.”

                        Overseas Attorney Firm
                    
"I don’t work with anyone as good.  I recommend J A Kemp because it’s good for my clients."

                        J A Kemp Client
                    
"If I want an opinion I’ll go with J A Kemp."

                        Chambers and Partners
                    
"They identify with our priorities, are immediately responsive and generate confidence in their technical ability."

                        World Trademark Review 1000
                    
“A very sharp firm, nimble on its feet and able to really deliver, J A Kemp is timely, professional and excellent value for money.”

                        Managing Intellectual Property
                    
"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." 

                        IAM Patent 1000
                    
"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."

                        Chambers and Partners
                    
"I am really impressed with them.  The team is very proactive, strategic and thinks about the best way to move forward."

                        The Legal 500
                    
"J A Kemp’s team of trade mark attorneys are true experts and above all extremely commercial."  

                        IAM Patent 1000
                    
"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 Client
                    
"J A Kemp gives good, clear, commercial recommendations."

                        Overseas Attorney Firm
                    
"J A Kemp is my preferred firm because the level of service and understanding of the client’s technology is great."

                        World Trademark Review 1000
                    
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 Client
                    
"J A Kemp has a very 'can do' attitude for jobs which are complex."

                        Overseas Attorney Firm
                    
"These are some of the most detailed and thorough instructions that I have ever seen. They evidence a keen understanding of US practice."

                        IAM Patent 1000
                    
"J A Kemp is extremely knowledgeable and does a fantastic job."

                        Overseas Attorney Firm
                    
"I cannot thank you enough for your expert advice and careful strategic thinking in this matter."

                        J A Kemp Client
                    
"We want the best protection available and I give J A Kemp the highest marks possible."

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