J A Kemp LLP continues to provide a full service to all clients during the pandemic, operating within the guidelines issued by European governments. As far as possible, please use email to contact the firm and, in particular, to issue any instructions.
23 November 2020
The UK government has announced that it intends to proceed with changes to UK legislation governing the “address for service” that may be used for intellectual property rights, with associated legislation currently being laid before Parliament. An address for service is a correspondence address given to the UK Intellectual Property Office (UKPIO) by proprietors of IP rights. Usually the IP attorney of the proprietor is listed as the address for service. Currently, any address in the European Economic Area (EEA) is accepted. The changes will require use of a UK, Gibraltar or Channel Islands address for service in relation to all new...
16 November 2020
The UK High Court has recently ruled in the case of IPCOM GmbH & Co Kg v HTC Europe Co Ltd & Ors  EWHC 2941 (Pat) that damages following the infringement of a UK standard essential patent may be based only on patent infringements that occur within the UK. IPCom were the proprietors of patent EP(UK) 1,841,268 that expired on 14 February 2020. The patent covered an aspect of the operation of 3G mobile telephones. The patent was declared essential to the relevant telecommunications standards and subject to a FRAND (Fair, Reasonable And Non-Discriminatory) undertaking from IPCom. In another previous case...
11 November 2020
The EPO announced on 10 November 2020 (further details of which can be found in the EPO’s notice and decision), that all opposition division oral proceedings scheduled to take place between 4 January 2021 and 15 September 2021 will take place by video conference, rather than in-person on the premises of the EPO. No opposition division oral proceedings will take place in-person until after 15 September 2021. This development represents a progression of the measures the EPO has taken in response to the ongoing COVID-19 pandemic. In particular, no examining division or opposition division oral proceedings have been carried out in-person...
11 November 2020
The European Patent Office (EPO), the European Union Intellectual Property Office (EUIPO), the UK Intellectual Property Office (IPO) and the International Bureau (IB) of WIPO all remain operational and will allocate filing dates for newly filed cases and accept other submissions/fee payments as normal. However, a number of measures have been adopted by the offices to assist applicants in view of the ongoing COVID-19 pandemic. The current position at each office is discussed below. Measures Taken by the EPO The EPO is no longer applying a blanket extension of “periods”, as it did between 15 March 2020 and 2 June 2020, but...
9 November 2020
In a press communiqué dated 6 November 2020 the Technical Board of Appeal of the European Patent Office (EPO) issued its written decision revoking European patent number EP2771468 owned by the Broad Institute, Inc. and others. The patent claimed a fundamental aspect of the CRISPR/Cas9 gene editing technology platform. The patent was initially opposed by nine opponents during first instance proceedings. The Opposition Division revoked the patent on the ground of lack of novelty following a loss of priority date. The opponents had argued that the Broad Institute, Inc., together with co-applicants Massachusetts Institute of Technology and President and Fellows of...
22 October 2020
J A Kemp was once again listed in the top tier of Patent and Trade Mark Firms in the 2021 edition of Chambers and Partners. One client interviewed as part of the research commented: "They have been a really valuable partner and I trust them to guide us through difficult situations." Another client reported: "J A Kemp has been outstandingly good tactically, strategically and operationally and manages matters efficiently". A further client’s assessment of J A Kemp was that "the firm listens to the needs of customers and delivers the solution in the best possible way” and “their analysis of the...
22 October 2020
James Fish, the Head of J A Kemp’s Trade Marks practice, has been recognised by World Trademark Review (WTR) as a Global Leader. WTR Global Leaders draws on the WTR 1000 and the WTR 300 to identify the "best of the best" in trade mark practice. To qualify for inclusion in WTR Global Leaders, individuals must be ranked in the Gold Tier of the WTR 1000. World Trademark Review identifies Global Leaders as “meriting special attention owing not only to their expertise and experience in relation to creating, protecting, managing and enforcing essential brand rights, but also to their ability to innovate,...
16 October 2020
The UK’s Medicines and Healthcare products Regulatory Agency (MHRA) has joined the Australia-Canada-Singapore-Switzerland (ACSS) Consortium, with effect from 1 January 2021. The group will be renamed as the Access Consortium to reflect the addition of the UK, which increases the combined population of the participating countries to approximately 145 million. Pharmaceutical companies that submit applications to some or all of the five Access countries may have their products evaluated for marketing in those countries simultaneously, with reduced evaluation times. Updated guidance to industry on how to apply for a product to be considered for marketing authorisation across the five member countries,...
16 October 2020
The EU’s “Fortress Europe” approach to merit a change of practice for designers relying on these rights for protection in both jurisdictions. EU Design law provides that any new design which has individual character will benefit from an automatic design right that protects against copying. The right, known as Unregistered Community Design Right (UCD), lasts for a period of three years from the date the design is first made available to the public (disclosed) within the Community (EU). UCD protects both shape and surface decoration, and thus the whole or part of a product. It is a very useful form of...
13 October 2020
Ada Lovelace Day (ALD) is an international celebration of the achievements of women in science, technology, engineering and maths (STEM). It aims to increase the profile of women in STEM and, in doing so, create new role models who will encourage more girls into STEM careers and support women already working in STEM. Founded in 2009 by Suw Charman-Anderson, it is now held every year on the second Tuesday of October. This year, Ada Lovelace Day is going back to its roots with a day of blogging, Twittering and Facebooking. #ALD20 will celebrate women, advocates and educators in STEM. Two J A Kemp...
5 October 2020
The UK High Court has issued a rare favourable decision to the applicant in a case dealing with the patentability of computer-implemented inventions (Lenovo (Singapore) PTE Ltd v Comptroller General of Patents - judgment available here). UK decisions on this point are rare and do not follow the same approach as the EPO. Section 1(2) Patents Act 1977 (UKPA) excludes from patentability, amongst other things, computer programs and methods of doing business, to the extent that the patent application relates to those things “as such”. Lenovo appealed against the UK Intellectual Property Office (UK IPO)’s decision that their “card clash” invention...
2 October 2020
J A Kemp has retained its top tier ranking in The Legal 500’s 2021 edition. Thirteen partners across the firm were singled out by the directory as “recommended attorneys”. A client of the firm commented: ‘We have had dealings with J A Kemp over a long period of time. What makes them an outstanding partner is the quality of their people and of the advice they provide. They are always happy to work with you swiftly to rule in or out new concepts and thus minimise wasting money. And once we proceed with a project the service is always first class.’...
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."