We are very pleased to announce that Rachel Gee, Katherine Green and Matthew Smith have recently passed their examinations and are now qualified European Patent Attorneys. This brings the total number of European Patent Attorneys in the firm to 43.

Serbia has become a contracting State to the European Patent Convention, with effect from 1 October 2010.

A Technical Board of Appeal at the EPO has referred a question to the EPO’s Enlarged Board of Appeal.  The question concerns the amendment of a claim to introduce a “disclaimer”, and the circumstances under which such an amendment adds subject matter to an application.  This referral is now pending as case G2/10 ("Disclaimer").

Numatic International Ltd v Qualtex UK Ltd EWHC 1237 (Ch), 28 May 2010
The 'Henry' vacuum cleaner was victorious in a passing-off claim in a recent UK High Court case. Numatic, manufacturers of the much-loved 'cheeky chappy' vacuum cleaner were granted an injunction, preventing Qualtex's replica machine from being marketed.

Although it did not provide any new guidance to help patent practitioners determine whether or not an invention is patentable in the US, the Court expressly disagreed that the machine-or-transformation test is the sole test for deciding whether or not a process is eligible for patentability, and confirmed that business methods are not categorically excluded from patent protection in the US. The decision effectively acts to revert US patentability practice to its traditional open stance.

The General Court of the European Union recently handed down judgment in Beifa Group Co. Ltd v OHIM (defendant) & Schwan-Stabilo Schwanhaüßer (intervener), Case T-148/08.  This was an application to annul OHIM’s decision to invalidate Beifa’s Registered Community Design for a highlighter pen.

The case mainly relates to issues surrounding the use of an earlier trademark registration in the revocation of a Community Design.  The General Court decided that the proprietor of the Community Design can ask the owner of the earlier mark to provide evidence of use, if the trademark registration would normally be vulnerable to revocation for non-use. The Court also gave some guidance on how earlier trademark registrations should be compared with contested Community Designs, and on procedural points relating to appeals from the Community Designs Office (OHIM).

The High Court has held that vodka is a clearly defined class of goods, with a reputation giving rise to a protectable goodwill, by analogy with the previous case law on 'extended passing off'. The Court decided that fermented alcohol and vodka-based schnapps drink VODKAT was being misrepresented.  Arnold J decided that on the facts there had been misrepresentation and damage and granted a qualified injunction which prevents ICB from using the name VODKAT without making it clear that the product is not vodka.

On Friday 21 May, the Court of Appeal of England and Wales issued its decision in L’Oreal v Bellure, the long-running dispute between L’Oreal and various businesses marketing “smell-alike” perfumes.  The Court reluctantly ruled that the defendants’ use of L’Oreal’s trade marks in comparison lists, which matched up their own cheaper brands to the L’Oreal equivalents, amounted to infringement.  The strongly-worded judgment was remarkable not for the outcome of the decision, which implemented the responses given in June 2009 by the Court of Justice of the European Union (ECJ) to questions referred to it by the Court of Appeal, but for the leading judge’s impassioned criticism and condemnation of the ECJ ruling by which the Court was bound.

Mewburn Ellis partners Roger Grimshaw and Kerry Moroney togther with Trade Mark Attorney Edmund Harrison will be attending the INTA Annual meeting in Boston, MA, USA from 22-26 May 2010. They would be pleased to meet up with any clients and friends who are also attending so please let them know if you plan to be there.

The EPO Enlarged Board of Appeal has issued a decision in case G3/08 (software patents).   Several questions relating to the patentability of computer programs had been referred to the Enlarged Board by the EPO President. However in their decision the Enlarged Board have found the referral to be wholly inadmissible.

The Court of Justice of the European Union has confirmed that slogans can be both a promotional formula and a distinctive trade mark.

Albania has become the 37th member of the European Patent Organisation, as of 1 May 2010.

Mewburn Ellis Partner Robert Watson will be attending the AIPLA Spring Meeting in New York on 6-8 May 2010 and hopes to catch up with any clients and friends attending.  Do let Robert know if you plan to be there at robert.watson@mewburn.com.

Mewburn Ellis Partners Simon Kremer and Richard Clegg will be attending the 2010 Bio International Convention held at McCormick Place, Chicago, IL in the US from 3rd to 5th of May.  Any clients or contacts also attending BIO who wish to meet up with Simon or Richard please email them.  For more details on the event click here.

The EPO is bringing in a number of new rules with effect from 1 April 2010. As well as rules placing major restrictions on the filing of divisional applications, the new rules place formal restrictions on the number of independent claims which will be searched. They also make it compulsory to address objections raised during an EPO search at a much earlier stage, and reduce the opportunities for voluntary amendments.

The Partners of Mewburn Ellis LLP are happy to announce that with effect from 1 April 2010 Sam Bailey, Graeme Moore and Stephen Hodsdon will join the partnership.

The Court of Justice of the European Union (formerly the ECJ) has delivered its much anticipated judgement in the three combined cases regarding Google's AdWords keyword advertising service. The cases were all concerned with whether the use of registered trade marks as keywords that would 'trigger' sponsored links amounts to infringement and related issues.

The General Court of the European Union (formerly the Court of First Instance) has issued its first ever ruling on a Community Design case in T-9/07, Grupo Promer Mon Graphic SA v OHIM, PepsiCo Inc.

Napoleone Ferrara of our client Genentech, Inc. has been nominated for the prestigious European Inventor Award 2010. Mewburn Ellis LLP handled the prosecution of the patent on which this nomination is based, as well as its successful defence in opposition proceedings.

Benoît Battistelli (currently Director General of the French National Institute of Industrial Property) has been elected to succeed Alison Brimelow as President of the EPO on 1 July 2010.

The EPO Enlarged Board of Appeal has issued its decision in case G2/08 (dosage regimes). As well as confirming the current practice of the EPO, whereby a novel dosage regimen can confer novelty on a 'second medical use' claim, the Board ruled that 'Swiss' form second medical use claims (i.e. 'use of compound X in the manufacture of a medicament for the treatment of disease Y') are no longer to be considered allowable under the EPC.

The EPO Enlarged Board of Appeal has now issued its decision in case G4/08 (language of the proceedings). The Board confirmed that, in the case where a PCT application was filed, and published, in an EPO official language (English, French or German), this language automatically becomes the official 'language of the proceedings' at the EPO. The language of the proceedings cannot be changed by filing a translation on entry to the European regional phase, nor can it be changed on the request of the applicant.

The EPO Enlarged Board of Appeal has issued its decision in case G1/07 (surgical methods). The Board had been asked to consider whether the inclusion of any physical intervention in a claimed method led that method to be excluded from patentability, regardless of whether the step was not per se aimed at maintaining life and health. In their decision, the EBA stopped short of saying that 'surgery' must involve therapy for the exclusion to apply. The Board further confirmed that multi-step methods are not patentable if they include a single step that falls within the exclusion. However the Board set out a new, narrower approach to the meaning of "treatment by surgery".

Renewal fees payable to the European Patent Office and the UK Intellectual Property Office are increasing from early April 2010 and therefore, it may be preferable to pay renewal fees due after the fee increase before April 2010 to take advantage of the current lower fees. 

Some recent decisions in the European Courts have been reviewed by our trade marks team.

Several recent patents cases in the UK High Court have been reviewed and are now summarised on our website.

We are pleased to announce that our Training Course on the European Patent will run again from 14 to 25 June 2010.  Our two-week course provides an in-depth study of the legal and practical aspects of working with the EPC and EPO, with optional additional workshops on other aspects of intellectual property.

On 14 January 2010 Lord Justice Jackson published his final report on the costs of civil litigation in the UK, following an extensive review of the current situation. The Report aims to provide a comprehensive set of reforms to control costs and promote access to justice.   In relation to IP matters, the focus is primarily on the role of the Patents County Court, and a range of recommendations are made aimed at increasing the usefulness and accessibility of the PCC for smaller value IP disputes.

Montenegro is shortly to become the latest EPC extension state. From 1 March 2010 it will be possible to extend the protection conferred by European patent applications and patents to Montenegro.

The BBC is now accepting applications for the new (8^th) series of Dragons’ Den.  They are searching for inventions or business ideas with serious business potential that are investment ready and looking for funding.