Dawn Ellmore Employment's Blog

IP and Legal Industry Updates


October 2016

Panasonic Showcased New Fully Flexible Battery

Panasonic recently unveiled a flexible battery prototype at a technology exhibition in Japan.  The battery can be bent and twisted whilst still retaining its charge.

The battery’s thinness and flexibility makes it potentially useful in wearable technology or flexible screens.  It will be some time however before the technology will be available to consumers.  The company has said it will be 2018 before the flexible battery goes into mass production.


WIPO Launched Pro Bono Programme to Help Developing Countries Obtain Patents

The World Intellectual Property Organization (WIPO) has recently launched a global pro bono patent programme for developing counties called “The Inventor Assistance Programme” following a successful pilot scheme in Columbia, The Philippines and Morocco.  The programme aims to provide free patent advice from qualified IP lawyers to inventors and start ups (who meet strict criteria) in developing countries which they would not normally be able to afford.  The aim of the advice is to give these inventors the best chance of obtaining patents that are key to the commercialization of new products.  The legal advice is provided at all stages throughout the patent process (to include drafting of patent applications, filing of patent applications and subsequent follow up with IP offices).


UK Companies Make Substantial Tax Savings with Patent Box Scheme

Figures recently released by the UK Government show encouraging take up of government Patent Box tax saving scheme in 2013/2014. The scheme’s goal, following introduction in 2013, was to incentivise innovation by offering a lower rate of corporation tax on profits from commercialisation of patented technology.  The data shows that 700 companies claimed tax relief under Patent Box in 2013/2014 with £342m of tax relief awarded.  Larger companies seemed to fare best with manufacturing, wholesale, retail and transport sectors accounting for 80% of the claims.


Innovation Increases in China

China is now ranked as the world’s 25th most innovative economy after moving up 4 places since 2015.  China is closing the global innovative gap by being the first middle income economy to make the top 25.  Some of the most innovative Chinese companies include Huawei (one of the world’s leading manufacturers of telecoms equipment), ZTE Corporation (multinational telecoms equipment and systems company) and Shanghai RAAS Blood Products (research, development and manufacture of blood products).

The number of the inventions from China is expected to continue to increase but some state that intellectual property in the country needs to be strengthened and suggest the need for administrative procedures to be simplified.


Impact of Brexit on EU Trade Marks

Brexit could cause a majority change in the EU Trade Mark system.  Brand owners who chose to rely solely on the protection provided by EU Trade Marks and have not registered trade marks under the UK’s national regime could be left without any protection in the UK.

We don’t yet know what transitional provisions will be put into place for owners of EU Trade Marks. It seems likely there will be provision for a conversion of those EU rights into national UK rights either through automatic process or by brand owners re-applying for those rights.

There is no need for EU Trade Mark owners to panic but they should regularly review their trade mark portfolios and consider the following:

  • Where they are using their marks – are EU Trade Marks being used throughout the EU or merely in certain Member States?
  • What any co-existence agreements say – agreements that define the EU as the territory may need to be clarified to ensure that they continue to apply to the UK post Brexit
  • When filing new applications –consider whether the mark is going to be used in the EU (outside of the UK).  If not file a UK application instead.  If the mark is to be used in the UK and EU file both UK and EU applications.


Volkswagen Files Patent for Manual Controls to Work in Conjunction with Self Driving Cars

Volkswagen has developed technology that allows interaction between manual controls and self driving cars.  This allows the best of both worlds – cars automatically driving themselves but alerting the user of where decisions and value judgements are required with their view from the road and potential nearby hazards.  This particular patent filed in Germany specifically concerns a touch-sensitive section at the top of the gear stick that alerts the user of when a decision is needed on how to proceed from a series of options.  It alerts the user using a series of coloured lights.  The colour of the light depends on the urgency of the decision required (from blue meaning ample time to red meaning ASAP to choose a course of action).  The computer system thus gives the user the opportunity and responsibility to choose which course of action to take.


Google Patent Describes Interacting with Smart Clothing

Google recently filed a patent with the United States Patent and Trademark Office (USPTO) for a “gesture control system” to work with smart clothing.  Certain gestures made over the interactive clothing would allow individuals to control gadgets to perform certain junctions such as answering a phone call, dismissing a text message etc.  A jacket prototype has been created in conjunction with Levi using the smart technology in the cuff strap.  It is expected to be some time before we could expect to see such garments commercially available if they ever make it into mass production as the patent has only just been filed.


Steps to Apply for a European Patent

For an invention to be patentable, it must be new, industrially applicable and involve an inventive step.  Here are the 11 steps outlined by the European Patent Office to obtaining a European patent:

 1) Before applying for a European patent – carry out a patent search.

2) Application – If a patent application is filed at the EPO in any language other than the official languages of the EPO (i.e. English, French and German) then a translation has to be submitted.

A European patent application consists of:

  • a request for grant
  • a description of the invention
  • claims
  • drawings (if any)
  • an abstract.

3) Filing and formalities examination
The examination on filing involves checking whether all the necessary information and documentation has been provided, so the application can be given a filing date.

The following information is required:

  • an indication that a European patent is sought
  • particulars identifying the applicant
  • a description of the invention or
  • a reference to a previously filed application.
  • If no claims are filed, they need to be submitted within two months.

4) Search
A European search report is now created (based on the patent claims, the description and drawing(s)) listing all the documents available to the patent office which could be relevant to assessing novelty and inventive step. The search report is sent to the applicant with any cited documents and an initial opinion of whether the claimed invention and application meet the requirements of the European Patent Convention.

5) Publication of the application
The application is published 18 months after the date of filing or, if priority was claimed, the priority date. Applicants then have 6 months to decide whether or not to pursue their application by requesting substantive examination and must pay the fee.

From publication date, a European patent application gives provisional protection on the invention in the states designated in the application.

6) Substantive examination
After the request for examination has been made, the European Patent Office examines whether the European patent application and the invention meet the requirements of the European Patent Convention and whether a patent can be granted.

7) The grant of a patent
If the examining division decides that a patent can be granted, it issues a decision to that effect.  The granted European patent is a “bundle” of individual national patents.

8) Validation
Once the grant is published, the patent has to be validated in each of the designated states within a specific time limit to retain its protective effect and be enforceable against infringers, fees will apply.

9) Opposition
After the European patent has been granted, it may be opposed by third parties – usually the applicant’s competitors – if they believe that it should not have been granted. Notice of opposition can only be filed within nine months of grant.

10) Limitation / revocation
At any time after the grant of the patent, the patent proprietor may request the revocation or limitation of his patent.

11) Appeal
Decisions of the European Patent Office – refusing an application or in opposition cases are open to appeal. Decisions on appeals are taken by the independent boards of appeal.


How Much Protection Do US Common Law Trade Mark Rights Provide?

In the United States (US) common law rights are automatically granted to trade marks used without registration providing you can prove you were the first to use the mark commercially in your geologic area.  Many new businesses are surprised to learn there are instances where common law trade mark protection can be sufficient if a business is based locally and has no current or future expansion plans.  You need to register your trade mark if you plan to do business outside your local jurisdiction.  Common law rights provide a level of protection but do not allow recovery of profits, statutory damages, and attorney fees if an issue arises.

Several factors are evaluated when determining if a provider has acquired common law trade mark rights, including:

  • the public’s association of your mark with the your products/services offered
  • whether your mark is distinct of your products/services offered
  • whether you exercise control over the quality of your products/services offered

Common law trade mark rights do not exist in European countries unfortunately.  The only way to receive protection in Europe is to register trade marks.  The laws in Europe require trade mark holders to meet a 5 year use requirement after registration to remain legally binding.


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