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Changes to UK Address for Service Rules
The UK Government has announced that from 1 January 2021, the UKIPO’s rules on address for service will change. The change removes the ability to use an address for service in the European Economic Area (EEA) for new UK matters and will mean that only a UK, Gibraltar or Channel Islands address will be accepted on new applications, new oppositions, and other proceedings before the UKIPO. The Isle of Man remains a valid address for service. (more…)
Patenting AI/Machine Learning Inventions (Part 1)
Artificial Intelligence (AI) is appearing in every technology and industrial sector and has been accompanied by an increase in patent activity over recent years. In this video (subtitles available) I discuss the challenges of patenting artificial intelligence and machine learning inventions with Richard Lawrence of Keltie.
Part 2 of this video will be published next week on IPcopy.
Mark Richardson 13 May 2020
COVID-19 – Effects on Intellectual Property (IP)
IP Offices around the world have announced special measures to take account of likely business disruption, not only to their own operations but also to those of their customers, from the Coronavirus outbreak. Here we summarise the measures of the EUIPO, EPO, WIPO, UKIPO and IPOI.
If you feel that your ability to respond to an IP deadline is affected by the Coronavirus situation then please contact your normal IP representative who will be able to advise on the options that may be available. It is important to note that the various IP Offices are applying different special measures and the extent of such special measures may not be immediately be apparent. Please also note that the special measures across the various IP Offices mentioned below are changing constantly so please check with your representative for the latest news.
IP Audits
Wouldn’t it be nice to have some free money to spend on evaluation of your company’s intellectual property?
Well, I’m pleased to tell you that with the generous support of the UK Intellectual Property Office, this is exactly what is on offer.
The scheme in question is called the IP Audits Plus service. It gives those company’s that apply, and are selected, access to a fund of £3,000 (inc. VAT) to spend on evaluation of the company’s IP position (only £500 of which is funded by the company). The money can be spent with a qualified patent or trade mark attorney of the company’s choosing to conduct an Audit of the firm’s IP assets and provide a report. (more…)
When Harry met Selfridges
A name is not reason for confusion
In a decision of the UKIPO (O/219/18, HARRY GORDON’S BAR and HARRY GORDONS (Opposition), 5th April 2018), the IPO found in favour of retailer Selfridges, allowing the registration of its trade mark applications for HARRY GORDON’S BAR and HARRY GORDONS.
In May 2013, Selfridges applied for the above trade marks covering classes 29, 30, 32, 33 and 43 for goods including alcohol and services for providing drinks.
In August 2013, Harry’s New York Bar filed a notice of opposition against all of the goods and services in both applications. The Opponent argued that the use of the name HARRY in Selfridges’ trade marks resulted in similarities with its earlier marks HARRY’S, HARRY’S BAR and HARRY’S NEW YORK BAR, which it claims were first used in Paris in 1911.
The Opponent submitted that its bars can be found in luxury hotels that would be visited by the same sort of people who frequent Selfridges’ store on London’s Oxford Street. Therefore, use of the mark in such a prestigious establishment would “ride on the coat tails” of its existing reputation.
Selfridges rejected these claims, stating that its bar was named after the retailer’s founder, Harry Gordon Selfridge, and inspired by the popular TV series, Mr Selfridge, about his life. (more…)
Brexit update: Business as usual
Nothing over the last few weeks has done anything to dispel the uncertainty that hangs over Brexit. Parliament emphatically rejected the proposed EU withdrawal agreement on 15 January and the last week has seen a number of proposed amendments* to the withdrawal agreement defeated. There are now only around 50 days until Brexit and the UK’s position hasn’t changed much since Article 50 was triggered nearly two years ago…. (more…)
Patent prosecution in the UK and Europe – acceleration options
Prosecuting a patent application from filing to grant can be a long winded process lasting, in some cases, many years. An application needs to be searched and then published before being examined. Delays at the UK Intellectual Property Office in certain technology fields can mean that examination reports take years rather than months to issue and delays at the European Patent Office (EPO) have, in extreme cases, meant that applications have remained pending for even longer.
In many cases applicants may be happy to proceed at a slow pace because it allows an invention to be developed and marketing/commercialisation plans put in place. The cost of the patent process can also be spread out over time. There are however circumstances where a more speedy grant would be useful, for example where you think someone is using your invention and you want a granted patent to allow some kind of infringement action to be taken or where an investor asks for a granted patent before they release funds for the development of your company/invention.
Both the UKIPO and the EPO offer a range of acceleration procedures that can help get a granted patent more quickly. The various options for these two patent offices are discussed below. (more…)
UKIPO Patent Examination Time Calculator
Nestled towards the bottom of the CIPA August 2018 newsletter is news of a new patent examination calculator that has been introduced by the UKIPO on its patent document and information service (IPSUM).
For cases where examination has been requested the online file will now indicate the latest date by which the IPO expects to issue its first exam report. Currently, IPSUM entries will specify one of three things: (i) that exam is expected to be complete by 30 June 2019; (ii) that exam is expected by 31 March 2021; (iii) that it’s unlikely exam will be completed before 31 March 2021. More precise information may become available as the IPO works through its backlog of cases. (more…)
Brexit and IP: UKIPO update on Rights of Representation
The UK Intellectual Property Office recently updated its “IP and BREXIT: The facts” page with further details on its plans for handling European Union Trade Marks (EUTMs), Registered Community Designs (RCDs) and Unregistered Community Designs as the UK exits the EU (see our earlier post on the subject here).
The UKIPO Brexit page also has a few new things to say on the subject of the rights of UK IP professionals to represent clients before the EU Intellectual Property Office (EUIPO). It should be remembered that as a consequence of leaving the EU (and, as things stand, leaving the EEA) UK based IP professionals who can currently represent clients on EUTM and RCD matters before the EUIPO will lose their rights of representation (see more on this subject on the CITMA website). (more…)
Brexit and IP: UKIPO update on conversion of EU Trade Marks and Registered Community Designs
Following statements made recently in the House of Commons during an “Exiting the European Union” debate, the UK Intellectual Property Office has updated its “IP and BREXIT: The facts” page with further details on its plans for handling European Union Trade Marks (EUTMs), Registered Community Designs (RCDs) and Unregistered Community Designs as the UK exits the EU.
By way of a brief recap readers will recall the March 2018 version of the draft Withdrawal Agreement covering the UK’s departure from the EU confirmed a number of IP related elements that had been agreed (see the sections in green between Articles 50-57) but that the registration procedure (for the conversion of EUTMs and RCDs) was still the subject of negotiations. (more…)
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