Patents

Welcome to the home of Patents on Law-Now.

IP is key to obtaining a competitive advantage for any business. Here, you will find patent related articles written by the CMS patent team.

The articles draw upon our experience of advising some of the world’s most significant technology and life science companies for whom strong IP, and a clear IP strategy, is essential. Lawyers from the full service IP team deliver Law-Now commentary and analysis and you can read about UPC, issues around patent drafting and prosecutions, SPC applications, oppositions and appeals before the European Patent Office, and strategic management considerations.

Recent Articles

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    19/01/2024
    Europe

    EP Case Law in Brief: Commercial success and inventive step

    “Commercial success alone is not to be regarded as indicative of inventive step, but evidence of immediate commercial success when coupled with evidence of a long-felt want is of relevance provided the examiner is satisfied that the success derives from the technical features of the invention and not from other influences (e.g. selling techniques or advertising).”The EPO Guidelines (G-VII, 10.3) describe the basic approach to the concept of commercial success, an example of a secondary indicator of inventive step. Secondary indicators are factors which, although on their own may not...
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    15/12/2023
    China

    Chinese court issues landmark judgment in OPPO v. Nokia global FRAND rate case

    The Chongqing First Intermediate People’s Court has issued a first instance judgment in the case filed by OPPO against Nokia over royalties for standard essential patents (SEPs). This landmark decision confirmed global fair, reasonable, and non-discriminatory (FRAND) licensing rates for Nokia’s portfolio of 2G, 3G, 4G and 5G SEPs, and is the first Chinese court decision setting global FRAND rates and the first to address 5G SEP rates.While confidential data was redacted in the publicly announced decision, the key conclusions are clear. Specifically, the court determined FRAND royalties...
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    23/11/2023
    United Kingdom

    Patentability of AI inventions: High Court offers a helping hand (Emotional Perception v Comptroller)

    Is a deep learning AI system which recommends similar songs to its users patentable? Or is it a computer program ‘as such’ and therefore excluded under s.1(2)(c) Patents Act 1977? The High Court has recently provided an answer (overturning the UKIPO’s original decision): such systems are patentable. In a decision which will delight AI innovators, Justice Mann held that the invention in question did not even constitute a computer program, let alone a computer program ‘as such’. Even if the invention was a computer program, Justice Mann considered that it had a technical...
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    21/11/2023
    Europe

    EP Case Law in Brief: Proof of common general knowledge

    It is a common sight for a patent attorney – an EPO Examiner acknowledges that a claim is novel, but asserts a lack of inventive step over ‘D1’ in combination with ‘common general knowledge’ (CGK). When considering the ability to challenge this assertion, section I.C. 2.8.5 of the Case Law of the Boards of Appeal provides some guidance.General principlesIt is well established in the case law (T 438/97, T 329/04, T 941/04, T 690/06, T 2132/16) that if the status of some information as CGK is challenged, the person asserting that it is CGK must provide proof, such as...
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    16/11/2023
    Germany

    Are arbitration clauses relevant to patent disputes and if yes, why? – The German Federal Patent Court on the interrelation between revocation actions and arbitration

    In a recent series of judgments, the German Federal Patent Court (BPatG) discussed the effects of an arbitration clause contained in a patent and knowhow Licence Agreement and two arbitral awards rendered on the basis of such a clause on the admissibility of several patent revocation actions by the licensee against the patent owner for German patents in the field of brake system technologies.In all judgments, the BPatG assessed in a remarkably detailed and structured manner whether the arbitration clause in the Licence Agreement or the arbitral awards rendered in the preceding arbitration under...
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    07/11/2023
    Europe

    Description amendments at the EPO – the Appellant agrees with the need for an EBA referral in T0056/21

    Description amendments bringing the content of the description in line with the allowed claims remain a controversial topic in the European practice. As reported previously, the Board of Appeal in T0056/21 has suggested a possible Enlarged Board of Appeal referral aiming to clarify whether discrepancies between part of the disclosure of the invention in the description and the claims can lead to a refusal under Article 84 EPC. In this case, the Board previously invited the Appellant (Roche) to submit their observations on the proposed EBA referral.Roche have now submitted their observations, stating...
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