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J A Kemp
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Update on Programme for J A Kemp Pharma Leaders IP Conference 2015

We are pleased to announce that two additional speakers will be taking part in the J A Kemp Pharma Leaders IP Conference 2015 on 23 September at the Grand Connaught Rooms, London.

Dr Dieter Tzschoppe of the European Patent Office and Dr Lawrence Cullen of the UK Intellectual Property Office will be contributing to sessions on medical use claims in Europe and supplementary protection certificates respectively. 

The other guest speakers will be Dr Joan Ellis of Dickinson Wright PLLC, a former Examiner and Administrative Patent Judge at the USPTO, and Dr Gwynedd Warren of GlaxoSmithKline, ‎an Assistant General Counsel (Patents) who has over 15 years of experience in the prosecution and litigation of patents pertaining to vaccine technology.    J A Kemp’s own IP experts will lead sessions exploring a wide variety of topics, from where and when to file to trade marks and regulatory matters. 

To view the full agenda and speaker profiles and to register for one of the few remaining places at this conference, please visit the event website.

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PHARMA LEADERS IP CONFERENCE 2015

On 23 September 2015 J A Kemp will host the ‘Pharma Leaders IP Conference 2015’ at the Grand Connaught Rooms in London. 

Topics explored will include:

- Pharma patent applications – where and when to file
- Medical use claims in Europe
- Personalised medicine and companion diagnostics
- Supplementary protection certificates (SPCs)
- Trade marks and related regulatory matters
- Organising litigation around the world
 

The speakers at this event will include Dr Joan Ellis of Dickinson Wright PLLC, a former Examiner and Administrative Patent Judge at the USPTO, and Dr Gwynedd Warren of GlaxoSmithKline, ‎an Assistant General Counsel (Patents) who has over 15 years of experience in the prosecution and litigation of patents pertaining to vaccine technology.  Dr Ellis will be providing her insights on patent eligibility in the US, especially in relation to diagnostics and biomarkers.  Dr Warren will be discussing patent litigation and the potential impacts of the European Union’s Unitary Patent Court (UPC). 

J A Kemp’s own IP experts will lead sessions exploring a wide variety of topics, including where and when to file, European medical use claims, diagnostics from a European perspective, SPCs, trade marks and regulatory matters.  The J A Kemp attorneys will provide practical advice for building a robust IP portfolio.

This is an all-day event and is free to attend.  Lunch and refreshments will be provided and there will be plenty of time for networking.  To view the full agenda please visit the Pharma Leaders IP Conference 2015 website (link below).


Date: Wednesday 23 September 2015

Time: 10.30am – 5.30pm (lunch provided)

Location: Grand Connaught Rooms, 61-63 Great Queen St., London, WC2B 5DA


To book a place for you or a colleague, please email Will Smith at wsmith@jakemp.com

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Intellectual Property Symposium – J A Kemp and Alligator Bioscience AB

On 15 September 2015 J A Kemp is co-hosting a symposium with Alligator Bioscience AB at Medicon Village science park in Lund, Sweden.  The symposium will cover a range of patent and trade mark issues.  Topics will include:

- How do you spot an invention?
- How much data do you need to file a patent application?
- Pharmaceutical trade marks and international nonproprietory names (INNs) – what do you need to know?

Attendees will have the opportunity to ask specific questions about their own IP situation.  There will also be plenty of time for networking. 
 
Date: Tuesday 15 September 2015.

Time: 10.00 – 13.00.  Lunch will be provided.

Location: Gamla Gästmatsalen, Medicon Village, Scheelevägen 2, 223 63 Lund, Sweden.

Price: There will be no charge to attend this event.

As places will be limited, please book early by emailing marketing@jakemp.com.
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Pharma Leaders IP Conference 2015

A day of discussion and debate on intellectual property issues and opportunities in the pharmaceutical sector.

Hosted by Patent and Trade Mark Attorney firm J A Kemp, this conference will explore current and future topics of interest for pharmaceutical businesses.

There will be no charge to attend this event.

To book a place at the conference for you or a colleague, please email marketing@jakemp.com.
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On 13 July 2015 J A Kemp is hosting the seventh London Cleantech Cluster IP Special Interest Group on “IP: What investors are looking for – and avoiding the many pitfalls”.

Investors look at IP from their particular perspective and attach great importance to IP protection to reduce the risks associated with the investment.  This seminar will examine some case studies involving clean technologies, analysing IP strategies and highlighting potential pitfalls to ensure an attractive commercial proposition for investors.

Attendees will have the opportunity to ask specific questions about their own IP situation and learn about the fundamental concepts involved in protecting their intellectual property.  There will also be refreshments and plenty of time for networking.  This event is open to all cleantech businesses and is free to attend.

Date: Monday 13 July 2015

Time: Registration from 17:30. Seminar will start at 18:00.

Location: J A Kemp, 14 South Square, Gray’s Inn, London, WC1R 5JJ

As places will be limited, please book early by emailing marketing@jakemp.com.
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Luxembourg Becomes the Seventh State to Ratify the Agreement on the European Union’s (EU’s) Unitary Patent Court (UPC)

The agreement on the UPC was signed on 19 February 2013 by all of the EU’s member states, except Croatia, Poland and Spain.

Luxembourg became the seventh state (after Austria, France, Sweden, Belgium, Denmark and Malta) to ratify the agreement on 22 May 2015.

The agreement will not enter into force until the three biggest validation states, namely the United Kingdom (UK), France and Germany, ratify the agreement.  France has already ratified, but the UK and Germany have not yet.

The Italian Ministry of Economic Development Indicates that Participation in the Unitary Patent System is now a Priority for Italy

The proposals for a European Patent with Unitary Effect (or Unitary Patent) and associated Unified Patent Court are proceeding under the European Union’s (EU’s) so-called “Enhanced Cooperation” procedure by means of which a group of member states can proceed without others.  Italy is one of four member states (along with Croatia, Spain and Poland) that are currently not participating. 

On 13 May 2015 the Italian Ministry of Economic Development indicated that participation in the Unitary Patent system is now a priority for Italy. 

It is believed that this change of heart in Italy follows the Court of Justice of the EU’s dismissal of the Spanish Challenges to the Unitary Patent. 

We also understand from the official statement that the Italian Government believes that Italian participation in the process will assist in the fight against counterfeiting, encourage foreign investment and will assist small and medium sized enterprises.  In addition, the Government believes it will give them the opportunity to negotiate on renewal fees.

It will be interesting to see how Italy now proceeds.  It is not expected that the Unitary Patent will become available until 2016 at the earliest. 

It should be remembered that Italy has already signed the Agreement setting up the Unified Patent Court, such that non-unitary European patents validated in Italy may be subject to the Court’s jurisdiction for such patents.  The Agreement will enter into force as soon as it has been ratified by 13 member states, including the United Kingdom, France and Germany (who are currently the three mandatory participants on the basis that they have the highest number of European patents in force).  Malta became the sixth state (after Austria, France, Sweden, Belgium and Denmark) to ratify the Agreement on 9 December 2014. 

What to Do When Someone is Infringing Your IP – Oxford Seminar

J A Kemp is hosting a seminar on the subject of 'What to Do When Someone is Infringing Your IP - Yes, SMEs Can Afford to Enforce Their IP' on 16 June 2015.  This seminar will explain strategies for enforcing your IP and how disputes can often be settled well before they reach Court, even if you are an SME and the infringer a multinational.  There will also be an interactive case study to illustrate the points made.  Attendees will have the opportunity to ask specific questions about their own IP situation.  There will also be plenty of time for networking. 

Date: Tuesday 16 June 2015.

Time: Registration from 17:30. Seminar will start at 18:00.

Location: The Magdalen Centre, The Oxford Science Park, Oxford, OX4 4GA.

Price: There will be no charge to attend this event.

As places will be limited, please book early by emailing marketing@jakemp.com.

What to Do When Someone is Infringing Your IP – Oxford Seminar

J A Kemp is hosting a seminar on the subject of 'What to Do When Someone is Infringing Your IP - Yes, SMEs Can Afford to Enforce Their IP' on 16 June 2015.  This seminar will explain strategies for enforcing your IP and how disputes can often be settled well before they reach Court, even if you are an SME and the infringer a multinational.  There will also be an interactive case study to illustrate the points made.  Attendees will have the opportunity to ask specific questions about their own IP situation.  There will also be plenty of time for networking. 

Date: Tuesday 16 June 2015.

Time: Registration from 17:30. Seminar will start at 18:00.

Location: The Magdalen Centre, The Oxford Science Park, Oxford, OX4 4GA.

Price: There will be no charge to attend this event.

As places will be limited, please book early by emailing marketing@jakemp.com.

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Proposals Made for Unified Patent Court Opt-Out Fee

The preparatory committee for the Unified Patent Court (UPC) has issued a consultation document providing two alternative proposals for court fees and a scale of ceilings for recoverable costs.

The proposals table a set of fixed fees for certain UPC actions and procedures.  The range of proposed fees is extensive.  The smallest, set at 80 EUR, is the UPC opt-out fee (see below).  The largest is the fee for an action for revocation, at 20,000 EUR. The fee for an infringement claim (whether by way of initial claim or by way of counterclaim in response to a revocation action) is 11,000 EUR.

For certain actions an additional value-based fee component is proposed when the action exceeds 500,000 EUR in value.  The value-based fee starts at 2,500 EUR for actions up to and including a value of 750,000 EUR, and is capped at 220,000 EUR for actions worth more than 30 million EUR.  The fee rise escalates for actions of more than 10 million EUR.  Details on the precise mechanism for determining the value of an action, especially an action for declaration of non-infringement, are not yet available.

The two alternative fee proposals differ in a number of substantive ways.  Alternative 1 proposes certain reimbursements of the fixed and value-based fees to the liable party if certain conditions are met, such as where the action is heard by a single judge, or where the action is withdrawn or settled before the conclusion of certain key events in the procedure.  Alternative 2 proposes that small and medium sized enterprises, micro-entities, non-profit organisations, universities and public research organisations may apply for an exemption of value-based fees. 

In addition to court fees, the proposal also contains a suggestion to limit costs recoverable from the losing party to a figure between 50,000 EUR and 3,000,000 EUR, once again depending on the value of the action.

The opt-out fee will be of particular interest to many current proprietors of European patents who wish to avoid the jurisdiction of the UPC under the transitional provisions.  Under these proposals, although it will be relatively inexpensive to opt-out for each patent, the cumulative cost for proprietors with many existing non-unitary European patents could be significant.  However, viewed case-by-case the fee will likely not add significantly to the cost burden of validating a newly-granted non-unitary European patent, and may be viewed by many as a worthwhile way to avoid the uncertainty of the UPC system for the time being. 

At 20,000 EUR the official fee for a revocation action will be seen by many as expensive, especially when compared to the EPO opposition fee of 775 EUR.  The proposed fee for an appeal, set at 16,000 EUR, is similarly expensive compared to the EPO appeal fee of 1860 EUR.  It remains to be seen whether potential court users will have enthusiasm for a UPC at these fee rates, or whether demand for the EPO opposition system strengthens.

Proposals regarding renewal fees were recently made, and our news item on these can be found at www.jakemp.com.  For more general information on the UPC and unitary patent see our briefing on the topic.
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