For Clients Archives

UPC affirms second medical use patent in Sanofi v Amgen antibody therapeutics ruling

Following recent judgment from Europe’s newest patent litigation forum in the case of Sanofi & Regeneron v Amgen, Two IP patent attorney Sheena Linehan looks at the implications of the ruling for protecting and enforcing patents covering new medical uses of known therapeutics.

The Unified Patent Court (UPC), operational since 2023, is already shaping up to be a powerful venue for life sciences litigation in Europe. With its ability to issue EU-wide injunctions and invalidate patents centrally, it’s no surprise that innovators are paying close attention.

In a pivotal early decision UPC CFI 505/2024 the Court of First Instance addressed the validity and infringement of a second medical use patent EP3536712 held by Regeneron and exclusively licensed to Sanofi. The decision affirms the potential value of such patents, which cover new medical uses of known therapeutics, and provides guidance for what factors must be taken into account in deciding whether infringement has taken place.

The patent at issue

Regeneron’s patent covers antibody PCSK9 inhibitors for use in reducing lipoprotein(a) levels in a defined patient group with (or at risk of) cardiovascular disease and having elevated lipoprotein(a) levels. The alleged infringement is Amgen’s Repatha^® antibody PCSK9 inhibitor which is approved for lowering LDL-C (low-density lipoprotein cholesterol) in cardiovascular disease.

Validity: strong endorsement of second medical use claims

The UPC upheld the validity of Regeneron’s patent, which has broad protection for antibody PCSK9 inhibitor therapeutics, albeit in the context that the therapeutic is limited by reference to a specified medical use. More generally, the court affirmed the potential patentability of claims covering a known therapeutic agent for a further medical use in:

treating a new indication, or
addressing a new patient group, even if the broader disease area overlaps with existing uses.

The court found the claims both novel and inventive, ruling it was not obvious before the filing of the patent that PCSK9 inhibitors could decrease elevated lipoprotein(a) levels. Furthermore, a skilled person would not have been motivated to pursue this use based on the prior art.

Infringement: no direct hit for Regeneron

Although Amgen’s Repatha^® antibody would fall within the broad functional language of Claim 1 as “an antibody or antigen-binding fragment thereof that specifically binds PCSK9”, the court found Amgen’s product not to infringe Regeneron’s patent.

The court held that “for a finding of infringement of a second medical use claim, the alleged infringer must offer or place the medical product on the market in such a way that it leads or may lead to the claimed therapeutic use of which the alleged infringer knows or reasonably should have known that it does”. In finding non-infringement, the court focussed on the indication defined in the summary of product characteristics (SmPC) of the Repatha^® marketing authorisation, but held more generally that the package insert and SmPC, although important, are not always the only decisive factor. As the Repatha^® SmPC does not specify reducing lipoprotein(a) in the context of the indication, the court looked at evidence of off-label prescribing, but found that such use had not been made out.

The court noted that the fact that the effect of Repatha^® in reducing LDL-C may have the bonus effect of reducing lipoprotein(a) levels is not relevant to infringement.

However, the court signalled that infringement analysis goes beyond the label, allowing for real-world factors like physician practice and marketing intent, an approach that patentees will welcome.

What comes next?

The UPC’s first major decision on second medical use patents sets a practical tone — strong on validity, nuanced on infringement. It’s a positive sign for innovators navigating the evolving European patent landscape.

Stakeholders should watch closely for a potential appeal to the UPC Court of Appeal, which could shape binding precedent on second medical use claims across the EU. Given harmonisation in Europe, the decision may also influence UK courts.

Antibody patent standards: an evolving landscape

Interestingly, Regeneron’s patent claims the PCSK9 inhibitor broadly as “an antibody or antigen-binding fragment thereof that specifically binds PCSK9”, but this broad functional definition did not attract scrutiny in the present case. Given the newness of the UPC, its approach to functionally defined antibodies is still being developed. Last year in its first ever patent revocation UPC CFI 1/2023, the UPC revoked Amgen’s functionally defined antibody patent for lack of inventive step, finding it obvious to develop antibody inhibitors of PCSK9 in light of the prior art which disclosed PCSK9 as a potential target for treatment of hypercholesterolemia.

Whilst functionally defined antibodies may be acceptable in European patent claims, the US approach usually requires antibodies to be defined structurally, which is the case for the granted counterpart US patents corresponding to EP3536712. In landmark US litigation, Amgen’s functionally defined antibody patents were revoked by the Supreme Court in 2023 for lack of enablement, as covering far more species of antibody than actually described, and failing to teach how other such antibodies across the broadly defined class may be obtained.

The evolving landscape of European antibody patentability and differences of approach with respect to the US requires a nuanced approach to IP strategy and patent drafting.

How valuable is a second medical use patent directed to a new patient group?

A patient with a cardiovascular disease may have elevated lipoprotein(a) and elevated LDL-C, and both may have the potential to be reduced by antibody PCSK9 inhibitor therapy. Given the overlap in potential market segment (cardiovascular disease) and the non-infringement finding, the question of the value of Regeneron’s second medical use patent arises.

Regeneron’s patent does not prevent Amgen from marketing Repatha^® for its authorised indication, but it would restrain a label extension for Repatha^®to cover reducing elevated lipoprotein(a). In addition, Regeneron’s patent would provide protection if Sanofi were to seek a label extension for its own antibody PCSK9 inhibitor Praluent^® to cover reducing elevated lipoprotein(a) in the patient group defined in the patent claims.

Hence, there is potential value in a second medical use patent directed to a new patient group, even if a case for infringement has not been made out, and the market segment is overlapping with the established use of a competitor therapeutic.

In addition, given the potential challenges in securing broad protection for antibody therapeutics per se, the patenting of a new and inventive medical use may provide a means to avoid being required to limit patent claims by reference to particular antibody structures.

Key takeaways:

UPC confirms second medical use patents are valid tools for life sciences innovation.
Infringement depends on how a product is marketed and prescribed — not just what’s on the label.
European vs US patent claim strategies for antibodies are diverging — plan accordingly.

Read the full court decision here.

Our patent and trade mark attorneys can help you work out what you should be doing to protect your IP and then help you do it. To get in touch, click here or email us at hello@two-ip.com.

Found this information useful? Click here to sign up for our monthly Two Insights newsletter.

When Life Hands You Packaging…

The Court of Appeal judgment in the case of Thatchers vs. Aldi earlier this year did not just influence wider brand protection and trade marks, it has also changed the options for protecting product packaging. Two IP patent attorney and registered designs expert Dr Neil Kilpatrick outlines the impact on packaging design.

For design attorneys, trade mark case law helps us consider how to approach the more subjective tests applied to design law, rather than the more academic tests used in patents. So, I read my colleague Rachel Havard’s review of Thatchers vs Aldi with interest (click here to read).

In brief, Thatchers held this as a Trademark:

To protect this:

Against this:

And they won. And here is where my problems began.

Conventional wisdom is that registered designs are best for protecting the look of a product. They stop copycats and give the holder extra scope for protecting the time and effort spent in making the packaging (the sleeve and the can in this case) look good.

However, I fear that if the Thatchers trade mark for its Lemon Cider had instead been a registered design, they would have been unsuccessful in stopping Aldi’s Taurus cider.

Even removing the wording, the type and layout of the lemons is different; the swirl on the Taurus is fairly striking, and the background differs.

So – file trade marks for all your important packaging launches? Probably, yes.

And stop filing registered designs? I wouldn’t go that far – they still protect different things, and unlike a trade mark, designs are not invalidated by non-use.

However, like WaterRower’s (read more here) failed attempt to assert copyright infringement for its rowing machine, companies are pushing the boundaries of IP rights between patents, designs, trade marks and copyright to best protect their products.

If you would like support in creating a strategy for your packaging (or anything else protectable by IP), please get in touch with us hello@two-ip.com, or visit our website at www.two-ip.com.

Missed your chance of a free IP Clinic session at CWX Expo? It’s not too late…

Two IP were thrilled to attend the CWX Expo, an exciting showcase of the innovation in the creative and immersive technology sector within the West Midlands region.

If you missed your chance to book a free IP Clinic session at the event, don’t worry there is still time to book a free discovery call with our expert patent, design and trade mark attorneys.

Need advice on patents?

Need advice on designs?

Need advice on trade marks?

Meet our attorneys

Dr Anna Molony

Anna is a UK & European Patent Attorney with over 20 years experience in private practice, plus experience as in-house patent counsel for a fast-growing University spin-out.

She works with a wide range of technology driven companies ensuring their R&D and investment is fully protected, so it can be commercialised to best effect.

Neil is a European and UK Patent Attorney, who specialises in IP strategy, patents, registered designs, copyright and early-stage litigation.

Neil enjoys working with individuals and SMEs, learning about their businesses, and advising how best to leverage their IP.

Dr Neil Kilpatrick

Rachel Havard

Rachel is a UK Chartered Trade Mark Attorney, qualified since 2000, with more than 25 years spent in private practice.

She devises and implements appropriate strategies for protection and enforcement of trade marks in the UK, Europe and internationally, with a good eye for commercially sensible resolutions to legal problems. 

Alternatively, you can contact us here or email us at hello@two-ip.com

Don’t Develop Blind: How to use IP to power new product success

Intellectual Property (IP) can kill or boost new product development success – it just depends how you use it.

At each stage of the new product/service development process, from ideation and prototyping to development and launch, IP plays a critical supporting role.

Here’s what using IP optimally during product/service development looks like:

Ideation

Use Intellectual Property (IP) searches to:
- Understand what IP rights exist in the technology/product area
- Identify gaps in technology or the market
- Identify IP trends in the technology or the market
Use existing IP rights:
- As inspiration
- As a kicking off point
- To identify problems with existing technology or services that you could solve

Prototyping

As you solve problems and generate prototypes, identify any new ways you are developing to solve a problem – this might be protectable Intellectual Property (IP)

Analysis

Does the prototype product/process or service fit with your business strategy?
Does the prototype product/process or service fit with your IP strategy?
What IP rights (patents, trade marks, registered designs) do your competitors have in this space? Are any of these a problem for you?
Carry out initial patent and registered design freedom to operate (FTO) searching to find any third-party IP rights that might stop you from launching this new product/process.

Development

Make sure you own the IP in the product/process or service you are developing:
- If the development is being done by employees, the company that employs them will own the IP
- If you are using external supplier/contractors, check your agreements to make sure you will own any IP (inventions, designs, copyright) arising from the work they are doing for you – just because you are paying for the work does not mean you will own the IP.
- Require external suppliers/contractors to assign any IP (inventions, designs, copyright) arising from the work to you
Protect the IP:
- File patent applications as soon as how the product or process works is finalised
- File registered design applications as soon as final product designs are agreed
If you are launching under a new brand/trade mark:
- Shortlist 3 or 4 potential new names
- Do trade mark clearance searching for each shortlisted name and only pick one that you are free to use

Launch

Mark the product, any packaging and literature with patent application, registered design and registered trade mark numbers – this puts potential competitors ‘on notice’ that you have IP rights covering the product, process or service
Double check that the patent, registered design and trade mark applications you have filed actually cover the final product or service to be launched – late developments can mean they no longer cover the final product, process or service

Integrating intellectual property into the new product development process, ensures that development time and effort is well spent, and the vision behind each innovation is protected. This, in turn, not only safeguards the product or service but also ensures brand integrity and future success.

At Two IP we’re experts in intellectual property. If you’d like our help with using IP to support your new product or service development, you can send us an email to hello@two-ip.com.

Navigating the complexities of patenting AI inventions

AI innovation is moving fast—but can the patent system keep up? Drafting patents for AI systems isn’t just about protecting technology; it’s about bridging the gap between coders, technical experts, and legal frameworks.

With evolving regulations and the challenge of defining inventorship, securing strong IP protection requires careful strategy. Two IP patent attorney and AI expert Dr Coreena Brinck shares what you need to know.

Drafting patents for AI systems presents a complex array of challenges, particularly when it comes to inventions involving inventor teams who may be experts in different disciplines.

AI inventions can often be a result of collaborative efforts between coders, technical specialists in various areas, for example, medicine, and commercial managers, each with their own understanding of what the invention is, and possibly each having their own technical language to describe what may be the same thing in practice.

On top of this, are the various ways that code can be generated for any computer-implemented invention these days. For example, many coders and programmers rely on libraries of code snippets or pre-existing code modules and computer models to build their own platforms and systems and some also use generative AI applications to automatically generate source and/or executable programs using prompts (an example here being Claude, also available as a mobile phone app). This can lead to a lack of awareness over implementation and may bring additional challenges and complexity not just from describing how to implement an invention but also when it comes to identifying who exactly made various inventive contributions. The later is essential not just as the fundamental right to a granted patent rests with the inventor(s) unless assigned away, for example, to their employer, but also as only humans can currently have such ownership rights and this means non-human inventors are not allowed by patent offices.

Patenting complex technology accordingly means professional help may be crucial for success. Not only can a patent attorney help assess whether an invention is eligible for patent protection, but they can also determine who should be named as an inventor in view of their contribution to the invention. A patent attorney can also keep track of your patent application as it progresses which may include revisiting the question of inventorship as the inventors listed in the initial patent claims may differ from those who are ultimately listed in the granted claims, making the process even more fluid and challenging.

The issue of AI-assisted inventorship is further complicated as different patent offices have different guidelines and regulations. As of February 2025, the European Patent Office (EPO) does not allow non-human inventors to be named on patent applications. This rule means that AI systems, while they may play a significant role in the invention, cannot be listed as inventors, even though they may arguably have contributed to generating part or all of the inventive idea.

In patent drafting, a key challenge for protecting inventions involving applied AI, where a known AI model is used in a new way for a particular application, may be simply identifying what AI model(s) can be used in the invention and how their features and characteristics, including how the AI system is trained and functions operationally, contributes to a technical effect. The inventors may not have thought of their invention in this manner and it can be perplexing for them to understand what information they may need to share with their patent attorney so that the patent specification includes sufficient information to “teach” how their invention can be implemented by others skilled in that technical field.

Assessing what is sufficient information is not straight forward and can be particularly challenging for core-AI inventions. In some situations, during the training stage, details such as the volume, source, and cleaning/pre-processing of training data may need to be provided. What counts as “trained” and when the training process should stop may be other important factors to describe for some models. The weight learning algorithm of the ANN and initialization methods may need to be explained for some core models and it may be that a training method contributes to a different technical effect from that provided by the trained ANN model. The various possible training methods may also need to be described, and whether one or more different types of training are possible. For example, training may be supervised, unsupervised, on-going or continuous, in some situations.

If the training is on-going, it is crucial to describe what this means, as well as how errors are measured ongoingly and how this can impacts the performance of the model.

The operational stage of the AI system may be the core commercial proposition that the applicant wants to protect from its competitors. In this case, how the trained AI system is being used should be explained, and a causal link provided including any post-processing of its output so that the AI system as claimed provides a patentable technical effect.

Finally, given the ongoing evolution of AI technology and regulatory frameworks, considerations like the EU AI Act are become increasingly important. Inventors and patent professionals must navigate the fine line between patenting the AI system, protecting trade secrets, and utilizing open-source and defensive publications to safeguard innovations without over-disclosing sensitive details.

Ultimately, patent drafting in the AI space requires clear communication among diverse stakeholders with varying levels of expertise, clear and consistent language to be used in documentation of both the technical and operational stages, and some understanding of the AI regulatory landscape is also helpful. Successfully balancing technical disclosure, confidentiality, and patentability is what makes AI patent drafting a particularly complex and evolving field – as well as why I so enjoy working in this area.

If you are seeking guidance on protecting your AI inventions, you can contact Coreena via our website here or email us at hello@two-ip.com

Innovation saves lives – but only if we protect it

During the COVID-19 crisis, we saw a spike in vaccine patent applications – but why does that matter? Because intellectual property rights (IPR) aren’t just legal protections; they’re the foundation of life-saving innovation. Without them, groundbreaking research wouldn’t have scaled into global solutions.

Curious about why IPRs matter to biotech and life sciences innovators, and how their use played out in the COVID-19 pandemic and beyond? Two IP patent attorney Sheena Linehan explains more.

In the realm of biotech and life sciences, the ‘Why’ of protecting intellectual property (IP) is deeply connected to the mission to advance human health. Safeguarding IP is essential for fostering innovation, allowing groundbreaking medical discoveries to be developed and scaled to address pressing health challenges.

Why protecting Intellectual Property matters

The primary purpose of intellectual property rights (IPR) in this sector is to incentivise the development of new medical solutions. The process of creating vaccines, therapies, and medical technologies demands significant investment in research and development. By securing IP, organisations can protect their innovations from unauthorised use, allowing them to recoup investments and fund further research. This protection is crucial for translating scientific discoveries into accessible health solutions that benefit society at large.

Securing patents and other IP rights allows organizations to:

✅ Secure investment for R&D and clinical trials

✅ Form strategic partnerships for clinical development and large-scale manufacturing

✅ Enter new markets and foster global accessibility through licensing and collaborations

The COVID-19 pandemic highlighted a critical role for IP in public health. The University of Oxford developed a candidate COVID-19 vaccine ChAdOx1 and secured its IP. To ensure widespread access, they licensed this IP to AstraZeneca, which carried out clinical trials and franchised production to global partners, facilitating mass production and distribution. AstraZeneca notably partnered with the Serum Institute of India (SII), which alone manufactured over a billion doses. This collaboration was pivotal in delivering vaccines to low- and middle-income countries, demonstrating how strategic IP management can serve the public interest.

How IPR fuels ongoing innovation

The benefits of IP protection don’t end with one breakthrough. Following the success of the COVID-19 vaccine partnership, SII has pledged £50 million for a vaccines research facility at Oxford University, and has partnered with the University in development of the R21/Matrix-M malaria vaccine, which it will manufacture on a large scale.

Companies like Moderna and BioNTech, pioneers of mRNA vaccine technology, utilised their IP to rapidly develop COVID-19 vaccines, primarily for high-income countries. Post-pandemic, they are exploring the application of mRNA technology to cancer vaccines, showcasing how robust IP portfolios can drive ongoing innovation to address various health issues.

What are Intellectual Property Rights?

Intellectual Property Rights are legal protections granted to creators and innovators. In the biotech and life sciences sectors, these typically include:

Patents: Protect new inventions, such as novel biologics and their medical uses, and medical devices, for a limited period of up to 20 years.
Trade Secrets & Confidential Information: Protect proprietary formulae, research data, and manufacturing processes etc.
Trademarks: Safeguard brand names and logos, ensuring market identity.
Designs: Protect the unique appearance or design of a product, such as a medical device, for a limited period of up to 25 years.

These rights ensure that innovators can control the use of their creations, providing a framework to monetise their inventions and fund further research.

Impact of IPR on health

Owning IPRs significantly influences the ability of biotech and life sciences companies to address health challenges. The COVID-19 pandemic led to a substantial increase in vaccine patent applications, reflecting a surge in innovation aimed at combating the virus. This surge was driven by the need to develop effective vaccines rapidly, highlighting how IP protection can stimulate the creation of solutions to global health crises.

Moreover, strategic IP management facilitated collaborations that were essential for large-scale vaccine production and distribution. The partnership between AstraZeneca and SII, underpinned by IP licensing agreements, enabled the delivery of vaccines to numerous countries, exemplifying how IP can be leveraged to enhance global health outcomes.

In essence, for biotech and life sciences companies, the belief encapsulated in obtaining IPR is that innovation is a catalyst for improving health. Protecting IP not only rewards innovators but also ensures that their innovations can be developed, scaled, and distributed to address critical health challenges, ultimately serving the greater good.

Biotech Leaders – Protect your innovations

Biotech and life sciences companies must take action to protect their IP. Without it, groundbreaking research can be copied, funding becomes harder to secure, and the path to global impact becomes uncertain.

Our patent and trade mark attorneys can help you work out what you should be doing and then help you do it. To get in touch, click here or email us at hello@two-ip.com.

💡Found this information useful? Click here to sign up for our monthly Two Insights newsletter.

Sources:

astrazeneca.com

£50m funding for Poonawalla Vaccines Research Building at Oxford University | University of Oxford

Oxford R21/Matrix-M™ malaria vaccine receives WHO recommendation for use paving the way for global roll-out | University of Oxford

Merck and Moderna’s mRNA cancer vaccine aces its first efficacy trial | pharmaphorum

Promising lung cancer vaccine trial starts in UK – BBC News

How to leverage IP rights to generate more revenue and boost pay levels

Did you know that companies with intellectual property rights (IPRs) generate 23.8% higher revenue per employee and pay 22% higher wages?

In today’s fast-paced, innovation-driven economy, protecting your ideas isn’t just important – it’s essential. The latest EPO and EUIPO report reveals how owning patents, trademarks, and designs can transform firm performance, especially for SMEs, who see an incredible 44% revenue boost when leveraging IPRs.

Curious about how IPRs fuel growth, attract investment, and secure competitive advantages? Two IP founder Anna Molony shares key learnings from the report.

Owning IPRs significantly enhances the performance of companies, with measurable benefits across financial, operational, and competitive dimensions. The 2025 European Patent Office (EPO) and European Union IP Office (EUIPO) report, “Intellectual Property Rights and Firm Performance in the European Union,” provides a comprehensive analysis of how IPR ownership translates into tangible advantages for businesses – these are the key points for SMEs.

Higher Revenue per Employee

Companies with IPR ownership generate, on average, 23.8% more revenue per employee compared to firms without IPRs. This is because IPRs allow companies to create unique, high-value offerings that command premium prices in the marketplace. Protected innovations ensure that competitors cannot replicate these offerings, enabling companies to maintain strong pricing power and brand equity.

Increased Wages and Talent Retention

IPR-owning firms pay 22% higher wages on average than non-IPR-owning firms. This is indicative of their stronger financial health and higher productivity levels, as well as their ability to attract and retain top-tier talent. By investing in innovation and protecting the outcomes, these companies create high-value roles that demand specialised skills, leading to better compensation for employees.

Stronger Performance Among SMEs

While IPRs are beneficial to firms of all sizes, their impact is particularly pronounced for small and medium-sized enterprises (SMEs). According to the report, SMEs with IPRs generate 44% higher revenue per employee than SMEs without them. For these businesses, owning IPRs is often a crucial differentiator, enabling them to compete with larger firms by carving out a unique market niche.

Resilience and Market Positioning

IPR-owning companies exhibit greater resilience during economic downturns and disruptions. By leveraging their protected intellectual assets, these firms can adapt more quickly to changing market conditions, introduce new products or services, and secure their market share. Trademarks, in particular, help build long-term customer loyalty, while patents and designs protect competitive advantages in product innovation.

Access to Investment and Financing

IPRs play an important role in enhancing a company’s attractiveness to investors and lenders. Firms with registered patents, trademarks, or designs are often perceived as lower-risk investments, as their protected innovations can serve as valuable assets that generate future income. For SMEs, the presence of IPRs often improves access to venture capital and other financing sources, enabling them to scale their operations more effectively.

Sector-Specific Insights

Industries such as technology, pharmaceuticals, and creative arts see the most substantial benefits from IPRs, as these sectors rely heavily on innovation and unique intellectual assets. For example, technology firms with patents have a significant edge in securing partnerships and licensing agreements, while companies in the fashion and design industries leverage design rights to safeguard their brand identity and product aesthetics.

Innovation Spillover Effects

IPR ownership not only benefits the individual firm but also contributes to broader economic growth. The protection of intellectual property encourages investment in research and development (R&D), leading to the creation of cutting-edge technologies and products. These innovations often have spillover effects, benefiting other firms and industries through collaborations, licensing, and the general diffusion of knowledge.

Reduction in Counterfeiting and Infringement

By obtaining IPRs, companies can more effectively combat counterfeiting and infringement, which are particularly damaging to brand reputation and revenues. The report emphasises the economic benefits of reducing counterfeit goods, as IPRs provide companies with legal tools to enforce their rights and take action against infringers.

💡 What are you doing to protect your IPRs?

IPRs not only offer protection but are also a strategic asset that drives performance, competitiveness, and growth. For innovative companies, particularly SMEs, IPRs are instrumental in maximizing market potential and securing financial investment.

What steps are you taking to safeguard your business’s creativity and innovation?

Our patent and trade mark attorneys can help you work out what you should be doing and then help you do it. To get in touch, click here or email us at hello@two-ip.com.

💡Found this information useful? Click here to sign up for our monthly Two Insights newsletter.

THATCHERS v ALDI: When life hands you lemons…

Following recent judgment from the Court of Appeal in the case of Thatchers vs. Aldi, Two IP trade mark attorney Rachel Havard unpacks the implications of the decision and offers practical insights for brand owners aiming to safeguard their own intellectual property.

On 20 January 2025, the Court of Appeal handed down a very welcome judgment for brand owners, in their continued fight against look-alike brands.

The appeal, between Thatchers Cider Company Limited and Aldi Stores Limited, concerned last year’s decision by the Intellectual Property Enterprise Court (“IPEC”). The IPEC decision had been in favour of German discounter, Aldi, in relation to their TAURUS brand cloudy lemon cider, despite its rather similar appearance to Thatchers own offering.

Below are the two brands for comparison, with photographs taken from the Court of Appeal decision:

A sour taste: last year’s decision by the IPEC

In this harsh decision for Thatchers, the IPEC dismissed their claims of registered trade mark infringement and passing off against Aldi.

For registered trade mark infringement, the grounds raised had been similarity of the Aldi Sign with the Thatchers Trade Mark and a likelihood of confusion as to commercial origin of the goods (Section 10(2) of the Trade Marks Act 1994), and/or that the Aldi Sign took unfair advantage of or was detrimental to the distinctive character or repute of the Thatchers Trade Mark (Section 10(3)).

The “Thatchers Trade Mark” is the UK registered trade mark shown below:

The IPEC judge considered similarity of the Aldi Sign with the Thatchers Trade Mark to be low and that there was no likelihood of confusion, nor did they consider the Aldi sign to take unfair advantage of or cause detriment to the Thatchers Trade Mark.

Sweet outcome for Thatchers at the Court of Appeal

Thatchers appealed the IPEC decision only on the refusal of the Section 10(3) registered trade mark infringement ground.

In this case, it was particularly important that Thatchers had secured trade mark registration for the label of their product as shown above. Had their registration only been of the word mark THATCHERS, there would be no real basis for argument that Aldi’s TAURUS product and associated labelling/get-up, i.e. the “Aldi Sign” was similar to the Thatchers product get-up.

With Aldi’s “TAURUS” branding of their product, there was unlikely to be confusion of customers that the Aldi product and the Thatchers product came from the same commercial origin, so it is unsurprising that Thatchers did not appeal under Section 10(2).

Under Section 10(3), however, Thatchers’ appeal was successful. The Court of Appeal agreed that the Aldi Sign had taken unfair advantage of the repute of the Thatchers Trade Mark, with each having a number of elements of similarity with the other, and so infringement had occurred.

As per Arnold LJ at paragraph 99 of the judgement:

“The inescapable conclusion is that Aldi intended the Sign to remind consumers of the Trade Mark. This could only have been in order to convey the message that the Aldi Product was like the Thatchers Product, only cheaper. To that extent, Aldi intended to take advantage of the reputation of the Trade Mark in order to assist it to sell the Aldi Product.”

and at paragraph 114, he explained that this fed into a “transfer of the image of the mark” and “riding on the coat-tails of that mark”.

A new zest for trade mark protection

At the beginning of the Court of Appeal judgement, Arnold LJ acknowledged how the IPEC decision had attracted the attention of commentators in the field of trade mark law, saying that:

“Some have criticised the judges’s decision as illustrating an alleged failure on the part of UK law properly to protect brand owners against so-called “look-alike” packaging, while others have commended it as upholding competition and hence cheaper prices for consumers”.

In this case, the cloudy lemon product was quite a visual departure from other products in Aldi’s existing TAURUS range of ciders, but the below images (taken from the Court of Appeal judgement) illustrate that Aldi’s original TAURUS range was itself an imitation of another leading brand in the market place, as it was closely modelled on Strongbow:

Discounters such as Aldi and Lidl are renowned for sailing close to the wind, with their creation of leading brand look-alikes across all product ranges. From a consumer point of view, of course, and with increasing cost of living challenges, there is a desire to buy the next best thing to a leading brand, when a discounter or supermarket’s own version is more affordable. It is the point of purchase likeness that one brand has to the other which prompts the consumer’s decision to buy that next best thing. They would be less likely to do so if the own label brand had its own completely distinct appearance.

For the brand owner, who will have incurred significant cost in designing their own brand and packaging, the imitators are clearly taking advantage of this investment without having to do the work themselves.

As this latest decision of the Court of Appeal clearly recognises transfer of image from one brand to another, or one riding on the coat-tails of another, as ingredients for Section 10(3) trade mark infringement, those in the imitation game will need to be a lot more cautious.

To thoroughly protect themselves, brand owners need to register as many aspects of their branding as possible; this should go further than the traditional registering of word trade marks, company names, logos, or product names – protection of the appearance of labels, product packaging and overall get-up is just as important.

If you have any questions about your own trade marks, branding and IP protection, please do get in touch with us hello@two-ip.com, or visit our website at www.two-ip.com.

IP in Film

With Christmas movies, old and new, hitting our screens, what better time for trade mark attorney Rachel Havard to delve into the wonder of the movie business, looking at how IP needs to be a consideration at every stage of the creative process.

With the festive season upon us there’s bound to be time for a few good movies, from the feel good family romcom you watch every year, to fairy tale animations, to blockbuster Hollywood franchises. As you snuggle down on the sofa and rummage round in the choccies tin for something which isn’t an orange or strawberry cream, give some thought to the enormous amount of work which goes into your favourite flicks, and the broad range of IP which protects all those creative efforts.

🎞️ Pre-production

A long time ago, in a writer’s house far far away, someone will have penned a story to be told. It may begin with a novel, a full screenplay, or a treatment to put to potential investors, but copyright will automatically be created in an original literary work.

Storyboards will be created, whole worlds and sets will be designed, built first as models to give an idea of feasibility for eventual production. Ornate, even otherworldly costumes will be designed. Character designs will be sketched out. Again, copyright would subsist in such artistic works.

Copyright will also arise in musical works, for new music, musical arrangements or score, which may be laid down a good time in advance of filming.

Copyright is a valuable automatic right in the creatives’ armoury of intellectual property. It is not necessary to register it in the UK but, to be able to enforce it if someone should copy your work, you’ll need to be able to prove that you created an original work yourself, and when. Keeping dated records is a must. Work can be marked with the copyright symbol ©, your name and the year of creation.

🎬Production

When moving into production, more copyright aspects will apply, and performers’ rights will exist in actors’ performances. Musical films will have their own musical performances. Sound and music recordings will attract copyright, as will the film recording itself. There will be production photographs, websites, social media promotions, trailers and movie posters with copyright too, promoting the finished product but while production is still underway.

Throughout the process, care must be taken not to infringe anyone else’s IP. Consideration should be given to any third party permissions needed. Royalties will need to be paid to copyright owners of existing music used in a film’s soundtrack. Use of quotes or extracts from copyright works of others should be authorised and accredited.

Product placement can be hugely beneficial as a marketing tool for brand owners. The James Bond/007 franchise has had significant promotional partnerships over the years, especially with car manufacturers, but often with a sad fate for the cars themselves!

Other productions create their very own brands, especially for their fictional world. Red Apple cigarettes and Big Kahuna Burger spring to mind here, or Duff beer on the small screen.

🍿Movie Merchandising

Production companies will have registered their own trade marks and, often, will look to protect movie names by trade mark registration. There is also good reason to protect other trade marks, names or imagery unique to a film or series of films.

Fans of movies, especially big franchises, will want to collect merchandise. This will be branded, and associated trade marks will be registered.

The movie worlds of Star Wars, Harry Potter and Lord of the Rings are recreated in our real world for fans who want the same costumes and props themselves. Toys and action figures will be big sellers over the festive season. Movie franchise trade marks and characters adorn lunch boxes, bed linen, stationery and clothing. Books, comics and games related to the franchise will be created, branded and sold.

Original ideas will be perpetuated in spin off movies, stage shows, small screen series, or animated versions of live action features then, eventually, older movies will be remade and updated. But in all of this, IP will continue to be created, protected and enforced when infringed. Movies are big business, but so is the IP!

If you have any questions about how to protect IP of your own, send an email to hello@two-ip.com or contact us via our website here.

The 3 most important things for optimizing working between patent in-house counsel and private practice attorneys

Two IP founder and director Anna Molony was recently invited to speak at the CTC Legal Media Winter IP Conference. Here, Anna shares the key takeaways from the discussion on the day for those unable to attend the event.

As part of the panel at the CTC Legal Winter IP Conference session “Maximizing synergy: nurturing dynamic partnerships between in-house counsel and private practice” I shared some of the things I’ve learnt from being in-house counsel and from working with in-house counsel clients as an attorney in private practice.

For those who didn’t make it to the Conference, here are

The 3 most important things I’ve learned about optimizing working between patent in-house counsel and private practice attorneys:

Private practice attorneys – sometimes you really do need to have a serious level of expertise in the technology to protect it properly
In-house counsel – don’t underestimate the value of giving the private practice attorney you’re instructing the business context of the invention
In-house counsel – be really clear about how you want the private practice attorneys you’re instructing to do the work you give them

So, how come I know about this?

Well, I’ve been on both sides of the in-house counsel/private practice relationship.

For a couple of years, I was in-house counsel at a high-tech, spin-out called Indigo Photonics. Indigo made optical fibre sensors and I lead the IP function internally, with external support from a private practice firm who did the filings and so on. During my time at Indigo I learnt about how R&D teams work and how to work with them, and I learnt about where IP sits within an early stage, VC funded business and I learnt a lot about what an in-house attorney needs from their private practice outside counsel.

As an attorney in private practice, I have worked closely with a number of corporate in-house IP teams, mainly with their patent departments. Each relationship is different in terms of the work that I do and how I do it. For one client, we are that outside resource that does the filings and so on, for another I have been drafting patent applications for nearly 20 years, and for a third I work 1 day per week for them, as a fully integrated part of their patent team.

I’ve learnt a lot about that relationship from working with each of those clients.

Let’s take a look in a bit more detail at those 3 most important things for optimizing working between patent in-house counsel and private practice:

The problems that can arise if the private practice attorney doesn’t understand the client’s technology properly

As patent attorneys, we are great at getting our heads around a wide range of technologies and understanding them to a level that is “good enough” for us to be able to advise our clients. But, for clients who are leading the way in their technical fields, having a “good enough” understanding of the technology sometimes just isn’t, well, good enough. Expertise is needed.

I’ve seen enough poorly drafted patent applications in my areas of expertise (optical comms, optical fibre, lasers, photonics) over the years to know the problems that not properly understanding the client’s technology can cause. This is how it sometimes goes: I read the patent claims and I think “Hmmm”, and then I read the description, particularly the bits that have clearly been pasted in from the invention disclosure, and I think “Double hmmm. I can see what the invention is but that’s not really what the claims are covering”.

I have, in those circumstances, then had to draft an exam response – it’s not straightforward, overcoming the Examiner’s objections while at the same time trying to redraft the claims to cover the invention properly. I’ve also had to handle exam reports where the patent office Examiner hasn’t properly understood the invention. Both can cause serious limitations to the scope of the patent you can get and therefore on the commercial value of the patent.

In some areas of technology, if you don’t have a depth of understanding of the technology, you simply can’t describe it, and define the claims, properly. And, if the examiner doesn’t understand the technology, how can you explain where they’ve gone wrong if you don’t understand it fully yourself?

So, my first lesson to share would be this: in-house counsel, make sure that your outside private practice attorneys have the necessary level of expertise to fully understand your technology; and private practice attorneys, don’t take on work that you’re not technically qualified to cope with.

The value of in-house counsel giving private practice attorneys the business context of the invention

The amount of information about an invention that you receive from a client can massively impact the quality of the work that you can do.

At one extreme, I’ve prepared exam responses where all I’ve had is the published application, the exam report, the prior art, and instructions to prepare a response that overcomes the objections. Now, I can absolutely do that. But without any access to the inventor or any information about which features of the invention are commercially important, my response may not actually result in commercially useful protection.

At the other extreme, one of my clients gives me access to a brilliant internal document that they have for each patent family. It’s a narrative of where the invention came from, what the commercially important features are, what’s happened during the prosecution of each application in the patent family, and notes from the inventors and in-house counsel. It is a fantastic source of context and supporting information for me when I’m preparing an exam response or considering whether we need a divisional application to protect any other features. I can highly recommend writing this type of document, the time spent is well worth the effort.

The value of in-house counsel being really clear about how they want the outside counsel to do the work.

As in-house counsel, how tightly do you want to control how the private practice attorney that you’re instructing does the work you give them. What drafting style should they use? Is there an in-house style or are you happy to let them draft in their own way?

I’ve got a lot of experience of drafting applications using a template and very detailed drafting style guidelines from the client. But I also have clients whose in-house counsel are happy for me to draft in whatever style I think best, on the basis that I know as much about the technology as they do. Both have their merits and their disadvantages.

The first approach can result in a very highly controlled patent portfolio but it requires a significant amount of input from in-house counsel. And not every qualified attorney will be happy having their work scrutinized on a regular basis. I’m used to it and I’m pretty comfortable with it because I think there’s always something new to be learned.

The second approach, letting people work in their own way, will probably be more comfortable for most private practice attorneys. And I think drafting can be easier to do if you’re not trying to squeeze it in to someone else’s preferred approach. However, it may mean that your patent portfolio is less consistent and, possibly, of more variable quality.

Category: For Clients