We are delighted to welcome Dr Rob Gregory as our new director, to lead our expansion in the chemistry and life sciences sectors. Recommended in the latest edition of The Legal 500, Rob is a European Patent Attorney, Chartered UK Patent Attorney and European Design Attorney. He has worked in the patent profession for seventeen years, most recently as a partner in another established UK firm, and has an MA degree in Natural Sciences from the University of Cambridge, and a PhD degree in Organic Chemistry from the University of Liverpool.
With considerable expertise in working with a wide range of clients including universities, start-ups, SMEs, corporates, investors and professional advisers, Rob’s appointment augments our chemical expertise. He handles subject matter in a range of scientific fields and commercial areas. These include: chemistry, polymers, materials, fast moving consumer goods, paper and pulp-derived products, pharmaceuticals, life sciences, small molecules, chemical engineering, therapeutic applications, medical inventions, ceramics, semiconductors, metallic materials, organic chemistry, environmental technology, mechanical engineering, oil and gas, inorganic chemistry, physical chemistry, disposable products, biodegradable products, environmental remediation, waste management, agriculture, pesticides and nutrition.
Alistair comments: “It’s a great pleasure to welcome Rob to the team. It’s an exciting time for us as we’re experiencing a period of rapid expansion, with our existing clients going from strength-to-strength, and new client acquisitions not only in Scotland but also more broadly across the UK and from overseas. Rob’s arrival ensures we can keep pace with that demand and broadens our technical range.”
Rob adds: “The most effective IP advice is all about having the right people: attorneys who are not only experts in their scientific and legal fields, but also effective at distilling complex IP issues to clear and meaningful analysis on which clients can act. The team at Alistair Hindle Associates is highly skilled at this, and I am delighted to be joining them.”
Rob’s appointment enhances our offering in preparing and prosecuting patent applications in the chemistry and life sciences fields; attacking or defending patents or patent applications (including handling oppositions before the European Patent Office and opinion procedures before the UK Intellectual Property Office); conducting hearings, appeals and entitlement proceedings; and all kinds of advice on patent matters including IP due diligence analysis and opinions on infringement and validity.
The UK Intellectual Property Office has released its first official statement on the potential effects of Brexit (the UK’s decision to leave the European Union) on IP. The official guidance covers patents, trade marks and copyright, but one area of particular interest relates to designs.
At present, UK-based applicants are able to register designs nationally in the UK, throughout the EU by way of the Community design registration system, and internationally by way of an application under the Hague Agreement. The Hague Agreement allows applicants based in one so-called ‘Contracting Party’ to the Agreement to seek design protection in one or more other Contracting Parties at one time.
UK applicants are currently only entitled to make applications under the Hague Agreement by virtue of the UK’s membership of the EU. This is because the UK is not itself a Contracting Party to the Agreement. It has therefore been uncertain whether UK citizens would continue to have the right to file Hague applications post-Brexit.
However, in this new guidance, the IPO has confirmed that the UK government has made clear its intention to ratify the Hague Agreement in a national capacity. Consequently, the IPO is working through the steps of joining the Hague system and hopes to introduce the service within the next year. UK citizens will therefore retain their right to seek registered design protection abroad through this simplified system.
This is good news for applicants because the Hague system allows design protection to be sought into up to 65 territories (including EU countries, the US, Japan and South Korea) through one single application. A full list of Contracting Parties in which protection may be sought is available here. In addition, a single Hague application may be used to protect up to 100 designs for similar types of products. This can significantly reduce the initial filing fees associated with registering a design in multiple countries simultaneously when compared with the alternative of filing multiple individual national design applications. A granted international design registration is also renewed centrally, rather than in each designated state, which further reduces costs where multiple countries are designated.
The main downside of an international registration under the Hague Agreement is that not all commercially important territories are currently covered (Australia, Canada and China are notable exceptions). There can also be some complexity involved with planning an application to ensure that the resultant registration is enforceable in each designated territory.
Nevertheless, with the government’s confirmed intention to join the Hague system independently of the EU, it is likely that increasing numbers of UK applicants will choose to take advantage of the system.
By Michael Ford, Alistair Hindle Associates
For further information, please see our detailed notes on the Hague Agreement or contact your usual attorney at Alistair Hindle Associates.