Our partners and attorneys are highly qualified and highly experienced to advise you in all areas of Intellectual Property law. We advise start-ups, SMEs, and multinational corporations and ensure that your inventions, brands and designs are expertly protected.
All of the Partners & People of AA Thornton are joining forces with Venner Shipley
Our client develops practical, sustainable solutions for today’s global problems. Their work is focussed on plastics replacement technology in support of sustainability for the planet and green recycling alternatives. They are seeking to replace plastic lined coffee cups, plastic straws and plastic food trays by applying their sol-gel based water impermeable coating to paper. Paper products treated with SGMA’s coating may be recycled with normal paper waste, providing a green alternative to a large amount of the plastic waste produced today.
To help them to commercialise and retain control of their technology we have filed patent applications to protect thee technology, reviewed agreements to ensure they can protect their confidential information, and conducted an IP Audit to help them identify strengths and weaknesses in their IP strategy. As one potential investor put it, this has the potential to generate a $billion industry!
The client is a medical device company founded by two eye surgeons, one in the UK and one in Egypt, who are very experienced in their field, but are new to IP protection and exploiting inventions.
We assisted them with the protection of their invention for a shield that is inserted into the eye during cataract surgery.
Initially we provided information to educate the inventors regarding the formal requirements for patentability and filing strategy. Following an initial patentability search we were able to focus on specific aspects of their product that might be patentable and prepared a draft patent application. We reviewed the draft at a face to face meeting at our offices and we provided strategic options for how to use their patent application when approaching potential investors. We also advised them on the confidentiality agreement that they were asked to sign by a potential investor.
We have been representing this client for several decades now. A few years ago we acted for them in the filing of an opposition at the European Patent Office against the grant of a patent for a method of making cardboard blanks. Cardboard blanks made by the process can be folded and heat sealed to create food packaging, such as sandwich packs. Although such blanks can be made by other processes, the claimed process is potentially quicker, and may be cheaper, than the alternatives and being prevented from using it puts our client at a commercial disadvantage.
At the opposition hearing we were successful in having the granted claims amended due to them including subject matter that went beyond the scope of the application as originally filed, which is not allowed under the European Patent Convention. However, although it was argued at the hearing, the Opposition Division did not consider that the amendment made to overcome that objection resulted in the scope of the amended claims covering subject matter not covered by the originally granted claims, which is also not allowed under the European Patent Convention.
Due to the potential commercial benefits of access to the process for the client, we were asked to file an appeal against the opposition decision. The appeal hearing took place in December 2019 and the Board of Appeal agreed with our position resulting in the patent being revoked in its entirety meaning that the client is now free to use this process in Europe if they choose.
The client is a US-based medical technology company who developed an innovative medical device for cleansing whole blood to modulate and sequester molecules from circulation known to be contrary to health. The client applied for a patent concerning carbon monoliths for use in blood cleansing applications. The original application was prosecuted by another UK firm who were unsuccessful and prosecution was subsequently transferred to us.
We then filed an EP divisional application to allow us to change prosecution strategy away from methods of treatment (which the previous attorney had tried and failed to do) and towards the carbon itself. As the application did not describe all the specific properties of the carbon product, our attorneys’ knowledge of activated carbon production meant that we managed to explain successfully to the examiner that the process of production controlled the properties of the carbon product. Obtaining protection for the carbon itself provided the client with broader protection than the methods originally sought. The application was of commercial importance to the client as it relates to one of their core product offerings. The instructing attorney was impressed enough to say “AA Thornton’s unique combination of skilled technical know-how and unquestioned legal expertise have made them my go-to European firm for over a decade.”!
The insect repellent product market is a billion dollar worldwide business, and is dominated by synthetic chemical products such as DEET. Our client has developed an alternative, superior botanical insect repellent which is a natural product offering far superior protection (against biting flies such as mosquitoes and midges) and better consumer acceptance and safety, compared to the 60 year old synthetic “gold standard” chemical DEET.
Patent partner Dr Craig Turner was asked by the client to take over the project at an early stage from previous attorneys, owing to his recognised patent expertise. We took over the PCT patent application and via argument and some amendment converted an initially negative examination into an entirely positive international report. This gave the client confidence to pursue the application in a range of territories worldwide. A lucrative US deal is expected shortly. The NIH botanical repellent has the potential to significantly change the industry, and its superiority has recently been confirmed unequivocally in scientific papers from eminent researchers in the entomology field presented at leading scientific symposia in Vancouver, and Goa, India and new papers are due to be published in 2019 (Washington DC, and Missouri). In addition, corresponding trademarks have been obtained, led by Partner Ian Gill. The client commented: “Craig’s skills and experience in this area have been invaluable to {…} in terms of generating new IP to protect the novel, innovative technology with patents across the key markets and the world.”
