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Deciding whether to keep proprietary information secret or apply for a patent is a key commercial decision. Leythem Wall and Katherine Banks weigh up the options, focusing on inventions in the chemical industry

In appeal proceedings before the EPO, patentees and applicants frequently withdraw failed requests at the end of oral proceedings. For example, if the patentee's second auxiliary request is allowed, whereas the main and first auxiliary requests are rejected, most patentees will routinely withdraw the main and first auxiliary requests. Such withdrawal may in particular be made with a view to expediting the Board of Appeals' subsequent preparation of the written decision, as no written reasoning is to be prepared in respect of withdrawn requests.

In European patent opposition practice most opposition cases are based on the ground of a lack of novelty or at least on the lack of an inventive step. The success of these opposition cases strongly depends on the quality of the prior art documents cited by the opponent.

The UK’s departure from the EU threatens to disrupt IP practice in the country – and patent and trade mark firms are already taking steps to mitigate the potential damage. James Nurton reports

International trade mark number 1109244 (filed as a shape mark on the basis of a German registration with proven secondary meaning) was filed in class 30 for "chocolate goods also with fillings" and shows a piece of chocolate in the form of a pyramidal stump having on the top surface impressed a stylised star. The protection for that mark was rejected by the Patent Office and the Appellate Court. So its owner restricted the list of goods by inserting after "goods" the words "in tabular arrangement" and at the end "except pralines". It was found that that shape mark is neither inherently distinctive nor that acquired distinctiveness is proven, although it is marketed in Austria under the trade mark Schogetten packaged as a bar.

Michael Loney and Natalie Rahhal analyse five IP decisions issued in Canada, two from the Supreme Court and three from the Federal Court

Brexit affects IP in many ways. James Nurton and Kingsley Egbuonu identify five areas where urgent action is needed to provide clarity and ensure a smooth transition

To further improve examination quality, the Taiwan IP Office (TIPO) recently amended the examination guidelines regarding inventive step, among other changes. The new guidelines were implemented on July 1 2017.

In a landmark decision on patent infringement (Actavis UK Limited v Eli Lilly & Company [2017] UKSC 48), the Supreme Court has confirmed that UK law does provide for a doctrine of equivalents when determining the scope of patent protection.

Managing IP will be publishing daily newspapers at the AIPPI World Congress in Sydney and the AIPLA Annual Meeting in Washington DC in October