CIPA Journal, April 2016 by CIPA Journal

CIPA JOURNAL Incorporating the transactions of the Chartered Institute of Patent Attorneys

April 2016 / Volume 45 / Number 4

Foundation level examinations Survey of trainee patent attorneys

The Chartered Institute of Patent Attorneys

US: information disclosure statements Finnegan

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Thomas Paine: revolutionary inventor Julian Asquith

Can you meet the trade marks challenge? Alasdair Poore

Leaving the EU is likely to have a negative effect on IP in the UK

Inventor meetings: six things we love Gwilym Roberts

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CIPA JOURNAL

CIPA CONTACTS

Editor Editorial Panel

Alasdair Poore David Barron, Paul Cole, Kristina Cornish, Tibor Gold, Alan White Publications Committee William Jones (Chairman) Production Iain Ross, 020 3289 6445 and advertising (iain@ross-limbe.co.uk) Design Neil Lampert Cover design Jonathan Briggs Contact editor@cipa.org.uk Published on behalf of CIPA by Ross-Limbe Communications. The Institute as a body is not responsible either for the statements made, or for the opinions expressed in this Journal. No papers read before the Institute or extracts from its Proceedings may be published without the express permission of the Council and without the simultaneous acknowledgement of their source. CIPA Journal is sent to all members of the Institute as part of the benefits of membership. It is also available on subscription at £130 per annum (plus postage for overseas addresses: Europe £35, Other £70). Individual copies may be purchased at £14 (plus postage for overseas addresses: Europe £4, Other £6). The Editor welcomes the submission of articles, news and correspondence for possible publications including photographs, tables, charts, etc, when appropriate, and any contributions should be sent by email to editor@cipa.org.uk. Iain Ross (iain@ross-limbe.co.uk) will be pleased to discuss any queries regarding submissions and advertising. Copyright in material submitted for publication Material submitted to the CIPA Journal will be accepted for publication on condition that the author, or each of them, grants the Chartered Institute a non-exclusive licence to publish the material: i. in paper form first; and ii. after paper publication, also on its website www.cipa.org.uk, in the members’ area with the ability for members to download them. When sending material, the author(s) should confirm acceptance of this condition and also that the submission is free of any third party rights or other encumbrances. Past contributors The Institute is in the process of putting on its website past articles not covered by an express agreement as set out above. Any contributor wishing to object to their work being treated in this way should write to the editor at editor@cipa.org.uk. Editorial deadline dates for receiving submissions are on the 10th of the preceding month. Please contact editor@cipa.org.uk to discuss any ideas for articles or submissions.

Andrea Brewster President

Tony Rollins Vice-President

Catriona Hammer Immediate PastPresident

Chris Mercer Honorary Secretary

Committee Chairs Academic Liaison Tony Rollins; Administrators Vicky Maynard; Business Practice (joint with ITMA) Matt Dixon; Computer Technology Simon Davies; Congress Steering John Brown; Constitutional Alasdair Poore; Designs and Copyright David Musker; Education and Professional Standards Simone Ferrara; Informals Ben Charig; Internal Governance Bobby Mukherjee; International Liaison Richard Mair; Life Sciences Simon Wright; Litigation Vicki Salmon; PEB Rob Taylor; Patents Jim Boff; Protected Titles Lee Davies; Media and Public Relations Jerry Bridge-Butler; Regulatory Affairs Chris Mercer; Textbooks & publications Bill Jones; Trade Marks Keith Howick. Chief Executive Lee Davies Head of Media and Public Affairs Neil Lampert Head of Education Georgina Sear Finance Manager Spurgeon Manuel Finance Administrator Andrew Hewitt Policy Officer Rebecca Gulbul Executive Assistant Gary McFly Communications Officer Isabelle Wilton Membership team: Dwaine Hamilton; Frances Bleach; Kirsty Burls; Shannon McNeil-Smith; Charlotte Russell. Education team: Rebecca Moody; Angelina Smith; Ruth Matthews. General enquiries: 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

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Contents 2 18-28

34-45 UP FRONT

ARTICLES

EDUCATION

Editor’s comment

Trade marks matter! Alasdair Poore

Inventor meetings

Six things we love Gwilym Roberts 34

US: Access to Global Dossier

Lee Davies 5

Council Minutes

Lee Davies Partial Priority Amicus curiae brief in case G 1/15

Privilege

29 30

CIPA's response to WIPO GROUP B+ Questionnaire Foundation level examinations Informals Committee’s comments EU and IP in the UK CIPA position on the UK leaving the EU EQE tutorials Ben Charig Trunki suitcase ruling

Commercialisation of research

Webinar report Steven Charlton

Revolutionary Inventor

Thomas Paine’s patent of 1788 Julian Asquith

Initial Public Offerings

Webinar report Dr Janice Denoncourt

US: Information Disclosure Statements

Finnegan team 46

IPO Business Support

Webinar report Steven Charlton

US: Post-grant proceedings

Finnegan team Chief Executive’s report

Seminar report Asawari Churi

Finnegan team

NEWS

Patentable subject-matter

Institute events

DECISIONS

PERSONAL

Patents

Beck Greener 55 56

Isabelle Wilton

IPO decisions

Barker Brettell LLP EPO decisions

Do you have a client with a great technological invention?

73 73

Letters to the Editor Announcements

Bristows 58

Trade marks and other IP

Bird & Bird LLP

THE PINKS

CIPA press release 31

Overseas report

Amanda R. Gladwin 31

IPO news

Manual of Patent Practice changes Volume 45, number 4

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75 77 92 94

International Recruitment Courses and training Support APRIL 2016

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Trade marks matter!

here is a big change in trade mark law in the EU – this is a (further) reminder when talking to clients, that as from the end of March 2016, it is now the European Union Intellectual Property Office (with some potential for confusion over whether it also has responsibility for patents, especially as the European Unitary Patent is about to enter the stage1); and the European Union Trade Mark. In addition the changes in European Union trade mark law which came into force last month2 include one major provision which directly reflects CIPA’s engagement with EU trade mark law in the IP Translator case. It is not often that CIPA’s involvement, frequently active, has had such a direct effect on the law – in the academic world this would be seen as “Impact” – something referred to in more detail in the report on the 24 February webinar on “Commercialisation of research – the role of IP in technology transfer and start-ups”. [See page 71.] There were times when Richard Ashmead and Michael Edenborough QC3, who were the principal architects behind seeking a mechanism to clarify the law, and who both provided invaluable support to CIPA on a pro bono basis, might well have regretted that they ever started it, not least as the whole issue of the impact of IP Translator seemed to develop deep political ramifications. However, we should acknowledge that Richard and Michael’s desire to see the law clarified was entirely justified. It ensures that those who examine the trade mark register will be able to rely on words in the register: that the goods and services specified in the trade mark registration are actually those covered by 2

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the registration (and obviously similar goods and services). That is, that the words “mean what they say”, rather than have a meaning determined by an arcane rule which depended on when the trade mark application was filed. And incidentally IP Translator allowed the Office practice to become compliant with the EU’s international obligations under the Trade Mark Law Treaty. The effect of the case and the consequential amendment to the law is of course that now trade mark proprietors have some work to do, and in a limited period of time until 24 September 2016. They have until then to correct their specification of goods and services, if they had actually intended the special formula which caused all the trouble, to have applied to their application and that they had used the class heading to include all the goods and services in the alphabetical list of goods and services. If the trade mark application cites all the goods and services in the class heading, then, even if there are additional goods and services listed, proprietors may “correct” this, by adding specific goods and services from the contemporary Nice Classification, to their existing specification. Trade marks also feature in our regular report from the team at Bird & Bird on trade marks, for which many thanks to that team too. For those attorneys who like an intellectual challenge, we have included a self administered quiz at the end of this editorial: Can you work out which trade marks were similar? The definitive answers (given by the General Court and in UK proceedings) can be found in the Bird & Bird report on pages 58-66. The Bird & Bird report also shows just why litigation skills, and therefore

Alasdair Poore

the Litigation Certificate, are important. The report again reveals something that features with extraordinary regularity: how trade mark cases before the Boards of Appeal and the General Court fail because of lack of properly prepared evidence. In Benelli v OHIM (T170/13, T171/13), the General Court observed that: “Most of the documents produced by Benelli were devoid of evidential value in so far as they were undated or bore a date before or after the relevant period, or did not refer to the marks at issue, or were undated photographs which could not be cross-referenced with other documents (such as product catalogues or lists of references)”; and in Benelli v OHIM T169/13 that “the mere fact that Benelli submitted more than 40 documents did not, of itself, establish that the earlier marks were well known. The value of the evidence depended on the quality and relevance of the documents rather than the volume. Furthermore, evidence drafted in a language other than the language of the proceedings could not be taken into account”. Litigation skills matter – something which will also be very relevant to the Unitary Patent Court.

The challenge So can you meet the trade marks challenge? Patents are not the only area in intellectual property law where “claims” matter. In the Trunki4 case, in the Supreme Court, Lord Neuberger drew attention to Dr Schlötelburg’s observations in relation to registered designs: “As Dr Martin Schlötelburg, www.cipa.org.uk

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EDITORIAL

Opposed / challenged mark

TRADE MARKS MATTER

Opposing / challenger’s mark

(Spanish mark)

LEHAN. C

Notes

In relation to the first pair of marks, readers will recall the new guidance on black and white marks (see August / September [2015] CIPA 9). The answer to the quiz should give readers some comfort that colour marks may at least protect against black and white use.

LEMA (Spanish mark) STONE

This raises the question that has always puzzled me: if Mark B is similar to Mark A, does it necessarily follow that Mark A is similar to Mark B? Answers (after reflecting on the “Glee” case (page 63 of this issue)), in letters to the Editor please.

CASTILLO DE LIRIA (for wines)

MINI WINI

KICKTIPP

KICKERS

Glee (as the name of a musical comedy TV drama series)

Class 41: “Live comedy services; night club and cabaret entertainment; music hall services; provision of live and recorded music; dancing; provision of facilities for comedy and music entertainment; production and presentation of live shows and displays and the presentation of sound recordings” It seems to be a bad 12 months for car 3D trade marks (see also Jaguar Land Rover v OHIM (Evoque 3D mark), Case T-629/14 (25 November 2015) reported at March [2016] CIPA 60, although the appeal was allowed for vehicles for locomotion by air and water! A window was possibly left open for registration of photographic examples of the vehicle, based on evidence of distinctiveness see also: http://tinyurl.com/zalo9bw for a further interesting discussion)

Volume 45, number 4

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EDITORIAL • CIPA NEWS

the co-ordinator of OHIM’s Designs Department, has written, ‘the selection of the means for representing a design is equivalent to the drafting of the claims in a patent: including features means claiming them’.”5, 6 There is also a potential analogy with trade marks – the scope of protection given by a trade mark is not just plainly obvious; should registrations be approached more like claims? So can you answer whose claim won? [See table on previous page.] And finally, just a further note of many thanks on behalf of CIPA and its members to Richard Ashmead for his long years of hard work with the Trade Marks Committee. He is now retiring from the Committee. That does not of course mean that the Committee has nothing to do. Please write with your views or volunteer to help with the work of the CIPA Trade Marks Committee7.

TRADE MARKS MATTER • COUNCIL

Notes and references 1. Not least with our Chinese clients, for whom the State Intellectual Property Office is responsible for patents for inventions and designs! 2. March [2016] CIPA 9. 3. Serle Court 4. PMS International Group Plc (Respondent) v Magmatic Limited (Appellant) [2016] UKSC 12, and see page 30 the discussion at http://tinyurl.com/hso8yc3, and a more detailed discussion to follow in the May issue of the CIPA Journal. 5. para 31, quoting from The Community Design: First Experience with Registrations [2003] EIPR 383, 385 6. It has always been something of a puzzle to the Editor, having made very active use of the “claim” approach in design registrations, that more widespread use of this is not made; but then it remains a puzzle why so little use is made of design registrations generally. 7. Matters of active interest remain on the agenda. These include trade mark cluttering: does it exist, is it a problem (and will the changes in the EUIPO fees or the need for use (after five years) before bringing infringement proceedings make any difference at all), are there solutions? And trade mark bullying: does it exist; what is acceptable and what is beyond the pale; should attorneys exercise restraint over their clients enthusiasm for pressure; is it improper for attorneys to make overreaching threats or seek overreaching undertakings, such as totally unrelated undertakings when acting for big brand owners? Letters to the editor or to the CIPA Trade Marks Committee please.

Chief Executive’s report

t was a great pleasure to host an evening reception for Sweet & Maxwell to recognise the contribution that authors and editors from both CIPA and ITMA make to its range of IP titles. The relationship with Sweet & Maxwell and its parent organisation Thomson Reuters is important to CIPA and the Institute is well supported by its members, who volunteer time and expertise to ensure the publications are of immense value to IP professionals. The launch, in February, of the 8th edition of the CIPA Guide to the Patents Acts is a perfect example of this partnership. I do hope that some of you will be able to join us on the evening of Wednesday 27 April in the CIPA Hall for the official launch of the ‘Black Book’ and to say a big thank you to Paul Cole and Richard Davis for presiding over its production. Details are available on the website. Another event bookable via the website is the Gala Dinner at the Rosewood Hotel on Thursday 14 July. The venue has a maximum number of 250 dinner guests, so please book

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early to avoid disappointment. Thanks to the generous sponsorship of Sweet & Maxwell, we have been able to keep costs at a very modest £95 + VAT for individuals, with the option for firms or departments to take a full table of ten for £850 + VAT. A reminder that Lord Neuberger, President of the Supreme Court, will be our guest of honour and that our after-dinner speaker will be the comedian and science enthusiast Robin Ince. A big thank you to Greg Iceton and his colleagues who make up the unofficial ‘Munich Chapter’ of CIPA for the invitation to attend the first Munich happy hour. It was a most enjoyable evening spent in good company with great food at the Theresa Grill, with the added thrill of a game of skittles in a Bavarian cellar. It was great to see so many CIPA members there and I have no doubt that events in Munich will thrive under the stewardship of the new committee. The group hope to host at least a couple of events each year and to publicise these in advance for CIPA members who may be in Munich on business.

CIPA gave a very warm welcome to our colleagues from the Intellectual Property Awareness Network (IPAN), who met in the CIPA hall to receive a presentation from Pippa Hall, chief economist at the UK IPO. These IPAN events are held under Chatham House Rules, so I am unable to report verbatim on the proceedings, but Pippa outlined for us the IPO’s future research priorities which focus on the areas of enforcement and infringement; IP, innovation and growth; and the value of IP. Pippa spoke at length about her team’s IP-related research to build the economic evidence base which will inform the government’s policy discussions on IP and innovation. The IPO’s research will be discussed and peer reviewed by its industry stakeholders, academics and other government departments and CIPA looks forward to sharing the research with IP professionals through the pages of this Journal. Lee Davies, Chief Executive www.cipa.org.uk

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NEWS

COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 3 February 2016 at 14:30. Item 1: Welcome and apologies Present: A.R. Brewster (President, in the Chair), A.J. Rollins (Vice-President), R. Ackroyd, J.D. Brown, R.J. Burt, P.G. Cole, M.P. Dixon, S. Ferrara (by phone), J.A. Florence, K.L. Hodkinson (by phone), A.C. Instone, J.T. Jackson, R.P. Jackson, A. Mukherjee, B.N.C. Ouzman (by phone), A.D. Poore, T.W. Roberts, V.B. Salmon, J.M. Vleck (by phone) and S.M. Wright. Lee Davies (Chief Executive) and Neil Lampert (Head of Media and Public Affairs) were in attendance. Apologies: C.M. Hammer (Immediate Past President), C.P. Mercer (Honorary Secretary), R.J.H. Davis, S. Harte, A. Hector and G.V. Roberts.

Item 2: Minutes The draft Minutes of the last meeting held on Wednesday 6 January 2016 were approved, following amendment.

Item 4: CIPA Informals and trainee IPO examiners – reciprocal arrangement 28/16: Ben Charig, Honorary Secretary of the Informals, introduced a discussion paper to Council setting out a proposal for trainee IPO examiners to gain experience working in patent attorney firms and industrial departments, mirroring the opportunity for trainee patent attorneys to gain experience of working in the IPO. Outcome and actions: Council supported the proposal and asked the Informals to go ahead with its implementation and its promotion via the Journal, the newsletter and through other channels, liaising with the IPO as appropriate.

Item 5: Review of the Bye-laws Item 3: Conflicts of interest 27/16: Declaration by Council members of any conflicts of interest Outcome and actions: Bobby Mukherjee reminded Council that he and Roger Burt sat on the UK IPO’s UPC steering committee and that, whilst this was not a direct conflict of interest, both would be party to information which was confidential to the steering committee. John Brown informed Council that he was the Honorary Treasurer of the Society of Chemical Industry (SCI) and, as such, would have a potential conflict of interest in any property or financial discussion involving CIPA and SCI. Alasdair Poore informed Council that he sat on an advisory committee of Queen Mary University of London and, as such, would have a potential conflict of interest in any discussion about its courses or collaboration with CIPA. Volume 45, number 4

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29/16: Council received an update from Lee Davies on the review of the Bye-laws. Outcome and actions: Following discussion, Lee Davies was asked to amend draft Bye-law 13.3 to ensure that Fellows who leave the Register and cease practising as a patent attorney for reasons of retirement or a career break are able to retain their membership status. Lee was also asked to review the paragraphs in draft Bye-law 22 to ensure that the term ‘ordinary member of Council’ is used consistently throughout. Actions: Lee Davies to prepare a final draft version of the Bye-laws incorporating amendments to Bye-law 13.3 and Bye-law 22 and circulate this to members of Council electronically, prior to submitting to the Privy Council for its informal scrutiny.

Item 6: Regulatory issues 30/16: Appointment of a new Chair of IPReg Andrea Brewster informed Council that Michael Heap had replied to her letter setting out Council’s concerns about adherence to the Delegation Agreement in the process to appoint a new Chair of IPReg. In his reply, Michael pointed out that the Legal Services Board’s internal governance rules superseded the Delegation Agreement and directed IPReg to establish the system for Board appointments, including the Chair. Outcome and actions: Council recognised that the internal governance rules had been published by the LSB some years after the Delegation Agreement had been put in place but did not see that the process for the appointment of the Chair of IPReg was at variance with the requirements set out in the internal governance rules. Council agreed with a recommendation from the Regulatory Affairs Committee to write to IPReg before the long-list meeting scheduled for 11 February regarding the need for objective evaluation processes in the new Chair appointment procedures. Council supported a proposal from the Regulatory Affairs Committee that it carry out a review of the Delegation Agreement prior to opening discussions with the new IPReg Chair over areas of non-compliance. Actions: The Regulatory Affairs Committee to write to IPReg before the long-list meeting on 11 February regarding the need for objective evaluation processes in the new Chair appointment procedures. Regulatory Affairs Committee to carry out a review of the Delegation Agreement APRIL 2016

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NEWS

prior to opening discussions with the new IPReg Chair over areas of noncompliance. 31/16: Request to LSB to assist in the vires dispute between CIPA and IPReg Andrea Brewster said that, other than the fact that both CIPA and IPReg had submitted their respective documents to the LSB, there was nothing further to report at this time. 32/16: LSB business plan Outcome and actions: Council agreed to provide a brief response to the LSB’s consultation on its business plan, welcoming the opportunity to comment and taking the opportunity to record CIPA’s interest in any further discussions about the future of regulation, particularly in terms of any proposal to change or remove CIPA’s status as an Approved Regulator. Action: Lee Davies and Chris Mercer to draft a response to the LSB’s business plan consultation on behalf of the Regulatory Affairs Committee.

Item 7: Strategic Plan and Annual report 33/16: Lee Davies reported to Council on the review and revision of the Strategic Plan. Outcome and actions: Council agreed to the publication of a combined Strategic Plan and Annual Report, focusing on activities with clear member benefits. Council supported the proposal that Lee Davies develop an operational plan and Gantt chart for delivery of the strategic objectives, which would be monitored by the Internal Governance Committee. Council supported a proposal from Keith Hodkinson that, shortly after publication, members should be consulted on how they think the strategic objectives should be prioritised. Action: Lee Davies to work with Neil Lampert on the publication of the Strategic Plan and Annual report and on a subsequent membership consultation. 6

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COUNCIL

Item 8: Unitary Patent and UPC 34/16: European Patent Litigation Course Andrea Brewster informed Council that there had been a meeting between CIPA and Queen Mary University of London (QMUL) to discuss the university’s plans for a European Patent Litigation Course. Vicki Salmon reported that an informal conversation on the same topic had taken place with Nottingham Trent University Law School. 35/16: Statutory Instrument Andrea Brewster said that the UK IPO had worked incredibly hard to get to the point of being able to present a draft Statutory Instrument to Parliament for its approval and proposed that she should write to the IPO welcoming the progress that had been made. Outcome and actions: Council supported the proposal to write to the IPO welcoming the progress made on the Statutory Instrument. Action: Andrea Brewster to liaise with Neil Lampert on publishing a public statement of CIPA’s support for the new Statutory Instrument, the progress it represents towards UPC implementation and the consultations which preceded it.

Item 9: Committees and committee reports 36/16: Congress Steering Committee Council received an oral report from the Congress Steering Committee. John Brown advised Council that the Committee had agreed to hold the 2016 Congress at the Royal Institute of British Architects (RIBA) on 22 September. John added that the venue had been provisionally booked for the IPAG conference but that this was subject to further work and agreement. John informed Council that work on the programme was well advanced and that the Committee hoped to sign off the first draft of the programme to help publicise Congress at its March meeting.

37/16: Internal Governance Committee Council received an oral report from the Internal Governance Committee. Bobby Mukherjee informed Council that the Committee met earlier that day, in the main to consider a paper prepared by Lee Davies on the options available for CIPA on the termination of its lease on 95 Chancery Lane in August 2017. The options included renting office space in the premises of the Society for Chemical Industry in Belgravia. Bob Ackroyd expressed concerns about CIPA moving so far away from its established area of London, where many of its members are also located with easy access to the Institute’s current premises. Bobby invited Council members to attend a meeting of the Committee on Wednesday 2 March 2016 to consider CIPA’s accommodation needs and to help develop the accommodation strategy. Action: Lee Davies to arrange an Internal Governance Committee/Council meeting on Wednesday 2 March 2016, with lunch, to discuss future requirements for CIPA’s premises. 38/16: Exploitation Committee Council noted the report from the Exploitation Committee and approved the appointment of Frank Tietze and Martin Brassell. Council noted the resignation of Andrew Crawford. 39/16: Trade Marks Committee Council noted the report from the Trade Marks Committee. 40/16: International Liaison Committee Council noted the successful visit to Japan by the Chairman of the International Liaison Committee, Richard Mair, and the signing of the Global IP System Declaration. 41/16: Life Sciences Committee Council congratulated the Committee on its highly successful Life Sciences Conference held in 2015 and noted the Committee’s report on the outcomes from the conference. www.cipa.org.uk

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NEWS

42/16: Regulatory Affairs Committee Council noted the report from the Regulatory Affairs Committee. 43/16: Patents Committee Council noted the report from the Patents Committee. Council authorised Tim Jackson to sign off the Committee’s amicus brief on poisonous divisionals, due to be submitted by 1 March. Tim said that he would try to provide Council members with a draft in advance of making the submission. Council asked the Committee to prepare a response to the USPTO quality survey and authorised Tim Jackson to sign off the response.

Item 10: Officers’ Reports 44/16: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 45/16: Council noted the Chief Executive’s report.

Item 12: Applications for election 46/16: Fellows Outcome and actions: Council approved the following first time Fellow applications: Sam Jones; Ian Je Hun Liu; Christopher John Mason; Andrew Edward Somerville. 47/16: Associate members Outcome and actions: Council approved the following first time Associate membership application: Anthony Wilson. 48/16: Students Outcome and actions: Council approved the following Student membership applications: Martin Thomas Bell; James Farrow; Angus Gledhill; Liam Lawlor; Nina Szamocki; Kevin Tipping; Anthony Charles Elwyn Williams; Leon Zhang; Alexander Paul Williams.

Item 13: Deaths, resignations, exclusions, reinstatements, etc 49/16: Lee Davies advised Council that there were no deaths, resignations or reinstatements to report. Volume 45, number 4

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Item 14: Any other business 50/16: Ariosa v Sequenom – US Supreme Court petition stage Council asked Paul Cole to continue working on a draft and seek input from Council and the Life Sciences Committee. 51/16: IP registration and renewal ‘scams’ Council asked Lee Davies to continue liaising with Jim Boff on a potential position paper. 52/16: Nagoya Protocol Tim Roberts advised Council that a reply had been sent asking how CIPA could contribute to the work of the Consultation Forum, following rejection of CIPA’s application to become a Forum member under Article 15 of the EU ABS Regulation. Tim said that he would advise Council further when a response was received.

Entrepreneurship (ICCE) at the University of London, subject to Andrea Brewster and Tony Rollins finding out more about the project and how CIPA could support the research. 54/16: Unjustified threats Vicki Salmon informed Council that, having decided not to include amendments to the unjustified threats legislation in the Enterprise Bill, the government provided a summary of the key points raised by respondents on the proposal to reform the law relating to unjustified threats on intellectual property rights. In view of the responses received, the government will continue to investigate introducing the reform via the Law Commission’s procedure for uncontroversial bills. The proposal is to bring a Bill forward in Spring 2016.

Item 15: Date of next meeting 53/16: Research project examining the needs and use of IP by innovative SMEs. Council agreed to CIPA’s participation in a research project proposed by the Institute for Creative & Cultural

55/16: Wednesday 2 March 2016. There being no other business, the President closed the meeting at 17:23. Lee Davies, Chief Executive

CIPA’S 134th Annual General Meeting Wednesday 11 May 2016 • CIPA Hall • Registration from 4.30pm CIPA would like to invite members to attend the 134th Annual General Meeting on 11 May at CIPA Hall. Registration is from 4.30pm, with the AGM starting promptly at 5.00pm. This will be followed by networking, drinks and light refreshments in the CIPA Library. The AGM is an important date in the governance year, allowing CIPA to do the following: • • • • •

Present the Annual Report of Council to members and partner organisations. Present the audited Financial Statements for the year ended 30 September 2015 Appoint an auditor Present examination prizes and awards Declare the members of Council for the coming year and to install the President and Vice-President.

The AGM is open to all CIPA members. Booking is not required, but please do contact the events team (cpd@cipa.org.uk) if you have any queries.

APRIL 2016

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EPO

PARTIAL PRIORITY

Partial Priority Amicus curiae brief in case G 1/15 (Partial Priority), submitted by CIPA to the President of the Enlarged Board of Appeal at the European Patent Office, 29 February 2016. (Article 10 RPEBA). Introduction

611(E), page 54, point (d).1

Although the Paris Convention is not formally binding on the EPO, the Enlarged Board has held that the EPC is clearly not intended to contravene the basic principles concerning priority laid down in the Paris Convention (Decision G 3/93, Opinion, 4; Decision G 2/98, Reasons, 3). Article 4F of the Paris Convention provides for the claiming of partial priorities: “No country of the Union may refuse a priority or a patent application… on the ground that an application claiming one or more priorities contains one or more elements that were not included in the application or applications whose priority is claimed…”. Partial priorities are of great practical importance, because it is normal (and to be encouraged) that applicants continue to develop their inventions during the priority year. Prof. Bodenhausen explains this: “It frequently happens that, after a first application for a patent has been filed, subsequent applications in respect of the same invention for which the priority of the first application is claimed contain elements of the invention which were not present in the first application… Under the Convention, such additions in later applications will not prevent priority from being recognized for those other elements of the invention which were already present in the first application.” G.H.C. Bodenhausen, Guide to the Application of the Paris Convention , BIRPI 1969, WIPO Publication 8

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So partial priorities are intended to benefit patent applicants. We do not believe that when the Paris Convention contracting states agreed Article 4F, they intended that a partial priority could instead have the poisonous effect that the first application might destroy the novelty of a subsequent application which claimed the partial priority from it. They even wrote into Article 4F that a patent application could not be refused on the ground that it claimed a partial priority. Nor do we believe that this “poisonous priority” effect was the intention of the EPO Enlarged Board of Appeal when it wrote that claiming multiple priorities was subject to the condition: “provided that it gives rise to the claiming of a limited number of clearly defined alternative subjectmatters.” (Decision G 2/98, Reasons 6.7) Yet such destruction of the novelty of a subsequent application claiming a partial priority (and refusal not just of the priority but of the application itself ) has been the ultimate effect. This has been the result of the developing interpretation given to the G 2/98 proviso by a succession of Technical Boards of Appeal (as documented in the referring decision T 0557/13). We submit that this astonishing result not only fails to benefit patent applicants as intended, but it also contravenes basic principles concerning priority laid down in Article 4F of the Paris Convention. If it is not possible to clearly define a limited number of alternative subject-

matters, partial priority may be refused. This runs counter to the more basic holdings of the Enlarged Board in Decisions G 3/93 and G 2/98. We therefore welcome the present referral. In particular, we urge the Enlarged Board to examine carefully the legal basis for the proviso: “provided that it gives rise to the claiming of a limited number of clearly defined alternative subjectmatters”. We have been unable to locate its basis, whether in the Paris Convention, in previous jurisprudence of the EPO Boards of Appeal, or in the FICPI Memorandum (Travaux Préparatoires, M 48/I, Section C) cited in Decision G 2/98. We wish to note that the present partial priority issues are not confined to “poisonous divisional” situations, in which a divisional application is cited against its parent, or vice versa. The Annex below lists several further example scenarios, in which the interpretation given by a number of Boards of Appeal to the proviso “a limited number of clearly-defined alternative subject-matters” leads to absurd results. One of these examples shows that issues can even arise in a competitive situation between two rival applicants.

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1. Where a claim of a European patent application or patent encompasses alternative subjectmatters by virtue of one or more generic expressions or otherwise (generic “OR”-claim), may entitlement to partial priority be refused under the EPC for that claim in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document? We submit that the answer to this question should be “no”, for the following reasons. 1.1 Priority is a right which stems from the first application in or for a Paris Convention or WTO country: “Any person who has duly filed, in or for [a Paris Convention or WTO country] an application for a patent… shall enjoy… a right of priority during a period of twelve months from the date of filing of the first application.” Article 87(1) EPC, emphasis added, wording in [brackets] condensed. This is closely modelled on the Paris Convention, Article 4A(1). 1.2 The priority right thus depends on the disclosure of that first application (the priority document). Article 87(1) EPC provides that the subsequent European application which claims the priority must be “in respect of the same invention”. However, since the priority right stems from the first application, we do not see a basis for imposing any further conditions on the subsequent application, unrelated to the disclosure of the first application. The applicant of the first application shall enjoy the priority, simply on the basis of the first application itself. 1.3 A partial priority under the Paris Convention likewise depends on the disclosure in the first application: Volume 45 number 4

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 “No country of the Union may refuse a priority or a patent application… on the ground that an application claiming one or more priorities contains one or more elements that were not included in the application or applications whose priority is claimed…” Paris Convention, Article 4F.  “… [T]he right of priority shall cover only those elements of the European patent application which are included in the application or applications whose priority is claimed.” Article 88(3) EPC.  “… [A]dditions in later applications will not prevent priority from being recognized for those other elements of the invention which were already present in the first application.” Bodenhausen, page 54, point (d), quoted above. 1.4 We therefore submit that partial priority depends only on the disclosure of the first application, and on the extent to which the subsequent priority-claiming application concerns the same subject-matter as the first application. It acts to protect that subject-matter from intervening disclosures.2 1.5 Like a full priority, under Article 87(1) EPC the priority applicant shall enjoy this partial priority, simply on the basis of the first application. Like a full priority, we do not see a basis for imposing further conditions which do not relate to the disclosure of the first application. 1.6 In Decision G 2/98, Reasons 6.7, the Enlarged Board imposed the further condition “provided that it gives rise to the claiming of a limited number of clearly defined alternative subject-matters” to multiple priorities. Subsequent case law has also applied this to partial priorities, as there seems to be no reason to make a distinction between them. However, we submit that it should not apply, since it is a

further condition on the subsequent application, which does not relate to the disclosure of the first application. For example, we have been unable to find a basis for it in the FICPI Memorandum (Travaux Préparatoires, M 48/I, Section C), cited in Decision G 2/98. The priority date of any particular subject-matter should be determined simply from the filing date of whichever application first discloses it. Application of partial priority to generic “OR”-claims 1.7 Decision G 2/98, Reasons 6.4 notes that the FICPI Memorandum (supra) can be said to express the legislative intent underlying Article 88(2), second sentence, EPC (which provides that “multiple priorities may be claimed for any one claim”). The Memorandum subsequently states in point 36 that the claiming of partial priorities should be governed by the same principles. We therefore submit that the Memorandum is also relevant to partial priorities of generic “OR”claims under Article 88(3) EPC. 1.8 The Memorandum gives several examples of generic “OR”-claims3:  Broadening of a chemical formula. For example, the first application discloses a composition using chlorine; while the subsequent European application claims a halogen.  Broadening of a range. For example, the first application discloses a narrow temperature range; while the subsequent European application claims a broader range.  Broadening of a field of use. For example the first application discloses coating the inner wall of a pipe; while the subsequent European application claims coating the inner walls of hollow bodies more generally.

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Discussions in professional circles have proposed other examples:  The first application discloses a feature made from copper; while the subsequent European application claims that it is made from metal.  The first application discloses that two members are fastened by a screw; while the subsequent European application claims “fastening means”. 1.9 Claiming priority has a function in relation to novelty. It acts to protect the subject-matter of the first application from intervening disclosures (Paris Convention Article 4B; compare point 1.4 and footnote 2 above). 1.10 In the jurisprudence of the Boards of Appeal, both novelty and priority rely on essentially the same disclosure test. Subject-matter should be “directly and unambiguously derivable” (at least implicitly, using common general knowledge). In the case of priority, this is the main Conclusion of Decision G 2/98. 1.11 However, the tests for novelty and full priority are not symmetrical:4  For novelty, the disclosure of a species can destroy the novelty of a

PARTIAL PRIORITY

more generic claim. More precisely, that follows when the generic claim encompasses a species which is directly and unambiguously derivable from the prior art disclosure. For example, the disclosure of a screw would destroy the novelty of a generic claim to “fastening means”.  Under the “same invention” test of Decision G 2/98, the situation for full priority is different. A generic claim for a genus only benefits from full priority if the genus itself is directly and unambiguously derivable from the first application (the priority document). The disclosure of a species such as a screw does not provide full priority for a generic claim to “fastening means”. In consequence, suppose that the first application disclosed only a screw, but the applicant developed the invention further during the priority year and realised that other fastening means also worked. If his later generic claim to “fastening means” had to rely only on full priority under G2/98, then an intervening disclosure of a screw would destroy the novelty of the generic claim. There have in fact been cases which only considered full priority, and where this was indeed the result. The referring decision T 0557/13 cites some of them.

Notes and references 1. http://www.wipo.int/edocs/pubdocs/en/intproperty/611/wipo_pub_611.pdf 2. “Consequently, any subsequent filing… shall not be invalidated by reason of any acts accomplished in the interval, in particular, another filing, the publication or exploitation of the invention…”. Paris Convention, Article 4B. “… the very aim and object of the right of priority: the protection from novelty destroying disclosures during a period of twelve months from the date of filing of the first application…”. Decision G 2/98, Reasons, 5. 3. The Memorandum gives these examples in the context of claiming multiple priorities, but there seems to be no significant distinction between multiple and partial priorities. As noted, the Memorandum subsequently states that the claiming of partial priorities should be governed by the same principles. 4. See also Decision G 2/98, point II(v) of the reasons for the referral by the President of the EPO 5. In both cases, of course, the “directly and unambiguously derivable” test should take account of what is implicit to the skilled person, and common general knowledge.

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1.12 We submit that this is exactly the problem that the notion of partial priority was intended to prevent, under the Paris Convention Article 4F. This is as set out by Prof. Bodenhausen in the quote in our Introduction above. The FICPI Memorandum explained that this principle should allow multiple and partial priorities even for a single claim. This obviates the need for complex claim drafting, unwieldy claim structures and a possible resulting lack of clarity. So we submit that Article 88(3) EPC should be construed accordingly. 1.13 Thus, in accordance with the FICPI Memorandum, a generic claim can claim a partial priority from a species disclosed in the first application (priority document). More precisely, that follows when the generic claim encompasses a species which is directly and unambiguously derivable from the priority disclosure. In accordance with the Memorandum, the generic claim benefits from the partial priority only to the extent that the species is disclosed in the first application. If the first application discloses a screw, it protects the novelty of a generic claim to “fastening means” from intervening disclosures, to the extent that the fastening means is a screw. 1.14 In point 1.11 (first bullet) and in point 1.13 above, we have deliberately highlighted wording which is almost identical. The disclosure test for partial priority under the Memorandum is the same as the disclosure test for novelty.5 This is to be distinguished from the test for full priority, which is not symmetrical with the test for novelty. 1.15 In a “poisonous priority” or “poisonous divisional” situation under Article 54(3) EPC, the same generic claim and the same species disclosed in the first application fall to be considered for both novelty and partial priority. Under our approach above, the partial priority exactly counterbalances the novelty attack. This means that the novelty attack must fail. www.cipa.org.uk

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1.16 It should be acknowledged that if the disclosure in the first application is not clear, then the exact scope of the partial priority and of the novelty attack may likewise be unclear. However, in a poisonous priority situation this is unimportant, since the scope of both is identical. If the partial priority becomes relevant to protect the novelty of a subsequent claim from some other unrelated intervening disclosure, e.g. from a third party, then the onus would be on the applicant/ patentee to show that this publication clearly falls inside the disclosure of his first application.

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1.17 So why have things gone wrong with poisonous priorities? Decision G 2/98 pronounced the “directly and unambiguously derivable” test for full priority, but then also added point 6.7, requiring “a limited number of clearly defined alternative subject-matters” for multiple priorities. In a succession of cases that has subsequently been taken as an additional test also for partial priority, leading to an imbalance between the tests for novelty and partial priority. For the reasons in paragraph 1.16, we do not think that “clearly-defined” alternative subject-matters are necessary for legal certainty.

Application of partial priority in combination with multiple priorities 1.18 We will illustrate this with an example. Suppose the applicant has filed two priority applications within the priority year:  Priority application P1 discloses an embodiment in which two members are fastened by a screw.  After further work, the applicant files a second priority application P2. This provides an enabling disclosure for “fastening means”, with examples including nails, rivets, spring clips, adhesive, etc.

Annex In addition to European applications with a parent-divisional relationship, partial priority problems may also arise in the following cases:  A first European application EP1 is followed by a subsequent European application EP2 which claims priority from it. EP2 has a generic “OR”-claim which is broader than the disclosure of EP1, reflecting further development work performed during the priority year. If EP1 is published, then it may destroy the novelty of EP2’s claim under Article 54(3) EPC.  An applicant files a first application P1 (national or European), which discloses an embodiment for solving a particular problem, comprising features A+B+C, with an optional feature D. Further work during the priority year shows that A+B+D solves a separate problem from A+B+C, and that for this purpose C is not essential and D can be replaced with alternative elements having a similar function. Two subsequent European applications EP1 and EP2 are then filed in parallel, both claiming priority from P1. EP1 discloses A+B+C+D and claims A+B+C, optionally with D. EP2 has a generic “OR”-claim covering the embodiment A+B+D, in which the feature D is claimed functionally (to cover its possible alternatives). The main claim of EP2 does not have full priority. The claim to A+B+D covers a large number of functional variants, so the proviso to G 2/98 point 6.7 is also not satisfied. The disclosure of the embodiment A+B+C+D in EP1 then destroys the novelty of EP2’s claim to A+B+D.

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 Two competitors BlueCo and RedCo both independently make an invention consisting of an embodiment X1. Both companies file respective first national patent applications P1 and P2, both disclosing X1, but BlueCo files several months before RedCo’s similar application. BlueCo continues working, developing further embodiments X2 and X3, and discovering a general principle X. Within 12 months of P1, but after RedCo’s filing of P2 (of which they have no knowledge), they file a subsequent European application EP1 claiming priority from P1. EP1 has a generic “OR”-claim covering the principle X. This is supported and enabled across its scope by the disclosure of the embodiments X1, X2 and X3, but it also covers a large number of other variants. RedCo does no further work. Within 12 months of P2, they file a subsequent European application EP2 claiming priority from P2, which describes and claims only the embodiment X1. In due course, RedCo’s EP2 is published, and cited against BlueCo’s EP1 under Article 54(3) EPC. BlueCo’s generic “OR”-claim to X cannot benefit from the full priority of P1. Nor does it satisfy the proviso to G 2/98 point 6.7. RedCo’s disclosure of the embodiment X1 destroys the novelty of BlueCo’s generic claim. Yet in this factual situation, BlueCo ought surely to win the priority contest outright, and their generic claim ought to be held valid. BlueCo’s first application disclosing X1 was clearly ahead of RedCo, they had done more work, and they had made a broader, more meritorious invention.

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 A European application EP1 is filed, claiming both priorities, with a generic claim in which the two members are fastened by “fastening means”. 1.19 The whole generic claim has a full priority from the date of P2, which disclosed “fastening means”. This protects the claim from a disclosure of any sort, arising on or after the date of P2. This is consistent with the simple case of partial priority, in which no application P2 has been filed. It effectively substitutes the date of filing of P2 for the filing date of the European application EP1. Compare Article 89 EPC. 1.20 As discussed above, on the basis of the FICPI Memorandum, we submit that the generic claim also has a partial priority from P1, to the extent that the fastening means is a screw. This protects the claim from a novelty attack under Article 54(3) EPC, based on another European application disclosing that the two members are fastened by a screw. 1.21 Thus, the generic claim is protected from an attack based on an application EP2 which is divided from EP1. It is also protected from an attack based on the priority application P1, if P1 is itself a European application which is subsequently published. And it is protected from an attack based on an intervening, subsequently published European application by a third party, disclosing the fastening with the screw, with a priority date between P1 and P2. 1.22 However, the generic claim would be open to attack in the event of an intervening disclosure prior to P2, disclosing two members fastened by a spring clip. Neither priority protects against this. 1.23 The priority from P2 effectively overlaps the priority from P1, rather than being a limited number of alternatives as envisaged by point 6.7 of G 2/98. Since both priority dates are within the twelve-month priority period, we see no problem with this. Under Article 89 EPC, either P1 or P2 counts as the effective filing date of the subject-matter they respectively disclose. 12

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2. If the answer is yes, subject to certain conditions, is the proviso “provided that it gives rise to the claiming of a limited number of clearly defined alternative subjectmatters” in point 6.7 of G 2/98 to be taken as the legal test for assessing entitlement to partial priority for a generic “OR”-claim? 3. If the answer to question 2 is yes, how are the criteria “limited number” and “clearly defined alternative subject-matters” to be interpreted and applied? 4. If the answer to question 2 is no, how is entitlement to partial priority to be assessed for a generic “OR”-claim? These questions 2, 3 and 4 are only applicable if the Enlarged Board disagrees with our response to Question 1. In that event, we submit that the approach detailed in Decisions T1222/11 and T571/10 would be preferable. Under that approach, the claim is conceptually divided into a limited number of clearly defined alternative subject-matters. These correspond to (a) one or more subject-matters disclosed in the first application(s), for which one or more partial priorities are available; and (b) the remainder of the generic claim, for which no priority is available. The partial priorities would be allocated in the same way as we have discussed in our response to Question 1, e.g. points 1.4 and 1.13. Namely, in accordance with Bodenhausen and the FICPI Memorandum, the generic

claim benefits from the partial priority only to the extent that subject-matter is disclosed in the first application. 5. If an affirmative answer is given to question 1, may subject-matter disclosed in a parent or divisional application of a European patent application be cited as state of the art under Article 54(3) EPC against subject-matter disclosed in the priority document and encompassed as an alternative in a generic “OR”-claim of the said European patent application or of the patent granted thereon? This question need only be answered if the Enlarged Board disagrees with our responses to Questions 1–4. In particular, we believe that the answer to Question 1 should be “no”. Otherwise it would lead to the absurd results in the situations described in the Annex above. These are not limited to parent-divisional relationships, and are therefore not addressed by this Question 5. We believe that addressing the partial priority issues raised in the referred Questions 1-4 would produce a more just outcome in each of these scenarios. Attention is drawn to the fact that the last of the scenarios below is not even a case of “self-poisoning”, but a competitive situation between two rival applicants. While a “no” answer to Question 5 would alleviate the problems in cases with parent/divisional relationships, we therefore urge the Enlarged Board to consider our responses to Questions 1-4.

The Incorporated Benevolent Association of the Chartered Institute of Patent Attorneys Notice is hereby given that the 71st annual general meeting of the Association will be held at the Chartered Institute of Patent Attorneys, 3rd Floor, 95 Chancery Lane, London WC2A 1DT, on Wednesday 4 May 2016 at 2.00 pm. The Trustees’ Report and Financial Statements for the Year Ended 5 April 2015, were included with the March issue of the CIPA Journal.

D.R. Chandler, Secretary

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PRIVILEGE

Client / patent attorney privilege CIPA's response to WIPO GROUP B+ Questionnaire regarding cross-border aspects of client / patent attorney privilege, 3 March 2016. CIPA's introduction The Chartered Institute of Patent Attorneys (“CIPA”) is the representative body for Chartered Patent Attorneys in the UK. Most CIPA fellows (around 2240 people) are Registered Patent Attorneys regulated by IPReg (a national Regulatory Authority supervised by the Legal Services Board under the Legal Services Act 2007) and are also qualified European Patent Attorneys (although the three groups do not completely overlap). All Registered Patent Attorneys have privilege in their communications with their clients in relation the legal advice that they give in securing patent or other IP protection or in dealing with third-party IP rights. This privilege subsists in the UK and has been recognised in other jurisdictions. CIPA welcomes the opportunity to respond to this survey. Before getting into the survey and responses, we wish to make some preliminary comments. The UK contributed to the WIPO Forum on Private International Law and Intellectual Property, Geneva, 30-31 January 2001 with respect to Treatment of foreign patent advisors, as follows: Client-lawyer privilege in the United Kingdom extends to communications with foreign legal advisors (In re Duncan, Deed. Garfield v Fay [1968] page 306 and Great Atlantic Insurances Co v Home Insurance Co [1981] 1 WLR 529). It would seem that communications with patent practitioners who are neither registered in the UK nor on the European patent attorney list may be excluded from the protection afforded by patent agent privilege. This is based on the wording of section 280 of the Copyright, Designs and Patents Act 1988 which appears, in essence, to confine patent agent privilege to communications with registered patent agents or persons on the European List. This is based on Volume 45 number 4

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the view of Simon Thorley and Richard Miller, in Thorley and Terrell, Law of Patents, Sweet & Maxwell, London (15th ed) (2000), 39, which states that: “[i]n practice, an applicant would be well advised to employ the services of a Registered Patent Agent (or a person on the European list or firm or company entitled to describe themselves as European patent attorneys), not least because of the provisions about patent agents’ privilege which only apply to communications with such persons.” There is no recent case law regarding the possible application of privilege for foreign patent attorneys. In the law of Ancient Rome, privilege was respected: “Advocates equally from very ancient times could not be called as witnesses against their clients while the case was in progress. Cicero in prosecuting the Roman governor of Sicily before a court in Rome regrets that he cannot summon the latter’s patronus, Hortensius (Cic. In Verr. Act ii, 8, 24), and the matter had received a statutory regulation in the Acilian law on bribery of 123 B.C.’ But just as in the case of the testimonium domesticum, this incapacity was extended afterward. By later imperial mandate, advocates and attorneys (agents) were made completely incompetent as witnesses in the case in which they acted.” – see California Law Review Volume 16, Issue 6 Article 3 September 1928; http://scholarship.law. berkeley.edu/cgi/viewcontent.cgi?article=3898&context=californialawreview Article 12 of the Universal Declaration of Human Rights states “no one shall be subjected to arbitrary interference with his

privacy, family, home or correspondence, nor to attacks upon his honour and reputation. Everyone has the right to the protection of the law against such interference or attacks.” Derived from this fundamental right to the protection of the privacy of correspondence there should be a high barrier put in place before this rule can be set aside in a court of law for either natural or legal persons.

WIPO GROUP B+ Questionnaire Introductory remark: The structure of the questionnaire and its wording has been chosen to allow for maximum flexibility for each delegation while conducting the survey according to the specific legal and commercial framework of that country on one hand and to provide for useful answers on the other hand. The objective of the survey is a complete set of answers to the questions below. Each delegation is free to decide which stakeholders should be questioned (e.g. users of the system i.e. industry; IP professionals: lawyers, patent attorneys etc.; courts; administration branches etc.) and/or which questions should be submitted to which group of stakeholders.

A. General aspects Question 1: 1. In your opinion, is there a need to protect communications between IP professionals (non-lawyer/lawyer) and clients in cases having cross-border aspects? Notably: • Please explain why/ why not. • Please define the kind of communication that should be covered by that protection. Answer: Yes. The question of protection for communications has only arisen in jurisdictions which have discovery or APRIL 2016

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disclosure, but has implications that affect parties in other jurisdictions. Where there are doctrines that parties to litigation must provide copies of relevant documents to their opponents, these jurisdictions also develop doctrines as to which documents will be withheld – i.e. are privileged from disclosure. In particular, this doctrine has developed so that clients may communicate frankly with their lawyers to obtain frank advice (legal advice privilege) and so that where litigation is being contemplated/ progressed, communications with others in e.g. to seek information which is relevant to that litigation can be obtained (litigation privilege). If such documents were in danger of being discoverable/disclosable, then these communications would be heavily impeded and clients would not receive the frank advice, nor full information, that they need and, when in litigation, the advice that they need to decide whether to litigate or settle. The difficulty arises where a country does not have a concept of “privilege”. This is likely to arise where a country has no concept of “discovery/disclosure” and so will only have protected legal advice by e.g. confidentiality and without according a form of “privilege” which would be recognised in a second jurisdiction in which the litigation is taking place. Without the label of “privilege”, countries which do have “discovery/disclosure” rules, may order a client to disclose legal advice which was given to them in a jurisdiction where there is no concept of privilege. This might mean that where a document would not be disclosable in litigation in say France, it can be obtained by starting litigation in say the US instead. More recently pre-litigation seizure of evidence (saisie descriptive) has been extended across all EU countries by the IP Enforcement Directive (2004/48/ EC) and not all EU countries have doctrines as to which documents will/ can be withheld. This is because a foreign legal concept (saisie descriptive) has been imposed on other countries which 14

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have a different legal culture in which no suitable provisions exist. This has a number of effects: a. A lawyer or patent attorney in one jurisdiction cannot be expected to know all the rules on privilege in all other jurisdictions. So they are not able to advise, before giving frank legal advice in their own jurisdiction, whether that advice would be discoverable/ disclosable in another jurisdiction – to the detriment of the client. b. There is no level playing field between clients or advisers in different jurisdictions. c. Parties are encouraged to forum shop for litigation venues between jurisdictions in order to obtain documents which they would not obtain in the most relevant litigation jurisdiction. In the IP field the following communications should be privileged: i.

Legal advice given to a party in relation to the drafting, filing and prosecution of IP rights. ii. Legal advice given to a party in relation the enforcement or validity of that party’s IP rights. iii. Legal advice given to a party in relation the assessment of third party IP rights. iv. Legal advice given to a party in relation to law suits involving the IP rights. v. Legal advice given to a party in relation the commercialisation of an IP right. vi. Legal advice given to a party in relation to any contractual arrangement involving the IP rights. vii. Legal advice given in relation to business strategies involving IP. viii. Communications between a lawyer or patent attorney and third parties (e.g. external searchers, translators, inventors, experts) in relation to any of the above activities. The advice should be privileged if it comes from a qualifying attorney, irrespective of

whether that attorney is in private practice or employed by the “client”. Question 2: Have you been confronted with situations where the client attorney privilege was an issue? Notably: • Please describe the circumstances (countries / sender and recipient of communication / kind of communication, etc. involved). • Please describe the reasons, why the issue arose. • Please describe the solution of the issue. • If yes, how often in the last five years? • How many times since you started practising (if applicable)? Answer: Some of our members have been involved in advising clients on the international impact of privilege and in either seeking disclosure of such documents or trying to ensure that privileged documents are not disclosed. Also, some of the issues which arise in this area are new and are developing quickly and hence there is a need for urgency. The amendments to US patent law (AIA) have opened up new ways to oppose an issued US patent. This has stabilised, e.g. for inter parties review (IPR) to ~400 per quarter and for business method reviews to around 30 per quarter. [See Figure 1.] About 75,000 US patents are issued per quarter meaning that the opposition rate (~0.5%) is much lower than in Europe (= ~5%) However, even at this level of activity there are already parallel IPR proceedings before the USPTO and oppositions at the EPO. This raises the questions of: a. Waiver of privilege in the US caused by any discussions between opponents in Europe. b. Whether the USPTO and the US courts will respect Rule 153 EPC (which accords privilege to advice from European Patent Attorneys in certain communications). c. Whether common interest agreements might function to protect privilege in documents and whether it www.cipa.org.uk

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Figure 1: Opposed US patents – inter parties review (IPR) and business method reviews (CBM) 458

466

458

400

418 395

PTAB petitions filed

395

300

375

267

Trial type CBM

204

IPR

200 190

137

100

79 94

2012 Q4

48 19

2013 Q2

42 20

20 43

2013 Q4

2014 Q2

2014 Q4

2015 Q2

2015 Q4

Quarter / Year

is possible to draft a common interest agreement that is “water tight” for opponents in Europe. Difficulty to investigate technical issues with experts if these are not privileged discussions. Impeachment of witnesses (= different rules in Europe and US as to what a witness can say). Organisation of arguments and strategy between multiple opponents. If discussions between opponents have to be curtailed because of potential loss of privilege this is a significant advantage for the patent proprietor. Is it really a good idea to use “straw persons” as the named opponent before the EPO – what is the effect on the client’s privilege?

There is no known solution – other than privilege being granted to opponents’ discussions and discussions with their technical advisors. Volume 45 number 4

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Question 3: Is your interaction with your clients (e.g. communication, decision making process) influenced by the differences in national approaches to client attorney privilege issues? Answer: Yes. Where possible some attorneys will consider the impact of privilege before committing advice, especially negative advice to writing. This adds cost to clients. It may also mean that they do not receive full written advice which they can refer to at a later date. The impact of US discovery rules and, until recently, discovery rules in Canada and Australia, had a negative impact on written advice from UK patent attorneys. Where there is a risk that such communications might be handed over to the other side in litigation, then it is better not to have them in writing. In some jurisdictions protective orders can prevent confidential information from escaping to third parties during litigation, but these do not stop a party

from having to disclose documents in which they wish to claim privilege, but which have not been recognised as such. An example given below is from the revised US federal procedural rules from 2015: Protective Orders. (1) In General. A party or any person from whom discovery is sought may move for a protective order in the court where the action is pending or as an alternative on matters relating to a deposition, in the court for the district where the deposition will be taken. But protective orders are not available in all countries and some of the countries where this is not possible do have ways to force production of documents from other parties. So in these countries there is not an equitable balance between the need to obtain documents from another party and the need to restrict distribution of such documents. APRIL 2016

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Question 4: In connection with the cross-border client attorney privilege, what do you think is essential to be regulated by a multilateral agreement? Answer: We consider that it is essential that each there should be minimum requirements that set out that: a. Regardless of where a document had been produced, a court in a country will not order documents to be discovered/disclosed in its litigation, if that document would not have been disclosable if created by a like individual in that country. b. Where a document is afforded privilege in the country in which it was created, a court in another country will not order that document to be discovered/disclosed in litigation in such court. c. Where a document would not be disclosed in the country in which it was created, because it was considered to be confidential legal advice, a court in another country will not order that document to be discovered/disclosed in litigation in such court. d. Where a legal system allows delivery up of documents to a court, a system of protective orders should also be instituted for that court. Question 5: In your opinion, what are possible reasons against adopting a multilateral agreement? Answer: a. A lack of understanding of disclosure / discovery in countries where this does not exist and so a lack of understanding of the need for privilege. b. Protectionism of local legal advisers in countries where privilege already exists. c. Fear the extending privilege to all patent attorneys, that this will a slippery slope which allows accountants or other advisers to seek privilege to the detriment of lawyers. d. The need to define who is a lawyer or patent attorney to whom such privilege will be granted. The UPC Rules propose to grant privilege to patent attorneys / 16

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patent agents, but there are difficulties in defining this term in some jurisdictions. Not all such persons are governed by entry exams, professional conduct rules or have regulators.

B. Specific aspects on the proposed multilateral agreement Question 1: What professionals should be covered by the agreement? • By what criteria should the professionals be identified? • What definition should be used to ensure that the professionals covered are defined sufficiently clearly? • How should the different terminology in different jurisdictions be taken into account? Answer: Communications from certain legal professionals who, for the discharge of their legal professional duties, require a high degree of confidence such that if this confidence is not guaranteed there is no or little benefit from their legal advice. This means communications from any person who is qualified to provide advice or opinions on matters so directly linked to legal provisions, that knowledge of the advice or opinion given, delivers a direct opinion on the enforceability or relevance of the legal provision involved. It should not matter whether that person works in private practice or in-house of the “client”. The right of privilege should prevent such documents from being used to the detriment of the person to whom the advice or opinions were given by those legally qualified persons. Separate provisions can be made with respect to equitable provisions relating to securing evidence (e.g. ex parte) and use of such evidence in civil cases (e.g. inter partes). For example, in the UK there are some limitations on when the courts will not allow privilege to subsist. Recently privilege provisions for IP matters have been proposed among the group of EU countries which make up the Member States of the Unified Patents Court Agreement. The Rules are approved by the Preparatory Committee and are expected to be adopted when the

UPC Agreement comes into force. These contain key features that would be useful in any treaty on privilege. Rule 287 of the Rules of Procedure (“Rules”) of the Unified Patent Court (18th draft, 19 October 2015), is worth careful consideration when any international treaty is in turn drafted. This was produced with reference to a patents court which primarily will try patent cases and so may need extending more generally to include other IP rights. This Rule not only has the credibility afforded by the fact that it has been agreed by the Preparatory Committee of the UPC Member States, but these countries (including ones with a common law and ones with a civil law tradition) are also likely to be party to an international treaty. Also it addresses two features of importance: i. That Rule 287.2 embraces explicitly in-house practitioners (important because in large companies a high proportion of priority patent applications and infringement opinions – which are surrounded by communications especially requiring privilege – are drafted by in-house practitioners). ii. That in Rule 287.7 it embraces specifically practitioners who are recognised not necessarily by a single country but by an international treaty. It is worth noting also that Rule 288 (see below) deals with litigation privilege, which is an important complement of attorney client privilege. Rule 287 – Attorney-client privilege 1. Where a client seeks advice from a lawyer or a patent attorney he has instructed in a professional capacity, whether in connection with proceedings before the Court or otherwise, then any confidential communication (whether written or oral) between them relating to the seeking or the provision of that advice is privileged from disclosure, whilst it remains confidential, in any proceedings before the Court or in arbitration or mediation proceedings before the Centre. www.cipa.org.uk

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2. This privilege applies also to communications between a client and a lawyer or patent attorney employed by the client and instructed to act in a professional capacity, whether in connection with proceedings before the Court or otherwise. 3. This privilege extends to the work product of the lawyer or patent attorney (including communications between lawyers and / or patent attorneys employed in the same firm or entity or between lawyers and / or patent attorneys employed by the same client) and to any record of a privileged communication. 4. This privilege prevents the lawyer or patent attorney and his client from being questioned or examined about the contents or nature of their communications. 5. This privilege may be expressly waived by the client. 6. For the purpose of Rules 287 and 288: a. the expression “lawyer” shall mean a person as defined in Rule 286.1 and any other person who is qualified to practise as a lawyer and

PRIVILEGE

to give legal advice under the law of the state where he practises and who is professionally instructed to give such advice. b. the expression “patent attorney” shall include a person who is recognised as eligible to give advice under the law of the state where he practises in relation to the protection of any invention or to the prosecution or litigation of any patent or patent application and is professionally consulted to give such advice. 7. The expression “patent attorney” shall also include a professional representative before the European Patent Office pursuant to Article 134 (1) EPC. Rule 288 – Litigation privilege Where a client, or a lawyer or patent attorney as specified in Rule 287.1, .2, .6 and .7 instructed by a client in a professional capacity, communicates confidentially with a third party for the purposes of obtaining information or evidence of any nature for the purpose of or for use in any proceedings, including proceedings before the European Patent Office, such communications shall be

Privilege, CIPA/ITMA CPD webinar Monday 11 July 2016 • £54 / £36 (members) • Speaker: Michael Jewess The legal privilege accorded to communications between attorney and client can be vital in IP litigation in those countries that have ‘discovery’ (‘disclosure’ in English courts). The possibility of documents that are damaging to a client’s case being discovered during litigation has to be borne in mind in all communications affecting IP. Privilege from the earliest communications (long before litigation is realistically in prospect) is vulnerable in a sea of intersecting, and often unclear, national provisions variously denying attorney-client privilege outright or requiring discovery in litigation of information that is protected at home. This webinar will review client-attorney privilege, consider the implications for the UK practitioner, and look at the practical steps that can be taken to avoid unhelpful discovery. It will cover the full range of IP practice, the limitations on privilege for communications with patent and trade mark attorneys compared with solicitors, and the position of inhouse practitioners. The webinar will focus particularly on discovery by the US courts, which is for many clients of most practical importance. For more information see the CIPA website or email cpd@cipa.org.uk

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privileged from disclosure in the same way and to the same extent as provided for in Rule 287. Question 2: What advice should be covered by the agreement? • What definition should be used to ensure that the advice covered is defined sufficiently clearly? Answer: Legal advice in relation to obtaining, maintaining, mananging and exploiting IP should be covered, as well as advice in relation to enforcement of one’s own IP or clearance of third party IP – see above under Part A, Q1. However, that is not sufficient. Information which is gathered from third parties for this purpose should also be privileged. By that we include searching which is carried out by external searchers in order to inform the advice or the obtaining of IP protection, work done in relation to translations and communications with those having technical expertise – see above under Part A, Q1. It is not just the file which relates to the specific court proceedings which should be privileged, but also the advice sought to obtain or challenge the relevant IP right whether in that country or elsewhere. It should not matter whether disclosure of that advice would be detrimental or positive to the person who relies on the privilege. Question 3: Should there be a provision in the agreement that stipulates a certain flexibility for the participating countries? Answer: There should be certain agreed minima, which enables lawyers to know that certain communications will remain privileged around the world. If some countries wish to make further communications privileged, then that flexibility should remain. Also, in order to allow the law to develop, there needs to be some flexibility in the arrangements. Additional provisions can be made with respect to documents relating to civil cases which might involve fraud or criminal or organised crime. APRIL 2016

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Foundation level examinations Readers may remember that IPReg launched a “Consultation on simplifying and modernising the examination system for qualifying as a patent attorney” in late 2013. Part of that consultation was a proposal to: “[r]equire all trainee patent attorneys to pass an accredited examined Foundation level course and no longer accredit Foundation level examinations which are provided independently of corresponding accredited courses” [emphasis added]. IPReg received lots of responses to its consultation, including a detailed response from the Informals (see Yellow Sheet blog entry posted on 5 March 2014). The IPReg Board then commissioned a report to inform IPReg’s thinking about next steps. IPReg received the report in summer 2015 and shared a paper copy of the report with the Informals Committee in November 2015. IPReg also gave the Committee a briefing note providing profession-focused context for the report (see Yellow Sheet post of 8 January 2016 for more information). IPReg invited the Informals Committee to comment on the report. Set out below are the comments the Committee sent IPReg after conducting a survey of trainee patent attorneys. The results of the survey (which are reproduced on page 21) were also sent to IPReg.

Informals Committee’s comments on report commissioned by IPReg Throughout these comments, the term “Foundation qualification” means the qualification achieved by an individual who passes either (i) all of the Foundation Certificate examinations run by the Patent Examination Board (PEB) or (ii) one of the postgraduate IP courses provided by Bournemouth, Brunel and Queen Mary universities. Introduction The Informals Committee is pleased to have been invited to comment on the UCL/Institute of Education (UCL/IoE) report that IPReg commissioned following the “Consultation on simplifying and modernising the examination system for qualifying as a patent attorney”. The Committee hopes that IPReg will involve the Committee in further discussions about the Foundation qualification, so that the views of trainee patent attorneys, as principal users of the qualification system, can be represented in such discussions. The Committee welcomes a review by IPReg of the Foundation qualification 18

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for patent attorneys. In particular, the Committee welcomes a review which might lead to improvements in the standards of the Foundation qualification. The Committee hopes that any such improvements would give patent attorneys and the clients they serve even greater faith in the attorneys’ abilities to do their jobs effectively. Whether or not improvements are made to the Foundation qualification, the Committee firmly believes that the Foundation Certificate examinations run by the PEB should be retained, as set out in detail in the Committee’s response dated 5 March 2014 to IPReg’s consultation. The following comments on

the UCL/IoE report are intended to be consistent with that belief. The comments are also intended to be constructive. The comments are not intended to be exhaustive, as the report is 35 pages long.

The report and the briefing note In the Committee’s opinion, the report provides a useful insight into academics’ current thinking about learning practices. The report describes how approaches to learning have changed in recent years, which helps the reader imagine how one might change the Foundation qualification to be more consistent with modern practices. www.cipa.org.uk

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What the report is lacking, from the Committee’s perspective, is a clear statement about exactly what (if anything) is wrong with the Foundation qualification (in particular the Foundation Certificate examinations) and a corresponding recommendation for what should be done about it. The Committee also has the following observations on some statements made in the report and the accompanying briefing note.

Briefing note On page 1 of the briefing note, it is stated that: “IPReg can be assured about the teaching and assessment processes in HE (including the PEB) as these are assessed independently by the national Qualification Assurance Agency (QAA). The exam-only route does not at present have any such QAA monitoring of what training the trainees may receive or what is taught.” The Committee finds these two sentences confusing. The first appears to state that the teaching and assessment processes of the PEB are assessed by the QAA, while the second sentence appears to state that they are not (the “exam-only route” referred to is provided by the PEB). The Committee would be grateful for clarification of what was meant. On page 1 of the briefing note, it is also stated that: “Further, the exam-only system for patent attorneys is an outlier compared to other legal professions.” The existence of an outlier can sometimes suggest that a review might be appropriate. However, it is not on its own an indication that change is required. An objective and comprehensive comparison of the outcomes of the different assessment systems would need to be conducted before anything conclusive could be said about the “outlier” nature of the exam-only system for patent attorneys.

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at either Queen Mary’s, Brunel or Bournemouth universities. The remaining participants (N=25) sit the exam-only route. The provision at Bournemouth is delivered online.” The Committee understands from IPReg’s letter of 18 November 2015 to the Informals Honorary Secretary that the quoted number “N=25” of candidates sitting Foundation Certificate examinations is based on the 2012 data from the IPReg consultation document. However, there has been a significant increase since then in the number of candidates taking the Foundation Certificate examinations, with, on average, 36 candidates for each of the 2013 Foundation examinations, 38 for the 2014 Foundation examinations, and 52 for the 2015 examinations. This increase suggests that some firms are moving towards the Foundation Certificate examinations as a route to part-qualification, and perhaps valuing them more than the university courses. Indeed, the Committee notes that over 40% of those who responded to the Informals Committee’s survey discussed below had taken or planned to take the Foundation Certificate examinations. In view of the larger, and increasing, number of candidates taking the Foundation Certificate examinations since 2012, it is hard to consider it a “minority route”. Furthermore, for trainees who are not based in or within commuting distance of the South East, the Foundation Certificate examinations represent the only sensible option for achieving the Foundation qualification (the Bournemouth course is not delivered entirely online. It requires attendance at Bournemouth University on three weekends and for the examination, with additional support through distance learning1. It is therefore not a practical option for all trainees). Removing the Foundation Certificate examinations option would therefore, as noted in the Committee’s response dated 5 March 2014, make the patent attorney profession increasingly London-centric – to the detriment not only of would-be attorneys who are forced to move to London or nearby 1. https://www1.bournemouth.ac.uk/study/ courses/pg-cert-intellectual-property

to get a trainee position but also of people seeking patent attorneys’ services in the rest of the country.

Survey, January 2016 The Committee inferred from the references in the report and the briefing note to “formative feedback” (e.g. on report page 1), “formative assessment” (e.g. on report page 2) and “exam-only route” (e.g. on report page 1) that the absence of formalised “formative assessment” from the Foundation Certificate examinations is a cause of concern for the authors of the report and IPReg. The Committee therefore decided to ask Informals members what they thought of the idea of introducing formative assessment into the Foundation Certificate examinations. The Committee devised a short survey on the topic and invited Informals members to reply. The survey questions and the responses the Committee received are summarised in the attached annexe [see page 21]. Since neither the report nor the briefing note included a definition of “formative assessment”, the Committee included the following words in the instructions to survey respondents: “‘Formative’ or ‘continuous’ assessment is assessment which gives the learner feedback during the learning process. Essays, presentations, group discussions and modular written or oral tests can be used for formative assessment.” That wording is based on the Committee’s understanding of “formative assessment”. The Committee would, however, welcome a definition from IPReg. The survey results [page 21] come with the usual caveats about anything statistical and anything opinion related. Although over 200 people began filling in the survey, not all of them answered all of the questions. Furthermore, although the survey was sent to all “student” and “associate” members of CIPA via email and advertised several times on the Committee’s blog, the Committee cannot guarantee that the respondents constitute a representative sample of all trainee patent attorneys in the UK. The survey questions were also, inevitably, imperfect. The results of the survey should APRIL 2016

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therefore be treated with caution. Nevertheless, the Committee was pleased with both the number and the detail of the responses. The Committee hopes that the results will provoke further dialogue about the Foundation qualification and what changes, if any, could/should be made to the Foundation qualification. Most of the Committee’s concerns about the idea of introducing formative assessment into the Foundation qualification are covered in the survey results. However, the Committee feels the following points to be of particular importance: •

•

Some trainees already receive excellent “formative assessment” as they carry out their day-to-day work under the supervision of one or more qualified attorneys. Forcing those trainees to complete additional work and have it marked would lead to unnecessary workload increases for the trainees and the supervisors. The attached survey results show that 70% of respondents thought supervision for their day-today work (not supervision for examfocused tutorials) did/would have a positive impact on their learning of the Foundation syllabuses. Trainees who currently receive poor supervision for their day-to-day work are unlikely to receive adequate feedback from their supervisors for successful formative assessment. These trainees should not be disadvantaged by the introduction of formative assessment into the Foundation qualification. Some trainees work in firms or teams that do not do certain types of work (such as trade mark prosecution); those trainees may therefore be unable to complete formative assessment relating to particular areas of the syllabuses. Some trainees (e.g. those who are parents or carers, or those who would need to travel to another town or city in order to complete formative assessment) may find an ongoing formative assessment burden too difficult to fit in around work and other commitments. The Queen Mary course consists of a term of lectures followed by exams. It therefore relies exclusively

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on summative assessment. This was commented on in the Informals’ survey, with one respondent noting that there is no formative assessment in the QM course and that QM would benefit from some sort of formative assessment. The Committee would therefore welcome an objective comparison of the different routes to Foundation qualification to identify which of the current routes include formative assessment, what format that formative assessment takes, and whether it is effective in helping candidates learn the syllabuses. For these reasons and the others mentioned by trainees in their responses to the survey (attached), the Committee urges IPReg to consider carefully the impact of any possible changes to the Foundation qualification before making any firm decisions. As noted above, the Committee hopes that IPReg will include the Committee in further discussions about the Foundation qualification, so that the views of trainee patent attorneys can be represented in such discussions.

Conclusion The Informals Committee is grateful to IPReg for the opportunity to be involved in considering the future of the Foundation qualification. The Committee has provided comments above about the report that IPReg commissioned. Furthermore, the Committee has conducted a survey of Informals members to try to establish what general attitudes are, among trainee patent attorneys, towards the idea of formative assessment. The results of that survey are attached as an annexe [see page 21]. The Committee looks forward to further dialogue with IPReg in due course. If IPReg has any questions it would like to ask the Committee, IPReg is encouraged to contact Informals Honorary Secretary Ben Charig (cipainformalshonsec@gmail.com) and Informals Education Coordinator Miranda Kent (miranda.kent@hotmail.co.uk). Ben Charig and Miranda Kent On behalf of the Informals Committee 2015-2016, 31 January 2016

Second medical use patents Wednesday 18 May 2016 • £117 / £97.20 (members) • Speakers: Jonathan Stafford and Trevor Crosse, Marks & Clerk Solicitiors LLP An insight into the patentability and enforcement of second medical use patents in the EPO and English courts, covering the following topics: •

•

Patentability of second medical use claims at the EPO and the interpretation and enforcement of such claims, including discussion of the decisions that have shaped this area of the law. The standard of evidence required by the EPO in support of second medical use claims, including a review of the origins of the requirement for plausibility / credibility and examples of cases where the necessary standard was, or was not, considered to have been met. The rapid propagation of the requirement for plausibility into all aspects of English patent law, focusing particularly on the sufficiency of second medical use claims and including a discussion of the key English cases that culminated in the recent decision of Carr J in Actavis v Eli Lilly. Where both the EPO and the English courts have arguably gone wrong in relation to the standard of evidence for second medical use claims, the difficulties faced by applicants in knowing when to file, and the practical steps that can be taken to maximise the prospects of obtaining a valid second medical patent. For more information see the CIPA website or email cpd@cipa.org.uk

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Results of the Informals’ Education Survey on “Formative Assessment” – January 2016 Introduction These are the results of a survey the Informals Committee conducted over the period 8-18 January 2016 in response to the Institute of Education (IoE) / UCL report IPReg shared with the Informals Committee in November 2015. The survey was intended to gather the views of the student members of CIPA, whom the Informals Committee represents, in particular in relation to “formative assessment”, as discussed in the IoE/UCL report and the accompanying IPReg briefing note. Please note that the Informals Committee did not share the IoE/UCL report with the Informals community at large. Instead, having reviewed the report, the Committee tried to collect the views of student members on the topics outlined in the report. The IPReg briefing note on the report was shared with all Informals members via the Informals’ Yellow Sheet blog. Since there could be some ambiguity about what the term “formative assessment” means, for the purpose of the survey it was summarised in the following way: “Formative” or “continuous” assessment is assessment which gives the learner feedback during the learning process. Essays, presentations, group discussions and modular written or oral tests can be used for formative assessment.

Q2. This question asked respondents which route they will / did take to part-qualification. 215 respondents answered this question.

Results

Q3. This question asked respondents what impact they thought the inclusion of “formative” or continuous assessment would have on their learning of the syllabuses. 182 respondents answered this question.

The survey comprised 11 questions designed to determine respondents’ opinions on ”formative assessment”, as identified in the report shown to the Informals by IPReg in November 2015. By the close of the survey period, 217 people had responded. Q1. This question asked respondents to select their level of qualification. All 217 respondents answered this question.

Responses

University course (e.g. Queen Mary, Bournemouth or Brunel certificate in IP law) Foundation exams (including any exemptions)

58.60% (126)

40.93% (88)

I am not planning to take UK patent qualifications

0.47% (1)

Total

215

Responses

Positive impact

39.56% (72)

Responses

Negative impact

30.22% (55)

No professional qualifications

34.10% (74)

Neutral

30.22% (55)

Part qualified (passed the Foundation exams or an equivalent, such as the Queen Mary, Bournemouth or Brunel certificate in IP law) 47.93% (104) Single qualified (UK only)

0.92% (2)

Single qualified (EQE only)

10.14% (22)

Dual qualified (UK and EQE)

6.91% (15)

Total

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182

Respondents were also asked for the reasons behind their answer, to which 102 responded. These comments are broken down into general reasons, based on recurring themes appearing in the feedback. Many respondents provided multiple reasons (positive and/or negative) for their opinion and these are counted separately.

217

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Q3: Reasons the effect of formative assessment would be POSITIVE

Responses

Spread learning over longer period (which may provide better long-term retention of knowledge) 16 Better reflection of day-to-day work of a patent attorney than exams

Reduced pressure/stress compared to exams

Gives deeper understanding of law / provides context

Standardise training (across firms / between university course & foundation routes)

Guidance and feedback helpful (e.g. to address problems – with student or teacher – earlier)

Fairer for those less suited to exams (e.g. those who perform better at coursework)

Reinforce learning

EXAMINATIONS

Q3: Reasons the effect of formative assessment would be NEGATIVE

Responses

Too much time off work (delays learning how to do the job, concerns about fitting in enough chargeable work and firms being unwilling to allow time off)

Supervision for day-to-day work of a patent attorney already provides adequate (and more relevant) feedback

Would increase workload and stress throughout year

Greater barrier to entry as reduces flexibility (e.g. fitting studying around other requirements, travelling to assessments)

Exams necessary for rigorous qualification (e.g. controlled conditions, force students to learn syllabus)

Hard to ensure consistency of provision and / or assessment between different firms

Particularly useful for those topics which do not need to be retained in detail for the job of a patent attorney (e.g. trade marks, English law)

Would delay career progression or force trainees to begin assessment too early in career

Opportunity for discussion with peers and / or tutors

University courses not relevant to job of patent attorney (i.e. too academic)

Learning alongside work (i.e. without time off to attend a course) is beneficial

Memorising the law is required to some extent for job, which can only be tested through exams

Removes chance/luck element to exams

High cost of attending courses (cost of courses themselves, travel to courses, etc)

Cannot compare patent law to other legal professions

Exams better reflection of work of a patent attorney than continuous assessment

Merely formalises assessment that occurs anyway in course of day-to-day supervision

Q3: Reasons the effect of formative assessment would be NEUTRAL

Responses

Depends on how it is implemented and what forms of assessment are used Would eventually have to retain knowledge for Finals exams in any case

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Modular assessment leads to learning to test, rather than learning for long-term retention of information 1 7 Current provisions adequate (e.g. JEB exam preparation and university courses)

Stress of exams is useful training for what is a stressful career

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Many respondents (16) thought formative assessment would be beneficial because it would spread learning over a longer period, which can lead to better long-term retention of knowledge. Others (11) thought that formative assessment could be set up to better reflect the day-to-day work of patent attorneys. One person mentioned that formative assessment would be positive because the Foundation exams require a lot of book-learning, but there is no dedicated book so it is difficult to identify what to learn. One respondent thought that formative assessment could ensure a grasp of every topic rather than “targeted” learning for an exam where it isn’t usually possible to cover everything. Interestingly, another respondent mentioned that their firm had introduced some assessment in preparation for the foundation exams, which they found helpful. One person who had been on the Queen Mary (QM) course questioned why the format of the foundation exams needed to be changed when the QM course has no “formative/continuous assessment” element to it (simply being a term of lectures followed by exams) and yet is considered sufficient. One ex-university lecturer commented that in their experience continuous assessment is widely abused and examinations are the only way in which it is possible to ensure that the work is all that of the student. Another respondent commented that it is unlikely that a better quality of trainee would be produced by continuous assessment. Many respondents (11) were concerned formative assessment could create a greater barrier to entry, in particular because they thought it would be less flexible, involve more travelling to assessments/courses, and require studying outside of work for a longer period. One person raised the concern that, particularly for patent professionals who are more advanced in their careers, e.g. already fully qualified in a foreign jurisdiction, any additional assessment beyond mere written exams means less flexibility and more constraints on daily routine, which need to be balanced with day-to-day work. Of those who gave reasons for believing formative assessment would have a neutral effect, most wrote that it depended on the form

Q4: Essays Provide critical analysis skills essential for patent law

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the formative assessment took. Examples were sometimes given, with several mentioning that essays would be beneficial for their learning and one person indicating the incorporation of distance learning would be helpful. One person also commented that continuous assessment would work well if it was set up at a rate that matched the natural progression of learning on the job. Two people thought that presentations would not be beneficial to their learning. An “I don’t know” option may have been useful for this question. Q4. This question asked respondents which type of formative assessment they would find / would have found beneficial for learning as part of the Foundation exams. Respondents could select all answers that applied. 148 respondents answered this question. Q4

Responses

Essays

42.57% (63)

Presentations

31.08% (46)

Group discussions

49.32% (73)

Written modular tests

64.86% (96)

Oral modular tests

24.32% (36)

Other

14.19% (21)

Total

148

Respondents were also asked to comment on the reasons for their answer. 60 respondents provided comments. Again these comments are broken down into general reasons, based on recurring themes appearing in the feedback. Where respondents provided multiple reasons for their opinion these are counted separately.

Positive responses

Negative responses Would not test legal knowledge and skills sufficiently

Dull and time consuming

Detailed analysis of one topic

Most trainees (as scientists) do not have essay experience

Subjectively marked

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Q4: Presentations

EXAMINATIONS

Positive responses

Positive if “presentation” refers to lectures

Negative responses Too much focus tends to be on presentation, rather than material

Would not test legal knowledge and skills sufficiently

More stressful than written tests

Q4: Group Discussions Useful if in form of tutorials (i.e. learning, not assessment)

Would not test legal knowledge and skills sufficiently 5 7 Waste of time

Difficult to fit into working life

Unfair form of assessment

More stressful than exams at end

Should not count towards final mark

Inconvenient if required travelling

Formative assessment would not be helpful

Frequent travelling would be inconvenient

Formative assessment would be less practical than exams

Modular learning promotes cramming, not retention of knowledge

Q4: Written Modular Tests Spread testing (and therefore learning) over longer period

Open book tests would be useful for testing skills rather than knowledge

“In-tray” test would test skills of job

Q4: Oral Modular Tests Spread testing (and therefore learning) over longer period Could provide better assessment of understanding than written tests

Q4: General Varied set of skills required for job, so variety of testing makes sense

All of the above would be useful

Formative assessment would be more practical than exams

Queen Mary would also benefit from above options 1

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Q4: Other forms of assessment

Positive responses

EXAMINATIONS

Q6 asked respondents how they felt supervision for day-to-day work had affected / would affect the learning of Foundation exam syllabuses. 163 respondents answered this question.

Review of day-to-day work (e.g. portfolio review)

Answering past papers

e-learning

Supervision for day-to-day work had/will have a positive effect on my learning. 69.33% (113)

Reading the material

Two respondents also noted that they thought the question was biased. One interesting answer suggested an “in-tray” exercise supporting P1 and/or P5 would be useful, to be taken during the first year in the profession, in which the candidate is handed a pile of files, each with various problems. The candidate would need to spot and repair procedural problems in the files, demonstrate that they can renumber claims in a complex claim-tree, comment on a set of overseas instructions (example tasks). The exercise would be discussed with moderators. Perhaps a pass/fail concept would not be useful or fair, owing to the relatively uncontrolled nature of the exercise, but comments given in a brief, non-binding “school report” format could work. It could perhaps be administered by regional CIPA groups / recently retired attorneys. This proposal has the advantage that it would tests skills, which are directly applicable to the day-to-day job, and could highlight deficiencies in training at an early stage in the job to enable improvement. Q5. This question asked respondents how many hours of supervision they receive(d) for their day-to-day work on average per week. 160 respondents answered this question.

Responses

Supervision for day-to-day work had/will have a negative effect on my learning.

1.23% (2)

Supervision for day-to-day work had/ will have no effect on my learning.

21.47% (35)

I don't know

7.98% (13)

Total

163

The vast majority of trainees (nearly 70%) thought that supervision for day-to-day work (not just exam-focused tutorials) would have a positive impact on their learning of the Foundation exam syllabuses. Respondents were asked to give reasons for their answers. 57 respondents gave reasons. These comments are again broken down into general reasons, based on recurring themes appearing in the feedback. Where respondents provided multiple reasons for their opinion these are counted separately. Q6

Positive responses

Practical work helps to understand the law in context

Responses

0.625% (1)

1-2

33.13% (53)

The feedback is helpful, especially to ensure content is understood correctly

3-4

35.63% (57)

Provides an opportunity to ask questions

5-6

20.00% (32)

Day-to-day work is directly relevant to foundation syllabus / exams closely reflect job

7-8

5.00% (8) Reinforces syllabus content

9-10

2.50% (4) Job scenarios similar to what comes up in exam

>10

3.13% (5)

Negative responses Total

160

*although there was no zero option in the survey, one respondent noted this in response to the next question Volume 45, number 4

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No effect

Foundation exams have little relation to job

Some Foundation exams not relevant to day-to-day work (e.g. P5 / competition)

Most of day-to-day work is European (or US)

EXAMINATIONS

Q8 asked respondents what percentage of the final Foundation exam mark should come from formative assessment. 158 respondents answered this question. Q8

Responses

1-10%

25.32% (40)

11-20%

14.56% (23)

21-30%

25.32% (40)

31-40%

17.09% (27)

41-50%

11.39% (18)

>50%

6.33% (10)

I don’t know Depends on supervisor

No supervision while taking foundation exams

Takes time away from fee-earning work

Total

158

The most commonly given reason that supervision did not positively affect learning of syllabuses was that day-to-day work was not relevant to the exams. In particular, some respondents noted that patents only make up a small portion of the Foundation exams, with Trade Marks, English Law, designs and copyright (subjects of the other exams) rarely being encountered in day-to-day work.

It seems clear that very few respondents felt exams should be entirely replaced by formative assessment, with over 50% of respondents considering 30% or less to be a suitable weighting for formative assessment. See also question 10.

Q7 asked respondents to consider, if they were to receive tuition for Foundation exams, how many hours of examrelated tuition they would like each week. 157 respondents answered this question.

Q9 asked respondents how they would prefer formative assessment to be arranged, if it were to form part of the Foundation exams. 156 respondents answered this question.

Responses

I would not want tuition

11.46% (18)

17.83% (28)

Concentrated in a short period (e.g. 1-2 months) immediately before the main Foundation exams

19.23% (30)

43.31% (68)

3-4

18.47% (29)

Spread out over a longer period (e.g. 3-6 months) immediately before the main Foundation exams

38.46% (60)

5-6

5.10% (8)

7-8

2.55% (4)

9-10

1.27% (2)

Total

157

Throughout the year (e.g. every 2, 4 or 6 months) Total

42.31% (66) 156

43% of respondents considered two hours’ tuition a week to be the optimum. Roughly 18% of respondents selected either one hour a week or three-four hours a week. 26 CIPA JOURNAL

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Q10 asked respondents what format of formative assessment they thought they would find most useful for their learning. 145 respondents answered this question.

Q10 Formative assessment entirely replacing the main exams

Responses

9.66% (14)

EXAMINATIONS

Q10: Cover certain parts (continued)

Responses

Reduces volume of material learnt for exams (reduces stress, less revision leave from work, improves retention of material)

Seems pointless to duplicate testing or to penalise lack of knowledge more than once

Formative assessment covering certain parts of the syllabuses and leaving other parts of the syllabuses to be covered in the main exams 31.72% (46)

Would be beneficial to remove more formal parts of procedural law from exams to allow more discussion 2

Formative assessment covering the same material as the main exams, to help prepare for the main exams 58.62% (85)

Follow LPC solicitor qualification which has research-based course work, group work, group tutorials, written exams and an oral assessment

Keep patents exams and allow coursework for English Law, Trade Marks, Copyright, etc

Total

145

Cover same material

Respondents were then asked to comment on why they gave that answer and whether they would find one of these formats better than the exam-only system for managing learning alongside other commitments; 69 respondents left comments. These comments are again broken down into general reasons, based on recurring themes appearing in the feedback. Where respondents provided multiple reasons for their opinion these are counted separately.

Q10: Reasons formative assessment should entirely replace the exams

Responses

Would help to compound / reinforce material learned

May reduce revision time if already learned through formative assessment

Job requires knowledge of everything at once – exams should reflect this

Exams and formative assessment are a different approach

Exams are not reflective of ability to perform job

If really necessary, formative assessment and exams should work together for complete understanding 1

Spreading learning over longer period is more effective for retaining knowledge

Could ensure all aspects of syllabus are covered (limited coverage in exams)

Hard to juggle coursework with revision

Easier to manage time away from work

Foundation exams good preparation for Finals (e.g. P2/FD1)

Too many exams required to gain qualification

Use formative assessment to cover topics that are important but not on syllabus

Would provide good feedback to allow students to identify and concentrate on weaker areas for revision

Keep formative assessment within three months of exams so don’t need to use free time for entire year

Cover certain parts Some elements more suited to formal exams (e.g. deadlines which must be retained for job) Formative assessment provides deeper understanding and puts law in context

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INFORMALS

Q10 (continued) No formative assessment*

Responses 16

Formative assessment would be less flexible and would spread out the period during which study outside work is required 8 Barriers such as family commitments, travel, etc would make extended period of weeks / weekends away from home or evenings and weekends studying throughout year difficult

A few JDD-type revision courses before exams would be sufficient

Abolish all formative assessment and foundations – just keep on-the-job training for finals

Formative assessment does not test ability to do job as well as exams do

Coursework devalues rigour of exams

Since it is a stressful profession, candidates should be able to handle pressure of exams

Others in profession know what time of year to decrease patent workload due to assessment – would be harder if throughout year

Already have sufficient formative assessment in on-the-job feedback / supervision

*This question should have contained a “no formative assessment” option, as many respondents (16) wrote this in their answer. All of those respondents had picked the last option (cover same material). For example one comment began “ideally none, but if it is to be forced upon us for the sake of better teaching…” One respondent commented that, if formative assessment were implemented, it should be structured so that it is still realistically possible to pass the Foundation qualification in one year. One respondent suggested formative assessment be made voluntary. Another respondent stated that the Foundation exams seem peculiar in that exemption can be granted for some of them, but only certain accredited courses may grant these exemptions. This does not reflect the many and various ways in which a person may gather the experience to make them a capable patent attorney and therefore only serves as barriers to entry, where some providers seem to have a monopoly of the market. 28 CIPA JOURNAL

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EXAMINATIONS

Q11 asked respondents how much support they thought their employer might give them for their learning. 149 respondents answered this question.

Q11

yes

Total

Allowing you time off 44.06% for regular study (63) throughout the year (rather than only before specific exams / assessments)

55.94% (80)

143

Allowing you time off to 60.97% prepare for or complete (89) specific formative assessments which are part of the Foundation exams

39.04% (57)

146

31.91% (45)

141

Providing regular tutorials focused on formative assessment

68.09% (96)

Respondents were also asked to specify other support they thought their employer might give them. Ten respondents replied. One respondent indicated that as trainees were a burden to their firm until they become competent, it is in the interests of their employers to encourage learning and passing of the Foundation exams. One person thought their firm would provide tutorials if CIPA provided the material to be taught, while another thought their firm would be likely to provide tutorials for finals papers, but not foundation courses. One individual in a business environment (rather than private practice) found their education had less pressure and more support there than in private practice. Another respondent noted that in the legal profession the Solicitors Regulation Authority has introduced periods of recognized learning, as an alternative to the training contract, which sounds as though it could work in the patent attorney qualification. One respondent commented that as they are well paid to do their job, their firm would not be happy to let them take off more time, while another commented that in very small firms taking more days off can be very disruptive. In a similar vein, two people said their firms would expect them to use their holiday allowance if they needed to take time off for formative assessment. This question also seemed to attract a few slightly unrelated answers. For example, one person commented that the trade mark attorney training system is “a mess” and we should learn from this. Ben Charig and Miranda Kent On behalf of the Informals Committee 2015-2016 www.cipa.org.uk

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NEWS

EUROPEAN UNION

Leaving the EU is likely to have a negative effect on IP in the UK CIPA position on the UK leaving the EU, 23 March, 2016

emaining in the EU will guarantee the UK continuing to have access to EU-wide IP apparatus such as the EU trade mark and design rights and, vitally, the new Unitary Patent (UP) and Unified Patent Court (UPC). It will preserve the UK’s status as an influential contributor to these important international frameworks. The UP and UPC, set to begin operating within the next 24 months, will provide pan-EU patent protection and enforcement. Involvement in these systems, and the establishment of one of the key UPC divisions in London, will bring valuable opportunities to UK businesses, the professionals who support them and our economy as a whole. CIPA, as the UK representative body for IP practitioners, believes that: •

A Brexit could compromise the UK’s access to, participation in and influence over the world’s IP systems. This would not be good for either UK

•

or international IP, or for the role of the UK’s IP attorneys and IP users within the global IP system. Since the IP system supports and incentivises research, development and innovation in the UK, remaining in the EU should better benefit such activities and in turn their contribution to the UK economy. A Brexit is likely to have a detrimental effect on the current businesses of CIPA members and other IP professionals, and on their competitiveness, in particular in the European market. Since these businesses include significant service exports, their success also affects the UK’s export economy.

A Brexit would bring uncertainty and upheaval to the UK’s IP framework, a framework which is currently stable and well-functioning, global-facing and widely respected. IP rights are valuable commercial tools, their exploitation key to many business strategies and international

trading arrangements. IP also incentivises innovation and helps its products to flourish. CIPA urges the UK not to overlook, or indeed underestimate, the impact of the 23 June referendum on IP. The Chartered Institute of Patent Attorneys (CIPA) is the professional body which represents all the UK's Chartered Patent Attorneys and many other affiliated IP practitioners. Its members include over 2,000 Chartered Patent Attorneys, of whom most are also European Patent Attorneys. They assist both UK and overseas businesses in obtaining, exploiting and enforcing IP rights across the world, as well as in navigating the IP rights of their competitors. The above does not necessarily reflect the views of the Institute’s individual members or the businesses in which they practise. It does not imply support for any particular political party or for any particular outcome of the 23 June 2016 referendum, recognising that the referendum question also embraces issues unrelated to IP.

EQE tutorials: a “Thank You” from the Informals The Informals are heavily reliant on the generosity of volunteers to make their various events happen. Those volunteers include not only the members of the Informals Committee but also a number of other people who give up their time to support the Committee’s work. On behalf of the Informals, I would like to thank the following individuals, who volunteered as tutors for this year’s Informals EQE tutorials. Between them, they offered an impressive 39 tutorials, covering all seven of the EQE papers. Alex Rees of Olswang Andrew Brown of Pharmathen Chris Clarke of Vectura Deborah Hart of Kilburn & Strode Debra Smith of Mayfin IP Emily Weal of Keltie Gary Whiting of Danfoss

Hazel Ford of Finnegan Europe Jessica Smart of Keltie Joanne Addison of Haseltine Lake Julia Gwilt of Marks & Clerk Maja Schmitt of DSM Intellectual Property Marie Jansson of Olswang Martin Hyden of Finnegan Europe

Parminder Lally of TLIP Philip Lenden of Johnson Matthey Sarah Brearley of Mewburn Ellis Thomas Zvesper of Marks & Clerk Tim Belcher of EIP

If you are interested in volunteering as a tutor for the next set of Informals tutorials (which will be for the 2016 UK exams), please look out for an email later this year from Informals Tutorial Coordinator Sophie-Beth Aylett.

Ben Charig, Informals Honorary Secretary 2015-2016 Volume 45, number 4

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NEWS

DESIGNS

Trunki suitcase ruling clarifies design law CIPA press release, 10 March 2016

he court ruling that the famous Trunki ride-on suitcase has not been copied by a rival brings welcome clarity to design protection laws, say IP attorneys. The Supreme Court ruled that a rival product to the Trunki, called the Kiddee Case, was different enough in appearance for Trunki maker Magmatic not to be able to prevent its sale. The creator of the Trunki, Rob Law, has Tweeted to say he is “devastated” with the ruling, adding: “The law is meant to be about certainty. But this decision will create chaos and confusion among Britain’s design community”. A spokesman for the Chartered Institute of Patent Attorneys (CIPA) expressed great sympathy for Mr Law, but explained that the ruling was consistent with the current understanding of design law, and highlighted the important distinction between patents and registered designs. Professor David Musker, Chair of CIPA’s Designs Committee, said: “Patents protect inventions, so are

infringed by anyone who uses the same invention, whereas registered designs only protect what a product looks like. If a rival product is sufficiently visually different then the rights are not infringed. This case provides a very useful real life example to designers of how far registered design rights extend. The Trunki and the Kiddee Case have a similar overall design, but there are several important visual differences, and it is quite easy to tell the two products apart. Therefore, far from creating chaos and confusion, this ruling clarifies what kind of rights a registered design brings.” In giving the ruling, Justice Lord Neuberger explained that while the Trunki was a good invention, which was copied in the Kiddee Case product, that was not the issue at hand. He said: “Unfortunately for Magmatic this appeal is not concerned with an idea or an invention, but with a design.” He added that the visual design of the Trunki was “significantly different from

the impression made by the Kiddee Case”, and therefore Magmatic’s rights were not infringed. Professor Musker expressed his sympathies for Mr Law and added: “As any air traveller with kids will tell you, the Trunki is a fantastic British design, and it deserves protection against imitators. However, this case concerned Registered Community Design protection, which does not protect against copying of ideas, but only against imitations that look similar. The Supreme Court decision makes it clear that designers can use the intellectual property protection system to get broad protection, but only if they take care in how they go about protecting their ideas and product designs at the outset. Our advice to any designer with a valuable idea is – don’t do it yourself; before you disclose your valuable ideas and designs to anyone, seek professional advice from someone qualified, trained and experienced at getting you the best protection possible.”

ITMA Designs Seminar • The Trunki case 27 April 2016 • Gowling WLG, 4 More London Riverside, London SE1 2AU • £140 (ITMA members: £120) The ITMA Designs Seminar will provide a comprehensive review and analysis of a number of topical design law issues involving the key participants in the recent Supreme Court case involving registered designs for the Trunki suitcase. The barristers for each party, Mark Vanhegan QC for PMS, and Michael Hicks for Magmatic, will discuss the positions taken by the parties, and Nathan Abraham, Head of Examination Practice, Trade Marks & Designs at the IPO will explain why they intervened at the Supreme Court. The panel will go on to discuss what the case means for designers – including suggestions on how to approach the filing of designs in future, and what other lessons can be learned from Magmatic’s experience. Judge Hacon will discuss the best ways to present a design case in the IPEC, with reference to design cases heard in the past and the particular characteristics of the Court. For full details and to book please see http://www.itma.org.uk/calendar/event/view?id=123.

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NEWS

OVERSEAS • OFFICIAL

Overseas report Patents and trade marks UAE: The UAE Minister for Justice has announced that the UAE will be settingup dedicated court circuits to handle IP disputes. An IP court circuit has already been set up at the Federal Court of First Instance in Abu Dhabi, and further court circuits will now be established across the country. Korea: On 3 March 2016, the Korean National Assembly passed additional amendments to the Korean Patent Act. The amendments will come into effect three months after they are officially announced (probably towards the end of March). As a result of the amendments, it should be easier for a patentee to prove infringement or damage as materials can no longer be withheld from the court simply because the accused infringer claims they contain trade secrets. If there is a concern about potential trade secrets, the producing party may, however, request that the court limit the scope of materials to be produced or the persons allowed access to them. Further, the

court may presume the facts that the requesting party intended to prove based on the requested materials are true if the materials are not produced and the requesting party would otherwise have difficulty proving said facts.

International treaties Marrakesh Treaty (Access to Published Works for the Visually Impaired): On 2 February 2016, the Government of the Republic of Peru deposited its instrument of ratification of the Marrakesh Treaty. On 19 February 2016, the Government of the Democratic People’s Republic of Korea deposited its instrument of ratification of the Marrakesh Treaty. The date of entry into force of said Treaty will be notified when the required number of ratifications or accessions is reached. Beijing Treaty (Audiovisual Performances): On 19 February 2016, the Government of the Democratic People’s Republic of Korea deposited its instrument of ratification of the Beijing Treaty. The date of entry into force of said

Treaty will be notified when the required number of ratifications or accessions is reached. Hague Agreement (International Registration of Industrial Designs): On 13 January 2016, the Government of the Kingdom of Denmark deposited a declaration according to which it withdraws the declaration made upon ratification to the effect that, until further notice, the Geneva Act should not apply to the Faroe Islands. The said declaration will enter into force on 13 April 2016. Madrid Protocol (International Registration of Marks): On 13 January 2016, the Government of the Kingdom of Denmark deposited a declaration according to which it withdraws the declaration made upon ratification to the effect that, until further notice, the Protocol should not apply to the Faroe Islands. The said declaration will enter into force on 13 April 2016. Dr Amanda R. Gladwin (Fellow), GSK

IPO changes to the Manual of Patent Practice The main changes that have been incorporated into the April 2016 version of the Manual of Patent Practice are listed below. The updated table of changes can be viewed on the gov.uk website: www.gov.uk/government/publications/patents-manual-of-patent-practice. 1.15.1

Updated in light of Astron Clinica Ltd & Ors v The Comptroller General of Patents, Designs and Trade Marks [2008]

2.12.3; 2.12.3.1

Updated to clarify interpretation of “adapted to” and “constructed to”

2.21.1

In light of Unwired Planet International Ltd v Huawei Technologies Co Ltd & Ors [2015] EWHC 3366

3.30.3

In light of Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2015] EWHC 2548

17.120

Updated to clarify the circumstances where request may be made under section 17(8) for a further search

27.11

To remove reference to Enlarged Board of Appeal decision G 3/14

100.04

In light of Elektron Ltd v Molycorp Chemicals & Oxides (Europe) Ltd & Anor [2015] EWHC 3596

SPC sections

Updated in light of BL O/117/16

updated: SPM 3.02.6 SPM 3.03.1

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Six things we love about inventor meetings This month Gwilym Roberts focuses on what he loves (and hates) about inventor meetings

Six things we love

Speed patenting

We have all been doing patents for a while and we understand novelty, the Paris Convention, the PCT system, National/Regional phase, search and exam and so on. But to the uninitiated it is a strange mixed-metaphorical cross between a mine field, a labyrinth and a can of worms. Once you have explained it to the novice a few times, stepped on land mines, walked into hedges and squished worms, you tend to get your spiel a little more fluent, though, and the client nodding starts a lot earlier. Soon it becomes a challenge to see how quickly you can get all the relevant points about patenting strategy across and every now and then you get a new PB. What’s yours?

Free biscuits

There was a time when, if your client meeting was coming up, you would scuttle round your office putting pieces of underwear (yours) in drawers and putting all of your files neatly into one teetering pile, because a client was coming in and you would meet him in your room. You would check that your screen saver wasn’t inappropriate, remove any rude post-it notes colleagues had amusingly plastered on available surfaces, tighten your top button and welcome them in. Now you probably have a glitzy meeting space with six different types of charging points and ergonomic chinrests. Best of all though, it’s been decided that client care extends to a tempting variety of chairs and ethically sourced biscuits. In your mind you mock the client when you catch them furtively pocketing the oat cakes – but don’t deny you’ve borrowed a few for your desk too.

When it’s a good one

Over the years, one encounters a range of innovations of varying legal and commercial potential crossing one’s desk. A cocktail party question that patent attorneys always get asked is “what’s the best patent you did?” and the answer, depressingly, is usually getting a genuinely trivial concept past an examiner by great advocacy. A lot of innovations we see are commercially important, entirely patentable, but not very exciting because the insides of machines seldom are. But occasionally you do get a stimulating one – one that’s interesting, exciting or just… important. Next up, your wariness kicks in and you glance through the disclosure for one of: • any hint of perpetual motion, • a magnetic monopole, or • an anti-gravity mechanism or something called something like a boson-resonant energy extractor. Then you ask about the inventor’s background, and if they answer something like “Professor of Engineering” rather than “I have always enjoyed watching Scrapheap Challenge™” you can start getting properly engaged in something rather worth patenting.

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SIX THINGS WE LOVE

When you make the inventors happy

There are various ways this can happen. If the technology is one you know and love then you can start having a peer-to-peer discussion very quickly and the inventors tend to love the buy-in. This next one cuts both ways, but sometimes when you give them your estimate for preparing and filing a patent application they look pretty relieved, especially if they have been dealing with professionals from other areas of the legal spectrum in the past. Harking back to No. 3, sometimes you are genuinely interested in what they have come up with and if they are looking for consumer feedback that goes down very well. Projecting forward, when you start to get positive responses and indications of patentability, this brings great joy but this is usually tempered with the patentee’s enormous fear the first time they see a Search Report and it has all those ominous X citations. Unfortunately, sometimes our job is to make the inventors unhappy – a good meeting is not one where they come out smiling because they heard everything they wanted to hear on the day, but where they have food for thought about whether patent attorneys is where they want to direct their hard-earned cash.

INVENTOR MEETINGS

When you get it

We are jacks of all trades – if you’re lucky enough to come across an invention perfectly aligned with your PhD or personal interests (see 6) and you really want to know how it works, and then it clicks, you’re probably having the moment your careers adviser was talking about when they set up your job interviews.

When it’s a funny one

This author has just had the best patent application in his 25-year career, which has brought joy to him, his colleagues and, within the confines of non-disclosure, various dinner parties. The CIPA Journal is not the place to go into detail, but let us just say the typographical error of replacing “frustoconical” with “thrustoconical” was not only entertaining but gloriously pertinent. Some inventions light up your life. Gwilym Roberts (Fellow) is a partner at Kilburn & Strode LLP

And the one thing we hate… Especially for the private inventor, their creation is intensely personally important to them. They are part euphoric about the changes it will wreak on the world, partly terriﬁed that somebody already thought of it. At least when it turns out that their concept has already been dreamt up by a third party you can provide solace by pointing out that this just means it was a good idea that someone else had ﬁrst. More painful is the reality check of appreciating the difficulties of getting from a great idea to a successful product and nothing is more upsetting, at the end of a meeting mostly imparting commercial hurdles, than seeing the inventor with strained face saying, dishonestly but bravely, “I thought you would say something like that”. That’s the sad bit of the job.

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Access to Global Dossier US catches up with Europe: USPTO unveils access to Global Dossier. By the Finnegan team.

t the end of last year, the United States Patent and Trademark Office (USPTO) launched its Global Dossier Public Access, the USPTO’s user interface to the Global Dossier.1 The Global Dossier is a set of business services intended to integrate and modernize the global patent system, providing access to examination information for applications in several patent offices worldwide.2 Global Dossier Public Access is the USPTO’s user interface, similar to aspects of esp@ce.net, that gives the public access to some of the information available on the Global Dossier.

Global Dossier and Global Dossier Public Access – what is it? The European Patent Office (EPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), the State Intellectual Property Office of the People’s Republic of China (SIPO), and the USPTO otherwise known as the IP5 Offices developed the Global Dossier with input from IP5 Industry Members3 and the World Intellectual Property Organization (WIPO).4 Each of the IP5 members is creating its own user interface to provide: “a secure point of access for the management of dossier and examination information, enabling and encouraging streamlining of office procedures among different IP Offices.”5 Since 2014, Esp@ce.net facilitated access to the Global Dossier.6 In the United States, USPTO examiners beta-tested the Global Dossier beginning in the spring of 2015, and the USPTO unveiled its Global Dossier Public Access interface for all users on 20 November 2015.7

What does it do? Global Dossier Public Access has impressive features. From the home page, a user can search for an application in three easy steps: 1. selecting the patent office (USPTO, EPO, JPO, KIPO, or SIPO); 2. identifying the type of patent document (application, pre-grant publication, or patent); and 3. entering the document number. 34 CIPA JOURNAL

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After the user keys “Enter,” the results are listed and include the electronic file for not only that application or patent, but all of the electronic files of related applications and patents from the other IP5 offices. Much like Esp@ce.net’s “INPADOC Patent Family” link, Global Dossier Public Access users can view the entire patent family for an application or patent by adding the “Non-IP5 Offices” to the basic search results. Global Dossier Public Access allows a user to download that entire family list. For applications from the IP5 offices, by selecting “view dossier,” a user can peruse the electronic file for an application. For English-speaking users who want to access a Japanese file, for example, Global Dossier provides easily-accessible translations directly in the electronic file. The Global Dossier Public Access “view dossier” option is far more user-friendly than the USPTO’s Patent Application Information Retrieval System (PAIR) system. In it, documents can be sorted by title or date. Thus, for example, sorting by title will arrange all of the Office Actions in one easy-to-access list. Selected A preview window enables users to scroll through the entire document quickly without having to click through each page individually as PAIR’s relatively clumsy viewer requires. Other viewing and downloading options exist: users can open a document in a new browser window, download a document,

Editor’s summary Harmonisation of examination between different offices used to cause patent attorneys considerable concern – but formal agreement on mutual recognition was not forthcoming. However, practitioners have noticed the effect of offices seeking efficiencies by sharing information, and in many cases are happy that they can duplicate the work done for one office in another, when that office produces the same objections – that is, until the same irritating objection keeps cropping up. The Global Dossier provides a ready framework for exchange of examination information, and in this report the team from Finnegan explains what is available, including the information on files of all the IP5 patent offices, with some translation facilities, through public access to the Global Dossier.

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or add the document to a “collection,” which can then be downloaded or printed. This latter “collections” feature is especially useful, as it allows users to gather many documents from several different files. Users can also download a complete file history from the initial search results page. One caveat, however, the “collections” folder is present only during one active session. If, for example, a user closes the browser or goes to another webpage, all of the collected documents will be lost. Thus, this is not like putting items into an electronic shopping cart to buy later. The “history” button at the top of the page is another shortlived feature. Global Dossier Public Access stores applications viewed during a session, again, until the user closes the browser or navigates to another webpage. This means that during a single session, the user can readily return to prior applications without having to look up the application number again. The Global Dossier Public Access page allows users to review documents cited by the examiner or applicant for individual electronic files by clicking the “Class & Citation” button. But this only provides information for cited patents and patent application publications. It does not provide a complete list of references that have been cited in an application. To get a

Notes and references 1. USPTO, Latest News (Global Dossier), 23 November 2015, available at http://www.uspto.gov/sites/default/files/documents/ LatestNewsGlobalDossier151123.pdf. 2. USPTO, Global Dossier, available at http://globaldossier.uspto.gov/#/. 3. The IP5 Industry members include the American Intellectual Property Law Association (AIPLA), the Intellectual Property Owners Association (IPO), the Japan Intellectual Property Association (JIPA), the Korea Intellectual Property Association (KINPA), the Patent Protection Association of China (PPAC), and BUSINESSEUROPE. See 4 below for link. 4. USPTO, Global Dossier Initiative, available at http://www.uspto.gov/ patents-getting-started/international-protection/global-dossier-initiative. 5. USPTO, Global Dossier, http://globaldossier.uspto.gov/#/. 6. EPO, Global Dossier Available in Esp@cenet, 24 October 2014, available at http://www.epo.org/service-support/ updates/2014/20141024a.html. 7. Each of the IP5 offices is developing a user interface for its respective stakeholders. USPTO, Latest News (Global Dossier), 23 November 2015, available at http://www.uspto.gov/sites/default/files/ documents/LatestNewsGlobalDossier151123.pdf. The EPO, KIPO, and SIPO have already provided public access to Global Dossier, and JPO expects to roll out its interface in 2016. Id. 8. fiveIPoffices – CCD, available at http://ccd.fiveipoffices.org/CCD-2.0.8/. 9. The duty to disclose is a statutory requirement under 37 C.F.R. §1.56, which would require an act of Congress to change. The rules implementing this statute, however, are promulgated by the USPTO.

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complete list of references, including non-patent publications, users must click on the “Common Citation Document,” which links users to the IP5 Common Citations Document (CCD) viewer.8 Once there, users will need to search for the application or patent again. But the IP5 CCD viewer can provide all of the references cited in that application family, including in non-IP5 applications. Users can sort and filter the list of references in various ways (e.g., by country, filter out applicant cited references, etc). This is a powerful tool for patent applicants and practitioners.

A downside One drawback of the Global Dossier is that its information for certain applications is only available when the participating IP5 offices are online. When the IP5 offices are offline due to maintenance and scheduled closures, information is unavailable for that time period. Details about these closures can be found on the Global Dossier Public Access interface under “Service Hours.” Most of the closures are relatively short; typically an hour or less. But, for example, the JPO is closed on the weekends, meaning users cannot access Japanese electronic files for over 48 hours (starting at 5 p.m. EST/EDT on Fridays until 6 p.m. EST/EDT on Sundays). When an IP5 country’s system is offline, the patent family information is still available to users, so users will be aware that the patent or application exists. But users will not be able to review the file histories until the file history system for that country is back online. We understand that the IP5 countries continue to work to reduce maintenance times, but it is uncertain when such improvements will occur.

A word of warning Although USPTO examiners have access to the Global Dossier database, US applicants still have a duty to disclose material information to the USPTO. This may include submitting references cited in related applications. It is unlikely that the duty to disclose will be modified in view of this global access system,9 but the USPTO could at least permit users to forgo submitting references that are already accessible in Global Dossier. At the very least, the USPTO should consider reducing or eliminating the fees associated with filing Information Disclosure Statements, because the references are free and easily accessible via Global Dossier.

A bright new future The USPTO’s efforts are apparent: the Global Dossier Public Access interface is well structured and user friendly, providing access to powerful information for patent applicants, practitioners, and even litigants. Composed on this occasion by Anthony C. Tridico, Jessica L.A. Marks, and Erin M. Sommers For more information on Finnegan or the authors of this article, please visit www.finnegan. com. Contact: anthony.tridico@finnegan.com This article merely provides information and does not constitute legal advice. APRIL 2016

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Post-grant proceedings The US Court of Appeals for the Federal Circuit begins to weigh in on post-grant proceedings. By the Finnegan team.

ince June 2015, the Federal Circuit has issued 19 new opinions in appeals from the US Patent Trial and Appeal Board (Board) in inter partes review (IPR) and covered business method patent review (CBM) proceedings. These opinions, which provide guidance on procedural as well as substantive issues, may come as a welcome change to practitioners in view of the Federal Circuit’s early trend of affirming the Board under “Rule 36” without writing a detailed opinion. The Federal Circuit continues to affirm the Board at relatively high rates, often deferring to the Board’s interpretation of its regulations, prior art at issue before the Board, and grounds of unpatentability being asserted. However, in several more recent opinions, the Federal Circuit has started to weigh in on several key issues surrounding the new AIA patent trials, including appellate review of institution decisions, the constitutionality of IPR proceedings, and the burdens of proof for petitioners and patent owners.

Appellate review of institution decisions In Achates Reference Publ’g, Inc. v Apple Inc., the Federal Circuit reemphasized that under 35 U.S.C. §314(d), it lacks jurisdiction to review the Board’s decision to institute IPR proceedings, even if that institution decision is based on the Board’s assessment of the petitioner’s time-bar under 35 U.S.C. §315(b), and “even if such assessment is reconsidered during the merits phase of proceedings and restated as part of the Board’s final written decision.”1 In Achates, the Board instituted IPRs against two patents and held all instituted claims unpatentable.2 On appeal, Achates argued that the Board’s decisions were outside its statutory authority because Apple’s petitions were time-barred under §315(b).3 In response, Apple argued that the Federal Circuit 36 CIPA JOURNAL

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lacked jurisdiction over the appeal under §314(d) because the issue of whether the petitions were time-barred went to the propriety of the Board’s institution decisions, which are not appealable.4 In reaching its holding, the Federal Circuit first addressed the relevant statutes.5 The Federal Circuit explained that §315(b) provides that: “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than one year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” The Federal Circuit also noted that §314(d) provides that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable” while 35 U.S.C. §141 provides that the Board’s “final written decision” may be appealed to the Federal Circuit. The Federal Circuit then addressed its own precedent regarding its interpretation of §314(d).6 In St. Jude Med., Cardiology Div., Inc. v Volcano Corp., the Federal Circuit held

Editor’s summary Inter partes review proceedings are being shown to be a powerful tool in weeding out invalid claims in US patents, with the result that patentees are intent on seeking ways around the decision to institute review proceedings (permit the proceedings to progress to a full review). The Finnegan team review the almost entirely unsuccessful, but imaginative attempts by patent owners to have procedural aspects of IPR decisions reviewed.

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that it lacked jurisdiction to review the Board’s decision denying institution, reasoning that its appellate review was statutorily limited to final written decisions under §141 and that §314(d) specifically precludes appeals of institution decisions.7 In In re Dominion Dealer Solutions, LLC, the Federal Circuit also held that mandamus is not available to take an interlocutory appeal of a non-institution decision primarily because §314(d) precludes appeals of institution decisions.8 And in In re Cuozzo Speed Techs., LLC, the Federal Circuit held that even after a final written decision, the Board’s institution decision is not reviewable.9 In Versata Dev. Grp., Inc. v SAP America, Inc., however, the Federal Circuit held that it did have jurisdiction to review the Board’s determination of whether a patent was a covered business method patent – a determination the Board makes at institution.10 The Federal Circuit reasoned in Versata that this determination was uniquely and fundamentally related to the Board’s ultimate jurisdictional authority to invalidate only covered business method patents in CBM proceedings and therefore reviewable.11 After reviewing its precedent, the Federal Circuit in Achates then considered the present issues.12 The Federal Circuit reasoned that the time-bar of §315(d) does not impact the Board’s authority to invalidate patent claims.13 Rather, it merely bars certain petitioners from challenging claims.14 The Federal Circuit then found this case more similar to Cuozzo, where a proper petition could have been drafted, and dissimilar to Versata, where no petition could have brought the patent within the Board’s jurisdiction.15 The Federal Circuit explained that the time-bar of §315(d) was not a “defining characteristic” of the Board’s “authority to invalidate” because compliance with §315(d) does not itself give the Board the authority to invalidate a patent.16 The Federal Circuit also rejected Achates’ argument that the Board’s reaffirmance of its time-bar assessment in the final written decision indicated that it was part of the final written decision and thus appealable.17 The Federal Circuit reasoned that “the Board is always entitled to reconsider its own decisions” and that “reconsideration of the time-bar is still fairly characterized as part of the decision to institute.”18 With this legal reasoning, the Federal Circuit dismissed the appeal.19

Constitutionality of IPR proceedings MCM Portfolio LLC v Hewlett-Packard Co: IPR proceedings do not violate Article III or the Seventh Amendment In MCM Portfolio LLC v Hewlett-Packard Co., the Federal Circuit held that IPR proceedings do not violate Article III or the Seventh Amendment of the US Constitution.20 The Board instituted an IPR of four challenged claims, ultimately holding all instituted claims unpatentable.21 On appeal, MCM argued that the Board improperly instituted the IPR proceeding because more than one year before Hewlett-Packard’s petition, MCM filed a complaint alleging infringement of the challenged patent Volume 45, number 4

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by a third party, which it argued was in privity with HewlettPackard.22 Citing Achates, the Federal Circuit rejected MCM’s argument, holding that review of whether the Board properly instituted an IPR proceeding was precluded by §314(d).23 More interestingly, MCM also argued that IPR proceedings are unconstitutional because any action revoking a patent (and the property rights that it provides) must be tried in a US federal court with the protections of US due process.24 In support of its argument, MCM relied on the US Supreme Court’s holding in McCormick Harvesting Mach. Co. v C. Aultman & Co.25 In McCormick, a patent owner asserted infringement of several patent claims that the USPTO rejected as unpatentable in a separate reissue application filed by the patent owner.26 As a result of that rejection, the patent owner withdrew the reissue application (leaving the original patent as is), but the district court nonetheless held that there was no infringement because the Patent Office considered the claims unpatentable.27 The Supreme Court overruled the district court, holding the original patent claims were not invalid and that the rejection of the claims was a nullity after the patent owner withdrew the reissue application. The Supreme Court relied on the thencurrent reissue statute stating that “surrender [of the original patent] shall take effect upon the issue of the amended patent,” and that “until the amended patent shall have been issued the original stand[s] precisely as if a reissue had never been applied for.”28 According to the Supreme Court, without statutory authorization, a mere “attempt to cancel a patent upon an application for reissue… would be to deprive the applicant of his property without due process of law, and would be in fact an invasion of the judicial branch of the government by the executive [branch through the Patent Office].”29 Rejecting MCM’s argument, the Federal Circuit held that McCormick did not forbid Congress from otherwise granting the Patent Office explicit authority to correct or cancel an issued patent, which Congress did by creating reexamination and postgrant proceedings.30 The Federal Circuit reasoned that: “Congress, acting for a valid legislative purpose to its constitutional powers under Article I, may create a seemingly ‘private’ right that is so closely integrated into a public regulatory scheme as to be a matter appropriate for agency resolution with limited involvement by the [US federal] judiciary.”31 MCM also argued that it had a right to a trial by jury as provided for in the Seventh Amendment of the US Constitution, which was not satisfied by IPR proceedings.32 Rejecting this argument, the Federal Circuit reasoned that the Supreme Court has separately upheld: “congressional power to entrust enforcement of statutory rights to an administrative process or specialized court of equity free from the structures of the Seventh Amendment.”33 APRIL 2016

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The Federal Circuit also reasoned that it was bound by its precedent upholding the constitutionality of ex parte reexamination proceedings, which it found indistinguishable from IPR proceedings.34, 35 In addressing the merits of the Board’s decision, the Federal Circuit found that the Board’s factual findings were supported by substantial evidence and affirmed its determination that the challenged claims were unpatentable as obvious.36 Ethicon Endo-Surgery, Inc. v Covidien LP: allowing the same board panel to make the institution and final decisions does not violate due process In Ethicon Endo-Surgery, Inc. v Covidien LP, the Federal Circuit held that the same Board panel can make the institution and final decisions in the same proceeding.37 The Board instituted review of all claims of the Ethicon’s patent and ultimately held all claims unpatentable.38 On appeal, Ethicon argued that the Board’s final decision should be set aside because it was made by the same panel of judges that made the decision to institute the IPR proceeding.39 In particular, Ethicon distinguished between §314(a), which gives the Director the authority to determine whether an IPR should be instituted, and §318(a), which gives the Board the authority to decide the ultimate question of patentability.40 According to Ethicon, the statutory regime evidenced Congress’s intent to keep the authority to institute separate from the authority to decide patentability.41 At issue was the Patent Office’s determination that the same panel can make institution and final decisions in the same proceeding in the interest of efficiency. Ethicon argued that this determination is improper.42 Before reaching the merits of the case, the Federal Circuit addressed whether it even had jurisdiction to review the issue because a “determination by the Director whether to institute an inter partes review… shall be final and nonappealable” per §314(d) of the statute.43 The Federal Circuit held that it did, reasoning that Ethicon was not challenging the institution decision, but the final decision.44 Turning to the merits of the case, the Federal Circuit rejected Ethicon’s first argument that having a single panel make the institution and final decisions violated due process.45 Relying on Supreme Court precedent holding that combining the investigative and adjudicatory functions in a single body does not violate due process, the Federal Circuit reasoned that combining the institution and final decisions in a single Board panel is “less problematic,” as both are: “adjudicatory decisions and do not involve combining the investigative and / or prosecutorial functions with an adjudicatory function.”46 The Federal Circuit also rejected Ethicon’s argument that the panel’s exposure to a limited record in making the institution decision “improperly biases it so as to disqualify it from making the final decision on the merits.”47 The Federal Circuit reasoned 38 CIPA JOURNAL

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that adjudicators are afforded a “presumption of honesty and integrity” and that Ethicon did not argue that the Board panel was exposed to extrajudicial information, as required to show actual bias.48 Ethicon also argued that the “history, structure, and content of the AIA reflect a Congressional intent to withhold the power of the Director to delegate to the Board the power to institute inter partes review.”49 In particular, Ethicon argued that the Congress intended to keep the institution and final decisions separate because it: 1. specifically gave the Director the power to institute 2. did not explicitly give the Director authority to delegate the institution decision to the Board, and 3. gave the Board the power to make the final decision.50 Relying again on Supreme Court precedent, the Federal Circuit rejected Ethicon’s argument, holding that agency heads, like the Director, have implied authority to delegate to subordinates within the agency.51 The Federal Circuit also affirmed the Board’s obviousness determination, rejecting Ethicon’s argument that the Board failed to properly take into account the secondary considerations of non-obviousness.52 In dissent, Judge Newman argued that the post-grant proceedings were established by the AIA to provide “quick and cost-effective alternatives to litigation.”53 She emphasized that permitting the same panel to decide institution and make a final written decision violates the statutory regime. Unlike the majority, Judge Newman emphasized the statutory separation of the Director’s decision to “institute” review under §314 from the Board’s “conduct” of the review “instituted” by the Director and the Board’s subsequent “written decision” under §316 and §318.54 Judge Newman explained that the majority’s holding was in violation of these statutes and that this violation had been criticized as putting administrative patent judges “in the position of defending their prior decisions to institute the trial.”55 Judge Newman explained that due process guarantees a fair trial in a fair tribunal, and permitting administrative patent judges to review their own prior decisions “may not always provide the constitutionally required impartial decision maker.”56

Burdens of proof In interpreting its regulations, the Board has assigned various burdens of proof to both petitioners and patent owners. In the opinions discussed below, the Federal Circuit has affirmed the Board’s assignment of two such burdens. In particular, the Federal Circuit affirmed that the petitioner has the burden to prove the status of prior art including proving that a prior art US patent is entitled to its provisional application’s priority date. The Federal Circuit has also affirmed that the patent owner has the burden to prove that a proposed amended claim is patentable over the prior art of record, seemingly endorsing a regime that treats original claims differently than proposed amended claims. www.cipa.org.uk

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Patent owners are at significant risk because approximately 75% of the claims the Board institutes review of are ultimately held unpatentable.

Dynamic Drinkware, LLC v Nat’l Graphics, Inc: petitioner has the burden to prove that a prior art US patent is entitled to its provisional application’s priority date In Dynamic Drinkware, LLC v Nat’l Graphics, Inc., the Federal Circuit affirmed that the petitioner has the burden to prove that a prior art US patent is entitled to its provisional application’s priority date.57 This is consistent with the petitioner’s burden of proving the prior art status of a reference and unpatentability by a preponderance of the evidence.58 In Dynamic, the Board instituted review of two claims in view of one ground of anticipation.59 The challenged patent was filed on 22 November 2000, and the anticipation ground was based on a US patent that was filed on 5 May 2000, but claimed the benefit of priority to a US provisional application filed on 15 February 2000.60 Under US patent law, the effective filing date of the US patent for purposes of pre-AIA 35 U.S.C. §102(e) would be the filing date of the provisional if the provisional satisfied the written description and enablement requirements for the claimed subject-matter.61 The Board found that Dynamic failed to prove that the challenged claims were anticipated under §102(e).62 In particular, the Board found that Dynamic failed to prove benefit of the provisional application, because Dynamic did not compare the claims of the asserted patent to the disclosure of the provisional application.63 As a result, the Board found that the asserted patent was only entitled to its 5 May 2000 filing date.64 Volume 45, number 4

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And because the asserted patent was prior art under §102(e), National Graphics was able to remove the patent as prior art by proving a date of its invention that antedated the asserted patent’s 5 May 2000 filing date.65 The Board held that National Graphics sufficiently showed that its claimed inventions were reduced to practice (actually made) and thus invented under pre-AIA US law by 28 March 2000, which was before the prior art date of the asserted patent.66 On appeal, Dynamic argued that the Board erred in shifting the burden to Dynamic to prove that the asserted patent was entitled to the benefit its provisional application.67 In particular, Dynamic argued that as a presumptively valid prior art patent, the asserted patent’s presumed earliest effective filing date was its provisional application’s filing date, and thus, the burden should have shifted to National Graphics to prove that the asserted patent was not entitled to the benefit its provisional application.68 In response, National Graphics argued the opposite because the Patent Office does not examine priority claims as a matter of course, and thus, there is no reason to presume entitlement to the earlier date.69 Affirming the Board, the Federal Circuit held that there was no error in placing the burden on (the petitioner) Dynamic.70 The Federal Circuit began its analysis by explaining the distinction between the burden of persuasion and the burden of production.71 The burden of persuasion is a non-shifting, “ultimate burden assigned to a party who must prove something to a specified degree of certainty.”72 In contrast, the burden of production is a shifting burden, “the allocation of which depends on where in the process of trial the issue arises.”73 The Federal Circuit then explained that Dynamic, as the petitioner, had the burden of persuasion to prove unpatentability by a preponderance of the evidence. Dynamic also had the initial burden of production to bring forth evidence to support a prima facie case of unpatentability. Dynamic satisfied its burden of production by arguing in its petition that the asserted patent anticipated the claims under §102(e).74 This initial showing shifted the burden of production to National Graphics to produce evidence that the asserted patent did not anticipate the claims or was not prior art.75 In this case, National Graphics produced evidence that the inventions claimed in the challenged patent were entitled to a date of invention earlier than the non-provisional filing date of the asserted patent. This showing shifted the burden of production back to Dynamic to prove that the inventions were not entitled to an earlier date of invention or that the asserted patent was entitled to the benefit of its provisional application.76 The Federal Circuit then analyzed the parties’ arguments and rejected Dynamic’s attempt to create a presumption that a patent is entitled to the benefit of its provisional application.77 The Federal Circuit noted that the Patent Office does not examine provisional applications as a matter of course and refused to presume entitlement.78 The Federal Circuit also rejected Dynamic’s argument that it carried its burden of production.79 In APRIL 2016

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particular, Dynamic argued that, though an indirect comparison, it proved that the provisional application provided written description support for the claims of the asserted patent.80 In response, National Graphics argued that Dynamic’s conclusory

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argument in its petition that the asserted patent was entitled to its provisional application’s priority date amounted to waiver of that argument.81 National Graphics also argued that the Board’s decision was supported by substantial evidence because

Notes and references

37. No. 2014-1771, 2016 WL 145576 (Fed. Cir. Jan. 13, 2016).

78. Id.

1. 803 F.3d 652, 658 (Fed. Cir. 2015).

38. Id. at *3.

80. Id.

2. Apple Inc. v Achates Reference Publ’g, Inc., IPR2013-00080, Paper 90 at 53 (P.T.A.B. June 2, 2014); Apple Inc. v Achates Reference Publ’g, Inc., IPR2013-00081, Paper 80 at 43 (P.T.A.B. June 2, 2014).

39. Id.

81. Id.

40. Id. at *6.

82. Id.

41. Id.

83. Id.

42. Id. at *3.

84. Id.

3. Achates, 803 F.3d at 654.

43. Id. at *4.

85. Id.

4. Id.

44. Id.

86. Id. at 1382.

5. Id.

45. Id.

87. 789 F.3d 1292 (Fed. Cir. 2015).

6. Id. at 655.

46. Id. at *5.

88. Id. at 1295.

7. 749 F.3d 1373 (Fed. Cir. 2014).

47. Id.

89. Id.

8. 749 F.3d 1379, 1381 (Fed. Cir. 2014).

48. Id. at *6.

90. Id. at 1303-04.

9. 793 F.3d 1268 (Fed. Cir. 2015).

49. Id.

91. Id. at 1304.

10. 793 F.3d 1306 (Fed. Cir. 2015).

50. Id.

11. Id.

51. Id.

92. IPR2012-00027, Paper 26 (P.T.A.B. June 11, 2013).

12. Achates, 803 F.3d at 657.

52. Id. at *8-9.

93. 789 F.3d at 1305.

13. Id.

53. Id. at *11.

94. Id.

14. Id.

54. Id. at *10.

95. Id.

15. Id.

55. Id.

96. Id.

16. Id. at 657-58.

56. Id. at *13.

97. Id.

17. Id. at 658.

57. 800 F.3d 1375 (Fed. Cir. 2015).

98. Id. at 1305-06.

18. Id. (citations omitted).

58. See 35 U.S.C. §§311(b), 316(e).

99. Id. at 1306.

19. Id. at 659.

59. 800 F.3d at 1377.

100. Id.

20. No. 2015-1091, 2015 WL 7755665 (Fed. Cir. Dec. 2, 2015).

60. Id.

101. Id. at 1307 (citations omitted). 102. Id.

21. Id. at *1.

61. In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010); see 35 U.S.C. §119(e).

22. Id. at *3.

62. 800 F.3d at1377.

104. Id.

23. Id.

63. Id.

105. Id. at 1307-08.

24. Id.

64. Id.

106. Id. at 1307 n.4.

25. 169 U.S. 606 (1898).

65. Id.

107. IPR2012-00027, Paper 26 at 7.

26. Id. at 607.

66. Id.

108. 789 F.3d at 1307 n.4 (emphasis in original).

27. Id. at 607-08.

67. Id. at 1378.

28. Id. at 610.

68. Id.

29. Id. at 612.

69. Id.

30. MCM Portfolio, 2015 WL 7755665, at *5.

70. Id.

31. Id. (citing Thomas v Union Carbide Agr. Prods. Co., 473 U.S. 568, 593-94 (1985)).

71. Id.

109. Bilski v Kappos, 130 S. Ct. 3218 (2010); Mayo Collaborative Servs. v Prometheus Labs., Inc., 132 S. Ct. 1289 (2012); Ass’n for Molecular Pathology v Myriad Genetics, Inc., 133 S. Ct. 2107 (2013); Alice Corp. Pty. v CLS Bank Int’l, 134 S. Ct. 2347 (2014).

32. Id. at *8.

73. Id. at 1379 (citations omitted).

33. Id. (citing Curtis v Loether, 415 U.S. 189 (1974)).

74. Id.

34. Id. at *7.

75. Id. at 1380.

35. Id.

76. Id.

111. Finnegan AIA Blog: http://www.aiablog.com/ claim-and-case-disposition/; based on U.S. Patent Office statistics as of January 1, 2016.

36. Id. at *9-10.

77. Id.

112. 35 U.S.C. §315(e).

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72. Id. (citations omitted).

79. Id. at 1381.

103. Id.

110. No. 15-446, 2016 WL 205946 (U.S. Jan. 15, 2016).

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Dynamic never compared the claims of the asserted patent to the disclosure of the provisional application.82 The Federal Circuit first addressed National Graphics’ waiver argument, holding that Dynamic had not waived its argument that the asserted patent was entitled to the benefit of its provisional application.83 The Federal Circuit reasoned that Dynamic met its initial burden of production, which did not shift back to Dynamic until National Graphics argued that inventions claimed in the challenged patent were entitled to a date of invention earlier than the filing date of the asserted patent. Thus, it was not necessary for Dynamic to prove in its petition that the asserted patent was entitled to the benefit of its provisional application. Dynamic needed to do so only after National Graphics came forth with evidence to shift the burden of production back to Dynamic.84 Despite the shifting burden of production, the burden of persuasion always remained with Dynamic. Ultimately, the Federal Circuit agreed with National Graphics that the Board’s decision was supported by substantial evidence because Dynamic failed to compare the claims of the asserted patent to the disclosure of the provisional application.85 The Federal Circuit reasoned that: “[a] provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent of which it was a provisional.”86 Microsoft Corp. v Proxyconn, Inc: patent owner must show that a proposed substitute claim is patentable over the prior art of record In Microsoft Corp. v Proxyconn, Inc., the Federal Circuit held that the patent owner must show that a proposed substitute claim is patentable over the prior art of record.87 The Board instituted an IPR of Proxyconn’s patent, ultimately determining that all but one of the challenged claims were unpatentable.88 On appeal, Proxyconn challenged several of the Board’s determinations during trial including its denial of Proxyconn’s motion to amend.89 Before reaching the merits of Proxyconn’s challenge, however, the Federal Circuit discussed the legal framework governing amendments in IPR proceedings, explaining that 35 U.S.C. §316(d) provides that “the patent owner may file [one] motion to amend the patent” and that any amendment “may not enlarge the scope of the claims of the patent or introduce new matter.”90 Under 37 C.F.R. §42.121(a)(2), the Board may deny a patent owner’s motion to amend where: “(i) [t]he amendment does not respond to a ground of unpatentability involved in the trial; or (ii) [t]he amendment seeks to enlarge the scope of the claims of the patent or introduce new subject-matter.”91 37 C.F.R. §42.20(c) provides that “[t]he moving party has the burden of proof to establish that it is entitled to the requested Volume 45, number 4

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relief,” and in Idle Free Sys., Inc. v Bergstrom, Inc., the Board interpreted §42.20(c) to require a patent owner in a motion to amend to show that a “proposed substitute claim is patentable over the prior art of record, and over prior art not of record but known to the patent owner.”92 During the IPR proceeding, Proxyconn filed a motion to amend seeking to replace two original claims. Microsoft opposed the motion, arguing that the substitute claims were unpatentable as anticipated.93 In particular, Microsoft relied on a new prior art reference that was not one of the references the Board relied on when instituting review of the two original claims.94 In reply, Proxyconn argued that the new prior art reference was not included in “a ground of unpatentability involved in the trial,” and thus, Proxyconn’s proposed claims could not be denied under §42.121(a)(2)(i) for its failure to prove their patentability over the reference.95 Denying Proxyconn’s motion, the Board cited Idle Free and stated that Proxyconn failed to meet its burden of establishing patentability of the substitute claims because, for example, it failed to construe the newly added claim terms, address whether the claims were patentable generally over the prior art, identify the closest prior art known to it, address the level of skill in the art, or discuss how one of ordinary skill would have viewed the newly added elements.96 The Board also stated that Microsoft was entitled to rely on the new prior art reference and that Proxyconn failed to provide any evidence to counter Microsoft’s arguments that the prior art reference anticipated the substitute claims.97 On appeal, Proxyconn argued that the Board exceeded its authority under §42.121(a)(2)(i) to deny the substitute claims by relying on the prior art reference and by imposing the additional requirements of Idle Free.98 Proxyconn made the same argument before the Board when responding to Microsoft’s newly raised prior art. On appeal, the USPTO intervened, arguing that a patent owner seeking to amend its claims: “must meet both the ‘procedural requirements’ of §42.121(a) (2) as well as the ‘substantive burden’ imposed by §42.20(c), as it has been interpreted through adjudicative Board decisions like Idle Free.”99 The USPTO also argued that it was permissible for it to use adjudicative Board decisions, rather than traditional notice and comment rulemaking, to set forth the conditions a patent owner must meet to satisfy its burden of proof under §42.20(c).100 The Federal Circuit acknowledged concerns that a “casebased interpretation by the [Office] of its own regulations risks leaving interested members of the public in a state of uncertainty, without ascertainable standards and adequate notice to comply” but recognized that “the choice between rulemaking and adjudication lies in the first instance within the [USPTO’s] discretion.”101 Agreeing that the USPTO “has not had sufficient experience with motions to amend to warrant rigidifying its tentative judgement into a hard and fast rule,” the Federal Circuit APRIL 2016

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held that the USPTO has not abused its discretion in choosing adjudication over rulemaking.102 The Federal Circuit also held that the Board’s interpretation of §42.20(c) as requiring a patent owner to show that a proposed substitute claim is patentable over the prior art of record in the proceeding was not erroneous or inconsistent with the regulation or governing statute.103 The Federal Circuit reasoned that nothing in the regulations or governing statute precludes the Board from rejecting a substitute claim on the basis of prior art that is made of record but not cited against the original claim in the institution decision.104 The Federal Circuit also reasoned that once the Board grants a patent owner’s motion to amend, the substitute claims are not subject to further examination and are directly added to the patent. The Federal Circuit considered this to weigh in favour of the Board considering new prior art raised for the first time by a petitioner in response to a patent owner’s motion to amend.105 Notably, however, the Federal Circuit declined to embrace the entirety of the Board’s holding in Idle Free.106 In Idle Free, the Board required the patent owner to prove that its proposed substitute claims were patentable over the prior art of record, and over prior art not of record but known to the patent owner.107 The Federal Circuit explained that Microsoft did not “call on [it] to decide whether every requirement announced by the Board in Idle Free constitutes a permissible interpretation of the [Patent Office’s] regulations” and expressly noted that its opinion did not address “Idle Free’s requirement that the patentee to show patentable distinction over all ‘prior art known to the patent owner.’”108

time and effort in preparing robust petitions and preliminary responses before the Board makes its institution decision – because there may be little, if any, review available on appeal for adverse decisions. Petitioners involved in co-pending district court litigations should file petitions as soon as practical after being served with a complaint because subsequent petitions, if a first petition is completely or partially denied, may be barred under §315(b). Patent owners are also at significant risk because approximately 75% of the claims the Board institutes review of are ultimately held unpatentable.111 Moreover, the still relatively new IPR and CBM proceedings are likely to continue without action by Congress, as the Federal Circuit upheld the constitutionality of these proceedings. Judge Newman’s dissent, however, echoes practitioners’ due process concerns about the propriety of putting administrative patent judges “in the position of defending their prior decisions to institute the trial.” While patent owners may generally be more concerned about the same panel of judges assessing the patentability of the claims after that panel already determined that at least one of the claims is “more likely than not unpatentable”, petitioners also share due process concerns. In particular, once the Board issues a final written decision upholding the patentability of a claim, a petitioner is estopped from asserting in any civil or administrative proceeding that:

Conclusions

Thus, if the Board declines to institute review of certain grounds because, for example, it considers them redundant of the instituted grounds, a petitioner may be estopped from ever raising those grounds again. And because non-instituted grounds are never fully evaluated and are not subject to judicial review, such an application of estoppel can raise concerns about the denial of due process where a petitioner may never have its day in court with respect to the non-instituted grounds. Such concerns, however, could be resolved when the courts interpret “raised or reasonably could have raised.” The Federal Circuit has also afforded the USPTO wide latitude in interpreting its regulations, even declining to disturb the Board’s practice of interpreting its regulations through adjudication, rather than rulemaking. Accordingly, petitioners and patent owners should watch closely all Board decisions interpreting these regulations, whether precedential, informative, or otherwise. Stay tuned as we continue to report on this dynamic area of US patent law.

Recently, the US Supreme Court has been actively reviewing patent cases. For example, the Supreme Court has revisited subject-matter eligibility under 35 U.S.C. §101 four times since 2010.109 And in January, the Supreme Court granted Cuozzo’s petition for writ of certiorari in Cuozzo Speed Techs., LLC v Lee, to consider the Board’s use of the broadest reasonable interpretation standard for construing claims in the new AIA trials as well as the Federal Circuit’s jurisdiction to review institution decisions.110 Thus, although the Federal Circuit has started to weigh in on some of the issues arising in the new AIA trials, threshold issues such as a patent owner’s burden to prove patentability of proposed amended claims may not be finally resolved until they are decided by the US Supreme Court. Until then, however, institution decisions are largely immune from judicial review, IPR proceedings are constitutional, and a patent owner bears the burden of showing patentability of proposed amended claims over the prior art of record in a proceeding. Indeed, the Federal Circuit has repeatedly held that Board institution decisions are shielded from judicial review. Only in rare cases where the Board lacks the ultimate authority to invalidate a patent does the Federal Circuit consider it has jurisdiction to review an institution decision. This trend warrants petitioners and patent owners spending the requisite 42 CIPA JOURNAL

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“the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.”112

Composed on this occasion by Anthony C. Tridico, Timothy P. McAnulty, and Kassandra M. Officer. For more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony.tridico@finnegan.com. This article merely provides information and does not constitute legal advice. www.cipa.org.uk

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Information Disclosure Statements USPTO proposes new framework for Information Disclosure Statements. By the Finnegan team.

S patent applicants are all too familiar with the duty to disclose and those pesky information disclosure statements (IDSs) that go along with it. In the early stages of prosecution, it is fairly easy and relatively inexpensive to file IDSs. As prosecution proceeds, however, and the submission of references has the potential to prolong examination, the US Patent and Trademark Office (USPTO) requires the applicant to pay fees or, in some cases, make certifications about the information being submitted. For example, if an applicant, late in prosecution, receives an office action in a related foreign application that cites new, never-before-cited references, the applicant can make a certification that such new information was previously unknown to the applicant and submit those references without a fee. This regulatory framework encourages prompt filing of information. Certifications, however, are not without risk and may raise inequitable conduct red flags down the road in litigation. Applicants may soon have the option to trade making any certifications by paying higher fees. The USPTO recently announced that it is considering eliminating certification requirements when submitting certain IDSs.1 Under the current system, applicants are allowed to submit a statement with a certification that complies with 37 C.F.R. §1.97(e) instead of paying the required fee during the relatively early stages of prosecution.2 Applicants are required to make a certification and pay a fee at later stages of prosecution.3 And the QPIDS program that allows an IDS to be submitted after prosecution has ended and the issue fee is paid has even further requirements.4 Volume 45, number 4

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An overview of the current IDS framework, as it applies to national applications, is provided in Figure 1. Under 37 C.F.R. §1.97(e), the applicant must certify: 1. each item of information contained in the IDS was first cited in a communication from a non-US patent office in a counterpart non-US application no more than three months prior to the filing of the IDS; or 2. no item of information contained in the IDS was cited in a communication from a non-US patent office in a counterpart non-US application, and, to the knowledge of the person signing the certification after making a reasonable inquiry, no item of information contained in the IDS was known to any individual with a duty of disclosure more than three months prior to the filing of the IDS.10

Editor’s summary Attorneys are familiar with the requirements for Information Disclosure Statements in the US – and complain about the onerous requirements. The Finnegan team outlines the proposed simplification, meaning that fees will be payable for any IDS after the first official action or three months, but that there will be no requirement for a certificate confirming that the relevant prior art was not known until three months prior to the IDS being filed. A welcome change, they say.

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IDS

Figure 1: Overview of the current IDS framework as it applies to national applications Time period

Current Requirement for Submitting IDS

Up to three months from filing date or until the first

No fee

Office Action on the merits After the first Office Action on the merits but before

Can either:

the close of prosecution (e.g., before a final Office

1. Pay the $180 / $90 / $455 fee;

Action, Notice of Allowance, or Ex Parte Quayle

Action)

2. Provide certification under 37 C.F.R. § 1.97(e).

After the close of prosecution but before the

Must:

issue fee is paid

1. Pay the $180 / $90 / $45 fee; and 2. Provide certification under 37 C.F.R. § 1.97(e).

After the issue fee is paid but before the

•

patent issues

Petition to withdraw application from issue and file a Request for Continued Examination (RCE) with required RCE6 fee and petition to withdraw fee7; or

•

Request consideration under the QPIDS program, which includes filing a conditional RCE, paying the RCE,8 IDS,9 and petition to withdraw fees, and providing certification under 37 C.F.R. § 1.97(e).

Figure 2: Overview of the proposed IDS framework as it applies to national applications Time period

Proposed Requirement for Submitting IDS

Up to three months from filing date or until the first

No fee

Office Action on the merits After the first Office Action on the merits but before

Pay the $300 / $150 / $75 fee

the close of prosecution (e.g., before a final Office Action, Notice of Allowance, or Ex Parte Quayle Action) After the close of prosecution but before the issue fee

Pay the $600 / $300 / $150 fee

is paid After the issue fee is paid but before the patent issues

Petition to withdraw from issue, pay the petition to withdraw fee, and pay the $600 / $300 / $150 fee

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Many applicants will find that the proposed fees are less expensive than investigating whether the certifications apply in the first place.

IDS

Given these stringent requirements, many applicants chose to avoid making such statements whenever possible. The proposed IDS framework removes the certification option and instead raises the fees for all IDS submissions.11 The new IDS framework would also eliminate the QPIDS program, allowing applicants to merely pay an additional fee to have their IDS considered after the payment of the issue fee.12 See Figure 2 for an overview of the proposed IDS framework as it applies to national applications.13 At first glance, the increased costs appear high. The increase from $0 with a certification or $180 without to $300 for a submission after the first office action is purely an increase in costs to applicants without any additional benefit. But many applicants will find that the proposed fees are less expensive than investigating whether the certifications apply in the first place. And the USPTO’s use of small and micro entity discounts partially addresses the burden placed on smaller applicants. Furthermore, applicants who are unable to submit a 37 C.F.R. §1.97(e) will now be allowed to submit references for consideration after the close of prosecution instead of paying a fee of up to $1,700 for an RCE to have the references reviewed. This is a real boon for applicants. Overall, this proposal streamlines the IDS process, removes the strict certification requirements, and continues to promote early filing of known information. These authors believe that the small increase in costs is well worth the ease of submitting information that may be material well into examination. Composed on this occasion by Anthony C. Tridico, Jessica L.A. Marks, and Erin M. Sommers. For more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony.tridico@finnegan.com. This article merely provides information and does not constitute legal advice.

Notes and references 1. USPTO Patent Fee Proposal Detailed Appendix, presented to Patent Public Advisory Committee, Nov. 2015, at slides 75-76, available at http://www.uspto.gov/about-us/performance-and-planning/fee-settingand-adjusting (click on “PPAC Detailed Appendix”), accessed Dec. 17, 2015 (hereinafter, “PPAC Detailed Appendix”). 2. See USPTO Manual of Patent Examining Procedure § 609.04(B); 37 C.F.R. § 1.17(p) 3. See USPTO Manual of Patent Examining Procedure §609.04(B); 37 C.F.R. § 1.17(p) 4. See, e.g., January [2016] CIPA 24 for an explanation of the QPIDS program. 5. The amount an applicant pays depends on whether it qualifies as an undiscounted entity ($180), a small entity ($90) or a micro entity ($45). For more information on qualifying as a micro or small entity, see 37 C.F.R. §§ 1.27(a) and 1.29.

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6. RCE fees range from $300 to $1,700 depending on the type of entity and whether it is a first RCE or a subsequent RCE. 37 C.F.R. §1.17(e). 7. Petition to withdraw fees range from $35-$140, depending on the type of entity. 37 C.F.R. §1.17(h) 8. As noted in our prior article (see point 4 above), the RCE fee is returned if the submission of the IDS under the QPIDS program does not necessitate reopening prosecution. 9. The IDS fee required with the QPIDS program is the $180 / $90 / $45. 10. Certification and Request for Consideration of an IDS Filed After Payment of the Issue Fee Under the QPIDS Pilot Program, USPTO Form PTO/SB/09, available at http://www.uspto.gov/sites/default/files/ forms/sb0009.pdf. 11. PPAC Detailed Appendix, at slide 75. 12. PPAC Detailed Appendix, at slide 75. 13. PPAC Detailed Appendix, at slide 76. APRIL 2016

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Revolutionary Inventor Thomas Paine was a political activist, philosopher, political theorist, revolutionary and an inventor. Julian Asquith looks at his patent for an iron bridge and makes some observations on current patent law.

homas Paine was the most widely read writer of his age on both sides of the Atlantic. Having inspired the rebels in America to declare independence from Britain in 1776, Paine returned to Europe in 1787 to seek funding for his idea of an iron bridge. Bridges of this era were still largely constructed in stone and wood. He expected to be gone from America for about a year, but one year was to turn into 15 years. His efforts to exploit his invention took 15 times longer than expected, lead him to the French Revolution, and almost cost him his life. Let that be a lesson for budding inventors! Paine is also credited with making the world’s first smokeless candle and developing steam engines, but his iron bridge appears to be his best-known invention, and the only one patented. Before discussing the patent, I will note a few more historical points of interest. In the offices of my own firm, Marks & Clerk, there hangs a photograph of Thomas Edison which was given by Edison to Lord Marks in 1905. Lord Marks was the founder of Marks & Clerk and was also a friend and colleague of Thomas Edison, a prolific American inventor who held 1,093 patents in his own name, and of course developed the electric light bulb. Thomas Edison was a huge admirer of Thomas Paine, and wrote: “I have always regarded Paine as one of the greatest of all Americans… It was my good fortune to encounter Thomas Paine’s works in my boyhood… Paine educated me, then, about many matters of which I had never before thought. I remember, very vividly, the flash of enlightenment that shone from Paine’s writings… My interest in Paine was not satisfied by my first reading of his works. I went back to them time and again, just as I have done since my boyhood days.”

Such was his admiration of Paine, that when the construction of the Thomas Paine Memorial Building and Museum began in New York in 1925, Thomas Edison helped to turn the first shovel of earth for the building. 46 CIPA JOURNAL

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Another admirer of Thomas Paine was Bertrand Russell, who wrote the following account of Thomas Paine’s involvement with iron bridges (in which I have highlighted references to bridges): “He turned his attention from politics to engineering and demonstrated the possibility of iron bridges with longer spans than had previously been thought feasible. Iron bridges led him to England… He had a large model of his iron bridge set up at Paddington; he was praised by eminent engineers and seemed likely to spend his remaining years as an inventor. However, France as well as England was interested in iron bridges. In 1788, he paid a visit to Paris to discuss them with Lafayette and to submit his plans to the Académie des sciences, which,

Introduction & Editor’s summary Thomas Paine is well known for the roles he played in both the American and French revolutions. Napoleon himself claimed to sleep with a copy of Paine’s Rights of Man under his pillow. Less well known is that Paine was also an inventor, who obtained a patent in 1788 for his idea of a single span iron bridge. Julian Asquith explains a little of Paine’s background, and not just something about the patent, but also something of the effect of Paine’s invention on the French Revolution. Julian makes some observations on current patent law (although omitting to say that, had the patent been before the USPTO now, they might have had objections to it as being merely covering – not claiming, as there were not claims – an aspect of the laws of nature) and he provides some lighthearted advice on dealing with clarity objections.

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ARTICLE

Paine’s effect on the French Revolution would not have been felt had it not been for his invention of an iron bridge.

after due delay, reported favourably. When the Bastille fell, Lafayette decided to present the key of the prison to Washington and entrusted to Paine the task of conveying it across the Atlantic. Paine, however, was kept in Europe by the affairs of his bridge. He wrote a long letter to Washington informing him that he would find someone to take his place in transporting ‘this early trophy of the spoils of despotism, and the first ripe fruits of American principles transplanted into Europe’. He goes on to say that ‘I have not the least doubt of the final and complete success of the French Revolution’, and that ‘I have manufactured a bridge (a single arch) of one hundred and ten feet span, and five feet high from the cord of the arch’. For a time, the bridge and the Revolution remained thus evenly balanced in his interests, but gradually the Revolution conquered. In the hope of rousing a responsive movement in England, he wrote his The Rights of Man on which his fame as a democrat chiefly rests.” Paine’s effect on the French Revolution would not have been felt had it not been for his invention of an iron bridge. Bertrand Russel notes that Paine “was kept in Europe by the affairs of his bridge.” As noted by Bertrand Russell, a large model of Paine’s iron bridge was built on land in Paddington, London to demonstrate the concept. In 1790, Paine told his friend George Washington – who was at the time the first President of the United States – that a site had been found in London: a field (actually a bowling green) on the Marylebone Road, a short distance from Paddington Station. By September 1790 it was finished. Unfortunately, Paine failed to obtain the investment needed to build a bridge over the Thames. However, using Paine’s ideas, the Wearmouth Bridge was built over the River Wear in Sunderland in 1796, which at the time was the longest bridge in the world at 240 feet. The Wearmouth Bridge was not the first iron bridge. It appears to have been the second, built after Volume 45, number 4

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the famous span at Ironbridge, but was over twice as long with a nominal span of 240 feet, and only three-quarters the weight. This was presumably as a result of Paine’s “spider web” concept described in his patent, and discussed below.

Thomas Paine’s patent of 1788 Although I have more than 25 years’ experience in patents, I am not accustomed to reading patents from the 1700s. The first thing that struck me on reading Thomas Paine’s Patent No 1667 dated 1788, was the total lack of any claims. Claims are a relatively recent innovation. Apparently patents in many European countries did not contain claims before the 1970s, whereas in the US claims have been required since 1836. In the UK, until 1852 patents were granted upon applications which specified only the title of the invention. No obligation to file a specification arose until after the patent was sealed, at which point a period was allowed for furnishing a description. This appears to have been the case for Thomas Paine’s patent. If the lack of claims in Thomas Paine’s patent was disconcerting, then the lack of any drawings was perhaps more disconcerting. At first I thought some error had been made in not providing drawings. I asked my firm’s information services department if they could help in tracking down some drawings. They diligently contacted the British Library, searched the Internet, and even contacted the Thomas Paine National Historical Association in America, but no drawings were found. The specification makes no reference to drawings, and it seems drawings never formed part of the specification. Of course, even today there is no requirement for a UK or EP application to contain drawings. Under section 15 of the Patents Act 1977 and EPC Rule 40, the minimum requirements to obtain a filing date do not include drawings. In contrast, current guidance from the USPTO states that, “The drawings must show every feature of the invention as specified in the claims”.

The heading of the original patent dated 1788.

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REVOLUTIONARY INVENTOR

The more onerous drawing requirements of the US in modern times seem to echo another more onerous US requirement in Thomas Paine’s times. The first patent act in the US in 1790 required that a working model of each invention be submitted with the application. Indeed Paine seems to have submitted models of his invention to the US Patent Office, although not for the purpose of obtaining a patent. He wrote to The Congress of the United States in 1803, stating: “I have deposited in the office of the Secretary of State, and under the care of the Patent Office, two models of iron bridges; the one in paste-board, the other cast in metal… My intention in presenting this memoir to Congress is to put the country in possession of the means and of the right of making use of the construction freely; as I do not intend to take any patent right for it.”

Using Paine’s ideas, the Wearmouth Bridge was built over the River Wear in 1796, which at the time was the longest bridge in the world at 240 feet.

On leaving America in 1787 Paine appears to have gone first to France to submit his invention of an iron bridge to the Academy of Sciences. Having received a favourable verdict in France, he appears to have travelled to England later in the year to patent the bridge. It seems Paine was not too concerned by the issue of novelty, or at least not worldwide novelty. The 1624 Statute of Monopolies in England allowed patents to be granted for “any new manner of manufacture”, thus requiring inventions to be new. The Statute of Monopolies dominated patent law for centuries, and even to this day the Patents Act 1990 in Australia defines an invention as “any manner of new manufacture the subject of letters patent and grant of privilege within section 6 of the Statute of Monopolies.” In New Zealand a new patents act came into force in 2014, which also preserved the Statute of Monopolies as part of the definition of invention. It was noted that the definition of invention based on the Statute of Monopolies had proved flexible in dealing with changing technologies, and should allow flexibility as new areas of technology arise in the future. So what actually was Thomas Paine’s invention? The description begins

“Paine’s specification”, as it is rather quaintly headed, goes on to describe how the structure of the quills of birds and bones of animals, etc allow matter “to act over a larger space than it would occupy in a solid state”. It is on such principles that his iron bridge could be made lighter, and to span a larger distance, than other bridges. The references to nature in Paine’s specification fit well with his own natural theology promoted in his Age of Reason (1794–1807). Paine was a deist, who believed that natural theology was not a supplement to revealed theology but an alternative to it. Paine argued that the book of nature was the only book that was needed to understand God and his creation. Few inventors could hope to combine their inventions with their theology quite so perfectly as Paine does here. Paine notes in his specification:

“The idea and construction of this arch is taken from the figure of a spider’s circular web, of which it resembles a section, and from a conviction that when nature empowered this insect to make a web she also instructed her in the strongest mechanical method of constructing it.”

What Paine is saying here is essentially that patent drafting is hard! Paine observes that a description of a simple object can be given which exactly corresponds with the object, but the reader may still have difficulty conceiving of the object. So the next time you receive a clarity objection from an examiner you might like to reply that:

The observant amongst you will note a small taxonomical error here. Spiders are not strictly speaking insects. Spiders are arachnids, which are creatures with two body segments, eight legs, and no wings or antennae. Insects have three main body parts (head, thorax and abdomen), and three pairs of legs. However, Paine was not a biologist and can be forgiven this small error. 48 CIPA JOURNAL

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“It ought to be observed that extreme simplicity, though striking to the view, is difficult to be conceived from description, although such description exactly accords, upon inspection, with the thing described.”

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DECISIONS

PATENTS: UK

Patent decisions Account of profits | Deduction of overheads Design & Display Limited v OOO Abbott & Anr [2016] EWCA Civ 95 24 February 2016 Sir Terence Etherton, Tomlinson LJ and Lewison LJ

This case related to the determination of an account of profits in a case of infringement of European Patent (UK) No. 1816931. In his judgment of 30 May 2013 ([2013] EWPCC 27, reported July [2013] CIPA 399), Birss J found the patent, which related to shop display panels having snap-in inserts, to be valid and infringed. Following the judgment, Birss J had made an order for disclosure in respect of damages or an account of profits. Abbott elected for an account of profits. HHJ Hacon had given judgment on 4 September 2014 ([2014] EWHC 2924 (IPEC), reported October [2014] CIPA 571) in relation to the account of profits, upon which basis a sum of approximately £500,000 was deemed payable by the first defendant, Design & Display. Design & Display appealed against the judge’s findings. The first question raised by the appeal was whether Design & Display was liable for the whole of the profits made on the sale of panels sold together with infringing inserts. The second question was whether Design & Display was entitled to set off any part of their general overheads against the gross profit for which they were accountable. On the first question, the court had to first identify the invention. It was common ground that, for the purpose of assessing damages or taking an account of profits, the scope of the invention was not necessarily co-terminous with the scope of the claims, as explained by Laddie J in Celanese International Corp v BP Chemicals Ltd [1999] RPC 203: “Someone invents a new form of tin whistle. With the aid of his patent agent he obtains a patent. Regrettably, but as is now common, the patent ends with claims of ever greater particularity and narrowness… Claim 1 is for the tin whistle. Claim 10 is for a funnel to which the new tin whistle is connected. Claim 15 is for a battleship with a funnel to which the tin whistle is connected. No doubt none of the subsidiary claims are independently valid over Claim 1 but they are probably not per se invalid. Nor is there any doubt that an injunction or an order for delivery up would be directed to the tin whistle alone rather than the whole battleship. Similarly on an account substance not form counts. What the defendant has to account for is the profit made by exploitation of the invention, i.e. the whistle, not profits made by exploitation of material or activities which are not attributable to the plaintiff ’s ingenuity, i.e. the rest of the battleship.” Volume 45, number 4

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In the earlier decision, HHJ Hacon had identified the inventive concept in the patent as follows: “In my view the inventive concept was not just the idea of an insert made of a resilient metal (which was known). It was the composite idea of an insert made of such a metal and its having a particular shape and its interacting with the slot of the panel in a particular way, such that the metal insert could engage with the panel by snap-in means.” On the facts of the case, the Court of Appeal agreed with this assessment. In the leading judgment, Lewison LJ stated: “I can see nothing wrong with the judge’s identification of the inventive concept. I note at this stage that although claim 1 of the patent claimed a panel, the judge thought that the panel itself was not part of the inventive concept (see judgment at [26]), and that conclusion has not been challenged, in my opinion rightly.” The next aspect to consider was causation. HHJ Hacon had concluded that at least some of the sales of incorporated panels were caused by the sale of infringing inserts: “I will consider first just the sales of the infringing inserts. It is likely that in at least some cases the customer either specified or was recommended the infringing inserts because of the advantages they offered for particular displays and for use of the panel in which they were incorporated. Mr Lloyd in cross-examination accepted that there were such advantages. I have no real doubt that in those circumstances the sale of infringing inserts drove the sale of the compatible panels in which they were incorporated.” However, this was held by the Court of Appeal to have been in error: “In my judgment the legal error that the judge made was to ask whether the sale of the panel plus insert would have happened separately rather than to ask himself how much of the profit on the sale was derived from the infringement. In a case in which the infringement does not “drive” the sale it seems to me that it is wrong in principle to attribute the whole of the profit to the infringement. In particular it does not follow from the fact that the customer wanted a slat wall that incorporated an insert that the customer wanted a slat wall that incorporated the infringing insert. The mere fact that the two went together is not, in my judgment, sufficient to establish that the whole of the profit earned on the composite item was derived from the invention. One might just as well say that the sale of the panel APRIL 2016

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caused the sale of the insert. As the judge himself recognised the customer specifies panels, and on the hypothesis that he was considering at [31] the customer is indifferent about the inserts (provided that some form of insert is included). If the judge had found on the facts that the infringing insert was ‘the essential ingredient in the creation of the defendant’s whole product’ (i.e. the incorporated panel), then he would have been justified, on the facts, in declining to apportion the profit. But I cannot see that he made that finding.” The appeal was, therefore, allowed and the case was referred back to the IPEC for apportionment of the overall profit. On overheads, the court posed the question: if the defendant had not infringed the patent would he have carried on a noninfringing business which would have been sustained by the overheads in fact used to sustain the infringement? In other words, a defendant may not simply allocate a proportion of its general overheads to an infringing activity in order to reduce the profit payment to the claimant. Citing the judgment of HHJ Pelling in Woolley v UP Global Sourcing [2014] EWHC 493, the court decided that a proportion of the general overheads may only be deducted from gross profits in two circumstances: a. if an overhead was increased by the acts of infringement (i.e. the increase would not have occurred but for the acts of infringement), that increase may be deducted; and b. if the defendant was running to maximum capacity such that the infringing business displaced an alternative business which otherwise would have been conducted, the apportioned overheads incurred by the infringing business (and which would have been incurred by the displaced business) may be deducted. Thus, the appeal on the judge’s decision on overheads was allowed and the case referred back to the IPEC.

Infringement | Sufficiency | Patentability | Added matter Regeneron Pharmaceuticals v (1) Kymab Limited (2) Novo Nordisk A/S [2016] EWHC 87 (Pat) 1 February 2016 Carr J

This judgment relates to an infringement action brought by Regeneron based on European Patent (UK) No. 1360287 and the divisional therefrom, European Patent (UK) No. 2264163. It was reported on the IPKat blog (http://ipkitten.blogspot.co.uk) on 19 February 2016. The patents related to transgenic mice that can be used as platforms for therapeutic antibody discovery. Specifically, the 50 CIPA JOURNAL

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patents concerned the replacement of mouse variable genes with human variable genes. Kymab was alleged to be infringing the patents by offering various strains of transgenic mice. Kymab denied infringement and counterclaimed for revocation. The claim of joint liability against Novo was abandoned before the start of the trial. However, Novo maintained its challenge to the validity of the patents. Claim 1 of the 287 patent was directed to a method of modifying an endogenous immunoglobin heavy chain variable region gene locus in an isolated mouse embryonic system. The other claims in issue were noted by the judge to be of wide scope. Claims 5 and 6 of the 287 patent related to a genetically modified eukaryotic cell, a mouse and a mouse embryonic stem cell obtainable by the claimed method. Claim 1 of the 163 patent was also a broad claim directed towards a transgenic mouse. The language of this claim did not include many of the restrictions of claim 1 of the 287 patent. In relation to claim 1 of the 287 patent, the judge concluded, when interpreting the amount of mouse gene sequence to be removed and the amount of human gene sequence to be introduced: “Accordingly, claim 1 squarely includes replacements that were summarised as ‘100 kb out, 200-300 kb in’ and ‘150 kb out, 75 kb in’. Furthermore, as I have explained, the parties agreed that an LTVEC (large targeting vector) produced by recombineering – hence a BAC (bacterial artificial chromosome) – could not be larger than about 300 kb. Accordingly claim l covers introduction of up to about 300 kb of human sequence. However, there is no upper limit imposed by the claim on the amount of mouse sequence that is to be replaced. “ The judge also considered that claim 1 of the 287 patent covered the case where the mouse gene sequence is not deleted, but instead is moved to a different location and deactivated. Claims 5 and 6 of the 287 patent and claim 1 of the 163 patent were considered at least to cover products in which the amounts removed and introduced were as above. Three strains of mice that were manufactured by Kymab were alleged to infringe claims 5 and 6 of the 287 patent, with two of the strains also being alleged to infringe claim 1 of the 163 patent. None of the strains were alleged to infringe claim 1 of the 287 patent.

All the Court decisions listed in this section are available on the free-to-use website www.bailii.org. This month’s contributors are Anna Hatt, John Hull, Jonathan Markham and Matthew Ng of Beck Greener.

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All three strains were produced including a step of inverting the mouse variable region and displacing it upstream (but not removing it). Kymab’s primary argument of non-infringement was based on the claim requiring deletion of the mouse variable region. This was rejected by the judge based on his construction of the claim. Kymab additionally argued that the inversion and displacement of the mouse variable region did not cause them to be substantially activated. However, the judge rejected this line of argumentation. He considered that he had not been referred to any information which set out the relevant facts on which Kymab relied to make this point. In addition, he noted that Kymab’s own publication indicated that the inverted, displaced locus was functionally inactivated. The judge therefore concluded that all three strains fell within the scope of claims 5 and 6 of the 287 patent and two of the strains fell within the scope of claim 1 of the 287 patent. Carr J then moved on to consider sufficiency. The judge noted that it was clear from the evidence of the expert witnesses that insertions and deletions of the size covered by claim 1 of the 287 patent could not be performed without undue burden at the priority date. Indeed, even now there is no publication of deletion of 100 kb or more of mouse genome. In addition, the judge concluded that the approach of the example of the 287 patent did not enable the skilled person to perform deletions and insertions of the size covered by claim 1 of the 287 patent. However, the judge concluded that this did not necessarily lead to a finding of insufficiency. The skilled team was entitled to apply its common general knowledge. Regeneron advanced an argument based on an allegedly simple method involving repeating the steps of deletion and insertion. However, the judge concluded that such a method would not have occurred to the skilled person. Carr J concluded: “For these reasons, I have concluded that the whole subject matter defined in the claim 1 of the 287 Patent was not capable of being performed at the priority date without undue burden and without invention. The difficulty does not relate to some hypothetical puzzle at the edge of the claim, but rather to the central disclosure of the specification, and the amounts of genetic sequence of which it contemplates the deletion and insertion. None of the methods of the 287 Patent for achieving this, as disclosed in Example 3 would have worked. The task contemplated was unprecedented and could not have been achieved, if at all, without a great deal of creative thinking at the priority date. I do not accept that all embodiments within the claim are unified by a single principle of a reverse chimeric locus. This is not a principle that enables the method to be performed, rather it is the result of successfully carrying out the method. Accordingly, the insufficiency objection succeeds in respect of claim 1 of the 287 Patent.” Volume 45, number 4

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He noted that claims 5 and 6 of the 287 patent and claim 1 of the 163 patent were invalid for insufficiency, also pointing out that even if claim 1 of the 287 patent were not to be found of excessive breadth, these wider claims would still have been insufficient. The judge went on to consider the objections raised in relation to lack of novelty and lack of inventive step. He considered that neither document relied upon by Kymab anticipated claim 1 of the 287 patent or rendered it obvious. The judge also considered a number of different added matter objections. He rejected all of these objections. Accordingly, it was found that there were no added matter issues, the relevant claims were novel and inventive and all three strains of mice of Kymab fell within the scope of claims 5 and 6 of the 287 patent, and two strains fell within the scope of claim 1 of the 163 patent. However, the relevant claims of both patents were invalid for insufficiency. The patents were therefore revoked.

Unjustified threats of proceedings for patent infringement | Whether threats provisions apply to patent applications | Defence of justification Adjournment of trial (1) Global Flood Defence Systems Limited (2) UK Flood Barriers Limited v (1) Johann Van Den Noort Beheer BV (2) Johann Hr Van Den Noort and (3) Flood Control International Limited [2016] EWHC 99 (IPEC) 1 February 2016 HHJ Hacon

This decision relates to an action for unjustified threats in relation to European Patent Application No. 2315880 in the name of Van Den Noort Innovations BV (“BV”). An application for summary judgment in relation to the unjustified threats claim was previously dismissed in the judgment of [2015] EWHC 153 (IPEC) (reported February [2015] CIPA 101) For a period of time, the patent application was exclusively licensed to Global Flood Defence Systems Limited (“Global”). The licence permitted Global to sell a flood defence device known as the “self closing flood barrier” (SCFB). When the agreement came to an end, Global began to sell a flood defence product called a “self activating flood barrier” (SAFB). BV considered the SAFB to fall within the claims of the patent application. BV objected to the claimants’ continued activity in the flood defence market, saying that the SAFB infringed patent rights owned by BV. Threats to bring proceedings for patent infringement were made. In response, Global alleged that BV’s threats were groundless and actionable. BV counterclaimed for royalties due from Global under the licence and also for a declaration that a Community registered trade mark owned by Global was invalidly registered. APRIL 2016

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BV then amended and expanded their claim to include allegations of misrepresentation in relation to the licence agreement. This was said to provide both a defence to the claim for outstanding royalties and to set up a claim for damages due to the misrepresentation. The most interesting aspects of the case related to threats and whether they were justified. Global argued that there was no possibility of justification, whereas BV argued that the case should be adjourned until a later date. The threats were made in relation to a pending patent application. As set out in the previous judgment, the authority of Patrick John Brain v Ingledew Brown Bennison & Grant [1996] FSR 341 specified that the cause of action under section 70(1) Patents Act 1977 is available for such threats, in which Aldous LJ noted: “In any case, I contemplate that where a threat is made prior to grant, it would be understood as a threat to bring proceedings once the patent is granted. That is a threat of proceedings for infringement of a patent and therefore actionable.” Therefore, Aldous LJ’s primary view was that where a defence of justification was being run by a party threatening to bring proceedings for infringement of section 69 rights, that party should make sure that the patent is granted before trial. If the patent had not been granted by then, then Brain further set out that the court could look at the published specification and decide, upon the balance of probabilities, whether the alleged acts would infringe the patent when granted and whether a valid patent would be granted. In the present case, the EPO had issued a decision to grant and the patent was to be granted eight days after the start of the trial. Global, therefore, argued that this was not good enough: the deadline of the trial date had been missed, the defendants could not justify their threats and so judgment on this aspect of the case should have been entered against them. However, this was dismissed by the judge: “I think to draw a distinction between grant on 9 December and on 16 December 2015 would be artificial. Also, once the notice of grant has been issued, the difficulties of speculation about what the final claims might be which concerned Laddie J fall away. Subject to any countervailing matters which bear on the exercise of the court’s discretion, in my view a stay should be granted.” Global then had three fall-back arguments: i. the defendants had not prosecuted the patent with sufficient diligence; ii. the claimants had launched these proceedings in May 2014 and were still waiting for a trial to resolve the question of alleged threats; and 52 CIPA JOURNAL

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iii. in breach of the injunction granted on 29 January 2015, the defendants had made a further threat. The judge dismissed these points in turn: “First, to the extent that the defendants could have prosecuted EPA 2315880 more speedily, this was at their own risk. I don’t see how it is relevant to my discretion here. Besides, almost immediately after the CMC on 29 January 2015 the defendants sought expedition of grant from the EPO. As to the second point, it is true that a delay in the trial date in respect of proceedings started some 19 months ago is not ideal. But Mr Hicks did not suggest that this was the defendants’ fault; rather, it is due to the way these proceedings have progressed generally. In addition the claimants are protected by an interim injunction so the prejudice to them will be limited. The third matter raised was that the defendants have made a further threat to the claimants’ customers. In Mr Hicks’s skeleton this was not presented as a breach of the interim injunction, though in his oral submissions he moved in that direction. No application has been made for committal for contempt of court.” On the third point, the court found that the threat was considered to be a threat to bring proceedings in Spain, which was therefore not actionable under UK law. Therefore, the proceedings were adjourned to enable BV to be heard on the defence of justification.

Declaration of non-infringement | Indirect infringement | Defence to infringement under section 60(5) Patents Act 1977 Actavis UK Limited and 9 others v Eli Lilly & Company [2016] EWHC 234 (Pat) 12 February 2016 Arnold J

This judgment is part of the long-running dispute between Actavis and Lilly in relation to the chemotherapeutic treatment for lung cancer pemetrexed disodium. It was reported on the IPKat blog (http://ipkitten.blogspot.co.uk) on 13 February 2016. Lilly owned European Patent No. 1313508 covering pemetrexed disodium. It was held by the Court of Appeal ([2015] EWCA Civ 555, reported June [2015] CIPA 44) that supplying by Actavis of pemetrexed for reconstitution in saline solution would constitute indirect infringement of this patent. Following that judgment (from which appeals have been made by both parties to the Supreme Court) Actavis requested remission to the High Court to consider its request for a declaration of non-infringement in relation for supplying pemetrexed for dilution in dextrose (glucose) solution instead of saline solution. The DNI request related to the United Kingdom, France, Germany, Italy and Spain. www.cipa.org.uk

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This judgment relates to the dextrose remission issue and also to a request by Actavis for a declaration that undertakings it had made in letters to Lilly were not binding. There were a large number of witnesses because of the need to deal with the technical areas of oncology, endocrinology and pharmacy, and the various jurisdictions. Actavis had taken steps when launching its pemetrexed product in the UK to ensure that it would not be diluted in saline solution. These included specifying the use of dextrose solution only as a diluent in the Summary of Product Characteristics (SmPC) information; writing to the relevant authorities to emphasise that only dextrose solution could be used as a diluent and requiring that this information be passed on; explaining when contacting hospitals to promote the product that only dextrose solution could be used as a diluent; controlling the supply chain so that supplies to a purchaser could be stopped if there were a risk of saline solution being used as a diluent; monitoring formulation worksheets used in hospital pharmacies; investigating the possibility of requiring the use of dextrose solution as a contractual term. Lilly had not been able to suggest further steps which Actavis should take. Lilly argued that it was foreseeable that the Actavis product would be diluted with saline solution by some customers and in particular that pharmacists would avoid the use of dextrose solution for diabetic patients. Lilly’s argument was that pharmacists would switch from dextrose solution to saline solution for such patients once stability data relating to Actavis’s product in saline solution became available. In response to this argument Actavis had taken steps to ensure that such stability data would not become available. The judge commented that: “There is no evidence that Lilly has taken, or is planning to take, any steps to prevent the Actavis Product from being diluted in saline… Counsel for Actavis submitted that it was to be inferred that Lilly did not want to prevent infringement of the Patent. I am not sure that that inference is justified, but I do consider that it is legitimate to infer that Lilly is content for Actavis to have to assume the entire burden of policing Lilly’s patent.” Arnold J confirmed that the Court had a broad discretionary power under its inherent jurisdiction to grant a negative declaration if it would serve a useful purpose, and that such a declaration could be based on assumed, hypothetical or contingent facts. Arnold J reviewed the law on indirect infringement set out in Patents Act 1977 section 60(2) and Grimme Landmaschinefabrik GmbH v Scott [2010] EWCA Civ 1110, commenting that: “It is clear from these decisions that it is sufficient that a proportion of users will intend to use the means so as to infringe… On the other hand, one should disregard ‘speculative, maverick or unlikely use’ of the means[.]” Volume 45, number 4

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It was common ground that Actavis did not know that its product would be diluted in saline solution. Thus, the issue was it whether it was obvious that this was likely to occur in future at least in some cases, with the burden of proof being on Actavis. Based on the extensive evidence, the judge concluded that it was unlikely that stability data relating to the Actavis product in saline solution would be published in the foreseeable future, and still less likely that such data would be relied upon by pharmacists from a stability perspective; that even if such stability data were to become available, there would be no motivation to use saline solution rather than dextrose solution to dilute the Actavis product; and that Actavis’s safeguards would be effective in preventing the use of saline solution. He noted in reaching this conclusion that during chemotherapy of this type it was usual to monitor blood sugar levels, and that the relevant quantity of dextrose was similar to that of a single jelly baby. There was a dispute between Actavis and Lilly as to whether Actavis’s letters to purchasing authorities were legally inaccurate in suggesting that use of saline as a diluent in hospital pharmacies would be unlawful. Lilly argued that pharmacists would have a defence under Patents Act 1977 section 60(5) (c) providing an exemption for extemporaneous preparation of medicine in a pharmacy. Actavis disagreed. Arnold J found that the answer was not obvious and that he had not been given sufficient information to determine the point. He commented that: “I would note that Lilly is complaining about a threat of infringement of Lilly’s patent alleged to be being made by Actavis to Actavis’ customers. Normally, of course, it is competitors who complain about threats of patent infringement made by patentees to the competitors’ customers. Counsel for Lilly accepted that he was unaware of any precedent for this. Thus Lilly is not merely seeking to place the entire burden of enforcing the Patent on Actavis, but also Lilly is complaining that Actavis is going too far in attempting to safeguard Lilly’s rights. Again, this is a remarkable attitude for a patentee to adopt.” Lilly contended that Actavis would infringe the patent from the moment of launch (1) because the product would be stockpiled and some would remain in stock when stability data became available and (2) via tendering processes Actavis would be obliged to sell product over a time period likely to last until a time when stability data would be available. Arnold J dismissed these arguments as speculative. Thus, Arnold J granted the DNI request, giving each party leave to apply to the court in the event of a material change in circumstances. Arnold J also granted the requested declarations relating to Actavis’s letters, holding that the undertakings were not binding on Actavis under the law of contract or promissory estoppel. APRIL 2016

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Request for stay of proceedings | Declaration of non-infringement | Application for SPC based on third party marketing authorisation Eli Lilly and Company v Janssen Sciences Ireland UC [2016] EWHC 313 (Pat) 18 February 2016 Rose J

This case relating to was reported on the IPKat blog (http:// ipkitten.blogspot.co.uk) on 21 February 2016. Janssen was the proprietor of divisional European Patent (UK) No. 2305282 relating to antibodies for treatment of Alzheimer’s disease. Janssen did not yet have a marketing authorisation and thus had been unable yet to apply for a supplementary protection certificate. Following earlier litigation between the parties leading to a finding of invalidity of the parent patent, Lilly had applied for revocation of the divisional patent and for a declaration of noninfringement for its product solanezumab. Janssen requested a stay of proceedings to await the outcome of EPO opposition proceedings in June 2016. Rose J applied the principles on whether to grant stays of proceedings set out in IPCom GmbH & Co KG v HTC Europe Co Ltd ([2013] EWCA Civ 1496), reviewing the way in which the principles had been applied by Arnold J in Actavis Group PTC EHF v Pharmacia LLC ([2014] EWHC 2265 (Pat) (in which a stay was granted). Rose J summarised the main issues as follows: i. What are the relative likely timings of the English and EPO proceedings? ii. Is Eli Lilly prejudiced by significant commercial uncertainty if the English proceedings are stayed and it has to wait for the EPO proceedings to be finalised? iii. Are the undertakings offered by Janssen sufficient to reduce the commercial uncertainty faced by Eli Lilly to an acceptable level if a stay is granted? iv. Do the other fact[or]s in IPCom as applied to the facts here point in favour or against the grant of a stay? With regard to timing, Rose J stated that: “I consider that the advanced stage of the EPO proceedings and the likelihood that any appeal from the decision on the divisional patent will be accelerated are factors that point in favour of a stay… given that the English proceedings are at their early stages, it is likely that the EPO decision on validity even at the appellate level will be available before the result in the English proceedings.”

PATENTS: UK

With regard to the desirability of avoiding wasted costs (12th IPCom factor), Rose J stated that the sums were not significant in the commercial context, as solanezumab if successful would be likely to be a “blockbuster” drug. With regard to commercial uncertainty, Janssen had offered undertakings based on those in the Actavis case: i. To support any application by Eli Lilly to the Technical Board to accelerate any appeal from the decision of the Opposition Division in relation to the divisional patent. ii. Not to seek a preliminary or final injunction in the United Kingdom against the claimant or its licensees or customers in respect of infringement of the patent for the duration of the patent and any supplementary protection certificate (‘SPC’) that may be granted. iii. If validity is upheld, not to seek damages other than on a reasonable royalty basis. Lilly argued that despite the undertakings there was sufficient commercial uncertainty that a stay should not be granted. Lilly argued that it had made a DNI claim in the English proceedings, and that national courts exercise exclusive jurisdiction on infringement issues (4th IPCom factor). The parties were not prepared to split infringement and validity. Lilly further emphasised: “the somewhat unusual facts of this case namely that: i. the patent in respect of which Eli Lilly is seeking a DNI is about to expire without the patent holder having a marketing authorisation in place on which to base an application for an SPC; ii. if Eli Lilly’s product is authorised before the expiry of the patent, Janssen is likely to apply for an SPC on the basis of Eli Lilly’s authorisation; and iii. Janssen also intends to seek a reasonable royalty on sales of Eli Lilly’s product throughout the life of any SPC granted and is not able to say yet what that royalty would be.” Rose J agreed with Lilly that this led to an unsatisfactory level of commercial uncertainty despite the undertakings offered by Janssen (8th and 9th IPCom factors). Rose J also considered other factors, including whether a stay would deprive Lilly of an exportable judgment (which she considered to be a neutral point) and the public interest in dispelling uncertainly (11th IPCom factor, which she considered to weigh slightly against granting a stay). Balancing the factors, Rose J refused to grant the stay.

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IPO decisions Entitlement: section 12 HAPSS Limited v John G. Bowen BL O/076/16 12 February 2016 The claimant (HAPSS Limited) initiated entitlement proceedings under section 12 in relation to a pending EP application in the name of the defendant (Mr Bowen). The defendant applied to have the reference struck out on the grounds that: i. he was barred from entering the UK following a prison sentence, which would prevent him from having a fair and just hearing contrary to the European Convention on Human Rights; ii. none of the shareholders in HAPSS were resident in the UK and the company had no business in the UK; iii. an agreement to transfer ownership of the application from Mr Bowen to HAPSS was invalid; and iv. the proper jurisdiction for deciding the matter was the United States, with an action having already been filed in Los Angeles. In regard to whether the defendant would be deprived of a fair hearing, the claimant argued that any difficulty in entering the UK would not affect the statutory jurisdiction to determine entitlement under section 82. The claimant also pointed to evidence that the defendant had travelled to the UK on at least two occasions, suggesting there was a contradiction between what was being claimed and his actual behaviour. The claimant further argued that the residence of the shareholders of HAPPS was irrelevant as the claimant was the company itself, which was a UK registered company. In relation to the proper jurisdiction, the claimant pointed out that the proceedings initiated in the US did not concern the application in question, but related to US patents, and noted that an action in the US was irrelevant to section 82, because section 82(4) referred to the jurisdiction of a contracting state, which the US was not. The hearing officer first considered whether the agreement to transfer ownership of the application was invalid, and found that on the evidence submitted the defendant had not shown that there was no reasonable ground for bringing the reference under section 12. In relation to the proper jurisdiction, although the priority application of the EP application in question was a US application, this was not recorded on any of the US patents mentioned in the US proceedings. In addition, section 82 Volume 45, number 4

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indicated that the comptroller had jurisdiction to determine a reference under section 12 where the applicant did not have his residence or principal place of business in any of the relevant contracting states and where there was no evidence that the parties had agreed to the jurisdiction of another authority. The hearing officer agreed with the claimant that the comptroller had jurisdiction to determine the reference. In relation to whether the defendant would be denied a fair hearing, the hearing officer noted that the defendant had not submitted any evidence to substantiate his claim, which the claimant’s evidence contradicted. Although the point was not argued, the hearing officer also noted that Practice Direction 32 of the CPR allowed for video conferencing to be used in civil proceedings, which could be of assistance if the defendant was barred from entering the UK. The hearing officer concluded that the reference under section 12 met the requirements of the Act and the defendant had not been able to demonstrate that the claimant’s case disclosed no reasonable grounds for bringing a reference. The application to strike out was refused.

Patent decisions of the comptroller can be found on the IPO website via http://bit.ly/ipodecisions, and opinions issued under section 74A via http://bit.ly/opinion-requests. This month’s contributors from Barker Brettell LLP were David Pearce and Callum Docherty.

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EPO decisions Therapeutic use – Article 53(c) EPC Proof of publication – Article 56 EPC T 2451/13: sensoric imprinting TBA decision of 14 January 2016 Chairman: W. Sieber Members: M.O. Müller and E. Kossonakou This decision dismissed the proprietor’s appeal against the Opposition Division’s revocation of EP 1 981 360, a patent concerning baby food containing a mixture of vegetables to stimulate vegetable consumption later in life (referred to as “sensoric imprinting”). The claims in issue concerned a “non-therapeutic” method for administering a vegetable mixture as a baby food for sensoric imprinting, the use of a vegetable mixture to prepare the baby food, and the baby food itself. The opponent to EP 1 981 360 had argued that the method claim was excluded from patentability under Article 53(c) EPC only after the opposition period had ended. The Opposition Division nevertheless admitted this argument into the opposition under Rule 81(1) because it was prima facie relevant and the opponent had only been prompted to raise it by the later publication of decision T 1635/09. The opponent contended that T 1635/09 had changed the law in holding that a claimed method which is explicitly stated to be non-therapeutic will nonetheless be considered therapeutic if the inseparable result of that method is a therapeutic effect. The TBA was of the view that the Opposition Division had correctly exercised its discretion in admitting the argument, regardless of whether T 1635/09 had actually changed the law on therapeutic use claims. Publication of the TBA decision had brought to the opponent’s attention an important point that was relevant to its case, and on this

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basis alone, the Opposition Division had acted reasonably (as required by G 7/93). In considering the merits of the argument, the TBA noted the teaching of the patent that sensoric imprinting can prevent an infant from acquiring a dislike for the taste of vegetables, thereby stimulating their acceptance of vegetables in later life, resulting in a healthy lifestyle and preventing health problems such as obesity and diabetes. On this view, the method claim was inextricably linked to disease prevention, so the TBA concluded the claim was invalid under Article 53(c) EPC. In relation to the other claims in issue, the TBA next considered the proprietor’s request not to admit into the appeal a document submitted by the opponent with its response to the proprietor’s grounds of appeal. The TBA again sided with the opponent, observing that the document was filed, not to support a new inventive step attack, but as evidence to rebut the Opposition Division’s conclusion that a document already in the proceedings and cited against inventive step was not publicly available before the priority date. The document itself originated from a company which was now a subsidiary of the opponent. The proprietor therefore submitted, and the TBA accepted, that the applicable standard of proof was up to the hilt, as all of the evidence regarding publication of the document was in the hands of the opponent. However, what is meant by “up to the hilt” was disputed. Having surveyed the case law, the TBA concluded that up to the hilt meant beyond reasonable doubt; it did not require absolute certainty of prior publication. On the facts, the TBA considered that this standard had been met, so the opponent was permitted to rely on the prior art document for the purpose of the Article 56 EPC analysis.

Legal Board of Appeal (LBA) and Technical Board of Appeal (TBA) decisions are available on the EPO website at http://legal. european-patent-office.org/dg3/updates/index.htm and similarly decisions of the Enlarged Board of Appeal (EBA) can be downloaded from www.european-patent-office.org/dg3/g_dec/index.htm. A list of the matters pending before the Enlarged Board is included at www.european-patent-office.org/dg3/g_dec/pending.htm. Recent notices and press releases of the EPO are published at www.european-patent-office.org/news/info/index.htm and www.european-patent-office.org/news/pressrel/index.htm respectively, and recent issues of the Official Journal can be downloaded from www.european-patent-office.org/epo/pubs/oj_index_e.htm. This month’s contributors from Bristows were Alex May, Nadine Bleach and Amy Cullen.

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PATENTS: EPO

Inventive step – Article 56 EPC

Added matter – Article 123(2) EPC

T 1841/11: Method for manufacturing semiconductor substrate / Shin-Etsu Chemical Co., Ltd.

T 1840/11: Perforated plastically deformable sheet and method for making the same / Huang, Chen-Cheng

TBA decision of 3 December 2015

TBA decision of 13 November 2015

Chairman: G. Eliasson Members: S. Ward and T. Bokor

Chairman: M. Harrison Members: G. De Crignis and M.B. Tardo-Dino

This was an appeal by the applicant against the decision of the Examining Division refusing the patent application on the ground that the claimed subject-matter did not involve an inventive step. The most significant point arising from the decision concerns the EPO’s approach for dealing with the purpose of the closest prior art in the assessment of inventive step. The applicant argued that the chosen closest prior art, D2, differed from the claimed invention and that those differences involved an inventive step. One of the differences derived from the purpose of D2 – it was for a similar purpose (but not the same purpose) as the claimed invention. The claimed invention concerned the manufacture of a semiconductor substrate comprising a silicon-germanium film whereas D2 concerned the manufacture of a semiconductor substrate comprising a germanium film. The TBA, however, stated that this difference stemming from the different purpose could not be invoked in support of inventive step because the problem-solution approach presupposes that the skilled person has a purpose in mind from the outset of the invention process. The TBA stated that when determining the closest prior art, the purpose of the claimed invention must first be established. A document relating to a different, albeit similar, purpose could represent the closest prior art as long as:

This was an appeal by the patentee/applicant against the Opposition Division’s decision to maintain EP 1 430 861 in amended form. The applicant sought maintenance of the patent on the basis of alternative claims. A preliminary opinion from the TBA indicated that the alternative claims were not allowable under Article 123(2) EPC. At the appeal hearing, the Board considered the application of Article 123(2) EPC and whether the addition of a feature into claim 1 of each of the applicant’s proposed alternative claim sets constituted an intermediate generalisation. The applicant argued that the incorporation of a feature from one embodiment into the claim was an allowable intermediate generalisation, relying on T 962/98 and T 879/09 and the test of whether the skilled person would recognise, without any doubt from the application as filed, that the characteristics taken from the embodiment were not closely related to the other characteristics and applied directly and unambiguously to the more general concept. The applicant also argued that the three-step essentiality test from T 331/87 should be applied in order to assess whether the claim was allowable. The Board rejected the applicant’s arguments. The Board reviewed the two preferred embodiments of the application and found that, since they were identical apart from one feature, they did not allow the skilled person to conclude unambiguously that certain alternative features could be used. There was also no general disclosure that the relevant features could be abstracted from the combination of features provided. T 962/98 and T 879/09 did not assist the applicant. As to the applicant’s argument that the essentiality test should be applied, the Board was of the view that it was not applicable because the test related to the deletion of a feature from a claim. If the Board wished to apply the test in a case such as this, it would be necessary to include all the features from the relevant embodiment into the claim and then apply the test to the deletion of each one individually, until only the relevant feature remained. The Board held that this would not be a logical approach and was not supported by T 331/87. In any case, the test would not have been satisfied by applying this approach, for example because of the structural and functional link between the features.

“it would be immediately apparent to the skilled person that what is disclosed in the document could be adapted to the purpose of the claimed invention in a straightforward manner, using no more than common general knowledge”. Therefore, the TBA found the argument that it would not be obvious to incorporate the difference between D2 and the invention (which resulted owing to the difference in purpose) into the teaching of D2 must necessarily fail. Such an argument would only go to whether D2 was in fact a suitable choice for the closest prior art. The TBA also found that the other features of the claim did not involve an inventive step within the meaning of Article 52(1) EPC and Article 56 EPC 1973 and thus it dismissed the appeal. Volume 45, number 4

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TRADE MARKS

Trade marks Decisions of the CJ and GC Application (and where applicable, earlier mark)

Ref no. GC T-75/15

Rod Leichtmetallräder GmbH v OHIM; Rodi TR, SL 21 January 2016

– light metal wheel rims, tyres (12) – trading in motor vehicle rims and acessories except chains (35) – vehicle maintenance and repair services (37)

– vehicles and their accessories and spare parts, specially tyres (12) – repair and maintenance and installing spare parts and accessories for vehicles, specially tyres, vehicle breakdown assistance, lubrication, polishing and washing of vehicles (37) – distribution, transport and storage of vehicles and their accessories and spare parts, specially tyres, breakdown recovery and towing services, vehicle-rental services (39) (Spanish mark) GC T-802/14

Laboratorios Ern, S A v OHIM; michelle maynard GmbH – Berlin cosmetics 21 January 2016

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LEHAN. C

– household cleaning products, various cosmetics products and toiletries (3) – various medical, pharmaceutical and veterinary products (5) LEMA

– pharmaceutical and veterinary products, products for medical use, fungicides and herbicides (5) (Spanish mark)

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Comment The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under Article 8(1)(b). The BoA had not erred in finding the goods in class 12, and the services in class 37 were identical and that the retail services in class 35 covered by the mark applied for had an average degree of similarity to ‘accessories and spare parts’ in class 12 covered by the earlier Spanish mark. The marks were visually similar. The dominant element in the earlier Spanish mark was the word ‘rodi’, not the figurative elements. Further, the colours of the Spanish mark were an element of decoration that would not particularly attract the attention of the relevant public. The marks were phonetically similar, having the first syllable and beginning of the second syllable of the Spanish mark in common. The BoA was further correct that neither of the two marks had a meaning in Spanish so a conceptual comparison was not possible. The relevant Spanish public would not associate ‘rodi’ with the English word ‘roadie’. The BoA was therefore entitled to find that there was an average degree of similarity between the marks and that there was a likelihood of confusion.

The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under Article 8(1)(b). The BoA was correct to find that at least some of the relevant products were identical. As regards the comparison of the marks, the BoA was correct to find that: (1) there was a low degree of visual similarity between the marks on the basis that there were significant visual differences despite the marks sharing the same first, second and fourth letters; (2) there was an average degree of phonetic similarity between the marks; and (3) there was no conceptual similarity on the basis that the mark applied for had no meaning and the earlier mark meant ‘motto’ or ‘slogan’ in Spanish. The BoA was correct to find that there was no likelihood of confusion even for the identical goods.

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Ref no.

Application (and where applicable, earlier mark)

Bristol Global Co. Ltd v OHIM; Bridgestone Corp.

– vehicles, apparatus for locomotion by land and by air, automobile tyres, various other accessories for wheels and tyres of vehicles, cycles and their parts (12)

28 January 2016

STONE

T-194/14

– vehicle parts, namely shock absorbers, tires, wheels for vehicles, inner tubes, rims and covers for vehicle wheels, bicycles (12)

GC T-247/14

Meica Ammerländische Fleischwarenfabrik Fritz Meinen GmbH & Co. KG v OHIM; Salumificio Fratelli Beretta SpA 4 February 2016

– meat, poultry and game (29) – services for providing food and drink (43) MINI WINI

– various goods including meat products and charcuterie, meat and sausage preserves, fish, poultry and game, all in ready-to-eat, preserved, marinaded and frozen form (29)

TRADE MARKS

Comment

The GC upheld the BoA’s decision that the was a likelihood of confusion between the marks under Article 8(1)(b). The BoA was correct to find that, despite ‘aero’ being positioned at the beginning of the mark applied for, the element ‘stone’ had a least equal weight. In particular, English-speaking consumers would perceive the mark applied for as the association of the prefix ‘aero’ with the noun ‘stone’. The figurative elements of ‘aero’ were negligible. The visual differences between the marks (i.e. length, colour, font and figurative details) did not outweigh the common element ‘stone’, which also created partial phonetic identity between the marks. The BoA did not therefore err in finding the marks visually and phonetically similar. For English-speaking consumers, ‘stone’ would retain a semi-independent role over the ‘aero’ prefix in the mark applied for. There was therefore a conceptual similarity between the marks for these consumers. Given further the identity and similarity of the goods in question, the BoA was correct to conclude that there was a likelihood of confusion between the marks under Article 8(1)(b). The GC upheld the BoA’s decision to reject the opposition under Article 8(1)(b) in relation to the goods in class 29 but annulled its decision to reject Meica Ammerländische Fleischwarenfabrik Fritz Meinen’s (‘Meica’) submissions in relation to the services in class 43. The BoA has been correct to find no likelihood of confusion existed between the marks in relation to the goods in class 29. The visual and phonetic similarities between the marks were low as the relevant public’s attention would be drawn to the word elements ‘beretta’ and ‘stick’ in the mark applied for. Meica’s evidence was insufficient to show that the earlier mark had an above average distinctive character. However, the BoA had been wrong to reject Meica’s submissions in relation to the services in class 43 as inadmissible on the basis they widened the scope of the appeal and were not made in accordance with Article 60. Whilst the submissions had been made by way of response to Salumificio’s appeal (rather than by way of a separate notice of appeal), the BoA had infringed Article 8(3) of Regulation 216/96 by refusing to consider them.

Reported cases marked * can be found on the free-to-use website http://www.bailii.org/databases.html#ew The CJ and GC decisions can be found at http://curia.euro pa.eu/jcms/jcms/j_6/home Appointed Persons’ decisions can be found at www.ipo.gov.uk/types/tm/t-os/t-find/t-challenge-decision-results.htm. Abbreviations used: A-G=Advocate General; BoA=Board of Appeal; GC=General Court; CJ=Court of Justice of the EU; CTM=Community Trade Mark; IPEC=Intellectual Property Enterprise Court This month’s contributors are Katharine Stephens, Zoe Fuller, Hilary Atherton and Emma Green at Bird & Bird LLP. Reporters’ note: we are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Rebekah Sellars, Georgina Hart, Henry Elliott, Toby Sears, Toby Bond, Will Smith, Fleur Chenevix-Trench and Charlotte Lemesle. Volume 45, number 4

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Application (and where applicable, earlier mark)

Ref no. GC T-170/13 T-171/13

Benelli Q.J. v OHIM; Demharter GmbH 2 February 2016

MOTOBI

– scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking, lifesaving and teaching apparatus and instruments, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, sound recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire extinguishing apparatus (9) – vehicles; apparatus for locomotion by land, air or water; motor bicycles; motorcycles; motor scooters (12) – clothing, footwear, headgear (25)

GC T-169/13

Benelli Q.J. v OHIM; Demharter GmbH 2 February 2016

– crash helmets for motorcyclists (9) – vehicles; apparatus for locomotion by land, air or water (12) – clothing, footwear, textile headgear (25)

TRADE MARKS

Comment In revocation proceedings, the GC upheld the BoA’s findings that both the marks should be revoked for lack of genuine use, pursuant to Article 51(1)(a). The BoA was correct to find that the evidence produced by Benelli was insufficient to establish genuine use of the marks. Most of the documents produced by Benelli were devoid of evidential value in so far as they were undated or bore a date before or after the relevant period, or did not refer to the marks at issue, or were undated photographs which could not be cross-referenced with other documents (such as product catalogues or lists of references). None of the documents contained data regarding the turnover or the number of sales of the goods bearing the marks during the relevant period. Benelli’s reply to an order for 26 scooters bore a date at which Benelli had just been informed that Demharter was about to bring revocation proceedings and fell within the three months preceding the filing of the revocation action and therefore could not be taken into account.

The GC upheld the BoA’s decision which rejected the opposition to the mark applied for on the basis that Benelli had not established that the earlier marks were well known in Italy within the meaning of Article 6 bis of the Paris Convention for the purposes of Article 8(2)(c). The GC noted that although Benelli had not included any market survey evidence from which the public’s perception could be deduced, it could not be inferred solely from the absence of such a survey that Benelli was unable to establish well-known character of the earlier marks by other means. The GC held that the mere fact that Benelli submitted more than 40 documents did not, of itself, establish that the earlier marks were well known. The value of the evidence depended on the quality and relevance of the documents rather than the volume. Furthermore, evidence drafted in a language other than the language of the proceedings could not be taken into account. Therefore it could not be inferred that the marks were well known for motorcycles or clothing by a significant part of the Italian public.

non-registered Italian marks for motorcycles and clothing

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Ref no.

Application (and where applicable, earlier mark)

GC T-541/14

Antica Azienda Agricola Vitivinicola Dei Conti Leone De Castris Srl v OHIM; Vicente Gandía Pla SA

– wine (33) CASTILLO DE LIRIA

– alcoholic beverages, in particular wine and sparkling wine (33)

2 February 2016

KICKTIPP

– clothing (25) T-135/14 KICKERS

Kicktipp GmbH v OHIM; Società Italiana Calzature Srl 5 February 2016

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TRADE MARKS

– clothing, footwear, headgear (25) (Italian mark)

Comment The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under Article 8(1)(b). The identity of the goods was not challenged by Antica. The GC held that as regards the similarity of the marks the figurative element of the mark applied for and the word element ‘castillo de’ of the earlier mark were insignificant to the point of not having to be taken into consideration. The GC noted that according to settled case law in relation to wines, ‘castillo de’ was a generic element with weak distinctive character (T-458/07 and T-345/09, reported in May [2011] CIPA 318). The BoA was correct to find a low degree of visual similarity between the marks. Phonetically, there was a medium degree of similarity and the conceptual comparison was neutral. The BoA was correct to find a likelihood of confusion between the marks. The GC noted that particular importance should be attributed to the phonetic aspect (wine was often purchased in bars or restaurants in which the level of noise could affect aural perception). The GC annulled the BoA’s finding that there was a likelihood of confusion between the marks pursuant to Article 8(1)(b). The GC upheld the BoA’s assessment that the relevant public was the general public in Italy and that likelihood of confusion was to be assessed by reference to the not inconsiderable part of that public who did not have knowledge of English or German. For this group, the BoA was correct to find that neither the ‘kick’ nor the ‘tipp’ elements of the mark applied for had a more distinctive character than the other. The BoA had erred in finding the marks had moderate visual similarity. The last part of each mark – ‘tipp’ and ‘ers’ respectively – were completely different and the ‘pp’ element of the mark applied for was held to be unusual in Italian. As such, the GC held the marks had low visual similarity. The GC rejected the BoA’s finding that the marks were phonetically similar and held there was low phonetic similarity between the marks. The GC agreed it was not possible to carry out a conceptual comparison. Despite the identity of the goods, the GC held that the overall impression given by the marks was sufficiently dissimilar to rule out a likelihood of confusion.

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Infringement rights afforded by unregistered licence Youssef Hassan v Breiding Vertriebsgesellschaft mbH CJ (Seventh Chamber); C-163/15 4 February 2016

Following a reference from the German Higher Regional Court, the CJ held that the licensee of a CTM might bring proceedings alleging infringement of a CTM which is subject of the licence, even though the licence had not been entered in the Register of CTMs, and that Article 23(1) should be interpreted accordingly. Breiding was the holder of a licence relating to the CTM for the word mark ARTKIS owned by KBT & Co Ernst Kruchen agenzia commercial sociétà and registered in respect of, amongst other goods, bedding and blankets. Under the licence, Breiding had the consent of KBT & Co to bring proceedings for infringement of the trade mark. However, the licence had not been entered in the Register. Mr Hassan offered several duvets for sale under the ARTKIS mark and undertook to refrain from using the ARKTIS mark for bedding pursuant to a cease and desist agreement entered into with Breiding. Mr Hassan subsequently offered duvets for sale under the ARTKIS mark. Breiding brought proceedings for trade mark infringement and the Court found the cease and desist agreement to be valid. Mr Hassan appealed. The referring court deemed the success of the appeal to be dependent on whether Breiding could, with the consent of the trade mark proprietor and pursuant to Article 22(3), bring trade mark infringement proceedings against Mr Hassan even though the licence had not been entered in the Register. The CJ’s reasoning for concluding that a licensee of a CTM might bring infringement proceedings, even though the licence had not been entered into the Register was as follows: • The legal acts referred to in the first sentence of Article 23(1) covered the transfer of a CTM (Article 17), the creation of rights in rem over a CTM (Article 19) and the grant of a licence (Article 22). Read in isolation, one interpretation of that sentence could be that the licensee could not, if the licence had not been entered in the Register, rely on the rights conferred by that licence, vis-à-vis third parties. However, in interpreting that sentence, consideration also needed to be given to its context and the objectives pursued by the rules of which it was part.

TRADE MARKS

only to the proprietor’s consent. Neither Article 19 nor Article 22 contained analogous restrictions to that found under Article 17(6) which precluded a successor in title from invoking the rights arising from the CTM registration as long as a transfer of the CTM had not been entered on the Register. • The restriction under Article 17(6) would serve no purpose if Article 23(1) prevented third parties from relying on the legal acts referred to in Articles 17, 19 and 22 as long as they had not been entered in the Register. • Looking to the purpose of the rule in the first sentence of Article 23(1), taking into account the rest of Article 23(1) and Article 23(2), the lack of effects vis-à-vis third parties of the legal acts referred to in Articles 17, 19 and 22 which had not been entered in the Register intended to protect a person who had or may have had rights in a CTM as an object of property. • Article 23(1) did not therefore apply to a situation in which a third party, by infringing the mark, infringed the rights conferred by a CTM.

CJ dismisses appeal from GC decision on Adidas stripes position mark Shoe Branding Europe BVBA v OHIM; Adidas AG CJ (Sixth Chamber) C-396/15 17 February 2016

The CJ dismissed the appeal from the GC’s decision in adidas v OHIM (T-145/14, reported in June [2015] CIPA 66) by reasoned order, pursuant to Article 181 of the Rules of Procedure on the basis that the appeal was partly inadmissible and partly unfounded. Shoe Branding filed an application for a CTM in respect of footwear in class 25 (below left). The application claimed protection for the number and positioning of the stripes on the shoe but not the shape of the shoe itself. Adidas opposed the application pursuant to Article 8(1)(b), 8(4) and 8(5) and relied on its earlier CTM registration for the mark shown on the right below. Adidas’ appeal from the BoA’s decision which rejected the opposition was upheld by the GC.

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Shoe Branding’s first ground of appeal, which challenged the GC’s findings that: (1) the average consumer did not demonstrate a high level of attention; and, (2) sports footwear were everyday consumer goods, and also alleged that the GC had failed to take into account the fact that sportswear may serve an advertising purpose, was inadmissible as it disputed the GC’s finding of fact and therefore fell outside the CJ’s jurisdiction. The CJ dismissed the remainder of the first ground of appeal, which claimed the GC had erred in holding that the average consumer was not observant and was not able to distinguish between brands, as partly inadmissible and partly unfounded. The CJ held that, as Shoe Branding had not advanced the argument that coexistence of the two marks at issue over several decades had not led to confusion on the part of the average consumer before the GC, the GC was correct not to acknowledge this factor in its decision. The CJ dismissed the second ground of appeal as partly inadmissible and partly unfounded and found that the GC had conducted an overall assessment, and had taken account of the difference in the length of the stripes resulting from their angle when deciding that the difference did not influence the overall impression produced. The third ground of appeal was also unfounded. Once proof of the reputation of the mark had been made out, it was irrelevant to prove the inherent distinctive character of that mark in order to obtain a finding that it had distinctive character. The GC had taken into account the BoA’s analysis that proof of the earlier mark’s reputation had been made out, which made an assessment of the mark’s inherent distinctive character irrelevant.

TRADE MARKS

Court of Appeal dismisses Glee Club’s appeal and holds ‘wrong way round’ confusion potentially relevant under sections 10(2) and 10(3) Comic Enterprises Ltd (“CEL”) v Twentieth Century Fox Film Corporation (“Fox”)* Arden, Kitchin and Lloyd Jones LLJ [2016] EWCA Civ 41 8 February 2016

The CA (Kitchin LJ giving the lead judgment) unanimously dismissed Fox’s appeal from the decision of Roger Wyand QC sitting as Deputy Judge of the High Court ([2014] EWHC 185 (Ch), (reported in March [2014] CIPA 182). Although the CA heavily criticised the Deputy Judge’s judgment, it upheld his finding that Fox had infringed CEL’s marks under sections 10(2) and 10(3). CEL’s cross-appeal on the basis that the Judge ought to have found that Fox had committed passing off was also dismissed.

Background The proceedings concerned a dispute regarding the right to use the word ‘glee’ as the name for Fox’s musical comedy TV drama series. CEL operated a number of entertainment venues in the UK, which included stand-up comedy acts, live and recorded music, and nightclub and cabaret entertainment. CEL had two registered marks that included the words ‘the glee CLUB’ and were registered for various services in class 41. It was accepted for the purposes of the appeal that nothing turned on the differences between the marks, as shown below:

Infringement under section 10(2) The CA found that the Deputy Judge had erred in three respects in considering the question of infringement under section 10(2). Firstly, while Mr Wyand had referred to evidence of wrong way round confusion, the CA found that he had relied on it without explaining why it had any probative value. It was therefore necessary for the CA to review that evidence for itself. It rejected Fox’s argument that wrong way round confusion was not admissible as a matter of law, but said that it must be assessed with care along with all the other evidence to determine whether it was of any assistance in answering the statutory question. Nevertheless, in doing so, the CA found that CEL’s evidence of wrong way round confusion showed that the similarity between the Volume 45, number 4

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mark and the sign and the similarity between the relevant services had led a significant number of people to believe that the two were connected. Secondly, the CA found that the Deputy Judge had not considered the similarity between the relevant services, which amounted to a material deficiency which vitiated his conclusion that they were similar. Thirdly, he had also failed to consider the significance of the context of use which amounted to a further material error. Re-evaluating the issue of infringement under section 10(2), the CA found that the relevant services were ultimately similar; the nature of services could overlap, as comedy shows were often televised and a TV series about a singing club could give rise to all kinds of associated activities. The purpose and method of use of the services were found to be similar in that they were all directed at members of the public of a similar age, seeking entertainment, and who enjoyed musical theatre and comedy. Furthermore, live music and comedy shows would be complementary to the glee TV series, as evidenced by the fact that Fox had already sanctioned two world concert tours. This, along with the fact that Fox had not proved that its use of the word ‘glee’ would be understood by the average consumer as denoting a singing club, was relevant context to be taken into account. Taking all matters into account, the CA found that there was a likelihood of confusion.

TRADE MARKS • PASSING OFF

Passing off High Court cancels London taxi marks The London Taxi Corporation Limited (“LTC”) v Frazer-Nash Research Limited (“FNR”) & Anr* Arnold J; [2016] EWHC 52 (Ch); 20 January 2016

Arnold J held that LTC’s trade marks for the shape of London taxis were invalid for lack of distinctive character and because they consisted of shapes which gave substantial value to the goods. Arnold J also held that, even if the trade marks were valid, they would not have been infringed by FNR and the second defendant, Ecotive’s, new taxi model. LTC was the successor in title to the manufacturer of a number of models of taxis, including the Fairway, TX1, TXII and TX4. FNR and Ecotive were the successors in title to the manufacturer of the Beardmore, Oxford and Metrocab taxis. LTC owned a 3D CTM for the following:

together with a 3D UK-registered trade mark as shown below:

Infringement under section 10(3) The CA rejected Fox’s contention that section 10(3) infringement could only be ‘right way round’. The evidence of wrong way round confusion demonstrated that the use by Fox of the sign glee was such that the average consumer would make a connection between the sign and the mark. The CA also held that the protection afforded to a mark with a reputation extended beyond existing customers. The Deputy Judge was therefore entitled to find that CEL’s potential customers were changing their economic behaviour and that CEL’s mark was suffering detriment because it was being swamped by Fox’s use of its sign. On the question of due cause, Kitchin LJ acknowledged that Fox had adopted the sign ‘glee’ in good faith and that the TV series was a creative work. However, the likelihood of confusion and the likelihood of significant detriment to CEL’s mark led him to agree with Mr Wyand that Fox had not shown that its use of the sign was with due cause.

together the “Marks”. LTC claimed that FNR and Ecotive threatened to infringe the Marks under Articles 9(1)(b) and 9(1)(c) and commit passing off by marketing a new taxi model called the ‘new Metrocab’. The defendants counterclaimed for invalidity of the Marks relying on Articles 7(1)(b), 7(1)(e)(iii) and (in the case of the CTM only) for revocation for non-use under Articles 15(1) and 51(1)(a). LTC argued that the Marks had acquired distinctive character under Article 7(3).

Passing off Kitchin LJ found that Mr Wyand had been right to dismiss CEL’s claim in passing off because the damage suffered by CEL was not the consequence of any misrepresentation by Fox. New Metrocab

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Distinctive character Arnold J held that the Marks would be perceived by the average consumer as merely a variation of the typical shape of a taxi/ car. Even if the shape did depart significantly from the norm, it would not have been perceived as identifying the origin of the goods. This would have been the case whether the average consumer was a taxi driver (as Arnold J held) or a consumer of taxi services. The Marks were therefore held to lack inherent distinctive character. In relation to acquired distinctiveness, Arnold J held that taxi drivers would have relied on the word or figurative trade marks under which the vehicles were sold, rather than the shapes of the vehicles. Alternatively, consumers of taxi services would not have placed any relevance on the manufacturer of the taxi whatsoever. The evidence adduced by LTC was therefore insufficient to show that the Marks had acquired distinctive character.

Substantial value The shape which was the subject of the UK trade mark was also registered as a design. Arnold J applied Hauck vs Stokke C-205-13, and held that the registered design was a relevant consideration since the purpose of Article 7(1)(e)(iii) was to prevent trade marks from being used to extend the protection of other intellectual property rights (potentially indefinitely). The UK trade mark was therefore invalid. While the shape of the CTM was not protected by a registered design, it could have been, and therefore the CTM was held invalid on the same basis.

Non-use The CTM had only been used in relation to used vehicles, and sales were modest and almost exclusively in the UK. This amounted to a recirculation of goods which had already been put on the market under the CTM long beforehand. Therefore Arnold J held that there was no genuine use. Destroying goods bearing the trade mark (when taxis were sold for scrap) was held not to constitute trade mark use.

Infringement In case he was wrong as to the invalidity of the marks and the grounds for revocation, Arnold J went on to consider the question of infringement. LTC did not argue that there was a likelihood of confusion on the part of taxi drivers. Even if the average consumer was a user of taxi services, Arnold J held there would still have been no likelihood of confusion because of the lack of distinctive character of the Marks and the low degree of similarity. The claim under Article 9(1)(b) therefore failed. The claim under Article (9)(1)(c) also failed and the Judge held that FNR would have had a defence under Article 12(b) in any event. The claim for passing off was also rejected, the Judge finding that LTC had not established that certain features of the taxi models it relied upon denoted a particular source of London taxis. Volume 45, number 4

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PASSING OFF

ISPs ordered to block access to websites that infringe trade marks Cartier International Ltd & Anr v British Telecommunications Plc & Ors* Judge Hacon (sitting as a judge of the High Court); [2016] EWHC 339 (Ch); 23 February 2016

Judge Hacon granted a website-blocking order requiring the defendant Internet service providers to block access to certain websites that were being used by their operators to infringe the trade marks of Cartier and the second claimant, Montblanc. Cartier and Montblanc owned registered trade marks which they used for the advertising and sale of their luxury goods, such as CARTIER for watches and MONTBLANC for pens. The defendants were the five main Internet service providers in the UK. The websites in question – ‘www.perfectwatches.cn’, ‘www.pursevalley.cn’, ‘www.montblancbay.com,’ ‘www.montblanc.com.co’ and ‘www.replicawatchestores.co.uk’ – were being used by their operators to market cheap copies of Cartier and Montblanc’s goods. The Judge was satisfied that the principles set out in Arnold J’s judgment in Cartier International AG v BskyB (“Cartier I”) (reported in November [2014] CIPA 648) were satisfied. There, Arnold J had held that the Court had the power to grant website-blocking injunctions in the context of trade mark infringement pursuant to section 37(1) Senior Courts Act 1981, as interpreted in accordance with the IP Enforcement Directive. Although none of the defendant service providers appeared or were represented, a written note was submitted on their behalf. However, Judge Hacon rejected their objections in relation to the third and fourth threshold conditions laid down by Arnold J in Cartier I. In relation to the third condition (“ISPs’ services must be used to infringe”), he found that the mere fact of access to the infringing websites was sufficient and it was not necessary for Cartier and Montblanc to show that the ISPs’ services had in fact been used to infringe the trade marks. In relation to the fourth condition (“actual knowledge by the ISPs”), it was sufficient that the ISPs had had knowledge of the potential for their services to be used to access the relevant websites, even if not knowledge of actual instances of such use. The Judge also rejected the ISPs’ argument that this type of application required full and frank disclosure. On the question of proportionality, assessing the comparative importance of the rights engaged, the Judge held that the visibility of the websites in question added to the public knowledge of the widespread availability of the fake products sold under the trade marks which was in itself APRIL 2016

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likely to damage the functions of the marks. He also rejected the ISPs’ argument that Cartier and Montblanc had made insufficient efforts to have the relevant websites blocked by other means. As regards the requirement for efficiency and dissuasiveness, there was no requirement for Cartier and Montblanc to show that blocking access to the target websites was likely to reduce the overall infringement of their trade marks by other websites. He also rejected the argument that a blocking order was liable to affect the sale of lawfully marketed goods on websites that shared an IP address with the target websites, finding that the practical solution was to make an order requiring domain name system (DNS) blocking in such circumstances. As the defendant ISPs’ appeal in Cartier I was due to be heard by the Court of Appeal in April 2016, Judge Hacon indicated that he would grant the defendant ISPs permission to appeal in this case.

Do you have a client with a great technological invention? Does your firm have a client worthy of media coverage? We are currently on the lookout for any technological inventions that have been granted patents that we can feature as a CIPA media case study – and potentially a video case study for the CIPA website. Ideally the invention will have recently been commercialised – or is just about to be. If you have a client with such an invention, please contact Isabelle Wilton at isabelle@cipa.org.uk. We will mention your firm in any resulting media or video work.

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PASSING OFF

High Court does not have jurisdiction to hear appeals from UDRP decisions Yoyo.email Ltd v Royal Bank of Scotland Group Plc & Ots* Judge Dight [2015] EWHC 3509 (Ch) 2 December 2015

Judge Dight struck out Yoyo’s claim for a declaration that it had not committed any wrongdoing in registering the domain names ‘rbsbank.email’, ‘rbs.email’, ‘natwest.email’ and ‘coutts.email’. The Judge held that the court had no jurisdiction to act as an appeal body from decisions of the dispute resolution panel operating under the UDRP regime. Had he not struck out the claim, the Judge said he would have granted reverse summary judgment in the defendant banks’ favour. The defendant financial institutions were respectively owners of the trade marks RBS, RBSBANK, NATWEST and COUTTS. Upon discovering that Yoyo had registered the eponymous domain names, the banks successfully filed a complaint to WIPO pursuant to ICANN’s Unified Dispute Resolution Policy. The domain names were ordered to be transferred to the defendants, and Yoyo commenced proceedings in the High Court. Judge Dight concluded that, adopting the reasoning of Sonia Proudman QC (as she then was) in Patel v Allos Therapeutics, clause 4k of the UDRP did not give rise to a separate cause of action in favour of Yoyo, nor did it afford any jurisdiction to the High Court to act as an appeal or review body from decisions under the UDRP. He therefore struck out Yoyo’s claim. As regards the banks’ application for summary judgment on their counterclaim for trade mark infringement and passing off by the mere registration by Yoyo of the domain names, Judge Dight held that registration of the domain names constituted passing off. Applying the reasoning of Aldous LJ in British Telecom v One in a Million & Ors, the mere registration of a domain name constituted a representation to persons who consulted the domain name register that the registrant was connected or associated with the names registered and was thus the owner of the goodwill in the names. The Judge rejected Yoyo’s argument that the reasoning of Aldous LJ was out of date because the Internet had developed to such an extent since One in a Million (or that the public had become significantly more sophisticated) that the reasoning no longer held good. As the first act of passing off had occurred on the day of registration of the domain names, there was no need for the Judge to analyse the claimant’s proposed business model and intended use of the domain names. Royal Bank of Scotland was entitled to summary judgment. www.cipa.org.uk

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INSTITUTE EVENTS

Patentable subject-matter Report of the 4 February CIPA seminar on Patentable Subject-Matter: Keeping up with §101 in Software Patents. Speaker: Michael W. Piper, Director, Conley Rose

n comparison to the EPO or the UK IPO, the USPTO has traditionally adopted a more lenient approach to granting patent protection for inventions relating to software and business methods. However, the recent US Supreme Court decisions in Bilski, Mayo and Alice appear to have significantly limited the possibility of obtaining software patents in the US. Following Alice, many software patent applications have been rejected by the USPTO as being directed to abstract ideas. This turning of the tide has resulted in a great deal of uncertainty regarding the availability of patent protection for software inventions in the US. During his presentation, Mr Piper gave the audience an excellent overview of the situation at the USPTO post-Alice and shared his extensive knowledge and experience in preempting as well as addressing §101 rejections. Mr Piper began his presentation by discussing the Official Guidance issued by the USPTO in light of Alice. The key point driven home by this guidance is that all claims with a judicial exception are subject to the same test for eligibility: • Step 1: Is the claim to a process, machine, manufacture or composition of matter? • Step 2A: If the answer is no, is the claim directed to a judicial exception (i.e. a law of nature, a natural phenomenon or an abstract idea)? If yes, identify the judicial exception. • Step 2B: If the answer to step 2A is yes, does the claim recite additional elements that amount to significantly more than the judicial exception? If the answer to step 2B is yes, then the claim qualifies as eligible subject-matter under 35 U.S.C. §101. But what does “significantly more” in step 2B mean? Mr Piper informed the audience that the Guidance provides some helpful pointers. For example, the mere implementation of an abstract idea on a generic computer, adding instructions to apply an abstract idea, or broadly linking an abstract idea to a technological field are all unlikely to add significantly more to the claim. However, if the claim contains additional elements demonstrating an improvement to another technology or a technical field, or an improvement in the functioning of a machine, or is limited to a particular useful application and that limitation is not routine or conventional, then there is a good chance that it will be found to amount to significantly more than the abstract idea itself. The USPTO has also issued further guidance containing summaries of relevant cases as well as examples of claims directed to abstract ideas. Helpfully, the abstract ideas examples also give an insight into the reasoning used by the USPTO when assessing subject-matter eligibility. Volume 45, number 4

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Mr Piper explained that the USPTO classifies patent applications on the basis of the information provided in the title, abstract and claims. Following Alice, subject-matter classified under Art Unit 3600 has attracted close scrutiny by the examiners and has a very low allowance rate. Subject-matter classified under other Art Units, even if it is related to software, seems to fare better. As Mr Piper noted, the Supreme Court decision in Alice indicates that computer-implemented inventions are still patentable as long as certain requirements have been met. Mr Piper then went on to give the audience useful practical tips on how to address some of the §101 rejections issued by the USPTO. For example: 1. The USPTO Guidelines state that a claim must be considered on an element-by-element basis as well as in its entirety. Examiners have sometimes been known to carry out an element-by-element analysis and conclude that the claim is patent ineligible. In such cases reminding the examiners to analyse the claim as a whole may be beneficial because such an analysis may lead to a different assessment. 2. The First Action Interview Pilot Program introduced by the USPTO remains open to all applicants and allows the applicant to request an interview with the examiner prior to issuance of the first office action. Such interviews can identify potentially allowable subjectmatter and/or any roadblocks in an application thereby allowing speedier resolution of patentability issues. As most interviews are conducted over the telephone, UK or European attorneys should be able to make full use of this provision. 3. Even if a §101 objection has been raised against a claim, the claim will still be examined for other requirements including novelty and inventive step. The provision of this assessment at an early stage is quite helpful because if there is a strong objection on another ground (for example, a novelty objection), the §101 objection may become a moot issue. On a final note, Mr Piper reminded the audience that given the importance of software inventions to the US economy, it does not make economic sense for the US to deny inventors in this area the same credit and recognition awarded to inventors in other technical areas. Bearing this in mind, just how stringent the USPTO will continue to be with software patents remains to be seen. In the meantime, a prudent approach would be to take note of the USPTO Official Guidance and keep an eye on how the case law develops. Asawari Churi (Associate), Trainee Patent Attorney at Pinsent Masons LLP APRIL 2016

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IPO Business Support Report of a CIPA webinar, 26 January 2016. The speaker was Andrew Reith, Business Engagement Manager at the IPO. A recoding of the webinar is available from CIPA: contact cpd@cipa.org.uk.

he IPO reaches out to businesses and the public in many different ways in an effort to increase general awareness and understanding of IP, as outlined in this webinar.

IP Equip This is a free online learning tool from the IPO, which includes four very short modules on patents, designs, trade marks and copyright. Each module takes on average 15 minutes to complete and provides users with enough information to gain a basic level of understanding of the various forms of protection available. Furthermore, each module contains a short video case study to highlight the importance of IP in a particular business context. Additionally, a library of links is presented at the end of each module to assist users in locating further information on a particular form of IP protection. Upon completing all of the modules available via IP Equip, users should at least appreciate the differences between the various types of IP protection available and recognise when they might be applicable.

IP Equip App This is another free tool from the IPO which essentially acts as a basic overview of IP at your fingertips at any time. It also contains some video links to business people who explain how identifying, protecting and owning their IP has led to success for their businesses. The IP Equip App is available from the Apple and Android app stores and can be found by searching for “IP Equip”.

IP Health Check This is yet another free tool from the IPO which generates a personalised IP report based on information input by users. The IPO website states that around 22,000 health checks have already been taken using the tool. It is split into 68 CIPA JOURNAL

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multiple modules related to trade marks, patents, copyright, designs, confidential information, licensing intellectual property, franchising and enforcement. Upon entering information in response to the prompted questions the tool will help users find out: if they have any IP to protect; whether they own it or not; how and whether to protect it; and how it can be exploited commercially. Moreover a personalised list of actions to take is given to users, along with an explanation of why each recommendation has been made. Links to other sources of information are additionally given to assist users of the tool.

IP Master Class This is a two-and-a-half day course costing £250+VAT from the IPO for giving attendees a bit more than just a very basic understanding of IP. Professional speakers from the IPO present aspects of the course and are available to answer questions from attendees. The IPO website states that 92% of people who have attended an IP Master Class now find it easier to recognise intellectual property (patents, trade marks, designs and copyright) within a business. The course is available online and in person.

Other outreach programmes Other ways in which the IPO is reaching out to businesses and the general public to increase IP awareness and understanding include: the IP finance Toolkit; Patlibs at various locations around the country; social media and blogs. More information about any of the above is available online. Steven Charlton (Fellow)

Missed this webinar? A recording is available from CIPA, contact cpd@cipa.org.uk. www.cipa.org.uk

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INSTITUTE EVENTS

Patent Attorneys and IPO due diligence Understand your client’s business, be prepared, expect demands at short notice, be discreet, and know your limits – Janice Denoncourt provides a summary of Devenand Crease’s insights into carrying out due diligence for initial public offerings (and private placements). ‘Initial Public Offering (IPO) Due Diligence: The Patent Attorney’s Perspective’ was the topic of a stimulating one-hour webinar that took place on 18 February 2016 as part of the CIPA webinar series. This webinar followed hot on the heels of the CIPA Life Sciences 2015 conference which also covered IPO due diligence. As CIPA says: “With the improvement in the global economy many technology and life science companies are raising funds by listing on stock markets around the World. The webinar provides a practical overview of the IPO process for in-house and private practice patent attorneys who may be involved in preparing a company for listing.” While patent attorneys have an interdisciplinary science and law background, most are not familiar or at ease with capital markets and finance. This webinar offered insight into this complex world and covered the patent attorney’s role as an external advisor to the internal team (seller) involved in the IPO process. The webinar was presented by Devenand Crease (Fellow) a partner at Keltie LLP. He has been involved in a range of intellectual property (IP) legal due diligence reporting across different forms of fund raising, from seed funding and private placements to full listings on capital markets.

What does IPO due diligence involve? Devenand gave a useful presentation about the types of patent and IP legal due diligence and verification required in relation to an initial public offering (IPO). He explained that due diligence is an investigation or audit of a potential investment and serves to confirm all material facts regarding share offer. A company intending to offer its shares for sale to the public for the first time is legally required to conduct due diligence before listing in order to protect against the risk that the prospectus might be inaccurate or incomplete – and incidentally the potential for civil liability to investors who have relied on it and suffered loss, or criminal sanctions.

The four main due diligence questions To list on an exchange there is a general duty of disclosure. Companies must make material information available to small, individual investors at the same time they make it available to large, institutional investors like brokerage houses, business analysts and existing major shareholders. The full disclosure Volume 45, number 4

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requirements are meant to protect all investors in the same manner as the insider trading laws: in essence, the market regulators want to ensure that no person or entity has an unfair trading advantage over other investors. When large institutions and wealthy investors gain early access to a company’s earnings reports and news releases, for example, they are able to make well-informed decisions before the rest of us. Devenand summarised the key headline IP due diligence questions that feed into this general duty of disclosure as follows:  What is the company’s IP strategy and approach to IP management?  What is its IP portfolio – the corporate IP assets?  Are there any IP infringements or challenges to the validity of the IP?  Are there any other problems with the IP (the general ‘catch all’ question)?

How deep? The scope of an IP due diligence investigation is extremely wide and covers the entirety of the company’s business. Such an investigation is very time consuming and costly. How deep does an IP due diligence investigation have to go to meet the patent attorney’s regulatory burden? What amounts to a ‘reasonable’ independent investigation will depend on the nature of the business, the level of risk involved in the offering and the jurisdictions in which the offering is being sold. The level of due diligence for an IPO will be considerably higher than previous due diligences the client may have been involved in, earlier in its business life cycle. As a rule of thumb, the more finance to be raised, the more IP asset disclosure required to protect the public. The level of public scrutiny of the contents of the prospectus document will be very high (and accordingly, require a more labour-intensive scrutiny from the patent attorney’s point of view). Any wrinkles or gaps in the IP portfolio identified by the patent attorney give rise to risk. First, the risk that the value of the shares will be adversely affected. Second the risk that the listing will be delayed while the problems are addressed. Third, the risk that the IP due diligence discovers problems that result in the listing being abandoned altogether.

Managing communications with the IPO team On the journey of transformation into a public company, success depends a great deal on a coordinated team effort APRIL 2016

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by the internal management and its advisors. The external advisory team typically includes the underwriter, the reporting accountant, the independent auditor, public and investor relations professionals, legal counsel and ‘other’ advisors. A patent attorney is classed as ‘other’. Devenand lamented that the patent attorney is often the last in the chain of communication, which often results in less time to prepare, investigate and report. Patent attorneys should ‘expect this’. However, in the lead up to an IPO, the patent attorney can help their clients and themselves by ensuring the IP owner undertakes a robust due diligence in good time, identifies any problems, and fixes them. Essentially, the patent attorney needs to be in a position to make positive statements about the ownership of IP and licence rights relating to it, and about any IP litigation, or challenges to the IP as at the effective date of the due diligence report and comfort letter. Ultimately, however, the company and its directors have primary responsibility for ensuring that the prospectus is true, accurate and not misleading and for avoiding the omission of any material information. In terms of the IP due diligence reporting chain, communicating information about IP assets should be approached sensitively. An external patent attorney will report directly to the in-house legal counsel and/or finance director. Dev advised patent attorneys to be careful not to disclose outside this line of communication. The best practice is to do so only with express authority and in his view, it is preferable to have a slimmer reporting line than to disseminate information too widely or unnecessarily1.

The patent attorney’s comfort letter The IP due diligence will culminate with the patent attorneys’ comfort letter as part of the due diligence process. This is a letter of assurance that the company’s IP is sound and in good order, declaring no indication of false or misleading information in the prospectus. The comfort letter is typically signed prior to the closing date for a given publication offering. The letter must be prepared in good faith as an independent professional attorney taking an objective view that they hold a reasonable belief that the company’s IP is in good order. To avoid any difficulties, any concerns regarding the IP rights should have been raised and addressed by the IP owner well before such a letter is signed. In the UK, there is no formal distinction between due diligence and “verification”: verification refers to the process of checking all statements in a prospectus to ensure that they are true, accurate and not misleading. Verification is a painstaking and laborious process, done largely for the protection of the 1. Ed: Attorneys should be aware of the issues of legal professional privilege in relation to communications in connection with any report, as reporting outside the appropriate line of advice could result in loss of privilege (Three Rivers District Council & Others v The Governor and Company of the Bank of England [2003] EWCA Civ 474)

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directors, who ultimately take responsibility for the document. The process is usually conducted by the issuer’s lawyers and reviewed by the investment bank’s lawyers. In this vein, the patent attorney should also review the final prospectus document before it is issued.

Patent attorneys and their legal liability Patent attorneys should be aware of their potential legal liability under section 90(1) of the Financial Services and Markets Act 2000, which provides that any person responsible for a prospectus is liable to pay compensation to a person who has acquired securities to which the prospectus applies and has suffered a loss in respect of those securities as a result of either any untrue or misleading statement or relevant omission. Importantly, evidence of an adequate due diligence can provide a defence of reasonable care and reasonable investigation to a claim arising from alleged incomplete or inaccurate disclosure. Devenand confirmed in the question-and-answer session that the NASDAQ listings regulated by the US Securities and Exchange Commission required the deepest level of investigation and disclosure. This is perhaps because the NASDAQ is one of the largest and most widely-recognised stock markets, with greater brand recognition than any other US exchange. NASDAQ has the world’s highest corporate governance listing standards, which are more stringent that any other exchanges in the world, including the NYSE. It has more listed companies (approximately 3,100), trades more volume (approximately 2 billion shares daily) and handles more IPOs (over 1,000 since 2000) than any other US exchange. At the other end of the scale, Devenand had experience of a private placement to sophisticated corporate buyers (which is of course not a sale to the public) which simply involved a telephone call to confirm information in the due diligence report. A private placement is the sale of shares to a small number of select investors, the buyers of which are usually banks, pension funds or insurance companies. A private placement is the opposite of a public offering in which the shares are sold on the open market.

It’s all in the timing… Devenand concluded the webinar by stating that in his experience, companies often underestimate what is involved to prepare for an IPO (on top of their on going day-to-day business) and this in turn can put additional time pressures on the patent attorney to produce reports with little notice or tight turnaround times. Nevertheless, patent attorneys will want to ensure they are able to rely on a ‘reasonable investigation’ defence and have adequate time to identify and address any red flags. To ensure IP due diligence-readiness, Devenand’s practical advice for patent attorneys was: • Understand your client’s business – follow their Tweets and press releases, and read their annual reports to keep abreast of business strategy and potential fund-raising events. There is www.cipa.org.uk

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nothing worse than having an IPO due diligence sprung on you! • Have an IP rights and licences ownership schedule ready for the IPO data room and update it monthly. • Have answers to basic IP due diligence questions to hand well before an IPO is contemplated, so it will not come as a shock. Every listing he has been involved in so far has preferred to retain the IP owners’ patent attorney to prepare the company’s IPO due diligence because they are already familiar with the IP portfolio (which will typically be large if the owner is contemplating a public listing of its shares for sale). • Expect conference calls at short notice with multiple parties on the line. Be discreet. • Know your limits – do not assume more responsibility than necessary.

INSTITUTE EVENTS

• Decide whether this is the type of work you are prepared to do. CIPA Council’s Vicki Salmon chaired the webinar. No doubt, webinar attendees, like myself, thoroughly enjoyed the presentation. Devenand’s delivery was engaging and interesting so that I lost track of time. On behalf of the attendees and CIPA, thanks for a memorable and highly informative webinar. Dr Janice Denoncourt, Senior Lecturer, Nottingham Law School; digital identifier: orcid.org/0000-0003-2176-8935 Missed this webinar? A recording is available from CIPA, contact cpd@cipa.org.uk.

Commercialisation of research – the role of IP in technology transfer and start-ups Report of a CIPA webinar, 24 February 2016. The speaker was Jeremy Holmes, Imperial Innovations.

his webinar was a general talk on the challenges facing universities and academics and where patent attorneys can play a part in addressing these challenges. As ever, one of the main challenges facing academics in particular is the need to obtain funding for their research. Increasingly, however, there is pressure for their research to provide a real impact and not to be simply research for research sake. For universities there is pressure on them to be increasingly flexible and willing to collaborate with external partners (industry partners or other universities). Applying for patents can assist in addressing the above mentioned challenges and readers will understand how. For completeness, however, protecting technological developments can help increase the likelihood of obtaining funding for additional research. Furthermore, protecting technological developments can make it easier to talk and work with external partners by enabling university employees to discuss details of their technological developments more openly. With a view to research providing real impact, one way of achieving this is by launching a spin-out company. Protecting technological developments core to the business plan of such companies can increase the likelihood of obtaining funding to assist growth and corner their market niche. Moreover, if a start-up is successful this can bring in additional money for the originating university, which could be distributed as they see fit around respective departments to fund further research and assist their academics. Volume 45, number 4

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An alternative to launching a spin-out company is to exploit technological developments by granting licences to companies interested or already operating in the relevant technology area. Royalties paid under a licence could additionally be used by the originating university to fund whatever projects they see fit. It is here mentioned that although just know-how could be the subject of a licence, granting a licence to use technology described in a patent or patent application provides clarity as to what the licensee is allowed to do and what the university claims ownership to. With the long term in mind, launching a successful spinout company will be more advantageous to a university than securing a licence deal under a patent. It will be appreciated that this is because patents have a fixed term, whereas a spinout company could keep generating income for a university as long as it remains successful in the business area in which it operates. One success story, Circassia, a successful spin-out started in 1996 by Imperial College, has been floated on the UK stock market and presently has a market capitalisation of ~£0.8 billion and an extensive patent portfolio of over 26 patent families. It is to be remembered that if patent attorneys are involved with a spin-out or start-up they should especially aim to get a firm grasp on the business plan to ensure that any IP aligns with that strategy. Steven Charlton (Fellow) Missed this webinar? A recording is available from CIPA, contact cpd@cipa.org.uk. APRIL 2016

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INSTITUTE EVENTS

Institute events For more information and to book onto any event please see the CIPA website or email cpd@cipa.org.uk Wednesday 27 April

Wednesday 11 May

Thursday 9 June

Launch of the ‘Black Book'

East of England Happy Hour

IP in India

CIPA, 95 Chancery Lane, London WC2A 1DT Email cpd@cipa.org.uk for details

The Cambridge Blue, 85-87 Gwydir St, Cambridge CB1 2LG FREE for CIPA members, register at www.cipa.org.uk/whats-on/events/ Wednesday May 18

CPD seminar (1 hour) CIPA, London WC2A 1DT Speaker: Vaibhav Vutts, Vutts & Associates; Time: 17:30- 18:30 followed by drinks until 19:30

Patentability and Enforcement of Second Medical Use Patents

Friday 10 June

Thursday 28 April

IP Portfolio & Strategy Building for Start-Ups & Spin-Outs CIPA/LES CPD seminar (3 hours) Royal Society of Medicine, Max Rayne Auditorium, 1 Wimpole Street, London, W1G 0AE Speakers include: Catriona Hammer, IP Consultant, formerly Senior IP Counsel at GE Healthcare; Charles Harding, D Young & Co; Alan Johnson, Bristows; Carolyn Porter, Deputy Head of Technology Transfer, ISIS Innovation Ltd; Nigel Swycher, CEO, Aistemos. Time: from 12:30 Cost: £150 / £120 (members)

CPD seminar (1.5 hours) CIPA, 95 Chancery Lane, London Speakers: Jonathan Stafford and Trevor Crosse, Marks & Clerk Solicitiors LLP Time: 13:30-15:00. Lunch will be provided on arrival (12.30-13:30). Cost: £117 / £97.20 (members) Thursday 19 May

RIBA, London, W1B 1AD Time: 8:30-17:30 Cost: £420 (members only) Wednesday 15 June

York Happy Hour Royal York Hotel, York, YO24 1AA FREE for CIPA members, register at www.cipa.org.uk/whats-on/events/

Manchester Meeting CPD seminar (3 hours) Venue, TBC Cost: £234 / £156 (members)

Wednesday 4 May

Monday 4 July

Professional Ethics CIPA/ITMA CPD webinar (1 hour) Speaker: Dr Michael Jewess Time: 12:30-13:30 Cost: £54 / £36 (members)

The Incorporated Benevolent Association of the Chartered Institute of Patent Attorneys

Thursday 26 May

71st Annual General Meeting

CPD webinar (1 hour)

Monday 11 July

CIPA, 95 Chancery Lane, London WC2A 1DT Time: 2.00 pm

Speakers: Susan Bates, Patent Analyst, Shell International Ltd; Grayce Shomade, Patent Analyst, D Young & Co Time: 12:30-13:30 Cost: £54 / £36 (members)

Privilege

Wednesday 11 May

134th Annual General Meeting CIPA, 95 Chancery Lane, London WC2A 1DT The AGM is open to all CIPA members. Booking is not required, but please do contact the events team if you have any queries.

EPO Oral Proceedings

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Patent Searching: understanding the patent document

CIPA/ITMA CPD webinar (1 hour) Speaker: Dr Michael Jewess Time: 12:30-13:30 Cost: £54 / £36 (members) See page 17.

Wednesday 1 June

June Happy Hour Venue TBC, London FREE for CIPA members, register at www.cipa.org.uk/whats-on/events/

www.cipa.org.uk

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PERSONAL

LETTERS • ANNOUNCEMENTS

Letters to the Editor Personal news The CIPA Journal is a fine thing. The former “Personal News” column is missed though. It is good to hear news of people in the profession. John Dean (Fellow) [See the announcements below. Please send any announcements to editor@cipa.org.uk]

Auxiliary requests at the EPO As to auxiliary requests at the EPO, and the sixth verse in the hymn of praise for them from Gwilym Roberts in February’s CIPA Journal [page 16], I would add one thought in support of showing your hand at the outset. A set of “convergent” auxiliary requests, presented at the outset, will help the tribunal at the EPO to appreciate that, as one drills down to the core disclosure, the claimed subject-matter just gets more and more deserving of a patent. At the EPO there is always an urge to wrap up oral proceedings sooner rather than later, certainly before normal going-home time and, if possible, even before the lunch break on the first day. So what if the tribunal can already see, prior to the 9 am kick-off, that auxiliary request #N (in your convergent set of requests) will see off all validity / patentability attacks? Does that not increase the chances that the owner will succeed with the main request? After all, if at the end of the day an owner is going to retain their patent, why should everybody have to come back after lunch? In a nutshell, a quality set of auxiliaries, shown to the first member early on in the written proceedings, increases (rather than reduces) the prospects of prevailing on the main request.

And if your client is sceptical about this approach, of showing your full hand right at the outset, it might help if you point out that, when we are before the EPO, these things called “auxiliary requests” are just dependent claims under another name. Why do I press “at the outset” so heavily? Two reasons. First, I think that the first member has to find, in the very first paper that he or she reads, reasons that convince, why your client deserves ultimately to win. The so-called “confirmation bias” is only human, and ubiquitous, and I fear it mightily. Once the first member has “taken a position” on the initial exchange of papers, it is going to be hard to flip that opinion. Prime Minister Lord Salisbury it was, who stood up in the House of Commons and reassured MPs: “I’m very willing to listen to all the evidence you have that confirms me in the decision which I have already taken”. My second reason is the “Push Back” we are currently experiencing from DG3, which expects that all auxiliary requests put to it have already considered by the OD. So people are currently filing inflated numbers of auxiliaries, in the runup to OD oral proceedings. This is not appreciated in DG1. That which is not appreciated might not get admitted. So, to be safe, better file them earlier. As you can see from the above, I am, like Gwilym Roberts, a fan of the way the EPO goes about its work and I regret that many outside Europe remain ignorant of how user-friendly the procedures of that Office are. I hope to see DG3 survive the baptism of the UPC and I hope that these words will help readers more effectively to represent the interests of their clients before the EPO. Roy Marsh (Fellow), Munich

Announcements Beck Greener advises that Peter Smart (Fellow) retired on 31 March 2016 after over 30 years in the partnership. He continues his association with Beck Greener as a consultant. Beck Greener is also pleased to announce that Jonathan Markham (Fellow) became a partner of the firm with effect from 1 April 2016. Potter Clarkson LLP announced the following promotions with effect from 1 January 2016: Michael Pears (Fellow) will become a partner. Eddie Leslie (Student) and Michael Linehan (Fellow) will become associates. At the start of 2016, Saiful Khan (Fellow) and Steve Smith (Fellow) joined the Board. HGF in Leeds has moved to new premises – 1 City Walk, Leeds LS11 9DX. Tel: +44(0) 113 233 0100; Fax: +44(0) 113 233 0101; Email: docketing@hgf.com. Jonathan Thurgood became a partner at HGF on 1 February 2016; he is based at HGF’s London office. Letters for the Editor and announcements should be e-mailed to: editor@cipa.org.uk

Volume 45, number 4

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APRIL 2016

CIPA JOURNAL

12/04/2016 19:05:07

REUTERS/John Kolesidis

NEW 8TH EDITION

CIPA GUIDE TO THE PATENTS ACTS THE ONLY GUIDE YOU NEED CHARTERED INSTITUTE OF PATENT ATTORNEYS Editors: Paul Cole, Patent Attorney, Lucas & Co. Richard Davis, Barrister, Hogarth Chambers

The CIPA Guide To the Patents Acts, 8th edition brings together the expertise of over 25 highly respected professionals including patent attorneys, solicitors and members of the Bar, all individually selected for their expert knowledge. THE CIPA GUIDE TO THE PATENTS ACTS 8TH EDITION:

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AAA-pp74_AD-GUIDE_GREEN_1.indd 74

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THE THEPINKS PINKS

INTERNATIONAL INTERNATIONAL

HK • CN IP Protection in Hong Kong and China

Melvin Li Intellectual Property Limited Patents ∙ Designs ∙ Trademarks Level 8 Admiralty Centre Tower 2, 18 Harcourt Road, Admiralty, Hong Kong www.mli-ip.com manager@mli-ip.com

Assimilate IP is providing the following courses at the London School of Economics: • Building, managing and monetizing your IP portfolio 9 May 2016 • Freedom to Operate for the Life Sciences and Pharmaceutical Industries 27 June 2016 Full details can be found on the Assimilate IP website: http://assimilateip.com/home. We are happy to offer CIPA members a 10% discount.

We are seeking trainees, part-qualified patent aƩorneys or qualified patent aƩorneys to work on a FREELANCE basis for patent draŌing and UKΙEP prosecuƟon work in the electrical and mechanical fields. The work will be allocated on a case-by-case basis at a rate of £50/hr. DiscreƟon and confidenƟality are assured. Please apply to CharteredandEuropeanPA@gmail.com.

Advertise with CIPA To advertise job vacancies, IP events or services to IP professionals in the CIPA Journal and / or the CIPA website please email iain@ross-limbe.co.uk or call 020 3289 6445

Volume 45, number 4

INT-pp75-Melvin-chand_1.indd 75

CHANDRAKANT M. JOSHI INDIAN PATENT & TRADE MARK ATTORNEYS

5th & 6th Floor, Vishwananak, Chakala Road, Andheri (East), Mumbai – 400 099, INDIA Phones: +91-22-28380848, 28205425, 28324920 Telefax: +91-22-28380737, 28389839 E-mail: cmjoshi@bom3.vsnl.net.in chandrakantjoshi@vsnl.net chandrakantmjoshi@vsnl.net Website: www.cmjoshi.us Languages: English, French, German & Italian Contact person: Mr Hiral Chandrakant Joshi Other offices: New Delhi, Kolkata, Ahmedabad, Hyderabad, Chennai

Areas of Practice: Patent and trade mark search Patent and trade mark watch Registration, post registration and infringement, etc.

Member:

Translation of patent specification

IPR Professional Associations, U.S.A, U.K., Germany, Japan, France, Italy, et al.

Franchise and joint venture agreements Cyberlaw, mergers and aquisition

APRIL 2016

CIPA JOURNAL

13/04/2016 06:17:27

THE PINKS

76 CIPA JOURNAL

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APRIL 2016

INTERNATIONAL COURSES

www.cipa.org.uk

12/04/2016 19:20:23

TAKE YOUR CAREER FURTHER If you are a bright (part) qualiﬁed EP attorney with expertise in materials science and are looking for a new position with exciting prospects, we may just have the position for you. We are looking to strengthen the materials science team in our Sevenoaks office as part of our succession planning. This team works for some of the largest blue chip companies in the world, and handles all types of patent work ranging from original drafting to opposition work. We offer competitive remuneration. Please visit our website for further details. –

elkﬁfe.com

REC-pp77-EFa_1.indd 77

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Dawn Ellmore Employment

Patent, Trade Mark & Legal Specialists

ENG/ELECTRONICS

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REC-pp78-79-Dawn-Elmore_DPS_2.indd 78

12/04/2016 19:17:10

%,27(&+12/2*< &+(0,675< ² &$0%5,'*( We are proud to be assisting this forward-thinking client in their search for a Patent Attorney WR DLG DQG JXLGH WKHLU ,QWHOOHFWXDO 3URSHUW\ DFWLYLW\ 7KLV SUHVWLJLRXV ÀUP DUH VHHNLQJ 3DUW RU 1HZO\ 4XDOLÀHG LQGLYLGXDOV ZLWK H[FHOOHQW DFDGHPLF DFKLHYHPHQWV DQG SUHYLRXV ZRUNLQJ H[SHULHQFH LQ WKH ÀHOG RI %LRWHFKQRORJ\ &KHPLVWU\ WR ZRUN ZLWK WKHLU H[FHSWLRQDO UDQJH RI clients. Candidates with a strong commercial awareness are welcomed to help push the boundaries and produce innovative ideas. This is an incomparable opportunity where there is an unlimited chance for career SURJUHVVLRQ DV WKH ÀUP FRQWLQXHV WR H[SDQG DQG DOVR RIIHUV DQ DWWUDFWLYH ZRUN OLIH EDODQFH

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IP PARALEGAL

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Attorney vacancies: kevin.bartle@dawnellmore.co.uk

Dawn Ellmore Employment

Support vacancies: dawn.ellmore@dawnellmore.co.uk

@AgencyDawn

%XVLQHVV VXSSRUW MDPHV VPLWKVRQ#GDZQHOOPRUH FR XN +44 (0)20 7405 5039 www.dawnellmore.co.uk

DawnEllmore1

REC-pp78-79-Dawn-Elmore_DPS_2.indd 79

12/04/2016 19:17:18

THE PINKS

RECRUITMENT

Live Life To The Full European Patent Attorney Stockholm, Sweden Reasonable working hours, a focus on quality not quan ty, professional respect and autonomy and all within one of the world’s most beau ful ci es, built where lake meets sea, on numerous islands, with eight centuries of history and culture to choose from. Is this for you? Ström & Gulliksson is an interna onally recognised top er European private prac ce with offices in Sweden (Malmö, Lund, Gothenburg, Helsingborg and Stockholm). Since its establishment in 1975 the firm has grown con nuously and now offers a European Patent A orney the opportunity to support the firm in these exci ng mes. Stockholm is a world leader when it comes to innova on and sustainability. Considered one of the most vibrant ci es in the world, its growing economy accounts for its increasing popularity with foreigners as a place to se le. Stockholm is the perfect place to emigrate for those who enjoy the buzz of city life yet want to retain the familiarity of small city living. O en referred to as ‘the Venice of the North’ due its island loca on, Stockholm is inherently progressive. You will be joining an ambi ous team and besides suppor ng ongoing cases, you will also help to establish new business leads and client contacts. Your casework will also be team-based sharing cases across offices; the culture of the prac ce is one of ‘non-tradi on’, commercial, team-based and approachable. There is no ceiling to your development and career progression. Ström & Gulliksson is a true partnership and it rewards those a orneys who provide commitment, loyalty and ambi on. Your success and performance is down to your professional abili es but also your over-and-above contribu on to the health, wealth and development of this highly regarded firm. If you are a qualified European Patent A orney with an academic background in electronics, telecommunica ons, mechanical engineering, computer science, or related degree and you wish to combine your profession in a renowned firm with a high quality of life, then this could be the new start you are looking for. For more information, please contact our retained consultant, Kieron Wright, Director, MWA, on +44 113 391 0862 or kieron@mwaip.com or Sophie Caygill at sophie@mwaip.com This assignment is being exclusively handled by MWA and all direct or third party applications will be forwarded to us for assessment. 80 CIPA JOURNAL

REC-pp80-Strom_1.indd 80

APRIL 2016

www.cipa.org.uk

12/04/2016 19:17:44

A tailor made service to suit your needs $IFNJTUSZ "UUPSOFZ :PSLTIJSF $&' Join a practice at a pivotal point for them…and for you! A qualified Attorney is required to join this leading firm as part of their succession planning. As you'll be situated in lovely York, with both culture and countryside on your doorstep, you will be spoilt for choice when it comes to enjoying the healthy work/life balance this practice encourages!

&YDJUJOH 1SPTQFDUT $BNCSJEHF -," Is Cambridge calling you? Exciting prospects to be found in this beautiful city. Qualified Hi-Tech and Engineering Attorneys preferred with tangible Partnership opportunities available in the short and mid-term. This is a premium opportunity requiring an exceptional Attorney with the potential to lead others and develop relationships. A highly visible role with so much scope to shape and develop.

&OHJOFFSJOH "UUPSOFZ .JEMBOET $&' Tenacious Attorney required to join practice with a wealth of varied work from automotive to oil and gas! Their rapid growth means plenty to dive into for those who are qualified, or amazing material to train with if part qualified! You could really make your mark here as a route of progression may be faster than most, making this the ideal opportunity for the career hungry amongst you!

'JOBMJTU UISPVHI UP '2 &MFDUSPOJDT -POEPO -," Working with a leading light in the profession, you will receive the highest quality work and support. This successful Practice has a lot to be proud of... they really are a premium employer. Are you ready to fall in love with your career again? It's time to remember why you trained as an Attorney and give yourself an opportunity to shine!

&MFDUSPOJDT "UUPSOFZ /PSUI 8FTU $&' Join a leading practice in a position where waves can be made from an early stage if you can hold your own! Open to those from a background in Electronics, Computer Software or Physics, you must be able to work with minimal supervision and be comfortable with managing your own workload. If you’re ready to let your career take centre stage then take a step closer to treading the boards!

&OHJOFFSJOH 1BSUOFS %FTJHOBUF 4PVUI 8FTU -," Sturdy Practice in the South West is looking for a Qualified Engineering Attorney to inherit a full caseload and help to promote and market the firm. Excellent opportunities to join the Partnership are on offer and a wonderfully welcoming environment awaits you!

&OHJOFFSJOH "UUPSOFZ -POEPO $&' Exciting times for Engineering Attorneys with an entrepreneurial spirit! Leading practice with ever-expanding client base of SME's to multi-nationals, seeks an outgoing part-qualified Attorney to work alongside rainmaker: hands on learning, close client contact and a key role in further business development make this a rare and outstanding opportunity to make your mark early in your career. 1BUFOU 1BSBMFHBM -POEPO 5+# Experienced Patent Paralegal sought by top tier Practice. If you are CIPA qualified, commercially minded and motivated to develop your Patent knowledge, this could be just what you’re looking for.

For further information about this selection of opportunities or to discuss any other aspect of IP recruitment, please contact: Tel: +44(0)113 245 3338 or +44(0)203 440 5628 or email: DBUIFSJOF GSFODI!TBDDPNBOO DPN t MJTB LFMMZ!TBDDPNBOO DPN or tim.brown@saccomann.com

12 UP 'JOBMJTU .FDIBOJDBM &OHJOFFSJOH "UUPSOFZ 4PVUI $PBTU -," With an impressive client base and varied work this is a fantastic opportunity to join an established, well-structured firm with a friendly and forward thinking approach. You will preferably be from a mechanical or aerospace background, though those trained in physics will also be considered. If you have at least obtained the Queen Mary (or equivalent) this is the perfect chance to qualify under expert and comprehensive guidance. 1BUFOU 4FDSFUBSZ -POEPO 5+# Highly regarded business seeks a Patent Secretary to join their London HQ to provide full and comprehensive secretarial and PA support to a Partner and Associate within the Engineering team. Ideally CIPA qualified, you will be rewarded with not only a fantastic financial package but also a lovely working environment and active social scene.

Scan the QR Code for our website

www.saccomann.com

‘Tweet’ us at XXX UXJUUFS DPN TBDDPNBOOJQ XXX MJOLFEJO DPN at the ‘Sacco Mann Intellectual Property Group’ ‘Sacco Mann is an equal opportunity employer and offers the services of an Employment Agency for Permanent Recruitment and an Employment Business for Temporary Recruitment’

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THE PINKS

RECRUITMENT

Patent Attorneys, Sydney

Part-Qualified Patent Agent / Competent Generalist Drafter

• Relocate to arguable the most beautiful city in the world. • •

Join Sydney’s most prestigious firm achieving phenomenal growth and success. Manage an innovative, blue chip client base and enjoy an accelerated path to Partnership.

Role Overview: Our client is looking for talented Patent Attorneys with expertise in the ICT space, we are also interested in hearing from Patent Attorneys from other practice areas. Our client is a true market leader with an outstanding reputation and a first-class client base including some of the world’s most exciting technology players. Our client has exceptional leadership team who have spent the last 12 months bolstering their investment in the firm’s resources to make the attorney and partner roles efficient and enjoyable. The firm boasts an industry leading technology platform and has unrivalled financial strength. What’s on Offer: Our client is looking for experienced Patent Attorneys who ideally want to accelerate their careers in an environment with a genuine path to Partnership. Highly competitive remuneration and relocation packages available. Pacific Talent Partners are a specialist executive talent consultancy, for a confidential discussion please send your resume to Sarah Riley, Chief Executive Officer, sarahriley@ptpaustralia.com +61 2 8318 1810 │www.pacifictalentpartners.com.

The focus of this part-time role will be first-filing patent specification drafting, across a wide variety of fields. The subjects are typically ‘low-tech’ and early stage, and some invention and broad creative drafting would be preferable to meet our clients’ needs. A competent and experienced individual is required to join our drafting team, ideally with a mechanical engineering background, and Finals level drafting skills. Working from home a possibility. The role may also require you to consider other forms of IP such as registered designs and trade marks. We are a blended product design and IP company based in Salisbury, Wiltshire, specialising in helping individuals design, develop, prototype and obtain feedback for speculative new product ideas. We also have offices in Paris and San Francisco, so any comparative law knowledge would be a plus. For more information, please call Joely Brown on 01722 410295

Life Sciences Trainee Patent Attorney sought

IP Asset is an established, Oxford-based boutique IP practice with a good client base and strong growth. We are now seeking capable, self-motivated, partqualified attorneys specialising in Life Sciences to help drive the next phase of expansion.

We believe in providing practical and very commercially-focused IP advice, and are aiming to train attorneys in the same manner to help drive and build the business. We work closely with our clients and offer a range of services from patent drafting to IP commercialisation and litigation. With a predominantly direct client workload, we operate at the exciting end of IP and seek candidates comfortable working in that environment. We are looking for a part-qualified attorney with Foundation stage qualifications (or exemptions), but we would also be willing to consider new entrants to the profession with an appropriate technical background. The role would involve assisting the Life Sciences Partners and Associates in the Biotech field, so a strong degree or PhD in Biochemistry, molecular biology or genetics is sought. There will also be opportunities to get involved in more diverse technologies across the chemical and mechanical fields, so a broader scientific understanding would be advantageous. More senior attorneys are always welcome to contact us. Early partnership prospects are available for suitable candidates. If you want to be part of a dynamic and growing team, or simply wish to discuss the possibility, do get in touch. Applications by email to ipassetadmin@ipasset.com. 82 CIPA JOURNAL

APRIL 2016

REC-pp82-AU-Innovate-IP-Asset_1.indd 82

www.cipa.org.uk

12/04/2016 19:21:55

THE PINKS

RECRUITMENT

Finalist Level Patent Attorney, Electronics -RLQ D VWLPXODWLQJ and collaborative working environment, in which your ideas will be listened to regardless of your level of seniority Be client facing and develop a commercially minded approach %XLOG \RXU H[SHULHQFH to suit your strengths and interests through joining sector groups and project teams Tier one patent aQG WUDGH PDUN ILUP *LOO -HQQLQJV (YHU\ LV VHHNLQJ D ILQDOV VWDQGDUG SDWHQW DWWRUQH\ WR MRLQ WKHLU ZHOO UHJDUGHG ,7 (QJLQHHULQJ WHDP EDVHG DW WKHLU IULHQGO\ PRGHUQ RIILFHV LQ /RQGRQ This is an H[FHSWLRQDO opportunity for a candidate who is ambitious and hands on. The firm has a clear growth plan and is looking for candidates who want to be part of it. To apply please call Pete Fellows or Phillipa Holland of Fellows and Associates on +44 207 903 5019, email contact@fellowsandassociates.com or visit fellowsandassociates.com/gje

Fellows and Associates Ltd. acts as an agency within the meaning of the Conduct of Employment Agencies and Employment Businesses Regulations 2003. We operate a strict equal opportunities policy.

Volume 45, number 4

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THE PINKS

RECRUITMENT

Patent Attorney - In House Auckland, New Zealand Fisher & Paykel Healthcare are world leaders in the design and manufacture of medical devices for the treatment of Sleep Apnea, Respiratory & Acute Care and Surgical Humidiﬁcation. The company has a history of strong and continuous double digit annual growth and we pride ourselves on our open and innovative culture where originality is valued and rewarded. Protecting the intellectual property behind our innovations is vital. Our IP team supports more than 400 engineers, researchers and clinical scientists. This position is cross-functional, has autonomy and scope to grow as the team expands, setting it apart from other in-house roles. You will be a qualiﬁed patent attorney with a degree in mechanical engineering. Your experience drafting mechanical designs will be invaluable when working with engineers and managers. You will be responsible for all aspects of IP including patent clearance for new designs, IP protection, competitor investigations and patent prosecution of a global patent portfolio. We offer an attractive relocation package and provide support to ensure your transition is efficient and enjoyable. We are also a New Zealand Immigration Accredited Employer which means we are able to recruit the talent we need from around the world. If this appeals to you then please contact diana.bilbrough@fphcare.co.nz for more information.

Patent Attorney / IPR Attorney Paddington (London) This is a rare opportunity for a qualified (or finals-standard) European Patent Attorney to make a real commercial impact as a key part of a recently restructured in-house IPR team in one of the world’s biggest telecommunications companies. The successful applicant will be responsible for providing practical IPR advice and education to inventors, managers and lawyers, managing and shaping their own patent portfolio to meet the needs of the business through efficient utilisation of external support, providing expert support in the identification and capture of new ideas around the Vodafone global footprint, as well as supporting the management and development of our trade mark and domain portfolios. This is your chance to put into practice the skills you have learnt and to become a more complete and commercially astute Patent Attorney and IPR professional. Key responsibilities: • Management of an existing patent portfolio, including maximising the portfolio value to Vodafone, supporting the shaping of the wider Vodafone portfolio and managing outsourcing of work. • Proving expert IPR support and training to Vodafone internal stakeholders globally, from both a legal and commercial perspective. • Supporting the management and development of Vodafone’s trade mark and domain portfolios. • IPR contact for key allocated projects and local markets. Ideal skills, qualifications and experience: • Qualified (or finals-standard) European Patent Attorney. • Patent drafting and prosecution expertise – preferably in telecommunications and/or business methods. • Commercial and customer focussed to ensure expert advice is impactful, pragmatic and tailored to company objectives and strategy. • Experience or interest in trade mark and domain portfolio management (clearance searches, TM watch notices, etc.), potentially with a desire to dual qualify as a Trade Mark Attorney (but not essential). To find out more and apply, please contact Elleni Herodotou at elleni.herodotou@vodafone.com

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THE PINKS

RECRUITMENT

Biotechnology, Qualified Patent Attorney, London Join a firm with an excellent reputation amongst their clients, the likes of whom range from innovative UK based sole inventors and SMEs through to large international corporations with high value patent portfolios reaching into the billions. The firm are well known for providing first class advocacy to their clients both at home and overseas, and as a result your work load will be as international as it is diverse. You will have access to an engaging portfolio of work and have the opportunity to carry out a significant amount of contentious work, such as EPO oppositions and litigation. Furthermore, you will be working alongside attorneys with a wealth of contacts and practical experience gained from their time spent working in a variety of roles, including in-house at blue chip organisations and at well-known academic institutions. This is an exceptional chance to join a firm that is consistently rated as top tier by a number of legal directories. You will be welcomed by an open culture, in which collaboration and the sharing of knowledge between attorneys at all levels is of a paramount importance.

Engineering Patent Attorney, Part Qualified, London The engineering practice at this firm is hoping to recruit a part qualified patent attorney with around one year’s experience in the profession to assist a well-respected and experienced Senior Associate and begin their training as the firm’s future generation of Partner. You will be working with major multinational businesses across the automotive, aerospace, packaging and petrochemical sectors; and working with an interesting technical mix including road, rail and marine engineering, medical devices, construction, manufacturing, oil and gas, electro-mechanical devices, and computer implemented control systems. There is a mix of agency and direct client work, with a strong emphasis on close relationships established with clients across the UK, Europe and overseas. The firm offers a fantastic training scheme and has a solid track record for supporting their attorneys through UK and European qualification. They are strong believers in experiential learning and encourage their attorneys to become involved in business development, client contact and the more strategic areas of the business from day one.

Experienced Patent Paralegal, London A leading international law firm are looking for an experienced patent paralegal to join their highly regarded London based IP operation. The team is focused on building successful and sustainable relationships and is therefore looking for individuals with a passion for client care and a pride in the work that they carry out. In turn, the firm are highly supportive of their employees and are dedicated to helping them meet their full potential via a meritocratic working environment. You will be responsible for the full spectrum of duties commonly associated with such a role, including assisting in the preparation of UK, EP and PCT patent applications, patent database management, docketing duties, and liaising with fee earners, local and foreign associates and different patent offices. The successful candidate will have a willingness to learn and an enthusiasm for further developing their IP knowledge, as well as excellent task prioritisation skills and a rigorous attention to detail.

Chemistry, Qualified Patent Attorney, London This firm are internationally renowned for the first class advocacy and commercial support they provide to their clients, as well as their strong track record when representing them at proceedings at the UK IPO and EPO. You will be joining a team environment that is supportive, collaborative and relaxed, and will be working alongside a Partner who is recognised regularly for their excellent technical ability and first class client portfolio. The team’s Partners have strong connections with European clients and associates, meaning your work load will contain an interesting European element. You will be responsible for a good mix of drafting and prosecution work, as well as oppositions and appeals, and you will be given the chance to provide strong commercial support to a variety of innovative clients; from SMEs to multinational corporations based in the UK and across the world. With this in mind, candidates will need to be hands on, commercially driven and comfortable working in a client facing role from day one.

Finalist/Newly Qualified Patent Attorney, Electronics, London/Reading Enjoy a highly varied work load including a good mix of oppositions and appeals, and infringement and validity opinion work, across a number of technologies such as electronics, optics, software and computer related inventions. You will be able to gain significant exposure to litigation work and will be given the chance to take the CIPA Litigation Skills Course if you haven’t already done so. Unlike what is often afforded at this level, you will be encouraged to get involved in the marketing and business development of the practice through a variety of means, including attendance at leading industry events and networking receptions. What’s more, you will also be entrusted with the supervision of more junior members of staff, by sharing your knowledge and experience via training and offering support. This is a truly unique opportunity to join an environment in which your level of exposure will not be defined by your experience. For the right candidate, there will be every chance to progress through to Partnership in a time frame that is much faster than is often the norm.

Bristol Opportunity, Finalist/Recently Qualified, Engineering Work with clients spanning across a range of industries including road, rail and marine, aerospace and defence, packaging, engineering materials, housing, and construction. The firm has an international focus advising leading names in the US, Japan and Australia, as well as start-up companies, sole inventors and academic institutions across the UK and in Europe. The practice benefits from a team with exceptional academic records and who originate from a whole host of technical backgrounds, including mechanical engineering, materials science, aeronautics, physics and civil engineering. You will be responsible for completing all manner of general patent duties, as well as more strategic and commercially focused tasks such as liaising with and advising technology transfer companies, speaking at industry and academic events, and managing the firm’s relationships with industry organisations.

Finalist/Newly Qualified Trade Mark Attorney, London This firm is not afraid to take chances when it comes to making strategic business decisions, and have become extremely successful over the years as a result. The practice is commercially minded and reacts quickly to developments in the industry, offering highly valuable and no nonsense advice to their varied client base. Duties will include the full spectrum of trade mark work from drafting, filing and prosecution through to searches, ongoing portfolio management and providing strategic advice. There will also be the opportunity to become involved in more contentious issues, including UK and CTM opposition and cancellation actions, infringement, and anti-counterfeiting. You will be given your own portfolio of work to manage from day one and your responsibilities will be increased over time to suit your interests and growing skill set. Regular team meetings and close contact with the senior Partners, fellow fee earners and trainees alike will allow for a collaborative and inclusive working environment, ample support and mentoring will ensure you have everything you need to progress quickly and effectively in your career.

Engineering – Chemical/Materials, Finalist/ Qualified Patent Attorney, Reading/London Enjoy substantial direct client work, both domestic and international, and benefit from plentiful opportunities to meet with interesting and innovative clients face to face. Develop commercial IP skills and as a consequence provide highly valuable advice across a range of technical areas including mass spectrometer machines and defence technology. The firm supports its attorneys in being active members of the IP community and you will be encouraged to carry out business development activities such as attending networking events, exhibitions and conferences in the UK and overseas. Candidates are likely to have a technical background in chemical engineering or materials science and with as little as 2 years’ experience to as much as 2 years’ post qualified experience. The position could be based in either Reading or London. The firm is enjoying an exciting growth phase so joining now could be excellent timing.

For more information or to apply to any of these roles speak to Pete Fellows, Phillipa Holland or Louisa Stokoe on 0207 903 5019 or email: contact@fellowsandassociates.com. www.fellowsandassociates.com @fellowsandassoc

www.linkedinfellows.com google.com/+FellowsandAssociates

Fellows and Associates Ltd. acts as an agency within the meaning of the Conduct of Employment Agencies and Employment Businesses Regulations 2003. We operate a strict equal opportunities policy. Fellows and Associates is a trading name and registered UK trade mark of Fellows and Associates Limited

Volume 45, number 4

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THE PINKS

come and

see

RECRUITMENT

Passionate about imaging, passionate about you. European Patent Attorney, Stockley Park, Uxbridge Canon Europe is the European IP headquarters for Canon and we work alongside our Interna onal Canon colleagues on a daily basis. The IP department within Canon Europe has grown rapidly over the last few years and employees are encouraged to improve processes and procedures to help drive the department forward. We handle Japanese origina ng patent applica ons alongside being responsible for all patent ma ers concerning a growing group of European subsidiary companies.

For over 70 years, Canon has been a world-leading innovator and provider of imaging solu ons with an approach which combines innova on and Corporate Social Responsibility. With more than 190,000 employees worldwide, Canon is an interna onal and mul cultural Group. An endless flow of ideas and innova ons has kept Canon at the forefront of its industry with reliable and advanced technologies in products. World class research centres enables Canon to lead the market and to also benefit from an extensive intellectual property por olio. Based at Stockley Park in Uxbridge, Canon Europe is the European IP headquarters for Canon and we work alongside our interna onal Canon colleagues on a daily basis.

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We oﬀer an open plan environment within Canon Europe, which provides excellent opportuni es for communica on and facilitates a close working rela onship between colleagues including Patent A orneys, Patent Formali es Professionals, Management and colleagues in other areas of the business. Our benefits range includes pension scheme, private medical insurance, enhanced company sick pay, 25 days’ holiday per year and a staﬀ purchase scheme. We are currently recrui ng for a recently Qualified CPA/EPA Patent A orney with a background in physics, electronics, so ware or op cs. The successful candidate will work closely with inventors in Europe and patent engineers at Canon Inc. to create and file UK and European patent applica ons, and to prosecute related patent applica ons throughout the world. The role will also involve infringement clearance and opinion work, and may involve patent enforcement ac vi es from me to me. Some travel within Europe to meet with clients or a end EPO hearings should be expected. To apply please contact: Dr Brian Williamson – brian.williamson@canon-europe.com; and Jonathan Garner – jonathan.garner@canon-europe.com Strictly No Agencies Please

www.cipa.org.uk

12/04/2016 19:22:33

In partnership with

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THE PINKS

RECRUITMENT

It’s our people that make the difference

Qualified Patent Attorney (Chemistry, Biotechnology and Pharmaceuticals) – Maternity Cover A.A. Thornton & Co. is a top tier firm. We provide excellent, client focused advice and support. In order to do so it is important that the individuals we employ are dynamic, pro-active and confident in contributing ideas, creating solutions and seeing them through. If this sounds like you, and you are a qualified CPA and/or EPA with at least one year PQE, then we want you to join our busy Chemistry, Biotechnology and Pharmaceuticals patent department to cover a period of maternity leave.

For more information about this vacancy please contact Karen Genuardi on 020 7440 6881 or visit our website at www.aathornton.com/careers

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Still waiting for your career to blossom? Explore our new opportunities in IP

Engineering/Electronics/Physics - Finalist £Attractive + beneﬁts package. London, ref 1005987

Electronics Patent Attorney - CPA or EPA £ Excellent + beneﬁts package. UK wide, ref 1000910

NEW! You are a part-qualified (or qualified up to 2 years PQE) attorney with a technical background dervived from either electronics, engineeing, physics or software related patent work. You will have gained a minimum of 2 years in the profession, and be adept at handling a range of work from UK and international clients. You should be attracted to working for a small firm that rewards individual initiative in respect to BD, as well as being encouraged to be the primary contact for key clients depending on your experience. You’ll be joining an expanding firm at an exciting phase of growth, so career prospects are especially well placed. Take ownership of your next move.

You are a commercially astute Attorney with a background in Physics or Electrical Engineering. Essentially you will have gained a minimum of 4 years experience with first-class drafting and prosecution skils. This is a modern, pioneering and expanding practice, so you’ll will be joining a thriving firm that strives to provide the very best strategic advice to their clients. This role is pivotal to the continued success of their UK department, so you must possess excellent interpersonal skills, a proactive networking ability and the requisite drive to exploit IP oportunities in your field. Career progression is achievable in this wholly meritocratic and transparent firm.

Chemistry/Pharmaceutical - EPA or CPA £very competitive + package. Cambridgeshire, ref 1005294

Electronics/Telecoms - Part-Qual or Qualiﬁed £40,000 - £80,000 + package. London, ref 993406

NEW! You are an EPA or CPA qualiﬁed attorney with a background in chemistry, formulations or pharmaceuticals speciﬁcally looking for an industry role. This international IP team wishes to secure a progressive individual who has experience of commercial in-licensing and FTO analysis, as well as core drafting and prosecution skills. You must also be adept at liaising with non-patent professionals, particularly marketing and business development managers. Prior exposure to trade mark registrations would also be advantageous. This is a very product-lead organisation, so your IP knowledge will lend itself to strategically commercial and competitive advantage.

Superlative firm with an outstanding professional reputation have a brand new opening for a near-qualified Electronics/Telecoms specialist to join a highly profitable team. Widely regarded as one of the most revered UK practices, they have further underlined their credentials by increasing their market share in the past 12 months. Expansion has been impressive by industry standards, so you will be joining a practice very much in the ascendency. The client portfolio is rich and varied, so prepare to be immersed within a plethora of challenging and innovative cases. If you have 3/4 years experience and feel ready to propel your career to the next level, then what are you waiting for exactly?

Electronics/Physics Attorney - CPA/EPA £negotiable + excellent beneﬁts. Bristol, ref 997863

Chemistry - ﬁnalist/qualiﬁed patent attorney up to £70,000 + package. Leeds, ref 1004864

NEW! This renowed firm is looking to secure an ambitious Attorney for their expanding Electronics practice. Applications are keenly sought from finalists and qualified Attorneys with a Physics, Electronic Engineering or Computer Science background. You should have gained a minimum of 4 years experience, and be ready to make the next step up in your IP career. Recognised as one of the top 10 UK practices, this firm continues to attract Attorneys across all technical disciplines, rewarding their fee earners with a diet of pioneering and challenging work from a diverse client base. If you are looking to ignite your career with a defining move this year, then look no further!

You are a ﬁnalist or recently qualiﬁed attorney with a chemistry/ pharmaceutical background, looking for a role with more variety, growth and greater prospects. Essentially, you must have a minimum of 3/4 years experience of handling direct and indirect clients, with proven exposure to drafting. You must be motivated by providing strategic, as well as technical patent expertise, whilst recognising the commercial objectives of all clients. You’ll be joining an established practice that has secured a wealth of core work, as well as talented and astute attorneys who work in a friendly, mature and highly rewarding environment. Career prospects are excellent.

Biotechnology Attorney - Finalist/Qualiﬁed £Excellent + package. London, ref 1002491

Biotechnology/Biochemistry - CPA or EPA £Superb package. London/South East, ref 1004477

NEW! You are a progressive and commercially talented EPA or CPA Fantastic Life Sciences opening for a qualified Biotechnology Attorney Attorney (up to 4 yrs PQE) with a proven background in Biotechnology/ (up to 5 years PQE) to join a prestigious and hugely progressive London Biochemistry. You’ll possess prior experience of handling complex patent practice. Recognised as a true international firm, they pride themselves on portfolios, to include contentious cases as well. This role would be ideal a quality driven service across a broad range of clients. You should possess for an ambitious Attorney with first-class interpersonal skills and natural an incisive and commercially sound legal mind to manage a number of gravitas. You will be joining a hugely successful team in a Tier 1 firm with key accounts of high-value strategic worth. Applications are sought from a stellar reputation for career advancement. You’ll also be encouraged to Attorneys who are looking for significant professional rewards, as well as manage and further develop a wide range of clients in the medium term, so highly challenging and exciting technology. Their support infrastructure is your commercial skills will also be stretched. An outstanding Biotechnology superb, so professional staff retain a high level of responsibility for their role in the current climate. own caseloads too. To apply to any of these roles please contact James Dawes on 020 7612 3941, or e-mail: jamesd@weareaspire.com @jamesdawesIP REC-pp89-Aspire-rhs_1.indd 89

jamesdawesaspire

www.weareaspire.com/IP

120 New Cavendish Street London W1W 6XX

12/04/2016 19:23:22

THE PINKS

RECRUITMENT

Part Qualified/Qualified Patent Attorney (Mechanical and/or Electronic/IT) Progressive practice – Generous salary package Beautiful Cheltenham

Have it all You can have it all at Wynne-Jones IP – above average salary package, an enlightened, progressive and collaborative working environment, located in a glorious part of the UK. Wynne-Jones IP is a modern, growing IP private practice with a refreshing outlook on IP. The Firm places special emphasis on total Attorney support with separate strategic planning, HR and marketing functions. The Firm’s collaborative, team-working approach, means their IP Attorneys concentrate their professional expertise on providing business-savvy solutions for clients.

The only way is up Wynne-Jones IP’s growth trajectory, nationally and internationally, means they require a high calibre ﬁnals standard, or dual qualiﬁed Attorney with a mechanical engineering and/or electronics/electrical engineering/IT related background. Because of the high volume of direct client work candidates must have good interpersonal skills to help build sound, professional client relationships.

The Firm places great emphasis on providing clients with an outstanding customer service and actively fosters skills improvement. Opportunities to learn through close working with colleagues plus formal training are a part of the Wynne-Jones IP ethos.

Live well, work well Cheltenham and the surrounding area is one of the most beautiful parts of Britain in which to live and forge a career. The Firm aims to achieve a best-in-class work/life balance for all employees. The IP work is for blue chip clients and real career progression is available for the candidate with drive and ambition. There is a generous salary, bonus and excellent fringe beneﬁts to match this exciting opportunity.

For the facts contact Graham Marlow on 01423 522838 or 0203 0512123 or email your CV to graham@marlowiprecruit.com

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legal

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across a range of chemical subject matter including

its excellent working environment. The promotion of

reputation for its promotion of a healthy work-life

pharmaceuticals. The role would involve a range of

sensible working hours and a genuine valuation of its

balance and is able to offer a market leading

drafting and prosecution work as well as oppositions,

staff have been essential components of its long and

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infringements and freedom to operate activities. The

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private practice and industry backgrounds are most

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package will be offered to the successful appointee.

welcome to make contact.

Engineering – Qualiﬁed or Part Qualiﬁed

Biotechnology and Mechanical/Electrical

Electronics, Physics or Computer Science

- London

- Qualiﬁed or Part Qualiﬁed - York or N.E

- Qualiﬁed or Part Qualiﬁed - London

Ref 21270/8

Ref 31443/2

Ref 7695/7

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Since its inception just a few years ago, this ambitious

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are located in the heart of the City. An exciting

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strength. Headquartered in the picturesque town

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You will have experience in handling a broad range

its thriving London team. You will take up a busy and

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of electronics, physics and telecoms related subject

challenging workload working alongside industry

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recognised leaders. You will be a recognised voice

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will operate under the tutelage of a Senior Partner,

when it comes to discussion regarding the future

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gaining exposure to a wide array of both direct client

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abundance of instructions in several of its practice

and agency work. The group work with a large and

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varied client base to include a renowned research

is very much encouraged. There are excellent

its biotechnology and electrical/mechanical teams

institution, global manufacturing enterprises and

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major telecoms corporations.

its steady growth.

salary will be on offer to the successful appointee.

a rapidly growing department along with an extremely competitive remuneration package.

www.g2legal.com Email attorneys@g2legal.com

Tel 0207 649 9296

Mob 07769 200689

www.linkedin.com/company/g2-legal-limited

G2 Legal 26 Finsbury Square London EC2A 1DS

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THE PINKS

COURSES

Training for the EQE Dates: Venue:

17-18 November 2016 (Part 1) 9-11 January 2017 (Part 2) Central London

Are you training to be a European Patent Attorney? Are you preparing to take the EQE in February 2017? Support your studies by attending our preparatory course, learn from experienced practitioners and previous candidates, and network with fellow professionals. This course is for candidates preparing for the main papers (A, B, C and D) of the European Qualifying Examinations (EQE) before the European Patent Office. It is structured in two parts and reflects the practical nature of the examinations. Part 2 can be booked separately, although taking the complete course is recommended.

Why book Queen Mary University of London’s course? • Between 2007 and 2013 the pass rates of QMUL-trained candidates were generally in excess of 90%, in some years rising to 100%. • In-depth study of previous EQE papers in small groups and with highly experienced tutors. • The course is continuously adjusted to the changing requirements of the examination and the profession. For 2016-17, the course has been adapted to prepare candidates for the new structure of Papers A and B. • Our tutors have been teaching this course for Queen Mary University of London for at least seven years. • Previous candidates will share their experiences. • Queen Mary University of London has nearly 30 years’ experience running this programme and provides close academic supervision. For more information and to register please go to website www.ccls.qmul.ac.uk/events

This course is provided by the Centre for Commercial Law Studies, Queen Mary University of London, 67-69 Lincoln’s Inn Fields, London WC2A 3JB, ccls-events@qmul.ac.uk.

www.ccls.qmul.ac.uk/events Centre for Commercial Law Studies

92 CIPA JOURNAL

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THE PINKS

COURSES

REVISION COURSES FOR THE PEB 2016 EXAMS MAY, JULY AND AUGUST 2016 We are holding, in Milton Keynes, a full programme of residential revision courses for the October 2016 PEB examinations, with an experienced team of tutors. Our courses for the Foundation Certificate papers are between 6-23 July. For the Final Diploma papers, we have a range of options. There is an Introduction to FD4 course on 26 May and FD1, FD2, FD3 and FD4 courses between 5 July and 24 August. Our FD4 (P6) re-sitter course is on 17 August. Course fees include meals and accommodation during the course and we offer discounts for the booking of five or more courses by a firm. We are a CIPA Approved Training Provider. Our website www.jddcourses.co.uk sets out information on these courses. A course leaflet and booking form can be downloaded and there is an online booking facility. E-mail: jdd.consultants@ntlworld.com and admin@jddcourses.co.uk Tel: 01234 294049 and 07791 959630 Fax: +44(0)800 0664016 JDD Consultants, 5 Tennyson Road, Bedford MK40 3SB

BASIC LITIGATION SKILLS COURSE 2016 PUBLIC COURSE DATES www.cpdtraining.net 6-10 June 2016 – Royal College of Surgeons, Lincoln’s Inn Fields, London 5-9 September 2016 – central London 7-11 November 2016 – central London (last place!) The course and assessment comprises 4 days of intensive training; a short oral assessment on the morning of Day 4; and a 2 hour written assessment on Day 5. We only train small groups (maximum 14) to ensure every candidate gets individual attention. Feedback from our candidates is consistently excellent. All courses will definitely run. The price is £1,500 plus VAT per candidate. For more information or to make a booking please visit www.cpdtraining.net/bookings or contact Chris Taylor, Head of Litigation Training, on chris.taylor@cpdtraining.net. We also offer in-house courses at your firm, anywhere in the UK – please see our website for further details.

Volume 45, number 4

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THE PINKS

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THE PINKS

SUPPORT

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TAKE YOUR CAREER FURTHER If you are a bright qualiﬁed EP attorney looking for realistic early partnership prospects, with expertise in Physics, we may just have the position for you. As a result of planned partner retirements, we are looking to strengthen our team with somebody with the drive and independence to be a direct contact for signiﬁcant clients at an early stage, and deliver high quality work and advice with minimal supervision. We have an interesting variety of work to offer – from drafting through prosecution to oppositions, for blue chip clients. We offer competitive remuneration and real opportunity. Please visit our website for further details. –

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TOP TIER FIRM YOUR LIFESTYLE Working at D Young & Co offers attorneys the ability to work with renowned clients, alongside highly acclaimed and motivated peers, and forge exciting and successful careers. Whether your lifestyle leads you to living around London or in the country or along the coast, our ChemBio practice may have the ideal role for you. With a background in life sciences, biotechnology or biochemistry, you could join our WHDP RI TXDOL¿HG DQG WUDLQLQJ DWWRUQH\V LQ HLWKHU 7KH &LW\ or Hampshire, providing the very best advice to our world class clients. But don’t just take our word. We are “widely seen as one of the best in the market, employing some of the most impressive practitioners and involved in some of the most interesting work.” Managing IP. For more information on combining a top tier career with living the lifestyle you want, please contact Dawn Gold on 023 8071 9500 or view details and apply at www.dyoung.com/careers.

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Mechanical En Engineering Engineerin ineerin ng n g– Invigorating mix – London I i Based in Central London our client is a Tier One Patent Practice with a Specialist Mechanical Engineering Team covering aeronautical, automotive and a myriad of high tech engineering portfolios headed by two Partners who lead this collaborative and close knit team. The firm has an attractive opportunity for a new member to join their happy team! Ideally suited for a soon to Qualify or Newly Qualified European or UK qualified Patent attorney who seeks attractive career progression and enjoys increased autonomy and a supportive environment that provides unlimited opportunities to develop professionally! This firm enjoys an outstanding reputation. It’s a career opportunity that truly stands out!

Trade Mark attorney Newly Qualified – New and exciting prospect – London Our client is a fantastic Patent & Trade Mark practice that is both highly regarded and much admired. This new opportunity is within the dedicated Trade Mark team where the Partners ideally seek a Qualified Trade Mark attorney who has 0-1 year post qualified experience. The team have 6 attorneys and enjoy an ever expanding portfolio, attractive career prospects and are based in vibrant city offices. If you seek a role that will offer you autonomy and ongoing career development, this is a great opportunity! To apply for this opportunity please contact Joe Neilson now!

Career Legal are proud sponsors of the CIPA ITMA Cricket Club.

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A sparkling opportunity for a part qualified or Newly Qualified Patent attorney specialising in Electronics to join this highly revered practice in Manchester. With a background in Electronics, Computer Software or Physics they will be eager to meet you! The firm has a tremendous wealth of highly regarded attorneys at this level and the quality of work is incomparable. If you are ambitious and feel Trade T d M Mark ka attorney qualified happiest immersed in really challenging and 2–5 yr pqe – Global law firm – plentiful work, then this is certainly the firm for you! It’s an invigorating environment London where you will be given all the commercial A wonderful opportunity to join a gold star team at this most revered Trade Mark practice. assistance to hold your own in business development and develop your own A law firm with an international reach and portfolio within the most collaborative team reputation, the Trade Mark prosecution team in Patents. If you would like to discuss the oozes talent and professionalism and is proud merits of this firm and the career path to of its collaborative team ethos packed with personality. With work increasing on a weekly partnership, please do not hesitate to call me initially for a confidential low down. basis the team is eager to build and seek likeminded Trade Mark practitioners to join the team. Whether you are an Associate or Newly Hungry for quality? Impatient Qualified the team can accommodate at both for development? – London, levels and most importantly offers superb Manchester and Bristol career development. A gilt edged career There are trainees… and then there are opportunity in every sense! trainees!… We have all experienced that feeling of meeting other trainees in the Chemistry – Global clients – pub, hearing how great their firm is… London you think ‘well, they don’t do that at our firm!’ You placate yourself that they were Our client is a stand out practice in terms probably over exaggerating and really their of progression and calibre of work and this experience is no better than your own… opportunity is no exception! The Chemistry But you then ask yourself, am I given team at this firm enjoys a fantastic body of challenging work? Do I get direct client work and counts global patent portfolios with work, am I being inspired? Is there a training household name brands. Led by a Partner template and a development ladder so I who is immensely popular, highly regarded can monitor my progress and compare my and a champion of personal development, advancement with peers…? Are you excited this is a role that ticks all the boxes for an aspiring confident Patent attorney. A role with by the new challenges that each day brings? Or perhaps hoping that things will improve challenging and plentiful work. A firm that is soon? If you feel you could improve your growing and developing and a department led by a hands on Partner that has your continued position, you’ll be pleased to know there are opportunities aplenty for the discerning development and career progression at heart. This role suits a Patent attorney who is almost attorney eager to develop! Please do get in touch to confidentially discuss what our or newly qualified and is seeking that step up clients are offering in London, Manchester or indeed a step sideways into a role where and Bristol. you can progress!

To enquire about any of the above or our many other opportunities, please contact Joe Neilson on 020 7628 7117 or by email joeneilson@careerlegal.co.uk Career Legal is a recruitment agency and are advertising these vacancies on behalf of their clients.

12/04/2016 13:28:23