CIPA Journal, June 2016 by CIPA Journal

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

June 2016 / Volume 45 / Number 6

Unified Patent Court Judges in the English, French and German local divisions are likely to have a disproportionate influence on the Unified Patent Court as it develops

The Chartered Institute of Patent Attorneys

Privilege for US Patent Agents Finnegan

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Representations when filing Registered Designs

Proposed changes to the Patents Rules Patents Committee

AIA trial outcomes at the USPTO Finnegan

Six things we love about being the President of CIPA Andrea Brewster

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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.

Tony Rollins President

Stephen Jones Vice-President

Andrea Brewster Immediate Past-President

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 Tim Jackson; 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 Education Projects Co-ordinator: Angelina Smith Membership team: Dwaine Hamilton; Frances Bleach; Kirsty Burls; Shannon McNeil-Smith; Charlotte Russell. General enquiries: 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

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Contents 18-29 30

UP FRONT

ARTICLES

EDUCATION

President’s address

Tony Rollins

NEWS

Chief Executive’s report

Lee Davies 4

Council Minutes

Lee Davies 7

Annual General Meeting

Lee Davies 7

Patents Committee

Tim Jackson 8

Proposed Changes to the Patents Rule

Patents Committee 9 10

Playing Roulette with UPC Judges Nicholas Fox US update: Privilege for US Patent Agents Finnegan team US update: Patent Litigation Finnegan team US update: Inter Partes Review Finnegan team Six Things We Love... Andrea Brewster

The Scottish Meeting

Dr Kate Macdonald 57

Tackling Unconscious Bias

Jon Atkins 58 60

Institute events IP portfolio and strategy

Jeff Sweetman

REVIEWS 62

EPC Appeal Proceedings

Chris Mercer 63

Adjudicating IP Disputes

Ailsa Carter and David Barron

DECISIONS

Pippa Allen 65

IPO Updates

The UPC

Patent form 7s

Patents

Hopping the pond to the Continental Cercle

Designs - Examination Guidelines

Beck Greener

Pippa Allen

IPO decisions

Designs and Copyright Committee

Barker Brettell LLP 40 43

EPO decisions

PERSONAL

Bristows

Bird & Bird LLP

THE PINKS 67 69 71

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Announcements

Trade marks and other IP

Courses and training International Recruitment JUNE 2016

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President’s address

o begin, I would like to thank Andrea Brewster for all she has done in her year as President. On behalf of the Institute, this is for the effort and time she has put in and the boundless enthusiasm she has expended, sometimes in difficult circumstances. And from me, thanks for helping me understand more about the internal workings of CIPA and showing me how to get things done! I would like to draw particular attention to Andrea’s effort and drive in setting up IP Inclusive, an initiative that demonstrates

our committees and provide some consistency in an organisation where Presidents come and go annually. Without them little would get done but the role and work of the CIPA staff are often overlooked, I would like to thank them therefore for all their efforts over the year, particularly in relation to the Congress which CIPA staff organized and ran. I would like to see the support provided to the committees increase over the next year. We have four Council members standing down at this AGM: Richard

In my Presidency, I feel it is important to build on what has been achieved in the past few years by continuing to work effectively for our members. to those outside the profession that we, CIPA, are committed to increasing diversity in the legal professions. I am really pleased that Andrea has indicated that she will continue to be involved fully in the development and expansion of the activities of this important group. CIPA works through the interaction of its three limbs: the Officers/Council, the committees and the CIPA staff. Each one requires the support and commitment of the other two to work effectively. It is the CIPA staff, led by Lee Davies our CEO, who support the activities and organization of 2

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Davis, Annabel Hector, Keith Hodkinson and Jan Vleck. They have been Council members for many years and I would like to thank them all for their contributions to Council, they will all be missed. Keith was, of course, also the deputy chair of CIPA’s Internal Governance Committee (IGC). I would also like to thank him for the time and effort he put into this role. I would like to welcome the new Council members who have taken up the vacant positions: Julian Asquith, Greg Iceton and Richard Mair. Julian is based in Oxford whilst Greg is in

Dr Tony Rollins, President

Munich, I am sure they will be great ambassadors for CIPA in these centres of scientific excellence. Richard took over as chair of the International Liaison Committee earlier this year and has already been busy organizing meetings with our sister organisations in Canada, the US and Asia. The fourth vacant Council position will be taken by Catriona Hammer, whose term as Immediate Past President expires today. Catriona, being well known to you, needs no introduction from me. We also have a new Council member in our new Vice President, Stephen Jones, although Stephen has been on Council in the past and more recently on the IGC. Being a solicitor and patent attorney who has worked for some of the big London law firms, Stephen provides additional experience and perspective to the Officers. I look forward to working with Stephen and Council during my term as President so that together we can enhance still further the reputation of CIPA. In my Presidency, I feel it is important to build on what has been achieved in the past few years by continuing to work effectively for our members, particularly in relation to policy initiatives and education. We need to liaise closely with the UKIPO, for example, on patent harmonization, and continue to develop our relationships with the EPO and WIPO. We should ensure that CIPA is an organization that is always consulted on new policy matters. On education, last year saw the Patent Litigation and Patent Administrators courses rolled out. This year we need to provide our members with training on the implications of the new Unitary Patent and UPC and www.cipa.org.uk

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NEWS

start work on an advanced patent administrators course. There will be challenges in the coming year: our relationship with IPReg will inevitably change with the appointment of a new chair, Caroline Corby. We need to establish a good working relationship with her. The regulatory landscape itself could also be open for discussion with the Ministry of Justice consultation on regulatory bodies in the legal area. Would we prefer a Super Regulator that regulates all legal professionals, or stick with IPReg, which is specific to patents and trade marks? If the latter, then we need our voice to be heard clearly to this effect by government. The Unitary Patent and the Unified Patent Court are opportunities for the UK profession to demonstrate the excellence of the services they offer clients. CIPA, particularly the Litigation Committee, has worked hard to ensure that its members can represent their clients before the new court. We now need to ensure that CIPA equips its members with enough information so that they can benefit from the opportunities and overcome any challenges the new system may throw up. Finally, although this is not an inclusive list, the lease on CIPA’s current premises runs out in 2017. Working alongside our CEO, the President and IGC need to ensure that we have offices that are appropriate for our staff and the function we wish them to fulfil. I have one last thank you to make and that is to the people who voted for me in the recent election. We will have challenges in the year ahead but I will work with Council, the committees and the CIPA staff on your behalf to deal with these and, hopefully repay the trust you placed in me. It is an honour to be your President. This editorial is based on the CIPA President’s address made to the AGM on Wednesday 11 May 2016. Volume 45, number 6

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Chief Executive’s report

t is my great pleasure to welcome Julian Asquith, Greg Iceton and Richard Mair to Council. This continues the recent tradition of attracting new members of Council each year. The composition of Council has changed considerably since I started at CIPA in February 2012. Whilst we did not have a contested election this year, I think it is a testament to the important role that CIPA plays for the UK profession that members feel able to put themselves forward to shape the future direction of the Institute. On the subject of contested elections, a small number of you contacted me puzzled as to why we hold an election when places on Council are not contested. I agree that on the face of it this seems to be something of a pointless exercise. It does, however, give those who are standing for Council the opportunity to set out their reasons for doing so and to receive a mandate from the membership. It also reminds us that there is an open democratic process for election to Council and there is always next year. Please feel free to give me a call or drop me an email if you would like to find out more about standing for Council. Congratulations also to our new President, Tony Rollins, and VicePresident, Stephen Jones. With CIPA operating an annual presidency, this is always an interesting time of year as we reflect on the accomplishments of the outgoing President, Andrea Brewster has many of these to her name, and learn about the agenda being set by the new President. Tony has signalled that he will have a strong focus on CIPA’s influence in terms of national and international policy and that he also intends to continue to promote education for the UK profession. CIPA’s great strength is its level of member engagement, evidenced through

the degree to which its members are prepared to participate in its committees, working groups and communities of practice. We have seen many changes in recent years, in terms of the way CIPA is structured, the way CIPA governs itself and the way we use technology to support the services we provide for members. I am looking forward to working with Tony, Stephen and Andrea as Immediate Past President to allow new CIPA to bed down and focus on building our relationship with members so that the value of CIPA membership is tangible. The Annual General Meeting received the 134th annual report, continuing the new reporting style we adopted last year. The annual report can be downloaded from the CIPA website. Please take a look. We have a great story to tell about the way CIPA continues to build Chartered Patent Attorney status as a global brand and to influence on behalf of the UK profession. The annual report references the threeyear strategic plan, which you can also download from the website. It was brilliant to see so many PEB examination prize winners at this year’s AGM and to celebrate their achievements, this is more fully covered in my report on the AGM [see page 7]. I will finish on an update on the Bye-laws. We have received a reply from the Privy Council from the less formal part of the process, sharing our work so far with the Privy Council Advisors. We now have some more work to do in terms of picking up on the points raised by the Privy Council Advisors and further refining our proposed changes. We hope to be in a position to bring the proposed Bye-laws to the membership by way of a resolution to a Special General Meeting later this year. Watch this space. Lee Davies, Chief Executive JUNE 2016

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Council Minutes Minutes of the Council meeting held on Wednesday 6 April 2016 at 14:30. Item 1: Welcome and apologies Present: A.R. Brewster (President, in the Chair), C.M. Hammer (Immediate Past President), R.J. Burt, P.G. Cole, M.P. Dixon, S. Ferrara (by phone), J.A. Florence, S. Harte, K.L. Hodkinson, A.C. Instone, J.T. Jackson, B.N.C. Ouzman (by phone), T.W. Roberts (by phone), V.B. Salmon and J.M. Vleck. Lee Davies (Chief Executive) and Neil Lampert (Head of Media and Public Affairs) were in attendance. Apologies: A.J. Rollins (Vice-President), C.P. Mercer (Honorary Secretary), R. Ackroyd, J.D. Brown, R.J.H. Davis, A. Hector, R.P. Jackson, A. Mukherjee, A.D. Poore, G.V. Roberts and S.M. Wright.

Item 2: Minutes 83/16: The draft Minutes of the last meeting held on Wednesday 2 March 2016 were approved, following amendment.

Item 3: Conflicts of interest 84/16: Declaration by Council members of any conflicts of interest Outcome and actions: Agenda item 16(b): Keith Hodkinson asked that the minutes record that he is a director of PAMIA and has a financial interest in a Canadian firm.

Item 4: 2016 AGM and Council elections 85/16: Council approved the 2014 – 15 audited accounts. Action: Lee Davies to prepare a more narrative statement to accompany the accounts, setting out the use of reserves to invest in projects and explaining the variances. 86/16: Council approved in principle the auditor’s recommendation that CIPA adopt a system for recording related party information for senior staff and members who have an influence over financial decision making and remitted this to the Internal Governance Committee. 4

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Action: The Internal Governance Committee to recommend to Council the most appropriate method for recording related party information. 87/16: Council approved in principle the auditor’s recommendation that CIPA adopt a different online banking system, providing a greater level of financial control and segregation of responsibilities. Action: The Internal Governance Committee to give the auditor’s recommendation further consideration with respect to the financial consequences of transferring to a different online banking system and the practical issues for staff of dual authorisation for online transactions. 88/16: Lee Davies advised Council that the following Council members were resigning from Council at the AGM, as required by the Bye-laws: • Catriona Hammer – Resigning as Immediate Past President as required by the Bye-laws and standing for election to Council. • Richard Davis – Not standing for election to Council. • Annabel Hector – Not standing for election to Council. • Keith Hodkinson – Not standing for election to Council. • Tim Jackson – Standing for election to Council. • Bobby Mukherjee – Standing for election to Council. • Gwilym Roberts – Standing for election to Council. • Tim Roberts – Standing for election to Council. • Jan Vleck – Not standing for election to Council. • Simon Wright – Standing for election to Council.

Lee Davies advised Council that Richard Mair and Greg Iceton had confirmed that they would be standing for election to Council and that he was in discussion with another Fellow who he hoped would shortly confirm his candidacy. Lee added that he was preparing the ballot list for Council and nominations for President and Vice-President to go to the OGM in Edinburgh on 14 April. Lee said that if no other nominations were forthcoming, there would be nine candidates standing for election for the nine vacant seats on Council. Council agreed that the online election and postal ballot should go ahead as this gave the candidates the opportunity to set out their reasons for standing for Council. Council discussed how best to recruit new Council members. Council felt that calls for candidates could be targeted at members in decision-making roles (for example managing partners and heads of industrial departments), who could encourage their colleagues to become involved in Council, but that such calls should be sent centrally from the Chief Executive so as to avoid accusations of favouritism towards any particular organisation. Action: Lee Davies to send an email to managing partners and heads of industrial departments (data permitting) to remind senior professionals of the closing date for nominations and the importance of supporting those who might be considering standing for Council. 89/16: Andrea Brewster reminded Council that an induction session for new members of Council had been scheduled for 1 June 2016, immediately before the June Council meeting.

Item 5: Bye-laws review 90/16: Lee Davies advised Council that he had yet to receive a response from the Privy Council on the proposed revisions www.cipa.org.uk

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NEWS

to the Bye-laws. Lee added that, if he did not receive a response by 11 April, Council would not be able to comply with the 30-day notice period required by the current Byelaws for a special resolution to be taken to the AGM. Council agreed to hold a Special General Meeting to present a resolution to amend the Bye-laws to members on a date to be arranged, subject to the receipt of a response from the Privy Council. 91/16: Lee Davies informed Council that he, Tony Rollins and Stephen Jones had discussed the transitional arrangements for the Presidency and the Vice-Presidency contained within the proposed Bye-laws and were concerned that these were not appropriate as they significantly reduce the term of the incumbent President and significantly increase the term of the incoming President. Tony and Stephen asked Council to consider a more equitable sharing of the transitional period, with each serving approximately 15 months, depending on when the new Bye-laws come into force. Council approved this proposal. Council agreed that it would be better, subject to Privy Council approval, if the Bye-laws allowed Council to formulate the details of such transitional provisions. Action: Lee Davies to draft revised transitional provisions to reflect the proposal from Tony Rollins and Stephen Jones, subject to any additional feedback received from the Privy Council.

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she was not yet able to reveal the name of the preferred candidate as this was still subject to discussions between IPReg and the individual concerned, but that she felt sure that Council would welcome the appointment. 94/16: MoJ review of legal services regulation. Andrea Brewster informed Council that she, Matt Dixon and Lee Davies had met with representatives from the Ministry of Justice, including the senior civil servant leading the review, for an initial discussion in advance of the MoJ publishing a consultation document. Action: Council agreed to remit any further work arising out of the consultation, including any plans or proposals to reform legal services regulation, to the Regulatory Affairs Committee.

policed by patent rights owners. There would be the possibility to opt back in if it was found that the opt-out was accidental or malicious. Vicki added that she and Lee Davies had met with Ann Wright and that plans were in place to issue litigation certificates to all CIPA members who qualify to represent before the UPC under the EPLC [European Patent Litigation Certificate] grandfathering provision.

Item 9: Succession planning 97/16: Andrea Brewster asked Council members to consider the paper on the role of the President, intended as guidance for current and future officers and the people to whom they are accountable, and the paper on the role of the chief executive and to feed comments back through Lee Davies.

Item 10: epi consultation 98/16: Council agreed to remit the Education and Professional Standards Committee to produce a response to the consultation on the epi forum: http:// patentepi.com/de/epi/forum/36. It asked the Committee to involve the Informals in this process.

Item 6: Strategic Plan

95/16: Future of the UK IP professions. Catriona Hammer reported on the brainstorming meeting between CIPA, ITMA and IPReg held on 30 March 2016. Catriona said that the meeting had been facilitated very well by Steve Gregory, a lay board member of IPReg, and had identified a number of areas of shared strategic importance for CIPA, ITMA and IPReg. Catriona added that a written summary of the meeting had been produced but that this was not yet ready for wider circulation. Action: Council asked the Regulatory Affairs Committee to consider the matters arising out of the brainstorming meeting and to advise Council on any future actions.

92/16: Council noted the publication of the Strategic Plan.

Item 8: Unitary Patent and UPC

100/16: Congress Steering Committee Council noted the oral report from the Congress Steering Committee.

Item 7: Regulatory issues 93/16: IPReg Chair appointment. Andrea Brewster provided Council with an update on the appointment process for Michael Heap’s successor as Chair of IPReg. Andrea advised Council the interview panel had seen five candidates and that the field had proven to be very strong. Two candidates had shone above the others and, following a very positive discussion about the merits of appointing either of these candidates, the interview panel had reached a consensus. Andrea added that Volume 45, number 6

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96/16: Vicki Salmon said that she would check and see if the draft Code of Conduct for representatives acting before the UPC could be circulated. Vicki added that the case management system was currently being stress tested. Vicki informed Council that members of the Litigation Committee were liaising with colleagues at EPLIT [European Patent Litigators Association] on a proposal to hold a mock trial in London in October and that the IPO had agreed to this being held in the new Court. On opt-outs, Vicki said that authorisation to act safeguards were being considered and that these would need to be

Item 11: Committees and committee reports 99/16: Internal Governance Committee Bobby Mukherjee advised Council that the main elements of the Internal Governance Committee’s report had been covered on the agenda under the item on the preparation for the AGM.

101/16: Litigation Committee Council noted the report from the Litigation Committee and granted the Committee the power to act in responding to the EU Commission’s survey on the IP Enforcement Directive. 102/16: Patents Committee Council noted the report from the Patents Committee [see page 7]. Tim Jackson thanked Stuart Forrest for his work in JUNE 2016

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preparing a response on the UK IPO’s consultation on patent rules and confirmed that Council members could share this more widely for feedback. Tim asked for comments to be provided to Gary McFly. Council granted the Committee the power to act in responding to the IPO’s consultation [see page 8].

Item 15: Resignations, etc

103/16: Media and PR Committee Council noted the report from the Media and PR Committee.

113/16: PAMIA and Canada. Council considered a proposal brought forward from PAMIA by Keith Hodkinson on PAMIA insuring members of the Canadian profession through the Intellectual Property Institute of Canada (IPIC) in 2017, when the profession comes under mandatory regulation. Council was assured that there was no enhanced level of risk and that there would be no deferred costs to the UK profession. Council agreed that it was supportive of this move by PAMIA and asked Keith Hodkinson to provide future updates as progress is made.

104/16: Exploitation Committee Council approved the appointment of Mike Barlow to the Committee. 105/16: Life Sciences Committee Council approved the appointment of Sarah Boxall and Alastair Sayce to the Committee.

Item 12: Officers’ Reports 106/16: Council noted the Officers’ reports. Andrea Brewster apologised to Council that she had to leave the meeting early to get to an evening engagement on behalf of CIPA and asked Catriona Hammer to take the Chair.

Item 13: Chief Executive’s Report 107/16: Council noted the Chief Executive’s report.

Item 14: Applications for election 108/16: Fellows Council approved the following first time Fellow application: Christopher Owen. Council approved the following second time Fellow applications: Jenna Marie Ahern; Jonathan Clark; Emily Dodgson; Alexander Fennell; Nathan Joel Hinks; Paul O’Hagan; Victoria Helen Russell; Andreas Robert Theisen. 109/16: Associate members Council approved the following second time Associate membership application: Rachel Fetches 110/16: Students Council approved the following Student membership application: Harriet Holden 6

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111/16: Council noted the report on resignations.

Item 16: Any other business 112/16: EU referendum. Council noted that the revised statement on the EU referendum had been published.

114/16: Ariosa v Sequenom – US Supreme Court petition stage Council received an update from Paul Cole on the draft of an Amicus Brief. Council noted that the work on the brief was nearing completion and thanked Paul Cole for leading the initiative. 115/16: 2016 EQEs Lee Davies informed Council that he had written to Andrew Billingham, chief executive of the Ashton Gate Stadium, setting out his serious concerns over the handling of the 2016 European Qualifying Examinations. Lee said that he had received a reply from Mr Billingham acknowledging that the venue had failed to meet expectations. Mr Billingham said that that the drop in temperature took his team by surprise and that they were unable to cope with the circumstances. As compensation, Mr Billingham has offered an alternative space at the Ashton Gate Stadium for the 2017 examinations. Lee Davies said that he believed it would be difficult to return to a venue which served CIPA and those taking the examinations so poorly. Lee advised

Council that he was seeking the maximum refund he can achieve of the cost of holding the 2016 examinations at the Ashton Gate Stadium, not only as a matter of principle but also because CIPA has committed to engage an examinations expert to analyse the 2016 data and see if a case needs to be made for special dispensation given the conditions experienced by the candidates. Roger Burt said that he, Chris Mercer, Georgina Sear and the invigilators did everything that they could to improve conditions for the candidates and added that the conditions did improve after the first day, when it had been very cold. Council thanked Roger, Chris and Georgina for their efforts on behalf of the candidates sitting the examinations. In response to a question about the cost of holding the examinations in the UK, Lee Davies said that the cost of hiring the venue, desks, examination equipment and paying invigilators was in the region of £25,000. Council asked Lee to canvass the opinion of managing partners and heads of industrial departments to see if they still valued CIPA providing a UK venue for the EQEs at no cost to candidates or their employers. Action: Lee Davies to canvass the opinion of managing partners and heads of industrial departments to see if they still valued CIPA providing a UK venue for the EQEs.

Item 17: Date of next meeting 116/16: Wednesday 4 May 2016. Keith Hodkinson said that, as he would be unable to attend the May meeting, this would be his final Council meeting. On behalf of Council, Catriona Hammer thanked Keith for the contribution he had made to CIPA, in particular in the areas of governance, regulation and business practice. Council acknowledged Keith’s retirement by acclamation. There being no other business, the Immediate Past President closed the meeting at 17:14. Lee Davies, Chief Executive www.cipa.org.uk

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CIPA • IPO

Annual General Meeting Report on the 134th Annual General Meeting

he meeting approved the minutes of the 133rd Annual General Meeting. The meeting received, discussed and approved the 134th Annual Report. The meeting received, discussed and approved the audited Financial Statements for the year ended 30 September 2015. The meeting appointed haysmacintyre as CIPA’s auditor for the financial year ending 30 September 2016. The President, Andrea Brewster, presented examination prizes and awards to the following:

Catrin Petty: The Drafting Prize for achieving the highest mark in the Drafting of Specifications examination paper. Marcus Sims: The Michael Jones Prize for achieving the highest mark in the Amendment of Specifications examination paper and the Gill prize for the highest combined mark in the Advanced IP Law and Practice, Drafting of Specifications, Amendment

in the UK Patent Law and International Patent Law examination papers. Hannah Buckley: The Chris Gibson Prize for achieving the highest mark in the English Law examination paper.

The newly elected CIPA President, Tony Rollins, delivers his acceptance speech

of Specifications and Infringement and Validity examination papers. Robert Wooley: The Keith Farwell Prize for achieving the highest mark in the Trade Mark Law examination paper. Samantha Walker-Smith: The Moss Prize for achieving the highest combined mark

Patents Committee Report to Council, May 2016 CIPA’s response to the IPO consultation “Proposed Changes to the Patents Rules”

The Moss Prize was jointly awarded to Fehn Chua-Short, who could not attend the AGM to receive her prize. Miranda Kent was awarded the Ballantyne Prize for achieving the highest mark in the Infringement and Validity examination paper, but could not attend the AGM. These prizes will be presented to the winners at a future event. The meeting noted that Council was not proposing to increase annual subscriptions for the 2017 membership year. The Chief Executive, Lee Davies, declared that a total of 489 votes had been cast, 475 online and 14 postal ballots. The following Fellows were elected as members of Council for the coming year: Mr J.P. Asquith, 303 votes Mrs C.M. Hammer, 395 votes Mr G.J. Iceton, 309 votes Mr J.T. Jackson, 337 votes Mr R.D. Mair, 319 votes Dr A. Mukherjee, 365 votes Mr G.V. Roberts, 403 votes Mr T.W. Roberts, 341 votes Mr S.M. Wright, 372 votes

has been revised and submitted. Council was presented with a draft last month. The final version is available on the CIPA website and can be seen at page 8. A reminder that we would welcome any topics to be raised with Alfred

Dr A.J. Rollins was elected as President, 416 votes

Spigarelli, EPO Director, Quality Support, at the meeting with him scheduled for 26 May 2016. Harry Harden (Kilburn & Strode) has volunteered to represent CIPA on the IPO’s Patent Practice Working Group (PPWG), following Gwilym Roberts’ decision to stand down from that group. Stuart Forrest will take the lead. It seems sensible for Harry also to become a member of the Patents Committee. Council is asked to approve these changes. Tim Jackson, Chair

Mr S.F. Jones was elected as VicePresident, 389 votes The outgoing President, Andrea Brewster congratulated Tony Rollins and Stephen Jones on being elected as President and Vice-President and presented each with their respective badges of office. Lee Davies, Chief Executive

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CONSULTATION

PATENT RULES

Proposed changes to the Patents Rules CIPA’s response to the UK-IPO Consultation on proposed changes to the Patents Rules, April 2016.

his response to the Intellectual Property Office’s Consultation on proposed changes to the Patents Rules is submitted on behalf of the Patents Committee of the Chartered Institute of Patent Attorneys (CIPA). Members of the Patents Committee include practitioners from “private practice” (individual private practice firms) and practitioners from in house patent/legal departments. Thus, the views expressed below represent those of attorneys who practise before the IPO and bodies who are represented by these patent attorneys, which include multinationals, small to medium enterprises, universities and private individuals.

Comments on the consultation CIPA is grateful that the UK-IPO has sought comments from its users before making changes to the Patents Rules. This approach ensures that potential issues can be highlighted before any legislative changes are made. The proposed changes as a whole are seen as a welcome change, save for the comments set out below. It appears that the majority of the proposed changes should eliminate undue administration, such as the need to file triplicate copies of international applications. Introducing a notification of intention to grant This is perceived to be a good idea, and it should provide applicants with a definitive date on which to take action. It will also allow attorneys in private practice an opportunity to advise clients of the final date on which they will need to take action. The change should provide 8

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greater clarity to the grant process. However, what remedies would be available to an applicant wishing to file a divisional application if the communication provided an incorrect grant date or an error was made during the grant process, such that an application proceeded to grant before the date indicated in the communication? Once an application has proceeded to grant, it will not be possible to file a divisional application. This could cause a potential flashpoint in the event of an error. Prohibiting the use of omnibus claims There appears to be a general affinity for omnibus claims in the UK, especially following Rotocrop International Ltd v Genbourne Ltd [1982] FSR 241 where an omnibus claim was construed to cover variants that were not protected by other “conventional” claims. Further, omnibus claims can prove to be useful for obtaining claims of a narrow scope that protect the commercial embodiment of an invention. Although Sir Colin Birss commented that the UK-IPO should consider whether omnibus claims serve any useful purpose today (see Environmental Recycling Technologies Plc v Upcycle Holdings Ltd [2013] EWPCC 4), comments made in that case also stated that omnibus claims do neither harm nor good. Omnibus claims are generally only included in applications if there is deemed to be some merit in their inclusion. These claims are perceived to be a final fall-back position, and their scope is narrow. There is generally no difficulty in construing such claims, see for example

the examiner’s comments in opinion 13/141 concerning GB 2 332 376 B. The consultation document states that the use of omnibus claims would be excluded, except where “absolutely essential”. However, the “absolutely essential” wording does not feature in the proposed wording of Rule 12. If the test is to be whether an omnibus claim is “absolutely essential”, it is unclear how it will be determined whether an omnibus claim might be “absolutely essential”. It is likely that applicants will be of the view that such claims are indeed essential if they have been included in their application. However, the IPO could deprive applicants of a just reward for disclosing their invention by ruling that an omnibus claim is not “essential”. The potential for disagreement on this point could increase the burden on examiners to deal with such exchanges. The proposed wording of Rule 12 states that the claims should not rely in respect of technical features of the invention on references to the description, drawings or any photograph unless it cannot be otherwise clearly defined in words. However, the EPO allows applicants to refer to parts of the description in the claims. For example, at the EPO it is acceptable to refer to methods of conducting a test that are set out in the description by citing the relevant paragraph(s), and it is also acceptable to refer to examples set out in the description in the claims. The IPO’s proposed wording, therefore, appears 1. h ps://www.gov.uk/government/ uploads/system/uploads/a achment_ data/ﬁle/356147/op1314.pdf

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PATENT RULES

to go further than necessary to exclude only omnibus claims, and it would cause a disparity between practice before the EPO and the IPO. In addition to the above, the proposal set out in paragraph 22 is that new rule 12 would apply to all pending applications. It is unclear how this would work in reality. If an application is in order for allowance before new rule 12 came into effect, but it contains an omnibus claim, would the examiner issue a further examination report requesting the omission of the omnibus claim? If the only outstanding objection issue is the presence of an omnibus claim, then it does not appear to be worthwhile issuing a further examination report and delaying grant. The alternative proposal set out in paragraph 23 would place less burden on the IPO, but it would mean that there is a two-tier system in operation at the IPO; for applications filed before and after the implementation date of new rule 12. In view of the fact that omnibus claims have been deemed to provide neither harm nor good, there does not appear to be any compelling reason to change the approach to omnibus claims when doing so could increase the examination burden on the IPO for those applicants who are determined to retain such claims in their applications.

Allowing extensions to the period for filing an address for service No comments or objections.

Clarifying the period for making a request for reinstatement of a patent application Of the options proposed, the legislative option appears to be more practicable. It should avoid time being wasted trying to identify the date on which the cause of non-compliance was removed. Also, it should remove any concerns that may be associated with making a declaration that may be found to be incorrect at a later date. Under the current system, third parties typically adopt a cautious approach and generally take the view that an application should not be deemed to be withdrawn until the 12-month period has elapsed. Thus, the legislative option would remove any ambiguity.

Removing the requirement for triplicate copies of international applications No comments or objections.

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Relaxing the formal requirements for drawings No objections. As the IPO has appreciated, the representation of some forms of technologies by monochrome figures is not necessarily practicable. However, will such drawings be reproducible in online databases, such as espacenet, so that third parties can review them in full? Requirement for to notify the IPO each year of the address for receipt of the renewal reminder No comments or objections. Clarifying the period for making amendments to PCT applications entering the UK national phase No detailed comments or objections. The proposal appears to be sensible. Clarifying the requirements concerning changes of names and addresses The current wording can lead to confusion, so the proposed changes appear to be sensible. The rule concerning advertising amendments during infringement and revocation proceedings No comments or objections.

Removing the requirement for duplicate copies of Patents Form 51 to be filed No comments or objections. Other proposals In response to question 17, which refers to the current practice under rule 111 and the recent changes to the Manual of Patent Practice (MPP), section 123.47.1, CIPA notes that the updated MPP section states: “Extensions of time under rule 111 may not be used to ‘un-terminate’ an application or extend a time period that has already expired”

However, this appears to be in contradiction to rule 111, which states: “The comptroller shall extend any period of time specified in the Act or these Rules where he is satisfied that the failure to do something under the Act or these Rules was wholly or mainly attributable to a delay in, or failure of, a communication service”. The IPO has interpreted rule 111 in the past to apply to due dates that have already expired, see for example O/365/14 where the due date for putting an application in order for allowance had passed but it was extended nonetheless by the IPO under rule 111. It is, therefore, unclear why the IPO has changed its interpretation of rule 111, where there does not appear to have been any judicial ruling that would have prompted such a change. It would seem that the revision of the MPP section 123.47.1 needs further thought. Alternatively, if it is now the IPO’s view that rule 111 should not apply to due dates that have expired, then the wording of rule 111 should be amended accordingly to make that explicitly clear. In that event, further consultation with explicit proposals may be desirable.

IPO update – patent form 7s The Intellectual Property Office is looking to change the way in which it processes patent form 7s. It is proposing to stop notifying inventors, who are not applicants, when they have been mentioned in a patent application. More information, including the chance to comment on the change, can be found via the following link: https:// www.gov.uk/government/news/ changing-the-way-we-processpatent-form-7. The closing date for comments is 30 June 2016.

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Designs – Examination Guidelines CIPA’s comments/response to the UK-IPO Draft Examination Guidelines, 15 April 2016.

IPA supports the provision of an online Designs Manual, and is grateful for the opportunity to comment on its contents. In general, we think the detailed guidance and examples in Section 11 relating to representations will be invaluable to applicants. Our general point is that it is important to clarify the relationship between the Manual, on the one hand, and the existing Design Practice Notices (DPNs) which are as follows:

2.3 Should say “the design of just part of a product”, the statutory language, not “part of a design”. Note the link to DPN 2/03.

List of DPNs We point out the links in the table and suggest that the DPNs be incorporated into, and then explicitly repealed in favour of, the Manual once its content has been finalised. We have seen, and support, the comments of the IP Federation. Our detailed comments are as follows:

2.5 Note OHIM appeal case R 1009/2006-3 Sabine Decoodt, and OHIM’s Notice (approved in that case):

1.04 add “or is a design of an interconnection” We strongly disagree with para 1.05. It is correct as regards Section 1D and Schedule 1, and should be confined to those grounds. As regards Sections 1 and 1C, the equivalent text should read “In order to be deemed acceptable for registration, a design must not consist entirely of elements which correspond to those aforementioned in Sections 1 and 1C”. 2.2 As indicated below, we think paras 2.18-2.19 should follow under “appearance”.

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2.4 Note link to DPNs 6/06 and 1/16. As to “… do not fall under the definition of a design, as set out in the RDA…”, this is a policy interpretation, which does not appear literally in the RDA. Perhaps re-word. Also, point out that “where filed in greyscale, the tonal contrast may form part of the design.”

“According to Article 37(1) CDR and the explanations given in the Examination Guidelines, an ‘ornamentation’ is an additional and decorative element capable of being applied to the surface of a variety of products without significantly affecting their contours.” (OHIM Newsletter 5-2005). This might be a better approach than the 2D/3D analysis of the draft Guidelines. We think it could be partly three dimensional, like the “cock beading” in Mark Wilkinson Furniture v Woodcraft Designs [1988] FSR 63 or the writing in a stick of rock (referred to by the Court of Appeal in Lambretta v Teddy Smith [2004] EWCA Civ 886, [2005] RPC 6). 2.08 Replace “which are not visible” with “which are wholly invisible” – partly visible designs are not excluded. The Draft Guidelines should perhaps

indicate at this point that this ground is not examined. Refer to paras 3.09 – 3.10 below. Note the link to DPN 1/03. 2.12 “Screenshots” suggests that applicants need to file the whole screen, which differs from longstanding practice allowing registration of icons (i.e. parts of screens, elements of GUIs). Also, it appears to us that line drawings should be an acceptable representation of GUI elements, if the novelty lies in their shapes rather than their colours. 2.13 We strongly disagree that a moving screen interface could be considered a “computer program”. We think the Court of Justice decision in Case C-393/09 BSA makes it clear that GUIs are not computer programs in the sense of EU law. We are also doubtful that it could “constitute an attempt to protect the functionality of a product”, as stated. A growing number of countries protect dynamic icons and we think the UK would be ill-advised to take a hostile position absent any authority on the point. We think it advisable to delete this paragraph altogether. 2.14 We are unaware of the authority for this definition of “get-up”. In particular, the bikini example appears likely to confuse. We support the notion of registering multiple separate items used together as a single design, but it might be better to approach this as a matter of “product” than of “get-up”. 2.18 We agree that “ideas” and “concepts” are unprotectable. We do not www.cipa.org.uk

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agree that this is because they are not a “product”. The Commission’s Green Paper indicated that the reason for the adoption of the term “appearance” as a definition of “design” was to exclude protection for concepts. See EU Green Paper,1 para 5.4.3.3 p59. Note also General Court Case T-68/11, Kastenholz v OHIM at para 72 contrasting “appearance” and “idea”, and PMS v Magmatic2 at para 57 contrasting “idea” or “conception” with “design”. 2.19 We think this scenario would normally be a “lack of unity” objection, not a “not a design” objection. Since design applications contain images, they are usually incapable of protecting ideas or concepts, whatever the applicant might think, so no rejection by the Registry is required. 3.2 Not only is there no novelty examination (note link to DPN 1/06)

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– the Registry is unable to examine novelty and individual character at the examination stage even where prior art is submitted by a party, or is sitting on the examiner’s desk. 3.3 Add “or in Court,” after “Tribunal”. Note link to DPN 4/03. 3.4 At this point, perhaps add a link to the various databases which cover designs extending to the UK, e.g. the Registry design search, Designview, eSearchPlus, Hague Express, and WIPO’s Global Design Database.

4.01 4.13. We agree. Sections 5 & 6 We think it would be very desirable to keep these sections “in lock” with those of the Trade Marks Manual. Perhaps in future a common

7.7 Perhaps add at this point that the applicant may use the description for explaining e.g. dashed lines. Note link to DPNs 2/03, 1/04, 1/16.

3.09 Note link to DPN 1/03.

Title

1/16

Guidance on use of representations when filing registered design applications

1/09

New procedure relating to convention country priority claims in design applications

6/06

Colour in design applications

5/06

Changes to the Registered Designs Rules (etc)

4/06

Facilitating the restoration of lapsed design registrations

3/06

Ending the withdrawal of some registered designs from public inspection

2/06

Allowing multiple applications

1/06

Ending novelty examination

2/04

US priority documents in support of UK design applications

1/04

Filing requirements for design applications

6/03

Colour in design applications

5/03

Designs dictated by their technical function

4/03

Requirement of novelty and individual character

3/03

Divide-outs

2/03

Applying to register part of a product

1/03

Component part of complex product visible in normal use

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7.5 Add mention of the fact that the Registry will object on other grounds also, e.g. if they cannot understand what the indication means, if it tries to claim technical function, if it is immoral, etc. 7.6 We do not think the Registry is in a position to guarantee applicants that the indication “is solely for the purposes of the application process”. Although it does not limit the scope of protection, it could have effects on validity. We think the point is currently open (see the disagreement between the UK Court of Appeal and OHIM’s Board of Appeal in Green Lane v PMS3 at paras 51-52).

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module could be developed which deals with both together.

7.8 Add reference to the practice where specimens are filed following Hadley v Sloggett,4 i.e. requesting replacement representations for publication but keeping the specimen. 8.03 perhaps mention the statutory test i.e. identity of the design is retained? 8.05-8.07 Note link to DPN 3/03. Section 9 Note link to DPNs 2/04 and 1/09. Section 10 – Note link to DPNs 1/04 and 1/16. 10.01 We are not sure of the basis for the “7 representations” limit (see also 10.23). We would not favour such a limit as it would remove one of the few substantial advantages of UK Registered Designs over Registered Community Designs. 10.06 Note link to DPNs 6/06 and 1/16. 11.01 We think this should be “Additionally or alternatively”. Where applicants use a “non-verbal” or visual disclaimer, they run the risk that the JUNE 2016

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courts may misinterpret it unless they explain it in words. 11.05 We agree that it is best if the disclaimer is clear from the representations alone, but we would not for that reason discourage the use of verbal disclaimers in addition, to increase certainty. 11.13 In view of the Trunki case,5 we think it is essential that visual disclaimers using colour should be accompanied by a verbal explanation (this might appropriately be seen as a description of the visual disclaimer rather than a verbal disclaimer in its own right). 12.10 Perhaps there should be a chapter on the Appointed Person appeal process. Again, this (and material on hearings generally) could usefully be made common with the Trade Marks Manual. It might also be mentioned that there is no fee for an appointed person appeal. Section 13 If, as we think, the UK is still using an old version of the Locarno Classification then this should be indicated. Perhaps also an Annex with the UK’s “three level” implementation of Locarno (available through the design search page).

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Revised Designs Practice Notice 1/16 The following response from Nathan Abraham, Head of Design Law and Practice, UK IPO, was sent to CIPA and ITMA on 26 May 2016 I would like to thank you, once again, for your joint submissions on the draft Designs Practice Notice (DPN) 1/16 received on 15 April 2016. The aim of this DPN is to provide a balanced approach between the needs of lone designers and SMEs, as well as the legal profession and informed users. That being so, your comments regarding the non-committal nature of our initial draft were very much valued and, where appropriate, the text has been amended accordingly. Paragraphs 11 and 12 have been amended to provide more insight into the best means for protecting and capturing shape-only. You will understand that the continuing potential for courts to interpret the scope of protection in different ways, and depending upon the facts of each individual case, means that we have stopped short of providing prescriptive / definitive advice. However, we have specifically

recommended the use of line drawings in the context of shape-only claims. Additionally, and as suggested in your response, we have incorporated a hyperlink to Designs Practice Notice 2/06 and also emphasised the benefits of seeking advice from a qualified legal professional. Links to more detailed IPO guidance on (i) the filing of representations, and (ii) the use of disclaimers and limitations, have also been incorporated into the document. On a final note, I thank you for your submissions in respect of future office practice and have shared your thoughts with my policy colleagues. We shall very much bear these in mind in the context of our ongoing objective to modernise and improve the designs framework. It is our intention to publish the revised DPN [set out below] on IPO design pages of the .gov.uk website with effect from 1 June 2016.

Professor David Musker, Chair, CIPA Designs & Copyright Committee

Designs Practice Notice (DPN) 1/16 – Guidance on use of representations when filing Registered Design applications

Notes and references 1. Green Paper on the Legal Protection of Industrial Design, Commission 1991, 11/F/5131/91-EN http://ec.europa.eu/internal_market/ indprop/docs/design/green-paperdesign_en.pdf 2. [2016] UKSC 12, [2016] WLR(D) 126 3. [2008] ECDR 15, [2008] EWCA Civ 358, [2008] FSR 28 4. [2003] EWHC 2361 (Pat) 5. PMS v Magmatic, cited above

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Introduction 1. The Supreme Court’s (‘SC’) recent judgment in PMS International Limited v Magmatic Limited1 has highlighted the extent to which protection conferred by a Registered Design can be determined by the representations used in the course of submitting an application. 2. By necessity, all Registered Design applications must include a ‘representation’ of the design intended

for protection. Apart from a requirement that such representations be ‘suitable for publication’ (Rule 9(1) of The Registered Designs Rules 2006 refers), the applicant may choose to present a design using whichever illustration ‘format’ he or she considers to be the most effective and accurate means of representing the design. Guidance on the use of different representation formats is set out in the IPO’s ‘Illustrations Dos and Don’ts’ factsheet which can be accessed at https://www.gov.uk/government/ www.cipa.org.uk

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uploads/system/uploads/attachment_ data/file/507953/DPS_002272_ Illustrations_dos_and_donts.pdf. Most representations are submitted in the form of pencil drawings, black line drawings, photographs, or computer-generated graphic images (such as those generated by Computer Assisted Design (CAD) software). 3. The degree of detail disclosed in a representation can vary depending on the type of representation format used. For example, a high-definition photograph of a three-dimensional object is likely to disclose design features which may not be discernible in a simple line drawing of the same object (a photograph is likely to disclose the visual effect of surface material, whereas a simple black-line drawing may not). That being so, applicants should be careful when selecting representations to ensure that they accurately reflect exactly what the design is intended to protect. 4. The following guidance takes into account the Supreme Court’s conclusions in PMS v Magmatic, and seeks to help designers understand the possible consequences of selecting one representation format over another.

Shape-only versus ‘minimalist’ design 5. The SC’s judgment places much emphasis upon the distinction between those designs which are intended to protect shape alone, and those which are intended to protect both shape and other features. Designers have frequently sought to protect the former on the basis that it is perceived to provide a wider scope of protection. Where an earlier design registered in respect of shape-only is used as the basis for an infringement action, the like-for-like comparison with a later design is more likely to focus on shape without consideration of any surface decoration, ornamentation, or other visual features present in the allegedly infringing design.

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6. When seeking to protect shape alone, the applicant is at liberty to choose whichever form of representation he or she deems the most suitable means of capturing the shape in question. That notwithstanding, evidence indicates that line drawings are the preferred means for representing (and therefore capturing) shape alone. This reflects the Court’s judgment in Procter & Gamble Co v Reckitt Benckiser (UK) Ltd2 where, in relation to the registration of blackline-on-white-background illustrations showing a plain undecorated ‘spray can’, it determined that (i) the registration was ‘evidently’ for shape, (ii) any like-for-like comparison with a later design should be limited to comparing the respective shapes only, and (iii) graphics and other markings on the later design were ‘irrelevant’. 7. Although line drawings have been effectively used to signify shape-only, the law does not require that applicants state the ‘type’ of protection intended when submitting a UK Registered Design application. Where an application does not contain any additional written disclaimers or limitations (see paragraphs 13 and 14 below), protection is granted on the basis of what is shown and disclosed in the supplied representations.

outline shape without ornamentation) for the purposes of capturing a design. On the one hand, and in accordance with Procter & Gamble, an application containing basic line drawings may well be interpreted as an attempt to protect shape-only. At the same time, and in light of the SC’s judgement in PMS v Magmatic, it is also possible that a line drawing may be interpreted as an attempt to register both shape and ‘minimalist’ ornamentation (i.e. where plain undecorated surfaces are positively intended to be a feature of the design).

What does this mean in practice? 10. Following the SC’s judgment, applicants should take care when selecting representations for use in UK Registered Design Applications, and it may be useful to consider how the Courts have responded to the following two different types of representation:

8. Alongside the Court’s endorsement of shape-only design protection in cases such as Procter & Gamble, the SC in PMS v Magmatic has also confirmed that absence of decoration can be a (positive) feature of a registered design. At paragraph 44 of its judgment, the Supreme Court stated that “simplicity or minimalism can notoriously be an aspect of a design, and it would be very curious if a design right registration system did not cater for it”. At paragraph 60, it goes on to confirm that “minimalism can self-evidently be an important aspect of a design just as intensive decoration can be”. 9. These conclusions highlight an ongoing tension in the use of ‘simple’ representations (i.e. those showing JUNE 2016

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In PMS v Magmatic, the Court assessed the greyscale representation shown on the left and concluded that its minimal levels of tonal differentiation were enough to result in the design being assessed as shape ‘and more’ (reference was made to the design being “not merely a specific shape, but a shape in two contrasting colours – one represented as grey and the other as black on the images”). In contrast, the Court in Procter & Gamble pointed to the linedrawing format shown on the right as being a suitable means for capturing shape-only. 11. Applicants should not interpret the SC’s judgment in PMS as discouragement against the general use of CAD representations when filing Registered Designs per se. The Registrar receives applications in a variety of representation formats including line drawings, photographs and CAD representations, and is keen to ensure that the application process remains accessible and flexible for all. However, when selecting representations, one should always bear in mind how the examples presented above were subject to different interpretations by the Court. Applicants may also benefit from seeking the advice of a qualified legal professional prior to submitting an application. 12. When using more detailed CAD-type representations, the visible presence of apparently-incidental features such as, for example, shading and light reflection, may still be taken into account by a Court or Tribunal, and may have the effect of limiting protection to shape ‘and more’. Therefore, when seeking to protect shapeonly, applicants are advised to use simple line drawings, without any colour or tonal differences, and without any visible surface features or decoration. 13. Reflecting the Court’s confirmation in PMS that overall impression can be determined by the representations used, applicants should also note that a combination of representation formats cannot be used in the context of a single application. Where a single application is 14

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received consisting of, for example, a simple outline drawing and a tonally-shaded CAD drawing (and where both representations are intended to represent the same design) an objection will be raised and the applicant given an opportunity to modify the application accordingly.

Use and effect of disclaimers and limitations 14. The UK’s digital application filing system and the equivalent (paper) application form both provide the applicant with an opportunity to disclaim or limit particular elements or aspects shown in the representation(s), thereby enabling further definition of the design intended for protection. A disclaimer or limitation can be presented in graphic form (for example, by circling those elements which are intended for protection, or by blurring-out those elements which are not), or in written form (by drafting and submitting a statement which explicitly states what is or is not intended for protection). 15. Where an applicant seeks to protect shape only, the Registrar recommends the use of written limitations/disclaimers in order to define the intended protection as explicitly and as accurately as possible. Therefore, in addition to following the advice provided at paragraph 12 above regarding the use of simple line drawings, an applicant may also wish to submit a written disclaimer or limitation such as, for example, ‘protection is sought for the shape and contours alone’. Further IPO guidance on disclaimers and limitations can be accessed at https://www.gov.uk/ government/publications/preparing-yourillustrations-to-disclaim-or-limit-a-part-ofyour-design/design-disclaimer-or-limitation.

Multiple design applications 16. For applicants seeking absolute assurance that different aspects of their design are protected, and/or for those who are uncertain as to how best represent their design (particularly where different representation types may disclose different elements), the ‘multiple application’ route can be particularly useful. It provides applicants with a simple means for submitting different representations in one action, and is more cost effective than submitting multiple separate applications. IPO guidance on filing multiple Registered Design applications can be accessed at https:// www.gov.uk/government/publications/ designs-practice-notice-206/dpn-206allowing-multiple-applications.

Summary 17. Applicants should be careful when selecting representations to ensure that they accurately reflect what the design is intended to protect. Designers should always give thought as to how their design might be exploited by others, and ask themselves whether the features disclosed in their chosen representations accurately convey what they are seeking to protect. In all cases, the protection conferred is likely to be assessed by reference to features disclosed in the representation(s) submitted, rather than by reference to the ‘type’ or ‘format’ of representation used. Prior to selecting and submitting their representations, applicants may also benefit from seeking the advice of a qualified legal professional.

Implementation 18. This guidance is effective from 1 June 2016.

Notes and references 1. PMS International Limited v Magmatic Limited [2016] UKSC 12; judgment can be accessed at https://www.supremecourt.uk/cases/docs/uksc-2014-0147-judgment.pdf. 2. Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936; judgment can be accessed at http://www.bailii.org/ew/cases/EWCA/Civ/2007/936.html.

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Playing Roulette with the UPC Judges Judges in the English, French and German local divisions are likely to have a disproportionate influence on the Unified Patent Court as it develops. By Nicholas Fox (Fellow).

he quality of the Unified Patent Court (UPC) judiciary will be a key factor in whether or not the court is a success. Article 15(1) of the UPC Agreement sets a high standard proclaiming that judges of the UPC: “shall ensure the highest competence and shall have proven experience in the field of patent litigation”. Although at first sight this would appear to ensure that the UPC is fully staffed with experienced experts in patent law, the provision is watered down somewhat by Article 2(3) of the Statute of the UPC. This provides that “proven experience in the field of patent litigation” may be acquired by training provided through the UPC training frame work. The issue facing the UPC is that it will be a multi-national court and in many of the participating member states there is little patent litigation. According to the Harhoff Report on the Economic Cost Benefit Analysis of a Unified and Integrated European Patent Litigation System published in 2009 only the UK, Germany, France, the Netherlands, Italy and Sweden had court systems which dealt with more than 30 patent cases a year. Thus, although there are some notable patent judges in countries including for example Denmark, Finland and Austria, in general the opportunity for practitioners and the judiciary outside of the UK, Germany, France, the Netherlands, Italy and Sweden to build up experience of patent litigation has been very limited. Does this mean that there is a realistic prospect of UPC decisions being taken by non-expert judges? The answer is almost certainly not. In 2013, 354 individuals who responded to the UPC Advisory Panel’s request for expressions of interest were identified as being eligible to be legal judges. The Advisory Panel considered 171 of those had sufficient experience of

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patent litigation to be considered to be eligible without further training. The qualifications of 124 of the applicants were considered by the UPC Advisory panel to be “outstanding”. That alone would suggest that the quality of the judiciary should be high. However, the structure of the UPC further increases the influence the judiciary from experienced courts will have on jurisprudence of the new court. The UPC will have exclusive jurisdiction over European Patents with Unitary Effect which will begin to be granted once it opens, most likely in May 2017. The UPC will also have shared jurisdiction (along with the national courts) over existing European patents granted by the European Patent Office (EPO). Initially, it will be the UPC’s jurisdiction over existing European patents which will be of most importance. Putting aside the possibility of suing an defendant in the local or regional division of the member state where they are domiciled or established or in the central division (if a defendant is not domiciled or established in any participating member state), infringement proceedings in the UPC have to be initiated in the local or regional divisions where a patent is infringed or in the central division if patents are infringed in a country which does not establish its own local or regional division (e.g. Luxembourg or Malta). However, a patent has to be in existence in order for it to be infringed. Typically, European patents are only maintained after grant in a limited number of member states. According to statistics from the EPO, roughly 50% of European patents are maintained in the UK, Germany and France. A further 40% of patents are maintained in those countries along with one or two more member states (typically chosen from Italy, the Netherlands and Spain – the latter of which is not participating in the UPC). The final 10% are patents which are JUNE 2016

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maintained more broadly. Often these broadly maintained patents are highly valuable pharmaceutical patents, many of which are likely to be opted-out from the jurisdiction of the UPC in order to protect such patents from the threat of central attack. Assuming that half of the most broadly maintained European patents are opted-out and patent proprietors bring actions randomly in the local divisions eligible to hear infringement cases where infringement occurs, based on the above figures, 75% of infringement cases of European patents will be brought in the English, German or French local divisions of the UPC. A further 20% of cases will be brought in the Italian or Dutch local divisions and only 5% of cases brought in any of the other local or regional divisions. Or put another way, based on the above assumptions, 95% of cases of infringement of existing European patents brought in the local and regional divisions of the UPC will have to be initiated in the UK, Germany, France, the Netherlands or Italy (i.e. the local divisions which will be able to draw on an existing history of patent litigation and which will sit with two local judges) since 95% of existing European patents which are not opted-out from the jurisdiction of the UPC will not be in force in any participating member states outside of those five jurisdictions. The busyness of the English, French and German local divisions, and to a lesser extent the Dutch and Italian divisions, also has implications for the make-up of the other local divisions. Outside of the UK, Germany, France, the Netherlands and Italy, local divisions will sit in panels of three with one local judge and two other judges drawn from the pool of other UPC judges. The exact numbers of UPC judges is not known at present. However, if it is assumed that the numbers of judges appointed in each jurisdiction will be proportional to the minimum number of judges required to staff the UPC, if the two non-local judges are picked at random from the pool, there is at least a 75% chance that one of the non-local judges will come from the UK, Germany, France, the Netherlands or Italy. This is because as the local panels in the UK, Germany, France, the Netherlands and Italy must consist of two local judges more judges from those countries will be available. The same logic applies to the composition of panels sitting in the central division which will sit in multi-national panels consisting of one technical judge and two legal judges. Since at least half of the pool of legal judges will be English, French, German, Italian, or Dutch, in 75% of cases at least one legal judge of one of those nationalities will be on the panel. In practice probably the chances of at least one judge from UK, Germany, France, the Netherlands or Italy serving on a local panel outside of those countries or in the central division will actually be higher than that. At present only Germany has announced that it will establish more than one local division; it will establish four 16

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UNIFIED PATENT COURT

Only Germany has announced that it will establish more than one local division; it will establish four and hence there will need to be at least eight German judges to staff those divisions.

and hence there will need to be at least eight German judges to staff those divisions. Although the numbers of cases of patent infringement dealt with by the German courts is significantly higher than in say for example the UK and France, there is no reason to suppose that, in situations where a patent proprietor has a choice, four times as many UPC cases will be brought in the German divisions than say in the UK or France. Unlike the current system where patent litigation in Germany may be particularly attractive because of the German practice of trying infringement and validity separately, the procedures within the UPC will be the same regardless of which division is used. The only notable difference will be the languages in which proceedings may be brought. It is therefore likely that multiple panels may well sit within the English and French divisions further increasing the numbers of English and French judges available in the pool. Furthermore, all the above assumes that judges are allocated to panels and cases are allocated to divisions at random. It is of course open to the judicial authorities to www.cipa.org.uk

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weight matters in favour of ensuring that all panels include at least one highly experienced patents judge. Equally importantly, if infringement occurs on an EUwide basis, patent proprietors will have a choice of where to initiate proceedings. Although it is possible some proprietors might want to take their chances in local division which might have a less experienced panel (even though that option is only likely to be available in a minority of cases and the odds are at least 3:1 against that any such panel will be so constituted), it is far more likely that they will opt for the local divisions drawing on two experienced local judges. The spread of work across the local and regional divisions will change as the EPO starts to grant European Patents with Unitary Effect with force across all participating member states. However, such changes will occur gradually. The costs for obtaining and maintaining a European Patent with Unitary Effect will be significantly higher than merely maintaining patent protection in the UK, Germany and France alone due to the need, at least during the transitional period, to prepare a full translation of the patent on grant and the fact that the renewal fees for a European Patent with Unitary Effect have been pitched as the level of renewal fees for maintaining patent protection in four countries.

UNIFIED PATENT COURT

It is therefore highly likely that a significant proportion of patent proprietors may well still choose maintaining European patents in the UK, Germany and France alone which will limit proprietors to enforcement in the English, French or German local divisions. Assuming that the 50% of patent proprietors who choose to maintain protection only in the UK, Germany and France continue to do so and everyone else opts for the European Patent with Unitary Effect and assuming on average each European patent takes five years to grant and is maintained for its full life time, the steady state where half of the time patent proprietors would have the option to enforce in local and regional divisions outside of UK, Germany and France would only be reached in around 15 years’ time. However, by then much of the procedural jurisprudence of the UPC will have been settled and with 15 years of experience of the UPC there should be no distinction between the experience of any of the judicial panels. In the meantime the judges in the English, French and German local divisions are likely to have a disproportionate influence on the UPC as it develops. Nicholas Fox (Fellow), Simmons & Simmons LLP

U C JJudicial UPC udi udic di iall R Re Recruitment cruit ruit rui itment entt en The e Un Unified nif Patent P tC Court, ou a new w su supranati supranat up tionall co court ou spe pecialised lise ed in pa pat atent lit litigation tiga n, based sed d on o the e Unified fie ed Paten P nt Court ourrt Agreemen Ag Agreement nt signe si signed ig gned by 25 5M Mem Member ember States tes of tthe he European Europea opean p an Union U will h have ave a wide e and an nd exclusive e e comp co competence ompetence e in respect res of inffr in fringem ringem ment ent and and validity dity ty y of Eu E Eur European European paten patents patent tss and d Europ Europe Europea European patents tents ents nts with wi wit unit unita tary ary ry effec effect. effect. It will w con nsist ist of a Court urt of First Fi Insta ance, ce, a Court Co of Appeal Appe Appea and a Registry. Regis Registry The he Cour Court o of First st Instance nstan willl compris comp se a c tral centra al division d sion sio on with ith h seatt in n Paris P and a sections ec ecti ctio s in n London ndo don and Munich ch ha as we wel well ll as a reg regional egi al divisions egio d on ns a ns and lo loc ocal divi div divisions ivis ns lo locate ed in the C Conttracting ng Me Membe er States. ates The T C Court rt of Appe A peal will ill be loca ated in Lux Luxemb bourg. g Th he e start o of operations rations ations iis planned nned ned for e early 2017, 2017, and an it is expecte expected xpecte that the the Uni Unifi Unif fied Patent atent tent Co Cou Court quickly uickly ckly be bec becomess a lea eading ding pa patent court ourt at international in national tional level le with h rapidl rapi rapidly growing owing wing cas c caseload d. The re T recruitme ecr ment ent off le legally eg y qualified q fie ed a and of o technically chn nic y qualified q fie ed jjudge judges es of the he Unifie U fied ed Patent ate ent Cou Court rt (Court ourrt of o Firs Firrst Instance sta an a d Cou and Courtt of Appeal) ea has h been b launched la nc wit with th the publication p public cation on of the vacancy v nc n notices notice ces in English, E gl , French, F ch and an Germa German. G an. The Th he e dead dline line for for applications cations ations is i 4 Ju uly ly 201 2016. 2016 6. The Th e fin finali allization ation off the appointm appointment p poin t procedure p oced re e is de dependent ependent pende t on the t e ent entry y into int force f rce o of the th he Protocol rotocol tocol on Pro Prov rov visional siona A Applic ication ca n a and nd sub ubsequently bsequently en ntly the e Agreement A eem me on n the Unified Un nif Patent Pa P nt C Court. o

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WEBSIT EBS BS TE E See e full d detaiils i at https://w htttps www.unified-pat unified t tent-court.org/n cou urt. /news/upc-jud ws/u upc dicial-recruitme di -rec cru ent.

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Privilege for US Patent Agents Chopped liver no more: Federal Circuit identifies a US patent agent privilege. By the Finnegan team.

n the United States, the attorney-client privilege is one of the most guarded evidentiary privileges. It allows clients to confidentially share information with their counsel to obtain legal advice without fear that those communications will be discovered in subsequent litigation. Patent applicants expect that same level of freedom when consulting with their prosecuting attorneys to obtain strong patent protection. Until recently, however, US district courts were split on whether communications between US patent agents – non-lawyer professionals registered to prosecute patents before the US Patent and Trademark Office (USPTO) – and their clients were privileged and immune from discovery.1 This disparate treatment for rigorously qualified patent agents left some to wonder: what are we, chopped liver?

New US patent agent-client privilege In March, the Federal Circuit responded with a resounding “No!” when it recognized an independent US patent agentclient privilege in In re Queen’s University at Kingston.2 There, Queen’s University asserted that Samsung Electronics Co., Ltd. infringed three of its patents.3 During discovery, Queen’s University asserted privilege over and withheld communications with its US patent agents.4 Samsung challenged Queen’s University’s actions and moved the district court to compel the disclosure of those communications.5 The district court for the Eastern District of Texas granted that motion.6 The district court reasoned that because the US patent agents were not attorneys, the communications were not protected by the attorney-client privilege and that no separate patent agent privilege existed.7 Queen’s University petitioned the Federal Circuit for a writ of mandamus directing the district court to withdraw its order compelling the production of the patent agent-client communications.8 18

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The Federal Circuit granted Queen’s University’s petition and held that several factors outweighed the presumption against the recognition of new privileges. The Court reasoned that the privilege should be recognized in part because: 1. patent agents hold unique roles whose activities the Supreme Court has construed as constituting the practice of law; 2. Congress has authorized that practice; and 3. current realities of patent litigation support a patent agent– client privilege.9 Notably, that privilege, however, extends only to communications reasonably necessary and incident to prosecuting patents before the USPTO.10 For companies who choose to engage US patent agents instead of patent attorneys to prosecute their US patents, this decision should offer comfort that their confidential communications will not be subject to discovery should any downstream patent litigation occur in US courts. Yet patent applicants must remain cognizant of limitations on that privilege. In particular, the Federal Circuit circumscribed the scope of the patent agent-client privilege to include only communications that are in furtherance of Congressionally mandated tasks: “which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding[s] before the Office involving a patent application or patent in which the practitioner is authorized to participate.”11 Thus, to the extent that a client’s correspondence with its patent agents veers away from those areas, both the www.cipa.org.uk

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US UPDATE

client and patent agent should take care not to reveal any information the client may not want to be discovered in a later litigation.

Any import for foreign IP practitioners? It is rational to argue that the Court’s reasoning in In re Queen’s University also provides a basis to protect foreign practitioner-client communications that have historically been subject to discovery. For example, the Federal Circuit relied on the “unique roles of patent agents” and Supreme Court precedent indicating that “patent agents are not simply engaging in law-like activity, they are engaging in the practice of law itself.”12 IP stakeholders have similarly recognized that non-attorney, IP practitioners provide legal advice and have practices akin to attorneys. 13 In particular, WIPO acknowledged that patent law “is a unique field where legal understanding and technical/scientific understanding go hand in hand.”14 Because not all attorneys have the requisite technology background, a separate profession for patent agents or IP advisers has arisen.15 Those practitioners “give advice and [] assist inventors and applicants to obtain and maintain patents.”16 They may also assist a patentee “to maintain and enforce his right.” Such tasks appear to be within the ambit of the practice of law that the Supreme Court specifically recognized and the Federal Circuit used as a basis to support a separate patent agent-client privilege.17 In addition, the Federal Circuit also relied on Congress’s authorization of patent agents to practise before the USPTO. By analogy, European and other IP professionals are authorized to practise either before the EPO or within their own countries. Such professionals are often required to submit to extensive examinations to become registered

PRIVILEGE

European patent attorneys or patent agents in their native countries.18 And many countries have formal registration processes, and registered practitioners must comply with ethical obligations. Such requirements are comparable to those that the Federal Circuit cited in support of its patent agent–client privilege.19 Perhaps the most compelling reason to recognize a foreign practitioner-client privilege based on In re Queen’s University is the Federal Circuit’s recognition that: “[a] client has a reasonable expectation that all communications relating to ‘obtaining legal advice on patentability and legal services in preparing a patent application’ will be kept privileged.” 20 In the increasingly global landscape of IP protection, stakeholders have consistently recognized the need to be able to have frank discussions with their IP professionals to secure strong IP protection and effectively enforce those IP rights.21 To allow a US patent agent-client privilege but not a similar foreign practitioner-client privilege undermines a global client’s ability to freely share information to secure strong global IP rights from the very practitioners who are best suited to assist in obtaining those rights. Thus, US district courts could find a foreign practitionerclient privilege based on the same policy considerations undergirding the Federal Circuit’s analysis in In re Queen’s University. Composed on this occasion by Anthony C. Tridico, Ph.D. and Erin M. Sommers, Ph.D. For more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony.tridico@finnegan.com

Notes and references 1. In re Queen’s Univ. at Kingston, No. 2015145, 2016 WL 860311, at *3 n.1 (Fed. Cir. Mar. 7, 2016). 2. Id. at *13. 3. Id. at *1. 4. Id. at *1. 5. Id. 6. Id. 7. Id. 8. Id. 9. Id. at *6. 10. Id. at *12. 11. In re Queen’s Univ., 2016 WL 860311 at *11-12. 12. Id. at *6-7.

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13. World Intellectual Property Organization Standing Committee on the Law of Patents, The Client-Attorney Privilege, SCP/13/4, ¶ 29 (Feb. 25, 2009), ¶¶ 46-53. 14. Id. ¶ 47. 15. Id. 16. Id. 17. Compare id., with In re Queen’s Univ., 2016 WL 860311, at *6 – quoting Sperry v State of Fla. ex rel. Florida Bar, 373 U.S. 379, 383 (1963). 18. Regulation on the European qualifying examination for professional representatives – Official Journal EPO 2/2014 – http://www. epo.org/law-practice/legal-texts/officialjournal/2014/etc/se2/2014-se2.pdf.

19. In re Queen’s Univ., 2016 WL 860311, at *89, *11. 20. Id. at *9. 21. WIPO, supra note 13, ¶ 5; Summary of Roundtable and Written Comments: Domestic and International Issues Related to Privileged Communications Between Patent Practitioners and Their Clients, USPTO, http://www.uspto.gov/sites/ default/files/documents/Summary%20 of%20Privileged%20Communication%20 Roundtable.pdf (last visited Apr. 26, 2016) at 5.

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Patent litigation AIA trial outcomes at the USPTO Patent Trial and Appeal Board have changed the landscape of patent litigation. By the Finnegan team.

ince the passage of the America Invents Act (AIA) over three years ago, post-grant proceedings at the US Patent and Trademark Office (USPTO) have changed the landscape of patent litigation. These proceedings offer an avenue for petitioners, often alleged patent infringers, to contest the patentability of patents at the USPTO in a process designed to be faster and less expensive than doing so in a comparable district court litigation. Petitioners can challenge all US patents before the USPTO in one (or more) post-grant proceedings: inter partes review (IPR) is available for all pre-AIA patents and all post-AIA1 patents following the period for postgrant review (PGR); covered business method review (CBMR) is available for patents claiming financial products or services that have been asserted in litigation; and PGR is available for all postAIA patents within nine months of issuance. IPR proceedings are by far the most common filings, with nearly ten times more IPR petitions being filed than CBMR petitions as of 31 March 2016.2 To date, only 22 PGR petitions have been filed, with none reaching a final written decision according to the USPTO.3 The relatively low number of PGR petitions is largely influenced by the relatively low number of post-AIA patents granted to date. All proceedings start with the filing of a petition and progress through two general phases, a pre-institution phase and a postinstitution phase. The USPTO’s Patent Trial and Appeal Board (PTAB) must decide if the petition raises sufficient grounds to institute a full review in view of any arguments submitted by the patent owner in a preliminary response. To warrant institution in IPRs, a petitioner must demonstrate that there is a reasonable likelihood that at least one challenged claim is unpatentable.4 To warrant institution in CBMRs and PGRs, a petitioner must meet the (somewhat higher) standard that it is more likely than not that at least one challenged claim is unpatentable.5 While the rate of institution fluctuates by technology, the percentage of institution ranges between 55% and 75% on a per-claim basis.6 If the PTAB determines the petition warrants

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institution, it issues a written institution decision and proceeds with trial. At the conclusion of trial, the PTAB issues a written final written decision. To date, and as discussed in more detail below, the IPR and CBMR proceedings have strongly favored petitioners at the expense of patent owners. While case outcomes vary by technology, on average, less than 20% of the claims that are instituted survive a full trial.

IPR final written decisions

In the first three and a half years since the AIA went into effect, post-grant proceedings have been considerably more favorable to petitioners than patent owners. In the 747 IPR final written decisions issued by the PTAB by 1 April 2016, the Board cancelled 7,987 (76.32%) of the instituted claims and maintained just 2,108 (20.14%) of the instituted claims.7 Through the same period, patent owners conceded 370 (3.54%) of the instituted claims through motions to amend or disclaimers. This is a significant number of cancelled patent claims in a relatively short period. www.cipa.org.uk

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PATENT LITIGATION

Unlike IPRs, which allow a petitioner to present only patents and printed publications as prior art references, CBMRs (like PGRs) provide additional avenues for challenging patents, such as challenging subject-matter eligibility9 or written description10. And patent owners have generally fared substantially worse in CBMRs than IPRs. In the 97 CBMR final written decisions issued by the PTAB up to 1 April 2016, 1,622 (93.65%) of the instituted claims were cancelled and just 59 (3.41%) of the instituted claims were maintained. Through the same period, patent owners conceded 51 (2.94%) of the instituted claims through motions to amend or disclaimers. Less than 5% of the instituted claims survive a full CBMR.

On a per-case basis, the majority of IPR final written decisions result in all instituted claims being cancelled. Considering all IPR final written decisions issued by the PTAB up to 1 April 2016, 541 (72.42%) of the decisions resulted in all instituted claims, or substitute claims proposed in a motion to amend, cancelled. Conversely, just 113 (15.13%) IPR final written decisions resulted in all of the claims maintained. A mixed outcome, where at least one instituted claim was cancelled and one instituted claim maintained, occurred in just 93 (12.45%) IPR final written decisions. Based purely on statistics, there is a high likelihood that if claims are instituted, they will be cancelled. This reality has led many patent owners to focus more efforts early in the proceeding when preparing preliminary responses to at least reduce the number of claims or grounds that the PTAB institutes. In line with this strategy, new PTAB rules went into effect on 2 May 20168 and now permit patent owners to submit new testimonial evidence from technical and industry experts, before the PTAB decides whether to institute trial.

CBMR final written decisions

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On a per-case basis, a significant majority of CBMR final written decisions result in all instituted claims being cancelled. Considering all CBMR final written decisions issued by the PTAB up to 1 April 2016, 86 (88.66%) of the decisions resulted in all instituted, or substitute claims proposed in a motion to amend, cancelled. Just one (1.03%) CBMR final written decision resulted in all claims maintained. A mixed outcome occurred in only ten (10.31%) of the CBMR final written decisions. While CBMR is reserved only for subset of eligible patents (e.g., a patent that claims a method or apparatus for performing a financial product or service), these claims are significantly at risk. Indeed, most of the CBMR petitions raise patent eligible subject-matter grounds in view of the US Supreme Court’s recent decisions in Alice and Mayo that many practitioners believe have a devastating effect on business method patents.

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Combined IPR and CBMR statistics

Combining the outcomes of both IPR and CBMR final written decisions issued by the PTAB up to 1 April 2016, the Board cancelled 9,613 (78.79%) of the instituted claims and maintained just 2,167 (17.76%) of the instituted claims. Patent owners conceded 421 (3.45%) of the instituted claims through motions to amend or disclaimers. In total, about 80% of the instituted claims were cancelled. On a per-case basis, for all combined IPR and CBMR final written decisions issued by 1 April 2016, 627 (74.29%) of the decisions resulted in all instituted claims cancelled, 114 (13.51%) of the decisions resulted in all instituted claims maintained, and 103 (12.20%) of the decisions resulted in a mixed outcome.

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IPR motions to amend

In all post-grant proceedings, patent owners are entitled to propose substitute (i.e., amended) claims either by conceding the unpatentability of the corresponding instituted claims outright along with the proposed substitute claims, or by making the Board’s consideration of the substitute claims contingent on the instituted claims first being held unpatentable. To date, patent owners have struggled to obtain substitute claims for patents reviewed by the PTAB. By 1 April 2016, the PTAB has issued only 26 (4.76%) of 546 proposed substitute claims raised in motions to amend. In the last year, from 1 May 2015, to 1 April 2016, the PTAB granted just four substitute claims.11 Against this backdrop, it is perhaps not surprising that the number of patent owners pursuing substitute claims appears to be decreasing over time. This is likely because patent owners have struggled to address the PTAB’s requirements and sufficiently demonstrate patentability.12 Before the PTAB, patent owners bear the burden to show that the proposed substitute claims are patentable and must do so over a variety of art (both in the record and presented during original prosecution)13 within relatively strict page limits (even after the May 2015 rule change increasing the maximum length of a motion to amend from 15 pages to 25 pages).14 For instance, patent owners must demonstrate patentability for substitute claims over all of the prior art of record in the IPR or CBMR, not just the prior art raised against the original claims, and over prior art not of record in the IPR or CBMR but known to the patent owner, e.g., prior art made of record during prior examination.15 Amendment practise may be changing before the Board to make the practise more favourable for patent owners. For example, the Board recently approved the practise of grouping prior art references together in a motion to amend according to the references’ particular teachings, rather than requiring the patentee to explain each individual reference in detail.16 In general, however, it seems that practitioners are increasingly choosing to forgo amending claims during IPRs or CBMRs www.cipa.org.uk

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in favour of other strategies. For example, and regardless of PTAB actions or trends regarding motions to amend, patent owners are well served to maintain pending continuing patent applications in the US to provide opportunities to seek claims of varying scope, to adjust to patentability challenges raised in post-grant proceedings, and develop claim strategies and portfolios in view of (likely) challenges post grant.

PATENT LITIGATION

transportation and e-commerce (141, 17% of total). Taken together, electrical-based technologies represent 638 (75.77%) of all post-grant proceedings. The smallest Technology Centers include design patents (five decisions, less than 1% of total) and biotechnology and organic chemistry (51, 6% of total).

Technology Center Statistics

IPR and CBMR petitions are sorted among the various Technology Centers at the USPTO, including: 1600 (biotech and organic chemistry); 1700 (chemical and materials engineering); 2100 (computer architecture and software); 2400 (networking, multiplexing, cable, and security); 2600 (communications); 2800 (semiconductors/memory, circuits/ measuring & testing, optics/photocopying, printing/measuring & testing); 2900 (designs); 3600 (transportation, construction, electronic commerce, agriculture, national security and license & review); and 3700 (mechanical engineering, manufacturing and medical devices/processes).17 By 1 April 2016, the top three Technology Centers by number of final written decisions were, respectively, electrical systems (149 decisions, 18% of total), communications (146 decisions, 17% of total), and Volume 45, number 6

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Although the PTAB has generally cancelled instituted claims about 75% of the time, the PTAB has not cancelled claims at the same rate across all technologies. Survival rates of claims in certain Technology Centers deviate substantially from the mean.18 For example, instituted claims in Technology Center 1600, which covers patents in the fields of biotechnology and organic chemistry (including pharmaceuticals), have had the highest instituted claim survival rate at 44.46%. This is approximately 2.5 times higher than the average survival rate for all technologies combined and perhaps due to the unpredictability of this subject-matter. At the other end of the spectrum, however, no instituted claim has survived in Technology Center 2900, which covers design patents. Somewhat interestingly, these Technology Centers also have the smallest number of final written decisions. Up to 1 April 2016, patents in the design patent Technology Center have only received final written decisions in five IPRs, while there have been 51 IPR final written decisions in biotechnology and organic chemistry. Conversely, the instituted claim survival rates for the top three Technology Centers by the number of issued final written decisions, 2800 (Electrical), 2600 (Communications), and 3600 (Transportation & E-Commerce), each fall within 3% of the average instituted claim survival rate. The survival rates for the remaining Technology Centers fall within 7% of the overall survival rate. JUNE 2016

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Conclusion IPR and CBMR proceedings before the PTAB have thus far generally favored petitioners over patent owners. On average, less than 20% of the instituted claims survive PTAB review through final written decision. These statistics will change over time due to the ever-expanding number of PTAB cases, the likelihood that the most questionable patents were challenged first, adjustments in prosecution strategies from applicants, increasing numbers of decisions from district courts and the Federal Circuit, and continued changes in the PTAB’s rules and processes. For example, both the “broadest reasonable interpretation” claim construction standard used by the PTAB for post-grant proceedings and the inability of the Federal Circuit to review the institution decisions are presently under review by the Supreme Court.19 Looking forward, despite the fact that the PTAB post-grant

Notes and references 1. Pre-AIA patents are patents issued from applications with effective filing dates before 16 March 2013; post-AIA patents are patents issued from applications with effective filing dates on or after 16 March 2013. 2. “Patent Trial and Appeal Board Statistics,” dated 31 March 2016, US Patent and Trademark Office, available at: www.uspto.gov/sites/default/files/ documents/2016-3-31%20PTAB.pdf, at 2. 3. Id. at 12. 4. 35 U.S.C.§ 314(a). 5. 35 U.S.C.§ 324(a). 6. Id. at 7. 7. Unless otherwise noted, all statistics cited herein were compiled by Daniel F. Klodowski and David C. Seastrunk of Finnegan, Henderson, Farabow, Garrett & Dunner. See Section VII for more information regarding the methodology used for calculating these statistics. Additional statistics are available at www.aiablog.com. 8. 81 Fed. Reg. 18750, 18766 (amending 37 C.F.R. §§ 42.107, 42.207. 9. 35 U.S.C. § 101. 10. 35 U.S.C. § 112. 11. See “Patent Owners Proposing Fewer Substitute Claims During IPR Proceedings,” Daniel F. Klodowski, AIA Blog, May 19, 2015, available at: www.aiablog.com/ ptab-stats/patent-owners-proposing-fewersubstitute-claims-during-ipr-proceedings/. 12. Id. 13. See Nike v Adidas, No. 2014-1719 (Fed. Cir. Feb. 11, 2016).

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PATENT LITIGATION

proceedings have been relatively decimating for patent owners, several factors may suggest that the pendulum will swing in the other direction. For example, the new PTAB rules permit patent owners to submit more evidence pre-institution, which may persuade the PTAB to deny institution for a larger number of claims, the PTAB has started providing additional resources and guidance to patent owners to help make successful claim amendments in IPRs and CBMRs,20 and the Supreme Court may adopt a more patentee-friendly standard (that is currently applicable in the district courts). Stay tuned as we following this developing area of US patent law.21 Composed on this occasion by Timothy P. McAnulty and Daniel F. Klodowski. For more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony.tridico@finnegan.com

14. “USPTO Updates PTAB Rules to Adjust Page Limits and Reflect Current Practice,” Joshua L. Goldberg and Cory C. Bell, Finnegan IP Updates, 20 May 2015, available at: www.finnegan.com/ipupdates/ pubdetail.aspx?pub=28eb5eb7-dff3-4912944d-4c1fb423eb57. 15. See Nike, No. 2014-1719, at *5-6; Idle Free Sys., Inc. v Bergstrom, Inc., No. IPR201200027, Paper 26 at 7 (P.T.A.B. 2013). 16.See “PTAB Approves Grouping of Representative References in Granting Motion to Amend,” Neelaabh Shankar, AIA Blog, 29 April 2016, available at: www.aiablog.com/post-grant-proceedings/ ptab-approves-grouping-of-representativereferences-in-granting-motion-to-amend/. 17. “Patent Technology Centers Management,” US Patent and Trademark Office, available at: www.uspto.gov/patent/contact-patents/ patent-technology-centers-management. 18. These numbers represent claim survival rates in both IPR and CBM proceedings. The minor discrepancy between the claim survival rate in the IPR/CBM chart and the Technology Center chart is due to the incomplete labeling of cases as belonging to certain Technology Centers on the USPTO’s PRPS system. 19. See Cuozzo Speed Techs., LLC v Lee, Case No. 15-446. 20. See USPTO AIA Blog, accessible at: www.uspto.gov/blog/aia/entry/ uspto_ptab_message_how_to. 21. The statistics referenced and relied on in this article provide several perspectives on post-grant practice at the USPTO, and additional statistics are available at Finnegan’s AIA Blog at www.aiablog.com. Various other PTAB metrics collected and

generated by Finnegan are reserved for the use of Finnegan and its clients. The information in this article was compiled from all PTAB final written decisions on the merits published on the USPTO’s Patent Review Processing System as of 1 April 2016. Each discrete final written decision is counted as a separate case, even where multiple decisions address the same patent. On the other hand, when multiple cases are joined into a single final written decision, such cases are considered to be a single decision. These statistics do not include settlements, requests for adverse judgment, motions to terminate, still-pending cases, requests for rehearing, or appellate outcomes. The statistics reflect case outcomes on both a per-claim and per-case basis, and incorporate a number of decisions and assumptions designed to eliminate redundancy while providing the most impartial, accurate, and useful information possible. While care has been taken to ensure the accuracy of this data, these numbers should be treated as an estimate. This information is a purely public resource of general information that is intended, but not guaranteed, to be correct and complete. It is not intended to be a source of solicitation or legal advice. This information is not intended to create, and receipt of it does not constitute, an attorney-client relationship. The laws of different jurisdictions may be implicated, and facts and circumstances can vary widely. Therefore, the reader should not rely or act upon any information in this article, but should instead seek legal counsel for individualized legal advice.

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Inter partes review Cuozzo v Lee: seeking answers in the tea leaves. By the Finnegan team.

n 25 April 2016, the Supreme Court of the United States, for the first time, turned its attention to the process of inter partes review (IPR), which was introduced in the US as part of the America Invents Act (AIA). In the much-anticipated oral arguments1 for Cuozzo v Lee, the Court considered two questions: 1. Whether the Patent Trial and Appeal Board (PTAB) properly applies the broadest reasonable standard for claim construction for IPRs? 2. Whether the PTAB’s decision to institute or deny an IPR petition may be reviewed by the Federal Circuit? Though the Court’s eventual decision remains difficult to predict, the Court’s questioning provides some insight into the competing legal and policy questions that it will likely consider in this case.

Background Cuozzo began as the first-filed IPR challenging US Patent No. 6,778,074 (the ’074 patent)2 owned by Cuozzo Speed Technologies LLC.3 Garmin International Inc. and Garmin USA, Inc. filed an IPR petition challenging certain claims of the ’074 patent.4 The PTAB instituted review based on two obviousness grounds,5 in view of the grounds Garmin proposed but not in the same manner.6 The IPR proceeded through oral argument and, in its final decision, the PTAB determined that the broadest reasonable interpretation standard was applicable for construing claims in an IPR consistent with its long-standing practice, interpreted the claims, and determined that the they were unpatentable as obvious.7 Cuozzo appealed the PTAB’s decision to the Federal Circuit. While on appeal, Cuozzo and Garmin settled, and Garmin, bound by the settlement agreement, did not participate in the appeal.8 By statute, the Director of the United States Patent and Trademark Office (USPTO) is entitled to Volume 45, number 6

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intervene in IPR appeals,9 and did so to defend the PTAB’s decision, including the PTAB’s use of the BRI standard in construing claim terms.10 On appeal, Cuozzo argued that the PTAB erred in instituting review because the PTAB instituted grounds against all of the claims, even though Garmin proposed those specific grounds against only some of the claims. Further, Cuozzo argued, the broadest reasonable interpretation standard was not appropriate for post-grant proceedings brought under the AIA.11 At the Federal Circuit, the majority, over a vigorous dissent by Judge Newman,12 determined that it could not review the PTAB’s decisions to institute IPR based on the statutory language of the AIA.13 And the majority deferred to the PTAB’s decision to continue historic USPTO practice and apply the broadest reasonable interpretation standard.14 We presented a full analysis of the Federal Circuit’s decision and the rationale of the majority and Judge Newman’s dissent in the March 2015 edition.15 Since that time, Cuozzo requested the Federal Circuit review the panel decision en banc review,16 which the Federal Circuit declined, and Cuozzo petitioned the Supreme Court for a writ of certiorari.17 The Supreme Court granted certiorari on 15 January 2016, and heard oral arguments on 25 April 2016. The Supreme Court is expected to issue its decision by 27 June 2016, the close of its current term.

The oral arguments Cuozzo Opening the arguments, Cuozzo argued that PTAB should not apply the BRI standard for IPRs and should, instead, apply the Phillips standard18 that the district courts apply during infringement and invalidity litigation. Under Phillips, courts interpret claims based on the “ordinary meaning of claim language as understood by a person of skill in the art.”19 Overall, Cuozzo advanced four reasons why this standard, and not the (generally broader) BRI standard,20 should apply to IPRs. First, Cuozzo emphasized that the BRI standard JUNE 2016

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is inappropriate unless there is a “broad ability” to amend claims.21 In support, Cuozzo noted that although patent owners can seek to amend challenged claims, the amendment procedure is onerous and the PTAB has granted very few motions to amend. Second, Cuozzo pointed to Congressional intent that IPR should serve to “adjudicate property rights.”22 Thus, Cuozzo argued, there is no need to evaluate the hypothetical breadth of claims; rather, the claims’ actual meaning should be addressed as is the case in district courts when determining infringement.23 Third, Cuozzo noted that the divide between the district court and PTAB standards creates “anomalies” that result in different outcomes regarding claims that are at issue in parallel litigation and post-grant proceedings.24 Fourth, Cuozzo argued that the USPTO advanced no reason why the Phillips standard would not be appropriate for IPR, and had not adequately defended BRI.25 The USUSPTO has applied the BRI standard during prosecution as well as reexamination, reissue, and interference practice for over 150 years, justifying the departure from district court practice in large part because applicants and patent owners can freely amend the claims to clarify their scope and avoid unnecessary ambiguities during subsequent litigation when amendment is no longer possible. Early in Cuozzo’s arguments, Justice Sotomayor raised a question regarding amendments in IPRs under the AIA.26 Referring to the potential (or lack thereof) for motions to amend, Justice Sotomayor interjected, emphasizing that “basically Congress here said you can amend once. I’m not sure that supports your point [that the BRI is not appropriate].”27

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Cuozzo responded that there was a significant difference between the ability to amend as a right (seemingly like applicants can do during prosecution) and the ability to seek a motion to amend, particularly when the PTAB has granted just four motions to amend among hundreds of attempts.28 Justice Alito also queried why multiple attempts to amend, instead of just one as Congress explicitly permits by statute in IPRs, might be needed to warrant the USPTO’s use of the BRI.29 Cuozzo answered that the interpretation of claim terms in an IPR is not fixed until the PTAB issues its final written decision, after the patent owner’s opportunity to amend has passed,30 arguing that this adds ambiguity and difficulty for patent owners. Following these specific questions, however, the Court’s focus quickly shifted from the amendment process onto other areas. Justice Ginsburg took a different approach and questioned whether the change Cuozzo sought would “determine who’s going to win or lose this case.”31 Justices Kennedy and Breyer, in contrast, seemed concerned that changing the claim construction standard would necessarily change the results. Both Justice Kennedy and Justice Breyer seemed to view post-grant proceedings as a do-over for a USPTO that now recognized it had issued an invalid patent. Justice Kennedy asked a series of questions based on the premise that “if the patent is invalid under its broadest, reasonable interpretation, does not… that mean the [US]PTO should never have issued the patent in the first place?”32 This suggests that the BRI standard might be appropriate for the USPTO’s reconsideration of patents that it should not have issued originally. Similarly, Justice Breyer noted that, “[i]f at the

US UPDATE CONTRIBUTORS For more information on Finnegan or the authors of these articles, please visit www.finnegan.com Contact: anthony.tridico@finnegan.com

VOLUME 45 NUMBER 06 JUNE 2016

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Daniel Klodowski Associate, Washington, DC

Cara Lasswell Associate, Washington, DC

Anthony Tridico Partner, London

Timothy McAnulty Partner, Washington, DC

Erin Sommers Associate, Washington, DC www.cipa.org.uk

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end of the day, on the broadest reasonable interpretation, it is not patentable, then no patent should have issued.”33 Justice Breyer also advanced a policy concern that could warrant a broader interpretation by raising the possibility that “patent trolls” or so-called non-practising entities are armed with “billions of patents that shouldn’t have been issued.”34 This alleged abuse on the patent system, which many practitioners debate, was a consideration the AIA sought to, at least in part, address.35 Chief Justice Roberts appeared more concerned about the effect that IPRs could have on the district courts rather than directly focusing on the USPTO procedures, noting that mid-proceeding transfers of validity determinations from the district court to the PTAB seemed “a little burdensome to the district court.”36 Throughout the argument, and particularly during his questioning of the USPTO, the Chief Justice appeared to view it as unfair that district court judges, many of whom do not regularly undertake patent cases,37 are put through the time and trouble of reviewing and construing a patent only to have the USPTO invalidate the patent in a parallel proceeding using a more lenient, i.e., broader, standard. Justice Kagan seemed to focus more on the question of Congressional intent, pointing out that the statute is silent regarding claim interpretation and that Cuozzo’s arguments required the Court to discern Congress’s intent and “read[] tea leaves.”38 Justice Kagan seemed skeptical that Congress would not have articulated a claim construction standard if it wished to depart from the USPTO’s historical practice,39 a point that had been key to the Federal Circuit’s analysis.40 Cuozzo answered by assuring the Court that claim-construction issues had “always been a matter left to the judiciary”41 suggesting, at least partially, that the Court does not need to defer to the USPTO’s interpretation or “read” into Congress’s intent. Moreover, Cuozzo argued, IPR was a new process “unlike the USPTO has ever confronted in the past”42 that warranted a new perspective. Justice Ginsburg seemed to concur that the new IPR proceedings were a “hybrid” animal43 but appeared less convinced by Cuozzo’s argument on the second question submitted to the Court: whether the PTAB’s institution decision was reviewable. Indeed, Cuozzo only briefly addressed its second issue, dedicating the majority of its time on the BRI standard. And, unlike the issue of claim interpretation, the statute specifically states that the USPTO’s decision regarding whether to institute cannot be appealed.44 The Federal Circuit found that this precise statutory language prevented review of the PTAB institution decisions except in extremely rare instances where there was the likelihood of irreparable harm. During its augment, Cuozzo pointed to the general presumption in the US of judicial review of administrative actions.45 But Justice Ginsburg questioned the importance of the statutory provision specifically barring review of institution decisions, pointing out that if Cuozzo was correct, “this statute is doing no work,”46 and suggesting that the Federal Circuit’s reasoning was correct. Volume 45, number 6

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The USPTO sought the option to require clarity through amendment in circumstances where an issued patent remained unclear.

The USPTO During its time addressing the Court, the USPTO emphasized that BRI was a reasonable standard and that its use in IPR “promotes the improvement of patent quality,”47 an often touted goal of the AIA. But, based on the questions from the justices, it is unclear whether the Court fully agreed with the USPTO. Beginning again with the issue of amendment, Justice Sotomayor probed the underlying basis for the different standard asking how a process with free amendments, such as examination or reexamination, might result in an “ordinary meaning [that is different] from a continuing broad meaning.”48 She suggested that if the USPTO had clarified the terms enough that it “thinks that whatever you have is clear enough to get a patent,”49 the resulting claim language should be clear, and the construction should be the same under either the Phillips or the BRI standard. The USPTO seemed to agree that ideally the interpretation of the terms would end up “in the same place,”50 under both standards. Nevertheless, the USPTO sought the option to require clarity through amendment in circumstances where an issued patent remained unclear.51 Conceding that, as Cuozzo had argued, few motions to amend are granted, the USPTO explained that it “is denying motions because even with the amendment, they would read on prior and be unpatentable.”52 Chief Justice Roberts again focused on the interplay between the USPTO and the district courts and questioning whether the amendment process offered a viable option for patent owners that could be equated to the traditional district court presumption of validity.53 Justice Roberts JUNE 2016

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Notes and references 1. A copy of the transcript is accessible at: http://www.supremecourt.gov/ oral_arguments/argument_transcripts/15446_2dp3.pdf. 2. The ’074 patent relates to a speed limit indicator that can be used for “displaying the current speed of a vehicle and how it relates to the legal speed limit for the current location in which the vehicle is traveling.” ’074 patent col. 2 ll. 18-23 (filed Mar. 18, 2002) (issued Aug. 17, 2004). 3. Garmin Int’l, Inc. v Cuozzo Speed Techs. LLC, IPR2012-00001, Final Written Decision, Paper 59 at 2 (P.T.A.B. Nov. 13, 2013). 4. See Garmin Int’l, Inc. v Cuozzo Speed Techs. LLC, IPR2012-00001, Petition for Inter Partes Review, Paper 1 (P.T.A.B. Sep. 16, 2012). 5. See Garmin Int’l, Inc. v Cuozzo Speed Techs. LLC, IPR2012-00001, Decision to Initiate Trial for Inter Partes Review, Paper 15 at 26 (P.T.A.B. Jan. 9, 2013). 6. Compare Petition for Inter partes Review, Paper 1 at 5-6 (arguing obviousness based on Aumayer, Evans, and Wendt for claim 17 but not claim 10 or 14 and arguing obviousness based on Tegethoff, Awada, Evans, and Wendt for claim 14 but not claim 10 or 17) and Decision to Initiate Trial for Inter Pares Review, Paper 15 at 26 (instituting review of claims 10, 14, and 17 based on Aumayer, Evans, and Wendt and on Tegethoff, Awada, Evans, and Wendt). 7. See Final Written Decision, Paper 59 at 49. 8. See Motion of Appellees Garmin International, Inc. and Garmin USA, Inc. to withdraw party, Garmin International, Inc.; Garmin USA, Inc., as a party to this appeal, In re Cuozzo Speed Techs., LLC, No. 14-1301 (Fed. Cir. Feb. 4, 2015) (No. 17). 9. Se 35 U.S.C. § 143. 10. Motion of Intervenor-Michelle K. Lee, Director, United States Patent and Trademark Office, In re Cuozzo Speed Techs., LLC, No. 14-1301 (Fed. Cir. Feb. 4, 2015) (No. 7). 11. See Brief of Appellant, In re Cuozzo Speed Techs., LLC, No. 14-1301 (Fed. Cir. Feb. 4, 2015) (No. 12). 12. See In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1284-91 (Fed. Cir. 2015) (Newman, J., dissenting). 13. Id. at 1273 (“We conclude that § 314(d) prohibits review of the decision to institute IPR even after a final decision.”). 14. Id. at 1277 (“There is no indication that

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15. 16.

17.

18. 19. 20.

21.

22. 23. 24. 25. 26. 27. 28. 29. 30. 31.

32. 33. 34. 35.

36. 37. 38. 39. 40.

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the AIA was designed to change the claim construction standard that the PTO has applied for more than 100 years.”). In re Cuozzo: Thumbs Up for the PTAB, March [2015] CIPA 134. See In re Cuozzo Speed Techs., LLC, 793 F.3d 1297, 1298 (Fed. Cir. 2015) (denying Petition for Rehearing En Banc over the dissent of five members of the Federal Circuit). See Petition for Writ of Certiorari, Cuozzo Speed Techs., LLC v. Lee, No. 15-446 (US 2016), cert. granted, 577 U.S.___ (Jan. 15, 2016). Phillips v AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005). Id. at 1314. See, e.g., Facebook, Inc. v. Pragmatus AV, LLC, 582 F. App’x 864, 869 (Fed. Cir. 2014) (“The broadest reasonable interpretation of a claim term may be the same as or broader than the construction of a term under the Phillips standard. But it cannot be narrower.”). Transcript of Oral Argument at 4:1-4, Cuozzo, No. 15-446 (U.S. 2016) [hereinafter “Tr.”]. Tr. at 5:12-13. Tr. at 5:13-17. Tr. at 5:18-6:7. Tr. at 5:8-22. Tr. at 3:8-9. Tr. at 4:14-6. Tr. at 4:17-5:6. Tr. at 8:22-9:3. Tr. at 9:4-21. Tr. at 10:5-8. Similarly, Justice Sotomayor asked questions regarding how the BRI and Phillips standards differ. Tr. at 17:9-15. Tr. at 11:6-11. Tr. at 13:19-22. Tr. at 14:1-15:9. See, e.g., America Invents Act Hearing Before the H. S. Comm. on Intellectual Property, Competition, and the Internet, 112th Cong. 78 (2011) (statement of the Honorable Steve Bartlett, President and Chief Executive Officer, The Financial Services Roundatable) (discussing “this problem of non-practicing entities that we believe exploit flaws in the current patent system”). Tr. at 19:24-25. Tr. at 34:10-17. Tr. at 21:23-25. Tr. at 22:19-25. See In re Cuozzo, 793 F.3d at 1276-77.

41. Tr. at 23:1-4. 42. Tr. at 23:5-12. 43. Tr. at 23:21 (noting the proceeding is “[k] ind of a hybrid”). 44. 35 U.S.C. § 314(d). 45. Tr. at 25:1-14. 46. Tr. at 25:17-23. 47. Tr. at 26:15-27:3. 48. Tr. at 27:17-22. 49. Tr. at 27:11-14. 50. Tr. at 27:23-28:3. 51. Tr. at 29:11-20. 52. Tr. at 30:23-25. 53. Tr. at 32:15-33:2 (responding to PTO assertion that PTAB need not adopt a saving construction of the patents because “the patent owner can come in and say, look, I can fix this problem” by stating “[w] ell, that’s happened six times ever”). 54. Id. 55. In re Cuozzo Speed Tech. LLC, 778 F.3d. 1271, 1280 (Fed. Cir. 2015). 56. Tr. at 31:1-11. 57. Tr. at 33:23-25 (asking “you’ve had contrary results with respect to the same patent, right?”), 34:10-17 (“You put the district Court to all the trouble . . . and then the . . . defendant comes in and says, well, guess what? I won before the IP review, and so sorry, but all that was wasted energy.”), 40:21-41:2 (establishing that the district court’s determinations are not binding on the PTO, and that the PTO’s determinations are not binding on the district court), 43:916 (noting possibility of inconsistent result at district court following PTAB decision), 55:4-18 (noting potential for inconsistent results in parallel district court and PTO proceedings such as reexamination). 58. Tr. at 32:1-5. 59. Tr. at 41:7-10. 60. Tr. at 40:21-41:2, 43:9-16. 61. Tr. at 44:3-5. 62. Tr. at 35:14-25. On rebuttal, Cuozzo took particular issue with this point, arguing that whatever the controversy, real property rights were being adjudicated and speculation was inappropriate. Tr. at 56:23-57:1. 63. Tr. at 37:7-15. 64. Tr. at 38:7-39:12. 65. Tr. at 38:24-39:2. 66. Tr. at 50:9-13. 67. Tr. at 52:1-2. 68. Tr. at 52:3-12. 69. Tr. at 52:13-14. 70. See generally In re Cuozzo, 778 F.3d. 1271.

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seemed unconvinced that an amendment option that had been permitted “six times ever,”54 provided meaningful recourse for patent owners facing challenges against issued claims. By statute, granted US patents are presumed valid during litigation in the district courts. However, there is no presumption of validity before the USPTO, whether during prosecution or during other post-grant proceedings like reexamination or reissue.55 Continuing along the same line of questioning as with Cuozzo, the Chief Justice asked the USPTO to explain why the “hybrid” IPR proceeding should not be considered more like district court litigation and less like prosecution when “it seems perfectly clear… that Congress meant for this entity to substitute for the judicial action.”56 Chief Justice Roberts seemed particularly concerned with the potential for inconsistent results and judicial inefficiencies resulting from related district court and PTAB proceedings,57 stating “it’s a very extraordinary animal in legal culture to have two different proceedings addressing the same question that lead to different results”58 and that “[i] t just seems to me like that’s a bizarre way to… decide a legal question.”59 The Chief Justice also acknowledged that neither the PTAB nor the district court was bound by the other’s determinations,60 and noted somewhat incredulously that this discontinuity arose “under a statute designed to make the patent system more reasonable and more expeditious in reaching judgments?”61 Justices Kennedy and Breyer seemed more sympathetic to the USPTO’s view that IPR is more like a traditional USPTO proceeding than district court litigation. Justice Kennedy suggested that the lack of any requirement for a case or controversy between the parties to an IPR might permit the tone of an IPR proceeding to be “more speculative” than that of a district court proceeding, where such a case or controversy is mandatory.62 Justice Breyer also returned to the idea that the IPR process presents an opportunity to the USPTO for “a partial-Groundhog-Day” do-over allowing the USPTO to “do it again until you get it right,”63 and invited the USPTO to articulate why that view was correct. In response, the USPTO focused on Congressional intent to “improve patent quality,” pointing to structural differences between IPR and district court proceedings,64 including the fact that IPR is limited to art-based challenges to patentability. The USPTO also argued that IPR is “a narrower universe than could be used in a district court proceeding,” and also pointed out that the burden of proof applicable in IPRs to show unpatentability is different (lower) than the burden in district court.65 Towards the end of the USPTO’s time, the Court turned briefly to the question of appealability. Justice Sotomayor challenged the USPTO to explain why Congress would limit the circumstances under which the PTAB may institute IPR if “nobody’s going to ever watch you to make sure that’s what you’re doing?”66 The USPTO acknowledged that there are multiple rulings related to the institution decision, but Volume 45, number 6

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maintained that the “entire decision whether to institute an inter partes review” is “non-appealable.”67 Following up, Justice Ginsburg sought an answer to the question of whether rulings related to the decision to institute were subject to any sort of review.68 The USPTO took the position that statute made clear that all decisions related to institution, including the question of whether a petitioner was barred from pursing IPR based on a parallel civil action, “would not be subject to an appeal.”69

Reading the tea leaves The Court seemed split regarding whether IPR should be viewed as a judicial substitute, as Chief Justice Roberts appeared to do, or a traditional USPTO proceeding, as Justices Breyer and Kennedy seemed to do. Whether this division will affect the Court’s view of the proper claim construction procedure is difficult to predict. The majority of the justices did not necessarily show a clear preference for either view. Nevertheless, despite the concern about the potential for inconsistent results, the lack of a clear Congressional intent to substitute the Phillips standard for the USPTO’s traditional BRI review may make a difference in the Supreme Court’s analysis. Both that point and the general reasonableness of the USPTO’s position in the face of Congressional silence were aired during argument, and both points helped to shape the Federal Circuit’s conclusions.70 The Supreme Court may be prepared to agree. Predicting the Court’s response to the appealability issue is even more difficult. Only Justice Ginsburg and Justice Sotomayor asked any questions on the issue, and in both portions of the argument, the question was discussed only towards the end of the speaking party’s time. Though the statutory language of the AIS may be more of a hurdle for Cuozzo to overcome on the question of appealability, Justices Ginsburg and Sotomayor seemed prepared to examine whether Congress truly intended to leave so much of the IPR process unreviewable. Though no clear perspective is apparent following oral argument, the arguments did highlight a number of contested issues regarding the statutory scheme of the AIA and how the USPTO is handling the new post-grant proceedings. Indeed, the Supreme Court heard arguments on the very first AIA case appealed from the Federal Circuit. This may indicate, as with the Supreme Court’s recent flurry of cases addressing patenteligible subject-matter, an increasing role for the Supreme Court in the patent law. We can expect the Supreme Court to address at least some of these questions with its decision expected by the end of the summer. Stay tuned as we continue to follow this continually changing area of US patent law. Composed on this occasion by Timothy P. McAnulty and Cara R. Lasswell. For more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony.tridico@finnegan.com JUNE 2016

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Six things we love about being the President of CIPA

By Andrea Brewster

(Warning: this article contains scenes of a humorous nature, which some readers may find upsetting.)

Gwilym Roberts has asked me to write something for his “Six Things We Love About…” column. To prevent me using my initiative too much and writing “Six Things We Love About Gin”, he has given me a title. I am to write “Six Things We Love About Being the President of CIPA”. Darn. Six whole things. Hmm. Eventually, with the help of some Red Bull® and a thesaurus, I come up with the following ideas.

Six things we love

Interaction

You get to meet all sorts of interesting and important people. In my case, these are people who would not otherwise have come within 100 yards of me, for fear of catching a Wess Curntry accent. Some of them are not entirely sure who I am or why I am there: I enjoy watching them try to work it out.

Influence

You get to influence the shape and direction of our beloved Institute, and thus of the entire UK patent profession, at the highest possible strategic and policy level (going forward). Ha ha; in my dreams. Better scrub that: Council would be livid if it thought I’d been attempting such skulduggery.

2 3

Heart of IP

3 4

Opinion

People have to listen to you. For me, this is quite a novelty. By implication, of course, you then have to think of something appropriate to say. If this is a problem, there are plenty of folk at CIPA who can tell you some appropriate things to say. They can also give you a list of things Not to Say, but it is quite a long list and I don’t always bother sticking to it. This is why Mr Davies keeps a roll of ceremonial gaffer tape.

You work right at the throbbing (yes, throbbing!) heart of the IP profession. You know everything that’s going on, even if you don’t understand it. You will never want for CPD again. So long as you stay awake in the right meetings, that is. (No one can tell you which are the right meetings. You have to guess. It is a game.)

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4 Perks 5

Wherever you go, people pay for your drinks and lunches and dinners. Sometimes these are posh affairs, with almost as many courses as pieces of cutlery (there is always one extra item of cutlery, to test for Imposters. It doesn’t bother me: I use the extra one to pick the straw out of my ears). If you consume all these free refreshments you get to acquire a Presidential waistline. And then you will need to acquire a new, wider-fit Presidential wardrobe. People will not pay for that.

5 6

Stationery

You get to write letters on CIPA headed notepaper. Dear reader, you have no idea how exciting this is. Mind you, people at CIPA have no idea what chaos I’ve caused with the last batch I wrote.

6! Ceremony 7

You get a Presidential badge and lapel pin and business cards. Plus a Presidential swimming gala medal, or rather, a kit of parts of a Presidential swimming gala medal and if you’re lucky a tube of Presidential super glue. Also, you get to use the ceremonial gavel in Council meetings: this is excellent fun if you regard the ceremonial gavel as a percussion instrument as opposed to a procedural device.

And the one thing we hate… So, these are my six things to love about this delightful role. I am only allowed one Thing We Hate. I find this somewhat limiting. But in the end I decide I ought to bow out graciously, so I scrub the 99 things I’ve already written down – which were in any case probably libellous – and instead put:

VIP Protocol You don’t have much time to spend with ordinary CIPA members. Like, last year I wandered all round the country letting myself into folks’ offices and stealing their biscuits, reminding them that CIPA existed and why they were so glad to be members. This year I have to be Dignified and Stately and go where people tell me to and be careful not to drop straw. To be fair, not everyone would regard this as a Thing We Hate About Andrea Being the CIPA Pee.

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Patent decisions Invalidity | Obviousness Richter Gedeon Vegyesszeti Gyar RT v Generics (UK) Limited [2016] EWCA Civ 410 26 April 2016; Floyd LJ, Arnold J and Sir Robin Jacob [Also see page 9 of the May CIPA Journal.] This is a decision from the Court of Appeal following an appeal by Gedeon against a judgment of Sales J of 22 May 2014 ([2014] EWHC 1666 (Pat), reported June [2014] CIPA 353). In the first instance judgment, European Patent (UK) No. 1448207 was found invalid for obviousness. The patent related to a single application dose of levonorgestrel. Levonorgestrel was a known emergency contraceptive, but was usually administered in two doses taken 12 hours apart. Sales J had found the patent to be obvious over a prior publication (Killick), which reported partial results showing a single dose to be as effective as two doses. However, Killick reported a dose of 1.5 g instead of 1.5 mg. The judge held that it would have been obvious that the dose amount was suspect and that it would have been the obviously sensible course to contact Killick (or someone identified with the publication) to check the amount. Therefore, the judge considered the invention obvious because the skilled person would have been able to ascertain the correct answer without inventive input and would have had an incentive to do so. Gedeon advanced two lines of argument against this decision in the appeal, the “permanent form” point and the “illegitimate to ask” point. The “permanent point” form was not pursued in oral argument, but was based on an argument that if material that is an important part of prior art is not written down, it is not sufficient for the purpose of the application of an obviousness test. Sir Robin Jacob noted that it was long established that oral prior art disclosure could be relied upon as prior art. Therefore, he considered that this argument did not have any merit. The “illegitimate to ask” point was based on the contention that Sales J had erred in law in permitting the notional skilled person to “don the mantle” of a real person by substituting the private knowledge of a third party to that of the skilled person. Gedeon argued that the proper approach was to decide the common general knowledge of the person skilled in the art and read the cited document with that knowledge. If one were to consider whether, having read the documents, the skilled person would ask someone else, one was extending common general knowledge. However, Gedeon accepted that not everything to be taken into account when assessing obviousness had to be notionally in the head of the notional person. It was noted that it was well established that the notional person may, where it is obvious to do so, consult a reference work. Sir Robin Jacob considered that there was no logical distinction between a case where it 32 CIPA JOURNAL

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was obvious to look something up and where it was obvious to ask and clear that the answer would be given. Accordingly, he considered that the attack failed. However, he added a note of caution: “The facts here are unusual – a clearly obvious error, a clear source to ask what the correct figure was and a clear finding not only that an answer would be given but that it would be unambiguous. It does not follow that the ‘skilled man would ask’ route to obviousness would follow for cases where the facts are not so precise or sure.” Arnold J and Floyd LJ agreed with Sir Robin Jacob’s judgment, with Floyd LJ additionally noting that the argument of Gedeon on the “illegitimate to ask” point would have been correct in the context of an attack based only on lack of novelty. However, obviousness was not concerned only with what is in the state of the art. He noted that what the skilled person would do in the light of the state of the art was a question of fact, which was not constrained by any special rule of law, other than that the skilled person was incapable of invention. Accordingly, the appeal was dismissed.

Damages enquiry | Infringement | Abuse of process AP Racing v Alcon Components [2016] EWHC 815 (Ch) 4 March 2016; Carr J This decision relates to an appeal against an order of HHJ Hacon declining to strike out a claim for patent infringement on the basis of a Henderson v Henderson abuse of process. The earlier case ([2015] EWHC 1371 (IPEC), reported July [2015] CIPA 48) related to a second action following from a judgment of the Court of Appeal ([2014] EWCA Civ 40, reported February [2014] CIPA 106). In this judgment, AP Racing’s United Kingdom Patent No. 2451690 was found valid and infringed by five of Alcon’s products. In the second action, AP Racing alleged that the patent was infringed by Alcon’s manufacture and sale of calipers different from the five products considered in the first action. Alcon then sought to strike out the second action in so far as it related to seven out of the ten calipers on the grounds that these seven calipers were publicly available before the first action. Alcon argued that AP Racing could and should have made the seven calipers part of its claim in the first action. As a result, the

The UK patent court case reports are prepared by Anna Hatt, John Hull, Jonathan Markham and Matthew Ng of Beck Greener. Court decisions listed in this section are available on the free-to-use website www.bailii.org.

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second action was an abuse of process, following Henderson v Henderson. However, HHJ Hacon dismissed Alcon’s application. Alcon appealed. Considering the facts of HHJ Hacon’s decision, Carr J agreed with the IPEC judge’s conclusion that: “It is clear that a claimant is under no general duty to exercise reasonable diligence to ascertain whether he has a potential further cause of action against the defendant (or third parties)”. Carr J then added: “I would add that it is in accordance with the modern approach to intellectual property cases in general that the rights-holder should not be required to produce evidence of every possible infringement in the liability hearing but merely to bring forward sufficient examples so that the case of infringement can be dealt with in a cost-effective and expeditious way. To require the claimant to specify all infringements and to introduce them into the liability trial would be wasteful, time consuming and a recipe for delay. It follows that I consider that the practice to which Jacob LJ referred in Unilin Beheer of allowing further infringements, once infringement is established, to be considered at the damages inquiry is entirely in accordance with the aims of the IPEC, in particular in accordance with the aims of simplifying trials of infringement, shortening proceedings and rendering them cost-effective.” However, the judge disagreed with HHJ Hacon’s view that the IPEC is different from other courts in that further allegations of infringement would only be allowed “in unusual circumstances”: “I respectfully disagree with the learned judge. The result… would be that in the IPEC, unlike in the High Court, a claimant would be required to come to the first CMC with a complete list of all possible infringements that he had been able to find. If any had been missed out, which could have been discovered by reasonable diligence, and if they required further evidence in order to consider them, the patentee would be debarred from claiming in respect of them. The consequence would be that, in respect of all such further infringements, a free licence would have been granted because no injunction would bite on them and no damages or other relief would be recoverable. I do not consider that the IPEC is an exception to the general law in this regard. When faced with allegations of abuse of process it must consider whether or not oppression has occurred, in the sense that the defendant has been harassed unfairly by further allegations of infringement. I consider that the practice set out in Unilin does apply to the IPEC. If it turns out that a damages inquiry is unduly Volume 45, number 6

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complex, then of course it can be transferred by the IPEC to the High Court once liability has been established.” Carr J then applied the Unilin principles to the facts of the case, and determined that there had been no abuse of process: “In my judgment there is no question of any abuse of process in the present case. In particular, AP Racing followed the well-established, cost-effective practice of specifying certain infringements in its pleadings. Indeed, it specified all of the infringements of which it was aware. It is relevant that AP Racing’s solicitors wrote to Alcon’s solicitors asking for information as to other Alcon products with the same features as those in respect of which it was suing for infringement. Alcon did not reply and did not identify the seven calipers, although it must have known that it was selling them and it must have known their relevance to the patent, given that it were already being sued in respect of that patent. Alcon is neither oppressed nor harassed by the inclusion of the seven calipers in the 2015 proceedings. There has been no finding that they do not infringe and it would be a denial of AP Racing’s right to a trial for infringement if they were shut out from claiming in respect of them, particularly in circumstances where Alcon objected to the proposal to include them in the existing damages inquiry.” The appeal was thus dismissed.

Standard-essential patent | Validity | Sufficiency | Obviousness | Added subject-matter Unwired Planet International Limited v (1) Huawei Technologies Co., Limited (2) Huawei Technologies (UK) Co., Limited (3) Samsung Electronics Co., Limited (4) Samsung Electronics (UK) Limited (5) Google Inc. (6) Google Ireland Limited (7) Google Commerce Limited [2016] EWHC 574 (Pat) 22 March 2016; Birss J This decision relates to the third of five technical trials in proceedings between Unwired Planet on the one side as the claimant, and Huawei, Samsung, and Google as the defendants on the other side. The first two technical trials, [2015] EWHC 3366 (Pat) and [2016] EWHC 94 (Pat), were reported in February [2016] CIPA 21 and March [2016] CIPA 54 respectively. This trial concerns the validity of European (UK) patent No. 1230818 and whether it was essential to 3G mobile communication standards. Unwired Planet claimed that the patent was essential to two 3G standards, one dated April 2006, the other dated September 2011. The defendants claimed that it was not. The defendants further claimed that the patent JUNE 2016

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was invalid for insufficiency, obviousness, and added subjectmatter. The patent related to a method and device for “handover” in mobile telecommunications. More particularly, the patent related to handover from a 3G connection to a 4G connection, and vice versa. In one scenario, when a mobile phone connected to a strong 4G connection travels into an area with a weak 4G signal but has a good 3G signal, the network may have to decide to switch from the 4G connection to a 3G connection. In another scenario, when a mobile phone with a good 3G connection travels into an area with a good but weaker 4G signal, the network may have to decide to switch to a 4G connection despite it being weaker that the 3G connection. To facilitate handover, the patent provides a method in which measurements of the parameters of the 4G signal are “converted” into the format for measurements of the parameters of a 3G signal. The scope of common general knowledge and the characteristics of the skilled person were largely common ground. There was some debate on claim construction, in particular the meaning of the term “conversion”. The judge found that “conversion” must achieve two things. First, the 4G measurements must be converted into a form that enables comparison with 3G measurements. Second, the 4G measurements must be converted into a format that is compatible with the encoding scheme of 3G networks. Having settled matters on common general knowledge, the skilled person, and claim construction, the judge considered whether the patent was essential to the two 3G standards at issue by assessing whether the standards fell within the scope of the patent. In connection with the April 2006 standard, the core issue was whether the method specified in this standard required “conversion” that fell within the meaning settled upon by the judge. There was no dispute that the method of this standard required the conversion of 4G measurements into the six-bit encoding scheme used in 3G networks. Unwired Planet argued that the method further required conversion into a form that enabled direct comparison with 3G measurements. On this point, the defendants disagreed. The defendants argued that Unwired Planet did not establish in any way that the encoded 4G measurement values generated by the April 2006 standard had any functional equivalence to the encoded 3G measurement values. The defendants argued further that the “mapping” to which Unwired Planet referred could at best be considered to indicate that the “mapped” values can be treated as comparable on a rough and ready basis, but did not indicate that comparability was brought about by “conversion”. The judge did not agree with the defendants’ submissions and came to the view that the encoding of measurement values into a format that used the same numerical scale was what made direct comparison passible. On that basis, the judge concluded that the April 2006 standard fell within the scope of the patent. 34 CIPA JOURNAL

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In connection with the September 2011 standard, the judge found that none of the differences in comparison with the April 2006 standard took the September 2011 standard out of the scope of the patent. On that basis, the judge concluded that the September 2011 standard also fell within the scope of the patent. On the issue of insufficiency, the defendants referred to the expert submissions of Unwired Planet, in which the term “broadly speaking” was used to describe the comparison between converted 4G measurement values and encoded 3G measurement values. The defendants argued that the meaning of “conversion” was so ambiguous that the skilled person would not know whether a mapping of 4G measurement values enabled a comparison of the figures such that “broadly speaking” a higher number indicated a better connection quality. Adding to these arguments, the defendants submitted that the choice of metric used in the conversion would in fact affect the results obtained such that a different ranking may be obtained for the same conversion depending on the chosen parameter. The judge agreed that there may be circumstances in which different rankings are obtained by choosing different metrics. However, the judge noted that these would only be marginal cases: “I reject the defendants’ first argument. The most that can be said is that different statistical models can be constructed which will produce different answers in marginal cases and that the skilled person will know that this is so. However from the point of view of the person using the models, all of them involve the sort of comparison required by the claims. The fact that they produce different answers in some cases is irrelevant. The claims are not defined by reference to the outcome of the comparison itself. How the skilled person chooses to set and adjust the fine details of the comparison is up to them but in all these cases the skilled person would have no doubt that a relevant comparison was being made”. Drawing from established cases, including Scanvaegt v Pelcombe ([1998] FRS 786), Biogen v Medeva ([1997] RPC 1), and SmithKline Beecham v Apotex ([2004] EWHC Civ 1568) the judge noted that: “If the skilled person cannot know whether they are carrying out the right test, then the claim is truly ambiguous and therefore insufficient. That makes sense. However, while the principle cannot be limited just to technical tests, after all SmithKline Beecham was not that sort of case, nevertheless it does not apply simply because one can imagine difficult cases to judge at the edge of a claim. When a defendant has been found to infringe, demonstrating that the claim’s scope is at least clear enough to work that out, an argument that the claim should be regarded as truly ambiguous is likely to be met with scepticism”. www.cipa.org.uk

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The judge also distinguished his findings with Kirin-Amgen v Hoechst Marion Roussel ([2004] UKHL 46):

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do based on the application as filed. I reject the submission of added matter”.

“In Kirin-Amgen the claim required an SDS-PAGE test to be applied to two proteins in order to decide which had the higher molecular weight. The fact that the test was understood did not remove the ambiguity, namely knowing which uEPO should be used in the test. The defendants submitted that the position was the same here. I do not agree. The claim in this case is different from the one in Kirin-Amgen. This claim does not set its scope based on the outcome of a particular run of a comparison test. It is concerned with a conversion to allow the skilled person to carry out a direct comparison test in accordance with whatever comparison scheme the skilled person has chosen. What the outcome of the individual instances of undertaking the comparison actually is does not matter as far as the claim scope is concerned. The fact that a network operator who converts values to make them directly comparable will produce a scheme which differs in its outcome for a given case from a scheme implemented by another operator is not relevant, nor is the fact that the operators have the facility to alter the way the comparison works.”

In conclusion, the judge held that the patent was valid and was essential to the two relevant standards.

On that basis, the judge held that the patent was sufficient. On the issue of obviousness, the defendants relied on common general knowledge and a technical document presented in a meeting in September 1999. Based on common general knowledge, the defendants argued that the skilled person would “stumble across” the invention. The judge disagreed, commenting that the invention was a neat way of making handover decisions. In connection with the technical documents, the judge also disagreed with the defendants, commenting that:

“… an expert report which seeks to parse the language of the claim, and opine that a particular ordinary English word can only in his opinion have a particular meaning is not admissible… What is admissible is… evidence about the technical inter-relationship between the rival claim meanings and the teaching of the specification. The expert is well able to assist the Court about the impact of different assumptions about the correct legal construction of the claim. It may be that it is only on one construction of the claim that general technical statements made in the body of the patent about what the invention achieves will hold good. It is perfectly legitimate for an expert to point that out…”

“A skilled person given this document at the priority date and reading it with interest would in all probability just put it to one side as a terrible idea. I doubt they would be motivated to go any further”. The judge held that the patent was not obvious. On the issue of added subject-matter, the defendants argued that the granted claims of the patent were of a broader scope than the claims as originally filed. The judge dismissed this argument: “However even assuming, which I have not found, that removing the said broadens the scope of the claim as compared to the claim in the application, that does not produce added matter... Even if the claim covers more things as a result of the amendment it does not disclose any new information to the skilled person. The things they would do based on reading the patent are the same as what they would Volume 45, number 6

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Application for strike out Meter-Tech LLC v British Gas Trading Limited [2016] EWHC 808 (Pat) 7 April 2016; Mr John Baldwin QC This decision relates to an interim application to strike out sections of the defendant’s expert report in connection with an infringement and validity action. Meter-Tech applied to have a large number of paragraphs of the British Gas expert report struck out. Meter-Tech contended that those paragraphs contained opinion evidence on claim construction and were therefore inadmissible. Meter-Tech further contended that it was not necessary to examine the paragraphs individually as they stood or fell together. Mr Baldwin QC referred to the decision of Floyd J in Qualcomm Inc. v Nokia [2008] EWHC 329 (Pat), which sets out the criteria for assessing the admissibility of expert evidence:

Mr Baldwin QC was of the view that it was necessary to look at each paragraph to determine which side of the Qualcomm criteria they fell. The judge commented further that since some of the paragraphs in question were not contentious and appeared potentially helpful to the trial judge, it may be better to keep the paragraphs and defer the issue to the trial judge. Meter-Tech submitted that although some of the paragraphs would be helpful to the trial judge, that did not matter; what mattered was whether they were admissible. British Gas argued that Meter-Tech’s acceptance that some of the paragraphs might be admissible under the Qualcomm criteria meant that the Court would have to assess each paragraph individually. British Gas argued further that Meter-Tech did not ask for such an assessment and the application should be dismissed accordingly. JUNE 2016

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The judge considered whether there was any advantage in taking the strict “all-or-nothing” approach advanced by MeterTech and held that: “I am not persuaded that there is. Of course, the answer may be completely different if the subject-matter of the evidence were contentious. But in those circumstances, it will be necessary to consider the impugned paragraphs with sufficient care to establish that they really are within paragraphs 9 or 11 of Floyd J’s analysis and not paragraph 10. An all-or-nothing approach only works if all paragraphs are of the same kind and that is neither established nor accepted. In the end, I am concerned with what is the best order that is most likely to do justice between the parties. In these circumstances, I am not satisfied that justice will be served if all the impugned paragraphs are struck out. Since the approach was “all or nothing”, the consequence is that the application must fail.”

Validity | Obviousness | Expert witnesses American Science & Engineering Inc. v Rapiscan Systems Limited [2016] EWHC 756 (Pat) 11 April 2016; Arnold J This decision related to an action for infringement of AS&E’s European Patent (UK) No. 1558947 entitled “X-ray backscatter mobile inspection van” by the defendant, Rapiscan. The patent related to backscatter X-ray detection. Backscatter X-rays are a category of Compton scattering where photons are scattered back from the target matter with which they have interacted at about 180 degrees from the direction of the incident beam. The technique has particular application in the security scanning market. The decision was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 13 April 2016. Rapiscan had previously denied infringement. However, during the course of the trial Rapiscan admitted that it had committed acts which had amounted to infringements. However, Rapiscan contended that the patent was invalid because all of the claims in issue are obvious in the light of a paper “Mobile X-ray Backscatter Imaging System for Inspection of Vehicles” published in the Proceedings of the SPIE – The International Society for Optical Engineering conference. The case is concerned solely with the validity of the patent. Arnold J first identified the inventive concept of claim 1 of the patent: “The inventive concept of claim 1 is to be found in the claim. Nevertheless, this is one of those cases where it is worth trying to express the concept more simply. I accept 36 CIPA JOURNAL

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counsel for AS&E’s submission that it may be summarised as the combination of (i) a vehicle containing a flying spot X-ray source and a backscatter detector, (ii) the source and the detector being entirely enclosed within the body of the vehicle when the vehicle is in motion during the course of an inspection and (iii) a relative motion sensor generating a signal based on the relative motion of the vehicle and the inspected object (thus enabling the aspect ratio of the image to be corrected). The advantage of this arrangement is that it enables a mobile X-ray scanner to be used for covert imaging in three modes: (i) with the vehicle moving past the target (“driveby” mode), (ii) with the vehicle stationary as the target moves past it (stationary or “drive-past” mode) and (iii) with the vehicle overtaking the target while they are both in motion.” It was common ground that the prior art, Swift, disclosed the preamble of claim 1. However, it was agreed that feature (g) was not disclosed, being: “(g) characterised in that the system further comprises a relative motion sensor for generating a relative motion signal based on a relative motion of the enclosed conveyance and the inspected object.” There was also some discussion as to whether feature (f) was disclosed, namely: “(f) the detector module is contained entirely within the body of the enclosed conveyance while the conveyance is in motion during the course of inspection”. With regard to feature (f), the patent specification made it clear that the purpose of this feature was to ensure the detectors were “concealed from view”. However, Swift referred to the doors being “opened and secured”. Arnold J thus concluded that it was not obvious to redesign the prior art system to function with the doors shut. Features (f) and (g) were, thus, found not to be obvious from Swift. The judge then considered whether, even if (f) and (g) were individually obvious, the combination of (f) and (g) was obvious. The judge decided it was not: “Even if the steps from Swift to features (f) and (g) were individually obvious, I do not consider that it has been shown that the combination was obvious. In order to arrive at the combination, the skilled person would have to conceive of making a mobile, covert, backscatter-only system which could operate in drive-past mode and incorporated a relative motion sensor for that purpose, despite the fact that Swift contains no hint of either covert or drive-past operation and indeed teaches away from www.cipa.org.uk

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both. It is only with hindsight that it can be seen that the necessary changes were relatively simple ones.” During the trial, AS&E posed the familiar question: if the invention was obvious, why was it not made before? In response, Rapiscan suggested that this was because AS&E had patent protection for X-ray backscatter systems, and that the burden lay on AS&E to show that this was not the case. However, Arnold J disagreed strongly with this submission: “I regard that as an extraordinary submission. In my judgment it is plain that, where a party which is attacking the validity of a patent on the grounds of obviousness wishes to rely upon a fact as explaining why the invention was not made before the patent, whether that fact relates to the availability of raw materials or a regulatory restriction or a commercial factor or the existence of an earlier patent owned by the patentee or a third party, then the burden of proving the existence and relevance of that fact lies upon that party. Furthermore, in the present case, not only was the suggestion unsupported by any evidence from Dr Lanza, but also when counsel for Rapiscan put the suggestion to Dr Bjorkholm in cross-examination, his evidence was that AS&E had no relevant patent protection. Accordingly, even if the burden lay upon AS&E to prove the negative, AS&E has discharged that burden.” The judge then considered whether the fact that no party had come up with the invention in the six years following the Swift paper had any bearing on the conclusion of obviousness: “Accordingly, I consider that the fact that no-one came up with the invention in the six years following Swift provides modest support for the conclusion that claim 1 was not obvious.” In summary, the judge held all claims of the patent to be valid over Swift, and dismissed Rapiscan’s counterclaim for revocation of the patent.

Scientific adviser Electromagnetic Geoservices ASA v (1) Petroleum Geo-Services ASA (2) PGS Exploration (UK) Ltd (3) PGS Geophysical AS [2016] EWHC 881 (Pat) 19 April 2016; Birss J This decision relates to infringement and validity proceedings between Electromagnetic Geoservices ASA (EMGS) and Petroleum Geo-Services ASA (PGS). It follows earlier interim proceedings ([2016] EWHC 27 (Pat), reported March [2016] CIPA 51) and technical trail. EMGS was the proprietor of European (UK) patent No. 1256019 and brought an infringement action against Volume 45, number 6

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PGS. PGS counterclaimed for invalidity. In the interim proceedings, the judge gave direction for the appointment of a neutral scientific adviser. The adviser was tasked to give the judge a pre-trial briefing on the background physics and mathematics, but was not instructed to attend court during the trial. After an 11-day trial, the parties settled matters before the judgment was completed. However, the judge felt it worthy to comment on the benefits of the pre-trial briefing: “The teach-in allowed the speeches and cross-examination to proceed more briskly than would have been possible without it. So time and therefore cost has been saved and the court’s comprehension of the issues was significantly improved. … what matters is not the opinions the experts express as to the conclusions to be reached but the reasons they give for them. In order to be able to decide the case, the court therefore needs to be able to understand not only the experts’ opinions but also the material on which those opinions are based and the reasons for them... One cannot evaluate what one does not understand.”

Preliminary issue to be determined | Standard-essential patent | Licence agreements | Infringement Koninklijke Philips N.V. v (1) Asustek Computer Incorporation (2) Asustek (UK) Limited (3) Asus Technology Pte. Ltd (4) HTC Corporation (5) HTC Europe Co. Ltd [2016] EWHC 867 (Pat) 21 April 2016; Mr John Baldwin QC This was an order for the trial of a preliminary issue in a patent infringement action brought by Philips in respect of three patents relating to mobile phone technology. A similar action has been brought before the German courts. Philips claimed that the three patents were essential for the operation of mobile phones using 3G technology and that HTC infringed the three patents. HTC contested whether the patents were essential and presented a non-infringement defence. The preliminary issue which was sought to be determined was whether, as a consequence of an agreement Philips reached with a third party a number of years ago, HTC had a defence to the infringement claim. That defence was by way of licence (the “Licence Defence”). Philips conceded that, as a matter of construction, the aforesaid agreement provides HTC with an arguable defence to the infringement claim. HTC could only rely on the agreement if and so long as HTC did not challenge the validity of any of the patents which are the subject of the licence. It is for this reason that HTC did not raised validity in the proceedings. JUNE 2016

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Philips contested whether HTC’s interpretation was the true effect of the agreement it has made with a third party and asserted that, in any event, the agreement, or the relevant clause thereof, was void by reason that it was contrary to the anti-competitive provisions of the TFEU. HTC then set out in detail the case which it sought to be determined by the preliminary issue and explained why the Licence Defence was a good one. It was anticipated that the German courts would reach a conclusion on infringement in September 2016. Inquiries had been made as to German procedure and the evidence was that the German court, in considering whether to grant any injunction against HTC, may take into account any conclusions the High Court expressed on the Licence Defence if those conclusions are made known before the end of October 2016 . In addition, there was a competition argument to the effect that the licence was a void agreement. In this case, the judge had to decide whether to allow the determination of the preliminary issue. The relevant authority was the decision of Birss J in Wagner International AG v Earlex [2011] EWHC 3897 (Pat) which set out the criteria for the court to consider. Applying these criteria to the facts of the case, Mr John Baldwin QC considered that there was a compelling case for the determination of a preliminary issue: “I have considered all the points put before me in the context of the Wagner list and also the proportionate management of this action. I am satisfied that the right order is one which provides for determination of the Licence Issue by way of a preliminary point in July of this year. I am satisfied that either way the point is determined there is likely to be a substantial saving in costs and use of resources. To my mind there are compelling reasons for the determination of a preliminary issue in this case and little to be said against it. The application is allowed and the provisional directions that have been considered will be ordered.” Accordingly, the application was allowed.

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IPO decisions Inventive Step: section 1(1)(b) Pierce Biotechnology, Inc. & Dyomics GmbH BL O/186/16; 12 April 2016 The application related to compounds for use as labels in optical determination and detection methods, example applications being based on the reaction with biomolecules for characterising receptors or drugs. The claimed invention defined a range of compounds defined by Markush structures, each containing a polyethylene glycol (PEG) group having a number of units within a range selected from a larger range, compounds with the larger range being known from the prior art. The examiner had objected that the invention lacked an inventive step because it was an arbitrary selection from the prior art that was not rendered plausible by the specification. The hearing officer, taking the Windsurfing/Pozzoli approach, referred to the decision of the Court of Appeal in Dr Reddy’s v Eli Lilly [2010] RPC 9, which stated that a mere arbitrary selection was obvious as there was no technical contribution provided by the patentee. The hearing officer further considered the Court of Appeal decision in Generics v Yeda [2013] EWCA Civ 925, which set out a series of steps to determine whether a selection invention could be considered to involve an inventive step. From this, it was clear that any alleged technical effect must be clearly identified or made plausible in the specification at the time of filing. The applicants argued that the alleged technical benefit of selecting the subset of PEG groups provided enhanced properties, referring to parts of the specification in support. The hearing officer considered that the statements in the specification were limited to one specific aspect of the compounds, and made no distinction between the claimed subset and the larger range. Later filed evidence supporting the applicants’ case did not provide basis for the selection because there was no indication in the specification as filed that such a selection showed the alleged technical benefit. To allow later filed evidence would be to allow the applicants to benefit from discoveries after the relevant date, which was clearly not allowable. The statements in the specification did not therefore provide basis for an inventive step. The applicants argued that other statements in the specification showed that the claimed compounds had a higher specificity than the prior art compounds. The prior art compounds were not, however, specified in the specification, and the examiner concluded that the technical effect relied on was not made plausible. The hearing officer considered that the skilled person would need to partake in a significant amount of research, www.cipa.org.uk

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PATENTS: UK IPO

and make a number of inferences, to reach the conclusion that the reason for the claimed compounds’ higher specificity was due to the selection of the subset of PEG groups. There was nothing in the specification that showed the alleged technical benefit over compounds falling outside of the claimed selection. The alleged technical effect of the claimed selection was therefore not made plausible by the specification, and the claimed invention was found to lack an inventive step. The application was refused.

further opportunity to submit a limited set of claims that would be considered to be allowable. Anything less specific would, in the hearing officer’s view, be certain to result in prolonged re-litigation and would be unduly expensive and unfair to the claimant, as well as being against the public interest. The hearing officer ordered that the patent be revoked unless, within a month of the decision, the patentee applied to amend the specification to the satisfaction of the comptroller.

Revocation: section 72

Patent Office Opinions: section 74A

TWI Limited v Zircotec IP Limited BL O/183/16; 12 April 2016

Touch Guard Ltd Opinion 03/16; 22 April 2016

The claimant (TWI) applied for revocation of the defendant (Zircotec)’s patent. The patent related to a method of coating an article having a surface containing an organic material (e.g. a carbon fibre composite) with a metallic coating and a subsequent ceramic coating, the ceramic coating having a higher melting temperature than the metallic coating and having a porosity of greater than 5%. The claimant contended that the patent was invalid for lack of novelty, lack of inventive step and lack of sufficiency. The issues of novelty and inventive step had been previously the subject of an opinion (12/14), where the examiner found the patent to lack novelty. The hearing officer considered that, since opinions were not binding, no weight was to be given to the previous opinion in reaching a decision, although it could be a factor when considering costs. It was established that the cited document (D1) disclosed all of the features of the invention with the possible exception of the level of porosity in the ceramic coating. D1 stated a range of porosities of between 4% and 6%, which the patentee argued did not provide an individualised disclosure of a value falling within the claimed range. The patentee also argued that the teaching of D1 was directed towards providing a hard-wearing surface, for which purpose porosity should be reduced to the minimum level possible. The hearing officer disagreed and considered that, although a generalised disclosure did not necessarily disclose all of the members in the class, the patent in question was not an example of a selection invention. The evidence provided by the patentee’s expert witness also supported the conclusion that the levels of porosity achievable in practice were unlikely to be lower than 5%. The hearing officer concluded that the document did disclose a porosity that was within the claimed range, resulting in the claimed invention lacking novelty. The patentee had previously submitted conditional amendments to the patent under section 75, but these had been considered to be deficient on a number of grounds. After considering a further amendment limiting the porosity range to greater than 15%, which was accepted to be novel and inventive, the hearing officer allowed the patentee a final

A request was made for an opinion on whether a GB patent was novel and whether granted claim 1 of the patent extended beyond what was disclosed in the application as filed. The patentee argued that the request should be refused because the question of whether claim 1 added matter had already been considered in detail before grant. The requester argued that, in light of the amendments made to the Patent Rules in October 2014, extension of subject-matter was expressly included as a ground on which a request for an opinion could be made. The requester further argued that normal pre-grant examination did not constitute a relevant proceeding under rule 92 and was therefore not unallowable under rule 94(1)(b). The examiner saw no evidence that the question of added matter had been raised during pre-grant proceedings; the opinion request did not therefore merely repeat arguments considered pre-grant. In light also of section 3.3 of the opinions manual, which stated that normal pre-grant proceedings did not constitute a relevant proceeding under rule 92, the request for an opinion on whether claim 1 added matter was allowable. The examiner then went on to consider whether various features in claim 1 extended beyond the content of the application as filed, finding that some of them did. The examiner also considered that the claimed invention lacked novelty over various documents cited by the requester, concluding that claim 1 lacked novelty over three of them.

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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 were David Pearce and Callum Docherty of Barker Brettell LLP.

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PATENTS: EPO

EPO decisions Novelty – Article 54(2) EPC Interlocutory revision – Article 109(1) EPC T 2227/11: Apparatus and Methods for Monitoring Transfusion of Blood TBA decision of 18 February 2016 Chairman: G. Eliasson Members: R. Bekkering and C. Heath This was an appeal against the Examining Division’s decision to refuse a patent application, partly on the grounds that it lacked novelty over prior art obtained from the Internet. The appellant argued that two documents, D1 and D2, were not prior art under Article 54(2) EPC as, following decision T 1134/06, it was necessary to prove beyond any reasonable doubt that an Internet disclosure constituted the state of the art pursuant to Article 54(2) EPC. The appellant submitted that it was necessary for the Examining Division to have provided evidence of not only the subjectmatter of the Internet disclosures but also when, and under what circumstances, they were made available to the public. The TBA disagreed, noting that decision T 1134/06 cited by the appellant pre-dated the notice from the EPO concerning Internet citations (OJ EPO 8-9/2009, pp 456462) and that the Examining Division had complied with the Guidelines for Examination in the EPO in force at the time of its decision. The TBA explained that, generally, the EPO standard of proof is the balance of probabilities except, for example, in cases where one of the parties has no access to material of which public prior use is alleged. In such cases the higher standard of proof beyond any reasonable doubt would apply. In the view of the TBA, for Internet disclosures, both parties would almost always have equal access to relevant information and thus there is no need to depart from the default standard of proof on the balance of probabilities.

The TBA pointed out that, although determining the accuracy of the publication date or content of Internet disclosures may require substantial investigations or the provision of supporting evidence, they should not necessarily be held to a higher standard of proof merely because evaluating their authenticity may be a complex exercise. The TBA explained that, while the burden of proof lay with the Examining Division, provided it was satisfied that on the balance of probabilities the Internet disclosures constituted prior art then it was incumbent upon the appellant to prove otherwise. Accordingly, the TBA dismissed the appeal. The case is also of interest as another example of how appeal due dates are calculated when the Examining Division corrects a refusal decision. In this case the appellant filed a notice of appeal against the first decision and paid the appeal fee before the deadline, then requested correction of the decision. The corrected decision, still refusing the application, was then issued and at that point the appellant again filed a notice of appeal (against the corrected decision) and again paid the appeal fee. The appellant was then informed by letter that the first decision had been cancelled and the first appeal fee was refunded. However, the TBA held that the first decision could only have been cancelled by an interlocutory revision in accordance with Article 109(1) EPC 1973. As this had not occurred, the corrected decision was held to be null and void and the appeal due date remained that in respect of the first decision. Fortunately for the appellant, the first appeal and the accompanying fee had been received within the prescribed time limits and thus the appeal was admissible.

Legal Board of Appeal (LBA) and Technical Board of Appeal (TBA) decisions are available on the EPO website at https://www.epo.org/law-practice/case-law-appeals/recent.html and similarly decisions of the Enlarged Board of Appeal (EBA) can be downloaded from https://www.epo.org/law-practice/case-law-appeals/eba/number.html. A list of the matters pending before the Enlarged Board is included at https://www.epo.org/law-practice/case-law-appeals/eba/pending.html. Recent notices and press releases of the EPO are published at http://www.epo.org/service-support/updates.html and http://www.epo.org/news-issues/press/releases.html respectively, and recent issues of the Official Journal can be downloaded from https://www.epo.org/law-practice/legal-texts/official-journal.html This month’s contributors from Bristows were Craig Lumb, Peter Hoecherl, Simon Spink and Richard Pinckney.

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Oral proceedings – Article 15(2) of the Rules of Procedure of the Boards of Appeal T 0861/12: Verfahren zur Herstellung von Trocken-pulvern eines oder mehrerer Carotinoide / BASF SE TBA decision of 2 March 2016 Chairman: A. Lindner Members: G. Seufert and L. Bühler This German-language decision relates to an appeal by the opponent following the Opposition Division’s decision to maintain the patent in dispute. What is noteworthy about this case is that the professional representatives of the opponent requested an adjournment of the oral proceedings because they had to attend another oral hearing on the same day. Notably, the opponent had initially submitted a power of attorney which included five further representatives from the same law firm. After the Board of Appeal had indicated in a written communication that the request for fixing another date for the oral proceedings is not sufficiently substantiated, the opponent withdrew the initial power of attorney and submitted a new one in which only the representative prevented from attending the oral proceedings was listed. According to Article 15(2) of the Rules of Procedure of the Boards of Appeal of the European Patent Office (herein below “Rules of Procedure”) a change of date for oral proceedings may exceptionally be allowed in the Board’s discretion following receipt of a written and reasoned request made as far in advance of the appointed date as possible. When exercising the discretion given in Article 15(2) Rules of Procedure, the TBA took the Notice of the Vice-President of DirectorateGeneral 3 of the European Patent Office into account (published in the Official Journal, 2007, Special edition No. 3, page 115; herein below “Notice”) which specifies that a serious reason which justifies an exceptional change of date for oral proceedings is a previously notified summons to oral proceedings of the same party in other proceedings. However, point 2.3 of the Notice explicitly points out that every request for fixing another date for oral proceedings should contain a statement why another representative within the meaning of Articles 133(3) or 134 EPC cannot substitute the representative prevented from attending the oral proceedings. According to the standing jurisdiction of the TBA (see e.g. T 1011/09, T 1610/08 and T 699/06), this requires that reasons are substantiated as to why a change in representation is impossible or, at least unreasonably difficult. In the case underlying the decision, the opponent had not substantiated as to why a substitution of the representative was impossible or unreasonably difficult. The opponent merely put forward a general statement that only the representative prevented from attending the oral proceedings had a special bond of trust to the opponent as well as the legal and the special technical background knowledge relevant to the case. Volume 45, number 6

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However, the TBA did not consider such a plain statement to be a sufficient substantiation. Moreover, there were no relevant technical aspects to be discussed in the oral proceedings as the Board indicated in the summons that only the question of whether or not the requirements of Article 108 EPC and Rule 99 EPC are met will be decided upon. As regards the replacement of the initial power of attorney by a narrower one which only authorizes the representative prevented from attending the oral proceedings, the Board held that this course of action is contrary to the principle of good faith. As the opponent could not put forward a legal interest deserving protection for withdrawing the initial power of attorney and specifically appointing a representative of whom the opponent knows would be unable to attend the oral proceedings amounts to a misuse of the proceedings. In the Board’s view, such a course of action can only be interpreted as the intent to force the Board to cancel the oral proceedings and thereby unduly delay a decision.

Grounds for Review – Article 112a(2)(c) and (d) EPC R 0013/14: Polyethylene composition for injection moulding with improved stress crack / Borealis Technology Oy EBA decision of 15 January 2016 Chairman: W. van der Eijk Members: M. Tardo-Dino, A. Lindner, F. Blumer and W. Sekretaruk This was a petition for review by the applicant following the TBA’s decision of 8 April 2014 (T 1142/12) to dismiss the petitioner’s appeal against a decision of the Examining Division dated 29 December 2011. The Examining Dvision had previously refused European patent application No. 05021885.8 in a decision dated 8 December 2009. That decision was subsequently set aside by the TBA (decision T 933/10 of 25 January 2011) on the grounds that the Examining Division’s refusal to accede to a request to hold the oral proceedings in Munich rather than The Hague was not reasoned, which was in violation of Article 113 EPC. The Examining Division then issued a second decision on 29 December 2011 rejecting both the request to hold the oral proceedings in Munich and the request for the grant of a patent. The petition for review by the EBA was filed under Articles 112a(2)(c) and (d) EPC, and in connection with Rule 104(b) EPC on the basis that a fundamental violation of Article 113 EPC occurred when the TBA decided the appeal without properly dealing with all the requests relevant to the decision. The petitioner requested that decision T 1142/12 be set aside and the proceedings be reopened before the Boards of Appeal. On appeal, the TBA had stated that it did not have the JUNE 2016

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power to challenge the contested refusal of the request and it was not empowered to refer to the Enlarged Board a question in respect of the location of oral proceedings. The petitioner sought review of the Board’s decision on the basis that it had not even considered the case and had refused to decide any of the issues. The EBA was not persuaded by the petitioner’s interpretation of the terminology used in the TBA’s decision instead finding it was undeniable that the Board had i. heard the petitioner’s arguments on the relevant issue, and ii. decided on the requests relevant for the decision. The TBA had implicitly decided the petitioner’s request, even if its decision was not expressed with the usual and formal terminology. Whatever the terminology used, the fact remained that the request was rejected, i.e. a decision was made. This case provides a timely reminder of the general principle that the organisation of oral proceedings lies within the competence of the President of the EPO and cannot be reviewed by the Boards of Appeal.

Inventive step – Article 56 EPC T 1370/11: Extensible on-demand property system / Microsoft Technology Licensing, LLC. TBA decision of 11 March 2016 Chairman: W. Sekretaruk Members: M. Müller and G. Zucka This is a decision of the Technical Board of Appeal. In its decision, the Board rejected an appeal of the decision of the Examining Division to refuse to grant the application on the ground of lack of inventive step (Article 56 EPC). The Board found that the claimed invention did not have a genuine technical effect over the prior art. The invention of the application related to a method of managing “properties” of “objects” in software applications, where the value of one “first” property depends on the value of another “second” property. As part of the claimed solution, “expressions” defined a relationship between a first and a second property. Expressions were evaluated only upon request and the result cached. The principal issue to be determined by the Board was whether the alleged reduction in computing time by the claimed method was a technical problem solved by the claimed invention in comparison with the closest prior art. In the Board’s view, the argument that a computer program or computer-implemented method is inventive because it is faster than an earlier one is, on its own, insufficient to establish an inventive step. More specifically, according to the Board, the improved speed of a computer 42 CIPA JOURNAL

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program is not by itself a technical contribution to the art. According to the reasoning of the Board, for any given computer program, a less efficient one is either known or conceivable. As a consequence, a computer-implemented method cannot be found to show an inventive step for the sole reason that a slower computer-implemented method exists in the prior art. To be otherwise, according to the Board, would render the exclusion of computerimplemented methods under Article 52 EPC meaningless. The Board considered that for a computer program or computer-implemented method to be patentable it must have a further technical effect and solve a technical problem independently of its absolute or relative computing time. Only then, and only if the alleged increase in speed affects an established technical effect, can it be argued that the increase in speed contributes to a technical effect and thus to inventive step (T 641/00). The Board accepted that the claimed caching method was not known from the closest prior art but it found that it was obvious from first principles. Moreover, according to the Board, the claimed method of caching achieved, if anything, an increase in speed of an entirely abstract method and was insufficient to establish that the claimed computer-implement method solved a technical problem. The Board rejected the auxiliary request because it contained limitations which were merely particular choices a computer programmer might make when implementing the method according to the main request.

Entry into force of the European Union trade mark Regulation With the entry into force of Regulation No 2015/2424 amending the Community trade mark regulation on 23 March, OHIM became the European Union Intellectual Property Office (EUIPO), and the Community trade mark became the European Union trade mark. All online forms and most of the website has been adapted to reflect the changes introduced by the Regulation. Work is ongoing to adapt all the language versions of the website content. In the meantime, EUIPO strongly recommends its users to refer to its information section – https://euipo.europa.eu/ ohimportal/en/eu-trade-mark-regulation.

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TRADE MARKS

Trade marks Decisions of the CJ and GC Please note the referencing changes in this section of the report, which follow the implementation of EU Regulation 2015/2424 on 23 March 2016 and the resulting amendments to Regulation No 207/2009 on the Community Trade Mark. A European Union trade mark, formerly a Community Trade Mark or CTM, will be referred to as an EUTM. The renamed European Union Intellectual Property Office will be abbreviated as the EUIPO, save where the original case name refers to OHIM. The Regulation considered in the decisions shall be indicated in the left hand column of the table.

Ref no.

Application (and where applicable, earlier mark)

1e1

T-61/15

1&1 Internet AG v OHIM; Unoe Bank, SA 1 March 2016

– advertising, ordering systems, marketing and consultancy services (35) – telecommunications; consultancy, information and advisory services in the field of telecommunications (38) – design and development of computer software and hardware (42) – domain name services (45)

Reg. 207/2009 UNO E

– advertising and commercial administration (35) – telecommunications (38) – design and development of computers and software (42) – personal and social services; legal services (45) (EUTM and Spanish mark)

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The GC annulled the BoA’s decision that there was a likelihood of confusion between the marks under Article 8(1) (b). The BoA was incorrect to find that the non-professional members of the relevant public would have a normal level of attention in relation to telecommunication services in class 38. Both the professional and non-professional relevant public would have a heightened level of attention as a result of the technical, specialised nature and relatively high price of goods and services. The BoA was correct to find that the services at issue in classes 35, 38 and 42 were identical or highly similar, but was incorrect to find that the domain name services in class 45 were identical or highly similar to ‘legal services’ covered by the earlier word mark, as the nature and purpose of those services were inherently different. The GC upheld the finding of phonetic and visual similarity between the earlier figurative mark, which had an average distinctive character, and the mark applied for. The BoA had erred in its assessment of conceptual similarity, which the GC found to be weak. The GC held that there was no likelihood of confusion as the phonetic and conceptual similarities would be offset by the visual differences and the heightened degree of attention of the relevant Spanish public.

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Ref no.

Application (and where applicable, earlier mark)

CURODONT

T-53/15

Credentis AG v OHIM; Aldi Karlslunde K/S

– cleaning and polishing preparations for use in dental technology and dental practices; dentifrices, mouthwashes, cosmetics (3) – hygienic care for human beings (44)

10 March 2016 EURODONT

Reg. 207/2009

GC T-78/15

Mudhook Marketing, Inc. v OHIM

– mouth washes and dentifrices, not for medical purposes, in particular tooth pastes and mouth washes (3) (Danish national mark)

IPVANISH

– virtual private network (VPN) operating software (9) – providing virtual private network (VPN) services (38)

17 March 2016 Reg. 207/2009

TRADE MARKS

Comment

The GC upheld the BoA’s finding that there was a likelihood of confusion between the signs at issue pursuant to Article 8(1)(b). The BoA was correct to find the relevant Danish public was composed of average consumers with an average level of attention, as a result of the everyday nature of the goods at issue. The BoA had erred in finding that dentifrices and mouth washes were identical to cosmetics. The GC concluded these goods might be regarded as similar insofar as they were intended for daily bodily care. The GC held that the goods covered by the earlier mark were complementary to the services covered by the mark applied for as they shared the same overall purpose of hygiene and beauty care. The BoA was correct to find that the different first letter did not cancel out the high degree of visual and phonetic similarity between the marks. A conceptual comparison was not possible as neither mark had a specific meaning in Danish. The GC upheld the BoA’s finding that the mark was devoid of distinctive character under Article 7(1)(b). The BoA was correct to find that the meaning of the term ‘IP’ was ‘Internet Protocol’ and that ‘VANISH’ meant ‘to disappear’. The GC also accepted the meaning of ‘VPN’ as an Internet encryption and privacy tool. The BoA was therefore correct to find that, in view of the meaning of the word elements forming the mark applied for, the relevant public would understand the mark to refer to the purpose and, at the very least, a desirable quality of the goods and services at issue. The mark carried no fancifulness beyond its basic promotional or laudatory meaning to enable the relevant public to memorise it easily and instantly. The mark applied for was therefore incapable of performing the essential function of a trade mark.

The reported cases marked * can be found at http://www.bailii.org/databases.html#ew and the CJ and GC decisions can be found at http://curia.euro pa.eu/jcms/jcms/j_6/home Abbreviations used: A-G=Advocate General; BoA=Board of Appeal; GC=General Court; CJ=Court of Justice of the EU; CTM=Community Trade Mark; EUIPO=European Union Intellectual Property Office; EUTM=European Union trade mark; IPEC=Intellectual Property Enterprise Court This month’s contributors are Katharine Stephens, 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: Zoe Fuller, Henry Elliot, Mark Livsey, Toby Bond, Ahalya Nambiar, Will Smith, Rebekah Sellars, Georgina Hart, Sara Nielsen, Daisy Dier and George Khouri.

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Ref no.

Application (and where applicable, earlier mark)

SMART WATER

C-252/15 P

– beverages, namely water with dietary supplements (32)

Naazneen Investments Ltd v OHIM 17 March 2016 Reg. 207/2009

PICCOLOMINI

T-20/15

– alcoholic beverages (except beers) (33)

Henkell & Co. Sektkellerei KG v EUIPO; Ciacci Piccolomini d’Aragona di Bianchini Società Agricola 14 April 2016 Reg. 207/2009

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PICCOLO

– alcoholic beverages (except beers), in particular wines, still wines, sparkling wines, herb wines and vermouth, spirits (33)

TRADE MARKS

Comment The CJ dismissed an appeal against the GC’s decision to uphold the revocation of the mark under Article 15. Naazneen Investments Ltd (“Naazneen”) had failed to identify the specific arguments which it claimed were not addressed by the BoA and had not shown how the alleged failure to state reasons affected the exercise of its rights of appeal. Naazneen had misrepresented the GC’s judgment and attempted to revisit the GC’s assessment of facts and evidence, which was outside the jurisdiction of the CJ. The CJ held all grounds of appeal to be either inadmissible or unfounded. In relation to proper reasons for non-use, the CJ found that only obstacles that have a sufficiently direct relationship with a trade mark making its use impossible or unreasonable, and which arise independently of the will of the proprietor of that mark, may be described as ‘proper reasons’ for non-use of the mark. The CJ therefore rejected Naazneen’s submission that the existence of revocation proceedings constituted proper reasons for non-use. Whilst the revocation proceedings were not within the Naazneen’s power to prevent, those proceedings did not make it impossible or unreasonable for them to use the mark.

The GC upheld the BoA’s decision to reject the opposition on the grounds that Henkell & Co. Sektkellerei KG (“Henkell”) had failed to prove genuine use of the earlier mark under Article 42(2). The BoA had been correct to find that the term ‘Henkell’ was dominant on both the goods and packaging, as a result of its size and positioning and would therefore be seen as an indication of commercial origin. The term ‘PICCOLO’ was only a secondary, ancillary element used in association with other terms describing the qualities of the product and would be perceived by the public as a description of the size of the bottle alone. As the earlier mark had not been used in accordance with its essential function, the BoA was entitled to find that it had not been put to genuine use. This did not amount to the BoA ruling on the distinctive character of the earlier mark per se, and the GC rejected Henkell’s submission in this regard as unfounded.

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Application (and where applicable, earlier mark)

Ref no. GC T-8/15

Auyantepui Corp., SA v EUIPO; Magda Rose GmbH & Co. KG 12 April 2016 Reg. 207/2009

– leather and imitations of leather and goods made of these materials; animal skins, hides; trunks and travelling bags; umbrellas, parasols (18) – clothing, footwear, headgear (25) – retailing and wholesaling in shops and via global computer networks of goods of leather and imitations of leather of all kinds (35)

– goods made of leather and imitations of leather, not included in other classes; beach bags, purses, handbags and travelling bags, trunks and suitcases, cases, backpacks; umbrellas (18) – clothing for women and knitted goods (clothing); scarves, collar protectors, headgear for wear, belts, shoes, boots, socks, stockings, tights (25) GC T-326/14

Novomatic AG v EUIPO; Granini France 19 April 2016 Reg. 207/2009

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– hardware and software, in particular for casino and amusement arcade games, for gaming machines or games of chance via telecommunications networks and/or the Internet (9) – casino fittings, namely roulette tables, roulette wheels; casino games with or without prize payouts, gaming machines and games machines, in

JUNE 2016

Comment The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under Article 8(1)(b). Auyantepui Corp SA did not dispute the BoA’s finding of conceptual and phonetic similarity between the marks at issue nor its assessment of similarity of the relevant goods, but did dispute the BoA’s assessment of visually similarity. The GC held that the fact that ‘Jones’ was a widespread English surname did not mean that the relevant public in the EU would recognise the word in this way and, as such, this fact was irrelevant to the assessment of distinctive character. The GC dismissed Auyantepui’s submission that ‘Jones’ had weak distinctive character as a result. The BoA was correct to conclude that ‘mr’ would be understood to naturally precede a surname as an abbreviation of ‘mister’ and this was unlikely to leave a lasting impression in consumers’ minds. The GC endorsed the BoA’s finding that the stylisation of the word ‘Jones’ and the graphic representation of the letter ‘o’ were insufficient to outweigh the visual similarity stemming from the presence of the element ‘Jones’ in the marks at issue.

The GC dismissed an appeal against the BoA’s decision to uphold an opposition to the registration of the mark applied for pursuant to Article 8(1)(b). The GC endorsed the BoA’s analysis of ‘goods’ as activities engaged in for amusement by adults and agreed that there was no reason to limit the scope of the terms to be solely aimed at children. In light of this, the BoA had been correct to find that ‘hardware and software goods’ were complementary to ‘games’, being essential to the functioning of the electronic or online games of choice covered by the earlier mark. The BoA had erred in finding that ‘casino

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Ref no.

Application (and where applicable, earlier mark) particular for commercial use in casinos and amusement arcades, or games of chance, with or without prize payouts, via the Internet and via telecommunications networks, games of chance (28)

TRADE MARKS

Comment fittings’ were identical to ‘games’, as they had different purposes. The GC nevertheless held that those goods were similar, on account of their complementarity and the fact that they are both used in casinos and amusement arcades. The GC endorsed the BoA’s assessment of the phonetic and conceptual similarity of the marks at issue as average. The marks had a low degree of visual similarity as, in spite of their differences, they shared the word element ‘joker’ which was not devoid of distinctive character and was not capable of being descriptive of games of chance to the relevant French public.

– games and toys (28) – entertainment; entertainment by means of radio or television; services of organisation of lotteries or gambling; organising of competitions for entertainment (41) (French registration)

GC T-89/15

Niagara Bottling LLC v EUIPO 27 April 2016 Reg. 207/2009

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NIAGARA

– bottled drinking water; bottled water; distilled drinking water; drinking water; drinking water with vitamins; drinking waters; flavored bottled water, flavored enhanced water; flavored waters; purified bottled drinking water; spring water; still water; table water; water beverages (32)

The GC upheld the BoA’s decision that the mark was descriptive and devoid of distinctive character pursuant to Articles 7(1)(b) and (c). The word ‘NIAGARA’ was a geographical term referring to the River Niagara and, above all, to the waterfalls of the same name known to the relevant general public of the EU. The BoA was correct to state that the most important characteristic of a waterfall was the abundance of water and that despite the varied associations which may be evoked by the Niagara Falls, water remained an essential common feature. The relevant public would perceive that the goods concerned, all being water-based drinks with ‘water’ in their name, originated from a geographical area in which the Niagara Falls were situated. The existence of this link indicated that the mark applied for was capable of designating the geographical origin of the goods and was therefore descriptive within the meaning of Article 7(1)(c). As such, an examination of arguments relating to Article 7(1)(b) was not necessary.

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Ref no.

Application (and where applicable, earlier mark)

GC T-21/15

Franmax UAB v EUIPO; Ehrmann AG Oberschönegg im Allgäu 26 April 2016 Reg. 207/2009

– preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and other milk products (29) – coffee, cocoa and artificial coffee; rice, tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionary; ices; sugar, honey, treacle; spices; ice (30)

TRADE MARKS

Comment The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to Article 8(1)(b). The BoA was correct to find that ‘coffee’, ‘cocoa’ and ‘artificial coffee’ in class 30 covered by the mark applied for were complimentary and therefore similar to ‘milk products’ in class 29 covered by the earlier mark. ‘Preparations made from cereals’ were similar to a low degree. The BoA was also correct to find that ‘compotes’ in class 29 and ‘pastry and confectionary’ in class 30 were similar to ‘milk products’ in the earlier mark as they shared the same purpose, method of use, distribution channels, target public and were in competition with or were complementary to each other. The BoA was correct to find that, despite some differences, the marks showed an average degree of visual similarity and were conceptually highly similar insofar as they related to the concept of a moving dinosaur giving the impression of a friendly, happy creature. The phonetic comparison of the marks was irrelevant. A likelihood of confusion existed in so far as the mark applied for covered coffee, cocoa, artificial coffee, preparations made from cereals, compotes, pastry and confectionary.

– milk and milk products, yoghurt, butter, cream and whey products, non-alcoholic drinks with a predominant milk fraction, curd and half-fat milk products, desserts consisting essentially of milk and/or cream, soya products and substitute products for milk (29) – ice cream (30)

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TRADE MARKS

Trade marks EUIPO not bound by Belgian court in trade mark proceedings Apple and Pear Australia Ltd and Star Fruits Diffusion v EUIPO A-G Bobek for the CJ; C-226/15 P 13 April 2016 A-G Bobek has opined on the extent to which the EUIPO is bound in opposition proceedings by a final judgment of a European Union trade mark court following an action for infringement of an earlier registered EUTM, noting that res judicata could not be invoked unless the proceedings at issue were identical. Apple and Pear Australia Ltd and Star Fruits Diffusion (“APA and SFD”) were the co-holders of one verbal and two figurative signs for Pink Lady apples. Carolus C. BVBA (“Carolus”) sought an EUTM registration for the verbal sign ‘English Pink’ for their proprietary apple variety, for which they already held a national Benelux trade mark. APA and SFD opposed the application pursuant to Article 8(1)(b) and 8(5) and brought an infringement action before the Brussels Commercial Court in its capacity as an EUTM Court, seeking the annulment of Carolus’ national Benelux trade mark on the basis of a likelihood of confusion with the earlier verbal EUTM for ‘Pink Lady’. The OD dismissed the opposition on the basis that there was no likelihood of confusion between the marks at issue but, in a later judgment, the BCC ruled that a likelihood of confusion did exist, annulling the national Benelux trade mark and ordering Carolus to cease use and pay damages as a result. The BoA dismissed the appeal against the OD’s decision without any reference to the judgment of the BCC. On appeal to the GC, APA and SFD sought a decision upholding the opposition or otherwise annulling the decision of the BoA. The GC held that the decision of the BCC could not be considered res judicata with regard to the later BoA decision, as the cause of action raised in the proceedings before the EUIPO and the BCC were not identical. The BoA was not therefore bound by the BCC’s judgment in the infringement proceedings. The GC nevertheless annulled the BoA’s decision on the basis that it had failed to take the decision of the BCC into account and had not assessed the potential impact of the judgment on the outcome of the opposition proceedings. The GC refused to alter the BoA decision as it was not in a position to determine the decision to be taken on the basis of fact and law. APA and SFD appealed to the CJ. A-G Bobek noted that for res judicata to apply, pursuant to Article 56(3) and Article 100(2), there must be identity between the proceedings at issue in so far as they shared the same subject matter, cause of action and parties. The A-G Volume 45, number 6

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endorsed the GC’s finding that the infringement action before the BCC and the EUIPO opposition proceedings were not identical – the former sought the annulment of the national Benelux trade mark and an order to prevent Carolus using that mark throughout the European Union whilst the latter dealt with the opposition to the registration of the EUTM for ‘English Pink’. As a result, there was no identity of subjectmatter or cause of action. The A-G opined that res judicata could therefore not be triggered. The A-G concluded that as the BoA had failed to take into account the judgment of the BCC, which would have been of significance in the opposition proceedings, the GC should not substitute its assessment for the BoA’s. The A-G proposed that the CJ dismissed the appeal in its entirety and recommended that the case be remitted back to the BoA.

Permission refused to delete a mark from a series Cadbury UK Ltd v The Comptroller General of Patent Designs and Trade Marks; Société des Produits Nestlé S.A.* John Baldwin QC; [2016] EWHC 796 (Ch) 18 April 2016 John Baldwin QC (sitting as a Deputy Judge) dismissed Cadbury’s appeal from a decision of the hearing officer whereby he refused Cadbury’s request to delete a mark from a series of trade marks. The mark appeared on the register as shown below, along with the following description: “The mark consists of the colour purple as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods. The mark consists of the colour purple (Pantone 2685C) as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods”:

Pantone 2685C Following the decision of the CA in Société des Produits Nestlé S.A. v Cadbury UK Ltd [2013] EWCA Civ 1174 (reported in November [2013] CIPA 665) in relation to a mark with the same description but a different number, Cadbury applied to JUNE 2016

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delete a mark from a series of trade marks as permitted by section 41 and the rules made thereunder. As the CA had held that the mark in suit was not suitable for registration as a trade mark, Cadbury sought to head off a potential validity attack on the series mark in issue by deleting the expression “or being the predominant colour applied to the whole visible surface” from the description of the mark, thereby limiting the mark to a sign consisting of the colour purple applied to the whole visible surface of the packaging of the goods. The Deputy Judge rejected Cadbury’s argument that the description of the mark as registered was in fact a description of two marks, one consisting of the colour purple applied to the whole visible surface of the packaging and the other of which consisted of the colour purple being the predominant colour applied to the whole visible surface of the packaging. He was of the view that in the CA’s judgment, Sir John Mummery was referring to the mark as a whole; he was not saying that there were two marks, one of which was acceptable as a sign and one of which was not.

BMW marks infringed by unauthorised BMW dealer Bayerische Motoren Werke AG v Technosport London Ltd & Anr* Judge Hacon; [2016] EWHC 797 (IPEC) 13 April 2016 Judge Hacon found that Technosport had infringed BMW’s roundel and ‘M’ logo trade marks and was liable for passing off in respect of its use of those signs. However, it was found not to have infringed a mark consisting of the form of letters ‘BMW’. Technosport was a company dealing in the repair and maintenance of cars, mostly BMWs. In the course of its business it used signs identical to BMW’s following trade

TRADE MARKS • COPYRIGHT

M Logo was displayed on Technosport’s website, the BMW mark was used on a shirt worn by the company director while he carried out the company’s business and in the company’s Twitter handle ‘@TechnosportBMW’. The Judge found that the average consumer would believe that the Roundel and M Logo would only be displayed on and in the premises of an undertaking which maintained and repaired vehicles if that undertaking was authorised by BMW, which Technosport was not. Even if that was not the case, the average consumer would at least wonder whether Technosport was an authorised dealer. Therefore, the Roundel mark was infringed under Articles 9(1)(a) and 9(1)(c), the M Logo mark was infringed under Article 9(1)(a), and another sign similar to the M Logo which was used on the Technosport website was found to infringe pursuant to Article 9(1)(b). However, Technosport’s use of the BMW sign was not infringing because it did not convey to the average consumer any implication of Technosport being an authorised dealer. The Judge rejected Technosport’s argument that BMW had renounced its right to oppose its use of the trade marks by making no complaint when individuals from BMW and from authorised dealers had visited Technosport’s premises. He also rejected Technosport’s defences under Articles 12(b) and (c). It was agreed that Technosport’s liability for passing off stood or fell with its liability for trade mark infringement. The Judge therefore made a finding of passing off. However, he noted that, had he found that the message conveyed by Technosport’s use of the Roundel and M Logo signs did no more than render the average consumer unable to determine whether there was an economic link between Technosport and BMW, as opposed to causing the average consumer to take the view that there was such a link, he would have concluded that there had been no passing off.

marks: (i) an EUTM for ‘BMW’; (ii) an EUTM for a roundel device mark as shown below, and (iii) an international registration for the ‘M’ logo as shown below: the Roundel’ the ‘M Logo’

Tobias McFadden v Sony Music Entertainment Germany GmbH A-G Szpunar for CJ; C-484/14 16 March 2016

Each of the trade marks were registered in respect of, among other things, the maintenance and repair of cars, motors, engines and parts of these goods in class 37. Technosport had displayed the Roundel on a facia board on the exterior of its premises, in the interior (on a banner displayed in the reception area), on a van used to conduct its business, and on business cards distributed to customers. The

Following a request from the Munich Regional Court for a preliminary ruling, A-G Szpunar has opined on various provisions of the Directive 2000/31/EC (the “E-Commerce Directive”) as regards the definition of ‘information society services’, ‘service provider’ under Article 2(a) and (b) respectively, and the ‘mere conduit’ defence available pursuant to Article 12(1).

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Mr McFadden owned an Internet connection accessed via a Wi-Fi network, via which a musical work was unlawfully offered for download. Sony held the rights in that musical work and sent a formal notice to Mr McFadden regarding the infringement. Mr McFadden deliberately did not password protect the network so as to give the public access to the Internet. He asserted that he did not commit the infringement but did not rule out the possibility that it was committed by a user of his network. Mr McFadden sought a negative declaration following the formal notice and Sony counterclaimed, seeking an injunction and damages. The Munich Regional Court upheld the counterclaim and granted an injunction against Mr McFadden on the grounds of his direct liability for the infringement at issue. Mr McFadden appealed, and submitted that he could not be held liable by reason of the German law which transposed Article 12(1). The Munich Regional Court referred several questions to the CJ, namely whether a professional person who, in the course of business, operates a free public Wi-Fi network, falls within the scope of Article 12(1). If the CJ confirmed this interpretation, the Munich Regional Court asked the CJ to interpret the limitation of liability of intermediary service providers laid down in that provision. The A-G opined that Article 2(a) and (b) and Article 12(1) should be interpreted as applying to a person who, as an adjunct to their principal economic activity, operates a WiFi network with an Internet connection that is accessible to the public free of charge. The A-G considered the provision of Internet access was economic in nature, and therefore fulfilled the concept of ‘services’ under Article 2(a) even if it was ancillary to the principal activity of an individual and was offered free of charge. As regards the second question, A-G Szpunar considered that Article 12(1) precluded an order against an intermediary service provider for damages, costs of giving formal notice of the infringement or other costs relating to copyright infringements committed by third parties as a result of information transmitted via the service. Article 12(1) and (3) did not preclude the granting of an injunction against a provider of mere conduit services, non-compliance with which was punishable by a fine. Any such injunction, however, was to be effective, proportionate and dissuasive (to comply with Article 3 of the IP Enforcement Directive 2004/45/EC), must aim to bring a specific infringement to an end or prevent a specific infringement but must not entail an obligation to monitor. The injunction would also need to balance the applicable fundamental rights by Articles 11, 16 and 17(2) of the Charter of Fundamental Rights of the European Union. Article 12(1) and 15(1) did, however, preclude an injunction being granted against a person who operates a publically available local wireless network with Internet access as an adjunct to a principal economic activity, where compliance Volume 45, number 6

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with the injunction was only possible by: (1) terminating the Internet connection; (2) password-protecting the Internet connection; or (3) examining all communications transmitted through it to ascertain whether copyright-protected work was being unlawfully transmitted.

Hyperlinks to unauthorised content on a third party site not a communication to the public GS Media BV v Sanoma Media Netherlands BV & Others (“Sanoma”) A-G Wathelet for the CJ; C-160/15 7 April 2016 A-G Wathelet has given his opinion on questions referred to the CJ from the Supreme Court of the Netherlands asking whether hyperlinks to copyright works which are freely accessible online without the consent of the right holder constitutes a communication to the public for the purposes of Article 3(1) of Directive 2001/29/EC (the “Information Society Directive”). Sanoma commissioned a photoshoot of Dutch reality TV star Britt Dekker for Playboy magazine. GS Media posted an article on its website geenStijl.nl which reported that the photographs of Ms Dekker had been ‘leaked’ and contained a clickable hyperlink to the Australian data-storage website filefactory.com which allowed users to download a zip file containing the photographs. GS Media refused Sanoma’s request to remove the hyperlink and subsequently posted two further articles containing links to other Internet locations where the photographs could be accessed. Sanoma brought proceedings for copyright infringement against GS Media. On appeal, the Supreme Court of the Netherlands asked the CJ: 1. whether providing a hyperlink to material made available without the copyright holder’s consent on a third party website accessible to the general public constituted a communication to the public under Article 3(1); and 2. whether, in making that assessment, knowledge that the copyright holder did not consent to the presence of the work on the third party website and the extent to which the hyperlink facilitated access to the work should be taken into account.

No communication to the public A-G Wathelet first noted that the operative part of the CJ’s judgment in Svensson (C-466/12, reported in March [2014] CIPA 184) did not refer to the issue of whether the copyright holder gave consent to the original making available of the protected work. He also noted that in BestWater International (C-348/13, unreported) the CJ had applied its reasoning in Svensson to a situation where the initial communication to the JUNE 2016

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public was not authorised by the copyright holder, albeit the court was not specifically asked to consider the effect of the absence of authorisation. A-G Wathelet summarised that a communication to the public under Article 3(1) required two elements; (i) an act of communication of a copyright work; and (ii) the communication of that work to the public. In relation to the first element, A-G Wathelet concluded that the provision of a hyperlink had to be an intervention which was indispensable to the making available of that work in order for it to be considered an act of communication. A hyperlink to a work hosted on a third party site was not an indispensable intervention in the making available of that work if the work was already freely available to Internet users visiting that site. Such a hyperlink would not therefore be an act of communication. GS Media’s knowledge in relation to the right holder’s consent (or lack thereof) and motives for linking to the work were not relevant to this analysis. In relation to the second element, A-G Wathelet concluded that the requirement formulated in Svensson that a communication of a work to the public required communication to ‘a new public’ was not relevant in the situation where the copyright holder had not authorised the initial communication. Even if the ‘new public’ requirement from Svensson were to apply A-G Wathelet concluded that the key issue was whether the publication of the hyperlink was indispensable to the work being made available to a new public. The publication of a hyperlink would be indispensable to the work being made available to a new public if it allowed users to circumvent restrictions on access the work (e.g. a paywall on the third party site). It was not indispensable where the third party site already made the content freely available without restriction.

Damages CJEU rules on the interpretation of Article 13(1) of the IP Enforcement Directive

Parts of the work were reproduced without authorisation in a production by Mandarina and Mediaset, via its television channel Telecino. Mr Liffers brought an infringment action before the Commercial Court of Madrid against Mandarina and Mediaset, claiming damages of €6,740 for the infringement of his rights of exploitation, assessed on the basis of hypothetical royalties that would have been due to him if Mandarina and Mediaset had requested his authorisation to use his work under Article 140(2)(b) of the Law on Intellectual Property in Spain. Mr Liffers also claimed €10,000 for moral prejudice suffered, which was not referred to as a separately available remedy under Spanish law. On appeal, the Madrid Provincial Court set aside the compensation for the moral prejudice on the basis that, under Spanish law, Mr Liffers was not entitled to this relief in addition to the hypothetical royalties sought. Mr Liffers appealed to the Supreme Court, alleging that compensation for moral prejudice should be awarded in all cases, irrespective of whether an applicant had used the method for calculating loss under Article 140(2)(b). Article 140(2) intended to transpose Article 13(1) of the IP Enforcement Directive into Spanish law. The Supreme Court referred a question to the CJ and asked whether Article 13(1) prevented a party who claimed pecuniary loss for IP infringement based on the royalties or fees that would be due if the infringer had requested authorisation from also claiming damages for the moral prejudice suffered. The CJ held that Article 13(1) did not preclude a party injured by an intellectual property infringement to claim material damage calculated on the basis of the royalties that would be due in addition to compensation for the moral prejudice suffered. The objective of the IP Enforcement Directive was to provide a high level of protection for IP rights and ensure that the damages paid to a rights-holder compensated the actual prejudice suffered, which included any moral prejudice. The calculation of hypothetical royalties covered only the material damage suffered and, to provide compensation in full, compensation for any moral prejudice suffered may also be sought.

Christian Liffers v Producciones Mandarina SL, Mediaset España Comunicación SA GC; Case C-99/15; 17 March 2016 Following a preliminary ruling from the Spanish Supreme Court, the CJ held that a party is entitled to claim compensation for moral prejudice suffered in addition to damages for loss of royalties or hypothetical fees under Article 13(1) of the IP Enforcement Directive. Mr Liffers directed, wrote and produced the audiovisual work “Dos patrias, Cuba y la noche” which retold the personal stories of homosexual and transsexual inhabitants of Cuba. 52 CIPA JOURNAL

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ITMA Summer Reception including new President’s address 5 July 2016, 18.30 – 20.30 Institute of Directors, 116 Pall Mall, London SW1Y 5ED www.itma.org.uk/calendar/event/view?id=129

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INSTITUTE EVENTS

The Scottish Meeting Report of the Scottish Meeting and OGM on 14 April 2016, National Galleries of Scotland, Edinburgh

here were no cow bells this year at the Annual Scottish AGM and CPD meeting held in Edinburgh’s National Galleries’ Hawthornden Lecture Theatre, but none were needed. Our outgoing President, Andrea, presided with aplomb, everyone kept to time and, due to the wonderful acoustics and managed PA system, our speakers could be heard wonderfully clearly. At Andrea’s behest, the pan-professional initiative ‘IP Inclusive’ to support and develop diversity in the IP professions was mentioned by each speaker several times to bring awareness and enlightenment of this noble cause to the Scottish CIPA masses. The speakers spoke on a range of subjects from good practice and developing cooperative relations with the IPO, to a detailed look at some UPC provisions and acknowledgement of the advantages, even for UK-based EP (UK) only litigants, of the UPC itself.

Portfolio strategy for start-ups Starting off, CIPA past President Catriona Hammer gave a thorough overview on Portfolio Strategy for Start-Ups, Spin Outs and Other Small Businesses outlining many of the basic, relatively easy to achieve, yet frequently ignored, steps that SMEs should follow when preparing for investment or deals. Our clients find it hard to take such points on board. Catriona’s overview of persuasive language and potential pressure points for discussion with clients was a welcome reminder. One of the biggest mistakes SMEs make is forgetting the importance of trade secrets, design, and copyright alongside patents and trade marks. And that trade secrets must be kept secret. Catriona explained that IP strategy should complement the business plan and, if intending to sell the company or asset, it may be better to have strong, narrow protection than broader protection which falls at the first hurdle. Is exclusivity necessary? It may be important to consider what a buyer or investor is looking for. It is always important for buyers and investors not to be buying into an infringement suit. It is important to ensure that IP advisors understand the current and ongoing business plans. Indeed, it is important that the whole team are also aware, so that they can give tailored advice. What are investors looking for? Investors want to see some thought in IP strategy, e.g. a rational strategy using a range of IP rights (registered and unregistered). Filing and forgetting is not a good Volume 45, number 6

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strategy. Try to ask questions about what the IP is intended for. Do not be afraid of asking the question about dropping countries even if only “because it is expensive in country Y”. Do not simply ask the technical person, ask for the questions to be posed to marketing and commercial staff too. Having a professional IP advisor is a good first step and a rational thought process behind the IP strategy is a good second step. Next, investors may look at chain of title so, before seeking a significant investment, it is worthwhile taking the appropriate steps to put this right if necessary. For example, being up front about title e.g. “there is a problem and we are sorting it” is a better approach because the investor will spot it. Indeed, otherwise the investor may reduce the consideration on offer, and it could even be a deal breaker. If your answers are honest and the situation ‘in hand’ then that is more compelling. Fourthly, investors want some thought about freedomto-operate (FTO) and, though they will not expect a full global FTO, they will require evidence that, to the appropriate extent, FTO has been considered. Most large companies have a policy not to infringe valid third party IP. “We have not been sued” is not a valid FTO strategy, as the SME has only small pockets so is probably not worth pursuing. When assessing for FTO, focus on key features of products, services and development projects; it does not need to be a heavy process. When managing a portfolio or presenting this to investors, it is a good idea to provide active evidence for: • • • •

•

a pipeline of invention disclosures and filings; a process for identifying new IP; a process for dropping filings no longer of interest; a process for considering a pipeline of protection in nature, scope and territories that is appropriate for the product pipeline (e.g. UM in CN and DE); consideration of trade secrets, for example an eight-step method claim would be very difficult to enforce (narrow and difficult) and so might have been better protected as a trade secret; and existence of sensible precautions to identify and keep confidential information and trade secrets safe.

Indeed, if during acquisition by a large company key people wish to leave, the large company would want to be assured that the IP JUNE 2016

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generated by them has been properly captured by the SME beforehand. This can be a red flag issue. Sometimes investors will put in place agreements with individuals at the SME. Regarding chain of title, it is important to understand what is owned and what is licensed. A university owning or licensing IP is not toxic to an agreement but lack of clarity might be (e.g. if the SME does not know where the rights lie). Another issue that might occur is if an agreement, a licence for example, is ‘non-transferable’. If IP is not owned by the correct entity but it could be made so, expect the requirement for it to be done to be put in the agreement, or an agreement to cooperate put in place and an amount discounted to take care of this. It is important that the SME has been complying with IP ownership provisions, to have employee IP clauses / agreements and to comply with any invention remuneration laws. Make sure the supply chain is organised e.g. that NDAs with the suppliers exist and are not exceeded so ownership is clear and that the SME complies with its obligations under licences of third party IP. Having said that, IP is not usually a deal breaker, but it can have a huge effect on the value of the deal. In summary, most mergers and acquisitions fail, not because of IP, but because of culture. SMEs are usually advised to have a diverse portfolio tailored to their business model and to be aware of defects and how to correct these. As patent attorneys we can add value in this regard and are uniquely placed amongst IP professions to do so. Andrea thanked Catriona and summarised that larger investors will not expect perfection but for every imperfection there will be a reduction in price.

IP insurance Next came David Bloom of Safeguard IP on Protecting Your Investment in IP. IP insurance is a more stable, secure market now, with current insurers (mostly Lloyds syndicates) in it for the long term. Indeed insurers seem more willing to pay out on claims, although, insurers do want an indication of success before commencing an action. David also outlined that insurers are willing to use you as the advisor and assessor of your client’s case, rather than their own IP advisors. Recently, IP litigation has surged in the UK (not counting IPEC) and it can be very expensive. There is a huge amount of IP being generated by business and that may be why businesses are bumping up against each other. Conditional fee arrangements (CFE) or post-event insurance is difficult to obtain. How do the policies work? There is an annual premium. If a qualifying claim arises, the policy may cover the entire cost of the litigation (including the other side’s costs). Enforcement – ensuring the right. Defence – ensuring the product (can be sold). What do losses cover? Legal costs. Can cover damages. Contractual indemnities (e.g. if licensing to large company and need indemnities). IP contractual disputes. Loss of profit, if right revoked. Cost of recalling infringing products. Reputational damage (e.g. cost of PR, cost to limit damage). 54 CIPA JOURNAL

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Each client builds their own policy: which right; which amount of cover; geographical scope. How much does the cover cost? A rough annual cost is likely to be 1% to 3% of the sum insured e.g. £500,000 of sum insured might cost between £5,000 and £15,000 per annum plus excess and co-insurance. Co-insurance is to give the ‘insured’ some ‘skin in the game’ whereby 5% of every invoice will be the responsibility of the insured (to ensure the insured feel every invoice). In the US, the winner does not recover costs, so it is an expensive place to be insured. What is in the small print? If a claim arises, the client has to seek an opinion or likelihood of success and, depending on the insurer and the policy, if it is a ‘reasonable’ or ‘good’ prospect of success then the claim is likely to be accepted. Pre-existing situations will not be accepted and the insurers are likely to follow the legal adviser’s advice regarding settlement. What are the benefits of IP insurance? • allows decisive legal action when necessary; • increases the values of the rights insured – as investors, lenders, and licensors know funds are available; • allows accurate budgeting; • acts as a deterrent / encourages settlement. What is driving demand? New product launches. Insuring gaps in FTO. Fast-growing sales (attracting trolls or competitors). Contractual obligations. Litigation amongst competitors (nervous about being next on the list). Conclusions: The IP insurance market is developing rapidly. Prices are falling and availability improving. If concerned about IP litigation, before the event insurance is the best way to mitigate risk. The three or four insurers who offer defence insurance for products, do not tend to ask for an FTO beforehand because the insurers tend to use their own ‘black box’ assessment of the risk, although any FTO previously undertaken would have to be disclosed. Only a general description of a product is required. The premiums are revised every year, even during the patent pending stage, with only a small reduction in premium for pending patents. Is the best time to apply for insurance on application or on grant? David explained that this depends on the commercialisation strategy, if early, apply for insurance early. The insured’s advisor can usually provide the opinion and the insurer will pay out on the claim if it can be shown that the claim is winnable i.e. ‘reasonable’ or ‘good’ prospects of success.

Up and UPC Next, Jane Lambert, of 4-5 Gray’s Inn Square, spoke on Preparing for the Unitary Patent (UP) and the Unified Patent Court (UPC) and introduced the UPC Agreement, jurisdiction, structure, substantive law and procedure before looking at that very interesting question on implementation including the possibility of Brexit. www.cipa.org.uk

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As there seems to be a correlation with patenting and innovation and, since the EU lagged behind the US and Japan in patenting, various UK reports (e.g. Hargreaves) have recommended the UK government support the development of an EU patent system as soon as possible. Jane explained the UP and UPC are an example of enhanced cooperation in the EU (the only previous example being in family law). At present there is dual statutory instrument in hand that needs political will to be signed and deposited; we are very close. The UPC is a court for settlements relating to EP patents and applications and EP patents with unitary effect. It is not an EU institution, nor a national court, but rather a ‘hybrid’ – a selfcontained legal system. The court will be a comprehensive freestanding structure. The UP is a hybrid right covering the territories of the contracting states. The two regulations 1257/2012 (18 articles) and 1260/2012 are quite modest in size and the Agreement on the UPC is more substantial. The UPC Agreement has now been signed by all except Spain, Croatia and Poland. It has 89 articles. The schedule at the end addresses distribution between various courts. It is important to understand the Agreement when figuring out how the UPC will work.

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Currently nine states have agreed. France has ratified, Germany has published draft legislation and the UK has an SI in hand. Jane thought it would be sensible for the UK to ratify the UP/UPC to enable it to go ahead even if a Brexit occurs later, since the Hargreaves Report said having the UP/UPC is in the interest of UK businesses. UPC will apply to: UP; SPCs on UPs; classic bundle EPs, not lapsed; and EP applications. Opt-outs are available for classic bundle EPs and EP applications. The definition of infringement is not quite the same as section 60(1) Patents Act 1977 and seems broader. Judges may sit in a panel of three or seemingly, at the agreement of the parties, a single legally qualified judge can be used. So, on the one hand, this will be a familiar system to us. However, there are 382 rules in the 18th Draft of the Rules of Procedure (from the Preparatory Committee), significantly more than in the English procedure at least. However, the UPC is bound to deal proportionately according to the importance and complexity of the case, therefore, there may be discretion in their detailed application in practice. Considering the differing approaches between the inquisitorial Continental approach and the adversarial English and Scottish approach, the UPC may well be a little of both. There will be a threestage process:

Gala Dinner – 125th Anniversary of the Charter Thursday, 14 July 2016 18.30-23.30pm Rosewood London, 252 High Holborn, WC1V 7EN Guest of honour: Lord Neuberger, President of the Supreme Court After dinner speaker: Robin Ince Please note – Tables of ten may be booked at the reduced rate of £850+VAT. An additional guest can also added to your booking at the Member rate. Music until late with CIPA’s very own house band The Black IPs (plus special guests). Please contact cpd@cipa.org.uk (do not use the online booking facility). Price: Members £114 The Chartered Institute of Patent Attorneys

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1. a written procedure, broadly similar to that we are used to; 2. an interim procedure which will include scope for mediation and arbitration; and 3. an oral procedure. There is no scope for disclosure and much will depend on what the judge will let through. Finishing, Jane explained that money used in litigation can be a waste and the procedure in the UP/UPC may well be shorter and more cost effective, especially for SMEs.

Finally, Eleanor Wade from the IPO, finished with a smörgåsbord of updates from the IPO. Work at the IPO is not being processed as quickly as the IPO would like. The IPO is two-thirds of the way through a recruitment drive. The existing 250 examiners are being supplemented by 150 new examiners, with 50 to go, but there is a two-year training programme. In around 6-18 months’ time this recruitment drive should start to show as a reduction in the backlog. The IPO website and content has been moved to “.gov.uk” and searching is now not very intuitive but a drop-down menu allows you to limit to IPO entries. There is a new searchable version of the Manual of Patent Practice (MOPP) as of 1 October 2015 and, if you search this version, you get relevant MOPP pages. Also in the new MOPP is a section on changes and all of the pages can now be printed off. Eleanor noted that online design applications are now possible. Eleanor introduced View Patent Cases. This is a secure version of IPSUM. It will use a smart-card system and will include prepublication documents and notifications. This is being trialled at the moment. If you want to join the trial, please contact arthur.west@ipo. gov.uk Eleanor asked for and offered help when working with IPO examiners, pointing to the IPO’s Code of Conduct and explaining the aim is to get through cases with fewer interactions. The examiner’s role is to implement the Patents Act 1977 using MOPP case law and Code of Practice. The IPO want to help! Subject to the caveat noted by the present author that the audience did not agree with all of Eleanor’s suggestions (often for very good reasons), Eleanor suggested it would be helpful if we could address the following: Abstract: Examiners generally redraft or amend the abstract as a search tool. It is always helpful if your abstract is well drafted.Repeating claim 1 is not helpful. It is a good way of telling the examiner what the application is about. Specification: Plain English is good; avoid application numbers in the specification, use publication numbers instead. Statements of Invention: Short form may be useful. Final Paragraphs: Long ‘boiler plate’ clauses are not helpful. We want to focus on the important bits, make it easy for us!

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Is the application clear? We all want to get a good, granted patent out of it. If things are getting fractious, pick up the telephone and have a chat. • • • •

Make claims concise (100+claims is not!). Multiple independent overlapping claims are very hard to search. ‘Means for’, what is ‘means’? Broad and speculative claims can result in “these search results are examples of many”.

Claim Construction: Can you understand it / what does it mean?

IPO update

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Method Steps: are these all there (method claims can be difficult to search). Plurality: Do not file two form 9s, file two applications. Further searches can be transferred to divisionals. File divisionals earlier than last three months – give the IPO a ring and let them know it is coming. Windsurfing / Pozzoli – this is IPO’s approach and it can be useful to explain inventive step in the application. Amendments: Marked up copies appreciated. Explanations of why the amendments have been made are very helpful. Where support found. The IPO is always available to discuss an amendment. Added Matter – do not add it! Divisionals: Only foreshadow a divisional if you really intend to file one. If you do not intend to file a divisional then do not foreshadow it. Excluded Matter: the IPO follows UK law on excluded matter so please structure arguments that way. Some final points, search opinions may be issued, if you do not respond, then the IPO will re-issue it as first exam. Eleanor reminded us that we can amend claims after the search, and early responses are welcome. Please use the ‘as of right’ extension before phoning to ask for a discretionary extension. Since the rules changed you can only get a discretionary extension after an ‘as of right’ extension. Eleanor suggested we bear in mind ‘acceleration’ (for good reasons) or the green channel. The IPO is always happy to help and discuss what needs to be done but for detailed discussions it might be best to schedule a telephone discussion so the examiner has time to review matters. Contact details, email and telephone for examiners are available on Examination Reports. Andrea thanked our speakers for their useful insights before inviting everyone to remain for a short OGM prior to a drinks reception in the lobby (non-alcoholic Elderflower cocktails and Prosecco – both delicious!). Thank you to all our speakers and CIPA for organising the event. Dr Kate E. Macdonald (Fellow), Capella IP Limited www.cipa.org.uk

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Tackling Unconscious Bias Report of the CIPA webinar on 11 and 18 April 2016. Speaker: Jon Atkins, Pearn Kandola LLP

“Learning to recognise, understand and mitigate these biases can allow us to recruit more objectively, and to develop a team that works more collaboratively and productively, that is happier and more innovative, and that ultimately delivers more for our business and its stakeholders.” Quite aside from wanting to be nice, there is a significant amount of evidence that developing diverse and inclusive working environments can have a positive impact on a company’s bottom line.

But I’m not racist/sexist/ageist anyway I do not think anyone I have worked with since starting my training as a patent attorney would self-identify as biased; the thing about unconscious biases is that they are insidious and below the level of conscious thought. Our brains are handling so much information all of the time that they pre-filter it to enable us to cope. Implicitly, this means decisions are being made as to what is and is not worthy of our attention – and the decisions are not always right. Jon presented several images and brain-teasers to highlight the assumptions and filters applied by our brains subconsciously. For example, if I asked readers to count how many times the letter “F” appears in the sentence below, the variety of answers may surprise you: THE ACCOUNTANT’S FINANCIAL FILES ARE THE RESULT OF YEARS OF FISCAL STUDY COMBINED WITH THE EXPERIENCE OF YEARS. See the bottom of this article for an explanation*. Jon identified common types of bias, including stereotyping, framing, confirmatory bias, priming and “groupthink”. As an example of framing, the interview question “What qualities do you bring as a female leader?” implies that the interviewer does not expect male and female leaders to have the same types of leadership skills. Priming can be seen in cases such as when a comment of “Dave is good at presentations” leads to Dave being Volume 45, number 6

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given more opportunities to hone his presentation skills than his colleagues. Jon provided a variety of relevant examples, and asked participants to provide examples from their own experience. The first webinar of the series therefore set the scene – highlighting that everyone has unconscious biases, and the various types of biases that exist. The second webinar, also presented by Jon Atkins, built on the first, this time focusing on what actions we can take to tackle unconscious biases. Knowing your biases is the first step. You may already be aware of some, and Jon pointed participants to the Harvard Implicit Association Tests – a good way of identifying any biases of which you may otherwise be unaware. Once biases have been identified, the right conditions for tackling them need to be created. Jon highlighted examples including watching out for assumptions and, in interviews and progress reviews, taking notes, taking time, and using a structured framework for comparisons instead of trusting gut feelings. Bias is more pronounced when we are tired, rushed, or under pressure, as our more rational thought processes are compromised. Inclusive cultures can then be created, for example by treating everyone as an individual and fostering an environment where decisions can be considered and constructively questioned by any team member. Jon emphasised developing and appreciating different personalities and working styles, and the value of alternative perspectives. Diversity counteracts groupthink, which is a risk in a profession with fairly homogenous backgrounds. Jon highlighted the Challenger disaster as an example of this type of bias – the engineers and decision-makers at NASA favoured unanimity over careful reasoning and consideration of concerns raised, and a fatal flaw was brushed aside. Finally, inclusive leadership is a key part – feedback, objective project allocation and equal access to mentoring are all examples of positive steps that can be taken. The webinars were thought-provoking, informative and well presented, offering participants insight into an area we often overlook and the opportunity to learn effective techniques for making our working environments more balanced and inclusive. Dr Katie Howe (Student), Barker Brettell LLP

*Most people miss the Fs in the word “of” at least once – the correct answer is six, but many people get three or four. “Unimportant” words are subconsciously filtered out.

IPA organised a two-part webinar series about tackling unconscious bias, in conjunction with IP Inclusive. The webinars, run by Pearn Kandola LLP, aimed to help participants to identify, understand and counteract unconscious biases. The speaker, Jon Atkins, was engaging throughout, presenting some thought-provoking examples. Jon’s premise is that:

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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

Thursday, 23 June 2016 Seminar

Patent Litigation in the United States – Overview and Current Challenges Time: 16:00-17:30pm Location: CIPA, 95 Chancery Lane, London WC2A 1DT This presentation will provide an overview of US patent litigation, including types of infringement, venue and jurisdiction, the US district and appeals courts, discovery, defenses to infringement, remedies for infringement, and the appeal process. The presentation will then discuss current challenges, including subject matter rejections, the impact of PostGrant Review and Inter Partes Review on patent litigation, and fee-shifting.

Speaker: Barton Giddings, Stoel Rives LLP CPD: 1.5 hour Cost: £97.20 (Members £81)

Thursday, 23 June 2016 Webinar

Practical aspects of IP licensing – IP transactions with universities Time: 12.30-1.30pm Exemplified by transactions between universities and commercial entities, Taj Mattu and Mike Barlow will present some basic principles of technology and IP licensing, including objectives of both licensor and licensee, and the need to disentangle the legal issues from the commercial and developmental issues so that focused client advice can be provided.

Speakers: Dr Taj Mattu, Foresight Science and Technology; Dr Mike Barlow OBE, Fairoaks IP CPD: 1 hour Prices: £72 (Members £48) 58 CIPA JOURNAL

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Wednesday, 29 June 2016 Social

US courts and the Boards of Appeal of the EPO during the six months since the annual case law review in December 2015.

South Coast Happy Hour Time: 18:00-19:30pm Location: The Bishop On The Bridge, 1 High Street, Winchester, SO23 9JX Join us for an opportunity to network with other IP professionals over drinks. Please note, booking is mandatory and drinks tokens will be distributed on arrival. FREE for CIPA members, register at www.cipa.org.uk/whats-on/events/

Monday, 4 July 2016 Webinar

Professional Ethics Time: 12.30-1.30pm A look at ethical best practice for UK patent and trade mark attorneys, who are subject the IPReg ‘Rules of conduct'. Many UK patent and trade mark attorneys are subject also to one or more of the following: the EPO Administrative Council's ‘Regulation on discipline'; the epi ‘Code of conduct'; and the SRA's ‘Solicitors' Code of Conduct'. The webinar will identify key common principles in these regulatory régimes, and will consider real-life ethical dilemmas that arise for patent and trade mark attorneys.

Speaker: Dr Michael Jewess CIPA/ITMA CPD: 1 hour Prices: £54 (Members £36) Wednesday, 6 July 2016 Webinar

US/EPO case law updates Time: 12.30-14.00pm This mid-year update webinar will cover some of the more significant patent cases from the

Speakers: Dominic Adair, Bristows LLP, Ewan Nettleton, Novartis Pharma AG, Anthony Tridico, Finnegan CPD: 1.5 hours Prices: £72 (Members £48) Thursday, 7 July 2016 Seminar

West of England Regional Meeting Time: 12.30-19.00pm Location: Radisson Blu Hotel Bristol, Broad Quay, Bristol BS1 4BY Join us at the Radisson Blu Hotel for this 3 hour CPD regional meeting covering a range of topics from: latest developments for the UPC and outlining what will be happening over the coming months; IPO Customer Visit Programme; E-services and IPO Updates; Working with your examiner. CPD: 3 hours Prices: £234 (Members £156)

Monday, 11 July 2016 Webinar

Privilege Time: 12:30-13:30 See more details on page 63.

Speaker: Dr Michael Jewess CIPA/ITMA CPD: 1 hour Prices: £54 (Members £36)

Wednesday, 13 July 2016 Webinar

UK Patent Case Law Update Time: 12.30-2.00pm This webinar will focus on interesting www.cipa.org.uk

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EVENTS

patent decisions to have come from the UK courts and the Comptroller over the past 12 months.

Speaker: James Porter, IPO and Jon Markham, Beck Greener CPD: 1.5 hours Prices: £72 (Members £48)

Thursday, 14 July 2016 Social

125th anniversary of the Charter Gala Dinner Time: 18.30-23.30pm Location: Rosewood London, 252 High Holborn, London, WC1V 7EN Please note – Tables of ten may be booked at the reduced rate of £850+VAT. An additional guest can also added to your booking at the Member rate. Music until late with CIPA’s very own house band The Black IPs (plus special guests). Please contact cpd@cipa.org.uk, do not use the online booking facility.

Guest of honour: Lord Neuberger, President of the Supreme Court After dinner speaker: Robin Ince Price: Members £114

INSTITUTE EVENTS

Thursday, 8 September 2016 Webinar

Successful Negotiation of Claim Eligibility in United States IT & Software Cases

checklist of issues and considerations will be provided and reviewed. Attendees are presumed to be generally familiar with US eligible subject-matter issues and the Alice decision.

Time: 16:00-17:00pm

Speaker: Chris Palermo, Hickman Palermo Becker Bingham Intellectual Property Law

Achieving grant for US patent applications in IT-related fields, just on the basis of eligible subject-matter, never has been more challenging. In the face of decisions like Alice and SmartGene, ambiguous printed “Guidance” from the USPTO, and with no shortage of contentious examiners, even claims that are plainly technologically “tied” can seem hopeless. With rates of allowance in some examining units as low as 3% to 10%, what can applicants do to maximize the chance of success? This talk will explore practical drafting strategies for new cases, claim recitations and amendments, interview techniques, and lines of written argument that appear best positioned to lead to success. A

CPD: 1 hour Prices: £72 (Members £48)

Book now

Thursday, 22 September 2016 Seminar

CIPA Congress Time: 08.30am-18.30pm Location: Royal Institute Of British Architects, 66 Portland Place, London, W1B 1AD Save the date! Email cpd@cipa.org.uk for details.

Speakers: TBC CPD: 8 hours Prices: Early Bird £390 (Member £300)

CIPA Star Date: Tuesday, 5 July 2016 Time: 19:00-23:00pm Location: The Borderline, London W1D 4JB

Download the application form at: www.cipa.org.uk whats-on/events/

Monday, 5 September 2016 Webinar

IP Enforcement; Can we afford to vs Can we not afford to? Time: 12.30-13.30pm Co-ordinated enforcement against criminal abuse of copyright and trade marks in difficult financial times – how can we possibly do more with less? Huw Watkins from the IPO will cover the following: challenges faced by law enforcement when considering IPR enforcement against conflicting priorities; resource cuts and their impact on the ability to conduct investigations; successes in enforcement despite these challenges.

Speaker: Huw Watkins, IPO Prices: TBC Volume 45, number 6

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Join us at the Borderline for an evening of musical entertainment from the best in IP. This event is open to both members and non-members of the institute and profits raised will go to the charity Generating Genius. To enter a band: Band members must consist of at least one CIPA member. All genres of music are welcome. Band entry: £150+VAT Audience: £12

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IP portfolio and strategy building for start-ups and spin-outs Report of a joint Licensing Executives Society (LES) / CIPA seminar on 28 April 2016.

his co-hosted LES and CIPA seminar covered a wide range of issues of interest to early stage companies. It is impossible to adequately summarise three hours of talks by such knowledgeable, engaging and passionate people in the space allotted, but the following are highlights from my notes.

Portfolio strategy for start-ups, spin-outs and other small businesses Speaker: Catriona Hammer, CIPA immediate Past President. As a patent attorney with considerable in-house experience as Head of IP for GE Healthcare, Catriona spoke from the perspective of what IP issues large companies consider when looking to acquire or invest in small and early stage companies. First and foremost, a large investor will want to know “What is your business plan?”, and how your IP strategy aligns with that. For example, the IP strategy (particularly on the patents side) for a small company intending to develop and sell a product may be quite different from that of a company working on a licensing model. A large investor will look for a rational strategy using a range of registered and unregistered IP rights as relevant to the small company’s business plan. Catriona gave the example of a small company with a huge portfolio, not all of which aligns with its business plan. Far from being considered valuable, such a portfolio might be seen as a cost, or at least something that will require significant resources after acquisition to prune the portfolio to size. This may reduce the perceived value of the business to the large investor. Evidence of active portfolio management will be viewed positively. This can include:

employment agreements should be in place, and ideally IP contracts should be separate to those. Also of importance is freedom to operate. While a proportionate approach should be taken, some evidence of efforts and awareness in this area should be demonstrated. Third party rights, in particular, should have been considered. “We have not been sued” is not a freedom to operate assessment. While the small company may not be a target, its acquisition by a larger entity with deeper pockets may make it a much more interesting target for third party rights-holders.

Technology transfer to spin-out: managing IP to maximise value Speaker: Carolyn Porter, ISIS Innovation. Carolyn is a Deputy Head of Technology Transfer at the University of Oxford tech transfer office, ISIS Innovation. She spoke about some of the specific challenges faced by tech transfer offices and the techniques they use to address those challenges. ISIS Innovation used to file many patent applications fairly early in the development cycle. Budget changes meant that it was increasingly difficult to file so many applications and maintain them through until the PCT national/regional phase, and so an earlier formal evaluation was introduced. A new innovation for which a patent filing is being considered must first pass through an assessment of:      

    

active consideration of appropriate country coverage; careful portfolio pruning; pipelining of inventions; processes for capturing innovation; and consideration of all types of IP, not just patents.

Clear chain of title is important to large investors. In Catriona’s experience (and probably that of most other patent attorneys in the room), universities in particular seem to handle this badly, especially if there’s an inter-jurisdictional element. All local laws relating to inventor rights should be considered (e.g., Germany and Scandinavia). At the very least, formal 60 CIPA JOURNAL

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   

prior art landscape; patentability; market opportunity/engagement; nature of IP (e.g., whether disruptive); whether proof of concept available; level of academic engagement; funding available for development; rate limiting factors for commercialisation; spin-out potential; and impact potential.

There is then an ongoing review process to determine which cases will continue to receive funding. Factors considered as part of this ongoing review include:   

strength of IP; status of data package; engagement with potential partners/investors; www.cipa.org.uk

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     

value of likely commercial deal; nature of IP (e.g., disruptive?); timeline to commercial endpoint; chances of success; translational funding; and patent costs that fit with budget.

Carolyn also discussed strategies for maximising the value (of IP) at spin-out. For example, if broad claims can be maintained, this can be a benefit. Carolyn gave an example of a relatively broad patent that had not been of huge success in its original technology area, but came into its own when 3D printing technology took off. More generally, a portfolio approach to ongoing patenting efforts can help increase value, as can later-stage assets (such as clinical data and manufacturing know-how). A common theme throughout Carolyn’s talk was the need to remain flexible and to allow evolution of business and IP strategies as needed over time.

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Competitive intelligence as the backbone to IP strategy Speaker: Nigel Swycher, CEO, Aistemos. Nigel explained that IP as an asset class is still relatively immature, as compared with, say, the real property market. Nigel explained that unlike IP, more mature markets (e.g., forex, shares, commodities, real property) have long had analytics that support the making of better decisions. That said, IP data quality is improving, which means it is becoming possible to generate meaningful analytics. There is a move from “mere” data (e.g., patent office bibliographic information and court publications) through curated data (e.g., LexisNexis and Lex Machina), then into “business intelligence”, as epitomised by Aistemos and its Cipher offering. With improved tools comes better and more efficient:    

Building a business Speaker: Roger Ashby, Chairman, Sugru. Roger is an experienced advisor, mentor and investor, among other things. His talk focused on his experiences with Sugru, an early stage company he has been involved with for the last few years. Sugru manufactures a range of flexible materials that can be moulded and manipulated before setting permanently. A major theme of Roger’s talk was the importance of engaging good-quality professional advisors even at the earliest stage. As well as the quality that (if only generally, in my experience) comes from engaging higher priced advisors such as patent attorneys, using a more recognised firm often opens doors with potential investors and licensees. Larger potential investors and licensees can be difficult for very small companies, because the amounts involved are relatively small from the larger party’s perspective. For example, a £50m acquisition may be a very small part of a large company’s acquisition budget, to the extent that getting the large company interested may be difficult. Roger believed that the best way to handle this was to work on getting someone in the large company to become an internal “champion” for the deal. Roger also discussed how Sugru received its initial funding via Crowdcube, a crowd-funding platform. It raised £3.4m in a matter of days, smashing its £1m target. It also broke the record for the biggest single investment (£1m) and greatest number of investor countries (68). This was done largely on the back of a viral social media campaign. Another point is to think of the process of building a business as focusing on where you want to get to in the long term (Roger called it “the house on the hill in the distance”), while not planning too far ahead from your current position (because you simply cannot predict how things are going to develop). Volume 45, number 6

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collaboration and licensing; competitive intelligence; IP risk management; corporate transactions; patenting strategy; and monetisation.

Various examples were given. In one, Nigel showed that Google has 10% more patent families than Qualcomm, but has achieved this for half the cost. In another, it appeared that Shell has 20% more coverage in Asia-Pacific but 20% less coverage in the US.

UPC update: invention to enforcement Speaker: Annsley Merrelle Ward, Bristows. Annsley brought us up to date on recent happenings with the UPC. Ratification is well under way by member states, with the UPC itself on target to open in April/May 2017. The elephant (red lion?) in the room was the impending referendum on the UK’s EU membership. It is hard-coded into the UPC’s legal framework that only EU members can participate, and it cannot come into being until France, Germany and the UK have ratified. If the UK is no longer an EU member, there may be some serious running around trying to sort out this issue. Annsley explained that even if the UK votes to leave the EU, the process of withdrawal involves a potentially long negotiation period. This should give the UPC and its remaining members time to sort out the legal background to account for the loss of the UK. Annsley went through many other details (too many to go through in this summary), but some examples include:  

There will be no opt-out fee. During the transitional period (seven years, plus seven optional years), all unitary patents, and “classical” EP patents not opted out, will be litigated through the UPC. After the transitional period, all patents will be litigated through the EPC. JUNE 2016

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 

Opt-outs can be pre-filed from November 2016. If there are joint owners, all owners must opt out.

Annsley also mentioned the importance of considering licences now, before the system goes live. Which party has rights to, e.g., opt out, be named first (has an impact on available jurisidictions), or can control prosecution, defense and enforcement of different patent types needs to be considered.

The role of the patent attorney in IP strategy Speaker: Dr Charles Harding, Partner, D Young & Co. In a rousing and spirited presentation, Charles advocated bravery and action from patent attorneys. Too often, patent attorneys are entirely reactive, considering themselves passive respondents to their clients’ requests. Even so-called “proactive” attorneys do little more

INSTITUTE EVENTS • REVIEWS

than call their clients periodically and ask if they have any work. Charles believes that true engagement with your clients is the way to succeed. Especially when it comes to small and early-stage companies, patent attorneys should not be afraid to properly engage with their clients and provide real advice based on the knowledge and experience they have acquired. We should not hold back opinions, and we should not be scared to offer honest advice (although we should, of course, be mindful of the limits of our knowledge and experience when giving such opinions). Charles echoed Roger’s suggestion that good advisors (and good IP) are critical for small companies, and that having the right providers in place early on can help open doors and smooth the path to investment and partnership. Jeff Sweetman (Fellow), EIP

Overview of the Appeal Proceedings A review of the second edition of Overview of the appeal proceedings according to the EPC. Written by Hugo Meinders, Ingo Beckedorf, and Gérard Weiss. ISBN: 978-90-78310-13-6. 352 pages; price €56. The 2nd edition is updated up to October 2015, and was published on 23 December 2015. Order online at https://www.htelpublisher.com/books/appeal-book/.

his book, which has been written by three members of the EPO’s Boards of Appeal of the EPO, came out in its first edition in 2013. The first edition sets out the basic structure of the procedures before the EPO’s Boards of Appeal in each of the EPO’s procedural languages (German, French, English). It was a welcome addition to the literature on appeals before the EPO, especially for those who are not often involved in appeal proceedings. Since then, there have been many developments in practice before the EPO’s Boards of Appeal. The book has therefore been updated to take account of this. Although the second edition is longer than the first, it remains a concise presentation in very clear terms of the various stages of the appeal process, including an explanation in section 11 of what the Boards of Appeal do “behind the scenes”. It refers extensively in sections 15.11 and 15.12 to the functions of the Enlarged Board of Appeal in its roles as a body for giving opinions on important points of law and as a body for dealing with Petitions for Review. These sections are very useful for those who have never had to consider trying to have a case referred to the Enlarged Board. Section 15.13 deals with

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proceedings for removal from office of a Board member. The book provides good footnotes with references to the EPC and its Rules, important decided cases, the Guidelines and other texts so that good guidance is given for those who want or need to have a deeper understanding of the procedures before the Boards of Appeal. The book makes it clear that those appearing before Boards of Appeal at the EPO need to be very familiar with the Rules of Procedure of the Boards of Appeal. This book will be very useful for practitioners who have not had much experience of proceedings before the Boards of Appeal and will also be very useful for informing clients of what to expect in appeal proceedings. More experienced practitioners may find the book useful for training candidates and less experienced colleagues. The English version of the second edition, to which this review relates, is easier to read than the first edition. Overall, the general clarity and usefulness of the book as a guide for parties to oral proceedings is maintained. Chris Mercer (Fellow) www.cipa.org.uk

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NEWS

REVIEW • ANNOUNCEMENTS

Adjudicating IP disputes

he International Chamber of Commerce judgments, and so to enhance the effectiveness (ICC) has published a report, of enforcement. How this is affected tends Adjudicating Intellectual Property to reflect the legal system of the country ADJUDICATING Disputes, which provides an overview concerned. INTELLECTUAL of the structures and trial procedures of For example, in common law countries, PROPERTY DISPUTES ‘specialised intellectual property jurisdictions’ expert evidence and cross-examination play (SIPJs) in countries around the world. an important role in assisting the court with The ICC’s report was launched on 28 understanding the technology and issues in April 2016 at the International Forum on dispute, whereas in countries with a civil law Intellectual Property – 21st Century, held in system the court more frequently includes a Moscow. It follows a survey of ICC members technical judge or court appointed technical An ICC report on specialised IP jurisdictions worldwide and input from attorneys and IP practitioners expert, or permits IP practitioners (e.g. patent with hands-on litigation experience and attorneys) to act as representatives. expertise in intellectual property (IP), The report notes that SIPJs may not be including from the US, the UK, Germany, warranted in all countries, for example in countries India, China and Japan. of a size which, or in which litigation volume, does The ICC’s stated aim is to assist countries not justify such specialty. In countries where there in their consideration of whether, and how, to establish is a need for SIPJ, the appropriate mechanism will depend upon the or improve SIPJs so as to enhance overall efficiency and local judicial system, legal tradition, ideology and socio-economic expertise in IP-related trials. The ICC explains that it context. Nevertheless, the importance of any structure enabling the considers the role of IP in supporting innovation, crosscourt to understand the technical issues in dispute is highlighted, border trade and economic development to be important, and and differing possibilities for achieving this discussed. that both users and holders of IP rights need well-functioning From the UK, Gowling WLG’s David Barron and Ailsa and efficient mechanisms to protect intellectual assets. Carter contributed to the ICC’s analysis. Sir Robin Jacob, The report provides an overview of the structures and trial retired Lord Justice of Appeal, Professor of IP Law at procedures of differing SIPJs. By necessity, it is a bird’s-eye University College London, is also noted as a contributor. The view and generalisations are made. It notes that motivations report can be seen on the ICC website (www.iccwbo.org) and for establishing SIPJs are broadly consistent, principally for in full at: http://tinyurl.com/hexhdoe. courts to develop experience and specialism in IP disputes, Ailsa Carter and David Barron, Gowling WLG with a view to improving the consistency and predictability of

Privilege, CIPA/ITMA 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 in-house 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.

Volume 45, number 6

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Announcements In April 2016, Peter Arrowsmith (Fellow) joined Gill Jennings & Every LLP as a partner. At the end of March 2016, Linda Harland (Fellow) retired as a consultant from Reddie & Grose LLP, following her retirement from the partnership in 2013. Letters for the Editor and announcements should be e-mailed to: editor@cipa.org.uk

JUNE 2016

CIPA JOURNAL

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UP & UPC

NON-CIPA EVENTS

The European Unified Patent Court Report of an International Intellectual Property Law Association (IIPLA) webinar, 20 April 2016

ree UPC events have served me well and continue to do so. My UPC baptism was at the UJUB Mock Trial held in Paris in 2015 and the free IIPLA webinar of 20 April, coincidentally aired from Paris, ranks equally in my ratings. This time around I was already sufficiently hooked on UPC to tune in from my desk in Leeds, in contrast to my first foray which started as a CPD front for a few days in and around Paris. David Por (Allen & Overy) held rapt attention for an hour packed with practical insights. Putting the UPC in context against the US, David stated that the market covered by a UPC decision is significantly greater than the US market covered by a District Court decision, with further advantages of cost (Discovery in US is “a moneybusting exercise”) and speed (UPC decisions within one year from issue of a law suit is faster than US IPC and much faster than District Court). Consider that litigating in UPC may be the forum of choice on top of or instead of the US. Touching briefly on the unitary patent David reminded us that although the scope of protection and infringement are governed under the single law of the UPC, the law of the participating member state of the first named applicant applies for other considerations, i.e. governing law is determined by ownership. Therefore, consideration of who can assign and license a patent, although not at the heart of matters, should be kept in mind. After touching on the court system and transitional period, David gave a very good summary of procedure, looking in particular at why the UPC procedure is attractive. A “patchwork of rules” from UK, Germany, Netherlands, France and some others will give a strong Continental style: very short, front-loaded procedure, which will be to a large extent written. “Do not expect anything of the UK extensive examination and cross examination of witnesses. All of the parties reasoning and evidence should be provided as early as possible. In the first six months the parties will have to lay out their entire case. Judges will consider in an interim phase followed by an oral hearing, which will not last more than a day except in exceptional cases, and will be an oral presentation of the representative’s arguments, not extensive witness hearings. Even if taking 15 months this will be incredibly fast and efficient.” Evidence will be mostly in written form. Where resort is

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made to experts these may be party appointed or court appointed (as in German procedure), not such a good thing as judges may adopt the experts view not those of the parties. Disclosure (discovery) which can be expected to be very limited, is not a Continental feature, the comparable French remedy is ex parte dawn raid seizure in which an alleged infringement and consequences may be seized. Permanent injunctions are likely to be issued in every case, and preliminary injunctions more likely if the balance of convenience applies. The UPC aim is to provide a single court and avoid forum shopping but there will be ample possibilities in a new system with rules open to interpretation. It is unlikely that a local or regional division will become an “Eastern District of Texas”. Long and complex rules on where you can bring a suit gives both patentee and infringer lots of choice, pretty much every local or regional division could have jurisdiction. Nevertheless, a binary system applies whereby a court does not have jurisdiction or does and must take it. Having said this the defendant has little choice, Revocation actions can only be brought before the Central Division. There are some options open to the defendant such as to bring an EPO opposition, which can last for up to five years with appeal. This can be useful if a UPC claim fails. National actions such as ownership or torpedo actions may be brought to effectively opt a patent out. A defendant might resort to anything to bring a national action, since the UPC is expected to be patentee-friendly, similar to the German courts. With one difference, expect no bifurcation on 99% of cases… you will not be able to litigate on a patent which is worthless. There is a lot of unclarity surrounding the opt-out, the result of poor drafting and bad compromises. Opt out will be by declaration but as mentioned above, under one interpretation of Article 83(1) a potential defendant could force a patentees hand by suing for revocation before a national court, to preclude the patentee from the UPC system that is likely to be patentee-friendly. Patentees wanting certainty should apply for unitary patents from today. There is no “one size fits all” when considering the optout. Factors differ for each business, such as the purpose of patents (monopoly, opening discussion, royalty streams, optimizing tax position), strength of portfolio against that of a competitor, the number of patents protecting a www.cipa.org.uk

08/06/2016 12:52:29

UP & UPC

single product (pharma: 1, mobile telecoms 1000s), and the kind of win needed (universal or national). There are some concerns about using a system shaped by others, so patentees should think about the need to play along in order to influence the system. What is this Court to be? Considering discretion vs literal approach, David commented that whilst the Judge Rapporteur has discretion, the Court is expected to be very strict initially. “Remember that the entire system is the product of the judges who will be expected to apply it, and they want it to be successful.” Questioned on how many English judges are likely to be candidates for the UPC, David commented that

NON-CIPA EVENTS

of the first round of appointments, expected to include some 50 part-time legally qualified judges, there is a very strong suspicion that many will be well-known EU patent judges, perhaps all of the regularly sitting UK, German, Netherlands and French judges initially, of whom the President is to be French. A final word on the big “what if ?”: should the UK leave the EU there is likely to be a lengthy stall, renegotiations will be needed of many things and UPC will be one of the last on the list. We can expect a deadlock in virtually all EP projects. Pippa Allen (Fellow)

Hopping the pond to the Continental Cercle and some Premier UPC knowledge Report of a Premier Cercle conference the “Unitary Patent & Unified Patent Court”, Thursday 16 July 2015, European Patent Office, Munich.

provisional phase to the Unified Patent Court (UPC), the internal debate over judges remuneration… these are just some of the things which were discussed at the Premier Cercle Conference “UPC: the last steps” at the European Patent Office (EPO) in Munich on the sunny banks of the Isar in July 2015. In the intervening year these have filtered through to main stream knowledge. But in wishing not only to keep abreast of the moving target which is the UPC but to understand how it might operate and why, these were and remain valuable insights. A year ago there was much scepticism, in the UK at least, about the calibre of judge that we could expect to see at the UPC. A lot of this would of course turn on the salary on offer. And that was anyone’s best guess. In March we heard that a full time net salary will be €132,000 (First Instance) or €144,000 (Court of Appeal). A characteristically accurate IPKat thread from 2013 hazarded a similar net salary which could gross to £177,000. Comparable to a UK “Specialist Circuit Judge” (Chancery, Patent, Mercantile Technology, Construction Court) salary of £146,000 gross (see Ministry of Justice Judicial Salaries 2015, including the recent 3% rise) or a High Court salary of £183,000 (including the recent 3% rise, and perhaps not the only or greatest income source). Volume 45, number 6

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What does this tell us? Well even those less optimistic than I, can hope to see high-calibre judges whose decision to apply is tipped by a motivation for the UPC (I would hope that to be an honorable motivation to address the mischief that brings uncertainty to patent litigation in Europe, and my more pessimistic colleagues will maintain that motivation to be nothing short of personal fame and glory…) and/or judges who have come up against a ceiling in their current line of judging (I would hope that to be the ceiling that confronts the diligent and modest in the shadow of those destined from birth to succeed, and my pessimistic colleagues will maintain that these will be individuals whose ceiling should have been at least two floors lower and who somehow sneaked into the career elevator when no one was looking). Knowing a year ago that two opposed camps within UPC Prep Comm were battling it out for a civil servant-style versus national judiciary-style remuneration package, and being optimistically certain that the latter would prevail, I chose to ignore sceptical speculation about the future success of the UPC but to assume that UPC will arrive and will succeed and I had better get knowledgeable and fast. Another bit of Premier knowledge was that the first round of recruitment aspires to engaging a small group comprising the best candidate judges on offer, who are up to the job of establishing the crucial base tenets on which JUNE 2016

CIPA JOURNAL

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UP & UPC

UPC case law will be founded, and which can then be propagated to a wider group of judges as the UPC gains momentum. Perhaps not such a revolutionary concept but very reassuring common sense to me. Add to this the elaboration of a Provisional Phase to the UPC, well known to those in the know, but significant news a year ago to mere mortals as myself, and this was certainly a conference well worth attending. So I am booked up and eagerly waiting for the summer and Episode 4: the Premier Cercle “Unitary Patent and UPC: A final Countdown?” which will be held, again at EPO in Munich, on 7 July 2016. This will be only two weeks after the UK vote on remaining in or leaving the EU, excellent timing to get to grips with whichever future awaits. Following the programmed UPC update this year will be a panel session including judges from Germany, the UK, the Netherlands and Belgium addressing “Rules of Procedures and material law. How to get consistency between the Divisions?” I have read into the UPC legislation governing a wealth of issues influencing decision making, not aired in the usual UPC presentations. I am looking forward to a discussion by judges on how the “judging panel of multinational composition” (I like to think of an analogy

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NON-CIPA EVENTS

between the fictional person skilled in the art and the fictional judge of multinational composition) will do justice to the legislation at their disposal. Just as national patent jurisdictions function, the UPC will function, and drafting flaws and omissions which are regularly picked over will be addressed. The judges will be well briefed on the aims of the UPC, to bring legal certainty for patentees and third parties and access to cost-effective and expedited proceedings. So I am eager to hear discussion by judges on judges… if this were a book I would be guilty of turning to the final page to see what they will have to say. I was not in the least unnerved, but somewhat disappointed, by the scarcity of British among the august company a year ago. So I do hope to see a few more British hopping the pond to join me this year – this is after all to be a Court which draws on national laws of many EU states, and touted to be more Continental in style than British, so where better to listen to and contribute views about the UPC than on the sunny Continent? Pippa Allen (Fellow) See below for more details or online at: www.premiercercle.com/index.php?item=event-details&ide=220

www.cipa.org.uk

08/06/2016 12:52:31

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 March 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

Volume 45, number 6

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THE PINKS

COURSES

REVISION COURSES FOR PEB 2016 AND EQE 2017 We are holding a full programme of residential revision courses in Milton Keynes for the October 2016 PEB examinations and the March 2017 European Qualifying Exams (EQE). We have only a few places left on our 1-23 July Foundation Certificate courses. For the Final Diploma papers, we have 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 2016. For EQE 2017, our main suite of courses for Papers A&B, C and D are between 28 November and 2 December 2016, along with a 1.8 day course on 5-6 December 2016 for the Pre-exam. We have one-day Papers D and C booster courses on 26 and 27 January 2017. Courses are supported by our online Moodle forum. Fees include meals and accommodation during the course. There are discounts for booking a full suite of EQE courses and five or more courses by a firm. Our website www.jddcourses.co.uk provides further information, course leaflets and booking forms for download and an online booking facility. We are a CIPA Approved Training Provider. 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.

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68 CIPA JOURNAL

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www.cipa.org.uk

08/06/2016 10:56:50

THE PINKS

INTERNATIONAL

Volume 45, number 6

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CIPA JOURNAL

08/06/2016 10:57:24

THE PINKS

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

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

Areas of Practice:

Other offices: New Delhi, Kolkata, Ahmedabad, Hyderabad, Chennai

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

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sought for Arnold+Siedsma in Brussels or Munich For more information please contact: Steve Duxbury sduxbury@arnold-siedsma.com in Munich or Nele D’Halleweyn ndhalleweyn@arnold-siedsma.com in Antwerp

www.arnold-siedsma.com

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.

Patent and trade mark search Patent and trade mark watch Registration, post registration and infringement, etc.

Member:

European / UK patent attorney (Chemistry)

Translation of patent specification Franchise and joint venture agreements Cyberlaw, mergers and aquisition

JUNE 2016

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

www.cipa.org.uk

08/06/2016 10:57:56

Should I stay or should I go?

In-House Patent Attorney : Geneva LKA47729 A career and life defining opportunity to work in-house in one of the most beautiful, exciting and globally accessible cities in the world! If you're a finalist or recently qualified CPA / EPA with an Electronics, Physics, Mechanics and/or Engineering background, with the commercial acumen to promote IP as well as to protect it, this is the chance to break the mould! Patent/IP Manager : Surrey LKA48331 Interesting varied role within an innovative yet well-established FMCG business. You will be the right-hand person to the Head of IP, advising them on all strategic and commercial matters relating to IP. Ideally, you should have the ability to search, read, understand and interpret patents and be able to help translate them for the commercial team - an invaluable, visible position! Engineering Partner Designate : South West LKA47590 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! Finalist through to FQ Electronics : London LKA45985 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! Electronics Attorney : Scotland CEF48241 Take the high road and see your career take off! This is a superb opportunity for a hands on, commercially astute attorney to take up a close-knit, client-facing strategic advisory role. Enviable autonomy combined with a supportive team environment means you can make of this what you wish while enjoying the high life in bonnie Scotland!

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

Electronics Attorney : Cambridge CEF48328 A wealth of work, support, expertise and opportunity at your beck and call! For those aspiring to a civilised commute, a stunning working environment and an enviable life in a beautiful location, this fresh-thinking practice offers it all, with more besides in both salary and benefits! Biotech Attorney : London CEF47627 A seriously impressive practice with seriously impressive clients, attorneys and growth plans, but which doesn’t take itself too seriously to forget to enjoy work? Now there’s a combination worth shouting about! If it’s time to take your career and your job satisfaction to the next level, this is the definitive fast track to loving life and work! Patent Attorney : Birmingham CEF48452 The definitive example of success breeding success! This key role has come about following recent promotions and opens up a career path for a qualified or finalist attorney keen to step into an existing client base, or to plough your own furrow. Either way, there’s scope to shine, whatever your technical background. Patent Formalities Administrator : London A hands on role for the formalities experts amongst you!

TB48475

European Patent Grant Formalities your forte? We want to hear from you! This is a lovely role within a friendly Records Department of an excellent firm handling a wide range of responsibilities, If you’re a good team player, possess excellent communication skills and have a strength in attention to detail it could be your chance to shine! Patent Secretary : London TB48046 Mixed workload including the production of documents, European and UK Patent Office forms, audio and copy typing, travel arrangements, diary management, post and filing. You must have a proactive approach to pick up any ad hoc duties as required. You will ideally possess the CIPA patent administrators' qualification and have previous experience of working within an IP environment. Superb salary and benefits!

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’

REC-pp71-Sacco-rhs_1.indd 71

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THE PINKS

RECRUITMENT

EUROPEAN PATENT ATTORNEY We are seeking a qualified / part-qualified European Patent Attorney to join our biotechnology team in Dublin. To the successful candidate Tomkins can offer: An energetic and highly experienced team work environment A highly attractive personal self-achievable target-based bonus scheme An opportunity to work with a broad range of our existing national and international clients Support to develop/extend your personal client base A clear route for progression Internal management opportunities Business strategy training In-house CPD activities Flexible working hours Overseas travel Applications from part-qualified trainees having completed a minimum of two years training would also be considered. Salary is competitive and dependent on qualifications and experience. For further information, please contact Ms. Lynn McManus (HR Manager). Applications in writing please with your Curriculum Vitae before Friday, 10th June 2016. E-mail: recruit@tomkins.com 5 Dartmouth Road, Dublin 6, Ireland www.tomkins.com 



Think Intellectual Property. Think Tomkins.

The Life Sciences Committee is pleased to announce

The 2016 CIPA Life Sciences Conference Monday 14th – Tuesday 15th November 2016 | up to 9 hours CPD The Grand Brighton, 97-99 King’s Road, Brighton, East Sussex, BN1 2FW The CIPA Life Sciences Conference is the UK’s premier annual educational and networking event for patent and IP professionals active in the pharma, medical technology and biotechnology sectors. Over nearly two decades the Conference has provided unrivalled expert insight into the latest developments in patents, regulatory and IP law in the global life science industry. Most importantly, the event provides a friendly environment for inhouse and private practice professionals to network and share experiences.

Pre-dinner speech by Michael Silverleaf QC, 11 South Square Topics to include: • UK, EPO, and US law updates • Coordinating UK and US patent strategies • UPC – strategies and practicalities

• Identifying, building and ending partnerships • SPCs and data exclusivity • Patent analytics for the life sciences

Prices held from last year Full conference: £550+VAT (members), £765+VAT (non-members) Day one: £250+VAT (members), £375+VAT (non-members) Day two: £130+VAT (members), £195+VAT (non-members) To book, please visit the Institute events page of the CIPA website or contact cipa@sequenceofevents.co.uk for more information

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08/06/2016 11:02:13

In partnership with

IP Recruitment Specialists ZFBST FYQFSJFODF

caseltonclark.co.uk

@CaseltonClark

Caselton Clark

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Dawn Ellmore Employment

Support vacancies: dawn.ellmore@dawnellmore.co.uk %XVLQHVV VXSSRUW MDPHV VPLWKVRQ#GDZQHOOPRUH FR XN

@Dawn_Ellmore

+44 (0)20 7405 5039

REC-pp74-75-Dawn-Elmore_DPS_2.indd 75

DawnEllmore1

www.dawnellmore.co.uk

08/06/2016 11:02:59

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. Our investment in an expanding range of technologies has seen us acquire a growing group of European subsidiary companies, which in turn provides opportuni es for engagement in a wide range of patent ma ers, including taking responsibility for a business unit or subsidiary company by providing a complete range of services from inven on harves ng and patent dra ing to freedom-to-operate searching, validity opinions, and occasional li ga on.

For over 70 years, Canon has been a world-leading innovator and provider of a wide range of imaging solu ons including DSLR camera and prin ng technologies. However, more recently Canon has expanded into areas such as medical devices, video surveillance, 3D prin ng, and mixed-reality technologies. With more than 190,000 employees worldwide, Canon is an interna onal and mul cultural Group. Our strong commitment to innova on has kept Canon at the forefront of our industry with a wide range of reliable, cu ng edge products. World class research centres enables Canon to lead the market and to also benefit from a significant patent por olio. This commitment has seen Canon ranked third in the list of US patent recipients for each of the last 5 years. 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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The patent department within Canon Europe is a closely knit team with good communica on between patent a orneys, formali es staﬀ, and other professionals in the broader IP team and legal group. The company more broadly has a warm and friendly culture, supported by flexible working and family friendly policies. 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 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

08/06/2016 11:03:21

THE PINKS

RECRUITMENT

“7KH PDQ ZKR KDV QR LPDJLQDWLRQ KDV QR ZLQJV ” 0XKDPPDG $OL

Electronics, Part/Recently Qualified Patent Attorney, South West This dynamic firm is looking to expand their team as a result of their ongoing success. This is fantastic opportunity to join a forward thinking environment and benefit from high quality direct client interaction, as well as an excellent work life balance. The work on offer is diverse and will allow the successful candidate to tackle a commercially focused range of tasks including IP capture and strategic advice and analysis, as opposed to just drafting and prosecution. Client satisfaction is at the heart if the firm’s ethos, as is the provision of a supportive and inclusive working environment in which departmental integration is greatly encouraged. You will be afforded ample opportunity for professional development through attendance at CPD and networking events, and will have access to a strong support structure if you’re still sitting your qualifying examinations.

Cambridge Opportunity, Finalist Level Patent Attorney, Electronics Join a top tier firm and take a truly hands on approach to your client work. In addition to supporting the existing client portfolio, there will be the opportunity to acquire and manage your own practice to reflect your own technical strengths and interests. Alongside the drafting and prosecution of patent applications, you will play a vital role in the development of your clients' IP strategy through IP capture, opinion and advisory work. There will also be ample opportunity to liaise with and instruct foreign associates from across the world through agency assignments, assist in-house and external solicitors with litigious matters, and get involved in business development in collaboration with the firm’s dedicated marketing department. The successful candidate will be given all the help they need to develop and progress, with the support of industry leading Partners and a highly effective clerical and administrative function.

Electronics, Finalist/Recently Qualified Patent Attorney, London This firm is regularly acknowledged for the high quality commercial advice and advocacy that it provides to its world class client base. Based at the firm’s modern London offices you will be part of an environment that is stimulating and collaborative, and above all meritocratic. To succeed in this role you will need to be relationship driven and a strong communicator, as client care is regarded as crucial to the ongoing success and reputation of the firm. As you progress you will be afforded the flexibility to shape your practice to suit your own strengths and interests, supported throughout by an open door policy and a Partnership with industry contacts that are second to none. This is an excellent opportunity to be involved in high value work across a range of cutting edge technologies including telecommunications, avionics, optical recording media and software. Your hard work and success will be rewarded by a clear and transparent path through to Partnership, as the firm has a clear growth plan in mind and is looking for ambitious candidates who want to be part of it.

Finalist/Recently Qualified Patent Attorney, Electronics, London Enjoy an innovative environment in which your exposure will not be defined by your years of experience. There will be an excellent mix of oppositions and appeals, as well as infringement and validity opinion work across a number of technologies including electronics, optics, software and computer related inventions. You will also have the chance to gain significant exposure to litigation work, and will be given the opportunity to take the CIPA Litigation Skills Course if you haven’t already done so. The firm encourages its attorneys to get involved in the marketing and business development of the practice from day one via the attendance of industry events and networking receptions, which is often not normally afforded at this level. Furthermore you will be given the responsibility for supervising and supporting more junior members of staff through knowledge sharing and collaborative working. This is a truly unique opportunity to progress through to Partnership quicker than is often the norm, within a firm in which your ideas and input will be valued regardless of your level of seniority.

Engineering, Part Qualified/Finalist Level Patent Attorney, London Work alongside an experienced senior associate and begin your training as the firm’s future generation of Partner. You will be working closely with clients across a range of subject areas such as road, rail and marine engineering; medical devices; construction; manufacturing; oil and gas; electro mechanical devices; and computer implemented control systems. The firm places a great importance on maintaining and establishing strong relationships with clients in the UK, Europe and internationally, and there will be a good mix of agency and direct client work on offer. The training provided is second to none, and those working towards qualification will receive a great deal of support throughout the process. The firm takes a hands on approach to learning and encourages involvement in business development, business strategy, and client contact from day one. The role would be suitable for candidates with around 1 year’s experience in the industry through to finalist level. Although not compulsory, a fluency in French would be highly desirable due to the origin of much of the client work.

Attorney Opportunities in the West Midlands As a result of their continued success, a leading firm with an outstanding reputation have a number of opportunities available for patent attorneys across a range of technical specialisms. You will be responsible for providing an excellent service to existing clients as well as the acquisition of new ones, allowing for a substantial amount of direct client work. You will deal with the entire patenting process from the identification of inventions and drafting through to the prosecution of applications in the UK and overseas, and will have the chance to liaise with attorneys outside of Europe in order to prosecute patent applications internationally. This is a fantastic opportunity to grow and manage your own client portfolio in a firm that is highly regarded worldwide. The firm is progressive and above all supportive, offering an excellent environment in which to develop and excel. Candidates from part qualified level through to c. 4 years’ PQE, with a technical background in chemistry, electronics or engineering will be considered.

Chemistry, Qualified Patent Attorney, London Benefit from a team environment that is both collaborative and relaxed, and enjoy a good mix of drafting and prosecution work as well as oppositions and appeals. You will have the opportunity to provide sound commercial support to a range of innovative clients internationally - from SMEs to multinational corporations. Working alongside a Partner who is recognised regularly for their excellent technical ability and first class client portfolio, you will cover a number of stimulating technical areas including but not limited to petrochemicals, beauty products and household chemicals. This firm has an impressive track record when representing their clients at UK IPO and EPO proceedings and its attorneys have strong connections with European clients and associates, allowing for an interesting European element to your work. To be successful in this role, candidates will need to be hands on, commercially driven and comfortable working in a client facing role from day one.

Bristol Opportunity, Part/Recently Qualified Patent Attorney, Engineering Take an international approach and join a firm renowned for advising leading names in the US, Japan and Australia, as well as start-ups, sole inventors and leading academic institutions. The team has an exceptional academic record originating from a range of backgrounds, including mechanical engineering, materials science, aeronautics, physics and civil engineering. The work on offer is highly varied, spanning a range of sectors including road, rail and marine; aerospace and defence; packaging; engineering materials; housing; and construction. You will have the opportunity to be involved with the whole spectrum of patent duties, as well as more strategic and commercially focused tasks such as speaking at industry and academic events, advising technology transfer companies, and managing the firm’s relationships with industry bodies.

Is moving jobs at part qualified level a good idea? Visit fellowsandassociates.com/partqualifed 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 6

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CIPA JOURNAL

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THE PINKS

CIPA JOURNAL

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RECRUITMENT

www.cipa.org.uk

08/06/2016 11:04:07

Your partners in Patent recruitment

G2 Legal is one of the UK’s largest privately owned legal recruitment ﬁrms. Our dedicated Patent & Trade Mark Division was formed in 2013. We are proud to have assisted Attorneys, from trainees through to partners, achieve the next step in their careers.

Pharmaceuticals (In-House)

Biotechnology

Engineering/Physics

Qualiﬁed – South East

Qualiﬁed – London, Manchester or East Anglia

Part Qualiﬁed – London

Ref: 38244/1

Ref: 21255/8

Ref: 21270/6

Pharmaceutical specialist tempted by the prospect

Building upon a hugely successful start to 2016,

An opening for a part qualiﬁed attorney has arisen at

healthcare

this renowned ﬁrm is seeking to make a new hire

one of the UK’s most renowned patent and trade mark

organisation is seeking to appoint a new patent

to its industry leading biotechnology team. Working

ﬁrms. The ﬁrm’s engineering team work with major

counsel to its growing patents team. Working

alongside practitioners who are prominent ﬁgures

multinational businesses as well as SMEs in a variety

within a supportive and collaborative group, you

in the biotechnology sphere, this role offers the

of different areas. There are genuine opportunities

will experience a high degree of autonomy within

opportunity to work with a wide ranging client base

for progression within the ﬁrm for those with such

the role. Duties will include the management of a

on an array of related subject matter. A leading

ambitions. A market leading remuneration package

varied patent portfolio along with drafting, ﬁling and

remuneration and beneﬁts package will be offered

will be on offer to the right applicant.

handling oppositions and appeals.

to the successful appointee.

Chemistry

Biotechnology

Electronics

Qualiﬁed (NQ or 1 year PQE) – London

Qualiﬁed – London

Qualiﬁed & Part Qualiﬁed – Yorkshire

Ref: 6444/15

Ref: 35939/2

Ref: 21509/1

Due to an abundance of new instructions, this tier

One of the City’s leading IP ﬁrms is seeking to make

One of the major success stories of the IP world over

one patent and trade mark ﬁrm is seeking to make a

a qualiﬁed hire to its busy life sciences group. A

the past 10 years, this dynamic ﬁrm is now one of the

new hire to its market leading chemistry team. The

fantastic office environment and a varied caseload

most active UK intellectual property ﬁrms in UK and

ﬁrm is long established and is particularly known for

awaits a dynamic attorney who wishes to progress

European patent ﬁlings. Offering a full service across

its esteemed reputation amongst its clients and its

their career at a top ranked ﬁrm. The ﬁrm can offer

the intellectual property life cycle big strides have

excellent working environment. The promotion of

a genuine opportunity to progress to someone

been taken since its inception as a single attorney

sensible working hours and a genuine valuation of its

who has an excellent technical aptitude and can

ﬁrm in the mid-nineties. The ﬁrm now seeks to

staff have been essential components of its long and

demonstrate the ability to contribute towards the

further expand its growing electronics team with the

continued success.

continued development of the ﬁrm.

appointment of part and fully qualiﬁed attorneys.

Engineering (Mechanical/Electronic)

Biotech & Mechanical/Electrical

Electronics & Telecoms

Senior Associate – London

Qualiﬁed or Part Qualiﬁed – York or North East

Part Qualiﬁed – South West or Yorkshire

Ref: 21255/11

Ref: 31443/2

Ref: 28756/2

This role presents the opportunity to further

Since its inception just a few years ago, this ambitious

This role represents an opportunity for you to

your career at a leading ﬁrm that continues to

and rapidly growing ﬁrm has gone from strength to

further your career at a truly modern IP ﬁrm that

build upon its consistent success. Working with

strength. The ﬁrm is led by two well-known and

has been at the forefront of patent protection in

a charismatic partner in the ﬁrm’s renowned

extremely well respected ﬁgures in the profession.

the technological sphere in recent times. You will

Engineering group, this position will offer a varied

With a reputation for providing the highest quality

have experience of hi-tech subject matter and

diet of work to include semiconductors, medical

of service and a ﬂair for client development, the

be enthused at the prospect of assisting in the

devices and telecoms. An inclusive and supportive

ﬁrm currently has an abundance of instructions

continuing development of a thriving practice.

culture is to be found within the ﬁrm along with

in several of its practice areas. The ﬁrm is actively

There is ambit for this position to be based in either

clear information relating to career progression.

seeking to recruit into both its biotechnology and

one of the ﬁrm’s South West or Yorkshire offices.

working

in-house?

global

electrical/mechanical teams.

For further details regarding any of the roles please contact Dan Lloyd, Managing Consultant. Absolute conﬁdentiality is assured.

Email attorneys@g2legal.com

Tel 0207 649 9296

G2 Legal 26 Finsbury Square London EC2A 1DS

REC-pp79-G2-RHS_1.indd 79

Mob 07769 200689

www.g2legal.com www.linkedin.com/company/g2-legal-limited

08/06/2016 11:04:35

Rise above the rest. Get a better view of the horizon... Explore our new opportunities in IP

Generalist Mechanical Engineering Attorney To £65,000 + beneﬁts package. London, ref 1007120

Electronic Engineering - Finalist/Qualiﬁed To £75,000 + bonus + package. Cambridge, ref 1007178

NEW! An exciting opportunity for a finalist/qualified attorney with an engineering background looking to move to a progressive firm with an excellent portfolio of direct clients. You should have a minimum of 2/3 years experience, and ideally with exposure to the renewable energy and clean-tech sectors. You should have a materials science, mechanical engineering or chemical engineering degree background, having gained drafting/prosecution experience. This firm maintain a professional, friendly and collaborative culture that appeals to attorneys who wish to escape the relative conformity of large, target driven corporate practices. Time to change?

NEW! Are you a progressive attorney with an electronic engineering background looking to make a career deﬁning move? There’s plenty of options in the market - but not all can offer truly pioneering cases with established direct clients; a dedicated patent paralegal support team; a world-class infrastructure and superb prospects to advance to Partnership. If you possess an aptitude for a client-facing role, as well as the ability to embrace marketing initiatives, then this position should appeal. You will be joining a ﬁrm that is widely regarded as an employer of choice in the profession, and one that values attorneys at all levels of experience. Superb opportunity.

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

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

NEW! You are a progressive and commercially talented EPA or CPA Attorney (up to 4 yrs PQE) with a proven background in Biotechnology/ Biochemistry. You’ll possess prior experience of handling complex patent portfolios, to include contentious cases as well. This role would be ideal for an ambitious Attorney with ﬁrst-class interpersonal skills and natural gravitas. You will be joining a hugely successful team in a Tier 1 ﬁrm with a stellar reputation for career advancement. You’ll also be encouraged to manage and further develop a wide range of clients in the medium term, so your commercial skills will also be stretched. An outstanding Biotechnology role in the current climate.

NEW! This renowned 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!

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

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

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.

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 skills. 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 opportunities in your field. Career progression is achievable in this wholly meritocratic and transparent firm.

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

Electronics/ Mech Eng - Finalist/Qualiﬁed £Attractive + bonus/package. Cambridge, ref 1002821

NEW! You are a finalist/qualified attorney with a proven Electronics or Mechanical Engineering background, looking to move to one of the most NEW! You are a part-qualified (or qualified up to 2 years PQE) attorney widely respected firms in the UK. You should have current experience of with a technical background derived from either electronics, engineering, automotive and/or aeronautical client portfolios, as well as experience of physics or software related patent work. You will have gained a minimum contentious work (oppositions/appeals). This is an opportunity to influence of 2 years in the profession, and be adept at handling a range of work and shape IP strategy with direct clients, so if you enjoy building and from UK and international clients. You should be attracted to working for nurturing client relationships this could be perfect for you. This firm prides a small firm that rewards individual initiative in respect to BD, as well as itself on attracting the best attorney talent in the market so you’ll be rubbing being encouraged to be the primary contact for key clients depending on shoulders with people at the top of their game in a friendly and collaborative your experience. You’ll be joining an expanding firm at an exciting phase culture. of growth, so career prospects are especially well placed. Take ownership of your next move. To apply to any of these roles please contact James Dawes on 020 7612 3941, or e-mail: jamesd@weareaspire.com @jamesdawesIP

jamesdawesaspire

www.weareaspire.com/IP

120 New Cavendish Street, London, W1W 6XX REC-pp80-Aspire-rhs_1.indd 80

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NEW 8TH EDITION

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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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TOP TIER FIRM YOUR LIFESTYLE Working at D Young & Co offers attorneys the ability to work with world renowned clients, alongside highly acclaimed and motivated SHHUV DQG IRUJH H[FLWLQJ DQG VXFFHVVIXO FDUHHUV ,Q KDYLQJ RI¿FHV in The City and Hampshire, you are also able to enjoy your lifestyle of choice – city, country or coast. Sounds appealing? Don’t just take our word. We are “widely seen as one of the very 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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