CIPA Journal, July 2016 by CIPA Journal

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

July 2016 / Volume 45 / Number 7

Is this the end? Patent term disharmony: the day that breaks two treaties

The Chartered Institute of Patent Attorneys

A review of recent IP cases for financial relief Nicholas Briggs

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Reform of the EPO Boards of Appeal Patents Committee

Six things we love about about being a trainee Tom Hamer

EU referendum: Brexit blues; and FAQs Alasdair Poore

Found! Not-sosecret diary of a CIPA President Andrea Brewster

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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 2, 5 & 7 30

UP FRONT

ARTICLES

EDUCATION

What is the term of a European patent?

Alasdair Poore Chief Executive Report

Mike Snodin, Jim Boff

Editorial: Brexit Blues

Lee Davies 5 6

Brexit FAQs Council Minutes

22 28

Lee Davies 7

European patents and patent work remain unaffected

NEWS

Six things we love about being a trainee

Tom Hamer 32

International Liaison

Tony Rollins 11

Pro-Bono Committee

Dr Elizabeth Dale 52

Committee news

DECISIONS 33

CIPA Committees, 2016-17 12

National Innovation Plan

Official news

EPO Boards of Appeal

Patents Committee 16

Overseas report

Amanda R. Gladwin

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Institute events CIPA Congress 2016

PERSONAL 52

IPO decisions

53 53 53

Crossword – solution and winner Announcements Examination prizes PEB statement

Barker Brettell LLP 39

Manual of Patent Practice changes 14

Patents

Beck Greener

Call for ideas

Patent searching

Steven Charlton 54 56

Lee Davies 11

Opposition and Appeals at the EPO

Advocacy – A Beginners Guide

Dr Sean Curley 10

Mock Oral Proceedings

Kate E. Macdonald 51

The not-so-secret diary of a CIPA President

Andrea Brewster 30

Adrian Bradley

Financial relief in IP cases

Nicholas Briggs

Second medical use patents

EPO decisions

Bristows 40

THE PINKS

Trade marks and other IP

Bird & Bird LLP

58 60 62

Courses and training International Recruitment

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Editorial: Brexit blues

Alasdair Poore

riday 24 June: The atmosphere in the office was distinctly downbeat. Almost a state of bereavement? Cambridge – where my office is – had voted 75% in favour of remaining in the EU. There were, of course, some strong advocates of leave, and reassurances that plans had been put in place to address what the effect of voting to leave might be. But there were few had gone to bed the previous night expecting that result. But people were prepared – across the country patent attorneys assured their clients:

second referendum has just short of four million signatures – but the Prime Minister’s spokesman, pre-empting a mandatory debate on the petition, says another vote is not remotely on the cards; that is an unlikely refuge for those who still believe in Remain. So can we at least have assurances from the Government that EU rights will be given effect in the UK after leaving the EU – regardless of the nature of arrangements? Can we have commitments on how EU pharma

• •

The Unified Patent Court would be immeasurably stronger if the UK remains part of it.

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European Patents: no impact. Representation before the EPO: no change. National patents: no effect. Don’t panic, it will settle down. National trade marks, designs: still go on. EU trade marks, designs: keep on filing. Work as normal for now.

For clients that is mostly right; but as representatives and a profession there are things to do now. Is the Unified Patent Court dead and buried or put on ice? Fifty years in the making and ten years hard work to get to a hair’s breadth of the finishing line. Vote leave does not affect rights now, but it will affect what we say in agreements. Clients will want to know: do we need to file a national and an EU trade mark; will Community Unregistered Design right continue in the UK – or do we need to register that design here, now (or at least within the 12-month grace period)? Wheels are already moving. At the time of writing, a petition for a 2

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regulation and SPCs should work when the crunch really comes? We need to work actively to obtain clarity and certainty where that is possible so that our clients can plan. Can we also work to preserve the Unified Patent Court Agreement and even the Unitary Patent? There are ideas around. Many people have worked very hard for the day – a few days ago only a short time away – when we could say that the vision of a panEuropean patent court had eventually come to fruition. As President of CIPA, I had cheerfully pressed the Government at the time to work towards creating that Court. There were some wobbles (and I wondered

whether I had pressed the right button) when it seemed that the structure would have fundamental flaws, and that the UK was not interested in having a seat of the Central Division located here. But the Government and the IPO have worked tirelessly since that time, as have many others. Against many many odds, a court system has been designed which brings together the very disparate elements of the Continental and common law systems. Still more energy has been put into

selecting judges, training, finding accommodation for the new court, building court rooms. Is that about to be lost? I had already concluded that the Opinion of the CJEU (Opinion 1/09, 8 March 2011) did not preclude establishment of a Court through an international agreement which included non-EU member states. I then heard noises that there were others with similar – and much more developed – ideas. Such as Willem Hoyng (http://eplaw.org/upc-doesbrexit-mean-the-end-of-the-upc/), although not without his opponents; and several other papers circulating with suggestions and analysis. www.cipa.org.uk

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There are adjustments which would have to be made – not least as the agreement currently refers to Member States, and provides that judges have to be persons who could be judges in a Member State. However, if the UK does not ratify the Agreement while it is still a Member of the EU, there are adjustments which will be required in any event: the Agreement cannot come into effect unless the UK ratifies it, as the possibility of the UK not being a Member State was just not envisaged. Further, the Unified Patent Court would be immeasurably stronger if the UK remains a part of it. It brings together, in a way many would not have believed possible, the jurisprudential practices across the EU, and the experience of judges working in widely differing jurisdictions. Without that, there is a risk that enforcement of patents across Europe will start to diverge to the detriment of the users of the patent system, and at a time when those users are calling for more harmonization more widely, because of the increased cost of diverse legal frameworks. This writer would urge the Government not to delay, despite the overwhelming additional demands on its time, in giving proper consideration to pushing ahead with the Unified Patent Court. Act now. But also do not forget – there are other issues on which the Government should press ahead. Providing assurances that EU trade marks and registered designs will continue to be recognized (automatically or on request) in the UK after the UK leaves the EU. At least a transitional period for recognizing EU unregistered designs – so that users do not have to contemplate registration for a minimal period of protection. And no doubt many other aspects which will help take the uncertainty away for users. Uncertainty (and indeed the legal changes resulting from leaving the EU) may be a boon for lawyers – but it is our clients’ interests that we must pay attention to now. Volume 45, number 7

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Council Stop Press: CIPA Council held an extraordinary Council meeting to discuss the impact of Brexit on the Unified Patent Court and Unitary Patent, and steps which would need to be taken to anticipate the impact of leaving the EU – when that happens – on other EU intellectual property rights, including SPCs, EU Plant Varieties, EU Trade Marks, EU Registered and Unregistered Designs and the EU Database Right. Council unanimously supported continuing with work on the UPC/UP. Reports will be prepared by the relevant committees on steps and options in relation to other EU intellectual property rights, in order to inform discussions on what steps should be taken to protect clients’ interests in relation to these rights, as well as steps firms of attorneys might wish to take.

Alasdair Poore, CIPA Editor [Also see the press release on page 7 and the Brexit FAQs on page 5.]

Chief Executive’s report

ongratulation to Tony Rollins, who started his term as CIPA’s President when he received the ceremonial badge of office from Andrea Brewster at the 134th Annual General Meeting of the Institute held on 11 May 2016. Tony will have the support of CIPA’s new Vice-President, Stephen Jones, Andrea Brewster as Immediate Past President and Chris Mercer as Honorary Secretary. Tony also has the support of a very strong Council and I would like to congratulate all of those elected to Council at the AGM, in particular our newest Council members Julian Asquith, Greg Iceton and Richard Mair. It has been an absolute delight working with Andrea. It was a year of many challenges, as Andrea has a bubbling cauldron of ideas at her fingertips and the enthusiasm to put

these into practice. For me, Andrea’s presidency was marked by her tremendous energy and her drive to enhance the status of the UK patent attorney profession. Andrea put in long hours and travelled thousands of miles to act as the Institute’s principal ambassador and I am sure you will join me in thanking her for achieving so much and wishing her a more relaxing year as our Immediate Past President. Each President is different, but Tony has already signalled that his presidency will continue the theme of education being central to the success of the Institute and of the UK profession. Tony has also marked out policy development as an area interest, as he strives to increase CIPA’s influence at home and abroad, and has expressed his desire to see CIPA’s committees be well-supported to allow their activities to feed into the work that Council and the Officers do on JULY 2016

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behalf of the Institute’s members. Tony and Stephen have already met with me and my team and we are excited by their shared vision for the Institute and how we can make an important contribution. CIPA has a great tradition of member engagement. Were it not for our members volunteering to serve on committees, to join working groups and to generally support the work of the Institute, CIPA’s achievements over the years would be fewer in number. This is particularly true when it comes to education and training, where we have a model built on volunteer tutors and learning in the workplace. I recently met with colleagues from the Informals and learned that they are struggling to find volunteers in two areas. The Informals need more volunteer tutors for the advanced series of examinations and are looking to develop a network of mentors to provide additional support for trainees who experience the frustration of having to take papers such as I&V more than twice. Please, if you have the time to lend your experience to the next generation of patent attorneys, drop me an email and I will put you in touch with the Informals.

125th anniversary of the Charter Sadly, Her Majesty Queen Elizabeth II has had to decline an invitation to visit CIPA during the year of the 125th anniversary of the Institute receiving its Royal Charter. It is a busy year for the Queen, as she celebrates her own personal landmark and fitting CIPA into her schedule was not possible. We are holding out hope that another member of the Royal Family may be able to take up the invitation. The Gala Dinner, at the Rosewood Hotel in London on 14 July 2016, is coming along nicely, with just over half of the tables now booked. We have a growing list of VIPs who have accepted the invitation to join us for an enjoyable evening of fine food, excellent speakers and live music. Thanks to the generous sponsorship 4

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of Sweet & Maxwell, individual places are just £95 +VAT, with tables for ten available at the reduced rate of £850 +VAT. Full details are available in the events area of the CIPA website or please do not hesitate to contact one of the membership team directly to make a booking. Many of you have commented on how good it is to have a prestigious evening dinner in the CIPA calendar and, if this proves to be a success, perhaps we can re-establish this as an annual event.

CNIPA Chris Mercer, Alicia Instone and I represented CIPA at a meeting of the Committee of National Institutes of Intellectual Property Attorneys (CNIPA) held in Utrecht on 7 May 2016, where the focus was very much on the implementation of the Unitary Patent and UPC and the work plan for the newly branded European Union Intellectual Property Office (EUIPO). This was the first meeting chaired by the new President, Rainer Beetz from Austria. Rainer thanked the past President, Nanno Lenz from Germany, for his leadership over the previous six years. Our very own Chris Mercer has been elected to serve as the VicePresident of CNIPA. Alicia Instone did not get away lightly, as she agreed to pick up the baton previously held by Bob Weston for many years as CNIPA’s representative with the EUIPO (OHIM as was). The meeting thanked Bob for his service to CNIPA over the years, in particular for championing CNIPA’s trade mark interests across Europe. CNIPA performs an important role, allowing European national institutes to come together, to share best practice, to find common ground, to accept inevitable areas of difference and, where we reach agreement, to provide a lobbying platform with a strong and unified voice. For further information on the work of CNIPA, please visit its new website, which remains a work in progress, at www.cnipa.eu.

Membership organisations I think that it is important for CIPA to be well-connected with the other professional membership bodies, not just those operating in the legal services sector but further afield in areas such as science, engineering, technology and medicine. Readers may be interested to know that there are membership organisations for people who work in membership organisations and recently it was my pleasure to attended the 2016 MemCom Conference and Awards as a keynote speaker and guest of honour at the awards dinner. At the conference, I spoke on disruptive technologies such as artificial intelligence and advanced robotics and the potential impact on professional identity and the work of professional bodies. At dinner, I was delighted to be able to congratulate Ann Franke, chief executive of the Chartered Management Institute, on becoming the first winner of the Louis Armstrong Memorial Award for outstanding leadership of a UK professional body. The Institute of Association Management (IofAM) is the professional body for the most senior staff of professional bodies and membership organisations such as trade associations. At its AGM in May, I was elected Chair of the IofAM’s Board and Vice-President of the Institute. I promise that it enhances rather than detracts from my work at CIPA, in much the same way as being a member of Council or an elected Officer does for CIPA’s members. The time commitment is minimal (just four Board meetings each year) and the contribution to my professional development is considerable. In many ways the IofAM, whilst limited to the UK, works in a similar way to CNIPA, allowing the chief executives of membership bodies to come together, share best practice and learn from each other. Lee Davies, Chief Executive www.cipa.org.uk

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Brexit FAQs 1. What effect will Brexit have on European patents granted for the UK which are currently in force? None. They will remain in force and fully effective, as at present. The European Patent Convention and the EPO are independent of the EU and have always had a number of non-EU members such as Switzerland, Norway and Turkey. See a statement by the EPO President in the panel on this page. 2. What will be the effect on pending or new patent applications in the EPO? None. The filing and prosecution of European applications, whether directly at the EPO or via the PCT route, is entirely unaffected by Brexit. New and pending applications will continue to designate the UK. At the grant stage, the applicant can opt for national protection in the UK and other countries, exactly as at present. When the unitary patent eventually becomes available, that will be a further option that could be selected. UK-based European patent attorneys will continue to represent clients at the EPO, as at present, including the validation for a unitary patent if desired. 3. What will be the effect on the planned Unitary Patent system? Legal mechanisms have been proposed which would enable the UK still to participate in the Unitary Patent and the associated Unified Patent Court, even after Brexit. There would be clear benefits both to the UK and to the unitary system as a whole, but it would require political will on all sides to amend the current legal arrangements. If this is not forthcoming, then when unitary patents become available (as an option when a regular European patent application is granted), they will provide cover only in EU countries. So they would not provide cover in the UK after Brexit. However, as with other non-EU countries, it will continue to be possible Volume 45, number 7

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to obtain national UK protection via the EPO route, exactly as at present. It was previously thought that the unitary patent system would start in mid-2017, along with the Unified Patent Court, but the Brexit vote has cast some doubt on that timetable. 4. What will be the effect on the planned Unified Patent Court (and its proposed seat in London)? See above for the possibility that the UK might still participate in the UPC, with a seat in London, if the political will exists. Otherwise, as the UPC agreement currently stands, the UK must ratify it before the UPC can commence. For the UPC to go ahead without UK ratification, either the UPC agreement must be renegotiated, or UK must have actually left the EU. UPC renegotiation would take time, and there will be at least a two-year negotiation period before the UK actually leaves the EU, probably longer. Delay would be inevitable. 5. What will be the impact of Brexit on EU trade mark and design applications pending in the EUIPO? There will be no immediate impact on any trade mark or design applications pending in the EUIPO. These will continue to be processed by the representatives that are currently acting before the EUIPO, and they will have effect throughout the EU, including the UK until the UK officially leaves the EU, which will probably not be for at least two years. Once the UK leaves the EU see below for how such pending applications (which over time will become registered) will be treated. 6. What will be the impact on existing EU trade mark and design registrations and their effect in the UK? There will be no immediate impact on any existing EU trade mark and design registrations. Once the UK leaves the EU (which will probably not be for at least two years) such registrations will cease to

UK Referendum – Statement of EPO President Battistelli EPO website, 24 June 2016: The Office underlines that the outcome of the referendum has no consequence on the membership of the UK to the European Patent Organisation, nor on the effect of the European Patents in the UK. Concerning the Unitary Patent and the Unified Patent Court, the Office expects that the UK and the participating Member States will find a solution as soon as possible which will allow a full implementation of these solong awaited achievements.

have effect in the UK. In the same way as when a country joins the EU protection is expanded, when a country leaves the EU protection is reduced. Having said that it is our opinion that owners of such EU trade mark and design registrations will not be left without any protection in the UK. That being said, we are expecting there to be some transitional provision, such that either the UK will agree that such trade marks and designs continue to have protection in the UK, or there will be a process for “transforming” the existing registration into a UK national registration, or a process for claiming seniority in a new filing. We do not yet know what transitional provision will take place, but we do know that rights holders who previously enjoyed protection in the UK through an EU trade mark or design will not suddenly lose such rights overnight. CIPA will be working closely with the UKIPO to help form a transitional provison that will be fit for purpose and help to smooth over the transition with rights holders. Keep up to date by following developments on CIPA’s web site at www.cipa.org.uk/ policy-and-news/brexit-updates JULY 2016

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Council Minutes Minutes of the Council meeting held on Wednesday 4 May 2016 at 14:30. Item 1: Welcome and apologies Present: A.R. Brewster (President, in the Chair), A.J. Rollins (Vice-President), C.M. Hammer (Immediate Past President), C.P. Mercer (Honorary Secretary), R. Ackroyd, R.J. Burt, M.P. Dixon, S. Ferrara, J.A. Florence, J.T. Jackson, R.P. Jackson, B.N.C. Ouzman (by phone), A.D. Poore, T.W. Roberts and V.B. Salmon, Lee Davies (Chief Executive) and Neil Lampert (Head of Media and Public Affairs) were in attendance. Apologies: J.D. Brown, P.G. Cole, R.J.H. Davis, S.Harte, A.Hector, K.L. Hodkinson, A.C. Instone, A. Mukherjee, G.V. Roberts, J.M. Vleck and S.M. Wright.

Item 2: Minutes 117/16: The draft Minutes of the last meeting held on Wednesday 6 April 2016 were approved, following amendment.

Item 3: Conflicts of interest 118/16: No member of Council declared a conflict of interest.

Edinburgh on Thursday 14 April 2016. The list was adopted by the Ordinary General Meeting to form the ballot list to be used at the Annual General Meeting. Standing for President: Dr A.J. Rollins Standing for Vice-President: Mr S.F. Jones Standing for Council: Mr J.P. Asquith; Mrs C.M. Hammer; Mr G.J. Iceton; Mr J.T. Jackson; Mr R.D. Mair; Dr A. Mukherjee; Mr G.V. Roberts; Dr T.W. Roberts; Mr S.M. Wright Council noted that the election for ordinary members of Council would not be contested as the number of candidates matched the number of vacancies for Council. Council noted that Richard Davis, Annabel Hector, Keith Hodkinson and Jan Vleck were not seeking re-election and marked their contribution to Council by acclamation.

from an EPA not based in the UK but who otherwise meets the criteria for EPA membership but accepted the Privy Council’s recommendation that Council should take advice on this point. Council agreed that it would be sensible to wait for the outcome of the EU referendum on 23 June before taking advice. c. Council agreed with the Privy Council’s observations that the various references to transitional provisions throughout the Bye-laws had the effect of ‘cluttering up’ the main Bye-laws once the provisions had taken effect. Council agreed to include all necessary transitional provisions in one bye-law at the end of the document, following the byelaw on commencement and clearly stating that the transitional provisions are time-limited to the period of transition.

Item 5: Bye-laws review Item 4: 2016 AGM and Council elections 119/16: Council approved the Internal Governance Committee’s recommendation that there should be no increase for the membership year commencing 1 January 2017. 120/16: Council approved the Internal Governance Committee’s recommendation to reappoint haysmacintyre as CIPA’s auditor for the 2015 – 2016 financial year. 121/16: Council noted that, in accordance with Bye-law 34, a list of candidates nominated as eligible and suitable to fill the offices of President and Vice-President and to be ordinary members of Council was presented to an Ordinary General Meeting held in 6

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122/16: Council noted the response from the Privy Council on the proposed revisions to the Bye-laws. Council considered the feedback provided by the Privy Council and agreed the following: a. Council had taken the decision that a member who is both UK and EPA qualified should be a Fellow of the Institute and should not have the choice to be a European Patent Attorney member instead. b. Council recognised that the Bye-laws have a restriction in place to prevent an EPA who does not have a place of business UK from being a European Patent Attorney member. Council did not believe that this opened CIPA up to any potential claim for discrimination under European law

d. Council noted the concerns expressed by the Privy Council that the introduction of the EPA member category might result in people not regulated by IPReg being able to practise in the UK and asked Lee Davies to advise the Privy Council that this was a matter outside CIPA’s control as there are no restrictions on professional representation before the UK IPO. e. Council agreed with the Privy Council’s observations that Byelaw 23.1(b), removing a member of Council from Council if he or she ceases to be a Member if the Institute, did cover a member of Council who ceases to be a Member of the Institute as a result of death and that Bye-law 23.1(a) could be deleted. www.cipa.org.uk

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Actions: Lee Davies to prepare a revised draft version of the Bye-laws to incorporate the points agreed by Council and to pick up on some minor drafting comments made by the Privy Council. Lee Davies to present the revised draft Bye-laws to the July meeting of Council, having taken advice on the concern expressed by the Privy Council that the place of business requirement for EPA members could open CIPA up to a claim for discrimination under European law. Lee Davies to provide interim feedback to the Privy Council and advise the Privy Council on the likely timetable for presenting the Bye-laws to CIPA’s members by way of a resolution at a Special General Meeting.

Item 6: Regulatory issues 123/16: Council was pleased to learn that Caroline Corby had been appointed to succeed Michael Heap as the Chair of IPReg. Council noted that Caroline had pursued a career in private equity in the City for 13 years, had served as the Chair of the London Probation Trust (LPT) and had served as a Board member of the London North West Healthcare NHS Trust. Council was advised that Caroline is currently a Non-Executive Director of the Children and Family Court Advisory Support Service (Cafcass), the Parole Board and the Criminal Cases Review Commission. She also chairs fitness to practise panels for the Nursing and Midwifery Council and the Investigation Committee of the General Optical Council. Action: Alasdair Poore to approach IPReg to see if it would be possible for Caroline Corby to write an article on her appointment for the Journal.

Item 7: Unitary Patent and UPC 124/16: Council was advised that there would be a meeting with the UK IPO on 17 May 2016 which would pick up on the issue of double patenting raised during the April meeting of Council. The meeting would also address issues relating to the provisions for opting out under Article 83(3) and Rule 5 and issues relating to PCTs being deemed Volume 45, number 7

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to be not published if not in an EU language. The Code of Conduct for representatives acting before the UPC is nearing completion, with the European Patent Litigators Association (EPLIT) examining the latest draft of the Code. 125/16: On education and training, Council was advised that the Professional Development Working Group of the Education and Professional Standards Committee was working on a programme, which it hoped would run between September and November 2016. This would include a mock trial held

in conjunction with EPLIT in October. Council agreed that all members should be encouraged to undertake basic training and provided a steer to the Committee that introductory sessions on the Unitary Patent and UPC should be free to members, but that non-members should be charged under the existing arrangements for seminars and webinars. Council took the view that higher level training was a matter of personal preference and that these sessions should fit within the existing charging structure. Council agreed that it would be appropriate for sessions to be sponsored.

European patents and patent work remain unaffected CIPA press release, 24 June 2016: The Chartered Institute of Patent Attorneys has called for calm following the referendum vote to leave the EU and points out that it will be business as usual for at least two years during which time it will work with government for the best outcome for intellectual property rights holders. The decision to leave the EU will not affect European patent holders or restrict the ability of UK patent attorneys to carry out European patent work. The UK’s membership of the European patent system is independent of membership of the EU, as is the UK’s membership of the World International Property Organisation. Therefore, UK patent attorneys can still prosecute European patent applications for all UK and overseas clients. European patent applicants will not lose any rights and patents already obtained via the European Patent Office are unaffected. UK patent attorneys can still prosecute Patent Cooperation Treaty (PCT) patent applications – which provide protection in the applicant’s chosen countries – for all UK and overseas clients. PCT patent applicants will not lose any rights. CIPA President Tony Rollins called for calm as there would be business as usual for at least two years. “The UK will not immediately cease to be a member of the EU. The terms of the UK’s exit will need to be negotiated and some estimates suggest that this could take up to two years, if not longer. For now UK patent attorneys and registered trade mark attorneys will still be able to perform the same work they do now, and UK and overseas IP owners will not lose any IP rights or any access to EU IP registration systems.”

Keep up to date by following developments on CIPA’s web site at http://www.cipa.org.uk/policy-and-news/brexit-updates

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Council considered the relationship between the qualification requirements for entry to IPReg’s register of patent attorneys and the need for formal training in areas such as litigation in the UPC. Council noted that requirements outside the UK would need to be reflected in any future change to examinations or syllabus proposed by the Patent Examination Board and that in the future there might be the need for additional examinations over and above the minimum requirements for registration with IPReg and that this could be the distinction between Registered Patent Attorney status and Chartered Patent Attorney (Fellow) status.

Item 8: Communications Strategy 126/16: Neil Lampert presented the communications strategy, advising Council that it had been developed by the Media and PR Committee to guide CIPA’s work in this area. Neil informed Council that, subject to any proposed revisions, he intended to circulate the communications strategy to all committees that build and maintain relationships with external partners. Action: Council members to provide drafting or other comments to Neil Lampert prior to the circulation of the strategy to members. 127/16: Council considered the social media policy, contained within the communications strategy. A concern was expressed about the way in which the policy dealt with the personal social media accounts of staff, particularly where personal accounts were linked to CIPA through, for example, the inclusion of links in email signatures. A consensus emerged that it was difficult to make a distinction between private and professional use of social media and that organisations benefit from senior staff being active in social media. This, however, needs to be carefully managed through the social media policy. The use of a link through to a private social media account in electronic communications should not, of itself, be a problem. It is the content being broadcast where care needs to be taken, 8

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in particular where there is a link back to CIPA through the @theCIPA Twitter account being tagged in a Tweet or where there is a link via a hashtag to discussions which are professional in nature. Council agreed that the policy should make it clear that CIPA understands that the social media accounts of staff are personal but this should not preclude staff from using private accounts to contribute to professional discussions in social media. Council concluded that senior staff will recognise that there is a balance to be struck between the private and professional use of social media and that content intended for consumption through their external networks which fall outside the core CIPA audience will be visible to that audience. Council agreed that the statement in the draft social media policy “Private [personal] communications which do not refer to or claim to represent the views of the Institute are outside the scope of this policy” should be deleted. Council agreed that the social media policy did not need to be more prescriptive and should not try to dictate for every eventuality, but that the policy should say more about the difficulty disconnecting private and professional use of social media and the need for staff to be sensitive to this.

Item 9: Committees and committee reports 128/16: Exploitation Committee Council noted the report from the Exploitation Committee. 129/16: Congress Steering Committee Council noted the oral report from the Congress Steering Committee. 130/16: International Liaison Committee Council approved the appointment of Jim Boff to the International Liaison Committee. 131/16: Patents Committee Council noted the report from the Patents Committee and approved the appointment of Harry Harden to the Committee. Andrea

Brewster advised Council that Gwilym Roberts was standing down from the Patent Practice Working Group and read out a brief note of thanks prepared by Stuart Forrest on behalf of the Committee, which was met with acclamation. “Gwilym has been an extremely active member of both PatCom and PPWG. He has constantly pushed for CIPA to have a close working relationship with both the IPO and the EPO. This has certainly helped to raise CIPA’s profile at both institutions, which has been invaluable when responding to legislative changes. The IPO welcomes CIPA’s insight with each new consultation, and it actively chases both me and Gwilym to see if CIPA intends on filing a response to each new consultation. This didn’t happen when I first joined PPWG. I am sure that PPWG has been instrumental in several changes at the IPO since Gwilym has been involved. For example, in the short time that I’ve sat on PPWG, the IPO has implemented IPSUM and it is also moving towards a harmonised electronic system. These developments have spawned from suggestions within PPWG. Finally, Gwilym was also involved in EPLC, a small subgroup of PatCom that aimed to be a quick reaction task force set up to lobby the EPO and prevent absurd legislative changes. I think that EPLC achieved its goal on several occasions, and it has had the inevitable consequence of placing CIPA on a stronger footing with the EPO. For example, I see that the EPO has brought some of the more recent proposed legislative changes to the attention of CIPA, which is something that would never have happened several years ago. It’s been a real pleasure to work with Gwilym closely the last few years, and I am particularly grateful for his support and enthusiasm (especially on the early morning train to Newport). He will be missed at PPWG, but it is certainly a much, much richer forum following his involvement.” www.cipa.org.uk

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132/16: Litigation Committee Council noted the report from the Litigation Committee and thanked the Committee for its response to the EU Commission’s consultation on enforcement of IPRs. 133/16: Trade Mark Committee Council noted the report of the Trade Mark Committee. 134/16: Media and PR Committee Council noted the oral report of the Media and PR Committee. Neil Lampert informed Council that the Committee’s work on developing a suite of video case studies was progressing well. Neil added that the Committee still hoped to set up a debate with the Economist on the value of the patent system, but as yet there had been no reply from the editor. Neil advised Council that the Committee had negotiated a deal for CIPA to cobrand a report on IP being published by the Times and that articles from CIPA authors would be included in the report. 135/16: Life Sciences Committee Council approved the appointment of Michelle Jones to the Committee. 136/16: Administrators Committee Council was informed that the Committee was making good progress with its plans for an administrators’ conference to run alongside CIPA Congress. [See page 55.]

Item 10: Officers’ Reports 137/16: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 138/16: Council noted the Chief Executive’s report.

Item 12: Applications for election 139/16: Fellows Council approved the following first time Fellow applications: Joseph John Muddiman; Guy Anthony Robert Brain; Victoria Louise Allen; Freya Jane Hine; Ben Ellis Jones; Chloe Grover; Laurence Lai; Alexander William George Burns; Joseph Brown; Hermione Thompson; Volume 45, number 7

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Emma Victoria Bristowe Winship; Susan Marie Hancock. Council approved the following second time Fellow application: Christopher Owen

survey on patent professionals’ attitudes to its patent filing services. The data is currently being analysed by the IPO and the full report will be shared with CIPA.

140/16: Associate members Council approved the following first time Associate membership application: Howard Graham Read

147/16: Benevolent Association. Council noted that the Benevolent Association held its AGM before this Council meeting. Andrea Brewster proposed a vote of thanks to Derek Chandler (Secretary), Chris Eyles (Treasurer) and the Trustees for the hard work that they put in, which was passed by acclamation.

141/16: Students Council approved the following Student membership applications: Eleanor Cornish; Joanna Rowley; Gavin Hackett; Stephanie Stevenson-Smit; Stephanie Thomas; Jack Hennessy; David Verne; Dominic Clacy; Nathaniel Stott; Mark Sellick; Hijime Kumami.

Item 13: Resignations, etc 142/16: Council noted the report on resignations and approved a request to reinstate Anna Bartholomew and Cheryl Small.

Item 14: Any other business 143/16: Succession planning. Council members were reminded to send any comments on the succession planning documents presented at the April meeting of Council to Lee Davies. 144/16: epi consultation on the EQEs. Council received an update on the Education & Professional Standards Committee’s response to the EQE consultation on the epi forum. Council members were asked to forward any comments about the consultation directly to the Chair of the Education & Professional Standards Committee, Simone Ferarra. 145/16: Ariosa v Sequenom – US Supreme Court petition stage Council applauded Paul Cole in his absence for his work on submitting an amicus brief to the US Supreme Court on behalf of CIPA. 146/16: IPO matters. Council noted the publication of the UK IPO’s corporate plan and the response from CIPA. Council noted that almost 200 members participated in the IPO

148/16: Australian ‘Hargreaves Review’. Council noted that the Australian government had published its equivalent of the Hargreaves Review. Roger Burt said that he would circulate the publication to Council via the Bulletin Board.

Item 15: Date of next meeting 149/16: Wednesday 1 June, 2016. There being no other business, the President closed the meeting at 17:00. Alasdair Poore proposed a vote of thanks to Andrea Brewster for a fantastic year as President. Alasdair said that Andrea really got to know the members through her ‘Grand Tour’ and became the driving force behind SILC, IP Inclusive, rebuilding the relationship with IPReg and developing CIPA’s education programme. Alasdair said that Andrea was an excellent communicator who had been instrumental in bringing CIPA into the 21st Century. Alasdair added that personally he found it regrettable that Andrea had felt obliged to stop the Not-So-Secret-Diary which had done so much to popularise the profession with external partners. Alasdair praised Andrea’s leadership of Council, which he described as pragmatic, patient and supportive. Alasdair said that ‘getting things done’ had been a feature of Andrea’s presidency and that CIPA’s reputation had been enhanced as a result. Council celebrated Andrea’s year as President with a round of applause. Lee Davies, Chief Executive JULY 2016

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COMMITTEES

International Liaison International Liaison Committee report of the CIPA/IPIC meeting, 17 May 2016. CIPA and IPIC update Intellectual Property Institute of Canada (IPIC) described a number of developments concerning IP issues in Canada.

Computer-implemented inventions in Canada Acceptance is difficult to predict for such inventions. Reference is often made to previous cases in order to achieve grant, such as the Amazon “One click” patent allowed by the Canadian Court. Examiners look at the essential elements in a claim in determining patentability.

Privilege Statutory provisions for patent agent and trade mark agent privilege came into force on 23 June. Covers procurement and enforcement of rights. Includes recognition of foreign privilege in Canada.

Duty of candour 2011 Court of Appeal decision says that one cannot attack a patent post-grant for not fulfilling duty of candour in prosecution. No obligation to provide cited art unless Canadian Intellectual Property Office (CIPO) requests it.

Recent developments in Canadian IP practice In a recent software trade mark case, an application to strike out a trade mark alleged that the registered mark had not been used for three years. The question was: what were “goods”? The case is to be appealed. IPIC is anticipating legislation on plain packaging for tobacco products. In Quebec, the government has proposed the requirement that you put descriptive language in French for English language trade marks. The Patent Law Treaty and amendments to the Patents Act proposed in 2014 are not yet in force in Canada; 10

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they will make a number of changes to Canadian practice/procedure to help the applicant. CETA (the Canada-EU Comprehensive Economic and Trade Agreement) proposes a patent term restoration with a two-year cap, with an exception for products for export. This is likely to go ahead. TPP (the Trans-Pacific Partnership): Canada joined the discussions late on. On IP, most provisions had been included in CETA discussions apart from the term restoration for CIPO examination delay. Copyright proposed to last for the life of author plus 70 years (instead of 50). The new government is going to debate the TPP in Parliament. Can you rely for inventiveness on advantages/properties that were not disclosed in the patent application? In a case (AstraZeneca) before the Supreme Court of Canada, the patent was held to be novel, useful and sufficiently disclosed but the specification refers to a particular property (less variation in patients than the prior art) that is neither demonstrated nor a sound prediction.

Developments in the Canadian IP regulation system (governance) In conjunction with the grant of privilege, IPIC is expecting consultations in the near future on the new regulatory body

for patent and trade mark agents. IPIC will be proposing self-regulation. Tony Rollins described our experience with IPReg and the Legal Services Act.

The new global IP alliance Alex Bone described the Japan Patent Attorneys Association initiative on the above (with useful background explanation of the Global Dossier by Tony Rollins) and Richard Mair provided further information about the meeting in Japan earlier this year.

Patent Box A form of Patent Box is to be introduced into Quebec (the “Innovation Box”).

Next CIPA/IPIC meeting Due to be in the UK – May/June 2017.

AIPLA Spring meeting Tony Rollins, Michael Williams and Paul Misselbrook attended the Spring American Intellectual Property Law Association (AIPLA) meeting on behalf of CIPA. There were a number of informal meetings plus a constructive meeting with the AIPLA executive team where education, patent law harmonisation and pro-bono work were discussed. Tony Rollins, CIPA President www.cipa.org.uk

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COMMITTEES

Pro-Bono Committee Report of the Pro- Bono Committee meeting, 25 May 2016. Appointment of new chair Tony Rollins confirmed that because of his busy schedule as President he will be handing over Chairmanship of the Committee to Stephen Jones, who will chair the next meeting.

Terms of Engagement Stephen Jones presented draft Terms of Engagement to act as a template for those firms not currently engaged in pro bono work or where existing Terms of Engagement did not adequately accommodate pro bono work.

Data protection As a committee of CIPA, the data collected from applicants will be covered by CIPA’s registration with the Information Commissioner’s Office (ICO). Lee Davies reported that any financial information collected online would require CIPA to make an extension to its data protection registration. The Committee agreed that forms for collecting information from applicants will be downloaded and they can then be printed and posted or sent electronically.

Means testing The Committee had previously agreed that the threshold for small businesses applying for assistance should be £100,000 turnover per annum. The Committee agreed to adopt the higher rate tax band (currently £43,000) for individual applicants.

Case officers Stephen Jones agreed to draft a job description/role specification for case officers. Stephen will also draft an outline of the role of the pro bono advisor. Lee Davies will prepare a process map.

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legal assistance will be covered by a firm’s insurance under its normal client relationship. The Committee considered in-house (industry) attorneys and noted that it was both unlikely and undesirable for CIPA’s insurance to be extended to include in-house attorneys providing legal assistance as this could lead to complicated claims and was likely to be cost prohibitive. It was noted that in the US in-house attorneys commonly partnered with private practice firms when providing pro bono legal assistance and that a similar model should be encouraged.

Database and website Lee Davies reported that the University of Arts ‘Own-It’ database and website and seemed to have all of the functionality required but that the website would need to be rebranded and the content changed and that this would require an investment of approximately £5,000-£7,000. Lee added that he had been in contact with University of Arts technical staff but had not received a response on any other costs associated with taking on the database and website. Stephen Jones agreed to follow this up.

CIPA Committees, 2016-17 A full list of CIPA Committees can be seen online at www.cipa.org.uk/about-us/people/cipa-committees

Laws Committees Computer Technology Committee Chair: Simon Davies Designs & Copyright Committee Chair: David Musker Life Sciences Committee Chair: Simon Wright Litigation Committee Chair: Vicki Salmon Pro Bono Committee (sub-committee of Litigation Committee) Chair: Stephen Jones Patents Committee Chair: Tim Jackson Trade Marks Committee Chair: Keith Howick

Internal Committees Administrators Committee Chair: Vicky Maynard Business Practice Committee (joint with ITMA) Chair: Chris McLeod (ITMA) Vice-Chair: Matt Dixon (CIPA) Congress Steering Committee Chair: John Brown Constitutional Committee Chair: Alasdair Poore

Education & Professional Standards Committee (EPSC) Chair: Simone Ferrara Informals Committee Honorary Secretary: Ben Charig Internal Governance Committee Chair: Bobby Mukherjee Patent Examination Board Chair: Rob Taylor (Lay Member) Textbooks & Publications Committee Chair: Bill Jones

Outside Interest Committees Academic Liaison Committee (to be incorporated into the Education & Professional Standards Committee) Chair: Tony Rollins Exploitation Committee Chair: Catriona Hammer International Liaison Committee Chair: Richard Mair Media & Public Relations Committee Chair: Jerry Bridge-Butler Protected Titles Committee Chair: Lee Davies Regulatory Affairs Committee Chair: Chris Mercer

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INNOVATION PLAN

National Innovation Plan CIPA’s response to the National Innovation Plan: call for ideas, 27 May 2016. See more details at https://bisgovuk.citizenspace.com/innovation/national-innovation-plan. 1. How best can our regulators drive innovation and make the UK the regulatory test bed capital of Europe? CIPA supports proportionate and transparent regulation, which it believes can be beneficial for businesses. In public procurement in particular, practices should be similar to those normally used in commercial business to business deals. The government should be encouraged to make public procurement processes easier so that all organisations, both public sector and private sector, can participate. The associated contracts should be simple and proportionate to the value of the deal and should be accessible to participants of all sizes. 2. How can we deliver real culture change within public procurement? See the answer to 1 above. Contract terms for public procurement should be simple and should take account of the procedures normally used in business-to-business procurement deals so that innovation is not delayed. There have been suggestions that procurement contracts should contain IPfree/royalty-free terms. Government should be open to all models of IP exploitation in public procurement and should not favour any specific IP model over another. Different sectors need different models of IP exploitation – one size does not fit all. The government should consider adding a question in the tendering process, asking parties whether they have any IP rights which should be taken into consideration. This may act as a spur for SMEs to consider securing their IP rights when entering the process. 3. How can we ensure that we put the UK at the forefront of open data opportunities? CIPA generally supports the work that the 12

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government is doing on open data. The government should continue to support businesses that wish to commercialise their aggregated data. At the same time, the privacy of individuals should be respected and individual data protected. Care should be taken to ensure that data protection law and regulations allow for collaborations and innovation, while, of course, respecting the privacy of individuals. 4. Where can we maximise the opportunities for innovation, as we deliver high-quality infrastructure that unlocks broad economic opportunities? In order to encourage businesses to use their most cutting-edge technology in infrastructure projects, businesses should be reassured that the government will not impose onerous IP ownership and licensing terms on them. Concern about such terms deters businesses from making their best technology available for infrastructure projects and consequently they are currently more likely to use older technology. Where innovations arise from collaborations, whether between businesses or between a business and a university, the parties should share the rewards fairly, taking account of their contributions and levels of risk borne. 5. Where can the UK work alongside the private sector to create the deepest pool of innovation finance in Europe? The UK government should continue to fund blue sky research in universities and research institutions that does not have an obvious short-term commercial application. It should also continue to support innovation in businesses through incentives such as the R&D tax credit. The government should ensure that students from diverse backgrounds are encouraged to study STEM subjects. CIPA strongly supports the UKIPO’s

work in educating innovators, business people and financial professionals and will do what it can to assist. The government should consider making it easier for high-tech companies to obtain private sector loans and investments relating to IP. CIPA would be happy to assist in evaluating different mechanisms for improving IP finance and insurance and facilitating trade in IP assets. Specific assistance for universities may also be required to ensure that they can protect their IP. 6. What do we need to do to get maximum benefit to the UK economy from challenger businesses? Starting a business is inherently risky and many will inevitably fail. The UK government should ensure that the consequences of failure do not deter people from trying again, but rather enable them to learn from the experience and start again. We would be happy to assist with the IP aspects of any learning mechanisms that the government might want to put in place. 7. How can we ensure that the UK’s inventiveness and creativity capitalises on our strong intellectual property system to generate growth and further innovation? CIPA agrees that the UK has a strong IP system. It would be beneficial for young people to receive more education on IP at school and university. CIPA also strongly supports the work that the UKIPO and the Intellectual Property Awareness Network (IPAN) are doing in helping the public understand the importance of IP and in particular, how it is a business tool rather than an academic concept. The Lambert toolkit for agreements between businesses and universities has been very successful. We support the work to update the templates and would www.cipa.org.uk

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be happy to assist. The templates are also useful starting points for negotiations between businesses and consideration should be given to developing templates specifically for agreements between SMEs and larger companies. The Intellectual Property Enterprise Court is a very successful forum for enforcing IP rights. The government should also ensure that there is a good manufacturing base in the UK with skilled employees to commercialise innovations. A large amount of innovation in the UK is carried out by high-growth but cash-poor high-tech start-ups and small businesses. These entities often fail to protect valuable IP, for want of cash early in the development cycle and indirect benefits like the Patent Box are typically of

INNOVATION PLAN • OFFICIAL

no assistance to these businesses that have no taxable profits. We would therefore encourage measures that could assist UK high-tech companies in obtaining IP at an early stage in development. The government should evaluate the mechanisms used by other countries to provide such assistance. Is there anything else the UK could need to do to create the best possible framework for innovation? The UK government should ensure that there is a level playing field for UK businesses and their European counterparts. France and Italy, for example, offer subsidies for filing internationally, which the UK does not. The UK government should consider similar arrangements.

Care should be taken before implementing criminal sanctions for IP infringement. Innovation takes many forms and we should be careful to protect both those who create first and those who are inspired by the first creation to produce something else. As mentioned above, the Lambert toolkit is a good model and we support the ongoing work to update the templates. Once updated, this could be extended to SMEs and other businesses. Most importantly, the government should ensure that there is a skilled, mobile and diverse workforce in the UK by investing in education and training, including education about IP and starting businesses. Consideration should also be given to establishing mentoring networks for businesses.

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

Update

4A.08 - 4A.10

Expanded guidance on methods of surgery, based on Enlarged Board of Appeal decision G 01/07 and Virulite Ltd's Application BL O/058/10.

4A.22, 4A.28.3

Revised guidance on first and second medical use claims in relation to inactive carriers or excipients,

& 4A.31

non-medical uses and apparatus.

4A.31

Expanded guidance on novelty of second medical use claims.

17.96.1-17.96.2

Updated guidance on how examiners should respond when search would serve no useful purpose – indicating that issuing an examination report before search is very rarely appropriate.

17.111

To indicate that the filing of a large number of further searches – under section 17(6) – is undesirable – for efficiency and fairness the examiner should consider carrying out fewer searches than requested.

17.113

Where multiple search requests are filed before the initial search report has issued, the search examiner will normally search only the first invention.

17.122

Clarifying the circumstances in which a further search and fee (under section 17(8)) may be required.

18.10.1-18.10.4,

Updated to clarify practice around family matching, equivalents, and online file inspection.

18.85 18.64

The examiner should consider a response to a s.18(3) report within half the time remaining of the compliance period. That is, within that time, the examiner should either issue a response or send the application forward to grant.

73.04.1-73.04.3

Updated procedure for revocation process under section 73(1A).

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EPO

EPO Boards of Appeal The EPO President has made further proposals for reform of the EPO Boards of Appeal, for consideration by the Administrative Council at its meeting on 29/30 June 2016. CIPA's Patents Committee sent comments as follows.

he Chartered institute of Patent Attorneys (CIPA) is the United Kingdom professional body which represents over 2000 UK patent attorneys. Most of our UK patent attorney members are also European Patent Attorneys. We also have a number of other members who are European Patent Attorneys while not fully qualified as UK patent attorneys. Our members play major roles in representing clients before the EPO Boards of Appeal. CIPA welcomes the basic principle that the Boards of Appeal (the “Boards”) of the European Patent Organisation (the “Organisation”) should be functionally independent from the European Patent Office (the “Office”). However, CIPA considers that the proposals presented in CA/43/16 require amendment to provide the Boards with functional independence from the Office. This would also be an excellent opportunity to ensure appropriate user involvement. CIPA also considers that the question regarding the level of the Appeal Fee should not be considered while considering the independence of the Boards. The level of the Appeal Fee has a significant effect on access to justice and so requires independent consideration. CIPA notes that the proposals on conflicts of interest are not specific to the Boards. However, the proposals will have effects on members of the Boards and could adversely affect the possibility of recruiting Board members from outside the Office. CIPA considers that the Boards should have members who were not “promoted” from within the Office.

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Independence of the Boards CIPA welcomes the principle that there should be a President of the Boards who is responsible for the Boards, that there is a Board of Appeal Committee (the “BOAC”) and that the President of the Office has agreed to delegate his powers and duties regarding the Boards to the President of the Boards. However, there are a number of points where the independence of the Boards seems to be restricted and CIPA considers that these need to be addressed. Budget: in CA/43/16, it is said that the budget of the Boards will be forwarded to the President of the Office “for consideration” for the Organisation’s yearly budget. CIPA is of the view that the budget of the Boards should be forwarded to the President of the Office who should, without amendment, incorporate it into the Organisation’s budget for consideration by the Budget and Finance Committee (the “BFC”) and approval by the Administrative Council (the “AC”). If there is any suggestion that the President of the Office controls the budget of the Boards, it will be considered that the Boards are not independent1.

Service Level Agreements: CIPA agrees that it may be uneconomical for the Boards to have a completely separate organisation for HR, IT and administrative and other services and agrees that these could be provided by existing departments of the Office where appropriate. A shared online filing system, as currently prevails, is a major benefit for users. However, in order to ensure that the Boards are independent, it will be necessary to draft the Service Level Agreements very carefully, and to allow the President of the Boards the option to set up or buy in services independently instead. If the Boards see the need for separate systems then these should be implemented in a cost-neutral manner and with user consultation. The BOAC: in CA/43/16, it is suggested that the President of the Office should be an observer at the meetings of the BOAC. CIPA considers that this would also give the impression that the President of the Office still has an influence on the Boards. It is therefore suggested that the President of the Office should not be an observer at the BOAC unless invited by the BOAC. The BOAC: CIPA suggests that there needs to be much more user involvement in the governance of the Boards. This could be provided by having user representatives as permanent observers at the BOAC, or a requirement to consult users on changes, e.g. by way of open meetings. Ordinary members of the Boards should also be permanent www.cipa.org.uk

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observers. An alternative would be to institute a Standing Committee for the Boards similar to SACEPO. The Presidium: CIPA welcomes the fact that the Presidium will continue to operate essentially as at present. However, CIPA again notes that there is no user input to the Presidium, which could be provided in a similar way to the BOAC. The Rules of Procedure: CIPA considers that the President of the Office should have no input into the development of the Rules of Procedure (the “ROP”) of the Boards. These should be developed by the Presidium and the BOAC, with user consultation, and presented to the AC for approval. CA/43/16 implies that user consultation would be desirable (paragraph 25) but fails to provide for it. We note that users are involved in the development/amendment of the rules of procedure of both the English courts and the UPC. The President of the Office should be entitled to provide comments to the AC when any amendments to the ROP are proposed by the BOAC2. Delegation of Powers: it is not clear from the papers but it seems to be the case that the President of the Office will not delegate his power to propose candidates for the President of the Boards. CIPA considers that this will undermine the attempts to make the Boards independent of the Office. CIPA suggests that the AC and BOAC should take complete control of the process with no assistance from the President of the Office. They could, for example, employ a recruitment organisation to provide candidates for consideration. Thus, the Act of Delegation should be amended to ensure that the President of the Office does not exercise his power to propose a new President of the Boards. Delegation of Powers: CIPA sees that there is a tension between the independence of the Boards and the possibility for the President of the Office Volume 45 number 7

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to withdraw his delegation set out in Article 5 of the Act of Delegation. If the delegation is withdrawn, then the independence is also withdrawn. This problem arises because of the opinion of Professor Sarooshi. CIPA considers that this problem could be overcome by a contractual arrangement between the AC and the President of the Office which would require the President of the Office to consult the AC before withdrawing any delegation. Alternatively Article 5 might be amended to read: “This Act of Delegation may only be revoked by the President of the European Patent Office on his own initiative after consultation with, and approval by, the Administrative Council”. Delegation of Powers: CIPA considers that Article 3(b) of the Act of Delegation should be amended. The President of the Office should only comment on the management report after it has been submitted to the AC. Article 3(d) should be deleted. It gives the impression that the President of the Office will retain the power (widely criticised by external judges and others) to impose a house ban on a Board of Appeal member, pending action by the Administrative Council.

Any such sanction should be the responsibility of the President of the Boards of Appeal. Career Structure: in principle, CIPA has no objection to the proposed career structure for members of the Boards. However, CIPA considers that there will be some more concrete structure behind the proposal. In particular, candidates will need to know what criteria are to be met for appointment and members of the Boards will need to know what criteria are to be met for re-appointment and for re-appointment with promotion. Relocation of the Boards: CIPA considers that the location of the Boards is significantly less important than the functional independence of the Boards. The Boards are already considered by the users to be independent of the rest of the Office and the fact that the Boards are in the Isar Building does not detract from that view. There are no examiners or opposition division members in the Isar Building. There does need to be a permanent allocation of enough space within the building entirely reserved for the Boards and their users3. We would not oppose relocation to another suitable building within Munich if that could be done on a basis which was cost-neutral to users.

Notes and references 1. CIPA considers that the President of the Office should be required to comment on the proposed budget of the Organisation, including the budget of the Boards, but that such comments should be provided to the BFC and to the AC. The AC still has the duty to approve the budget of the Organisation and should take into account the comments of the President of the Office. Moreover, CIPA considers that the AC should decide that the President of the Boards is a permanent observer at the meetings of the AC and the BFC. 2. It is noted that the AC can only approve or disapprove the ROP. It may be worthwhile to consider whether the AC should be empowered to make amendments to any proposal from the BOAC. CIPA also notes that there is no mention of the Committee on Patent Law (the “CPL”). It is considered that the ROP should be considered by the CPL which should provide an opinion to the AC. 3. In addition to space for the Boards, this would allow more facilities for users – the present representatives’ room is inadequate where there are a number of oral proceedings going on – which will improve the conduct of oral proceedings.

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The appeal fee There has been no direction from the AC that the question of cost coverage should be addressed in connection with the independence of the Boards. This is an entirely separate subject and should be treated as such. It is to be noted that the previous paper submitted to the AC (CA/16/15) did not address the question of the Appeal Fee and there was no user consultation of the topic. CIPA therefore suggests that, if the AC considers that this is a topic which needs to be addressed, then a separate topic should be raised and considered by the BFC and the CPL before being considered by the AC. CIPA is ready to provide detailed input if the AC were to decide to address this topic. However, CIPA can point out now that many of the points made in CA/43/26 are debatable or have no basis in any decision of the AC, and notes that: •

• •

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An effective, independent appeal procedure, affordable to SMEs, serves the interests of justice and supports public confidence and a good reputation for the office. Appeal provides an independent quality control function. The current appeal fee is comparable with the appeal fees of the US and Japan. The comparison of the appeal fee with the fee for revocation before the UPC and the fee for inter partes review in the US appears disingenuous, given the very different nature and purpose of such proceedings from appeal. The last increase in appeal fees (by 50%) resulted in a more than 25% drop in appeals in examination, decreasing the quality control function over the Examining Divisions. The cost is a factor when an applicant decides whether to appeal a poor decision.

In short, a proposal to increase appeal fees requires significant thought and analysis, as an increase could significantly damage the checks and balances in the present system. 16

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CIPA does not support the present proposal on appeal fees.

CA/29/16 CIPA agrees that it is necessary to have provisions for avoiding conflicts of interest. However, these should be workable, transparent and encouraging. We question whether broad discretionary proposals would be enforceable in a national court if necessary. We also question the relationship between CA/29/16 and the proposed Code of Conduct to be developed by the Presidium (proposed Rule 12b(3)(b) EPC). If the provisions are too onerous, it will be difficult to attract candidates to the Office or to the Boards. In particular, if the Organisation intends to encourage non-Office candidates to become Board members, then it should be possible for such candidates to return to their previous career paths without burdensome restrictions. It is pointed out that at a practical level, the problem of conflict of interest is much reduced compared to that which can occur with other public servants. Generally, ex-members of the Board will be working on particular cases, not on matters of policy, and so the likelihood of a conflict of interest arising is reduced. It also needs to be borne in mind that any Board member will have demonstrated discretion and understanding of sensitive issues and so there is no need for onerous or draconian provisions regarding Board members.

Summary CIPA considers that it should be possible to take concrete steps to make the Boards independent. CA/43/16 provides a reasonable basis where it refers to considerations of independence. However, changes are required to ensure that there is no impression that the President of the Office has any influence or control over the Boards, and to provide appropriate user involvement. This can be achieved on the basis of the documents attached to CA/43/16 with appropriate amendment.

Overseas report Patents and trade marks Bahrain: As of 26 May 2016, trade mark official fees have dramatically increased (approximately 500%) in Bahrain. China: The Beijing Intellectual Property Court Precedent Judgement System is to become a research base for Supreme Court IP trials. The system allows the Beijing IP Court to cite precedent judgments in future judgments. It has been indicated that a court should follow precedents from the same or a higher court, and mutually respect precedents from courts at the same level. India: On 16 May 2016, the Indian Patent (Amendments) Rules 2016 came into force. A number of changes have been introduced under the new rules including the extendable deadline for putting an application in order for grant being reduced to six months from the date of the first examination report.

International treaties Marrakesh Treaty (Access to Published Works for the Visually Impaired): On 10 May 2016, the Government of the Republic of Chile deposited its instrument of ratification of the Marrakesh Treaty. The date of entry into force of the said Treaty will be notified when the required number of ratifications or accessions is reached. Dr Amanda R. Gladwin (Fellow) www.cipa.org.uk

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What is the term of a European patent? The title of this article poses what appears to be a simple question but which, upon detailed analysis, is anything but. By Mike Snodin (Fellow) and Jim Boff (Fellow).

ivergence in laws and/or practice on patent term amongst the Contracting States to the EPC (and, in particular, those Contracting States that have ratified, or that will ratify, the UPC Agreement) poses serious problems that, in the view of the authors, require urgent attention. It is therefore hoped that the arguments and explanations below will provide a spur to action for those national patent offices affected by this issue. For reasons given below, this is particularly important for the UK IPO.

The European problem Background Article 63(1) EPC defines the term of a European patent as: “20 years from the date of filing of the application”. All signatories to the European Patent Convention therefore have an obligation to afford European patents the term of protection specified in Article 63(1) EPC. It is a reasonable assumption that the framers of the European Patent Convention intended there to be only be one correct interpretation of “20 years from the date of filing” However, the signatories to the EPC have applied no fewer than three different interpretations of Article 63(1) EPC in their collective national laws. This has been done either through the use of diverging statutory definitions (as in the UK) or diverging interpretations of the laws (e.g. as applied by the national courts). The majority of EPC Contracting States (including Germany) have excluded the date of filing of the patent application from the calculation of patent term, thereby effectively viewing “from the date of filing” as meaning “from the end of the date of filing”. Volume 45, number 7

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On the other hand, a significant minority (including the UK and France) have included the date of filing of the patent application from the calculation of patent term, thereby effectively viewing “from the date of filing” as meaning “from the beginning of the date of filing”. Finally, in a minority of one, Greece appears to calculate patent term from the end of the day after the date of filing. This situation is clearly undesirable, not least because it means that a significant number of EPC Contracting States are in breach of an obligation to provide (in their national laws) the patent term stipulated in the EPC. Nevertheless, despite hardly being a secret, this situation has persisted for many years (e.g. in the UK since the Patents Act 1977 came into operation).

Urgent need for harmonisation The EU Regulation implementing enhanced cooperation in the area of the creation of unitary patent protection (Regulation no. 1257/2012) has imparted a new urgency to the need to seek a harmonious interpretation of Article 63(1) EPC.

EU referendum This article was submitted before the referendum result to leave the EU. While the urgency for the UK to change the date of expiry may be reduced as there are significant questions about whether the Unitary Patent can still go ahead based upon the present wording of the UPC Agreement, non-compliance with the EPC still needs to be addressed.

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Regulation no. 1257/2012 creates a unitary right, and a unitary right can clearly only have one expiry date that applies to all of the territories in which it has effect. This principle is enshrined in Article 3(2) of Regulation no. 1257/2012, which states that a European patent having unitary effect (EPUE):

fact that a key difference in wording (“beginning with the date of filing the application” vs. “from the date of filing of the application”) appears to have been interpreted as ruling out the interpretation of Article 63(1) EPC adopted by the majority of EPC Contracting States, wherein the date of filing is excluded from the calculation of patent term. It is noteworthy and amusing that the effect of including the date of filing of the application in the calculation of term, is that it is possible for a patent to have a term that includes a period before the application was filed (or even before the invention was made)1.

“may only be limited, transferred or revoked, or lapse, in respect of all the participating Member States” [emphasis added]. If and when it becomes operational, the Unified Patent Court (UPC) will therefore need to reach a single interpretation of Article 63(1) EPC, which will conflict with at least one of the interpretations currently used in EPC Contracting States in which the EPUE will have effect. A different (i.e. conflicting) interpretation of Article 63(1) EPC may not pose a particular problem for those EPC Contracting States (such as France) where, once ratified, international treaties (such as the EPC and TRIPS) have direct effect. This is because the courts in those Contracting States can simply apply an interpretation based upon the provisions of an international treaty, even if it that interpretation conflicts with a plain reading of the provisions of national law. However, there is a serious problem for those EPC Contracting States (such as the UK) where the courts are unable to apply the provisions of international treaties unless and until those provisions are formally incorporated by amendment of the relevant national law(s). For those EPC Contracting States there is therefore now a very significant risk that the term of protection awarded to EPUEs (e.g. by the UPC) will be contrary to national law. Additionally, Article 2(2) and 64(1) of the EPC oblige Contracting States of that Convention to ensure that a European patent has the same effect (including conferring the same rights) as a national patent. Thus, whatever term derives from the correct interpretation of Article 63(1) EPC is also the term that EPC Contracting States are obliged to award to national patents, and not just European patents.

The suggested correct interpretation of Article 63(1) EPC There is no explicit indication in Article 63(1) EPC that the phrase “20 years from the date of filing of the application” means that the date of filing is excluded from the period of 20 years. However, there are numerous reasons why it can be concluded that this is precisely what was intended. (i) Provisions of the EPC Article 120 EPC states that: “The Implementing Regulations shall specify: (a) the time limits which are to be observed in proceedings before the European Patent Office and are not fixed by this Convention; (b) the manner of computation of time limits and the conditions under which time limits may be extended...”. It is clear that paragraph (b) of Article 120 refers to both time limits specified in the Implementing Regulations and in the Convention. This is evident from fact that paragraph (b) refers to “time limits” in general, and not just the time limits mentioned in paragraph (a). The “manner of computation” referred to in paragraph (b) of Article 120 is provided by way of Rules 131(2) and (3) EPC 2000, which correspond to Rules 83(2) and (3) EPC 1973 and which state that: “(2) Computation shall start on the day following the day on which the relevant event occurred, the event being either a procedural step or the expiry of another period. Where the procedural step is a notification, the relevant event shall be the receipt of the document notified, unless otherwise provided.

The problem for the UK The legislation Under Section 25(1) of the 1977 Act, a patent having effect in the UK: “shall continue in force until the end of the period of 20 years beginning with the date of filing the application for the patent”. It is unclear why the legislator chose to employ wording that differs so significantly from that of Article 63(1) EPC. That choice is particularly unfortunate in the light of the 18

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(3) When a period is expressed as one year or a certain number of years, it shall expire in the relevant subsequent year in the month having the same name 1.

Invention made at breakfast, application filed at teatime, patent term includes the whole day. www.cipa.org.uk

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From the above arguments, it appears that the UK is, and always has been, in breach of the obligation to provide the patent term specified in Article 63(1) EPC.

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and on the day having the same number as the month and the day on which the said event occurred, provided that if the relevant subsequent month has no day with the same number the period shall expire on the last day of that month”. [emphasis added]. Whether or not it is accepted that the filing of a patent application counts as a “procedural step”, Rules 131(2) and (3) EPC 2000 together make it clear that periods specified in the Convention that run from the filing of a patent application (such as the period of 20 years specified in Article 63(1) of the Convention) must be calculated by excluding the date upon which the application was filed. Use of this same “manner of computation” is also essential to ensure that Article 87 EPC is consistent with the Paris Convention. This is because Article 87(1) EPC does not stipulate the “manner of computation” of the period of priority but instead merely refers to: “a right of priority during a period of twelve months from the date of filing of the first application” [emphasis added]. Given that the Paris Convention explicitly excludes the date of filing of a first application from the calculation of the period of priority (see below), Article 87(1) EPC is only consistent with the provisions of the Paris Convention if interpreted in the light of the principles of Rules 131(2) and (3) EPC 2000. To interpret the same phrase “from the date of filing of the (first) application” differently in Article 87(1) EPC and Article 63(1) EPC requires some significant mental gymnastics and appears contrary to all logic. This illustrates perfectly why the principles of Rules 131(2) and (3) EPC 2000 must also be taken into account when interpreting other periods specified in the EPC (including Article 63(1) EPC). (ii) The Vienna and Paris Conventions As the EPC is an international treaty, the terms of that Convention is normally interpreted in accordance with the rules of interpretation that are set out in the 1969 Vienna Convention on the Law of Treaties. Article 31(1) of the Vienna Convention states that: “A treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose” [emphasis added]. With this in mind, it is important to determine whether there is an “ordinary meaning” that can be ascribed to the starting point for a calculation of a period that is set to run from a “trigger” date (such as a patent filing date).

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As one of the longest-standing international conventions relating to intellectual property, the Paris Convention represents a particularly important source of such an “ordinary meaning”. This is because Article 4(C) of the Paris Convention stipulates that:

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the inception of the EPC, to exclude the date of a “trigger” event from the calculation of a period running from that event. Particular examples of that practise may be found, for example, in: •

“(1) The periods of priority referred to above shall be twelve months for patents... (2) These periods shall start from the date of filing of the first application; the day of filing shall not be included in the period” [emphasis added]. The second sub-clause of Article 4(C)(2) provides an unambiguous clarification of what is meant in the first subclause by “from the date of filing”. That is, it clarifies that the “ordinary meaning” of that phrase is “from the end of the date of filing”. However, as will be evident from what follows, this is not the only reason for believing that this is the “ordinary meaning” of the crucial phrase in Article 63(1) EPC. (iii) Regulation no. 1182/71 (Euratom) Regulation (EEC, Euratom) no. 1182/71 entered into force on 1 July 1971 and sets out how the rules applicable to periods, dates and time limits are determined under Community law. Whilst the EPC is not Community law, all but one of the original Contracting States to that Convention were members of the European Economic Community at the time that the EPC was originally drafted. Thus, Regulation no. 1182/71 is highly pertinent to the interpretation of the EPC, as it contains a set rules under which the authors of the EPC will have been accustomed to operating. Regulation no. 1182/71 contains different rules for calculating deadlines, dependent upon the manner in which the deadline in question is set (and for which purpose). The only provision of Regulation no. 1182/71 that is relevant to periods (such as that set in Article 63(1) EPC) that are applicable to multiple parties and that are set by reference to a particular “trigger” event (which event can occur on any date) is Article 3(1). Amongst other things, that Article states the following: “Where a period, expressed in days, weeks, months or years is to be calculated from the moment at which an event occurs or an action takes place, the day during which that event occurs or that action takes place shall not be considered as falling within the period in question”. (iv) Customary practice In addition to the period of priority, there are numerous instances where the customary practice of many patent offices (including the EPO and the national offices of the original Contracting States to the EPC) is, and was also at the time of 20 CIPA JOURNAL

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•

determination of response deadlines (where response periods set in months always expire on a day having the same number as the date of the “trigger” event – with the only exception being if there is no such day in the month); and determination of the national / regional phase filing deadlines for PCT applications.

The above-mentioned, customary practice is therefore yet another reason to conclude that the “ordinary meaning” of the term specified in Article 63(1) EPC is “20 years from the end of the date of filing of the application”. (iv) Plain language The word “from” implies from the nearest point. Just as if asked to measure the distance “from” a wall one does not include the thickness of the wall, when one is asked to determine a distance “from” a date one does not include the date. In addition, to say a patent has a 20-year term and to include the date of filing means that patents will automatically have less than a 20-year term (because no one seriously can argue that the patent term includes a period before the application was filed, or invention made).

The consequences of inaction for the UK From the above arguments, it appears that the UK is, and always has been, in breach of the obligation to provide the patent term specified in Article 63(1) EPC. Up to date, the UK has suffered no adverse consequences from this breach of its obligations. However, especially if the UPC Agreement comes into force, this situation is very likely to change. (I) Judgments of the UPC According to “Brussels II” (Regulation 1215/2012, as amended by Regulation 542/2014), the UK will be obliged to both recognise and enforce judgments of the UPC. In particular, the provisions of Article 39 of Regulation 1215/2012 will have the consequence that judgments of the UPC “shall be enforceable ... without any declaration of enforceability being required”. In the light of the above arguments, it appears inevitable that the UPC will issue judgments that conflict with the UK’s interpretation of Article 63(1) EPC. Therefore, the courts in the UK will be obliged to enforce judgments of the UPC that may well be inconsistent with, or even have no basis under, UK patent law as it currently stands. Such a situation would be www.cipa.org.uk

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clearly unacceptable and could undermine the legitimacy of the UPC. On the other hand, with the UK courts having no basis other than section 25 of the 1977 Act for the determination of patent term, it is also likely that failure to amend that section before the UPC comes into operation could, for European “bundle” patents during the transitional period of Article 83(1) of the UPC Agreement, lead to the UK courts issuing judgments that are inconsistent with judgments of the UPC. A system in which the term of protection depends upon the court one is going to is not a sound system. Politically, having the UPC say a patent is in force in the UK on a day when the UK courts would say it is not in force would be, to put it mildly, very embarrassing.

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(II) Obligations under TRIPS Even in the absence of the UPC, there are strong grounds for harmonising patent term in the UK with the correct interpretation of Article 63(1) EPC. This is because the above arguments in connection with that correct interpretation apply equally to the “ordinary meaning” of the phrase “twenty years counted from the filing date” in Article 33 of the TRIPS Agreement. The inevitable conclusion stemming from this is that the UK is currently in breach of its obligations under the TRIPS Agreement, and hence is at risk of having its patent law challenged in a dispute at the WTO.

Summary For the reasons outlined above, it is clear that the law on patent term in the UK appears in breach of obligations under at least two international treaties. It is also equally clear that there are likely to be unpleasant, and potentially very serious consequences if the UK does not resolve this issue as a matter of urgency. Primary legislation is not required for the UK to come into compliance with its international obligations. Section 25(1) of the 1977 Patents Act reads in full: “A patent granted under this Act shall be treated for the purposes of the following provisions of this Act as having been granted, and shall take effect, on the date on which notice of its grant is published in the journal and, subject to subsection (3) below, shall continue in force until the end of the period of 20 years beginning with the date of filing the application for the patent or with such other date as may be prescribed.” The view of the authors is therefore that the power wisely granted by section 25(1) of the 1977 Act to prescribe a different term should be used so that the UK term is compliant with Article 63(1) EPC (and TRIPS Article 33). It would be necessary to make this amendment effective retroactively (due, for example, to TRIPS obligations, as well as the retroactive effect of the provisions of the UPC Agreement). As this could have other implications that would need to be taken into account (e.g. possible recalculation of the duration of all existing SPCs), it is clear that it would be better if preparations to make the amendment were commenced sooner rather than later.

Mike Snodin is a member of CIPA Life Sciences Committee and is the founder and director of Park Grove IP. Jim Boff is a member of CIPA Patents Committee and partner in Phillips & Leigh. The views expressed in this article are the personal views of the authors. Emails: mike.snodin@parkgrove-ip.com; jim.boff@PandL.com Volume 45, number 7

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Financial relief in IP cases A review of recent IP cases for financial relief. By Nicholas Briggs (Associate)

decade ago, many practitioners’ “common general knowledge” of cases relating to financial compensation on IP cases probably had General Tire1 and Gerber v Lectra2 at the top of their list for damages, and BP v Celanese3 for accounts of profits, although the latter might have been readily put to one side on the basis that accounts virtually never happened4, although the case was memorable for the “whistle on a battleship” analogy. How much this has changed. Where once hearings for financial compensation were rare, now they are common. The reason that they were rare was because injunctions were usually the most important remedy, and once liability had been determined, settlement usually followed not far behind. The procedural rules for IP cases of split trials with quantum determined only once liability had been established, encouraged that approach. Those reasons have not changed necessarily, but it is perhaps a reflection of the success of the Intellectual Property Enterprise Court (IPEC)5 that parties are more ready to litigate in relation to financial compensation. It is no surprise therefore that many of these hearings are now coming before IPEC. It is perhaps with some irony that the IPEC, a court originally and still intended for smaller litigation and SMEs, has become the pace setter and lawmaker for this developing area of law. Success has many fathers of course, but there is no doubt that the work done by HHJ Colin Birss (as he then was) and Richard Hacon HHJ has been a great success. In the sense that imitation is the sincerest form of flattery, it is noteworthy that the senior Patents Court within the High Court has recently introduced a series of procedural measures making it even more like IPEC6. A review of the cases suggests to the author that it is not the case that the fundamental principles of how to assess damages or accounts have changed very much; rather that with a greater throughput of cases, the law has developed on certain points where previously there was no opportunity

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for it to do so. The one “new” area that does seem to have become established over the last few years is the applicability of the “user principle” as a basis for damages in areas beyond patents. This is very much a welcome development. This paper will look at some of the most important cases in this area over the last three years, organised by reference to the various IP rights concerned, and pick out a number of points and observations.

Patents Design and Display v Abbott7 This case came before the Court of Appeal in February 2016 with Lewison LJ giving the lead judgment. It was an account of profits following on a finding of infringement of the patent in suit. The case related to display panels with snap-in inserts and was an example of a case where the “invention” formed a part of a larger product8. The Court found that the trial judge in IPEC, Hacon HHJ, had misdirected himself9, and remitted the case back to IPEC because it did not feel it had sufficient facts on which to make a finding itself. There were two core issues on the appeal. Firstly, how should profits be apportioned, and secondly whether general overheads could be deducted. The judge adopted the judgment of the Australian court in Dart Industries Inc v Decor10 in 1994.

Editor’s summary Compensation in IP infringement cases always used to be a bit of a dark art, with notorious exceptions such as Celanese v BP (account reduced from £90 million to £500,000) standing as a salutary reminder of the dangers of aiming too high. Nicholas Briggs reviews a recent trend, particularly in IPEC judgments and appeals, which provide very useful guidance.

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It found that profits should not only be apportioned where, without the infringement, the existing articles would not have existed or where the invention was an essential ingredient in the creation of the infringer’s whole product11. The trial judge’s error was to conclude that because the sales of the panel and insert went together, that determined the issue. The Court of Appeal noted that it was still open to the trial judge to make a finding that the actual feature was in fact an essential ingredient in the creation of the infringers’ whole product, in which case the profits should not be apportioned. On the question of overheads, the reasoning in Dart was again approved. A deduction would only be allowed if the infringer proved that but for the infringement, it would have manufactured non-infringing products which would have been sustained by the said overheads (or that the infringement resulted in an increase in overheads)12. It should always be borne in mind that the purpose of an account is to prevent unjust enrichment. Defendants cannot deduct profits on goods they might otherwise have made, but he should be allowed to deduct overheads that would have supported such goods if he had been able to make them. Otherwise they would be in a worse position – they should only account for the profit that they have made on infringing goods. Thus deduction is not allowed where the overheads would have been incurred anyway even if the infringement had not occurred, and the sales of the infringing product would not have been replaced by the sale of non-infringing products. A further error made by the trial judge was to think that whether a factory was running to capacity was determinative of this issue; it was not, but was one of various factors to be borne in mind. The issue is fact sensitive. Whilst the case has been remitted to IPEC, there may yet be some procedural difficulties ahead. Under the IPEC rules13 a party cannot adduce material that has not been ordered at the case management conference (CMC), absent exceptional circumstances. It would be hard in the author’s view to say that these are exceptional circumstances, although given the Court of Appeal has remitted the case it is likely a pragmatic solution will be adopted and left it to the judge to determine whether the circumstances were exceptional. The case also illustrates that apportionments can cause difficulties and is perhaps one reason why accounts are rarer than damages enquiries. “Part of the whole” cases are particularly difficult. Given the evidential requirements one must wonder whether IPEC is a suitable venue for accounts of profits. Stretchline v H&M This case came before Carr J in the Patents Court in 2016. It concerned underwiring in garments, such as bras and Volume 45, number 7

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swimwear. There had been an earlier litigation between the same parties over the same patent, which had been settled in May 2011. Further proceedings were brought in March 2013. The defendant H&M sought to challenge the validity of the patent, but the Court ruled that they were unable to do so as this had been precluded by the terms of the earlier Settlement Agreement. Following this ruling, Stretchline dropped its infringement claim and focused on breach of the Settlement Agreement, no doubt reasoning that this was going to be easier to prove and less expensive to do so. Stretchline sought an injunction and Tring disclosure14 from the Court, with a view to making an election between an account of profits or damages. H&M argued that there should be no injunction in the circumstances, and further there should be no account given that this was a contractual action, and therefore an account was not available as a remedy. The Court ruled that contractual remedies had substituted the usual IPR remedies for infringement. The Court did say that it should be no harder to get an injunction for breach of contractual obligations than infringement of an IP right, and therefore the same principles applied, but on the facts, because the judge thought that further breaches were most unlikely, an injunction was refused. An account was also refused, because exceptional circumstances could not be shown in this case. The case is a reminder that care should be given to the wording of settlement agreements, particularly on issues such as whether validity of the patent in suit can be challenged in the future and whether an account of profits might be an available remedy for breach of the settlement agreement. AstraZeneca v KRKA15 This case came before the Court of Appeal in 2015, on appeal from the judgment of Sales J16. Kitchin LJ gave judgment, with Floyd LJ concurring. It concerns the expiry of a major patent, and the entry into the market by KRKA with a generic product. The product made under the patent was the well-known drug “Nexium” which is used in the treatment of heartburn and stomach acid. AstraZeneca had successfully obtained an interim injunction and gave the usual cross undertaking, because KRKA having decided that they had little chance of resisting the application based on the Cyanamid principles. This turned out to be a smart move. AstraZeneca lost a subsequent trial against another third party Ranbaxy, and following that judgment they agreed to the lifting of the injunction against KRKA. KRKA then sought damages on the cross undertaking. The quantum sought was the considerable sum of £27 million for losses suffered as a result of the wrongful injunction. AstraZeneca fielded an “A” team of Daniel JULY 2016

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Alexander QC and Thomas Mitcheson QC, sparing no expense, which is illustrative of how important the case was to the parties. On appeal by AstraZeneca, they asserted that the trial judge, Sales J, was in error in more than 50 respects, although this was refined down to three core areas in submissions. AstraZeneca was faced with the difficulty that at the time it sought an interim injunction, it would have had to persuade the Court that damages would be readily calculable for KRKA should it turn out that the injunction was wrongly granted, as turned out to be the case. It was therefore very difficult for them to make out a submission that the calculation of damages when it came to the crossundertaking was going to be complex and difficult. Whilst being mindful of the fact that the damages were intended to be compensatory and not punitive, the trial judge had only discounted the damages claimed by 20%, to allow for exaggeration of the amount which Primary Care Trust buyers would have placed orders for the generic product. The trial judge was upheld in all respects.

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The senior Patents Court within the High Court has recently introduced a series of procedural measures making it even more like IPEC.

AP Racing v Alcon17 This may probably now fairly be described as a long-running saga concerning infringement of a patent relating to disc brake calipers used in motorsport. This latest ruling was given by Carr J on 4 March 2016, on an appeal from a judgment of HHJ Hacon sitting in IPEC. Hacon HHJ had ruled that the patentee AP Racing could bring a second infringement action against Alcon regarding infringements it discovered after the CMC in the original action. Alcon said the second action should be struck out as an abuse of process, on the basis that the new infringements should have been included in the first action. Carr J upheld the IPEC decision, and made clear that the well-established rule in IP litigation that allows for further infringements to be added to a damages enquiry applied equally in IPEC matters18, and CPR 63.23, which requires all the issues to be identified at the CMC, must be applied separately to both the liability and quantum CMCs. Carr J noted that Alcon’s argument could not be right, because it would mean the patentee would be denied the right of access to the courts conferred by common law and guaranteed by Article 6 of the Convention for the Protection of Human Rights and Fundamental Freedoms. He quoted from Lord Millett in Johnson v Gore Wood & Co19: “It is one thing to refuse to allow a party to relitigate a question which has already been decided; it is quite another to deny him the opportunity of litigating for the first time a question which has not previously been adjudicated upon. This latter (though not the former) is prima facie a denial of the citizen’s right of access to the court conferred by the common law and guaranteed by Article 6 of the Convention for the Protection of Human Rights and Fundamental Freedoms (Rome, 4 November 1950). While, therefore, 24 CIPA JOURNAL

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the doctrine of res judicata in all its branches may properly be regarded as a rule of substantive law, applicable in all save exceptional circumstances, the doctrine now under consideration can be no more than a procedural rule based on the need to protect the process of the Court from abuse and the defendant from oppression.”

Trade marks 32Red plc v William Hill20 This case came before Newey J in the High Court in 2013. 32Red had succeeded on infringement21, but accepted they could not prove any loss of profits, and therefore sought damages based on a reasonable royalty principle, otherwise known as the “user” principle. This approach had been well established in patents following the Gerber v Lectra decision, but at the time in 2013 not so with trade marks. The Court adopted the summary that Arnold J had given in the Force India22 confidential information case (para 386): 1. These cases establish the following principles for the assessment of such damages: i. The overriding principle is that the damages are compensatory: see Attorney-General v Blake at 298 (Lord Hobhouse of Woodborough, dissenting but not on this point), Hendrix v PPX at [26] (Mance LJ, as he then was) and WWF v World Wrestling at [56] (Chadwick LJ). ii. The primary basis for the assessment is to consider what sum would have arrived at in negotiations between the parties, had each been making reasonable use of their respective bargaining positions, bearing in mind the information available to the parties and the commercial context at the time that notional negotiation should have taken place: see PPX v Hendrix at [45], WWF v World Wrestling at [55], Lunn v Liverpool at [25] and Pell v Bow at [48]-[49], [51] (Lord Walker of Gestingthorpe). iii. The fact that one or both parties would not in practice have agreed to make a deal is irrelevant: see Pell v Bow at [49]. iv. As a general rule, the assessment is to be made as at the date of the breach: see Lunn Poly at [29] and Pell v Bow at [50]. v. Where there has been nothing like an actual negotiation between the parties, it is reasonable for the court to look at the eventual outcome and to consider whether or not that is a useful guide to what the parties would have thought at the time of their hypothetical bargain: see Pell v Bow at [51]. vi. The court can take into account other relevant factors, and in particular delay on the part of the claimant in asserting its rights: see Pell v Bow at [54]. Volume 45, number 7

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FINANCIAL RELIEF

Newey J expanded these principles by saying that the parties’ characteristics and actual circumstances may also be taken into account. Hollister v Medik Ostomy This case came before Kitchin LJ in the Court of Appeal in November 2012. It was an account of profits, and concerned infringing parallel import goods in respect of which condition 5 in the Bristol-Myers Squibb case had not been complied with in that the trade mark owner had not been informed of the repackaging 23. At first instance, the trial Judge HHJ Birss (as he then was was) appeared to be impressed by the submission that the claimant had not really suffered any loss and categorised the failure under BMS 5 as being merely procedural. The judge gave considerable weight in his judgment to a decision of the CJEU, Boehringer v Swingward24. Here, the CJEU had said: “It is for the national court, however, to determine the amount of the financial remedies according to the circumstances of each case, in the light in particular of the extent of damage to the trade mark proprietor caused by the parallel importer’s infringement and in accordance with the principle of proportionality.” Relying on this, Birss HHJ adopted a three-step approach: “Pulling this together, the approach I should adopt is the following: i. Assess the account on normal basis under English law. ii. Consider the extent of damage caused to the proprietor by the infringement and the issue of proportionality, in all the circumstances of the case. iii. Decide what final sum should be awarded having regard both to the sum assessed on the account at step (i), and the factors considered at step (ii).” para 68 The upshot of this was that the judge awarded only half of Medik’s profits, and in addition to direct costs, a sum for general overheads was permitted to be deducted. Hollister appealed. The Court of Appeal took a much stricter approach25. The loss suffered by the claimant was not a relevant consideration in an account of the defendant’s profits. HHJ Birss had mixed the two concepts of damages and an account, by introducing a concept of proportionality. The Court of Appeal’s approach reflected the fact that a defendant should not profit from infringing activity. Nor did the Enforcement Directive change how the UK courts approach an account of profit. JULY 2016

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Jack Wills v House of Fraser26 This case concerned the taking of an account of profits before HHJ Pelling QC in the High Court in 2016 following a finding of infringement and passing off. The case concerns the well-known Jack Wills top-hatted pheasant and the infringing mark used by the House of Fraser on its brand “Linea” range of clothing. It concerned the familiar issue of deducting of overheads, and once again the reasoning in the Australian case of Dart27 was adopted. The Court also ruled that there should be a further apportionment of overheads for the purposes of deduction (i.e. reduction in profits) to reflect the fact that the account is of a profit from actual infringement and not the sale of infringing goods per se. It adopted the Court’s approach in Cipriani, and said that unless the infringement drove the sale, then the apportionment would be appropriate.

FINANCIAL RELIEF

In the final analysis, Jack Wills’ claim of £650,000 was reduced to just over £50,000 applying the above principles. Jack Wills also found itself in the unfortunate position of not beating an offer made with prejudice to costs, such that it will have to pay both its own and House of Fraser’s costs of the enquiry, with the likely result that despite having won on liability it is the paying party. This serves as a reminder that the most valuable remedy in IP litigation is the injunction, and not to be overly ambitious on financial relief. Of course, managing client’s expectations in this regard will be both challenging and essential.

Copyright Henderson v All Around the World Recordings28 This was a damages enquiry before Hacon J in IPEC in 2014, following his finding that there had been an infringement of

Notes and reference 1. 2. 3. 4. 5. 6. 7. 8.

10. 11.

12.

[1975] 1 WLR 819 [1995] RPC 383 first instance, [1995] RPC 443 on appeal [1999] RPC 203 BP v Celanese was the first patent account for nearly 100 years at the time. Ed. and also the limited exposure to costs should they not beat any offer made on the inquiry. Ed. Possibly also influenced by the fact that the two Court User committees have a very coincident membership. [2016] EWCA Civ 95 Ed. Note that the “invention” for the purpose of assessing whether profit is attributable to the use of that invention is not necessarily coterminous with the scope of the claims, as noted below. Ed. The judge’s finding on what the “invention” for the purpose of the account was, was upheld. The CA overruled the judge on the way in which this was applied to determine the apportionment of the profits to the infringement, as explained below. [1994]FSR 567 Ed. para 28, Lewison LJ went on to say that “In my judgment the legal error that the judge made was to ask whether the sale of the panel plus insert would have happened separately rather than to ask himself how much of the profit on the sale was derived from the infringement. In a case in which the infringement does not ‘drive’ the sale it seems to me that it is wrong in principle to attribute the whole of the profit to the infringement” (para 36). Ed. Lewison LJ focuses primarily on the first element here. It is helpful to read his summary of when general overheads would not be recoverable: “The bottom line is whether (a) the overheads would have been incurred anyway even if the infringement had not occurred and (b) the sale of infringing products would not have been replaced by sale of non-infringing products. It is in those circumstances that an allowance for overheads will not be permitted.” (para 42), and his earlier observation that all of the four conditions referred to by Kichin LJ’s judgment in Hollister v Medik ([2012 EWCA Civ 1419, and para 86) are required: Kitchin LJ: “I believe that if the defendant’s business is not running to capacity, the defendant has not foregone an opportunity to make

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13. 14.

15. 16. 17. 18.

19. 20. 21. 22. 23.

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

and sell other non-infringing products, and the defendant’s general overheads have not been increased by reason of the infringement and would have been incurred in any event, then to allow it to attribute such overheads, or a proportion of them, to the infringements would be to allow it to profit from its unlawful activity. I believe such a result would not be just and would undermine the purpose of the account.” CPR 63.23 “such information as is available and is reasonably required to enable the plaintiff to make an informed election is made available to him and that the election is made within a reasonable time thereafter”, Island Records v Tring [1995]EWHC 8 (Ch), para 10. [2015] EWCA Civ 484 [2014] EWHC 84 (Pat). Ed. Worth reading in its own right. [2016] EWHC 815 Despite finding in AP Racing’s favour on the allowability of the second action, HHJ Hacon had suggested this rule did not apply in IPEC except in exceptional circumstances. This aspect of his judgment was the subject of a Respondent’s Notice in the appeal, which Carr J allowed. [2002] 2 AC 1 [2013] EWHC 815 (Ch) [2012] EWCA Civ 19 [2012] EWHC 616 (Ch) Bristol-Myers Squibb v Paranova A/S [1996 EUECJ C427/93) para 79: “— the importer gives notice to the trade mark owner before the repackaged product is put on sale, and, on demand, supplies him with a specimen of the repackaged product”. [2007] ETMR 71

[2012] EWCA Civ 1419 [2016] EWHC 626 (Ch) ante [2014] EWHC 3087 (IPEC) PCC 2013 [2014] EWHC 2084 (IPEC) ante

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ARTICLE

the performer’s rights. The performer in question was Jodie Aysha, and her well-known song Heartbroken. The facts are quite complicated, but in summary Jodie Aysha had worked with a local DJ who had mixed some of the track, but at the end of the process she was left without any credit, financial or otherwise, in relation to the song. Although her claim for compensation originally mixed up an accounts of profits and damages, by the time of final submissions the royalties were to be assessed on the user principle. Once again Arnold’s summary of law in Force India was adopted, as expanded in 32Red. In addition to a sum of £30,000 ordered for royalties, she was also awarded a further sum of £5,000 under the heading “unfair profits” at paragraph Article 13.1 of the Enforcement Directive. This was to reflect the fact that the lack of recognition given to her for her song meant that her reputation as an artist has not been advanced as it would otherwise have been. The case is also interesting for the further comment it gives on the Enforcement Directive. Initially the claimant submitted it was entitled to an account of profits in addition to damages. The trial judge noted this would have been a major change to English law and rejected the submission on that basis. The Court took a restrictive view on what was meant by “moral prejudice” in the Enforcement Directive, similar to the restrictive view taken by Birss HHJ in Xena Systems28. The Court also considered the issue of flagrancy damages, and decided these were redundant post the Enforcement Directive. In relation to moral prejudice, the wording suggests that this had to affect elements other than economic factors.

Groundless threats SDL Hair Limited v Next Row30 This was an enquiry into damages in IPEC in 2014 following judgment that Next Row had issued threatening letters. Damages of £40,000 were awarded, in relation to the infringement product known as the “Ego Boost”, which was an induction heating unit for hair rollers. The losses were suffered by reason of lost sales and lost opportunities for sales on a TV shopping channel. One of the more difficult areas was how damages should be calculated for what was essentially the “loss of a chance”. The Court noted that this was a difficult area where important questions of causation and quantification could be muddled up. It applied a probability of 35% to the quantum calculated by reference to the total number of goods that would have been sold such that the total amount claimed was reduced to that percentage.

FINANCIAL RELIEF

English law. Accounts are equitable, and damages are as of right. Damages are compensatory not punitive. The user principle seems firmly established now across the IP spectrum; a welcome development. Parties and their advisers should be alive to and aware of the importance of cross-undertakings when seeking injunctive relief: £27 million should be enough of a reminder! It might be thought that an account generally produces lesser figures, and this is probably so. This may be vividly illustrated by the older case of Celanese v BP31 where the account was reduced from £90 million as claimed to £500,000 as awarded. “Part of whole” cases remain tricky for both damages and accounts, but at least with damages one might be able to augment the sums claimed by expanding the claim to e.g. convoyed goods or price depression, subject always to the facts. Why would you choose an account of profits in these circumstances? Perhaps a party perceives it would have problems with proof, or if it recognises it has not suffered any loss, as was the case with 32Red. A party might also be concerned with confidentiality, or the defendant may actually be a much bigger company with larger sales, and a claimant might reasonably calculate that an account would produce a number far bigger than anything it could have sold itself. The trend for more cases for financial compensation seems set to continue, and the above cases will provide useful guidance to the parties and their advisers, including their retained accountant expert witnesses who will need to be properly instructed with the above principles in mind. Nicholas Briggs (Associate) is a partner at Shakespeare Martineau.

Concluding remarks These cases underline important principles for the calculation of financial compensation. There is mutual exclusivity between accounts and damages under Volume 45, number 7

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2015

The not-so-secret diary of a CIPA President

By Andrea Brewster

structured. Then we have a proper inspiring speech by a Detective Superintendent from an Economic Crime Directorate, and everyone wishes she was our new President instead. 5.20 pm. Half-way through the Annual General Meeting, the Chief Eggsek, Mr Davies, announces the results of the Grand CIPA Ballot. And then as M AY if by magic, the Pee is not the Pee any more, she is the EyePeePee, and the EyePeePee becomes the EyeEyePeePee and we have a new VeePee who is a proper one this time. And suddenly I am the Pee. Just like that. There follows some ceremonial argy-bargy. Last year’s Pee opens a box and politely shows me the Presidential swimming gala medal. I look politely interested in it for a moment. I am not going to wear it because it clashes with my posh frock, and she knows this. Then we play musical chairs on the ceremonial dais, and the new EyePeePee moves along one to make room for me. There is probably some Latin we should be saying at this point but we have accidentally on purpose shredded all documents with Latin bits in. I take my seat next to Mr Davies, look at the notes he has prepared to stop me being incompetent on this most important of occasions, and promptly forget what I am supposed to do. So instead I have a go with the Ceremonial Gavel, which I have never been allowed to do before. What an honour it is! I feel as though my whole life has been spent preparing for this moment. Mr Davies wishes I had spent a little longer preparing for this moment, and then I might actually have remembered what to do. Next, I make a little speech. In summary the speech says that CIPA Presidents are a bit like the Three Little Pigs and there is a Big Bad Wolf out there who wants to nick our straw before we have finished building CIPA but I will not let him because CIPA is FAB and anyway Mr Davies hasn’t done the plumbing yet. And I say CIPA is all influential and at the heart of the evolving IP landscape. I say that the last Pee’s shoes are very nice and so it is a privilege to step into them, and that I am proud to have been able to cadge biscuits off people last year and I hope I can continue to do so for another twelve months. I say that the new VeePee and I will make a good team because he knows some stuff about IP, which complements my skill set nicely. And I thank everyone I can think of who is even vaguely connected with CIPA because it seems wise at least to start the year with some friends. It is an inspiring speech, as you can tell, and exquisitely

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18 MAY

9 pm. So. I am no longer the Pee-to-Be. I am the real,

actual Pee. I have spent the last twelve months, as VeePee, waiting to be found out. It has not happened. I have learnt many things, some of them about CIPA and some about myself, but the biggest revelation is that you can hold office for an awful long time before people realise you are totally unfit for it. In fact, they may never realise. You can drop all sorts of hints – and all sorts of straw; you can confess to knowing nothing, and indeed provide convincing proof of the fact; you can trip over your rucksack, spill tea on a baroness’s aide and drink so much gin that the juniper fragrance wafts ahead of you into the following morning’s meetings. And what is the mechanism within CIPA for dealing with this? What protection do the Bye-laws provide against straw-shedding, biscuit-crumb-dropping wurzels? They make you President. Congratulations, everyone. You have just elected the most unPee-like Pee that CIPA has ever had. This is a proud and historic moment for all.

It is my first full day as CIPA President. No sooner have I found myself a desk to sit at, than Mr Lampert, our Chief Shouty Person, comes running MAY in shouting: “Can you do me a quick statement for a press release? And some words for the whizzy e-newsletter? And by the way I am off on holiday at 2 pm so from 11.30 onwards I will no longer care what you write anyway.” Oh. It occurs to me that we, including the Pee-to-Be should, in the circumstances, have been able to predict that press releases might be needed on this particular morning, and that they would need to be finished before the Chief Shouty Person

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NOT-SO-SECRET DIARY

downed tools and wandered off into a Caribbean sunset. But we didn’t. So I abandon the things I was planning to do and draft some Presidential words instead. And then we email them to some journalists, who remove all but the bits that sound stupid and publish them backwards with their own headings attached. For the rest of the day I sit next to Unlucky Gary and answer emails and make plans, and draft documents about the plans, and generally keep busy making not the slightest bit of difference to anyone’s life. On my agenda: the next EPO oral proceedings workshop; the new network of regional representatives; the diversity task force (da-da-da-DA!!!) and what we are going to call ourselves (The Diversibles, perhaps?); what CIPA can do for its retired members; the agenda for the first Council meeting I chair, which may also be the last Council meeting I chair; and what I am going to say to the committee leaders when they come to the meeting I have summoned tomorrow and ask what the hell I am playing at. I send about two thousand emails. I write five lists of things I need to do, précis three of them, and draft another of the lists I still need to write. I update two calendars and a paperback diary. And I even get to sign some Presidential letters. I notice that Unlucky Gary gets loads done but he also sighs a lot. I hope this is not because of me.

MAY 2015

The cat-that-shows-me-its-bottom shows me its bottom twice in honour of the occasion. I take this to be a good sign. Although not a particularly attractive one.

22 b.

20 M AY

8 pm. I return home as Pee, to the entirely

predictable jubilant reception from my family. My long-suffering husband arches a single eyebrow to remind me of both his long suffering and his husband-ness. My eldest son, who is training to be an android and is very nearly there, looks up from his maths revision and then looks down again: I am nothing like as interesting as a regression curve. My teenage daughter doesn’t even look up from her GCSE revision, which seems to be largely Facebook®- and Instagram®-based, but later announces that she is going to a revision barbecue and won’t be back till some time after her business studies exam. My eleven-year-old son, who is so keen to become a teenager that he finds a new facial hair virtually every day, tells me about his latest facial hair but is not hugely impressed with the news that I am President of the Charted Instagram of Pattern Journeys. I ask him how his day was at school, but it appears this is information which he only imparts on a need-to-know basis, and since I do not even know where his classroom is, he concludes that I do not really need to know what he does there. In any case, he is far better friends with the President-twice-removed, a certain EyeEyePeePee, than he is with me, because the EyeEyePeePee is fond of trains and guess what, my son is fond of trains too, especially after the EyeEyePeePee emailed him a list of the ones he might like to ask me for at Christmas. Volume 45, number 7

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When you become President, your inbox explodes. My emails fall into several categories: a. The ones inviting me to things, Special M AY Occasions mostly but also Dull Conferences and Events in Remote Locations. The people sending these emails have obviously not realised who the CIPA President is this year. The ones deferring to my judgement on issues of Institute policy, as though I had changed overnight into someone wise and sensible. Mostly the people sending these emails are taking the mickey. They do not actually expect me to reply and they do not actually intend for my reply to stop them doing the things they wanted to. The ones from Mr Davies and his team, reminding me that they are busy getting on with stuff and I do not need to worry about checking up on them. Please. The ones containing suggestions about what CIPA should be doing. Sometimes these are good suggestions, and sometimes they are less helpful, like the ones advising me what to do about regulation (these often lack anatomical precision). The ones about the agenda for the next Council meeting. I delete these immediately and pretend they never happened, like I am pretending the next Council meeting is never going to happen, because I am too scared. The ones reminding me I have not yet replied to the other ones. The ones reminding me that the next Council meeting absolutely is going to happen and I absolutely am going to be there if they have to come to the Wess Curntry and drag me all the way along the M4. Rats!

f. g.

When you are President you are supposed to deal with all these things and also you are supposed to be Sensible. I don’t know why: it is not in the Charter or the Bye-laws or anything. I never signed a document saying I Hereby Agree to be Sensible for a Year. I will never get through all these emails. But if I have learnt one thing from pretending to be in charge of an IP practice, it is this. 25% of leadership is just being there when people need you. The other 75% is not being there when people think they need you, but actually ought to man-up and get on with it themselves. I expect this to work at CIPA as well. The Not-so-Secret Diary is available in blog form, with additional material and more up-to-date news – http://notsosecretcipadiary.blogspot.co.uk/ JULY 2016

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Six things we love about being a trainee This month Tom Hamer highlights what he loves (and hates) about trainees' rites of passage

Six things we love

Drafting your first application

Drafting an application for the first time is the ultimate rite of passage for a trainee. As most readers will appreciate, getting to grips with an invention in sufficient detail to describe it in a patent application is a difficult, but ultimately extremely rewarding experience. However, drafting can be damn tricky for the uninitiated, especially the claims – despite what you think when you first start, it isn’t just a case of sticking in a few ‘whereins’, adding a few ‘saids’, and sprinkling liberally with a few fancy patent words like “coterminous” and “frusto-conical”. After many hours of effort, and 14 rounds of claim reviews and re-writes with your supervisor, getting that grudging nod of approval and sending the draft claims out to the client is a fantastic feeling. Once it’s been filed, you may also become strangely attached to your first application and the invention it describes. You may occasionally search the internet for the relevant product, and feel a warm glow when you see that it is still on the market and seems to be doing well. You may also feel personally affronted upon receiving an objection from an examiner, as though he or she 30 CIPA JOURNAL

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had insulted a close friend or relative. In fact, when your first draft is published, you may even be tempted to have it framed and to display it proudly in your living room – however, for some reason, my girlfriend refused to share my enthusiasm for my personal pride and joy: “a system for connecting nodes to a network via a non-network compliant link”. I can only assume she thought it was too early, and is waiting to frame the B-spec.

The Informals

Sometimes the Informals Committee doesn’t get the love it deserves. After all, there aren't many professions which can boast an intercompany committee, whose sole purpose is to ensure new recruits are properly welcomed, educated, and plied with free drinks. Not only do the Informalsorganised lectures provide a good grounding in IP knowledge in your first year, you can also make a lot of friends through the Informals social events. To every member of the Informals Committee reading this: thank you for doing what you do for our profession.

Oral proceedings at the EPO

Everyone loves going to the EPO – the preparation in the weeks leading up to the hearing, observing how the Examining Division respond to your carefully prepared arguments in person, and the drama of inter partes hearings. It’s all very exciting, and can even sound glamorous, if while explaining to your friends you leave out that you have spent 20+ hours of your life preparing to argue about how great and innovative a new lawn-mower part is. However, I strongly suspect that the reason I continue to love going to oral proceedings at the EPO is that I always sit very comfortably and, most importantly, very silently, next to my supervisor. As a trainee, having helped prepare in the weeks leading up to the hearing, your duties on the actual day amount to carrying the bags, buying chocolate from the vending machine to keep your energy levels up in the breaks, and nodding sagely or frowning slightly as appropriate during the proceedings. And, you know what? We are completely fine with those duties. The thought of having to ‘go-it-alone’ one day genuinely terrifies us, and it is thoughts like this which sometimes make us very glad we’re still trainees!

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SIX THINGS WE LOVE

When a newer trainee starts

This is a good point in a trainee’s career. You feel like you are just starting to get the hang of the whole ‘patent’ thing, your draft responses are starting to meet with approval rather than gleeful crossings out (see point 7), and suddenly you are also no longer the ‘go-to’ person for spreadsheet updates, cost estimates, and preparing patent drawings. Even better, questions from new starters can help bring your new-found knowledge into focus. As a trainee, it’s easy to feel that you don’t know very much, especially with difficult exams looming. However, fielding the questions of someone completely new helps you to realise that you might have managed to pick up quite a lot in your short time in the profession after all. Besides, if you can explain what a divisional is, what ‘poisonous priority’ means, and what the ‘ISR of the ISA’ stands for, surely you can’t possibly fail those upcoming UK finals next year… (right?)

TRAINEES

Being able to hit the ground running

This job is great for letting trainees get stuck in with things immediately. I was definitely surprised on my first day when I was asked if I wanted to attend a client meeting, and I was also surprised later that week when I was asked to start preparing my first letter to the EPO. As your supervisor acts as a filter between you and the client, and between you and the patent office, you can feel like you are completely responsible for a case whilst still being safe in the knowledge that nothing can really go too wrong. It wasn’t too long before clients started addressing their emails to me, and me alone (whilst my supervisor’s name sat safely in the CC bar, of course), and that feeling of autonomy and responsibility, albeit slightly illusory at times, is great for building up confidence in yourself at work.

Queen Mary course

I realise that not all trainees attend the Queen Mary course, but I couldn’t leave it off the list. Returning to student life after a year or so of work is just the best feeling, especially if you invest your time as a student as well as I did, e.g. by catching up with The Good Wife on Netflix and rediscovering the joys of an afternoon nap. Of course, in all seriousness, the course is very interesting, and the insight that trainees gain into competition, copyright and trade mark law provides good context for our work as patent attorneys (in other words, to more senior people reading this, please don’t take the course away from us!) Tom Hamer (Student) is a Technical Assistant at Kilburn & Strode LLP in London; thamer@kilburnstrode.com

And the one thing we hate… The dreaded red pen: Now, as trainees, we are not arrogant. We realise that we still have a lot to learn, and we recognise that a little gold dust sprinkled from the hands of someone with 15+ years of patent experience can greatly improve our work. That being said, the ‘red pen’ can be a double-edged sword, which can both educate and frustrate in equal measure. For example, when you see that the wielder of the red pen has changed a draft client email so that all instances of the word ‘relevant’ have been changed to ‘pertinent’; all instances of the word ‘asserted’ have become ‘alleged’; and, to top it off, you are now giving your ‘best regards’ rather than your ‘kind regards’, it’s easy to wonder if your supervisor felt that they had to change something to justify that charge-out rate, or whether they are perhaps trying to get their money’s worth out of a new thesaurus. Of course, I am referring to what other trainees have told me about their supervisors here – my supervisors are of course perfect in every respect, which has nothing to do with the fact that they are regular readers of the CIPA Journal at all.

Volume 45, number 7

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05/07/2016 08:08:25

Advocacy – A Beginners Guide Sean Curley provides some quick – and invaluable tips – to keep you on your advocates toes

ince the introduction of the Litigation Skills Course (LSC) and the requirement to pass an oral advocacy test the profile of advocacy has risen in the profession with more practitioners exercising their rights of audience. This article is not intended to be any sort of definitive guide to advocacy (how could it be) nor is it a “hints and tips” guide for passing the advocacy assessment on the LSC. What it is intended for, however, is an aide-memoire for the novice and the busy practitioner alike. Advocacy is best defined as the art of persuasion. We have an adversarial system where there are two versions of the case competing for the judgment. Your job as an advocate is to persuade the court to prefer your version to that of your opponents. In doing so you must always stay within the rules, not mislead the court and remain polite to all involved. The first and most important step in successful advocacy is preparation. Make sure you know your case thoroughly. You should have all the essential facts at your fingertips; you should be able to handle most questions from the bench without reference to your file. Few things create a worse impression on a tribunal than an advocate desperately leafing through a file in search of information obviously central to their case. In your preparation you should aim to tell a coherent story. Keep it simple and map out a path to the destination that you want the court to reach and then take the court through it step by step. Do not complicate the route with irrelevancies and stick to your best points. Do not assume the judge knows the law – tell the court, then at least the judge will know that you know it. To continue the analogy, make sure you signpost the route with the appropriate authority, use the statutes that apply, and deploy the best authorities in support of the propositions you are asking the court to accept. Although we live in more relaxed times, personal appearance and presentation still matters when appearing

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before any tribunal. Dress appropriately and professionally; it shows respect for the court. Advocacy is an interpersonal skill and you need to engage the court. Do not fidget or shift from one foot to the other. Stand reasonably upright and decide beforehand what you are going to do with your hands, holding the lectern lightly is a good option and far better than sticking them in your pocket or waving them around in the air (both options are commonly seen around the courts). Maintain good eye contact with the court without trying to stare the judge out; just be natural. Delivery is all important and you should follow the three Ps: 1. Pace – never too fast, the court has to follow what you are saying and hopefully make notes. Not too slow either, that becomes boring to listen to. 2. Pitch – do not mumble and do not shout, a nice clear carrying tone is what we are aiming for, remember if they cannot hear you then you are not going to persuade them. 3. Pause – as mentioned above you want the court to be noting your best points, short pauses at the appropriate place will give them chance to make a note. Know when to stop; many a good argument has been destroyed by going too far. The usual way of finishing is by asking the court if you can assist further. If they need any more from you they will tell you. Sit down when you have said all you want to say. Good advocacy requires practice and experience. Go and watch advocates in action and practice, practice, practice. Good advocates are made. No one is born with the skill and anyone can learn it. Good luck! Dr Sean Curley is the Principal Examiner at the Patent Examination Board; S.R.Curley@hud.ac.uk. www.cipa.org.uk

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Patent decisions Interim application | FRAND | Competition law | Transfer of proceedings 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, & Telefonakticbolaget LM Ericsson [2016] EWHC 958 (Pat) 29 April 2016; Birss J This decision relates to an interim application in the long-running saga between Unwired Planet on the one side as the claimant, and Huawei, Samsung, and Google as the defendants on the other side. The interim application related to a request brought by Samsung to transfer all competition law aspects of the proceedings to the Competition Appeal Tribunal (CAT). This decision was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 11 May 2016. Unwired Planet is the proprietor of a portfolio of patents, some of which had been declared essential to 3G and 4G mobile telecommunication standards. Proceedings were brought against the defendants on conventional patent infringement grounds but also involve non-technical grounds, including one arising out of the claimants’ assertion that they have offered FRAND (fair, reasonable, and non-discriminatory) terms, and corresponding defences claims on competition law and FRAND matters. The conventional patent infringement issues and non-technical issues had been scheduled to be heard in five separate technical trials, one non-technical trial and a further possible trial on factual issues. The main non-technical disputes were on two fronts. The defendants contended that the licences Unwired Planet were required to offer under their obligation to the standard-setting body were not FRAND. The defendants also argued that the agreement under which Unwired Planet acquired the standardsessential patents from Ericsson breached competition law. In particular, the issue concerned the arrangement by which Ericsson retained the rights to a substantial share in the licensing revenues generated by Unwired Planet. The defendants argued that the different market position occupied by Unwired Planet as compared to Ericsson with respect to potential licensees meant they were not constrained by the same restrictions on commercial behaviour and were thus in an unfairly advantageous position. In connection with the non-technical trial, Samsung requested that all competition law and FRAND related issues be transferred to the CAT. Samsung argued that the CAT was a more suitable specialist forum and that there would be no delay or break in the continuity of the proceedings. In particularly, Samsung argued that the same judge (Birss J) could sit as the chairman of the CAT panel should the case be transferred. Samsung argued further that the previous restriction on transferring stand-alone cases to the CAT had been removed on 1 October 2015. Volume 45, number 7

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Ericsson (the eleventh party) opposed the transfer on four grounds. Firstly, Ericsson pointed out that the possibility of transfer had been raised on 2 October 2015 with none of the parties taking action on the matter. Secondly, Ericsson argued that the competition law and FRAND issues of the case were all closely linked to patent infringement-related issues and would require expertise in patent law. Thirdly, Ericsson argued that only competition law related FRAND issues could be transferred and transferring only a portion of the FRAND-related issues would create the risk of inconsistent outcomes being reached by the different tribunals. Fourthly, Samsung argued that if proceedings were transferred, duplicate documents would be required for the different tribunals, leading to increase in costs. The judge turned to Sainsbury’s v Mastercard [2015] EWHC 3472 (Ch) and CPR PD 30 paragraphs 8.1 to 8.3, which together provide that the decision to transfer is at the discretion of the court and requires the court to deal with the issues justly and at proportionate cost. The judge set out: “A key practical factor will be the extent to which transfer would create any delay or increase in the costs. Another important consideration will be the extent to which the two key distinguishing features of the CAT as compared to the High Court would be of assistance in addressing the likely evidence in the case and in resolving the particular questions arising in that case.” In considering the grounds put forward by the parties, the judge was of the view that whilst the expertise of the CAT would help in understanding the competition law issues, it did not go as far to suggest that the CAT is more suitable over the Patents Court: “…it seems to me that ideally both would be useful (a sort of IP CAT).” The judge was also of the view that splitting the FRAND-related issues would create a division in the decision making process: “However I do not think it is practical to divide the decision making in this way given the centrality of FRAND to this case. If the issues are split the tribunal would have to be constantly mindful about who should be making a particular decision. The interrelationship between the issues makes that problem worse, not better. If the legal landscape was clear, again it might be a different matter, but it is not. Transferring competition law FRAND but not transferring contractual FRAND would be a recipe for confusion.” In conclusion, the judge (adding “[n]ot without some regret”) refused the application to transfer proceedings to the CAT. JULY 2016

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Validity | Priority | Construction | Added subjectmatter | Novelty | Obviousness | Infringement | Declaration of non-infringement GlaxoSmithKline UK Limited v Wyeth Holdings LLC [2016] EWHC 1045 (Ch) 12 May 2016; Henry Carr J In this decision GlaxoSmithKline (GSK)’s application for revocation and a declaration of non-infringement of European Patent (UK) No. 2343308 of Wyeth (a subsidiary of Pfizer, Inc.) was refused. Wyeth counterclaimed successfully for infringement. The patent related to a meningitis B vaccine. GSK marketed such a product under the trade mark Bexsero, which had recently been added to the routine childhood immunisation programme in the United Kingdom. Wyeth did not yet have a product on the market. Accordingly, Wyeth did not seek an injunction. The judgment is of interest for setting out the current law on patent validity and other topics in detail, and showing clearly how the law is to be applied. The patent claimed a composition of factor H binding protein (also referred to as fHbp and 2086 protein) and at least one PorA protein.

Common general knowledge Henry Carr J agreed with Teva v Astrazeneca (asthma) [2014] EWHC 2873 (Pat) that common general knowledge included not just information directly in the mind of the skilled person, but also such information as he would be able to locate readily by reference to digital databases of journal articles. Henry Carr J added that: “this passage does not mean that all material available on-line constitutes common general knowledge. Rather it indicates that material which the skilled addressee knows to be available on-line and which is generally accepted as a good basis for further action (such as material which might be found off-line in a textbook or a key journal article) may constitute common general knowledge.”

Claim construction The judge held that the term “PorA protein” was not limited to a free PorA protein (as proposed by GSK) but also covered a membrane associated PorA. There was no technical reason for the claim to be limited to free PorA protein. The judge construed claim 3, requiring “the amino acid sequence of ” particular sequence identification numbers, as being limited to those exact amino acid sequences. Wyeth argued that a 99 % match for example would be sufficient. The judge relied in his construction on the series of cascading and narrowing claims; the convention in the field and need for precision; the fact that percentage identities below 100% were 34 CIPA JOURNAL

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otherwise specified in the patent; and the need for reasonable certainty to the public. The judge construed claims 18-20, in medical use format, as requiring the claimed therapeutic effect as a functional technical feature (applying Regeneron Pharmaceuticals Inc v Genentech Inc. [2013] RPC 28). GSK argued that the effect of the vaccine could come from PorA alone. The judge did not accept this, explaining that: “This defeats the object of the claimed combination, and effectively reduces the invention to a single functioning component, which the Patent acknowledges was known and used in the prior art, and on which it seeks to improve. This is not a fair interpretation of the claims, and cannot have been the intention of the patentee, objectively assessed.” The judge confirmed that the two proteins were complementary in the sense that, by being effective against different meningitis strains, together they provided extended vaccine coverage. They were not required to act synergistically.

Infringement It was accepted by both parties that claims 1, 2 and 18-20 were infringed. Wyeth contended that claim 3 was also infringed because Bexsero contained fHbp protein with around 99% sequence identity to the specified sequences. Based on his construction of this claim, however, the judge held that the claim was not infringed.

Plausibility – AgrEvo obviousness / insufficiency The issues of “AgrEvo obviousness” (that is, when the technical contribution is arbitrary) and insufficiency were both linked to lack of plausibility and so were dealt with together by the parties and the judge. The judge summarised the relevant case law in relation to sufficiency as requiring a plausible assertion that the invention will work across the scope of the claim, in the sense that there is a real reason for supposing that the statement is true, with a threshold test being applied. He summarised the case law in relation to AgrEvo obviousness as requiring the same threshold test for plausibility. The judge held that his construction of the claims as not requiring synergy between the two proteins and as requiring the fHbp protein to be functional dealt with many of the plausibility points.

The UK patent court case reports are prepared by Jonathan Markham, Anna Hatt, Matthew Ng and Sarah-Jane Poingdestre. All the court decisions listed in this section are available on the free-to-use website www.bailii.org.

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Based on the expert evidence, the judge rejected further insufficiency attacks by GSK: i.e. relating to sequences having only 95% homology with the listed sequences; in relation to nonlipidated fHbp protein; in relation to the use of only one PorA protein; and in relation to compositions without adjuvants (that is, substances used to improve the body’s immune response).

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teaching that a sequence identity of less than 95% would not have utility, but rather that the patentee had chosen a reasonable boundary for the claim… In addition, it is very hard to see how a requirement for exact sequence identity in claim 3 could add subjectmatter, given that the utility of these amino acid sequences is expressly disclosed in the application.”

Added subject-matter The judge summarised the relevant case law as applying a test of whether a skilled person would learn anything about the invention from the amended specification which he could not learn from the unamended specification, bearing in mind that added subject-matter could allow the proprietor to obtain a monopoly unjustified by the original application, which would be unfair to third parties. Explicit disclosure was not required (EPO Guidelines). Intermediate generalisation, wherein a feature from a specific embodiment is added to a claim without its context, was not permitted. GSK argued that selection from multiple lists was not permitted under EPO decision T12/82 and related case law. The judge stated that: “In my judgment, selections from two or more lists may well amount to impermissible added matter, but this is not a rigid rule. In order to see whether there is a new combination of independent features from two or more lists, the whole contents of the application as filed must be considered, including its general disclosure. It is necessary to avoid a mechanistic approach...” GSK argued that preferred amino acid sequences, the sequence identity thresholds of the various claims and PorA protein had all been selected from lists to reach the granted claims. The judge disagreed, noting that the significance of the claimed amino acid sequences and of PorA had been clear from the application as filed. In relation to the sequence identity threshold he commented that: “the utility of the 2086 protein from the 8529 strain is plain from Examples 1-3, 6, and 8-10 of the application as filed. At p.40 lines 23-27 the application discloses that: ‘… the degree of sequence identity is preferably greater than 60% (e.g., 60%, 70%, 80%, 90%, 95%, 97%, 99%, 99.9% or more).’ In one sense, this could be described as a list of preferred levels of sequence identity. However, the disclosure must be read in light of the common general knowledge of the skilled person. He would know that exact sequence identity would not be required, and that a protein with an amino acid homology level of 95% to the specified 2086 sequences would be well above the level at which the protein would be expected to have utility. Furthermore, the claim limitation in the Patent would not be understood as Volume 45, number 7

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Thus, the claims were held not to add subject-matter.

Priority GSK alleged that the claim to the first priority date was invalid because various examples were missing from the first priority document so that there was no basis for various features of claim 1 and also the plausibility test was not met. The judge disagreed in each case, holding that the patent was entitled to its first priority date. The judge also considered whether the patent was entitled to its second priority date in case his conclusion as to the first priority date was wrong. The second priority document was missing the sequence listings. Wyeth argued that the skilled person could have obtained these sequence listings by experiment from the examples. GSK responded that this was not a clear and unambiguous disclosure and that conducting the experiments would have involved an undue burden. The judge decided that the patent was entitled to its second priority date.

Novelty Novelty attacks were based on a patent document 885, a Cuban vaccine, an abstract Andersen (all published before the first priority date), a patent document 869 (published between the first and second priority dates) and posters/abstracts Bernfield and Farley (published after the second priority date). 885 disclosed the invention by means of selection from a sub-list. Wyeth submitted that anticipation required a sufficiently individualised disclosure, which was a matter of degree, and the judge agreed with reference to Dr Reddy’s Laboratories Ltd v Eli Lilly & Co [2009] EWCA 1362. He did not consider that there was an individualised disclosure of the fHbp protein in 885, nor that it would be an inevitable result of following the teaching of 885 that a PorA protein would be present. Thus, this document was not novelty-destroying. GSK argued that the Cuban vaccine contained fHbp protein, based on work on the vaccine carried out after the priority date. Based on a detailed review of the witness evidence the judge decided that GSK had not proven on the balance of probabilities that the Cuban vaccine had contained fHbp. There was a further dispute between the parties as to whether, for the Cuban vaccine to anticipate as a prior use, it was essential that the skilled person would have been able to analyse it and identify the presence of fHbp protein at the priority date. The judge analysed Merrell Dow Pharmaceuticals Inc v HN Norton & JULY 2016

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Co Ltd [1996] RPC 76 which distinguished between anticipation by use and anticipation by disclosure, concluding that: “I do not accept GSK’s submission that in order for the Cuban vaccine to anticipate as a prior use, it is not necessary for the skilled person to have been able to analyse it and identify the presence of fHbp at the priority date. If it could not be analysed to identify the presence of fHbp, then the supply of the Cuban vaccine and its administration to patients conveyed no information which would have enabled anyone to work the invention, i.e. to make a composition which comprised fHbp.” The judge held that the skilled person would not have been able to identify the presence of fHbp protein at the priority date. Thus, the Cuban Vaccine was not novelty-destroying. Andersen described compositions which were found after the priority date to include fHbp protein and PorA protein. GSK contended that the skilled person could have found out by experimental work at the priority date that fHbp was present. However, the judge found that this would have been an extremely laborious task. Moreover, following the teaching of Andersen would not have had the inevitable result of producing something within the scope of the claims. Thus, Andersen was not novelty-destroying. The judge considered the question of novelty over 869 in case his decision on priority entitlement was wrong. GSK argued that following the teaching of a vaccine example of 869 would have the inevitable result of producing something within the scope of the claims. The judge held that 869 was not novelty-destroying, noting that GSK’s expert witness had combined separate parts of the document in the knowledge of the invention, and also that there would have been technical difficulties in putting the relevant teaching into effect at the priority date. The judge considered the question of novelty (and also inventive step) over the Bernfield and Farley posters and abstracts, again in case his decision on priority entitlement was wrong. This depended on whether the skilled person would have been able to obtain the sequence of fHbp protein based on the prior art. An experiment was proposed by GSK’s expert witness. The judge considered that the prior art was not noveltydestroying, but was relevant to inventive step if citable.

Obviousness GSK relied on a patent document 922. The judge considered the question of whether the skilled team would consider that there was a fair prospect of success based on this document of a particular disclosed vaccine candidate against Men B. He held that the claims were not obvious on this basis because the information in 922 was limited and possibly unreliable; and because GSK’s expert witness came to the document in the knowledge of the invention and therefore limited weight could be attached to his evidence. 36 CIPA JOURNAL

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Squeeze attacks GSK relied upon a number of alleged squeezes between the prior art and insufficiency on the basis that the patent was no more enabling than the prior art. The judge did not accept this, stating that the disclosures were very different.

Conclusion The patent was held to be valid and infringed (claim 3 not infringed).

Disclosure | Obviousness (1) Positec Power Tools (Europe) Limited (2) Positec (Macao Commercial Offshore) Limited (3) Positec Germany GmBH v Husqvarna AB [2016] EWHC 1061 (Pat) 10 May 2016; Birss J This case relates to disclosure on validity in UK courts. The decision was discussed on the IPKat blog (http://ipkitten.blogspot. co.uk) on 17 May 2016. Husqvarna was the owner of European Patent (UK) No. 1512053 relating to a method of operating a robotic lawnmower under the guidance of an electronic “directing” system. The directing system marked out the edges of the lawn using a cable under the ground, and the robotic lawnmower stays on the lawn and avoids mowing the flower beds by sensing the magnetic field created by the electric current in the cable. Positec wished to sell robotic lawnmowers in the UK. They contended that the patent was invalid and/or that particular models of their robotic lawnmower products did not infringe the patent. This action relates to a claim for revocation of the patent and for declarations of non-infringement. Early stage directions were given in March, which then led to the trial being fixed for November 2016. It was agreed that Positec would prepare a product-and-process description in accordance with CPR PD 63 paragraph 6.1. Husqvarna’s disclosure report was prepared on the basis that disclosure on validity would be in accordance with CPR PD 63 paragraph 6.1, which requires disclosure of documents that came into existence within a four-year window (two years either side of the priority date). However, in the run up to the hearing Husqvarna changed tack and contended that no validity disclosure should be ordered. An important point was raised on the correct approach to disclosure in the light of CPR r31.5 and how that approach applies to the question of whether to order disclosure of documents arising from the making of the invention in an obviousness case. Birss J first summarised the law in relation to disclosure in obviousness cases. Over the years, there has been significant attempts to limit disclosure on obviousness, for example, in the case of SKM v Wagner Spraytech which failed to persuade the Court of Appeal to overturn an order for that sort of disclosure. www.cipa.org.uk

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However, a balance needed to be struck. Birss J then commented on the success of the IPEC, where in general disclosure on obviousness had not been ordered: “One significant benefit in the IPEC’s rules is that they do not involve prima facie assumptions that a party must give disclosure on all issues or tender witnesses for crossexamination on all issues. This creates a space in which to discuss a proportionate way of limiting these things. Without rules like those in the IPEC, whenever a litigant proposed an approach which was different from and more limited than what was normally done, their opponent always assumed that something was being hidden under the cloak of proportionality. Of course litigants do have things they would rather hide but not always, and a concern about costs in civil litigation is hardly surprising.” Having considered the existing authorities in the field, Birss J then set out the key aspects to determine whether disclosure should be ordered: “Proportionality will be important and two major considerations are the likely probative value of the material which could be produced and the cost of doing so, putting that cost into the context of the proceedings as a whole (CPR r1.1 (2)(c) and 1.4(2)(h)). In the end the question comes back to fairness and the interests of justice.” On the first point (the probative value of the material), Husqvarna confirmed that they had no plans to rely on commercial success, call the inventor as a witness, to rely on the reactions of others to the invention or to rely on its own internal documents to support inventive step. If they had, the judge noted that these would be reasons to order disclosure. To support the case for disclosure, Positec relied on the two generic reasons given in SKM v Wagner Spraytech and referred to in Nichia v Argos why this sort of material should be disclosed in a patent case. These were: that the inventor could look at the steps the inventor actually took to determine whether the invention was obvious; and the use of disclosure in cross-examination. However, neither argument was persuasive for the judge. On the first reason: “In one sense this is rather odd. It seems to hypothesise that the expert has not thought of an obvious way to travel from the cited prior art to the claimed invention but then is shown what the inventor actually did (which ex hypothesi must not be stated in the patent) and then expresses a view that those steps are obvious. That sounds like an approach potentially tainted with hindsight. I am not persuaded that put this way the point adds anything to the cross-examination argument. There can be particular reasons why it may be useful on this basis but, subject to the one point below, none of them are live in this case.” Volume 45, number 7

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On the second reason: “When one sees that the inventor may or may not be close to the notional person skilled in the art, cross-examination on obviousness based on that sort of document usually does not help. All that happens is one question is substituted for another.” On the second point (i.e. cost) Husqvarna attempted to argue that the value and importance of the dispute was low. However, the judge held that the picture this painted was wrong: “In my judgment the picture painted by Husqvarna of the value and importance of this dispute is wrong. It is not a case of very low value but nor is it at the high end of the cases in the Patents Court. The patent is not essential to a global telecommunications standard nor does it cover a blockbuster pharmaceutical. The dispute is between rival manufacturers of consumer products concerning entry into a substantial market. Based on the evidence before me the likely value of that market in terms of turnover is measured in millions although probably not tens of millions. Based on the cost budgets on file, the costs on each side are likely to be in a range between about £0.8-£1.1 million. This is not a case in which those likely costs will swamp the value of the dispute. Whether a patent case like this should cost that much is a different question. This case is worth fighting even at those costs.” Assessing these elements, on the final point the judge refused the disclosure, noting that this decision ran counter to established case law, but that changes to the Civil Procedure Rules meant that the existing case law was not binding. The judge summarised: “I am well aware that refusing this disclosure runs counter to the Court of Appeal in Nichia v Argos. However, the change in CPR r31.5(7) means that it is not a binding authority. Experience in IPEC shows that the obligation to disclose documents which may be adverse to a party’s case can be preserved as a critical aspect of a fair trial at common law within an issue by issue based disclosure regime in which disclosure on some issues, such as obviousness, is not ordered because the likely probative value of what is produced is not worth the cost. Applying what I perceive to be the right approach under the Civil Procedure Rules as they now are, I am not satisfied that an order for standard disclosure, or an order for issue based disclosure including the issue of obviousness, would be in accordance with the overriding objective in this case. This is an ordinary obviousness case with no special features which might make such disclosure worth the cost.” In conclusion, the judge refused the refused the order for disclosure. JULY 2016

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Patent decisions Entitlement: Section 12 HAPSS Limited BL O/247/16 19 May 2016 The claimant (HAPSS Limited) initiated entitlement proceedings under section 12, arguing entitlement to a European patent application filed in the name of John G. Bowen, a resident of California. The claimant stated that Mr Bowen had agreed to take a role as consultant to HAPSS, that an agreement had been made to transfer all patent rights to them pursuant to commercial terms agreed, and that Mr Bowen had executed an assignment of some of his other patent rights, but not the European application in question. In a counterstatement, Mr Bowen denied that such an agreement existed. The two sides were invited to file further evidence, and Mr Bowen was asked to provide an address for service as required by Rule 103(4) of the Patents Rules. Mr Bowen responded by questioning the comptroller’s jurisdiction, and asking for the claimant’s statement of case to be struck out. This was denied in a preliminary hearing (BL O/076/16). Mr Bowen was asked again for an address for service, but did not provide one. As a consequence his opposition

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to the claimant’s reference under section 12 was treated as withdrawn, and Mr Bowen was deemed to no longer be a party to the proceedings. The hearing officer went on to find that the claimant was entitled to the European application. The claimant further requested costs. The hearing officer considered that although the reference was now unopposed, as Mr Bowen did initially oppose the reference and applied for it to be struck out, it was fair to compensate the claimant for the unnecessary expense incurred. A contribution to the claimant’s costs was ordered. The hearing officer also noted that had the Office directed Mr Bowen to furnish an address for service before sending the counter-statement to the claimant – as required by Rule 80(1)(a) – then his opposition may have been deemed withdrawn far earlier, saving the claimant additional expense. The hearing officer concluded that a lesson from the case was that the procedure for directing a party to provide the required address for service needed to change. 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 contributor was David Pearce and Callum Docherty of Barker Brettell LLP.

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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EPO decisions Added Matter – Article 123 EPC T 1673/11: Treatment of Pompe’s disease/GENZYME TBA Decision of 20 October 2015 Chairman: U. Oswald Members: K. Giebeler and L. Bühler This was an appeal by the opponent against the Opposition Division’s interlocutory decision to allow amendments to claim 1 of the patentee’s main request. The claim in question was a second medical use claim for the use of human acid alpha glucosidase in the treatment of Pompe’s disease. The amendment to which the opponent objected converted a purpose limited process “Swiss-type” claim in the patent as granted, to a purpose limited product “EPC 2000” claim. The appellant submitted that the amendment was contrary to Article 123(3) EPC as the change in category from process claim to product claim extended the protection conferred. The patentee argued that by virtue of Article 64(2) EPC the protection conferred by a Swisstype claim extended to the product directly prepared from such a process. Therefore, in circumstances such as this where the process was formulated broadly, that is to the “manufacture of a medicament”, and so does not specify steps to be taken in the process, what was actually protected was a purpose limited product as such. The patentee further submitted that the uncertainty between what is meant by “protection” under Article 123(3) EPC and “rights conferred” under Article 64(1), and whether in fact infringement should be considered under Article 123(3) EPC, meant questions should be referred to the Enlarged Board of Appeal for clarification. The TBA allowed the appeal and also refused the auxiliary requests, revoking the patent. The TBA considered that there was a clear distinction between what was meant

by “protection” and “rights conferred”. The protection provided by a patent should be determined by the scope of the claims under Article 69(1) EPC in terms of category plus technical features. This could be distinguished from “rights conferred” under Article 64(1) which were the acts which would constitute infringement in a designated Contracting State and the remedies available to a patentee for such infringement. As there was no inconsistency in the case law on this point, it was not necessary to refer questions to the Enlarged Board of Appeal. Applying the decision of the Enlarged Board of Appeal in G 2/88, the TBA found that there was a generally accepted principle underlying the EPC that a claim to physical activity such as a method, process or use, confers less protection than a claim to a physical entity per se. As a consequence, a purpose limited process claim could not be amended post-grant to a purpose limited product claim. The TBA was of the opinion that, even if Article 64(2) EPC was to be taken into account for the purposes of Article 123(3), the scope of protection would have been extended. For example, for Swiss-type claims the relevant purpose is limited to use in treating the indication specified on the packaging leaflet created during manufacture, whereas for a EPC 2000 claim, not being limited by the process of manufacture, it was not (i.e. the EPC 2000 claims would also encompass alpha glucosidase products used to treat Pompe’s disease even if the product label was concerned with diseases other than Pompe’s disease). As Swiss-type claims were no longer permissible, questions on this issue did not need to be referred to the Enlarged Board of Appeal.

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 contributor from Bristows was Adrian Chew.

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DECISIONS

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)

GC T-54/15

Jääkiekon SM-liiga Oy v EUIPO 28 April 2016 Reg 207/2009

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– games and playthings, gymnastic and sporting articles not included in other classes (28) – sporting activities (41) – other goods and services in classes 9, 16, 25, 29, 30, 32, 33, 39, 42.

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Comment

The GC upheld the BoA’s decision to reject an application to register the mark in classes 28 and 41 under Articles 7(1)(b), 7(1)(c) and 7(2). It was not disputed that the relevant public comprised average Finnish-speaking consumers. The GC endorsed the BoA’s assessment that the relevant public would interpret the word ‘Liiga’ as meaning ‘competitive sports league’; namely a championship, as per its meaning in Finnish. The BoA was therefore correct to find that the mark conveyed a clear and direct message relating to the intended purpose of the goods and services at issue in classes 28 and 41 given that those goods and services may directly relate to a competitive sports division or championship. The GC agreed that the mark remained legible despite the handwritten appearance of the word ‘Liiga’ and confirmed that the black circle would be seen as a background. The stylised elements of the mark did not negate its descriptive character. Assessed as a whole, the mark had a sufficiently direct and specific relationship with the goods and services at issue in classes 28 and 41 to enable the public to immediately perceive the intended purpose of the goods and services and was therefore descriptive of those characteristics under Article 7(1)(c) and devoid of distinctive character in relation to the goods and services at issue under Article 7(1)(b).

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T-144/15

L’Oreal, SA v EUIPO; Theralab – Productos Farmacêuticos e Nutracêuticos, Lda 28 April 2016 Reg 207/2009

– perfumes, eau de cologne; gels, salts for the bath and the shower, not for medical purposes; soaps, cosmetics, in particular creams, milks, lotions, gels and powders for the face, body and hands; suntanning compounds (cosmetics); make-up preparations; shampoos; gels, sprays, mousses and balms for hair styling and hair care; hair waving and curling preparations; essential oils for personal use (3) IDEALINA

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 GC confirmed that the BoA had taken into account all elements of the mark applied for in its assessment of the similarity. The BoA was correct to conclude that the existence of two earlier third-party marks (IDEAL LINE and IDEALIST) registered in respect of cosmetics, was insufficient to call into question the conclusion that the earlier mark had average distinctive character in relation to the goods at issue. The GC confirmed that the assessment of the similarity of the marks at issue could not be based upon a comparison of the earlier mark with other marks which did not form part of the case in question. The GC endorsed the BoA’s finding of likelihood of confusion on the basis that (i) the marks at issue had weak visual similarity, a high degree of phonetic similarity and an absence of any conceptual element which would counteract these similarities, (ii) the goods at issue were identical and (iii) the relevant consumers had an average level of attention at the moment of purchase of the relevant goods.

– bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumes, essential oils, cosmetics, hair lotions; dentifrices (3)

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.europa.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: Ahalya Nambiar, Rebekah Sellars, George Khouri, Sara Nielsen, Georgie Hart, Toby Bond and Daisy Dier.

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T-803/14

Compagnie Gervais Danone v EUIPO; Mahou SA

– isotonic beverages [not for medical purposes]; high energy drinks (32)

28 April 2016 BLU DE SAN MIGUEL

Reg 207/2009

– beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages (32) – telecommunications and communications services, including communications by computer terminals, digital communications and communications by global computer networks (38) – services for providing food and drink; temporary accommodation (43)

NATÜR-BAL

T 503/15

– sugar, honey, treacle; sweet spreads (honey); honey; honeys (for food); natural honey (30)

Aranynektár Termékgyártó és Kereskedelmi KFT v EUIPO; Natural Apícola, SL 3 May 2016 Reg 207/2009

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NATURVAL

– meat, fish, poulty and game; meat extracts; preserved frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats (29) – coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionary, ices; honey, treacle; yeast, bakingpowder; salt, mustard; vinegar, sauces (condiments); spices; ice (30)

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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 GC upheld the BoA’s assessment of the relevant public as European consumers with an average level of attention and endorsed the finding of identity of the goods at issue. The GC found that the distinctiveness of the earlier mark varied, being weaker for the part of the relevant public who understood the meaning of ‘de san miguel’. The element ‘blu’ had correctly been given added importance by the BoA, as that element was at least as important as the other elements in the earlier mark, and even in some cases, dominant, depending on how each part of the relevant public perceived (and abbreviated) the mark. The figurative element of the mark applied for was descriptive of the goods at issue such that the word element ‘b’lue’ was of at least equal importance to the figurative element. The marks had low visual similarity and a certain degree of phonetic similarity as the mark applied for was fully included from a phonetic standpoint in the earlier mark. The phonetic similarity would be very high and the conceptual similarity enhanced for the relevant public who would abbreviate the earlier mark to ‘blu’. A likelihood of confusion could not be ruled out, at least for the part of the public able to attribute a meaning to the expression of the earlier mark. The GC upheld the BoA’s finding that there was a likelihood of confusion between the marks pursuant to Article 8(1)(b). The GC confirmed that the relevant public was not limited to the target consumers in the ethnic Turkish market but comprised of the general public of European Union with an average level of attention. The GC confirmed the identity of the goods at issue and upheld an average degree of visual similarity as the marks coincided in seven out of eight letters. Neither the presence of the umlaut in the mark applied for nor the hyphen in the earlier mark produced significant visual differences. The GC upheld the BoA’s assessment of phonetic similarity and confirmed the marks were phonetically identical for the Spanish part of the relevant public, highly similar for a large part of the relevant public and similar for the part of the relevant public which recognised a difference in pronunciation when an umlaut was placed over the letter ‘u’. The GC endorsed the BoA’s finding of conceptual similarity as both marks referred to the idea of nature or something natural. The BoA was correct to conclude there was a likelihood of confusion between the marks.

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DECISIONS

Ref no.

TRADE MARKS

Application (and where applicable, earlier mark)

GC T 806/14

August Storck KG v EUIPO 10 May 2016 Reg 207/2009 – confectionery, chocolate, chocolate products, pastries, ice-creams and preparations for making the aforementioned products (30)

GC T-32/15

GRE Grand River Enterprises Deutschland GmbH v EUIPO 12 May 2016 Reg 207/2009

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– batteries for electric cigarettes, electronic cigarettes, electronic smoking pipes and devices intended for the vaporisation of tobacco, tobacco products and tobacco substitutes (9) – tobacco leaves; tobacco products, included in class 34; smokers’ articles; vaporisers for tobacco, tobacco products and tobacco substitutes (34)

Comment The GC upheld the BoA’s decision that the mark was devoid of distinctive character under Article 7(1)(b). The BoA was correct to conclude that the relevant public was the average European consumer with a low level of attentiveness: the goods at issue were inexpensive, everyday consumer goods which did not require a lengthy period of reflection by the consumer prior to purchase. The GC confirmed that, in the assessment of distinctive character, case law applicable to three-dimensional marks applied equally to figurative marks consisting of a two-dimensional representation of those goods. The BoA was correct to conclude that the blue, white and grey colours and graphical elements of the mark were likely to be perceived as presentational elements of the packaging rather than an indication of the commercial origin. The BoA was also entitled to find that the square shape of the mark was commonplace for the goods at issue and was clearly essential for those goods. The BoA was correct to reject the survey evidence submitted by August Storck, as it was limited in scope to Germany and revealed that the consumers surveyed were already familiar with the mark. The survey was therefore unable to establish the mark’s distinctiveness in the EU.

The GC upheld the BoA’s decision that the mark was devoid of distinctive character under Article 7(1)(b). The BoA was correct to assess that the relevant public comprised English-speaking average consumers of the general public as well as of a specialist public. The GC held that the mark clearly had a laudatory and promotional meaning as it suggested to the relevant public the idea of a ‘number 1 brand’ for the goods at issue. The mark essentially consisted of an advertising slogan that lacked the minimum degree of distinctive character required, rather than being an indication of commercial origin of the relevant goods. The simple graphic elements of the mark did not affect the assessment of the word element of the mark. The black and red colour, the weakly distinctive font and the size difference between the word and the number lacked any special character, and brought no distinctive character to the mark as a whole.

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DECISIONS

TRADE MARKS

Application (and where applicable, earlier mark)

Comment

ULTIMATE FIGHTING CHAMPIONSHIP

T-590/14

– pre-recorded audio cassettes; phonograph records; compact discs; pre-recorded video cassettes; laser video discs; digital video discs; digital versatile discs; electronic storage media; USB flashdrives; CD-ROM discs all featuring mixed martial arts competitions, events and programs; computer game programs; computer games; computer software; motion picture films in the field of mixed martial arts and other data support media (9) – books and printed instructional and teaching manuals in the field of sports and entertainment; general feature and sports and entertainment magazines; fitness and entertainment magazines; newspapers in the field of sports, fitness and entertainment; posters; event programs; stickers (16) – action figures and accessories; hand-held electronic games; playing cards; computer game accessories and controllers (28) – live stage shows; presentation of live performances; amusement park and theme park services; provision of information relating to mixed martial arts via communication and computer networks; providing news and information in the fields of sports, fitness and mixed martial arts via communication and computer networks (41)

The GC partially annulled the BoA’s decision which dismissed an appeal against a refusal to register the mark pursuant to Article 7(1)(b), and (c) on the basis that, in relation to certain goods and services in class 41, the mark had acquired distinctive character pursuant to Article 7(3). However, the BoA was correct to hold that all of the goods and services at issue might relate to an ultimate fighting championship, which was sufficient to establish that the mark applied for was descriptive. The mere addition of the laudatory term ‘ultimate’ did not render the mark any less descriptive pursuant to Article 7(1)(c). The BoA erred in finding that the mark was devoid of distinctive character pursuant to Article 7(1)(b) solely because the mark was descriptive. The GC held that, although some of the evidence by Zuffa referred to UFC, the acronym frequently appeared in association with the mark applied for. The evidence was therefore sufficient to show that the specialist public, being English-speaking fans of mixed martial arts in the EU, would be likely to identify the mark as an indicator of the goods and services in classes 9 and 41 which were especially intended for them. The GC therefore dismissed the BoA’s decision in relation to the goods and services intended for the specialist public, on the basis that the mark had acquired distinctive character pursuant to Article 7(3) for those goods and services. The GC upheld the BoA’s decision in so far as it applied to the other goods and services at issue, as the mark had not acquired sufficient renown for the English-speaking general public in the EU. Registration of the mark was therefore refused for the remaining goods and services pursuant to Articles 7(1)(b) and 7(1)(c).

Ref no.

Zuffa, LLC v EUIPO 12 May 2016 Reg. 207/2009

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DECISIONS

Ref no. GC T-749/14

Peter Chung-Yuan Chang v EUIPO; BSH Hausgeräte GmbH 12 May 2016 Reg 207/2009

GC T-62/15

Market Watch Franchise & Consulting, Inc. v EUIPO; El Corte Inglés 13 May 2016 Reg 207/2009

Application (and where applicable, earlier mark) AROMA

– electrical cooking utensils, namely juicer, juice extractors, pasta makers for domestic use, food processors and blenders (7) – electrical cooking utensils, namely convention cooking ovens for domestic use, automatic bread makers for domestic use, food steamers for domestic use, grills, deep fryers, sandwich makers, waffle makers, soup warmers, rice cookers and warmers, food dehydrators, skillets, pressure cookers, hot plates, toaster ovens and roaster ovens, ice cream makers, and slow cookers (11)

MITOCHRON

– bleaching preparations and other substances for laundry use, soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices (3) – pharmaceutical and veterinary preparations, sanitary preparations, dietetic preparations for medical use, preparations of trace elements for human and animal use, food supplements for medical use, mineral food supplements, vitamin preparations (5) – advertising (35)

– soaps, perfumery, cosmetics (3) – commercial retailing or retailing via global computer networks (35)

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TRADE MARKS

Comment In invalidity proceedings, the GC annulled the BoA’s decision that the mark was descriptive under Article 7(1) (c) and lacked distinctive character under Article 7(1)(b). Whilst the mark alluded to a desirable characteristic of foodstuffs prepared or cooked with the help of electrical cooking utensils, it did not provide the average consumer with obvious and direct information about the qualities, characteristics or intended use of the utensils themselves. The positive image of the goods alluded to by the mark did not go beyond suggestion and the connection between the mark and the goods at issue was too vague, uncertain and subjective to render the term descriptive. As a certain degree of interpretation was required on the part of the public to arrive at the connection between the mark and the goods, the GC held the mark was not descriptive pursuant to Article 7(1)(c).The laudatory nature of the mark could not, in itself, deprive the mark of a distinctive character and, as the mark demonstrated a certain degree of originality being uncommonly used in relation to the goods at issue, the mark was not devoid of distinctive character pursuant to Article 7(1)(b).

The GC upheld the BoA’s decision that, in relation to certain goods and services, there was a likelihood of confusion between the marks pursuant to Article 8(1) (b). It was not disputed that the goods in class 3 were partly identical and partly similar. The BoA was correct to find that ‘pharmaceutical and veterinary preparations, sanitary preparations’ in class 5 covered by the mark applied for were similar to a low degree to ‘cosmetics’ and ‘soaps’ covered by class 3 of the earlier mark as they shared a similar purpose, distribution channels and might also be manufactured by the same companies. The BoA correctly assessed the marks as visually similar. The marks shared the word element ‘mito’ and the typographical elements of the earlier mark did not constitute a specific and original configuration. The GC confirmed the BoA’s assessment of phonetic similarity (the marks shared the two syllables ‘mi’ and ‘to’ at the beginning) and agreed that the marks were conceptually highly similar due to the shared word element ‘mito’ meaning ‘myth’ in Italian. In view of the fact that the level of attention of the relevant public was partly high and partly average, there was a likelihood of confusion on the part of the Italianspeaking relevant public.

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T 454/15

Laboratorios Ern, SA v EUIPO; Matthias Werner 3 May 2016 Reg 207/2009

– dietary supplements for humans and animals; tobacco-free cigarettes for medical purposes; vitamin preparations; medicinal drinks (5) – fruit beverages and fruit juices; fruit juice concentrates (nonalcoholic drinks); beer (32) DYNAMIN

– chemical products and specifics (1) – dietetic foods adapted for medical use in any shape or form (5)

GC T-126/15

El Corte Inglés, SA v EUIPO; Grup Supeco Maxor SL

– auctioneering, retail services (35)

24 May 2016 Reg 207/2009

– advertising; business management; business administration; office functions (35)

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TRADE MARKS

Comment The GC upheld the BoA’s finding that there was no likelihood of confusion between the marks pursuant to Article 8 (1)(b). The GC agreed that ‘tobacco-free cigarettes for medical purposes’ and the goods covered by class 32 of the mark applied for were different to the class 5 goods covered by the earlier mark. The BoA was correct to find the remaining goods were similar to a low degree, similar to a high degree or identical. The GC held that, on account of the striking figurative element of the mark applied for, ‘DYNAMIC’ was not a dominant element of the mark. The BoA therefore correctly assessed the marks as having low visual similarity despite the fact they shared six identical letters out of seven. The GC upheld the BoA’s finding that the marks had a low degree of phonetic and conceptual similarity. The relevant Spanish-speaking public would not consider the striking figurative element or the word ‘life’ in the mark applied as descriptive. Given the heightened level of attention of the relevant public for goods for medical use, the GC confirmed there was no likelihood of confusion between the marks. The GC dismissed an appeal against the BoA’s decision to partially uphold an appeal against the decision to uphold an opposition in respect of ‘auctioneering’ and ‘retail services’ pursuant to Article 8(1)(b). The OD relied on Point V of Communication No 2/12 of 20 June 2012 regarding the use of class headings in lists of goods and services in EUTM applications and concluded that Grup Supeco had intended to cover all services in the alphabetical list for class 35 within the application, including ‘auctioneering’ and ‘retail services’. In its assessment of similarity, the OD therefore compared the broad range of services covered by the mark applied for against the goods specifically listed within the opposition notice, namely ‘advertising; business management; business administration; office functions’. The GC endorsed the BoA’s decision that Point V of Communication No 2/12 did not apply equally to notices of opposition which relied on marks registered before 21 June 2012. On the basis of Rule 15(2)(f) of Regulation 2868/95 (as amended), the GC confirmed that a notice of opposition must contain the goods and services on which the opposition was based. It was not possible to infer that the present opposition was based on all services covered under the alphabetical list for class 35 and the BoA was correct to limit its comparison of the services at issue accordingly.

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DECISIONS

TRADE MARKS

Trade marks Registrability of Rubik’s Cube shape mark Simba Toys GmbH & Co. KG (‘Simba’) v EUIPO A-G Szpunar for the CJ; C-30/15 P; 25 May 2016

assessment of the relevant category was a factual matter, which could only be challenged by a plea that the GC had distorted the facts or evidence. As Simba had not raised such a plea, A-G Szpunar recommended that the challenge to the GC’s decision regarding Article 7(1)(e)(i) be rejected as inadmissible.

Article 7(1)(e)(ii) A-G Szpunar has given an opinion on the appeal from the GC’s decision (T-450/09, reported in the December [2014] CIPA 694) which dismissed a cancellation action under Articles 7(1)(e)(i) and 7(1)(e)(ii) (as amended by Regulation (EU) 2015/2424) in relation to the following shape mark, registered in class 28 for three dimensional puzzles:

A-G Szpunar confirmed that the public interest underlying Article 7(1)(e) was to keep shapes which were related to the essential characteristics of goods in question within the public domain. Article 7(1)(e) served to achieve this aim under subsection (i) which prevented a single economic operator from reserving a shape which was inherent to the generic function of the goods and under subsection (ii) which ensured that an undertaking could not use trade mark law in order to indefinitely perpetuate exclusive rights relating to technical solutions.

The GC had determined that the essential characteristics of the mark were the shape of the cube and the grid structure on each surface of the cube. In doing so, the GC based its examination on the graphical representation alone, without taking into account how the goods were used (a requirement imposed by earlier case law). A-G Szpunar considered that the GC had unduly focused on whether the graphical representation of the mark disclosed a technical function and, in doing so, failed to consider relevant information which defined the technical function of the goods. The GC had further failed to analyse the relationship between that function and the characteristics of the shape. As a result, A-G Szpunar concluded that the GC had failed to take sufficient account of the public interest underlying Article 7(1) (e). The GC had also failed to follow the case law of the CJEU developed in Philips Electronics (C-299/99 reported in July [2002] CIPA 355), Lego Juris v OHIM (C-48/09 reported in October [2010] CIPA 595) and Pi-Design (C337/12, reported in April [2014] CIPA 239). A-G Szpunar recommended that the GC’s decision be set aside. Gap’s opposition to “The GapTravel Guide” successful.

Article 7(1)(e)(i) A-G Szpunar indicated that the GC had been correct to find that Article 7(1)(e)(i) was not limited to natural products (i.e. those without alternative shapes) and regulated products (whose shape was mandated by a legal standard), as the ground for refusal was designed to protect the public interest by excluding from registration shapes all of the features of which were inherent to the generic function(s) of a product. The restriction suggested by the EUIPO would prevent Article 7(1)(e) from fulfilling this public interest. A-G Szpunar indicated that the dispute under this ground turned on whether the category of goods being considered were three dimensional puzzles (as found by the GC) or a narrower category of puzzles in the form of a ‘magic cube’ (as submitted by Simba). The mark was clearly a natural shape for the latter but not the former. The Volume 45, number 7

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DECISIONS

Gap (ITM) Inc (“Gap”) v British American Group Ltd (“BAGL”)* John Baldwin QC; [2016] EWHC 599 (Ch); 21 March 2016 John Baldwin QC (sitting as a Deputy Judge) allowed Gap’s appeal from a decision of the hearing officer to dismiss its opposition to BAGL’s application to register “The GapTravel Guide” as a trade mark in respect of “magazine publishing” in class 41. Gap owned the well-known mark in the clothing field GAP. It owned an earlier EUTM for GAP in respect of a range of services in class 41, and based its appeal on section 5(2)(b). The judge found that the hearing officer was mistaken to conclude that the average consumer would generally be a business and that the purchasing process may involve a relatively expensive procurement of one-off or ongoing services. As BAGL was carrying out the service of magazine publishing by producing and distributing magazines, and given the high degree of correspondence between the carrying out of that service and the magazines which were the end product of that service, the hearing officer’s conclusion that a consumer of the product of such a service was not also a consumer of the service was too narrow a perspective and did not accord with practical commerce. The judge also found that the hearing officer had erred in finding no conceptual similarity between the marks. As the hearing officer had found that ‘Gap’ in BAGL’s mark was allusive of “gap year” in the context of travel guide publishing, it had to be similarly allusive in Gap’s mark when so used (on the basis of notional fair use of Gap’s mark, which included travel guid publishing). The judge concluded that there was therefore real conceptual similarity between the marks, and that he was entitled to consider the matter afresh. As travel guides were a common subject-matter for magazine publishing services, the judge found that there was a real risk of confusion on the part of the average consumer which the presence of the neologism or portmanteau ‘GapTravel’ in the graphic representation of BAGL’s mark was not sufficient to remove. Gap’s appeal was therefore allowed.

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TRADE MARKS

Court of Appeal finds series marks not incompatible with the Directive Comic Enterprises Ltd (“CEL”) v Twentieth Century Fox Film Corporation (“Fox”)* Arden, Kitchin and Lloyd Jones LJJ; [2016] EWCA Civ 455 (Ch); 21 March 2016 The CA (Kitchin LJ giving the lead judgment) dismissed the final outstanding point in Fox’s appeal from the decision of Roger Wyand QC that it had infringed a series of trade marks registered by CEL. The outstanding point concerned the validity of CEL’s series mark, as shown below (the first mark in the series claimed the colours red, black and white as an element of the mark):

The CA had already dismissed Fox’s appeal (reported in April [2016] CIPA 63), subject to this point. The CA rejected Fox’s argument that the registration was invalid because section 41, under which it had been registered, was not compatible with EU law and the requirement that a mark must be a sign capable of being represented graphically – pursuant to Articles 2 and 3 of the Trade Mark Directive and section 3(1)(a). The CA preferred the submissions of the Comptroller-General of Patents, Designs and Trade Marks that a series of trade marks was a bundle of individual marks, each of which had to comply with the requirements for protection set out in the Directive, and that section 41 was an administrative provision which fell outside the scope of the Directive. The CA did not, therefore, find it necessary to refer the question to the CJEU. It concluded that section 41 was not incompatible with the Directive and that the appeal should be dismissed.

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EDUCATION

INSTITUTE EVENTS

Second medical use patents Report of a CIPA seminar: “An insight into the patentability and enforcement of second medical use patents in the EPO and English courts”. 18 May 2016; 1.5 hours CPD.

he seminar was presented by Jonathan Stafford (Fellow, Marks & Clerk) and Trevor Crosse (Solicitor, Marks & Clerk Solicitors). There were nearly 50 people in the audience. Jonathan Stafford spoke first, addressing the latest position on the patentability of second medical use claims at the European Patent Office (EPO). This section of the seminar began with a helpful recap of the legislative framework provided by Article 53(c) EPC, and the case law that has been used to interpret this provision. Significant EPO decisions relating to therapeutic methods were explained, including T116/85, T1077/93 and T290/86. Jonathan’s presentation included not only an analysis of these decisions, but also practical guidance for those drafting applications dealing with medical technologies. Suggestions were to rely on positive claim language (e.g. include a limitation to a cosmetic use), or alternatively to disclaim therapeutic uses. Caution is needed when adopting the latter approach, however, bearing in mind requirements of sufficiency and G2/10 dealing with such disclaimers. The seminar explained the legislative history of the form of second medical use claims under EPC2000, starting with the situation under EPC1973 and the landmark decision of G5/83 which permitted claims to second medical uses of known compounds in the “Swiss” format. As set out in the travaux préparatoires, the revision of Article 54(5) in the EPC2000 was intended to explicitly provide protection for subsequent medical uses and to overcome doubts as to the validity of Swiss claims. The wording of Article 53(c), relating to “products” was contrasted with that of Article 54(5), which refers to “substances and compositions,” which precludes the claiming of novel uses of known apparatus. A very interesting case (T2003/08) was described, in which second medical use protection was granted to cover the use of a ligand in the manufacture of a column for treating blood plasma outside a patient’s body. The range of “specific uses” of known substances entitled to second medical use protection were explained, with permissible uses including identification of a new patient subgroup (T19/86, T893/90), route of administration (T51/93, T143/94), and dosage regimen (culminating in G2/08). The EPO treatment of combination therapies, involving administration of more than one active agent to a patient, was discussed. Again, some very helpful claim drafting tips were given. Jonathan gave an analysis of Board of Appeal decision T1780/12, which compared the scope of Swiss-type claims Volume 45, number 7

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with product-for-use claims. The conclusion of the Board in that case was that the scope of a Swiss claim is narrower than that of a purpose-limited product claim. There was also a discussion of how Swiss claims have been interpreted in the UK, with reference to the decision in Ranbaxy v AstraZeneca. This first half of the seminar was of great value to practitioners dealing with medical technologies at the EPO. It covered the majority of decisions of importance in the area, and also advice on how to take account of these during drafting and prosecution. The final slide gave an excellent summary of the various practice tips, and reminded the audience that jurisdictions outside of Europe also exist, with several allowing claim formats not permitted by the EPO. Trevor Crosse spoke about the standard of evidence required to support second medical use claims. This provided a comparison of the approach at the EPO with that adopted in recent years by the UK courts. This opened with a fairly detailed analysis of the Board of Appeal decision in T 609/02 (AP-1 complex/SALK INSTITUTE), culminating in the criteria that have been applied in assessing whether a second medical use is plausible. Subsequent decisions providing guidance were also explained. Clinical trial results or animal model studies are not necessarily required; in vitro tests may be sufficient if they directly and unambiguously reflect the therapeutic application. Trevor moved on to discuss how “plausibility” has been examined in the UK courts, first in Conor v Angiotech (under inventive step), in HGS v Eli Lilly (under industrial applicability) and in the context of sufficiency in Regeneron v Angiotech. The UK approach of dealing with “plausibility” was contrasted with that adopted by the EPO, where the practice is to decide early on whether the issue is one of sufficiency or inventive step. In the case of Actavis v Eli Lilly the patent in question was only four pages long (including the cover sheet and claims in three languages). Luckily, the analysis provided by Trevor Crosse was more comprehensive. The conclusion of the judge in Actavis v Eli Lilly (Mr Justice Carr) was that the standard of plausibility for sufficiency is different from an expectation of success for obvious. The requirement for plausibility is present to exclude speculative patents based on mere assertion. The seminar was well-structured and informative, and provided a good balance between analysis of the legislation and decisions and practical guidance. Adrian Bradley (Fellow), Cleveland JULY 2016

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EDUCATION

INSTITUTE EVENTS

Mock Oral Proceedings Report of the CIPA CPD seminar on 18 April 2016 at CIPA Hall.

or those of us who, for whatever reason, have not exerted our skills at oral proceedings (OP) frequently, this estimable webinar organised by CIPA on 18 April 2016 at CIPA Hall on the topic was a welcome refresher. During the course of the afternoon, chaired ably by Chris Mercer and led by Gwilym Roberts, Gwilym took us through a full case study from prosecution history to a late-filed auxiliary request at the hearing. Gwilym, and a full Examination Division (ED) supporting him, were sitting in The Hague, and proceedings were beamed to CIPA Hall in London, giving a flavour of OPs held by videoconference and some of the technical difficulties which might ensue. Amongst other useful guidance, the ED explained that, where proceedings by video-conference are interrupted, further video communication would be re-attempted and, if unsuccessful, proceedings might be continued by telephone and, if again unsuccessful, proceedings would be suspended and further OPs called later, but in person. However, should an application or representative fail to show or, worse still, disappear part way through the OP, the ED is at liberty to continue the OP absent the applicant and a decision be taken on the state of the file. In these mock OPs, the Chair was Björn Gundlach, first examiner Dominique Winne, and second examiner Maaike van der Kooij. We are grateful for their useful insights and expertise. As an introduction, the general principles behind OPs were outlined along with a useful mind-map illustrating the leading case law and guidelines behind the various events that might occur on the day, from the taking of minutes and evidence (R124 EPC, Guidelines E-II.10 T740/00 and T642/97) to admissibility of late-filed amendments (more likely before the ED than OD, see Guidelines E-II.8.6 and Guidelines E-IX.5.4, Role 116 EPC and Case Law Book, BoA VII.C.I). To begin with Gwilym formally introduced himself to the ED and shook hands all round. The ED convened and, opened proceedings by introducing the case (application number, title, applicant, etc). It does very occasionally happen that one ends up in the wrong room, so it pays to pay attention. The prosecution history and current status were summarised. The ED then proceeded to review the pending MR, taking breaks to make decisions after each contentious point, before pronouncing their decision. Each request is decided upon by considering points, typically, in the following order (with breaks for decisions taken before moving on to the next point):

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• • • • • • • • •

Admissibility. Article 123(2)(3) (added matter). Article 52(2) (exclusions). Article 53 (exceptions). Article 83 (insufficient disclosure). Article 84 (clarity). Article 54 (novelty). Article 55 (non-prejudicial disclosures). Article 56 (inventive step) and if, for example, inventive step becomes an issue, the various stages of the problem/ solution approach might be judged in sequence e.g.; – selection of closest prior art; – identification of distinguishing features over same; – formulation of objective technical problem; – assessment of obviousness.

At each ‘decision point’ the attorney is asked to leave the room. During this break, not only does the ED discuss and decide upon the point in question but also discusses the issues they wish to address next. So the best prepared attorney is one who anticipates what comes next and is prepared. For example, if you are down to your last request, before leaving the room, politely request that the ED be prepared to admit a further request. Then when you leave the room, prepare one with all the claims (apparatus and methods) that you might want. Enquiring as to reasons (even if stated in brief) behind previous decision points can be helpful in providing insight as to what might be acceptable. It is useful, therefore, to establish a polite, cooperative dialogue, without (and this may be important) conceding any point on which you may wish to argue later. If necessary you can conclude with an ‘I have nothing further to add’ to a point rather than conceding it. Even if you lose the point, you may want a decision taking that point into account so that your client can choose whether to appeal or not. One possible trick to consider is withdrawing earlier requests you have no interest in and, therefore, will not require to be covered in the decision written by the first examiner, reducing his or her workload. However, if you want an appealable decision on any request you should maintain it, introducing further requests, e.g. dependent claim(s) introduced into claim 1 in further alternate request(s) as needed. Also it can be helpful to have already prepared amendments to the description to the requests you have in mind. It was clear that, after a decision break, the attorney rewww.cipa.org.uk

05/07/2016 08:13:21

EDUCATION

entering the room must be prepared for the decision good or bad and, if bad, be prepared to argue the next point or next auxiliary request under the same points listed above and under each subheading that might come up. Be prepared, know your documents, know your fall-back positions and arguments in respect of those, and do not concede, making clear arguments in support of your written arguments (even if elaborating on these only a little). Remove any rose-tinted glasses you have and analyse the arguments. In the OP, be courteous, polite, enquiring and respectful. Know the final line that your client will accept; it may

INSTITUTE EVENTS

be better to come back with something, albeit a narrow something. it is advisable to move the case forward at each stage, in written proceedings or risk being invited to OPs. Finally, after you have had something found acceptable, do not throw a curve ball in from left field by asking for something more. This Oliver Twist approach will, no doubt, be frowned upon. Thank you again to Chris, Gwilym, Dominique, Maaike, and Björn. Their time and contributions were very much appreciated. Dr Kate E. Macdonald (Fellow), Capella IP Limited

Opposition and Appeals at the EPO Report of the CIPA webinar on 22 March 2016. Speaker: Ilya Kazi, Mathys & Squire LLP

he speaker, Ilya Kazi of Mathys & Squire LLP, provided useful tips, tactics and guidance for approaching oppositions and appeals both as proprietor and as opponent. It was aimed particularly at qualified or near-qualified EP attorneys with limited experience of the opposition and appeals procedure; knowledge of the law was presumed. The objective was to provide some insights into how to try to maximise the chances for success. In particular, it got the audience thinking about how they might get finely balanced points to turn in their favour during the proceedings. The webinar started with the opposition procedure. It was emphasized that an ideal scenario is one in which you have the client’s aims, particularly their commercial aims, clearly set out at the beginning. It was noted that a proprietor might also want to consider whether they can learn anything about the opponent’s commercial aims. Both opponents and proprietors have important strategic decisions to make early on, in terms of choice of grounds for attack (opponent) and serious consideration of the merits of the various parts of the opposition (proprietor). Both sides presumably want to try to avoid diluting their position, and to avoid irritating or frustrating the opposition division, by including weak arguments. This should be a key focus throughout the opposition and appeal process. Various other points were covered, including how to approach replying to a poor opposition, and the relative merits of using expert evidence. It was noted that the preliminary opinion is often considered to be important: however, there was a warning to avoid complacency as the opinion is non-binding and can (and

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sometimes does) change before the final decision is reached. The next detailed topic was oral proceedings. Preparation tips included discussion with your client about potential alternative amendment options, expecting the unexpected and involving a junior colleague if appropriate. Advice for the hearing itself included choosing your battles, and generally reacting carefully to the events on the day. It was suggested that asking for clarification of a particular decision from the opposition division should be done only if you need the information for the next stage, but if not then it might be better to just wait until the written decision is issued. The talk moved away from opposition and onto appeals. In general, it was advised that appeal boards are often more thorough than opposition divisions. Procedure is followed more strictly, and they take prosecution decisions into consideration to a lesser degree than opposition divisions. Unlike with opposition, it was advised that omitting any argument or possible amendment when filing a grounds of appeal should be done with great caution. However, as with opposition submissions, brevity and conciseness may be appreciated. Emphasis was placed on the fact that appeal is the last opportunity to achieve your client’s commercial aims. It was noted that great deviation from the preliminary opinion of an appeal board is rarer than from an opposition division. It is important to review carefully and to assume that the Board has a good technical understanding of the case. After some overall messages, the webinar was concluded with answers to questions from the audience about costs, experts and late filing of auxiliary requests. Dr Elizabeth Dale (Fellow), Mewburn Ellis LLP JULY 2016

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Patent searching Report of a CIPA webinar “Patent Searching: understanding the patent document and how it can be searched”, 26 May 2016

his webinar was aimed at beginners and started with a discussion of the anatomy of patents (i.e. background, description, claims). It is assumed that most readers will be familiar with this and so this summary sets out a selection of other useful/interesting points explained during the webinar. Patent filings are increasing every year. In 2014, 2.68 million patent applications were filed worldwide. The IP5 offices (EPO, Japan, China, Korea, the US) accounted for 82% of this worldwide total in 2014, wherein China's State Intellectual Property Office (SIPO) received the most patent application filings. In fact the SIPO has been the top filing office since 2011. Various bits of information on the front of a patent document (e.g. publication number, filing date, etc.) have an INID number printed next to them. INID numbers are in fact standardised across the industry so for instance the INID number printed beside the filing date on a German patent document will be the same as the INID number printed beside the filing date on a Japanese or UK patent document. This makes it a lot easier to extract relevant information without having to translate the front page of a patent document. When searching using keywords it is advisable to use truncation operators. For instance a search for CAT* will return the likes of cat, cats, catastrophe, catalytic, etc. It should though be remembered when relying on keyword searching that different spellings may exist for the same word. For instance the English word “tyre” in contrast to the American spelling “tire”. In addition different words may be used in different jurisdictions to describe the same thing. For instance consider the English word “petrol” and the American word “gasoline”. Classification searching can be used as an alternative to, or to amplify the effectiveness of, a keyword search. It is assumed that readers will be familiar with the practice of patent classification codes. Bear in mind the existence of the various classification systems around the world today. For instance the International Patent Classifications (IPC) system and the less widely used Co-operative Patent Classification (CPC) system. Furthermore, some jurisdictions, such as Japan, use their own classification system. The three main freely available patent document searching databases are Espacenet provided by the European Patent Office, Patentscope provided by WIPO and Google Patents. Each has their own features and catalogue of documents. For instance Espacenet has over 90 million patent documents in its catalogue, whereas Google Patents has about 14.5 million. However, Google Patents includes functionality for enabling a

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JULY 2016

search to be conducted through non-patent literature available on Google Scholar. In addition to the freely available databases, there are various commercial databases available via subscription. For instance the Orbit database provided by Questel. These have various additional features not provided by the freely available databases already mentioned. For instance some commercially available databases include corporate tree functionality, which

Crossword – solution and winner Unconventional No.7 by Edgar Wunder: the winner of the May 2016 crossword competition is Peter Smith (Fellow) from Serjeants in Leicester. Thank you to all the readers who sent solutions in, we had 12 correct entries.

The 13 extra letters in across clues 1 d(I)eters, 5 close(S)t, 11 (R)emote, 14 a(D)vert, 17 (P)asses, 19 (F)odder, 22 Ernes(T), 37 (N)eaten, 38 (T)error, 39 clar(E)t, 41 p(A)lace, 42 (T)highs and 43 (A)rouse can be arranged to read: “I draft patents”.

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PEB • PERSONAL

makes it easier to locate who ultimately owns a patent when the proprietor is part of a larger group of companies. An interesting point discussed concerned what is done with information typed into patent document databases. In other words is it possible (in theory at least) for someone to collect the information typed into a database in order to build up a profile of what the database user is looking for, presumably to gain some insight into their commercial

EXAMINATIONS • ANNOUNCEMENTS

activities? This was answered in the affirmative, although it was pointed out that this will more likely be an issue associated with freely available patent databases. As for commercial, subscription based, databases what happens with information typed into it is likely to be mentioned somewhere in the relevant terms and conditions of use. Steven Charlton (Fellow)

Examination prizes Following the publication of the 2015 PEB examination results in March 2016, Council awarded these prizes: The Gill Prize Marcus Sims, Boult Wade Tennant (London), for the candidate achieving the highest aggregate mark in the Final Diploma examinations (FD1, FD2, FD3 and FD4). The Strode Prize Marcus Sims, Boult Wade Tennant (London) for the candidate achieving the highest mark in the FD1 examination Advanced IP Law and Practice. The Drafting Prize Catrin Petty, Venner Shipley LLP (London), for the candidate achieving the highest mark in the FD2 examination Drafting of Specifications. The Michael Jones Prize Marcus Sims, Boult Wade Tennant (London) for the candidate achieving the highest mark in the FD3 examination Amendment of Specifications. The Ballantyne Prize Miranda Kent, Mathys & Squire LLP (London), for the candidate achieving the highest mark in FD4 examination Infringement and Validity.

Announcements David Rose (Associate) has joined Mishcon de Reya as a partner. Marie McMorrow has joined the HGF Birmingham office as a partner on 31 May 2016.

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The Moss Prize Samantha Walker-Smith, Keltie LLP (London), and Alexandra Chua-Short, Potter Clarkson LLP (Nottingham), for the candidates achieving the highest aggregate of marks in the FC1 and FC3 examinations UK Patent Law and International Patent Law. The Keith Farwell Prize Robert Woolley, Haseltine Lake LLP (London), for the candidate achieving the highest mark in the FC5 examination Trade Mark Law. The Mike Higgins Prize Katie Howe, Barker Brettell LLP (Birmingham), for the candidate achieving the highest mark in the FC4 examination Design and Copyright Law. The Chris Gibson Prize Hannah Buckley, Marks & Clerk LLP (London), for the candidate achieving the highest mark in the FC2 examination English Law.

Impact of EU referendum decision on PEB examinations Patent Examination Board statement, 24 June 2016 Following the decision of the UK EU referendum to leave the EU, the PEB would like to confirm that the syllabi and examination content of the 2016 Qualifying Examinations, Litigation Skills examinations and the 2017 ICPA examination remain unchanged.

JULY 2016

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EVENTS

INSTITUTE EVENTS

Institute Events For more information and to book onto any event please see the CIPA website or email cpd@cipa.org.uk Monday, 11 July 2016 Webinar

Privilege

particularly on discovery by the US courts, which is for many clients of most practical importance.

Time: 12:30-13:30 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

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

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) Monday, 5 September 2016 Webinar

IP Enforcement; Can we afford to vs Can we not afford to? Time: 12.30-13.30pm

This webinar will focus on interesting patent decisions to have come from the

Co-ordinated enforcement against

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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EVENTS

INSTITUTE EVENTS

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.

Time: 08.30-18.30pm Location: Royal Institute Of British Architects, 66 Portland Place, London, W1B 1AD

Speaker: Huw Watkins, IPO Prices: TBC

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

Thursday, 8 September 2016 Webinar

Successful Negotiation of Claim Eligibility in United States IT & Software Cases Time: 16:00-17:00pm 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 checklist of issues and considerations will be provided and reviewed. Attendees are presumed to be generally familiar with US eligible subjectmatter issues and the Alice decision.

Speaker: Chris Palermo, Hickman Palermo Becker Bingham Intellectual Property Law CPD: 1 hour Prices: £72 (Members £48)

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Thursday, 22 September 2016 Seminar

CIPA Congress

Save the date! Email cpd@cipa.org.uk for details. Also see page 56.

Thursday, 22 September 2016 Seminar

CIPA Administrators Conference 2016 Time: 08.30-18.30pm Location: Royal Institute Of British Architects, 66 Portland Place, London, W1B 1AD This conference will focus on: Updates and highlights from the last 12 months; IPO updates, online filing, document management, UPC case management; IP filing strategies; Rescuing cases through extensions, further processing, restitution and other remedies; Financial considerations, e.g. handling of client accounts, money laundering and Proceeds of Crime legislation, credit control, VAT invoicing; Notarisation and legalisation; general issues around assignment and licence recordal; Designs and TM update; and Career development for IP administrators .

Prices: Early Bird £270 (Member £240)

Tuesday, 27 September 2016 Seminar

Why, when and how to perform prior art searching, and how to get the best out of the UK IPO search Time: 16:00-19:30pm Location: Mills & Reeve LLP, Botanic House, 100 Hills Road, Cambridge, CB2 1PH In this seminar, we explore reasons why prior art searching and freedom to operate (FTO) searching can be useful, and how to perform these searches. A UK IPO examiner will also provide valuable insight into how examiners perform patentability searches.

Speakers: Barbara Fleck, Crescendo Biologics; Nicola Baker-Munton, Stratagem IPM; Jane List, Extract Information Ltd; Eleanor Wade, UK IPO CPD: 2 hours; Price: £54

Monday, 14 November 2016 Conference

CIPA Life Science Conference Time: TBC – see page 38. Location: The Grand, 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 in-house and private practice professionals to network and share experiences.

CPD: up to 9 hours Prices: 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) JULY 2016

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CIPA Congress 2016

One Size Fits All?

Can You Have a Single Global IP Strategy? Thursday 22 September 2016 Royal Institute of British Architects 66 Portland Place London W1B 1AD www.cipacongress.org.uk

The 2016 CIPA Congress will be a oneday conference.

Keynote address by Director General of WIPO, Francis Gurry

The programme will include: zz Getting non-disclosure agreements right and what to do if a client’s information has been misused zz The latest developments and global challenges in terms of exclusions from patentability

Book before the end of July and get the early bird rate of £250 (+ VAT)

zz Tailoring patent prosecution to match changing client needs and office practices zz An exploration of substantive and procedural patent law harmonisation zz Practical advice on optimising a patent portfolio in terms of drafting and securing commercially useful claims aligned with the client’s supplier relationships and commercial activity

All enquiries email the CIPA events team on CPD@cipa.org.uk

zz An interactive session using a realistic scenario of potential infringement in major jurisdictions and a limited budget for dealing with it Visit www.cipa.org.uk/whats-on/ cipa-congress-2016 to book online.

THE PINKS

COURSES

JDD CONSULTANTS

EQE 2017 REVISION COURSES 28 NOVEMBER-6 DECEMBER 2016 & 26-27 JANUARY 2017 We have a full set of residential revision courses for the spring 2017 European Qualifying Examinations (EQE). Our Pre-Exam course is on 5-6 December 2016 and is rapidly filling. Our main suite of courses for Papers A&B, C and D are on 28 November – 2 December 2016 and we have add on ‘booster courses’ for Papers D and C on 26 and 27 January 2017. You can book a course for one paper, several papers or all - as desired. The courses are in Milton Keynes and are supported by our online Moodle forum. The course fee includes accommodation and meals, but there are discounts if accommodation is not needed and for bookings of a suite of courses and/or the booking of 5 or more courses by a firm. For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791959630. We are a CIPA Approved Training Provider. E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk Fax: +44(0)800 0664016

/RRNLQJ WR SDVV 3 )' " *LYH \RXUVHOI DQ DGYDQWDJH ͻ ĞƐƉŽŬĞ ϰ ĚĂǇ ƌĞƐŝĚĞŶƚŝĂů ƚƌĂŝŶŝŶŐ ĐŽƵƌƐĞƐ ĨŽƌ ϮϬϭϲ ͻ ,ĞůĚ ŽǀĞƌ ƚǁŽ ǁĞĞŬĞŶĚƐ ͻ 'ƵŝĚĂŶĐĞ ŽŶ ĞǆĂŵŝŶĂƚŝŽŶ ƚĞĐŚŶŝƋƵĞ ͻ WĂƐƚ ƉĂƉĞƌƐ ƌĞǀŝĞǁ ͻ ^ƉĞĐŝĂůůǇ ƉƌĞƉĂƌĞĚ ƉƌĂĐƚŝĐĞ ƉĂƉĞƌƐ ͻ /ŵŵĞĚŝĂƚĞ ŝŶĚŝǀŝĚƵĂů ĨĞĞĚďĂĐŬ ͻ ĂĐŚ ĐŽƵƌƐĞ ůŝŵŝƚĞĚ ƚŽ ũƵƐƚ &/s ƉĂƌƚŝĐŝƉĂŶƚƐ &Žƌ ŵŽƌĞ ĚĞƚĂŝůƐ ǀŝƐŝƚ͗ ǁǁǁ͘ƉϮƚƌĂŝŶŝŶŐ͘ĐŽ͘ƵŬ Kƌ ĐĂůů͗ ϬϳϵϵϬ ϲϱϯϱϯϬ

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THE PINKS

COURSES

Training for the EQE Dates: Venue:

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

Are you training to be a European Patent Attorney? Are you preparing to take the EQE in 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

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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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If you are interested and would like to find out more, please contact James Knowles at james@athertonknowles.co.uk or call 0117 920 0008.

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:

We are seeking a collaborator to help us develop and commercialise our webfiling platform for PCT national/regional phase entry. A fully functioning demonstrator website has been developed and is online.

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

JULY 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

05/07/2016 08:24:20

THE PINKS

INTERNATIONAL

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CIPA JOURNAL

05/07/2016 08:25:48

THE PINKS

RECRUITMENT

AIRBUS GROUP EUROPEAN PATENT ATTORNEYS

MUNICH, GERMANY

Airbus Group is a global leader in aeronautics, space and related services. In 2015, the Group – comprising Airbus, Airbus Defence and Space and Airbus Helicopters – generated revenues of € 64.5 billion and employed a workforce of around 136,000. Airbus Group Innovations – the Airbus Group network of research facilities, scientists, engineers and partnerships – is at the forefront of research and technology. Through this network, they foster technological excellence and business orientation through the sharing of competences and means between Airbus, Airbus Defence and Space and Airbus Helicopters. Airbus Group Innovations has two main sites in Suresnes (Paris) and Ottobrunn (Munich) and it is at the latter where two exciting opportunities have now arisen for highly motivated European Patent Attorneys to join Airbus Group. The roles ZLOO QHFHVVLWDWH KDQGOLQJ DOO DVSHFWV RI WKH SDWHQW OLIHF\FOH ZLWKLQ D VSHFLoF portfolio and will require outgoing and commercially orientated individuals in order to succeed. Candidates should have a degree in an Engineering discipline, 0DWHULDOV 6FLHQFH RU 3K\VLFV DORQJ ZLWK TXDOLoFDWLRQ DV D (XURSHDQ Patent Attorney.

For further information on this opportunity, SOHDVH FRQWDFW LQ VWULFWHVW FRQoGHQFH Julian Adamson, Partner +44 20 7337 9890 julian.adamson@adamsons.com

62 CIPA JOURNAL

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www.cipa.org.uk

05/07/2016 08:34:07

THE PINKS

Trainee Trade Mark Attorney (1 Yr.’s Exp to 1 Yr Post QM), Manchester Part Qualified Patent Attorney, Engineering, London We have a fantastic opportunity for a patent attorney early on in their career, who may have realised that their current working structure, work load and client mix, or perhaps even the team dynamic is not for them. The firm offers a fantastic training scheme and has a solid track record of supporting their attorneys through UK and European qualification. They are strong believers in experiential learning and encourage their attorneys to become involved in business development, client contact and the more strategic areas of the business from day one. Ideal candidates will have around a year’s experience with a strong academic background in mechanical engineering, although other areas of engineering may also be considered. French language skills are desirable but not compulsory in order to apply.

RECRUITMENT

Finalist Level Patent Attorney, Electronics, London This firm is consistently recognised for the extremely high level of service it provides to its world class clients; offering innovative and commercially sound solutions which effortlessly protect their clients IP both in the UK and overseas. The working environment is both stimulating and collaborative, in which ideas are listened to regardless of the level of seniority and where hard work is regularly acknowledged and generously rewarded. There is a healthy mix of direct client and agency work waiting for you, as well as ample opportunity to grow your own portfolio through hands on business development and the chance to tailor your practice to suit your strengths and interests. The support on offer will be second to none; with an open door policy allowing you to discuss cases and work closely with Partners and senior associates across all of the highly technical teams. Part Qualified Patent Attorney, Electronics, London

Opportunities for Patent Attorneys in the Midlands, All Specialisms Newly Qualified (up to 2 Yrs’ PQE), Chemistry, London Join a team environment which is supportive, collaborative and relaxed, and work alongside a Partner who is recognised regularly for their excellent technical ability and first class client portfolio. The practice has strong connections with European clients and associates (meaning your work load will contain an interesting European element) and deals extensively with prosecution and litigation in a wide variety of technical areas, including pharmaceuticals, cosmetics, agrochemicals, foodstuffs, photochemistry and polymers. You will also be responsible for a good mix of drafting, opposition and appeals, and will be given the chance to provide strong commercial support to a variety of innovative clients; from SMEs to multinational corporations based in the UK and internationally. Qualified Trade Mark Attorney, Manchester Part Qualified Patent Attorney, Mechanical Engineering, South West Recently Qualified Patent Attorney, Electronics/Electrical Engineering, South West Enjoy a progressive environment and benefit from first class direct client interaction, with regular face to face meetings across the UK and internationally. The individual technical teams within the firm adopt a highly collaborative approach, working closely with colleagues and clients to ensure the best possible outcome is achieved. There is never a dull moment, with attorneys constantly engaging with their clients and offering frank and realistic advice in relation to existing IP protection, potential growth areas for their clients' portfolio, commercialisation and enforcement of rights. Duties will include the drafting and prosecution of patent applications; advising on infringement, validity and freedom to operate issues; as well as the opportunity to become involved in complex patent litigation cases across the UK, Europe and the US.

Qualified Patent Attorney, Electronics, London Work with some of the most successful practitioners in the sector with a wealth of collective experience across the entire spectrum of patent work; from strategic prosecution and due diligence, through to litigation and complex oppositions both in the UK and overseas. You will be working alongside a prominent and highly regarded Partner managing substantial patent portfolios for multinational corporations, as well as taking a more hands on approach when advising start-ups, sole inventors and growing companies on their IP strategy. The firm encourages their attorneys to adopt a healthy work life balance and ensures everyone has access to the support they need with an open door policy at all levels and a transparent appraisal scheme. Technologies will include semiconductor process and integrated circuit technologies; electrical and electronic technology; metrology; consumer products particularly domestic appliances and personal care; computer architecture, network and communications technology; and medical and dental device technology. Qualified Patent Attorney, Biotechnology, London Become a strategist, advisor and advocate for some of the top ten biotechnology companies around the world. You will be joining a practice with a stellar reputation and a refreshing dynamic approach, and where the focus is on delivering an extremely high quality of service to its clients. You will be responsible for shaping and implementing your clients’ IP programmes across Europe and will enjoy significant opposition and litigation cases, strategic prosecution, and high value due diligence work. The practice operates a working environment in which influence originates at all levels, and where those who achieve will be very well rewarded. There is demonstrable career progression through to Partnership and access to some of the best clients and attorneys around. This is an opportunity not to be missed for those with the ambition and drive to excel. Finalist Level Patent Attorney, Chemistry, South

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 7

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JULY 2016

CIPA JOURNAL

05/07/2016 08:26:39

Dawn Ellmore Employment Patent, Trade Mark & Legal Specialists PQ IN-HOUSE - YORKSHIRE

ELECTRONIC ENGINEERING

:H DUH SOHDVHG WR EH ZRUNLQJ H[FOXVLYHO\ RQ DQ LQ KRXVH YDFDQF\ IRU D WUDLQHH SDUW TXDOLÀHG SDWHQW attorney. Based in Yorkshire, our client is a market leader in its specifc area of technology. Suitable FDQGLGDWHV ZLOO KDYH DSSUR[LPDWHO\ ² \HDUV· experience in the profession and have a background LQ HQJLQHHULQJ SK\VLFV RU FKHPLVWU\ ,Q KRXVH positions, especially at this level, are very rare.

$ JUHDW RSSRUWXQLW\ IRU D SDUW TXDOLÀHG QHZO\ TXDOLÀHG SDWHQW DWWRUQH\ KDV DULVHQ IRU DQ DWWRUQH\ with an IT, telecoms or engineering background and a specialist skill in electronics, backed up by a minimum of a 2:1 degree in a related discipline. High quality communication skills, both written and verbal, are essential along with the ability to integrate well into a team environment.

ELECTRONIC/COMPUTING

CHEMISTRY - NORTH

An exceptional opportunity has arisen for an attorney looking to make a name for themselves in the Intellectual Property sector and join this KLJKO\ UHSXWDEOH ÀUP DQG EH D SDUW RI WKHLU JURZLQJ SDWHQW WHDP 7KH ÀUP DUH FRQVLGHULQJ FDQGLGDWHV ZKR DUH HLWKHU ÀQDOV VWDQGDUG RU QHZO\ TXDOLÀHG with an outstanding background in Electronics and Computing.

We are seeking a chemistry specialist Patent Attorney to join a private practice based in North West England. The role will be suited to candidates ZLWK DQ\ OHYHO RI SRVW TXDOLÀFDWLRQ H[SHULHQFH and so all will be considered. Working within the chemistry department, you will be required to complete and partake in the growing workload that our client is currently experiencing.

ENGINEERING - NORTH

SECRETARIAL SUPERVISOR

$UH \RX D IXOO\ TXDOLÀHG 3DWHQW $WWRUQH\ ZLWK DQ engineering specialism? Are you looking for a private practice opportunity? An exciting role has emerged for a specialist engineering Patent Attorney based within a private practice in the North West of England. This role has this role has come about as a result of a steady growth of instructions in the HQJLQHHULQJ ÀHOG

An exciting role has become available to join a team of fee earners in their busy department. You should have a variety of experience and be able to meet the demands of many tasks, so prioritisation is key. The role will require a competent diary management ability and an ability to copy and audio type. To be successful you would be required to be a strong WHDP SOD\HU ZLWK D PLQLPXP RI \HDUV· H[SHULHQFH

COMPUTER SCIENCE PATENT ATTORNEY This opening represents an exceptional opportunity for a bright, successful and motivated patent attorney to MRLQ RQH RI WKH PRVW SURPLQHQW SULYDWH SUDFWLFHV LQ WKH SURIHVVLRQ $V WKLV YDFDQF\ LV LQ WKH ÀUP·V KLJK WHFK department, the nature of the work means that an educational and professional background in engineering (mechanical and/or electronics), computer science or the like is essential. A high proportion of direct client work LV RQ RɛHU WR WKH VXFFHVVIXO FDQGLGDWH PHDQLQJ WKDW \RX ZLOO EH H[SRVHG WR VRPH RI WKH ODUJHVW PRVW ZHOO NQRZQ DQG WHFKQRORJLFDOO\ DGYDQFHG FRPSDQLHV LQ WKH ZRUOG $ PLQLPXP GHJUHH FODVVLÀFDWLRQ IURP D KLJKO\ UHSXWDEOH university is a base requirement for this role. On top of this the partners are looking for someone who has forged a successful career in the profession to date.

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H R / O F F I C E MANAG E R - LO N D O N $ VXSHU RSSRUWXQLW\ KDV DULVHQ IRU D +5 2ɜFH 0DQDJHU WR MRLQ D OHDGLQJ /RQGRQ EDVHG /DZ ÀUP 7KH UROH ZLOO EH YDULHG DQG ZLOO VXLW D SHUVRQ WKDW HQMR\V GHDOLQJ ZLWK GLɛHUHQW FKDOOHQJHV 7KH UROH ZLOO VXLW VRPHRQH WKDW KDV SUHYLRXV H[SHULHQFH ZLWKLQ DQ RɜFH HQYLURQPHQW DQG GHDOLQJV ZLWK +5 <RX PXVW KDYH H[SHULHQFH RI VXSHUYLVLQJ DQG PDQDJLQJ D WHDP RI VWDɛ LQFOXGLQJ DSSUDLVDOV DQG SHUIRUPDQFH PDQDJLQJ ([SHULHQFH ZLWK KHDOWK DQG VDIHW\ PDQDJHPHQW LV DOVR D PXVW DQG EHLQJ DEOH WR PDLQWDLQ FRPSOLDQFH ZLWK HDVH LV DQ HVVHQWLDO SDUW RI EHLQJ VXFFHVVIXO ZLWKLQ WKH UROH 7KH UROH ZLOO EH GHDOLQJ ZLWK D YDULHW\ RI GLɛHUHQW LQGLYLGXDOV IURP PDQDJLQJ DGPLQLVWUDWLRQ VWDɛ WR OLDLVLQJ ZLWK VHQLRU PHPEHUV RI VWDɛ DQG IHH HDUQHUV WR DVVLVW ZLWK WKHLU GD\ WR GD\ VWDɛ UHTXLUHPHQWV DQG DOVR GHDOLQJ ZLWK EXLOGLQJ PDLQWHQDQFH VWDɛ DV ZHOO DV ODQGORUGV DQG IDFLOLWLHV VWDɛ 'XH WR WKH QDWXUH RI WKH UROH \RX ZLOO EH H[SHFWHG WR EH D VRXQG FRPPXQLFDWRU DQG EH FRPIRUWDEOH LQ DSSURDFKLQJ D ZLGH DXGLHQFH ZLWKLQ GLɛHUHQW situations.

IP RECORDS CLERK

TEMP JUNIOR ADMIN

A fantastic opportunity has become available to ZRUN IRU D OHDGLQJ ÀUP RI ,3 $WWRUQH\V You should have a background in patents, (PCT, UK and EP experience). An understanding in regards to processes in IP, along with database experience is required. Being in possession of the CIPA $GPLQLVWUDWRUV· FHUWLÀFDWH LV D SOXV 7KH FDQGLGDWH would be someone who has good attention to detail.

The role would suit a person with some previous working patent administration exposure. You will be assisting the Formalities & Records Manager with varying tasks to include assisting with reminder letters to clients, changing dates on Inprotech, generating letters from DMS, abandonments, general docketing work. Temp with possible view to permanent.

PATENT PA/SECRETARY

FORMALITIES ASSISTANT

$ WUDGLWLRQDO ,3 ÀUP ZKR WDNHV SULGH LQ WKHLU reputation is looking to recruit a Patent Secretary. This is a very busy role working at Partner level within the Chemistry department. This opportunity is more than the usual Patent Secretary role as you will also be working as a PA to provide quality assistance to the partner where necessary.

$ OHDGLQJ 8. DQG (XURSHDQ ÀUP RI 3DWHQW DQG 7UDGH Mark Attorneys, who are focused on maintaining their commitment to provide the highest standards of client care, are seeking a formalities assistant to support this team. The role entails preparing instructions via EPOline and liaising with agents regarding European Validation. Previous experience with EP Grant Formalities is essential.

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-pp64-65-Dawn-Elmore_DPS_2.indd 65

DawnEllmore1

www.dawnellmore.co.uk

05/07/2016 08:27:05

THE PINKS

RECRUITMENT

Stevens Hewlett & Perkins

European Patent Attorney – Electronics/Physics We have an opportunity in our Bristol office for a qualified CPA/EPA. As a firm of Patent and Trade Mark Attorneys, we have recently celebrated 100 years in the business of advising on intellectual property matters. Our continued success has been based on technical and legal awareness and our ability to put the client’s commercial considerations to the forefront of all advice. The position would be ideal for someone looking to work in a thriving commercial centre whilst maintaining a healthy work/ life balance by virtue of easy access to the West Country and Wales. Salary will be commensurate with experience and there are potential partnership prospects for the successful applicant.

The successful applicant will:  be a qualified CPA/EPA with at least 3 years PQE;  have a background primarily in private practice with considerable client-facing experience;  be experienced in patenting software and computer implemented inventions at the UKIPO, EPO and USPTO;  be able to provide commercially focussed professional services to clients ranging from multinationals to SMEs and start-ups;  be able to manage a diverse caseload including industrial design work;  have a pro-active aptitude for furthering the business development and marketing of the firm.

Please send applications, in confidence, to Steve Wilkinson: swilkinson@shandp.com

PATENT TRANSLATING Since 1997 we have specialised in providing translations for patent and trademark attorneys, with meticulous attention to detail and ensuring the correct terminology, in the right format for filing anywhere in the world. To achieve this, our specialist translators include former patent agents who only translate into their mother-tongue, with all assignments being proofread before delivery. Areas of expertise: Aeronautical • Automotive • Bio-chemical • Chemical • Computing • Electrical • Electronic • Mechanical • Pharmaceutical • Telecommunications

T: 01903 763336 66 CIPA JOURNAL

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JULY 2016

info@abc-translations.co.uk

www.abc-translations.co.uk www.cipa.org.uk

05/07/2016 08:44:04

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

All Disciplines

Biotechnology

Chemistry (In-House)

Part and Fully Qualiﬁed - Birmingham

Finalist or Qualiﬁed – London

Qualiﬁed – Hertfordshire

Ref: 15527/14

Ref: 7695/8

Ref: 2737/2

This entrepreneurial ﬁrm has ﬁrmly established itself

Business is booming at this progressive outﬁt. The

Seeking something fresh? Want to stay in the

as one of the elite IP outﬁts. Innovative business

ﬁrm is known for its friendly working environment

profession but essentially do something different?

development and technical expertise are the

and the excellent reputation of its attorneys. An

We are instructed by a global organisation that is

driving forces behind its steady growth. Meticulous

opening has now arisen in its growing biotechnology

seeking to appoint a European qualiﬁed attorney

planning has been a key component in the ﬁrm’s

team for a ﬁnalist level or qualiﬁed attorney. You will

to its rapidly developing patents advisory team. This

recent success and detailed strategic plans are in

handle a wide array of biotechnology related subject

role represents an interesting opportunity to step

place for continued progress. Several openings have

matter, gaining exposure to a variety of work. The

outside of the norm and take up a new and exciting

now arisen for ambitious attorneys who are seeking

remuneration and beneﬁts packages on offer is

challenge. A competitive remuneration and beneﬁts

a busy, ‘hands on’ orientated working environment.

extremely competitive.

package will be on offer.

Chemistry (Pharmaceuticals)

Electronics/Mechanical

Chemistry (Organic)

Part Qualiﬁed – London

Qualiﬁed – East Midlands

Qualiﬁed (NQ or 1 year PQE) – London

Ref: 25661/1

Ref: 35939/2

Ref: 6444/15

A truly unique opportunity has arisen for a part

One of the leading intellectual property ﬁrms outside

This tier one ranked patent and trade mark ﬁrm is

qualiﬁed attorney to gain early exposure to

of London is seeking to make a qualiﬁed attorney hire

seeking to make a new hire to its market leading

contentious matters within the busy pharmaceutical

to its busy electrical/mechanical team. A fantastic

chemistry team. The ﬁrm is particularly known for

practice of this leading ﬁrm. This specialised team,

office environment and a full caseload awaits a

its esteemed reputation amongst its clients and its

within the ﬁrm’s chemistry and life sciences group,

dynamic attorney who wishes to further their career

excellent working environment. The promotion of

focuses on oppositions, appeals and advisory/

at a top ranked ﬁrm outside of the city. The ﬁrm’s

sensible working hours and a genuine valuation of its

opinion work. The culture within the ﬁrm is excellent

client base is a healthy mixture of SMEs and multi-

staff have been essential components of its long and

and the remuneration package on offer to the

national corporations. Those who are considering

continued success. The role has arisen due to a high

successful appointee will be highly competitive.

relocation are most welcome to get in touch.

volume of new instructions.

Engineering (Physics background)

Engineering (Mechanical/Electronic)

Electronics & IT

Part Qualiﬁed – London

Senior Associate – London

Finalist or Newly Qualiﬁed – London

Ref: 21270/6

Ref: 21255/11

Ref: 24411/1

An opening for a part qualiﬁed engineering

This role presents the opportunity to further your

Despite this ﬁrm’s steeped history, a working

specialist (physics background) has arisen at one

career at a leading ﬁrm that continues to build

environment

of the UK’s most renowned patent and trade mark

upon its consistent success. Working in a busy team

autonomous nature is to be found within its modern

ﬁrms. The ﬁrm’s engineering team work with major

within the ﬁrm’s renowned Engineering group, this

Central London office.

multinational businesses as well as SMEs in a variety

position will offer a varied diet of work to include

place at this ﬁrm and a team oriented and collective

of different areas. There are genuine opportunities

semiconductors, medical devices and telecoms.

ethos is very much advocated. This role will offer

for progression within the ﬁrm for those with such

An inclusive and supportive culture is to be found

the opportunity to learn from many partners within

ambitions. A market leading remuneration package

within the ﬁrm along with clear information relating

the IT and electronics group. This position is likely

will be on offer to the right applicant.

to career progression.

to appeal to a part or newly qualiﬁed attorney who

relaxed,

transparent

and

Personal egos have no

wishes to advance their career at a prestigious ﬁrm.

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-pp67-G2_1.indd 67

Mob 07769 200689

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

05/07/2016 08:27:41

THE PINKS

RECRUITMENT

Envoy is looking for Renewals Administrators Glasgow City Centre Envoy International Limited is a highly successful and ambitious company, providing renewal services to the intellectual property profession on a global scale. We assist our customers in effecting the renewal of IP by using sophisticated and proprietary online systems, while at all times maintaining an ethos of excellent customer service and extremely high standards of IXOô OPHQW DQG UHOLDELOLW\ Due to recent expansion, we are looking to recruit dedicated and conscientious renewals administrators to join our service team. :RUNLQJ IURP RXU PRGHUQ FLW\ FHQWUH RIô FHV LQ *ODVJRZ WKH VXFFHVVIXO candidates will perform a wide range of renewal functions to support our market offering. Responsibilities: • Processing all incoming instructions and preparing instructions for our suppliers. • &KHFNLQJ DQG XSORDGLQJ RIô FLDO UHFHLSWV WR WKH ×EDFN RIô FHØ • Ensuring the accuracy and timely dispatch of system generated reminders. • &RQWULEXWLQJ WR RQJRLQJ LPSURYHPHQWV WR WKH ×EDFN RIô FHØ • Ensuring a high level of professionalism in all interactions with customers.

Skills and experience: • 0LQLPXP RI \HDUVØ H[SHULHQFH ZRUNLQJ LQ WKH ,3 VHFWRU • Excellent written and verbal communication. • *RRG XQGHUVWDQGLQJ RI OHJDO SULQFLSOHV DQG ,3 WHUPLQRORJ\ • High level of computer literacy with a particular focus on Microsoft Excel and Outlook. • Diligent attention to detail. • 'LVFLSOLQHG DSSURDFK WR SURFHVV GRFXPHQWDWLRQ DQG ô OLQJ Compensation: These full time positions offer an opportunity to work for a progressive and highly successful company with a global vision. A highly competitive salary ZLWK DWWUDFWLYH EHQHô WV LV RQ RIIHU FRPPHQVXUDWH ZLWK H[SHULHQFH Application: Please submit a CV and covering letter to Kim Magee at k.magee@envoyrenewals.com. 6HH RXU ×&DUHHUVØ SDJH DW envoyrenewals.com for further details.

Fresh IP is an interna onal and en rely unconven onal IP firm. It is a small but interna onal firm that focuses on dra ing and prosecu ng inven ons in the fields of Medical Devices, Green Technology, Electronics and So ware. We work primarily for ins tu onal clients such as universi es and large corporates. We serve startup companies, but our clients are rarely individual inventors. We have now decided to take on a senior EPA+CPA to join us to pick up exis ng client work and grow new work. We use a paperless online docke ng system and most of our clients are not based in the UK. As a result, we oﬀer much flexibility and do not have the usual restric ons and issues with oﬃce hours and formali es that many other firms do have. Ideally, we are looking for a patent a orney that has experience in both dra ing and prosecu on and bringing in clients, and poten ally has an exis ng book of business, and that had been considering star ng up or joining a prac ce, but would rather work together with others in a structure that can fully support her/him and provide exis ng work.     

We are willing to consider diﬀerent models for the right person. We are looking for an enthusias c professional who thinks out of the box, and works out of the box. Our ideal candidate has both superb dra ing and prosecu on skills, as well as personal skills, which are very important for us. We are looking for a candidate that would help us grow the firm. We have a strong preference to a Physicist. Please apply to tali@freship.co.uk with a copy of your CV and a cover le er.

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Ready for a new voyage?

Engineering/Electronics Attorney : Manchester CEF48969 A team at the top of their game, world class clients and colleagues, and remote working to allow freedom of location. This is an outstanding opportunity for a Dual Qualified Attorney to work hand in glove with direct clients and advise as well as implement strategy. Generous salary and comprehensive benefits make this a truly unique opportunity!

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!

In-House Engineering Attorney : Midlands CEF47374 Join this rapidly expanding team in the ongoing development of their global patent portfolio in a variety rich role where you can really appreciate their cradle to grave management of IP. You will be at least Finalist level with a minimum of 3 years' practical experience and an Electronics or Mechanical Engineering background.

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.

Biotech Attorney : London CEF47129 If you like the idea of joining a succession plan, your career can go from strength to strength within this expanding Partnership. You will become an integral part of this firm, effectively using your entrepreneurial finesse to continue the already successful growth. An immediately client facing, hands on role with chance to travel for the adventurous!

Part or Recently Qualified Chemistry Attorney : London LKA48936 Superior Practice requires a Finalist through to c. 2 years PQE Chemistry Attorney to work closely with a global, key client. An opportunity which takes some beating - abundant work with premium businesses; great working environment; excellent package and genuine scope for progression. Competitive salary & benefits available.

High-Tech Partner Designate : London CEF47128 Carve out your future in this one off Partner succession role! No need for a following, just an entrepreneurial spirit and a proven track record in High-Tech Electronics. If you're tired of waiting for the gap to open up in your current role, why not pick up the phone to find out more?

1BUFOU 3FOFXBMT $MFSL -POEPO 5+# An all singing all dancing Renewals role! A nice variety rich position taking responsibility for all aspects of Patent Renewals within the Renewals and Records department of this leading Intellectual Property firm.

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!

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

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!

1BUFOU 4FDSFUBSZ -POEPO 5+# Join a Practice at the top of its game. This highly regarded business is seeking a Patent Secretary to join their London HQ to provide full and comprehensive secretarial and PA support at Partner level. Ideally CIPA qualified, you will be rewarded with not only a fantastic financial package but also an active social scene.

Scan the QR Code for our website

www.saccomann.com

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

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05/07/2016 08:28:24

THE PINKS

RECRUITMENT

CHEMISTRY PATENT ATTORNEY SICPA protects the integrity and authenticity of your banknotes, products and personal identity every day. In today’s gloablised world, when almost anything can be counterfeited or tampered with, these protections are absolutely essential. We develop cutting edge technology to defend the things which amtter most to you. Headquarted in Lausanne, SICPA is a privately owned Swiss company. ROLE - Contribute in the acquisition, protection, defense and enforcement (prosecution, opposition, appeal) of patent rights. - Handle patent prosecution for domestic and foreign patent applications relating to key company technologies. - Formulate strategic practice recommendations in response to legal and technical developments. $QDO\VH LQQRYDWLRQ GUDIWLQJ DQG ¿OLQJ RU SDWHQW DSSOLFDWLRQV DQG IROORZ XS ZLWK RI¿FH DFWLRQV - Liaise proir art search reports from external providers and assess feasibility and patentability. - Prepare Internal Freedom to Operate (FTO) opinions. - Work closely with the Research & Development team and promote patent culture with solid internal visibility. 5HPDLQ XS WR GDWH ZLWK OHJDO GHYHORSPHQWV LQ WKH 3DWHQW ¿HOG EH LQYROYHG LQ ,3 UHODWHG DJUHHPHQWV PROFILE - PhD and/or master degree in Chemistry, Chemical Engineering, Organic Chemistry, Polymer Synthesis and Processing, Material Science or other UHODWHG VFLHQWL¿F GLVFLSOLQHV - Minimum 5 years of relevant work experience in drafting and prosecuting patent cases. 3URYHQ TXDOL¿FDWLRQ DV D (XURSHDQ 3DWHQW $WWRUQH\ LV D UHTXLUHPHQW - Possesses strong communication and interpersonal skills to work with cross-functional team across departments and divisions. - Fluent in French and English - German is an advantage.

For more information contact Stephen Gill, Head of IP Recruitment at Caselton Clark on: +44 (0) 20 7559 6702; stephen@caseltonclark.co.uk Caselton Clark is exclusively managing this appointment and all third party DSSOLFDWLRQV ZLOO EH IRUZDUGHG WR RXU RI¿FHV IRU FRQVLGHUDWLRQ

70 CIPA JOURNAL

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www.cipa.org.uk

05/07/2016 08:28:47

THE PINKS

RECRUITMENT

MAERSK MARITIME TECHNOLOGY SENIOR IP ATTORNEY COPENHAGEN

The Maersk Group is a worldwide conglomerate that operates in some 130 countries with a workforce of over 89,000 employees. Owning the world’s largest container shipping company, Maersk is involved in a wide range of activities in the shipping, logistics, and the oil and gas industries. Maersk Maritime Technology (MMT) is a knowledge and competence centre for maritime technology within the Maersk Group. It specialises in naval architecture, engines, propulsion, fuel, paint and chemicals, machinery and automation systems, regulatory affairs as well as hydrodynamics and performance analytics. This new position has been created to ensure that IP is directly aligned with, and driven by, business priorities to support competitiveness and growth. Given the visibility of this position internally, a proactive approach is important and the candidate should be a strong relation builder with different internal and external stakeholders. The ideal candidate will have a PhD in an Engineering discipline DQG LV LGHDOO\ D TXDOLoHG (XURSHDQ 3DWHQW $WWRUQH\

For further information on this opportunity, SOHDVH FRQWDFW LQ VWULFWHVW FRQoGHQFH Julian Adamson, Partner +44 20 7337 9890 julian.adamson@adamsons.com

Volume 45, number 7

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CALL US IF YOU WANT TO BE AN INTEGRAL PART OF A YOUNG ENTERPRISING IP PRACTICE WITH A STRONG AND VALUED REPUTATION

Experienced Paralegal sought for Oxford Office

The IP Asset Partnership Limited is an established boutique IP practice based in Summertown, Oxford, with a good client base and strong growth. Having recently recruited a new paralegal we have expanded the business and need more!

To help support current work and future growth we are now seeking a capable, self-motivated, patent paralegal (formalities professional) to join our existing team of paralegals. The candidate should preferably hold a CIPA Patent Administrators Certificate, but those without this certificate will also be considered. The role will include records management and assisting with foreign filing and assignment programmes, so previous record keeping and patent formalities experience is a pre-requisite. The role may also include some secretarial/PA duties in support of the senior staff, so dynamism and a willingness ‘to muck in’ are important qualities in someone seeking this position. If you want to be part of a dynamic and growing team or simply wish to discuss the possibility, please call Dom Icely on 01865 339 414. Applications by email to helene.schaefer@ipasset.com. No recruitment agencies, please.

EXPERIENCED PATENT SECRETARY/PATENT ADMINISTRATOR Dehns Mohun LLP is one of the newest, and most innovative firms of IP attorneys in the North. Our business has been expanding rapidly in 2016 and we are now looking for an experienced Patent Secretary or Patent Administrator to join the team in our Leeds City Centre office. (The CIPA Patent Administrator qualification is desirable, but not essential.) The person we are looking for must be a team player, with excellent written English and the ability to produce high quality, accurate work. This new role will be very busy and varied with plenty of opportunity for personal development. The successful applicant will assist a Senior Patent Administrator in the management of attorney caseloads. He or she will be required to manage and monitor term lists, prepare documents for on-line filing (UK, EPO and PCT), prepare standard letters and invoices, liaise with foreign attorneys and provide both secretarial and administrative support. A competitive salary package, with benefits, will be offered to the successful applicant. If you are interested, please send a CV and covering letter by

European Partner – CPA, UK wide European and German Patent Attorney specialised in Engineering and Physics and based in Hamburg / Germany looks for a Chartered Patent Attorney preferably specialized in an Engineering discipline and based in the UK to expand his German IP law firm to a European IP law group with offices inter alia in the UK and Germany. Prospects are joint acquisition, cooperation and an equitable partnership.

email to: Mrs Stephanie Oates, Practice Manager: soates@dehnsmohun.com All expressions of interest will be treated in complete confidence.

CIPA JOURNAL

JULY 2016

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For more information please visit www.shalibeik.com and contact us via mail@shalibeik.com

www.cipa.org.uk

05/07/2016 08:29:43

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RECRUITMENT

VOLVO GROUP

EUROPEAN PATENT ATTORNEY

HAMELN OR KONZ, GERMANY The Volvo Group employs approximately 100,000 individuals, has production facilities in 19 countries and sells its products in more than 190 markets. The company is one of the world’s leading manufacturers of trucks, buses, construction equipment and marine and industrial engines under its leading brands. ,QWHOOHFWXDO 3URSHUW\ HQMR\V D KLJK SURoOH DV D YDOXHG DVVHW DQG EXVLQHVV WRRO throughout the entire Group. The Group is currently refocusing its IP operations and continues to strengthen its global IP organisation which is organised within Volvo Group Trucks Technology. The patent department is part of the global IP organisation and has team members in Göteborg (Sweden), Greensboro (USA), Ageo (Japan) and Changwon (Korea). A new patent department will now be created at one of Volvo’s sites in Germany, namely in Hameln or Konz. This new position will be tasked with handling all IP emanating from these two sites, along with creating and implementing IP strategy for the new department. The ideal candidate will have a Master’s degree or higher in the oHOG RI PHFKDQLFDO RU HOHFWULFDO HQJLQHHULQJ HOHFWURQLFV RU VRIWZDUH DQG LV D TXDOLoHG (XURSHDQ 3DWHQW $WWRUQH\

For further information on this opportunity, SOHDVH FRQWDFW LQ VWULFWHVW FRQoGHQFH Julian Adamson, Partner +44 20 7337 9890 julian.adamson@adamsons.com

Volume 45, number 7

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JULY 2016

CIPA JOURNAL

05/07/2016 08:31:28

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Today’s top attorney role: 3VUKVU Ä YT PM `V\ JVUZPKLY [OL IHJR LUK VM aVUL º3VUKVU» VMMLYZ JVTWL[P[P]L ZHSHY` MVY H [YHPULL ^P[O Å L_PISL OV\YZ S\UJO IYLHRZ ]HY` IL[^LLU HUK TPU\[LZ MVY JOHSSLUNPUN ^VYR LUKSLZZ HKTPU ^P[O H[[YHJ[P]L WYVZWLJ[Z ZSPT [V UV JOHUJLZ VM THRPUN WHY[ULY .

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In partnership with

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DBTFMUPODMBSL DP VL 05/07/2016 08:35:25

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76 CIPA JOURNAL

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JULY 2016

RECRUITMENT

www.cipa.org.uk

05/07/2016 08:36:04

REUTERS/John Kolesidis

NEW 8TH EDITION

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TOP TIER FIRM YOUR LIFESTYLE Working at D Young & Co offers attorneys the opportunity to work with world renowned clients, alongside highly acclaimed and motivated peers, and forge exciting and successful careers. Whether your lifestyle leads you to want to live in the city, in the country or along the coast, we have roles in our Biotechnology, Chemistry & Pharmaceuticals and Electronics, Engineering & IT practices which will enable you to achieve your goals. Described by Managing IP as having “a dynamic partnership and WDOHQWHG SHRSOH´ \RX FRXOG MRLQ RXU WHDP RI TXDOL¿HG DQG WUDLQLQJ attorneys, providing the very best advice to our world class clients. 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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