CIPA Journal, Jan-Feb 2023

JOURNAL

January-February 2023 / Volume 52 / Number 1-2

CHINA’S PATENT PROSECUTION HIGHWAY

FEATURE STORIES

IPO COMPLIANCE PERIODS ON DIVISIONAL APPLICATIONS

ONLINE INTELLECTUAL PROPERTY INFRINGEMENT

IPO DIGITAL TRANSFORMATION: POTENTIAL LEGISLATIVE CHANGES

ACCELERATING PATENT PROSECUTION IN SOUTHEAST ASIA

DECISIONS: UK COURT CASES; UK IPO; EPO TRADE MARKS

Editor Publications Committee

Production and advertising Design Contact

Jeremy Holmes Paul Cole, Paul Commander, Lauren Palmer, Alasdair Poore Iain Ross, Ria Lloyd Koded editor@cipa.org.uk

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.

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The Chartered Institute of Patent Attorneys 2023

2nd Floor, Halton House, 20-23 Holborn, London EC1N 2JD ISSN: 0306-0314

CIPA CONTACTS

Committee Chairs

Laws Committees: Computer Technology Simon Davies; Designs & Copyright Matthew Ridley; Life Sciences Simon Wright; Litigation Matthew Critten; Patents Tim Jackson; Trade Marks Alicia Instone.

Internal Committees: Congress Alexandra Seymour-Pierce; Diversity & Inclusion Greg Iceton; Education Parminder Lally; Informals Kathryn Taylor; Internal Governance Vicki Salmon; IP Paralegal Annemarie Parsons; Membership John Brown; PEB Damian Day; Sustainability Committee Alicia Instone.

Outside Interest Committees: IP Commercialisation

Anna Denholm; International Liaison Tony Rollins; Media & Public Relations Jerry Bridge-Butier; Regulatory Affairs

Chris Mercer; European Liaison Committee Chris Mercer

Head of Membership Dwaine Hamilton

Membership Officer Frances Bleach

Events and Professional Development Officer Dorà Matè

Events Coordinator Yemi Koledoye

Chief Executive Lee Davies

Deputy Chief Executive Neil Lampert

Executive aassistant Charlotte Martin

Head of Qualifications Angelina Smith

Examinations Coordinator Ali O’Byrne

Communications Officer Amy Williams

External Affairs Officer Lucy Wharton

Office Administrator Ria Lloyd

Head of Publications and Content lain Ross

General enquiries 020 7405 9450; mail@cipa.org.uk www.cipa.org.uk

Daniel Chew President Alasdair Poore Immediate Past-President

Matt Dixon Vice-President

Gwilym Roberts Honorary Secretary

50

CIPA’s new President outlines his plans for 2023

On Wednesday 2 November 2022, at the 140th Annual General Meeting of CIPA, Daniel Chew was confirmed as President with effect from 1 January 2023. Daniel was not able to attend the AGM as he was travelling in Japan, but sent a message in advance of the meeting outlining his plans for his presidential year.

Congratulations to Alasdair Poore for successfully completing his second term as President. On behalf of Council and CIPA members, I would like to thank Alasdair for his contributions to CIPA, and look forward to continuing to work with him as Immediate Past President in 2023. I gained valuable insights from Alasdair during my time as Vice-President, particularly at our recent meetings with various intellectual property organisations at the Asian Patent Attorneys Association (‘APAA’) conference in Busan, South Korea in October 2022.

I would like to take the opportunity to thank Alicia Instone for her outstanding contributions as an officer of CIPA for the past three years. Alicia’s contribution has been tremendous, not only in her year as President, but also through her continuing contribution to CIPA’s work on the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (‘CPTPP’), her involvement in various committees, as well as her support in a number of our regional meetings.

I also extend congratulations to those elected and reelected to Council, and thank those leaving Council.

I was asked to set out my priorities for 2023 at the AGM, but I was fortunate to have already discussed them

at the American Intellectual Property Law Association (‘AIPLA’) Annual Meeting in the US the week before, where I shared CIPA’s priorities at meetings with the President of the Intellectual Property Institute of Canada (‘IPIC’) and the Executive Committee of the AIPLA.

International connections are important to support our work, be it in private practice or industry, and this has grown since Brexit. As most of you may already know, I first became involved with CIPA through the work of the International Liaison Committee (‘ILC’). I am always keen to use my international contacts for the benefit of our profession, particularly to promote the excellence of the UK IP professions. In 2023, my top priority as President will be to promote UK patent attorneys’ rights of representation at the Unified Patent Court (‘UPC’). CIPA has been highlighting UK (European-qualified) attorneys’ rights before the UPC, and I would like CIPA to emphasise why UK patent attorneys are better placed to represent clients in front of the UPC. To that end, we have created a promotional video, in a number of languages, on this which is now live online (www.youtube. com/watch?v=SY7SC4p3QSU), and I encourage our members to share it more widely with their contacts.

Another priority is to continue supporting the ILC which works hard to strengthen CIPA’s friendships with key IP organisations around the world and helps them understand our positions on any likely impact of new free trade agreements on IP. Catriona Hammer, Alicia Instone, Neil Lampert and Lee Davies have made significant efforts to engage with the government and explain CIPA’s position on the likely impact of CPTPP negotiations on our profession. To support their work, the ILC has also reached out to important IP organisations in CPTPP participants countries to help us communicate our positions to their respective government.

It is important that CIPA continues to engage more widely with members across the UK and is less Londoncentric. Regional meetings returned in 2022 and there is a full programme for 2023 (see page 55). Last year also saw the return of in-person patent case law seminars in Glasgow, Manchester and Bristol, as well as London. In 2022, I enjoyed our CIPA ‘happy hours’ in London but it was great to attend a CIPA drinks in Cambridge too. The first happy hour of 2023 returns on 1 March with others to follow. We hope those nearby will join us for networking and a drink or two. In 2023 other CIPA events

At the 140th AGM, it was declared that Matt Dixon will be installed as VicePresident with effect from 1 January 2023, and as President with effect from 1 January 2024.

will be held outside London, in April the second Student Conference will be in Birmingham, the Life Sciences Conference will be in Brighton in November, and for the first time CIPA Congress will be held outside London, in Cambridge in October. I look forward to supporting these events and networking with members across the UK.

Another priority that is close to my heart is diversity and inclusion. CIPA has made good progress in recent times on diversity and inclusion (‘D&I’), both through its support of IP Inclusive and the work of its new D&I Committee. But there is a lot of work still to be done to attract women and people from ethnic minority groups into the profession. I would like CIPA to lead the way in promoting D&I in the IP profession. I would like to see more diversity in our membership, in Council, in committees, and in the events that we host. I will be working with the D&I Committee to explore ways in which we can achieve this, and I hope that our members will support us in these efforts.

Finally, I would like to thank the CIPA staffs and to say how amazing they are in their respective roles. I am grateful for their support and look forward to working closely with them in my Presidential year.

Daniel Chew is Partner and Head of Asia Group at Haseltine Lake Kempner (HLK). He made history as CIPA’s first Asian President.

Council Minutes

Minutes of the Council meeting held on Wednesday 7 December 2022 at 14:30. Meeting held in person and by videoconference.

Item 1: Welcome and apologies

Present : Alasdair Poore (President), Daniel Chew (VicePresident), Alicia Instone (Immediate Past President), Gwilym Roberts (Honorary Secretary), John Brown, Caelia Bryn- Jacobsen, James Cross, Matt Dixon, Stuart Forrest, Jeremy Holmes, Greg Iceton, Tim Jackson, Rob Jackson, Keith Loven, Chris Mercer, Joeeta Murphy, Jonathan Pratt, Monika Rai, Vicki Salmon, Debra Smith, Kathryn Taylor (co-opted), Sheila Wallace and Simon Wright.

Newly elected Council members William Burrell, Suzanne Oliver and Debbie Slater attended as guests, as did Annemarie Parsons who will succeed Julia Tribe as the IP Paralegal representative on Council.

Lee Davies (Chief Executive), Neil Lampert (Deputy Chief Executive), Iain Ross (Head of Publications & Content) and Charlotte Martin (Executive Assistant) were also in attendance.

Apologies : Catriona Hammer, Nashim Imam, Parminder Lally, Tony Rollins, Andrew Sunderland and Julia Tribe (co-opted).

Alasdair Poore welcomed Council members to his last Council meeting as President. Alasdair thanked Council for its support during the year. Alasdair congratulated William Burrell, Suzanne Oliver and Debbie Slater on their appointment to Council and welcomed Annemarie Parsons as the new IP Paralegal representative on Council.

Diversity and inclusion online

Did you know CIPA has a dedicated diversity and inclusion (‘D&I’) section on its website featuring CIPA’s commitment to its members and the latest news on D&I from the institute?

Some of the latest articles include The General Counsel for Diversity & Inclusion, breaking down gender stereotypes in legal writing, and faith at work.

Read more on at www.cipa.org.uk/diversity-inclusion.

If you are interested in writing an article for this section of the website, please contact amy@cipa.org.uk.

Alasdair said that, whilst it was fantastic that new members were being elected to Council, it was sad to see long-standing members leave. Alasdair thanked John Brown for his service to the Institute and to Council, noting that John had also served as President twice and had contributed widely to the work of CIPA, including leading the Congress Committee. Alasdair thanked Tim Jackson for his service to the Institute and to Council, citing Tim’s leadership of the Patents Committee and hoped that Tim would continue in that role. Alasdair thanked Debra Smith for bringing a new perspective to the work of Council, in particular, on diversity and inclusivity and the challenges faced by disabled people working in IP. Alasdair thanked Julia Tribe for her leadership of the IP Paralegal Committee and being the first IP Paralegal representative on Council.

Alasdair congratulated Daniel Chew on being elected the 2023 President of CIPA and Matt Dixon on being elected Vice-President. Alasdair wished Daniel and Matt successful terms in office and said that he was looking forward to continuing to support the work of CIPA as Immediate Past President.

Item 2: Conflicts of interest

349/22 : Alicia Instone declared that she was the Treasurer for FICPI-UK.

Item 3: Minutes

350/22 : The minutes of the meeting held on Wednesday 2 November 2022 were approved.

351/22 : From minute 319/22. Council received an update on the appointment of a Chief Examiner for the UK qualifying examinations. Lee Davies informed Council that Martin Hayden had agreed to take on the position of Chief Examiner on an interim basis until the Patent Examination Board (‘PEB’) made a permanent appointment.

352/22 : From minute 322/22. Lee Davies informed Council that he had written to a member explaining Council’s decision to expel him as a Fellow following his removal from the Register of Patent Attorneys by IPReg and advising him of the support that was available to him.

Item 4: Code of behaviour and conduct

353/22: Council considered the draft code of conduct and behaviour which had been circulated for comments in advance of the meeting. Lee thanked John Brown and Chris Mercer for helping him draft the document and Matt Dixon, Rob Jackson and Tony Rollins for providing comments. Lee added that Andrea Brewster had provide feedback from the viewpoint of EDI [equality, diversity and inclusion].

John Brown referred to section 4.2, stating that Council will appoint a panel of three members to form the Disciplinary Panel. John suggested that this

should be reworded to ‘Council will appoint a panel of three members, who shall not be current members of Council’, to give the Disciplinary Panel independence from Council. John added that it should not be difficult to recruit sufficient members from outside Council to a Disciplinary Committee. Lee agreed, saying that the Disciplinary Committee would require training from a disciplinary law specialist, to make the distinction between regulated professional practice and membership of CIPA as the representative professional body.

Council agreed that there was a need for a code of behaviour and conduct, distinct from professional regulation. Alasdair Poore asked members of Council to provide Lee with any further feedback by the end of December and for Lee to bring a revised draft back to Council.

Action : Lee Davies to review the feedback provided by members of Council and bring a revised document back to Council for its consideration.

Item 5: Unified Patent Court

354/22 : Neil Lampert informed Council that he had raised travel to the seats of the UPC under the Schengen visa waiver scheme with the Ministry of Justice (‘MoJ’) and had received assurances that this was being investigated. Neil added that he had also raised the matter with the Chief Policy Officer at the Law Society, who subsequently took up the point with the MoJ. Neil said that he would continue to liaise with his contacts at the MoJ and would provide Council with an update when there was something to report.

355/22 : On promoting the UK profession in relation to the launch of the UPC, Daniel Chew reminded Council that CIPA representatives had met with the IPO attaché based in China and that this had led to the suggestion of an introduction to the UPC and UK representation rights at the new court for members of the All-China Patent Agent Association (‘ACPAA’). Neil Lampert presented the revised version of the UPC animation, versions of which are available in Korean, Mandarin and Japanese. This will be used by the International Liaison Committee in its work promoting the UK profession in key markets such as Asia, the United States and Canada (https://www.youtube.com/watch?v=SY7SC4p3QSU).

356/22 : Council noted the delay to the launch of the UPC to allow time for the CMS authentication issues to be resolved. Neil said that this had followed the work done by CIPA and others in raising concerns with the media. In relation to the potential disability discrimination issues associated with obtaining authentication credentials raised by Debra Smith, Alasdair Poore suggested that this might be followed up by the D&I Committee.

Item 6: Comprehensive and Progressive Agreement on TransPacific Partnership (‘CPTPP’)

357/22 : Lee Davies informed Council that CIPA was continuing to liaise with colleagues in the Department for International Trade (DIT) as the negotiations entered the final phase. [Redacted.]

Item 7: External affairs

358/22 : Council noted the appointment of George Freeman MP as Minister of State for Science, Research and Innovation (IP Minister). Lee Davies advised Council that he had written a letter welcoming Mr Freeman back to the position he had previously held. Council noted the letter from Greg Hands MP, Minister of State for Trade Policy at DIT, referring to the progress made towards joining the CPTPP and reiterating the government’s determination to maintain the UK’s existing international obligations.

Item 8: Regulatory matters

359/22 : Council received an update on IPReg’s review of its regulatory arrangements. It was noted that IPReg had formally filed its rule change application with the Legal Services Board (‘LSB’), having previously submitted a draft for comments. Lee Davies said that the LSB was expected to approve IPReg’s revised rules towards the end of February 2023 and that, once the rules had been approved, IPReg had agreed to participate in a series of webinars for members.

360/22 : Lee Davies advised Council that the LSB now seemed content with IPReg’s management of the sanctions against Russian individuals and businesses brought in as a response to the conflict in Ukraine. Lee informed Council that there had not been any clarification or confirmation from the MoJ on the guidance it published on transactional legal activities.

361/22 : Council received a report from the recent CIPA, CITMA and IPReg Regulatory Forum meeting. Lee Davies informed Council that the meeting had focused primarily on the rule change application and sanctions.

Item 9: Equality, diversity and inclusion

362/22 : Council noted the report from the D&I Committee and approved the appointment of Caroline Priddle (D Young & Co) to the committee. Council approved a draft letter to the EQE secretariat highlighting EDI issues raised by the proposed reforms to the EQE.

363/22 : Lee Davies advised Council that he had raised concerns with the PEB about its response to a trainee who had asked to have certificates reissued following a permanent change of gender. Lee said that,

according to his research, it was common practice for examining bodies to agree to such requests. Lee said that, following his intervention, he understood that the PEB would be reviewing its position on this at its board meeting on 7 December and that it was likely to agree to requests for certificates to be reissued in a new name following a permanent change of gender.

Item 10: IPO and EPO matters

364/22 : Tim Jackson informed Council that the Patents Committee would appreciate input from CIPA’s committees in relation to the IPO’s digital transformation project consultation. The deadline for submitting a response is 6 January 2023. Council gave the Patents Committee the power to act on its behalf in submitting a response to the consultation. [See page 16.]

365/22 : Tim Jackson referred to government’s Retained EU Law (‘REUL’) Bill and the work being carried out on this by the IPO. Alasdair Poore said that there was a discussion on the matter at the latest Presidents’ meeting with the IPO and that there was agreement that IP representative organisations should make their views known to the government. Gwilym Roberts said that he was hoping to persuade the Stable IP group to make representations. Alasdair suggested that CIPA’s committees should consider the REUL Bill and provide feedback to Council.

Item 11: Committees and committee reports

366/22: Council noted the report from the Congress Committee.

367/22 : Council noted the report from the Informals Committee. Kathryn Taylor informed Council that the committee had written to the PEB to raise its concerns about a number of technical problems experienced by candidates during the qualifying examinations. The committee asked the PEB to consider a means for scaling up marks or providing compensating marks for time lost, as had been known to happen in the EQEs. The committee also raised the issue of candidates uploading papers late due to confusion over the end of examination time. The PEB’s position is that those candidates who uploaded after the end of designated time will have their paper voided and will not receive a mark. The committee suggested that this is unfair given that not all candidates received the pop-up warnings on the PEBX system or verbal warnings from invigilators. The PEB advised the committee that this could be discussed during the next meeting scheduled for June 2023. The committee was seeking an earlier date for as this will be too late for the 2022 examination series.

368/22: Council noted the report from the Patents Committee.

369/22: Council noted the report from the Trade Marks Committee.

370/22: Council noted the report from the Sustainability Committee.

371/22: Council noted the report from the European Liaison Committee.

372/22: Council noted the report from the IP Paralegal Committee.

373/22 : Council noted the report from the Education Committee. Vicki Salmon said that it had been noted that some examiners had expressed concerns that they were being told that examination scripts were being withheld from marking because of concerns about those papers. The committee took the view that all papers should be marked regardless of there being concerns about some scripts, so that all candidates were treated equally. Any concerns the PEB might have about individual scripts could be addressed after marking had been completed.

374/22: Council noted the report from Computer Technology Committee and approved the appointment of Sam Cleary (Taylor Vinters) to the committee.

375/22: Council noted the report from the Litigation Committee.

Item 12: Officers’ reports

376/22: Council noted the Officers’ reports.

15 finalists of Prince William’s Earthshot Prize were CIPA nominees. In total there were over 1,000 nominations. The ceremony was held in Boston on Friday 2 December and Neil said that he was delighted to report that CIPA nominee Notpla had been awarded the one-million-pound Earthshot Prize in the ‘build a waste-free world’ category. [See the reports in the December 2022 issue of the CIPA Journal.]

379/22 : Council considered what support could be offered to new members of Council to help them to acclimatise to their new role and how to raise awareness of the work of Council with members. Alasdair Poore suggested that established members of Council could offer to mentor new members. Lee Davies referred to the recent regional events and said that there had been a very positive reaction from attendees in relation to the sessions on the work Council was undertaking on behalf of members. Matt Dixon said that Council could do more to engage with members, such as showcasing Council members in the Journal and hosting live Q&A sessions over Zoom.

380/22 : In relation to the US Supreme Court hearing the DABUS appeal, Council decided that it was not appropriate to submit an amicus brief.

381/22 : Council noted the retirement from membership of Past President Edward Lyndon- Stanford. Lee Davies advised Council that he had written to Edward to thank him for his contribution to CIPA over many years.

Item

13: Chief Executive’s and Deputy Chief Executive’s reports

377/22: Council noted the reports given by the Chief Executive and the Deputy Chief Executive.

Item 14: Any other business

378/22 : Neil Lampert informed Council that, in late November, CIPA received advanced notice that three of the

Item 15: Date of next meeting

382/22: Wednesday 11 January 2023.

The President closed the meeting at 17:12.

Lee Davies, Chief Executive

Overseas report: international treaties

Marrakesh Treaty (Access to Published Works for the Visually Impaired)

On 6 December 2022, the Government of the Socialist Republic of Vietnam deposited its instrument of accession to the Marrakesh Treaty. The Marrakesh Treaty will enter into force, with respect to Vietnam, on 6 March 2023.

Patent Cooperation Treaty (‘PCT’)

On 15 December 2022, the Government of the Republic of Mauritius deposited its instrument of accession to the PCT. The PCT will enter into force, with respect to Mauritius, on 15 March 2023.

Lisbon Agreement (Appellations of Origin and Geographical Indications)

On 15 December 2022, the African Intellectual Property Organization (‘OAPI’) deposited its instrument of accession to the Geneva Act of the Lisbon Agreement. The said instrument contained the following declarations:

• in accordance with Article 28(1)(iii), OAPI has been duly authorised, in accordance with its internal procedures, to become party to the Geneva Act of the Lisbon Agreement and declares that, pursuant to the Bangui Agreement Instituting an African Intellectual Property Organization, Act of 14 December 2015, Annex VI, under which

regional titles of protection can be obtained in respect of geographical indications, applies;

• OAPI avails itself of the possibility provided for in Article 29(4) of the Geneva Act of the Lisbon Agreement to extend by one year the time limit referred to in Article 15(1) of the Geneva Act of the Lisbon Agreement, and the periods referred to in Article 17 of the Geneva Act of the Lisbon Agreement, in accordance with the procedures specified in the Common Regulations; and

• in accordance with Article 7(4), OAPI wants to receive an individual fee to cover its costs of substantive examination of each international registration.

The the Geneva Act of the Lisbon Agreement will enter into force, with respect to OAPI, on 15 March 2023.

Dr Amanda R Gladwin (Fellow)

Importance of maintaining EPC membership is stressed to parliamentary inquiry

CIPA Chief Executive Lee Davies has told the House of Commons’ International Trade Committee of the importance of protecting the UK’s membership of the European Patent Convention (‘EPC’) during ongoing negotiations for the UK to accede to the £8 trillion Comprehensive and Progressive Agreement for Trans-Pacific Partnership (‘CPTPP’).

Lee Davies gave evidence relating to concerns that certain intellectual property provisions of the CPTPP could be inconsistent with the UK’s obligations to the EPC, specifically the requirement to introduce a grace period.

Lee told the committee: ‘CIPA supports fully the UK Government’s aspirations for international trade. We want to see the UK within the CPTPP. The intellectual property system exists to facilitate the innovation that is so important for our economic growth. We have engaged with Government up to ministerial level and with Members across both Houses, including with members of this Committee.

‘We have provided briefing papers to Government and to colleagues in the Department for International Trade. We have appreciated so many MPs and peers listening to us. There are a number around this table today that we have had conversations with, and we are really confident that our messages have been heard and understood by Government.

‘The Government are committed to protecting their existing international commitments. In their opening gambit for accession to CPTPP, they state quite clearly that they want to preserve and protect the UK’s place in the EPC. That position has been confirmed to us in writing by Ministers.

‘We are confident that we have had a good hearing. We appreciate the opportunity to give evidence today. We are not complacent. We recognise that things can swing at the last moment in trade negotiations.’

Lee told Committee Chair Angus MacNeill MP that the UK patent profession was worth £1 billion gross value added to the economy and that this was potentially at risk should EPC membership not be maintained. Lee said that the UK’s creative industries relied on the profession and urged the committee to consider the wider implications of the issue.

In response to a question from Anthony Mangnall MP about IP gold standards as they relate to trade agreements, Lee said that international patent law harmonisation was the goal.

‘There has been good work on this, and there is still much more work to do, but that for us would be the gold standard,’ he said.

Lee appeared at the select committee hearing, on 25 January, alongside Professor Kimberlee Weatherall, expert on IP and trade agreements at the University of Sydney, and Dr Bobby Mukherjee, Chair of the IP Federation’s trade working group.

Read the full transcript of the session (Lee’s evidence beings on p.19), https://committees. parliament.uk/oralevidence/12589/pdf.

Or watch the session on Parliament TV, https://parliamentlive.tv/event/index/ 9be9d155-f4ba-422d-ab72-b162cffdf28b?in=11:04:31.

Neil Lampert, Deputy Chief Executive

Accelerating patent prosecution in Southeast Asia

The ASEAN market is becoming increasingly important and securing early patent protection for their inventions is vital for businesses to thrive. Set out below are some solutions to accelerate patent examination in the ASEAN region.

BY DENISE MIRANDAH & SHAWN ANG CHUAN HENG mirandah

Patent Prosecution Highway

The Patent Prosecution Highway (‘PPH’) is commonly used to accelerate patent examination globally through work-sharing arrangement between participating IP offices. This allows applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing. ASEAN countries have established a number of bilateral agreements with other IP offices as illustrated below.

• Indonesia (Japan)

• Malaysia (China, European Patent Office (‘EPO’), Japan, Korea) Philippines (EPO, Japan; Korea; United States)

• Singapore (Brazil, China, Mexico, EPO)

• Thailand (Japan)

• Vietnam (Japan, Korea)

asia – singapore

Apart from bilateral PPH programmes, the IP offices of Philippines, Singapore and Vietnam are also participating in the Global Patent Prosecution Highway (‘GPPH’) programme, which has 27 participating IP offices.

ASEAN Patent Examination Co-operation

The ASEAN Patent Examination Co-operation (‘ASPEC’) is a regional patent cooperation project launched in June 2009. It is a programme for IP offices from participating ASEAN countries to utilise the search and examination results from another participating IP office when conducting their own examination. Apart from Myanmar and Timor-Leste, the other nine ASEAN IP offices (Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, Philippines, Singapore, Thailand, and Vietnam) are participating in the ASPEC programme. Under ASPEC, the timescale for examination is expected to be shortened since examiners can leverage on earlier works from their counterparts in the other participating patent offices.

An enhancement to the ASPEC programme is ‘ASPEC AIM’ (ASPEC Acceleration for Industry 4.0 Infrastructure and Manufacturing) that targets industry 4.0 patent applications. Under this ASPEC AIM, the participating IP offices are committed to issue a first office action within six months from the filing of the request. This programme is limited to 50 applications a year and is scheduled to expire on 26 August 2023.

Another enhancement to the ASPEC programme is ‘PCTASPEC’ (Patents Cooperation Treaty-ASPEC) where reports issued from an ASEAN International Searching Authority (‘ISA’) or an International Preliminary Examination Authority (‘IPEA’) can be used when requesting ASPEC in a participating IP office. At the moment, only the International Property Office of Singapore (‘IPOS’) and the Intellectual Property Office of the Philippines (‘IPOPHL’) are appointed as ISA and IPEA. Recently, this programme has been extended until 26 August 2025 and is limited to 100 applications per year.

National programme

In addition to the above international and regional programmes, some ASEAN IP offices offer local initiatives for expediting the patent examination process.

The IP system in Brunei has a self-assessment system where patent applications can be granted by relying on the examination report of a qualifying corresponding application. The claims of the local

application are expected to match those of the elected corresponding application. The local applications are subjected to formality examination only and will be granted as long as the claims do not fall within the scope of non-patentable subject matter.

In Cambodia, patent applications can be granted via re-registration of corresponding patents issued by the EPO and IPOS. Any application must fulfil the formality requirements of the Cambodian IP Office.

In Laos, patent applications can be granted via re-registration of corresponding patents issued by IPOS. Any application must fulfil the formality requirements of the Laotian IP Office.

Malaysian IP law allows modified substantive examination wherein the examination results of a qualifying corresponding patent are considered when examining the local application. The claims of the Malaysia application have to be amended to match those of the elected patent. Under this option, the local applications are examined for novelty and statutory requirements on non-patentable subject matter only.

In Singapore, IPOS runs an SG IP FAST programme whereby straightforward patent applications can be granted in as little as six months, and within nine months for more complex cases. Patent applicants are expected to adhere to certain timelines as stipulated by IPOS with regard to office actions. This SG IP FAST programme replaces the 12MG (12 months file-to-grant) programme and has recently been extended to 30 April 2024. There is a cap of ten applications per month and not more than two requests per applicant per month.

In Indonesia, Philippines, Thailand and Vietnam, there are no official domestic programmes for expediting patent examination. However, the examiners will usually consider favourable examination reports of corresponding patents from a major jurisdictions if the claims of the local applications are amended to conform to the corresponding patent.

For ASEAN businesses and those with an interest in this region, it is advisable to consider the above programmes when planning any IP strategy. For instance, an applicant could leverage the SG IP FAST programme offered by IPOS to secure an early verdict of a patent application before further action. Other international businesses outside of the ASEAN region could also leverage the PPH programme to secure an early grant of a patent application in participating ASEAN IP offices and thereafter, request ASPEC for a patent application in other ASEAN IP offices.

Compliance periods on divisional applications

On 3 January 2023, the IPO published details on changes to its practice involving divisional applications that will come into force in May 2023. See full details at www.gov.uk/government/publications/compliance-periods-on-divisional-applications

This year the Intellectual Property Office (‘IPO’) will change how it accords divisional applications during their compliance period. This notice sets out this practice change. The IPO has also provided a dozen questions and answers to help users understand what this change means in practice.

Introduction

From Monday 1 May 2023, the IPO will no longer accord divisional applications a compliance period equal to the compliance period of the parent application as extended under rule 108(2)/rule 108(3) of the Patents Rules 2007 (as amended). Instead, the divisional application will be accorded a compliance period which is equal to the original and unextended compliance period of the parent application as defined by rule 30(2).

Background

The IPO has concluded that its previous practice of according applications filed under section 15(9) of the Patents Act 1977 (as amended), ‘divisional’ applications, the same compliance period as the earlier application, the ‘parent’ application, where the compliance period of that parent application has been extended in accordance with rule 108(2) or rule 108(3) of the Patents Rules 2007 (as amended), is inconsistent with a proper construction of the relevant legislation. In accordance with rule 30(3)(b) of the Patents Rules 2007 (as amended), from Monday 1 May 2023 , the IPO will attribute to a divisional application filed on that date or after, a compliance period of:

• four years and six months beginning immediately after –

• where there is no declared priority date, the date of filing of the application, or

(ii) where there is a declared priority date, that date; or

• if it expires later, the period of 12 months beginning immediately after the date on which the first substantive examination report is sent to the applicant, in relation to the earlier parent application

This change in practice will mean that the IPO will no longer treat the compliance period of the earlier parent application that has been extended under rule 108(2)/

rule 108(3) as the unextended compliance period of the divisional application. Extensions to the compliance period of both parent and divisional applications will continue to be available under rule 108 in the normal way.

Impact and timing of these changes

This change of practice will have no impact on applications already granted. This change of practice will also have no impact on divisional applications filed on or before Friday 28 April 2023 , these will still be accorded a compliance period according to existing practice as currently set out at 15.20.1 in the Manual of Patent Practice. Thereafter, divisional applications will be subject to the new practice detailed in this notice.

Applicants and their representatives should carefully consider any impact this modified practice will have on the time available for them to file and prosecute divisional applications to grant, particularly where those divisional applications are filed close to the end of the compliance period of the parent application. Under the revised practice applicants and their representatives may find that there is less time remaining to file and prosecute new divisional applications than they are accustomed to.

The IPO will use the time between publication of this notice and implementation of the new practice on 1 May 2023 to engage with stakeholders. A set of questions and answers are set out below to help understand what this change in practice means. The Manual of Patent Practice and the Patents Formalities Manual will be updated to reflect this practice change in due course.

Enquiries

Any general enquiries about this notice should be made to: Dr Jamie M. Frost, Registered Rights Legal and Practice Team, IPO, Concept House, Cardiff Road, Newport, South Wales, NP10 8QQ; ore telephone 01633 814463.

If you would like to discuss a particular application, please contact the examiner handling your case. Contact details for the examiner can be found on the cover letter accompanying the latest search or examination report, or on the report itself.

Julyan Elbro, Divisional Director, Patent Examination, IPO, 3 January 2023

Questions and answers on compliance periods on divisional applications

1. What is the impact of this practice change on applicants?

Under the new practice all divisional applications will be accorded the unextended compliance period of their original parent application. Applicants will therefore need to carefully consider the timing of the filing of divisional applications as well as the potential need to extend the compliance period of the resulting divisional application to enable it to be prosecuted.

Under this new practice the latest that an applicant will be able to file a divisional application without relying on discretionary extensions of time under rule 108 to satisfy rule 19(2)(b), is one month before the expiry of the unextended compliance date of the parent application.

Under this new practice the latest that an applicant will be able to file a divisional application when relying on discretionary extensions of time under rule 108 to satisfy rule 19(2)(b), is two months after the expiry of the unextended compliance date of the parent application. Discretionary extensions of time to enable the filing of divisional applications will only generally be awarded if an applicant can show that the circumstances are exceptional and that they have been properly diligent.

2. If the compliance period of a parent application is extended by the Comptroller following a request under rule 108(2)/rule 108(3), what compliance period will the divisional application take?

Under the IPO’s revised practice the compliance period of a divisional application will be calculated according to rule 30(2), that is, with respect to the relevant dates linked to the parent application. In other words the divisional application will, in effect, inherit the original and unextended compliance period of the parent application.

3. Am I still able to request extensions to the section 20 date of a divisional application?

Yes, there is no change in practice in this regard. The new practice just means that the compliance period as extended by rule 108(2)/(3) will not be passed down to any subsequent divisional applications derived from that application.

4. Is it still possible to file a divisional application late i.e. with less than three months remaining of the compliance period on the parent application?

Yes, there is no change in practice in this regard although as discussed above the timelines involved in doing this will change. The rule 19(2)(b) requirement can still be satisfied by either (a) extending the compliance period of the parent application under rule 108(2)/rule 108(3) and/or (b) requesting an extension to the rule 19 period under rule 108(1). Discretion to extend these time periods for the purposes of allowing the filing of a divisional application will only normally be exercised if the applicant

has shown that the circumstances are exceptional and that they have been properly diligent. There is no change in this aspect of our practice and this topic is discussed at 15.21 of the Manual of Patent Practice

5. What is the latest point at which I will be able to file a divisional application?

The latest point at which you will be able to file a divisional is the end of the period of two months beginning immediately after the compliance date of the parent application expired. This is due to rule 108(7), which states that the compliance date cannot be extended if the extension is not requested before the end of the aforementioned period.

6. Will I be able to file a divisional application on or before Friday 28 April 2023 that is accorded a compliance date under the old practice, and then file a further divisional application from that divisional application on or after Monday 1 May 2023?

This may or may not be possible depending on your circumstances. As divisional applications will no longer be inheriting the extended compliance date of their parent, in addition to satisfying the requirements of rule 19 applicants will also have to ensure that the compliance period of any divisional application is either current or capable of extension under rule 108(2)/(3) at the date of filing.

It is possible that a small number of applicants who are accustomed to the current practice will have divisional applications with compliance dates that are significantly past the compliance date of the original parent application on Monday 1 May 2023. Such applicants may find that they are unable to file a further divisional application as they

will be unable to extend the compliance date of the new divisional application sufficiently under the new practice. This is because rule 108(7) prevents any extension being granted to the compliance period after the end of the period of two months beginning immediately after it has expired. The period between publication of this notice and implementation of the new practice on Monday 1 May 2023, is designed to act as a transitional period to allow applicants to note this change in practice and adjust their future filing strategies accordingly.

7. If I had to request one or more extensions of time to the compliance period of an application in order to file a late divisional application, will I also need to request equivalent extensions of time on the divisional application at the time of filing?

It will generally be necessary and expected to request the same extensions of time for the divisional application as were requested on the parent application, in order to enable the divisional application to be filed and to provide sufficient time for the divisional application to be prosecuted. Where the requests for extensions to the compliance date of the parent application have been allowed, it is expected that the equivalent extensions on the divisional application will generally also be allowed.

8. Will it still be possible to file sequential divisional applications?

It will still be possible to file sequential divisional applications (i.e. one divisional application off another divisional application) provided that the requirements of the Patents Act 1977 (as amended) and Patents Rules 2007 (as amended) are met. However, all such divisional applications will have the

IPO Manual of Patent Practice update

On 1 January 2023, the main changes listed below were incorporated into the latest version of the Manual of Patent Practice. The updated table of changes can be viewed on the gov.uk website, see www.gov.uk/guidance/manual-of-patent-practice-mopp.

same compliance period as that initially accorded to the original parent application under rule 30(2).

9. If the unextended compliance period of a parent or divisional application expires imminently, what timeframes apply for the filing of relevant forms and fees needed to progress the application?

There is no change in practice in this regard. A request for substantive examination (Form 10) must be filed by the later of (a) two months after filing the new application or (b) two years from the declared priority date, or, where there is no declared priority date, two years from the date to be treated as the filing date. This time limit may be extended in accordance with rule 108. However, as with a search request (Form 9), if the divisional application is initiated within the last six months of the compliance period (including any extensions) then the period for filing the Form 10 and fee expires on the date on which the divisional application is initiated. In this case, the period may be extended in accordance with rule 108.

10. How soon can I expect my divisional application to be searched and examined?

The IPO will endeavour to conduct search and examination of your divisional application as soon as reasonably possible taking into account existing workloads and priorities. You may find it is necessary

to extend the compliance period to provide sufficient time to consider and respond to the examiner’s report.

11. What happens if the examiner has no objections to my divisional application, but it is A-published after the expiry of the compliance period?

Assuming no further objections arise as a result of the examiner completing their investigations, your application will be granted at the earliest opportunity following A-publication.

12. How can I help the IPO process my divisional application quickly?

Where a divisional application is filed close to the end of the compliance period of the corresponding parent application, please mark all correspondence as ‘URGENT’. Also, if your claimed invention incorporates matter from the description, not previously claimed, you can assist us by outlining where support for that newly claimed matter can be found. If your application does not comply with section 76(1) of the Patents Act 1977 (as amended) then it will not be published until any added matter is removed, which may delay prosecution. Highlighting where support can be found will allow decisions in respect of section 76(1) and antedating under section 15(9) to be made more effectively.

IPO, Registered Rights Legal and Practice Team, 3 January 2023

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IPO digital transformation: Potential legislative changes

On 6 January 2023, CIPA submitted its comments on the IPO’s consultation on Potential legislative changes for IPO digital transformation. Tim Jackson, chair of the Patents Committee, coordinated the response.

PART A

Question 1. What are your views on the approach the government wishes to take to support the potential future use of automation in IPO systems and processes?

CIPA is generally supportive of the IPO’s approach to implementing automation tools especially in areas where a direct benefit will be seen by the IPO’s customers, such as pre-apply checks. Further benefits to customers could be seen in reduced time to produce search reports on priority-founding applications through automationassisted prior art searching, allowing customers more time to consider international filing strategies.

CIPA considers that the legislative implementation to enable automated processing should be made through specific amendments to relevant sections of the Patents Act 1977 and the Patent Rules 2007, rather than a general enabling provision. This would ensure the clarity of the legislation. Futureproofing is not prevented by individual amendments as long as the selection of provisions to update is made with due consideration.

We believe that Example 1 of the consultation document illustrates the correct approach to automation: errors should be flagged, and an opportunity given to correct them. However, if this is done in real time during the filing process, it is important that the applicant should be able continue despite the warning. If information is unavailable on filing, for example, an experienced patent attorney may wish to continue in order to obtain the filing date, and then argue later about whether the missing information is problematic. We would not wish to find that the system refused to continue until the error was corrected.

Regarding how specific changes to legislation may be made, Example 2 in the consultation documents suggests that section 64(4) of the Trade Marks Act 1994 could be amended such that a change of name or address can be entered in the register, without saying how this could be done. However, individual amendments to legislation to remove explicit obligations for a person, such as the registrar, to do a particular task should not be made in the passive voice because completely removing responsibility for actions leads to a lack of clarity as to where the responsibility lies.

Instead, an approach to updating legislation to allow computer-assisted decisions could be to replace the person, such as the examiner or registrar, with ‘the Patent Office’. For example, in section 15A(2) Patents Act 1977:

‘On a preliminary examination of an application the examiner Patent Office shall’.

Similarly, the provision cited in Example 2 in the consultation regarding section 64(4) of the Trade Marks Act 1994 could be amended to recite:

‘The registrar Patent Office may, on request... enter any change in his name or address as recorded in the register’

(Please note: this suggestion refers to the Patent Office rather than the operating name, Intellectual Property Office, even in respect of trade mark legislation.)

CIPA hopes that automation tools will be implemented with a view to upskilling staff at the IPO who would previously have been manually carrying out tasks such as validating and entering changes to customer addresses.

Question 2. Would allowing other types of media to be included in a patent provide any benefits or cause any issues when applying? Would it have an effect on the ability to understand the patent with respect to follow-on innovation?

We believe that a wide range of illustrations in various media should in principle be permitted. These could include any of the examples given in the consultation document, if they facilitate a clear description of the invention. These should be provided in a generally

available digital format in such a way that any interested party can establish easily and accurately what was filed.

However, the consultation document rightly cautions that a broad enabling provision would not lead to immediate acceptance of all possible forms of illustration. We particularly foresee problems in cases where parallel patent applications are filed in other jurisdictions, claiming priority from a UK application (or vice versa). Common standards should be developed in tandem with other major patent offices, and we would encourage the IPO and other offices to work together.

If other media are to be allowed, then the IPO will need to stay abreast of technology updates and ensure that information filed in a format which is no longer supported is converted to a newer format, or the information will be lost to future generations.

Question 3. What are your views about moving to digital certified office copies (‘COCs’)?

CIPA is in favour of the IPO offering digital certified office copies, as long as paper certified office copies continue to remain available e.g. for filing with foreign patent offices which may require them. A price difference between digital and paper certified office copies would appear to be justifiable.

Question 4. In what situations might you still require a paper COC, even if we offered a digital version?

Paper certified office copies would still be required from the IPO if (a) a foreign patent office with which a priority-claiming application is filed does not accept WIPO DAS or digital certified office copies, or (b) the foreign patent office accepts digital certified office copies but not WIPO DAS nor the specific digital certificate used by the IPO. CIPA envisages that these situations will become increasingly rare but not impossible.

Question 5. What are your views on the UK extending its participation in WIPO DAS? Would doing so reduce the situations where a paper COC would be required?

CIPA welcomes the IPO’s desire to extend its participation in WIPO DAS for trade marks and designs. This would reduce, for example, the need to request a paper certified office copy of a registered design application when filing foreign design applications which claim priority to the registered design application at offices that accept WIPO DAS, such as the EUIPO.

Question 6. What are your views on providing the comptroller with more powers to make directions, in particular on the form and content of patent applications? Are there other areas where government could consider seeking the power to make directions, and why?

We support deregulation of the formatting of patent applications. Changes introduced at short notice would not be a problem if the previous format was still permitted.

Greater flexibility in extending time periods would also be beneficial, but any proposal to reduce the length or availability of extensions would need consultation and plenty of advance publicity.

Question 7. What would the impact be if the IPO extended its hours of business to seven days a week to match when services are available?

The possibility to file a new application which claims no priority at any time on any day (24/7, including weekends and public holidays) is valuable. It permits an emergency filing to obtain a priority date in cases where publication of an invention is imminent.

However, while applicants may sometimes reasonably wish to file other documents on weekends and public holidays, we do not support any change which would require them to do so.

There are good reasons why the principle of ‘excluded days’ is widely recognised internationally. It is not just about days when the local patent office is closed, although that may have been the original driver (e.g. under the Paris Convention, Article 4C(3)).

For example, suppose a deadline falls due on a Sunday, when the patent attorney’s office is closed. An attorney arrives in the office on Monday morning, to find that an overseas client has emailed last-minute instructions which arrived over the weekend. Currently, since Sunday is an excluded day, the deadline is extended to the Monday, and can be met. Under the IPO’s proposed change, it cannot.

A reasonable compromise would be to retain the current principle of excluded days (perhaps under a different name), so that deadlines can still be met in such circumstances. However, if documents are nevertheless filed on such an excluded day, the actual day of receipt may be accorded.

Question 8. Which of the options presented, if any, would you prefer government to take forward? Please explain why.

CIPA considers that Option 1, applicants to self-declare, presents a pragmatic approach considering that only around 0.25% of applications have security directions applied. Additionally, the existing provisions which enable UK residents to file foreign priority-founding applications without first obtaining permission from the Comptroller are, in effect, already a form of selfdeclaration. Therefore, CIPA supports Option 1.

CIPA lauds the IPO’s proposals to introduce an automated screening tool in Options 2 and 3. Two overarching types of automated screening tool are envisaged in the consultation. The first is that the screening tool could perform keyword searching to flag applications to a Security Section examiner. However, keyword searching at best forms a filter to assist the examiner, and examiner

resource would still be required to review applications for potentially sensitive material. This does not present a step change in current practice and so the screening tool may not significantly reduce examiner resource required to perform security reviews on applications. Manual review by examiners, even as a secondary check, is not scalable.

The second type of automated screening tool envisaged employs machine learning which, in theory, could eventually remove the need for a manual secondary check by a Security Section examiner. However, the relatively low number of applications that have security directions applied would present a small training dataset on which to train a machine-learning model, leading to low confidence results from the model. Further, unlike training a model to recognise unchanging objects such as vehicles or animals, inventions always aim to be novel by their very nature. Therefore, training a model on past applications that have been identified as containing sensitive material may not catch new inventions that contain sensitive material. Therefore, automated screening tools required for Options 2 and 3 do not appear to be practical to implement and would likely require significant up-front investment to develop, as well as many years to hone, which would not be justified considering the 50 or so applications per year that have security directions applied. Furthermore, if the screening tool were set to err on the side of caution, it would inconvenience and disadvantage applicants unnecessarily.

Question 9. What are your views on providing more flexibility in legislation over removing fees?

The question envisages the easy removal of fees that are no longer appropriate, or in cases of emergency, and of course we support that. If the basis of fees is to be changed in a way which imposes a charge in a situation where none previously existed, we urge full consultation with users.

Question 10. What are your views on harmonising the period for paying a renewal fee across the rights? Would this have an impact on how you (or your clients) deal with renewals?

There are effectively two questions.

First, how far in advance can a renewal fee be paid? Here, there may be some advantage in harmonisation across all registered rights, with no period being shorter than at present.

Second, should the due date itself, and its six month late payment period, be harmonised for all rights? Here, we note that the deadlines for patents are currently harmonised with the EPO and many other European countries.

We see that European patent harmonisation as far more valuable than any harmonisation with trade marks or designs. It means that a UK patent has the same renewal deadline as its sister patents in other European jurisdictions. Clients regularly give

instructions for the renewal of all corresponding patents in the same family at the same time. It would be a backwards step to change that. Indeed, the current end-of-month harmonisation was implemented in the first place because the difference in dates for renewing EP granted cases was causing customers difficulties. For example if a case was filed on the 2nd of a month, then the attorney’s renewal reminder for the UK case would naturally be sent to the client a month earlier than for the rest of the family, where the due date was say the 30th of the month. The client, instructing renewal on the basis of the later reminder, might then fail to instruct renewal on the UK case. We urge the IPO not change this back to the old system. In contrast, patents are not linked in families with trade marks or designs. There is no corresponding benefit to harmonising their renewal deadline with trade marks or designs.

Question 11. What are your views on the idea of aligning the period for requesting restoration?

For restoration of a patent, the deadline was originally 19 months from the unextended anniversary of the filing date. We suspect this was changed to 13 months from the extended renewal deadline when that deadline itself became based on the end of the month rather than the anniversary of filing. (We are not sure this specific length of deadline is set by international treaty.)

We believe the logic behind this odd number of months was, at the time, based on the way in which a patentee typically discovers that a patent has lapsed unintentionally. It happens when the following year’s fee is paid, perhaps at the end of the extended deadline, and the IPO refunds the fee because the patent lapsed the previous year.

Thirteen months then allows for the payment at the end of the extended deadline, plus a month for the error to be discovered and acted upon.

It will be noted that this logic does not apply to designs or trade marks, since their renewal periods are much longer. We therefore do not see a strong case for harmonisation across the different rights.

Question 12. Have you experienced any problems with the current system such as someone fraudulently claiming IP rights?

There is at least one historic (and very public) complaint, where this has been alleged, but as far as we are aware it is not common. However, with increasing online fraud, it is not inconceivable that this might increase if there is perceived to be advantage to fraudsters and insufficient checks in the system. There are already considerable problems arising with trade mark applications being filed for other people’s trade marks.

Question 13. What sort of evidence do you think should be required by the IPO before a transaction is registered?

There are alternative opinions. Some would say that, for patent transactions, the current practice in the IPO provides an appropriate compromise between certainty and efficiency/convenience. In certain other jurisdictions, evidence requirements can be unduly burdensome. This is especially so when the instruction to record a transaction may be received long after the date of signing, and the signing parties/entities are no longer active.

Others point to experiences where problems have arisen because of confusion e.g. in cases where intra-group transfers have taken place, with company name changes making it appear (incorrectly) that the rights owner is the same entity as previously. Here it is necessary to register both an assignment and a change of name, even though externally there would appear to have been no change. In such cases it is important to third parties that the correct chain of title is registered. The current simple practice, where no copies of assignments or name change certificates are required, may then be disadvantageous. Question 14. Which of the options presented would you prefer us to take forward? Please explain why.

Option 1 would appear to be a good starting point. However, it is not specified what is meant by ‘signature’. The practice should be flexible as to the type of signature required. For example, a variety of digital signatures applied using commercial solutions (DocuSign, Adobe, etc) may be acceptable, as well as facsimiles of hand signatures. The EPO currently accepts digital signatures only of a specific type, which is less practical in a global market.

If there is to be a transition to ‘self-service’ and automated recording without evidence, then additional safeguards against abuse/error are clearly justified. Option 2 becomes necessary as a minimum, but it is not clear whether this is sufficient to avoid an increase in abuse and (more likely) error. It would need to be ensured that ‘verified’ users are restricted to those who are truly identifiable and accountable for their actions in a meaningful way. For example, a registered patent attorney may be trusted to make a correct judgement that a transfer is legally effective, but this is not because such persons never make errors. It is because, if they fail, there are consequences and safeguards in place. The same cannot be said of everyone, especially if they are abroad. Therefore, Option 2 may be a step too far, depending on the definition of ‘verified user’.

We also believe that errors become more likely if there is no check by IPO staff. Even for the case of a qualified and responsible individual, the current system of checking by the IPO provides a really valuable check against errors. More pragmatically, we find that an official ‘no’ can be more effective than attorney advice, when a client insists on trying to register what is really a defective chain of

title. It must be avoided that an easy recordal is allowed to mask whether there has been a proper legal transfer.

Question 15. If you are a represented customer, what administrative tasks do you typically delegate to your representative? If you are a representative, what administrative tasks do you typically perform on behalf of your clients?

Please see question 17.

Question 16. Are these administrative tasks ones which could be performed as effectively, or that would provide a benefit in terms of time and/ or cost, if carried out through self- service?

Please see question 17.

Question 17. Do you have a preference as to which option we should take forward? Please explain why.

Different solutions may be appropriate for different types of client, but in general it is important that any sharing of responsibility between client and representative is well understood and agreed between them, and each knows what the other is doing.

For example, a large corporate client may have an in-house patent department which delegates work to several external attorney firms. Registration of assignments or licences may affect several of the external firms, and be best done by the in-house team, if they are experienced enough and will keep the external firms advised of progress in a timely manner.

However, if an inexperienced client is able to take actions without reference to the appointed attorney, there is likely to be huge confusion, with the attorney unaware of what has been done. It may only be appropriate for such a client to be able to monitor progress. If simple tasks are nevertheless to be permitted, there needs to be communication with the attorney. An inexperienced business person may think they have simply changed their company name, when in fact their accountant or other adviser has registered a new limited company. This could lead to avoidable errors being introduced to the Patent Office’s records.

The IPO should notify the representative when any changes are made to the record by a new representative or by the rights owner. It is too easy for a solicitor to record a transaction without thinking about how the right is maintained and without intending to become a new address for service. If a patent assignment is recorded, the old patent attorney may remain on the register, as they have not been replaced, but not know that there is now a different owner with whom they have no relationship. Whilst those changes might become apparent within a year, if the current attorney is responsible for renewal fee payments, for other rights it may take a long time for the representative to realise that it has no relationship with the current owner of the right. The representative must be given the opportunity to withdraw as address for

service or seek a new engagement with the new owner. The lack of clarity around duty of care to ensure renewal or to pass on details of legal proceedings served on the address for service following a transaction which the representative does not know about must be addressed.

PART B

Question 18. Apart from the ones discussed below, are there any changes to the legislation relating to the IPO’s tribunal function we should consider?

Whilst not strictly a matter for the IPO’s Tribunal Function, the IPO should seek to change CPR Part 63.2 and the underpinning legislation to enable registered design cases to be heard in the small claims track of the IPEC. These are less complicated than design right cases and should not be reserved to the IPEC and the High Court.

Question 19. What are your views on providing the ability to request expedition in legislation, and which of the options would you prefer us to take forward? Please explain why.

The IPO walks a tightrope between being a more friendly and informal forum than the courts and having proceedings which take too long and are open to abuse. Whilst some time has to be allowed to get instructions from overseas clients, it is way too easy to drag out proceedings in the IPO Tribunal and not get to a result. An option to expedite should be allowed. Controls on granting extensions of time should also have some measure of control. There is no point being able to object to an application for an extension of time, only for the matter to be decided after that extended period has expired.

The question as to whether this can only be dealt with after both sides have filed pleadings does beg the question over the quality of those pleadings – see Question 20. Case management powers offered at an early stage is likely to be the best option for dealing with any disagreements between the parties as to how the case should be run or whether their pleadings are sufficient for proceedings to be expedited.

Question 20. What are your views on replacing some checks on pleadings with a process for making a request for clarification?

Whilst we have some sympathy with checks being carried out unnecessarily on pleadings, it is also the case that attorneys file vague and non-particularised pleadings, particularly in trade mark oppositions where they are not able to get full instructions and are preserving the client’s position. Those pleadings are unlikely to be questioned by the IPO.

We would welcome an opportunity for a party to have the other side’s statement of case clarified before they are put to the expense of responding to it and having to guess the case which is being made.

However, that should not stop the IPO from offering help to unrepresented parties in how to plead their case. Guidance and example pleadings might help.

Question 21. What are your views on creating a statutory obligation to copy the other party into correspondence? Has this caused you issues in the past, and what impact has that had?

This begs the question of the IPO dealing first with the address on the IPO register for the other party. If the only address is overseas, a PO box or a registered office address which is actually care of one of the company formation agents or addresses where there is no one actually dealing with the post, then any obligation to copy the other party is pointless.

However, where a real address in the UK is given for the party or a recognised representative, or where an email address is given by the other party, then there can be no excuse for not copying IPO correspondence to the other side. Another option is to use a system, similar to the EUIPO or UPC, where there will be a website area for documents and correspondence relating to a dispute which both sides can access and so see what is on the file – even routine or admin correspondence. Then it should be easy for the IPO automatically to notify parties when a new document or letter is added.

It is noted that there are obligations on parties to court proceedings to copy documents to the IPO and that does not always happen either.

Question 22. Have you or your clients been awarded costs in an IPO tribunal case which have then gone unpaid? This will happen from time to time. The amount awarded, coupled with the cost of court enforcement means that it may not be worthwhile to seek payment which is not immediately forthcoming at the first request. Even writing several more letters may cost more than the costs awarded.

Question 23. Were you successful in enforcing the costs order through the civil courts? What issues did you encounter? Please provide any information on how much it did or would have cost to enforce the order.

N/A

Question 24. What are your views on whether IPO costs orders for costs and damages should be registered like CCJs?

It would be helpful if other means could be used to persuade those who are due to pay cost orders to do so. It should be borne in mind that some of those not paying cost orders are overseas and steps taken in the UK alone may have no effect.

Has the IPO considered preventing a party from being involved in further proceedings until previous orders are paid?

Question 25. What are your views on putting cross-appeals on a statutory basis and how they should work in practice?

Clarity is required, however this is set out. Just as the parties should be able to clarify the statements of case, clarity over what is being appealed and by whom should be properly set out and appropriate fees paid.

The APs should have the right to extend time.

Question 26. What are your views on the detail in which the hearing officer’s powers should be set out? Which option for the changes to the Rules do you prefer? Please explain why.

The law has developed over the years, additionally in terms of the duties of the IPO to follow basic litigation principles and how complete evidence must be in IPO proceedings.

Option 2 may be the better route to take. This would be particularly helpful to lay litigants who do not need to chase through different statutes for the relevant rules. Also, this means that when government makes changes to say the ‘official referees’, the IPO does not find that its procedure is not out of date.

Question 27. What are your views on applying the permission requirement to interim decisions on patents and designs cases?

We don’t have an issue with requiring permission to appeal. That exists for High Court and IPEC cases. However, the IPO should not exclude the right to apply to the appeal jurisdiction for leave to appeal.

Question 28. What are your views on providing an express power to strike out or issue summary judgment across all the registered rights, and allowing hearing officers to raise the issue themselves?

We support providing an express power to strike out or issue summary judgment across all the registered rights, and allowing hearing officers to raise the issue themselves. Furthermore, we would urge the IPO to treat such applications as urgent. To take a specific example, the existence of a national entitlement action can delay grant of a European patent application. We understand that it is becoming more common for a party to bring a spurious entitlement action in order to delay grant. To thwart that abuse, the IPO should hear strike-out actions as a matter of urgency. An early strike-out would also obviate the need for a party to incur high costs preparing to defend the action.

CHINA’S PATENT PROSECUTION HIGHWAY

Freeing up China’s Patent Prosecution Highway with delay and divisionals

When prosecuting patents in China, it is not unusual for foreign applicants to see their attempts stall. For example, when the corresponding patents have been granted in the US and Japan, and at the EPO, foreign applicants may find their corresponding Chinese applications were rejected, or granted with a narrower scope in China than those granted elsewhere. Toby Mak explains why this can happen, and hopefully provide a solution through a combination of (1) the Patent Prosecution Highway (‘PPH’), (2) delaying examination, and (3) filing divisional applications.

BY TOBY MAK Senior Counsel / Patent Attorney, Tee & Howe Intellectual Property Attorneys

Before discussing a strategy based on the Patent Prosecution Highway (‘PPH’), I will first explain why foreign applicants frequently experience unexpected patent prosecution difficulties in China.

Numbers drive Chinese examiners’ behaviour

When it started in the late 1980s, the Chinese patent system was largely based on the Germany’s. In the last 30 years, the Chinese patent prosecution framework has developed in its own way. This is due to several factors including:

• The number of applications prosecuted by the China National Intellectual Property Administration (‘CNIPA’) for invention patent applications alone (equivalent to US utility patent/EP patent applications). CNIPA has received over one million a year since 2015, peaking at 1.54 million in 2018.

• An increase in the capabilities of Chinese companies to obtain their own patents, and the desire of the Chinese government to encourage Chinese companies to obtain patents. This is reflected by a rapid rise in invention patent filing numbers by Chinese companies, which was close to one million (0.97 million) in 2015, and exceeded one million (1.2 million) in 2016, and was over 1.2 million per year between 2017 and 2020. These patents are often only filed in China, and therefore are available only in Chinese as prior art documents.

• An increase in the use of intellectual property, in particular patents (although mainly utility models) by local Chinese companies to defend their own commercial interests. In the last four years, over 95% of the decisions published by the Chinese courts that I have reviewed are Chinese companies suing Chinese companies. The numbers above are for invention patent applications only, and do not include utility model and design patent applications filed at the CNIPA. (NB: Each year since 2015 there have been over one million utility model applications and over one million design patent applications.)

With the number of patent applications received by the CNIPA each year, it could be imagined that each Chinese examiner is working under unbelievable pressure. According to a recent announcement from the CNIPA, there are around 16,000 Chinese patent examiners. Work performance is often measured by looking at ‘issuing the first office action within X months’, ‘each year has to issue Y office actions’, ‘each year has to issue/reject Z patents/applications’ could be expected. In fact, the CNIPA has recently pledged to maintain the patent examination cycle to be within 18.5 months (see https://www.cnipa.gov.cn/art/2021/5/11/art_75_159302.html).

It is understandable that some, if not most, Chinese examiners perform patent examination merely as a job with targets to hit. As such, it is not unusual to see Chinese examiners work appearing to not be based on any sound reasoning other than to fulfill their performance review at CNIPA. In such a situation, the only rationale seems to be ‘as long as an objection could be raised, anything goes’. This is reflected in the following:

• Anything not disclosed in a reference could be asserted to be common general knowledge without providing any substantive evidence (which luckily now could be rebutted by asking the examiner to provide substantive publication evidence, which the examiner is required to do by the Chinese Patent Examination Guidelines).

• Interpretation of any word/expression could be expanded/twisted arbitrarily to justify an objection. For example, any word/expression in a claim could be simply put in a reference (I call this ‘twisting’) - i.e. a word/expression that does not appear in the reference but only in the claim could be asserted to be disclosed by the reference.

• A person skilled in the art is a genius in an obviousness objection, while the same skilled person is an idiot in support/sufficiency/clarity objections.

I have kept many examples of office actions I have been involved similar to those illustrated above.

Chinese examiners, on the other hand, are very good at spotting inconsistencies in the wordings or drawings in a patent specification (including design patent applications). With that in mind, you may have a light bulb moment next time your Chinese application seems to hit a brick wall when the examiner appears unconvinced by any amendments and/or arguments. They may be lagging behind on their rejection numbers. This is where PPH can become a useful tool to prosecute your patents in China more easily, with reduced costs (and the added bonus of avoiding handling multiple office actions).

A PPH strategy for China

China introduced PPH in the 2010s. Although PPH is not that useful in fast-tracking patent prosecution before the USPTO and the EPO, my experience of PPH in China is much more positive. Over 60% of my cases with a PPH request accepted by the CNIPA were granted without novelty and obviousness objections. There could still be objections on formalities (sometimes support and added matter), but these objections are a lot easier to deal with than novelty and obviousness objections, which can take about 70% of a patent attorney’s time. Therefore, if things go smoothly with PPH, 60% of your Chinese patent applications could save 70% of your time (and therefore costs).

In some cases, even though a PPH request was rejected, as the claims had been amended in line with a corresponding patent elsewhere, the Chinese patent was also granted with ease. In other cases when the parent application was rejected, the divisional application filed with the PPH request went through.

One recent case I handled went straight through to grant, which I have not experienced before. Therefore, it is advisable to use PPH in China whenever possible. Most of the patents granted elsewhere could be used, including the US, EPO, the UK, Japan, and South Korea. The only major exception is Australia, which still does not have a PPH arrangement with China.

A PPH request could be filed in China for any invention patent application, including a divisional application as mentioned above, by meeting the following requirements:

1. The application must be filed electronically (which should not be a problem, as over 99.5% applications are now filed electronically in China).

2. The application must have entered the substantive examination stage, i.e. a Notice of Entrance into Substantive Examination Stage has been issued (see further details below).

3. No office action has been issued.

4. The claims in the Chinese application substantively correspond to those granted in the foreign patent. Although the CN PPH guidelines do not require exact correspondence, in practice PPH examiners are ruthless in pursuing a perfect match.

Of course, acceptance of a PPH request does not guarantee automatic grant in China. Afterall, the Chinese examiner is required to do additional searches, and if in such searches new prior art documents are found (particularly those only available in Chinese), then sorry, bad luck. Another issue is added matter, particularly if the PPH request is based on a US patent (I am sure European colleagues have more than sufficient experiences of these).

In light of (4) above, in order to make the best use of PPH in China, it is best to use it alongside a delay for examination and filing divisional applications.

UPDATES ON CHINA AND HONG KONG IP PRACTICES

Tuesday 14 February 2023 • 12:30-13:30

CPD: 1 • £66.67 • Free for CIPA members

Another year has passed, and there has been many changes in the China and Hong Kong patent practices, including:

• China’s crack down on abnormal patent filings.

• China’s first drug patent linkage decision.

• Changes to China’s patent practice to bring it more in line with the rest of the world, including:

restoration of priority;

– correction of application filed based on incorporation by reference of the priority document;

– finalising partial design practice; and

abolish 15-days mail period.

• Hong Kong’s purge of unqualified ‘agent on records’.

Speaker : Toby Mak (Tee & Howe)

Webinar

These are set out below. Starting with explaining why amending claims in line with a granted patent (‘pseudo-PPH’) when responding to an office action does not work as well as PPH, and then looking at restrictions on filing divisional applications in China.

Why ‘pseudo-PPH’ does not work

A busy Chinese examiner may not listen to your request even if they are told in a response to an office action that the claims have been amended to be in line with a corresponding foreign patent (even if a copy of the foreign patent is submitted with the response). Firstly, the examiner does not have to take your word that the claims have been amended in line with a foreign patent. Secondly, the examiner is not obliged to check the correspondence. Therefore, the typical reaction to such submission is ‘so what?’, particularly when the examiner is looking for cases to reject to fulfill any quota.

By contrast, when a PPH request is filed and accepted, a PPH examiner (who will be a different examiner from the substantive examiner) will check the following:

a. That a corresponding foreign patent has been granted.

b. That the corresponding foreign patent has the same priority or shares priority with the Chinese application.

c. The claims pending in the Chinese application are exactly the same as those granted in the corresponding foreign patent.

After a PPH request is accepted and when the application is then passed to a substantive examiner, there is a check list with (a) to (c) above all checked by another examiner before the substantive examiner even looks at the application. Although acceptance of a PPH request does not guarantee the Chinese application would then be granted, it could be imagined what is in the examiner’s mind if they are looking for a case to be granted easily to fulfill the granting number. If the additional searches come back with nothing more relevant than the references cited in the corresponding patent, there is no point in raising novelty and obviousness objections. Job done, desk cleared, go home early, with peace of mind that someone else (the PPH examiner) has already checked things for me.

Specifically, a PPH request provides the examiner with an official excuse to let the application through more easily.

Restrictive divisional practice in China

Unlike the rest of the world, China allows voluntary filing of unlimited divisional applications when the parent is still pending. However, China does not allow voluntary filing of divisional applications after the parent has lapsed or after it has been granted.

The CNIPA will reject the filing of a further divisional application if the following conditions are met:

• The basis application is a divisional application from the parent.

• The parent has been lapsed or granted.

• No unity objection has been raised in the basis divisional application.

The definition of ‘granted’ is the deadline of paying grant fees, which is set by the decision to grant issued by the CNIPA on the parent.

The definition of ‘lapsed’ is when the application becomes irrecoverably lapsed according to CNIPA’s records. For example, if no response has been filed to an office action/re-examination notice, or if no request for a re-examination has been filed following a rejection decision, and/or if there is no appeal filed to a re-examination decision. CNIPA records will only be updated after the lapsed status of an application becomes final. Therefore, it should not be assumed in China that once the parent is granted, it is still possible to file a divisional application as desired.

In addition to capturing claims aimed at the commercial scope that are potentially useful to the patentee, for example targeting an infringer’s future actions that are still not clear or known to the patentee at the time of grant, a PPH request can also be filed for a divisional application. For example, if the parent is rejected, one alternative is to file a divisional with a PPH request, which I have managed successfully a number of times. Another point to note is the divisional examiner in China is usually not the same examiner as for the parent application. The news examiner could be facing different grant/rejection numbers when picking up the case. Therefore, filing a divisional is like hitting a reset button.

Why combine PPH with a delay examination request and a divisional application?

As claims in China must be the same as those in the foreign granted patent (outlined in (4) above), to use PPH in China, the Chinese claims must be revised to be in line with those granted elsewhere. In China, voluntary amendments are accepted only in the following instances, listed in chronological order:

a. for a PCT national phase entry into China, within one month from the CN national phase entry;

b. at the filing of the request for examination, which is due three years (36 months) from the earliest priority date; and

c. during a three-month period after the issuance of a Notice of Entrance into Substantive Examination Stage, which will only be issued after the filing of the request for examination and the publication of this application in China and, therefore, will be later than the deadline of filing the request for examination in (b) above.

Assuming that the request for examination is filed closer to the 36-month deadline, the last opportunity to file voluntary amendments would be somewhere around 40-42 months from the earliest priority date. Ask yourself: When was the last time you had a patent granted within a family in 40-42 months from the earliest priority date? (This could happen relatively easily if you follow the strategy I have outlined below.)

Therefore, there is a good chance that a foreign patent may not have been granted by the last amendment opportunity, i.e. (c) above. Furthermore, filing a PPH for the parent would result in its prosecution being accelerated, which would reduce the time for filing a voluntary divisional application. To mitigate these, the following options are available:

(1) Filing a delay examination request for three years in the parent application. Notwithstanding that this delay exam request must be filed with the request for examination (which is due three years from the earliest priority date). This type of delay examination request has the following advantages:

• delays the costs for handling an office action;

• places your competitor/investor in limbo as they can not ascertain the scope of the patent claims to be granted; and

• maintains the option to file a divisional application for a longer period (at least three years from the date of filing the request).

(2) During the pendency of the parent, which is delayed for at least three years due to (I) above, if a foreign patent is granted, file a divisional with a PPH request such that the divisional could be granted earlier and relatively easier.

Using the strategy above, the time to consider filing a voluntary divisional application could be maximised, while maintaining the chance of a relatively quickand-easy grant using PPH by filing a divisional application. The divisional application would of course be filed with claims granted in the foreign patent, and therefore further amendments are not necessary.

As long as the parent is pending, there is no restriction on the number of divisional applications that could be filed. For example, five could be filed:

• Divisional 1 with PPH request based on US patent A;

• Divisional 2 with PPH request based on EP patent;

• Divisional 3 with PPH request based on US patent B;

• Divisional 4 with PPH request based on JP patent; and Divisional 5 with delay examination as a placeholder.

Even for existing parent applications experiencing difficulties during prosecution, receiving a negative re-examination decision, the above ‘divisional with PPH’ strategy could be considered. While the divisional could appear before the same examiner of the parent, who may still insist on their objection opinions as in

the parent, the PPH request could give the examiner an excuse to persuade their supervisor to grant.

Where the delayed examination request was not filed, I have seen the prosecution of applications filed since 2021 accelerate significantly, presumably due to CNIPA’s pledge to keep the examination cycle to 18.5 months. In my experience, many applications like these are either granted or rejected at this stage. As such, without filing the delay request, the time to consider filing divisional applications with PPH would be reduced significantly.

Having said that, it is disappointing that a PPH request may be refused arbitrarily in China, as reported in my article published in the CIPA Journal in May 2014. This is particularly so for a divisional PPH. As I have stressed before, my view is that PPH examiners in China are subject to meeting a rejection quota imposed by CNIPA (they will never acknowledge this, of course). As the examination would be accelerated anyway, this may be the reason why PPH examiners are likely to pick on a PPH request for a divisional application. Therefore, it is advisable to proceed use the PPH route cautiously with the help of a trusted agent.

TRADE MARK REGISTRATION IN CHINA

Webinar

Tuesday 4 April 2023 • 12:30-13:30

CPD: 1 • £66.67 • Free for CIPA members

Trade mark registration strategy for China –Practical tips to navigate the complexities in the trade mark system.

It is no secret that China is the most difficult jurisdiction in the world to secure a trade mark registration. Whilst China continues to top global trade mark application numbers in recent years, will your applications be one of the successful ones amongst almost 8 million marks on the register? In this talk, we will discuss the practical tips to maximise the chances of successfully registering your trade marks; ways to broaden your trade mark protection in China as bad faith filings continue to be a serious problem to foreign entities trying to secure trade mark protection in China. We will also talk about China’s efforts in cracking down on bad faith filings.

CITMA members can also book on this webinar, email cpd@cipa.org.uk.

Speakers : Hank Leung and Stephanie Ning (Bird & Bird)

What to do if I change my mind after filing the delay examination request?

Although at present the Chinese Patent Examination Guidelines do not stipulate that the delay examination request could be lifted after filing, this will be allowed in the very near future. Specifically, both drafts of the revision of the Chinese Patent Examination Guidelines from CNIPA (August 2021 and October 2022) allow this cancellation of the delay examination request.

However, my question is: Would this cancellation be necessary? There is usually a reason for the sudden need to expedite prosecution, such as, an upcoming infringement, a new investor, or the grant of a foreign patent. In most cases voluntary amendments to the claims are required. Furthermore, even if prosecution is desired to be expedited (you want the application to be granted, not rejected, right?), there should be means to accomplish this, which goes back to the use of PPH being the more, if not the most, effective means.

Having said that, during the three-year delay, the deadline to file voluntary amendments has already passed. Therefore, if the applicant wants to prosecute a particular set of claims (either due to infringement, or due to PPH) during this time, it is still necessary to file a divisional application. Furthermore, cancelling the deferral would effectively reduce the pendency of the parent, which reduces the chance of filing further divisional applications.

Finally, if there is an urgent need to expedite prosecution, there should be a good commercial reason behind this, which would make the extra costs of filing divisional applications seem negligible. Based on the above, I would not suggest cancelling the request to delay examination, but instead recommend filing a divisional application to expedite prosecution, notwithstanding that prosecution of all divisional applications is expedited even if a PPH request is not filed.

UK patents best for PPH

Which foreign patents would I choose for PPH in China? UK patents of course! Most would assume that US, EP, and JP patents would be better. However, a US patent is not the preferred choice, as the allowed scope of amendments in the US is different from the rest of the world, which could attract added matter objections in China. Usually in China EP and JP patents are preferred, as Chinese practice is closer to those at the EPO and JPO, and particularly the EP practice. However, EP and JP patents with a relatively broad scope are not usually granted very quickly.

Therefore, I recommend using a UK patent as a basis for PPH in China. The reasons are set out below (it is nothing to do this article being published in the CIPA Journal!):

a. With request to accelerate search and examination, a UK patent could be granted (or put in the order of allowance) between six

and nine months from the UK filing date.

b. UK examiners tend be more easy-going than examiners in other patent offices. Typically, UK examiners allow an application to proceed to grant once a doubt is raised in their objection. By contrast, a CNIPA examiner usually requires the applicant to show beyond any doubt that the application should be granted. (I often say to clients if you cannot get through a UK examiner, then good luck trying in other places.)

c. If the search report of a UK application is carried out by the EPO (which happens from time to time), when the corresponding EP application is filed, you could get a refund of the EPO search fees.

Therefore, it is possible to have the UK patent granted within the 12-month priority period (see (a) above) if the UK application is the first filing, or the UK application is filed shortly after the first priority application is filed. The result of the UK application could be used to decide whether further filings of corresponding applications should be funded.

Although a ‘clean’ PCT search report and the corresponding Written Opinion of the International Search Authority could also be used as the basis of a PPH request in China, unfortunately, I find such PCT search results are not persuasive to Chinese examiners, as such do not directly result in the grant of a patent after all.

Conclusion

While PPH is not particularly attractive in the US and at the EPO, it is useful in China. With China’s restrictions on filing voluntary amendments and divisional applications, to use PPH effectively it is advisable (or even necessary) to combine the strategy of delaying examination in the parent with PPH in the divisional to retain the option of voluntary filing of a divisional application, and achieve a fast and relatively trouble-free route to grant.

Combined with the relatively swift grant of UK patents, sensible commercial decisions can be reached inside the 12-month priority period, with the bonus of a reduction in the work (and costs) normally needed for prosecution in China. The key is to file the request to delay examination. This decision must be made when filing the request for examination, which is due three years from the earliest priority date.

21st Century commercial issues need 21st Century solutions

Online IP infringement

In the second of a series of four short articles aimed at provoking discussion about possible solutions to issues experienced by businesses, Neil Sharpley highlights some of the problems of online trade and IP rights.

It is generally acknowledged that there are increasing numbers of ‘wild-west dispute resolution’ actions in relation to online trade. Some large manufacturers have realised that if they wish to suppress unwanted small business competition online, they can use IP rights to do so. There are an increasing number of cases where online platform listings have been suspended or deleted because of an allegation of trade mark or patent infringement. The scenario is that the alleged rights holder makes a complaint to the internet service provider (‘ISP’) or platform operator which then, not wishing to become liable itself, suspends the relevant listings. Many such allegations do not hold up to legal scrutiny. The listing business may protest, but if no agreement is reached with the complainant, the ISP or platform usually maintains the suspension and requires the parties to resolve their dispute between themselves. This in effect means that the complainant has obtained the equivalent of an injunction without proving its case, and that the only remedy available to the suspended SME is to go to court, a step which most SMEs cannot afford, or is in many cases disproportionate to the value of the sales lost. These scenarios frequently occur in spare parts or consumables markets where there is a consumer interest in having a vibrant secondary market rather than a manufacturer’s monopoly. The position is usually different in the USA, where listings are not necessarily suspended, and the rights holder and alleged victim of infringement has to prove its case by independent action. With regard to online commerce dispute resolution generally, there is an urgent need for fast and costeffective dispute resolution. The mechanisms for

requiring platform operators and social media applications to act speedily and effectively to resolve issues are limited and ineffective. This area was addressed in the EU by the Online Intermediation Services Regulation 2019 which requires online sales platforms to have an internal complaints procedure and publish the possibility of reference to mediators. The processes of most platforms are slow and opaque. The EU Regulation was supplemented in the UK by the Online Intermediation for Business Users (Enforcement) Regulations 2020. But only certain breaches of the EU Regulation are treated as breaches of duty actionable in the event of loss and damage, and the only option for remedy is via the courts and therefore beyond the means of most SMEs. Again, the cost of court action is likely to be disproportionate to the dispute value in any event. The internal platform processes, to the extent that what occurs can be called a ‘process’, are unsuitable for resolving disputes with an IP content.

Online businesses urgently require a cost-effective and a quick dispute resolution process and mechanism, and the default position for platforms where there is deadlock should not be to maintain suspension. It is time for a holistic appraisal of how lower-value IP-related disputes should be addressed in the fast-and-furious online commerce of the 21st Century. I will return to possible solutions in my final article in this series. In the meantime, many SMEs are simply deprived of the ability to obtain justice because of the limitations in respect of the current dispute resolutions options.

Neil Sharpley is Chair Home Office & Ministry of Justice Policy (incl. Business/Cyber Crime) and IP lead re Innovation at the Federation of Small Businesses. www.linkedin.com/in/neil-sharpley-93075817

First patent attorney to be appointed King’s Counsel

Richard Davis (pictured above) is to be appointed King’s Counsel in March 2023, and he will be the first Fellow of CIPA to take silk.

An engineer by training, after a short stint at GEC Marconi, Richard switched careers and decided to ‘read for the Bar’. He was called in 1992 but rather than entering barrister practice chose to re-train (yet again) this time as a patent attorney. He joined the firm of Beresford & Co in London. He remained involved in litigation as the firm’s senior partner, Keith Beresford, was a keen proponent of the newly formed Patents County Court. Indeed, Keith was the first to launch litigation in that Court with the somewhat infamous Pavel v SonyWalkman litigation.

Outside of litigation, Richard knuckled down to the task of passing the UK and European patent exams. Those struggling over them today may be fortified by learning that he only passed FD4 / P6 ‘infringement and validity’ (his bread and butter as a barrister) on his third attempt!

Lionel Bently, professor of intellectual property law at the University of Cambridge, was awarded an honorary King’s Counsel He was nominated for his publications which ‘rank among the most influential texts in intellectual property law and for playing a crucial role in influencing intellectual property law in this jurisdiction and beyond’.

He returned to the Bar at the end of the 1990s and joined Hogarth Chambers on its foundation in 2001. He has had a busy junior practice appearing regularly before both the UK courts and the EPO.

He remained committed to his true calling as a patent attorney and was a member of CIPA Council from 2005 to 2016. During that time he was instrumental in setting up the Nottingham LLM course allowing patent attorneys access to higher litigation rights. His work for CIPA remains, with his former Beresford colleague Paul Cole, as one of the general editors of the Black Book

Outside of work, Richard has returned to his engineering routes having recently completed the build of his own light aircraft, a Sling 4.

Rather fittingly as a silk one receives one’s own letters patent from the King which he will scrutinise carefully as there seems to be no A publication!

Patent decisions

UK court cases

UK Intellectual Property Office

European Patent Office

UK patent court cases

All the court decisions listed in this section are available on the free-to-use website www.bailii.org.

Infringement Arrow declaration Declaration for use outside UK only

(1) Teva UKLimited (2) Teva Pharmaceutical Industries Limited v Novartis AG and

(1) Novartis AG (Switzerland)

(2) Novartis Pharmaceuticals UKLimited

v(1)TevaUKLimited(2)DrReddy’sLaboratoriesLimited

(3)GlenmarkPharmaceuticalsEuropeLimited

(4) Tillomed Laboratories Limited

(5) Zentiva Pharma Uk Limited

(6)AristoPharmaGmbh(Germany)

(7) Viatris UKHealthcare Limited

[2022] EWHC 2779 (Ch)

19 October 2022

Bacon HHJ

This decision relates to Teva’s application for what is referred to as an Arrow declaration, that its proposed acts of importing and selling generic fingolimod to treat relapsing-remitting multiple sclerosis at a daily dose of 0.5 mg p.o. was obvious at the priority date of European Patent EP2959894 (‘EP 894’), for which Novartis AG is the registered proprietor.

Teva’s application is what is left of two separate sets of proceedings between Teva and Novartis. Before trial, Novartis informed Teva that it was de-designating the UK from EP 894 and dropped its infringement action against all of the defendants. The result of this is that once EP 894 granted it had no effect in the UK, which is now a generic market.

The sole issue was whether the court should exercise its discretion and grant the Arrow declaration sought by Teva, despite no patent rights existing in the UK. Obviousness was not considered.

The judge referred, in particular, to Fujifilm v AbbVie [2017] EWCA Civ 1. In this decision the court granted the declarations even though these were sought in relation to patents where AbbVie had abandoned the UK designations. However, the facts of this case were considered unusual as a result of AbbVie’s conduct.

An argument advanced by Teva (amongst others) was that a UK judgment would have potential utility to a decision in Germany on whether to grant a preliminary injunction against Teva. On this point Teva and Novartis both submitted evidence from witnesses as to whether, and to what extent, a decision of the court granting the declaration would be taken into account by a German court in deciding whether to grant preliminary injunctive relief against Teva on the basis of EP 894.

The judge did not consider the evidence before them to establish how much weight a German court would give to a granted declaration, beyond the fact it would be taken into account and be ‘of interest’.

Further, the judge held the fundamental problem with Teva’s line of argument was that the case law consistently establishes that if the only or predominant purpose of the declaration sought is to use the judgment for a foreign court, a declaration is only likely to be granted in unusual cases where a very compelling justification for doing so (referring to Fujifilm v AbbVie).

Teva’s answer to this was that the effect of the declaration would be felt in the UK because Teva’s supply chain to the UK involves transit through Country A (redacted), and if injuncted in Country A it would be time-consuming and expensive to alter its supply chain, thus threatening its ability to supply to the UK. On the evidence before her, the judge accepted that a declaration would have an impact on Teva’s supply chain in so far as it is taken into account in Country A.

An argument by Novartis that Teva should already have taken steps to identify and plan for an alternative supply route was considered ‘hollow’ by the judge, since Novartis were unable to identify any country through which Teva would have been able to plan an alternative supply route.

Nonetheless, it was held by the judge that Teva succeeding on this point was not enough to grant the declaration. The fact that a decision in Country A would affect the UK market indirectly did not change the fact that the purpose of an Arrow declaration in the UK would be to use it in the courts of Country A and other countries, rather than to obtain or enforce any right in the UK.

The judge differentiated the present case from the Fujifilm case, where a central plank of that decision was the impact of the declaration in dispelling uncertainty

The UK patent court case reports are prepared by John Hull, Anna Hatt, Deborah Hart, Matthew Ng, Sarah-Jane Crawford and Tom Hailes of Beck Greener.

on the UK market, given the conduct of AbbVie. In the present case, there was no such uncertainty. This was in line with the decision taken in Pfizer v Hoffman-La Roche [2019] EWHC 1520 (Pat).

Other factors considered by the judge included whether UK legal rights were required for a declaration to be granted, Novartis’ conduct in abandoning its UK designation before trial, the need for certainty for Teva’s customer (the NHS), and alleged inadequacy of Novartis’ undertakings.

In summary, Teva’s application for an Arrow declaration was refused.

[2022] EWCA Civ 1617

8 December 2022

Arnold LJ, Nugee LJ, Sir Christopher Floyd

Teva unsuccessfully appealed the decision reported above. The Court of Appeal considered that the judge had correctly refused to grant the Arrow declaration.

Declaration of non-infringement Abuse of process Costs

Lisa Dräxlmaier GmbH v BOS GmbH & Co KG

[2022] EWHC 2823 (Ch)

8 November 2022

Sir Anthony Mann

This judgment relates to an application for a declaration of non-infringement filed by Dräxlmaier against BOS in relation to European Patent (UK) No. 3266631.

BOS had sued Dräxlmaier in Germany under the corresponding German designation of the same European patent. It had been accepted that the English proceedings no longer served a useful process and could be brought to an end. However, there was disagreement as to how they should be correctly brought to an end.

Dräxlmaier gave notice under section 71 Patents Act 1977 requesting confirmation that its product did not infringe BOS’s English patent. BOS did not respond. The case was unusual as it related to a patent which had been allowed to lapse by BOS due to failure to pay the renewal fee, albeit shortly after the communication from Dräxlmaier. However, during the six-month grace period, Dräxlmaier paid the renewal fee, reviving the patent, and then subsequently filed the declaration of non-infringement. BOS attempted to surrender the patent but Dräxlmaier resisted this application.

BOS filed a strike-out/summary judgment application which was the reason for this judgment. The BOS position was that the proceedings were or had become an abuse of process as they were pointless.

The judge identified that the overwhelming purpose of the proceedings was to obtain an English decision that could be presented to the German court. He then went on to consider in detail whether there could be an abuse of process in a case which only considers infringement and is for the purpose of providing a decision for foreign proceedings.

He reached the conclusion that at least at the point where BOS sought to surrender the patent, the proceedings did not justify the use of court resources and should have been brought to an end. However, whilst noting that it was just about possible to characterize Dräxlmaier’s actions as an abuse, what was relevant was that the proceedings were unjustifiably maintained by the claimant.

The judge went further to conclude that the action should never actually have been brought. However, with an eye to costs, he noted that BOS’s failure to engage with the declaration of noninfringement notice was also problematic.

The judge issued an order to stay the proceedings rather than make a striking out order. He then requested both parties to agree costs based on his views in this judgment.

UK IPO decisions

By David Pearce (Barker Brettell LLP)

Patent decisions of the comptroller can be found on the IPO website (www.ipo.gov.uk) via http://bit.ly/ipodecisions, and opinions issued under section 74A via http://bit.ly/opinion-requests

Patentability: Section 1(2)

Luther Systems

BL O/957/22

3 November 2022

The application related to a system for negotiating and executing financial derivative contracts on a distributed blockchain ledger. The examiner objected that the claimed invention was excluded as a business method and a computer program because there was no technical effect outside of the computer system on which the invention was implemented. The applicant argued that the contribution provided by the invention involved how to improve the management computer for an interest rate swap process.

The hearing officer, taking the claimed invention as a whole, considered that the contribution was a computer-implemented method of managing the use of the blockchain to negotiate an interest rate swap using a management computer.

The fundamental operation of the blockchain was not considered to be part of the contribution, given that blockchains were well known. The contribution therefore lay in using the management of an interest rate swap. Referring to Merrill Lynch’s Application [1989] RPC 561, the hearing officer considered that, if the end result was a business method, then the application was a method of doing business and the manner by which it was done would not help it. The claimed invention was a business method implemented on a computer, which must be excluded as a method of doing business. The applicant argued that there were technical features involved in the system relying on a network of computers that provided benefits including better security, increased transaction settlement speed and reduced costs. The hearing officer, however, considered that these did not change the assessment, since the contribution represented a better system to administer interest rate swaps. The application was refused.

Motorola Solutions Inc

BL O/961/22

4 November 2022

The application related to a system for maintaining a chain of custody for assets offloaded from a portable electronic device, in which each asset recorded on an asset manifest was associated with a unique identifier and a digital signature, the assets being offloaded from the asset manifest dependent on a valid digital signature being obtained.

The examiner objected that the claimed invention was excluded for being a computer program and a business method. The applicant and examiner disagreed on the contribution, which was defined narrowly by the examiner in terms of the series of steps involved in maintaining the chain of custody, while the applicant defined the contribution more broadly as an improvement in the operation of a portable electronic device in offloading digital assets in a way that ensured a valid chain of custody. The hearing officer disagreed with both, considering instead that the contribution required incorporation of the step of offloading a file, together with the various steps leading up to this. The comparison of hashes and a digital signature solved a potential problem of multiple or incorrectly uploaded assets in a system by validating an upload before a file was deleted.

The hearing officer considered that the case was similar to that in Lantana [2013] EWHC 2673, but there was a qualitative difference in that the verification process took the claimed invention beyond simply identifying and transferring a file as was the case in Lantana. The application was consequently found not to be excluded and was remitted to the examiner for further consideration.

BL O/1115/22

16 December 2022

The application related to a method of generating user-defined or user-customised apps (software applications) based on existing apps, in which existing apps were downloaded, elements of the apps extracted and then bundled to form a new app customised to user

Michael Oluwaseun Bamidele

specifications. The examiner objected that the claimed invention was excluded under section 1(2) and refused to carry out a search. The hearing officer considered that any contribution made by the claimed invention related to a computer-implemented method for generating customised apps based on a plurality of existing apps, which enabled unskilled users to create customised apps.

On considering whether any of the AT&T/CVON signposts applied, the hearing officer considered that:

1. the invention worked only within a single computer, the result of which remained within the executing device;

2. the invention related only to the functioning of apps and not the underlying computer itself;

3. the computer did not operate in a new way;

4. there was no increase in speed or reliability of the computer; and

5. the invention did not propose to solve a particular technical problem.

None of the signposts were therefore considered to apply. Taken as a whole, the claimed invention related only to a computer program and was therefore excluded from patentability. The application was refused.

Mitsubishi Electric Corporation

BL O/1113/22

16 December 2022

The application related to a computer program for operating a smart contract on a blockchain, in which an exchange was performed between first and second users via an exchange floor. The examiner objected that the subject matter of the invention was excluded under section 1(2) for being a method of doing business and a program for a computer as such.

The applicant argued that the problem the invention solved related to implementing exchange floor exchanges that were resistant to denial-of-service (‘DOS’) attacks. The examiner noted that it was not clear how the invention necessarily prevented such attacks and the description provided no details on this feature, nor was it clear to what extent the invention restricted or was more secure against such attacks. The hearing officer agreed with the examiner that the specification did not clearly set out how the invention necessarily prevented DOS attacks. The contribution was nevertheless determined to relate to a program that ensured each exchange interaction between two devices would be perfected in a system with reduced vulnerability to DOS attacks, in which a smart contract issued a virtual bond to the second user and paid back a currency amount when currency from the first user was input.

The hearing officer, considering the AT&T/CVON signposts, determined that the computer of the invention was not the arrangement of physical devices

as argued by the applicant but was in a system of terminals, outside of which there was no technical effect. The first signpost was not therefore met. The fifth signpost was also considered, but the hearing officer found that the problem being addressed did not lie outside the realm of a business method, so the problem to be solved was not technical in nature. The contribution was therefore determined to be a program for a computer as such. The application was refused.

Jayvinder Singh A/L Surjit Singh

BL O/1101/22

14 December 2022

The application related to a system for matching providers of security services, or chauffer services, with users requesting such services, in which a user module, a candidate module and an admin module running on different computing devices would communicate with each other over a communications network.

The examiner objected that the claimed invention was excluded for being a computer program and a business method as such, refusing to carry out a search. The applicant argued that the claimed invention provided a technical contribution because it did not relate to a single program running on a single computer but to three different software applications running on three different computers.

The hearing officer, referring to Lantana [2013] EWHC 2673 (Pat), considered that an invention which would be excluded under section 1(2), if implemented on a single computer, was not saved from exclusion merely by implementing the invention across multiple networked computers. The claimed invention was considered to be excluded as a method of doing business as such. Since the external process enacted by the invention was a business method, the software applications did not provide an effect on a technical process carried on outside of the computers. The claimed invention was therefore also excluded as a computer program as such. The application was refused.

Inventive step: Section 3

Sistemic Scotland Limited

BL O/980/22

9 November 2022

The application related to a method of testing for undifferentiated pluripotent stem cells (‘PSCs’) in a PSC-derived cell population for use in cell therapy, the method using a quantitative PCR test to determine the presence of two or more micro-RNAs (miRNAs) from a cluster of four miRNAs indicative of the PSCs.

The examiner objected that the claimed invention did not involve an inventive step because the skilled person would be aware of the need to minimise the presence of undifferentiated PSCs in a cell therapy product and of specific tests to detect markers such as the claimed panel of four miRNAs. The applicant argued that the skilled person would be a biologist concerned with cell therapy treatments, whereas the examiner considered that the skilled person would be concerned more specifically with cell therapy treatments derived from PSCs. The hearing officer, referring to Schlumberger Holdings v Electromagnetic Geoservices [2010] RPC 33, considered whether the notional team making up the skilled person would include both a molecular biologist involved with differentiation of PSCs and a biologist concerned with cell therapy treatments with a knowledge of PSC cells. The marriage of both would indeed be obvious, given that the problem the applicant was trying to solve was contamination of cell therapy products derived from PSCs by residual undifferentiated PSCs.

The skilled team would know that identification and removal of residual undifferentiated PSCs was required before cells could be used in therapy because failure to do so could result in teratoma or neoplasm formation. The skilled team would also be aware of methods suitable for the identification of markers on contaminating cells that could be applied to miRNAs, which were known to be present in PSCs.

The inventive concept was defined as a method of determining the presence of PSCs by assaying for specific miRNAs. The difference between the inventive concept and the closest prior art document was in the use of specified miRNAs to detect the PSCs. The question was therefore whether the skilled team would consider these miRNAs as candidates for identification of the PSCs. Such miRNAs were described in other cited documents. Referring to Pfizer’s Patent [2001] FSR 16, the hearing officer noted that the documents were all from the same technical field and there was no incompatibility. The specific miRNA cluster was considered by the hearing officer to be ‘lying in the road’ (referring to Genentech’s Patent [1989] RPC 147) because it was a well-known marker for pluripotency. The claimed invention was consequently found to lack an inventive step. The application was refused.

Peter J Mollick

BL O/1082/22

8 December 2022

The application related to a composition comprising the herb thyme for use in treatment of Covid-19. The examiner objected that the claimed medical-use invention lacked sufficiency and support in the application because the specification lacked material enabling the skilled person to determine that the medicament treated

the condition, pure assertion

being insufficient.

The applicant argued for support based on his personal experience of an assumed case of Covid-19 that was prompted by consumption of ice cream, which he treated with thyme and subsequently recovered from. The hearing officer, considering the question of sufficiency of medicaluse claims, referred to the UK Supreme Court’s decision in Warner-Lambert [2018] UKSC 56, in which the relationship between plausibility and sufficiency was considered. The hearing officer noted that a second medical-use claim could not be supported by mere assertion but must derive support from the application as originally filed, confirmed in Prendergast’s Application [2000] RPC 446. The applicant argued that, because the application disclosed some experimental evidence, the claim was more than a mere assertion and there was adequate material to satisfy the requirement for support. The hearing officer, however, considered that more than just some evidence was required. What was required was, according to Prendergast’s Application, enough material to enable the skilled person to say that the medicament did treat the condition. The threshold required was more than the mere provision of some evidence because this had to be viewed and interpreted through the eyes of the skilled person. The evidence of efficacy did not, however, require the results of a clinical trial and could be relatively rudimentary.

Based on the specification at the priority date of April 2020, the hearing officer considered that the skilled person would not accept that the illness the applicant suffered was likely to be Covid-19, since no test was done and no confirmed cases had been reported at the relevant time in the applicant’s location. The skilled person could not therefore be sure based on the application that the illness was Covid-19. It was not therefore necessary to consider whether there was adequate evidence that the consumption of thyme resulted in recovery. The hearing officer concluded that the specification did not provide enough material to enable the skilled person to come to the view that thyme actually treated Covid-19. The application did not therefore meet the requirement for support under section 14(3) and was refused.

EPO decisions

Technical Board of Appeal (‘TBA’) decisions are available on the EPO website at http://legal.european-patent-office.org/dg3/updates/index.htm and similarly decisions of the Enlarged Board of Appeal (‘EBA’) can be downloaded from www.european-patent-office.org/dg3/g_dec/index.htm. A list of the matters pending before the Enlarged Board is included at www.european-patent-office.org/dg3/g_dec/pending.htm

Recent notices and press releases of the EPO are published at www.european-patent-office.org/news/info/index.htm and www.european-patent-office.org/news/pressrel/index.htm respectively, and recent issues of the Official Journal can be downloaded from www.epo.org/law-practice/legal-texts/official-journal.html

Description amendments –Article 84 EPC and rule 42(1)(c) EPC

T 2194/19: Error-correcting code interleaver / Terayon Communication Systems, Inc.

TBA decision, 24 October 2022

Chairman: K. Bengi-Akyürek

Members: K. Peirs and F. Bostedt

This was an appeal by the patentee following a decision of the Examining Division to refuse the patent application. The interesting part of the decision relates to the requirement in the EPO guidelines for the description in the patent to be amended in line with the allowed claims.

The application concerned the transmission of communication data via interleaving using error correction. The Examining Division had refused the patent amongst other reasons because the patent described embodiments with a larger memory size than that allowed in the claims, and therefore did not comply with the requirements of rule 42(1)(c) EPC, namely that the description must disclose the invention, as claimed, in such terms that the technical problem and its solution can be understood. The Examining Division had stated that the ‘invention’ must always be the ‘invention claimed’ and the ‘invention’ was defined by the independent claims.

Citing T 944/15, the TBA disagreed that the invention must always be the invention claimed. They also held that there was no requirement in the EPC that all embodiments in the description of a patent application must fall within the scope of the claims. Such a requirement could also not be derived from the case law of the Boards of Appeal.

The TBA noted that there may well be cases where there are inconsistencies or contradictions between the claims and an embodiment of the description where a legitimate objection may be brought but such cases have to be justified by the Examining Division. A mere indication that an embodiment is not within the claims is not sufficient.

In any event, the TBA strongly disagreed that rule 42(1)(c) EPC could be used as the legal basis for establishing a broad requirement for the description to be amended to the allowed claims. The TBA stated ‘it is simply not what this provision says. Rule 42(1)(c) EPC requires that the description discloses the invention, as claimed, in such terms that the technical problem and its solution can be understood, and that it states any advantageous effects of the invention with reference to the background art… These requirements… cannot be taken to mean that all the embodiments described in the description of a patent application have to fall within the scope of the claims.’

The TBA overturned the decision and remitted the case back to the Examining Division for further prosecution.

This is yet another case from the TBA finding that there is no legal basis in the EPC for the requirement that parts of the description no longer covered by the claims should be deleted or marked as not-related to the invention (see previous decisions T 1989/18 and T 1444/20). There are a number of other cases which support the EPO’s position on description amendments, however (see for example T 1024/18, T 2766/17, T 2293/18, and T 0121/20), which means a referral to the Enlarged Board on this issue may be made in the not too distant future.

Petition for review –Article 112(a) EPC

R 0003/22 : Method for notifying interference measurement reference information, method and device for measuring interference / ZTE Corporation

EBA decision, 22 November 2022

Chair: I. Beckedorf

Members: W. Sekretaruk, B. Willems, T. Bokor and P. K. Nerdrum

The EBA considered a patentee’s petition for review of the TBA’s decision to terminate its appeal proceedings.

This month’s contributors from Bristows were Chris Stubbs, Claire Wilson and Chloe Dickson

The basis for the petition was that the TBA had failed to consider relevant submissions which indicated that the appeal proceedings had been terminated in error. The patentee asserted that this failure by the TBA amounted to a fundamental procedural defect as well as a fundamental violation of its right to be heard. The patentee had withdrawn its appeal in error, but it subsequently sought to inform the TBA of the mistake and asked that the appeal be allowed to continue. The Registrar of the Board responded that the proceedings had been closed. The patentee subsequently requested the formal correction of its error under rule 139 EPC. The Registrar’s response was that the proceedings had been terminated and that the TBA was no longer competent to deal with the case. The patentee, referring to the Registrar’s communications, then requested a reasoned decision under article 112 EPC. No decision was issued and so a petition for review was filed.

The EBA agreed with the patentee that according to article 112(a) EPC, the patentee’s petition against the TBA’s decision to terminate the appeal proceedings was admissible. In considering the allowability of the petition, the EBA interpreted the patentee’s request to correct its error to be a relevant request within the meaning of rule 104(b) EPC. For this reason, the EBA held that the TBA’s refusal to consider this request was a fundamental procedural defect according to article 112(a) EPC. The question of whether the TBA’s decision also amounted to a fundamental violation of the patentee’s right to be heard was left open. The patentee’s petition was held to be allowable and the EBA ordered that the appeal proceedings before the TBA should be reopened.

Opposition division’s alleged ‘suggestion’ to delete claims – rule 103(1)(a) EPC

T 1109/18: Consumables / Givaudan SA

TBA decision, 6 October 2022

Chair: A. Haderlein

Members: M. Ansorge and A. Jimenez

This was an appeal against the Opposition Division’s interlocutory decision to maintain EP 2 079 319 in amended form. The opponents had requested that the patent (which concerns the provision of consumables having enhanced sweetness) be revoked under article 100(a) EPC (lack of novelty and lack of inventive step), article 100(b) EPC and article 100(c) EPC. The Opposition Division decided, inter alia, that the set of claims of then auxiliary request 7, filed during the oral proceedings, met the requirements of the EPC. The decision is interesting for its consideration of allegations that the Opposition Division had advised the proprietor on claim amendments. During the appeal, Opponent 2 requested that the appeal fee be reimbursed under rule 103(1)(a) EPC, on the grounds

that there had not been the opportunity to argue against the admission of the then auxiliary request 7 and that the Opposition Division had made a suggestion to the benefit of the proprietor concerning how to successfully modify its claim requests. Under rule 103(1)(a) EPC, the appeal fee is to be reimbursed if such reimbursement is equitable by reason of a substantial procedural violation.

The TBA rejected the substantive grounds for opposition and upheld claims 1 and 13 of the main request at the oral proceedings (previously auxiliary request 13 filed with the proprietor’s reply to the opponents’ grounds of appeal). In relation to the allegation of a substantial procedural violation, the TBA did not accept Opponent 2’s argument that there had not been an opportunity during the oral proceedings before the Opposition Division to present comments against the admission of the then auxiliary request 7. The Opposition Division decision recorded that the opponents had submitted that the request was filed late in violation of rule 116 EPC.

Opponent 2 had also argued that the Opposition Division was not impartial and that it ‘actively suggested to the benefit of the proprietor how to successfully amend the claim requests’. The minutes of the hearing before the Opposition Division recorded that ‘the opposition division decided not to admit auxiliary requests 2-6 into proceedings, but to offer the patent proprietor, if he so whishes [sic], the occasion to introduce corresponding auxiliary requests without the use claims’. Later it was recorded that ‘Ch announced the decision that… AR2-6 are admitted under the condition that all use claims were deleted’.

The TBA decision emphasises the need for the Opposition Division to remain impartial and neutral, and to refrain from giving one-sided assistance in proceedings. However, the TBA also notes that the Opposition Division’s statements must be read in the context of the overall discussion, which had included comments from the opponents that auxiliary requests 2-6 should be refused as they included additional use claims. The TBA concluded that the Opposition Division was seeking to strike a balance between the interests of the parties and that while this lead to a ‘rather unfortunate’ course of events, the Opposition Division’s behaviour did not amount to a procedural violation of such severity that it could be qualified as substantial within the meaning of rule 103(1)(a) EPC.

ChristianLouboutinvAmazonEurope

GnatandCompanyvWestLakeEast

Tik Tok International v TikTokInformationTechnologiesUK

MontresBreguetvSamsungElectronics

Alan Williams Entertainments v Clarke & Ots

Au Vodka v NE10 Vodka

Puma v EUIPO; CMSCostruzionemacchinespeciali

Trade mark decisions®

Trade mark decisions

Editors: Katharine Stephens and Aaron Hetherington (Bird & Bird)

The Court of Justice of the European Union (‘CJEU’) and General Court (‘GC’) decisions can be found at https://curia.europa.eu/jcms/jcms/j_6/en. Cases marked with a * can be found at http://www.bailii.org.

Decision of the GC

Ref no.

GC

T-711/20

Puma SE v EUIPO; CMS Costruzione macchine speciali SpA

5 October 2022

Reg 2017/1001

Reported

by:

Nia Lewis

Application (and where applicable, earlier mark)

- apparatus and industrial machine tools for making all types of heat exchanger (7)

- systems and equipment for heating, air conditioning, refrigeration, heat exchange, ventilation, steam generating, drying (11)

- installation, maintenance and repair of systems, equpiment and industrial machine tools for making all types of heat exchanger (37).

(unregistered)

Comment

In opposition proceedings under article 8(5), the GC partially annulled the BoA’s decision as regards the oppositions based on the first two marks (depicting pouncing pumas), but upheld the BoA’s decision insofar as the opposition was based on the third earlier mark (depicting a pouncing puma alongside the word PUMA).

The GC agreed with the BoA that the contested mark was not similar to the third earlier mark, so there was no infringement of article 8(5).

Concerning the first earlier mark, the GC held that the BoA should have re-examined parts of the evidence of reputation submitted at first instance. Similarly, the BoA had been wrong not to further examine the opposition based on the second of the earlier marks just because it had considered the degree of similarity between that earlier mark and the contested mark to be lower than for the first of the earlier trade marks. The GC referred the case back to the BoA for re-examination.

Advocate General’s opinion on liability of online marketplaces

Christian Louboutin v Amazon Europe Core Sàrl, & Ots

A-G Szpunar for the CJEU;

Joined cases C - 148/21 and C - 184/21; 2 June 2022

Following requests for preliminary rulings in proceedings between Christian Louboutin and various Amazon entities, A-G Szpunar opined that an online intermediary could not be held directly liable for trade mark infringement as a result of third parties’ commercial offerings on its platform. A-G Szpunar set out the conditions under which, in his view, the operator of an online marketplace may be found liable for ‘use’ of a trade mark under article 9(2). Maisie Briggs reports

Background

Louboutin brought trade mark infringement proceedings against Amazon before the District Court in Luxembourg (C-148/21) and Brussels Companies Court (C-184/21). It claimed that Amazon was liable for trade mark infringement by displaying listings for and shipping counterfeit goods. Louboutin claimed that Amazon was liable under article 9(2)(a) because this constituted use of a sign that was identical with Louboutin’s trade mark, for identical goods and services to those for which the trade mark was registered, without Louboutin’s consent.

The respective courts referred a question regarding the interpretation of article 9(2) to the CJEU, namely whether the operator of an online sales platform like Amazon could be held directly liable under article 9(2) by displaying and delivering infringing goods that were placed on the market by independent third-party sellers. The referring courts noted that Amazon was not a traditional marketplace. It publishes both advertisements relating to its own goods, which it sells and ships under its own name, and advertisements from third-party sellers, which it either ships under its own name (i.e. by keeping the goods in a distribution centre), or which are shipped by the third-party sellers themselves.

The definition of ‘use’

The A-G first set out the current concept of ‘use’ under established case-law. In the case of an online intermediary, direct or indirect control of the act constituting use fell under the definition of ‘use’ for article 9(2) – only a third party with control of the act constituting use could stop it. Secondly, that the use took place under the third party’s own initiative and in its own name – in other words that the third party used the sign in its own commercial communications (i.e. a communication designed to promote its goods or services, or the activities it carries out). Typically, this second interpretation had meant that intermediaries have not been found to have ‘used’ a sign for the purposes of article 9(2). However, the A-G noted

that the case law had never discussed what would be classed as use of a sign in an intermediary’s own commercial communication, only what wouldn’t be classed as use.

The A-G stated that for an intermediary to be ‘using’ a sign in their commercial communications, they must use it in a way that somebody looking at the communication would link the sign in question with the intermediary.

Why Amazon does not ‘use’ a sign in accordance with article 9

In light of the above, the A-G answered the referred question: does the operator of an online marketplace use a third-party mark itself by displaying advertisements for and shipping independent sellers’ listings? The A-G was of the view that where an online marketplace had direct or indirect control over such advertisements, and this qualified as its own commercial communication, there would be ‘use’ for the purposes of article 9(2). However, where an online marketplace displayed advertisements that related to independent sellers’ listings (including sponsored ones that enhanced the visibility of sellers’ own advertisements), that would not count as ‘use’ because the marketplace did not have control over the products.

The A-G stated that in the referred cases, Amazon was not using the marks. The advertisements were not solely to benefit itself, but instead to support third-party users (i.e. the independent sellers). The third-party sellers had control over the use of the mark on the products. Amazon did not.

The A-G also pointed out that Amazon is a very well-known online marketplace, and for being a distributor of goods. As such, the public were aware that advertisements for goods sold directly by Amazon, and advertisements published by third-party sellers were posted – consumers would also have been aware that they could be dealing with an advertisement published by a third-party seller. Even where Amazon’s own logo appeared next to those of third-party sellers, the public would not necessarily have perceived the third-party signs as part of Amazon’s own commercial communication.

Conclusion

The A-G concluded that Amazon, in putting its logo on both third-party advertisements which unlawfully used a mark and on its own advertisements, had not used a mark for the purposes of article 9(2), on the condition that the reasonably well-informed and observant internet user did not perceive the mark in question as an integral part of Amazon’s own commercial communication. Article 9(2) could be applicable where an online marketplace directly offers products for sale and places them on the market (i.e. its own listings), although it was not the case here. Finally, the A-G stated that in some EU Member States, secondary liability may still be relevant in relation to third-party listings – that was a matter of national law.

CJEU decision

On 22 December 2022, the CJEU published its decision. It did not follow the A-G’s opinion, holding instead that

an operator of an online market place can be found liable under article 9(2) when the normally (reasonably) informed and reasonably observant user of an online marketplace has the impression that the marketplace operator is the one who sells, in its own name and on its own behalf, the goods. In particular, this may be the case where an online marketplace displays its own logo on the advertisements of third-party sellers and it carries out the storage and shipping of the third-party goods. This decision will be reported in full in due course.

Honest concurrent use

Gnat and Company Ltd & Anr v West Lake East Ltd & Anr Judge Hacon ; [2022] EWHC 319 (IPEC); 16 February 2022

In a case where a luxury restaurant in a five-star hotel sued a small take-away business in Barrowin-Furness, Judge Hacon found that, despite the businesses having operated concurrently for 12 years without any evidence of actual confusion, there was a likelihood of confusion.

Louise O’Hara reports

Background

Gnat was the owner of a series mark (the ‘Mark’), which it licensed to the second claimant (‘CTL’), which ran a luxury Cantonese restaurant named ‘China Tang’ at the Dorchester Hotel in Park Lane. In 2009, West Lake East (‘WLE’) opened a Chinese take-away in Barrowin-Furness also under the name ‘China Tang’.

Gnat’s claim relied primarily on trade mark infringement pursuant to sections 10(2) and 10(3), with a supporting passing off claim. WLE counterclaimed for partial revocation of the Mark and relied on a defence of honest concurrent use.

Partial revocation

Gnat and CTL did not resist an amendment to the specification of the Mark to delete ‘self-service restaurants’, and did not argue that the Mark had not been put to genuine use in relation to ‘cafes and cafeterias’. However, they relied upon Decon Laboratories v Fred Baker Scientific [2001] RPC 17 to argue that a fair specification based on the evidence it had submitted would have included services provided by cafes and cafeterias.

Judge Hacon agreed and took the view that cafes and cafeterias were a type of restaurant. Consequently, to have deleted them from the specification, whilst retaining ‘restaurant services’, would by implication limit the scope of ‘restaurant services’ to exclude cafes and cafeterias. That would not have been apparent to the public from the proposed amended specification and would thus have been liable to mislead. ‘Restaurant services’ was not considered to be a broad term to be split out into subsets. The Judge therefore refused the application for revocation.

Infringement pursuant to section 10(2)

Judge Hacon found that, despite WLE’s argument that takeaway food services were not the same as any of the services in the Mark’s specification (i.e. in that food is intended for consumption offpremises), there was still a close similarity between the services offered. The sign CHINA TANG used without stylisation was also found to be similar to the Mark.

WLE’s main argument was that the businesses had coexisted for 12 years and there had been no instances of confusion. Relying on CompassPublishingvCompass Logistics [2004] EWHC 520 (Ch), Judge Hacon held that the absence of actual confusion was not determinative because the Mark should have been treated as having been used across the breadth of its specification. Had the Mark been used for a low-priced restaurants, the services of which were covered by the specification, there would have been a likelihood of confusion.

Infringement pursuant to section 10(3)

Gnat’s mark

Defendants’ use

Judge Hacon found that the claimants had proven reputation geographically, by reference to a number of different press articles which were widely distributed across the country, but that they had not proven reputation economically because the single Park Lane restaurant’s share of the UK restaurant market was very small. He also found no unfair advantage or detriment to the distinctive character of the Mark, so rejected the claim under section 10(3).

Honest concurrent use

Judge Hacon went through the authorities on determining honest concurrent use and in particular noted the ten matrial factors set out by Arnold J in Samuel Smith Old Brewery(Tadcaster)vLee [2011] EWCH 1879 (Ch). These included whether the defendant knew of the

existence of the mark, and if not, whether it would have been reasonable to conduct a search (factor (i)), whether there had been actual confusion and, if so, whether the defendant knew about this (factor (vi)) and whether the defendant had sufficient justification for using the sign complained of (faction (ix)).

As a matter of principle, Judge Hacon found that a large enterprise with a trade mark department which failed to conduct a trade mark search would likely not have been acting in accordance with honest practices absent good reasons for the failure. He went on to hold that there was no principled reason for a different approach to be applied to a smaller business; even a small business should have consulted the public register of trade marks. In so finding, he was conscious that if a failure to carry out a trade mark search deprived a defendant of the defence, it would be rarely available. However, his view was consistent with that of the Court of Appeal’s when Kitchin LJ stated that instances of honest concurrent use would be ‘rare’ ( IPC Media v Media 10 [2014] EWCA Civ 1439). Referring again to Arnold J’s ten factors, (vi) was in the defendant’s favour, whereas (ix) was not. Judge Hacon therefore concluded that although he had some sympathy for the defendant, in the modern climate of easy trade mark and internet searches, if a party started to use a trading name without appropriate advice and simple searches, such use would not be honest concurrent use without some reason why it should be taken to be so. There was no such reason in this case.

Passing off

As WLE had only marketed itself and offered delivery to locals, Judge Hacon found that WLE’s restaurant would only be known to people living within a 2-3 mile radius of the take-away. The reputation of CLT, on the other hand, was likely to extend beyond Park Lane but probably not to Barrow-in-Furness. Since the public that would have been aware of each of the undertakings did not overlap, there was no risk of misrepresentation (and in any event no evidence was adduced to prove deception or even confusion), and the passing off claim failed.

TikTok distinctive of social media platform’s services

Tik Tok International Ltd (the ‘Appellant’) v TikTok Information TechnologiesUKLtd(the‘CancellationApplicant’)

Falk J ; [2022] EWHC 1220 (Ch); 18 May 2022

In an appeal by the Appellant against the hearing officer’s decision to invalidate its registration for the mark TIK TOK, the Judge upheld the decision that there was a likelihood of confusion under section 5(2)(a) with the Cancellation Applicant’s mark, TIK TOK. The appeal was consequently dismissed. Hadrien Espiard reports

Facts

The Appellant carried on an IT Consultancy and the Cancellation Applicant was a member of a group of companies that operated the well-known TikTok social media platform. The Appellant had applied to register the mark TIK TOK for compilation of information relating to information technology services in class 42 (the ‘Contested Mark’). The Cancellation Applicant applied to invalidate the Contested Mark under section 5(2) (a) based on its earlier UK trade mark registration for TIK TOK (the ‘Earlier Mark’). The hearing officer held there was a likelihood of direct confusion based on the following goods and services covered by the Earlier Mark:

• Class 9: application software; application software for smart phone; downloadable computer software applications; downloadable smart phone application (software);

• Class 38: providing access to search services of smart phone applications; providing access to peer-to-peer (P2P) sharing services; and

• Class 41: electronic publication of information on a wide range of topics. The Appellant appealed. It was common ground that the marks were identical.

Distinctiveness

The Appellant argued that the hearing officer had been wrong to find that the Earlier Mark was distinctive to a high degree. It sought to introduce a new argument that the Earlier Mark represented an onomatopoeic term referring to a metronome or clock which was descriptive of the Cancellation Applicant’s service of providing a platform for posting short videos of musical and/or dance performances online, and that the mark was therefore not inherently distinctive.

The Judge allowed this new point to be introduced because it did not necessitate new evidence or affected the way the case was run. Nevertheless, the Judge upheld the hearing officer’s view that TIK TOK was a distinctive combination of two wellknown sounds associated with time. The fact that

the combination was deliberately misspelled was a clear element of distinctiveness and indicated that the phrase was invented. This was not descriptive of music or music videos, or the goods or services relied on by the hearing officer in reaching the decision.

Comparison of the goods and services

The hearing officer had concluded that there was at least a low degree of similarity in respect of each of the goods and services for which the Earlier Mark was registered. The Judge held that these were decisions the hearing officer had been entitled to reach.

The services for which the Contested Mark was registered overlapped in their nature, purpose and users with the class 9 goods of the Earlier Mark. There was also a low degree of similarity in respect of the class 38 and 41 services. For the latter, there was overlap of users, and a low degree of complementarity because the public might have thought one undertaking was responsible for both gathering and publishing information.

Likelihood of confusion

Since the Judge upheld the hearing officer’s decision that TIK TOK was highly distinctive, and because the identity between the marks offset any low degree of similarity between the goods and services, the Judge found that there was a likelihood of confusion and therefore dismissed the appeal.

High Court finds infringement for digital watch face apps developed by third parties

Montres Breguet SA & Ots v Samsung Electronics Co. Ltd

Falk J ; [2022] EWHC 1127 (Ch); 20 May 2022

The Judge held that the use by Samsung of the claimants’ marks on watch face apps which had been made available on the Samsung Galaxy App Store for Samsung’s smartwatches amounted to trade mark infringement. This was despite the fact that the apps had been designed by third-party developers.

Robert Milligan reports

2019 by making 30 digital watch face apps available for download from the Samsung Galaxy App Store which bore the claimants’ marks (see the examples below). The watch face apps were for use with Samsung’s own smartwatches. Samsung admitted that the apps had been downloaded around 160,000 times by consumers in the UK and EU.

Facts

The claimants were incorporated and based in Switzerland, except for Glashütter Uhrenbetrieb GmbH which was incorporated in Germany. The claimants were all members of the Swatch group of watch makers. Each claimant had a distinct brand and between them owned at least 23 EU and UK trade mark registrations for brands such as Swatch, Tissot, Omega and Breguet covering, among other things, watches, horological and chronometric instruments and smartwatches.

The claimants alleged that Samsung had infringed 23 of their registrations between October 2015 and February

The marks TISSOT, BREGUET and SWATCH are reproduced in the top-centre parts of the watch faces shown above. These are only some select examples from the judgment. Although each of the apps were developed by a third party, the claimants alleged that Samsung was intimately involved in and controlled the process by which the apps had been made available in the UK and EU.

Use in an online environment

Samsung argued that it had not used the signs in the course of trade. It argued that it simply provided a vehicle, i.e. the Samsung Galaxy App Store, through which third-party app developers made apps available – therefore, it was those app developers that had made use of the claimants’ marks in the course of trade. However, the Judge disagreed and found that Samsung had used the signs in the course of trade. A key factor that led to this finding was that Samsung had marketed its smartwatches as ‘truly watch-like’ and had referred to the wide variety of watch face apps available on the Samsung Galaxy App Store.

Further, the evidence showed a symbiotic relationship between Samsung and the app developers that benefitted both parties commercially. Samsung provided material assistance to the watch face app developers through its Galaxy Watch Studio tool, and the apps were designed exclusively for, and operated only on, Samsung’s smartwatches.

The Judge consequently found that Samsung had not only provided the app developers with a technical environment or vehicle to allow the watch face apps to be uploaded, displayed and downloaded by consumers, but had a clear commercial interest in the

apps being made available on its App Store, as well as the presentation of the apps and their exclusive ability to be used with Samsung’s smartwatches.

Comparison of the marks and goods

The Judge found the marks to be identical and similar to those signs used on the watch face apps.

The Judge held that the smart watch apps (which were software goods) were not identical to the goods covered by the claimants’ registrations, namely, ‘computers worn on the wrist’, ‘electronic apparatus incorporating a time display’, ‘smartwatches’ and ‘smartphones in the shape of a watch’. However, the apps were similar to ‘smartwatches’ by reason of their complementarity. These goods were not only intended to be used together but were essential for each other’s operation.

Use in relation to the goods

The Judge held that the average consumer would have understood the use of a sign in the name of an app seen in the Samsung Galaxy App Store to be use in relation to that app and what it would represent once downloaded. By way of example, the Judge explained that an app with the name ‘Tissot Watch Face’ would have been understood by the consumer to denote that the app will produce a Tissot watch face when downloaded to the smartwatch. Therefore, it was use in relation to the software (i.e. the app) including the watch face that the app will produce once downloaded. The same analysis applied to any preview of the watch face consumers could view before downloading the app. However, post-sale context was also relevant. Once the app was downloaded and used, the position was more complex because, whilst the smartwatch owner would have known that they were wearing a smartwatch and using the app, a third party seeing the watch face might not have known that. The Judge held that a sign on a downloaded watch face appeared in the location that would be expected on a conventional watch, and on a product that Samsung had marketed for its watch-like qualities. As such, the sign had not been used solely or even primarily to denote the origin of the app, but also to denote the origin of the watch.

In light of this, the Judge found that the signs that appeared on the watch faces produced by the watch face apps were used in relation to smartwatches – these were at least highly similar to watches.

Infringement under article 9(2)(a)

Samsung argued that the signs indicated the nature of the designs rather than the origin of the apps, but the Judge disagreed. The apps did not simply produce a depiction of a watch face, like a poster of a Ferrari showing the wellknown logo on the car. When downloaded to a Samsung watch, the apps produced a watch face that looked like, and functioned as, a watch. The fact that an app might have other functionality did not affect that determination.

Therefore, the appearance of the sign on the watch face was, and was clearly intended to be, perceived as branding. Further, the fact that the apps were made available on the Samsung Galaxy App Store meant that consumers would likely assume there was some licensing or other economic arrangement with the watch maker that permitted use of the sign. A reasonably observant consumer would not have been able to ascertain, without difficulty, that Samsung did not provide the app under an arrangement with the claimants, or that there was otherwise no economic link between the provider of the app and the claimants.

Therefore, infringement was found in respect of the use of the signs on the watch faces because Samsung was using identical signs to the marks for identical goods (i.e. smartwatches).

Infringement under article 9(2)(b)

On the basis that smart watch apps were similar to smartwatches, the Judge also found a likelihood of confusion and infringement under 9(2)(b).

Infringement under article 9(2)(c)

The Judge found that the claimants had an ‘obvious’ reputation for their Omega, Longines, Tissot and Swatch marks. A reputation was also found for the claimants’ other marks with the Judge commenting that the existence of a reputation is also demonstrated by the fact that the watch face app developers were using identical and similar signs to the marks.

The Judge found that a link and injury was established in relation to the signs as they appeared on the watch faces.

Hosting defence under the e-Commerce Directive

The Judge held that the legal test was whether a diligent economic operator should have identified the illegality by reference to facts or circumstances of which it was aware. The content review process that Samsung implemented would have resulted in the reviewer, and through it Samsung, becoming aware of the app name and the appearance of the watch face. As a result, Samsung could not rely on the hosting defence because it should have been aware of the infringing use. The existence of a notice and takedown procedure did not in itself provide a defence.

Subsequently, the Judge ordered an injunction and refused to stay it pending appeal ([2022] EWHC 1895 (Ch)). The Court of Appeal was due to hear the appeal in December 2023.

Passing off and bad faith: use of a band name

Alan Williams Entertainments Ltd & Anr v Clarke & Ots

Ms Treacy sitting as a Judge of the Chancery Division; [2022] EWHC 1798 (IPEC); 13 July 2022

The claimant successfully argued that the defendants had committed the tort of passing off in relation to their use of the band name THE RUBETTES for live music events, merchandising, music sales and associated goods and services. It was also held that the defendants’ UK trade mark registration had been filed in bad faith. Maisie Briggs reports

BACKGROUND

The name THE RUBETTES was first used by a pop band in 1974. Between 1974 and 1976, the band traded through a company called The Rubettes Ltd, which ceased trading in 1977. Each of the band members had one share in the company. In 1976, a company named Rubettes (1976) Ltd was incorporated, with all band members also having one share. In 1983, Rubettes 1976 Ltd was also dissolved, after which business was carried out by one of the band members, Alan Williams, under the entity Alan Williams Entertainments Ltd (‘AWEL’), with Mr Williams and his wife being the only directors and shareholders. When the band performed and toured under the name THE RUBETTES, AWEL made the bookings and paid the expenses. The band members were paid a fee per performance by AWEL.

In 1999, another member of the original band, Mr Hurd, set up a separate band also under the name THE RUBETTES. This resulted in litigation between Mr Hurd and Mr Williams/AWEL, which was settled in 2002. Under the settlement agreement, it was agreed that, from 31 December 2002, Mr Williams and AWEL would trade as ‘The Rubettes featuring Alan Williams’, while Mr Hurd would trade as ‘The Rubettes featuring Bill Hurd’. However, Mr Williams did not always use the name as agreed and occasionally performed under the original name THE RUBETTES.

The evidence showed that throughout the band’s various iterations, revenue had always been paid to a corporate entity rather than to any individual. The corporate entity made the bookings, and the individuals were paid a fee per performance from money held by the company.

In 2018, Mr Clarke, a member of Mr Williams’ band, applied to register THE RUBETTES at the UK IP Office. The mark was registered in classes 9, 35 and 41 on 11 January 2019 (the ‘Registration’). Subsequently, in March 2019, Mr Clarke and two other band members, Mr Richardson and Mr Etherington, formed a band called RUBETTES using the logo below. Mr Clarke and Mr Williams had a disagreement prior to this, so Mr Williams was not involved with this new band. Mr Williams had also moved to Australia.

AWEL and Mr Williams issued the present proceedings against Mr Clarke, Mr Richardson and Mr Etherington. It was claimed that AWEL and Mr Williams were the owners of goodwill in the name THE RUBETTES and in the name ‘The Rubettes featuring Alan Williams’ (the ‘Rubettes Names’) when used in relation to live music events, merchandising, music sales and associated goods and services. As a result, they claimed that since none of the defendants owned any goodwill associated with the Rubettes Names, their involvement in a band using the name THE RUBETTES since late 2018 amounted to passing off. The claimant also claimed that the Registration was invalid because it had been applied for in bad faith.

The defendants argued that there was no agreement as to how the goodwill generated by the band should be owned, and that therefore that the goodwill was owned by the members of the band jointly and severally.

PASSING OFF

The Judge took the elements of the passing off trinity in turn.

Goodwill

The Judge found that originally, the goodwill in the name THE RUBETTES accrued in the company Rubettes (1976) Ltd, because goodwill was generated by trade. None of the band members individually accrued any goodwill in the name. When the company had been dissolved in 1983, the goodwill owned by the company for the years it had been active passed to the Crown as per the Companies Act.

The Judge found that from 1984 Mr Williams and AWEL had established goodwill in the Rubettes Names because they had continued to trade under them and were responsible for the band’s business arrangements. The other band members did not promote the band during this period, and the defendants had not traded under THE RUBETTES or similar until 2018 when they sought to promote a band separately from AWEL, so they did not own goodwill.

The defendants argued that the 2002 settlement agreement prevented AWEL from trading as THE RUBETTES because it was only allowed to trade as ‘The Rubettes featuring Alan Williams’, so AWEL had only acquired goodwill in that name. The Judge disagreed, stating that the settlement agreement did not mean that either party had abandoned its rights against third parties in any goodwill it may have owned. The Judge noted that the claimant had in fact performed under the name THE RUBETTES after the settlement agreement – even though that may have been a breach of contract, it also showed that the claimant would have sought to continue trading under THE RUBETTES.

The Judge pointed out that although Mr Williams had moved to Australia in 2018, that in itself did not mean that he had abandoned any goodwill in the Rubettes Names. Mr Williams continued to trade under the Rubettes Names, flying back from Australia to perform, albeit with a different band line-up.

Misrepresentation and damage

The defendants admitted that they had used the name THE RUBETTES from 2018. They used the name when performing, and in domain names and social media accounts. They also had also applied for the Registration in October 2018. The claimant had evidence to show that promoters had chosen not to book them due to possible confusion with the defendants, who were also performing under the name THE RUBETTES. From the claimant’s evidence, the Judge held that the defendants’ use of THE RUBETTES had caused confusion and damage to the claimant.

It was held that just because the original band members performed together, it did not necessarily mean they had a right to use the band’s name. Where goodwill in a band name had been accrued by a business over time, that goodwill could have prevented others, even individual band members, from using the name. As such, since the goodwill had been accrued and owned by AWEL, it was held that, whilst the defendants could describe themselves as former members of The Rubettes, their use of THE RUBETTES damaged AWEL’s goodwill by misrepresenting that there was a connection between their activities and AWEL. The claim in passing off was therefore successful.

Bad faith

The Judge held that at the date of the UKTM application:

• The defendants had been aware of Mr Williams and AWEL’s activities under the Rubettes Names and did not have a genuine belief that they were abandoning their business in the UK;

• The defendants did not tell the claimant about their plans to set up a competing band or to apply for the Registration;

• The defendants had no reasonable grounds to believe that the Registration was necessary to enable them to work;

• The defendants had used the mark to interfere with the activities of AWEL and Mr Williams by writing to venues working with them raising the prospect of litigation by relying on the Registration;

• The defendants’ explanation of the correspondence showing they used the Registration to raise the prospect of litigation was completely new evidence; and

• Mr Clarke gave unconvincing evidence and failed to mention the correspondence above in his written evidence, which cast light on his intentions at the application date of the Registration.

As a result, it was held that the Registration had been applied for in bad faith, and therefore it was invalid.

Passing off case relating to the shape and get-up of a bottle

Au Vodka Ltd v NE10 Vodka Ltd & Anr Mellor J; [2022] EWHC 2371 (Ch); 21 September 2022

The Judge refused an interim injunction in a passing off case brought by Au Vodka against a competitor, NE10 Vodka, in which it claimed that the newly launched range of NE10 vodkas was being marketed and sold in deceptively similar shaped bottles and get-up. Katharine Stephens reports

The rival products

The Au vodka products were launched in 2015 and flavoured vodkas were added to the range in 2019/2020. The vodka was sold in gold metallised bottles with Au79 VODKA in an embossed square label on the front, and beneath it a lower rectangular plate also with embossed writing – see below (save that there was no black line running down the centre of the bottles). The flavours were indicated by different coloured covers to the bottle stoppers.

xxxxxxxxxx

About a month before the hearing for an interim injunction, Au Vodka became aware that NE10 Vodka was intending to launch its NE10 vodka product. Two of NE10’s vodkas (plain and blue raspberry) are shown below next to the Au equivalent – all the NE10 bottles were similarly metallised, but none were gold.

Passing off: goodwill

The Judge had no doubt that Au Vodka had a reputation in the appearance of its products. However, the big question was: in what did the reputation reside?

He proceeded on the common-sense basis that, generally, consumers were not in the habit of making assumptions about the origin of products on the basis of the shape of products in the absence of any graphic or word element. He used the word ‘generally’ to indicate that evidence could be capable of establishing the contrary proposition on particular facts.

Unlike in the Jif Lemon case (where the embossed word Jif was not easily legible and the labels around the necks of the lemon shaped bottles were taken off shortly after purchase), the Judge could not disregard the labelling. The evidence suggested that the claimant’s labelling was noticed because consumers referred to it as ‘Au vodka’ and not ‘the gold vodka’ or ‘the one in the gold bottle’. (The evidence also provided strong support for the proposition that the NE10 labelling did not go unnoticed by consumers, such that the products would be referred to as ‘NE10 vodka’.)

In an application for an interim injunction, the Judge did not have to conclude precisely in what features the claimant’s reputation resided, however, he believed it was the name ‘Au’ and ‘NE10’, followed by the metallised gold bottle, plus an indication of the flavour.

Misrepresentation

The Judge’s view was that consumers would notice the distinct similarity in the shape of the bottles. However, this and possibly some of the other similarities claimed by Au Vodka, was outweighed by the word/graphic elements on the respective bottles: ‘Au’ and ‘NE10’ and the fact that none of the NE10 bottles was gold.

The Judge rejected Au Vodka’s argument that consumers would rely on the similarity of the embossed plates or the conceptual similarity between the use of the chemical symbols and atomic numbers for gold and neon.

He noted that his view chimed with the evidence which, at its highest, showed that some consumers would believe that NE10 vodka came from the same stable as Au vodka – but there was no evidence that people were actually deceived.

Interim injunction

The Judge went through the American Cyanamid criteria finding, in particular, that following his conclusions on misrepresentation, although there might be a small number of instances of deception, damages would be an adequate remedy for Au Vodka if no injunction was granted pending trial. Conversely, since NE10 vodka had already been launched, damages would not be an adequate remedy for NE10 Vodka if an injunction was granted pending trial.

The Judge therefore declined to grant an interim injunction, but ordered that the trial should be heard on the earliest date available in January 2023, four months from the hearing.

Stephen James Wise 1950-2022

Stephen Wise passed away at home on 4 August 2022 following a ten-year battle with cancer.

Stephen was born in Forest Hill, South London, in August 1950. He was the youngest child of Ralph Wise, a solicitor, and his wife Elsie, and a brother to their elder son, Andrew. The family moved to Orpington, Kent, where Stephen attended the local primary school until the age of eight. He then continued his education at St. Dunstan’s College, Catford, travelling there by train from the family home.

From an early age, and throughout his life, Stephen enjoyed understanding how things worked and repairing items that weren’t working properly. As a result of these interests, his father thought that he would become a car mechanic.

In his final year of sixth form, Stephen obtained a place at Downing College, Cambridge, to read Chemical Engineering. He then spent the rest of that academic year working for the Gas Council London Research Station in Fulham. It was at Cambridge that he met his future wife, Patricia.

Stephen graduated at the time of the oil crisis in 1973, when jobs in chemical engineering were scarce. However, an acquaintance of his father told him about patent work. He subsequently took a job with Boult, Wade & Tennant in London, where he obtained his European patent and trade mark attorney qualifications. During his time at Boult, Wade & Tennant, Stephen reached another milestone in his life, marrying Patricia in 1979.

After 11 years at Boult, Wade & Tennant, Stephen decided that he needed a fresh start and in 1984 he joined a small firm in Croydon, South London, called Raworth Moss & Cook. This move may have been assisted by Stephen’s lifelong interest in playing golf, an interest that he shared with Raworth’s senior partner. Four years later, he became a partner, with overall responsibility for the trade mark department, and in 2000 he became joint senior partner.

I met Stephen in 2003 when he gave me my first position as a trainee patent attorney at Raworth Moss & Cook. One of the first things that I noticed about Stephen was his height (he was 6ft 5ins tall). This meant that when I joined him on client visits or trips to the EPO, I often found myself struggling to keep up with his long stride pattern! Stephen was always generous with his time when training me, despite his other responsibilities within the firm. He was a very exacting supervisor, which

definitely kept me on my toes. In later years, I continued to consult Stephen, who was always happy to discuss a particularly difficult legal or technical problem.

Following the financial crisis of 2007, it was with a heavy heart that Stephen reached the conclusion that Raworth Moss & Cook could no longer continue as an independent entity. The firm was sold to Murgitroyd in 2009. Stephen continued to work at Murgitroyd until his retirement in 2012, ensuring that there was a smooth transition of staff and clients to the new firm.

Gordon Stark, CEO at Murgitroyd, described Stephen as ‘the personification of the traditional patent attorney… knowledgeable, diligent and abundantly professional. Stephen set a high standard for others to follow and was very giving of his time, knowledge and experience to support colleagues to attain that standard’. A longstanding client, Paul Lyon, former Director of R&D at Luxfer MEL Technologies, recalled his ‘friendly and helpful approach’, describing him as ‘a kind and honourable man’.

Stephen maintained an active life outside of work. He was a member of both the Patent Agents’ Golfing Society and the Golfing Society of the Croydon & South London Chamber of Commerce. He enjoyed playing tennis, and also alternated between being secretary and chairman of a local swimming club. He took an interest in the natural world, belonging to one group that maintained a nearby pond, and another that looked after a local area of woodland. After retiring, he became secretary of the local allotment site where he and Patricia had rented a plot since 1998, liaising with the council and showing potential plot holders the site.

Stephen is survived by Patricia and their three children, Matthew, Richard and Catherine.

Paul Andrews, Murgitroyd

& Company

IP Inclusive update

BY ANDREA BREWSTER OBE

Our first event of 2023 was, appropriately enough, a joint webinar with CIPA. ‘Enhancing diversity in the patent profession: how can I help?’ on 17 January looked at how individual IP professionals can help young people access professional careers. We were joined by representatives from the social mobility charities Generating Genius, In2scienceUK and The Access Project, who talked about opportunities for tutoring, mentoring and otherwise helping STEM students to develop and fulfil their ambitions. We also heard inspiring stories from patent attorneys who’ve worked with the three charities, all keen to stress how rewarding their experiences had been. There will be a report in the March CIPA Journal

If you missed the live webinar and you’re looking for ways to ‘give something back’, please contact CIPA’s CPD team for access to the recording. Or consult the Careers in Ideas directory of outreach organisations at https://ipinclusive.org.uk/resources/careers-inideas-directory-of-outreach-organisations/. Our other events in January and early February included a hybrid coffee date with our Scotland Network on the theme of ‘unconscious bias’, kindly hosted by Murgitroyd in Glasgow and online; and another of our Inclusivity Unlocked! webinars. ‘(Office) space: the final frontier?’ was about redesigning and optimising workspaces in the wake of the Covid-19 lockdowns.

Communities update

IP & ME have also run their first 2023 event already: a relaxed dinner at BAO Kings Cross to celebrate the start of the Lunar New Year. IP Futures, our community for early-career IP professionals, will be running a hybrid panel discussion later in February, hosted by HGF in London and online. Aptly entitled ‘Thrown into the deep end – Finally qualified, what now?’, it will tackle the often difficult transition from student to qualified professional, with insights from panellists who are themselves ‘in at the deep end’.

IP Out’s next event will be a social gathering in London: details below. Also look out for Women in IP’s next coffee date and the results of IP Ability’s latest survey (thank you to everyone who took part in that).

IP Inclusive is open to all UK-based IP professionals and those who work with them. For more information, visit our website, www.ipinclusive.org.uk; follow us on Twitter (@IPInclusive, @ipinclusiveIPME, @IP_Ability, @ip_out, @WomeninIPI, @CareersInIdeas) or join one of our LinkedIn groups. And if you’re interested in getting involved, please email contactipinclusive@gmail.com.

To keep abreast of everything we’re doing, join our mailing list: there’s a ‘Stay in touch’ form on the website.

Our regional networks

At the moment we have four regional networks: Midlands, North of England, Scotland and South West. They’re keen to offer more opportunities for their local IP Inclusive supporters to share ideas, boost one another’s EDI efforts and generally build new friendships and professional networks. We’re conscious that the idea of a ‘regional’ base means something different in the new hybrid working environment, so we’re open to suggestions about the types of events and resources the networks should provide. Please get in touch if you’ve any ideas or would like to get involved (contactipinclusive@gmail.com). The networks’ committees would love to recruit more members, especially paralegals, business support professionals and early-career professionals who work in IP.

Pledge Prattle

In late January we held our third ‘Pledge Prattle‘ session, for our Senior Leaders’ Pledge signatories and their colleagues. This month’s informal chat covered modern-day EDI policies. Discussions revealed some fascinating insights and ideas for going beyond the old-fashioned equality policy, and for ensuring the results are meaningfully implemented.

If you’re in a senior role and you’re keen to champion EDI in your organisation, please do consider signing up to the Pledge: see https://ipinclusive. org.uk/the-ip-inclusive-senior-leaders-pledge/

Summer of IP 2023

Our Summer of IP campaign is progressing. We’re planning several introductory events from Careers in Ideas, but the rest is up to you. Can your organisation provide some kind of activity to help us attract and support a wider range of recruits, for example a ‘taster’ day or half-day, a work experience placement (however brief), a mentoring opportunity or even just a short talk? If you were inspired by the January webinar to do something for disadvantaged young people, this is the perfect way to make a practical contribution. It will also help you access a more diverse talent pool and boost your recruitment efforts.

Summer of IP will run from early July throughout the summer. Visit https://ipinclusive.org.uk/careers-in-ideas/summerof-ip-2023/ for more information, a prospectus and the activity providers’ registration form complete with ideas for taster sessions. Or contact me directly if you prefer.

In the events calendar…

Here’s what’s in our calendar for the next month or so. Keep an eye on our website events page for more details and others as they’re added.

Wednesday 15 February , 5.30 for 6 pm

‘Thrown into the deep end – Finally qualified, what now?’ A hybrid event with IP Futures to discuss the transition from student to qualified professional. In London and online.

Tuesday 28 February , 6 pm till late

Spring into Spring with IP Out at the ZODIAC bar in London: a night of networking, catching up, singing (yes, there will be FREE karaoke) and even dancing if you’re up for it! Allies welcome.

Thursday 9 March , 12.30 pm

Save the date for our joint IP Ability and CIPA webinar about online accessibility. Another in our Inclusivity Unlocked! series, this will explore how websites and online systems can be made more user-friendly for disabled (including neurodivergent) people.

Wednesday 22 March , 4.30 pm

An Inclusivity Unlocked! webinar about supporting colleagues who are going through the menopause or perimenopause; again, please save the date and we’ll post details as soon as we can.

Monday 27 March , 12.30 pm

Another Inclusivity Unlocked! save the date , this time for a webinar with LawCare about working cultures and their impact on mental health.

Tuesday 28 & Wednesday 29 March , 9.15 am – 5 pm Online mental health first aid course provided by Illuminate VR at a discounted rate for IP Inclusive supporters.

Tuesday 18 April , 10 am – midday

‘All aboard! - IP Inclusive’s 2023 annual meeting’. Help us celebrate our progress and plan for the next 12 months. Everyone welcome!

For an up-to-date listing of Inclusivity Unlocked! events and resources, visit https://ipinclusive. org.uk/resources/inclusivity-unlocked/.

Andrea Brewster OBE is Lead Executive Officer at IP Inclusive.

The Yellow Sheet

Here are some notices for CIPA Student members from the Informals Committee. Also see the timetable for the 2023 Foundation lecture series on page 57.

Wellbeing Coffee Club 2023 dates

The Wellbeing Coffee club is a very informal chance to (virtually) grab a coffee (or other suitable beverage) with other trainees around the UK. You may meet new people, you may see familiar faces – the point of this series is to help maintain old relationships, and build new ones, within the trainee community, all while promoting informal discussion around health and wellbeing.

Each Coffee Club will last just 30 minutes, with a fiveminute introduction in a main room, followed by two ten-minute conversation sessions in breakout rooms with two or three other trainees, and a quick roundup at the end. Each Coffee Club will have a rough topic for people to discuss, such as coping with the darker days, dealing with stress, work/life balance, etc, but ultimately, it’s up to each group what they want to talk about.

The Coffee Club series will run once a month, with the day and time changing each time, so as to allow as many different trainees to join as possible.

The Coffee Club dates for 2023, up until the October exams, are below. Please visit the Yellow Sheet Blog (https://yellowsheet.wordpress.com) to download a calendar invitation that will add the whole series into your calendar including the meeting link.

Wacky Patent

US Pat. No. 6929164

Submitted by: Joel David Briscoe

We live in an age where some value organisation over intelligence. Accessories define the organised person, and if you’re overwhelmed by your organisational accessories, then there are other accessories designed to help you organise those organisational accessories. Ad infinitum.

• Monday 16 January, 11-11.30am

• Thursday 16 February, 1-1.30pm

• Wednesday 22 March, 10.30-11am

• Friday 14 April, 3-3.30pm

• Tuesday 16 May, 12-12.30pm

• Monday 19 June, 10-10.30am

• Thursday 13 July, 11.30am-12pm

• Tuesday 15 August, 2-2.30pm

• Wednesday 13 September, 11-11.30am

• Thursday 5 October, 10-10.30am

We hope to see you there!

Meet the team

Dorà Matè, Events and Professional Development Officer

What are your present duties at CIPA?

Providing support to committees focusing on education and professional development (Education Committee, IP Paralegal Committee).

• Full administrative support and running of the IPPC (Introductory Patent Paralegal Course).

• Development, full administrative support and running of the APPC (Advanced Patent Paralegal Course).

• Planning and delivery of CIPA’s events, including seminars, webinars, regional and other educational and social events.

• Assist the Membership team as and when needed.

When did you join the Institute? May 2022.

What do you like most and least about the job?

I really enjoy the variety, no two days are the same in this role. This

is also the most challenging aspect of my job, but very rewarding.

How do you like to spend your time outside work?

I started Hungarian folk dance when I was three, and I have continued practising it in London.

What is your favourite food?

Hungarian layered potato casserole. (Happy to send a recipe!)

What is your favourite drink? Coffee.

What is your favourite place you’ve visited? Istanbul and Rome.

What place would you most like to visit? Cuba.

The person you most admire or would like to meet, and why?

Mark Hamill – he is an incredibly talented and humble person.

What is the best piece of advice you’ve ever been given? Do or do not, there is no try.

What would you do if you won the Lottery?

I would fund research on green energy, and I would probably buy a villa somewhere nice and hot.

What would you do if you became Prime Minister? I would introduce mixer taps to all households.

What is your favourite film and/or book?

Film: The Lord of the Rings

Book: Harry Potter and the Prisoner of Azkaban.

What are three words you’d use to describe yourself? Creative, organised and communicative.

Where would you like to be in five years? In the villa I bought with the Lottery money.

CPD seminars, webinars and social events

For a complete list of CIPA events please see the website – www.cipa.org.uk/events.

Strategies for the UPC: from tech start-up to big pharma

Webinar

Tuesday 31 January 2023 • 12:30-13:30

CPD: 1 • £66.67

• Free for CIPA members

This long-awaited panel session brings together representatives from across industry to give their views on the unitary patent and the UPC. Originally scheduled as part of (the unfortunately cancelled)

In-house attorneys from BAE, IBM and MSD are joined by private practice attorneys to discuss strategy options for the new system in their respective technology fields, and to comment on how these strategies might vary for different types of clients, from start-ups and SMEs through to multinationals.

Speakers : Belinda Gascoyne (IBM EMEA & AP), James Horgan (Merck Sharp & Dohme LLC), Rachel Bateman (D Young & Co)

Tips for EPO Appeals Proceedings

Webinar

Tuesday 7 February 2023 • 12:30-13:30

CPD: 1 • £66.67

• Free for CIPA members

The 2020 Rules of Procedure of the Boards of Appeal have been in force for three years. This webinar will include a practical overview of points to remember in order to optimise your case on appeal.

Speakers : Lucy Samuels, John Fisher (Gill Jennings & Every LLP)

Updates on China and Hong Kong IP practices

Webinar

Tuesday 14 February 2023 • 12:30-13:30

CPD: 1 • £66.67

• Free for CIPA members

Another year has passed, and there has been many changes in the China and Hong Kong patent practices, including:

• China’s crack down on abnormal patent filings.

• China’s first drug patent linkage decision. Changes to China’s patent practice to bring it more in line with the rest of the world, including:

restoration of priority;

– correction of application filed based on incorporation by reference of the priority document; – finalising partial design practice; and

abolish 15-days mail period.

• Hong Kong’s purge of unqualified ‘agent on records’.

Speaker : Toby Mak (Tee & Howe)

UK IPO Search Symposium

Webinar

Thursday 16 February 2023 • 12:30-13:30

CPD: 1 • £66.67 • Free for CIPA members

Back by popular demand, this webinar gives an unparalleled insight into what really happens when a UK application moves through the searching stage, or when a request for a search at the UK IPO is made. How do examiners really use the claims in deciding how to search your application, and how might this impact on your drafting? How does the approach of the IPO differ from the EPO, and how might you be able to use this knowledge to your advantage for your clients? Searching at the IPO is significantly more economical than at some other Patent Offices, and this webinar unpicks why. You choose which breakout room to attend for practical search demonstrations by IPO experts in your chosen technical field to make the most of this opportunity.

After a brief introduction to the search tools use at the IPO, attorneys will have a choice of breakout rooms to view a worked example of a search, followed by a Q&A with the examiner. There is a choice of one of five subject specific rooms:

• Video Encoding chaired by Andrew Rose;

• Pharmaceuticals chaired by Natalie Cole;

• Biotechnology chaired by Katie Harbach;

• Excluded Business Methods (and Robots) chaired by Rob Valkass;

• Mechanical Connectors chaired by Michael Shaw

All presentations will cover the tools and techniques IPO examiners use during a search, as well as claim

interpretation. The excluded matter presentation also covers how they decide to whether or not to carry out a search in the first place.

Speakers : Peter Mason, Stephen Otter, Rob Valkass, Dr Natalie Cole, Dr Andrew Rose, Katie Harbach, Michael Shaw (UK IPO)

The UP and UPC from a paralegal perspective

Webinar

Tuesday 28 February 2023 : 12:30-13:30

CPD: 1 • £66.67 • Free for CIPA members

This webinar aims to cover the basics of the Unitary Patent and Unitary Patent Court from a paralegal perspective. It will include topics such as:

• An introduction to the Unitary Patent.

• Transitional measures.

• The sunrise period (opt-outs).

• Procedural implications; forms, fees, and translations.

• An introduction to the Unitary Patent Court.

• A discussion of the possible advantages and disadvantages of the system.

The webinar will be a pre-recorded one but our speaker will be available to answer questions at the end.

Speakers : Charlotte Knight (Slingsby Partners LLP)

An Introduction to Standards, Standard Setting Organisations and Standard Essential Patents (SEPs)

Webinar

Thursday 2 March 2023 • 12:30-13:30

CPD: 1.0 • £66.67 • Free for CIPA members

An introduction to the basics of what standards are, how they created and how patents relate to them. It will also briefly touch on the legal issues surrounding these patents – known as standard essential patents.

Speakers : Adrian Howes (Nokia), James Seymour (EIP)

Mental health matters; finding a balance

Webinar

Tuesday 28 March 2023 • 12:30-13:30

CPD: 1 • Prices: £66.67 • Free for CIPA members

This 60-minute session is aimed specifically at those working in ‘support’ roles; e.g. administrative staff, IT support, paralegals. We will be exploring:

• Why looking after your mental health at work is important.

• Results from the IP Inclusive/Jonathan’s Voice Wellbeing in the workplace survey 2022.

Regional Meetings 2023

Yorkshire – Leeds

Thursday 23 February

Radisson Blu Hotel, The Light, The Headrow, Leeds LS1 8TL

Merseyside – Liverpool

Thursday 9 March

Innside By Melia, 43 Old Hall Street, Liverpool L3 9PP

East of England – Cambridge

Thursday 23 March

Clayton Hotel, 27-29 Station Rd, Cambridge CB1 2FB

Wales – Cardiff

Thursday 20 April

Voco St. David’s, Havannah Street, Cardiff CF10 5SD

Scotland – Glasgow

Thursday 18 May

Hilton Grosvenor, 1 -9 Grosvenor Terrace, Glasgow, G12 0TA

Midlands – Birmingham

Thursday 25 May

Clayton Hotel, Albert Street, Birmingham, B5 5JE

• What next? Finding a balance.

• Some ideas for protecting your mental health and wellbeing.

There will be the opportunity for an optional ten-minute mindfulness practice after the end of the main session.

Speaker : Penelope Aspinall (Jonathan’s Voice)

Trade mark registration in China

Webinar

Tuesday 4 April 2023 • 12:30-13:30

CPD: 1 • £66.67 • Free for CIPA members

Trade mark registration strategy for China – Practical tips to navigate the complexities in the trade mark system. It is no secret that China is the most difficult jurisdiction in the world to secure a trade mark registration. Whilst China continues to top global trade mark application numbers in recent years, will your applications be one of the successful ones amongst almost 8 million marks on the register? In this talk, we will discuss the practical tips to maximise the chances of successfully registering your trade marks; ways to broaden your trade mark protection in China as bad faith filings continue to be a serious problem to foreign entities trying to secure trade mark protection in China. We will also talk about China’s efforts in cracking down on bad faith filings.

CITMA members can also book on this webinar, email cpd@cipa.org.uk.

Speakers : Hank Leung and Stephanie Ning (Bird & Bird)

Doctrine of equivalents: equivalence in Europe?

Webinar

Tuesday 25 April 2023 • 12:30-14:00

CPD: 1.5 • £66.67 • Free for CIPA members

Although the UK lately came into line with its own version of a doctrine of equivalents embracing Article 69 EPC and its Protocol, we still see significant differences between claim interpretation approaches across Europe. Here, our panel covering Germany, Netherlands, France and UK will look at comparative practices covering issues including discrepancies between novelty and infringement interpretation, adoption of the Formstein Defence and effects of file wrapper estoppel, based on a practical example. Spoiler alert: there’s no great equivalence between our approaches to the doctrine of equivalent!

Speakers : Gwilym Roberts (Honorary Secretary, CIPA), Dominic Adair (Bristows LLP), Daan de Lange (Brinkhof), Kai Rüting (Vossius & Partner), JeanHyacinthe de Mitry (Gide Loyrette Nouel)

Student Conference

Birmingham

Thursday 27 April 2023 • 09:30-19:00

CPD: • £115

Malmaison Hotel, 1 Wharfside Street, Birmingham B1 1RD

We are happy to announce the second CIPA Student Conference will now be held on Thursday 27 April 2023 at the Malmaison Birmingham.

The conference is tailored specifically for our student members who are no longer new starters. Working together with the Informals Honorary Secretary, we have put together a programme we hope provides useful information and support for our trainees regardless of how far down the process of becoming qualified they are. Sessions and speakers include:

• Post Qualification Guidance Panellist

Discussion - Philip Lenden, Simplify IP and Rose Hughes, AstraZeneca

• Introduction to Informals & IPReg

- Kathryn Taylor, Ocado

• Building Business Relationships

- Michael Evans, BDforIP

• Managing Stress - Penelope Aspinall, Jonathan’s Voice

• The New EQE - Julia Gwilt, Appleyard Lees

Semiconductors: how the industry has changed and implications for IP strategies

Webinar

Tuesday 16 May • 12:30-13:30

CPD: 1 • £66.67 • Free for CIPA members

Global chip shortages have pushed semiconductors firmly into the public eye. During the Covid-19 pandemic we saw a surge in demand for semiconductors. This increase in demand combined with the disruption caused by the pandemic demonstrated the fragility of semiconductor supply chains. This has led many governments to offer significant funding and other incentives to companies in the sector to improve domestic supply chain resilience. In addition, China and the US are clashing over semiconductor technology, with the US implementing various restrictions on the export of key technologies.

What does all this mean for IP? In this webinar we’ll take a closer look at the semiconductor sector and the issues that have arisen since the start of the pandemic. We’ll examine how IP is used to protect semiconductors and some of the key challenges that exist. We’ll look at how IP strategies need to adapt in the face of a changing industry. Finally, we’ll examine some of the trends emerging in patent filings and litigation in the sector.

Speaker : Andrew Thompson (EIP)

London Happy Hour

Wednesday 1 March 2023 • 18:00-19:30

Free for CIPA members

Editor’s Tap, 5-11 Fetter Lane, London, London EC4A 1BR

Come and join fellow CIPA Members at the first London Happy Hour event of 2023 at the Editor’s Tap on Fetter Lane. Places are limited so please book your place now. www.cipa.org.uk/events/london-happy-hour-2023

Foundation lectures 2023

Foundation Lectures have recently started! They run every Tuesday at 17:30 from the 10 January to 25 July 2023 , generally in person (CIPA HQ in London: 2nd Floor, Halton House, 20-23 Holborn, London EC1N 2JD) and live online (via Zoom) with recordings available afterwards.

The Informals Committee organises a series of Foundation Lectures each year, running from January through to the summer. Each lecture focuses on a specific topic which is of relevance not only to examinations, but also to day-to-day practice for a trainee patent attorney. The lectures are designed to introduce trainees to some of the key topics which are useful in day-to-day work and which form part of the Foundation exams.

All of the lectures are recorded, so that you can listen to them at your leisure and as often as you like. The recordings and slides are available via the Lecture Archive on the CIPA website (www.cipa.org.uk/lecture-archive). Please invite your fellow trainees and we’ll see you there!

Information Sources in Patents

4th Edition | Stephen Adams |

ISBN: 9783110552263 | 663 pages

Information Sources in Patents can be purchased directly from the publishers (Walter de Gruyter GmbH), at www.degruyter.com/ document/doi/10.1515/9783110552263/html or via several of the Amazon websites, including amazon.com, amazon.co.uk and amazon.de.

The body of patent literature is now vast and continues to grow every year. As an indication, the European Patent Office indicates that the Espacenet database currently includes over 130 million patent documents. These documents are available online to download. The body of patent literature represents one of the largest resources not only for technical information, but also legal and commercial information. The tasks of managing, searching and utilising such a vast and increasing collection of documented information are a major undertaking and are becoming more complex and burdensome as time progresses.

Information Sources in Patents sets out to provide a guide to the resources available for searching in patent documents, in particular the sources of patent information. This information includes not only patent specifications themselves, but also official and some unofficial databases, both electronic and manual, providing bibliographic and legal information.

Part I begins with an overview of patent processes, with an emphasis on aspects of patent documentation, such as languages. This part continues with a review of the major patent systems around the world, before moving on to consider the systems of many other countries. Each patent system is provided with a summary of its history and details of its current laws and practice.

These sections provide not only valuable information regarding the patent documents produced by each system, but also a fascinating lesson in the history of patent systems around the world. For example, as a patent practitioner, it is interesting to note that Chile has one of the oldest established patent law regimes in South America, dating from 1840. It is above all important to note that Part I provides an impressive collection of information regarding patent documentation and highlights the different approaches taken by patent offices around the globe to patent publications.

Part II concerns databases and search techniques, beginning with a detailed review of the various databases existing for patent documents. In the modern age, it is easy to believe that all the documents are available electronically or online at the click of a

button. However, Part II makes it clear that this is very much not the case. In many cases, patent documentation is still maintained in paper form. In some countries it is necessary for changes to be made in the relevant law to permit patent offices to maintain electronic-only records. In other cases, unofficial records are maintained. In some instances, unofficial records are kept in addition to official sources, which are available in electronic format online. An example is that the British Library still maintains an unofficial card index of British patent applications, a fact which takes this reviewer back to his time as a trainee patent attorney in London! It is also the case that older patent documents from many jurisdictions have not been digitised and are available only in paper form. In still other instances, we learn that some patent systems still only produce documents in paper form, available from the relevant official source only in the time-honoured way.

There follow several chapters dealing with techniques for patent searching, including a review of the patent classification systems. The common types of searches are discussed and strategies for effective searching are revealed. Finally, the book provides a set of Appendices containing a wide range of valuable information concerning patent documentation generally in tabulated form for ready access.

As acknowledged in the book, patents are regarded in many circles as ‘difficult’ documents to

research. As a result, they are sadly overlooked by many, in particular small businesses. Efforts to harmonise patent laws and practice continue around the world, but they generally move slowly. To the extent they succeed, they can generally only affect future patent publications and information. The millions of preexisting patent documents remain the products of an earlier time and the very different patent systems that produced them. As a result, there will remain a need to understand the history of patent documentation

going back to the beginnings of the earliest patent systems.

Stephen Adams has undertaken a colossal task to collate a huge amount of information concerning the patent literature, its origins and uses. He is to be congratulated on compiling this information and presenting it in a book that is not only a vital and very useable source of valuable information, but is also a fascinating read for anyone with an interest in patent law and practice. Information Sources in Patents is an

essential tool for anyone considering using the patent literature as a source of data and information, be it technical, commercial or legal. This book is highly recommended not only for patent information specialists and others also engaged in patent searching, for whom it surely is an essential resource, but anyone practising in the patent profession or indeed with an interest in any aspects of the patent literature.

Reviewed by Noel J. Akers (Fellow), N.J. Akers & Co.

A Practical Guide to Drafting Patents

Drafting patent applications is the foundation skill of the patent attorney and while every practitioner is critiqued and examined on the practice, there remains remarkably little positive written guidance on the topic.

This book takes a highly practical approach to the art of creating a patent, starting by considering the various entities involved or affected, establishing the considerations relevant to each and then weighting and condensing the factors into a manageable set.

Order online at www.cipa.org.uk/shop

£25 (£20 CIPA members)

The Rt Hon Sir Colin Birss

Navigating Design Law

David Musker, as a Fellow member of CIPA and sometime Chair of its Designs & Copyright Committee, knows his way around post-Brexit UK design law as well as anyone in the UK. His teaching experience helps make Navigating Design Law accessible to students, but this publication will also be useful to practitioners.

Order online at www.cipa.org.uk/shop

‘A welcome and serious effort to demystify the exercise of drafting a patent and to offer concrete assistance to those with the job of describing in words something which may never have been described in words before, a wholly new and (hopefully) non-obvious invention.’

Are you a stressed, overworked Patent Attorney?

We provide you with a full firm ecosystem,

Two IP is a ‘new breed consultancy model’ patent and trade mark firm, which enables patent and trade mark attorneys to work for their own clients whilst benefiting from the experience of the Two IP team and the support of Two IP’s ecosystem of back office, patent and trade mark formalities, and business development advice.

Life Sciences Patent Attorney

www.two-ip.com/want-to-join-us

CONTACT US IF YOU WANT TO

BE AN INTEGRAL PART OF AN ENTERPRISING IP PRACTICE WITH A STRONG AND VALUED REPUTATION

IP Asset is a fast-growing IP practice with a wide, developing client base. We believe in providing practical, commercially focussed IP advice and with extensive in-house and legal expertise, we have a skill set that we feel is unique. We aim to train attorneys in the same manner to help drive and build the business.

We are seeking a capable, self-motivated, part or fully qualified patent attorney specialising in Life Sciences to help grow our team. Above all, we are looking for someone who can align with the ethos of the firm – someone who is willing to join in, work collaboratively, and become a valued member of the team. The ideal candidate will have an interest in business development and in time will be encouraged and supported to build a practice of their own.

For all candidates a strong degree in Life Sciences or a closely related discipline is a prerequisite. You will be working closely with ground-breaking, leading-edge scientific developments in many different areas. Our clients come from across the UK, Europe and the World, including the US.

Paralegals sought for Oxford / London Office

We offer a comprehensive internal training programme for part-qualified and single-qualified attorneys to help them become dual-qualified, with support for attorneys to attend external courses to supplement our internal programme. We are also members of IP Inclusive.

The IP Asset Partnership Limited is a well-established, fast growing IP practice with an excellent client base. We are seeking two full-time, capable and self-motivated patent paralegals to join our team to help support current client work and future business growth.

The role will include the receiving and reporting of official communications, working with qualified attorneys and trainees to prepare responses to office actions and to provide instructions to overseas agents, assisting with foreign filing programmes, data entry into our records system, records management and client portfolio management. Previous record keeping and patent formalities experience is a pre-requisite for the role and you are required to hold a CIPA Patent Administrators Certificate.

On-site training, will be provided in our Oxford office in Summertown. We anticipate the successful candidates having the flexibility for hybrid working, with at least 2 days out of 5 being in one or other of our offices.

If you want to be part of a dynamic and growing team please apply via email to recruitment@ipasset.com. Should you wish to discuss any elements of the role prior to applying then please call Helene Schaefer, Head of Formalities, on 01865 339414.

Ideally, this position will be primarily based in IP Asset’s Oxford office in the vibrant district of Summertown, although we would certainly like to hear from candidates wishing to be based in our London and Dublin offices. We support flexible working, and there are opportunities to spend time in all three of our main offices. Candidates wishing to be based outside of these offices are invited to discuss this with us.

If you want to be part of a dynamic and growing team or simply wish to discuss the possibility, do get in touch. Applications by email to recruitment@ipasset.com.

For full details on the range of opportunities we’re recruiting for or just to have a general chat about your career, please call Pete Fellows or Phillipa Holland on 020 7903 5019 or email: contact@fellowsandassociates.com www.linkedinfellows.com www.fellowsandassociates.com @fellowsandassoc youtube.com/fellowstv

UK and/or European Patent Attorney Qualified or part qualified • Belfast, Northern Ireland

Hanna IP is an intellectual property consultancy firm with offices in both Belfast and Dublin. We pride ourselves on being a small firm of staff which allows the client to have a personal and tailored experience with us. This also allows for a friendly and relaxed experience for new members joining our team, with each member of staff happy to help at any stage of the working day.

Hanna IP is continuing to grow as a result of the provision of a professional but personal service in meeting and exceeding our clients’ expectations. Due to increased workload, we have a vacancy for a suitable candidate to help us with our expansion. We are currently seeking a Qualified or part qualified Patent Attorney to join our team who is self-motivated, driven and determined to make a move into an environment where they really have the opportunity to make their mark.

Essential Criteria:

Qualified or part qualified UK and/or European Patent Attorney.

• Ability to articulate and good at communicating, especially in writing.

• Ability to interact with both new and existing clients confidently, showing clear ability to quickly develop an understanding of both long-term objectives and the immediate requirements of clients.

Desirable Criteria:

• Good Degree in General engineering, Physics, Computer Science or Electronics.

• Two to three years’ experience is ideal.

• Demonstrating experience of previous client/customer facing work will be a distinct advantage.

• A working knowledge of trade marks would be useful.

The Position:

• Diverse role, allowing full practical experience of all aspects of Patent Attorney work including but not limited to opinion work, drafting, prosecuting, oral proceedings and due diligence work.

• Handling of a significant amount of existing prosecution work before the IPOI, EPO, UK IPO and the USPTO.

• Business development with new clients.

If you believe you are suitably qualified and will add value to our team, we would love to hear from you.

Please apply with an introductory covering letter and enclosing your CV to john@hannaip.com by Friday 31 March

Please mark your email for the attention of John Hanna. We are an Equal Opportunity Employer.

Senior Engineering Patent Attorney

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

Paralegals sought for Oxford / London Office

IP Asset is a fast-growing IP practice with a wide, developing client base. We believe in providing practical, commerciallyfocussed IP advice and with extensive in-house and legal expertise, have a skill set that we feel is unique. We aim to train attorneys in the same manner, to help drive and build the business.

We are seeking a capable, self-motivated, part or fully qualified patent attorney specialized in Mechanical Engineering to help grow our team. Above all, we are looking for someone who can align with the ethos of the firm –someone who is willing to join in, work collaboratively, and become a valued member of the team. The ideal candidate will have an interest in business development and in time will be encouraged and supported to build a practice of their own.

For all candidates a strong degree in Engineering, preferably Mechanical Engineering, or a closely related discipline is a prerequisite. You will be working closely with groundbreaking, leading-edge scientific developments in many

CIPA Congress

Tuesday 3 October 2023

The IP Asset Partnership Limited is a well-established, fast growing IP practice with an excellent client base. We are seeking two full-time, capable and self-motivated patent paralegals to join our team to help support current client work and future business growth.

different areas including medical devices, fuel cells and energy generation. Our clients come from across the UK, Europe and the World, including the US.

The role will include the receiving and reporting of official communications, working with qualified attorneys and trainees to prepare responses to office actions and to provide instructions to overseas agents, assisting with foreign filing programmes, data entry into our records system, records management and client portfolio management. Previous record keeping and patent formalities experience is a pre-requisite for the role and you are required to hold a CIPA Patent Administrators Certificate.

On-site training, will be provided in our Oxford office in Summertown. We anticipate the successful candidates having the flexibility for hybrid working, with at least 2 days out of 5 being in one or other of our offices.

We offer a comprehensive internal training programme for part-qualified and single-qualified attorneys to help them become dual-qualified, with support for attorneys to attend external courses to supplement our internal programme. We are also members of IP Inclusive.

If you want to be part of a dynamic and growing team please apply via email to recruitment@ipasset.com. Should you wish to discuss any elements of the role prior to applying then please call Helene Schaefer, Head of Formalities, on 01865 339414.

Ideally, this position will be primarily based in one of IP Asset’s Oxford, London or Dublin offices. We support flexible working, and there are opportunities to spend time in any of our three main offices. Candidates wishing to be based outside of these offices are invited to discuss this with us.

If you want to be part of a dynamic and growing team or simply wish to discuss the possibility, do get in touch. Applications by email to recruitment@ipasset.com.

Hilton Cambridge City Centre Hotel

PARTNER / SENIOR PATENT ATTORNEY - SOUTH WEST

Our client is considering attorneys with 4 years’ + PQE and expertise in high-tech fields, including artificial intelligence. For those joining at Senior Associate level, there is the potential to progress to Partnership in the short term.

SENIOR ASSOCIATE - ELECTRONICS PATENT ATTORNEY

We are working on a new opportunity to work for a London based firm with a formidable reputation. This is an excellent opportunity for attorneys who have worked in private practice or in-house.

PATENT ATTORNEY - BIOTECHNOLOGY - CAMBRIDGE

You can expect exposure to work across a broad spectrum of biotechnology and life science related subjects, including (amongst other things) immunology, diagnostics and therapeutics, genetics, plant biology and biofuels.

ELECTRONICS / DIGITAL TECHNOLOGIES PATENT ATTORNEY

With continuing growth in the electronics and digital sectors, the Partners of this outstanding IP practice are looking to recruit an additional patent attorney into the thriving team in the North West of England.

PATENT RECORDS ADMINISTRATOR - 100% REMOTE WORKING

Our client is seeking candidates with at least 2+ years experience within patent records and who are looking to expand their knowledge. If this sounds like you and you’re looking for a 100% remote working role, we’d love to hear from you!

PATENT ADMINISTRATOR - MANCHESTER

We have a number of patent administrator roles at all levels of experience. The ideal candidate would hold a patent or professional services administrative background and be keen to develop and grow their career within a top tier firm.

PATENT SECRETARY TO PARTNER (LONDON) ++

If you have previous patent secretary experience in a similar role and want to work for an employer who truly cares for their employees, then look no further. A fantastic starting salary is on offer along with a great summary of benefits.

CIPA QUALIFIED PATENT FORMALITIES PARALEGAL C£46,000

Are you an experienced Patent Formalities candidate looking for that next step for you to progress in an exciting firm with flexible hybrid working in London? We could be working on just that!

REVISION COURSES FOR THE PEB 2023 EXAMS

MAY TO JUNE 2023

We are holding revision courses in May, June, July and August for the 2023 Patent Examination Board (PEB) Foundation Certificate (FC) and Final Diploma (FD) examinations. Most of the courses will be in person, but we will have some Zoom-based courses.

The in-person courses will be held in Milton Keynes and dates will be announced on our website towards the end of January 2023. If accommodation is not required the course fee will be reduced. We have an online Moodle resources forum to support the courses. There are discounts for the booking of five 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

E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk

SAVE THE DATELife Science 2023

The conference will return to The Brighton Grand Hotel on 16 and 17 November 2023.

This is a globally leading electronics company and the overall purpose of this position is the provision of high-quality, timely, flexible and cost-efficient patent services including drafting, filing, prosecution, opposition, appeals and freedom to operate searching. You will have the opportunity to work directly with the engineers at CRF to draft, file and prosecute patent applications which target features of digital standards. This includes guiding the prosecution of these applications in many countries across the world. Looking for a fully or part qualified European and/or UK patent attorney.

With more than 100 years of passion for trademarks and patents, this IP firm is considered a European powerhouse in the IP sector, with offices across Europe. You will advise innovating companies and be intensively involved in all aspects of protecting their innovation (intellectual property strategy, protection, active management, defence, valuation, etc.). Can be based in any of their Belgium offices.

These are a small selection of our live roles. Please visit our website or get in touch to discuss your requirements.

We care about the wider Innovative Community in which we work and live, and the impact we have. To give something back, we donate some of our annual profits to our charity Fund, Innovation For All Foundation.

The Fund’s theme is “Innovation for good”, with an objective “through innovation, to sustainably provide benefit for those in need”.

We invite applications for one or more of a number of grants of £10,000, £20,000 and £30,000. Successful applicants will be selected by employee vote.

Apply to innovationforall@kilburnstrode.com by 31 March 2023.

www.kilburnstrode.com/ifaf

Finding a way

... to improve work : life balance

... to be inclusive and collaborative even when the path ahead is challenging

Do you want to find a better way?

If so, please get in touch about finding a way ahead with us!

careers@abelimray.com