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