CIPA Journal, April 2021

European patent work protected in Trans-Pacific trade deal

THE RAPIDLY EVOLVING IP INSURANCE LANDSCAPE

COMMUNICATION SKILLS IN THE DAILY WORK OF PATENT ATTORNEYS

WHY THE CONTROVERSY OVER TRANS RIGHTS? A GUIDE FOR ALLIES

INTELLECTUAL PROPERTY INFRINGEMENT AND DIRECTOR’S LIABILITY

EPO UPDATES: ABOLITION OF THE TEN-DAY RULE; VIDEO CONFERENCING

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.

CIPA Journal is sent to all members of the Institute as part of the benefits of membership. It is also available on subscription at £165 per annum (plus postage for overseas addresses: Europe £40, Other £70). Individual copies may be purchased at £20 (plus postage for overseas addresses: Europe £4, Other £7). An online only subscription is available at £105.

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Material submitted to the CIPA Journal will be accepted for publication on condition that the author, or each of them, grants the Chartered Institute a non-exclusive licence to publish the material:

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Editorial and advertising deadline dates for receiving submissions are on the 20th of the preceding month. See full details at www.cipa.org.uk/advertising

The Editor welcomes the submission of articles, news and correspondence for possible publications including photographs, tables, charts, etc. Contributions should be sent by email to editor@cipa.org.uk. Iain Ross (iain@cipa.org.uk) will be pleased to discuss any queries regarding submissions and advertising.

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 Coordinators Yemi Koledoye, Tania Domingos

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

42

59 CIPA staff profile Ria Lloyd

60 Obituary: Denzil Joseph Isaaks Robert Beckham CBE

61 Announcements

62 Online, but not forgotten Helen Smith

64 IP Inclusive update Andrea Brewster OBE

66 IP Inclusive: everyone, everywhere, all at once Jodie Johnson and Caelia Bryn Jacobsen

68 Promoting female inventors and innovators: GlobalWIIN awards! Caelia Bryn Jacobsen

75 Letter to the Editor: Compliance or inertia? Sean Dennehey

European patent work protected in TransPacific trade deal

The UK government has ensured that its existing international agreements on intellectual property – namely the European Patent Convention (‘EPC’) and the Strasbourg Patent Convention – have been protected in the UK’s accession to an important Indo-Pacific trading bloc. This follows more than 18 months of intense campaigning behind the scenes by CIPA with government ministers and leading UK parliamentarians, UK trade negotiators and important stakeholders overseas.

[Also see page page 13.]]

By Lee Davies

CIPA Chief Executive

The government announced on 31 March that the UK has reached an Agreement in Principle to accede to the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (‘CPTPP’). The CPTPP is a free-trade treaty comprising Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, and Vietnam. It represents 13.4% of global gross domestic product.

When the government announced its intention to explore joining the CPTPP, CIPA’s governing Council became concerned that potential inconsistencies between the IP Chapter of the CPTPP and the EPC could give rise to the legal challenge that the UK was not complying with its international obligations. Legal opinions were divided on the likelihood of such a challenge and the potential outcome.

Council took the decision that the UK profession and its local and global client base should not be thrown into a period of uncertainty regarding the UK’s place in the EPC. Council commissioned a comprehensive campaign with the goal of influencing the accession negotiations and encouraging the government to find a path to joining the CPTPP which did not place its existing international intellectual property obligations under scrutiny.

I am pleased to report that we achieved our goal. The UK government has negotiated an accession protocol which sets aside the grace period provisions of the CPTPP until such time as the EPC and the Strasbourg Patent Convention incorporate amendments which will not be inconsistent

with article 18.38 (Grace Period) of the CPTPP. The UK government has committed to endeavour to promote the harmonisation of grace periods within international fora and to report back to CPTPP member states.

This was a full-scale public affairs campaign, informing stakeholders across the political landscape about the potential implications of the UK’s accession to the CPTPP on the patent attorney profession and on UK and global businesses who rely on the world-class services provided by CIPA’s members. CIPA’s engagement has been conducted through meetings with key political and government figures, departmental officials and professional patent attorney associations in CPTPP member states.

We are indebted to Tony Clayton, former Chief Economist at the UK IPO, who produced compelling research into the European patent system, commissioned by CIPA and the IP Federation, demonstrating that the work of UK patent attorneys before the European Patent Office contributed £1 billion gross value added per annum to the UK economy. The report was our most important briefing paper, its £1 billion headline figure being almost impossible to ignore and adding weight to our impact assessment for parliamentarians.

CIPA has responded to a series of government and select committee consultations on the trade agenda and its impact on the UK intellectual property landscape, to reinforce our preeminent credentials in this space. Written submissions were made to the House of Lords International Agreements Committee’s inquiry into CPTPP

accession, the House of Commons International Trade Committee’s CPTPP inquiry and to inquiries into the UKAustralia and UK-New Zealand Agreements in Principle. CIPA’s submission to the International Trade Committee’s inquiry on the CPTPP resulted in an invitation for me to give oral evidence to the Committee in January 2023.

I feel proud and privileged to have worked on this campaign with Past Presidents of CIPA, Catriona Hammer and Alicia Instone (President at the time the campaign commenced), and with my public affairs and PR guru Neil Lampert, CIPA’s Deputy Chief Executive. We were brilliantly supported by an external public relations consultancy, Cicero AMO (now H/advisors Cicero). Our work has largely been conducted under non-disclosure and other confidentiality agreements, meaning we have not been able to report our progress to members in the way we have liked.

I would also like to record my thanks to ministers and to the team of negotiators, for allowing us to have many conversations about the accession pathway and for recognising the importance of this issue for the UK patent attorney profession, for businesses and for the economy. We are delighted with the outcome, which could not have been achieved without the diligent and tireless efforts of the negotiating team.

I look forward to sharing the story of this remarkable achievement with members at regional events and our conferences this year.

First published online, 31 March 2023.

UK’s accession to the CPTPP

On 31 March 2023, CIPA sent the following letter to The Rt Hon Kemi Badenoch MP, Secretary of State for Business and Trade. A shorter version of this letter was also sent to the Prime Minister, The Rt Hon Rishi Sunak MP.

Congratulations on the conclusion of the negotiations on the UK’s accession to the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (‘CPTPP’) and the announcement earlier today that an agreement in principle has been reached, which will be set out in the Accession Protocol.

Since March 2021, when the government announced that the UK would apply to join the CPTPP, the Chartered Institute of Patent Attorneys (‘CIPA’) has been working across Parliament to raise awareness of a potential inconsistency between the IP Chapter

of the CPTPP and the European Patent Convention (‘EPC’). We wanted to help the government find a way to accede to the CPTPP that did not put at risk the UK’s pre-eminent place in the EPC. On behalf of CIPA’s members and users of the IP system, thank you for listening to our concerns, taking the time to understand our position and working with us to arrive at a pathway for joining the CPTPP that respects and maintains the UK’s existing international obligations.

We knew that we had a great story to tell about the contribution the UK patent profession makes to

the economy but recognised that compromise is always required in complex, multi-party negotiations. We greatly appreciate the patience, understanding and perseverance of your team of negotiators, who worked so hard to deliver a solution beyond our expectations.

We look forward to continuing to work with government to realise the potential of the CPTPP and other free trade agreements, and to ensure that UK patent attorneys are front and centre in the government’s strategy for an innovation-led economy.

Lee Davies, Chief Executive.

Council Minutes

Minutes of the Council meeting held on Wednesday 1 March 2023 at 14:30. Meeting held in person and by videoconference.

Item 1: Welcome and apologies

Present: Daniel Chew (President), Matt Dixon (VicePresident), Alasdair Poore (Immediate Past President), Gwilym Roberts (Honorary Secretary), William Burrell, James Cross, Stuart Forrest, Catriona Hammer, Jeremy Holmes, Greg Iceton, Nashim Imam, Alicia Instone Rob Jackson, Parminder Lally, Keith Loven, Chris Mercer, Joeeta Murphy, Suzanne Oliver, Annemarie Parsons (co-opted), Jonathan Pratt, Monika Rai, Tony Rollins, Vicki Salmon, Debbie Slater, Andrew Sunderland, Kathryn Taylor (co-opted) and Sheila Wallace.

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: Caelia Bryn-Jacobsen and Simon Wright.

Item 2: Conflicts of interest

54/23: Alicia Instone declared that she was the Treasurer for FICPI-UK. Tony Rollins and Suzanne Oliver declared that they both acted as policy advisors for the IP Federation.

Item 3: Minutes

55/23: The minutes of the meeting held on Wednesday 1 February 2023 were approved.

56/23: From minute 31/23. Iain Ross said that he would publish the updated list of committee chairs in the next issue of the Journal. [See the inside front cover of this Journal.]

Item 4: Unified Patent Court

57/23: Council received an update on travel to the seats of the Unified Patent Court (‘UPC’) under the Schengen visa waiver scheme. Neil Lampert informed Council that he had been in correspondence with a lead official at the Ministry of Justice (‘MoJ’) and could report that progress had been made in a number of countries, with positive statements and no immediate issues identified. Neil said that France and Italy had responded positively, and that Germany thought that it had already dealt with the issue based on the EPO guidance that was issued last year. Neil said that he had asked the MoJ to go back to

Germany and explain the difference between the UPC and the EPO. Neil added that there was further liaison on going between the MoJ and UPC member states.

58/23: Daniel Chew asked if there was anything more that could be done to promote the UK profession in relation to the launch of the UPC. Council took the view that it was important to encourage members to register as representatives. Council agreed that a clear strategy would be essential in terms of thinking about the next steps. It was suggested that it would be worthwhile to set up a UPC working group.

59/23: In relation to a question about PAMIA insurance covering representation at the UPC, Lee Davies said that he had discussed this with Redvers Cunningham who confirmed that litigation work at the UPC was covered under the existing terms of PAMIA insurance. Redvers said that he would prefer firms and attorneys to contact PAMIA directly about this but was happy for CIPA to provide information for members in the newsletter.

60/23: In relation to strong authentication and smart cards required to access the UPC CMS, it was noted that members were still reporting issues on the UPC discussion forum. Neil Lampert said that these appeared to be individual problems rather than systemic issues. Neil reminded Council that there was an FAQ page on the UPC website focusing on CMS accounts, strong authentication and opt outs.

Item 5: Comprehensive and Progressive Agreement on TransPacific Partnership (‘CPTPP’)

61/23: Lee Davies advised Council that the CPTPP negotiations were ongoing and that he understood that there had been an exchange of proposals between the UK and the CPTPP parties addressing the IP chapter. Lee added that the non-disclosure protocol covering the negotiations prevented further reporting at this time. [See updates on pages 2, 7 and 13-18.]

Item 6: External affairs

62/23: Council received an update on current UK trade agreement negotiations. Catriona Hammer informed Council that CIPA had made a submission in relation to the negotiations with South Korea. [See page 11.] Catriona added that there had been little progress on bilateral negotiations, which was understandable given the focus on the CPTPP.

63/23: Council received an update on the government’s Retained EU Law (‘REUL’) Bill. Alicia Instone informed Council that she had been attending the REUL meetings on behalf of CIPA. Alicia reported that the recent focus had been on case law which had been assimilated into UK law and how the REUL Bill would impact on the Court of Appeal. Alicia added that, in terms of secondary legislation, the IPO was maintaining a list of laws affected by the REUL

reforms and that this was available on the government’s REUL website. Gwilym Roberts reminded Council that there would be an opportunity to meet with the Chief Executive and Deputy Chief Executive of the IPO on 14 March and that the REUL Bill would be one of the main topics.

64/23: Council received a report on a meeting of the Officers with Andrew Staines, Assistant Director General of WIPO. Andrew emphasised WIPO’s focus on increasing the awareness of IP in innovator and creator communities, particularly areas where there was a perceived underrepresentation, such as female inventors. Andrew informed CIPA that WIPO was investing in new IT systems to provide improved services for users. Andrew noted that World IP Day on 26 April would focus on women in IP.

Item 7: Regulatory matters

65/23: Lee Davies informed Council that the Legal Services Board (‘LSB’) had approved IPReg’s rule change application. Lee said that he had invited IPReg to attend the April meeting of Council to discuss how these changes will affect CIPA’s members. Lee added that he had invited members of CITMA’s Council to attend the IPReg presentation.

66/23: Lee Davies informed Council that Alan Kershaw, IPReg Board lay member, had recently been appointed as the new Chair of the LSB and would be standing down from IPReg. Council welcomed this news as Alan has a clear understanding of the patent attorney and trade mark attorney professions. Lee reminded Council that the LSB had been invited to attend the May Council meeting, which might be an opportunity to meet Alan in his new role.

Item 8: Equality, diversity and inclusion

67/23: Council noted the report from the D&I Committee. Greg Iceton informed Council that the committee had sent the letter to the EQE Secretariat on the proposed EQE reforms. Greg thanked the IPO, IP Inclusive and the PEB for their signatures in support of the letter.

68/23: The D&I committee raised questions about the accessibility of the Journal in relation to dyslexia guidelines. The Committee had concerns that the page format may be difficult to read due to font sizes and the use of certain colours. Iain Ross said that the updated version of the Journal was under review and that he had taken these constructive comments into consideration as part of that review.

69/23: Members of Council were encouraged to attend a joint IP Ability and CIPA webinar on 9 March. The webinar will be chaired by former Council member Debra Smith and will focus on the challenges that disabled people face when interacting with online content such as websites, registration forms and event access. The webinar will explore how these challenges

impact on access to the IP professions and the work of IP professionals. [See the report on page 62.]

Item 9: IPO and EPO matters

70/23: Council received a report on the annual meeting between CIPA and the senior team at the EPO. The topics discussed included recent developments at the EPO, the EPO’s new Patent Quality Charter, the EPO’s new online services, the UPC and the CPTPP.

71/23: Council received an update on the EPO’s consultation on changes to the Rules. Chris Mercer said that he had received many comments in relation to the changes, which had been passed on to the SACEPO Working Party on Rules. Chris said that the meeting of the Working Party on Rules will be held on 16 March and that he would circulate any relevant papers to the Patents Committee.

72/23: Lee Davies said that, in concluding the current contract with [the strategic communications consultants] Cicero, thought had been given to how CIPA might continue to build on the excellent relationship that had been developed with parliamentarians through the CPTPP campaign. Cicero advised that it would be important to start a dialogue with a potential incoming Labour government whilst maintaining dialogue with the current government. Council agreed that campaigning for a dedicated IP Minister would be a low-risk but high-reward topic to focus on.

73/23: Council received an update in relation to the IPO’s digital transformation project. It was noted that the IPO will be introducing new digital payment methods and phasing out deposit accounts. Council agreed to raise the subject at the meeting with the Chief Executive and Deputy Chief Executive of the IPO on 14 March.

Item 10: Committees and committee reports

74/23: Council noted the report from the European Liaison Committee and approved the committee’s terms of reference.

75/23: Council noted the report from the Internal Governance Committee and discussed the possibility of holding a strategic planning event for Council. It was agreed that this could take place on 4 and 5 July, to coincide with the July meeting of Council, subject to finding a suitable venue. Charlotte Martin said that she would send a placeholder invitation to members of Council.

76/23: Council noted the report from the Patents Committee. It was agreed that the Patents Committee should appoint a Council member on the committee to report to Council. Charlotte Martin said that she would add this to the agenda for the next Patents Committee meeting.

77/23: Council noted the report from the Membership Committee. The committee reported that the following membership applications had been approved:

Fellows: Matthew Cornwell, George Bowyer, Lloyd Palmer, Adam Lacy, Frederic Fulton, Jacob Willey, Rebecca Brooks, Georgia Nichol, Joseph Newcombe, Lauris Kemp, Emily Arnold, James Plunkett, Alex Card, Juliana Murray, Natalie Vaughan, Thomas Franks-Moore, Victoria Suen.

EPA Member: Alistair Scott.

Associate Member: Svetlana Gracheva.

IP Paralegal Members: Abbie Butler, Amy Fry, Anna Barber. Student Members: Luke Murray, Alessandro Giovannone, Daniel Richardson, Ehsan Akhtar, Alex Kilroy, Max Freebairn, Chloe Fisher, William Bouette, Marek Blaszyk, Amy Cole-King, Daniel Sorensen, Rahul Gupte, Jane Holland, Chris O’Reilly, Toby McManus, Oliver Rigg, Jack Brown, Thomas Le Neel, Oran Friar, Clare Dark, Max Mallerman, Lucy Philip, Aron Ferenczi, Lois Carhart, Sam Meacham, Adbi Ahmed, Jake Tucker.

The committee reported that, as of 27 March, 94.8% of members had renewed their membership. Council noted that there were currently 4,624 members:

• Fellows 2,657

• EPA Members 52

• Associate Members 191

• Honorary Members 8

• Overseas Members 56

• Paralegal Members 507

• Student Members 1,153

78/23: Council noted the report from the Litigation Committee.

79/23: Council noted the report from the Designs & Copyright Committee.

80/23: Council noted the report from the Education Committee. Parminder Lally informed Council that the committee had discussed putting on an IP commercialisation course. Catriona Hammer said that she had invited Education Committee member John Hull to attend the next meeting of the IP Commercialisation Committee to discuss the idea.

Parminder advised Council that the Education Committee was keen to see the return of regional representatives, to support the planning of regional events and seminars.

Kathryn Taylor said that the Informals Committee had a list of regional representatives that they use to organise social events. Kathryn said that she would be happy to forward this list to Dwaine Hamilton.

81/23: Council noted the report from the IP Paralegal Committee. There was general support from Council for the introduction of mandatory CPD for IP Paralegal Members, which was currently voluntary. Council recognised that enforcement would be difficult as, unlike Fellows who are Registered Patent Attorneys, IP Paralegal Members are not

regulated by IPReg. Lee Davies said that he would speak with the Chief Executive of CITMA, Keven Bader, to find out how CPD is monitored for trade mark paralegals. Lee said that he would also liaise with Fran Gillon, Chief Executive of IPReg.

82/23: Council noted the report from the Informals Committee. Kathryn Taylor informed Council that the second Student Conference would be held in Birmingham on Thursday 27 April. Kathryn advised Council that the Informals Committee was investigating concerns about a late change to the Lockdown Browser due to be used for the European Qualifying Examinations, which start on 7 March. The change introduces new search functionality but will only be available on Microsoft Windows platforms, potentially disadvantaging those using other platforms.

Kathryn said that the EQE guidance to candidates states that it is a candidate’s responsibility to choose which operating system they use and that no advantage can be inferred from choosing one system over another.

Kathryn said that she had written to the EQE helpdesk on behalf of the Informals Committee, asking for the feature to be available on all operating systems.

Item 11: Officers’ reports

83/23: Council noted the Officers’ reports.

Item 12: Chief Executive’s and Deputy Chief Executive’s reports

84/23: Council noted the reports given by the Chief Executive and the Deputy Chief Executive.

Item 13: Any other business

85/23: Lee Davies discussed with Council his experience of sharing a recent article that was published by IP Inclusive’s IP Out group on the heavily polarised discourse about trans people. Lee said that he had shared the article on his LinkedIn page and was quite shocked by the abuse he had received, which only stood to reinforce the points made in the IP Out article. Lee said that he had learnt a great deal from reading the article, despite the reaction on LinkedIn, and encouraged Council members to read the article. [See the article on page 54.]

Item 14: Date of next meeting

86/23: Wednesday 5 April 2023.

The President closed the meeting at 17:07

Lee Davies, Chief Executive

CIPA welcomes UK accession to Indo-Pacific trade deal

CIPA welcomes the announcement that the UK has successfully concluded talks to join the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (‘CPTPP’) while respecting existing international obligations around intellectual property.

The CPTPP is a free trade agreement covering 11 countries: Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, and Vietnam. It aims to reduce barriers to trade and investment among its members by eliminating tariffs on goods and services, establishing common rules and standards and promoting regulatory coherence. CPTPP member countries have a combined population of 500 million and a gross domestic product of around £9 trillion.

The Agreement includes provisions which protect patents, trade marks, copyright, trade secrets and geographical indications and a commitment to enforce these rights, which helps to create a more level playing field for businesses and promotes innovation and creativity.

Joining the CPTPP will also ensure that UK IP rights are protected in the other member countries and will provide a mechanism for resolving disputes related to IP.

The UK already meets – and in many ways exceeds – the standards set by CPTPP for intellectual property. So innovative and creative UK businesses seeking to do business in CPTPP countries can look forward to standards across the trading bloc being raised in line with ours.

CIPA is particularly pleased that the government has stood by its public commitment to respect the UK’s important existing international obligations on IP and views this as a significant victory for UK diplomacy and negotiating. Before negotiations started 18 months ago, CIPA raised with government that to accede to the CPTPP and its IP provisions in full could potentially place

at risk the UK’s vitally important membership of the European Patent Office (‘EPO’). The CPTPP requires its members to have a grace period for patents (a period of time prior during which an inventor can disclose their invention without this destroying the novelty of their invention for patenting purposes.). But the treaty governing EPO membership, the European Patent Convention (‘EPC’), does not include a grace period.

Independent financial analysis has shown that the UK patent profession generates around £1 billion gross value added p.a. to the UK economy. A majority of this revenue is generated by UK patent attorneys representing clients (many from CPTPP members states) before the EPO.

UK government negotiators successfully persuaded CPTPP member states to agree to protect the UK’s continued membership of the EPC while acceding to the treaty.

CIPA President Daniel Chew said:

‘We congratulate the government on acceding to such a major trade agreement while preserving the UK’s existing – and vitally important – international obligations around intellectual property.

‘We thank the government and its negotiating team for listening to us and for ensuring that the UK’s pre-eminent position as a global IP leader is maintained. CIPA proactively supports the government’s global trade ambitions and looks forward to future trade announcements which will further strengthen the UK’s position as a world leader in innovation and intellectual property.’

First published online, 31 March 2023.

Abolition of the EPO’s ‘ten-day rule’

The EPO published a notice setting out further guidance on the abolition of the ‘ten-day rule’ in the March 2023 Official Journal. On the 8 March, the EPO held a webinar to inform users of the legal changes to support the digital transformation.

See https://e-courses.epo.org/course/view.php?id=182

The Administrative Council amended some of the EPC rules in October 2022. Some of those amended Rules came into force on 1 February 2023. However, the other amended rules do not come into force until 1 November 2023. These amendments concern the abolition of the ‘ten-day rule’ and are amendments to rules 126(2), 127(2) and 131(2) EPC. These rules relate to such documents as decisions, summonses, notices and communications which the EPO is obliged to notify ex officio in accordance with article 119 EPC.

The EPO Mailbox, which provides electronic notifications, now covers 99% (by volume) of all documents the EPO issues. MyEPO Portfolio provides a version of the Mailbox with enhanced functionalities. The EPO therefore considered that it was necessary to update the EPC rules to reflect the move to digital communication.

Notification of the receipt of a document

According to the present version of the above rules, the date on which any of the documents referred to above is deemed to be received by the addressee is ten days after the date on the document (the socalled ‘ten-day rule’) 1 . It is this deemed date of receipt of the document from which time limits run.

Under amended rules 126(2) and 127(2) EPC, the date on which any of these documents is deemed to be received is the date on the document, whether the document is sent by mail or electronically, and so the date from which the time limits run is the date on the document. Thus, the ‘ten-day rule’ will be abolished.

According to established EPO practice, the date of the document is the date on which it is handed over to a postal service provider in the case of postal notification or the date of its electronic transmission to the Mailbox in the case of electronic notification. To ensure this, the EPO post-dates its documents to allow them to be processed internally and issued on the date they bear.

In the case of postal notification under rule 126(2)

1 With certain well-known exceptions.

EPC, the relevant date is the date printed on the document and not any other date possibly stamped on the envelope carrying that document.

As is the case today, electronic notification under rule 127(2) EPC will not occur before the date on the document. Accordingly, even if the addressee can access the document via the Mailbox before this date, the decisive date is the date on the document.

Safeguards

If there are any irregularities in delivery, the new rules include safeguards which apply to documents sent both by mail and electronically (although they are unlikely to be needed for electronically delivered documents). (If an addressee disputes that the document was delivered, the EPO retains the obligation to prove both that the document was delivered and the date of its delivery.)

If the EPO is unable to prove that a document has been delivered at all, the time limit linked to that document will be considered not to have started. The document in question will be reissued with a new date and the time limit will begin on that date.

If the EPO can prove that the document was delivered and can show the date on which it was delivered, there are two possibilities. If the document was delivered within seven days of the date on the document, the time limit will still start on the date of the document. However, if the document was delivered more than seven days after the date on the document, any time limit will be extended by the number of days from the date on the document to its actual date of delivery minus seven. So, if an addressee received a document 12 days after the date on the document, the period will be extended by five days.

The general principles governing time-limit extensions set out in rule 134 EPC will apply to periods recalculated applying the new safeguard.

The following example illustrates the operation of the safeguard. A Communication under article 94(3) EPC has the date of 13 November 2023 on it and sets a time limit of four months. It is mailed to the applicant and is delivered

on 25 November 2023. If the applicant informs the EPO that the Communication was delivered late, the four-month time limit will be extended by 12 (the number of days from the date on the Communication to the date of actual receipt) minus seven (from the rules) = five days, so that the four-month time limit will expire of 18 March 2024. There are other situations where the start of the time limit may not be the date on the document but these are likely to be rare. There are also transitional provisions for situations which might occur around

the date on which the new rules come into force. They are all explained in the notice from the EPO.

The take-home message is that the ‘ten-day rule’ will be abolished as of 1 November 2023 and that, in the vast majority of cases, any time limit set in train by receipt of an ex officio document from the EPO will begin on the date on the document.

Chris Mercer (Fellow)

Video conferencing at the EPO

In March, CIPA submitted its response to the Boards of Appeal consultation regarding the observations of Article 15a RPBA 2020 (ViCo). Thanks to Gwilym Roberts for coordinating CIPA’s response.

CIPA has consistently indicated its general support for video conferencing. Our finding has been that the technology is acceptable and we believe that video conferencing should be the default for oral proceedings other than in exceptional circumstances. Such circumstances would typically be matters of accessibility, matters where physical presence is necessary due to the nature of a case (e.g. where physical senses may be required to properly judge the case presented) or matters where the complexity or value of the case merited real world attendance.

Boards should particularly give weight to the parties’ representations in that respect, especially if all parties agree for example that the value justifies in-person attendance. We believe that the final decision, however, should be at the discretion of the Boards and not the parties, as we believe that in all

cases video conferencing permits access to justice and fair proceedings, and that to proceed otherwise could give rise to procedural manoeuvring.

We are aware of the specific questions in the consultation and are encouraging our members to respond individually in order that the Boards of Appeal have the most data to work with, but we strongly commend the provision online of explanatory documentation and believe that the Boards are providing very clear communications prior to the hearings in relation to how they are carried out. We also commend the Boards of Appeal for embracing this technology and for having enabled appeal proceedings to continue throughout the pandemic phase, and believe that with this enforced de facto test period we are now able to proceed to a world where video conferencing before the Boards of Appeal is business as usual.

IPO update: Supplementary protection certificates on Ipsum

From April 2023 – Ipsum – the online patent information and document inspection service provided by the UK Intellectual Property Office (‘IPO’) – will allow you to access information on, and to check the status of, UK supplementary protection certificates (‘SPCs’).

Ipsum will make new SPC applications available when they are filed and will update these applications with newly filed documents as this occurs.

The IPO will continue to use email to send correspondence regarding all SPC applications. The forms@ipo.gov.uk email address will continue as the address for the filing of all new SPC applications and all correspondence in relation to SPCs.

SPC applications filed in calendar years 2019, 2020, 2021, 2022 and 2023 will be available on Ipsum from April 2023. Over time we will expand the range of SPC documents available online, progressively adding older SPC files by year of filing.

You will be able to view and download most of the documents that will be open to public inspection and certainly everything necessary to understand the grant or refusal of an SPC.

Where an existing SPC application is not yet available on Ipsum, a copy of the file is available by requesting an uncertified copy – www.gov.uk/get-uncertified-electroniccopy-patent

SPC search

You can search on SPC number via the SPC search option at www.ipo.gov.uk/types/patent/p-os/p-find/p-find-spc.htm or on Ipsum, using the patent number that the SPC application is based on, at www.ipo.gov.uk/p-ipsum.htm

For further enquiries please contact the Information Centre at the IPO in the first instance at Information@ipo.gov.uk or telephone 0300 300 2000 (or, if outside UK, telephone: +44 (0)1633 814000)

IPO Manual of Patent Practice update

On 1 April 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.

Trade with South Korea

On 31 January 2022, CIPA submitted its response to the government’s call for input regrading a trade agreement with South Korea.

CIPA welcomes the opportunity to provide input at this early stage of proceedings. We support a Trade Agreement with South Korea as we are generally in favour of international trade.

South Korea and the UK already have well-established IP systems. However, CIPA and our partners at the Korean Patent Attorneys Association believe it would be beneficial for users of the South Korean IP system if Korean Patent Attorneys could represent their clients in patent infringement matters in the same way that users of the UK IP system can represent their clients before the UK courts in litigation cases. In the UK, representation rights for patent attorneys for infringement matters before the Supreme Court were envisaged in legislation passed in 2007 and enacted from 2011. This has resulted in significant benefits for UK businesses. This change in South Korea would also be beneficial for UK businesses as they obtain reduced legal costs if Korean Patent Attorneys were allowed to take infringement matters to the court. In addition to reduced legal costs it will also

allow for reduced timescales which is also a benefit to UK companies. Korean Patent Attorneys are skilled in technical matters, which will also aid in infringement cases.

In addition, CIPA wishes to emphasise that the UK is already party to many international agreements relating to IP and it is of utmost importance that any Trade Agreement with South Korea is entirely consistent with these existing commitments.

CIPA is of the opinion that international harmonisation of IP would be beneficial and would support a commitment from both parties to work together to facilitate the ongoing harmonisation initiatives.

CIPA stands ready to assist the Department for International Trade when the negotiations commence in providing detailed comments on the IP provisions.

Submitted by Lee Davies (Chief Executive) with input from the International Liaison Committee’s South Korea Working Group Lead, Dick Waddington

GI status for ant chutney: A mouthwateringly appetising prospect?

Mayurbhanj district in the state of Odisha in eastern India is well known for its ‘kai (red weaver ant) chutney’ and may, soon, attain the much-awaited geographical indication (‘GI’) status. The ants are abundantly available in Mayurbhanj district and has been consumed in the form of a chutney or soup, by mixing them with spicy ingredients.

The indigenous Mayurbhanj tribes have been utilising kai to make chutney since time immemorial. Furthermore, the tribes also use this species of kai as medicine to treat various medical conditions. The preparation of kai chutney is rather interesting - ants and their eggs are collected from the nests early in the morning when the ants are sluggish. The chutney is then prepared by mixing and grinding salt, ginger, garlic and Dhanua chilies. The chutney has a characteristic pungent spiciness and is sour yet is generally considered appetising! Kais are rich in valuable proteins, calcium, zinc, vitamin B-12, iron, magnesium, potassium, sodium, copper, fiber and 18 amino acids, and are known to boost the immune system.

A ‘geographical indication’ is an indication which identifies such goods as originating from a particular territory where a given quality, reputation or other characteristic of the goods is essentially attributable to its geographical origin. The Odisha University of Agriculture & Technology (the ‘applicant’) filed a GI application with the Indian GI Registry in 2020. As per local practice, the Registry constituted a ‘Consultative Group of Experts’ to review the application. Pursuant thereto, and based on the recommendations of the said group, the Registry issued an Examination Report in which several objections were raised. The applicant has filed a response. It is now down to the Registry’s court to consider the response, and to issue further directions in due course.

GI protection will certainly be a shot in the arm for the Mayurbhanj Kai Society, which oversees the production, distribution, and sale of kai chutney. The society plans to increase the chutney’s popularity throughout India and eventually around the world.

Ian Mirandah, mirandah asia – singapore

Recording a UK-specific address for service for UK designations from a Hague design registration

The UK IPO recently issued a practice note , which followed the ‘Marco Polo’ decision, outlining when it is necessary to appoint a UK-specific address for service based in the UK (or Gibraltar or the Channel Islands) for any UK designation relating to an international Madrid trade mark, or an international Hague design registration, where the right holder, or their representative for the wider international registration, is not based in the UK.

Concerning any UK designation from an international Hague design registration specifically, the IPO has now clarified that it is possible to appoint a UK-specific address for service for this UK designation only, upon submission of a duly completed DF1A form to the IPO in this respect. This request, which is to be made using the DF1A form, may be made at any time during the lifetime of the UK designation, and not just in response to the UK designation being challenged (e.g. as part of an objection from the IPO during the initial Hague design

registration process, or as part of an invalidation action by a third party later on) as was the former practice of the IPO.

To the extent any UK-specific address for service is applied for in respect of such a UK designation, and to the extent this UK-specific address for service differs from the representative details for the wider Hague design registration (whose representative details can be found from WIPO’s ‘Global Design Database’ register of Hague design registrations), the UK IPO has also confirmed that this UK-specific address for service will not be identifiable/searchable on the UK IPO’s online UK design register, which does not display any details of Hague design registrations designating the UK. This UK-specific address for service will also not be discernible from the Global Design Database. However, the IPO has confirmed that they will provide the details of any recorded UK-specific address for service in these instances, upon a request from any interested third party.

William Burrell (Fellow)

Overseas report: international treaties

Madrid Protocol (International Registration of Marks)

On 6 February 2023, the Government of the Republic of Mauritius deposited its instrument of accession to the Madrid Protocol. The said instrument contained the following declarations:

• in accordance with Article 5(2)(b), the time limit for a notification of refusal in respect of international registrations will be 18 months and, under Article 5(2)(c), when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit; and

• in accordance with Article 8(7)(a), the Government of the Republic of Mauritius, in connection with each international registration in which it is mentioned under Article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee.

The Protocol will enter into force, with respect to Mauritius, on 6 May 2023.

Hague Agreement (International Registration of Industrial Designs)

On 6 February 2023, the Government of the Republic of Mauritius deposited its instrument of accession to the Geneva Act of the Hague Agreement. The said Act will enter into force, with respect to Mauritius, on 6 May 2023.

On 13 February 2023, the Government of the Federative Republic of Brazil deposited its instrument of accession to the Geneva Act of the Hague Agreement. The Act will enter into force, with respect to Brazil, on 1 August 2023.

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

On 20 February 2023, the Government of Barbados deposited its instrument of accession to the Marrakesh Treaty. The Treaty will enter into force, with respect to Barbados, on 20 May 2023.

Dr Amanda R Gladwin (Fellow)

EUROPEAN PATENT WORK AND THE TRANS-PACIFIC TRADE DEAL

Protecting the UK’s intellectual property commitments in trade negotiations

Neil Lampert provides a timeline to the UK’s accession in principle to the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (‘CPTPP’) highlighting CIPA’s work to protect UK membership of the European Patent Convention (‘EPC’). This timeline lifts the lid on an intensive behind-the-scenes campaign that he, 2021 President Alicia Instone, former President and Chair of the IP Commercialisation Committee Catriona Hammer, and Chief Executive Lee Davies, conducted to mitigate the potentially serious risks posed, first, by a potential trade deal with the US and then CPTPP accession negotiations. The campaign took place amid the chaos and uncertainty caused by Brexit and Covid, when a multitude of competing priorities were being addressed and face-to-face briefings were, for a significant period, unavailable. Due to the confidential nature of the negotiations and the reputational sensitivity of the issue, this work had to be conducted largely in secret. Finally, here is the full story…

I ntellectual property is central to global trade but IP laws, such as grace periods, are not yet harmonised.

Neil Lampert Deputy Chief Executive

A free trade agreement (‘FTA’) with the USA was a priority for the government and in July 2017, just over a year after the Brexit referendum, the US Trade Representative’s office published its objectives for a trade deal with the UK. Talks between UK and US officials began in earnest in 2018 but progress was slow and negotiations were complicated by a number of issues, including agricultural standards and the status of the National Health Service in any potential deal.

While simultaneously pursuing a deal with the US, from July 2018, the UK government began engaging with the 11 member countries of the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (‘CPTPP’) at both ministerial and official level to explore UK accession to the Trans-Pacific bloc. We continued to take soundings from government departments about trade priorities and began to develop strategies to mitigate the potential risks of both a US FTA and CPTPP accession.

On 26 October 2018, CIPA submitted responses to government consultations on potential FTAs with Australia, New Zealand, the USA and potential accession to the CPTPP. In each of these submissions we detailed the potential issues with EPC membership and urged the government to request a carve-out of any grace period provisions.

On 30 October 2018, we held a meeting of the managing partners of as many UK IP firms as we could muster in London in order to brief them on FTA risks and to discuss strategy. It was at this

meeting that initial work was carried out to substantiate what we estimated the UK patent profession was worth to the UK economy – namely £1 billion a year. This figure was, we believe, central to our eventual success.

Taking key points from this discussion, Neil developed a briefing paper entitled CPTPP and risks to EPC membership which, on 22 November 2018, was shared with the Department for International Trade in a face-to-face meeting between Neil, Catriona, CIPA Vice-President Julia Florence, a Department for International Trade (‘DIT’) director, as well as UK Intellectual Property Office representatives. After Catriona had explained the points in the paper, we received our first commitment from the DIT that our points about grace periods needing to be addressed through international harmonisation and the importance to UK innovation of UK patent attorneys remaining in the EPC had both been understood. We were assured that the government only wanted to make trade agreements that were consistent with its existing international commitments and were thanked for providing strong supporting evidence that would help UK negotiators. We were buoyed by this exchange, but remained concerned that the patent profession could be sacrificed at the eleventh hour of negotiations, given the importance of post-Brexit trade deals to the government.

CIPA formed a CPTPP working group, consisting of Neil, Catriona and four Council members, which met, on 26 April 2019, to discuss the most effective way forward, including possible campaign alliances in the UK and abroad and what evidence would be needed to successfully influence government and generate overseas support. Both themes would be developed in the coming months.

On 8 July 2019, CIPA hosted a meeting convened by Honorary Secretary Gwilym Roberts and Daniel Alexander KC, then President of the IP Bar Association, at which 16 of the UK’s IP organisations were represented. The aim was to discuss priority policy issues with which to raise with government. This resulted in a letter, signed by the heads of all the IP representative bodies in the UK, being sent to Ministers and other key parliamentarians on 14 October 2019, urging them to pursue a course of stability for the UK’s IP sector as we prepared to leave the EU. One key message was to respect the UK’s existing international IP treaty obligations when negotiating new trade deals.

Aware of the need to generate hard financial evidence of the impact of a loss of European patent work, at its meeting on 4 December 2019, CIPA Council discussed conducting an impact assessment into the UK’s potential exit from the EPC in relation to the CPTPP and other trade negotiations. Discussions followed with the IP Federation about jointly commissioning such a report.

Catriona was among a number of representatives from IP bodies that attended a meeting with then IP Minister Chris Skidmore and senior IPO officials to discuss Brexit-related IP issues, on 14 January 2020. She and President Julia Florence stressed the importance of respecting international IP agreements.

On 2 March 2020, the government published its approach to negotiating a UK-US Free Trade Agreement, including

explicit commitments to safeguard existing international obligations such as the EPC. Julia pointed this out to peers when she appeared before the House of Lords’ EU Justice SubCommittee, 1 on 10 March 2020, to give evidence on Brexit, the UK and the Unified Patent Court.

Neil wrote to managing partners on 5 March 2020, to inform them that CIPA and the IP Federation had jointly commissioned former IPO Chief Economist Tony Clayton to conduct an assessment of the impact of any decision that might precipitate the UK’s exit from the EPC and to ask for their co-operation in his work. Tony met with many of them, on 12 March 2020, to discuss issues such as levels of fee-earning and how much income was being generated through work with non-UK-owned companies.

On 3 July 2020, CIPA and the IP Federation published Tony’s report –The European Patent Convention and its Impact on the UKEconomy and Innovation2 – which officially substantiated the £1 billion gross value added figure from November 2018 and additionally showed that around £750 million of these export earnings were generated at the EPO. The report showcased the UK patent profession as the UK’s most export intensive legal service sector and provided a mountain of further evidence to demonstrate the hugely significant value to both the UK and the US of the UK’s continuing membership of the EPC and why this should not be brought into question in FTA negotiations. The report was widely distributed across government, parliament and beyond and would become a key briefing document during the CPTPP campaign.

Olivia Wessendorff, then Head of Intellectual Property (Asia & Africa) at the DIT, was a keynote speaker at CIPA Congress, on 16 September 2020, where she confirmed that existing international IP commitments, specifically the EPC, would be respected in all government trade negotiations.

On 24 September 2020, CIPA President Richard Mair wrote to Lord Frost, the Prime Minister’s Europe Adviser and Chief Negotiator, to support the IP Federation’s concerns that the draft UK-EU Free Trade Agreement did not mention the EPC. Lord Frost replied from 10 Downing Street, on 6 October 2020, confirming the government’s commitment to the EPC in extremely strong terms.

President Alicia Instone attended a roundtable with IP Minister Amanda Solloway, on 22 January 2021, and repeated our concerns to the Minister around safeguarding EPC membership in FTA negotiations.

The government formally applied to join the CPTPP on 1 February 2021. On 12 February 2021, IAM published an article quoting an IPO spokesmen confirming that there would be no UK withdrawal from the EPO despite the plan to join CPTPP 3 This was published a few days after Neil appealed to the IPO for support to counter negative social media posts casting doubt on the UK’s continuing EPC membership.

1. https://parliamentlive.tv/event/index/a999b51c17c2-47a8-adc0-86e013390d1f?in=11:25:15

2. https://www.cipa.org.uk/news/the-european-patent-conventionand-its-impact-on-the-uk-economy-and-innovation/

3. https://www.iam-media.com/article/uk-no-epo-withdrawal

CPTPP accession: intellectual property carve out

The full government announcement from 31 March 2023 on the conclusion of negotiations on the accession of the United Kingdom of Great Britain and Northern Ireland to the Comprehensive and Progressive Trans-Pacific Partnership can bee seen online. † Set out below is the text from this announcement on intellectual property.

CPTPP membership will provide the UK with a new and powerful means of engaging these members, with a combined population of over 500 million, on trade-related aspects of intellectual property, in order to promote the UK’s interests in shaping international arrangements for IP protection.

• The UK will be a constructive member of CPTPP, we will champion our values and priorities, including through the committees and councils set up by the agreement.

• The UK’s IP regime achieves an effective balance between rewarding creators and innovation and reflecting wider public interests, such as ensuring access and use of IP on reasonable terms. Joining CPTPP has not impacted this balance and will

complement and reinforce new and enhanced bilateral trade agreements we have already signed and are currently negotiating with CPTPP members. The UK will not make any domestic changes regarding grace periods until the necessary amendments to the relevant international conventions have been made. The UK has therefore ensured our accession to CPTPP is consistent with our existing international obligations, such as the European Patent Convention (EPC). The UK will promote international harmonisation on the grace period and will report annually to other CPTPP Members regarding progress on this matter

• The UK meets the standards required for CPTPP accession including those related to pharmaceutical patents and generic medicines.

† See www.gov.uk/government/publications/comprehensive-and-progressive-agreement-for-trans-pacific-partnershipcptpp-conclusion-of-negotiations/ conclusion-of-negotiations-on-the-accession-of-the-united-kingdom-of-great-britain-and-northern-ireland-to-the-comprehensive-and-progressive-trans-pac

Lee and Neil researched the UK’s top public affairs consultancies and took soundings from the Chartered Institute of Public Relations. They reconvened and found they had independently identified the same consultancy to ensure that our messages were heard at cabinet level and across parliament: Cicero AMO, led by leading political strategist Iain Anderson. They met Iain and his team, on 26 February 2021, for an initial discussion about a full-scale CPTPP campaign. A costed proposal from Cicero was considered and agreed by CIPA Council, on 3 March 2021, and the CPTPP campaign proper was under way. The Cicero team continued to meet the CIPA team every Thursday for around 18 months to discuss strategy and priorities for the coming week.

On 9 March 2021, Lee briefed the Law Society on our issues ahead of an evidence session the following day by the House of Lords’ International Agreements’ Committee inquiry into the CPTPP. The Law Society representative raised our issues with the Committee and they were picked up by three peers, Lord Goldsmith, Lord Foster and Lord Gold, to whom we wrote a few days later.

The team, led by Lee and Catriona, met with the Institute of Patent and Trade Mark Attorneys of Australia on 11 March 2021

Alicia, Catriona and Neil prepared a submission to the House of Lords’ CPTPP inquiry which was submitted on 12 March 2021. Neil also wrote to managing partners urging them to submit evidence on behalf of their firms to the inquiry, which a number did. On the same day, Alicia attended a regular ‘Four Presidents’ meeting with the CEO of the IPO (involving CIPA, CITMA, FICPI-UK and the IP Federation) at which it was confirmed that the IPO was liaising hourly with DIT on CPTPP and that negotiators were aware of the

EPC issues and had read and digested our EPC impact report.

Lee and Neil met the Law Society’s international and public affairs team, on 17 March 2021, to discuss working together on a number of issues, including the CPTPP campaign.

On 19 March 2021, following a proposal from Cicero, Neil and CIPA External Affairs Officer Lucy Wharton began mapping CIPA members and firms to the parliamentary constituencies of key cabinet ministers, with the aim of developing case studies of IP-rich companies that would be adversely affected should the UK be forced to leave the EPC and which Cicero could use in Ministerial briefings.

Working with Alicia, Catriona, Lee and Neil, Immediate Past President Richard Mair and Past President and International Liaison Committee Chair, Tony Rollins, began reaching out to sister institutes in CPTPP states, from 25 March 2021, to seek meetings. Neil worked with Catriona and Cicero to develop country-specific briefing papers explaining why it would be to the benefit of their country for the UK to remain in the EPC. The hope was that, once briefed by CIPA, CPTPP countries would be prepared to raise our issue with their governments. In due course, in some countries, this happened.

Activities stepped up further on 29 March 2021. In the morning the CIPA team met with colleagues from the Association of Singapore Patent Attorneys (‘ASPA’) and other Singaporean contacts to brief them and ask for support and at 10 pm that night we met colleagues from the New Zealand Intellectual Property Association (‘NZIPA’) with the same asks. Alicia received a letter from IP Minister Amanda Solloway, reconfirming

the government’s intentions to respect the EPC in CPTPP negotiations, thanking CIPA for its impact assessment and welcoming further input from us. Neil sent an email appeal to all members to widen the case study search. Thanks to all members who responded, but special thanks go to Stephen Charlton who spent many evenings of his own time searching Espacenet for companies (and their patent attorneys) who fitted the bill.

Next on our list of overseas contacts was Malaysia and on 1 April 2021 the team met and briefed colleagues from the Malaysian Intellectual Property Association (‘MIPA’).

On 6 April 2021, we met and briefed contacts in Brazil and Chile.

Lee briefed Lord Smith, Chair of IPReg, on 6 May 2021, which resulted in Lord Smith tabling a number of written parliamentary questions about the CPTPP process.

We next met the President and international team at the Japan Patent Attorney Association (‘JPAA’), on 11 May 2021. Neil followed up on each of our overseas video calls with briefing papers and offers of further help.

Between 13-17 May 2021, Neil was in email correspondence with Baroness Hayter, Chair of the House of Lords’ International Agreements Committee.

We met Jim Shannon MP, who had spoken on IP and CPTPP many times in parliament, on 1 June 2021.

Lee and Neil briefed Bill Esterson MP, then Shadow Minister for International Trade, on 8 June 2021. Mr Esterson followed this up with a written parliamentary question to the government about IP harmonsation and trade deals,4 which was answered by Greg Hands MP, Minister for Trade Policy.

We met Lord Foster, of the House of Lords’ International Agreements Committee, on 15 June 2021.

We met Lord Goldsmith, then Chair, House of Lords’ International Agreements Committee, who on 16 June 2021, wrote to Lord Grimstone, Minister for Investment, DIT, 5 detailing our CPTPP/EPC concerns in considerable detail and quoting CIPA’s EPC impact report. He copied the letter to Angus MacNeil MP, Chair of the House of Commons’ International Trade Committee; Trade Policy Minister Greg Hands MP; and the Minister for International Trade, Ranil Jayawardena MP.

CIPA publicly welcomed the publication, on 22 June 2021, of the government’s Strategic Approach to UK Accession to the CPTPP, 6 which expressly committed to safeguarding UK membership of the EPC. Neil followed this up by emailing contacts in DIT to congratulate trade negotiators on publication of the document and on securing an Agreement in Principle with Australia. This opened the door to regular contacts with senior CPTPP negotiators.

4. https://questions-statements.parliament.uk/ written-questions/detail/2021-06-08/12113

5. https://committees.parliament.uk/publications/6320/ documents/69485/default/

6. https://assets.publishing.service.gov.uk/government/ uploads/system/uploads/attachment_data/file/1027860/ dit-cptpp-uk-accession-strategic-approach.pdf

Cicero arranged for the team to meet and brief Angus MacNeill, on 24 June 2021. This resulted in Mr MacNeill asking written7 and oral questions8 of government on our issue.

On 24 June 2021 we met Lord Anderson KC, on 5 July 2021 we met Sir Roger Gale MP, a member of the Trade and Business Commission and on 10 July 2021 we met Lord Garnier KC.

We first met members of the UK’s CPTPP negotiating team, on 13 July 2021, for a briefing on how we could best support the negotiators.

We met and secured the support of Viscount Trenchard, who had taken a keen interest in CPTPP accession negotiations, on 29 June 2021.

We discussed our key messages with Debbie Abrahams MP, a member of the Life Sciences All Party Parliamentary Group, on 20 July 2021

Lee had a call with former Lord Chancellor Lord Mackay, on 10 August 2021. Lord Mackay followed up by sending a letter proposing a carve-out of the grace period in the CPTPP negotiations to International Trade Secretary, Liz Truss.

The team met with the Officers and Executive of the Intellectual Property Institute of Canada (‘IPIC’), on 13 August 2021, to provide a CPTPP briefing and appeal for help in raising our issues with the Canadian government. We met with the top team at IPIC again on 27 August 2021 and received firm support which was soon to be translated into an approach to the Canadian government.

Neil had an exchange of email correspondence with various senior members of the UK negotiating team on 30 September 2021, in which he reported breakthroughs in support for the UK position from the IP community in two countries.

Neil spoke with a senior member of the UK negotiating team, on 1 October 2021, to discuss latest developments, the expected timeline for negotiations and how CIPA could continue to best assist the team.

CIPA’s evidence to the House of Lords’ International Agreements Committee featured in its report UK accession to the Comprehensive and Progressive Agreement for Trans-Pacific Partnership(CPTPP):ScrutinyoftheGovernment’sNegotiating Objectives, 9 published on 17 November 2021

We met Penny Mordaunt, Minister of State at the Department for International Trade, to discuss the importance of EPC membership in the CPTPP accession talks, on 1 December 2021

On 18 January 2022, the team again met and briefed Baroness Hayter, Chair of the House of Lords’ International Agreements Committee.

7. https://questions-statements.parliament.uk/writtenquestions/detail/2021-06-21/19534/

8. https://hansard.parliament.uk/Commons/2022-01-20/debates/6FA7B37C55ED-47FA-B3EF-5AF5DD01BC62/TopicalQuestions#contribution95682F3D-8BC6-404E-AE72-905E9F8D401B

9. https://committees.parliament.uk/publications/7859/ documents/81612/default/

Lee met Lord Astor, of the House of Lords’ International Agreements Committee, on 31 January 2022. Lord Astor was sent CIPA’s CPTPP briefing materials and used these to raise our issues in a debate10 on the committee’s CPTPP scrutiny report published in November.

We met Mick Whitley MP, of the House of Commons’ International Trade Committee, on 15 February 2022

Neil met with a senior UK negotiator for an update on negotiations, on 22 February 2022

Neil brokered a face-to-face meeting between UK negotiators and IPIC, in Ottowa, Canada, on 3 May 2022

Lee had another call with Lord Mackay, on 5 May 2022, in which he answered Lord Mackay’s questions about the specific provisions of the CPTPP threatening EPC membership.

Catriona, Lee and Neil met Mike Wood MP, a member of the House of Commons’ International Trade Committee, in his Westminster office, on 11 May 2022

We met Ruth Cadbury MP, Shadow International Trade Minister, on 27 May 2022, again landing all our key messages and referencing our conversation with her predecessor, Bill Esterson.

Lee and Neil spoke with Charles Courtenay KC, the Earl of Devon, on 12 July 2022, who, as an experienced IP litigator with considerable knowledge of the CPTPP as it relates to IP, was keen to support our campaign.

At a second meeting with MIPA, on 26 July 2022, our contacts agreed to raise CIPA’s points and supporting statistics with the Malaysian CPTPP negotiators.

A further meeting was held with ASPA, on 29 July 2022, during which they made an undertaking to raise our points with the Singaporean negotiators. Neil supplied details of the Singaporean lead negotiators, through his contacts with the UK negotiators.

Catriona and Neil met with key members of the UK’s CPTPP negotiating team, on 22 August 2022, to receive an update on the talks and to share latest intelligence.

During a meeting, on 4 October 2022, with a well-connected Peruvian patent attorney, our contact promised to raise our points with the Peruvian negotiators. Contacts for the Peruvian lead negotiators were supplied by the UK negotiators and forwarded by Neil.

An appeal was made to managing partners, on 7 October 2022, for examples of EPC corporate case studies in key CPTPP countries. The aim was to find a large organisation that filed heavily at the EPO and would be prepared to write to its government in support of UK calls for a carve-out of the grace period. Our thanks to all who responded. Special thanks go to Forresters IP LLP who not only mobilised a large corporate client 10. https://hansard.parliament.uk/lords/2022-02-01/debates/A6D0C91882D7-4128-BA7A-9A6B3543CB62/CPTPP(InternationalAgreementsComm itteeReport)#contribution-2231685D-54E6-4ED7-B156-7BEA0A4F6CFD

in support of our position but also worked with contacts on NZIPA Council to co-ordinate submissions being filed directly with the New Zealand government to underline the importance of the UK’s continued membership of the EPC.

We had another call, on 7 December 2022, with UK CPTPP negotiators who informed us about the latest state of play in negotiations.

Lee was called to give evidence to the House of Commons’ International Trade Committee’s inquiry into CPTPP accession on 25 January 2022. Lee told Committee Chair Angus MacNeill 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 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 session11 (Lee’s evidence beings on p19), or watch the session12 on Parliament TV.

We were joined by the IP Federation, with whom we had worked in partnership throughout the campaign, for our final call with negotiators, on 30 March 2022, when (under strict embargo) we were told about the successful outcome of negotiations.

CIPA was represented on all the various formal IP consultative groups set up by the DIT to consider FTAs.

CIPA responded to the following government and select committee consultations on the government’s trade agenda and its impact on the UK IP landscape to further establishing our credentials in this space. Below is a list of the written submissions we made throughout the campaign.

Written submissions

• House of Lords: International Agreements Committee inquiry into CPTPP accession, the UK-India FTA, UK-Australia FTA and the UK-New Zealand Agreement in Principle

• House of Commons: International Trade Committee inquiry into UK-NZ Agreement in Principle, CPTPP inquiry and UKAustralia FTA

• Government: UK Government consultation on Gulf Cooperation Council Agreement and South Korea FTA.

Our thanks go to the UK CPTPP negotiating team, all UK parliamentarians who we met and who have supported the campaign and to all colleagues in our sister associations overseas who assisted us. Special thanks go to NZIPA, MIPA, ASPA and IPIC, who raised our positions with their respective governments. NZIPA said: ‘This a great example of our two organisations working together to achieve an outcome that is good for the members of both organisations. The outcome is clearly the best result for NZ applicants.’

11. https://committees.parliament.uk/oralevidence/12589/pdf/ 12. https://parliamentlive.tv/event/index/9be9d155f4ba-422d-ab72-b162cffdf28b?in=11:04:31

REVIEW OF PATENT CASES IN 2022

By the Bristows team – Dominic Adair, Nadine Bleach, Katie Cambrook, Brian Cordery, Charlie French, Naomi Hazenberg and Lucy Sewter

Introduction

Somewhere (and somehow) between the end of the global Covid-19 pandemic and the beginning of a worldwide economic recession, the English judges dealing with patents cases kept a clear head and a steady hand and continued to turn out their decisions. In fact, by and large, 2022 was a remarkably ‘normal’ year as patents cases go. So normal, in fact, that the courts delivered exactly the same number of decisions (75) as they had in the previous year (which itself was an output not out of step with the years before that – 66 in 2020, 86 in 2019 and 63 in 2018).

The year’s highlights were at once both new yet strangely familiar. For example, once again for patent practitioners, the year’s biggest headline was to be found not in England but upon foreign soil with the news, in January 2022, that Austria had deposited its instrument of ratification of the Protocol on the Provisional Application of the UPC Agreement. Thereby starting the provisional application period for the UPC and finally, after over a decade of wrangling, making the new system a certainty.

The year was also notable for the following reasons:

• The juggernaut that is the litigation between Optis and Apple continued to make its way through the court lists, consuming more sitting time than any other dispute in the Patents Court and being responsible for adding a further six decisions to an existing tally of almost three times that number.

• The technical contribution of pharmaceutical patents came under the spotlight. A compound patent for a blockbuster product (apixaban) was toppled on the basis that it failed to contribute anything plausible and in a case concerning a formulation patent (deferasirox), the court considered the extent to which the technical contribution needs to be written into the claims.

• Those who say a patent is only enforceable upon grant received a jolt from Roth J who entertained an application for an interim injunction based upon a still pending application.

• Signs that the English approach to interim injunctions being readily awarded in pharmaceutical patent cases may have reached a high water mark, with the courts deciding in Neurim and in Novartis that damages were an adequate remedy for the patentee.

• The Patents Court Guide received an update, encouraging the use of junior advocates wherever possible, crystallising the case law to date in relation to primers and their content, and confirming that patent trials can be listed prior to the CMC if the time estimate and subject matter of the trial can be agreed.

As with previous years, this review attempts to summarise the most important decisions on a topic-by-topic basis. The UK Patents Act 1977 is referred to as the ‘Act’ and the European Patent Convention 2000 as the ‘EPC’. Judges are referred to according to the office held at the time of their decision (not subsequent elevation) and counsel who have taken silk are referred to as KC throughout (notwithstanding that they started the year with the title QC). As ever, the authors have endeavoured to cover every important development that occurred during the course of the year. However, as this is a condensed summary, not every decision is mentioned.

Claim construction and infringement Construction

The Court of Appeal’s judgment (led by Birss LJ) in Lufthansa v Astronics1 contains two points of interest to practitioners. First, this was a case where differences over the prior art were said to lie in the pre-characterising part of the claim, which by convention does nothing more than describe the prior art. Nothing wrong with that, Birss LJ held, noting that this was a perfectly legitimate approach for patentees to take because the invention might lie in a new combination of old features. Second, the role of cross-referenced prior art in patent specifications was considered. It was argued that the judge had made a finding which suggested that the skilled person would read the entire specification of the referenced art and hence had departed in error from Adaptive Spectrum 2 where it was held that the correct approach is to consider what the skilled addressee would understand from the cross-reference. Again, Birss LJ disagreed with the allegation, finding no error in the judge’s approach. He noted that the quality of the cross-reference itself was a point that had arisen before him in FibroGen, 3 which he declined to decide because it did not affect the outcome of the case, and here again it did not matter to the result so could be left to another occasion.

Incidentally, although practitioners must wait a little longer for a judicial analysis of the correct approach to crossreferenced prior art in patent specifications, they were gifted an analysis of the correct approach to cross referenced documents in prior art by Meade J in the last Optis v Apple4 technical trial. Here, the fact that the skilled person has unlimited diligence did not mean that they would read every reference with unlimited patience. Rather the skilled person would consider turning up references to see what was there but, following that, what they did with the referenced document engaged the law of obviousness. In the case at hand, the judge noted that the facts strongly favoured the skilled person reading the additional document because its title suggested it was highly likely to be relevant, it was from the same organisation and was produced close in time to the cited prior art.

In the same decision, Meade J considered what it took for there to be infringement of a product claim that is worded to require a product to be ‘adapted to’ perform a certain function. In this case, the claim required that a mobile phone be ‘adapted to spread and transmit… in accordance with a code-multiplexing structure’. The legal principles applicable to such claims had been considered before in IPCom v Vodafone5 where the claim required that base stations were ‘set up to send’ certain signals. Meade J quoted a long passage from that decision which concluded that base stations were out of scope if any degree of reprogramming was needed. The judge acknowledged that

1 Lufthansa Technik AG v Astronics Advanced Electronics Systems & Ors [2022] EWCA Civ 20

2 Adaptive Spectrum and Signal Alignment Inc v BT [2014] EWCA Civ 1462

3 FibroGen Inc v. Akebia Therapeutics Inc. and ors [2021] EWCA Civ 1279

4 [2022] EWHC 561 (Pat)

5 [2021] EWCA Civ 205

REVIEW of UK PATENT CASES in 2022

For more information on Bristows LLP or the authors of this review, please visit www.bristows.com

VOLUME 52 NUMBER 4 APRIL 2023

this was a ‘sensible approach’, not least for policy reasons when it comes to assessing the validity of such a claim over a general purpose computer. Here, Apple’s phones had the requisite programming and so infringed, despite the fact that the logic was never put into effect in the UK.

One of Meade J’s earlier decisions in Optis v Apple6 on various issues of construction and novelty was considered in the Court of Appeal where Birss LJ, gave the leading judgment7. There was no disagreement regarding the law on construction and Birss LJ, in upholding the decision below, highlighted Floyd J’s comment in Nokia v IPCom8 that by using general language in the claim, but describing the invention by reference to a specific embodiment, the patentee was generally not assumed to have limited the claim scope to the specific embodiment.

Suppose an originator invents a new compound which cures a devastating condition, files a patent application describing how to make that compound and includes credible evidence – perhaps even clinical evidence – of the impact of the new compound on the condition. Need the originator state the condition to be treated in the claims of the patent application for the effect of the compound to be taken into account for the assessment of inventive step or will a claim to the compound per se be assessed in light of the teaching of the specification?

This question and the broader question of the extent to which technical features need to be included in the claims for the purpose of claim interpretation was an interesting aspect of

the judgment of HHJ Hacon in a dispute between Teva and Novartis.9 The dispute concerned two similar patents (owned by Novartis) for a formulation of the drug deferasirox.

Novartis’ patents contained clinical data showing that a film-coated tablet had improved bioavailability and a reduced food effect compared with the existing tablets which were dispersed in water prior to consumption by the patient. Novartis contended that the improved bioavailability and reduced food effect were surprising and that the film-coated tablets were better for patient compliance. However, HHJ Hacon considered that if Novartis were to rely on improved bioavailability, this would need to be stated in the claim. He concluded:

‘For the reasons given above, I take the view that higher bioavailability and reduced food effect cannot be imported into either the claims or the inventive concept. It makes no difference, if it is the case, that the skilled team reading the Patents would regard higher bioavailability and reduced food effect as the most significant technical insight conveyed by the description. They would read the claims and understand that this insight is not part of the inventive concept of the invention as the patentee has chosen to claim it. To give an extreme parallel: if the description had plausibly disclosed a product, identified by its chemical formula, as being an instant and permanent cure for iron overload, that would have potentially been a more profound technical insight. But if it were nowhere mentioned in the claims it would not form any part of the inventive concept as claimed.’

9 Teva Pharmaceutical Industries Limited and Anor v Novartis AG & Anor [2022] EWHC 2847 (Pat)

Naomi Hazenberg Senior Associate

Nadine Bleach Senior Associate

Dom Adair Partner

Charlie French Senior Associate

Katie Cambrook Senior Associate

Lucy Sewter Litigation Support Manager

Brian Cordery Partner

Quotation of the year

Having held that the claims of the patents were limited to film-coated tablets without any additional improvements, HHJ Hacon held that it would have been obvious for the skilled team to reformulate the dispersible tablets of the prior art into a swallowable film-coated tablet.

Infringement under the doctrine of equivalents

On the issue of infringement, and staying with the deferasirox case, the claims of Novartis’ patents required that the tablets contained 45-60% deferasirox based on the total weight of the tablet. Teva’s deferasirox tablets contained an amount in excess of that range (the Judge did not find it necessary to state the precise figures, which were confidential). It was agreed that Teva’s deferasirox tablets did not infringe on a normal or purposive construction but Novartis contended that they infringed on the basis of equivalence. As a preliminary observation, and in keeping with his earlier decision in Regen v Estar 10 HHJ Hacon rejected the notion that the numerical values could never be susceptible to stretching so as to allow for equivalents anywhere outside the claimed range, holding that such a principle would be contrary to first principles and the guidance of the Court of Appeal pre-Actavis 11 which appeared to still to represent the law.

Turning to the Actavis questions, HHJ Hacon explained that for the purpose of the first question (does the variant achieve substantially the same result in substantially the same way as the invention?), where the inventive concept is a product, the variant achieves ‘substantially the same result’ if it is ‘substantially the same product’. With the exception of the amount of deferasirox present in the formulation, Teva’s deferasirox tablets achieved exactly the same result in all aspects of the inventive concept. However, HHJ Hacon considered that the evidence as a whole was that the patents would be understood by the skilled team as requiring strict compliance with the claimed range of deferasirox. On that basis, as Teva’s deferasirox tablets did not strictly comply with the claimed range, the Judge concluded that they fell outside the claims under the doctrine of equivalents.

The third Actavis question also got the potential infringer out of jail (for some of its products) in Carku v NOCO12 The patent

in suit concerned an apparatus to jump start a vehicle. Claim 1 required the electrical connection to be closed by a power FET switch, whereas most of the accused products used a relay instead. Meade J found that the relays in the accused products were not within the scope of the claim for three reasons:

1. although both relays and power FETs were mentioned in the specification, relays were only mentioned in relation to the prior art and the Judge considered it would be rational for the patentee to distance the claims from the acknowledged prior art;

2. the broader term ‘switch’ was used in the specification but narrower words were used in the claim;

3. the claim used functional language in some instances yet descended to physical detail in relation to the power FET switch.

The patentee sought to argue that both relays and power FETs were common general knowledge (‘CGK’) and would be recognised as interchangeable. However, following Birss J’s logic in Facebook v Voxer,13 Meade J concluded that if the first Actavis question is answered in the patentee’s favour on the basis that two known alternatives are not materially different, focusing on their similarity, it may make it all the more significant that the patentee, knowing of both, only mentioned one of them in the claim. However, victory was short-lived: in respect of a further allegation of infringement by equivalents raised in relation to a different feature of the claim, Meade J considered that the variant fell within the scope of the claim. Here, the relevant claim feature was a conceptual, functional one (rather than a detailed physical implementation) and as such could not be avoided by a different hardware layout.

Until Nicholas Caddick KC (sitting as a Deputy High Court Judge in the Intellectual Property Enterprise Court) handed down his decision in Vernacare Limited v Moulded Fibre Products Limited,14 the Formstein defence remained a theoretical possibility without a decided example. Now it finds its place in the law, in a case involving open-topped washbowls made from moulded paper pulp, such as those used in hospitals, care homes and nursing homes. Having rejected infringement on the normal basis, the Judge proceeded to address the Actavis15 questions. Unsurprisingly, the parties differed in their framing of

‘It is not the function of the courts of England and Wales to provide advisory opinions to foreign courts seised of issues which fall to be determined in accordance with their own laws. The English courts have no special competence to determine such issues. If anything, it is likely that they have less competence than the local courts.’

Arnold LJ in Teva UK Limited and anor v Novartis AG [2022] EWCA Civ 1617

the patent’s inventive concept. Vernacare submitted that it was ‘to provide a moulded paper pulp bowl large enough to be used as a washbowl, with a grip means in the form of recesses’, whilst MFP considered it ‘the use of recesses with vertical sides’. However, the Judge did not consider it necessary to decide the point, as Vernacare would fail either way. On the one hand, if the claim was interpreted strictly under the third Actavis question, the defendant’s products would fall outside. On the other hand, if the claim was read more broadly to cover a moulded bowl with an undulating ridge running around the side walls, this was part of the common general knowledge which the defendant’s washbowl simply implemented – hence it could avail itself of the Formstein defence. [Also see page 22.]

Relevance of prosecution history

The only two situations in which it is appropriate for the court to refer to the prosecution file were set out in Actavis v Lilly:16

1. if the point at issue is truly unclear if one confines oneself to the specification and claims of the patent, and the contents of the file unambiguously resolve the point, or

2. if it would be contrary to the public interest for the contents of the file to be ignored.

These were considered by Meade J in SGRE v GE17 He noted that the first condition would not be met by a point being merely arguable both ways and a file which said something that might be relevant. Nor would the file containing something of potential relevance be sufficient by itself to satisfy the second condition. In the case at hand, the Judge found that the prosecution file did not contain information of the requisite clarity to engage either condition.

Indirect infringement

In Advanced Bionics v Med-El Elektromedizinische,18 Campbell Forsyth (sitting as a Deputy High Court Judge) was called to consider a question of indirect infringement. The patent related to a disk magnet for cochlear implants which allowed for safe magnetic resonance imaging. The question before the Judge was whether dealing with external parts (the headpiece and/ or external magnets) to be used with infringing implants was an infringement under section 60(2) of the Act. The Judge’s view was that although the implanted part of the system alone (without the external parts) comprised the patented invention, the design and form of the external components contributed sufficiently to the implementation of the invention to make them ‘essential elements’.

However, that was not enough. The external components also had to be ‘means suitable for putting the invention into effect’ and here, the patentee fell short. Primarily because the provision of the external components did not constitute an act of ‘making’ (which is necessary if the invention is to be put into effect). Considering Schutz v Werit,19 the Judge took into account a number of factors for this ‘finely balanced’ point, including that the owner of the implant may need to replace

the headpiece and magnet if damaged or lost, and that the evidence pointed to such activities being permissible as mere repairs.

Validity

The skilled person and their common general knowledge (‘CGK’)

Meade J considered a number of issues in relation to the breadth of interest, or degree of specialism, of the skilled team in Teva and Sandoz v Astellas, 20 a case concerning the β3 adrenoreceptor agonist mirabegron, a treatment for overactive bladder. The clinical expert selected by the claimants was a ‘pure’ clinician (a consultant in the NHS) whereas Astellas’ clinical expert was a pharmaceutical clinician from industry. This led to a difference in the frequency and depth of their interactions with the parties’ respective pharmacology experts. However, Meade J held that this was not a concern for the court as the skilled team is a notional construct and what matters is the overall skill-set of the team, not the precise distribution of it among the team’s members. The Judge also considered what the relevant ‘established field’ was (per Birss J’s approach in Illumina21) and whether it was limited to β3 adrenoreceptor agonists for the treatment of overactive bladder, as the claimants asserted, or whether it was broader, being any new or improved treatments for overactive bladder, as argued by Astellas. Given the evidence that there were a considerable number of teams working on multiple targets in this area (and no evidence of teams who only worked on β3 adrenoreceptor agonists) the Judge sided with Astellas. The result was that the skilled team would have a substantial degree of uncertainty that mirabegron or any other compounds in the cited prior art would work and hence the obviousness attack failed.

The issue of the skilled person’s level of involvement at relevant ETSI22 standard setting meetings is one that is hotly debated in many telecoms cases. And so it was in Optis v Apple, 23 where Meade J rejected an argument that the level of detail in the specification of the patent created an assumption that the skilled person was always deeply involved in the standardsetting process. Instead, he found that the skilled person also represented those who occasionally attended meetings and provided background support. This decision limited the number of ETSI documents that were deemed to be CGK – excluding minutes of the meetings, documents circulated only on the email reflector and every individual TDoc. However, significant and firm decisions of the working group could be CGK. The Judge considered that it was not helpful to be taken through large numbers of TDocs and that this approach was consistent with the decisions in Unwired Planet v Huawei,24 where the skilled person would find out in general terms what was happening in the relevant working groups and that an expert who did not do the same was not doing their job.

20 [2022] EWHC 1316 (Pat)

21 Illumina Cambridge Ltd v Latvia MGI Tech SIA [2021] EWHC 57 (Pat)

Novelty

Anticipation by inevitable result is a difficult argument on which to succeed. It was run in Saint-Gobain v 3M,25 the alleged infringer, Saint-Gobain, arguing that the claimed invention was anticipated on the basis that practising the examples of the prior art would inevitably lead to something that fell within the claims. However, the argument was given short shrift by Michael Tappin KC (sitting as a Deputy High Court Judge): the relevant examples provided little specific information about the process to be used and allowed for variation in numerous aspects and, in any case, Saint-Gobain had been overly selective in identifying particles from samples provided by 3M that were not demonstrated to be representative of the sample as a whole.

It is unusual for a judge to reject an argument that the patent is obvious over a piece of prior art but then accept the argument that it is anticipated by that same prior art. However, that was the outcome in InterDigital v Lenovo 26 The case focused on InterDigital’s patent relating to the manner in which data was assembled for transmission in the HSUPA system. The only prior art being considered was a marked-up version of the 3GPP standard that had been circulated on the ETSI working group email reflector. Mellor J rejected the defendant’s interpretation of the prior art for being contrived and hindsight-driven rather than an objective assessment of what the skilled person would have understood from the text at the priority date. He warned that CGK can only supplement the disclosure of the prior art if it would have come to mind when the skilled person was reading the document; the CGK was not a reservoir from which information can be plucked to assist. Unsurprisingly, given the problems with hindsight in the defendant’s case, its obviousness attack was rejected. However, concessions made by the claimant’s expert in cross-examination led to the anticipation attack succeeding.

Obviousness

Nokia v Oppo27 concerned Nokia’s patent on a radio transmitter design that was said by Oppo to be written at so high a level of generality to be merely an ‘ideas patent’, after Henry Carr J’s decision in Garmin v Philips 28 However, Meade J reiterated his view that ideas patents are not a separate category and that it is still necessary for the party attacking the patent to show that it was obvious to perform the invention. Stressing that he was not disagreeing with Henry Carr J, Meade J highlighted the valuable point that in such cases the patentee cannot rely upon problems of implementation that are not solved by the patent and noted that the inventive step has to be assessed at the same level of generality as the claims. In this case, despite the fact that the claims did not require specific circuitry, they were still held to be inventive over the cited prior art.

Generally, judges in the UK are highly sceptical of obviousness cases based on CGK alone, repeatedly stating that such arguments must be treated with caution; they are necessarily created with hindsight knowledge of the invention and enable litigants to avoid inconvenient details that may appear in prior

art documents. Meade J repeated this caution in Sandoz and Teva v Bristol-Myers Squibb and Pfizer29 (the second of the two apixaban cases of 2022), in which obviousness was alleged over a prior art document that identified the compound in question but where the obviousness of the specific formulation was, in effect, based on CGK alone. However, notwithstanding the conceptual attack based on CGK and the need for multiple sequential steps to be taken to reach the claimed formulation, the Judge concluded that the obviousness attack was clearly made out. The sequential steps that were required were obvious steps that the formulator would have taken for regulatory reasons (and more generally to play it safe in the context of an expensive drug development process). Further, although there were two possible solutions to address the slow dissolution rate of apixaban – only one of which was claimed – the Judge applied the principle from Brugger v Medicaid30 that an obvious route is not made less obvious by the existence of other obvious routes

A stepwise approach to the invention fared less well in SaintGobain v 3M31. Saint Gobain had argued that it would have been obvious for the skilled person to make ‘workshop modifications’ to the prior art teaching, which would (or could) lead to the production of the dish-shaped abrasive particles of the claims. The argument relied on the skilled person firstly deciding to conduct workshop modifications and then selecting a particular combination of modifications that would result in the claimed particles. However, Michael Tappin KC (sitting as a Deputy High Court Judge) described this as ‘a classic step-by-step analysis infected by hindsight knowledge of the answer’ that went against the prior art teaching to aim for flat (rather than dish-shaped) particles.

Commercial success and long felt want

Saving inventive step through secondary indicia such as commercial success or long felt want is devilishly difficult. The decision in Vernacare v Moulded Fibre Products32 served as a reminder of this, notwithstanding that the patent was upheld as valid [see page 22]. On long felt want, Vernacare submitted evidence trying to show that the need for detergent resistant disposable pulp washbowls had been felt since other pulp products had first been introduced in care settings in the 1960s. In this regard, its main argument was that the use of nondisposable washbowls which required cleaning increased the risk of cross-contamination. On commercial success, it submitted figures showing it had sold over 27.5 million units in 2018.

The Judge considered the factors on secondary indications set out by Laddie J in Haberman v Jackel33 noting that the evidence did not suggest that the lack of disposable wash bowls was a problem in 2006, since, despite the hypothetical problem of cross-contamination with reusable bowls, there was no evidence of any actual infections. The evidence that Vernacare did submit was post-priority and largely originated from Vernacare itself as part of its marketing efforts for its new product. With regards

25 [2022] EWHC 1018 (Pat)

26 [2022] EWHC 10 (Pat)

27 [2022] EWHC 2814 (Pat)

28 [2019] EWHC 107 (Ch)

to Vernacare’s sales as an alleged indicator of the commercial success of the invention, a sales figure in isolation meant nothing. There was no evidence before the Court on the profit margin or the overall size of the market, or whether these sales were due to the originality of the invention or the success of its marketing.

Long felt want won’t create an inventive step just because there’s a long gap between the date of a prior art citation and the alleged invention. In a case between JCB and its rival, Manitou34, there were 25 years between the date of one of the pieces of prior art and the priority date of the patent. That no-one had developed the prior art in that period led JCB, the patent owners, to suggest that they had made a good invention. However, HHJ Hacon disagreed, stating that where the evidence suggested a patent was obvious, long felt want can only ‘negate that evidence if there is no plausible reason, other than that the invention was not obvious, for the invention having not been performed during the relevant period’.

Plausibility

‘Lack of plausibility is not a ground for revocation in itself and it was run both as AgrEvo obviousness and insufficiency. Neither side said it made a difference which head applies, and I agree…’ This is how Meade J introduced the issues at stake in Sandoz and Teva v Bristol-Myers Squibb35 and he therefore proceeded to decide the case on whether there was a ‘lack of plausibility’, rather than AgrEvo36 obviousness or insufficiency per se. The case concerned BMS’ compound patent for apixaban, a blood thinner, and plausibility was assessed based on the principles in Warner-Lambert37 and with regard to the three-stage test of FibroGen 38 The Judge noted that in defining what it means to say that the invention works under stage 2 of FibroGen ‘a patentee is not necessarily limited to the most demanding teaching of utility in the specification and is entitled to try to rely on a less ambitious degree of utility, or a utility of a different but related kind’. However, this did not save the patent in this case.

To avoid a squeeze with added matter, plausibility was assessed against the application as filed, in which apixaban was disclosed as one of over 140 examples but was not individually claimed. The Judge held that the application did not make it plausible that apixaban bound to blood coagulation factor Xa to any useful degree and, since all the disclosed utilities for apixaban depended on factor Xa binding, this rendered the patent invalid. Although the application stated that some compounds had been tested and been found to have some degree of factor Xa binding, there was nothing to allow an inference that apixaban was one of the compounds for which these results had been obtained. BMS had sought to rely on the structure of apixaban and what was known about factor Xa binding from the CGK but Meade J held that it was not possible to predict binding based on this (and apixaban’s actual binding was unexpected). Further, Meade J held that it would have been a significant problem for BMS if its case on structure relied entirely on the CGK as it would not represent

a technical contribution by the patentee.39 Finally, the fact that apixaban has since proved to be a successful drug did not assist BMS, and nor did the fact that it would have been relatively easy to test apixaban for its factor Xa inhibitory activity.

Insufficiency

In Saint-Gobain v 3M40, Michael Tappin KC (sitting as a Deputy High Court Judge) held 3M’s patent to dish-shaped abrasive particles with a recessed surface to be invalid for insufficiency on the basis that it would require an undue burden to produce particles across the full range of the claim, which he held was clearly a relevant range in the Regeneron41 sense. This was despite an attempt by 3M to rely on a cross-reference in the patent that apparently provided a solution to the difficulty at the top end of the range. On its face, the patent did not make it clear that the skilled person should consult the document for this purpose and there was no evidence that the skilled person would have done so to alight on the solution.

FRAND

Following Meade J’s thorough review of clause 6.1 of the ETSI IPR policy in 2021 in Optis v Apple 42 the issue came before the Court of Appeal in the autumn of 2022.43 The leading judgment was given by Arnold LJ, who rejected Apple‘s interpretation of the clause. Apple’s position was that it should not have to give an undertaking to enter the court determined FRAND licence or to avoid an injunction in the ‘interim’ period between a finding of validity, essentiality and infringement and the determination of FRAND terms. Rejecting the argument that some distinction should be drawn with the Unwired Planet44 case (in which the analysis regarding whether an injunction should be granted took place after the FRAND determination), it was noted that the refusal to give the undertaking involved a substantive loss of the patentee’s rights. The relevant clause is for the benefit of those who will agree to take a licence on objectively FRAND terms and an implementer cannot take the benefit of the patentee’s ETSI undertaking without accepting the corresponding burden. Arnold LJ rejected Apple’s submission that the Judge’s interpretation was akin to requiring the implementer to write a blank cheque –the price for not being enjoined was to commit to taking a licence on the terms that the court objectively determines to be FRAND; these would not be uncommercial or unviable given the evidence that would be considered as part of such a determination. It was made clear that a national court has to be able to enforce its determination against both parties in a dispute. That involves withholding an injunction if a patentee is unwilling to abide by its ETSI undertaking to grant a FRAND licence, but the flip side is that it must be able to grant an injunction against an implementer who is not willing to take a licence on terms determined to be FRAND.

Optis’ argument that an implementer should be disentitled permanently from relying upon the patentee’s ETSI undertaking

if it does not commit to taking the court determined licence was rejected. If an implementer changed its mind and did commit to take the licence set by the court, it would bring itself within the groups of beneficiaries of the stipulation pour autrui in clause 6.1. The ETSI undertaking is open to an implementer to enforce at any time, even if they had decided previously not to do so. Apple’s appeal on the competition issues addressed by Meade J was also dismissed by Arnold LJ, who noted that withholding an injunction in this type of situation would leave the patentee without an adequate remedy and would promote hold-out.

Interestingly, Arnold LJ saved one of the most notable elements of the judgment for his postscript where he again voiced his opinion that the dysfunctional state of the system in SEP/FRAND cases could only be rectified by the Standard Development Organisations adopting a legally-enforceable arbitration clause in their IPR policies.

In July, the Court of Appeal handed down its decision on the jurisdiction issues in Nokia’s SEP infringement case against Oppo.45 Oppo had appealed the decision of HHJ Hacon dismissing its jurisdiction challenges, in which the Judge had characterised the case as a dispute concerning the infringement, validity and essentiality of UK patents and, as a result, that provided the answer to any forum question: the UK. Arnold LJ, who gave the leading judgment, agreed with this characterisation of the claim and said it was supported by Oppo’s refusal to give up its challenges to the validity, essentiality and infringement of Nokia’s patents, which justified the need for technical trials in the UK on those issues. It was also noted that Nokia’s injunction claim was a key part of the relief claimed and that this was territorially linked to the UK. That was enough to uphold the first instance decision but Arnold LJ went on to look at the further relevant questions. He found that the decision by the Supreme People’s Court of the People’s Republic of China in Oppo v Sharp46 had changed the landscape since the UK Supreme Court’s decision in Unwired Planet47 and meant that China was now a possible alternative forum if the dispute was characterised as being about global FRAND licence terms. However, he said that even if the claim was to be characterised in this way, there was no natural forum for the dispute and, as a result, no forum would be the most convenient or more appropriate. Looking finally at the case management stay sought by the defendants, Arnold LJ did not see any reasons to disturb the finding of the Judge. However, he commented that if he had reconsidered the issue, he would have given more weight to the juridical advantage lost by Nokia and to the Chinese courts’ application of Chinese rather than French law to ETSI issues.

Our 2021 report noted that, despite Vestel’s unsuccessful attempt to start an implementer- initiated FRAND declaratory action, there was still a seed of hope, planted by Birss LJ, that an implementer could bring such an action. In 2022, the mantle was taken up by Kigen in its action against Thales.48 Following unsuccessful negotiations for a licence to Thales’ portfolio of eSIM SEPs, Kigen’s action included requests for declarations that two patents were invalid or not essential and a declaration that 45 [2022] EWCA

it was entitled to a FRAND licence (with a determination of those terms). In particular, Kigen highlighted clause 5.1 of the GSM IPR policy that requires an undertaking from members to grant FRAND licences to its SEPs and requires good faith negotiation of that licence. Kigen did not plead non-infringement but rather sought to enforce Thales’ obligation to act in good faith and grant a FRAND licence. Thales argued that the Court did not have jurisdiction to hear a free-standing FRAND determination that is not linked to an allegation of infringement or – alternatively – that the case should be stayed, as Kigen had not provided an undertaking to enter into such a licence.

Fancourt J did not agree. Rather, he noted that the pleaded case raised a proper contractual basis to bring the disagreement before the Court and that it was not only after a finding of infringement and an undertaking from the implementer that a dispute over FRAND terms could be settled by the Court. However, the Judge also had to consider an abuse of process issue following a shift in position from Kigen. It became clear prior to the hearing (and at the hearing) that Kigen was not actually prepared to undertake to enter the court determined licence to all of Thales’ declared SEPs but rather it wanted to wait to assess the position following the revocation and essentiality determinations. Although different from the Optis v Apple case,49 the Judge did not find it persuasive that Kigen should be allowed to wait to decide if it wanted the licence until it knew what the terms were and its unwillingness was potentially abusive. The Judge held that the FRAND declaration element of the claim should be stayed until Kigen either amended its claim to make it clear that it only sought a court determined FRAND licence on any patent found to be valid and essential, or gave an undertaking to take a FRAND licence. In the absence of either of these confirmations, the judge held it would be an abuse of process to allow the FRAND claim to continue. One important note added by the Judge was that he was not deciding that an undertaking is required in every free-standing FRAND determination – there would be many cases where there was no reason to doubt the claimant’s status as a willing licensee and in those cases it would be too onerous to require an undertaking.

Anti-anti-suit injunctions in the context of SEP litigation made a return in 2022, following decisions in IPCom v Lenovo50 in 2019 and Philips v Xiaomi51 in 2021. The injunction was granted by Meade J in favour of Philips, restraining Oppo from seeking relief from the Chinese courts which would prevent Philips from pursuing its English claim for patent infringement.52 The Judge emphasised that the fact that such anti-anti-suit injunction orders have been made by the English courts in the past in similar contexts ‘should not be thought to make anti-suit injunctions the default or the rule. Quite clearly, they have to be justified on the facts of every individual case’. The key fact which led the Judge to consider there was an imminent risk of Oppo seeking anti-suit relief in a foreign forum (if they were not otherwise restrained by the UK court) was that Oppo had previously sought and obtained anti-suit relief in China in the context of litigation between Sharp and Oppo which ended Sharp’s infringement proceedings in

Civ 947 46 No. 517 (2020) ((2020) 最高法知民辖终517号), (Sup. People’s Ct. Aug. 19, 2021).

[2020] UKSC 37 48 Kigen (UK) Ltd v Thales Dis France SA [2022] EWHC 2846 (Pat)

Germany. The Judge considered that this history was sufficient to find a good inference that Oppo would be willing to do the same again if it was strategically advantageous to do so and that such an act would be unconscionable and vexatious. However, Meade J considered the UK injunction should be limited to preventing such acts in China (as there was no evidential support for Philips to obtain worldwide relief) and should be limited in scope ‘out of deference to the requirements of comity’ so as not to affect any parallel Chinese rate-setting proceedings that might emerge.

Supplementary protection certificates (‘SPCs’)

The English Patents Court used to be one of the principal referrers of questions to the CJEU on the interpretation of the SPC Regulation. It would not be an overstatement to say that English judges expressed a sense of dissatisfaction, if not frustration, at the somewhat Delphic nature of the opinions and judgments from the European Union’s highest court. Now that the UK is free to interpret the SPC Regulation in its own way, one might have expected to see decisions from the English Patents Court and appellate tribunals reconsidering and perhaps recasting the law. For instance, it would not come as a major surprise if the Court of Appeal were to rule that for a product to be protected by a basic patent for the purposes of article 3(a), the product had to represent the ‘core inventive advance’ of the patent. For now, the biggest surprise is that there has not yet been any consideration of SPC law by the UK courts post-Brexit.

In wider Europe, SPC enthusiasts are waiting for the outcome of two pending references both involving Merck Sharp and Dohme and both involving combination SPCs obtained from patents directed primarily to a single active ingredient in relation to which a monotherapy SPC has already been granted. The main question for the CJEU to consider is whether the CJEU’s re-statement of the law on article 3(a) of the Regulation in the Teva53 and Royalty Pharma54 cases has any impact on the interpretation of article 3(c) of the Regulation and the law as set down in the Actavis55 cases in the middle of the last decade. A ruling from the CJEU can be expected sometime in 2023.

Procedural issues

Territorial scope of the Act

Whilst the Act explicitly provides for its applicability in the territorial waters of the UK (which extend up to 12 nautical miles off the coast), the question as to how much further the territorial scope extends was raised in SGRE v GE, 56 a case before Meade J concerning wind turbines. Section 132(4) of the Act provides for its application in areas designated under provisions of the Continental Shelf Act 1964 and the Petroleum Act 1998 and, in this case, it was accepted by the parties that this was limited to

53 C-121/17 – Teva UK Ltd and Others v Gilead Sciences Inc

54 C-650/17 – Royalty Pharma Collection Trust

55 C-443/12 – Actavis Group PTC and Actavis UK; C-577/13 – Actavis Group PTC and Actavis UK

56 [2022] EWHC 3034 (Pat)

activities related to the exploration and exploitation of the natural resources of the shore, bed of waters or subsoil or activities that take place on installations for that purpose. Did this apply to wind turbines? Meade J looked at the relevant provisions of the United Nations Convention on the Law of the Sea, which give coastal states power to exercise sovereign rights over the continental shelf for the purpose of exploiting it and its natural resources, including the exercise of those rights on installations and tunnels created for that purpose. The Judge found that the Convention did not require the section 132(4) activity limitation to be given anything other than its ordinary meaning. As a result, the acts in question fell outside the limitation: they did not amount to exploitation of any natural resources but merely took advantage of the existence of the sea bed for support.

Jurisdiction

Practitioners seeking a concise but comprehensive exposition of the law relating to the justiciability of patent disputes involving jurisdictional issues will welcome the decision of Ian Karet, sitting as a Deputy High Court Judge in Otsuka v GW Pharma 57 The dispute concerned a patent licence agreement under which Otsuka claimed royalties and in relation to which GW sought a series of declarations to the effect that its successful cannabinoid product fell outside the scope of the agreement. The declarations engaged the question of the validity of the underlying patents, but not directly – the Judge deciding that GW’s position on validity was conditional on its primary argument (of being outside the agreement) failing. Accordingly, the rule in Moçambique58 (that an English court has no jurisdiction to adjudicate a claim of title to foreign land, or, by analogy, a claim to the validity of a foreign patent) did not apply. By way of comfort, Ian Karet indicated that if the dispute did progress to a stage at which it was necessary to consider validity, case management techniques could be deployed to avoid straying into improper considerations of foreign validity. Related to GW’s challenge to jurisdiction, GW sought a stay on the grounds of forum non conveniens. This was denied on the basis that England was a more convenient forum than New York: much of the work underpinning the collaboration agreement had taken place in the UK, with the effect that witnesses were located here, and the English proceedings were already on foot, whereas the New York claim was mired in a dispute around service formalities.

Ian Karet’s decision was upheld by the Court of Appeal, 59 Birss LJ giving the leading judgment and taking the opportunity to clarify the application of the Moçambique rule to patent cases. He explained that the question can conveniently be framed against the question of whether the court is being asked to reach a decision on rights in personam or on rights in rem Validity per se is a matter in rem but the court can determine it – even where the question arises directly (to use the language adopted at first instance) – if it is necessary to do so in order to determine a dispute arising in personam. This arises in what Birss LJ called the ‘contractual exception’ to the Moçambique rule, which allows the English courts to address the validity of

foreign patents to the limited extent necessary to decide the contractual obligations of private parties (hence in personam) but such decisions would not be binding against the world (so would not determine the patent’s validity in rem). Birss LJ held that the contractual exception would apply in this case and hence the court was not precluded from dealing with the dispute. The Court of Appeal agreed with Ian Karet on the other points being appealed, including the decision that the grant of a patent did not qualify as an ‘act of state’ which would serve to exclude jurisdiction. Whilst the grant of a patent may once have been an exercise of sovereign power (prior to the Statute of Monopolies 1623) this was no longer the case; today, patents are granted pursuant to a prescribed legislative framework.

Issue estoppel

Readers will recall the long-running litigation between Neurim and Mylan in relation to Neurim’s patents to its insomnia medicine, Circadin. In 2020, Neurim’s application for an interim injunction based on the parent patent for treatment of insomnia was rejected.60 The patent was upheld as valid and infringed following an expedited trial61 but only a few short weeks later the Technical Board of Appeal (‘TBA’) indicated at the appeal hearing that the patent was invalid and Neurim withdrew their appeal. The happenings at the TBA led to several consequential procedural issues around costs and the revocation of oral orders.62 Moving into 2021, a divisional patent (to the revoked parent patent) was granted to Neurim and the claims amended to be identical in substance to those of the parent patent. Neurim sought to enforce that divisional against Mylan, who counterclaimed for revocation. A stay of those proceedings pending a final determination of the patent’s validity at the EPO was refused63 and permission was granted for some issues relating to the validity of the divisional patent to be dealt with as preliminary issues.

It was the judgment of Meade J from the trial of the preliminary issues which was the first of the 2022 judgments in this ongoing saga.64 Unsurprisingly, given the effectively identical claim set, the main issue under consideration was issue estoppel, Neurim arguing that Mylan should be estopped from being able to challenge the validity of the divisional patent following the UK decision upholding the validity of the parent patent. In response, Mylan’s alleged that Neurim was committing an abuse of process as well as an abuse of a dominant position. In his judgment, Meade J found that no issue estoppel arose, holding that a useful test is whether the party alleged to be estopped could effectively appeal. He considered that Mylan was the ‘winner’ at the relevant time, after the TBA decision, and so could not effectively appeal. Meade J also held, in relatively short order, that there was no abuse of process by Neurim, pointing to the fact that the use of divisional applications as ‘back-ups’ is well established and that the form of a claim alone cannot be abusive without a course of conduct amounting to abuse. On the facts relating to the latter (namely the withdrawal

60 [2020] EWHC 1362 (Pat); [2020] EWCA Civ 793

61 [2020] EWHC 3270 (Pat)

62 [2021] EWHC 530 (Pat)

63 [2021] EWHC 2897 (Pat)

64 [2022] EWHC 109 (Pat)

from the EPO appeal on the parent patent) the Judge found no abuse. Meade J declined to give judgment on the competition law issues surrounding abuse of process, noting that as matters had progressed they were not suitable to be determined as preliminary issues. Finally, Meade J took the opportunity to remind parties to keep the Court informed of proceedings at the EPO. Such open dialogue could have avoided much of the ‘complexity and confusion’ that arose following the TBA decision in proceedings against Neurim and Mylan.

At the preliminary issues hearing, Meade J also proposed that any trial on the divisional patent not be a full trial but instead be tried only on the materials and arguments before Marcus Smith J and/or adopting the conclusions in the judgment from that trial (which found the parent patent valid and infringed). He noted this approach to case management was unusual but so were the facts of the case. It was also ordered that the matter be transferred to Marcus Smith J to avoid another judge having to consider and apply Marcus Smith J’s judgment as well as to avoid the costs of a further trial.

Final injunctions

Continuing the Neurim and Mylan saga, and less than three weeks later, Marcus Smith J handed down his provisional judgment in the trial of the divisional patent.65 He had assessed the matter on the papers and concluded that the divisional patent was valid and infringed, such that Neurim was entitled to a permanent injunction against Mylan. Marcus Smith J stated that the exercise was not a mere rubber-stamping of his previous judgment and he had taken care not to allow new evidence or new arguments into play which could allow Mylan a second trial without Neurim being able properly to defend itself. The judgment was provisional because, in the unusual circumstances, the Judge offered the parties the opportunity to appear before him and make submissions. Mylan took the Judge up on this opportunity and a month later a further judgment was handed down by Marcus Smith J.66 That judgment affirmed the provisional judgment. Mylan sought permission to appeal and a stay on the injunction but both were refused.

However, Mylan then sought permission to appeal from the Court of Appeal which was granted67, the Court granting expedition of the appeal as well as a stay of the injunction. Arnold LJ gave the leading judgment on the stay, in which he considered that, as with the refusal of the interim injunction in 2020, damages would be an adequate remedy for Neurim. Conversely, damages may not adequately compensate Mylan who would be forced to withdraw from the market. Birss LJ and Newey LJ agreed with Arnold LJ’s decision to grant the stay, but both considered that maintenance of the status quo, in allowing Mylan to remain on the market, was the most important factor. The decision in the appeal on the merits came in May 68 , the appeal being unanimously dismissed, meaning that Mylan should withdraw from the market and compensate Neurim for its loss.

Unitary Patent and Unified Patent Court

The authors are grateful to Myles Jelf of Bristows for drafting this section.

The UPC finally became a reality on 18 January 2022 when Austria deposited its instrument of ratification of the Protocol on the Provisional Application of the UPC Agreement. This meant sufficient countries had met the requirements for the Protocol to come into effect, and the provisional application period started the following day. The UPC was established as an international organisation with legal capacity and final preparations for the Court’s opening could start. During 2022 substantial progress was made with the preparatory work, and although the appointment of judges and some IT development took longer than estimated and led to some false starts, it was announced in December that the UPC Agreement will enter into force (and therefore the Court will open) on 1 June 2023.

Preparations in 2022 included the following:

• Formation of Committees and adoption of some key documents. The Administrative Committee and the Budget Committee (the UPC’s two governing bodies) held their inaugural meetings in February and adopted, inter alia, the UPC’s budget for the provisional application period (which requires countries taking part in this phase to make a contribution), the ‘Rules on the European Patent Litigation Certificate and other appropriate qualifications’ (which sets out the qualifications required for representatives before the UPC) and the UPC’s Financial Regulations. The Administrative Committee also appointed the members of the Advisory Committee.

• Appointment of judges. In April, the Advisory Committee started interviewing candidate judges to provide the Administrative Committee with a list of the most suitable candidates. In October, the appointment of 34 legally qualified judges and 51 technically qualified judges was announced, with just three more judges to be appointed before the Court opens. These positions were advertised in November.

• Adoption of Rules of Procedure. In its July meeting, the Administrative Committee adopted the UPC’s final Rules of Procedure, having agreed a few last-minute changes to the previous draft. It also adopted the UPC’s Table of Fees and the Organisational Rules of the Patent Mediation and Arbitration Centre.

• IT development. Development of the IT systems continued, including completion of a strong authentication scheme requiring users to obtain two certificates to access the UPC’s case management system (‘CMS’) and sign documents.

Regarding the unitary patent, the EPO reported in July that its preparations were complete. Transitional measures for the unitary patent started on 1 January 2023 to assist an applicant for a European patent to obtain a unitary patent on the ‘start date’ of the UPC system, i.e. 1 June 2023.

Looking ahead into 2023, to trigger the 1 June 2023 start date, Germany must deposit its instrument of ratification of the UPC Agreement during February. Provided that is done, on 1 March a ‘sunrise period’ of three months starts, during which European patents may be opted out of the UPC’s jurisdiction before the UPC opens, and legal representatives may register to practice before the UPC (opt-outs may still be made during a transitional period of at least seven years after the UPC opens but an opt-out during the sunrise period will ensure a patent is opted out from day one).

Important preparation yet to be completed is the training of judges. All appointed legally qualified and technically qualified judges participated in January 2023 in a week’s training course in Hungary concerning the Rules of Procedure. Other training includes advanced judge-craft training, a mock trial and training on the CMS.

Other pending tasks are approval of the budget for the first accounting period and development of further functions of the CMS required for when the Court opens.

As to the start date in June, the countries participating will be those who have, by then, deposited their ratification of the UPC Agreement, which will be at least 17 (Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia and Sweden). All of these except Bulgaria, Malta and Luxembourg will host a local division (Germany will host four) or participate in the Nordic-Baltic regional division. Of the other ten EU member states, all except Croatia, Poland and Spain have signed the UPC Agreement but are yet to ratify (Ireland, though, has confirmed that it still intends to do so and is hoping to have the required referendum during 2023).

Interim injunctions

In April 2022, Neurim and Flynn sought an interim injunction against Teva under the divisional patent which was the subject of the litigation between Neurim and Mylan.69 Neurim’s evidence in support was that it was not until the previous month that Teva was materially on the market. However, Teva’s evidence was that they had been on the market since October 2021, such information being evident from at least their website and sales figures, but also in written correspondence via solicitors in which Teva confirmed it had launched and would not withdraw its product. Traversing the American Cyanamid70 questions, Mellor J considered that during the period before expiry of the divisional patent, Neurim could be adequately compensated in damages but this would not be the case post-expiry, given uncertainty in this period. However, the Judge concluded that damages would not be an adequate remedy for Teva at any point based on evidence of Teva’s fluctuating sales as well as other evidence about the possible market position Teva may gain. The balance of justice therefore favoured Teva. The final nail in the coffin for Neurim’s application was in the Judge’s consideration of the status quo. Mellor J highlighted the delay in bringing the application and that Teva had been on the market for four months before the application for an interim injunction was served.

Following the Court of Appeal’s dismissal of Mylan’s appeal against the validity of the divisional patent and the injunction against Mylan being put in place, Neurim renewed its application for a preliminary injunction against Teva. It failed again. While further evidence on the market dynamics was provided, including by experts, the balance came down further in Teva’s favour and the maintenance of the status quo pointed firmly against an interim injunction.

Moving on from the Neurim litigation, an extremely unusual set of circumstances led to an extremely unusual application by Novartis in relation to its patent application protecting a dosage regimen for Gilenya (fingolimod) for the treatment of relapsing-remitting multiple sclerosis. The patent and SPC for the compound fingolimod had long expired but Novartis still had regulatory market exclusivity protecting Gilenya which was being respected by numerous generics companies that had otherwise obtained UK marketing authorisations (‘MAs’). The patent application in question had been rejected during EPO prosecution for lack of novelty over the disclosure of a press release relating to the clinical trials but then upheld on appeal by the TBA with an order for the Examining Division to grant the patent. However, the formalities of granting the patent would take several months beyond the expiry of Novartis’ marketing exclusivity. Therefore, having failed to receive satisfactory assurances from six generics companies with UK MAs, Novartis started proceedings and sought interim relief71. The hearing came on before Roth J a couple of weeks later in order to decide two main issues:

69 [2022] EWHC 954 (Pat)

70 American Cyanamid Co v Ethicon Ltd [1975] A.C. 396

1. did the Court have jurisdiction to grant an interim injunction in relation to a patent which the TBA had directed the Examining Division to grant but which had not yet granted? and

2. in all the circumstances, should the Court grant an interim injunction?

In relation to 1, Roth J rejected an argument that sections 61 and 69 of the Act operated to prevent Novartis obtaining a pre-grant interim injunction. Instead, the Judge considered that it was appropriate to separate interim relief on the one hand from final remedies such as damages on the other. In relation to the former, the recent decision of the Privy Council in Convoy Collateral v Broad Idea72 had made it clear that no cause of action is needed to seek an injunction under section 37 of the Supreme Court Act 1981. The Court’s power to grant such relief is unlimited, subject to any statutory restrictions and the Court has considerable flexibility in the interests of justice. The Judge also rejected floodgates arguments on the basis that the facts before him –where the TBA had ordered a patent to be granted and the scope of the claims of the patent was fixed – were exceptional.

However, having found that the Court could in principle grant an interim injunction, Roth J declined to do so. The Judge applied American Cyanamid73 and considered that the fact that fingolimod was a secondary care drug, prescribed and dispensed by hospitals and, as such, purchased by regional UK healthcare authorities pursuant to tenders, meant that Novartis’ losses were calculable. Unlike a primary care product, the impact of the reduction of the List Price for the medicine was not a factor and therefore there would be no corresponding price spiral.

In March 2022, Cook UK Limited brought an ex parte interim injunction application to hold the ring ahead of an intended anti-suit injunction application against two Boston Scientific companies.74 Cook intended to seek a declaration of noninfringement and invalidity in the UK in relation to one of Boston’s patents concerning a surgical clip for treating gastrointestinal bleeding. However, the parties were already in litigation in the Netherlands, where Boston companies had brought kort geding75 proceedings which sought a finding of infringement in relation to the UK, French and Irish designations of the patent76 and Cook feared an application by Boston for a Dutch antianti-suit injunction. Meade J noted that the circumstances of the application were unusual, in that the proceedings in the Netherlands were only interim proceedings and that it has only been since the European Union (Withdrawal) Act 2018 and the expiry of the subsequent transition period that Courts in the UK could consider granting such anti-suit injunctions against EU member states.77 Meade J considered the principles for an anti-suit injunction set out in Deutsche Bank v Highland Crusader Offshore Partners78 and gave the strongest consideration to

72 [2021] UKPC 24

73 [1975] A.C. 396

74 [2022] EWHC 504 (Pat)

75 Interim urgent proceedings before the Dutch court which consider infringement in detail but look less at validity. These proceedings tend to seek a cross border effect.

76 It is of note that there was no Dutch designation of the patent in issue as it had lapsed.

77 The ruling from the CJEU in Turner v Grovit (C-159/02) prohibiting anti-suit inunctions under the Brussels regime.

78 [2009] EWCA Civ 725

71 In fact Teva pre-empted Novartis by issuing proceedings for an Arrow declaration several days earlier on 25 February 2022. See later in this review for a discussion of the Arrow decision.

comity in making his decision, noting that there is ‘the need for the greatest possible care in the exercise of the antisuit injunction’. In the circumstances of the case, the Judge considered that whilst Cook may make out its case for a full antisuit injunction, the order of an ex parte interim injunction to hold the ring was not justified. He criticised Cook for not giving Boston any notice of the interim injunction application (a situation that was ‘not optimal’), albeit he well understood the reasons why. Instead, the Judge’s solution was to order that Boston must provide Cook with 72-hours’ notice of any application to any Court in the Netherlands to restrain or interfere with the UK case. As a point of practice, Meade J stated that in his view it is extremely important when making any urgent application that if notice can be provided to the other side without destroying the purpose of the application, that notice should be given, however short it may be. No full anti-suit application was ever heard as the parties settled this aspect of the case shortly after the hearing.

Arrow relief

The UK remains one of the few European jurisdictions which will countenance the possibility of Arrow relief79 – a declaration that a given product is old or obvious as of a particular date. The circumstances in which the English Patents Court will exercise its discretion are becoming clearer as the case-law develops. In a further chapter of the fingolimod epic, and following Novartis’ decision in summer 2022 not to validate the UK designation of the dosage regimen patent for fingolimod and to de-designate the UK from the final divisional patent application in the family, Bacon J held that Teva was not entitled to Arrow relief when no uncertainty about the UK fingolimod market remained and the true purpose of the declaration was solely for export value.80 The Court of Appeal agreed.81

Declaration of non-infringement (‘DNI’)

The prize for the most bizarre case of the year must surely go to the proceedings in which Lisa Dräxlmaier GmbH sought a declaration of non-infringement against BOS GmbH.82 The case was unusual in that shortly before proceedings were issued, the patent in suit had lapsed. Therefore, in order to bring the proceedings, Dräxlmaier paid the renewal fees of BOS’s patent. BOS did not know the patent had been revived until some months later. Shortly after becoming aware, BOS offered to surrender the patent and wrote to the IPO accordingly. However, Dräxlmaier opposed this surrender.

Dräxlmaier’s reason for seeking a DNI in the UK was to export the decision to Germany, where BOS had sued for infringement. Yet eventually the German proceedings were withdrawn. The parties then agreed that the UK proceedings should be brought to an end but could not decide how this should be done and an application for summary judgment/strike out was made by BOS on the basis that the DNI claim was, or had become, an abuse of process. Sir Anthony Mann reviewed the authorities on useful purpose in the context of obtaining a judgment for foreign proceedings and concluded that whilst there was no authority

79 Arrow Generics Ltd v Merck & Co Inc [2007] EWHC

when the claim related only to infringement, at least in relation to validity cases, there was authority that an intention to use an English decision abroad is not an abuse in and of itself. That being said, case law frowns upon cases brought purely for forum shopping reasons. The Judge declined to decide whether these particular proceedings were an abuse but did decide they should never have been brought. Rather than inflame the situation by ordering a strike out, he ordered a stay of proceedings.

Threats

The purpose of the statutory bar on groundless threats of patent infringement proceedings is to protect retailers and others who cannot be expected to know about patents and might be fearful of litigation. Does this apply to mighty online retailers such as Amazon, who are unlikely to be fearful and who even have their own IPR infringement protocols? This question arose before Meade J in Carku v NOCO83 where NOCO had lodged a number of complaints to Amazon under the latter’s IPR notification procedure, indicating certain Carku products as ‘infringing’ and asking that those products be removed from Amazon’s website. As a result, Amazon de-listed a number of Carku products. Amazon’s lawyers wrote a letter to Carku’s lawyers indicating the complaints by NOCO were sufficiently grounded.

Given that NOCO’s patent was found to be invalid, there could be no defence of infringement to the threats allegation under section 70C(3) of the Act. The question was therefore whether the notifications sent to Amazon UK amounted to ‘threats of infringement proceedings’ within the meaning of the Act. NOCO sought to argue not only that Amazon would not have feared being subject to infringement proceedings as Amazon saw itself as an ‘arbiter and enforcer’ rather than a potential infringer, but also that NOCO would never sue Amazon, given that Amazon is a valuable retail channel. Meade J disagreed. His starting point was that the content of the communications to Amazon would be ‘classic threats’ but it was necessary to consider the present context, and in particular Amazon’s IPR policy.

Meade J considered that only if Amazon automatically delisted products in response to complaints might there be a suggestion that Amazon would never feel threatened by legal proceedings. However, the policy is not so black and white and the evidence suggested that Amazon would consider the risk of proceedings in deciding how to act. Further, he considered that Amazon would not know that NOCO would not sue it (even if it considered it unlikely), and that no such reassurance had been given to Amazon. In addition, Meade J noted that it was sufficient for Amazon to apprehend that third-party distributors would be sued if Amazon did not delist the products. The Judge concluded that NOCO had made unjustified actionable threats and ordered a damages enquiry.

Exclusive licences

Readers may recall that the main trial judgment in the Neurim litigation in 202084 dealt with the question of whether or not Flynn Pharmaceuticals was an exclusive licensee of the Neurim

Looking ahead to 2023

2022 having been a more-or-less ‘normal’ year, are there reasons to think that 2023 might deliver something more? Quite possibly, yes.

For a start, the Supreme Court is due to hear two patent appeals: first, the DABUS case concerning artificial intelligence and inventorship and, secondly, FibroGen v Akebia in relation to plausibility (the EPO’s Enlarged Board of Appeal is due to hand down its decision in G2/21 in 2023 and this may impact the UKSC’s ruling).

The former may be the last appeal to be heard by Lord Kitchin, responsible for the supervision of intellectual property appeals, who announced that he will retire from the Supreme Court on 29 September 2023. It is expected that the Lord Chancellor will convene an independent selection commission to fill the vacancy and practitioners will hope for another IP judge.

In relation to FRAND, the long-awaited decisions in Optis v Apple and InterDigital v Lenovo should decide issues including the determination of global FRAND licences, what would constitute a comparable licence, what constitutes hold out/hold up, and potentially Apple’s future in the UK market.

The Patents Court will grapple with the complex damages inquiry in Warner-Lambert v Generics

Notwithstanding the damages cases covered in this review, Warner-Lambert has the potential to be the most complex follow-on damages inquiry ever heard in the patents field, involving ground-breaking issues of foreseeability, causation and mitigation in the pharmaceutical space. It will also be the first damages inquiry of its kind in the UK involving the UK government and the NHS.

And, of course, the UPC will finally open its doors.

As ever, whatever the year may bring, we look forward to reporting on it next year.

patent. Mylan had raised two arguments before Marcus Smith J as to why Flynn was not an exclusive licensee. The first was that there was no exclusive licence as the scope of the licence was not coextensive with the claims for the patent in issue. The second was that Flynn was not an exclusive licensee of Neurim’s patent as Flynn had no right under the licence to bring an infringement action independently of Neurim. Marcus Smith J had rejected the first argument but agreed with the second. Neurim appealed and in March 2022 the Court of Appeal reversed the Judge’s finding.85 In his judgment, Arnold LJ made it clear that Flynn was entitled to work the invention to the exclusion of Neurim and this is the key requirement for an exclusive licence. He also made it clear that there is no statutory requirement for an exclusive licensee to be able to take action independently of the patentee. In its respondent’s notice, Mylan had challenged the trial judge’s rejection of its first argument. However, this argument was not accepted by the Court of Appeal either, Arnold LJ stating that there was nothing in the previous case law to support Mylan’s proposition. Any right in respect of part of the field of invention covered by a patent is sufficient.

Entitlement

An interesting issue arose before HHJ Hacon sitting in the IPEC and hearing an application for a section 37 declaration transferred to the Court by the Comptroller. Readers will recall that section 37 deals with entitlement to ownership of granted patents. In this case, Jones v Irmac Roads86, a dispute had arisen over the ownership of a granted patent which had resulted from an application filed in circumstances where the right to apply for the patent was in doubt. One of the questions arising was whether the right to apply for a patent is a ‘right in a patent’ within the meaning of section 30(6) of the Act, which requires certain formalities to be observed for succession in title (a written instrument signed by or on behalf the assignor or mortgagor). Based on the wording of the Act, and a thin seam of authority,87 the Judge decided that section 30(6) applied. The fact pattern was such that the claimant and inventor, Mr Jones, had entered two agreements with a company with which he was collaborating. The first agreement gave Mr Jones a 45% shareholding in return for assigning all IP to the company. The second agreement allowed Mr Jones to take back the IP if the company had not started trading within six months. Under the first agreement, a lack of section 30(6) formalities meant that only the equitable interest had passed. Following the terms of the second agreement, the eventual lack of trading activity by the company had the effect that it was obliged to assign its rights back to Mr Jones. The return of the equitable interest meant that Mr Jones held both the legal and equitable right to apply for the patent and was therefore entitled to the declaration sought that he was the true proprietor of the patent that had subsequently been granted.

Jones v Irmac Roads Ltd [2022] EWHC 495 (IPEC)

The decision of the Hearing Officer in Hartington Conway Ltd’s Patent Application [2004] RPC 6 and the decision of Pumfrey J on appeal in Hartington Conway Ltd’s Patent Applications [2004] RPC 7

Inventor royalties

The last judgment of 2022 ruled on a novel issue, cases of this kind involving universities rarely coming before the courts – in fact, none before in this country.88 Daniel Alexander KC was required to consider whether for the purposes of the Unfair Terms in Consumer Contracts Regulations 1999 (‘UTCCR’), undergraduates and postgraduate research students were consumers. If so, the Regulations could be applied to contracts made between universities and their students, and terms relating to the ownership of intellectual property rights in the fruits of students’ research would have to be fair.

Oxford University Innovation Limited (‘OUI’), a technology transfer company incorporated by Oxford University, sought to claim royalties arising under a licence agreement with Oxford Nanoimaging Limited (‘ONI’). The licence related to intellectual property rights in an imaging device developed at the university and commercialised by ONI, a spin-out company established for that purpose.

The gateway question was whether the UTCCR applied to a contract with a DPhil student. The Court ruled that there was a distinction between a typical post-doctoral researcher employed by a university under a contract of employment, who would not be a consumer, and a typical DPhil student, who shared many similarities with undergraduate students and who would, in general, be a consumer, regardless of whether they had undertaken their course with a professional aim in mind. It was therefore held that DPhil students were to be treated as consumers within the meaning of the Regulations. However, on the determination of whether the terms of the contract with OUI were unfair, the Court decided that they were not; they did not create a significant imbalance to the detriment of the licensee and were not contrary to the requirement of good faith.

[Also see page 20 of the March 2023 journal.]

Listing

As always with litigation, there is a balance to be struck between bringing the action to trial swiftly and the convenience of the parties. This continued to be an issue in 2022. In Philip Morris v Nicoventures,89 the matter was listed for a speedy trial in late September 2022. The fact that the defendants’ chosen counsel was not available then did not outweigh the need for a speedy decision and, although the claimant had failed to consider a potential trial date as soon as it should have done, the just course was to list the trial in September considering the action had been issued in July 2021.

At a hearing in March between Cook UK Limited and Boston Scientific Limited,90 Cook sought to list a trial ahead of a CMC into the shorter trials scheme with a degree of expedition. Boston objected to the trial listing being made but Mellor J was not convinced, noting that even at this early stage, a time estimate for the trial could be provided and the features of the products on which Cook sought a declaration of non-infringement were well known as a result of disputes in other jurisdictions. No expedition

was granted but the trial was ordered to be listed. Ultimately, by the time the matter had reached the CMC in July 2022, the case had become more complex and both parties agreed the case should be transferred out of the shorter trials scheme.

In Lisa Dräxlmaier GmbH v BOS GmbH & Co. KG, 91 Dräxlmaier’s aim was to obtain an expedited trial and decision in the UK before the German infringement trial could take place in December 2022. Mellor J considered that the ‘spin off’ value of a UK judgment was not enough on its own to justify expedition, even where validity was in issue. In this case, where validity was not in issue and there was no injunction gap in Germany, there was even less urgency and the claimant had not shown any reason, let alone a good reason, to justify expedition of the trial and inconveniencing other court users.

Stay of proceedings

In Philip Morris v Nicoventures,92 an application to stay the UK patent revocation claim pending the final resolution of parallel proceedings in the EPO was refused where the balance of injustice came down firmly in favour of eliminating commercial uncertainty as soon as possible. Mellor J held that he was entitled to refuse a stay of the national proceedings where the evidence was that some commercial certainty would be achieved at a considerably earlier date in the case of the UK proceedings than at the EPO.

Disclosure

The courts continue actively to manage disclosure in English patent litigation and this was seen particularly in the context of the FRAND cases progressing through the system in 2022. In February, Marcus Smith J limited the disclosure that Apple had to give in relation to its own licence negotiations with third parties.93 The Judge refused to order disclosure of the personal files of all Apple employees that were engaged in the negotiations as well as the full set of negotiation records that amounted to everything filed during the course of negotiations. Rather he ordered that, after a privilege review, a complete set of the collated negotiation files (comprising the negotiation correspondence without any administrative documents) should be provided to Optis for review on an external legal eyes only basis.

Confidentiality regimes

The Court has always sought to balance the competing interests of the parties when deciding what confidentiality regime is appropriate in any given situation. In adjudicating a dispute regarding access to the product and process descriptions (‘PPDs’) in the wind turbine cases between GE and SGRE, 94 Meade J reviewed the key principles set out in OnePlus v Mitsubishi95 and in particular the guidance that it would be exceptionally rare (if it is possible at all) to allow a regime that gives a party no access to important documents. With this in mind, the Judge rejected GE’s contention that its PPD should be provided on an external eyes only basis, or

91 [2022] EWHC 1642 (Pat)

92 [2022] EWHC 1284 (Pat)

93 Optis Cellular Technology LLC v Apple Retail UK Ltd [2022] EWHC 422 (Pat)

94 [2022] EWHC 490 (Pat)

95 [2020] EWCA 1562

alternatively only to someone who did not work in the field of wind turbines, but he did put in place a restriction that whoever accesses the PPD must not be involved in tendering work. GE also requested that a prosecution bar apply to anyone who accessed the PPD but this too was rejected by the Judge who noted that it was not a normal step in UK litigation. The Judge endorsed SGRE’s approach of bringing the application on before the deadline for the PPD to resolve the disagreement on the confidentiality club provisions thereby ensuring that delay was avoided.

Claim amendment

In CommScope v SOLiD96 the question arose as to the consequences of an unsuccessful unconditional amendment application – if the application failed, should the patent necessarily be revoked? Mellor J, following Ferag v Muller Martini,97 considered that the patent would only be revoked if there was a clear and considered concession from the patentee that the unamended claim was invalid. The Judge advised that a recipient of an unclear amendment application should insist on compliance with CPR 63.10(2)(b), which requires the applicant to state whether they contend that the claims prior to the amendment are valid.

In Tehrani v Bonaduz AG, 98 HHJ Hacon was asked to consider whether, post-trial and judgment, an amendment to the claims of the patent would be allowable under section 75 of the Act. The Judge had found the patent to be invalid for lack of novelty over the prior art and the claimant, Professor Tehrani, sought to remedy this with a late amendment to replace in the claims the word ‘a’ with the word ‘the’ which would also have required consequential amendments to the specification. At this stage, Tehrani was acting as a litigant in person (although she had been professionally represented at trial). The Judge considered the position in Warner-Lambert v Generics99 and whether the discretion of national courts in relation to amendment had been extinguished, concluding that to allow the amendment would require a new trial. Warner Lambert did not bar the possibility of a new trial but taking into account the guidance in Henderson v Henderson 100 the overriding objective in the CPR was that Tehrani had been advised professionally at the trial when such an amendment could have been pursued, HHJ Hacon declined to allow the amendments.

That such amendments will almost always be doomed to fail was illustrated again in Saint-Gobain v 3M before Michael Tappin KC (sitting as a Deputy High Court Judge).101 In his earlier decision, the Judge had held that the patent in suit was insufficient because it would require an undue burden for the skilled person to work the invention across the claimed range. However, he rejected an argument that nothing within the claim could be produced without undue burden. The patentee, 3M, argued that this rejection amounted to a confirmation that a narrower range was sufficiently taught and this was the target of its proposed

amendment. The Judge refused the application. The question of whether the amended claim would be invalid for insufficiency was not in issue and was not decided. Furthermore, even if 3M was right and the trial judgment contained a finding as to the validity of the amended claim, it would still have been an abuse of process to apply to amend the patent after judgment in circumstances where Saint-Gobain had not had the opportunity to test the claim at trial.

Experts

Indicating that the sequential unmasking process has its limits, in Nokia v Oppo, 102 Meade J acknowledged that it was not always possible to show an expert the prior art before the patent. In cases where that was not possible, the expert has to guard against the risk of hindsight and think about how to avoid it. It might be possible to explain how the expert put knowledge of the patent out of their mind but it is often just a case of making it clear they were specifically instructed to do so and tried their best. Here, despite the expert’s efforts, the Judge found that his evidence was heavily burdened with hindsight, leading him artificially to hone in on aspects of the prior art and apply unrelated prior art to the problem solved by the patent without any explanation of why the documents would be of interest to the skilled person.

In Novartis v Teva103 HHJ Hacon considered the degree to which multiple experts retained by a party are expected to confer. Relying on Alcon v AMO 104 HHJ Hacon commented that ‘The notional skilled team will be taken to interact to the same extent as would a real team addressing the same project’. Neither party’s approach was perfect. Novartis’ approach did not involve an appropriate level of interaction between the experts and resulted in a finding that one of the experts probably underestimated the view of the others. Teva’s involved a greater degree of communication, which was appropriate in principle, but the Judge noted that instead of having their expert clinician draw up her own list of relevant points, Teva’s solicitors drafted and provided to the expert formulator a document intended to summarise the relevant information provided to them by the expert clinician. As matters now stand, the extent to which interaction between a party’s own experts is desirable or even required is unclear and further clarification from the Court is awaited with interest.

Damages

With extraterritoriality and long-arm jurisdiction now something of a hot topic as practitioners await the start of the UPC, the judgment of Bacon J in Anan Kasei v Neo105 in April 2022 was timely. This was an inquiry into damages and the fact pattern was such that, amongst other heads of loss, Anan Kasei claimed losses arising in France as a result of infringing activity by Neo in England. There was no patent protection in France. As a matter of principle, Bacon J held that such losses are recoverable. There is no restriction in the Act limiting the nature or territoriality of damages and previous case law

102 [2022] EWHC 2814 (Pat)

103 [2022] EWHC 2847 (Pat)

104 Alcon Eye Care UK Ltd v AMO Development LLC [2022] EWHC 955 (Pat)

105 Anan Kasei Co Ltd & Anor v Neo Chemicals & Oxides (Europe) Ltd & Ors (Rev2) [2022] EWHC 708 (Ch)

indicated that damages could be claimed for losses arising indirectly from infringement (e.g. the convoyed goods in Gerber v Lectra106). However, recoverability of damages is subject to the usual principles of causation and remoteness. On the facts at hand, although the infringing activity by Neo in the UK (the supply of development samples and an initial commercial supply of several kilograms of infringing cerium oxide product) undoubtedly set in train a sequence of events that created an opportunity for, and did lead to, Neo’s sales in France, which were foreseen and intended by Neo, that was not enough to say that the French sales were caused by the English acts. Amongst other reasons, there were multiple intervening contingencies, involving decisions made by Neo’s customer, Johnson Matthey, and the car-makers, to which Johnson Matthey supplied the material for use in catalytic converters. Accordingly, Anan Kasei failed to recover damages in respect of its claimed lost sales abroad. Interestingly, relying on the 19th century Scottish case of United Horse Shoe, 107 Bacon J also rejected an argument by Neo that damages should not be paid in any event because Neo was readily able to switch to a non-infringing supply.

In September 2022, Charlotte May KC (sitting as a Deputy High Court Judge) handed down a decision in the damages inquiry between Geofabrics and Fiberweb Geosynthetics, 108 which provides a good overview of the law relating to such inquires.109 As with all damages inquires, a complex assessment of a counterfactual was needed, but of greater interest here was the approach to the final calculation of damages. The experts in the case had built detailed financial models which they used to calculate an overall damages figure based on their opinions of the suggested input parameters. However, the parties agreed that it was not necessary for the deputy judge to learn how to operate the models or to reach a determination of the final damages sum as part of her judgment. Instead, the parties were to agree the resulting figure. While the deputy judge noted she felt uncomfortable not being able to sense check the consequences of her judgment in terms of the overall damages figure, it was a necessary consequence of the manner in which the evidence was prepared and presented in the case.

Costs

Readers will recall that in the proceedings between Neurim and Mylan, an interesting issue on costs arose following revocation of the patent in issue before the EPO. As noted earlier in this review, the patent had been found valid and infringed in the UK but was revoked by the TBA shortly thereafter. Before the patent was invalidated at the EPO the Judge, Marcus Smith J, had ordered that costs be awarded to Neurim as it had been successful in the case. However, following the decision at the EPO this order was reversed. Neurim sought permission to appeal. The appeal ultimately proceeded on three grounds:

1. whether the Judge had been wrong to conclude that Mylan’s success at the EPO meant Mylan was successful in the UK proceedings, or at least that such success should not be determinative of costs;

106 Gerber v Lectra [1997] RPC 443

107 United Horse Shoe and Nail v John Stewart (1888) 13 App Cas 401

108 [2022] EWHC 2363 (Pat)

109 See paragraphs 59-78

2. whether the Judge should not have reversed his original costs order; and

3. even if the costs order were to be revisited, whether any subsequent order should award costs on an issue basis considering the reasons for Mylan’s overall success.

Neurim was not successful on ground 2, Arnold LJ holding that at least until an order is sealed a reversal of an order was open to the Judge. Arnold LJ did not opine on the issue of what would happen if an order were already sealed. However, Neurim were successful on ground 1 as the Court of Appeal determined that the Judge had erred when determining the incidence of costs. That left the question of what costs order should be made. Arnold LJ did not consider the issue-based approach, under ground 3, was correct and went on to order that aside from a licence issue which was also considered on appeal there be no order to costs for the proceedings at first instance. The Court considered this the right approach as the decision of the TBA to expedite its case was a game changer and the parties should have kept the court informed. Both sides were at fault for not doing so and costs were therefore wasted.

The ongoing Neurim proceedings also gave rise to another interesting point on costs. Following the preliminary hearing in January on the divisional patent (see above), a provisional judgment on the whole proceedings was handed down quickly in February 2022 and then confirmed on 8 March 2022. Therefore, when assessing the costs of the January hearing on 9 March 2022, Meade J was in the unusual position of already knowing the overall winner of the case. However, there was no overall winner of the preliminary issue hearing. Indeed, despite later losing overall in the final judgment,110 Mylan had succeeded on estoppel issues before the Court at the preliminary issue stage and so the Judge considered it would be unjust for them not to receive their costs for this issue.

In Teva & Sandoz v Astellas 111 Meade J was asked to consider the appropriate costs order where two claimants had shared legal representation and whether an issue-based order was appropriate. In this instance, the two claimants had shared representation, but were independent parties which had not run identical cases. On that basis, it was not appropriate to impose joint and several costs liability on them following Illumina Inc v Premaitha112. However, the costs relating to the difference between the co-claimants’ cases was only 4% of the overall costs. A small percentage but potentially a six-figure sum given the overall sums spent. On balance, Meade J preferred to leave the quantification of the costs split between the co-claimants to the costs judge and decided only that each claimant should pay the costs of its own case and that Astellas should not suffer a shortfall.

21st Century commercial issues need 21st Century solutions

Dispute resolution

This is the final instalment in a series of articles by Neil Sharpley aimed at provoking discussion about possible solutions to issues currently experienced by smaller businesses.

In the previous articles in this series, I have touched upon the possibility of new IP rights, the need for unfair business practices protections, the scourge of online IP infringement, and the desirability of some trade mark law revision. This slightly longer final article addresses the urgent requirement for processes and mechanisms that enable all of those other issues to be tackled – to help establish a fast and cost-effective 21st Century dispute resolution system.

The question is how do you achieve access to justice for smaller businesses in relation to IP issues, where SMEs cannot afford to fund or risk the usual means of redress through the courts, or where that redress process is too slow, or is disproportionately costly and time consuming to pursue? If small businesses are not sunk by IP-related disputes they may be weakened by them, and eventually wither and die. This is damaging to the economy, but even worse, it emboldens those behaving unfairly. These problems lead to the conclusion that different dispute resolution solutions are required, and those concerns are echoed in parts of the Government Response to the IP Enforcement Framework.1

The problems with dispute resolution are well known and common to many challenges that SMEs face – cost, delay, and complexity/knowledge. Justice delayed is often justice denied. The pace of 21st Century commerce, especially online commerce, and the speed at which significant damage can be suffered would be incredible to those who created our present dispute resolution systems.

What is therefore required is a holistic review of dispute resolution, without any preconceptions based on our current systems. We need to ask not whether we can improve the current systems, but whether we need completely different processes and mechanisms for dispute resolution and its delivery in order to increase access to justice, and achieve acceptable levels of satisfactory resolution when measured against 21st Century commercial criteria.

Progress is being made by Ministry of Justice and HM Courts & Tribunals Service, but often the focus is on new mechanisms for delivery of existing processes, rather than on new processes which potentially improve upon 1. www.gov.uk/government/consultations/review-of-the-ipenforcement-framework-call-for-evidence/governmentresponse-to-call-for-views-on-enforcement-framework

those existing. The advances in alternative dispute resolution (‘ADR’) solutions over the last 20 years are of course welcome, but general commercial uptake of ADR is still relatively low. The courts have embraced ‘early neutral evaluation’ (sometimes called ‘third-party neutral evaluation’), but it is not truly early if it only arises as a possibility well after court proceedings have been issued and significant legal costs incurred. And those costs alone can very often become a significant barrier to resolution. A truly enlightened and effective dispute resolution system would be intervening much earlier than well into the court process. Some construction industry contracts provide for disputes boards which effectively anticipate difficulties and bring parties together to resolve them early and quickly before positions become entrenched. The Advisory, Conciliation and Arbitration Service (‘ACAS’) has an early conciliation before employment tribunal application system that works well to resolve many potential claims. The family law Mediation Information and Assessment Meetings are often very effective.2 What all of these tell us very simply, which is intuitive anyway, is that the earlier many problems are tackled, and the more collaborative the nature of the process, the greater the chance of resolution without formal adjudication.

Disputes are enormously damaging to the economy – in 2018, the Legal Services Board estimated the cost to the economy of small business legal problems at £40 billion a year. That is why the Federation of Small Businesses is proposing a dispute resolution service akin to ACAS, as a first port of call for all business disputes, to triage disputes as soon as possible after they arise, and signpost the various resolution processes available and guide disputants to those most appropriate. This would of course include early neutral evaluation amongst other ADR processes, the IPO opinion and mediation services, any available tribunals, and the courts. Such a service would be trusted, independent, and able to better publicise the different processes available and, importantly, if it was not part of a court-related process or service or perceived to be as such, may be much more attractive to disputants. Such a service would therefore be more likely to be used by smaller businesses and to introduce ADR to them, and would meet the needs of the many smaller businesses

2. https://disputesmediation.com/miam

that frequently simply abandon the possibility of justice because they do not want to go anywhere near a court. But this would only solve part of the problem. If, after triaging a dispute, some form of adjudication was clearly required, how can we achieve the speed and low cost that 21st Century commerce needs?

Do we need a new IP/online commerce tribunal?

I do not know when the commercial needs of IP-related disputants were last considered holistically, or whether the dispute resolution needs of the online trading community have ever been comprehensively considered? A new 21st Century approach is badly needed to resolve 21st Century issues. We need to ask ourselves difficult questions about current processes and whether they could and should be different. Could a newly constituted and less formal copyright tribunal or online commerce tribunal offer the speed and low-cost solutions that are needed to achieve access to justice. There are examples of civil dipsute tribunals in other jurisdictions such as British Columbia in Canada. The Ministry of Justice should be piloting such options in collaboration with IPO and independently from the civil court options.

However, as a separate approach within the available court options if adjudication was inevitably required, the Intellectual Property and Enterprise Court should be embracing online commerce disputes and taking them into its small claims track by default. It has been argued for some time that the small claims track value limit should be reviewed upwards to £25,000 and that the small claims track should accommodate slightly longer hearings than are currently permitted. Such expansions and changes would be helpful but not a complete solution. In some areas or commerce where there appear to be independent dispute resolution processes available (for instance IP-related music business collecting society versus member issues) there is no effective recourse and only a slow and toothless ombudsman. Those types of issues are also suitable to be embraced by a new tribunal or expanded small claims process. All of these commercial difficulties chip away at business profitability. They do not always easily fit in to existing systems, and a broader holistic review exploring the benefits of bringing them (and potentially a broader range of business disputes) together in a new process, delivered by a range of mechanisms, would seem to be the 21st Century solution that is urgently needed. Delivery mechanisms for any process are something which follow on from getting the process right, and all mechanism options from wholly online, hybrid and traditional face-to-face meetings should obviously be in the repertoire. The United Kingdom often leads in innovation, and its five and a half million small businesses deserve a dispute resolution system that truly serves their 21st Century commercial needs in terms of speed and cost effectiveness. The current Intellectual Property Office’s regeneration project 3 offers an excellent opportunity to consider long-term innovations and improvements in dispute resolution to serve the needs of modern business for the next 50 years.

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

3. One IPO Transformation www.gov.uk/government/publications/oneipo-transformation-prospectus/one-ipo-transformation-prospectus

“If small businesses are not sunk by IPrelated disputes they may be weakened by them, and eventually wither and die.”

The rapidly evolving IP insurance landscape

The IP Insurance landscape is evolving rapidly with insurers bringing new types of cover to market and improving their existing policies. David Bloom reviews the market for before-the-event (‘BTE’) IP insurance, which has been available for some time but is now more comprehensive and affordable than ever, and also looks at new forms of cover in the shape of contingent cover and warranty and indemnity cover.

Before-the-event cover

Over the years, before-the-event (‘BTE’) insurance for IP disputes has been treated fairly sceptically by some patent attorneys but the market is growing rapidly, and a large number of IP rich businesses are now benefitting from having cover in place. Historically, premiums were high and the scope of cover insufficient but now companies of all sizes from micro to large internationals are able to purchase policies that add real value to their IP portfolios.

A key development has been the addition of enforcement cover to policies. This type of cover, which funds claims against infringers of rights, was rarely available in the past but now comes as standard for SMEs under certain policies. This, along with falling premiums has opened the market up and driven sales.

Below are answers to some frequently asked questions relating to which exposures the policies cover, how the policies operate and how much they cost. I also look at some case studies to highlight the types of claims that are covered.

IP insurance FAQs

Which rights are covered?

Policies cover all registered and unregistered IP rights including patents, trade marks, designs and trade secrets.

What exposures are covered?

BTE IP insurance policies now respond to an increasing amount of IP legal risk compared to how things were historically.

Policies cover own side and adverse costs, disbursements and damages relating to a range of different types of action. These include:

1. enforcement and defence actions;

2. revocation actions;

3. trade mark and patent oppositions (in the UK, EU and US);

David Bloom is an IP insurance expert at Safeguard IP. He is a qualified solicitor and former trade mark and patent litigator. https://safeguardip.com/

4. title disputes; and

5. contractual breaches of IP agreements.

In addition, they will cover loss of profits if rights are found to be invalid and also exposures arising under indemnities in licensing agreements.

How much do policies cost?

By their very definition IP rights are unique so every policy will be priced differently. The key criteria for calculating premiums will be turnover, the type of cover required (defence alone or defence and pursuit together), the amount of cover required (anywhere from £100,000 up to £50 million), the IP right(s) being insured, the sector in which the policy holder operates and the territorial scope of protection.

Notwithstanding this, the market has developed a two-tier pricing structure, one for smaller business’ with a turnover of less than circa £7 million and another for larger companies.

For smaller companies pricing is fairly predictable. To insure all IP with worldwide pursuit and defence cover the premiums tend to be as follows:

• £1 million cover (of which a maximum of £500,000 can be used for any one enforcement action) = £4,000 - £5,000 pa.

• £500k cover (of which a maximum of £250,000 can be used for any one enforcement action) = £2,500 - £3,000 pa.

• £250k cover (of which a maximum of £125,000 can be used for any one enforcement action) = £1,500 - £2,000 pa.

Policies for larger organisations tend to be more bespoke and premiums are typically between 0.5% and 2% of the amount of cover sought. For example, a legal consultancy business trading in the EU will pay

significantly less for £1 million of cover than a company launching new software in the US in an industry with a history of non-practicing entity activity. Premiums can often be paid by instalments.

What else does the insured have to pay?

Excesses and co-insurance

As with all insurance policies the insurance will almost invariably be subject to an ‘Excess’ – an amount of any claim that the insured will have to pay before the insurer has any liability. Excesses on policies typically start at £5,000. In some cases, the insured can decide how much excess it wants to pay, and this will have an impact on the premium.

The insured also contributes what’s known as coinsurance. This is a percentage of the costs of any claim which the insured meets alongside the insurer. Part of the insurer’s interest here is to reduce the level of ‘moral hazard’ – i.e. the possible perception by the insured that they have nothing to lose now that they have insurance, and therefore their behaviour will change which increases the insurers risk. The co-insurance aligns the interests of the insured and insurer.

Co-insurance levels are typically 5% for defence actions and 10% for enforcement actions but the level of excess and co-insurance can vary.

What is the process for getting on cover?

To obtain an initial indication of terms the client just needs to provide its name, website address and turnover. From this information the insurer can provide a quote, usually within 48 hours. If happy to proceed, the client can go on cover immediately.

Can a policy be purchased if an infringement is ongoing or is likely to occur?

BTE policies do not cover legal actions which have already commenced or, importantly, disputes about an infringement that the insured knows about or ought to know about before purchasing the policy. The client will need to sign a declaration that it is not aware of any claims prior to the policy incepting.

Once insurance is in place can all claims be pursued?

For a potential claim against a third-party infringer, the insured will need to obtain an opinion on the claims prospects of success. This opinion needs to be obtained from an IP specialist chosen by the insured, such as a barrister and/or patent attorney, and depending on the wording of the policy that opinion will need to confirm the insured has a reasonable or good chance of successfully pursuing the claim. This opinion is needed as no sensible business would pursue a claim that it is likely to lose and insurers cannot be expected to fund an action which the business, if it was not insured, would not consider a sensible commercial course of action. This threshold is required throughout the claim so if a defence is received that calls into question the validity of the right a further opinion would be needed on the force of the defence.

In relation to defence actions, if the advice is the insured party has no defence to the claim, the insurer will pay to extract it from the claim and pay any damages that are agreed to be paid. If the advice received is that it does have a reasonably good chance of defending the action, then the insurer will fund the defence.

Can the insured choose its legal representative?

Yes, insured parties can choose their legal representatives so long as they have the necessary skills and knowledge to fight the claim.

Will the insurer pay out if a case settles either pre action or prior to judgment?

If the insurer has accepted the claim and it settles either before proceedings have been issued or before judgment is handed down, costs incurred up to that point should be covered (and paid) by the insurer (up to the cover limit). However, the insurer will expect the insured to make every effort to recover costs from the opponent. Different policies have different requirements around settlement but generally, if an insured is advised to settle a claim by its advisors but continues to fight the claim in any event, the insurer can withdraw funding.

Are all costs covered if a claim is made?

The insurer will pay costs in accordance with the terms of the policy. Generally, costs up to the cover limit and which are reasonably and properly incurred covered (subject of course to any excess and co-insurance).

“Financial Conduct Authority regulations prevent patent attorneys (and many solicitors) from advising clients on specific insurance policies.”

Can patent attorneys advise on IP insurance?

Financial Conduct Authority regulations prevent patent attorneys (and many solicitors) from advising clients on specific insurance policies. Discussing the existence of patent insurance and referring clients to specialist brokers is allowed and may be valued by clients in the context of their substantial investment in IP.

Contingent risk policies

One of the most recent developments in IP insurance has been the entering into the insurance market of specialist products that cover identified IP risks. These policy’s seek to cover IP exposures that the insured party is aware of and so would not be covered under a general BTE IP insurance policy. For example, risks that have been identified in due diligence which may point to a possible ‘issue’ attached to the use, exploitation and underlying value of company’s technology product, process or brand. Typically, these issues relate to title to the IP concerned, its validity or risk of third-party infringement.

Relying on a holistic appraisal of the legal and commercial risk involved (including the appreciation of the merits of the insured’s position, the litigation profile attached to the relevant field of activity, territories involved and the profile of the third parties involved, all of which may impact insurability and premium) specialist insurers can underwrite a bespoke policy which insures against contingent risks and the financial consequences which may flow in terms of legal cost, damages and diminution in value of the insured’s IP.

In the context of patent attorneys that engage in drafting freedom to operate (‘FTO’) contracts and IP consultancy work this is a particularly interesting development. One of the key aims of such work is to help clients identify not only commercial opportunities but also risks to their products, investments and acquisitions. Typically, once these risks are identified it is up to client to make their own mind up on how to proceed – or not proceed if the risks are deemed too high. Contingent risk products offer patent attorneys and their clients the opportunity to work hand in hand with specialist insurers to craft a specific insurance wrapper around the identified issues and find alternative commercial solutions to mitigate the downside risk of their endeavours.

Unlike BTE policies which are designed to be standardised, contingent risk policies can have entirely bespoke loss concepts, triggers, limits, excesses, geographical coverages and so on. The specialist underwriters in this space, such as Icen Risk Limited, take a commercial view and patent attorneys play an important role in helping the underwriter get comfortable with the risk to be insured.

Practical example – contingent risk policy:

A firm of patent attorneys was responsible for considering third-party infringement risk arising out of the manufacture of specialist paint formulations in the context

of an IP transaction. The FTO identified a range of medium and low-risk third-party patents whose claims might read onto the intended products to be manufactured in the future. Because of the identified risks and the additional buyer nervousness in the context of the underlying trade secrets they sought insurance to protect them for the next four years of R&D and commercialisation for loss arising out of claims of infringement of the patents identified by the FTO. The process involved the specialist insurer doing its own independent top up diligence and having a discussion with the patent attorneys on the identified patents, potential prior art, potential infringement defence arguments, potential mitigation strategies including work arounds and the sector litigation trends.

Warranty and indemnity insurance for IP asset trades

Warranty and indemnity insurance (‘W&I’), which typically aims to insure a buyer against loss arising from breaches of share purchase agreements, is nothing new. However, recently a specialist variant of this product has come to market for the sale and purchase of IP assets. This new product – which can be used for trade marks, patents, software or any other type of IP assets – aims to go back to back with warranties agreed between the parties covering issues such as capacity to sell, title to the IP assets, validity and so on.

The product can be relevant to patent attorneys engaged to advise in a variety of scenarios including larger corporates disposing of portfolios or buyer’s acquiring portfolios. The sellers in these scenarios will generally want to walk away from the transaction with close to zero liability and the buyers will want as much covenant strength in respect of the given warranties. Putting a policy in place mitigates the risk for both parties, can ease the negotiation process and help them reach an optimal commercial position.

Practical example – warranty and indemnity insurance:

A listed UK company was trimming its non-core patent portfolio and found a US corporate buyer. The patent attorneys advised the sellers on constituting the portfolio for sale including defining and specifying the assets. The insurer held a short conference call with the patent attorneys and seller to discuss the portfolio including its provenance to gain comfort on title. The insurer was then able to provide a policy for the benefit of the seller in the event there was a breach of any of the given warranties and the buyer claimed loss including diminution in value. These two products have also been blended in circumstances where, for instance, there might have been an acquisition of a university spin out by a corporate and there were identified IP risks; both the W&I and contingent policies can be combined into a single product to help facilitate transactions.

Patent Attorneys and the Rosetta Stone

Farnaz Massoumian discusses the importance of (often overlooked) communication skills in the daily work of patent attorneys and proposes different approaches for equipping patent attorneys with these skills.

What do patent attorneys and the Rosetta Stone have in common? Quite a lot, it turns out. Just as the ancient relic’s three inscription – in Ancient Greek, hieroglyphic and Demotic scripts – hold the key to deciphering ancient Egyptian texts, a patent attorney is often tasked with translating innovation to business using the language of law. In fact, a patent attorney is often a curious creature within organisations, who is as likely to sit in the legal function as in the tech or business functions. Regardless of where they are, if well positioned, patent attorneys can turn innovations into valuable business assets. The question is, how can a patent attorney ensure that technology, law and business are translated in an effective manner to produce commercially valuable intellectual property? The answer is effective communication.

Patent attorneys are largely scientists and technologists at heart and by background, with a dose of on-the-job and academic legal training. However, communication skills are often treated as nice-to-haves rather than well-defined requirements in many job descriptions, from trainee to senior attorney positions. Interestingly, not many companies or private practice firms provide communications training or even see the need for formal training in such a skill. And yet, as important as an attorney’s technical expertise and legal know how is, the factor that turns a would-be client to a client, an invention to an invention proposal, and a patent application to a patent, is the human interaction and connection, the communication, with businesses, inventors and examiners.

By Farnaz Massoumian

Take the example of an in-house IP team. Such a team is typically a magic legal box that takes invention proposals from the tech community as input and outputs valuable assets to business. However, the IP team’s function extends far beyond the magic box if it is to capture the right input and ensure that the

output is actually valuable to business. On the one hand, the team needs to engage with inventors in such a way that guarantees optimal invention capture, and on the other, understand the business needs in order to invest in and protect the relevant inventions.

But how can an IP team engage inventors effectively? After all, regardless of a company’s IP policy, the only way to capture patentable innovations is for the inventors to disclose them to the team. The decision to submit an invention proposal widely rests with the inventors and there are many reasons why an inventor may not submit such a proposal. Reasons ranging from not believing an invention to be patent-worthy to not knowing what a patent is, to not having time for the paperwork, or not knowing the importance of an invention to the business as a whole. While many studies 1 have been carried out on the merits of different initiatives for inventor engagement, what all these initiatives try to address is a seemingly broken chain of communication between the inventor and the IP team. That is, a room full of attorneys with PhDs cannot necessarily capture important inventions unless the team has established rapport with inventors.

Similarly, how can an IP team engage with business to make IP a business pillar? Many senior leaders in organisations are not necessarily IP savvy, and while some may tolerate investing in IP, others may see it as an extra strain on resources without tangible benefits.

1. See, for example:

• ‘I’m an academic, get me out of patents: Strategies for promoting patenting among academics and researchers’ by Farnaz Massoumian, www.lexology.com/library/detail.aspx?g=5fdef670522f-45a9-aeb6-462a7af3cb82

• Knut Blind, Jakob Pohlischa, Aikaterini Zi, Publishing, patenting, and standardization: Motives and barriers of scientists, Research policy, 47 (2018), 1185 – 1197

• Lam, A., What motivates academic scientists to engage in research commercialization: ‘Gold’, ‘ribbon’ or ‘puzzle’? Res. Policy 40 (10), 1354-1368, 2011

• Devrim Go¨ktepe-Hulten Æ Prashanth Mahagaonka, Inventing and patenting activities of scientists: in the expectation of money or reputation? J Technology Transfer (2010) 35:401–423

This is especially the case when patents do not feature in an organisation’s business model. Although there is no one-size-fits-all approach to understanding the potential role or value of IP in an organisation, the key to this understanding is effective communication between the IP team and senior leaders. This type of interchange requires the patent attorney to put aside their attention to detail skills and impart a holistic overview of patents, and, in return, gain an understanding of the overall business picture and its implications for IP.

Even if an in-house IP team is successful in being a nexus between technology, law and business, there is no guarantee that outside counsel, who may be involved at different stages of the lifecycle of a patent, align with the team unless the team conveys – communicates – its key objectives and requirements to the counsel. There is no reason why an outside counsel should intrinsically understand the commercial value of particular patents or the preferred ways of working of an inhouse IP team unless this is clearly communicated.

As can be seen from the above examples, it is of paramount importance that a patent attorney has or acquires different skill sets suitable for different types of communication with people and entities inside and outside of an organisation. While these skills may be intuitive for some people, by virtue of personality or background, they are like many other skills that require training and practice. Although it may seem that communication skills are more relevant to in-house teams than to patent attorneys in private practice, this is not necessarily the case. As most service providers would testify, the key to client engagement is effective communication, from the time a pitch is presented, to client care and retention. The relationship with a client is akin to any other relationship – it requires constant dialogue to address minor issues to avoid them building up into major problems, and ultimately, the breakdown of the relationship.

A key communication that is often overlooked by attorneys, both in-house and in private practice, is the dialogue with patent examiners. After all, examiners are human beings who, despite the official and dry tone of written communications, are happy to talk about the weather when speaking on the phone. And, as many patent attorneys would testify, their correspondence with an examiner is different after they have made a human connection on a call to when the examiner is a faceless ‘sir/madam’. This difference is crucial and can lead to widely different outcomes. An attorney who can show that they understand the examiner’s perspective on the one hand and is able to communicate their business or their client’s needs on the other, is more likely to find a solution than the one who conveys no such understanding. Conversely, addressing an examiner like a chatbot and responding with a ‘we do not agree with the examiner on this point’ are often sure ways of putting an examiner on the defensive.

“Demonstrating good understanding of a senior leader’s priorities and preconceptions is key to generating engagement at top levels of an organisation.”

Connection before correction

Effective communication tools have been discussed extensively in literature 2 and taught in various educational settings. Something that all these tools have in common is their emphasis on the importance of listening, or in the words of the parenting book, Positive Discipline, 3 connection before correction. That is, regardless of the audience, for communication to inform and have an impact on behaviour, there must first be a meaningful connection. For example, learning more about inventors, their preferred ways of working and their perceived obstacles when it comes to patents, can go a long way in shaping an effective dialogue. Similarly, demonstrating good understanding of a senior leader’s priorities and preconceptions is key to generating engagement at top levels of an organisation. When it comes to client relationships, listening to clients’ needs and grievances and showing an understanding of issues that are important to the client are more likely to result in happy clients than rolling out blanket measures of client care without regard for individual needs and expectations. For example, although everyone may welcome lower bills, costs typically rank differently in importance depending on factors such as an organisation’s size, the size of a patent portfolio and the importance of a particular patent family to business. Moreover, clients’ needs may change over time and regular connections to ensure that old assumptions hold true can determine whether a client stays or takes their business elsewhere.

Tell a story

What many good communication tools have in common – irrespective of the context of the communication, from IP education to a response to a patent office to a business pitch – is that they relay a story. In the words of psychologist and IP professional Marios Georgiou, 4 IP education is about telling a narrative, not presenting a slide deck. The choice of the narrative and the delivery of the story are instrumental to engaging the audience, not just for the moment when they are in the room, but, importantly, beyond the room. For example, a narrative aimed at engaging inventors or senior leaders may include instances when patents have been assets or risks for the business. Telling a compelling story of an invention

2. See, for example: www.local.gov.uk/sites/default/files/ documents/Response%20Playbook%20Final.pdf

3. Positive Discipline by Jane Nelsen

4. www.depthatwork.com

in the context of technology and prior art in response to a patent office communication not only engages the examiner, it makes them more amenable to reading the application with the story in mind than conjuring up their own narrative. A client pitch that shares a handful of real-life experiences of a patents team is more likely to be memorable than a collection of slides that is largely indistinguishable from another team’s deck.

Teach communication skills

Although there are different ways of including soft skills training such as communication in the training regime of patent attorneys, the very recognition of the need for such training is a good start. Furthermore, although some senior attorneys may be better communicators than their junior counterparts by virtue of experience, this is not necessarily the case. That is, it is imperative that soft skills, especially communication skills, are included at every step of the way in an attorney’s career because audiences, engagement habits, and expectations change over time. While technical and legal knowledge are the foundations upon which a patent attorney bases their practice, the thread that weaves this knowledge into a business and creates valuable assets from knowledge is communication, communication, communication.

Farnaz Massoumian is a European Patent Attorney at Vodafone Group Services in London.

“Addressing an examiner like a chatbot and responding with a ‘we do not agree with the examiner on this point’ are often sure ways of putting an examiner on the defensive.”

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 Validity Obviousness

AIMSportVisionAGv(1)SupponorLimited,(2)SupponorOY

[2023] EWHC 164 (Pat) •

30 January 2023

Mr Justice Meade

This decision relates to an infringement action brought by AIM Sport Vision (‘AIM’) in respect of its patent concerning virtual advertising billboards for sporting venues. The defendant (collectively ‘Supponor’) denied infringement and claimed that the patent was obvious.

The only claim that remained an issue was a method claim directed to a method of digitally overlaying an image with another image. AIM had decided before trial not to defend the system claims.

The issue of infringement depended on the interpretation of two features of the claim, both of which Supponor argued should be construed narrowly. Applying a ‘normal’ claim interpretation as set out in Saab Seaeye v Atlas Electronik [2017] EWCA Civ 2175, the judge held that Supponor’s system fell within the scope of the claim as granted.

With regard to validity, Supponor argued that the claim as granted was obvious over a patent application, ‘Nevatie’. However, the judge held that Supponor’s arguments were not supported by its expert evidence and relied on hindsight.

AIM sought conditional amendment of the claim as a precaution in the event that its interpretation of the claim was not accepted. Supponor objected to the amendments on the ground that they would not validate the claim if found to be obvious, and also that they lacked clarity and added matter. The judge disagreed with Supponor’s arguments and held that the proposed amendments would have been allowable.

Finally, the judge considered an allegation by Supponor that the combination of two admissions made by AIM in relation to the validity of the system claims amounted to an admission that the method claim was also invalid.

In support of its argument, Supponor referred to Meade J’s decision in Promptu v Sky [2021] EWHC 2021 (Pat) where he held that the patentee was trying to act inconsistently with an earlier concession it had made in relation to claim validity. Referring to the Promptu decision, the judge stated that he had not purported to decide any point of principle in Promptu and therefore held that it could not be cited by Supponor in support of its argument. In any event, the judge identified a number of differences between the present case and Promptu and ultimately found Supponor’s argument to be flawed.

In summary, the patent was found to be valid and infringed.

Case management Standards essential patents FRAND

Kigen (UK) Limited v (1) Thales Dis France SA, (2) Thales Dis France SAS [2023] EWHC 313 (Pat)

2 February 2023

Douglas Campbell KC

This decision relates to an unsuccessful application by Kigen to schedule a FRAND trial before a technical trial. Thales owned a number of European (UK) patents that had been declared as essential in the technical field of eSIMs and iSIMs, and had been in licensing discussions with Kigen. Those discussions did not lead to any agreement, at which point Kigen brought invalidity proceedings and proceedings seeking a determination of FRAND terms. In this application, the issue for the judge to decide was whether the technical trial or the FRAND trial should go ahead first.

Kigen wanted the technical trial to go ahead first. It argued that the outcome of the technical trial would greatly influence the FRAND trial. It also argued that Thales’s portfolio included a large number of foreign patents and a UK judgment would have effect on other jurisdictions. However, when pressed by the judge, Kigen could not elaborate on what those effects might be. Thales on the other hand argued that the present dispute was

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

mainly a commercial one and the FRAND trial should go ahead first. It argued further that the FRAND issues were not tied to any validity or infringement issues, and measures could be built into any FRAND terms determined by the court to account for revocation of any patent in its portfolio. Thales also pointed out that it was Kigen which had sought a FRAND determination and had given undertakings that it would accept a licence on FRAND terms determined by the courts.

The judge agreed with Thales:

‘In my judgment, the FRAND trial should be heard first, essentially for the reasons given by Thales. I find Thales’s argument that the FRAND trial is always likely to be necessary to be a persuasive one. The FRAND trial will, for instance, resolve what appears to be a substantial issue about how the valuation should approach different types of units. That will not be considered in the technical trials at all. The FRAND trial will also consider how to go about setting a FRAND royalty, for instance whether to use comparables or a top-down approach.

I was also struck by the fact that I have mentioned more than once, it was Kigen which came to court seeking a FRAND determination and which is undertaking to submit to the result of that in any event. Hence, all I am doing is giving Kigen what it wants with the opportunity to have a subsequent technical trial on two out of the 28 or 29 patents later if it sees fit. In my judgment, there is nothing unfair about that approach, despite Kigen’s attempt to suggest it was. On the contrary, if Kigen is so dissatisfied with the result of the FRAND trial that it wants to spend another £2 million or so of money on expensive and time-consuming technical litigation in the belief this will make a significant difference to the FRAND royalty, it can still do that after the FRAND trial and, if it does so, the royalty rate can be adjusted if necessary.’

In conclusion, Kigen’s application was dismissed and the judge ordered the FRAND trial to proceed first.

Novelty

InterDigital Technology Corp v Lenovo Group Ltd

[2023] EWCA Civ 105

9 February 2023

This was an appeal by InterDigital from an order of Mellor J dated 29 April 2022 revoking European Patent (UK) No. 3355537. The judge’s decision was made following the second technical trial (Trial B) between InterDigital and Lenovo in their dispute over the terms of a FRAND licence of InterDigital’s portfolio of allegedly standard-essential patents.

The Patent related to regulating data transmission in the physical layer in the 3G UMTS mobile telecommunications standard. At first instance, the judge had held that the patent would have been essential to the standard and infringed if valid, but that it was invalid because all the claims lacked novelty over a marked-up version of technical specification issued by the European Telecommunications Standards Institute (‘Filiatrault’).

Lenovo had argued that the claims were invalid over Filiatrault on four bases. The judge rejected the first three ways in which Lenovo put its case, but accepted the fourth.

On appeal InterDigital contended that the judge had correctly interpreted the claims when determining the issues of claim construction and essentiality/ infringement and when rejecting Lenovo’s first three cases, but had inadvertently applied a different and incorrect interpretation when accepting Lenovo’s fourth case. Lenovo disputed this.

The resolution of the appeal turned primarily upon a single question of claim construction, relating to a feature in claim 1 expressed in ‘means for’ terms:

‘[1F] means for limiting MAC-d flow data multiplexed into a MAC-e PDU, to a largest E-TFC size that is smaller than a size of MAC-d flow data allowed by the received serving and non-scheduled grants and available for transmission.’

This feature related, in broad terms, to limiting the number of blocks of data that were multiplexed together in view of an ‘allowance’ given for the transmission.

In the prior art, the data to be multiplexed together was selected so as to be within the allowance. However, because of the quantitized nature of the medium, padding bits might have to be added which would mean the overall amount of data to be transmitted could still exceed the allowance.

The patent specification described a scheme in which the ‘next size down’ from the allowance was used as the limit for selecting data to be multiplexed together, thus ensuring that the multiplexed data was within the original allowance even when any padding bits were added. It was found at first instance that Filiatrault did not disclose this selection step. However, the judge accepted, based on expert testimony, that with certain particular instances of input data the multiplexed data would naturally fall within the ‘next size down’ allowance.

InterDigital contended that the correct interpretation of the claim was to include this step of selection of the next size down, and that the judge at first instance correctly used this interpretation when rejecting Levono’s first case based on Filiatrault, but fell into error when upholding their fourth case because he applied a different interpretation even though he was plainly not intending to do so.

Lenovo contended that the ‘means for’ language should be interpreted broadly and that any scheme that arrived

Lord Justice Lewison, Lady Justice Asplin and Lord Justice Arnold

at the same result of the multiplexed data being within the ‘next size down’ allowance met the requirement. They said that InterDigital’s construction amounted to writing words into the claim which were not present, namely words along the lines ‘selecting the next smaller E-TFC and using its size as a limit to multiplexing of data’. In the appeal judgment, InterDigital’s arguments were found persuasive: ‘82. So far as the wording of the claim is concerned,

this requires “limiting MAC-d data to a largest E-TFC size that is smaller than a size of MAC-d data allowed by the grants [emphases added]”. It seems to me that this requires the next smaller E-TFC to be identified (or selected or chosen) and used to limit the MAC-d data. It is not sufficient that, at the end of a process, the MAC-d data happens to fit within the next smaller E-TFC’.

The patent was found to be novel over Filiatrault on this construction of the claims and the appeal was allowed.

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)

Fisher-Rosemount Systems, Inc.

BL O/0142/22

8 February 2023

The application related to a portable device for communicating with an industrial plant, in which the device was provided with swappable functional modules specific to each field device, enabling a single portable device for multiple field devices rather than a plurality of separate portable devices.

The examiner objected that the claimed invention related solely to a computer program and was therefore excluded. The hearing officer considered that there appeared to be agreement between the applicant and the examiner regarding the contribution, which related to overcoming the problem of handheld maintenance tools and field devices in a process plant becoming over specialised. The disagreement was instead in whether the identified contribution related solely to a computer program before considering the AT&T/CVON signposts.

The examiner did not intend the hardware to form part of the contribution. The hearing officer considered that, although the provisions of section 1(2) could not be circumvented by simply running a computer program on conventional hardware, the examiner had not cited any prior art indicating that the hardware recited in the claim was conventional or otherwise known or obvious. As the hardware component was used by the applicant to teach away from the prior art, the hearing officer concluded that it was neither common general knowledge nor conventional. It therefore followed that the hardware must form part of the contribution.

The contribution did not therefore fall solely within excluded subject matter. The application was remitted to the examiner to begin preparations for grant.

Priority date: section 5

Adamson Jones IP Limited v American Isostatic Presses Inc

BL O/0092/23

1 February 2023

The claimant (Adamson Jones IP Limited) filed an application under section 72 for revocation of the defendant’s patent, which related to a method of consolidating a calcined radioactive material by hot isostatic pressing (‘HIP’), in which a sealed can containing the material was bottomloaded into a HIP vessel using a robot.

The claimant submitted that the patent was invalid for lack of novelty over an earlier published application (D9) to which the patent claimed priority, due to the priority claim being invalid. D9 was a US patent application that itself claimed priority to an earlier provisional application (D8), both of which published before the filing date of the patent. The claimant argued that D8 and D9 were relevant earlier applications under section 5(3) because the claimed invention was disclosed in both applications, which resulted in the priority claim to D9 being invalid. The defendant accepted that the claimed method was disclosed in D9 but argued that certain features relating to the robotic system for loading the sealed can were not disclosed in D8, which was therefore argued not to be a relevant earlier application. The defendant also argued that it was not clear

whether a US provisional application could be a relevant application for the purposes of section 5(3), noting that the status of such applications as a suitable basis for a priority claim had not been tested in proceedings before the courts or the comptroller.

The hearing officer first considered whether a US provisional application could be a relevant application under section 5, referring to the Manual of Patent Practice that mentioned a change in US patent law in 1999 allowing a provisional application to be converted into a full US patent application within one year of filing. The hearing officer also noted that the EPO had recognised US provisional applications giving rise to a right of priority. Since section 130(7) specified that section 5 was intended to have the same effect as article 87(1) EPC, the consequence was that a US provisional application was equivalent to a patent under the Act and was therefore a relevant application under section 5(5). D8 was therefore considered to be a relevant application.

Referring to G 2/98 and the following decisions of Unilin Beheer v Berry Floor [2004] EWCA Civ 2021 and Abbot Laboratories v Evysio Medical Devices [2008] EWHC 800 (Pat), the hearing officer concluded that the various features of claim 1 of the patent, including the claimed robotic loading step, could be found at least implicitly from D8. The priority claim to D9 was therefore invalid. Since D9 was published before the filing date of the patent and disclosed all the features of the claimed invention, the patent was found to be not novel and was ordered to be revoked.

Extensions of time limits: section 117b

Fook Yuen Lee

BL O/0118/23

3 February 2023

An examination report was issued setting a due date for response, but a response was not filed until around five months after the due date, together with a request for the late-filed response to be accepted. The examiner decided not to exercise discretion to accept the late response and the matter came before a hearing officer to decide whether the response could be accepted.

The applicant’s attorney put forward various arguments regarding reasons why the response was filed late, which included: the original due date unintentionally not being docketed correctly; an office relocation; holidays; work pressures; requiring instructions from an overseas attorney; and the complexity of the work involved in formulating a response. The hearing officer considered that, while it was acceptable human error not to have docketed the original due date, the attorney was aware of the missed due date three months before the

response was filed as a result of the IPO sending a letter informing them. The additional three months was not an insignificant amount of time and could not be considered a de minimis amount that might justify a discretionary extension. Other factors such as workload, office moves, holidays and overseas attorneys were considered by the hearing officer to be general normal work pressures and the application in question was considered not to be particularly complex. The hearing officer concluded that there were no grounds that justified exercising discretion to allow the late response under section 18(3). Since the application was not in order for grant by the end of the compliance period, the application was refused.

Correction of errors:

section 117 and rule 105

Sunwave Communications Co., Ltd.

BL O/0206/23

28 February 2023

The application related to digital signal processing to compensate for lack of gain flatness in a receiver of transmitter. Part of the invention involved determining a gain flatness by determining the actual frequency response of the receiver. The description included an equation to define this, but the examiner objected that the equation did not in fact achieve the desired result, which resulted in the application lacking sufficiency.

The examiner indicated that the equation was incorrect and proposed a possible corrected version that would achieve the result but considered that this correction would not be immediately obvious to the skilled person and may not therefore be allowable. If, however, the correction could be allowed the objection of lack of sufficiency would fall away. The hearing officer referred to the Manual of Patent Practice for section 117, which stated that it was not necessary that the reader be able to correct the error unaided but the skilled person could take into account the documents as originally filed and determine the most likely solution to the difficulty.

The hearing officer considered that it was clear that there was an error since both the examiner and applicant agreed. The question was then whether what was offered was what was originally intended. Although the examiner suggested that other ways of correcting the application to achieve the result were possible, the hearing officer considered these unlikely or improbable. The most likely correction was the one proposed, which the hearing officer considered was most likely to have been originally intended. The requested correction was therefore allowed, subject to being advertised in the journal according to rules 75 and 105, following which the application would be remitted to the examiner for further processing of the application.

EPO decisions

This month’s contributors from Bristows were Jonathan Ross, Nicholas Round and David Hemming.

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

Undisclosed disclaimers:

articles 87, 54 and 123(2) EPC

T0088/21: Glass articles exhibiting improved fracture performance / Corning Incorporated

TBA decision, 15 November 2022

Chairman: R. Winkelhofer

Members: T. Burkhardt and S. Besselmann

This was an appeal by the applicant against the decision of the Examining Division, which had refused European patent application No. 16751065.0. The decision concerns the EPO’s approach to undisclosed disclaimers.

The application in question A1 claimed priority from A0, a US patent application. The applicant was also the proprietor of B1, a European application published before A1 but after A0. B1 disclosed certain examples which anticipated A1. B1 claimed priority from B0, a US patent application filed before A0.

The patentee sought to add an undisclosed disclaimer to the claims of A1 in order to distinguish B1/B0. The Examining Division refused the application on the basis that the undisclosed disclaimer did not meet the requirements of article 123(2) EPC and, therefore, added matter. The examiner’s decision was based on the approach taken by the Enlarged Board of Appeal in G 1/03 and G 1/16, which permits an undisclosed disclaimer under article 123(2) EPC if it is made to:

1. restore novelty by delimiting a claim against the state of the art under article 54(3) EPC;

2. restore novelty by delimiting a claim against an accidental anticipation under article 54(2) EPC; or

3. disclaim subject matter which is excluded from patentability for non-technical reasons.

The Examining Division decided that under articles 87(1) and (4) EPC, B0 was the first application for the subject matter of the claim. As B0 was filed over a year before the filing date of A1, the claim was not entitled to priority.

Accordingly, B1 was ‘full’ prior art and anticipated the claim under article 54(2) EPC. As the anticipation fell under article 54(2) and not article 54(3) EPC, the applicant could not rely on point (1) to rescue its undisclosed disclaimer. Further, the applicant could not rely on point (3) because the anticipation was not accidental.

The applicant appealed the decision arguing that it was necessary to consider the claim currently on file, rather than the original claim. Once the disclaimer had been applied, none of the subject matter of the claims of A1 was disclosed in B1/B0. Therefore, A0 was the first application under article 87(1) EPC and the application was entitled to priority. This rendered B1 as prior art under article 54(3) EPC, permitting the undisclosed disclaimer. In support of this position, the applicant relied on T 1872/14 and T 1843/09. The applicant also requested a referral to the Enlarged Board of Appeal owing to conflicting lines of case law.

The TBA rejected the applicant’s arguments, which it said were based on a misunderstanding of the principles in G 1/03 and G 1/16. Under these decisions, a disclaimer restoring novelty can only be added when a novelty objection under article 54(3) EPC applies to the claim prior to the addition of the disclaimer. By contrast, the applicant’s approach would see a disclaimer changing the status of the prior art from being relevant under article 54(2) EPC in the absence of the disclaimer, to article 54(3) EPC. Therefore, the appeal was dismissed.

Notably, the applicant also made a policy argument that refusing the application would amount to an unfair advantage for applicants due to ‘self-collision’ with other patents filed earlier by the patentee and that under the same circumstances a third party would have been allowed to insert a disclaimer (assuming their priority claim was valid). The TBA did not dispute that a third party would be in a different situation, but said that such differences were an inherent part of the EPC patent system. Accordingly it was for an applicant to appropriately manage its own portfolio to avoid such a collision.

Finally, the TBA refused to refer any questions to the Enlarged Board of Appeal, as it considered there to be no conflicting case law since the previous decisions of the Enlarged Board of Appeal.

Threshold for priority: article 87(1) EPC

T 1303/18:PolymorphicformofRotigotine/UCBPharmaGmbH

TBA decision, 21 November 2022

Chairman: M. O. Müller

Members: M. Maremonti and M. Blasi

This was an appeal by the patent proprietor following a decision to revoke European patent No. 2 215 072.

Claim 1 of the patent defined a polymorphic form of Rotigotine with certain parameters including a particular x-ray powder diffraction spectrum. The patentee argued that the priority document disclosed the same polymorphic form of Rotigotine, although it was defined by slightly different parameters. For example, the number of x-ray diffraction peaks disclosed by the priority document was different to that of the patent, and the error margin in the priority document for the x-ray diffraction peaks was +/- 0.1 whereas in the patent, it had been broadened to +/- 0.2.

The opposition division had revoked the patent following the finding that it could not benefit from the earliest priority date since the priority document did not directly and unambiguously disclose the subject matter of claim 1.

The patentee appealed the decision, arguing that the priority document disclosed the same invention as the patent within the meaning of article 87(1) and the Enlarged Board of Appeal’s opinion in G2/98, namely the same polymorphic form of Rotigotine. In G2/98, the Enlarged Board held that an application is only entitled to priority if the skilled person can derive the subject matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole.

The

TBA was not persuaded by the appellant’s arguments.

The TBA noted a number of differences between the parameters used to define the compound in the priority document and the subject matter of claim 1 of the patent. For example, the broadening of the error margins allowed the x-ray diffraction peaks to be shifted so that they no longer matched the diffraction angles disclosed in the priority document. As no broadening of the error margin was disclosed in the priority document, the TBA decided that it could not be concluded that the compound of claim 1 of the patent was the same as that disclosed in the priority document.

The appellant tried to deal with this objection with an auxiliary request where the x-ray powder diffraction spectrum was “…substantially as shown in figure 1”,

however the term “substantially” was not used in the priority application and the request was refused.

The appellant also argued that since, at the priority date, only two forms of Rotigotine were known, and the alternative form was clearly distinguished from the disclosure of the priority document and the patent in question, it was illogical to find that a different compound was described in the patent compared to the priority document. The TBA rejected this argument on the basis that it was possible in the future that another form of Rotigotine would be discovered which would fall within claim 1 but not within the disclosure of priority document. Such a discovery would then retroactively invalidate the priority claim. Therefore, if the appellant’s argument was accepted, this would run against the principle of legal certainty.

The TBA rejected the appellant’s argument that the respondents had the burden of showing that the compound in the priority document was different to that of the patent claim. The TBA decided that it was the appellant that had introduced the differences between the priority document and the patent and it was the appellant that bore the burden of proving that, despite this differences, the same compound was disclosed by both documents.

Finally, the appellant attempted to introduce a further argument based on partial priority into the proceedings but the TBA refused to admit it on the grounds that it would raise new and complex issues late into the appeal, and admitting them would effectively allow the appellant to present a fresh case on priority that was not heard in the opposition. This would have been contrary to the primary object of the appeal proceedings, which is to review the decision under appeal in a judicial manner (article 12(2) RIBA 2020).

Having lost the claim to priority, the patent (and auxiliary requests) was found to lack novelty and inventive step. Accordingly, the appeal was dismissed and the patent revoked.

Corrections and the withdrawal of an Appeal: article 112(1)

(a)

EPC; rule 139 EPC

T 2474/19: Document Handling/ Japan Cash Machine Co., Ltd

TBA decision, 23 January 2023

Chairman: T. Häusser

Members: G. Decker and A. Böhm-Pélissier

This was an appeal by the applicant against the decision of the examining division, which refused European Patent Application no. 09 762 206 for lack of inventive step.

In correspondence relating to the appeal between the appellant and the EPO, the appellant declared that it was withdrawing its appeal. Shortly afterwards (two

days), the appellant declared that it was retracting its request to withdraw its appeal, and requested a correction under Rule 139 EPC stating that the ‘request’ to withdraw had been filed in error.

The appellant argued that its actual intention had been to abandon the case by not attending the oral proceedings, and to file a divisional application. It provided evidence to support this, showing the error occurred due to a miscommunication between the appellant’s representatives. It also argued that filing the withdrawal in the register did not constitute a public notification, and additionally requested a referral to the EBA to clarify whether or not automated European Patent Register entries (such as entry of its withdrawal entry) constituted an official public notification.

In its decision, the TBA held that the withdrawal was unambiguous and unconditional, and did not constitute a request but rather a binding declaration.

Rule 139 states that linguistic errors and mistakes in a document may be corrected on request. The TBA cited EPO case law that stated the rule clearly deals with cases where there has been an error of expression in a declaration. Errors in the run up to the declaration

are therefore irrelevant, such as those regarding the decision-making process or the motivation for making the declaration. Legal certainty required that this limitation be in place. Further, citing G1/12, corrections cannot be used to allow for a change of mind or change of plans.

Despite the appellant’s submission, the board held that it did not matter that the representative had intended to carry out instructions given to it but made an error in doing so – this error was committed in the run up to the declaration rather than in the declaration.

Regarding the request for referral to the EBA under article 112(a) EPC, the appellant had aimed to clarify whether automated entries into the European Patent Register constituted an official public notification. However, the TBA noted that such requests are on the condition that there is an error within the meaning of rule 139 EPC which must be corrected. As there was no error under rule 139 EPC in this case, the request was refused.

The decision is a reminder of the importance of procedural steps and the fact that these must be followed to the letter, no matter how unfortunate the circumstances. The TBA clearly takes a firm view that rule 139 EPC cannot be used where legal uncertainty would be the result.

Case analysis: Tangle Inc v One for Fun Ltd & Ors [2023] EWHC 217 (Ch)

Intellectual property infringement and director’s liability

Awell-recognised benefit of establishing a limited liability company is that it offers a degree of protection from third-party claims to directors (and shareholders) with responsibility for running the company. However, in IP infringement actions, a tactic frequently deployed is to make directors co-defendants on the basis of a joint tortfeasorship claim. Naturally, this begs the question: how much protection does a company structure really offer?

By Lauren Palmer Legal Assistant at Dehns.

There is a fine balance to be struck between, on the one hand, ensuring that a company’s separate legal identity is properly recognised and, on the other, precluding directors from committing tortious acts and avoiding liability by hiding behind the so-called ‘corporate veil’.

This decision considers directors’ liability in the context of a copyright infringement claim, and provides an indication as to what might be regarded as sufficient to ‘lift’ or ‘pierce’ the corporate veil in these circumstances, and what likely will not.

Case background

The claimant (‘Tangle’) owns intellectual property rights in its toy, the Tangle (which is a ‘fidget’ toy), the design of which is based on a wooden sculpture created by Richard Zawitz in or around 1975, which in turn was based on his earlier drawings. The defendant company (‘OFF’) is a well-established Scottish toy wholesaler and retailer. Tangle brought an action alleging that a toy OFF planned to market – the Jumbly – infringed their copyright in the Tangle. It was contended by Tangle that OFF had previously been involved in selling the Tangle, a product well-known in the marketplace, and on the basis that the Jumbly bears such a strong resemblance to the Tangle, it must be a copy.

A joint tortfeasorship claim was also brought against OFF’s three directors. The claim against the first director (who was the second defendant) was because he was also the principal shareholder. Tangle alleged that if unrestrained, the directors would engage in ‘phoenixing’ – i.e. they would set up another company behaving in the same way. The evidence of the second defendant’s personal involvement was based on an email he sent in pre-action correspondence, in which he used ‘we’ in the context of a decision to make the Jumbly and upon what that toy was based on. Nothing was specifically relied on to support the claim against the third and fourth defendants, who were the other directors.

An application was brought by the second to fourth defendants to strike out the joint tortfeasorship claim as against them as directors, on the basis that it was specious and unparticularised.

Decision

The Deputy Judge considered the law surrounding joint tortfeasors starting with the Supreme Court’s decision in Fish & Fish Ltd v Sea Shepherd UK [2015] UKSC 10, in which to be liable, a person must (i) assist the commission of the tort, (ii) have a common design, and (iii) conduct an act which is tortious. He next considered the Court of Appeal’s decision in Lifestyle Equities CV v Ahmed [2021] EWCA Civ 675 (which has been appealed to the

Supreme Court on this issue), and that court’s reference to Chadwick LJ’s four principles arising in MCA Records Inc and anor v Charly Records Ltd and ors [2001] EWCA Civ 1441, as they affect intellectual property infringements. It was conceded that if the pleaded allegations were no more than stating the individual defendants were directors, this was not enough to impose liability. The Deputy Judge concluded that this was all that was alleged against the third and fourth defendants. Accordingly, the claims against them were struck out.

However, as against the Second Defendant, the pleaded case of him controlling and operating OFF, was supported by some ‘very limited’ evidence; in other words, more than conducting himself within the constitution of the company. The Deputy Judge stated this ‘gets the case across the line, but only just’. This was because the Deputy Judge followed Mellor J’s approach in Au Vodka Ltd v NE10 Vodka Ltd and anor [2022] EWHC 2371 (Ch), in that a judge’s task was to consider whether the allegation was sustainable at law, not simply weigh competing evidence on the issue. He could not conclude that as against the second defendant, the joint tortfeasorship claim had no real prospects of success, so the matter needed to be tried. However, Tangle had offered to have the case against the second defendant stayed pending consideration of liability of OFF’s acts of infringement, and this was accepted.

Implication

What this decision reiterates (at least until the Supreme Court opines in the Lifestyle Equities v Ahmed case) is that where a director acts within the confines of their constitutional duties to the company, and there is no other separate tort that is committed, the director will have a defence to being a joint tortfeasor. However, whether the acts of the director go beyond that ‘constitutional role’ is invariably fact-sensitive. The reluctance of the courts to set hard-and-fast rules bears testimony to this point. This is perhaps all the more so in the context of intellectual property rights. In the present case, there were three directors. Where, as frequently happens, the allegation is made against a sole director, it is likely arguing that their actions were merely those within the constitutional role of a director, will be a more difficult task. While the burden of proof lies on the claimant, inevitably, the director defendant will need to show any actions were merely duties as a director, and not otherwise.

Litigation: IPEC marshalling scheme

This is a reminder to CIPA members that the Intellectual Property Enterprise Court’s marshalling scheme is still in place. CIPA members can contact mail@cipa.org.uk to register your interest with IPEC. Please include “IPEC marshalling scheme” in the subject line. Please include “IPEC marshalling scheme” in the subject line.

Why the controversy over trans rights at the moment? A guide for allies

There has over the past few years been increasingly hostile coverage in the media over rights and recognition for trans people in the UK and elsewhere. IP Inclusive thought it would be helpful to produce this guide for the many of us who have noted the recent developments with concern and apprehension. IP Inclusive tries to explain why anti-trans sentiment seems to be gaining traction, and what it thinks a reasonable position is on the issues that are currently being made to seem controversial.

The guide starts from the position, which IP Inclusive does not believe should be controversial, that trans and non-binary people exist and their identities are valid, and so they – as everyone – deserve not only acceptance but also respect.

Why such controversy now?

The most recent controversy resulting in a backlash against trans rights seems to have been proposals to reform the Gender Recognition Process. Currently, the procedure is intrusive and highly medicalised, 2 and the government planned to allow a person to change their legally recorded sex through a simpler process, based around a formal declaration of the gender to be recognised (often referred to as ‘Self ID’). Although widely supported, as evidenced by the results of the UK government’s own consultation 3 this change has not yet been implemented. In Scotland, similar legislation has just been passed, but the UK government has made an order preventing the bill from becoming law, which will likely result in the issue going to court.

The Gender Recognition Process results in a Gender Recognition Certificate (‘GRC’) that changes only a person’s legally recorded sex. Most identity documents, including passports and driving licences, can be changed without a GRC (which is itself not an identity document). The government itself confirms that a GRC is relevant primarily to the holder’s certificates of birth, marriage and death. 4

More significantly, trans people’s rights under the Equality Act 2010 extend to people who are ‘proposing to undergo, are undergoing or have undergone a process (or part of a process) to reassign their sex by changing physiological or other attributes of sex’, and for this purpose having or not having a GRC is generally irrelevant. A person’s status under the Equality Act is not changed by having a GRC.

The proposed changes to the Gender Recognition Process have been mis-represented to suggest that a GRC could be abused so that any man, for example, could ‘pretend’ to be a woman with the intention of gaining the legal right to access single-sex spaces designated for women. However, access to single-sex spaces is not linked to possession of a GRC, and so a change to the GRC process does not change the law or practice relating to single-sex spaces . A blanket exclusion on trans people from single-sex spaces is neither necessary nor an equitable balance between the rights of trans people and the rights of others who have access to the same-sex space, never mind the fact that it offensively portrays trans people as inherently a threat.

Should trans people use single-sex facilities matching their gender?

Clearly, in general, yes. That is fundamental to living as a man or a woman in society. There may be rare occasions in which it is appropriate to exclude a trans person from a single-sex service corresponding to their gender. The Equality Act recognises this, but stipulates that it can only be done as a proportionate means of achieving a legitimate aim, and the Statutory Code of Practice 5 under the Act clarifies (section 13.60) that this generally means that a blanket ban is not lawful. Each case must be assessed individually. The reality is that trans people have been using singlesex services corresponding to their gender for years without issue. When was the last time you, or anyone, had to prove their gender before accessing a singlesex toilet in public? It is also the case that increased policing of whether people are in the ‘correct’ space largely affects people who are not trans, but whose appearance may not match the expectations of those using the facilities, rather than affecting trans people.

Is this not open to abuse?

A more nuanced version of the above policing is that ‘of course we are not suggesting that trans people are abusive, but if trans women can access women’s spaces then any abusive man can say he is a woman to obtain access’. The reality is that an abuser does not need to masquerade as trans in order to enter a single-sex space, and in countries that have adopted self-ID for trans people (starting with Argentina in 2012 and now extending to 18 countries including Ireland, Malta and New Zealand), this supposed scenario is not found to happen. 6 Of course, robust safeguarding is vital in spaces such as women’s refuges, and this is not incompatible with trans people having access to single-sex spaces that align with their gender.

Have not women fought for the right to single-sex spaces?

1. Many of the points here have also been raised by the Commissioner for Human Rights of the Council of Europe in her 2022 report.

2. Including a requirement of a formal diagnosis of ‘gender dysphoria’, a term that is no longer recognised by the World Health Organisation (WHO), although was previously categorised within ‘mental and behavioural disorders’. It is now quite rightly acknowledged by the international medical community that being trans is not a mental or behavioural disorder. Homosexuality was declassified as a disease by WHO in the 1990s.

3. https://assets.publishing.service.gov.uk/government/uploads/ system/uploads/attachment_data/file/919890/Analysis_of_ responses_Gender_Recognition_Act.pdf#page=10

4. www.gov.uk/apply-gender-recognition-certificate

Single-sex spaces were the default for most of history, usually to the detriment of women. For centuries this country was highly sex-segregated with men’s spaces holding the positions of power. The struggle for women’s liberation in this country was about equal access to spaces and the associated rights and power. The continued provision of single-sex spaces in certain circumstances for reasons such as safety, support, comradeship, organisation, or any other legitimate purpose, does not undermine women’s liberation, nor does trans people having access to those spaces that match their gender.

5. www.equalityhumanrights.com/sites/default/files/servicescode_0.pdf

www.ohchr.org/en/press-releases/2022/12/unexpert-gender-identity-calls-scottish-parliament-adopt-gender-recognition

6. Victor Madrigal-Borloz, the Independent Expert on protection against violence and discrimination based on sexual orientation and gender identity, highlighted this point in a statement on the Gender Recognition Reform (Scotland) Bill.

Are women being erased?

If they are, it is not a result of rights being given to trans people. It’s true that progressing and maintaining women’s rights requires focus on specific issues that affect women solely or disproportionately. Some of these will also affect trans women, and some may not. Some of these will also affect trans men, and some may not. We should continue to fight on these issues, and we believe our energies would be far better spent fighting against ingrained structural inequalities that impact women, rather than fighting against the rights of a small, similarly marginalised group. In many situations where it is claimed that ‘women are being erased’ (for example the use of genderneutral language around pregnancy), it is often not appreciated that this language is being adopted so as to be inclusive of trans men and non-binary people, many of whom can and do become pregnant. Without inclusive language and awareness of the needs of trans men and non-binary people, many can find themselves failing to access adequate reproductive medical care. And, contrary to reports, no organisation has banned the use of the word ‘woman’.

Is ‘cis’ a slur?

Related to this, it is sometimes alleged that ‘cis’ is a slur. In general usage, this term is simply meant to indicate that a person is not trans, which encompasses the vast majority of the population. It seems possible that some people resist a label being applied to themselves because they think they are just ‘normal’ or ‘default’. In the past, people have objected to new usages such as ‘straight’ and ‘white’ being applied to themselves, or to the need for gender neutral language such as ‘chair’ instead of ‘chairman’. In time, we hope the term ‘cis’ will also be accepted as neutral.

What about the conversion therapy ban?

The UK government has long promised to introduce a ban on conversion therapy – an abusive process that purports to change someone’s sexuality or gender identity. But it has repeatedly stalled, and the latest delay has been to consider excluding conversion therapy for trans people from the ban. We see no reason to treat gender identity differently from sexuality in this context, and consider that all forms of conversion therapy should be outlawed. The ban as originally proposed in fact extended to trying to change someone ‘to or from being transgender’, and so in reality addressed some of the concerns of those objecting to it because of children allegedly being influenced into transitioning. The proposed exclusion of trans people from the policy therefore seems to reflect only the fact that the welfare of this marginalised group is being used as a chip in a manufactured culture war.

What about prisons?

Much has been made of the tiny number of instances where trans women housed in women’s prisons have gone on to sexually assault other inmates, leading to calls for trans women to be excluded from women’s prisons entirely. We believe that it is unacceptable for an entire minority to be blamed for the actions of a few members, and it would not be tolerated in any other context. As with all other issues with single-sex spaces, we think the key (as recognised under the Equality Act) is that safeguarding decisions need to be based on the individual, and the fact that poor safeguarding decisions have been taken in the past is no reason to always house trans women in men’s prisons. Indeed, housing all trans women in men’s prisons is, we would suggest, much more likely to result in a person being harmed.

What about sport?

Trans people deserve access to sport on the same basis as cis people. There are nuanced discussions to be had about how to appropriately achieve this, and they will be different according to the particular sport, and the level at which it is being played. The individual sporting bodies ought to be able to resolve this appropriately, but recently many have bowed to pressure from anti-trans groups, even ignoring their own studies and reversing prior inclusive policies. While this issue has been focused on by critics and some parts of the media, the actual numbers of trans people participating in professional sport is negligible.

What about trans children?

Much concern has been expressed about children undergoing medical transition too early, which they may later come to regret. The allegations completely ignore the reality for trans children (and indeed many adults) that medical treatment is impossibly hard to access, with waiting times of many years. 7 In the meantime, trans children are left undergoing a distressing puberty that makes it harder for them to change their presentation later, and trans youth have among the highest rates of suicidal tendencies of any population. The ‘regret rate’ for gender affirming treatments, including surgery, is incredibly low, 8 and has been shown 9 to significantly reduce depression and suicidality, so it defies the evidence to suggest that gatekeeping for treatments should be increased further. Anti-trans campaigners seek to overturn the legal principle of Gillick competence , 10 by which children (irrespective of their parents’ wishes) can consent to medical treatment, provided that they can fully

7. In the judicial review on this matter, the average waiting time for a first appointment for young patients being seen at the Tavistock GIC in May 2022 was said to be 152 weeks, but since then it appears waiting times have increased

8. Around 1%, see for example papers here and here. Conversely, the regret rate for knee surgery is consistently reported to be around 18%, but no one is suggesting people should not be able to access knee surgery.

9. www.eurekalert.org/news-releases/930195

10. https://learning.nspcc.org.uk/child-protection-system/ gillick-competence-fraser-guidelines

understand what is proposed. This has consequences for many other medical treatments, such as access to contraception and abortion, which may indeed be the goal of some campaigners but should not, we believe, be used as a weapon specifically against trans people.

Gender critical beliefs

There have been two recent court cases 11 in which so-called ‘Gender Critical’ beliefs, basically that trans people should always be treated as their sex assigned at birth and not their acquired gender, have been held to be protected beliefs under the Equality Act. The test for a protected belief does not include any assessment of whether it is correct or reasonable, and even offensive beliefs can be protected. Employers have a difficult task where there are conflicting beliefs in the workplace, and in both court cases the employers lost because of poor policies and procedures, not because of any inherent merit in the belief itself. Having a protected belief is not a blanket permission to act on it, and the following passage from one decision is important:

However:

a. This judgment does not mean that the EAT [Employment Appeal Tribunal] has expressed any view on the merits of either side of the transgender debate and nothing in it should be regarded as so doing.

b. This judgment does not mean that those with gendercritical beliefs can ‘misgender’ trans persons with impunity. The Claimant, like everyone else, will continue to be subject to the prohibitions on discrimination and harassment that apply to everyone else. Whether or not conduct in a given situation does amount to harassment or discrimination within the meaning of EqA will be for a tribunal to determine in a given case.

c. This judgment does not mean that trans persons do not have the protections against discrimination and harassment conferred by the EqA. They do. Although the protected characteristic of gender reassignment under s.7, EqA would be likely to apply only to a proportion of trans persons, there are other protected characteristics that could potentially be relied upon in the face of such conduct.

d. This judgment does not mean that employers and service providers will not be able to provide a safe environment for trans persons. Employers would continue to be liable (subject to any defence under s.109(4), EqA) for acts of harassment and discrimination against trans persons committed in the course of employment.

In one case, the main target of the case was the LGBTQ+ charity Stonewall, but the allegations against them were dismissed (this is under appeal).

What about gender fluid and non-binary people?

While talking about court cases, we might also recall the Taylor v Jaguar Land Rover Employment Tribunal case 12 which ruled that non-binary and gender fluid identities were also in principle protected under the Equality Act under the category of ‘gender reassignment’. However, non-binary people still do not receive sufficient recognition in the UK, and for example none of the proposed changes in the Gender Reform Process would allow indication as neither male nor female, and a court case 13 seeking to add the possibility of a gender neutral passport marker was unsuccessful. Such changes would be welcome. Indeed, several countries already have a third-gender option on passports, including USA, Canada, Australia, New Zealand, Denmark, Germany, Pakistan, and India.

What about the LGB Alliance?

A number of groups have sprung up in recent years which seek to divide the lesbian, gay and bisexual community on the one hand from the trans community on the other. The most high profile is the LGB Alliance, which states that it is a ‘charity that supports lesbian, gay and bisexual people’, and if indeed that is what it did it would be unexceptional. However, most of its output seeks to decrease recognition for trans people, and from the outset it adds the rider ‘as recognised by biological sex’. Supporters of the LGB Alliance are not necessarily LGB, but they are usually hostile to trans people.

A common allegation from members of the LGB Alliance is that lesbians are being coerced into dating ‘people with penises’ (or similar expressions). Obviously, nobody should be forced to date or to have sex with anyone they do not want to. We do not think anyone is actually suggesting that they should, so this again seems to be a strawman argument

12 www.gov.uk/employment-tribunal-decisions/ms-rtaylor-v-jaguar-land-rover-ltd-1304471-2018

13. www.supremecourt.uk/cases/uksc-2020-0081.html

11. Maya Forstater v CGD Europe and Others: UKEAT/0105/20/JOJ and Ms A Bailey v Stonewall Equality Ltd and others: 2202172/2020

“Several countries already have a third-gender option on passports, including USA, Canada, Australia, New Zealand, Denmark, Germany, Pakistan, and India.”

being used as a scare tactic. Women can still identify as lesbians, have a ‘type’ of woman they are attracted to, and date who they wish to date, while acknowledging trans women as women. In reality, the general truth seems to be that people are attracted to gender expression, not to chromosomes, and so for example trans women who are attracted to men are generally partnered with men who identify as straight, not who identify as gay. If anyone of any gender or sexuality categorically excludes the possibility of ever dating a trans person, it seems such an attitude may be informed by transphobia. Transphobia is widespread in our society, so we need to work against it, but nobody is being forced to date anyone they do not want to in this context.

What can I do to help?

It is important that cis allies have sufficient knowledge of the difficulties trans people face, so that cis people can recognise and challenge prejudice, however subtle it may be, when it arises, and be able to do that in a respectful and calm way that will not inflame tensions further. Selfeducation is therefore an excellent first step, so well done in reading this piece. There are several charities that work with and for trans people that you can support, including Stonewall and Mermaids, and we encourage you to visit their website for more information on the work they do. Stonewall also has a helpful Q&A on trans issues that you can read here, www.stonewall.org.uk/the-truth-about-trans

Although you might not (knowingly) know any trans people, signalling you are an ally, for example by including your pronouns in your email signature, can be a small but powerful step. Ask to see the anti-discrimination policies of your workplace to ensure they include and protect trans people, as they are required to do by law. Useful reading includes, a piece14 by the US charity the National Center for Transgender Equality on supporting the trans people in your life. And of course, share this article and other resources with anyone in your life that might find them helpful.

We stand with the trans community

Lesbians, gay men and bisexual people are inherently no more tolerant than anyone else. Of course there are transhostile people in the LGB community. But the majority view, and the position of IP Out, is that lesbians, gay men and bisexual people stand with the trans community and their struggle is our struggle. Many of the accusations levelled at trans people are ones that we recognise having been levelled at us in the past – a danger in single-sex spaces, a danger to children, predatory and untrustworthy. They are no more true now than they were then. We expect people to recognise our identities even though we can point to no cause for our orientation, nor can we prove we are who we say we are. We expect people to respect us and allow us to live our lives without hurting others. How can we offer less to our trans family? We stand or fall together, as we always have.

14. https://transequality.org/issues/resources/supporting-thetransgender-people-in-your-life-a-guide-to-being-a-good-ally

“We expect people to recognise our identities even though we can point to no cause for our orientation, nor can we prove we are who we say we are. We expect people to respect us and allow us to live our lives without hurting others. How can we offer less to our trans family? We stand or fall together, as we always have.”

Meet the team

What are your present duties at CIPA?

My main duties at CIPA include -

• Monitoring inboxes and responding to queries.

• Organising and running IP Clinic appointments every Monday evening.

• Assisting with the creation and design of the monthly CIPA Journal.

• Updating the jobs board and website pages.

• Helping out with creating images for events (for the website, emails and social media posts).

When did you join the Institute? March 2022, it’s flown by!

What do you like most and least about the job?

I like that my job is so varied. I get to involve myself with lots of different things and get an insight into all the aspects of CIPA. I also love how friendly the team are.

How do you like to spend your time outside work?

I like to spend time with my boyfriend, friends and family. I love to travel, see new places and eat good food.

What is your favourite food? Anything chocolate.

What is your favourite drink? Non-alcoholic – pepsi max. Alcoholic – espresso martini.

What is your favourite place you’ve visited? Thailand.

What place would you most like to visit?

I have so many places on my list that I want to visit but if I had to choose one, New Zealand.

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

I would most like to meet Louis Theroux. I think that would be a really interesting conversation.

What would you do if you won the Lottery?

I’d buy myself a house in the UK and a holiday home somewhere, give my family members some of it and then enjoy the rest.

What is your favourite film, podcast and/or book?

My favourite book is the Song of Achilles, my favourite podcast is Luanna and I can’t choose a favourite film.

What are three words you’d use to describe yourself?

Friendly, caring, positive.

Where would you like to be in five years?

I would love to still be at CIPA but with more responsibilities. I would also like to own a nice house with lots of dogs.

CIPA staff profile

Ria Lloyd, Office Administrator

Denzil Joseph Isaaks 1936-2023

This obituary is taken from the collected memories of family, friends, neighbours, and former work colleagues of Denzil Isaaks.

Denzil had an extraordinary life. He was born in Santa Cruz, a suburb of Bombay, India on the 17 August 1936. His father worked for the Indian Post and Telegraph Office and the family moved frequently. His mother died when Denzil was seven, and he and his younger brother stayed with grandparents in Bombay for their early schooling.

Aged 11, Denzil and his brother started boarding school at St Joseph’s College in Nainital in the Himalayas where Denzil excelled academically and enjoyed sports, captaining the hockey team before returning to Bombay, where he completed his O’ Levels.

When Denzil was 17½, he left India and took a ship to England on his own, to pursue his ambition to work in the aircraft construction industry - for which England was, at that time, the place to be.

He arrived in London in mid-March 1954 with a mere £25 (about four weeks’ average adult wage) in his pocket. Luckily, he was able to stay with an older half-brother and family in a little flat near where the Post Office Tower stands today.

Finding any work was essential, finding an apprenticeship in aircraft design was urgent, as apprenticeships were only available to under 18s. In 1954, usually, one had to pay to do an apprenticeship, but Denzil impressed enough to secure a paid position with Handley Page based in northwest London three months before his 18th birthday. He began a very happy traineeship whilst getting to grips with living and working in a different country. At Handley Page, he won the prize for best apprentice and was sent by the firm to what is now City University London.

The major project throughout his time at Handley Page was the Victor strategic bomber with Denzil working on stress calculations for the tail section: he was very proud of this.

In 1957, by chance, he met Pat and the two quickly became an item and married in April 1958.

In 1958, the firm sent Denzil to Cranfield College of Aeronautics (now Cranfield University).

By 1964 it had become clear to him that UK aeronautics companies were unlikely to be a long-term career. He

applied for and secured a post in the patents division with the Ministry of Aviation Supply for which his aeronautics engineering qualifications were ideal. Reorganisations of government departments eventually led to the patents function being absorbed into a newly unified Ministry of Defence in the early 1970s. Denzil rapidly qualified as a patent attorney. He rose to become Director of Intellectual Property Rights in 1992 running a department of just over 100 comprising professional staff with support and administrative staff, the work of the IPR department covering all government departments (the name change from patents to intellectual property rights reflecting the wide scope of IP issues dealt with). He is particularly remembered and much admired for the help he gave to new recruits in coming to grips with the work.

In the 1970s and early 1980s, his forte was to defend claims under the Crown Use provisions of the Patents Acts of 1949 and 1977. One example involved a patent for a stabiliser (the main claim was a method claim) which was allegedly being used on a Royal Navy survey vessel. Typically, Denzil thoroughly researched the subject and became an expert on ship stabilisers. From records held at what was then the Royal Naval College at Greenwich, it was found that stabilisers using the method claimed to have been invented by the patentee appeared to have been used in Victorian times. Despite his then manager’s objections, he commissioned the building of models and trials at the National Physical Laboratory in Teddington. The trials showed that the method of the Victorian stabilisers and that of the patentee were the same and the claim was withdrawn.

In later years he became very much engaged on intellectual property work associated with policy, commercial agreements, privatisations, and international arrangements.

Denzil was an alumni representative at Cranfield and played hockey for Teddington Hockey Club until he lost his

four front teeth in a fierce tackle. He loved to watch sport attending the 1966 Football World Cup final and queued every year to get into the Men’s Semi Finals at Wimbledon.

Denzil and his wife joined The Hampton Residents Association, he took up tennis and running in local clubs. Holidays, with Pat and their two children, were spent around the UK, especially walking in the Lake District and Scotland. He also travelled frequently both in the UK and overseas for his work.

Denzil retired from the MoD in January 1996, it was the start of a new era.

As a devoted grandfather, he often accepted exciting missions such as riding the roller coaster at Legoland, going down the big slide into the ball pool at the indoor play centre, and travelling extensively.

Sadly, it became clear that his wife Pat’s health was deteriorating limiting their travelling. Denzil and Pat had been married for just short of 50 years when she died in 2007.

Denzil subsequently threw himself into several organisations and local causes including the Probus Club of Teddington and Hampton where he was chairman and afterwards secretary and the Richmond Association for the National Trust, as well as giving evidence to the Heathrow Enquiry,

Announcements

The UK has a new Minister responsible for IP. Viscount Camrose takes on that responsibility, and with it responsibility for the IPO. He was appointed Parliamentary Under Secretary of State in the Department for Science, Innovation and Technology on 7 March 2023. See more at www.gov.uk/ government/people/viscount-camrose

Appleyard Lees announced that patent attorneys Chris Mason (Fellow) and Parminder Lally (Fellow) joined the partnership as of 1 April 2023. Appleyard Lees partner Bill Lister, a solicitor, Chartered Trade Mark Attorney and CMC Registered Mediator, retired from the partnership on 31 March 2023. Bill will continue to work as a consultant for the firm. See more at www.appleyardlees.com

On 1 February, Reddie & Grose appointed a new Munich-based partner Dr Simon Lud. On 1 April 2023, three CIPA Fellows – Ally Orrin, Joshua Parsi and Bruce Torrance – were promoted to Senior Associates at

helping to prevent the closure of Hampton Pool, putting together arrangements by which the Greenwood Centre was financed and built and becoming a volunteer driver there. For several years too he volunteered at the London Wetlands Centre in Barnes and sang in the Hampton-based Men’s Magna Carta Chorus.

He was a keen photographer and took some wonderful pictures of Bushy Park and Woodland Gardens. Gardening was an enormous part of his life, and he had one of the original Hampton Nurserylands greenhouses in his back garden.

One of Pat’s wishes was that Denzil should continue to travel after she was gone, which he certainly took to heart visiting all parts of Europe, North America, Vietnam, Singapore, Australia, making new friends and meeting distant family.

Denzil died on 4 January 2023, after being admitted to hospital following a fall whilst staying at a Christmas family gathering.

As someone who came to England with nothing, Denzil built a wonderful life centred around family, professional work, and community. He often called himself lucky, but it cannot be denied that grit, drive and determination played a huge part.

Robert Beckham CBE (CIPA Past President)

Reddie & Grose. For further information, please visit www.reddie.co.uk

HGF was pleased to announce its office relocation in Dublin and the opening of a new office in Belfast. Both offices opened their doors on Wednesday 1 February 2023 to accommodate new growth within the business. The offices will be led by Partner and Patent Attorney Craig Thomson (Fellow). In Dublin, Craig’s leadership of the team will be supported by Patent Director Marie Walsh (Fellow). To find out more, visit HGF’s website www.hgf.com.

Potter Clarkson has relocated its Nottingham office to new premises in the heart of the city. Located in Chapel Quarter, the firm’s 16,500 sq ft offices, provides “a modern, sustainable and technologically advanced environment to meet the requirements of evolving working practices”. See more at www.potterclarkson.com/ insights/potter-clarkson-announcesoffice-move-in-nottingham

The results of the elections to epi’s Council are now out. There are six UK members on the Council and so the UK has one of the largest delegations. The UK also has members on almost all of epi’s Committees (patentepi.org/en/epi-bodies/epicommittees) and UK members Chair many of these committees. Thus, the UK has a very influential position within epi and the UK’s Council members are active to promote the interests of the UK’s epi members.

Chemistry graduate (1st class) from the University of Sussex seeking to start a career in law as a trainee patent attorney. Interested in taking skills and expertise from a scientific background and applying it to the world of intellectual property.

Any opportunities would be greatly appreciated, mobile: 07596 380017 email: matthew141king@gmail.com

Please send any announcements, news and letters to the editor to editor@cipa.org.uk.

Online, but not forgotten

Inclusivity Unlocked! Report of a joint CIPA-IP Ability webinar, 9 March 2023. A recording of the webinar can be accessed  here , vimeo.com/806414031/6a6e27406d Chris Naylor’s slides  here, https://ipinclusive.org.uk/wp-content/uploads/2023/02/ 230309-online-but-not-forgotten-chris-naylor-slides.pdf.

The Web Content Accessibility Guidelines (‘WCAG’) are part of a series of accessibility guidelines which explain how to make web content more accessible to disabled people. There are four core principles:

1. Perceivable – information and user interface components must be presentable to users in ways they can perceive, e.g. colour contrast, font, sizes, spaces.

By Helen Smith Executive Support, IP Inclusive – https://ipinclusive.org.uk

O‘nline, but not forgotten’  was a joint initiative by IP Inclusive’s  IP Ability  community and  CIPA.  It looked at the challenges faced by disabled (including neurodivergent) people when interacting with online content such as websites, registration forms and event access, and how organisations can improve web content to make it accessible to more people.

The webinar was chaired by  Debra Smith ,  patent attorney and IP Ability committee member. She was joined by guest speaker  Chris Naylor  from  Bnode ,  an ethical environmental digital marketing agency that is championing good accessibility to be the norm for digital assets such as websites. Chris knows a great deal about accessible online content and has helped numerous organisations with accessibility audits to make their technology more inclusive. He shared his practical tips for making websites and digital systems more user-friendly for everyone, alongside Debra and with two other disabled IP professionals,  Abhishek Dhol  and Miriam (Mim) Wollacott, .

Does your company have strong ethical values towards your customers and internal team members? How accessible is your website?

Chris started by highlighting the numbers of disabled people in the UK – for example, 4.5% of the UK population are colour blind, >1% are on the autism spectrum, 10% are dyslexic – and their significant spending power. These people want to use online services but encounter difficulties every day.

2. Operable – user interface components and navigation must be operable, e.g. buttons, tab key control.

3. Understandable – information and the operation of the user interface must be understandable, e.g. ‘ARIA’ markup (this is a structure that tells people what the links are on a page and in an organised structure).

4. Robust – content must be robust enough that it can be interpreted by a wide variety of user agents, including assistive technologies.

Services can be rated as conforming to WCAG levels

A, AA or AAA, and typically websites aim for AA conformance. Whilst government websites are required to conform to the AA standard, this is not a legal requirement for websites generally, but Chris would like to see this in the future. He sees it as an important aspect for organisations to consider if promoting themselves as an ethical and inclusive brand.

Online accessibility for visually-impaired users

Abhishek is an undergraduate Bachelors of Law (LLB) student at Queen Mary University of London and Director of Diversity and Inclusion at the Queen Mary Commercial Awareness Society. He is completely sightless and has little to no light perception. He therefore uses non-visual techniques to carry out the everyday activities of his life: using a screen-reader to read his study materials and deal with online communications. He described some of the problems he faces:

• being unable to complete visual capture authentications;

• difficulties in dismissing pop-ups when the dismiss button is in an obscure place;

• being unable to access certain types of information online – specifically certain formats are not accessible to screen reader users, such as uploaded PDF files when the text has not been converted to optical character recognition (OCR), or posters on social media.

Chris provided a demonstration of a ‘screen reader’ in action, to illustrate some of the challenges it can bring. He also told us about the variety of voice options now available. He highlighted the following options for making online more accessible to visually-impaired and screen reader users:

• Alternative text (Alt-text) is descriptive text which conveys the meaning and context of an image. Including Alt-text with your images is extremely valuable for visually impaired people in that it allows them to ‘see’ the image.

• PDF files can be created using standard software but with the images labelled and ordered in a way that can be read by screen readers.

• ARIA markup makes websites more usable for disabled people by making parts of the website visible to assistive technologies such as screen readers.

Online accessibility for users with physical constraints

Webinar chair Debra Smith is a registered UK and European patent attorney and director and founder of Mayfin IP Limited. As a wheelchair user, she often needs to rely on online meeting platforms, but she encounters frequent hurdles due to her need to use voice recognition software rather than a keyboard. These platforms often require the user to type an email address and do not accept cut-and-paste text or allow the use of software, which means she is often forced to abandon trying to access a webinar, or request alternative access. She explained how her reduced manual dexterity also makes it extremely difficult for her to navigate websites, especially if they have distracting content such as swirling images or noises, as it is a big effort for her to move the page away from this content.

Chris responded by talking about website design for neurodivergent users. He suggested making use of user interface mechanisms which allow the user to pause, stop or hide any moving, blinking or scrolling information, and avoiding mechanisms that start automatically or last more than five seconds.

He talked about providing ways for a user to orient themselves within a website and making it easier to navigate using ‘breadcrumbs’ and by providing a sitemap. He also talked about the importance of making the user experience consistent throughout, e.g. by locating buttons in the same places. Another tip was to visually highlight focused elements using two or more methods, rather than just one, e.g. highlight, underline, colour, box outlines, larger font, etc.

He then showed us the Bnode website which contains many encoded accessibility features, such as:

• users can change the font size/colour and background colour throughout the website – to aid those with visual impairments or dyslexia;

• a user-selectable ‘dark mode’;

• a cross-hair function and ruler to helps people with dyslexia to follow the text on the page;

• image toggle on/off; and

• a text-to-speech function.

He explained that many of these features can be retrofitted to existing websites.

Online accessibility for users with hearing difficulties

Mim, who is a Senior Scientist in Pharmaceutical Development at Vectura Group Ltd, has profound-tosevere hearing loss. This affects her interactions with online platforms and tools. In particular, she talked about the issues she faces with sound on webpages, especially background noises, music, etc. She also mentioned the importance of clear and accurate captions.

Chris mentioned the use of audio description to enhance the user experience for those with hearing impairments. He also shared his experience of using the auto-generated captions during COP27, which were meaningless at times. This highlighted the value in checking and editing auto-generated captions on your digital videos.

Are there resources that can scan your website for accessibility, and how easy is it to retrofit accessibility features onto a website?

In response to these questions, Chris directed us to a Microsoft Edge extension which you can use to test your webpages for accessibility (see https://learn.microsoft. com/en-us/microsoft-edge/accessibility/test). He suggested that you can then pass this information to your web developer or to a company like Bnode to implement changes to improve the accessibility of your website. Web developers can do a lot of the basic markups, but some design aspects will require more substantial work.

The panellists also highlighted the importance of having disabled people test your website, there being no substitute for real experience and feedback.

Please get in touch

IP Inclusive and CIPA would love to hear your thoughts, comments or suggestions about this article or the webinar itself. Please do get in touch via email to contactipinclusive@gmail.com or or editor@cipa.org.uk

IP Inclusive update

By Andrea Brewster OBE

March events

As the days get longer, our volunteers are filled with fresh enthusiasm and our calendar gains a host of new events. In March we ran three webinars in our Inclusivity Unlocked! series:

• ‘Online, but not forgotten’ about online accessibility and assistive technology (a joint project between our IP Ability community and CIPA);

• ‘Menopause: what’s changing?’ about recent changes to perceptions of (peri) menopause and workplace support; and

• ‘Too busy to flourish?’, a joint event with LawCare about working cultures and mental health.

There’s a full list of Inclusivity Unlocked! events and resources at ipinclusive.org.uk/resources/inclusivity-unlocked/.

Later in the month we provided a two-day online mental health first aid course, delivered by our partners Illuminate VR with a discounted rate for IP Inclusive supporters. And our Women in IP community ran their first coffee

date of 2023, to discuss inclusive work cultures where women’s careers thrive and their achievements are celebrated. Following on from International Women’s Day on 8 March, they looked particularly at how the IWD theme of #EmbracingEquity plays into inclusive and supportive career development opportunities. Other Women in IP activities this year will explore more generally how to support women throughout their careers.

IP & ME ran their first coffee morning of the year on 5 April, for a general catch-up chat with their supporters, and will be organising more soon (see below for the May date). IP Ability have also been planning events and discussion forums on neurodiversity, disability confidence and the Access to Work scheme: you can read about those in their post to mark Neurodiversity Celebration Week at ipinclusive.org.uk/newsandfeatures/ ip-ability-plans-new-neurodiversity-initiatives.

Annual meeting

Our annual meeting was held on Tuesday 18 April. As usual it was open to all UK-based IP professionals, and it was a chance to hear updates on our recent work as well as to help shape our priorities for the next 12 months.

Mental health

We’ve been collaborating with Jonathan’s Voice on a number of projects for the coming months. They include a round-table on men’s mental wellbeing, to explore the types of support we can provide for men in IP; an Inclusivity Unlocked! event specifically for IP paralegals, looking at changing working arrangements post-Covid and their implications for mental wellbeing; an April webinar with mental health professionals Mark Fudge and Andrew Reeves to help us have better conversations on mental health; and a Mental Health Awareness Week webinar providing an introduction to mindfulness. See the events list below.

Senior leaders’ think tank

Our senior leaders’ think tank was established in 2020, with CIPA and CITMA support, by CIPA’s Honorary

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: vist the ‘Stay in touch’ page of the website.

Secretary Gwilym Roberts and me. It’s a forum specifically for senior members of private sector patent and trade mark practices, who meet roughly twice a year to hear about EDI-related issues and agree shared actions for improving EDI across our sector.

In February the think tank spoke with IP Federation representatives about what corporate clients are looking for, in EDI terms, from their outside counsel. This can be a tricky issue: virtually every client has its own set of requirements, many varying with location. Most, however, seem to require at least some form of EDI data. Our follow-up will therefore include working together on sector-wide data gathering standards and guidelines, ideally endorsed by the regulator and membership

Summer of IP

bodies, that provide a framework for firms to work to when sharing EDI data with clients. Watch this space! Meanwhile signatories to our Senior Leaders’ Pledge and their colleagues gathered in March for our fourth online ‘Pledge Prattle’ session. This time we discussed internal EDI forums: who’s involved in them, what they do and how they communicate with the rest of the firm. The Pledge was one of the early initiatives arising from the senior leaders’ think tank, with the Pledge Prattle forum established last year to support signatories and encourage the sharing of EDI ideas. The next session will look at parental leave provisions.

Andrea Brewster OBE, Lead Executive Officer at IP Inclusive

Don’t miss out on Summer of IP this year! We already have confirmed activities and events, from work experience weeks to taster days to panel discussions, offered by several IP sector employers including patent and trade mark attorneys, IP solicitors and in-house departments. Let us know what part you can play. We know many of you already have schemes in place to attract the next year’s recruits, and/or are working with outreach charities to widen access. But please consider adding something, however small, to the Summer of IP programme, to help you reach more would-be recruits via the Careers in Ideas charity contacts. Or set aside a few places on your existing schemes for Summer of IP students.

We’ll provide general introductory broadcasts from Careers in Ideas to give an overview of the IP sector and the careers available there. But your part is a golden opportunity to help more people access the IP professions, whatever their backgrounds; to grow and diversify your recruitment pipeline; and to demonstrate your commitment to EDI and social value. It’s a great project for trainees to get involved with as well.

Please visit the Summer of IP webpage at ipinclusive.org.uk/careers-in-ideas/summer-of-ip-2023 to find out more. Or contact me directly if you’re keen to get involved.

In the events calendar…

Here’s what else is in the IP Inclusive calendar for April and May. Keep an eye on our website events page for more details and for others as they’re added.

• Thursday 20 April, 12.30 – 1.30 pm – IP Inclusive and Jonathan’s Voice webinar

How to have conversations with ourselves and others... and what to do next Tuesday 25 April, 12.30 – 1.15 pm – our second

‘ Menopause matters ’ coffee date, this time focusing on symptoms, treatments and coping strategies. People of all genders and ages, and in all IP sector careers, are welcome

• Wednesday 3 May, 12 – 1.30 pm – online round-table on men’s mental wellbeing (initial discussions for IP professionals who identify as men)

• Friday 12 May, 9.30 – 10 am – IP & ME coffee morning

• Thursday 18 May, 12.30 – 1.30 pm – IP Inclusive and Jonathan’s Voice webinar An experiential introduction to mindfulness at work

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

IP Inclusive: everyone, everywhere, all at once

Raising awareness of IP Inclusive for non-attorneys.

The IP community is not predominately made up of qualified attorneys (often still called feeearners). It takes a complex network of people for any one person in this niche profession to be able to ‘do their job’. Not least those attorneys, like myself, who are completely dependent on working together with talented paralegals, IT experts, HR departments, marketing personnel, business development advisors… the list is long.

By Jodie Johnson and Caelia Bryn Jacobsen

IP Inclusive was set up as a network for everyone working in the IP profession. And yet, ‘non-fee earners’ are significantly underrepresented. A complex intersection of factors underpins the ‘why’. But there are two certainties: this was not the intention for IP Inclusive, and significant steps continue to be made to welcome as diverse a range of people as possible from throughout the IP community.

I was privileged last year to speak at CIPA’s Paralegal Congress with one of my fellow members from IP Inclusive’ s Advisory Board, Jodie Johnson. Our aim was to bring awareness of, and encourage involvement in, IP Inclusive. To drive engagement with one or more of its growing number of communities with their common drive for equity, diversity and inclusion.

For my own part, I wanted to emphasise that my involvement with IP Inclusive is independent of the role I have in the profession – it relates rather to the person I am. To how I have looked to support as someone with sole parental responsibility for my children, and someone part of a very non-traditional family. How I’ve wanted to hear more on how others navigate the world of IP and motherhood, flexible and part-time working, and being very much in the gender minority. And that I’ve wanted to give back from my own learning, on topics I’ve had personal experience with from my own family, including disabilities and neurodiversity. For me, it’s very much been a two-way interaction with IP Inclusive - an interaction not motivated or dictated by my specific role in the profession. IP Inclusive was, and is, as relevant to me, as it was to anyone in the room where we spoke.

Jodie’s IP Inclusive journey, as an IT trainer at Boult Wade Tennant since 2018, is an inspiration for us all to expand IP Inclusive’ s membership, and to encourage those who have heard of it to get involved:

‘During lockdown I was part of a call hosted by Boult’s for The Sutton Trust, a charity which champions social mobility. After the initial call, I joined Boult’s

internal D&I group as I felt a strong connection to The Sutton Trust cause. They help young adults from disadvantaged backgrounds get into education.

‘I grew up on a council estate with my Mum (who is only 17 years older than me) and my younger sister. I went to a state school, we got free school meals, got our Christmas presents from the Salvation Army and I personally felt I came from a disadvantaged background.

‘I have been very lucky through my working life with the job opportunities, especially given I am dyslexic and as an adult still struggle with my spelling and reading. If there is anything I could contribute to help minimise the struggles I had during education that would be amazing, and several of the IP Inclusive communities offer support and the opportunity to give back in these areas.

‘Once I was on the internal D&I group, an opportunity came up to join IP Inclusive’s Advisory Board. I was really nervous and thought I wouldn’t be able to join because I am classed as “support staff” and not a feeearner. But they were looking for anyone in IP. So I took the leap and joined! It has been an amazing journey and my voice and views are always listened to, I am never dismissed and my opinion is always valued.’

Jodie highlights some deep-rooted fears and biases which need dispelling to further address the attorney, non-attorney gap. How to reach out to a wider group, and let them and others who feel ‘this is for them’ realise they are so welcome in the IP Inclusive network?

IP Inclusive is working incredibly hard on exactly this through its many initiatives this year and going forward, not least, for example, through its IP Futures community, Inclusivity Unlocked series, and support for charities such as the Access Project, Generating Genius, and In2scienceUK. But I strongly feel one of the most powerful ways for us as individuals to effect change and compliment these initiatives will be to actively take responsibility ourselves. To make the time, and put in the effort, to speak to colleagues in the profession, whatever their job title. To be role models and champions for a wider reach, and a more diverse network. To be like Jodie, and not be afraid to have your voice heard. Everyone, everywhere is welcome at IP Inclusive. Let’s spread the word, (all) at once!

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.

Gwilym Roberts 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.

See the review on page 69

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

£25 (£20 CIPA members)

‘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.’

The Rt Hon Sir Colin Birss

Jodie Johnson is an IT trainer at Boult Wade Tennant and Caelia Bryn Jacobsen a partner at Kilburn & Strode LLP.

Secretarial Team Leader-18 month FTC

London

TJB140812

Exceptional opportunity within a leading IP practice. You will seamlessly manage a sizeable team of patent secretaries who support the friendly Chemistry practice group whilst managing your own varied caseload. It’s imperative that you possess strong management and excellent interpersonal skills. A diverse and inclusive workplace exits here, and a healthy work/life balance is promoted. A highly competitive remuneration and completion bonus awaits the successful candidate.

Senior In-house Patent Attorney

West Midlands

CEF139058

Exclusive and rare in-house instruction to join this pioneering automotive brand at the forefront of innovation and invention are keen to welcome a formidable dual qualified Patent Attorney with upwards of 2 years PQE. Manage your own largely contentious workload, you must have leadership experience and be an all-round team player. A background in mechanical, electrical or automotive engineering is preferable. You’ll be joining a progressive culture with hybrid working and an impressive remuneration and benefits package.

Senior In-house Patent Attorney : London

CEF139254

Long established and globally recognised brand with expansion plans in motion seeks those circa 5 years PQE from a mechanical/electronics background. This opportunity is rare from both an in-house perspective and because of the scope and variety of work on o er. This is a FMCG international business where you will play a leading and integral part, with duties such as invention mining/harvesting, drafting and counsel on potential risks posed by third party patents in relation to pipeline products.

Biotech Attorney : London

CEF132169

Internationally renowned IP practice is currently seeking a finalist or recently qualified Biotech Attorney to work alongside two dedicated partners. You will be nurtured and supported in all respects within a firm that o ers genuine transparent career progression whist enjoying daily client contact, allowing you real insight into both the strategy and the science behind the businesses you’re advising. Progress your career in a way that is bespoke to you!

For further information about this selection of opportunities or to discuss any other aspect of IP recruitment, please contact: Tel: +44(0)113 245 3338 or email: lisa.kelly@saccomann.com catherine.french@saccomann.com • tim.brown@saccomann.com or clare.humphris@saccomann.com

Part or Newly Qualified In-house Patent Attorney

South Coast

CEF139020

Global organisation are keen to hear from those from any technical background to complement their impressive close-knit patents team as they expand and develop their existing technologies, and venture into exciting new areas. Play a pivotal role in the direction this formidable business takes. Undertake core patent work, develop your broader skillset in transactional IP (legal agreements, due diligence in M&A, venture capital) and engage directly with inventors and other commercial stakeholders.

In-house Chemistry Patent Attorney

Remote Working

LKA140092

Make this role your own! Join this global organisation at an exciting time of its development. Working with a range of new technology, you will hold a fully rounded Attorney position with scope for you to be involved in every aspect of the patent life cycle. You will enjoy utilizing your core Attorney skills including drafting, prosecution, filing and attending oral proceedings, allowing you to develop your skills at the coalface. You will be encouraged to spend some time on-site with the R&D teams, including some short overseas trips, to help support and grow your network within the wider business.

Hi-Tech Attorney : Flex Location CEH136486

Trailblazing global firm seeks those with strong academics in Physics, Computer Science or Electrical Engineering. With capacity in either their London, Manchester or She eld or Scottish o ces. Manage the portfolios of prominent international companies at the cutting edge of invention. Your day to day will involve drafting and filing patent applications, patent prosecution at the EPO and UKIPO, a high level or oral proceedings work and IP due diligence support for corporate transactions. This forward-thinking practice has an inclusive and welcoming culture.

Biotech Attorney - Maternity Cover : Flex Location

CEH140859

International law firm are keen to welcome a steadfast Biotech Patent Attorney for a 12 month maternity cover contract. The IP team predominantly sit across: London, Manchester or She eld. You will be dual qualified with experience across some/all of these areas; biochemistry, cell biology, cell and gene therapy, antibodies, diagnostics, nucleic acid and peptide inventions. There’s a superb array of challenging work on o er on behalf of global, SME and start-up clients. Those who are available with short notice are strongly encouraged to apply today!

Here’s a selection of our current instructions, but if you’d like to hear more about how we can help you create previously unthinkable opportunities for either your career or your business, please contact one of our consultants.

REVISION COURSES FOR THE PEB 2023 EXAMS

15 MAY TO 11 SEPTEMBER 2023

We are holding revision courses in May, June, July, August and September 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 do have some Zoom-based courses. The in-person courses are in Milton Keynes/Cranfield and dates are set out on our website. 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

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

Are you seeking a fresh start?

IN-HOUSE PATENT ATTORNEY STAFFORDSHIRE • UP TO £95,000

The company promises a range of rewarding benefits with an appealing salary. This role would suit an attorney with in-house experience or an attorney working within private practice who is keen to make the move to an in-house setting. Don’t hesistate to get in contact to find out more!

PQ OR FQ PATENT ATTORNEY ELECTRONICS / PHYSICS • BIRMINGHAM

Our client requires an excellent academic record, confidence in building relationships and having a passion for what you do. Exceptional communication skills and a high attention to detail is a must. Candidates should have a computer science/ physics / electronics related background.

PATENT ATTORNEY • CAMBRIDGE BIOTECHNOLOGY

You can expect exposure to work across a broad spectrum of biotechnology and life sciences related subjects, including immunology, diagnostics and therapeutics, genetics, plant biology and biofuels. Please get in touch with us to find out more about this fantastic opportunity.

PATENT ATTORNEY • OXFORD SOFTWARE, AI, ELECTRONICS

We are working on an exceptional opportunity for a PQ / FQ Patent Attorney to work within a reputable team. You can expect to be rewarded with an appealing salary and benefits package with the option of remote working and opportunities to advance your career!

@ 020 7405 5039

ip@dawnellmore.co.uk

www.dawnellmore.co.uk

SENIOR PATENT RECORDS ADMINISTRATOR • £45 -

47,000+

This fantastic role based in London requires around 5-7+ years of previous IP records experience and sound knowledge of all patent filing procedures. An excellent salary is on offer as well as the added benefits package and a hybrid working arrangement!

PATENT RECORDS AND RENEWALS ADMINISTRATOR (100% REMOTE)

Our client is seeking candidates with at least 3+ years’ experience within patent records and renewals - if you have Inprotech skills this will be looked upon favourably, but not essential. On top of that, a salary up to £40,000 is on offer here and the chance to work 100% remotely.

INPROTECH SPECIALIST - REMOTE / HYBRID • LONDON OR MIDLANDS

This unique opportunity will involve maintaining, updating and developing the firms Inprotech system. Due to the nature of the role, our client is happy to consider candidates to work remote or hybrid from their London or Midlands base. Please apply today to find out more.

PATENT SECRETARY (MID-LEVEL) c£42,000 • LONDON

A fantastic role has arisen within an IP firm for a patent secretary with at least 2-3+ years’ experience. This client doesn’t often have vacancies of this nature so don’t miss out on this opening in a hugely successful company. An interesting and mixed caseload awaits you.

Patent Attorney – Sony Intellectual Property Europe

Paddington/Basingstoke/Stuttgart

Are you an experienced Patent Attorney seeking to join a leading organisation with a highly collaborative environment, where you will be empowered and supported to build strong internal client relationships. You will be a hybrid worker and we can base the position out of either Paddington (London) or Basingstoke in the UK or Stuttgart in Germany.

Working within a highly experienced team with supportive leadership, you will set about building and managing your own patent portfolio relating to Sony’s 3GPP/Telecoms and AI business areas. You should be someone who thrives working autonomously, where you have the freedom to operate as a trusted partner to your stakeholder groups, utilising your subject matter expertise to create a strong patent portfolio, while also managing relationships and outputs from external patent attorney firms. It is important that you be commercially minded – with the ability to translate your performance into tangible and demonstrable outcomes.

With team members and stakeholder groups located in London, Basingstoke, Stuttgart, Sweden and Switzerland, you should be someone who can be flexible with travel for business and team meetings when required, and with good notice.

You will:

• Manage patent portfolios: Be the point of contact for patent matters across your assigned areas of Sony AI and Sony 3GPP/ Telecoms, including patent filing and 3rd party advice. With strong support from the business, for the 3GPP/Telecom area you will actively track the development of industry standards

and direct the patent prosecution process to generate value from Sony’s standards contributions and associated patent assets.

• Patent Prosecution and Life Cycle: Direct and control the filing and drafting of patent applications for European R&D related to AI and 3GPP/Telecoms. Determine the scope of protection and authorize the filing, grant and abandonment of patent applications, working closely with external drafting attorneys. The role is not expected to involve new drafting work, but may involve recrafting claims and developing new claims as part of a divisional and continuation strategy. Manage and coordinate the respective patent prosecution work of external patent attorneys on a global basis, including Europe, US and China.

• Patent Enforcement and Licensing Out: Identify competitor products relevant to Sony’s granted patents. Defensive 3rd Party Matters: Assist the business to understand scope of 3rd party patents and relevance to the business’s products or intended products.

You will bring:

Degree qualification or equivalent, ideally in an Engineering subject or similar

• Patent Attorney qualification – either fully or partially completed Knowledge of patent law and patent prosecution across EP, GB, DE, US, and preferably others

• Experience in an in-house industry patent department or in private practice, ideally in the field of telecommunications.

Patent Attorney – UK – IBM Intellectual Property Law Department Hursley, Winchester, Hampshire

IBM is a world leader in providing innovative products and solutions to solve its customer’s most pressing problems across all industries and all technologies. With operations around the world, IBM has a truly global and diverse workforce.

The IP team is a global team based around the world – with the UK team being based in Hursley, Winchester, Hampshire. We are looking to recruit a dual qualified EP and UK patent attorney into the UK team.

You will provide IP and commercial advice and counsel on a broad range of IP related topics to your clients and other internal stakeholders, you will work with inventors to identify inventions, manage the drafting and prosecution of patent applications, provide freedom to operate opinions, participate in patent enforcement and licensing activities, draft and negotiate IP terms in commercial contracts and have opportunities to get involved in IP policy matters were you can influence laws and regulations. You will work closely with your clients in an open and collaborative manner, and you will need to be commercially focussed, comfortable understanding and articulating risk in a challenging but rewarding business environment.

The IP team are a diverse and inclusive group of people and it’s important to us that you feel that you fit in, and you can be “you” at work. Diversity and inclusion are at the heart of what

we stand for. At the centre of everything we do is our people, and your growth is important to us – you are the captain of your own career and the possibilities at IBM are endless. We offer a flexible working arrangement with a mixture of working in the office and from home. You will be offered a competitive salary, benefits package, and the opportunity to work at the beautiful Hursley campus in a stimulating and exciting environment.

This is a rare and exciting opportunity to work for a company that constantly re-invents and transforms itself and where we guarantee that no two days are the same. So why don’t you come and see for yourself and see where IBM can take your career.

You will need:

• Degree qualification or equivalent, ideally in Physics, Electronics or Computer Science etc.

• EP and/ or UK qualified Patent Attorney. Nearly qualified can also apply.

• Experience in an in-house industry patent department or in private practice.

See details on how to apply at https://www.cipa.org.uk/jobs/?employer=ibm

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.fellowsandassociates.com @fellowsandassoc youtube.com/fellowstv

www.linkedinfellows.com

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