CIPA Journal, 1 November 2016 by CIPA Journal

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

November 2016 / Volume 45 / Number 11

IP Futures Sweeping the way forward

Singapore: postgrant amendments Warner-Lambert v Novartis

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Unjustified Threats Bill Litigation Committee

China update: Abuse of IPR Guidelines Toby Mak

Specialist IP tribunals in Pakistan Naeema Sadaf

Six things we love about working in Australia Serena White

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CIPA JOURNAL

CIPA CONTACTS

Editor Editorial Panel

Alasdair Poore David Barron, Paul Cole, Kristina Cornish, Tibor Gold, Alan White Publications Committee William Jones (Chairman) Production Iain Ross, 020 3289 6445 and advertising (iain@ross-limbe.co.uk) Design Neil Lampert Cover design Jonathan Briggs Contact editor@cipa.org.uk Published on behalf of CIPA by Ross-Limbe Communications. The Institute as a body is not responsible either for the statements made, or for the opinions expressed in this Journal. No papers read before the Institute or extracts from its Proceedings may be published without the express permission of the Council and without the simultaneous acknowledgement of their source. CIPA Journal is sent to all members of the Institute as part of the benefits of membership. It is also available on subscription at £130 per annum (plus postage for overseas addresses: Europe £35, Other £70). Individual copies may be purchased at £14 (plus postage for overseas addresses: Europe £4, Other £6). The Editor welcomes the submission of articles, news and correspondence for possible publications including photographs, tables, charts, etc, when appropriate, and any contributions should be sent by email to editor@cipa.org.uk. Iain Ross (iain@ross-limbe.co.uk) will be pleased to discuss any queries regarding submissions and advertising. Copyright in material submitted for publication Material submitted to the CIPA Journal will be accepted for publication on condition that the author, or each of them, grants the Chartered Institute a non-exclusive licence to publish the material: i. in paper form first; and ii. after paper publication, also on its website www.cipa.org.uk, in the members’ area with the ability for members to download them. When sending material, the author(s) should confirm acceptance of this condition and also that the submission is free of any third party rights or other encumbrances. Past contributors The Institute is in the process of putting on its website past articles not covered by an express agreement as set out above. Any contributor wishing to object to their work being treated in this way should write to the editor at editor@cipa.org.uk. Editorial deadline dates for receiving submissions are on the 10th of the preceding month. Please contact editor@cipa.org.uk to discuss any ideas for articles or submissions.

Tony Rollins President

Stephen Jones Vice-President

Andrea Brewster Immediate Past-President

Chris Mercer Honorary Secretary

Committee Chairs Administrators Vicky Maynard; Business Practice (joint with ITMA) Matt Dixon; Computer Technology Simon Davies; Congress Steering John Brown; Constitutional Alasdair Poore; Designs and Copyright David Musker; Education and Professional Standards Simone Ferrara; Exploitation Catriona Hammer; Informals Ben Charig; Internal Governance Bobby Mukherjee; International Liaison Richard Mair; Life Sciences Simon Wright; Litigation Vicki Salmon; PEB Rob Taylor; Patents Tim Jackson; Protected Titles Lee Davies; Media and Public Relations Jerry Bridge-Butler; Regulatory Affairs Chris Mercer; Textbooks & publications Bill Jones; Trade Marks Keith Howick. Membership Team Leader: Dwaine Hamilton Events Coordinators: Kirsty Burls; Johanna Lynch Membership and Events Coordinator: Charlotte Russell Membership Finance Coordinator: Frances Bleach Chief Executive Lee Davies Executive Assistant Gary McFly Head of Media and Public Affairs Neil Lampert Communications Officer Isabelle Wilton Policy Officer Rebecca Gulbul Head of Education Georgina Sear Education Projects Co-ordinator: Angelina Smith Finance Manager Spurgeon Manuel Finance Administrator Andrew Hewitt General enquiries: 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

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Contents 74 43 UP FRONT 2

Council Minutes

Re-examination of patent applications

Lee Davies

Intellectual Property Office FD4 pass rate

ARTICLES

David Musker 10

Unjustified Threats

Litigation Committee 14

EPO – fee payments Plant breeding Nagoya – EU Guidance Overseas report

Gladys Mirandah and Tai Yoke Yee 19

69 72

The not-so-secret diary

Andrea Brewster

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EPO decisions

Bristows 57

Trade marks and other IP

Bird & Bird

EDUCATION 78 80

Institute events East of England

Mathew Leese

PERSONAL 74

Working in Australia

Going Remote

Serena White Heather Lane

THE PINKS

Straight allies

Darren Smyth

IP Pro Bono scheme

CIPA press release

Singapore: Warner-Lambert v Novartis

Uma Baskaran, Chow Jian Hong

Cambodia update

IPO decisions

Barker Brettell

The Good Attorney

Jonathan Stafford

Amanda R. Gladwin 18

IP tribunals in Pakistan

Naeema Sadaf and H. Zafar Iqbal 43

Life Sciences Committee 17

China update

Toby Mak 38

Life Sciences Committee 16

Clearing the way

Patent decisions

Beck Greener

Liz Cohen and Adrian Chew 32

Patents Committee 15

IPReg

NEWS Community Designs

DECISIONS

Manual of Patent Practice

Intellectual Property Office 27

Online Services and Developments

Intellectual Property Office 26

Chief Executive Report

Lee Davies 5

IP Futures

Alasdair Poore 3

81 83 84 94

Courses and events Recruitment International Services

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IP Futures

nnovation is at the heart of intellectual property. That applies whether it is in relation to pills, which justify both patent protection and the investment by businesses in patent disputes, and which feature yet again on the front cover of this issue. It applies at the other end of the creative spectrum: to copyright and the creativity which lies behind golden disks and the music business, to best selling novels and publishers and e-publishers. At the last “Question the Trade Mark Judges” forum, chaired by Professor Sir Robin Jacob, run by

is a timely reminder of the importance of the market, not just for those practising in the pharma field, but across the whole spectrum of technologies and IP rights (see page 28). “Clearing the way” is well known to IP practitioners in the pharmaceutical field in the UK. It is an “innovation” created by the UK courts which expect intending new entrants to the pharmaceutical market to take steps to remove patent obstacles before launching their generic or competing product. One aspect of real interest, brought out by Bristow’s article, is how the market has

The courts and to some extent legislators are having to become more innovative about the way that they address infringement issues. the Institute of Brand and Innovation Law and Marques, one of the judges questioned whether copyright was not the most valuable intellectual property right. And it applies to the subject of that forum, trade marks, and designs – not forgetting that much of the value of a London Cab or the “cool” Apple iPad is in its three dimensional shape. It is easy to be distracted by the attraction of creativity in its own right – the good invention, the great literary work, or excellence in design, and by the skills of those involved in its protection – and to forget that it is the market place which is king. So Bristow’s article on what has become known as “Clearing the way” 2

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driven the practice in this IP field – from the way in which drugs are regulated and how different players, down to the pharmacists at the end of the distribution chain, are paid for drugs. CIPA Congress, at the end of September, drew out the importance of understanding the supply chain in designing patent protection. The development of “Clearing the way” – and its possible obsolescence – is a good reminder of how important that market is. Keeping for a moment to the pharmaceutical scene, the dominant piece of litigation in the English patent courts features again, not just in the UK, but in Singapore as well (see page 46). This is of course the litigation about marketing

Alasdair Poore

pregabalin, a potent pain remedy which has itself caused pain in more than a few quarters. It provides an excellent analysis both at first instance, and in the review of that decision by Christopher Floyd LJ, of the importance of insufficiency in moderating the scope of claims to the contribution made by the invention. It also provides a salutary reminder, echoed in the Singapore decision, that a late application to amend a patent can definitely still be refused as an abuse of process. Again the pregabalin litigation has much wider relevance – in showing the importance of a market, how the distribution channels for IP protected products are fundamental to their protection. In this case (of second medical use patents and Swiss-form claims), while the manufacturer is the prime mover in determining infringement, it is the people at the end of the distribution chain, the doctor and the pharmacist, who influence whether the invention is really put into effect. And again the courts have had to innovate, as illustrated in the UK’s Court of Appeal’s very recent decision (Warner-Lambert v Actavis1) to address the market place for pregabalin. And in so doing to stretch the principles of construction of claims (by endorsing the idea that “preparation of a composition for use [for a particular purpose]” could go further than as the mixing the component elements and include applying a label to the bottle); and potentially to place the pharmacist as the primary infringer in an infringement claim. Interestingly, this is not a point picked up on in the recent discussions on the Threats Bill in the House of Lords (see page 10) – more on which in a later issue. Floyd LJ also revisited, potentially in a wider context, the law on secondary www.cipa.org.uk

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EDITORIAL

infringement and whether the required mental element for a secondary infringer is less than that required for the primary infringer2. Keep a close eye on further future approaches to construction of claims as well as secondary infringement. These cases are, however, illustrative of a wider theme. That is of the importance, probably growing importance in a globalising economy, of distribution channels in preventing infringement, whether in the drugs field, the marketing of counterfeit branded products, or in infringement of copyright. Globalisation is something illustrated well by other articles, including Toby Mak’s report on China’s Competition Law Guidelines, drawing heavily on EU competition law guidelines (see page 32). The courts and to some extent legislators are having to become more innovative about the way that they address infringement issues. An example is the increased emphasis on availability of sanctions against Internet distributors. Intellectual property attorneys must become adept at understanding not just the current trends on the market place in which their client operate, but increasingly where those trends are going in the future.

IP FUTURES

That brings me back to two other repeating themes in relation to IP Futures: Brexit, and the developing market place much closer to home, the market for IP services. Brexit has been seen by most IP practitioners as a serious unwelcome distraction in a globalising IP market, changing not just the ground rules for their clients but also for IP practice and practitioners in the future. In the process of course it has disrupted the culmination of 50 years work to get to a unified patent system in Europe, which itself illustrates the difficulty of innovation in the international IP system. However, Brexit should be seen as an opportunity, and now the focus must shift to identifying innovations in the IP system which Brexit frees the UK to implement and potentially to influence IP systems much more widely. The second theme in IP Futures is that the market place in IP services is changing rapidly – IP services are being commoditised; IP services are already becoming more vertically integrated, and the potential review of the regulatory system for legal services, announced by the Legal Services Board, is likely to

fuel more restructuring of the provision of IP services. Artificial intelligence, which catches the public eye in the form of driverless vehicles and autonomous drones, is advancing on professional services in a way which is likely to disrupt the provision of such services more than has been seen before at all. And at the same time, other forms of intellectual property, most notably the importance of big data – in the pharma field in relation to data exclusivity, and in marketing, engineering, medical diagnostics and innovation, are becoming more important, and perhaps dominant. I hope that there will be more debate in these pages on IP Futures in coming issues. Please send in your contributions – editor@cipa.org.uk.

Notes and references 1. [2015] EWCA Civ 556. There will be a report on this in next month’s issue. 2. Drawing on and again reinforcing Grimme Maschinenfabrik GmbH & Co KG v Scott ([2010] EWCA Civ 1110)

Chief Executive’s report European Patent Office In recent years we have established an annual meeting between the Presidents of CIPA and the EPO, accompanied by key people from the respective organisations. On 19 October, a CIPA delegation of CIPA President Tony Rollins, Chris Mercer (Honorary Secretary and Chair of the Regulatory Affairs Committee), Tim Jackson (Chair of the Patents Committee), Vicki Salmon (Chair of the Litigation Committee) and I met with EPO President Benoît Battistelli and his team. We spent the morning exploring the work of the European Patent Academy and discussing some exciting Volume 45, number 11

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ways we can share an educational programme. We touched on the EPO’s work on academic research and the ways in which CIPA can support the EPO’s desire to improve IP awareness in higher education institutions. President Battistelli spoke about the EPO’s accomplishments, in particular how the Early Certainty from Search (ECfS) initiative, and its extension into examination and opposition, has driven down the backlog in grants and increased the annual rate of grants. This has been achieved, in part, through refocusing the EPO on its core business of examination, with an additional 500 examiners working for

the EPO whilst maintaining the overall number of staff. Tony Rollins welcomed the improvements introduced at the EPO and the targets to further reduce backlogs. The point was made, however, that the quality of the end product – the granted patent – was of equal importance and that CIPA would be watching with interest to ensure that quality was maintained. On the Boards of Appeal, Tony Rollins made it clear that CIPA had decided not to take a position on employment practices at the EPO, viewing these as internal matters to be dealt with by President Battistelli and his senior staff. Tony stressed NOVEMBER 2016

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NEWS

the effective operation and efficiency of the Boards of Appeal was CIPA’s principal concern and that any support for the proposal to move the Boards of Appeal out of the centre of Munich to Haar would be conditional on there being no adverse impact on the ability of UK attorneys to represent their clients and that the resources available in the new facility would enable the Boards of Appeal to operate at maximum efficiency. We understand that a paper has been prepared for the Budget and Finance Committee of the Administrative Council and CIPA will study it in detail. The meeting concluded with a working lunch, where the focus of attention turned to Brexit. It is clear that President Battistelli would like the UK to ratify the UPC Agreement and then use the Brexit negotiations to conclude a deal which would allow the UK’s continued participation in the new system. Tony Rollins set out CIPA’s preferred position, which was to see the Unitary Patent and UPC come into effect with the UK’s future participation assured. Tony said that the opinion of Counsel obtained jointly by CIPA, the IP Federation and the Intellectual Property Lawyers Association (IPLA) had brought legal certainty closer but that CIPA would not take a line on ratification until the political position in the UK and in Europe was clearer.

CNIPA Following on from the visit to Munich, Chris Mercer, Vicki Salmon and I met with Council member Alicia Instone in Barcelona to attend the biannual meeting of CNIPA, the Committee of National Institutes of Intellectual Property Attorneys. The meeting was dominated with talk of Brexit and its impact on the UPC and European trade mark and design rights. On the UPC there is full support for CIPA’s position and for the UK’s participation in a Europe-wide patent system post-Brexit, but also a clear sense of frustration that the result of the referendum has stalled 4

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the implementation of the Unitary Patent and the Court. Plan B, which may require renegotiation of the UPC Agreement to allow progress of the UPC without ratification from the UK, is clearly in development and Italy and the Netherlands are starting to make overtures on hosting the Central Division of the UPC currently located in London.

EQEs One of the benefits of working for CIPA is the places I get to visit on behalf of the Institute. Not always to exotic places, however, as my visit to the hallowed turf of Walsall Football Club testifies. On this occasion it was to inspect the conference facilities there as a potential venue for the 2017 European qualifying examinations (EQEs). As all seemed to be in order, we have confirmed the stadium as the location for the examinations next year. There is a hotel on site and the stadium is well-served by road and railway links. Having described in detail the problems encountered at Sport Bristol, the conference organiser at the stadium is confident that there will be no repeat of the extreme cold that candidates suffered this year. I was asked recently why it was that sports stadia are used to provide a UK venue for the EQEs. The answer is one of economics. When CIPA took on the responsibility of hosting the EQEs in the UK, the challenge came without financial or other resources. Your Institute carries the full cost of hiring the venue, equipping it with appropriate examination furniture and employing the examination staff. This is funded out of CIPA’s core income. We make no charge to candidates or their employers for sitting the examinations in the UK. We work to a budget of approximately £20,000 and, much though we would like to, we cannot afford to locate the examinations in a conference centre or purpose built examination centre, where the starting cost would be at least two-and-a-half times the available budget.

We try to find the right mix of affordability and quality and, invariably, this means venues such as sports stadia and budget conference centres. Add to the equation the need for the venue to be easily accessible by car or train and to be close enough to the UK IPO in Newport to facilitate the daily transportation of examination papers and the choice is further limited. I do not expect to see a repeat of the failure of heating and electricity that was experienced in Bristol, due to circumstances outside of CIPA’s immediate control. If, however, we find that it becomes increasingly difficult to provide the right conditions for the EQEs within the resources available to CIPA, we may have to look again at how we fund a UK venue.

IP Pro Bono Breaking News: IP Pro Bono is live! The launch of IP Pro Bono, a cross-sector initiative to provide legal support in intellectual property cases for those who cannot otherwise afford to pay for advice and representation, took place on 14 October 2016 in Gray’s Inn. CIPA’s Vice President Stephen Jones, His Honour Judge Hacon, the Acting Chief Executive of the IPO Sean Dennehey and entrepreneur Mandy Haberman provided different perspectives on why access to justice, particularly for individual innovators and small companies, is so important and how IP Pro Bono will fill a void in the services currently available. [See page 19.] More information on the IP Pro Bono initiative can be found at www. ipprobono.org.uk. We are still in need of more case officers to support the process of vetting applications to ensure that the most deserving cases are able to get the advice and representation they need. Of equal, if not greater, importance is firms signing up to the scheme to create the widest possible bank of IP experts providing pro bono assistance to potential litigants. Lee Davies, Chief Executive www.cipa.org.uk

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COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 3 August 2016 at 14:30 Item 1: Welcome and apologies Present: A.J. Rollins (President, in the Chair), C.P. Mercer (Honorary Secretary), R. Ackroyd, J.D. Brown, R.J. Burt, M.P. Dixon, S. Ferrara, J.A. Florence, C.M. Hammer, G.J. Iceton, J.T. Jackson, R.P. Jackson, R.D. Mair, A. Mukherjee, B.N.C. Ouzman (by phone), A.D. Poore, T.W. Roberts and V.B. Salmon. Lee Davies (Chief Executive) and Neil Lampert (Head of Media and PR) were in attendance. Apologies: S.F. Jones (Vice-President), A.R. Brewster (Immediate Past President), J.P. Asquith, P.G. Cole, S. Harte, A.C. Instone, G.V. Roberts and S.M. Wright.

Item 2: Minutes 204/16: The Minutes of the meeting held on Wednesday 6 July 2016 were approved following amendment of minute 181/16, with ‘agreed by Council’ being changed to ‘agreed by Officers’.

Item 3: Conflicts of interest 205/16: There were no reported conflicts of interest.

Item 4: EU Referendum 206/16: Council approved a proposal from Tony Rollins that CIPA contribute towards the funding of an opinion from Counsel on the constitutional issues pertaining to the UK’s continued participation in the Unitary Patent and UPC post-Brexit. The IP Federation and leading law firms are also contributing towards Counsel’s opinion. Action: Vicki Salmon to collate CIPA’s comments and submit to Counsel. [See October [2016] CIPA 14.] Council noted that the IP Federation was taking a slightly more cautious line, due largely to concerns from the pharmaceutical sector and others that the UPC would come in to being Volume 45, number 11

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and then the UK would be unable to participate following Brexit. The IP Federation took the view that ratification should not happen without legal certainty. Council agreed that legal certainty was the primary concern, alongside the future economic picture of the Unitary Patent and the UPC without the UK. Council supported a proposal from Catriona Hammer and Neil Lampert that CIPA commission research into the economic issues related to the UK being outside of the Unitary Patent and the UPC. Action: Catriona Hammer and Neil Lampert to act on behalf of Council and commission research into the economic consequences of Brexit on the Unitary Patent and the UPC. [See October [2016] CIPA 9.] Council discussed other potential courses of action and agreed with a proposal from Matt Dixon that it would be beneficial to promote the uniqueness and influence of the Intellectual Property Enterprise Court (IPEC). Council supported the suggestion that members should be surveyed on the amount of IPEC work they do, including actions settled outside of court. Action: Vicki Salmon to liaise with Judge Hacon on setting up a survey of the amount of patent litigation work carried out through the IPEC. Council noted that, in terms of the impact on trade marks and designs, CIPA and ITMA took slightly different positions. Council supported a proposal from Tony Rollins that he meet with the President of ITMA to talk through the positions taken by both Institutes, in particular in terms of the mechanism for EU trade marks becoming UK trade marks post-Brexit, and to set out CIPA’s preference that all UK-based EU trade marks convert to UK national trade marks without re-examination and that

the renewal process be used as a thinningout exercise. Action: Tony Rollins to meet with Kate O’Rourke to discuss the positions taken by CIPA and ITMA on trade marks and designs. Council was advised that, following a meeting between CIPA, ITMA, the IP Federation and law firms who are members of the IPLA, a number of sub-groups were being set up to look at specific areas such as SPCs, designs, trade marks, etc. Council agreed with a proposal from Tony Rollins that he write to Rowan Freeland, convenor of the sub-groups, and suggest that representation be limited to no more than two representatives per organisation and that each organisation circulates a draft paper on its position to the other organisations before each sub-group meeting. Action: Tony Rollins to write to Rowan Freeland proposing that there be no more than two representatives per organisation and that each organisation circulates a draft paper on its position to the other organisations before sub-group meetings. Council noted the update from Neil Lampert on the communications and PR activity since the result of the referendum. Action: Neil Lampert to liaise with Lord Justice Kitchin’s office to see if it would be possible to publish a version of the speech given at the Gala Dinner in the Journal. [See October [2016] CIPA 4.]

Item 5: Promoting the professions abroad 207/16: Council noted that progress was being made by the Promoting the Professions Abroad group on a brochure and other marketing collateral and that it was hoped that this would be ready in time for the IP Minister’s trade delegation to China towards the end of August. NOVEMBER 2016

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Item 6: Regulatory issues 208/16: Council noted that Chris Mercer and Lee Davies had met with Caroline Corby and Ann Wright, the Chair and Chief Executive of IPReg, and discussed the work of CIPA’s Regulatory Affairs Committee. 209/16: Council noted the report from Tony Rollins and Lee Davies on their meeting with Sir Mike Pitt and Neil Buckley, the Chair and Chief Executive of the LSB. Council asked the Regulatory Affairs Committee to examine the issue of IPReg’s jurisdiction in Scotland and to consider the LSB’s response to the request that it make a determination on the vires dispute. Action: The Regulatory Affairs Committee to examine the issue of IPReg’s jurisdiction in Scotland and to consider the LSB’s response in relation to the vires dispute with IPReg.

Item 7: Unitary Patent and UPC

COUNCIL

213/16: Internal Governance Committee Council noted the report from the Internal Governance Committee and agreed with its proposal to create a ring-fenced reserve, initially set at £35,000 and funded from central reserves, to fund communications and PR work in relation to Brexit. 214/16: Trade Marks Committee Council noted the report from the Trade Marks Committee and agreed with its proposal to create a working group on the parallel importation implications of Brexit.

216/16: Media and PR Committee Council noted the report from the Media and PR Committee.

Item 13: Resignations, etc

Item 8: IPO and EPO matters

Item 10: Officers’ Reports

211/16: Council noted that John Alty was moving temporarily from the UK IPO to help set up the new Department for Business, Energy and Industrial Strategy and that Sean Dennehey would become Acting Chief Executive of the IPO. Council agreed with a proposal from Tony Rollins that he write to John and Sean to wish them well in their future work and to offer them CIPA’s full support. Council supported a proposal from Tony Rollins that he write to Rosa Wilkinson thanking her for her work as she moves on from the IPO.

218/16: Council noted the Officers’ reports.

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223/16: Council approved the reinstatement of John Ogier as an Associate member. 224/16: Council did not support a proposal to suspend applications for Associate, Overseas and Foreign members until the new Bye-laws are adopted.

217/16: Administrators Committee Council noted the report from the Administrators Committee.

212/16: Congress Steering Committee Council noted the report from the Congress Steering Committee and was pleased to hear that delegate numbers were significantly up on the same time last year.

222/16: Students Council approved the following Student membership applications: Fiona Hey; William Alexander Thomas Ellyatt; Alexander James Harvey; Matthew Wells; Jacob Watfa; Georgia Mann; Susan Riley; Miriam Eve O’Connor.

215/16: Exploitation Committee Council noted the report from the Exploitation Committee and approved the appointment of Quinton Fivelman to the Committee.

210/16: This Unitary Patent and UPC were discussed under item 4.

Item 9: Committees reports

time Associate membership application: Michael Conway; Andrea Kallides.

Item 11: Chief Executive’s Report 219/16: Council noted the Chief Executive’s report.

Item 12: Applications for election 220/16: Fellows Council approved the following first time Fellow applications: Jessica Smart; Harry Simon Harden; Daniel Wolstenholme; Anthony Smee; Sinead Lucy. Council approved the following second time Fellow applications: Christopher John Mason; Mark Peter Callaghan; Owain Kenneth Staines; Patrick Clarke; Bruce Clive Dearling; Andrew XiongWen Loh; Michael Robert Handley; Mathew Paul Leese. 221/16: Associate members Council approved the following first

225/16: Council noted the report on resignations and expressed its sadness on hearing that Mark Shelley, a Fellow of CIPA, had passed away. Vicki Salmon said that she would liaise with Alasdair Poore on an obituary for the Journal. [See October [2016] CIPA 91.]

Item 14: Any other business 226/16: Council agreed that it was important to continue to offer training for members on the Unitary Patent and UPC and accepted the proposal from the Professional Development Working Group to put in place a reduced programme. The mock trial being held by EPLIT in October, hosted in the new court room at Aldgate Tower, will go ahead. 227/16: Council considered a proposal from the International Liaison Committee for a trade mark attorney, who is an Associate member of CIPA, to become a full member of the Committee and to represent CIPA on overseas visits. A number of Council members expressed concerns that this suggested that CIPA did not have sufficient trade mark expertise among the Fellows on the Committee, www.cipa.org.uk

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COMMITTEE NEWS

whilst others took the view that Associate members bring additional skills and experience and should be encouraged to be active in representing the Institute. In the absence of a clear decision, Council asked the Chair of the International Liaison Committee, Richard Mair, to ask the Committee to reconsider the proposal and present it to a future Council meeting.

DESIGNS & COPYRIGHT

228/16: Tim Roberts said that he would circulate a paper on a recent decision by the Boards of Appeal on plant patenting to Council members.

adding Vicki Salmon as a delegate if Brexit was to be a substantial agenda item.

Item 15: Date of next meeting 229/16: Chris Mercer advised Council that he, Alicia Instone and Lee Davies would attend the CNIPA meeting to be held in Barcelona on 22 October 2016 on behalf of CIPA. Council approved

230/16: Wednesday 7 September, 2016. The President closed the meeting at 17:08 Lee Davies, Chief Executive

Community designs Comments of CIPA’s Designs & Copyright Committee in response to CJEU Reference C-395/16, DOCERAM, 7 September 2016 About the Reference The Reference asks the Court to answer two questions concerning how to assess when features of a design are excluded as being dictated by technical function. As the referring OLG Düsseldorf noted,1 and as is explained in the EC Legal Review on Industrial Design Protection in Europe,2 there are a range of different approaches adopted in different European courts. Clarification is therefore desirable. In essence, the questions referred (below) reflect the decision of the EUIPO’s Third Board of Appeal in Lindner Recyclingtech v Franssons Verkstäder (Chaff Cutters).3 1. Does a technical function that precludes protection within the meaning of Article 8(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1) also exist if the design effect is of no significance for the product design, but the (technical) functionality is the sole factor that dictates the design? 2. If the Court answers Question 1 in the affirmative: From which point of view is it to be assessed whether the individual design features of a product have been chosen solely on the basis of considerations of functionality? Is an Volume 45, number 11

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‘objective observer’ required and, if so, how is such an observer to be defined?

UK case law and guidance UK case law has been inconsistent. Prior to 1970, cases and commentators were divided as to the correct approach to take under the former UK provisions. Amp v Utilux4: the Court of Appeal held the “multiplicity of forms” test to be correct. This corresponds to the answer “no” to the first question. On appeal in Amp v Utilux5: the House of Lords rejected the “multiplicity of forms” approach. The majority held that designs were “dictated” by function if their shape was “attributable to or caused or prompted by” functional reasons, regardless of whether they could also be made in other shapes. This corresponds to the answer “yes” to the first question. However, Lords Reid and Donovan held that: “it could well be that a designer who only thought of practical efficiency in fact has produced a design which does appeal to the eye. He would not be denied protection because that was not his object when he composed the design.”

This corresponds to the answer “no” to the first question. Landor & Hawa v Azure6: the Court of Appeal held, following the Opinion of Advocate-General Ruiz-Jarabo Colomer in Philips,7 that the relevant test under the present law was the “multiplicity of forms” test. That judgment was followed by the High Court in Procter & Gamble v Reckitt Benckiser,8 which was broadly upheld on this point by the Court of Appeal.9 This corresponds to the answer “no” to the first question. Dyson v Vax10: the High Court held that the relevant parts of the judgment in Landor & Hawa v Azure had been obiter dicta, and rejected the “multiplicity of forms” test, following instead Lindner Recyclingtech v Franssons Verkstäder.11 The Court of Appeal followed this in Samsung v Apple.12 Their conclusion was that to avoid being dictated by function a feature had to be “not to some degree chosen for the purpose of enhancing the product’s visual appearance”. This corresponds to the answer “yes” to the first question. Only in Amp v Utilux (which was under the former UK law and is therefore not binding) was the design rejected as being dictated by function. In all the later cases, NOVEMBER 2016

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the designs were held to be not dictated by function whichever test was adopted, so that the remarks of the courts are all obiter dicta. There is therefore no currently binding UK authority. Beyond the Courts, the IPO adopted a Designs Practice Notice – DPN 5/0313 – which essentially followed the “multiplicity of forms” test but reexpressed it as follows: “The test would appear to be whether or not the technical function dictates the appearance of the product to the extent that there is no (or negligible) design freedom.”

Lindner Recyclingtech v Franssons Verkstäder The EUIPO's Lindner decision itself is not uncontroversial. To understand the decision, it is necessary first to review the reasons cited by the Board for not following the “multiplicity of forms” approach suggested by Advocate-General Colomer in Philips. The first “major flaw” identified is that if the “multiplicity of forms” approach is used, the rejection: “will apply only in highly exceptional circumstances and its very purpose will be in danger of being frustrated”. This point was made by the House of Lords in Amp v Utilux, but we think it is misplaced under the current design law (which differs significantly from the previous UK law under which that case was decided) for both legal and practical reasons. Legal reasons: the Commission’s intention as evidenced by the Amended Proposal was precisely that the “dictated by technical function” objection should apply only “in those extremely rare cases where form follows function.”14 A broad interpretation of the objection would make many other parts of the law (e.g. the “must fit” and “not visible in normal use” clauses) redundant (as discussed below in relation to trade mark law). Practical reasons: the “dictated by technical function” objection serves the reasonable purpose, in infringement proceedings, 8

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of preventing proprietors pleading their design so broadly that it monopolises a function, as this would result in a successful invalidity defence. Further, since any design which is in danger of attack as being “dictated by function” will necessarily involve only narrow “design freedom”, its scope of protection will be narrow which minimises the risk to competitors in a narrow application of the “dictated by function” objection.

hexagonal, and illustrates the danger of allowing the tribunal to indulge in hindsight technical speculation. The “precisely n” issue could be avoided by the adoption of a “no or negligable design freedom” approach as suggested in DPN 5/03 referred to above. This is what a later EUIPO Board of Appeal did in ASSTEC v KLB Blech.18 The approach adopted by the Board in Lindner was to consider not function, but the absence of aesthetics:

The Board’s second argument was that: “If a technical solution can be achieved by two alternative methods, neither solution is, according to the multiplicity-of-forms theory, solely dictated by the function of the product in question. This would mean that both solutions could be the subject of a design registration, possibly held by the same person, which would have the consequence that no one else would be able to manufacture a competing product capable of performing the same technical function.” Although the argument is theoretically correct, we think it is inapplicable in practice. It is hard to think of any real situation where the design freedom is limited to precisely two and only two (or, generally, precisely n) discrete alternative forms. As noted in the referring OLG Düsseldorf decision, variations on a theme are almost always (probably always) possible. The Board’s source is a UK commentary15, which ultimately derives from obiter dicta in Tecalemit v Ewarts (No 2)16 concerning a very simple spare part design consisting of two hexagonal nuts joined by a cylinder with a bolt beneath, decided on the basis of an objection which referred to a “mere mechanical device” rather than features dictated by function. However, as BlancoWhite noted17, simple geometrical shapes will almost always lack novelty and hence be invalid on that basis. The superficial analysis conducted by the Court in that case neglects obvious variations such as making the nuts square rather than

“It is only when aesthetic considerations are completely irrelevant that the features of the design are solely dictated by the need to achieve a technical solution. This is not, it must be stressed, tantamount to introducing a requirement of aesthetic merit into the legislation. It is simply recognition of the obvious fact that when aesthetics are totally irrelevant, in the sense that no one cares whether the product looks good, bad, ugly or pretty, and all that matters is that the product functions well, there is nothing to protect under the law of designs.” We find this analysis troubling, for several reasons. Firstly, and most importantly, the distinction drawn by the Board between “aesthetic merit” and the presence of “aesthetics” is not what was intended by the legislator. To quote the Commission’s Amended Proposal, “the question whether a design does or does not contain any aesthetic elements is irrelevant in the context of the requirements for protection”.19 That is consistent with the whole history of the legislation, back to the Green Paper20 which commented that: “5.4.4.1. Design Industry usually considers that design is the result of three elements: a functional Improvement or technical innovation in the product, a creative contribution of aesthetic nature by the designer, and an investment by the manufacturer to develop the two preceding elements. 5.4.4.2. The Commission accepts that designs which meet all these www.cipa.org.uk

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three requirements are undoubtedly deserving of protection. A strict application of such a definition would, however, lead to a limitation in the number of designs which could be protected. When speaking of “design” in this Green Paper, the Commission wants also to cover designs which might lack one or other of these elements.”

requirement that someone should care about the appearance of the design, this exclusion would be redundant. Although the Board refers to designs where “no one cares”, the decision proceeds to refer to: “those features of a product’s appearance that were chosen exclusively for the purpose of designing a product that performs its function, as opposed to features that were chosen, at least to some degree, for the purpose of enhancing the product’s visual appearance.”

The Board’s approach appears rather to reflect former UK section 1(3) of the Registered Designs Act 1949, introduced by the Copyright, designs and Patents Act 1988 and reading as follows: “A design shall not be registered in respect of an article if the appearance of the article is not material, that is, if aesthetic considerations are not normally taken into account to a material extent by persons acquiring or using articles of that description, and would not be so taken into account if the design were to be applied to the article.” However, instead of adopting that approach (excluding protection for designs where no one cared about the appearance) the Commission instead adopted the visibility exclusion, excluding protection for designs which could not be seen in normal use. If there were a

That ignores the viewpoint of the user, customer or consumer in favour of that of the chooser, i.e. the designer. We believe that the basing a decision on the view of the designer would be wholly inappropriate for a registered right. Competitors should be able to assess the scope and validity of a registered design objectively on the basis of the published data from the register and associated documents, whereas the state of mind of the designer is subjective, inaccessible and non-transparent. Although the designer in Amp v Utilux did concede that he had had only function in mind, this was not the case in Lindner, where the designer gave affidavit evidence to the contrary. For that reason, the Board held that:

Notes and references 1. I-20 U 124/15 Schweisszentrierstiften- DOCERAM 2. at Section 3.5; ISBN 978-92-79-58880-8, doi: 10.2873/630380, available at http://ec.europa.eu/growth/tools-databases/newsroom/cf/ itemdetail.cfm?item_id=8845 3. R 690/2007-3, 22 October 2009, [2010] ECDR 1 4. [1970] FSR 162 5. [1972] RPC 103 6. [2006] EWCA Civ 1285; [2006] ECDR 31; [2007] FSR 9 7. Case C-299/99, [2001] ECR I-5478 8. [2006] EWHC 3154 (Ch); [2007] ECDR 4; [2007] FSR 13 9. [2007] EWCA Civ 936; [2008] ECDR 3; [2008] FSR 8 (see paras 57 & 59) 10. [2010] EWHC 1923 (Pat); [2010] ECDR 18; [2010] FSR 39 11. R 690/2007-3, [2010] ECDR 1 12. [2012] EWCA Civ 1339; [2013] ECDR 2; [2013] FSR 9 at para 31.

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“It goes without saying that these matters must be assessed objectively: it is not necessary to determine what actually went on in the designer’s mind when the design was being developed. The matter must be assessed from the standpoint of a reasonable observer who looks at the design and asks himself whether anything other than purely functional considerations could have been relevant when a specific feature was chosen.” This statement underlies the second question referred to the Court. In Lindner, the “reasonable observer” was simply the tribunal itself. We find this troubling. Firstly, a “reasonable observer” of this kind does not apparently have any technical knowledge. His or her decision could therefore be incorrect. An observer who reasonably but wrongly assumed that something other than functional considerations was present would lead to a design being held valid which could, in fact, be made only in a single shape – in other words, a design where there was, in fact, no design freedom. That might lead, to use the words of Recital 10 of Regulation 6/2002, to “Technological innovation” being “hampered by granting design protection to features dictated solely by a technical function”. In our view, the questions whether or not design features are “solely dictated” by the

13. https://www.gov.uk/government/publications/designs-practice-notice-503 14. See Memorandum accompanying Amended proposal for a EUROPEAN PARLIAMENT AND COUNCIL DIRECTIVE on the legal protection of designs COM 96 (66) final – COD 464 at page 7 re draft Article 7 paragraph 1 15. see W. Cornish and D. Llewelyn, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, 5th edition, (London: Sweet & Maxwell, 2003), p.549 16. (1927) 44 RPC 503 17. Patents For Inventions And The Protection Of Industrial Designs, T. A. Blanco White Fourth Edition, London Stevens & Sons, 1974 at para 8-205 18. R 2081/2011-3, 17 September 2013, [2016] ECDR 7 at para 25 19. See Memorandum accompanying Amended proposal for a EUROPEAN PARLIAMENT AND COUNCIL DIRECTIVE on the legal protection of designs COM 96 (66) final - COD 464 at page 7 re draft Article 7 paragraph 1 20. Green Paper on the Legal Protection of Industrial Design. Working document of the services of the Commission. III/F/5131/91-EN, June 1991

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product’s “technical function”, and whether there is risk of hampering “technological innovation”, are clearly technical questions. They should be answered objectively, by reference to evidence such as expert evidence on the technical function, and evidence as to the realistic probability of the availability of alternative non-infringing shapes (for example, from the market). There is no scope for considering aesthetic issues, as question 1, in referring to “the design effect”, appears to do. It is inappropriate to refer these issues to the opinion of either the consumer or a “reasonable observer”, or of a nontechnical tribunal unless it is informed by technical evidence. Whilst the Boards of Appeal of EUIPO and the Courts of the UK may, in many cases, be able to decide such questions correctly we believe that adopting the “reasonable observer” approach would invite all tribunals across Europe, irrespective of experience or expertise, to invalidate designs merely on the basis of their own opinion as a “reasonable observer”.

The trade mark approach We agree with Advocate-General Colomer that this provision of design law should be interpreted autonomously, not

DESIGNS & COPYRIGHT• LITIGATION

by reference to trade mark law. Briefly, in addition to the comments he made and those above, we would add that the whole legal context of design law is different to that of trade mark law in several respects: 1. Designs where the appearance is not material are specifically excluded from protection elsewhere in the Regulation by a simple, objective test whether they are visible in normal use – Article 4(2) & Recital (12). The designs invalidated in Tecalemit v Ewarts (No 2) and Amp v Utilux (and perhaps even that in Lindner) would under the current law have been held invalid on this basis. However, that exclusion would be redundant if a broad interpretation of the functionality exclusion were taken.

legislative intention expressed in Article 8(3) and Recital (11) to grant protection to such features would be thwarted. 3. The requirements in design law for novelty and individual character largely exclude the possibility of monopolisation of the function of products, because the features necessary to do so are in most cases already publicly known. 4. As Advocate-General Mengozzi suggests in paras 30-31 of his Opinion in Pepsico (Case C 281/10 P) the provisions concerning design freedom already operate to affect the validity and limit the scope of designs on the basis of constraints “of a strictly functional nature”.

Conclusions 2. Following the approach taken in Lego v OHIM (Case C-48/09 P) would result in a finding that the interconnecting features of designs of modular construction toys were invalid. However, the situation of interconnecting features generally is specifically dealt with by Article 8(2) of the Regulation, which would be redundant in the case where the trade mark approach were adopted, and the

Accordingly, the answer to the first question should be “no”, the answer to the second question should be “no”, and the approach to be taken should be to assess whether, as a matter of practical reality, there is enough design freedom for competitors to adopt a non-infringing alternative. Professor David Musker, Chair, CIPA Designs & Copyright Committee

Intellectual Property (Unjustified Threats) Bill CIPA’s response to the Intellectual Property (Unjustified Threats) Bill Call for Evidence – Litigation Committee, 3 October 2016

IPA welcomes the Bill. We submitted some comments on it to the Law Commission in July 2015 and further comments to the IPO in October 2015. Copies of both documents are attached, together with our proposals for amendments which should be made to the Bill. [See Further Information.] Obtaining an IP right is often a costly process but one which applicants are

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willing to go through as it provides them with protection and enables them to enforce their right. When rights holders believe that their IP rights are being infringed, they need first to investigate and see whether there is a matter in dispute. If there is, then they need to look at how that will be resolved. Litigation is not always the first choice. Current best practice would be to look at ADR. In fact, this

is not only encouraged, it is a normal expectation under the Courts’ protocols and guidelines on pre-action conduct. Settling disputes quickly is frequently in the best interests of the IP rights holder. So it is important that discussions can be opened, even if the ultimate sanction – litigation in the Court – is only to be sought if discussions do not bear fruit. On the other hand, the threat of bringing IP litigation can be highly www.cipa.org.uk

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damaging – particularly where the party has a dubious IP right or where they have no intention of bringing proceedings. So the “Threats” provisions were first introduced to provide a remedy to abuses of the system. However, they now provide a regulatory burden to all and, in order to avoid the risk to being accused of making an unjustified threat, they can push IP rights owners into issuing Claim Forms, and so beginning the very litigation which the Courts would rather were avoided. The Threats provisions proposed by the Law Commission are long and complicated. There is a risk that while navigating through the lengthy and burdensome provisions, a good lawabiding attorney, representing a client whose products are being infringed, drafts a letter to the potential infringer that does not adequately communicate the need to stop the infringing act for fear of making a groundless threat. These letters already meet with the response “We do not understand your letter and have filed it.” Letters are part of a dispute settlement process, as well as for parties genuinely wanting to explore whether there is infringement or for finding out who is the correct party to sue, or for those seeking to find a settlement. These letters should not be drafted in a regime of fear of being penalised. It should be possible to write a letter that is sufficiently clear to catch the receiver’s attention and alert the receiver to the need to seek legal advice without being one that would constitute an actionable unjustified threat. CIPA is aware that there has often been abuse of the threats provision, but a balance must be struck so that right holders with real grievances are able to write letters without fear of being penalised. The proposed provisions as they are drafted still require everyone to go through multiple hoops before writing a letter, which may fail to communicate the message strongly enough to be taken seriously by the receiving party. Whilst this might Volume 45, number 11

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have been expressed as a tort of unfair competition, without a set of written tests, the Law Commission did not chose to go this way. So our present comments are based on dealing with some final drafting issues.

Comments Professional advisers We welcome the Law Commission’s move to exempt lawyers, patent attorneys and trade mark attorneys from being personally sued, in addition to their clients. The current provisions are most frequently being used by those accused of infringement to separate the IP rights holder from their chosen legal professionals. A letter sent accusing both the IP rights holder and the legal adviser of an actionable threat creates a conflict of interests between the client and the legal adviser, which can result in the legal adviser having to step down, even if the threat was not actionable or was wholly justifiable. However, we question the breadth of the current provisions and whether these should be widely applied to any “professional adviser”, rather than to those who have been trained in the relevant areas of the law and able to advise properly on infringement, validity, court proceedings and the threats provisions themselves. In paragraph 1.1 of the document we submitted in July 2015, we pointed out that section 70D(2) was not clear as to whether both (a) and (b) are required to define a “professional adviser”. This has now been clarified and we welcome the change. However, we believe that these provisions are still not specific enough and allow non-lawyers to fall in the category of “professional adviser”. Section 70D(2)(b) requires someone to be acting in a professional capacity and to provide legal services or the services of a patent or trade mark attorney. It does not require someone to have that title: only to provide the services. Section 70D(2)(b) requires the “professional adviser” to be regulated by a “regulatory body” – either through

membership of that body or by a licence to practise or by any other means. “Regulatory body” is not defined and can be broadly interpreted. For example, a group of non-lawyers could set up a membership body and write rules for members of that body and assert on the basis of that membership, they were “regulated.” We recognise that the Law Commission was intending that the wording be broad enough to protect lawyers and patent attorneys acting in other jurisdictions, as well as those in the UK, but the current wording is not restricted to those with relevant qualifications. Any person who is acting in a professional capacity and regulated or licensed to practice by a trade body may be subject to the provision. As suggested in our response to the Law Commission’s consultation in July 2015, we recommend deleting “one or more regulatory bodies” and inserting: “one or more approved regulators as defined in the Legal Services Act 2007, or equivalent legal service regulators for Scotland, Northern Ireland, or another national jurisdiction [within the EU, or by the European Patent Office]”. If the intention is to provide exemption for legal representatives in any jurisdictions, then the wording in square brackets should be omitted. If the intention is to provide protection across the EU only, then the wording in square brackets would provide that limitation. Similar amendments should be made in each of the sections relating to the other rights: 



Clause 2 of the Bill – s.21D(2) – for trade marks Clause 4 of the Bill – s.26D(2) – for registered designs Clause 5 of the Bill – s.253D(2) – for design rights Clause 6 of the Bill – s.2D(2) – for community designs NOVEMBER 2016

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Who can be threatened? Patents In our response to the Law Commission’s consultation in July 2015 we pointed out that section 70A(4) continued to focus on the acts done, rather than who is doing them or purporting to do them. We mentioned that some potential infringers may refer to “our new product line” and so give the impression that they are primary infringers without explicitly saying so. Behind these statements, there may be a third party manufacturer within the UK or abroad or a third party importer. We still think that these sections need to be amended to provide protection for letters sent to those who hold themselves out as primary infringers. In our response (submitted in October 2015) to the IPO’s discussion paper with the proposed wording for the bill, we suggested clause 70A(4)(a) be amended to say: (4) A threat of infringement proceedings is not actionable if the threat— (a) is made to a person who has done, or intends to do, an act mentioned in subsection (2)(a) or (b) in relation to a product or process, or purports to do so and (b) is a threat of proceedings for an infringement alleged to consist of doing anything else in relation to that any product or process having, [so far as is material [to the alleged infringement]] the same features of such product or process. We suggested alternative wording in (4) (b) might be: 



“that product or process or any equivalent product or process” or “that product or process whether or not so made or imported or so used”

We attach a further copy of our October 2015 submissions, which provides examples to support our reasoning for this change. [See Further Information.] 12

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Similar amendments should be made in each of the sections relating to registered and unregistered designs: 



Clause 2 of the Bill – s.21A(4) – for registered trade marks Clause 4 of the Bill – s.26A(4) – for registered designs Clause 5 of the Bill – s.253A(4) – for design rights Clause 6 of the Bill – s.2A(4) – for Community designs

Trade marks An unjustified threat of trade mark infringement is usually actionable but will not be actionable if the threat is in relation to the application of the trade mark to goods, or the offer of services under the mark. Under the Law Commission’s proposed amended provisions, the sale/supply of the goods to which the mark has been applied is also excluded from being actionable. While this works reasonably satisfactorily in relation to services or to the physical application of the mark to goods (e.g. where goods have the mark stamped on them), there is a substantial gap where a person uses a third party trade mark to advertise goods on a website or in other electronic form. As a major channel for supply of goods is now over the Internet, this is a very significant gap. It is all the more so, as it is far easier to supply goods over the Internet under an infringing brand than to do so in a brick-and-mortar store where the goods or packaging are likely to have to be physically marked with the relevant brand. This issue arises in relation to goods which are sold over the Internet where

the goods themselves are not physically marked with the relevant trade mark. In those cases, there is a significant risk that use of the mark on the website would be held not to constitute application of the mark to the goods. Indeed, there is authority in relation to the criminal offence of trade mark infringement which strongly implies that (in that context) application to the goods is limited to physical application of the mark to the goods. Therefore, writing a threatening letter to a business in relation to a website advertisement for goods where those goods have not been physically marked with the relevant trade mark runs the risk of constituting an actionable threat and not being protected by the exclusion – and if the goods or their evident packaging are not physically marked there is no possibility of referring to the marking on the goods or their packaging. In such a case, there is a somewhat convoluted method of taking advantage of the exclusion in relation to supplying services under a mark. The person writing the letter can restrict the letter to asserting that the potential infringer, by offering of retail services under the mark is infringing the trade mark registration. Not surprisingly, this can be really confusing to the receiver of the letter asserting infringement. Note also that section 21B(2)(b) [Permitted Communication] will not work in the case where the only use of the trade mark is on the Internet or electronic form, and this is held not to be application to the goods. That provision allows a letter to be sent directed to finding out who is responsible for an act in 21A(2)(a) or

Further information See www.cipa.org.uk/policy-and-news/consultation-responses/call-for-evidenceintellectual-property-unjustified-threats-bill/ for PDF downloads of: • • •

Comments to Law Commission, July 2015 Comments to the IPO, October 2015 Marked up copy of the Unjustified Threats Bill, October 2016 www.cipa.org.uk

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(b) – i.e. application of the mark to the goods or their packaging. However, if “application” means physical application, there may not have been anyone who has applied the mark to the goods or their packaging, for example if they are received by the Internet trader unmarked. In our response to the IPO’s discussion paper in October 2015, we raised this issue and proposed an amendment. As an alternative, we now propose an amendment to deal with this issue, by adding section 21A(2A). The proposed provision is straightforward. It is based on the premise that, when a person, on the Internet or by other electronic means, is the person who makes the connection between the trade mark and the goods, that person is “applying” the mark, even if they do not physically attach the mark to the goods. It does this by saying that use on the Internet or in an electronic communication or other electronic form is deemed to be application of the sign to the goods. There should, however, be an exception to this. That is, if the trader, just as a trader in a physical shop, is supplying goods which have already been physically branded, and that is obvious from the Internet advertisement, then the trader is not the original person putting the sign on the goods or connecting the goods with the sign. In that case the person writing the letter can refer to the physically marked goods when asserting infringement. It would need to be known whether the goods have already been branded. If the goods are such that they are too small or otherwise branding is not carried on them but it is obvious (e.g. from connected labelling or marketing literature) that they are branded then this also could be excepted. We suggest that the use on a website/ Internet for which the addressee is responsible, and where it is not evident that the goods themselves or their packaging or associated marketing material have already been branded in Volume 45, number 11

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section 16. In s.70C(3), in relation to an application for a patent, the section should read ‘infringement of the patent when granted’.”

that manner, then such use should be treated as application of the trade mark to the goods. We therefore suggest adding a new section 21A(2A) as follows: (2A) for the purposes of subsection (2), use of a sign in electronic form, in particular in an electronic publication or communication, shall be treated as having been applied to the goods or their packaging; provided however that this shall not apply if it is clearly evident from the publication or communication or some other material clearly apparent from such use, that the sign has already been physically applied to those goods, their packaging or clearly associated material other than by the originator of the electronic publication or communication or other form.

We have given thought to whether similar amendments should be made to the corresponding provisions relating to applications for registered trade marks and registered designs. With patents there tends to be considerable delay between early publication and grant, and where the scope of the monopoly may be significantly amended. Registered designs are only published on registration. So we are not sure that the following sections serve any useful purpose, but they may not harm either: 



Clause 4 of the Bill – s.26E– for registered designs Clause 6 of the Bill – s.2AE – for Community designs

Pending applications Section 70E states that in section 7070C, references to a patent include an application for a patent that has been published under section 16. Reading “patent application” for “patent”, in section 70C(3) causes issues. This section deals with patent infringement. It is impossible to infringe a patent application, as the right has not been granted yet. Once the patent is granted, damages can go back to the date the application was published. But the patent claims may change considerably between the original 18-month publication and those present at grant. So the defence should not stand that the act might have infringed the patent application – which is the effect of reading section 70E in combination with section 70C(3). However, it could be a defence that the act would have infringed the patent when granted Accordingly, we suggest that section 70E be amended as follows:

Trade mark applications are published for opposition. The mark itself will not change, but if there is opposition, the scope of goods and services in the application could be cut down before registration and so take out of the ambit of infringement, acts which might have been an infringement if the pending application had been granted without further amendment. Consequently, we think a similar amendment should be made to Clause 2 of the Bill - section 2E – for registered trade marks.

“In sections 70 to 70C, but not including s.70C(3), references to a patent include an application for a patent that has been published under

We should be happy to answer any questions that the Litigation Committee may have or to assist in any way with the passage of this bill.

“In sections 21 to 21C, but not including s.21C(3), references to a trade mark include references to a trade mark in respect of which an application for registration has been published under section 38. In s.21C(3), in relation to an application for a trade mark, the section should read “infringement of the trade mark application when registered.”

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EPO

EPO – fee payments via deposit account CIPA’s response (30 September 2016) to the EPO’s user consultation on changes in fee payments via deposit account (10 August 2016)

Introduction of a validation tool for erroneous batch payments We can see the merit of a system which prevents erroneous payments, provided that: •

Other payments in the batch must be processed as normal. It would be quite wrong to reject an entire batch of payments because of one faulty record.

•

The tool must flag which payment caused the problem, so that the user can investigate.

•

If, upon investigation, the user believes that the EPO’s records are incorrect and that the application concerned is still pending, then it must still be possible to pay the fee, perhaps as a one-off payment rather than in a batch. This will prevent the need to pay additional fees or to apply for re-establishment of rights in respect of a renewal fee paid late, after the EPO’s records have been corrected.

Earlier visibility of deposit account replenishments We welcome this improvement.

Debit orders to be filed online only This is a retrograde step. We oppose it and strongly urge the EPO to re-consider. Although the EPO acknowledges the need for an emergency payment channel in the event of a failure of Internet systems, PayPal is not an acceptable method for many users. 14

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This particularly applies to users who work in larger corporate environments. For example, patent departments in industrial companies and government departments are subject to rules of corporate governance. These include financial controls which must satisfy external auditors. Opening a PayPal account and transferring company funds into it would simply not be permitted as a matter of policy. Indeed, some corporate credit cards may even block payments to PayPal to prevent personal transactions. How would the EPO’s auditors react if a member of the EPO staff wanted to open a PayPal account in order to pay fees owed by the EPO to an external organisation? For most users, the ability to send a debit order by fax is by far the most acceptable emergency payment channel. International bank transfers are not an appropriate substitute in an emergency, since they may take several days to arrive and require evidence and surcharges – Article 7(3) RRF. This mirrors the situation for emergency filing of application documents if online systems fail. At the inaugural SACEPO-EPP meeting in The Hague on 13 January 2016, users made clear that fax filing must be retained for emergency filings, even though they generally preferred online filing. There is also a problem with the suggestion that a PayPal account could be opened and operated by smartphone. Fees are normally paid by administrative staff, who are likely not to be provided with a smartphone by their employer. Using a smartphone owned personally

by a staff member is an unsatisfactory solution. We understand the EPO’s desire to persuade users who currently use fax or paper debit orders as their normal payment channel to switch to online payment instead. We agree that online payment can benefit users as well as the EPO. However, the ability to use fax as an emergency backup is important and must still remain. We suggest that other ways be explored to incentivise switching to online payment, such as fee reductions. Facilities for payments by credit and debit cards would be more acceptable than PayPal for many users. The EPO has been requested to provide these in the past, but to no avail. Yet if the EPO is prepared to accept PayPal (and bear the costs) then we do not understand why credit and debit cards remain unacceptable. Even though credit/debit card payments would be very useful for many, there will remain a significant proportion of corporate users who would not be able to pay this way. As mentioned above, they are subject to corporate financial controls. These typically require that corporate credit cards be used only for travel expenses. That is why fax payments must remain as an emergency, even if other users would welcome credit/debit cards. It is to be regretted that the EPO is shutting off the options for fee payments in emergencies, such as the administrative fee if a deposit account accidentally becomes overdrawn. Tim Jackson, Patents Committee www.cipa.org.uk

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LIFE SCIENCES

Plant breeding Comments by CIPA’s Life Science Committee (3 October 2016) in response to the EU Guidance document for the plant breeding sector (25 August 2016)

IPA is grateful for the opportunity to comment on the draft guidance document for the plant breeding sector (as well as for the extension of time given for comment). CIPA members frequently file patent applications on inventions related to genetic resources. We regard it as part of our job to help ensure that the research involved in such inventions is in full accordance with the law. We also see it as our task to try to ensure that the law governing such research is interpreted and administered in a way that fulfils its objectives, as clearly and as simply as possible. In pursuance of these aims, we have previously commented on the General Guidance. These comments (dated 30 May 2016) are attached for the convenience of the reader, since we wish to re-emphasise several of the points previously made. [See page 16.] The sector-specific guidance on plant varieties is extremely important. This sector is vital to the well-being of the EU, perhaps second only to the sector dealing with human pathogens. Development of new crop varieties, with improved properties such as higher yield and disease resistance for farmers, and healthier, tastier and cheaper products for consumers, needs easy access to the widest possible range of new germplasm (genetic resources – GR). The objectives of the Convention on Biological Diversity (CBD) are threefold (paraphrased): 1. preservation of GR; 2. wider (sustainable) use of GR; and 3. fairer sharing of the benefits of such use. Volume 45 number 11

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The Nagoya Protocol emphasises the third, seen as neglected. But this emphasis must not be allowed to prejudice the first two – in particular the second. Unnecessarily strict rules to ensure sharing benefits can easily inhibit wider use. All three objectives must be held in balance. As our previous general paper [see page 16] has argued, we fear this is not being achieved. ] Our previous paper argued for regulations which are as clear as possible, so that unnecessary doubts do not inhibit useful research. We also asked for more ‘safe harbours’ inside which researchers could work, confident that they were in compliance with the guidance and did not need to pursue long, expensive and potentially inconclusive enquiries about ‘origin’. We have seen in draft a submission by the British Society of Plant Breeders (BSPB) which we understand has now been filed. We support strongly the comments in that submission. They are entirely in line with our earlier paper. Thus, BSPB argues that lack of clarity will discourage useful research that if done could yield useful benefits (to breeders, to GR providers and to the public). Falling foul of the law – risking criminal sanctions – is a risk that few public companies will take lightly. And the obligation – in so many cases – to undertake special, tedious and often fruitless ‘due diligence’ investigations may be beyond the power of smaller companies – encouraging further (perhaps undesirable) concentration of breeding into giant corporations. We particularly emphasise the importance of removing previously

commercialised varieties from scope. This, if neglected, will be a glaring missed opportunity. Most commercial breeding is done by crossing with competitors’ commercial varieties. If such breeding has in every case to be preceded by ‘due diligence’ investigations, the burden will be high, perhaps insupportable. Free use in breeding of ‘commercial varieties’ is just the sort of ‘safe harbour’ for which CIPA argued in its previous submission. It may be suggested that excluding all commercial varieties from scope could lead to injustice to GR providers in a few cases. But a GR provider could still have rights against the breeder of the earlier variety who had obtained his GR from natural resources in breach of Nagoya requirements. Further, more strongly, we urge that balance requires weighing the CBD objective of wider use of GR against that of equitable remuneration for all uses of GR on which rights are asserted. Here we believe that some small danger of injustice in a small minority of cases is overwhelmed by the advantage of promoting wider use of GR in so many others. Rough justice in a very few cases must be preferable to a system that may be theoretically more equitable but that is close to unworkable in practice. Finally, we support BSPB’s submission (also argued in our earlier submission) that commercial varieties are not ‘natural resources’. This alone is sufficient reason for making clear that they are out of scope. We very much hope that the draft guidance will be amended in the light of these comments. NOVEMBER 2016

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LIFE SCIENCES

Nagoya – EU Guidance Comments on the revised Guidance for EU implementation of the Nagoya Protocol by CIPA’s Life Sciences Committee, 30 May 2016.

he improved guidance is improved in several respects. But further improvements are certainly desirable, if not neccssary. Nagoya seeks to protect the rights of countries providing genetic resources (GR). This is necessary and appropriate. But such rights must be balanced with other concerns, including general fairness, ease of administration and regard for public health. In general, freedom is a public good: and freedom to do research is an important principle, not lightly to be overriden or unnecessarily restricted. Research that is clearly conducted in breach of the Nagoya Protocol is to be forbidden. However, care must be taken about research that is not clearly in breach. This must not be automatically forbidden. Otherwise, wherever there is uncertainty about the status of GR, research on it will be discouraged and may well not happen. The obligation to do ‘due diligence’ to avoid breaching the Protocol makes sense. However, if the standards of what qualifies as ‘due diligence’ are set too high, the resulting restrictions on research will be too onerous. And if they are not clear enough, important research may not happen.

Terminology Strong exception is taken to the use of the term ‘user’ in the Guidance. ‘User’ is used in the Regulation and the Protocol in a very special sense. It means ‘researchand-developer’. This is a most unusual usage, and one that will inevitably lead to misunderstandings. ‘Users’ in common English parlance means ‘one who makes use of, puts to use’: in any way, and typically for personal or commercial benefit, rather than for research. The Protocol – with the Regulation – controls a very specialised use – that of ‘research-and-development’. For such specialised use, the Regulation employs the term ‘utilise’ – only those who do ‘research-and-development’ are ‘utilisers’. 16

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If the Commission wishes the guidance to be readily understood (as we are sure it does), the terms ‘use’ or ‘user’ should be replaced by ‘utilise’ (or ‘utilisation’) and ‘utiliser’. ‘Use’ or ‘user’ should only be used to denote those who use without doing ‘research-anddevelopment’ (which, in most circumstances, will cover most of the general public). As the advice stands, it is too readily misunderstood to require any commercial sale of a GR to require passing to the purchaser full details of the conditions imposed by the ‘country of origin’ on the ‘utiliser’ who has provided the product. Purchasers of such products may need notice that they are not entitled to do any research with the product without permission of the ‘country of origin’ – but to require more is unreasonable as well as impractical.

Scope The prime objective of the CBD (and of the Nagoya Protocol made under it) is to preserve biodiversity. As such, it is concerned with natural resources – and not, accordingly, with other (unnatural?) genetic resources. See for example Article 15 – which refers to the rights of countries over their ‘natural resources’. Therefore, countries do not, in general, have rights over genetic resources which have been artificially adapted, e.g. by breeding or biotechnology, except insofar as they have contractual rights (from MATs) against those to whom they have provided the raw materials used to generate the adapted resource. This point is not necessarily appreciated by ‘utilisers’, so it should be made as clear as possible. Alternatively (should the Commission not accept that the CBD relates solely to ‘natural resources’), it should be made clearer in the Guidance (if that is the Commissions view) that any modification (whether natural or artificial) of a GR in a Nagoya country produces a new GR. Then the country in which the modification is

carried out has (or may have) rights to control ‘utilisation’ of the new resource. Whatever view is taken, a question arises as to how much modification is necessary to change an existing GR into a new one. We suppose that a single GR cannot simultaneously be controlled by two ‘provider countries’, as that would lead to contradictions. This question cannot be left to ‘mutually agreed terms’. These terms can regulate relations only between ‘country of origin’ and ‘utiliser’. The ‘utiliser’ can impose them on other ‘utilisers’ – but not necessarily on ‘end-users’. Under common law at least, a contract binds only those who agree it and cannot impose conditions on third parties.

Due diligence Under the Regulation, the ‘provider country’ has the right (if it wishes) to control ‘utilisation’ of the genetic resource (GR). A ‘provider country’ is one that possesses the GR growing ‘in situ’ – or one that has received the GR under the provisions of the CBD. Neither alternative is necessarily easy to analyse (either factually or legally), in any particular case. Accordingly the concept of ‘due diligence’ makes sense. But the burden this puts on ‘utilisers’ is unclear – and potentially high. Lack of clarity will lead the cautious to avoid research, and the less cautious to ignore their obligations. So clarity is highly desirable. What would be helpful would be more ‘safe harbours’ – in the American sense, of clear conditions that, if fulfilled, are accepted as meeting the obligation of ‘due diligence’. At present there are only two such safe harbours – procuring samples from an approved collection, or obtaining a ‘certificate of compliance’. There are relatively stringent conditions to be satisfied if a collection is to be approved, and it is not yet clear which collections will be approved. Meeting and maintaining the conditions necessary for www.cipa.org.uk

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approval will cause collections trouble and expense, which will discourage them from seeking approval. And this is only a ‘safe harbour’ where an approved collection holds the resource to be ‘utilised’ – which may not be often. ‘Internationally recognised certificates of compliance’ are at present exceptionally scarce (barely in double figures) and in any case are only useful where the ‘utiliser’ is able to establish which is the ‘country of origin’ that is entitled – and willing – to issue one. Nonmembers of Nagoya will presumably not issue certificates. And (we suppose) that Nagoya members (such as the UK) who do not assert their rights (perhaps partly because they do not wish to be burdened with the additional bureaucracy) will not issue ‘certificates of compliance’ either.

Research-and-development? The distinction between pure research and ‘research-and-development’ is so unclear

that, as a practical matter, ‘utilisers’ will have to assume that any research counts as ‘research-anddevelopment’. But this is probably how ‘provider countries’ will construe the term in any event.

Provider countries If a ‘utiliser’ collects in a country a GR growing (or that was grown) in that country, is the ‘utiliser’ entitled to assume that country is the ‘provider country’? Or are futher enquires needed – in some or all cases? A problem here is uncertainty about the wording of the CBD and Nagoya. countries have rights over GR which they ‘possess’ or ‘acquire’. ‘Possession’ when used of persons, normally means ‘ownership’. Ownership is exclusive. If I own something, you do not own it. But – presumably – a a country may ‘possess’ a GR within its territories even if it also has a clear legal personal owner. Otherwise the scope of Nagoya

Overseas report International treaties Patent Law Treaty (PLT) On 21 July 2016, the Government of the Republic of Belarus deposited its instrument of accession to the PLT. The Treaty will come into force, with respect to Belarus, on 21 October 2016. Beijing Treaty (Audiovisual Performances) On 5 September 2016, the Government of Saint Vincent and the Grenadines, deposited its instrument of accession to the Beijing Treaty. On 21 September 2016, the Government of the Gabonese Republic, deposited its instrument of accession to the Beijing Treaty. The date of entry into force of the Treaty will be notified when the required number of ratifications or accessions is reached. Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 5 September 2016, the Government of Saint Vincent and the Grenadines, deposited its instrument of accession to the Marrakesh Treaty. The Treaty will come into force, with respect to Saint Vincent and the Grenadines, on 5 December 2016.

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LIFE SCIENCES • OFFICIAL

would be greatly limited. How does a country come to ‘possess’ or ‘acquire’ a GR? Mere presence of the GR in the country cannot be enough. Is it sufficient if the GR has been reproduced in the country? Or is it necessary that it should have changed in the course of reproduction – thereby producing a new GR? If so, how much does it have to have changed (see above)? Guidance on this is necessary and important.

Sector-specific issues Some of the guidance under this head is very helpful. It is excellent to make clear that pathogenic organisms introduced unintentionally into the EU are not covered by the Regulation. Further caveats of this nature in sector-specific guidance could be very useful in easing the bureaucratic burden on researchers. We look forward to further sector-specific guidance, as promised.

On 7 September 2016, the Government of the Republic of Tunisia, deposited its instrument of accession to the Marrakesh Treaty. The Treaty will come into force, with respect to Tunisia, on 7 December 2016. Patent Cooperation Treaty (PCT) On 8 September 2016, the Government of the Kingdom of Cambodia deposited its instrument of accession to the PCT. The instrument contains a declaration that Cambodia does not consider itself bound by Article 59. The Treaty will enter into force, with respect to Cambodia, on 8 December 2016. [See the report on page 18.] Trademark Law Treaty (TLT) On 12 September 2016, the Government of the Republic of Guatemala deposited its instrument of accession to the TLT. The instrument contains a declaration that the Treaty shall apply to marks consisting of visible signs, including three-dimensional marks, which relate to products or services, or to both products and services. However, it shall not apply to holograms, sound or scent marks, or collective and certification marks. The Treaty will enter into force, with respect to Guatemala, on 12 December 2016.

Trade marks The GCC Trademark Law and its Implementing Regulations came into force in Saudi Arabia on 27 September 2016. Dr Amanda R. Gladwin (Fellow), GSK NOVEMBER 2016

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OVERSEAS: CAMBODIA

Cambodia update Cambodia accedes to PCT and encourages further IP development.

ollowing accession to the World Trade Organization (WTO) in September 2014 and the signing of a Memorandum of Understanding with the Intellectual Property Office of Singapore (IPOS) in January 2015, Cambodia has upped its efforts in developing its intellectual property environment even further by becoming the 151st state to accede to the Patent Cooperation Treaty (PCT) – an international treaty administered by the World Intellectual Property Organisation (WIPO) that facilitates and simplifies the process of obtaining patent protection internationally. Cambodia will become bound by the treaty on 8 December 2016. This will definitely be welcoming news to foreign patent applicants, as the PCT is an efficient time-buying mechanism for global protection. Following the date, foreign applicants – especially those from the other 150 states party to the PCT – may now extend their filings to Cambodia within a time limit of 30 months, dated from the earliest priority date of an international application. This same period will also apply to those wishing to reserve their rights upon filing a new single international application. This is considerably longer than the 12 months afforded by the Paris Convention – under Cambodia’s previous patent system – to seek funding and assess the merits and likelihood of commercial success of an invention before entering the market. Accordingly, Cambodian nationals and residents will benefit from the accession – they will now be entitled to seek patent protection through a single international application made to the Cambodian patent office. Furthermore, the PCT provides the service of international search reports and written opinions that summarize findings

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pertaining to the patentability of an invention during the international phase. Foreign applicants seeking IP protection in Cambodia may use international reports instead of locally-produced ones. Not only will this be cost-effective for applicants, but Cambodia’s patent office will also benefit from this added capacity. The administrative burden on search and examination, including formality checks and patentability assessments, will be significantly reduced; local examiners will not necessarily have to conduct these from scratch. This will make the Cambodian patent registration system more efficient in processing and granting patent applications. Furthermore, Cambodia will now be able to gain access to technical expertise and development programmes offered by WIPO to improve the competency of local patent administrators and examiners in the approvals process. Where difficulties are encountered in the grant-making process, as a PCT member Cambodia can seek assistance from fellow member states – most pertinently, those that boast a well-established patent system. Although patent law has been in place in Cambodia since 2003, no patent was ever granted in the country until the Singapore-Cambodia re-registration programme was initiated by the Memorandum of Understanding with IPOS in 2015. Such a sluggish situation in terms of patent granting in Cambodia

will be greatly improved after accession to the PCT, given the benefits mentioned. It will certainly boost the foreign applicant’s confidence in Cambodia. Nevertheless, an enhanced patent filing and registration system alone will not be sufficient to bolster the socio-economic development of the country. Efficient and effective protection of IP rights is equally important in attracting foreign investment, promoting the transfer and dissemination of technology and creating demand for skilled workers to perform high-paid jobs. Cambodia needs effective enforcement mechanisms to fight against potential infringement and counterfeiting issues. This will not be realized without the awareness of Cambodians themselves of their important roles in IP rights enforcement. To help nationals and residents in Cambodia to better understand the value of intellectual property to a developing economy, the Intellectual Property Association of Cambodia (IPAC), an organization led by qualified intellectual property agents, lawyers and academics, was founded in July 2016. Backed by the Ministry of Commerce, it is Cambodia’s first independent association dealing with IP matters. It aims to work closely with government agencies in promoting and spreading awareness through seminars, lectures and roadshows. Further down the line, IPAC aims to aid the development of Cambodia’s IP enforcement standards. In summary, accession to the PCT and the formation of IPAC has ensured 2016 has been a breakthrough year for Cambodia’s intellectual property environment. IP-related activities are expected to rapidly increase in Cambodia in the coming years. By Gladys Mirandah (Foreign Member) and Tai Yoke Yee of patrick mirandah co. (singapore). See www.mirandah.com. www.cipa.org.uk

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IP PRO BONO

IP Pro Bono scheme CIPA press release, Monday, 17 October 2016

scheme was launched on 17 October 2016, to offer free legal advice and support to patent and trade mark holders in legal disputes. The IP Pro Bono scheme, launched by Sean Dennehey, Acting Chief Executive of the Intellectual Property Office, has been designed to help small businesses and individuals involved in disputes about intellectual property such as a patent, trade mark, protected design or copyright. Mr Dennehey said: “I am delighted to mark the launch of this new service. I am sure that the service will prove invaluable to those businesses struggling to afford the costs of professional representation. I am pleased that the IPO has been able to support the initiative and I look forward to hearing progress of the service.” IP Pro Bono is a collaboration between a number of leading IP organisations including the Chartered Institute of Patent Attorneys (CIPA), the professional body for patent attorneys in the United Kingdom – which manages the scheme, the Institute of Trade Mark Attorneys (ITMA), the International Property Lawyers’ Association (IPLA) and The Law Society. The scheme was set up in response to a challenge set by His Honour Judge Hacon, presiding judge of London’s Intellectual Property Enterprise Court (IPEC), for IP legal services providers to offer advice and support to unrepresented claimants and defendants in IP disputes. The service is available to those who cannot reasonably afford to pay for professional advice from a firm. A case officer will assess applications and, if the applicant meets the stated criteria, allocate the case to one of the participating firms on a rota basis. More information is available at www.ipprobono.org.uk. Pictures by Richard Hayward, ITMA.

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IP Pro Bono is a collaboration between a number of IP organisations, represented by (l-r): HH Judge Hacon (IPEC); Kate O’Rourke (ITMA); Tony Rollins (CIPA); and Sean Dennehey (IPO).

Mandy Haberman offers an inventor's perspective on the importance of access to justice.

CIPA Vice-President Stephen Jones introduces speakers at the launch of IP Pro Bono.

NOVEMBER 2016

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OFFICIAL: IPO

IPO: Online Services and Developments The IPO, in consultation with CIPA, conducted an online survey during April 2016. The aim was to measure appetite and appeal for service development and to benchmark current service usage. A total of 188 responses were received from a representative cross section of CIPA members.

he majority of respondents (89%) were patent attorneys, with 83% representing their clients’ IP, 15% were in-house attorneys representing their employer’s IP.

Technology and channels The survey sought to identify who had responsibility for IT and attitudes to adopting technology within organisations. Respondents were asked to select a statement that best reflected their firm’s attitude and approach. The results highlighted 62% of respondents worked for a firm with a dedicated IT manager, although a patent attorney shouldered this responsibility for just under a quarter of respondents. As you’d expect, those working in larger organisations were much more likely to

have a dedicated IT manager: 77% with 11+ employees compared with 10% with between two and ten employees. Business efficiency was an acknowledged driver for over 50% of respondents, although 26% expressed an element of caution to new technology, working for organisations that tend to adopt a ‘wait-and-see’ approach. Five per cent indicated they would like to use new technology but the decision was made elsewhere. This included 16% of respondents working for larger organisations (>250 employees). [See Figure 1.] Eighty-one per cent of respondents were aware of and had used the the EPO’s eOLF software for UK national filings. A small minority (6%) were not aware of the service. These were more

likely to work for organisations with fewer employees. [See Figure 2.] Respondents were asked to arrange in order of preference the filing channels used to file GB and national phase applications. Overwhelmingly, the channel of choice was eOLF with 130 respondents citing this as their main channel. Webfiling was the primary channel for 13, with a further 36 citing it as their second channel choice. Of those using paper forms, their main source was the GOV.UK website. [See Figure 3.]

Quantifying processes and approach The IPO was keen to understand the mix of roles involved in preparing and signing off applications. The survey

Figure 1: Attitude and approach to technology

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Figure 2: Awareness of EOLF and reasons for non-use

Figure 3: Source of paper form 73.5%

23.5%

6.1% 2% Downloaded from GOV.UK Volume 45, number 11

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Generated by our internal system

Do not know

Other NOVEMBER 2016

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OFFICIAL: IPO

Figure 4: Preparation and sign off of applications

from renewals on paper forms since it launched the Webfiling option two years ago. Only 3% of renewals were made on paper forms in June 2016. When asked ‘Would you use an IPO email renewal reminder service?’ 61% replied ‘Yes’. This feature is now available if renewing using the Webfiling service. [See Figure 7.]

Document/case management software used

found there is almost a 50:50 split between attorneys submitting the application and formalities or other staff submitting. [See Figure 4.] Formats for uploading patent specifications were predominantly full text (i.e. Word document saved as a PDF) and image format (i.e. saved as an image file in a PDF) with 84% and 26% respondents selecting these formats, respectively. When asked ‘Do your applications follow the recommended text formats for specifications i.e. ST22 WIPO standard for defined fonts, paragraphs etc.?’ Just under half of respondents (48%) confirmed that this was the case, with 45% that ‘did not know’ [Base: 180].

12 months, however, over one-fifth had no plans to use the new software whilst eOLF is still supported. [See Figure 6.]

Patent renewals Approximately 50% of respondents to this question worked for organisations that outsourced their renewals. Almost onethird said they used the Webfiling service on GOV.UK [www.gov.uk/renew-patent], which can now be used to renew up to 30 patents in a single online submission. IPO has seen a steady migration away

Almost a third of respondents used Inprotech IP management software from CPA Global. Whilst 27% of respondents worked for organisations that used an in-house/bespoke solution for document and case management. Patricia IP Management software was the third most popular solution (13%). [See Figure 8.] When asked how appealing it would be to use current third party software to provide service updates/filings directly to the IPO, i.e. using an API (Application Programming Interface), there was especially strong appetite for retrieving case data with 82% finding the proposition appealing, including 60% finding it very appealing. The level of appeal was also very high for providing updates to case data and subsequently filed documents. [See Figure 9.]

Figure 5: Usage of CMS

EPO CMS usage and adoption CMS (Case Management System) is the EPO’s new web-based service that can be accessed by using the EPO smartcard. It allows users to prepare and file patent applications and work on them with other users from the same organisation. When surveyed, there were three times as many non-users (57%) compared with users (19%) but of those users of the service, address book and form templates were identified as the top two useful features. [See Figure 5.] Of the 57% that were not using CMS, 11% planned to use it in the next 22 CIPA JOURNAL

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OFFICIAL: IPO

Figure 6: Attitude to adoption of CMS

Figure 7: Patent renewal methods

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Figure 8: Document/Case management software used

Figure 9: Appetite for using current software to file with IPO

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OFFICIAL: IPO

Figure 10: Usage of search services

Usage and development The IPO was keen to understand how patent professionals are using various search services. The chart below confirmed that EPO’s Espacenet, WIPO’s PatentScope and IPO’s Ipsum services attract substantially more frequent usage than IPO’s other online search services. [See Figure 10.] The findings also showed that a significant number of current IPO search services are never used by a sizeable share of respondents. Indeed, three services – patent decisions, patents journal and patents publication enquiry service – were never used by over 40% of respondents. When asked to rate the appeal of a single-search service that allowed you to search or filter all the UK patent information available through its various services, 84% thought the proposition was very or quite appealing. When asked to rank desirable new IPO online services, 63% of respondents selected secure case-related communication as their top choice. 56% Volume 45, number 11

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chose requests for extension of time as either their first or second choice. The next most highly ranked services were email alerts for activities relating to a patent and name and address changes for one or multiple rights.

Online authentication The IPO asked respondents to tell them about the methods currently used to sign in and authenticate for online services, and those that they would specifically like to use to access IPO online services. With 93% of respondents currently using EPO smartcards, 31% confirmed they would also like to use this to access IPO online services. Other existing mechanisms that significant numbers of respondents were interested in reusing to access IPO services were the Government’s Verify service (11%) and WIPO accounts (10%). Only 22% said they would not like to use an IPO account to sign-in solely for IPO online services. The survey found next to no appetite for using social media sign-in for accessing

IPO online services with only 1% of users saying they would like to do so. The IPO would like to thank Lee Davies and Gwilym Roberts of CIPA for their support in creating this survey. Above all the IPO thanks CIPA’s members for their strong response. The findings have updated and strengthened the IPO’s understanding of patent professionals’ strong interest in and appetite for new online services. This is valuable intelligence which the IPO will use to shape and prioritise its service development work going forwards. More recently the IPO has run a focus group to gauge customer reaction to a number of concepts including a case management system. A pilot project is currently underway to evaluate the system and gauge if this is a viable solution on which to base further service development. For more information about the IPO’s work in this area and to get involved in testing or trialling service prototypes, contact customerinsight@ipo.gov.uk. NOVEMBER 2016

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OFFICIAL

IPO changes to the Manual of Patent Practice The main changes that have been incorporated into the latest version of the Manual of Patent Practice are listed below. The updated table of changes can be viewed on the gov.uk website, where all changes since July 2016 will be indicated by red text. See www.gov.uk/government/publications/patents-manual-of-patent-practice. Please note that extensive updates of the manual have taken place to reflect the The Patents (Amendment) (No.2) Rules 2016. See www.legislation.gov.uk/uksi/2016/892/pdfs/uksi_20160892_en.pdf

Paragraphs

Update

14.04.13

It is no longer necessary to file duplicate 51s when one agent replaces another.

14.93-94

A reference in a patent specification to a document containing information which is not essential for sufficiency need not be considered by the examiner; such references are allowable.

14.124

From 6 April 2017 it will no longer be possible to include omnibus claims in UK patent applications, unless this is the only way to define the technical features of the invention clearly and concisely.

15.46 17.55

To reflect that a notification of intention to grant will be issued before a patent is granted. To clarify that not all national document collections are classified to the CPC scheme, and a search should cover documents only classified to IPC.

17.115

To indicate that where a priority claim is invalid or relinquished, a top-up search before 21 months from filing may not uncover all relevant section 2(3) prior art because some documents may not yet be published.

18.81

To reflect notification of intention to grant procedure when an application is in order at first examination.

18.86, 18.86.1-

Details of the notification of intention to grant procedure.

18.86.3 19.15.1

Where a PCT application has entered the UK national phase and an international search report was issued during the international phase, the applicant may amend the specification of his own volition from the date of national phase entry until the date the first examination report is issued.

20A.03

Reflecting simplified reinstatement deadline: a reinstatement request must be filed within 12 months beginning immediately after the date on which the application was terminated.

27.11.1 32.06

Indicating that from 6 April 2017 it will not be possible to amend a granted patent to insert an omnibus claim. Rule 49(1) provides that any person may request that a correction or change be entered in the register or made to any application or other document filed at the Office in respect of his name or his address, or that a correction be made to his address for service.

75.07

When amendments have been proposed during a hearing or following an interim decision the comptroller has discretion as to whether to advertise them in the Journal.

123.10.3

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Updated in light of Cypress Semiconductor Corporation’s Application (BL O/326/16)

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OFFICIAL • REGULATORY

Re-examination of patent applications IPO practice notice, 21 October 2016: timeliness target for re-examination of patent applications Summary

Background

To meet the needs of customers, the Intellectual Property Office (IPO) prioritises re-examination of patent applications which are near the end of their compliance period1. To achieve this, our target is to consider the applicant’s response to an examination report2 within half the time remaining of the compliance period.

Historically, the IPO’s targets for reexamination defined a fixed number of months by which an examiner should consider any response, regardless of whether the compliance period was ending soon. The aim of this new variable target is to better meet customer needs by more clearly prioritising re-examination of applications which are nearing the end of their compliance period. Staff will endeavour to meet this target in all cases, however, there may be a small number of instances where this is not possible due to high demand. If you would like your application to be processed urgently, you may request accelerated processing. If the first examination of your application is accelerated, we will also carry out reexaminations on an accelerated basis3.

Detail As part of the substantive examination of a patent application an examiner will, where appropriate, issue an examination report explaining why the application does not comply with the Patents Act 1977. The applicant must respond to this report with amendments or arguments or their application may be refused. When the IPO receives a response, the examiner should consider that response within half the time remaining of the compliance period. That is, within that timeframe the examiner should perform re-examination of the application and either: issue a further examination report, issue a notification of intention to grant, or issue other correspondence concerning outstanding matters.

Examples When an applicant’s response to an examination report is received in the office: a. If two weeks remain until the compliance period ends, then re-examination can be expected within one week. b. If four months remain until the compliance period ends, then reexamination can be expected within two months. c. If two years remain until the compliance period ends, then re-examination can be expected within one year. Volume 45, number 11

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Enquiries Any enquiries about this notice4 should be made to: Virgil Scott, Patents Legal Section, Intellectual Property Office, Concept House, Cardiff Road, Newport, Wales NP10 8QQ, United Kingdom. Tel: +44(0)1633 814807. If you would like to discuss a particular application, please contact the examiner handling your case. Contact details for the examiner can be found on the latest examination letter.

FD4 pass rate IPReg and PEB collaborate on research into FD4 pass rate As previously reported1, in 2016 IPReg established a Steering Group to commission and manage independent research into the historically low pass rate of FD4 (formerly P6), ‘Infringement and Validity’. IPReg will fund this research. The Steering Group, Chaired by a member of IPReg’s Board, with membership from the PEB Governance Board, CIPA and the IP Federation, commissioned the Institute for Work Based Learning at Middlesex University to undertake this research. The research has included a tailored survey questionnaire of the 2014 and 2015 candidates, which was distributed in September. The Steering Group is delighted with the level of engagement, with 52% of candidates responding to the survey. Thank you to all of you who took time to complete the survey. The findings of the survey will inform the in-depth interviews and data analysis which are to follow. The full research report findings are anticipated in early 2017. Victoria Swan, IPReg, Director of Policy 1. http://ipreg.org.uk/ipreg-and-pebcollaborate-on-research-into-fd4-pass-rate/

Julyan Elbro, Acting Director of Patents, IPO

Notes and references 1. The compliance period is the period in which an application must be made in order for grant, otherwise it will be treated as refused. The compliance period is defined in rule 30 of the Patents Rules 2007. 2. An examination report issued under section 18(3) of the Patents Act 1977. 3. Where an as-of-right extension to the latest date for response to an examination report is requested, it will be assumed that the applicant no longer wants accelerated processing (see MoPP 18.64). 4. The notice is online at: https://www.gov.uk/government/publications/timeliness-target-forre-examination-of-patent-applications/timeliness-target-for-re-examination-of-patent-applications

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Clear off Is the clearing the way principle still relevant?

Over the last few years the English Patents Court, driven to a large extent by the high prizes at stake in the pharma field, has led the way in innovative approaches to addressing competitors seeking to break into a market developed by the patent holder, leading to concepts such as “clearing the way” before a competitor enters the market and “Arrow”1 declarations where the way is blocked by the spectre of currently not yet granted patents creating further obstacles. Liz Cohen (Associate) and Adrian Chew provide a fascinating insight into some of the unique economic drivers in the UK pharma market which make new competitors want to rush into the patent fray, and how the law is developing as the Patents Court has the opportunity to explore it further.2

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he pharmaceutical industry has always relied on patents to protect its investment in new medicines, so it should be of no surprise that around 47% of patent disputes reaching trial in the Patents Court of England and Wales since 2008 have been in relation to the life sciences3. In response, the Patents Court has sought to balance the proper incentives that patent rights provide against the concern that some patentees may gain an unjustified monopoly by maintaining patents that are ultimately found to be invalid and consequently act as a stumbling block for healthy competition. In this article we will consider the role that the “clearing the way” principle has traditionally played in the process for launching a competitor product on the UK market and whether recently reported Patents Court decisions (two decisions in Fujifilm Kyowa Biologics v AbbVie Biotechnology4, and a further decision in Actavis v ICOS5) have the potential to alter this, with consequences which perhaps were not anticipated by the Court in the context in which the decisions were made.

Background It is well recognised that the regulatory requirements for a marketing authorisation (MA) for a new medicinal product are onerous, requiring a large amount of supporting data from clinical trials which are costly, time intensive and uncertain in their ultimate outcome. In the EU, the data submitted to the regulatory authorities in support of an MA is subject to regulatory data protection (RDP) rules6. However, once the period of RDP expires, a third party may rely on the original applicant’s data to support its own MA on the basis that a bioequivalent competitor product will have the same safety, efficacy and bioavailability profile as the original product. RDP often expires before all patent protection covering the medicinal product has expired. Consequently, a third party can obtain an MA to launch a competitor product despite patents protecting the product still being in force, and hence putting them at risk of infringement proceedings and potentially a preliminary injunction or interim injunction (PI) restraining them from offering the competitor product on the UK market, if they launch immediately. www.cipa.org.uk

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Adding to this complexity is that central prosecution of European patents before the EPO and the use of pan-EU MA procedures creates a multijurisdictional dimension to any launch strategy. Further, the lucrative pharmaceutical market often means that it is rare that only a single competitor will be interested in entering a particular market, and with the rewards stacked towards the first company to launch, competitor products enter into a “race to the market”.

Clearing the way It is a particular quirk of the English NHS drug reimbursement system that once a competing product is launched, there is a window of opportunity for pharmacists to source the cheaper competitor product whilst receiving compensation at the usually higher original product’s reimbursement price. This often results in rapid market uptake of cheaper competitor products with large market gains possible in a short period of time until the price of the original product is lowered. Following the launch of a cheaper competitor product, the drug reimbursement price may eventually be lowered by the NHS to take account of the cheaper competitors, forcing the price of the original product to lower so as to remain attractive to pharmacists. The resulting price competition between competitor product(s) and the original product is often argued to result in an irreversible price spiral which cannot be remedied by the grant of a later final injunction removing the competitor product from the market until after patent expiry, so justifying the grant of a PI preventing the competitor launching at all. Conversely, competitors who wish to enter an existing

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market for a particular medicinal product and have obtained an MA to do so, have to balance the risk of not having the ‘first mover advantage’ against being sued for infringement. This is a particular challenge where these patents still have many years to run, particularly if, as recent cases have highlighted, they are still at the application stage. It is against this background of both the patentee and its potential competitor facing irreparable harm if a PI is granted, that the doctrine of “clearing the way” developed in English law, resulting in a rich history of case law which started with Jacob J (as he was then) in Smithkline Beecham v Generics (UK)7. The thinking behind the principle is the Court’s view that a potential competitor is in a position well ahead of launch of a competitor product (in many cases several years ahead) to know whether there are any patents of concern, compared to the position of the patentee whose first indication of a potential competitor launch is public notice of the competitor’s MA grant8. It is therefore incumbent on the competitor to take steps to establish whether its product does or does not infringe a valid patent. If it does not take such steps, this may count against the competitor when the Court is considering whether a PI is appropriate and particularly when considering where the balance of convenience lies. The consequence for competitor companies is that a commercially successful launch of a competitor product is predicated on it resolving any patent issues ahead of launch either by applying for revocation of the patent(s) of concern, or by seeking a declaration of non-infringement in relation to the product which it intends to launch. The Court of Appeal’s decision in Hospira v Novartis9 confirmed that it was not

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unreasonable to extend the principle of clearing the way to an interim injunction granted pending appeal, so potentially extending the time between starting proceedings and having cleared the way for launch even further. Against this, a number of recent decisions of the Patents Court have thrown into doubt whether the clearing the way principle remains relevant, particularly where a patentee has a number of patents which may read onto a competitor product, and whether complying with clearing the way principle can itself be used as evidence of a threat of infringement. In particular, two recent Patents Court decisions have brought this question to the fore.

Negative declarations The recent decision in FKB v AbbVie10 has raised the question of whether the clearing the way principle is still appropriate in circumstances where a competitor is concerned with a number of possible patents, some of which are yet to grant. It is not possible to clear the way of a pending patent application, so what is a competitor to do when it knows that, even if it were to clear the way of granted patents now, it may still be caught later by patent applications whose claims are still uncertain and yet to grant? This was the context of the FKB case which saw FKB seek an “Arrow” negative declaration11 that at the priority date of certain AbbVie patent applications, its product would have been obvious over or anticipated by the state of the art. Such declarations attempt to establish a Gillette defence, that is, the alleged infringer is practising the prior art, so if the product infringes it must follow that the patent is invalid. An Arrow declaration is a Court finding that a product or process differs from the state of the art only by non-patentable variations, such that even without looking at later patent specifications, any subsequent patents would either be invalid or noninfringed, should they be later asserted against the product or process the subject of the Arrow declaration. FKB claimed that this kind of declaration was necessary as it intended to launch a biosimilar version of AbbVie’s blockbuster Humira® (adalimumab) and wanted to clear the way so as to avoid the risks of a PI being granted to prevent its launch or it being ordered to pay damages. FKB justified seeking a negative declaration, and not waiting for the relevant AbbVie patents to proceed to grant at the EPO, due to “unusual circumstances” in that FKB alleged that AbbVie had purposely established a ‘thicket’ of European patents, including many pending divisional applications, which AbbVie allegedly manipulated to avoid the English court reaching a decision as to their validity and/or infringement. Whether or not this strategy is successful in enabling a competitor to have certainty about whether or not it is launching at risk of a PI or a subsequent large damages claim will depend upon the Court of Appeal’s decision in the appeal listed for 29-30 November 2016 where AbbVie has 30 CIPA JOURNAL

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FKB v AbbVie has raised the question of whether the clearing the way principle is still appropriate in circumstances where a competitor is concerned with a number of possible patents, some of which are yet to grant.

challenged Carr J’s decision in March this year to allow FKB’s first application for an Arrow declaration12 to proceed to trial. In addition given that the decisions to date have been interim decisions, it will be interesting to see whether the Court will ultimately feel warranted in granting such a declaration following trial. Whatever the outcome, it will be useful for practitioners to have some further guidance on whether such declarations are limited to the unusual circumstances surrounding the FKB case or whether there is a broader application. In particular the question may still remain as to the point at which a competitor is judged to have “cleared the way” effectively when there is a pipeline of patent applications of uncertain scope still to grant at an undefined point in the future.

Threats of infringement The further recent case of Actavis v ICOS has brought to the fore what the English Patents Court will consider to be a threat of infringement when considering whether injunctive relief is appropriate. In this decision, Birss J built on and applies his decision in Merck v Teva13 in considering when a grant of an MA is sufficient to establish a threat of infringement. In this case, Actavis and Mylan sought to clear the way in relation to www.cipa.org.uk

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Lilly’s dosage and formulation patents protecting their Cialis® (tadalafil) drug. A point arose in closing as to whether a competitor’s “clearing the way” action could be construed as a threat to infringe in circumstances where the competitor’s intention to launch the product was contingent on it successfully revoking the patents. Mylan and Actavis said that a “clearing the way” action is commenced in order to enter the market “not at risk” in the event of a successful revocation. Therefore, such an action should not be considered a threat to infringe and therefore should not be subject to a counterclaim for infringement. Birss J cited his decision in Merck v Teva about the need for a “sufficiently strong probability” that an injunction would be required to prevent the harm to the claimant to justify the threat to infringe (viewed in all the circumstances). Further, there needs to be a “concrete, strong and tangible risk” that an injunction is required to do justice in the circumstances. In this case, Mr Justice Birss looked at Mylan and Actavis’s objective and subjective intentions. Objectively, Actavis and Mylan had applied for and were obtaining MAs for a product for which the market is large and valuable. Obtaining an MA is expensive and time consuming and it only makes sense to apply for an MA if the party is going to sell their competitor product. Bringing revocation proceedings is “not proof of an intention to sell” but it does support the inference based primarily on the MA. Subjectively, Actavis and Mylan said their launch plans were contingent on them successfully revoking the blocking patents. This was accepted by the judge (and it was not disputed by Lilly). However, at the time of the counterclaim, there was no undertaking on offer to abandon the MA if the revocation action was lost. The judge also noted that a surreptitious launch can be attractive and profitable unless it is stopped by a PI.

Notes and references 1. See Arrow Generics Ltd v Merck & Co Inc [2007] EWHC 1900 (Pat) 2. Editor’s introduction 3. This statistic has been calculated by dividing the judgments of the Patents Court of England and Wales (i.e. excluding IPEC) since 2008 into the fields of Life Sciences, Technology, Media & Telecommunications, Energy & Mechanical Engineering, Chemical, Automotive & Transportation, and Other. 4. [2016] EWHC 425 (Pat) & [2016] EWHC 2204 (Pat) 5. [2016] EWHC 1955 (Pat)

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On the basis of the objective and subjective intentions, the judge felt that that there was basis for Lilly bringing the threat to infringe counterclaim because there was a sufficiently strong probability that a PI would be required to prevent Actavis and Mylan from infringing the patents in suit. Birss J also stated that the onus for parties to clear the way applies as much to infringement actions as it does to revocation actions so there was no reason that the issues should not be decided together, suggesting that a competitor must deal with both issues together or concede one or the other. This may make the type of declaratory relief as sought in the FKB v AbbVie case attractive, as it practically has the effective of killing two birds with one stone.

Conclusion The principle of clearing the way has become an established part of advising life sciences companies of the threat of, or desire to launch, a competitor product in the UK. Yet there remain questions over whether it is still a relevant consideration in circumstances where a patentee has a number of patents yet to grant which have the potential to read onto the product in issue. The suggestion that complying with the clearing the way principle may in itself be used as a threat to infringe has also caused concern, albeit clearly any assessment of whether an injunction is appropriate will depend on the context and circumstances of the case before the court. Looking forward, as cases involving large biologics rather than small molecule medicines make their way into the court list, the issue as to whether the applicability of the interchangeability rules will make irreparable harm comments less evenly balanced so that the clearing the way principle is less important remains to be seen. Liz Cohen is a partner and Adrian Chew an associate at Bristows LLP

6. Ed: Regulatory Data Protection (RDP) is a form of protection for data submitted in support of safety and efficacy by the original applicant of a marketing authorisation for a new drug. In the EU, RDP prevents a new market entrant from relying on data submitted by the first MA holder to support its own application for marketing authorisation for an extendable period of eight years from the date the first MA was granted, and an additional two years during which a MA application relying on such data can be assessed but not granted. In the pharma field, RDP is emerging as a powerful quasi-intellectual property right. See for example: https://en.wikipedia.org/wiki/ Test_data_exclusivity

7. 2001 WL 1346930 8. Although it was in the later case of SKB v Apotex [2002] EWHC 2556 (Pat) where Jacob J. applied the same reasoning and first coined the phrase “clearing the way”. 9. [2013] EWCA Civ 583 10. [2016] EWHC 425 (Pat) and [2016] EWHC 2204 (Pat) 11. So called because of its first appearance in Arrow Generics Ltd v Merck & Co Inc [2007] EWHC 1900 (Pat) 12. [2016] EWHC 425 (Pat) 13. [2013] EWHC 1958 (Pat)

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China update Competition and anti-trust: NDRC Abuse of IPR Guidelines

Competition and anti-trust issues are becoming increasingly important in relation to IP generally, with issues frequently being raised in the EU in at least two key areas: telecommunications and pharmaceuticals. In the telecoms field, issues such as designating, enforcing and licensing standard essential patents are repeatedly in the news across Europe; and in relation to pharmaceuticals, the EU Commission has had an active interest in “evergreening”, generic product market entry and pay-for-delay agreements, as well as abusive establishment of IPRs. IP practitioners need to keep in mind the impact of what they do in relation to anti-trust laws. This article by Toby Mak (Foreign Member), summarises the Abuse of IPR Guidelines in China. There are close analogies with EU competition law, and this serves as a reminder not just that competition law issues are important in such a major market as China, but also a checklist of points which are equally important in the EU.1

n December 2015, the Chinese National Development and Reform Commission (NDRC) published their proposed Abuse of IPR Guidelines (the proposed Guidelines) for consultation. Compared to the draft Guidelines (published in October 2015) there were many significant changes. Some readers may not be familiar with the Chinese NDRC, which manages many economic functions of the State Council, including: formulating and implementing strategies of national economic and social development, annual plans, medium and long-term development plans; monitoring macroeconomic and social development trends and providing forecasts. One of its key responsibilities is the enforcement of the Chinese Anti-monopoly Law, particularly issues regarding standard essential patents. The proposed Guidelines are intended to provide guidance on when enforcing IP, particularly patents, would be considered to violate the Antimonopoly Law. However, as the reader will see below at times the guidance is less than clear. The Guidelines start with an explanation that the purpose of the Anti-monopoly Law is to maintain market competition, motivate innovation, and enhance technology dissipation and utilization, while intellectual property law’s goal is to protect and encourage innovation so as to enhance market competition. The Guidelines then state that the Anti-monopoly Law is not applicable to the enforcement of IP unless the enforcement of IP violates its original goal (i.e. to protect and encourage innovation), which could eliminate and/ or restrict competition. The Guidelines then provide a very comprehensive set of rules that try to provide better certainty and reasonable expectations on when enforcement of IP would be considered as violating the Anti-monopoly Law. The Guidelines have the following sections that are directly relevant to IP: 1. Basic questions. 2. IP agreements that may eliminate and/or restriction competition. 3. Concerning Acts of Abuse of Dominant Market Position of IP.

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Basic questions

COMPETITION

•

This section states that the following principles should be considered when analyzing whether the enforcement of IP violates the Anti-monopoly Law: • • •

•

Characteristics of IP should be considered together with standards on types of assets other than IP. IP owners will not be considered as being dominant by simply owning IP. Acts should be analyzed on a case-by-case basis, thoroughly considering how the enforcement of IP affects competition and innovation. Facts, evidence and reasons of enforcing IP provided by IP owners should be thoroughly considered.

Market definition is essential to the determination of antimonopoly activities. The Guidelines specifically state that as IP can be used in products and services and can also be the object of trade itself, only analyzing the product and/or services market cannot fully evaluate the influence of IP on competition. Therefore, the relevant technology market should also be involved, including influence on research investment and/or innovation activities. More specifically, the relevant technology market refers to the market formed due to competition between the technology in question and ‘substitutable’ technology. The Guidelines state that the following factors should be considered in determining “substitutability”: • • • • •

nature of the technology; use of the technology; the level of licence fees; remaining term of IPRs applicable to the technology; the possibility and costs of switching to “substitutable” technology.

The Guidelines then set out the following factors which are to be considered when performing a competitive analysis.

“Number share” (why suddenly change to number share? Interesting……) of the relevant technology in the replaceable IP.2

Analysis on elimination and/or restriction of competition by the enforcement of IPRs • • • • •

Elimination or obstruction to existing and potential competition in the relevant market. Control of resources like key technologies, setting or raising barriers to entry in the relevant market. Restricting technology innovation, promotion and development. Restricting the development of industry. Restrictions on levels of production, coverage of territory and customer groups.

Promotion of innovation and enhancement of efficiency by enforcement of IPRs • • •

•

Causal relationship with promotion of innovation and enhancement of efficiency. Levels of promotion of innovation and enhancement of efficiency. Whether serious restrictions on competition in the relevant market, or hindrance to innovation of other operations would be imposed. Whether consumers could enjoy benefits from the promotion of innovation and enhancement of efficiency.

IP agreements that may eliminate and/or restrict competition The Guidelines state that it is more likely for IP agreements between competitors to eliminate and/or restrict competition than those between non-competitors. The Guidelines also specifically identify the following factors covering various types of agreements to be considered in evaluating whether competition would be eliminated and/or restricted. On the other hand, the Guidelines accept that these agreements generally benefit competition by enhancing efficiency and, in particular, reducing transaction costs.

Analysis on competition in relevant market • • • • • •

Market status of IP owner, competitors, and trading partners. Concentration of the market. Ease of entering the market. Reliance on IP by the trading partner. Characteristics and development of the industry. Technology status of the relevant market, including technology developments, availability of substitutable technology and IP owners’ market share.

Agreements between competitors Joint development • • •

Whether the development of new technology or products in an unrelated field is restricted. Whether cooperation with third parties to develop new technology or products in an unrelated field is restricted. Whether ownership and enforcement of IP derived from new technology or products in an unrelated field is restricted.

Calculation of market share

Patent pools

•

Share of licensing income of the relevant technology in the relevant market. Share of products/services using the relevant technology in a downstream market.

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Whether the pool is formed by inter-changeable technologies. Whether members of the pool are restricted to licensing patents only within the pool. NOVEMBER 2016

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•

Cross licensing

Interestingly, the Guidelines stated that such clauses could avoid abusive litigation and enhance transaction efficiency. This is interesting from a patent law perspective as such clauses are considered as contrary to patent law, which allows everyone to challenge the validity of a patent. Further, all of the above, in my view, should either be considered as illegal, or should be determined at proper invalidation proceedings. It is not sure why the Guidelines do not simply state that such clauses should not be allowed.4

• •

Other restrictions

•

Whether substitutable technologies or entrance of other operators into the relevant market are excluded. Whether members of the pool share the following information on products that are not essential to the pool: prices, yields, market shares and the like. Whether the development of new technologies by members of the pool is restricted.

COMPETITION

Whether the agreement is a sole licence. Whether agreement forms a barrier to third parties entering the relevant market. Whether the agreement hinders competition of products or services in the downstream relevant market.

Such restrictions include: •

Standard setting

•

• • •

• •

•

Whether specific operators are excluded. Whether schemes from specific operators are excluded. Whether there is an agreement not to practice other competing standards. Whether IP included in the standard has an essential and reasonable constraint mechanism (what does this mean – does it mean FRAND licensing?).3.

Agreements between non-competitors Price restriction – ﬁxing sale and resale price •

These, including, for example, fixing the lowest price, would be considered as anti-competition acts.

With regard to the above restrictions, the following factors should be considered: • • •

Exclusive ‘grant-back’ licence of improvements made by licensee

•

• •

•

Whether licensor has provided substantive consideration for the exclusive grant-back licence. Whether licensor and licensee have requested exclusive back licences from each other. Whether an exclusive back licence would result in convergence of improvements or new developments of the relevant IP into a single operator, so that this single operator could obtain or enhance control over the relevant market. Whether an exclusive back licence would reduce the interest or eagerness of a licensee to make improvements.

Validity of no-challenge clauses • • • • • •

Whether licensor requests all licensees not to challenge the validity of its IP. Whether such a clause is in a royalty bearing licence. Whether it would hinder entrance to a downstream market. Whether such clauses would hinder practice of other competing IP. Whether the licensor obtained the IP by incorrect or misleading information. Whether the licensor made the licensee accept such a clause through improper means.

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Restricting a licensee to use the licensed IP in a restricted field. Restricting the sales channel, or the scope or target customers of the licensee for products using the relevant IP. Restricting number of products manufactured or sold. Forbidding the licensee from obtaining licences from third parties and/or use competing IP, or from manufacturing and/or selling products competing with licensor.

Content, scope and implementation of the restrictions. Characteristics of products using IP. Whether the same or similar restrictions are implemented by other owners of competing IP. Whether such restrictions could enhance practice and development of licensors. Whether such would hinder practice and development of other IP.

Agreement waiver This section explains the factors to be considered for an IP agreement to benefit from waiver in accordance with the provisions of Article 15 of the Anti-Monopoly Law: the importance of positive effects of this agreement in facilitating innovation and improving efficiency should be particularly considered. In particular, if an IP agreement satisfies one of the following conditions it could be presumed that such an intellectual property agreement can benefit from waiver according to the provisions of Article 15 of the AntiMonopoly Law, unless it violates Article 13 or Article 14 of the Anti-Monopoly Law, or the pricing restrictions listed in this Guidelines: 1. In respect of competitors – their cumulative market share is not more than 15%; 2. In respect of non-competitors, the market share of each operator is not more than 25%.5

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CHINA UPDATE

Abuse of a dominant market position To analyse whether enforcement of IP constitutes abuse of a dominant market position, it is necessary to define the relevant market, then to determine whether the operator has a dominant market position in the relevant market, and then to analyse whether that operator’s enforcement of its IP constitutes an abuse of a dominant market position on a caseby-case basis.

COMPETITION

determining whether an operator is imposing unfairly high licensing fees, the following factors can be considered: • • • •

Determination of dominant market position The Guidelines state (correctly and in line with the EU and US position) that an operator’s possession of IP does not mean that it must have a dominant market position. The following factors can also be specifically considered: • • •

The possibility of a trading counterpart switching to alternative IP and the cost of switching. The degree of reliance of the downstream market on the products provided by using the relevant IP. Counterbalancing the capability of trading counterpart to relevant market operators. (For example, this may include the consideration of customers, who have power in themselves which prevents the operator from behaving independently of its competitors and customers.)

When identifying whether a standard essential patent (SEP) operator has a dominant market position, the following factors may then be considered: • • • • •

The value and degree of application of the relevant standards in the marketplace. Whether an alternative standard exists. The degree of reliance of the industry on the SEPs and the costs of switching to an alternative standard. The evolution of different generations of standards and their compatibility. The possibility of substitution of relevant technologies that are adopted into the standard.

• • •

When analysing and identifying the licensing of SEPs at an unfairly high price, the overall cost of licensing fees for products meeting the relevant standards and their effects on the normal development of relevant industries is also to be considered. Refusal to license Again, the Guidelines acknowledge that operators are not obliged to license their IPRs to competitors or other trading counterparts. However, if operators in a dominant position refuse to license without justifiable reasons, it may eliminate and/ or limit competition in the relevant market, damage consumer or public interest. When analyzing whether there are justifiable reasons to refuse to license, the following factors can be considered on a case-by-case basis: • •

•

Abuse of a dominant market position

•

In considering whether the enforcement of IP of an operator in a dominant position constitutes act of abuse, the Guidelines state that the following factors are relevant:

•

Licensing IP at unfairly high prices The Guidelines note that the operator has a right to receive a reasonable, incentivizing return with regard to its intellectual property, to recover research and development investment so as to continue to innovate, and that the right to licensing fees is not limited and restricted by the Anti-Monopoly Law. However, if an operator abuses its dominant market position by licensing IP at an unfairly high price, it may eliminate and/or limit competition, damaging the interests of consumers. When analysing and Volume 45, number 11

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Whether the claimed licensing fees of the operator obviously do not correspond to the value of the licensed IP. The licensing obligations of the relevant IP. The licensing history of the relevant IP or comparable standard of licensing fees. Whether the operator charges licensing fees beyond the geographical scope of the IP rights or beyond their covered product scope. Whether the operator charges fees on expired or invalid IP in package deals. Whether an IP licensing agreement contains other licensing conditions that result in an unfairly high price. Whether the operator uses improper means to impose licensing fees on licensees.

•

The licensing obligations of the relevant IP. Whether the relevant IP is essential to enter the relevant markets, and whether there are alternative IPRs reasonably accessible. How licensing of the relevant IPRs influence, and if so to what degree, the innovation of operators. Whether the rejected party lacks intention and ability to pay reasonable licensing fees. Whether the rejected party lacks essential guarantee of quality and technology to ensure proper exercise of IPRs with respect to safety and properties of products. Whether a rejected party’s exercise of IPRs has negative effects on energy saving, environmental protection and other social/public interests. (This is interesting. As the readers may know China is suffering from severe pollution issues, and a lot of them are due to Chinese factories not observing environmental regulations. Therefore, could a licensor successfully rebut a refusal to license allegation by showing that the alleging prospective licensee – a Chinese factory – is polluting the environment?) NOVEMBER 2016

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CHINA UPDATE

Tying The Guidelines define tying as requesting a trading counterpart to accept the licence or transfer of other IP or to accept other products when an operator is licensing or assigning IP. The Guidelines note that tied sales lower transaction costs and motivate the improvement of products to a certain extent. However, they also note that tied sales by an operator in a dominant position without justifiable reasons may eliminate and/or limit competition. When analysing whether tied sales constitutes the act of an abuse of a dominant position, the following factors may be considered:

COMPETITION

•

• • •

Whether it is against the will of the trading counterpart. Whether it conforms to industrial standards and consumer habits (one might question this: if everyone does it, then is it really right?6). Whether it disregards property differences and reciprocal relationships of the relevant IP or products. Whether it is essential to achieve compatibility of technologies, product safety, and product quality and so on. Whether it eliminates and/or limits trading opportunities of other operators.

Attaching unreasonable trading conditions The following restrictions attached to trades with regard to IP by an operator in a dominant position may eliminate and/or limit competition: • •

• • •

Exclusive grant-back of improved technology developed by the licensee. Prohibition on challenging the validity of licensed IP (this seems to contradict what the Guidelines say in the section “Validity non-challenging clause”, see page 34) or to file IP infringement litigation against the IP (I believe the wording should be “… against practising the IP”, as the IP itself would not infringe another IP). Limitation on using competing technology or products. Asserting rights to expired or invalid IPRs. Prohibiting a trading counterpart from trading with third parties, or imposing limitations on the trading conditions of the trading counterparts’ trades with third parties, such as selection of third parties, territorial conditions, or the like.

Differential treatment The Guidelines acknowledge that an IP operator has a right to impose different permissions and conditions on respective licensees. However, when operators with market dominance, without justifiable reasons, impose different licensing conditions on licensees with essentially identical conditions, it may eliminate and/or limit competition. When determining whether the differential treatment constitutes an abuse of a dominant position, the following factors can be considered: 36 CIPA JOURNAL

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When considering whether the licensee’s trading conditions are substantially the same: ▷ is the scope of IP really of the same; and ▷ are the products or services provided by the use of the IP by different licensees the same. When considering whether the licensing conditions are substantially different, apart from analysing the provisions of the licensing agreement per se, it is necessary to consider further the significant influence of other business arrangements reached between the licensor and the licensee on licensing conditions. Whether an apparent negative impact on the participation of licensees in the relevant market is produced.

Injunctive relief The Guidelines note that injunctive relief is a means of relief to SEP owners to protect their legitimate rights according to the law. However, when an SEP owner in a dominant position compels a licensee to accept its unfairly high licensing fees or other unreasonable licensing conditions using injunctive relief, this can eliminate and limit competition. When analysing and determining whether an application for injunctive relief from an SEP owner eliminates and/or limits competition, the following factors can be considered: •

• • •

Behaviour of the negotiating parties during negotiations, and whether genuine willingness to negotiate is demonstrated. Undertaking borne by the injunctive relief of the relevant SEPs.7 Licensing conditions proposed during negotiations by the parties. Impacts of injunctive relief petition on licensing negotiations, relevant markets and competition in the downstream market and consumer interests.

Observations As I said before, anti-monopoly law is an area that, like many IP practitioners, I am not particularly familiar with. I have tried in my analysis but I would be grateful for any feedback. After reading the Guidelines, I believe the following keywords and phrases are likely to raise red flags: 1. Dominant market position. 2. Standard essential patent. 3. Restrictions on licensee activities, including price, territory of operations. 4. Tying. 5. Licensing of lapsed/expired/territorially irrelevant patents. 6. Restriction on development on new technologies by licensee. 7. Compulsory back licensing/assignment (grant-backs) of developments by licensee, particularly without proper compensation. www.cipa.org.uk

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CHINA UPDATE

If one has 1 and/or 2 above, showing there are other technology alternatives, best still actually competing ones, could help. Otherwise, there is very little one could do about these factors as these are consequences of good technology. On the other hand, more attention should be put on 3-7, which could be relatively easily avoided, in particular 5. It is surely understandable that a patent licensed today may become lapsed or expired in a few years. Therefore, clauses could be considered such as: “patent(s) that become not in force, due to whatever reasons, are automatically excluded from the licence, and the licensor is obliged to open negotiations with the licensee to reduce licence fees for not-inforce patent(s).” The two big “NOs” that many licensors would like to impose, which would backfire on them in China, are 6 and 7. My advice is to avoid these. As in other areas of life, the Chinese government is trying to impose a set of rules on civil activities, hoping to regulate a living and always evolving “monster” called “market”. We have to wait and see whether this will work, but judging from what happened to the Chinese stock market… Sorry did I say Chinese stock market? In preparing this article, I have had some assistance from competition lawyers at Bristows LLP in London. They have observed that there appear to be many parallels between the Chinese and European anti-monopoly and EU competition law regimes governing the exercise of IPRs. Interestingly, the Chinese regime explicitly sets out guidance on some of the ‘hot topics’ in focus in Europe for example in relation to SEPs and injunctive relief. This topic has been the subject of considerable

Notes and references 1. Editor’s introduction. 2. This is a direct translation of the Chinese text. 3. Editor: I can see that this may form the basis for development of some tests around the contentious question in the EU of whether a right is essential and whether the terms on offer are FRAND terms. 4. Editor: This appears to be directed to creating a stronger sanction against abusive practices: perhaps closer to the US approach, where an abuse of the power given by patent rights may give scope for challenge of the right itself, rather than just reliance on it. 5. Guidelines are slightly lower than their EU counterparts in the Technology Transfer Block Exemption (‘TTBE’). The TTBE provides a ‘safe harbour’ (i.e. a presumption of competition law compliance) for agreements that satisfy certain requirements including market share thresholds (a combined market

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debate in Europe over the past few years, concluding with the recent CJEU ruling in Huawei v IDC. Bristows mention that the Chinese guidance appears generally to be aligned with the CJEU decision although it of course remains to be seen how member states apply the CJEU ruling and the content of the final text of the IPR Guidelines and how they are applied in China. However, there are also some interesting differences between the Eastern and Western regimes. The Chinese regime for assessing whether agreements can be exempted from the anti-monopoly rules owing to the contracting parties’ market shares is more conservative than its European counterpart contained in the Technology Transfer Block Exemption.8 Interestingly, there is also a divergence on the treatment of certain licensing issues such as the exclusive grant back of licences to improvements and whether they should be subject to antitrust scrutiny under the law relating to dominance or anticompetitive agreements.9 The draft IPR guidelines are also much more explicit on certain issues than their European counterparts, particularly in relation to abuse of dominance issues such as excessive royalties and refusals to license. Again the approaches contained mirror the general direction of the law in Europe10 in these areas, but it is interesting to see that the draft IPR guidelines go into this level of detail. It certainly appears that antitrust law in the IP sector could become a growth area in China as the legal framework develops. Watch this space! And bear in mind that antitrust issues are becoming increasingly significant in the Chinese market. Toby Mak, Tee & Howe Intellectual Property Attorneys.

share of 20% for agreements between competitors and individual market shares of 30% for agreements between noncompetitors). So the IPR Guidelines are more conservative – fewer agreements will benefit from waiver from Article 15 of the AntiMonopoly Law. 6. Editor: The countervailing view is that if everyone does it then, including such a provision is not anti-competitive and perhaps it can be deduced that in fact it is an effective market practice at lowering overall costs. 7. A literal translation of the wording. 8. Under the IPR Guidelines for agreements between competitors the cumulative market share must be 15% or less and for agreements between non-competitors the market share of each party must be 25% or less. Under the European TTBE the respective market shares are a combined market share of 20% (for competitors) and an individual market share of 30% (for non-competitors).

9. In Europe, the exclusive grant back of licences to improvements are expressly dealt with under the TTBE. Such a term will not be presumed to comply with EU competition law and will need to be individually assessed to see if it has the potential to negatively affect competition. It is of course in theory possible for the inclusion of such a clause in an agreement to be held as an abuse of dominance by the benefiting party in certain circumstances, however, these types of provisions are generally looked at under Article 101 TFEU (which relates to anticompetitive agreements) as opposed to Article 102 TFEU (which relates to abuse of dominance). In contrast such grant back provisions are considered under the abuse of dominance law in the draft Chinese IPR guidelines. 10. As developed in case law as opposed to formal guidelines on the application of Article 102 TFEU.

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Specialist IP tribunals in Pakistan Naeema Sadaf and H. Zafar Iqbal discuss the impact of new specialist intellectual property tribunals in Pakistan.

orldwide, the concept of establishing special intellectual property (IP) courts and tribunals has emerged as one of the strategies to deal with the complex and technical nature of IP litigation; and Pakistan is no exception. In the last three decades, IP infringement proceedings had been receiving a secondary treatment before the regular courts in Pakistan. This has resulted in a substantial backlog of IP cases in the courts. On the other hand, since at least 2000, various conflicting provisions in the TRIPs-compliant IP laws of Pakistan, especially the patent law, have resulted in an increased number of IP cases being litigated and consequently disorderliness in the courts. The situation was inflamed when, by the end of 2014, about 70% cases in pharmaceutical and biotechnology patent disputes, badly needed the specific expertise and detailed attention of the specialized judges. In September 2015 and in response to these perceived problems, the Federal Government of Pakistan, by a gazette notification, has constituted IP tribunals as a specialized substitute for the District Courts. The very aims and objectives behind conceptualizing and constituting IP tribunals was thus to create a judicial mechanism that can address the technical and complex nature of IP laws; ensure adjudication of IP cases with speed, economy, consistency, predictability and quality; and in parallel to reduce the litigation burden (caseloads) on the regular courts. The IP tribunals were created by the Intellectual Property Organization of Pakistan Act, 2012 (the Act). Section 18(1) states that: “All suits and other civil proceedings regarding infringement of intellectual property rights shall be instituted and tried in the tribunal”.

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Section 18(2) goes on to state that: “the tribunal shall have exclusive jurisdiction to try any offence under intellectual property laws”. In terms of section 17(3) and (4) all proceedings before the tribunal are deemed to be judicial proceedings within the meaning of sections 193 and 228 of the Pakistan Penal Code1 and that no court other than a tribunal can have or exercise any jurisdiction with respect to any matter to which the jurisdiction of the tribunal extends under the Act.

Editor’s summary Specialist IP jurisdictions are becoming an increasing focus worldwide (see June [2016] CIPA 63). The authors explain Pakistan’s new specialist IP tribunals, which have exclusive first instance jurisdiction in civil IP infringement matters, as well as certain criminal IP matters. This article provides details of the new jurisdiction and expresses the authors reservations about the lack of a requirement to appoint judges with specialist IP experience to preside, especially in relation to the handling of patent cases which are already creating a significant backlog in Pakistan, and the risk of a backlog of cases on appeal being created, as well as a continuing need to address administrative procedures relating to IP.

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PAKISTAN

Composition of the IP tribunals

Procedure before the IP tribunals

In contrast to the regular courts, IP tribunals are specialized courts with independent judicial power to adjudicate disputes and administer justice concerning infringement of intellectual property rights (IPRs) exclusively. IP tribunals have all the trappings of a regular court except they have specialized jurisdiction and are not a part of the regular court system. They can exercise jurisdiction within the territorial limits defined by the Federal Government2 and hold sittings at a place within their territorial jurisdiction as determined by the Federal Government. Whilst, the Federal Government may establish as many tribunals as it considers necessary to exercise jurisdiction under the Act3, so far only three tribunals have been established; one for each of the two provinces of Punjab (Lahore) and Sindh (Karachi); and one for Islamabad (capital). Each tribunal consists of a presiding officer, appointed by the Federal Government after consultation with the Chief Justice of High Court concerned4. To preside over an IP tribunal, a person must have either served as a judge of High Court; a District and Session Court; or be an advocate qualified for appointment as a judge of the High Court. Being specialized tribunals, and, one might presume a presiding officer must either be a specialist or at least have adequate legal training and experience in IP law. Instead, however, within the meaning of the Act5, a presiding officer does not need to be an IP specialist or have any legal training and experience in IP: it is enough if they have a suitable qualification and experience in law. This is confirmed from two of the three appointments made so far. The District and Session Judge, and the Judge Accountability Court-II are both lacking the required experience and knowledge needed to preside over the complex IP matters especially the patent infringement proceedings.

The Act6 empowers the Organization (IPO-PK) to prescribe rules, subject to the approval of the Federal Government, for carrying out the purposes of the Act. However, no special rules for dealing with the IP litigation within the special jurisdiction of the tribunals have been prescribed so far. On the other hand, section 17(2) envisages that in all matters with respect to which the procedure has not been provided for in this Act, the tribunal shall follow the procedure laid down in the Code7. This suggests that for IP suits and other civil proceedings before the tribunal, there is no shift or change in the normal rules of evidence and the civil procedure, previously followed by the regular courts. The tribunal has the power to summon witnesses; to examine them on oath; order the discovery and production of any document or material objects; to receive evidence on affidavits; to issue commissions for the examination of any witnesses or documents; and to exercise jurisdiction with respect to any matter to which the jurisdiction of the tribunal extends under the Act. However, when trying an offence under IP laws, the tribunal is directed to hear the proceedings from day to day and dispose of the same in 90 days8. This shift from the “periodic hearings” provided under the normal rules of the Criminal Procedure Code to the so-called “continuous hearings” apparently seems to remedy the delays in the decision-making process but from the practical side, managing an increasing number of offences – especially under copyright, and trade mark law – seems difficult to achieve by a single judge.

IP experts for technical assistance The law governing IPRs is complex, but the technology involved is even more so – especially in the areas of biotechnology, cell biology, and electronics. Judges frequently deal with difficult questions of scientific or technical nature to which they generally have no training. Consequently, during trials, the role of expert witnesses have particular significance. In many situations, taking advantage of the claims language, especially in the cases of widely drawn generic claims, expert witnesses often present contradictory positions that inevitably may challenge having one acceptable answer. In order to address these complexities, tribunals are authorised to seek the assistance of experts, experienced in the technical aspects of IPRs. Nevertheless, this technical assistance does not discharge the ultimate responsibility of a judge to decide the matter on merit. Volume 45, number 11

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Transfer of proceedings: Power to proceed de novo Since the date of constitution of the IP tribunals, all suits or other proceedings relating to IPRs, pending in any court within the jurisdiction of a tribunal, have been transferred to the tribunals. And since then all transferred proceedings are being heard and disposed of by the tribunals from the stage the proceedings had reached prior to the transfer. In transferred proceedings, the tribunals are not bound to recall and rehear any witnesses, and may act on the evidence already recorded or produced before a court from which the proceedings have been transferred 9. This suggests that tribunals are given the liberty either to hear or recall any witness previously heard or called by the District Court to proceed with and decide any matter de novo. However, to the extent of decisions of High Court deciding a question of law or which is based upon or enunciates a principle of law10, these are binding on tribunals and they cannot deviate unless the decision is incorrect in its underlying legal approach. NOVEMBER 2016

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Limitations on the tribunal jurisdiction Although the tribunals enjoy wide exclusivity and jurisdiction, there are limitations: 1. The jurisdiction shall not extend to proceedings other than infringement proceedings. Within the meaning of the Act11; and unless otherwise suggested by way amendment in the Patents Ordinance, 2000 (the 2000 Ordinance), the tribunal has exclusive jurisdiction regarding “infringement of IPRs” only. This apparently provides that the tribunal’s power to exercise criminal and civil jurisdiction does not extend to: i. Suits seeking determination of inventorship, ownership, or correction of inventorship. ii. Suits for infringements where the defendant counterclaims revocation of patent (the so-called double-track proceedings). iii. Applications seeking rectification of the register of patents; trade marks, etc. iv. Appeals against the decisions of the Controller and Federal Government pending before the High Court. v. Petitions for cancellation of design registration.

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Any offence not falling within the scope of IP laws, tribunals have no jurisdiction to try that offence.

Institutional independence and impartiality While there are no guidelines for assessing “institutional independence”, it is generally deemed to be absent from an institution where a federal minister has the power to dismiss, remove, or transfer members of that institution. On the other hand, the provisions requiring it to finance itself; at least in part from any fee or fines that it imposes under the law or any other related legislation, infringe “impartiality”. The IP tribunals have wide ranging powers and jurisdictional independence; but the fact that adjudication is entrusted to a non-specialist judge, without the knowledge and experience needed to preside over complex IP matters, especially in cases of patent litigation, may erode their individual independence, professional integrity, and wider institutional independence. Notwithstanding this,

Proceedings that do not concern with the determination of infringement and other related issues in IP, the proper forum shall continue to be the High Court. 2. Power to try any “offence” shall not go beyond the definition of “offence” under IP laws. Within the meaning of the Act12, tribunals have the exclusive jurisdiction to try “any offence” but simultaneously this power is limited by the types of offences defined by IP laws in the form of certain “acts” such as: • • •

•

Infringement of copyright work under the Copyright Ordinance, 1962. Counterfeiting of trade mark or property mark under sections 478-489 of the Pakistan Penal Code. Contravention of secrecy provisions, making false entry in the register of patents, making false representation that an article is patented, wrongful use of words “patent office”, refusal or failure to supply information or furnishing false information, failure to file a statement relating to a foreign application, and practicing patent law by non-registered patent agents under sections 71-77 of the 2000 Ordinance. Similar offences under sections 27-30 of the Registered Designs Ordinance, 2000; and sections 98-107 of the Trade Marks Ordinance, 2001.

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faint glimmers of the Constitutional guarantee of judicial independence and impartiality seems to be alive if the following facts are taken into consideration:

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4. Tribunals have power to order prompt and effective provisional measures (such as ex-parte ad-interim injunctive relief) to create an effective deterrence against infringement and to preserve the relevant evidence.

applicable in the Civil Courts, there is no apparent risk of weakening of the judicial system in Pakistan. The South African Department of Trade and Industry has introduced its own “informal” rules of procedure in the Copyright Bill that are at odds with South Africa's obligations under the WTO agreements; and could harm the judicial system and economic growth through a decline in innovation.14 What is lacking, but critical to meet the objectives behind introducing the tribunal system in Pakistan, is the appointment of presiding judges with technical backgrounds or specialist training in IP law. We have seen that there are technical judges sitting in the specialised IP courts/ tribunals around the world – e.g., the Patent Court of the High Court and the Intellectual Property Enterprise Court (UK); the Intellectual Property and International Trade Court (Thailand); and the Copyright/Patent Court (South Africa). In these examples specialist judges have helped deliver speedy decisions with consistency, predictability and quality. The existing caseload on the Pakistani courts cannot sustain the loss of further years in educating the non-specialized presiding judges, or wait for their necessary judicial exposure to IP infringement cases to attain the required specialty or expertise. Ideally, only those judges that already have judicial exposure to IP law in the High Court or the District and Session Courts should preside over the IP tribunals; but practically, in some jurisdictions, this may result in paucity of expert judges in the High Courts to hear appeals from tribunal decisions.

Right of Appeal

Up-and down-sides of special IP tribunals

Under section 19 of the Act, any person aggrieved by the final judgment and order of the tribunal may, within 30 days of the final judgment or order, prefer an appeal to the High Court having territorial jurisdiction over the tribunal. Contrasting the position under the 2000 Ordinance, the right of appeal is created as a right expressly granted by the law. Unless expressly restricted in scope or otherwise, this statutory right of appeal confers the right of re-hearing of the whole dispute by the appeal court.

Whilst the constitution of IP tribunals is expected to be a paradigm shift in the way IPRs were litigated in the past, the IP community has raised doubts over their success within the existing judicial system. Criticisms include: lack of expertise in all aspects of IP, especially patents; high threats to law development process; concentration of power; deterioration in the quality of decisions; passivity; inherent bias; and ultimate weakening of IP system and undermining of technological innovations and industrial growth. Whilst these doubts foreshadow the presence of inherent weaknesses in the existing judicial system in Pakistan, nevertheless about the newly constituted IP tribunals, these are substantial. For the sake of reference, in patent cases, determining infringement extensively involves: i) a scientific or technical analysis work; and ii) need to ascertain whether the act complained of falls within the scope of the claims. Of further relevance is the task of ‘claim construction’, which is central to all patent litigation aspects from claims validity, enforceability, and remedies to the determination of “anticipation” and “obviousness”. Understanding various types of claims (i.e., product, process, and product-by-process), especially in pharmaceutical and biotechnology patents, is therefore critical to undertake the claims construction process. Undertaking infringement

1. The tribunal system is a creation of the Federal Government (Minister of Industries and Production) but the presiding judges have been appointed in consultation with the Chief Justice of the High Court concerned. 2. In all the proceedings before the tribunal, the normal rules of evidence and civil procedure, and principles of natural justice apply. This will ensure exclusion of unreliable or inadmissible evidence; and uphold the presence of effective judicial support needed for speedy economic development. 3. Unless a proper conduct of the hearing requires the exclusion of public or any other specified group of people (e.g. journalist or a representative of the adverse party in the ex-parte ad-interim injunctive relief proceedings), hearings will generally be conducted in public. This will preserve an appropriate level of external scrutiny to ensure impartiality.

Other special IP tribunals Contrasting the precise role of special IP tribunals in the existing judicial hierarchy in Pakistan with other jurisdictions (such as India), there are no apparent issues of jurisdictional overlap between the tribunals and regular courts, duplicity of rectification proceedings, and the risk of two potentially conflicting decisions13. This was the case in India after the establishment of the Intellectual Property Appellate Board (IPAB) as a specialised alternative tribunal to the High Court in trade mark and patent infringement cases. More so, unlike the position in South Africa where new administrative and executive controlled IP tribunals, constituted under the amended Copyright Bill 2015, are not subject to procedure Volume 45, number 11

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analysis work requires specialized training and practice. As the US Supreme Court affirmed in a unanimous opinion in Markman v Westview Instruments15 that: “…Patent construction, in particular, is a special occupation, requiring like all others, special training and practice. The Judge, from his training and discipline, is more likely to give a proper interpretation to such instruments than a jury…”. How a judge (or IP tribunal) interpret a claim to assess the scope of monopoly, greatly shapes the outcome of patent infringement proceedings. Claim construction, being a matter of law, an expert witness may support the process, but it is ultimately for the judges to perform the task. Unfortunately, the Government has constituted the IP tribunals without attaching due significance to the technical and complex nature of patent cases (over other area of IP). Where this laxity has raised serious concerns over the strength of the patent system in Pakistan, this may further create serious problems in the judicial administration such as hurdles in the sequenced, staged and timely attendance of the ongoing and future patent infringement disputes. Notwithstanding the substantial nature of the doubts

References 1. Act XLV of 1860 2. Section 16(2) of the Act 2012 3. Section 16(1) of the Act 2012 4. Section 16(4) of the Act 2012 5. Ibid 6. Section 35 of the Act 2012 7. Code of Civil Procedure 1908 (Act V of 1908); and Code of Criminal Procedure 1898 (Act V of 1898) 8. Section 15 of the Act 2012 9. Section 17(7) of the Act 2012 10. Article 201 of the Constitution of Pakistan 1973 11. Section 18(1) of the Act 2012 12. Section 18(2) of the Act 2012 13. Journal of Intellectual Property Rights, Vol. 20, January 2015, pp 51-59 14. South African Institute of Race Relations NPC, Submission to the Department of Trade and Industry

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about the IP tribunals, most would be solved by appointing judges with the correct expertise and experience needed. In jurisdictions where this is not practicable, technical experts may be appointed to assist the judges. To address the potential bias, right of appeal against a tribunal’s decision is adequate to minimize this concern but this may, in parallel, create another issue of increasing the number of appeal cases. The poor ‘law development process’ concern of the IP community is more of a two-way traffic. Unless the Courts (or the IP tribunals) would have substantial issues to address, development in the IP law and interpretation of the various conflicting provisions in the amended 2000 Ordinance, will continue to affect the IPRs holders with lesser or greater degree. From the viewpoint of IPRs holders and other businesses, the establishment of special IP tribunals is expected to constitute a major change to IP laws and procedural practices in Pakistan, particularly in the context of granting proper levels of protection to IPRs; speedy adjudication of infringement proceedings; and availability of effective and prompt judicial remedies for their enforcement. Experience shows that assurance for enforcement of IPRs through exclusivity increases chances of greater foreign investment; creation of useful arts, and progress in technological innovations. Yet there is need to remedy the position right from the ground up. Examination processes at the IP Offices must be stringent, disallowing the grant of weak patents and bogus trade marks rather than to let the parties to get their rights enforced through Courts. This stringency may ultimately reduce the number of cases in disputes. The IPORegional Office at Lahore, headed by the Deputy Registrar M. Rafiq Tahir under the authority and control of the Registrar of Trade Marks (Mr Aftab M. Khan), is exemplary and this model needs to be extended in other cities for quality examination of IP cases.

Conclusion The constitution of special IP tribunals has certainly increased the substance of IPRs in Pakistan through signaling that government considers IP an important area to protect and regards strong protection for IPRs and prompt remedies for their enforcement as providing a basis for economic growth and prosperity in the country. Undoubtedly, specialized tribunals on their own are a great forum for raising the public’s awareness of IP, which may help reduce the level of infringement. However, time will tell whether the new tribunal system proves successful in meeting its objectives of providing a specialized forum for speedy adjudication of IP infringement proceedings.

regarding the Copyright Amendment Bill of 2015; Johannesburg, 16 September 2015 15. 517 US 370 [1996]

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Naeema Sadaf is a partner and head of the Patent & Trade Mark Division at PakPat World Intellectual Property Protection Services, Pakistan; H. Zafar Iqbal (MPA, LL.M) is a Pakistanbased independent researcher and analyst. www.cipa.org.uk

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The Good Attorney Things I wish I’d known when I was newly qualified. By Jonathan Stafford (Fellow), Marks & Clerk

uring my training towards becoming a qualified patent attorney, so much of my early focus was on developing the skills required to provide a technically and legally competent work product and, of course, to pass the qualifying exams. In subsequent years I have learned that this was only the tip of the iceberg and there is much more to being a good attorney. I learned as much in the years immediately after becoming qualified, as I did as a trainee.

Legal knowledge and technical proficiency is just the beginning As my technical proficiency increased, it became easier to offer balanced advice that took account of the pros and cons of various legal strategies, and ultimately to recommend a course of action suited to any given client’s commercial objectives. Technical proficiency, indeed excellence, is frankly expected by most clients. Beyond technical knowledge I believe that various other factors really set apart good, experienced, attorneys from the rest of the field. The lesson here is: always think how you can genuinely add value.

Getting the basics right all of the time gives you a platform to engage tactically with your clients “Client care” is a broad term. On a basic level, it requires the attorney to be responsive, i.e. quick to acknowledge correspondence, to respond in a timely way to requests and enquiries, to inform clients when there may be a delay, then to deliver as promised – to meet, if not exceed, their expectations. I learned to make sure you get the basics right, all of the time. This requires discipline, but it goes a long way towards securing the absolute trust of the client, Volume 45, number 11

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which gives you a platform from which to engage in more tactical discussions. It also means that the client is less likely to consider looking elsewhere for advice.

Think like the client But getting the basics right is not enough. Really good client care entails putting the needs of the client first. Good attorneys develop an understanding of the background and commercial goals of the individual or team that they are corresponding with, and provide a service that allows the client to achieve those goals. Research the client in advance; ask lots of questions; listen to the answers; and apply the knowledge you have gained.

One size really does not fit all A key skill is being able to adapt your style and content to suit the client, rather than simply reproducing your own, or your firm’s, preferred “house style”. The content and style of correspondence providing strategy advice to a legally trained foreign IP attorney should clearly not be the same as that which would suit correspondence to an individual entrepreneur with limited experience of intellectual property practices. In my early years as a trainee, I was bewildered by the ease with which my more experienced mentors were able to flip between formal and informal styles, and to deliver tailored advice clearly, yet in entirely different ways to different clients. This is a critical skill to master and is worth working on long before qualification.

Tailor your advice It is possible, with little knowledge of a client’s business, to give advice on how to navigate through a patent examination to obtain a granted patent with the broadest scope possible. However, such advice may have very limited worth if the NOVEMBER 2016

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result fails to fulfil the client’s commercial objectives. Patents are commercial tools. For some clients, under certain circumstances, getting a patent granted quickly with a narrow claim scope to cover their commercial product may be more favourable than protracted wrestling with a patent examiner, and incurring significant costs, to secure a broader claim. Conceding patent claim scope to an examiner can be painful, especially if the examiner seems to be wrong; however, knowing when to recommend such an approach, with the client’s commercial objectives clearly in mind, is an important skill. The needs and expectations of a client with a burgeoning IP portfolio, significant financial resource and a wealth of experience are radically different to those of an inventor entrepreneur who has made a significant personal investment to develop a single product and has just filed their one and only patent application. It is critical to understand what a client is trying to achieve. A number of questions should be asked, for example: In what markets will they operate? Will they manufacture and export products / licence their technology to other companies? Giving tailored, commercially-focused advice is a key factor in delivering truly great client care, and not something that qualifying exams prepare attorneys for. Don’t resort to the “house style” too readily and tailor your advice to the specific needs of each client.

The job does change as you gain more experience and responsibility – it gets more complicated, and it gets more interesting The daily focus of a newly qualified attorney is typically on their own workload and delivering their contributions to work for clients as part of a team with other, more experienced attorneys and partners. However, the time will come when they take more responsibility for client 44 CIPA JOURNAL

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THE GOOD CLEAR OFFATTORNEY

interactions, developing their practice, people management, and taking a part in the running of the wider business. The need for sound people management skills starts at an early stage for attorneys –trainees soon need to anticipate and steer the efforts of other attorneys and support staff to deliver high-quality work on time. Later, experienced attorneys will become responsible for the training and development of trainee attorneys, and ultimately of other qualified attorneys. This might involve delivering seminars and tutorials as part of a formal training scheme. Equally, probably more often, it might require taking supervisory duties for other attorneys. The supervising attorney must effectively balance developing others with the need to deliver a quality work product for clients, whilst at the same time managing their own work load and meeting their own performance targets. Experienced attorneys may take responsibility for managing client relationships – maintaining personal relationships and staying up-to-date with client requirements, mitigating areas of risk and exploiting areas of possible growth. From time to time it might also require the learned diplomacy of dealing with complaints. These responsibilities require skills that are nurtured over years in the job. Clearly they do not click into place overnight upon qualification. Take advantage of any opportunities to continue your professional development, in relation to business skills as well as technical and legal updates. Indeed, search out such opportunities where you can.

Networking is not the only form of business development… Some trainees and less-experienced attorneys treat “BD” as a necessary evil – unwanted time away from the office, uncomfortable approaches to strangers, coffee cup in hand, at networking events. Some individuals will feel www.cipa.org.uk

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ARTICLE

Adapt your style and content to suit the client, rather than simply reproducing your own, or your firm’s, preferred house style.

THE GOOD ATTORNEY

comfortable in this kind of setting. Some, simply, will not. Even for those attorneys who view these events with a sense of dread, networking can be very manageable with the right attitude and skills deployed. Networking can be a profitable way to meet new potential clients, cross-sell services, and / or generally raise your own, and your firm’s profiles. However, there are many other forms of business development: writing articles and delivering seminars are equally valid. Perhaps most importantly, the nurturing and development of current clients is critical. It is important to learn to operate with a degree of confidence in all of the above situations, but not everybody can do everything and it is worth identifying your own strengths, and those of your colleagues, so that you exploit these strengths to best effect.

… but it is very useful to have a strong network of contacts Many experienced attorneys working in private practice will find themselves advising individual entrepreneurs, new tech start-ups and SMEs that are relatively “green” from a commercial perspective. These individuals and companies may be embarking on a commercial venture for the first time, and may not previously have been involved with innovation, research and development as a key business platform. I have learned that it is essential to develop a reasonable understanding of what hurdles these clients might face. For example: • • • •

What funding options are available? Can we put them in touch with trusted advisors? Who can they contact for business mentoring? With whom can they discuss R&D tax credits and patent box tax relief?

The importance of establishing relationships with experts in these areas through networking and business development activities is often understated, but can allow patent attorneys to go the extra mile for their clients, setting them apart from the field.

In summary I have learned that continuing to challenge yourself and continuing to develop your knowledge and skills has benefits for everyone involved. It benefits the patent attorney (genuinely adding value to clients is immensely satisfying; and does not do your career progression any harm); it benefits your clients (they are in business for a reason, and you really can help them achieve their goals); and for your firm (happy clients are long-term clients). Jonathan Stafford is a senior associate at Marks & Clerk in Manchester. Volume 45, number 11

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WARNER-LAMBERT v NOVARTIS

Warner-Lambert v Novartis The Singapore High Court refuses post-grant amendments of method of treatment claims to Swiss-style claims in Warner-Lambert Company LLC v Novartis (Singapore) Pte Ltd [2016] SGHC 106. By Uma Baskaran and Chow Jian Hong.

his case is an opposition by Novartis (Singapore) Pte Ltd (“Novartis”) to a post-grant amendment application for a patent by Warner-Lambert Company LLC (“WLC”). The matter was heard by Justice George Wei in the High Court of Singapore. WLC filed an amendment to its Singapore Patent SG 61244 (“SG Patent”) several years after grant. The amendment involved, inter alia, a change of claim category from Method of Treatment (“MoT”) to Swiss-style claims.

Background WLC’s SG Patent claims a method of treatment of pain using a therapeutically effective amount of pregabalin. Novartis had applied for a product licence with the Singapore Health Sciences Authority in respect of its pregabalin product. As a requirement under section 12A(3)(a) of the Medicines Act, Novartis served a notice on WLC that the SG patent would not be infringed by acts for which the product licence was sought. WLC opposed Novartis’ product licence application claiming that the SG Patent would be infringed. Novartis sought to revoke the patent on the ground that the granted claims were invalid as they claim a method of treatment, which is not patentable under the Singapore Patents Act (SPA). Subsequently, WLC applied to amend the SG Patent’s MoT claims to Swiss-style claims. The SG Patent was a national phase application based on a PCT application filed on 16 July 1997 claiming priority from a corresponding US application filed on 24 July 1996. The SG Patent was granted in Singapore on 23 May 2000. At the time of grant of the SG Patent, patents were granted under a self-assessment system in Singapore. Although there was an option of requesting for a search and examination, most of the Singapore patents were granted without substantive examination. There were two main issues in this case: 1. Whether the proposed amendment from an MoT claim to a Swiss-style claim post-grant would extend the scope of protection conferred by the patent. 2. Whether the court should exercise its discretion to disallow the proposed amendments on the ground that there was unreasonable delay on the part of WLC in seeking the amendments. 46 CIPA JOURNAL

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Extension of the scope of protection Similar to many jurisdictions, post-grant amendments are fairly restrictive in Singapore. No amendment of the specification of a patent shall be allowed if the amendment would result in the specification disclosing any additional matter – section 84(3) (a) SPA – or if the amendment would extend the protection conferred by the patent – section 84(3)(b) SPA. In Singapore, methods of treatment are excluded from patentability as method of treatment claims are deemed to be incapable of industrial application under section 16(2) SPA. However, under section 16(3) of the Singapore Patents Act, a substance or composition is considered to be industrially applicable even if its intended purpose is for use in the method of treatment. Furthermore, section 14(7) SPA provides that a new use of a known substance or composition will be new if this use does not form the part of the state of the art. These provisions allow the claims drafted in Swiss-style format – i.e. claims directed to a use of a known compound or a composition – to be eligible for a grant of a patent in Singapore. The new therapeutic use is regarded as conferring novelty on the process of manufacture. In practice, during prosecution – i.e. before the grant of a patent – claims directed to method of treatment are usually amended to a Swiss-style claim format in order to overcome the exclusion under section 16(2) SPA. In this case, WLC applied for a post-grant amendment of an MoT claim to a Swiss-style claim. A key question therefore was whether such an amendment from an MoT claim to a Swiss-style claim, post-grant, would amount to an extension of the patent’s scope of protection under section 84(3)(b) SPA. Novartis argued that the proposed amendment would extend the scope of protection conferred: 1. by changing the category of claim from a method of treatment to a method of manufacture; and 2. by deletion of the crucial step of “administering a therapeutically effective amount of a compound. www.cipa.org.uk

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The judge held that a mere change in a category of claim did not necessarily mean that the scope of protection had been extended. The judge held that a useful test of determining whether the scope of protection was being extended was: whether a matter which fell outside the scope of the claims (properly interpreted) and was hence not an infringing act on its own (preamendment), now falls within the claims such that it becomes an infringing act (post-amendment). A “purposive approach” was to be adopted in construing the patent claims. Section 66(1)(b) and (c) SPA sets out what constitutes an infringement of a process patent. The judge applied section 66(1) (b) SPA to determine what would constitute an infringement of the granted MoT claims and the amended Swiss-style claims to ascertain if there was an extension of scope of the claims. The judge determined that:

WARNER-LAMBERT v NOVARTIS

It was held that the technical subject-matter and contribution over which the protection claimed by a Swissstyle claim was different from that of an MoT claim. The post-grant amendment of an MoT claim to a Swiss-style claim would extend the protection conferred by the patent by bringing into its scope the step of manufacturing the medicament. Singapore has not aligned its laws to the UK’s or EPO’s position on medical use claims. The examination guideline issued by the Intellectual Property Office of Singapore (IPOS) in 2014 clarifies the issue on medical use claims and Swissstyle claims: • •

•

Novartis will infringe the granted claims if it offers or provides treatment of pain in Singapore by administering a therapeutically effective amount of pregabalin. On the other hand, Novartis will infringe the amended claims if it uses pregabalin in the process to manufacture the medicament for treating pain. Novartis will also be infringing section 66(1)(c) SPA if it disposes uses or imports a product obtained directly from that manufacturing process.

The judge was of the view that the manufacture of the medicament was not an activity that fell within the scope of the granted patent. While both the MoT claims and the Swissstyle claims were connected by the objective of treating pain, the granted MoT claims were targeted towards a different activity (the act of administering the compound to treat pain) as opposed to the Swiss-style claims (which are targeted at making a compound for the purposes of administration). As WLC had chosen to claim the administration of the compound for treating pain, and not the manufacturing process that produced the compound for that use in the granted claims, the judge held that WLC should not be allowed to extend the protection conferred by the patent by bringing into its scope the step of manufacturing the medicament. The judgment also elaborated on whether secondary or indirect infringement should be taken into account in determining whether the scope of the patent has been extended. Singapore Patent law does not provide for indirect or secondary infringement. It is governed by the common law position on joint tortfeasorship on proof of a common design to procure or actually participate in acts of infringement. The judge held that it would not be appropriate to take into account secondary or indirect infringement when determining the extension of scope of protection conferred by the patent. Any further act which attracted additional liability should be disregarded while ascertaining the extension of scope of the proposed amendments as they do not fall within the scope of the claims as granted. Volume 45, number 11

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• •

Swiss-style claims are not related to method of medical treatment claims; European-style second medical use claims are not related to Swiss-style claims; method of treatment claims are not related to first medical use claims; and EPO second medical claims are in a format corresponding to a Singapore first medical use claim.

Therefore, care should be taken while amending MoT claims to Swiss-style claims even before the grant of a patent, particularly, when relying on a corresponding granted patent.

Unreasonable delay in seeking the amendments The court held that WLC had many opportunities to amend its patent pre-grant and post-grant. The reason for its inaction or delay in seeking amendments was not adequately explained. The court therefore exercised its discretion to disallow the amendments because they were sought after a lengthy and inexplicable delay. This is a landmark judgment based upon which the IPOS later reviewed its practice on the assessment of post-grant amendments under the SPA. The review introduced additional grounds to assess the post-grant amendments including: a. Whether relevant matters are sufficiently disclosed. b. Whether there was any unreasonable delay in seeking amendments. c. Whether the patentee has gained an unfair advantage obtained by delaying amendments which are known to be needed. In conclusion, the application to amend the patent in suit was dismissed with costs to Novartis. WLC has appealed against the judgment to the Court of Appeal. Jian Hong Chow (lawyers@mirandahlaw.com) is an associate (and Advocate and Solicitor in Singapore) at mirandah law llp and Uma Baskaran (singapore@mirandah.com) is a patent specialist (and Registered Indian Patent Agent) at mirandah asia (singapore). NOVEMBER 2016

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Patent decisions Priority | Validity | Novelty | Obviousness | Added subject-matter | Sufficiency (1) Actavis Group PTC EHF, (2) Actavis UK Ltd, (3) Actelion Pharmaceuticals Ltd, (4) Actelion Pharmaceuticals UK Ltd, (5) Teva UK Limited, (6) Teva Pharmaceuticals Industries Ltd, (7) Generics (UK) Ltd (trading as Mylan) v (1) ICOS Corporation, (2) Eli Lilly and Company [2016] EWHC 1955 (Pat) 10 August 2016; Birss J This decision was discussed briefly on the IPKat blog (http://ipkitten.blogspot.co.uk) on 10 August 2016. The judgment relates to a number of actions seeking to revoke European Patents (UK) Nos. 1173181 and 1200092 owned by ICOS, with Lilly being an exclusive licensee (hereinafter both as “Lilly”) in order to clear the way. The actions were brought by Actavis, Actelion, Teva and Generics (UK) (hereinafter all as “the claimants”). Lilly counterclaimed for infringement. The patents related to tadalafil, which is the generic name for a product sold under the brand name CIALIS for male erectile disfunction and ADCIRCA for arterial hypertension.

181 patent Claim 1 of the 181 patent was directed towards a pharmaceutical unit dosage form of 1 to 5 mg of tadalafil, being suitable for oral administration up to a maximum total dose of 5 mg per day. Claim 7 was directed to use in the treatment of sexual disfunction. There was a difficult issue relating to the correct interpretation of “up to a maximum total dose of 5 mg per day” and what this would mean for infringement. The judge reached a conclusion that the claim language only covered a total daily dose of up to 5 mg and did not cover the use of higher amounts of tadalafil in a day. Based on this construction, he noted that administration of tadalafil up to a maximum total does of 5 mg per day was one of the approved dosing regimes provided by the regulators, albeit not the only one. Birss J therefore concluded that if the claimants were to launch 2.5 mg and 5 mg tadalafil tables based on the approved marketing authorisations, the claims would be infringed. There were issues relating to whether the 181 patent was entitled to priority. The main issue was whether a compound described in the priority document would be understood by the skilled person to have the correct stereochemistry to be tadalafil. Based on the facts in the case, the judge concluded that the compound disclosed in the priority document would be considered by the skilled person to be the correct stereoisomer. However, the judge considered that a table showing the efficacy of certain compounds did not definitely disclose tadalafil. Despite this, he considered that the priority document as a whole made the use claims plausible. Therefore, he concluded that the claims 48 CIPA JOURNAL

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(excepting claims 2 and 12, ruled out for other reasons relating to priority) were entitled to their priority date. Three documents were relied on as being novelty destroying. They were all published after the filing date of the 181 patent. Of the three, only Stoner could be relevant prior art under section 2(3) of the Patents Act 1977 for any claims entitled to priority. Lilly had agreed that it would not defend the novelty of any claims which lost priority. Therefore, claims 2 and 12, which were not entitled to priority were found not novel. For Stoner, it fell to be decided what subject-matter of Stoner was entitled to its own priority date and whether Stoner anticipated the claims of the 181 patent. In relation to the first question, the issue was whether there was a legal right to claim priority. In the absence of further evidence either way, the judge relied on the published application and the copy of the priority document. He considered that there was sufficient evidence to support and inference that legal priority existed and therefore that the evidential burden shifted to Lilly to rebut this. In the absence of further evidence, the judge found Stoner was entitled to priority. However, Stoner related to a combination therapy for treating erectile disfunction. On the facts, the judge considered that Stoner was not an enabling disclosure of what was claimed in the 181 patent. In particular, he found that whilst Stoner was an enabling disclosure of the use of tadalafil, it did not provide basis that the relevant doses along with the other active ingredients would have efficacy. Therefore, the judge concluded that the claims were novel. A different reference, Daugan, was the prior art relied upon for obviousness. Daugan specifically disclosed two compounds, one of which was tadalafil. Examples of a tablet containing a 50 mg dose were disclosed, along with a general disclosure of 0.5 to 800 mg daily dose. The claimant’s general argument was that it would be obvious for a skilled team, based on Daugan, to take tadalafil forwards into routine pre-clinical and clinical trials. No inventive effort would be required and as part of those trials, it would be found that a 5 mg daily dose was safe and effective. The judge referred to Teva v Leo [2015] EWCA Civ 779 as discussing the standard of what amounts to a fair expectation of success in the context of “obvious to try”. Birss J reached the conclusion that whilst a 25 mg/day dose was obvious over Daugan, he did not consider that a 5 mg daily dose was obvious, noting that if a 5 mg/day dose was tested, it would not be tested with a reasonable expectation of success. Therefore, the judge found that at least claim 7 was inventive. The judge also found that there was no issue of added matter. The squeeze argument advanced on insufficiency also fell away.

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

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In relation to infringement, Actavis and Mylan argued that a company could seek to clear the way in a revocation action, with a contingent intention to launch a product, without being held to be threatening to infringe. However, the judge found that this was not the case and that the logic of clearing the way covered both infringement and validity.

PATENTS: UK

Validity | Novelty | Priority claim | Obviousness | Infringement Nicocigs Limited v (1) Fontem Holdings 1 BV (2) Fontem Ventures BV [2016] EWHC 2161 (Pat) 2 September 2016; Mr John Baldwin QC

092 patent The issues to be considered for the 092 patent were similar to those of the 181 patent. Claim 1 of the 092 patent was directed towards a free drug particulate form of tadalafil and pharmaceutically acceptable salts and solvates thereof, limited by at least 90% of the particles having a particle size of less than 40 microns. Claim 8 was not restricted by particle size but instead by pharmokinetic properties – Cmax or an AUC (area under the curve). Claim 19 was dependent on either independent claim and was restricted to the use for oral administration up to a maximum daily dose of 20 mg. Lilly admitted that claims 8, 9, 16, 17 and 18 were not entitled to priority. These claims were limited by pharmokinetic data not present in the priority document. However, Lilly considered that claim 19 (when not dependent on a claim not entitled to priority) was entitled to priority. Birss J found claim 19 to be entitled to priority. The claim was also found not to add subject-matter based on similar issues. One document (Oren) was argued to be novelty destroying. Oren was valid prior art under section 2(3) of the Patents Act 1977 only. Oren was only relevant to claims not entitled to their priority date. Oren disclosed tadalafil having a particle size of 4 microns. The question therefore was whether the particles of Oren would inevitably have the required pharmokinetic properties. Based on the evidence, the judge concluded that they would. Therefore, claims 8, 9, 16, 17 18 and 19 (where dependent on claims 8 and 9) were not novel. Obviousness was again based on Daugan. The question here was whether the skilled person would consider micronizing the drug with an expectation of success. Based on the evidence, the judge concluded that it was obvious and therefore claim 1 was obvious, along with the use claims directed to specific uses of the tadalafil. Various different insufficiency arguments were raised. The judge found the claims limited only by pharmokinetic properties were insufficient as they were not limited by particle size and therefore the resulting claim was too broad. The other insufficiency arguments were rejected. Of note was an objection raised against the method of measurement of particle size. The claimants argued this was ambiguous as it did not specify whether the particle size was measured by number or by volume. However, the judge considered that the skilled reader would arrive at the conclusion that the claim required a volume distribution. In relation to infringement, Birss J noted that claim 19 would be infringed if it were valid. In conclusion, the judge found that at least claim 7 of the 181 patent was valid and infringed. However, all of the claims of the 092 patent were invalid. Volume 45, number 11

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This decision relates to a revocation action against European (UK) patent No. 2022349 and an application for a declaration of non-infringement brought by Nicocigs. This decision also relates to a counterclaim of infringement brought by Fontem, the patent proprietor. The patent related to an electronic cigarette, generally comprising a battery, an atomizer, and a liquid storage. Nicocigs contented that the patent was invalid for it covered subject-matter that extended beyond the disclosure of the original application. Nicocigs also contended that the priority claim was invalid, and that the patent was not novel over a separate patent application having the same priority claim and obvious over three other prior art documents.

Added subject-matter Nicocigs put forward three separate points in connection with added subject-matter. The first point was referred to as the “shell” point. In the application as originally filed, the disclosure provided an electronic cigarette that included a hollow and integrally formed shell in which were located the battery and the atomizer. The liquid storage was provided as being detachably mounted to one end of the shell. In the patent, claim 1 required a hollow shell having a detachable end. The battery, the atomizer, and the liquid storage are all located in the shell, with the liquid storage being specifically located at the detachable end. Nicocigs argued that the two-part arrangement was presented in the original application as an essential feature of the solution to the technical problem put forward and that using the word “shell” in the patent to designate a casing for the whole device broadened the scope to cover subjectmatter beyond the original disclosure. Fontem argued that although claim 1 of the patent covered a device where the atomizer and the battery were housed in the same shell as the liquid storage, there was no additional disclosure in the patent. However, the judge disagreed. The judge found that although the patent disclosed the device of the application, it also disclosed a different device in which the three parts were housed in the same shell: I have compared the disclosures in the P and the PA and have tried to do so from the perspective of the skilled addressee. The disclosures of the PA and the P are not the same… The battery assembly, atomiser assembly and liquid storage component are all in this shell, with at least the liquid storage component being at the detachable end. This device is different from that of the PA and the skilled addressee learns about it only when he reads the P. Matter has been added to the PA to teach the skilled addressee about this device. NOVEMBER 2016

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The second point related to the liquid storage. In the application as originally filed, the disclosure provided a “cigarette bottle assembly” comprising a hollow shell and a porous component for liquid storage. Nicocigs argued that the isolation of the porous component and the omission of the porosity requirement in claim 1 of the patent extended the subject-matter beyond the disclosure of the original application. Fontem argued that when looked at purposively and in context, the skilled person would understand that the disclosure of the application and the patent was the same. However, the judge found in favour of Nicocigs: [Fontem] may be right in relation to the cigarette bottle assembly of the PA, but the only description and disclosure in the PA about the component for liquid storage is that it is a porous component (e.g. [0025]). An assembly which did not include such a porous component for liquid storage would not be a cigarette bottle assembly within the meaning of the PA. The third point was referred to as the “through-air-inlet” point. In the application as originally filed, through-air-inlets were provided in the shell that housed the battery and the atomizer. Nicocigs argued that in the patent, the through-air-inlets need not be in the part of the shell that contained the battery and the atomizer. The judge was of the view that this point was really another aspect of the “shell” point. In summary, the judge found that the subject-matter of the patent extended beyond the disclosure of the application as originally filed.

Novelty The novelty attack Nicocigs put forward was based on a related European patent application (EP350), which had the same priority claim as the patent. The attack also relied on the priority claim of the patent being invalid. It was common ground that EP350 was identical to the priority document in all material respect. The only point of contention related to the atomizer. In claim 1 of the patent, the atomizer was provided as an assembly comprising a porous component with a heating wire and a support member on which the porous member is mounted. EP350 provided a similarly shaped assembly comprising a microporous ceramics component with a heating wire. The purpose of both assemblies was to allow air drawn through the assembly to mix with vapourized nicotine liquid and subsequently heated to produce a vapourized emulsion. Fontem argued that the language of claim 1 of the patent required a separate support member from the porous member and that there was no disclosure in EP350 of such a separate support member. The judge agreed that there was no explicit disclosure in EP350 of separate support member and porous member. However, the judge was not convinced that the skilled person would not be able to derive such a feature directly and unambiguously from the disclosure of EP350. In that respect, Nicocigs argued that a person attempting to avoid infringement of the patent by making the porous member and support member as a unitary component “would be laughed out of court”. The judge agreed: 50 CIPA JOURNAL

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“My attention was not drawn to any teaching in the P which was to the effect that the support member could not be made from a porous material and there was no satisfactory evidence to that effect… No adequate technical reason was advanced as to why the skilled addressee would not understand that the porous member could do double duty and support itself if it were made of appropriate materials… In my judgment a skilled addressee who read claim 1 of the P and made the atomiser all out of the same porous material and used a single piece for both the support member and the porous member, instead of two pieces which he had to fit together, would consider that he was working the invention.” On that basis, the judge found that EP350 anticipated claim 1 of the patent.

Amendments Fontem had requested to amend claim 1 should EP350 be found to be novelty destroying. The two proposed amendments related to disclaimers. The judge was of the view that both would add subjectmatter to the patent and refused the request.

Priority A preliminary opinion of the Opposition Division of the European Patent Office indicated that the priority claim of the patent was invalid. Notwithstanding, Fontem argued that the priority claim must have been valid if EP350 was found to be novelty destroying. Nicocigs contended that Fontem mistook the concept of anticipation, i.e. whether subject-matter fell within the scope of a claim, with support, i.e. whether a disclosure support a claim over its whole scope. Nicocigs advanced several lines of arguments for an invalid priority claim, two of which the judge found to have substance. Firstly, Nicocigs argued that the priority document described an end-to-end connection between the atomizer and the liquid storage, which did not provide adequate support for the unspecified arrangement in claim 1 of the patent. Fontem disagreed. However, the judge was of the view that the skilled person would not have been able to make the generalization directly and unambiguously from the disclosure of the priority document. Secondly, Nicocigs argued that the priority document described a specific three-part device, whereas claim 1 of the patent provided a shell to house the atomizer and the battery. Fontem argued otherwise. However, the judge found in favour of Nicocigs. In summary, the priority claim of the patent was found to be invalid.

Obviousness Nicocigs relied on three prior art documents, each in combination with common general knowledge. One document was found to have little relevance. Of the remaining two, “Brooks” and “Takeuchi”, Fontem argued that the patent was distinguished over both. In connection with Brooks, Fontem advanced six different distinctions, five of which the judge dismissed. The sixth related to the capacity of the device. In Brooks, the device described had a www.cipa.org.uk

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porous heated element that was preloaded with sufficient nicotine liquid for six to ten puffs only. The judge found that this would be an obvious problem to the skilled person and it would be obvious to modify the device of Brooks to include a separate refillable reservoir to solve the problem. In connection with Takeuchi, the main point of contention was whether the prior disclosure provided a detachable liquid storage, as opposed to one that was exchangeable or refillable. Fontem argued that Takeuchi was silent in that respect. However, the judge was of the view that the skilled person would have understood that the liquid storage of Takeuchi could be either refillable or exchangeable and that, for the purpose of the invention, it did not matter which disclosure was implemented. In summary, the judge found the patent to be obvious.

Infringement Two groups of products were alleged to have infringed the patent, the first were referred to as the Cartomiser design, the second as the Clearomiser design. For the Cartomiser design, claims 8, 12, and 13 were of concern as well as claim 1. In claim 8, the end of the shell housing the liquid storage was required to form a cigarette bottle assembly comprising a liquid storage component inside a hollow shell. In claims 12 and 13, the liquid storage component was required to be of specific materials. In connection with claim 1, the main point of contention was the way in which the liquid storage was connected to the atomizer. In claim 1, the liquid storage was required to “fit with” the porous component of the atomizer. Nicocigs argued that this expression required a shaped or push fit engagement, whereas Fontem contended that all that was required was a connection that enabled fluid communication. The judge favoured the purposive construction advanced by Fontem and found that the Cartomiser design fell within the scope of claim 1. The judge also found that the liquid storage component of the Cartomiser design had the requisite materials and fell within the scope of claims 12 and 13. As for claim 8, the judge found that the liquid storage component of the Cartomiser design was not housed inside an otherwise hollow shell and was therefore distinguished over claim 8. For the Clearomiser design, the only claim of concern was claim 1 and the sole point of contention related to the liquid storage component. In the Clearomiser design, the assembled device provided a cavity in which nicotine liquid was stored. Nicocigs argued that such a cavity was in no sense a component in itself. However, the judge disagreed and was of the view that the skilled person would understand that a “component” could be formed on assembly of the device. In summary, the judge found that the Cartomiser design infringed claims 1, 12, and 13, and the Clearomiser design infringed claim 1.

Conclusion In conclusion, the judge found that the patent was invalid for added subject-matter, lack of novelty, and obviousness. The judge also found that, had the patent been held valid, the Cartomiser design would have infringed claims 1, 12, and 13, and the Clearomiser design would have infringed claim 1. Volume 45, number 11

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Arrow declaration | Anti-suit injunction | Summary judgement Fujifilm Kyowa Kirin Biologics Company Ltd v (1) AbbVie Biotechnology Ltd, (2) AbbVie Ltd [2016] EWHC 2204 (Pat); 8 September 2016; Arnold J

This decision was discussed briefly on the IPKat Blog (http://ipkitten. blogspot.co.uk) on 8 September 2016. This judgment concerns the second of two related actions concerning the subject-matter of a family of secondary patent applications in the first defendant’s (“AbbVie Bermuda”) adalimumab portfolio (marketed as Humira®). Fujifilm Kyowa Kirin Biologics Company Ltd (hereinafter “FKB”) is seeking to clear the way for the launch of a biosimilar adalimumab product (“FKB327”) in the UK after expiry of AbbVie Bermuda’s basic adalimumab patent in October 2018. In the “First Action” (“FKB1”), FKB sought inter alia revocation of AbbVie Bermuda’s European Patents (UK) Nos. 1,406,656 (“EP656”) and 1 944 322 (“EP322”). In addition, FKB sought a so-called Arrow declaration in order to safeguard themselves from a potential claim of patent infringement of AbbVie’s secondary patents. FKB1 was subject to a decision of Carr J and is currently under appeal. This judgment concerns FKB’s “Second Action” and is focused on the subject-matter of AbbVie Bermuda’s pending European Patent Application No. 1,737,491 (“EPA491”), which is primarily concerned with dosing regimens of adalimumab. FKB sought an Arrow declaration against AbbVie Bermuda and AbbVie UK (hereinafter collectively referred to as “AbbVie”) that the subject-matter of EPA491 was not patentable. More specifically, the declaration sought that: “importing into the UK and offering to sell and dispose of, and to sell and dispose, and to keep for such sale or disposal in the UK the Claimant’s products containing their biosimilar antibody… adalimumab (Humira) would insofar as the Higher Initial Dosage Regimens are concerned have been obvious and/or anticipated at the date from which EP (UK) 1,737,491 is entitled to claim priority. Such Higher Initial Dosing Regimens are dosing regimens for each of psoriasis, Crohn’s disease and ulcerative colitis in the Humira SmPC comprising higher initial doses (as multiple initial doses of 40 mg via subcutaneous injection) as follows: a. 80 mg for psoriasis; b. 80 mg, or 160 mg then 80 mg, for Crohn’s disease; and c. 160 mg then 80 mg for ulcerative colitis each of which is followed by one or more doses of 40 mg.” FKB also sought a domestic anti-suit injunction to prevent AbbVie from threatening or commencing infringement proceedings in relation to acts covered by the Arrow declaration. NOVEMBER 2016

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AbbVie applied to have these claims struck out on the basis that the Particulars of Claim discloses no reasonable basis for bringing them, or alternatively that they should be dismissed by summary judgment. In response, FKB applied to amend its Particulars of Claim to particularise is claim for an injunction. FKB also applied for an order that permission for them to serve outside the jurisdiction be upheld or alternatively that the UK Court has jurisdiction under Article 24(4) of the Recast Brussels I Regulation. In the decision, the judge only considered summary judgment on the ground that the summary judgement test is more favorable to AbbVie that the strike out test.

Arrow declaration AbbVie contended that even assuming that the law was correctly stated in Arrow v Merck [2007] EWHC 1900 (Pat) (“Arrow”) and FKB1, FKB had no real prospect of successfully obtaining an Arrow declaration on the ground that the circumstances of the Arrow case were described as being “most unusual”. Arnold J provided the following brief summary of the basis for Arrow declarations: • •

•

The Court has the power to grant such a declaration, including a negative declaration whenever it is useful to do so. Such a declaration serves a useful purpose because it is in effect a declaration that the claimant will have a Gillette defence to a subsequent claim for patent infringement. A claim for an Arrow declaration does not contravene section 74(1) of the Patents Act 1977 because it does not involve the validity of the patent being put in issue. Instead, it enables the Court to preemptively determine a patent infringement case before the patent has even been granted without having to decide whether the patent would be invalid, or not infringed because the claimant’s product will not fall within the claims, when granted.

The judge considered AbbVie Bermuda’s conduct at the EPO in relation to the prosecution of the patent in question, and held that FKB has a real prospect of establishing that AbbVie Bermuda’s conduct was to: “shield some or all of the subject-matter of EPA491 from timely scrutiny by this Court, or least to prolong the uncertainty as to whether such subject-matter founds a valid patent”. Arnold J also relied upon the defendant’s conduct in respect of related adalimumab patents EP656 and EPA044 (considered in the FKB1) and concluded that this conduct provides “modest further support” for FKB’s case in relation to EPA491. Based on the evidence, the judge concluded that FKB has a real prospect of success in its claim for an Arrow declaration against AbbVie Bermuda. AbbVie contended that, even if FKB’s claim for an Arrow declaration against AbbVie Bermuda has a real prospect of success, its claim for an Arrow declaration against AbbVie UK should be struck out. The basis for this contention was that, whereas AbbVie Bermuda is the applicant for EPA4191 and has committed the acts 52 CIPA JOURNAL

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in the EPO that FKB (and now the judge) relies upon as evidencing a “real prospect” in relation to the Arrow declaration, AbbVie UK has no interest in the subject-matter of EPA491, has no involvement in the proceedings before the EPO, and is not an exclusive licensee of any rights under EPA491. FKB argued that it was probable that AbbVie Bermuda will grant an exclusive license under EPA491 to AbbVie UK at some point in the future, and that even if it is not granted an exclusive license, AbbVie UK will have a significant financial interest in the inventions in the patent family because it will be the one who exploits the inventions in the UK. Therefore, an Arrow declaration binding on AbbVie UK thus served to: “forestall the possibility of AbbVie making threats to its customers or making statements that its product infringed”. Arnold J accepted that there is no evidence that AbbVie UK intends to threaten FKB’s customers, and nor any evidence that AbbVie has any intention of granting AbbVie UK an exclusive license. However, based on the evidence provided, he ultimately concluded that FKB has a real prospect of success in obtaining a declaration against Abbvie UK.

Anti-suit injunction With regard to the anti-suit injunction, following a review of the applicable law, Arnold J. concluded that the UK Court has the power to grant a domestic anti-suit injunction against a defendant in respect of whom it has jurisdiction on the ground that the defendant’s threatened proceedings are vexatious, oppressive or an abuse of process. The judge however issued a word of warning noting that that this power must be exercised with considerable caution and that it will rarely be justified to grant an injunction restraining the commencement of proceedings without the qualification that the restraint only applies if the defendant does not obtain the permission of the court first. Based on the evidence, Arnold J held that there was a realistic prospect that FKB would successfully obtain the anti-suit injunction at trial, but that the scope of the injunction would be tied to the scope of the Arrow declaration. Arnold noted however that if FKB failed to obtain the Arrow declaration at trial, it would not have a realistic prospect of obtaining the anti-suit injunction.

Jurisdiction under Article 24(4) of the Recast Brussels I Regulation The remainder of the decision concerns Article 24(4) of the Recast Brussels I Regulation and whether the UK courts have exclusive jurisdiction over FKB’s claim for an Arrow declaration. Again, Arnold J found in favour of FKB concluding that a claim for an Arrow declaration does fall within Article 24(4) of the Recast Brussels I Regulation. Therefore, the UK courts have exclusive jurisdiction over the resolution of a claim for such a declaration, even in the defendant is domiciled outside of the UK. As such, no permission was required by FKB to serve the proceedings on AbbVie Bermuda outside of the jurisdiction.

Summary In conclusion, Arnold J dismissed AbbVie’s application to strike out, or alternatively obtain summary judgment of FKB’s claims and FKB was granted permission to amend the Particulars of Claim as requested. www.cipa.org.uk

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Validity | Construction | Infringement | Experimental use defence (1) Meter-Tech LLC, (2) Vanclare Se LLC v British Gas Trading Ltd and British Gas Trading Ltd v Vanclare SE LLC [2016] EWHC 2278 (Pat); 16 September 2016

This was an action for revocation and alleged infringement of UK Patent GB 364 420 relating to so-called “smart meters”. The action related to whether British Gas (“BG”) should pay Meter-Tech and Vanclare (“Meter-Tech”), royalties in respect of BG’s past, current and proposed smart meter systems. Meter-Tech was the exclusive licensee of the patent, which related to the use of a number which uniquely identifies a specific meter for directing a pre-payment to the right meter in a wireless system. Meter-Tech contended that it had a valid patent which covered BG systems and affected a £600 million contract for the installation of up to 16,000,000 smart meters throughout the UK. Meter-Tech valued the claim at in excess of £10 million although the Patent, as well as a number of other rights were purchased in 2014 for £160,000. The proceedings were originally commenced in the IPEC as a claim for revocation of the Patent by BG. Meter-Tech issued a corresponding claim for infringement in the High Court against BG, together with an application to transfer the IPEC invalidity proceedings to the High Court. That case was transferred to the High Court by order of Mr Justice Arnold in [2015] EWHC 2087 (IPEC) and the proceedings were consolidated. Upon that application, BG had contended that the issue of validity should be determined first and separately from the issue of infringement. Arnold J did not agree and ordered the case to proceed as an ordinary infringement action with both infringement and validity in issue. Several issues were to be decided at trial. These included construction, validity, infringement, amendment and a defence of experimental use. Although lengthy, the issues of construction and amendment were decided on the facts of the case. On infringement, an interesting point arose in relation to the experimental use defence. BG contended that all of the past and current acts of alleged infringement were entitled to the defence provided for by section 60(5)(b) of the 1977 Act. For this defence to apply, the judge noted that it was necessary for a defendant to show that an act satisfied two requirements. First, the act which would otherwise constitute infringement must be done for “experimental purposes”. Second, those must be related to the subject of the invention. The judge considered both these points in relation to the “Dual Prepay” meters. Whilst much of the detail of the trials remains in a confidential annex to the judgment, what is disclosed is that BG began trials Volume 45, number 11

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in order to explore the technologies required for a smart metering system. The primary objective was to develop a “robust and scaleable end-to-end solution for the deployment of smart meters.” In the context of BG’s customers, a relatively small number of meters were ordered and around 120 were installed. The judge found that this was a trial of a system falling within the scope of the claims: “There are no documents indicating that BG was undertaking research of a kind directed to improving the design of the smart metering system supplied and operated by PRI. However, the trial was unquestionably a genuine trial and it is clear that part of the learning from it was related to the technology ‘We have learnt a lot around the technology and functions’ was one observation. Moreover, it is clear from the evidence that one purpose of the trials was to determine whether the meters and systems were usable in a live environment. I think it went beyond something that could be described as a demonstration, although the boundary between a large scale pilot designed to test acceptability and a demonstration of acceptability is not a very clear one. Looking at the matter in the round and having regard to the various factors identified above and the fact that “mixed” purposes, including a commercial element, may still be experimental, I consider that this was a use for experimental purposes.” However, the judge disagreed that the use for experimental purposes was directly related to the subject-matter of the claims of the patent: “First, this was a trial by a customer of a ready-made system of which the original contract was for 1000 meters (with a smaller number actually installed). Second, there is no technical documentation exhibited or in disclosure from BG showing (for example) communications with the designer/manufacturer of the meters discussing (for example) improvements to the metering system. Third, this appears to have been a test primarily of the suitability of the meters and metering system for BG’s purposes rather than the conduct of genuine research relating to the development of improvements in metering. Fourth, I am not satisfied that there is a sufficiently direct link between the purposes for which the products/systems were used and the subject-matter of the claim. Accordingly, in my judgment the defence of experimental use is not made out.” On validity, a number of attacks were advanced based on five prior art documents and for added matter. Whilst the added matter attack failed, the patent was found invalid for obviousness on either construction advanced by Meter-Tech. Had the patent been valid, all of BG’s installed systems would have infringed, and the defence of experimental use did not apply. NOVEMBER 2016

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IPO decisions Decision on costs University of Warwick v Dr Geoffrey Diamond BL O/441/16 20 September 2016 The claimant (University of Warwick) had sought to show it was entitled to the invention in a US patent application, claiming the defendant (Dr Diamond) had made the invention in the course of normal duties whilst employed by the claimant. In a previous decision (BL O/518/15), the hearing officer found that the claimant had not proved its case. The awarding of costs was deferred for further submissions. Both sides asked for off-scale costs to be awarded. The claimant argued that, since it had been successful in two preliminary hearings, it was entitled to an award in respect of those hearings. The defendant argued that costs should have been dealt with at the time of the hearings, rather than being deferred referring to tribunal practice notice TPN 4/2007. The hearing officer concluded it was within the comptroller’s discretion to delay dealing with costs, but noted that with hindsight it might have been better to deal with the costs at the time. Both sides also sought to highlight the defendant’s decision to represent himself in support of their respective claims on costs. The claimant argued this increased the costs involved, whereas the defendant argued that the claimant sought to take unfair advantage of his position as a litigant in person. The hearing officer disagreed with both sides. The defendant was entitled to represent himself, and there was no evidence that the claimant had sought to take unfair advantage. On the question of quantum, the claimant contended that, as a litigant in person, the defendant needed to demonstrate that he had suffered a recoverable financial loss. The hearing officer understood this to be referring to the limit in the Civil Procedure Rules for a litigant in person of two thirds of costs that would otherwise be awarded. The hearing officer noted that costs before the comptroller were not intended to compensate parties for

Patent decisions of the comptroller can be found on the IPO website via http://bit.ly/ipodecisions, and opinions issued under section 74A via http://bit.ly/opinion-requests. This month’s contributors were David Pearce and Callum Docherty of Barker Brettell LLP.

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expenses, but merely to provide a lump-sum contribution to those expenses, and that the standard scale did not differentiate between litigants in person and represented parties. Standard scale costs were awarded to the claimant in respect of the preliminary issues, and to the defendant in respect of the substantive matter, the net effect being an award of £320 from the claimant to the defendant.

Entitlement: sections 12 and 37 NGPOD Global Ltd v Aspirate N Go Ltd BL O/431/16 9 September 2016 In entitlement proceedings, the defendant (Aspirate) requested that the comptroller exercise his discretion to decline to deal with references under sections 12 and 37 so that they may be heard by the High Court. The claimant (NGPOD) resisted the request. The defendant argued that the comptroller should decline to deal due to the importance of the patents, the nature of the issues in dispute, procedural complexity and the different costs regimes. Considering the nature of the patents, the defendant explained that it had secured investment of £3.2 million based on the patents. The hearing officer did not consider that there was enough under this heading to persuade him that the case would be better dealt with in the High Court, noting that “most people who file patent applications consider that they are of significant importance”. The defendant argued that the issues of fact went beyond what the comptroller was used to dealing with, and would cover non-patent law issues such as estoppel, employment law, contract law and company law that were, according to the defendant, rare in proceedings before the comptroller. The hearing officer thought this to be the defendant’s strongest point, but was still not convinced, since any non-patent law issues that were likely to arise should involve no more than brief excursions into well-trodden byways. On the different costs regimes, the defendant argued it was unfair that the claimant could “take a punt” with virtually no exposure to paying the defendant’s costs and that the claimant, as a subsidiary of a group of companies, could easily afford the expense of the High Court. The claimant referred to the overriding objective in Rule 74 of the Patents Rules, and noted that they were trying to save expense and deal with the case in a way proportionate to their estimate of the value of the patents at stake. The hearing officer thought the claimant justified in wanting to keep the proceedings before the comptroller. Finally, the defendant submitted that an appeal to the High Court would be likely anyway, and so by refusing the deal the comptroller could remove one layer of costs. The hearing officer considered that if the comptroller declined www.cipa.org.uk

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DECISIONS

to deal with a case because of the likelihood of an appeal, he would be disregarding the jurisdiction that Parliament had conferred upon him in the Patents Act. The hearing officer concluded there were no issues which would more properly be determined by the High Court. Any arguments in favour of declining were outweighed by those for keeping proceedings before the comptroller, especially those based on the overriding objective. The comptroller did not decline to deal with the references.

Patentability: section 1(2) Cloudera, Inc. BL O/440/16 20 September 2016 The application related to performing data queries in a distributed computing cluster comprising a set of computers connected to each other across a network. According to the invention, a format conversion engine converted data into a target format, allowing query fragments to be executed more quickly since the transformation of data into the target format had already been done. The examiner considered that the invention was excluded from patentability as a computer program as such. The hearing officer considered the invention using the Aerotel four-step test and the AT&T/ CVON signposts. The fourth signpost asked whether the invention resulted in a more efficient/effective computer. The applicant argued that the invention resulted in the faster querying of data, and so related to a more efficient or effective computer, and in particular that an increase in processing speed was one of the technical effects repeatedly viewed as being adequate to put a computer program firmly outside the realm of excluded matter. The examiner agreed with this comment, but did not accept that in this case the invention resulted in the computer itself running any faster. The hearing officer differentiated between the processing speed of a computer and the speed at which a computer system processed queries. In particular the hearing officer noted that processing data prior to a query so that a query appeared to be executed quickly was not the same as the computer being quicker at processing the data. The hearing officer concluded that none of the signposts were met, and found the invention to be excluded under section 1(2). The application was refused.

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EPO decisions Clarity – Article 84 EPC T 2027/13: Controlled release pharmaceutical compositions of pregabalin / Lupin Ltd. TBA decision of 7 July 2016 Chairman: J. Riolo Members: D. Semino and D. Keeling This was an appeal by the applicant following the Examining Division’s decision to refuse a patent application concerned with controlled-release pharmaceutical compositions of the active ingredient pregabalin The Examining Division rejected the application on the ground of added subject-matter – Article 123(2) EPC. In a communication in preparation for the oral hearing of the appeal, the TBA considered that the wording “consisting essentially of ethyl cellulose” was also problematic for reasons relating to clarity of the phrase “consisting essentially of ”, where the applicant had also used the term “comprising” in the claim – Article 84 EPC. The applicant contended that the words were clear and meant, in the context of the specification, that the claimed composition did not contain any additional hydrophobic release-controlling agent. This interpretation, the applicant said, was in line with decision T 1170/07 where the expression “consisting essentially of ” was read to exclude the presence of further active ingredients, but to allow the presence of additional compounds. The decision was confirmed in T 1730/09, where “consisting essential of ” (sic) was considered to be clear and to allow the presence of other components provided that the essential characteristics of the claimed composition were not materially affected. The TBA noted that in the cases cited the expression “consisting essentially of ” referred to the whole composition present in the claim. In the present case, however, the composition was already defined by an open formulation. Since the claim already permitted the presence of any additional pharmaceutically acceptable component, the usual reading of “consisting essentially of ” did not make any sense. In particular, the skilled person could not consider the phrase as implying that no additional hydrophobic release controlling agent is present, in view of the open formulation, nor could he see the limitation as necessary to allow the presence of excipients or impurities. It was therefore not clear what limitation the phrase “consisting essentially of ” introduced. The applicant had filed an auxiliary claim set without the offending phrase and the appeal was therefore allowed on the basis of the revised claims and remitted back to the Examining Division for further prosecution. NOVEMBER 2016

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Examining Divisions – Article 18 EPC Signature, name, seal – Rule 113 EPC T 1033/16: Cross community invitation and multiple provider product information processing system / Accenture Global Services Limited. TBA decision of 26 September 2016 Chairman: R. Moufang Members: R. De Man and P. San-Bento Furtado This was an appeal by the applicant following the Examining Division’s refusal to grant a patent application for lack of inventive step. However, before the appeal was heard, the Board informed the applicant that the form (Form 2061) used by the Examining Division for its refusal had not been signed correctly. The Board expressed the intention to set aside the appeal and remit the case to the Examining Division and asked the applicant if it may proceed with its decision without the need for an oral hearing. The applicant agreed. In the reasoning of its decision, the Board explained that, to verify that official acts by the EPO are performed by competent employees, Rule 113(1) EPC provides that EPO decisions must be

PATENTS: EPO

signed by, and state the name of, the responsible employee. Rule 113(2) EPC provides that, for decisions produced with a computer, a seal may be used instead. The Board noted that Form 2061 was produced on a computer and did contain a seal and the name of the responsible employees. However, the Board stated that this was not a guarantee that the decision was taken by all members of the Examining Division and therefore the practice of including Form 2048.2, which includes the signatures of all members, along with Form 2061 had arisen. In the present case, Form 2048.2 was included with Form 2061 but instead of being signed by all members of the Examining Division Form 2048.2 was signed on behalf of the second examiner. The Board determined this to be evidence that the second examiner had not taken part in the decision-making process (since it was “less natural” to assume that the second examiner had taken part but had merely been unable to sign Form 2048.2). The Board stated that signing the decision is “an indispensable element of a member’s fully taking part in a decision taken in writing” and, referring to case T 211/05 (which had essentially identical facts), set aside the decision and remitted the case to the Examining Division. The Board also reimbursed the appeal fee under Rule 103(1)(a) EPC.

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

Business Practice Seminar FICPI-UK Open Seminar on Business Practice – 28 November 2016, 12 to 5pm Mewburn Ellis LLP, City Tower, 40 Basinghall Street, London, EC2V 5DE FICPI-UK is pleased to announce another in its long-running series of annual seminars aimed at sharing information about how to run IP businesses from day to day. This year’s topics centre on the structure of businesses and their people, including managing the firm for a healthy future. Delegates will hear from four speakers on: partnership structure and strategy; technology and innovation within law firms; nimble finance and management information; and training the future lawyer. • • • •

Partnership structure and strategy Clare Murray, CM Murray Opportunities and threats of technology and innovation within law firms Alastair Ross, Codexx The future lawyer: challenge and engagement Jamie Pennington, Pennington Hennessy Nimble finance: approaches to management information and decision making in a disruptive world Graham Lambert, Finance Director at Haseltine Lake LLP

Cost: £125 (£75 for FICPI members). For more details and to book see http://ficpi.org.uk/calendar/

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TRADE MARKS

Trade marks Decisions of the CJ and GC Ref no.

Application (and where applicable, earlier mark)

Comment

VICTOR

The GC upheld the BoA’s decision that there was a likelihood of confusion pursuant to Article 8(1)(b). The GC also endorsed the BoA’s finding that there had been genuine use of the earlier mark pursuant to Article 15(1). Whilst the earlier mark had been used in a number of different forms, the manner of use did not change the distinctive character of the mark in the form as registered and genuine use of the mark had therefore been demonstrated. The mark was licensed to a third party, CNM SL, and appeared alongside the CNM company name on the invoices, delivery notes and catalogues submitted as evidence of genuine use. The BoA was correct to find that this did not amount to use of the mark as a company or trade name or symbol. The GC endorsed the BoA’s decision that there was a likelihood of confusion. The marks were visually similar, and contrary to the BoA’s assessment, phonetically similar. The marks were also conceptually similar as ‘victor’ and ‘victoria’ would be understood by the Spanish-speaking public as male and female versions of the same name. This conceptual similarity was not precluded by other possible interpretations of the marks.

T-204/14

Victor International GmbH v EUIPO; Gregorio Ovejero Jiménez and María Luisa Cristina Becerra Guilbert 7 September 2016 Reg 207/2009

– clothing for playing sports, sports shoes for badminton, squash and/or tennis, headgear, including sports headgear, gloves, including sports gloves, accessories, namely headscarves, shawls, dress handkerchiefs, ties, belts and scarves, stockings (25) – retail services, including via the Internet and/or by means of teleshopping programmes, in relation to sports shoes for badminton, squash and/or tennis (35)

– footwear (except orthopaedic) (25) (Spanish mark)

The reported cases marked * can be found at http://www.bailii.org/databases.html#ew and the CJ and GC decisions can be found at http://curia.europa.eu/jcms/jcms/j_6/home Abbreviations used: A-G=Advocate General; BoA=Board of Appeal; GC=General Court; CJ=Court of Justice of the EU; CTM=Community Trade Mark; EUIPO=European Union Intellectual Property Office; EUTM=European Union trade mark; IPEC=Intellectual Property Enterprise Court This month’s contributors are Katharine Stephens, Hilary Atherton and Emma Green at Bird & Bird LLP. Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Sam Triggs, Toby Sears, George Khouri, Thomasin Procter, Rebekah Sellars, Sara Nielsen, Archie Ahern, Mark Livsey, Louise O’Hara, Georgie Hart, Ahalya Nambiar, Daisy Dier and Ingrid Omli.

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DECISIONS

Application (and where applicable, earlier mark)

Ref no. GC T-742/14

Alpha Calcit Füllstoffgesellschaft mbH v EUIPO; Materis Paints Italia SpA

– paints, varnishes, lacquers, preservatives against rust and against deterioration of wood, colorants, mordants, raw natural resins (2) – pargets (19)

19 July 2016

CALCILIT

Reg 207/2009

– crystalline calcium carbonate as a filler (CCCF) (1) – marble in the form of granules, grains and powders (19)

GC T 745/14

TeamBank AG Nürnberg v EUIPO; Easy Asset Management AD 20 July 2016 Reg 207/2009

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– financial affairs, monetary affairs, insurance, real estate affairs (36) – providing and transmission of data, information, news, music and images for access via computer and telecommunication networks (38) (international registration designating the EU)

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Comment The GC partially upheld an appeal against the BoA’s refusal to invalidate the mark applied for on the basis of a likelihood of confusion between the marks pursuant to Articles 8(1)(b) and 8(5). The BoA’s conclusions regarding insufficient proof of use of the earlier mark in respect of class 19 goods were upheld. The arguments regarding Article 8(5) were rejected as inadmissible as they had not been raised before the BoA. The GC endorsed the BoA’s reasoning that there was no similarity between CCCF and raw natural resins as they had different industrial functions and were not in competition. CCCF was deemed to be different to pargets as these goods did not share the same relevant public. The BoA erred in its assessment that CCCF was a raw material intended for industrial use whereas the remaining class 2 goods at issue (namely ‘paints, varnishes, lacquers; preservatives against rust and deterioration of wood; colourants; mordants’) were finished products intended for use by end consumers. The fact that goods were described as finished products did not mean they may not be used in an industrial process for the manufacture of other products. The BoA therefore failed to correctly identify the relevant public for the purposes of assessing the likelihood of confusion, which did not extend beyond professionals in the industrial sector. As a result of this failure, the BoA incorrectly concluded that there was no similarity between the remaining class 2 goods and CCCF. In light of this assessment, the GC upheld the appeal regarding the remaining class 2 goods on the basis of a likelihood of confusion for the relevant public, but rejected the remainder of the appeal.

In invalidity proceedings, the GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to Article 8(1)(b). The parties had not disputed the BoA’s finding that the services at issue were identical. The BoA was correct to find a strong visual similarity between the marks. The figurative elements of the earlier mark were of lower importance because of the size, position and purely decorative shape. The fonts were very common and, due to their size and position, the word elements of the marks could not be regarded as negligible. The GC confirmed the BoA’s decision that the marks were phonetically identical. The word elements, being

www.cipa.org.uk

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

– insurance services, financial services, monetary affairs, real estate affairs (36) – telecommunication services (38) (Bulgarian mark)

GC T 804/14

Tadeusz Ogrodnik v EUIPO; Aviário Tropical, SA 21 July 2016 Reg 207/2009

– veterinary, therapeutic, disinfecting and sanitary products and preparations for use in aquaristics, terraristics, fauna breeding and flora cultivation (5) – food in the form of flakes, granulates, grains, extrudates and tablets, dried and lyophilised natural food for fauna, especially for fish, ornamental fish, birds, reptiles, amphibians and breeded small animals, food for fauna containing nutritives, products and preparations for the cultivation of plants and aquarium plants and for the breeding of fish, ornamental fish, birds, reptiles, amphibians and breeded small animals, excluding bird feed and bird treats (31) TROPICAL

– food for fish, live fish and live plants (31) (Portuguese mark)

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Comment the only elements of the marks at issue likely to be pronounced, were identical as the symbol ‘@’ would easily be understood and pronounced as the letter ‘a’. The BoA was also correct to find that the signs at issue were conceptually identical as the figurative elements had no conceptual meaning and the word elements were identical. This assessment applied irrespective of the relevant Bulgarian public’s knowledge of English.

The GC annulled the BoA’s decision that there was a likelihood of confusion between the marks under Articles 53(1)(a) and 8(1)(b). The BoA had been wrong to find that the list of goods in class 31 for the contested mark could be reduced to the general category ‘food for fauna’. The use of the word ‘especially’ in the specification did not denote all the goods subsequently listed as examples of the proceeding category. In particular ‘products and preparations for the cultivation of plants and aquarium plants’ was a distinct category of goods from ‘food for fauna’. The BoA had also not been entitled to conclude (on basis of the evidence before it) that the goods in class 5 for the contested mark were similar to those listed in class 31 for the earlier mark. Whilst the same category of persons may in fact purchase both categories of goods, this on its own was not sufficient evidence to entitle the BoA to conclude that the goods were similar. The BoA had correctly found the marks to be similar but the finding of a likelihood of confusion was invalidated in the light of the incorrect assessment of the similarity of the goods. The GC confirmed that the BoA should have also taken into account Mr Ogrodnik’s submissions in relation to co-existence of the marks as a relevant factor in its assessment of the likelihood of confusion. The BoA’s decision was vitiated by a failure to state reasons and was therefore annulled.

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T-159/15

Puma SE v EUIPO; Gemma Group Srl 9 September 2016

– machines for processing wood and aluminium, and for treatment of PVC (7)

Reg 207/2009

– bags to wear over the shoulder and travel bags, trunks and suitcases (18) – clothing, boots, shoes and slippers (25) – games, toys; equipment for physical exercise, equipment for gymnastics and sports (28) (International Registrations designating various EU member states)

TRADE MARKS

Comment

The GC annulled the BoA’s decision in so far as it had rejected an opposition to the mark pursuant to Article 8(5). The BoA found that there was a certain degree of visual similarity between the earlier marks and the mark applied for, and that they conveyed a similar concept of a “pouncing feline recalling a puma”. However, the BoA had not carried out a full examination of the reputation of the earlier marks, finding that even if the reputation was regarded as proven, the opposition would fail because the other conditions set out under Article 8(5) had not been satisfied, namely that unfair advantage had been taken of the distinctive character or repute of the mark. The GC also found the BoA’s decision to be vitiated by an error of law as it departed from the decision-making practices of the EUIPO by not considering several past decisions of national offices and an unpublished GC judgment which found that that the earlier marks had a reputation. The BoA should have either requested supplementary evidence of the reputation of the earlier marks or provided the reasons why the findings made in the earlier decisions were to be discounted. On this basis, the GC found that the BoA infringed the principle of sound administration, in particular its obligation to state reasons. The GC held that this error may have had a decisive influence on the outcome of the opposition and, since the BoA did not carry out a full examination of the reputation of the earlier marks, the GC was unable to rule on the claim regarding Article 8(5).

GC T 146/15

hyphen GmbH v EUIPO; Skylotec GmBH 13 September 2016 Reg 207/2009

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– airtight clothing (9) – textile and textile goods (24) – clothing, footwear, headgear (25) – development and design of all types of textile products, in particular clothing, headgear, accessories, footwear and bags, development of products for protection against solar radiation (42)

NOVEMBER 2016

The GC partially annulled the decision of the BoA in so far as it revoked the mark for non-use in respect of goods in classes 9 and 25 pursuant to Article 15(1)(a). The mark had been used with a circle around it, in sky blue and alongside the word ‘hyphen’ – none of these elements were held to alter the distinctive character of the mark as registered, despite the fact that the sole figurative element of the mark itself only afforded it a minimum level of distinctive character. The circle completely lacked distinctive character, the sky blue colour was not particularly original and the word ‘hyphen’ did not deprive the figurative element of an autonomous identification function. As such, the BoA had erred in law by finding that the mark had not been put to genuine use in relation to classes 9 and 25 goods for the purposes of Article 15(1)(a).

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T-390/15

Perfetti Van Melle Benelux BV v EUIPO; PepsiCo, Inc.

– sugar; pastry; confectionary; candies; chew candies; drops; sweets; chocolate; cocoa (30) 3D’S

13 September 2016 Reg 207/2009

TRADE MARKS

Comment

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to Article 8(1)(b). The goods at issue and sweet ‘cereal chips’ had at least an average degree of similarity. They shared the same intended purpose, the same distribution channels, could be manufactured by the same undertakings and were in competition with each other. However, there was a low degree of similarity in relation to the goods at issue and salty ‘cereal chips’. Therefore, the BoA was correct to find that, taken as a whole, ‘cereal chips’ and the goods at issue were similar to a slightly lower than average degree. The BoA was correct to find that the marks, taken as a whole, were highly similar.

– cereal chips (30)

GC T 408/15

Globo Comunicação e Participações S/A v EUIPO 13 September 2016 Reg 207/2009

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– recording discs; DVDs and other digital recording media (9) – printed matter; books; magazines (16) – television broadcasting services (38) – entertainment services (41)

The GC upheld the BoA’s decision rejecting the application for a sound trade mark under Article 7(1)(b). The BoA was correct to characterise the mark applied for (which was a ringtone) as banal commonplace ringing sound. The very simple sound motif would generally go unnoticed or would not be remembered by the relevant consumer. The BoA was correct to conclude that a sound mark consisting of ringing sounds would not function as an indication of origin unless it included elements capable of distinguishing it from other sound marks. The mark, which included only two rings, could not be equated to a jingle. As such, the sound mark at issue would be perceived as a mere function of the relevant goods and services and would not be remembered by the relevant consumer.

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DECISIONS

Application (and where applicable, earlier mark)

Ref no.

GC T-453/15

Trinity Haircare AG v EUIPO; Advance Magazine Publishers, Inc. 15 September 2016 Reg 207/2009

– beauty preparations and substances; cosmetics; make-up; deodorants for personal use; anti-perspirants; care and appearance of the skin, body, face, eyes, hair, teeth and nails; non-medicated baby oils and baby creams; nonmedicated baby wipes; (3)

GC T-358/15

Arrom Conseil v EUIPO; PUIG France SAS T-359/15

Arrom Conseil v EUIPO; Nina Ricci SARL

– soaps, perfumes and cosmetics (3) – clothing, footwear and headgear (25) – presentation of goods on communication media for retail purposes of soaps, pefumes and cosmetics (35)

15 September 2016 NINA RICCI

Reg 207/2009

– perfumery; essential oils; cosmetics (3) – clothing; footwear, headgear (25) RICCI

– perfumes, cosmetics, soaps and substances for cleaning and polishing (3) – clothing, fotwear, headgear (25)

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Comment

The GC upheld the BoA’s decision rejecting the application for a declaration of invalidity. The mark did not infringe Articles 7 (1)(b), 7(1)(c), or 52(1)(b). The BoA was correct to find that there was nothing in the definition of the word ‘vogue’ to indicate that it was descriptive of the essential characteristics of the beauty and baby care products. It was held that the word ‘vogue’ related to popularity and fashion, neither of which were concerned with the goods at issue. Further, Trinity Healthcare had not demonstrated that the term ‘vogue’ was commonly used in advertising as a laudatory term. Finally, the GC endorsed the decision that the mark had not been applied for in bad faith. The fact that Advance Magazine Publishers had made multiple applications for multiple marks for the word VOGUE had no bearing on the legality of the mark at issue.

The GC upheld the BoA’s decision that there was a likelihood of confusion in relation to some but not all of the goods and services at issue pursuant to Article 8(1) (b) and confirmed that the mark applied for took unfair advantage of the earlier marks under Article 8(5). The BoA was correct to find that the signs were visually and phonetically similar since the earlier mark RICCI was entirely reproduced in the mark applied for. The BoA was also correct to find that the marks were conceptually similar as consumers with an understanding of English would perceive the shared mark RICCI element as a name. The GC endorsed the BoA’s assessment of similarity of the goods and services at issue. The class 3 goods were held to be part identical and part similar; there was identity between the class 25 services; there was a low degree of similarity between the class 3 and class 25 goods; there was average similarity between the class 25 goods and certain class 35 services relating to footwear and clothing but no similarity as regards the remaining class 35 services. It followed that the BoA was correct to find that there was a likelihood of confusion in relation to the goods that were identical but no likelihood of confusion in relation to those goods and services held to be similar or dissimilar. The GC held that the BoA properly conducted a

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

TRADE MARKS

Comment global assessment of the circumstances as required under Article 8(5) and was therefore correct to find that the mark applied for took unfair advantage of the earlier marks.

GC T 633/15

JT International SA v EUIPO; Corporación Habanos, SA 15 September 2016

PUSH

– tobacco; cigarettes, cigars, cigarillos; snuff; smokers’ articles; cigarette papers, cigarette tubes and matches (34) PUNCH

– cigars; cigarettes; tobacco; matches (34) (various national marks)

Reg 207/2009 – cigars (34)

The GC dismissed the appeal from the BoA’s decision that there was a likelihood of confusion between the marks under Article 8(1)(b). The marks were visually and phonetically similar. Even though the word ‘push’ would be understood by a large part of even the non-English-speaking general public with a sufficient knowledge of English, it was not certain that the word ‘punch’ could be understood by the Spanish-speaking public. As such, a conceptual comparison of the marks was not possible. Although the goods at issue were aimed at the general public, the level of attention was relatively high and further heightened in respect of cigars. For a consumer of the goods who went to a specialist shop, at a time when it was not busy or noisy and sufficiently-lit, the display of identical goods bearing trade marks which were visually similar was sufficient to give rise to a likelihood of confusion. The opposition therefore succeeded.

– tobacco; smoker’s articles; matches (34) (Italian mark)

GC T 237/15

Edward Labowicz v EUIPO; Pure Fishing, Inc 22 September 2016 Reg 207/2009

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– fishing lines and tippets; floats for fishing; fishing weights (28)

The GC upheld the BoA’s decision that the mark was descriptive of the goods at issue pursuant to Article 7(1) (c). The BoA was correct to find that the relevant public would understand the word ‘nano’, even on its own, to refer either to nanotechnology or a very small object. Equally, the GC endorsed the BoA’s analysis that the word ‘nano’, used in relation to fishing equipment, would be perceived by the relevant public as indicating that the goods in question had been manufactured using nanotechnology. The sign therefore served to designate a characteristic of the goods and did not evoke the excellence of the goods in an abstract manner.

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Application (and where applicable, earlier mark)

Ref no.

MERLIN’S KINDERWELT

cases T-565/15 and T-566/15

Excalibur City s.r.o. v EUIPO; Ferrero SpA 20 September 2016 Reg 207/2009

– education and providing of training, entertainment and amusement games, sporting and cultural activities, children’s playgrounds and amusement parks, theatre productions and other services relating to education or entertainment (41) KINDER

– education; providing of training; entertainment; sporting and cultural activities (41) – cakes, pastry, confectionery, cocoa products and chocolate (30) (Italian marks)

GC T-512/15

Sun Cali, Inc v EUIPO; Abercrombie & Fitch Europe SA 22 September 2016 Reg 207/2009

– handbags (18) – women’s clothing (25) – retail store services featuring clothing shoes and handbags (35) – fashion consulting services; wardrobe management services; image consulting services; and personal shopping services for others (45)

– women’s clothing (25)

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Comment The GC annulled the decision of the BoA and held that there was no likelihood of confusion between the marks pursuant to Article 8(1)(b). The BoA erred in finding that the element ‘merlin’s’ in the mark applied for did not have a distinctive character – it would not be seen as descriptive by the relevant Italian public as the connection between that element and the services at issue was not sufficiently direct or specific. Both ‘merlin’ and ‘kinderwelt’ had an average degree of distinctiveness – the BoA was wrong to conclude that ‘kinderwelt’ was the dominant element of the mark applied for. The marks therefore had to necessarily be compared as a whole, and not on the basis of their dominant elements. Notwithstanding the common element ‘kinder’, the marks were not visually or phonetically similar. As the word elements ‘kinder’ and ‘kinderwelt’ were German terms with no clear meaning to the relevant Italian public, a conceptual comparison was irrelevant. The GC held that the marks were not identical or similar for the purposes of Article 8(1)(b). The BoA had therefore erred in finding a likelihood of confusion between the marks.

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks in classes 18, 25 and 35 pursuant to Article 8(1)(b). Further, the BoA had been correct to dismiss the proprietor’s appeal on the basis that it was not duly represented in accordance with Article 92(3). The proprietor’s representation by its CEO did not fall within the entitlement under Article 92(3) to be represented before the EUIPO by an employee. The proprietor had failed to prove that its German branch (of which the CEO was an employee) was a ‘real and effective industrial or commercial establishment’: the German branch was registered as a sole trader and thus had no legal personality. The BoA was also correct to find that the class 35 services were similar to a certain degree to the class 25 goods covered by the earlier mark on the basis that the goods were at the least very important, if not indispensable, to the provision of the services which created a relationship of complementarity. The figurative elements of the mark applied for did not have a high level of distinctiveness with regard to class 25 goods or class 35 services, even when combined with the word elements ‘co’ and ‘sun’; these additional elements were incapable of dispelling the visual and phonetic similarity of the marks. The BoA therefore did not err in finding the marks were conceptually similar for the part of the relevant public who would associate the common element ‘cali’ with ‘California’.

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DECISIONS

Broadly drafted compromise agreement found to preclude claims for trade mark infringement and passing off Oran Pre-Cast Ltd (“Oran”) v Oranmore Precast Ltd (“Oranmore”) & Ots* Judge Melissa Clarke; [2016] EWHC 1846 (IPEC); 21 July 2016 Judge Melissa Clarke held that Oran was precluded from bringing a claim for trade mark infringement and passing off against Oranmore by operation of a compromise agreement. Absent this finding, the Judge said obiter that she would have given judgment to Oran in respect of its infringement claim under section 10(2) and its claim for passing off. Oran was an Irish, family company that manufactured and sold precast concrete products and had traded in the UK since 2008. Oranmore also manufactured and sold precast concrete products and was based in Norfolk. It had traded in the UK since 2012. The founders and directors of Oranmore (Ross Melville and Richard Burke, respectively the second and third defendants) were formerly a director and General Manager of Oran, and were related to many of the current directors, shareholders and employees of Oran by marriage or blood. The Judge held that one of three letters constituting a compromise agreement entered into between Oran and Richard Burke in 2013 operated as a release of liability of Richard Burke (as well as Ross Melville and Oranmore as alleged joint tortfeasors) for the claims of trade mark infringement and passing off, and precluded Oran from bringing the claims against them. The relevant wording in the letter provided that Oran would have: “no claim against you, Richard Burke, in contract, common law and/or statute”. The Judge found that the reasonable person with all the background knowledge which would reasonably have been available to the parties in the situation in which they were at the time of the compromise agreement would have understood the parties to have meant that this wording would cover all known and foreseeable claims connected with Richard Burke leaving Oran, in order to resolve all matters between them and provide the parties with a clean slate. This included any claims arising from the founding and trading of Oranmore and was not limited to issues of Mr Burke’s employment at, and subsequent redundancy from, Oran. The Judge noted it was important that, by the time of the compromise agreement, both parties knew that Oranmore had been trading under the ORANMORE name, and Oranmore knew that Oran was unhappy about its use of the name. In case her conclusions in respect of the compromise agreement were wrong, the Judge went on to consider the merits of Oran’s claim under section 10(2). Finding that the registered mark ORAN PRE-CAST and the signs used by Oranmore (ORANMORE PRECAST, ORANMORE PRECAST and a device) were highly similar, that the relevant goods Volume 45, number 11

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and services were identical, that the registered mark was highly distinctive, and that there was at least some evidence of actual confusion, the Judge concluded that she would, absent the compromise agreement, have found in Oran’s favour on both its trade mark infringement and passing off claims.

High Court refuses to make costs order in favour of intervener Cadbury UK Ltd v The Comptroller General of Patents Designs and Trade Marks; Société de Produits Nestlé S.A.* John Baldwin QC; [2016] EWHC 1609 (Ch); 7 July 2016 John Baldwin QC (sitting as a Deputy Judge) refused to make an order with respect to Nestlé’s costs of intervening in Cadbury’s unsuccessful appeal from a decision of the hearing officer. In an attempt to head off a potential validity attack on its series mark, Cadbury applied unsuccessfully to the UKIPO to delete a mark from the series under section 41 and the rules made thereunder. John Baldwin QC dismissed Cadbury’s appeal from the decision of the hearing officer ([2016] EWHC 796 (Ch), reported in June [2016] CIPA 49). On the question of Nestlé’s costs, the Judge observed that there was no established practice with respect to interventions in ex parte applications to the IPO, and he was of the view that some certainty in this area was desirable. He commented that, in a case such as this where it was widely recognised that the Comptroller was usually represented by highly competent counsel with relevant expertise, he was much attracted to the rationale of the practice in the Competition Appeal Tribunal, and in particular the decision in Ryanair Holdings Plc v Competition and Markets Authority, Aer Lingus Group Intervening [2015] CAT 15. There, the starting position was that no order for costs was made in favour of interveners. The Judge considered that the first and third of three elements set out by the Tribunal in Ryanair were satisfied; firstly, the position of the intervener was successful and, thirdly, the intervener did not duplicate the submissions of the respondent. He thought that the second element set out in Ryanair was “just about” satisfied, i.e. the submissions of the intervener had added value to the hearing. However, it was established in Ryanair that there had to be something more in order for the Tribunal to depart from the general principle not to award interveners’ costs. In the present case, the Judge was of the view that there was nothing more of substance to go into the balance. He considered that Nestlé had a commercial interest in intervening in Cadbury’s application to delete the relevant trade mark but that there was no supervening public interest and it was a very wellresourced party. There was no suggestion that Nestlé would be materially disadvantaged if it did not recover the costs of its intervention, and he therefore made no order with respect to Nestlé’s costs. NOVEMBER 2016

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Copyright Hyperlinking to illegally posted copyright works GS Media BV v Sanoma Media Netherlands BV & Ots CJ; Second Chamber; C-160/15; 8 September 2016 The CJ has held that in order to assess whether a hyperlink to a copyright protected work placed online without the consent of the rights holder was a communication to the public under Article 3(1) of Directive 2001/29/EC, it must first be determined whether the hyperlinks were provided other than for financial gain by someone who did not know, and could not reasonably have known, that the publication of that work was unauthorised. A hyperlink posted under these circumstances would not be a communication to the public. However, if the hyperlink was provided by someone acting for financial gain, full knowledge of illegality must be presumed. In those circumstances, the hyperlink would amount to a communication to the public unless the presumption of knowledge was rebutted. Following the opinion of A-G Wathelet (reported in June [2016] CIPA 51), the CJ reviewed the law on the meaning of ‘communication to the public’ and concluded it required both an ‘act of communication’ and a ‘new public’ as held in Svensson (C-466/12, reported in March [2014] CIPA 184). The CJ also noted that an ‘individual assessment’ should be applied in each case. On that basis, the CJ reached the following conclusions: 1. Where a person acting not for profit publishes a hyperlink to a work available online without the consent of the rights holder, it was necessary to take account of the fact that the person did not know, or could not reasonably know, that the work had been published without consent. The intervention of the individual in these circumstances was not made in full knowledge of the consequences of his actions (i.e. providing access to a work illegally posted on the Internet) and so there was no act of communication. 2. In contrast, where the person knew or ought to have known that the hyperlink provided access to a work published illegally online (for example if they had been put on notice), or provided a hyperlink to circumvent restrictions which limited access to a work, the provision of that hyperlink would constitute a communication to the public. 3. Further, where hyperlinks were posted for profit, the person posting the hyperlinks should carry out the necessary checks to ensure that the work hyperlinked 66 CIPA JOURNAL

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to was not illegally published. There was therefore a presumption that the posting of the hyperlink had been done with full knowledge of the protected nature of the work and the possible lack of consent to its publication online. In these circumstances, unless the presumption was rebutted, the posting of the hyperlink would be a communication to the public. Confirming the decision in Svensson, the CJ pragmatically sought to distinguish between the posting of hyperlinks by: 1. ordinary Internet users (who could not be expected to perform a detailed assessment of the works to which they are linking and whether or not those works were published with consent); and 2. users of the Internet who sought to profit by sharing third-party works or who knowingly and deliberately infringed copyright. The CJ did not provide guidance on the position where the linked-to copy was unauthorised but the rights holder had authorised a copy to be made freely available elsewhere on the Internet. The judgment indicated that a hyperlink in those circumstances would not amount to a communication to the public, but further judicial clarification of this point will be required.

CJ rules on private copying levies Microsoft Mobile Sales International Oy & Ots v Ministero per i beni e le attivita culturali (MIBAC) & Ots CJ; Second Chamber; C-110/15; 22 September 2016 Following a request for a preliminary ruling, the CJ held that national legislation, such as the Italian law at issue, was precluded from making the payment of the private copying levy for producers and importers of devices and media intended for use clearly unrelated to private copying, subject to the conclusion of agreements with a collecting society with a legal monopoly on the representation of author’s interests. Furthermore, such legislation was also precluded from providing that the reimbursement of such a levy, where duly unpaid, could only be requested by the final owner of those devices and media. The parties comprised manufacturers and distributors of personal computers, mobile telephones and other technology with recording capabilities on the one hand and various Italian organisations that represented the authors and publishers of intellectual works on the other. The proceedings concerned national Italian legislation on the payment of fair compensation due to the authors of intellectual works, where such works were reproduced for private personal use. www.cipa.org.uk

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DECISIONS

Under the Italian legislation, in circumstances where recording or copying devices were acquired for professional use by persons other than natural persons for purposes clearly unrelated to private copying, the criteria for the exemption from the copying levy was left to private agreements between the body responsible for collecting the levy – in the present case, the Italian Society for Authors and Publishers (SIAE) – and the manufacturers, distributors and importers of those devices or their trade associations. In addition, the legislation provided that where the levy had been paid in circumstances where it was not applicable, it was the end user of the device (and not the manufacturer, importer or distributor) who was entitled to request reimbursement. The CJ held that such legislation was incompatible with Article 5(2)(b). In his opinion, A-G Wahl acknowledged that manufacturers, importers and distributors of copying devices that were responsible for the payment of the private copying levy, could pass the equivalent sum on to the end users in the retail price of those goods on the condition that the sum was reimbursed to those end users when it was not due on the goods sold. The Italian legislation at issue contained no such exemption. Contrary to EU law, the national legislation did not allow for the equal application of the levy to the manufacturers, importers and distributors of recording and copying devices. As the application of the exemption was left to the conclusion of freely negotiated agreements between the SIAE and those responsible for the payment of the levy, there was no objective and transparent criteria for its application. Equal treatment of those responsible for payment could not be ensured, as different terms could be negotiated under each individual agreement which were subject to private law. Finally, the SIAE’s reimbursement procedure was only available to a non-natural end user and where the device was not to be used for private copying. The reimbursement was not available to the manufacturers, importers or distributors of the devices even when they could demonstrate that they had supplied the devices for purposes clearly unrelated to private copying, which was held to be incompatible with EU law. The legislation was also contrary to the provisions of Article 5(2)(b) as it precluded natural persons from applying for the reimbursements.

DESIGNS

Designs Failure to register a licence is not a bar to a licensee bringing infringement proceedings Thomas Philipps GmbH & Co. KG (‘Philipps’) v Grüne Welle Vertriebs GmbH (‘Grüne’) CJ (Seventh Chamber); C-419/15; 22 June 2016 The CJ held that a licensee to a Registered Community Design was entitled to bring infringement proceedings under Article 32 (3) of Regulation 6/2002 notwithstanding that the licence had not been entered in the register of Community Designs. The CJ further held that a licensee was entitled to recover compensation for its own loss in infringement proceedings brought under that provision. Grüne was the exclusive licensee for Germany of an RCD relating to laundry balls. With consent of the licensor, Grüne commenced proceedings in Germany against Philipps seeking compensation relating to Philipps’s sales of laundry balls which were claimed to infringe the RCD. Grüne sought compensation for its losses arising from the infringement but the licensor was not a party to the proceedings. Philipps challenged Grüne’s entitlement to bring proceedings on the basis that the licence had not been entered on the register of Community Designs. On appeal, the Oberlandesgericht Düsseldorf referred two questions to the CJ asking first whether Grüne was precluded from bringing proceedings because its licence was not registered and second whether Grüne was entitled to seek compensation for its losses in proceedings that did not also consider losses suffered by the licensor.

Unregistered licence The CJ concluded that Article 33(2) did not preclude a licensee from bringing proceedings for infringement of an RCD where the licence had not been entered onto the register of Community Designs. In doing so, the CJ held that an interpretation of the first sentence of Article 33(2) which restricted the right of a licensee to bring infringement proceedings under Article 32(3) would be contrary to the purpose of Article 33(3) which was to regulate the rights of third parties with interests in a Community Design. Whilst Article 28(b) restricted the right of a proprietor to initiate infringement proceedings before registration of the transfer of the Community Design to them, Article 32 contained no equivalent provision in relation to a licensee’s ability to initiate infringement proceedings.

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DESIGNS

proceedings, either by initiating proceeding in their own right under Article 32(3); or intervening in infringement proceedings initiated by the proprietor under Article 32(4). Whilst only Article 32(4) referred to compensation for damages suffered by the licensee, this did not preclude a licensee also seeking compensation for its losses in proceedings commenced in accordance with Article 32(3). To limit Article 32(3) in this manner would frustrate the licensee’s ability to defend the rights conferred upon it by its license and would be contrary to the objective of Regulation 6/2006 and the purpose of Articles 32(3) and (4).

Judge Hacon rejected Raft’s claim that the defendants had passed off their sofas as Raft sofas by a combination of three means:

UK unregistered design rights in sofa found infringed but passing off claim rejected

The Judge found nothing in the evidence which supported Raft’s claim of a misrepresentation. While customers had commented to Raft that Highly Sprung’s sofas were identical to Raft’s but cheaper, there was no evidence that a significant proportion of the public were misled about the existence of a trade connection between Raft and Highly Sprung as retailers, or about the maker of Highly Sprung’s sofas. Finally, the Judge rejected Mr Hornsell’s counterclaim that Raft had infringed his UK unregistered design right in the overall design of a sofa called ‘Combi’ by making and selling its ‘Manhattan’ sofa. Although he found that the Combi design was original and that design right subsisted in it, Mr Hornsell had created it in the course of his employment for the benefit of a former Freestyle company which had since been liquidated. As there had been no assignment of the design right to any of the defendants before it went into liquidation, none had a cause of action.

Raft Ltd v Freestyle of Newhaven Ltd & Ots* Judge Hacon; [2016] EWHC 1711 (IPEC); 13 July 2016 Judge Hacon held that Freestyle and the third defendant, Highly Sprung, had infringed Raft’s UK unregistered design right in its wide-arm ‘Loft’ sofa. However, Raft’s claims for infringement of its unregistered design rights in its skinnyarm Loft sofa, and for passing off, were dismissed. The defendants’ counterclaim for infringement of another sofa design also failed. Raft was a manufacturer and retailer of furniture with a flagship store on Tottenham Court Road in London. Freestyle was a manufacturer of sofas and Highly Sprung operated a furniture retail store in Tottenham Court Road, immediately adjacent to Raft’s store. The Judge accepted the evidence of Raft’s director that he largely created the wide-arm Loft design in the process of explaining to Freestyle’s managing director (Mr Horsnell) what he wanted by way of a new sofa. Although the Judge accepted that the design of sofas was a field in which competing designs could be quite close, he found that Raft’s director had at the time been exercising his skill as a furniture designer in a manner that was sufficient to create an original design. However, the change in design required to produce the slim-armed sofa was found to be too minor and localised to give rise to a newly original design in the sofa as a whole. As Freestyle admitted that it made sofas to the wide-arm Loft sofa design for supply to Highly Sprung, the Judge held that Freestyle had infringed Raft’s UK registered design right. He went on to find that Highly Sprung was liable for secondary infringement through possession and sale under section 227. Merely because Mr Hornsell (who became managing director of Highly Sprung) had believed that the Loft sofas were copies of another third party design did not amount to lack of knowledge or reason to believe within the meaning of section 227. Therefore, Highly Sprung and Mr Hornsell were found jointly liable. 68 CIPA JOURNAL

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1. by selling three styles of sofa identical in shape to three styles sold by Raft; 2. by using the same names for those sofas as Raft used for its equivalent sofas (Loft, Manhattan and Lincoln); and 3. by Highly Sprung repainting the exterior of its store in a style which resembled the appearance of Raft’s store next door.

www.cipa.org.uk

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Straight allies A basic guide on LGBTQ+ for straight allies in ten questions. By Darren Smyth (Fellow).

o, you want to be a straight ally? First off, do you hate the term “straight ally”? So do I. If you can think of something better, please do. But I think we all know what the term is trying to get at – “I happen to be heterosexual, but I want to be supportive of LGBTQ+ people”. So here is my quick and easy* guide, shamelessly cribbing the format from The Last Leg. I should start off by pointing out that although I write as a gay man, I can speak only to and from my own experience, which is also heavily influenced by other aspects of my background (white, Christian, public school, Oxford University, that sort of thing). Other people who share my sexuality coming from a different background may have a different take on these issues, although I have tried my best to reflect in this piece what I hear from friends with a different story from mine.

1. Is it ok to ask – why LGBTQ+? What is wrong with “gay”? Here, I am going to let you into a little secret. The different sections of the LGBTQ+ tribe (why I use the word “tribe” is part of the advanced course – you only get to do that when you have passed this basic course) are actually very different indeed. Other than growing up as a minority in a society that rejects what we are, we actually have rather little in common with each other. Let’s go through it (taking the first two in reverse order as it is more logical to explain that way round): Gay: this can be applied to men or women, but more often refers to men, since women have their own term (see Lesbian). “Gay” means being attracted to someone of the same sex. Lesbian: a woman who is sexually attracted to women. Why do they get their own word? Something to do with ancient Greece, I think. And why not.

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Bisexual: sexually attracted to both sexes. Actually many people think that sexuality is a continuum, and bisexual means that you are somewhere in the middle. Occasionally used as a euphemism by gay people who think that it makes them more acceptable to straight people. (It doesn’t.) Transgender: now, here it gets complicated. I am a gay man – I have no right to speak for transgender people at all. While we generally are supportive of each other’s rights, I have no more entitlement to describe the transgender experience than you do. I think that I am able to say that it means that your gender identity is different from that assigned to you at birth. “Gay” does not mean that – as a gay man I feel no more “like” a woman than a straight man does. There is no correlation between gender identity and sexual orientation. Queer: a reclaimed term of abuse. It has a range of meanings that again are for the advanced course. Don’t use it about someone unless they give you permission. +: this is because any list is non-exhaustive. There are other subgroups within the LGBTQ+ tribe. (And sometimes you will see other letters in this list that allude to those subgroups, but again we can probably leave that for later). So, I hope you can see that the single word “gay” is just not enough to cover the range of what we are dealing with here. I am writing this as a gay man – others within the tribe will tell you lots of other things that I cannot begin to explain, because I have no more experience of them than anyone else might.

2. Is it ok to ask what people are looking for in a straight ally? I think that what we are asking you to support is an environment where we don’t have to “filter” – we don’t need to constantly monitor our behaviour so that we avoid saying NOVEMBER 2016

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ARTICLE

this thing, or referring to that thing. I would like to be able to casually refer to my partner, my friends, my social activities, without worrying that I am going to be judged, criticised, or attacked. We would also like your help in dispelling some stereotypes and preconceptions, some of which are wrong and damaging. I am sure that you don’t have these, otherwise you would probably not be reading this, but many of those around you may do. In the workplace, providing a supportive environment could include having HR policies that specifically include people of same-sex attraction, ensuring that if you have events to which partners are invited it is made clear that same-sex partners are welcome, and ensuring that homophobic remarks are not tolerated in the workplace.

3. Is it OK to ask about children? A common misconception is that being gay and wanting children are in some way linked. Many gay people have no desire to have children; many others want children very much indeed. I will let you into a little secret – I have noticed that gay men who want children are often partnered with men who don’t. Odd that, isn’t it? While we are on the topic of children, it would be great if you could help us dispel the idea that we are somehow not “safe” around children. When people have an instinctive concern about their children, it usually means one of three things:

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STRAIGHT ALLIES

1. They are confusing homosexuality with paedophilia. They have nothing to do with each other. Gay men are no more likely to be paedophiles than straight men. In fact, quite a lot less. We would like people to get this idea out of their minds. We will be very offended if they don’t. 2. They think that homosexuality can be “caught”. It can’t. Trust me. How do I know? Well, while I don’t know of anyone who has tried to become gay, I do know a lot who have tried to become straight. It never works. Sexuality is basically fixed – you can’t change it. So relax, if your daughter is going to be a lesbian she is one already – it won’t be anything to do with meeting me or seeing me kissing my boyfriend. 3. They think that same-sex relationships are somehow a more “grown-up” subject than opposite-sex relationships and that children need to be protected from knowing about gay relationships in order to protect their innocence. This is where “homosexuality” is something of an unfortunate term since it implies that there is something more “sexual” to being gay than there is to being straight. Of course in reality, gay or straight, it’s fundamentally about relationships and love. Also, “protecting” children from any knowledge of the existence of same-sex relationships is very damaging to those children who are themselves gay, even if this is not a realisation that they have yet come to.

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ARTICLE

4. Is it ok to make positive generalisations? Please let me stop you right there. It is no more reasonable to suppose that a gay man is more witty, artistic, or good at interior design (or anything else for that matter) than a straight one than it is to suppose that all women are good at ironing and childcare. We are not, necessarily. Ok, as it happens I am extraordinarily witty, but I assure you that some of us are quite dull. No, honestly. A stereotype is a stereotype, even if you think it is a positive one. While we are on the subject, we don’t all like Kylie / Graham Norton / ballroom dancing / [fill in activity with large gay following] either, as I am sure you know.

5. Is it ok to ask for details of your sex life? When you put it like that, the answer seems to be quite selfevidently “no”, doesn’t it? But some people seem to believe that they are showing how open minded they are, and how knowledgeable they are about various terminology, by asking questions like “Are you a top or a bottom?” But really, unless you are basically my closest friend (in which case you will know), then it is none of your business.

6. Is it ok to ask about your personal life? Generally, if you know me well, it is perfectly fine to ask about my partner (if you know I have one) and my gay friends. I would like that. But (and I am sorry to make things complicated here) some of us have spent so long filtering out of our conversation any reference that might reveal our sexuality that we have become rather reserved about these things, and these learned behaviours can take a long time to unlearn. So if you sense any reticence from us, please understand and don’t take it personally. In that case, I would suggest to stick to open questions instead, that leave the decision to us about what level of detail to provide.

7. Is it ok to support gay marriage? This is a subtle one. Gay people who want to marry their partners don’t want “gay” marriage. They want “marriage’. Equal marriage. The same marriage that you might have. Putting the “gay” in front of it is quite wrong, when you stop to think about it. As it happens, while many gay people do wish to marry their partners, many others actually do not like the cultural and historical baggage that comes with the concept, and do not wish to express their commitment in that way. Of course we all want to have that choice available to us, even if we do not choose to avail ourselves of it. Some of us actually still opt for Civil Partnership.

STRAIGHT ALLIES

I have a lifetime of experience of doing that, and I am pretty expert at it by now. But asking us to start filtering again in a particular environment risks undoing all the marvellously supportive work you have otherwise been doing.

10. Is it ok to help someone come out if I think that they might be gay? It is really kind of you to consider this, but actually probably no. If you have the kind of environment mentioned above (at 2), then someone will come out if and when they are ready. Asking outright, or dropping hints, will probably just lead to embarrassment. As will locking them in a room with another gay person. I am so glad that we had this little chat. I hope that it has helped. * I lied – it is neither quick nor easy. Many LGBTQ+ people are not supportive of other LGBTQ+ people, so if you don’t get it quite right, don’t worry too much. As long as you are trying. This article was written for IP Inclusive and first appeared on its blog at www.ipinclusive.org.uk/blog/lgbtq-a-basic-guide.

How Out Can I be? IP Out Event • 17 November 2016 • 6.30-8.30pm • At the offices of Kilburn & Strode LLP, London WC1R 4PJ Join us for the first IP Out event, kindly hosted by Kilburn & Strode LLP, to discuss how "out" people can be at work. This panel and group discussion moderated by a member of the IP Out committee will discuss: •

• • • •

Individual perspectives from those on the panel on their experience of coming out/being out at work and with clients. How to tackle potentially difficult situations, either within an organisation or from a client-facing perspective. Who to reach out to for help when you need it. How to approach the subject with clients. Perspectives for people from small organisations.

Followed by drinks and networking.

8. Is it ok to ask whether you know…? Sorry, I am afraid that the chances that I know the only other gay person you know are quite slim.

9. Is it ok to ask if you would mind toning it down in front of…

If you would like to email your questions or discussion points for the panel in advance, please send them to IPoutNetwork@gmail.com. Book your FREE ticket at www.ipinclusive.org.uk/ip-out.html – spaces are limited! All are welcome to attend, whether LGBTQI+ or a straight ally.

Of course I can “tone it down” in front of whoever you like. Volume 45, number 11

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2015

The not-so-secret diary of a CIPA President

By Andrea Brewster

A group of us meet with an ex-MP, who explains about how Parliament works so that we can understand how to extend our influence. Basically, it works like this. MPs are JU LY very busy. They are not going to turn up to anything you organise. They are not going to answer your letters or return your calls. They are not going to be remotely interested in IP unless it threatens to destabilise the entire UK economy. That’s that sorted then.

I am on the phone to the UK’s IP attaché in China. An IP attaché is a person, not an item of luggage, and he is talking about how the IPO and CIPA can work together JU LY to strengthen Anglo-Chinese relations. I say, We must make sure it is the Brits who get the Chinese-originating EPC work, not the Germans. The attaché says Absolutely, but there are certain diplomatic protocols and I am here to make sure we don’t end up going to war again. He tells me and some other CIPA folk about a delegation that is going to China next week. Apparently I am to write to the Pee of the Chinese equivalent of CIPA. Only, someone else is going to write the letter for me because it is easy to offend people from other countries when you write like I do. The attaché does not want to take any risks.

The Onssek, Mr Mercer, picks me up from Oxford station and we go for a drive round the Oxford Science JU LY Park. Of course we are not supposed to be driving round the park, we are supposed to be going to meetings on it. But we are not getting on very well with Mr Mercer’s satnav. It is of Germanic construction and it is rather dictatorial. Disobedience is not an option. When we are ten minutes late we finally take charge of our own destinies, and ring up the folk we are meant to be visiting. Only to find that we are in fact right outside their front door. People should label their front doors better.

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Yesterday and today, the Onssek and I have visited CIPA members in six different firms. Some of them say they do not need CIPA. Some of them say they JU LY do need CIPA, but CIPA needs to get its finger out, for instance over being too much in London or not being rude enough to IPReg, or not making sure that the whole wide world understands how brilliant chartered patent attorneys are. Most people, though, are just content to let CIPA get on with Good Stuff behind the scenes. They do not really know what this Good Stuff is; they are just happy someone else is doing it. They understand vaguely that the Good Stuff is related to what Mr Lampert writes about in his whizzy e-newsletter and Mr Davies writes about in the Journal. They are not sure it is particularly related to me, though they are prepared to give me the benefit of the doubt because I’ve made the effort to venture into the wilderness to visit them, and no one in the history of the Institute has done that before. Personally, I am unconvinced that Oxfordshire is a wilderness. The journey from here to London is not much longer than my journey from home to the nearest place in the Wess Curntry with a functioning cash point.

It is Thursday, and so it is Southampton. I have left the Onssek and Herman the German Satnav behind, and found my own way to the seaside for the JU LY morning. The Chief Eggsek and the EyeEyePeePee are there too, and we are meeting with yet more CIPA members and eating yet more biscuits. One of the meetings is with IP administrators. We chatter excitedly about improving their professional status and career development prospects, and generally about recognising at last that however brilliant chartered patent attorneys might be, they are basically useless without the folk who remind them to meet deadlines. Mr Davies is particularly excited by the talk about career prospects. There is not much Mr Davies doesn’t know about further education and professional development. He is eager to start work.

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NOT-SO-SECRET DIARY

This week I have been mainly going to meetings. Again. In between the meetings, I have been J U LY rummaging in my suitcase to see if I have any bars of chocolate left and whether the clothes I have packed are suitable for meetings or will have to be worn under an anorak. These are just some of the meetings I have been going to:

1. The diversity task force (da-da-da-DA!!!). In this meeting, we got excited about all the things we are going to do, and the party we are going to throw to tell people we have done them. And we ate liquorice allsorts, which were the most diverse sweets I could think of and thus almost tantamount to a metaphor. As everyone knows, I am fond of metaphors. 2. The senior CIPA staff and the Officers, i.e. the Chief Eggsek and the Onssek and the EyePeePee and the EyeEyePeePee and me (because the VeePee was busy at home doing as he was told). This meeting was about how far on we are with doing the things we promised we’d do in the Strategic Plan, and whether we have enough resources to finish them. Apparently we are making good progress… 3. A group of good people setting up a pro bono scheme for IPEC litigants. This scheme has been talked about a lot, but soon it is actually going to happen. The IPEC Judge is very clear on this, and we do not like to argue. 4. A bottle of gin and two checkout officials at Tesco®. Wait. No. That wasn’t a meeting. 5. The Administrators’ Committee. Here we talked about helping IP administrators develop their careers and become as important and pompous as patent attorneys. We did a survey not so long ago, asking administrators if they wanted to be important and pompous, and they said yes, more or less. Also they said they wouldn’t mind becoming CIPA members, as long as it didn’t cost so much and gave them a little more in return than just the chance to read the Journal over someone else’s shoulder. 6. The Business Practice Committee. I only go to these meetings because I need more practice being business-like. I think we decided to do something to help sole practitioners, and something else to help people fill in the IPReg ABS forms. After that I just wrote notes. The notes didn’t say anything but they looked very business-like, so the practice is paying off. 7. My notebook and a gin and tonic. The notebook told me all the things I’d promised I would do in the first six meetings (including the one with the checkout officials – come to think of it, they were very rash promises). I said Surely that can’t be right? Did I really agree to do all those things? And the notebook said You betcha. And I said Perhaps I could do those things tomorrow? And the notebook said Tomorrow you have some more meetings. We negotiated for a while but eventually the notebook wore me down, and I had to do the things I promised to do Right Now because by tomorrow I would have promised to do some other things as well. Later, the notebook Volume 45, number 11

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said, You have not done those things right. But the gin and tonic said Who cares? And by then, the gin and tonic was talking louder than the notebook. Which is a good way to end an evening, I think. 8. The Life Sciences Committee. This meeting had postponed itself without telling me, so great was its excitement at having the chance to meet the CIPA Pee. Unfortunately, it had forgotten to tell the CIPA staff about the postponement, leaving lunch for 15 without an owner. Fortunately, we found homes for it, especially the cakey bits. 9. Mr Lampert. Who had also intended to go to the Life Sciences Committee meeting, before it postponed itself, so had to talk to me instead. We discussed how to make CIPA great and have broadsheet journalists knocking at our door begging for interviews. And we ate quite a bit of the lunch for 15, especially the cakey bits. Because it wasn’t a proper meeting, I was able to take the anorak off as well. That felt good. 10. Mr Rollins, who is the VeePee now that I am not, and Ms Sear. In this meeting we talked about education, which you have to when you are with Ms Sear. And we ate another lunch. Only afterwards did it occur to me that I had perhaps eaten too many lunches for one day. 11. My friends at the day job, who were extremely kind to me when I broke down in tears because I had spent too long going to meetings and living out of a suitcase. They said There, there, just make some notes and have some cakey bits. And while you’re at it, take off your anorak. I did as I was told.

Today I send 164 emails. No, really: I do. The only thing stopping Mr Davies from coming straight over to the Wess Curntry to kill me is that he is off work. JU LY I suspect his inbox is not making him feel any better. Most of the emails I write are part of an elaborate procedure for getting whacky ideas onto the desks of other people who are content to let them sit around gathering fluff, rather than on my desk where they absolutely have to be done YESTERDAY, which is just exhausting, for all concerned. So far this year I have dispatched about 90 ideas to gather fluff on Mr Davies’s desk and about 40 to Mr Lampert’s. Quite a few are with various committees, including the Education & Professional Standards & Fluff Committee, the Joint Business Practice & Fluff Committee and the Administrators & Fluff Committee. Ultimately, they all end up on Unlucky Gary’s desk. The ideas, that is. Not the committees.

28 JU LY

Mr Davies sends me 165 emails. No, really: he does. Twelve of them arrive before I have even got out of bed. I guess this is revenge. I guess Mr Davies is back at work. I put them at the back of my desk to gather fluff. Hah! NOVEMBER 2016

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Six things we love about working in Australia

We are delighted this month to feature an article from Serena White (Fellow) from Down Under. Although it could rightly be subtitled "Six reasons to be jealous of people in Australia" it is funny how the "and one thing we hate" bit does not mention a dearth of Ashes down there just now. We have plenty more "six things" stacked up, but welcome perspectives on any aspect of IP life – just contact editor@cipa.org.uk.

Six things we love

The inventions

Meeting with experts

The Aussies are an innovative bunch. For instance, it’s thanks to them that the UK has new polymer fivers1. Did you know polymer bank notes were developed jointly by CSIRO2 and the Reserve Bank of Australia3? Or that the first polymer bank notes were issued in Australia in 19884? It may surprise you to know the Aussies also claim credit for the cardiac pacemaker5, the black box flight recorder6, the inflatable escape aircraft slide which doubles up as a life raft7 and (on a more dayto-day note) the dual flush toilet8. In the context of my own experience, I’m very happy with the variety of inventions that have crossed my desk since I’ve been here, including foods, carpets, pharmaceuticals, explosives, pet toys and orthopaedic implants. I have a number of local clients as well as incoming foreign work.

As you may be aware, a substantive opposition relating to grant of a patent in Australia relies heavily on preparation of evidence which forms the basis for the legal arguments. The evidence takes the form of statutory declarations from persons skilled in the relevant art9. Focus has generally been on experts from Australia (or New Zealand), although emphasis on local experts is diminishing as the ‘Raising the Bar’ legislation10 continues to bed in. Whilst preparation of evidence can be a painstaking and time-consuming process, meetings with experts can be interesting and even fun. I was lucky enough to engage one of my university lecturers as an expert for an opposition I worked on because, not only did he have the expertise we were looking for, he had also conveniently moved to New Zealand before the priority date of the opposed application. 74

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SIX THINGS WE LOVE

Amendments

Perhaps unsurprisingly, IP Australia’s approach to basis for amendments is noticeably more lenient than that of the EPO. When wearing my Australian (Outback) hat (with hanging corks), although there are requirements for basis11, it’s more of a, “No worries,” approach when it comes to amendments based on examples, selection from lists and isolation of features12. I also wear my EPA hat sometimes because European applications around the office often tend to make their way to my desk. I haven’t quite decided what form my EPA hat takes, but most likely it is a tower of hats – one hat for each EPO Contracting State: bearskin hat (think Trooping of the Colour) for GB, beret for FR and so on. At such times, I start worrying again about things like whether the upper limit disclosed in the specification is 0.3 wt% or 0.30 wt%. I like having multiple hats. When wearing my EPA hat, detail is more critical. Finding a suitable amendment which is directly and unambiguously derivable from the specification as filed, also taking into account any features implicit to a skilled person in what is expressly mentioned in the document13, can be more challenging (and potentially frustrating)! When wearing my Australian hat, I find IP Australia is more forgiving in terms of the amendments it permits – it can be easier to find a suitable amendment to overcome the prior art without being punished for a shortcoming of the original drafting work (regardless of its origin).

Grace Periods

When first reading about the grace periods in Australia, I experienced a feeling of disbelief and slight horror but, since then, I’ve come round to the idea somewhat. In the UK, section 2(4) of the Patents Act 1977 provides a grace period of six months before the filing date but only in specific situations which, in a nutshell, relate to display at international Volume 45, number 11

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exhibitions, breach of confidence and disclosure after subject-matter has been obtained unlawfully. Similarly, Article 55 EPC sets out requirements for nonprejudicial disclosures up to six months before the filing date in particular situations involving international exhibitions or evident abuse. In contrast, Australia provides grace periods for disclosures made with or without the consent of the applicant14. Like in the UK and Europe, “with consent” includes recognised exhibitions15. However, the Australian provisions also include learned societies16, reasonable trial of the invention17 and, interestingly, nonspecific “other” circumstances18. For information made available without consent or made available with consent in “other” circumstances, the grace period is 12 months before the filing date19, but for recognised exhibitions, learned societies and for reasonable trial the grace period can be longer20. Now, I wouldn’t advise a client that it doesn’t matter if he discloses his invention before filing an application (“Don’t worry, you can always rely on the grace period”) because, of course, this strategy has the potential to seriously compromise the chances of securing patent protection in other jurisdictions but I have found a circumstance in which the Australian grace period can be handy. Imagine you receive an examination report for a patent application, A, citing an earlier application, B, by the same applicant which was published after the priority date21 but before the filing date of A. In Europe, B would be novelty only prior art against subject-matter entitled to the priority date and relevant for novelty and inventive step for subjectmatter entitled to the filing date22. In Australia, it’s possible to overcome B simply by pointing out it can be disregarded because it’s the applicant’s own disclosure, which was published less than 12 months before A’s filing date. Too easy.

And the one thing we hate… Having to requalify After qualifying as a UK and European attorney, I looked forward to an exam-free existence. However, it was not to be. Luckily, it’s not uncommon to be able to secure exemption from Drafting and Interpretation and Validity of Patent Specifications, but that still leaves the rest of subjects23 to tick off by completing modules of an accredited course24,for example at the University of Technology Sydney (UTS)25. I can’t help but feel that I shouldn’t really have needed to complete the “Preparing for Intellectual Property Practice” module because if I’d be a bit worried if I wasn’t prepared for it after working in the profession for several years before making the move Down Under. Although the stress level involved by taking the UTS course is lower than for the UK and European qualifications due to the take-it-home-anddo-it-over-the-weekend nature of the assessments, studying for qualification is still time consuming and it’s easy to think of other things you’d rather be doing. There’s also a phase of frustration caused by no longer being able to sign your own letters because you’re not on the local register. That said, it’s not entirely unexpected so you put up with it and know it will pass.

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SIX THINGS WE LOVE

Being the go-to source of information about UK and EP law and practice

It’s kind of nice being the go-to source of information about EP (and occasionally UK) law and practice and there are certain kudos associated with that. Sometimes it just involves advising on straightforward issues, such as confirming, “Yes, taking into account the ten-day rule, the deadline is [date],” or, “No, there is no applicable grace period in Europe.” Sometimes it’s suggesting a particular approach – for instance submitting a main request and an auxiliary request or urgently contacting the European attorneys to ask them to ask the EPO to delay issuing the Decision to Grant (“It will be so much less hassle to record the change of applicant centrally at the EPO rather than several times in all of the countries where the patent is to be validated”). Other times it’s providing a view on whether an EPO

examiner is likely to consider whether or not a particular amendment adds subject-matter. I think there’s also tacit understanding that if for some reason complicated circumstances arise and/or something goes wrong and a situation needs rescuing then I would be in a good position (and in the office as well as in the same time zone) to help out. Of course, everyone hopes there won’t be too many of those. There are also times when EP files come my way and I have the opportunity to reply to the examination report by proxy. I might take the opportunity to refer to the EPO Guidelines and/or relevant case law. It’s satisfying when I find I have concocted arguments which surprisingly result in the issue of a Rule 71(3) communication.

Lifestyle

Let’s not beat about the (Australian) bush: I love crossing the Sydney Harbour Bridge on my way to

Notes and references 1. www.bankofengland.co.uk/banknotes/polymer/Pages/default.aspx 2. Commonwealth Scientific and Industrial Research Organisation 3. WO 83/00653 A1 4. http://banknotes.rba.gov.au/australias-banknotes/history/ 5.

AUSTRALIA

Invented by Dr Mark Lidwell, anaesthetist, in 1928. Challoner, 1001 Inventions That Changed The World, (New Burlington Books, 2009), p613

6. Invented by David Warren, aviation scientist, in 1953. Challoner, 1001 Inventions That Changed The World, (New Burlington Books, 2009), p720 and www.dst.defence.gov.au/innovation/black-box-flightrecorder/david-warren-inventor-black-box-flight-recorder 7. Invented by Jack Grant, safety superintendant at Qantas, in 1965. Challoner, 1001 Inventions That Changed The World, (New Burlington Books, 2009), p783 8. Invented by Bruce Thompson, R&D manager at Caroma, in 1982. www.powerhousemuseum.com/australia_innovates/?behaviour= view_article&Section_id=1040&article_id=10044 and AU559249 B2 9. White and Irani, Opposition Down Under, July [2015] CIPA 22 10. IP Laws Amendment (Raising the Bar) Act 2012 came into full effect on 15 April 2013

work each morning and taking in the view of the harbour and the iconic Opera House. Others might love being able to swim or surf down at Bondi or Tamarama before or after work. I enjoy the way it feels like I’m on holiday every weekend when I can go to the beach or go riding on Sydney’s ferries. I suppose on the down side, driving at dusk or in the dark out of cities is different from back in Blighty – you can’t drive too fast because the last thing you want is to hit a ‘roo. I’ve also become used to having many more sunny days so have rebased my expectations and I get grumpy much more easily that I used to when it rains. Serena White of Shelston IP in Sydney is a European qualified patent attorney, a Chartered Patent Attorney, a registered patent attorney in Australia and in New Zealand. Before moving to Australia in 2013, Serena worked for Beck Greener in London. See www.shelstonip.com.

the requirements for enablement and support following entry into force of the IP Laws Amendment (Raising the Bar) Act 2012 13. EPC, Art 123(2) and EPO Guidelines for Examination (November 2015), H-IV, 2.2 14. Patents Act 1990, s 24(1) 15. Patents Regulations 1991, Reg 2.2 16. Ibid, Reg 2.2A 17. Ibid, Reg 2.2B 18. Ibid, Reg 2.2C – i.e. circumstances other than the circumstances described in Reg 2.2, 2.2A and 2.2B 19. Patents Regulations 1991, Reg 2.2C(3) and 2.2D 20. Recognised exhibitions / learned societies = 12 months before the filing date or 12 months from the date a basic/provisional application was made if the basic/provisional application is made within six months of the start of public working of the invention – Patents Regulations 1991, Reg 2.2(3) and Reg 2.2A(3). Reasonable trial = 12 months before the filing date OR 12 months from the date a basic/provisional application was made if the basic/provisional application is made within 12 months of the start of public working of the invention (Patents Regulations 1991, Reg 2.2B(3)) 21. EPC, Art 54(3) 22. Ibid, Art 54(2) and Art 56

11. Patents Act 1990, s 102(1), Patents Regulations 1991, Reg 10.2A and IP Australia Patent Examiners Manual, 2.23.8.2A

23. Patents Regulations 1991, Sch 5

12. However, IP Australia may become more strict in this regard in the future, as is already happening with IP Australia’s attitude towards

25. www.psb.gov.au/attorney-registration/accredited-courses/ accredited-courses-for-patent-attorneys

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24. Ibid, Reg 20.13

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07/11/2016 14:35:34

PERSONAL

Going . . . e ot Rem

ell, time certainly flies when you are juggling exploring a new country with getting to know 75 new people and keeping on top of a busy workload! Somehow the first month of Remote Year is at an end already, and it’s time to say so long, KL (auf wiedersehen, adieu…*). Kuala Lumpur has been a fantastic host city to start in, although ultimately not quite the culture shock I was expecting. In fact you could quite easily forget you had left London inside one of the many Shoreditch-esque coffee shops or air-conditioned shopping malls. However, you would be missing out – if you happen to be passing through, aim instead for the incredible food markets at Jalon Alor or Petaling Street, where vendor upon vendor sell just about every type of dish you can imagine. Needless to say, joining a gym became an early priority. However one of KL’s biggest selling points is how well connected the city is, making it a great springboard for visiting all sorts of places around South East Asia – during the month, we had remotes as far-flung as Borneo, Singapore and even Perth. I decided to stay a little closer to home and, for me, getting out of KL to see some more of Malaysia definitely provided the highlights of my time there. The Batu Caves, for example – while still on the outskirts of the city itself – feels like a whole world away once you step into what is effectively a huge, natural cathedral calved out of the rock by millions of years of running water. Planet of the Apes, perhaps – given the sheer number of cheeky monkeys that have made this stunning Hindu temple their home. Flying north to the island of Penang, we inadvertently found ourselves staying in the iconic Blue Mansion – a breathtakingly beautiful building in the historic city of Georgetown, which I could certainly get used to! We spent the rest of the weekend tracking down the city’s famous street-art, and eating of course – Penang has food markets that even outdo those in KL. The following weekend, three of us hired a car and drove up into the Cameron Highlands. Here in the mountains, the climate is perfect for growing fruit and vegetables, and extensive tea plantations cover many of the rolling hillsides. Volume 45, number 11

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GOING REMOTE

Kuala Lumpur By Heather Lane (Fellow)

This was also the spot preferred by well-off UK expats living in KL or Ipoh “back in the day” for their weekend retreats. As a result many of the hotels look like they might have been teleported from a Cotswold village – complete with timber beams, flowery carpets, horse brasses on the wall and even an open fire, right in the middle of Malaysia. It was nothing if not surreal. We spent the next day exploring the plantations, rainforests, rose gardens and strawberry farms with a lovely local guide, Muthi, who even invited us into his home for tea! In fact by and large everyone I met in Malaysia was incredibly warm and welcoming to us, which is one of the abiding memories of the country I will take with me. In between all that, I’m pleased to report that I have actually managed to squeeze in some work! As I expected there have been challenges but not exactly those I thought I would encounter. For instance, it turns out it is in fact possible to review prior art without scribbling all over it, which was news to me. Also, since I am in touch with my GJE colleagues back at HQ by email or phone every day, communication about cases and workload has not proved a problem. In fact the other day I even did a P6 tutorial for some of our finalists via Skype – which they probably preferred as they could put me on mute! Instead, the greatest challenge has been finding the right routine which enables me to fit in everything I want (and need) to do. Since everyone on Remote Year does such different jobs (we include software coders, website designers, digital marketeers, property brokers, two “recovering neuroscientists”, an online matchmaker and just the one patent attorney, to name a few) we also work to very different hours – for instance there are several remotes who work nights to match the time zones of their home offices. As a result there are opportunities all the time to visit places, learn new skills like yoga or Spanish or just try out new food, and so it’s important to prioritise. And just when I think I’ve got it all figured out… it’s time to up sticks and start over in a new country! Whose idea was this again?! Next month: Koh Phangan, Thailand Heather Lane is a senior sssociate at Gill Jennings & Every LLP * For more bad jokes of this sort, you can follow Heather’s adventures on her blog https://expatandtea.wordpress.com and on Instagram as @expat.and.tea www.remoteyear.com

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CPD & EDUCATION

INSTITUTE EVENTS

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

Wednesday, 16 November 2016 Conference

Do Patents have a ‘Chilling Effect’ on the Incentives for Research and Development? Time: 18:00–19.30pm Location: UCL Cruciform Lecture Theatre, UCL Main Campus, Gower Street, London, WC1E 6BT A patent is a grant of the exclusive right for a novel, non-obvious invention. The value of patents to society lies in the incentives they provide to research and develop useful inventions. Today many are prepared to argue that patents retard research and development and so hold back economic progress. This conference will examine the arguments and evidence on both sides of this debate. The four panelists have a maximum of 15 minutes to speak. A Q&A session will follow.

Speakers: The Rt. Hon. Sir Robin Jacob, Nikolaus Thumm, John Howells, David Rosenberg, Robert Pocknell

Prices: £30 (£25.50 CIPA members)

Thursday, 17 November 2016 Social

Monday, 21 November 2016 Seminar

Patent Case Law London Time: 12:30–17:00pm Location: The Royal College Of Surgeons, 35-43 Lincoln's Inn Fields, London, WC2A 3PE This seminar will focus on interesting patent decisions to have come from UK and US courts, and the EPO Boards of Appeal in 2016. This seminar will also be held in Bristol and Manchester. CPD: 3; Prices: £234 (members £156)

Wednesday, 23 November 2016 Webinar

The Unified Patent Court Past, Present and Future

Join us for an opportunity to network with other IP professionals over drinks. Please note, booking is mandatory and drinks tokens will be distributed on arrival. FREE for CIPA members, register at www.cipa.org.uk/whats-on/events/

Monday, 28 November 2016 Seminar

Time: 12:30–13:30pm

CIPA/ITMA New Students Induction Day

Please join us for this webinar, in which speakers Pippa Allen and Leythem Wall will give a brief overview of the Unitary Patent and UPC systems, where the UPC stands now in light of ‘Brexit’, your representation rights, and what paths lie ahead.

Time: 09.15am-16.50pm Location: CIPA, 95 Chancery Lane, London, WC2A 1DT

CPD: 1; Prices: £72 (members £48)

York Happy Hour Time: 18.00–19.30pm Location: Royal York Hotel, Station Road, York, YO24 1AA

else from the IP professions who has an interest in our work. The event will likely start in the late afternoon/early evening, and will include updates on IP Inclusive projects; a chaired discussion on bringing more BAME (black, Asian and minority ethnic) professionals into IP; and a chance to share experiences and suggestions. We will finish with refreshments and informal networking. More details will follow, but for now, please save the date. If you haven't already done so, sign-up to the IP Inclusive Charter for Equality, Diversity and Inclusion, which has a fantastic 76 signatories already!

Thursday, 24 November 2016 Reception

IP Inclusive Reception Time: 17.00pm Location: Carpmaels & Ransford LLP, 1 Southampton Row, London WC1B 5HA The reception will be an opportunity to bring together the EDI officers of all the IP Inclusive Charter signatories, as well as task force members and anyone

If you have joined the profession in the last 18 months, then our induction day is for you! This day will be a chance to learn more about CIPA, ITMA and IPReg and will include: • an introduction to the commercial context of the IP attorney’s work; • basic business practice, including professional ethics and client care; • an overview of CIPA Informals; and • an introduction to the training and qualification systems for both patent and trade mark attorneys. It is also an excellent opportunity for trainees to meet and share experiences, particularly for those based outside London. Prices: £36 (member rate)

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CPD & EDUCATION

Monday, 28 November 2016 Seminar

EVENTS

particularly for those based outside London.

Winchester Happy Hour

Patent Case Law Bristol Time: 12:30–17:00pm Location: Mercure Brigstow Hotel, 5-7 Welsh Back, Bristol, BS14SP This seminar will focus on interesting patent decisions to have come from UK and US courts, and the EPO Boards of Appeal in 2016. This seminar will also be held in London and Manchester. CPD: 3; Prices: £234 (members £156)

Monday, 5 December 2016 Seminar

CIPA New Students Induction Day

Prices: £36 (member rate)

Wednesday, 7 December 2016 Social

CIPA Christmas Happy Hour 2016 Time: 18.00–21.00pm Location: The Fable, 52 Holborn Viaduct, London, EC1A 2FD Join us for this merry opportunity to network with other IP professionals over festive drinks. Please note, booking is mandatory and drinks tokens will be distributed on arrival. FREE for CIPA members, register at www.cipa.org.uk/whats-on/events/

Time: 9.15am-16.50pm Location: CIPA, 95 Chancery Lane, London, WC2A 1DT If you have joined the profession in the last 18 months, then our induction day is for you! This day will be a chance to learn more about CIPA, ITMA and IPReg and will include: • an introduction to the commercial context of the IP attorney’s work; • basic business practice, including professional ethics and client care; • an overview of CIPA Informals; and • an introduction to the training and qualification systems for both patent and trade mark attorneys. It is also an excellent opportunity for trainees to meet and share experiences,



Monday, 12 December 2016 Seminar

Patent Case Law Manchester Time: 12:30–17:00pm Location: DoubleTree by Hilton Hotel Manchester, M1 3DG This seminar will focus on interesting patent decisions to have come from UK and US courts, and the EPO Boards of Appeal in 2016. This seminar will also be held in London and Bristol. CPD: 3; Prices: £234 (members £156)

London Hilton on Park Lane

Join 600 guests from across the entire legal profession to enjoy ITMA's ever popular afternoon of networking, drinks and traditional three-course Christmas meal. For more details see: www.itma.org.uk/calendar/event/view?id=110

Volume 45, number 11

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Time: 18.00–19.30pm Location: The Green Man, 53 Southgate Street, Winchester, SO23 9EH Join us in the South of England for after work drinks and a chance to network with other CIPA members. Please note, booking is mandatory and drinks tokens will be distributed on arrival. FREE for CIPA members, register at www.cipa.org.uk/whats-on/events/

Monday, 23 January 2017 Seminar

ECF Everything

ITMA London Christmas Lunch 9 December 2016

Thursday, 19 January 2017 Social

Time: 16.15–19.15pm Location: CIPA, 95 Chancery Lane, London, WC2A 1DT The seminar will inform about the reasons, aims and implementation of the Early Certainty initiatives at the EPO. Further recent developments at the EPO will also be addressed. This event will be followed by drinks and nibbles. Speakers: Heli Pihlajamaa, Director of Patent Law at EPO, John Beatty, director Practices and Procedures Management at the EPO CPD: 2; Prices: £156 (members £102)

Reporters Needed! CIPA is looking for volunteers to report on regional CIPA events. If you are interested, please contact cpd@cipa.org.uk.

NOVEMBER 2016

CIPA JOURNAL

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CPD & EDUCATION

INSTITUTE EVENTS

East of England Patent Searching Seminar Report of the East of England seminar report on 27 September 2016.

seminar entitled “Why, When and How to Perform Prior Art and FTO Searching & How to Get the Best of the UK IPO Search” attracted nearly 40 attendees from tech transfer, industry and private practice to Mills & Reeve’s Cambridge Office on 27 September 2016. The meeting, organised by CIPA’s East of England representative Parminder Lally (TLIP Ltd), and chaired by Barbara Fleck (Crescendo Biologics), provided an insight on the searches carried out by search companies and the UK IPO and how a well-crafted FTO strategy can help enterprises meet their commercial goals and mitigate risk. The first talk, from Jane List (Extract Information Ltd), covered how search strategies and searching using free patent databases. The merits and limitations associated with the browsing, building block, heuristic, iterative and pearl growing approaches to searching, as well as the mechanics by which the search process should be carried out were discussed. Jane alerted the audience to the pilot programme that commenced last November under which the EPO publishes its search strategies on published applications, and explained how this might direct searches for future oppositions. The talk then moved on to the utility of free databases such as Espacenet and PatentScope. While presently searches on Espacenet are limited to titles and abstracts, it is planned that full text searching, like that available through PatentScope, will soon be possible. Jane also made reference to the new chemical structure searching option on PatentScope that went live on 3 October 2016, and then touched briefly on the advantages associated with some of the commercial databases. A highlight for many was a talk entitled “How UK IPO examiners search, and how to get the best out of the IPO search” delivered by Eleanor Wade of the IPO, which provided a valuable insight into the workings of the Patent Office. The purpose of the IPO’s searches, to satisfy the needs of the statute by finding the most relevant prior art for examination and not to provide an exhaustive search of the prior art, was emphasised early on. At least one member of the audience was p to o a day and a half of examiner impressed by the fact that up

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time is allocated for each search and the excellent value this represents for applicants at the IPO’s current fee rates. Eleanor explained that the IPO makes use of the abstract as a search tool. Accordingly, applicants can obtain a better search if a good quality abstract that explains the invention and avoids misunderstandings over technical terms is filed; if this is not the case, the examiner will likely spend considerable searching time trying to understand the invention and rewriting the abstract to assist future searching. An abstract that is identical to claim 1 is not necessarily helpful! Eleanor noted that currently, the IPO aims to issue a search report within six months of filing the search request, but this can be accelerated on request, in which case the search report should issue within two months. Recent examiner recruitment should help the IPO to hit its target search timeframes, particularly for biological inventions. Nicola Baker-Munton of Stratagem IPM closed the seminar by discussing the commercial rationale for freedom to operate (FTO) searches and analysis. This talk visited the benefits associated with developing an appropriate FTO strategy from the outset of the commercial development process to ensure a smooth progression to the relevant commercial endpoint, whether that be product launch or completion of a fundraising round. Nicola emphasised that the process should not stop once the initial FTO is established and instead advocated for programmes in which updates to FTO searches are carried out on a regular basis. The value added from this approach and its budgetary implications were presented as essential components of a balanced business plan. As the level of confidence in the FTO opinion is a function of the search performed, iterative feedback between client and searcher is highly recommended. An opportunity to raise further questions with the speakers and to meet the other attendees over drinks and snacks was provided at the end of the seminar. Patent Seekers were also on hand to field questions on the services they provide. The seminar was a welcome addition to the Institute’s offering in the East of England region and I look forward to next social event in Cambridge. Mathew Leese (Fellow), TLIP Ltd

www.cipa.org.uk

07/11/2016 14:39:34

THE THE PINKS PINKS

COURSES EVENTS

Softw are

JDD CONSULTANTS

EQE 2017 REVISION COURSES 28 NOVEMBER-6 DECEMBER 2016 & 26-27 JANUARY 2017 We have only a small number of places left now on our residential revision courses for the spring 2017 European Qualifying Examinations (EQE). Places remain on Papers A&B E8 on 1-2 December 2016 and Paper D E2 on 28-29 November 2016. There are also places left on our ‘booster courses’ for Papers D on 26 January 2017 and Paper C on 27 January 2017. The courses are in Milton Keynes and are supported by our online Moodle forum. The course fee includes accommodation and meals, but there are discounts if accommodation is not needed and for bookings of a suite of courses and/or the booking of 5 or more courses by a firm. For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791959630. We are a CIPA Approved Training Provider. E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk Fax: +44(0)800 0664016

Volume 45, number 11

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THE PINKS

COURSES

Training for the EQE Dates: Venue:

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

Are you training to be a European Patent Attorney? Are you preparing to take the EQE in March 2017? Support your studies by attending our preparatory course, learn from experienced practitioners and previous candidates, and network with fellow professionals. This course is for candidates preparing for the main papers (A, B, C and D) of the European Qualifying Examinations (EQE) before the European Patent Office. It is structured in two parts and reflects the practical nature of the examinations. Part 2 can be booked separately, although taking the complete course is recommended.

Why book Queen Mary University of London’s course? • Between 2007 and 2013 the pass rates of QMUL-trained candidates were generally in excess of 90%, in some years rising to 100%. • In-depth study of previous EQE papers in small groups and with highly experienced tutors. • The course is continuously adjusted to the changing requirements of the examination and the profession. For 2016-17, the course has been adapted to prepare candidates for the new structure of Papers A and B. • Our tutors have been teaching this course for Queen Mary University of London for at least seven years. • Previous candidates will share their experiences. • Queen Mary University of London has nearly 30 years’ experience running this programme and provides close academic supervision. For more information and to register please go to website www.ccls.qmul.ac.uk/events

This course is provided by the Centre for Commercial Law Studies, Queen Mary University of London, 67-69 Lincoln’s Inn Fields, London WC2A 3JB, ccls-events@qmul.ac.uk.

www.ccls.qmul.ac.uk/events Centre for Commercial Law Studies

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THE PINKS

RECRUITMENT

Tech Part-Qualified or Qualified Patent Attorneys

We are a full-service European intellectual property firm at the forefront of the rapidly changing IP landscape. We are recruiting for 2 part-qualified or recently qualified patent attorneys to join our thriving London team, to work on EPO Oppositions & Appeals and Dispute Resolution. Those joining our team will have: An Electrical / Electronic Engineering background with excellent academics 1 - 5 years’ experience in the profession Strong communication skills and the desire to work in a close knit team

Applications by 30th November 2016

Central London (Holborn)

Excellent benefits package

An intellectual challenge

Supportive & sociable environment

www.carpmaels.com Volume 45, number 11

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THE PINKS

INTERNATIONAL

84 CIPA JOURNAL

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Your partners in Patent recruitment

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

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Somewhat of an open remit exits for a junior

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REC-pp85_G2_1.indd 85

Mob 07769 200689

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

07/11/2016 11:54:08

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CALLING ALL ALL PATENT ATTORNEYS WITH AN ELECTRONIC ENGINEERING OR PHYSICS BACKGROUND! CALLING PATENT ATTORNEYS WITH ELECTRONIC ENGINEERING / PHYSICS

BACKGROUNDS!

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Dawn Ellmore Employment

Support vacancies: dawn.ellmore@dawnellmore.co.uk Business support: james.smithson@dawnellmore.co.uk

@Dawn_Ellmore

+44 (0)20 7405 5039

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DawnEllmore1

www.dawnellmore.co.uk

07/11/2016 11:54:24

THE PINKS

RECRUITMENT

Fully or Part Qualified Patent Attorney (Engineering/Physics), Brighton Dehns is one of the largest firms of patent and trade mark attorneys in Europe and we are looking to welcome an intelligent, ambitious fully or part qualified patent attorney into our busy Engineering team. We are consistently recognised by the Legal 500 for providing an impeccable service to our clients, and our attorneys are well known in the industry for their commitment and passion for quality and innovation.

The Person Ideally, you will have at least 2 years’ experience working in the profession. You will possess a proven strong academic background, having gained a 1st class degree or a 2:1 in Engineering (Mechanical, Electrical/Electronic or Aerospace preferred) or Physics and, as a minimum, successfully passed either the Foundation exams or PG Certiﬁcate in Intellectual Property Law.

The Role The role will provide a varied and interesting caseload, primarily working with an established high-proﬁle client. This is an excellent opportunity to build upon and develop your drafting and prosecution skills. Full training will be given appropriate to the level of experience.

The Offer A salary that is highly competitive (even against London standards), ﬂexible working opportunities and a relaxed, friendly working environment. This is an excellent opportunity to continue your career with a progressive ﬁrm that offers support, excellent training and a stimulating working environment.

Due to a steady and consistent inﬂux of work we are looking for a pro-active individual who can hit the ground running and conﬁdently handle direct client drafting and advice work.

Wish to apply? Please visit the ‘Careers’ page at www.dehns.com to submit your CV and covering letter for this vacancy.

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

2 x Software Trainee Patent Attorneys sought

IP Asset is an established, Oxford-based, boutique IP practice with a good client base and strong growth. We are now growing our London office and seeking capable, self-motivated, partqualified attorneys specialising in computer-implemented inventions to help build our team in London.

The role would primarily involve assisting the Software and Electronics Partners, so a strong degree or PhD in Physics, Engineering or Computer Science is sought. Previous experience with machine learning, quantum computing/encryption, and/or robotics would be beneficial. There will also be opportunities to get involved in more diverse technologies across the electronics and mechanical fields so a broader scientific understanding would be advantageous. We are ideally looking for a part-qualified attorney with Foundation stage qualifications (or exemptions). We would also be willing to consider new entrants to the profession with an appropriate technical background. We believe in providing practical and very commercially-focused IP advice and are aiming to train attorneys in the same manner to help drive and build the business. More senior attorneys are always welcome to contact us. Early partnership prospects are available for suitable candidates. We work closely with our clients and offer a range of services extending from patent drafting to IP commercialisation and litigation. With a predominantly direct client workload, we operate at the exciting end of IP and seek candidates comfortable working in that environment. If you want to be part of a dynamic and growing team or simply wish to discuss the possibility, do get in touch. Applications by email to ipassetadmin@ipasset.com. No recruitment agencies, please.

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THE PINKS

RECRUITMENT

Attorney - Qualified, Mechanical Engineering/Chemistry, Greater London Gain access to a stimulating portfolio that will often take you beyond the traditional remit associated with a typical patent attorney role. For example, as well as overseeing the entire patenting process right through from initial invention harvesting, you will have some exposure to copyright, design and trade mark work. Working closely with a range of clients based in the UK, US and further afield, the successful candidate will handle diverse subject matter spanning across a number of technical specialisms. This is a truly dynamic role with a great deal of coverage and a real chance to progress to Partner in a short period of time. There will also be significant opportunity to get involved in the firm’s wider business strategy, by attending networking events and carrying out other business development related activities both at home and overseas.

Attorney - Part Qualified, Electronics or Engineering, London Start your career on the best possible footing with access to an ever changing mix of technologies and an interesting client base, ranging from sole entities and academia, to SMEs and world renowned multinational conglomerates. The training scheme is individually tailored to your own needs and interests, and the working environment is both approachable and team orientated. You will be encouraged to work closely with your clients, helping to identify and shape their IP and construct complex arguments to ensure their portfolio’s ongoing protection. The firm adopts an international approach to business, meaning there will be ample opportunity for overseas travel, as well as local travel to attend networking and industry events, and meet with prospective clients to further build your own portfolio.

Chemistry, Finalist Level Patent Attorney, London This firm is consistently noted for the exceptional support and advocacy they provide their clients, which include multinational corporations, leading universities and innovative SMEs originating from a range of stimulating industries. You will be welcomed into a friendly and supportive team, and alongside carrying out the broad spectrum of patenting duties you will also be responsible for advising clients on their wider IP strategy including the maximisation of the commercial potential of their IP. You will need to be commercially astute with excellent communication and relationship building skills, as well as a client oriented outlook. The environment is non-hierarchical in which your ideas will be respected and considered, irrespective of your position on the ladder, as well as there being a clear path to Partnership and a competitive and achievable bonus scheme.

Salaried Partner, ICT/Electronics/Telecommunications, Yorkshire Take advantage of this pretty rare and very exciting opportunity, and progress to join the equity Partnership of this firm on an accelerated time frame. There is a considerable existing workload and clients include global corporations, SMEs and renowned academic institutions. In particular, the firm works with world leaders in self-service terminal and touch sensitive display technologies and is highly active in the financial technology and telehealth sectors. Given the range and mix of existing clients the role is both commercial in respect to providing strategic IP advice as well as procedural in terms of original drafting and prosecution. The firm would be very happy for an attorney joining them to both support the existing client portfolio, in addition to exploring new avenues of interest to them. There will be opportunities to be involved in firm management, business development and training, as well as funded overseas trips.

Attorney - Newly Qualified, Electronics, Midlands Work closely with Partners experienced in representing clients internationally and who handle regular oppositions and appeals before the UK and European Patent Offices. You will be offered ample opportunity for overseas travel in order to meet with clients and associates, and to attend industry conferences and events. Secondment to one of the firm’s other offices is also wholly achievable, be it in the UK, Europe or further afield. The environment is challenging and ultimately rewarding, and a great deal of importance is placed on connectedness between different offices, both in the UK and overseas. Due to the size of the firm there is more than enough work available to accommodate your individual expertise, giving you the opportunity to tailor your practice to suit your interests as your role develops and explore areas beyond your own technical specialism.

Electronics, In-house Opportunity, South Assume an extremely strategic and commercial role, where you will be responsible for the protection of the IP originating from the UK arm of this company’s business, as well as being expected to liaise closely with the company’s overseas head office in respect to all regional filing and prosecution and the provision of FTO advice for new product and market development. Demonstrable man management skills will be required in order to effectively coordinate the external network of patent and trade mark attorneys, in addition to leading the internal IP team and support staff. Regular travel to countries including Germany, Japan, Switzerland, Portugal, Brazil, China and the US will be required, and there will be the opportunity to pursue your own career interests through joining industry boards and panels.

Other positions we’re currently recruiting include: Trainee/Part Qualified, Biotechnology, London Finalist, Electronics, North

Associate, Biotechnology, London Finalist Level European Opportunity, Various Technical Specialisms Up to 2 Years’ PQE, Software, London

For more information or to apply to any of these roles speak to Pete Fellows or Phillipa Holland on 0207 903 5019 or email: contact@fellowsandassociates.com. www.fellowsandassociates.com www.linkedinfellows.com @fellowsandassoc google.com/+FellowsandAssociates Fellows and Associates Ltd. acts as an agency within the meaning of the Conduct of Employment Agencies and Employment Businesses Regulations 2003. We operate a strict equal opportunities policy. Fellows and Associates is a trading name and registered UK trade mark of Fellows and Associates Limited

Volume 45, number 11

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THE PINKS

RECRUITMENT

Trusted to deliver excellence

BELIEVE|IN YOUR POTENTIAL PATENT ATTORNEY, DERBY At Rolls-Royce, innovation is in our DNA We’re known the world over for delivering engineering excellence We’ve developed the world’s most efficient aero-engine, the world’s most eco-friendly ships and we power nuclear submarines. Across the globe, our 15,500 engineers apply their intellect and experience to improve the performance of our products and continually redefine what’s possible. Our work is complex, innovative, highly challenging and rewarding, and it takes a range of professionals from across the commercial and business spectrum to carry it out. Having the right people enables us to deliver excellence to our customers and deliver better power for a changing world. We require 3 patent attorneys to join our growing Intellectual Property Function. Located across the globe, our talented patent engineers and patent attorneys work closely with our inventors to harvest and protect commercially significant inventions across a wide range of technologies. Applicants should be competent in drafting patent applications and experienced in dealing with office actions before the European and US Patent Offices. A diverse workload also offers opportunities to work on freedom-to-operate projects and on contentious issues. We were ranked most attractive large employer in the UK in 2016. Successful candidates can expect to enjoy both a stimulating role in industry and an excellent work-life balance. To apply please visit careers.rolls-royce.co.uk click ‘search and apply’ and use reference number 00084906 We are an equal opportunities employer..

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More Spark! Less smoke and mirrors… Patent Secretary : London TJB49697 Top Tier practice awaits! This IP firm at the top of its game is seeking a Patent Secretary to join their superb London office. Working at Partner level, you will be providing full and comprehensive secretarial and PA support. Ideally CIPA qualified, this is a fantastic opportunity for a Patent secretary looking to step up and take on extra responsibility. You will be rewarded with not only a fantastic financial package but also a lovely working environment and active social scene. Patent Formalities : London TJB50011 Fantastic opportunity to join an internationally market leading firm as a Patent Formalities Assistant. A great mix of work is on offer to get involved with, including renewals, European Grants, docketing and more. You must have formalities experience, and the CIPA qualification will be looked upon favourably. Prior experience of Inprotech would be advantageous. Part or Recently Qualified Chemistry Attorney : London LKA48936 Super Practice with an excellent reputation are looking for an additional part through to just qualified Attorney. You will undertake a full array of patent related tasks whilst benefiting from first-class training and regular 1:1s, supporting you to realise your short, medium and long term ambitions at every stage of your career. Life Sciences Patent Attorney, full or part time : London LKA49817 A real breath of fresh air! Modern, relaxed but impressive Private Practice offering ample flexibility regarding hours and home working in order to make the role work for you! Excellent quality work, lots of variety and client contact – a firm that can genuinely offer something different! Electronics & Engineering Attorney : Manchester LKA49813 Brand new opening for an autonomous, proactive Attorney to provide an exceptional client service for an existing portfolio. An impeccable caseload and the chance for the more ambitious to take a senior, lead role at an exciting time – definitely one to explore!

For further information about this selection of opportunities or to discuss any other aspect of IP recruitment, please contact: Tel: +44(0)113 245 3338 or +44(0)203 440 5628 or email: DBUIFSJOF GSFODI!TBDDPNBOO DPN t MJTB LFMMZ!TBDDPNBOO DPN or tim.brown@saccomann.com

Engineering Attorney : South West LKA49358 Well respected, strong regional Practice requires a high calibre Engineering Attorney to join their modern, collaborative Practice. Impressive client lists, an inclusive environment and continued growth makes this an excellent place to pursue your long term career plans and enjoy true work-life balance along the way! IT/Engineering Attorney : London CEF50070 The sheer demand this firm is experiencing is indicative of the reputation it holds for quality and trusted Patent Attorneys. This, as well as a top notch salary with grade A offices, great perks and a refreshingly transparent career path makes this a career move not to be missed. *O )PVTF &OHJOFFSJOH "UUPSOFZ #FSLTIJSF $&' Innovative & Market Leading FMCG Business seeks a 1-3 Year PQE Dual Qualified Attorney to work in-house amongst their busy patent team. Advising and assisting on patent matters internationally, you will work alongside superb attorneys as a part of a global legal team. This, alongside a competitive salary with fantastic perks, makes for an opportunity not to be slept on! Engineering Attorney : Scotland CEF42380 A rare opportunity for a Patent Attorney with an entrepreneurial mind and approach, to play a key role in the further development of this firm's Engineering and Electronics practice. With a well-established client base including global corporations, SMEs and start-ups, this is a superb platform on which to build a long term career and enjoy a position of influence, both internally and externally. In-House Chemistry Attorney : Thames Valley CEF49833 Fantastic In-House opportunity for an Attorney with a background in Chemistry to become part of a globally renowned FTSE 100 firm. If you're great at working autonomously and as a team, and have the commercial knowledge to see the bigger picture, this opportunity is for you! You will be 1-3 Years PQE and ideally dual qualified - excellent perks, international insight and a competitive salary awaits!

Scan the QR Code for our website

www.saccomann.com

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

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THE PINKS

RECRUITMENT

Senior European Patent Attorney Lancashire

The role and you

About us

We are looking to appoint a qualified European patent attorney with a background in chemistry who has drive, enthusiasm and excellent commercial acumen.

Victrex plc is a world leader in high performance polymers, including the highly versatile VICTREX® PEEK polymer, with state of the art manufacturing facilities in the UK backed by our global network of technical, sales and distribution centres serving customers worldwide.

Reporting to the Head of Intellectual Property, the Senior Patent Attorney will be a key player in the delivery of our IP strategy. The role requires a high degree of autonomy as you will be expected to educate, advise and support our Strategic Business Unit leadership teams and project managers in the areas of the business for which you will have responsibility. As such, the successful candidate should have wide experience across all aspects of IP, including freedom to operate, patent prosecution, drafting, and contentious matters. The candidate must be commercially minded, have strong influencing and problem solving skills, and thrive on challenges. Excellent communication, organisation and relationship building skills are essential in order to succeed in this stimulating and varied role. In-house industrial experience would be advantageous but is not essential.

We are proud of our impeccable retention rate, and know that our people enjoy being part of and growing with a global company that enables innovation for tomorrow’s world today. This is a fantastic opportunity to join a very unique international FTSE 250 business located in Thornton Cleveleys, with global offices in US, Japan, China, Korea and Germany.

Ne xt steps In addition to a competitive salary we also provide a range of attractive benefits, including company pension (company contribution up to 14%), healthcare schemes, and 29 days annual leave. If you believe you have the drive and potential required to join our team, please forward your CV with a covering letter to HR@victrex.com. (No Agencies.)

Turn the page to a new career! www.victrex.com Closing Date: 16 December 2016 Victrex values diversity and encourages applications from all sections of the community. 92 CIPA JOURNAL

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In partnership with

IP Recruitment Specialists ZFBST FYQFSJFODF

caseltonclark.co.uk

@CaseltonClark

Caselton Clark

+44 (0)20 7559 6702 &VSPQFBO 1BUFOU "UUPSOFZ

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DBTFMUPODMBSL DP VL 07/11/2016 11:56:35

THE PINKS

SERVICES

An established Intellectual Property firm is looking to grow its Trade Mark practice, particularly to take advantage of the real opportunities which we believe arise out of the Brexit decision. We’re especially keen to talk to owners of Trade Marks businesses who are considering their own future or even retirement, or who are concerned about the impact of Brexit, or who don’t have a successor in place or an easy means to extract the value of their business. We would also like to talk to senior TM attorneys in other IP firms, who have a decent following and who might be looking for a change of scene and wider horizons, either with or without their team. Please apply in the first instance to poboxcpm14@outlook.com

Assimilate IP is providing the following courses at the London School of Economics: • Freedom to Operate for the Engineering Industries 28 November 2016. • Building, Managing and Monetizing Your IP Portfolio 5 December 2016. Full details can be found at: http://assimilateip.com/home. We are happy to offer CIPA members a 10% discount.

Qualified Patent Attorney

Dublin, Ireland

HANNA IP seeks a qualified Patent Attorney EPC/CPA who is motivated, ambitious and for a senior role combining day to day patent work with business development work. The ideal candidate will have a good first degree in Physics, Computer Science, Electrical Engineering or Electronics with preferably 2/3 years post qualification experience. Recently qualified Attorneys will be considered for the role provided they can demonstrate commercial business acumen. The successful candidate will have an ability to interact with both existing and potential clients confidently with an aptitude for understanding client concerns. Demonstrating experience of a wide range of client facing work will be a distinct advantage for candidates for this role. The role will be a diverse one allowing full practical experience of all aspects of Patent Attorney work including Opinion work, Drafting, Prosecuting, Oral proceedings and Due Diligence work. The role will also involve handling a significant amount of existing prosecution work before the EPO, UK IPO and the USPTO in the field of mechanical engineering. Business Development with new clients will be important and so a proven track record in meeting and converting new business will also be an important aspect of the role. A working knowledge of trade marks would also be useful. Hanna IP is continuing to grow as a result of the provision of a professional but personal service in meeting and exceeding clients’ expectations. Due to increased workload, we have a vacancy for a suitable candidate to help us with our expansion. If you believe you are a suitably qualified Patent Attorney who will add to our team, we look forward to hearing from you. Package will be commensurate to skill and experience of successful candidate. Please apply with an introductory covering letter and enclosing your CV to john@hannaip.com. Please mark your e-mail for the attention of John Hanna. 94 CIPA JOURNAL

NOVEMBER 2016

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www.cipa.org.uk

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THE PINKS

RECRUITMENT

Life Sciences Part-Qualified Patent Attorneys

We are a full-service European intellectual property firm at the forefront of the rapidly changing IP landscape. We are recruiting for 3-5 part-qualified Life Science patent attorneys to join our thriving London team, to work on EPO Oppositions & Appeals, SPCs & Regulatory and Dispute Resolution. Those joining our team will have: A Biotech or Pharma background with excellent academics 1 - 4 years’ experience in the profession Strong communication skills and the desire to work in a close knit team

Applications by 30th November 2016

Central London (Holborn)

Excellent benefits package

An intellectual challenge

Supportive & sociable environment

www.carpmaels.com Volume 45, number 11

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NOVEMBER 2016

CIPA JOURNAL

07/11/2016 11:57:09

Don’t wait for the perfect role to fall in your lap Explore new opportunities in IP

www.weareaspire.com/IP

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

Mechanical/Materials - CPA or EPA £Highly competitive package. South West, ref 1008658

NEW! You are a finalist/qualified attorney with a proven Electronics or Mechanical Engineering background, looking to move to one of the most widely respected firms in the UK. You should have current experience of automotive and/or aeronautical client portfolios, as well as experience of contentious work (oppositions/appeals). This is an opportunity to influence and shape IP strategy with direct clients, so if you enjoy building and nurturing client relationships this could be perfect for you. This firm prides itself on attracting the best attorney talent in the market so you’ll be rubbing shoulders with people at the top of their game in a friendly and collaborative culture.

If you’re a ‘generalist’ with a mechanical, materials, or chemical background, then this newly created role could appeal to those individuals looking to break free from the conformity of corporate practice. Do you aspire to join a smaller and more agile ﬁrm with an immediate range of interesting clients who can offer a greater work/life balance? This is a brilliant opportunity for someone who enjoys the technical variety of materials, medical devices and chemical subject matter . You’ll be joining a terriﬁc team of attorneys who share a common vision of providing tactically astute commercial IP advice. Flexible working is encouraged and partnership potential is very good for the right individual.

Electronics/Physics - part qualified/finalist £excellent package/benefits. Derbyshire, ref 1008540

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

Brand new opening for a part-qualified/finalist with an electronics, physics or mechanical background to join a leading regional practice. As well as having a proven record of contentious and non-contentious cases, you must also be able to demonstrate an ability to take a long-term view of client development. This is an expanding and profitable regional firm who attract attorneys who share their strategic ethic of consistently high-quality referral work. Attorneys thrive with considerable autonomy and responsibility for their clients, which in turn, can lead to a lucrative and rewarding career path towards Partnership. A truly reputable and exciting firm to work for. Electronics/ Mech Eng - Finalist/Qualified £Attractive + bonus/package. Birmingham, ref 1002821 NEW! You are a finalist/qualified attorney with a proven Electronics or Mechanical Engineering background, looking to move to one of the most widely respected firms in the UK. You should have current experience of automotive and/or aeronautical client portfolios, as well as experience of contentious work (oppositions/appeals). This is an opportunity to influence and help shape IP strategy with clients, so if you enjoy building and nurturing client relationships this could be perfect for you. This firm prides itself on attracting the best attorney talent in the market so you’ll be rubbing shoulders with people at the top of their game. Great prospects to advance. Physics/Electronics - flexible working role £ excellent package + bonus. London, ref 996986

NEW! You are a part-qualified (or qualified up to 2 years PQE) attorney with a technical background derived from either electronics, engineering, physics or software related patent work. You will have gained a minimum of 2 years in the profession, and be adept at handling a range of work from UK and international clients. You should be attracted to working for a small firm that rewards individual initiative in respect to BD, as well as being encouraged to be the primary contact for key clients depending on your experience. You’ll be joining an expanding firm at an exciting phase of growth, so career prospects are especially well placed. Take ownership of your next move. Electronics/Telecoms - part qualified/finalist £very competitive + bens package. Cambridge, ref 1008811 NEW! A superb opportunity has arisen for a part qualified/finalist in physics, telecoms, or electronics to join a hugely reputable and progressive UK firm. Widely regarded as one of the most successful and meritocratic firms, they have further underlined their credentials by attracting talent this year. Owing to a significant rise in new instructions within their high-tech group, applications are immediately sought from attorneys with a minimum of 2 years professional experience. You must be commercially minded, technically gifted and feel confident advising clients of all sizes. You’ll be joining a really dynamic team with excellent supervisory and mentoring experience. Computer Science/Software CPA or EPA £Excellent + bonus + package. London, ref 1006955

NEW! Finalist or qualified attorney required to join a progressive firm with an excellent reputation for UK originating work. There is an enviable client portfolio to inherit, and you’ll be encouraged to take ownership of clients’ strategic patent filing requirements from the outset. Previous original drafting and prosecution experience is sought after, as is the ability to advise and liaise with clients/inventors directly. Flexible working is fully supported, and remote working is also possible. If you’re looking for a friendly and professional firm that will invest in your career, then this is a unique role within a relaxed culture that promotes employee retention. Flexibility is their USP!

NEW! You are a progressive, qualiﬁed (CPA or EPA), attorney with a proven background of computer science and software related patent technology, looking for a senior role. Exposure to encryption, cryptography, blockchain and biometrics would be highly desirable as you’ll be working alongside inventors and technical teams with key clients from the outset. This is a unique, strategic appointment for an attorney who is attracted to building a team, forging new client partnerships and making commercial decisions, whilst taking responsibility for a truly exciting portfolio of pioneering subject matter. Flexible working, fantastic career prospects and a great ﬁrm to work for await you.

To apply to any of these roles please contact James Dawes on 020 7612 3941, or e-mail: jamesd@weareaspire.com @jamesdawesIP

jamesdawesaspire

www.weareaspire.com/IP

120 New Cavendish Street, London, W1W 6XX

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Rosemary Dena Laurence Gail Richard Elle-Mai Edwin Valentina

Theo Wai Yee Debbie Ruth Bobby Kristina Alistair Greg

Robin Carrollanne Gwilym YOU Harry Roxna Sarah Magdalena

Priya Martin Tom Dayle Iain Edmund Paloma Amanda

So much of your time is spent at work. Spend it with the right people.

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hiring@kilburnstrode.com

020 7539 4257

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TOP TIER FIRM YOUR LIFESTYLE Working at D Young & Co offers attorneys the opportunity to work with world renowned clients, alongside highly acclaimed and motivated peers, and forge exciting and successful careers. Whether your lifestyle leads you to want to live in the city, in the country or along the coast, we have roles in our Biotechnology, Chemistry & Pharmaceuticals and Electronics, Engineering & IT practices which will enable you to achieve your goals. Described by Managing IP as having “a dynamic partnership and talented people”, you could join our team, providing the very best advice to our world class clients. For more information on combining a top tier career with living the lifestyle you want, please contact our recruitment team on 023 8071 9500 or view our current TXDOL¿HG DQG WUDLQLQJ DWWRUQH\ YDFDQFLHV DW ZZZ G\RXQJ FRP FDUHHUV

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07/11/2016 11:35:33