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C I PA
Journal
incorporating the transactions of the Chartered Institute of Patent Attorneys
CEO’s report: what’s in a Fellow and more? Reflections on the Boards of Appeal – and arguments that do not work
PATENTS TRADE MARKS DESIGNS COPYRIGHT
Out for the count? Patent Box reforms Checking up on licensees: an audit clause too far? USA update: – Low down on foreign TMs: are they really used? – Life after a final rejection – More on challenging weak patents: • Versata & CBM reviews? • Branded drugs survive the PTAB A short history of the UP and the UPC
December 2014 w Volume 43 w Number 12
IFC_CIPA Articles 20/12/2014 13:15 Page 1
The CIPA Journal Editorial Panel: Alasdair Poore (Editor), David Barron, Paul Cole, Kristina Cornish, Tibor Gold and Alan White Publications Committee Chairman: William Jones Published by The Chartered Institute of Patent Attorneys, 95 Chancery Lane, London, WC2A 1DT (Telephone: +44 (0)20 7405 9450 Facsimile: +44 (0)20 7430 0471 E-mail (for general enquiries): mail@cipa.org.uk Website: www.cipa.org.uk. The Institute as a body is not responsible either for the statements made, or for the opinions expressed in this journal. No papers read before the Institute or extracts from its Proceedings may be published without the express permission of the Council and without the simultaneous acknowledgement of their source. CIPA is sent to all members of the Institute including Students 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 publication including photographs, tables, charts, etc., when appropriate, and any contributions should be sent by e-mail to editor@cipa.org.uk. Iain Ross (iain@cipa.org.uk, +44 (0)20 7440 9368) at the Institute will be pleased to discuss any queries regarding submissions. 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 only” area, but with the ability for members to download them. When sending material, the author(s) should confirm acceptance of this condition and also confirm 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 his/her work being treated in this way should write to the Editor at editor@cipa.org.uk.
The dates by which the Editor must have received contributions to ensure publication in the CIPA Journal in 2015 are listed below. Please note that these dates will be strictly adhered to. January, Monday 12 January
July, Friday 10 July
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© The Chartered Institute of Patent Attorneys, 2014
ISSN: 0306-0314
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Contents Editorial Season’s Greetings , Alasdair Poore 658
News CIPA news Chief Executive’s report, Lee Davies 659 Other news EU Trade Mark Reform, Alicia Instone 661 JAC appointments: intellectual property law practitioners, 662
Regulatory news New Rules of Conduct – 1 January 2015, Catriona Hammer 662 Official news IPO changes to the Manual of Patent Practice: January 2015, 663 Patent Cooperation Treaty fees, 664
Overseas news Overseas law report, Amanda Gladwin 664
Articles What do G20 developments mean for the UK’s Patent Box tax regime? Peter Jelfs and Nicholas Braddon 665 Audit clauses in licences, Nick Briggs and Kerry Russell 666 All the Charm of the Spanish Inquisition, Christopher Rennie-Smith 668 A short history of the UP and the UPC, Mr Justice Richard Arnold 671 Quarterly US update, Finnegan team – Introducing the After Final Consideration Pilot, 673 – Foreign trade mark owners and US law, 676 – Versata v Callidus: a framework for analyzing CBM stays, 679 – Good news for branded drugs at the PTAB, 682 The not-so-secret diary of CIPA’s Vice-President, Andrea Brewster 683
Recent decisions Patents: UK courts, Beck Greener team 685 Patents: IPO decisions, David H. Pearce 686 EPO decisions, Bristows team 687 Trade Marks and other IP, Bird & Bird team 690
Personal Golf dates in 2015, Chris Mercer 672 Victorian Letters Patent For Sale, 701
Informals news The ‘Formal’ Informals, Parminder Lally 700 CIPA Informals – Advanced EQE Lecture series, 700 CIPA Informals – Foundation Lecture series, 701
Education & CPD seminars Booking seminars and webinars online, 702 CIPA EPO Oral Proceedings Course, Alicia Instone 702 Intellectual Property and Trade Secrets, 701 Manchester Patents Case Law Seminar, Karen Russell 703 Intellectual Property Enterprise Court – Use your rights, 704 CIPA December 2014
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Editorial Season’s Greetings By the time you read this, Christmas will have been and gone. It is of course entirely appropriate, bearing in mind the reminders of Scrooge throughout the Christmas period, that we should have an article about auditing licensees: licensors checking up on them to see if they have been paying enough [page 666]. Only in this case the audit clause went rather further. It permitted the licensor to inspect generally to see if the licensee was complying with the licence terms. The Court upheld Christmas spirit on at least an interim basis, saying that the clause went too far to be enforced before a full trial; but judgment may still come home to roost at a later date – how like that Christmas expenditure. Another article explains how the wrapping may be coming off the UK’s Patent Box [page 665] – with the government having difficulty reconciling its anti-avoidance rhetoric with a Patent Box regime which seems to invite companies to come to the UK to save tax. This has been resolved (at least between Germany and the UK) by an agreement to give away less presents inside the Patent Box. Then there are a couple of articles which show how to play games: at least that seems to be the only rational way of interpreting the various and tortuous steps patent litigants can take in the US. One, the article on “covered business methods” (CBM) review [page 679], reveals (as a background to the discussion) some of those steps: claimant claims infringement of three patents; defendant counterclaims for infringement of three patents but also launches (three) applications for CBM review (but only one in respect of all the claims of the relevant patent); it applies for a stay of proceedings; the District Court will not stay the proceedings until the USPTO accepts the CBM applications; proceedings continue and claimant identifies claims relied upon – including some not the subject to the reviews; USPTO says that it will accept the reviews; defendant issues further CBM review
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applications for newly relied upon claims and refreshes application to stay; defendant appeals; meanwhile the USPTO accepts further review applications; CFAC says that the District Court got it wrong and stays all litigation; exhausted or confused… If you are confused, that is no different from so many Christmas games. On a more serious note, that case in the CFAC raises some of the same issues as arise in relation to the proposed rules of procedure of the European Unified Patent Court. In particular, the relevant US legislation (the AIA) does not say whether the appeal in CBM cases is de novo or on the basis of a misapplication of discretion or the law. The objective of this is to develop a case law and basis of precedent for the future. The same issue arises in relation to interlocutory appeals in the UPC, where there continues to be some disagreement as to the circumstances in which an appeal should be permitted – and part of the underlying argument is that appeals are necessary in order to develop the case law. And the discussion of a stay during a CBM review equally raises some of the same issues which have been debated about cases where there is bifurcation. There is a difference: in the US the defendant is the more likely party to seek review of the patent by the USPTO – bizarrely, in many cases driven by the same type of litigation as gives concerns in the UPC, claims by patent trolls. Of course there are explanations for this, not least being the fact that apparently every CBM review which has been accepted by the USPTO has been successful. The UPC discussion reminds us that there are reforms happening not just in the patent regime, which are likely to involve further substantial input in the New Year. Equally, the new regulation and directive in relation to Community Trade Marks is also like to take effect in the coming year. The latest developments are noted in Alicia Instone’s note under
CIPA’s editor, Alasdair Poore the Trade Marks Committee [page 661]. While the changes in trade mark law are less than dramatic, it is worth noting that, just as in relation to the UPC and Unitary Patent, CIPA has taken an active part in expressing views on a number of aspects of the trade marks reform, and the latest round of proposals do reflect the position that CIPA has proposed on a number of these issues. Which all takes us back to the another article kindly contributed by the Finnegan’s team, about whether foreign trade mark applicants are entirely frank about what use they are really making of trade marks in the US (or more bluntly whether they tell lies) [page 676]. In an interesting programme, the USPTO asked a selection of applicants for further evidence of their actual use of trade marks in the US – and the results appeared to show that in over 50% of cases from foreign applicants, the declarations of use were inaccurate (or at least could not be supported). The article has some salutary reminders of what is wrong with making a false declaration – and provides some ammunition to send to recalcitrant clients when they are reluctant to apply their minds to their Declaration of Use. But it should also be used to inform the debate in Europe on trade mark clutter – a debate which needs a significant boost. Happy Christmas and New Year. Alasdair Poore, Editor
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Council news Chief Executive’s Report The Chief Executive’s report on the December Council meeting. Bye laws and Fellowship So much to report on in the run up to Christmas, so I will start with a notso-brief roundup of happenings at the December Council meeting. We continue to make progress on the review of the bye-laws, as Council approves a Heads of Agreement proposed by the Constitutional Committee setting out the framework for a full rewrite. The proposal did not include the nuts and bolts details that will need to be included in the final draft version of the bye-laws, a good thing as Council needed to focus its attention on the broad strategic purpose at this stage. Council hears that much of the work will revolve around grades of membership and associated matters. Council has, of course, discussed potential changes to grades of membership many times before, always inconclusively because proposals have been too vague to allow serious discussion. This time there will be a detailed proposal from the Constitutional Committee for Council to chew over. We spend some time debating the relationship between the current model of Fellowship and the requirement that this grade of membership is only open to those on the register of patent attorneys in England and Wales, maintained by IPReg. There is general agreement that any proposal to sever the relationship between the two would mean a break from years of an established relationship between Chartered Patent Attorney status and the register, but also recognition that consideration was required for those who are UK qualified but who do not need to be on the register or who are not able to be on the register. Next steps? The Heads of Agreement framework document will be published for discussion by the
membership. The Constitutional Committee will meet early in the New Year to begin work on the detail of the bye-laws and will canvass views and opinions from as wide a group of volunteers as is possible. Already some have come forward to offer their services but more are needed, particularly those who have the most to gain from forward thinking byelaws, current trainees and those who have recently qualified. A consolidated proposal will be submitted to Council by the Constitutional Committee in the first quarter of 2015. This will be considered by Council and will then go to the membership in near final form for comment before being presented for adoption either at the May Annual General Meeting or a special General Meeting called for this purpose. Exciting times!
Education strategy Continuing the theme of modernising the Institute, Council turns its attention to education and a proposal to transform the Education Committee into the Education and Professional Standards Committee, under the leadership of a new Chair in Simone Ferrara and with an enhanced remit. Council approves the establishment of the Committee and a comprehensive set of terms of reference, which can be used as a template for modernising all committees, which includes creating a set of professional standards for Chartered Patent Attorney status and putting in place an education strategy for CIPA. That is two strategies in quick succession, many more and we could start to get quite dizzy.
Survey of members views on communications Next up we hear from Neil Lampert, who has been rapidly introducing
himself to members via the new CIPA Newsletter as Head of Media and Public Affairs. Neil has carried out a survey of members, focusing on how they perceive the current membership communications output from CIPA and what their preferences are going forward. Neil points out that the survey, whilst not confidential as he hoped to follow up important points made by members, is non-attributed in the report and all comments are anonymised. Neil will provide a comprehensive report on the survey, but early analysis shows that members welcome a monthly digital newsletter, value highly the Journal in terms of its content and currency and that the CIPA LinkedIn, whilst having over 1400 members, is not valued because of the tendency for social media channels such as this to be dominated by individuals. I worry at this point if I am one of those. Neil’s job now is to consider how the survey should inform the development of CIPA’s communications strategy. There is that strategy word again. We need a stakeholder map and related database to help us communicate more clearly externally. We are putting a lot of faith in the new website content management system (CMS), with its collaborative tools and community focus, to help resolve member participation in online discussion and debate, making the LinkedIn site redundant. This does not mean an end to CIPA’s use of sites like LinkedIn, but repurposing our presence in social media so that we use the right channels for the right reasons. Above all, we know that the important messages for CIPA’s communications strategy are that the IP system is valuable, it works in the best interests of everyone and Chartered Patent Attorneys are key to its effective use.
CIPA December 2014
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Council news Money laundering and client accounts Turning to regulation and the big issue on Council’s agenda, or rather two issues which are tending to conflate into a single complex issue, is the conjunction of IPReg’s recently stated position on the Money Laundering Regulations 2007 and the new requirement from 1 January 2015 that all firms must hold client monies in trust accounts. We raised our concerns over the ability of firms to comply with the new Code of Conduct as early as July 2014, when a number of you wrote to me expressing concerns that banks were not allowing you to open client accounts in the form required by IPReg as patent attorneys are not one of the professions listed in Schedule 3 of the Money Laundering Regulations. Others of you have successfully opened client accounts but are now unsure if these comply with the requirement in the new Code for client money to be: held on trust for the client in an account which is entirely separate from the regulated person’s or the firm’s professional business accounts.
It has been difficult for CIPA to offer advice to its members given the complexity and uncertainty surrounding the introduction of the new Code of Conduct. Instead and working very closely with ITMA, we have focused our attention on lobbying IPReg, copying in the Legal Services Board, to take a more pragmatic approach in introducing the new rules [see page 662]. We believe that that our original position that the Money Laundering Regulations do not apply to patent attorneys remains correct and that IPReg should amend the new Code of Conduct, removing the requirement for client moneys to be held on trust. Such an amendment would clarify that a second business account is an acceptable means of providing clear separation between client money and business money.
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It is, of course, late in the day to be suggesting a change to a set of regulations being introduced from 1 January 2015. We have urged that IPReg puts back its timetable for introducing the new Code of Conduct to allow for such a change to be made. We want to work closely with our regulator to ensure the profession is well regulated and this can only be achieved through rules that are proportionate to risk and, critically, capable of being complied with.
Social media policy Not a regulatory matter, but Council also learned that a complaint had been received about the publication of the ‘not-so-secret diary’, co-signed by two members. The complaint alleged that the publication of the diary in the Journal and online brought the Institute into disrepute. The complaint was heard by the Internal Governance Committee which found no evidence that the ‘not-so-secret diary’ in both Journal and online forms had compromised public confidence in the intellectual property system, in the Institute and in its members or damaged the dignity and good standing of the patent profession as alleged by the complainants. The Committee did recognise, however, the need for CIPA to have in place a social media policy covering members who act in a voluntary capacity on behalf of the Institute and for employees of the Institute. Council approved its proposal that the Media and PR Committee be tasked with the development of a social media policy. The Internal Governance Committee considered the distinction between the CIPA Journal, which is an official communication vehicle for the Institute, and a personal blog where the author is directly linked to the Institute but which is not an official channel of communication. The Committee also took into account the general perception, tone and reader expectations of official journals compared with online blogs. The
CIPA Journal is the responsibility of the Editor and the Editorial Board and the Committee will recommend that sufficient measures are put in place to align editorial control of the Journal with the social media policy when in place. A personal blog is the responsibility of the author but the Committee will recommend that the social media policy should make it clear that, where the author acts in a voluntary capacity on behalf of the Institute, the blog should be identifiable as the personal view of the author and not the official view of the Institute. It was noted that the ‘not-so-secret diary’ in the Journal has always received very positive feedback from the membership and this was reflected in comments made in response to the communications survey. Council passed a vote of support for Andrea Brewster in her work as the author of the ‘not-so-secret diary’. I am sure many readers will be pleased that the ‘not-so-secret diary’ continues to form part of this Journal.
CIPA on tour In other news, the Vice-President and I continue our ‘Grand Tour’ of planet CIPA, meeting with as many of you as we can in our mission to find out exactly what it is you want from your professional body in the future. You are friendly and welcoming and we have enjoyed spending time with you discussing just what it is that makes CIPA tick. At times there are difficult issues at hand, such as the relationship with IPReg, but our meetings have been conducted in a great atmosphere and it is clear that you are relishing this face-to-face opportunity to make your views known. We still have many more miles to travel and many more strange new places to experience as we carry on our journey around the UK. That’s me done for this year. See you in 2015, which I hope is a happy and prosperous year for you all. Lee Davies, Chief Executive
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Other news EU Trade Mark Reform As members will remember plans to overhaul the trade mark system in the EU began in 2009 with the commissioning by the European Commission (EC) of a study by the Max Plank Institute into the Overall Functioning of the European Trade Mark System, the results of which were published in 2011. Since 2011, the EC has been working to produce amended versions of Council Regulation (EC) No 207/2009 (the CTM Regulation) and Directive 2008/95/EC (the Trade Mark Harmonisation Directive) from information gleaned from the study, from ideas of their own, from input from the European Parliament, and from discussions with OHIM and other EU IPOs. The EC issued its first draft proposals for amendments to the Regulation and Directive on 27 March 2013, and after a series of intermediate redrafts there is a set of compromise proposal published on 18 July 2014 with some degree of agreement.. These compromise proposals have now entered into what is hoped to be a final stage of the drafting process in the form of a trialogue of private discussions between the current Presidency (representing the European Council), the European Parliament and the EC who will all have their own agendas. These discussions are due to conclude on 16 December 2014. Whilst it is unclear to what degree the compromise proposals will be adopted I have summarized below some of the main differences between the original proposals from the EC and the compromise proposals from the European Council that are under discussion.
Cooperation projects The mandatory cooperation proposed by the EC has been replaced by a voluntary framework in the compromise. This means that national offices will be free to choose which common tools to adopt rather than being forced to adopt all common tools, even where they might not be appropriate locally.
Classification of goods and services The EC had proposed to add in an Article to address the consequences of the IP Translator decision, brought by CIPA. Essentially this proposal would have allowed owners of pre IP Translator class heading registrations to “top up” their goods/service listings beyond the literal wording of the class heading as published We raised this as being an issue with the UK-IPO and better left up to the courts to decide. This provision is no longer present in the compromise proposals of the European Council.
Removal of relative ground and national notification systems The EC had proposed to remove the option for national offices to refuse a trade mark on relative grounds and perhaps more worryingly to stop the option for national search and notification systems. We had raised this issue with the UK-IPO as being of particular concern, especially in the case of individuals and SMEs who may not have formal watching searches in place. Fortunately, in the compromise proposals these both remain as valid options for national offices to retain or introduce.
Removal of OHIM searches and notification system Again as above, fortunately in the compromise proposals the OHIM search and notification system have been reinstated.
One class one fee Whilst in the European Council compromise proposal, this feature has been made optional in the Directive, it has been maintained in the Regulation.
Mediation service Proposal to extend absolute grounds to cover language examination This proposal, essentially that national IPOs would be required to object to registration in other EU languages where the significance thereof was unknown locally, was introduced in the original EC proposals and has now, thankfully, been removed after we had raised concerns regarding this proposal in our discussions with the UK-IPO.
Filing date The EC had attempted, in the original proposals, to make according a filing date for a trade mark application dependent on the payment of the filing fee. This is another issue we had raised with the UK-IPO as it appeared to be in violation of The Singapore Treaty on the Law of Trademarks. This provision has also now been removed in the compromise proposals of the European Council.
In the compromise proposals the option for OHIM to provide mediation services as originally proposed by the EC has been extended to allow the creation of a mediation centre.
Transfer of OHIM surplus Unfortunately the compromise proposals have maintained the ability to allow surplus revenue generated by the OHIM to be transferred into the general EU budget. However, some safeguards have been introduced to ensure that member states are consulted, and that the surplus must be consistently generated over five consecutive years for example.
Redistribution of OHIM fees This allows for a percentage of the income generated by OHIM to be used to account for expenses incurred within member states as a direct result on Community Trade Mark Registrations.
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Other news • Regulatory news • Other news Goods in transit The compromise proposals have maintained the EC’s original proposals that allow trade mark proprietors to take action when infringing goods pass through the EU. However, they have been amended to take into account concerns raised regarding the impact on legitimate trade, and include a defence for legitimate trade.
The CIPA Trade Mark Committee will continue to monitor updates in relation to the EU trade mark reform and will report when further information is publicly available regarding the progress.
Alicia Instone, CIPA Trade Mark Committee
New rules of conduct On 1 December 2014, the following letter was sent to the Chief Executive of IPReg (Ann Wright) from CIPA’s President (Catriona Hammer) and ITMA’s President (Chris McLeod). Following on from recent correspondence on the introduction on the 1 January 2015 of IPReg’s new Rules of Conduct for Patent Attorneys, Trade Mark Attorneys and Other Regulated Persons, CIPA and ITMA are united in the view that these regulations must not be brought into force until it is possible for our members to comply. Currently our members will not be able to comply with the requirement that: Rule 11 – Financial Matters: In the event that a regulated person receives money from a client, other than by way of payment of fees or disbursements incurred but including money on account for fees or disbursements paid up front, they should ensure that such money is held on trust for the client in an account which is entirely separate from the regulated person’s or the firm’s professional business accounts.
Rule 11 will require a separate client account which cannot be considered to be the cash assets of the firm. As you know, according to current banking practice, this can only be opened by a profession included in Schedule 3 of the Money Laundering Regulations 2007. Until there is a resolution of this matter, our members must not be placed in the position where compliance with a regulatory requirement under the Rules of Conduct is subject to interpretation by the banking industry. This letter is copied to the Legal Services Board (LSB). Both Institutes will be lobbying the LSB to request that IPReg reconsiders its decision to bring the new Rules of Conduct in from 1 January 2015 and instead adopt a more pragmatic timetable that will enable our members to comply.
JAC appointments: intellectual property law practitioners The Judicial Appointments Commission (JAC) has opened the selection process for up to six people to act as the “Appointed Person” on trade mark and designs appeals. They have provided the alert set out below.. The JAC launched a selection exercise on 16 December for intellectual property law specialists to become a fee-paid appointed person – appeal tribunal, trade marks and/or registered and unregistered design – a role you may be suitable for and eligible to apply for. • There are up to six positions available in these complementary jurisdictions and you can apply and be appointed to one or both roles. • This is a highly regarded expert tribunal which deals with around 80% of all appeals issued (although one of four available routes for parties). • Hearings mainly take place in London but you can be asked to sit elsewhere in the UK, as the law covers the whole of the UK jurisdiction • The fee will be £600 per day plus VAT. • You will need to have five years as a UK registered patent or trade mark attorney. • You will need to make yourself available to the tribunal for up to 30 days annually for case preparation, sittings and decisions. • Further details on these roles can be found on the JAC
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website at http://jac.judiciary.gov.uk/selection-process/ 3031.htm JAC is inviting CIPA and ITMA members to find out more about becoming a fee-paid judge. Some of the most talented individuals are not putting themselves forward. This may be due to a lack of awareness of the range of interesting opportunities and roles, the potential flexibility, concerns about eligibility or not realising what your skills and experience can offer. Some of the many benefits to considering undertaking fee-paid judicial roles are: • Fee-paid experience is the best route into salaried judicial roles. It provides an opportunity to gain experience and skills, as well as establishing if you are suited to a judicial role. • Opportunities range from civil and criminal court roles, as well as many specialist tribunals in diverse areas of jurisdiction. • Dates for sitting may be circulated in advance so there is the capacity to accommodate work and family commitments.
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Other news • Official news • You do not need advocacy or litigation experience for all roles, these roles are one such example and training, mentoring and shadowing is available. • The opportunity to network and interact with a diverse range of contacts, building relations on behalf of your firm or organisation. • The prestige and status of undertaking a judicial role, and the confidence in your qualities and abilities that position can bring about. • The chance to contribute to public service, bringing a different perspective to the bench and making a difference to the law. The research carried out by the JAC in association with the Law Society, the Bar Council and CILEx in 2013 made it clear that having role models in the judiciary would help to
encourage people from minority groups to apply themselves for judicial office. If you are a member of a minority group, and are selected for judicial office, you could help to promote greater judicial diversity by becoming a role model within your community/group. The JAC is committed to treating all applicants equally. There is a range of information and tools on its website to help you to decide if you are ready to, and interested in, becoming a judge. These will help you to make a strong application and prepare for the selection process. These include: • • • •
a broad range of case studies; webinars and transcripts of seminars; past qualifying tests and feedback reports; and the opportunity to volunteer for a dry run as a mock candidate.
IPO changes to the Manual of Patent Practice: January 2015 The main changes that have been incorporated into the January 2015 version of the Manual of Patent Practice are listed below. The updated table of changes will be available from 1 January on the Manual of Patent Practice pages on the gov.uk website: www.gov.uk/government/publications/patents-manual-of-patent-practice. 2.08
Updated to reflect that prior disclosures should be read in light of CGK of skilled person at the date of disclosure (as in Teva UK Limited & another v AstraZeneca AB [2014] EWHC 2873)
3.30.0
Updated in light of Teva UK Limited & another v AstraZeneca AB [2014] EWHC 2873 (Pat) to indicate that CGK may in some circumstances include material readily identified in a literature search
4.05
Update to refer to Peter Crowley v United Kingdom Intellectual Property Office [2014]
4A.27.1; 4A.12; 18.97.1 Updated in light of EPO Technical Board of Appeal decisions in T 250/05, T 1790/12 and T 879/12 relating to double patenting and 2nd medical use claims 15.21
Updated in light Fergusson’s Application, BL O/272/09 and Knauf Insulation’s Application BL O/098/13
17.77
Updated to clarify practice on the use of the phrase “at least” in search reports
17.05.1
Updated to clarify that how the Office considers Green Channel acceleration requests
17.45; 17.104.1; 18.10
Updated to reflect Office practice on requiring or providing translations of citations
61.07
Updated to refer to IPcom GmbH & Co Kg v HTC Europe Co Ltd & Ors [2013] EWCA Civ 1496
71.02
Updated to include reference to Actavis v Pharmacia [2014] EWHC 2265 (Pat) and IPcom GmbH & Co Kg v HTC Europe Co Ltd & Ors [2013] EWCA Civ 1496
72.42
Update to clarify the circumstances in which amendments proposed during revocation or infringement proceedings must be advertised
76.15.5
Updated in light of Teva UK Limited & another v AstraZeneca AB [2014] EWHC 2873 (Pat)
76.15.2; 76.26
Updated information relating to 2nd medical use claims
123.47.1
Updated to clarify use of rule 111 in light of BL O/234/14
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Official news • Overseas news Patent Cooperation Treaty fees The IPO has announced the following changes in fees payable under the Patent Cooperation Treaty. Notice is given that the fees (chapter 1) payable in connection with applications filed under the Patent Cooperation Treaty at the UK Intellectual Property Office (RO/GB) are changed with effect from 1 January 2015.
Korea, Ireland, Austria, Denmark, Mexico, Morocco, Norway and the Russian Federation joins Designview Korean Intellectual Property Office (KIPO), the Irish Patents Office (IPO), the Austrian Patent Office (ÖPA), the Danish Patent and Trademark Office (DKPTO), the Mexican Institute of Industrial Property (IMPI), the Moroccan Industrial and
Transmittal fee:............................................................£75 Search fee: ................................................................£1474
Commercial Property Office (OMPIC), the
International fee (a) For the first 30 sheets: ..........................................£862 (b) For each sheet over 30:...........................................£10 Restoration for restoration of priority: .................£150
the Federal Service for Intellectual Property of
Reductions for e-filing Electronic filing (not being in character coded format): ..................................................................................... £130 Electronic filing (being in character coded format): ......................................................................................£194 Fees for preparation of priority document: .......... £20 Fees for preparation for earlier search documents:....£5
Norwegian Industrial Property Office (NIPO) and Russia (Rospatent) have made their design data available to the Designview search tool. Since the introduction of DesignView in November 2012, the tool has served more than 800.000 searches from 135 different countries, with users from Germany, Spain, the UK and France among the most frequent visitors. See https://www.tmdn.org/tmdsview-web/welcome.
Overseas law report International treaties Marrakesh Treaty (Access to Published Works for the Visually Impaired)
the WIPO Copyright Treaty. respect to Madagascar, on 24 February 2015.
On 1 December 2014, the Government of the Eastern Republic of Uruguay deposited its instrument of ratification of the Marrakesh Treaty. The date of entry into force of the said Treaty will be notified when the required number of ratifications or accessions is reached.
WIPO Performances and Phonograms Treaty
WIPO Copyright Treaty
Singapore Treaty (Law of Trademarks)
On 24 November 2014, Madagascar deposited its instrument of accession to
On 29 November 2014, the Singapore Treaty entered into force in Iraq.
On 24 November 2014, the Government of Madagascar deposited its instrument of accession to the WIPO Performances and Phonograms Treaty. The said Treaty will enter into force, with respect to Madagascar, on 24 February 2015.
Patents New Zealand On 13 September 2014, New Zealand’s Patents Act 2013 came into force. Under the new Act, it is now necessary to pay pre-grant maintenance fees annually from the fourth anniversary of the filing date of the application and to pay annual post-grant renewal fees. The new Act applies to application filed in, or entering the national phase in, New Zealand after 12 September 2014. Dr Amanda R. Gladwin, GlaxoSmithKline
OHIM news: Iceland joins TMview On 24 November 2014, the Icelandic Patent Office (ELS-IPO) made its trade mark data available to the TMview search tool. The integration of ELS-IPO is a concrete result of the International Cooperation programme managed by OHIM in collaboration with its international partners. This last extension brings the total number of offices participating in TMview to 37 and with the addition of more than 47000 Icelandic trade marks, TMview now provides information and access to almost 24,6 million trade marks in total. Since the introduction of TMview on 13 April 2010, the tool has served more than 10 million searches from 214 different countries, with users from Spain, Germany and Italy among the most frequent visitors. You can find out more at https://www.tmdn.org/tmview or www.tmview.europa.eu
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Patent Box – has it been knocked out? G20 developments: what do they mean for the UK’s Patent Box? The Patent Box encourages UK patents. It is a way of bringing business to the UK; but also it helps awareness of patents within UK businesses. One ostensible aim is to benefit from the statistical observation that businesses with more registered IP are more successful. However, national tax breaks for businesses have run into criticism – Starbucks and the like. Peter Jelfs (Mazars Accountants) and Nicholas Braddon (Fellow) explain that recent proposals to amend the regime in line with the Organisation for Economic Co-operation and Development (OECD) policy will leave it intact, but narrower, focusing on R&D in the UK. On the eve of the recent G20 summit the UK and German governments released a statement. This1 has significant implications for the UK’s Patent Box tax regime. The statement, which undoubtedly represented something of a compromise, in the wake of objections from several countries, most notably Germany, was nevertheless defended by George Osborne in Parliament as “a great deal for Britain”. Such positive spin may seem at odds with an apparent “watering down” of a flagship policy; but it was not wholly unjustified: companies undertaking R&D in the UK will still be able to benefit from Patent Box tax incentives, even after the current regime is closed to new entrants in June 2016.
Why a compromise? By Nicholas Braddon (Fellow) and Peter Jelfs
Over the past few months it has been apparent that several G20 countries, particularly Germany, were unhappy with a number of Patent Box regimes. These were set up by national governments to offer preferential rates of corporation tax on profits derived from IP, thus hoping to attract and create investment and jobs in hi-tech industries. The UK Patent Box had come under attack for its provision that allows companies to access the lower effective rates of UK corporation tax on profits derived from patents where the associated R&D activities were not undertaken in the UK. Until now the UK Treasury has robustly defended the UK Patent Box. The statement from the UK government came as something of a surprise. However, it seems that the political difficulties of, on the one hand, opposing tax avoidance within the bigger picture of the OECD’s “BEPS” (Base Erosion and Profit Shifting) project, and, on the other,
References 1.
The statement, which was issued on 11 November 2014, can be read at www.gov.uk/government/publications/proposals-for-new-rules-for-preferentialip-regimes-germany-uk-joint-statement.
3.
The Chancellor’s Autumn Statement speech can be read at www.gov.uk/government/speeches/chancellor-george-osbornes-autumnstatement-2014-speech.
offering tax incentives that other powerful nations view as abusive, left the UK Government in an awkward position.
What is being proposed? The details will still have to be worked out. In the meantime, the UK/German joint statement contains the following proposals: • The current UK Patent Box will be closed to new entrants in June 2016 and abolished by June 2021. The implication is that a new, reformed UK Patent Box will be in place by June 2016 at the latest, based on the OECD’s ‘Modified Nexus Approach’. This will only offer tax incentives where significant R&D is undertaken in the UK • Companies already within the UK Patent Box can retain the current benefits until June 2021. • There will be restrictions on qualifying expenditure for the UK Patent Box where R&D work is not undertaken by the claimant (but no clear details as yet as to the nature of the restriction). • By June 2015 the OECD will provide guidelines on how to track and trace expenditure for Patent Box calculations
A positive outlook? Much of the UK press reporting of the UK/German statement has implied that it is wholly negative for the UK Government and, consequently, for innovative UK companies. The writers do not think, however, that this is the case at all, and there are several positive messages to come out: • There is now certainty that the UK Patent Box will continue in a modified format. • Companies already accessing the UK Patent Box will be able to remain within it for several years and plan ahead for the changes • Given the UK’s commitment to the BEPS project, this development is probably the best outcome that could have been hoped for. The support given by Germany for the
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Patent Box – has it been knocked out? new development means it is unlikely to face any further challenges. • No indication was given that the 10% rate of tax on profits derived from patents will change; just a narrowing of eligible expenditure. So it is still worth planning to take advantage of the low rate of income tax. • Supporting innovative companies undertaking R&D in the UK and creating skilled jobs is still a high priority for the UK Government. The continuing success of the R&D tax credit scheme, combined with the Patent Box, makes the UK a great place for innovative companies to do business (and the recent Autumn Statement revealed yet another increase in the rate of R&D tax credit available to SMEs2 ). In summary, the recent developments should add certainty to the commitment of the UK Government to offer tax incentives to innovative companies that undertake R&D activities within the UK. This should be good for businesses
(and still good for UK patents). There is also still time for companies to take advantage of the current Patent Box tax regime and the new scheme that ultimately replaces it should offer tax advantages for companies undertaking R&D in the UK. Patent attorneys can, therefore, continue to raise the possible tax advantages of the UK Patent Box to client companies as a consideration when deciding whether or not to file patent applications. Peter Jelfs, Senior Manager, Tax, of Mazars LLP (peter.jelfs@mazars.co.uk). Peter is a chartered tax adviser and chartered accountant. He leads Mazars’ R&D tax credits and patent box offering to companies throughout the West and East Midlands. He has considerable experience in agreeing R&D tax credit claims with HMRC for clients across a wide range of sectors including pharmaceuticals, engineering, manufacturing and software. Nicholas Braddon (Fellow), associate at Barker Brettell LLP (nicholas.braddon@barkerbrettell.co.uk)
A right to roam – an audit clause too far? Audit clauses in licence agreements are a good idea – indeed essential as a safeguard to ensure the licensor gets paid the right amount. But there is a temptation, especially for licensors with a strong bargaining position, to make an audit clause “all roaming”. Nick Briggs and Kerry Russell discuss how in 118 Data Resource v IDS Data Services a simple audit clause, to see if the licensee is complying with the terms of the licence, may not be enforced. It may be too imprecise for the court to give specific performance. The decision is on an interim application, while the dispute goes on – we will wait to see with interest what happens at the full trial.
By Nick Briggs (Associate) and Kerry Russell
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Many licences of IPRs include the right for a licensor to enter onto the licensee’s premises and inspect relevant documents and materials in order to ensure that specific provisions of the licence are being complied with. These audit clauses are useful as a way of enabling the licensor to police compliance with the agreement. For example, they provide a means of enabling the licensor to check that the correct level of royalties are being paid, or that any specific restrictions in the licence are being adhered to. The recent judgment in 118 Data Resource Limited v IDS Data Services Limited and others [2014] EWHC 3629 (Ch) will serve as a reminder to licensors of IP to ensure that any audit clauses which they intend to rely on are drafted clearly and in terms that set out precisely how an inspection should proceed, and shows licensees how they might protect their business from over-zealous licensors who might be intent on using information gleaned for ulterior motives. In this case the claimant licensed its alleged intellectual property rights in a database of business contact details to the first defendant.
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The licence permitted the first defendant to use and sub-license these rights, subject to specific restrictions. The licence agreement also provided that the first defendant’s own database would be “cleaned” (or updated) by the claimant. As expected, the licence agreement contained various provisions that enabled the claimant to ensure that the first defendant was complying with its specific obligations under the licence. Firstly, the claimant had the ability to review and approve the first defendant’s standard terms and conditions that would enable it to review any proposed sub-licences with the first defendant’s customers, prior to the claimant’s data being released (i.e. a right of prior approval of the terms). However, it was accepted that, in practice, the claimant did not enforce its rights under this provision. Secondly, the agreement provided that the claimant could enter the first defendant’s premises where copies of the database were used: “for the purpose of ascertaining that the provisions of [the] Agreement [were] being complied with”. Crucially, however, this
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Audit clauses in licences particular audit clause did not set out any further detail about how such an inspection would proceed. The substantive dispute between the parties is ongoing. The litigation is complex and involves alleged infringement of a web of IP rights including database rights, copyright and confidential information, in addition to issues surrounding breaches of the terms of the IP licence. The claimant issued an interim application that focused on a request for specific performance of the rights it believed it had under the audit clause of the licence. In its application, the claimant sought to rely upon the audit clause, together with its right to prior approval of the first defendant’s standard terms and conditions, to gain essentially unrestricted access to the first defendant’s office, IT systems and documents. The claimant requested a court order that would enable it to have sight of all of the first defendant’s customer contracts and financial information, together with copies of the extracts of the claimant’s database, which had been licensed to each of the first defendant’s customers. The first defendant strongly contested the claimant’s application on the basis that the vague wording of the audit clause did not allow for an inspection in the terms sought by the claimant. Furthermore, and most importantly, the first defendant argued that if such widereaching access was granted, without the court implying reasonable safeguarding provisions, the claimant would gain access to the first defendant’s highly confidential and commercially sensitive information, as well as information that was the subject of legal privilege in the main litigation. Had the application succeeded, there would have been no restriction on the use the claimant could have made of that information, because the information would have been disclosed as a result of a specific performance of the contract. By way of contrast, were the information to be disclosed in the course of the litigation in the normal way under disclosure, then of course the information could only have been used for the purposes of the litigation and not for any wider commercial purpose. The audit clause as drafted did not provide any mechanism governing how the inspection would take place, and did not contain any provisions to protect either party’s commercial position. It read as follows: [The first defendant] undertakes and agrees with [the claimant] that it will… permit any duly authorised representative of [the claimant] on reasonable prior notice to enter into any of its premises where any copies of [the database] are used, for the purpose of ascertaining that the provisions of this Agreement are being complied with.
The lack of any such mechanism was a significant issue and was particularly relevant in this case, as it was accepted that the claimant and first defendant were competitors in the market. Counsel for the first defendant submitted that the
inspection clause was unenforceable due to this lack of essential detail. Alternatively, if the clause was enforceable, it only permitted the claimant to check that the first defendant was storing and using the claimant’s database in accordance with the terms of the licence (i.e. the database was being held securely and separately from the first defendant’s own database). Counsel submitted that the audit clause did not allow the claimant to gain access to commercially sensitive information such as the identity of the first defendant’s customers, or the prices at which the claimant’s data was sub-licensed. Deputy Judge Halpern QC, who heard the application, accepted the first defendant’s submissions. He was satisfied that, although it was clear that the parties had agreed that the claimant had a right of inspection, it was not clear for what purpose the claimant was entitled to gain entry to the first defendant’s premises, nor how the inspection would proceed thereafter. The audit clause lacked fundamental detail, and the Court would have been required in the claimant’s case to imply provisions that go beyond the wording of the original clause, and involved rewriting the agreement. DJ Halpern QC therefore decided that the audit clause could not be the subject of an order for specific performance on the claimant’s interim application. DJ Halpern QC also decided that, if the audit clause was sufficiently clear to be enforceable, it was not intended to allow the claimant unrestricted access to the first defendant’s general financial and customer information. The audit clause only permitted the claimant to inspect the premises where the database was “used” and, by implication, this limited the inspection to checking only that the database was being stored and used correctly. The claimant could police other restrictions in the licence by enforcing its right of prior approval of the first defendant’s standard terms and conditions, but even this did not allow the claimant access to customer names and price information. It is important to be clear that DJ Halpern QC did not intend his decision to impact on the trial Judge’s view of enforceability of the audit provision and what relief, if any, the claimant may be entitled to for non-compliance. However, at an interim stage DJ Halpern QC found that the clause lacked sufficient detail to allow the court to draw up a clear order for specific performance. As counsel for the first defendant argued the court would be required to imply a raft of safeguarding provisions that could not “stand on the shoulders” of the audit clause as drafted in the licence. This decision outlines the importance of ensuring that audit provisions in licenses are drafted in precise terms, to reduce the risk that they cannot be relied upon and to ensure that the party being inspected can know clearly what is required. Nick Briggs is a partner and Kerry Russell a solicitor at Shakespeares Solicitors. (Shakespeares acted for the defendant, IDS.)
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EPO Boards of Appeal All the charm of the Spanish Inquisition Reflections after 15 years in the EPO Boards of Appeal, by Christopher Rennie-Smith. When I was asked to write a piece about the EPO boards of appeal, I was momentarily tempted to wade into the political quagmire that has engulfed the boards in recent months (since I departed last April, the engulfing being wholly unrelated with my departure). However, while that is a subject that deserves discussion, it is one which, as I write, is still evolving and on which we need more Christopher Rennie-Smith information. So I have fallen back on, and (Associate) updated a little, the last attempt I made to describe the boards of appeal, which was a talk I gave to the British branch of UNION in December 2012.1 I have kept the title “All the Charm of the Spanish Inquisition” from that earlier talk for the simple reason that I like it. It comes from a description of the boards of appeal by one of its users – Andrea Brewster, who has since become CIPA’s Vice-President. Andrea’s monthly “Not so secret diary of a council member” columns in this Journal – an everyday story of tense meetings and biscuit consumption – have a keen readership within the EPO. In her April 2012 column, she wrote on the then hot topic of patent attorneys’ litigation rights: We need to reply to IPReg about litigation rights. A key question is whether we should fight to retain our rights of audience in the Patents County Court. It seems to me that this is a no-brainer: of course we must fight. If we are competent to face an EPO Appeal Board, which typically has about as much charm as the Spanish Inquisition and a similar regard for user guidelines, then surely we must be competent to face a nice, cuddly, pragmatic PCC judge whose aim is to reduce paperwork and 2 procedural nit-picking and costs?
It is unarguable that no member of the boards of appeal could be considered even remotely cuddly, and it is not my job to speculate which judge, past or present, of the PCC (now the IPEC) is or was cuddly. I’m not sure Andrea really thought the boards of appeal are as terrifying as the Spanish Inquisition3, though lack of charm is probably a fair assessment. My hope is that this article may show that, while the boards lack both cuddliness and charm, they are at least human. I should add, and stress, that the views expressed here are entirely my own.
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Workload and delay After I had been appointed to the boards of appeal in 1999 but before I left London to start the job, I was importuned by many practitioners to “do something” about the delays at the EPO. Now, after 15 years of trying, I have to report back that I failed. I was never in a position to do anything about delays except in the boards of appeal, but even curing just those would have been a significant achievement. I did have a part in revising the rules of procedure of the boards of appeal4 (“RPBA”) to introduce limited written submissions – limited, that is, to one complete submission by each party – and, which was considered revolutionary, time limits for all such submissions that placed both appellants and respondents in the same and equal position. However, even with those new rules, would-be reformers were defeated by two things – the sheer volume of cases and, I’m sorry to say, patent attorneys.
Representatives and delay It has to be said that patent attorneys are a brave and fearless band, even when faced with the latter-day inquisition. There is a substantial minority who have either not heard of the rules of procedure (unlikely, I always feel) or who have decided not to comply with them (less likely, surely?). I have heard the same gentleman within the space of one month announce in oral proceedings, first, that the RPBA are only guidelines and, second, that they must be followed to the letter – on each occasion as it suited him, of course. The approach of advocates in most tribunals is to accept the law as the law and argue their cases as best they can within it. To deny that the law is the law may be brave but does not impress the tribunal. That example is, of course, extreme, but the cavalier approach of many representatives to the RPBA, even if criticised and disapproved in reported decisions, seems to do nothing to encourage compliance by the brave minority. I attempted some years ago, in preparing a talk on board of appeal procedure, to summarise representatives’ reasons for non-compliance with the RPBA and managed to place them into only three categories. First, there is the: “two wrongs will (later) make a right” argument. A typical example is the statement on the lines of: “I reserve the right to file further requests in reply to the other side’s arguments”. Such
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EPO Boards of Appeal statements are pointless because there is no such right to reserve, but those who resort to this seem to believe that by making the statement they become entitled to exercise the non-existent right. A form of personalised legislation, apparently. Second, there is the force majeure argument, which seeks to make the board of appeal responsible for the advocate’s transgression of the rules. Thus, “the Board didn’t send me a provisional opinion” or “the provisional opinion didn’t cover the necessary issues” with the result “so I had no choice but to file all possible requests”. Which, in fact, shows that the representative cannot cope with the unexpected. Third, there is the “selfless generosity” argument (also known in Munich as the Mother Teresa argument) which runs thus – “I filed every conceivable request to assist the board and the other parties as much as possible”. A fairly reliable indication of a poor advocate and maybe a poor case. This is all related to procedural issues such as the late filing of requests, the introduction of new evidence on appeal, and the raising at oral proceedings of new arguments not made in writing. This is not the place to deal with those issues, not least because they deserve more attention and space than this article allows.
Volume of cases and delay The volume of cases in the boards of appeal is a more serious matter, and one which neither the boards themselves with their existing powers nor the users and their representatives can change. The position is quite simple – the boards of appeal are slowly choking to death. In 2009, the list of cases pending in my then technical board was about 200 long. In 2011 it had become 270, in late 2012 it was 313. The time parties had to expect to wait for their appeal to be disposed of was about four years. That is only one example. Some boards had shorter lists, maybe 200 or even fewer cases with a waiting time of say two years, and others had more, maybe over 400 cases. The exact picture was further complicated by the number of ex parte examination and inter partes opposition appeals a board might have since the type of appeal can, but unhelpfully may not always, affect the time it may take to deal with. The only measure taken over the years in response to the growing delays was to increase the number of technical boards but this was never done on a scale sufficient to have a meaningful effect on the growing backlog.5 To his great credit, the current vice-president of DG36 addressed the issue of workload almost immediately on his appointment in 2011 and, in addition to securing the usual addition of an extra board, attempted a redistribution of pending cases between boards which, if successful, would at least have the effect of all cases suffering from about the same length of delay. But all such administrative steps will only make an impact if the seriousness of the situation were appreciated by those ultimately responsible for the governance of the EPO – the national delegations which make up the Administrative Council – and if that appreciation were followed by substantial corrective expenditure. However, even though the EPO and the Council could, with some reason, be accused of not reacting to the increasing numbers
of appeals and the resulting delays which are to be seen from the figures they have, simply throwing money at the problem would not be the answer. Something more is needed, and what that might be and how it should be implemented are questions that both national delegations and representatives organisations like CIPA should be pondering. Suggestions I could make after years on the inside include a procedure for summary dismissal of hopeless appeals – in a system where any disappointed party can appeal for little cost and have the decision in question suspended for the duration of the appeal, the attraction of a hopeless appeal is considerable, particularly when the length of time an appeal takes gets longer. Ironically, the slow system encourages more hopeless cases that, in turn, make the system even slower. A requirement for leave to appeal might be a simpler alternative. As would a massive increase in the appeal fee, though the recent attempt at a modest increase that resulted in an even more modest increase is hardly encouraging. Another curb on appeals would be a “loser pays winner” costs regime such as found in national courts. And a reduction in EPO proceedings generally could be achieved by removing the time limit on opposition so that only opponents with a real economic interest in revocation or amendment would oppose.7 Any of these reforms would require amendment of the EPC and/or its Implementing Regulations and that brings us back to the question whether the EPO and the Administrative Council would have the will to tackle the delays.
Further appeal Appeal to the boards of appeal is the second and last step in the EPO system. There is no second appeal. The boards are, as Jacob J (as he then was) observed in Lenzing8, the equivalent of the House of Lords (as it then was), the Bundesgerichtshof and the Cour de Cassation. The Enlarged Board of Appeal exists not to hear second appeals but to give answers to difficult questions referred to it either by one of the boards or by the President of the EPO (in effect, the in-house lawyers in DG59). Since late 2007 the Enlarged Board has also had a separate jurisdiction to determine so-called petitions for review. This gives the Enlarged Board the power to set aside an appeal decision and refer a case back to the board in question if a procedural failing is established to its satisfaction. It has no power to comment, let alone adjudicate on the merits of the case in question. The success rate to date of four petitions out of 114 decided, demonstrates the limited grounds of this new jurisdiction – there are only six possible procedural errors listed in the legislation10. It also demonstrates both the narrow interpretation that the Enlarged Board has, perhaps understandably, placed on those limited possibilities and the less than imaginative approach some petitioners have adopted to their cases. The result is that some petitions that might not have failed have been almost bound to fail, and that a jurisprudence on how boards should and should not behave, has not been as fully developed as some of us might have hoped. Better petitions might lead to better case-law. But the further and more radical suggestion I would stir
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EPO Boards of Appeal into the inquisitorial pot is that of a second-tier appeal. Now, I know no-one wants even more time to be spent on litigation in the EPO, and indeed it follows from what I’ve said already about workload that there is no available capacity for more appeals, but I believe that a second appeal might in time reduce the number of appeals by producing a much firmer and more coherent body of case-law than we currently have. Can you think of two inconsistent board of appeal decisions? Of course you can11, we all can, and it would be hard to find someone who cannot. The vast majority of those inconsistencies will not be referred to the Enlarged Board because that is not necessary to decide any one particular case in which one of them may arise. But unless or until there is a further appeal – limited perhaps, with leave as a precondition maybe – it is inevitable that a large number of boards12 will arrive at different decisions on similar issues, generating a volume of case-law so large that they themselves cannot know it all, and that this will not only encourage more appeals but may allow the inconsistencies to grow.
budget, no-one has said we may, we’ve always managed without one. The nearest to such user discussions I encountered were the occasional visits by the Biotechnology Commission of UNION to meet members of the two biotech boards of appeal. UNION made the approach and the meetings were just held – presumably because it required no more than an hour or two of time, mostly out of hours. Similarly, there are (or were) occasional social meetings of Munich-based but mostly English first language attorneys and board members. I hear rumours that some or all of these exchanges have not survived the recent disruption in the boards of appeal which, if true, is a great shame. To return to where I began, I recall other proposals of the working group on procedure which produced the draft of the 2003 version of the RPBA. We proposed that the RPBA be kept under continual review and improvement and volunteered to do it. We also proposed that we should invite suggestions from users or, better, have some users as members. Within a year our working group had been discontinued. It may of course have been a coincidence.
Relations with users You cannot have an inquisition without victims – in the case of the boards of appeal, parties to appeals and their representatives. Rather unfortunately, the number of victims who are prepared to do anything about the problems which must surely stare them in the face is very small. For every dozen patent attorneys who over the years bent my ear in private about some source of (often justified) discontent, there was rarely one who was prepared to write to the EPO, or write an article in this or another journal, let alone join a committee and voice an opinion within the system. Admittedly the fault is partly that of the boards of appeal. Under the previous vice-president the only contact between the boards and users was the annual MSBA13 meeting. A further improvement made by the current vicepresident has been to meet other interest groups at other times than the annual MSBA meeting. He has also improved the MSBA meetings, though it can never be more than an annual and superficial discussion of questions tabled by those attending. As one who has sat through several such meetings, I was surprised at the immensely varied quality of the contributions. I do not understand why some participants were very experienced attorneys with a thorough knowledge of the EPO system, and appeal procedure and practice in particular, whereas some were so clearly lacking in even a rudimentary knowledge of the RPBA, that they did those they represent at such meetings a disservice. For many years I was a member of the Patents County Court Users Committee (PCCUC)14, not because I was a user but because at some point the committee wanted someone from the EPO to attend and I was asked. It helped me very much to see another court from, if not the inside, another perspective. It prompted me to float the general idea of a board of appeal users group as a regular discussion forum. However, no-one in authority would agree – the responses were those of a hardened bureaucracy: not in the rules, no
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Christopher Rennie-Smith (Associate) is now a consultant on European patent proceedings in London. From May 1999 to April 2014 he was a legally qualified member of the Boards of Appeal, from 2005 a member of the Enlarged Board of Appeal and from 2010 a chairman of a Technical Board of Appeal.
References 1.
To which I am very grateful for agreeing to the recycling of some material from that talk. Readers may be relieved to know the original was longer.
2.
CIPA Journal, April 2012, page 208
3.
Though there are some worrying parallels. The Inquisition was a tribunal, headed by a Grand Inquisitor and six others who made up the Council of the Supreme beneath which were 21 tribunals. Compare the Enlarged Board of Appeal with seven members and, currently, 29 boards of appeal.
4.
Known as the RPBA (whose provisions are called “Articles” despite the label “Rules” – an observation I owe to Peter Jenkins of Page White & Farrer). The version I worked on was that which came into effect in May 2003. With a few subsequent amendments, they are still substantially the same.
5.
In board of appeal statistics, “backlog” is not all pending cases but only those pending for 30 months or more which in itself says something about the situation. Interestingly, the same word is used in all three official languages – hence “le backlog” and “das Backlog”.
6.
Directorate-General 3, the administrative division of the EPO responsible for appeals.
7.
As in effect is the case in most national laws and will be the position in UPC proceedings.
8.
Lenzing AG’s European Patent (UK) [1997] RPC 245.
9.
Directorate-General 5, the administrative division of the EPO responsible for inter alia Legal Affairs.
10. Article 112a(2) and Rule 104 EPC. 11. A current favourite is the approach(es) to Article 123(2) EPC. 12. There are currently 29 boards (28 technical boards and the legal board) with a total of 166 members (at 31 December 2013). 13. Members of SACEPO and the Boards of Appeal. SACEPO is the Standing Committee of the EPO and includes representatives of epi (patent attorneys), Business Europe (parties) and others. 14. Now the Intellectual Property Enterprise Court Users Committee (IPECUC).
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UPC A Short History of the Unitary European Patent and the Unified Patent Court Sir Richard Arnold explains how the 17 Draft of the Rules of Procedure for the UPC – and all those other bits and pieces – are the culmination of a mere 67 years of European debate!” The story starts as long ago as June 1947, when France, Belgium, Luxembourg and the Netherlands signed an agreement at The Hague to set up what became the International Patent Institute or IIB to provide an international search and examination service. The IIB began operations in July 1949. In September 1949, the Council of Europe started work on plans for a European Patent Office, with a draft Convention being quickly produced. Although the proposal for a European Patent Office did not meet with favour at that stage, it was agreed that a Committee of Experts would be set up to produce proposals for harmonising European patent law. The first product of their work was the European Convention relating to the Formalities required for Patent Applications signed in Paris in December 1953. The second product was the European Convention on the International Classification of Patents for Invention signed in Paris in December 1954. The signature of the Treaty of Rome on 25 March 1957 meant that the issue became one for the new European Economic Community. In December 1960, the then six Member States set up a working group to draft a European Convention relating to a European Patent Law. The draft Convention was published in early 1962, running to some 217 articles. It provided for the creation of a supranational European Patent Office operating in English, French and German that would grant unitary and autonomous European patents and for the creation of a European Patent Court to enforce them. Inspired by the draft Community Convention, the Council of Europe’s Committee of Experts resumed work and produced their third treaty, the Convention on the Unification of Certain Points of Substantive Law on Patents for Invention, signed in Strasbourg in November 1963, which dealt with the requirements for patentability and extent of protection. At the same time, the EEC continued its work, producing a second draft of the Community Convention in January 1965. There was then a hiatus while the Patent Cooperation Treaty was negotiated, which was ultimately signed by 34 countries in Washington in June 1970. Meanwhile, in March 1969 the Council of the European Communities instituted an Intergovernmental Conference for the Setting Up of a European System for the Grant of Patents, to which interested non-EEC countries were invited. At the same time, work was resumed by a working group on the Community Patent Convention. The Intergovernmental Conference produced a final draft of the European Patent Convention, based on the three Council of Europe Conventions, in June 1972, while the Community
Patent working group produced their draft in March 1973. The European Patent Convention was finally signed in Munich in October 1973. The EPC established the European Patent Office, which subsumed the IIB, as a central granting authority for European patents taking effect as bundles of national patents. Under the system established by the EPC, however, the national designations of European patents must be separately enforced through the national court systems. Furthermore, there is no supranational court to harmonise national interpretations of EPC-derived provisions. The Community Patent Convention was signed by the then nine Member States of the EEC in Luxembourg in December 1975, but it never came into force because it was not ratified by enough countries. A revised version of the CPC was signed by the then 12 Member States of the EEC in Luxembourg in December 1989, but again it was not ratified by enough states. The CPC would have established a unitary Community patent, with enforcement by national courts, which would have had powers to grant Community-wide injunctions and to revoke a patent when its validity was challenged by way of defence to infringement proceedings. Appeals would lie to a Common Court of Appeal, while revocation claims could be brought before the EPO. After a ten-year lull, in June 1999 the Contracting States of the European Patent Organisation set up a Working Party on Litigation to draft an optional Protocol to the EPC to enable European patents to be litigated in an integrated judicial system including uniform rules of procedure and a common appeal court. In November 2003, the working party published a draft European Patent Litigation Agreement, which provided for a European Patent Court comprising a Court of First Instance (with a Central Division and Regional Divisions) and a Court of Appeal with jurisdiction to deal with infringement and revocation actions. The provisions of substantive law were based on the CPC and the jurisdictional provisions were based on the Brussels I Regulation. The EPLA did not provide any direct role for the EU courts, but it allowed for the possibility of references to the European Court of Justice on points of EU law. The EPLA was endorsed by a resolution passed by 28 European patent judges meeting in Venice in October 2005 and, in November 2006, 26 European patent judges passed a second resolution in Venice approving principles for the Rules of Procedure of the European Patent Court. Discussions over the EPLA continued until February 2007 when the Legal Service of the European Parliament concluded that it would be contrary to EU law for Member States of the EU to enter into the EPLA. In the meantime, in August 2000, the European
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UPC Commission proposed a Community Patent Regulation. The CPR would have created a Community patent granted by the EPO. It included provision for a centralised Community Patent Court with an appeal to a specialist chamber of the General Court and the possibility of a further appeal to the ECJ. In May 2004, however, the Competitiveness Council failed to reach agreement on the proposals. In April 2007, the Commission issued a Communication to the European Parliament and Council on Enhancing the Patent System in Europe, which sought to revitalise debate on the proposals. This led, in October 2007, to the commencement of negotiations over a package consisting of a Community Patent Regulation, a Translation Regulation and a Unified Patent Litigation System. The UPLS proposal provided for a European and Community Patent Court modelled on the EPLA proposals with jurisdiction over both European and Community patents throughout the EPC Contracting States. Like the EPLA, they did not provide any direct role for the EU courts, but they allowed for the possibility of references to the CJEU on points of EU law. In March 2009, the Commission adopted a Recommendation to the Council that the Commission be authorised to negotiate for the adoption of an Agreement Creating the UPLS, and in April 2009 the Commission published a revised proposal for the Community Patent Regulation. Due to concerns over the compatibility of the proposed Agreement with EU law, in July 2009, the Council asked the ECJ for an opinion on this point, and on 8 March 2011 the CJEU, as it had then become, delivered Opinion 1/09 holding that the Agreement was not compatible. In the meantime, the Commission had continued work on the proposals, and in July 2010 it published its proposal for a Translation Regulation. After it became clear that agreement could not be reached on this, in December 2010, 12 Member States wrote to the Commission proposing the use of enhanced cooperation, and later the same month the
Commission proposed a Council Decision authorising enhanced co-operation. On 10 March 2011, the Council adopted a Decision authorising 25 of the then 27 Member States to establish enhanced cooperation in the area of the creation of unitary patent protection. In August 2011, Spain and Italy launched Cases C-274/11 and C-295/11 challenging the Decision to authorise enhanced cooperation, but both cases were dismissed by the CJEU in April 2013. In the meantime, in May 2011, the Commission published a so-called non-paper proposing the creation of a Unified Patent Court as a court common to participating Member States by means of an international Agreement. After further negotiations, this ultimately led to the adoption of Regulations 1257/2012/EU and 1260/2012/EU on 17 December 2012 and to the signing of the Agreement on the UPC in Brussels on 19 February 2013. In March 2013, Spain launched Cases C-146/13 and C-147/13 seeking annulment of the Regulations, but, on 18 November 2014, Advocate General Bot published an Opinion that recommended that the CJEU should dismiss both cases. In the meantime, Regulation 542/2014/EU amending the revised Brussels I Regulation to cater for the UPC was adopted on 15 May 2014. A Preparatory Committee was established to set up the UPC in March 2013 and it has been hard at work on IT, facilities, the legal framework, finance and human resources and judicial training. Perhaps the most obvious products of its work so far have been the 17th Draft of the Rules of Procedure, which was the subject of a public hearing in Trier on 26 November 2014, and the Call for Expressions of Interest from Candidate Judges issued in September 2013, which led to the drawing up of a provisional list of candidate judges in July 2014 and a decision to concentrate training on candidate judges from those Member States that lack experienced patent judges starting in early 2015. There remains much to do.
Golf dates in 2015 The Patent Attorney Golf Society (PAGS) fixtures for 2015 are listed below: • • • •
Swinley Forest – 31 March 2015 Tandridge – 14 May 2015 Woking – 19 June, 2015 Verulam (St. Albans) – 21 July, 2015
The annual PAGS/POGS fixture will probably be on 11 September 2015 but this date is to be confirmed this with the POGS Secretary. If you are interested in taking part in any of these fixtures please email Lisa Ilnicki at lisa@cipa.org.uk. Chris Mercer (Hon. Sec. – PAGS)
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Quarterly US update Opportunity to get your application allowed after final rejection – introducing the After Final Consideration Pilot This article outlines a pilot programme – and when attorneys should consider using it – for reviewing a patent application after the USPTO has issued a final rejection (and otherwise the next step would be a “Request for Continued Examination”), showing also the potential value in both interviews with examiners and the use of pilot programmes for assessing amendments to patent office practice.
History of AFCP In the US, after a final rejection is issued on a pending patent application, prosecution of the application is considered “closed,” and the applicant is generally not entitled to further consideration of any additional submission unless a Request for Continued Examination (RCE) is filed to reopen the prosecution. In rare cases, an Amendment After Final Rejection under 37 CFR 1.116(b) may be entered if the Amendment places the application in condition for allowance. However, if the Amendment raises new issues that would require further consideration and/or search, it typically will not be entered. In March 2012, the United States Patent and Trademark Office (USPTO) launched an internal pilot programme, entitled the “After Final Consideration Pilot” (AFCP) programme. In a nutshell, the programme allots additional time to examiners to consider applicant submissions after final rejection. Under the AFCP programme, a full and complete review of a response includes any additional search required to determine whether or not proposed amendments distinguish over the prior art. Examiners should review responses under 37 CFR 1.116(b) and use their professional judgment to decide whether the nature and extent of the amendments or arguments presented in the response can be fully considered within the limited amount of time authorized by the After Final Consideration Pilot. If the examiner determines that the response can be fully considered, including any additional search required, within three hours for plant and utility applications or one hour for design applications, that amount of non-production time is available whether or not the consideration of the amendment results in allowance of the application. Although AFCP was designed to give patent examiners an incentive to consider after-final submissions and thus foster compact prosecution, it lacks a measure to determine how well the examiners comply with the programme requirements. For example, examiners are not required to provide any acknowledgment that they have considered the submission based on additional search or any feedback with respect to what they find during the search. As a result, AFCP was implemented inconsistently among examiners, and most amendments still proceeded with applicants filing an RCE without any guidance from the examiner through the AFCP process. RCE backlog continued to grow in 2012 through 2013. In May 2013, the USPTO initiated a RCE outreach to invite the public to submit their suggestions1. Based on the input received through the outreach, the USPTO launched two
programmes – an AFCP 2.0 programme to reduce RCEs filed after final rejections, and a Quick Path Information Disclosure Statement (QPIDS) programme to reduce RCEs filed after payment of the issue fee in order to submit Information Disclosure Statements (IDSs). Compared with AFCP, AFCP 2.0 requires examiners to provide an acknowledgment whether the after-final submission was considered under the programme, and if the submission does not result in allowance, AFCP 2.0 also requires an interview with the applicant to provide feedback regarding the examiner’s findings. The additional requirement for communication motivates the examiners to perform a higher quality search and to consider more carefully the amendments, as he will need to explain the search and his analysis to the applicant during the interview. On the other hand, applicants benefit from the communication by having an opportunity to present stronger amendments when filing further amendments with an RCE. Since its launch on 19 May 2013, AFCP 2.0 has received generally positive feedback from applicants and patent practitioners. It has been extended twice from its initially scheduled expiration date, and will now run through 30 September 20152. Recently, the USPTO added yet another new feature designed to enhance communication between the office and applicants3. The new feature more clearly indicates how the AFCP submission was treated by the examiner. Under this new feature, applicants will receive a specialized AFCP 2.0 form (PTO-2323) that communicates the status of the AFCP 2.0 submission and, if an interview is conducted, the form will also accompany an interview summary.
How AFCP 2.0 works AFCP 2.0 requirements To be eligible, the application must be a utility, design, or plant non-provisional application that has received a final rejection. Eligible applications include national stage applications and continuing applications (e.g., divisional or continuation applications), but not reissue and reexamination applications. In addition, only one request for consideration under AFCP 2.0 may be filed in response to an outstanding final rejection. Second or subsequent requests for consideration under AFCP 2.0 filed in response to the same outstanding final rejection will be processed consistent with current practice concerning responses after final rejection under 37 CFR 1.116. In order to participate in AFCP 2.0, an applicant must include the following at filing4:
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Quarterly US update 1. a transmittal form, such as form PTO/SB/434, that identifies the submission as an AFCP 2.0 submission and requests consideration under AFCP 2.0; 2. a response under 37 CFR 1.116, including an amendment to at least one independent claim that does not broaden the scope of the independent claim in any aspect; 3. a statement that the applicant is willing and available to participate in any interview initiated by the examiner concerning the accompanying response; and 4. any fees, such as extension fees under 37 CFR 1.136(a), that would have been necessary according to current practice concerning an after-final response under 37 CFR 1.116. Unlike AFCP, which automatically considers an after-final submission, AFCP 2.0 requires applicants to specifically request consideration under the programme. The request can be made concurrently with an after-final response under 37 CFR 1.116 or after such response is filed, but before it is considered by the examiner. Although not required, use of the PTO/SB/434 form is recommended, as it helps the USPTO to quickly identify the submission as an AFCP 2.0 submission and facilitates its timely processing. The form includes all the necessary statements, such as the interview statement, and the
applicant can simply check the boxes. Under AFCP 2.0, applicants must amend at least one independent claim. Therefore, applicants cannot use AFCP 2.0 to just present arguments without amending the claims, or merely amend a dependent claim. However, US applications often have more than one independent claim, and applicants need only amend one to satisfy this requirement. A further requirement is that the amendment cannot broaden the scope of the independent claim in any aspect. The analysis of whether an amendment to an independent claim impermissibly broadens the scope of the claim is analogous to the guidance for determining whether a reissue claim has been broadened5. Finally, all papers associated with the AFCP 2.0 programme must be filed via the USPTO’s Electronic Filing System-Web (EFS-Web).
Processing of AFCP 2.0 submissions Once an AFCP 2.0 request is filed, the examiner will review the submission to ensure all requirements are met. If the submission is incomplete, the examiner treats the submission as a regular after-final submission under 37 CFR 1.116. After verifying that the AFCP 2.0 submission is complete, the examiner will start processing procedures as illustrated by the flow chart below6.
Examiner Reviews Request
No
Amendment necessitates search?
Yes Search can be completed within allotted time?
No
Yes Search and Consider
Yes
In condition for allowance?
No Request Interview
Allowance
Interview scheduled within 10 calendar days?
No
Yes Interview to Discuss Why not Allowable
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Back to Regular Practice under 37 CFR 1.116
Advisory Action
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Quarterly US update The examiner will perform an initial review of the amendment to determine whether additional search and/or consideration would be required, and if so, whether such search and/or consideration would be possible within the time allotted to them under the AFCP 2.0 programme. An examiner is given three hours for plant and utility applications or one hour for design applications to perform the additional search and/or consideration. If the examiner decides that the search and/or consideration cannot be completed within the allotted time, the examiner will process the submission as a regular after-final submission under 37 CFR 1.116, e.g., by mailing an advisory action. If the examiner determines that the amendment does not necessitate additional search and/or consideration, or if the examiner determines that additional search and/or consideration is required and could be completed within the allotted time, the examiner will consider whether the amendment places the application in condition for allowance in view of the search (if one is performed). The examiner will enter the amendment and mail a notice of allowance if the examiner determines that the amendment places the application in condition for allowance. If the examiner remains unpersuaded, the examiner is required to contact the applicant to schedule an interview to discuss the amendment in view of the search. The interview should be conducted by the examiner and someone with negotiation authority, such as a primary examiner and/or supervisory patent examiner. During the interview, the examiner may discuss with the applicant any previously cited prior art and/or any new prior art discovered through the new search. After the interview, the examiner again has the option of either allowing the application or issuing an advisory action. If the applicant declines the interview or is unavailable to schedule the interview within ten calendar days from the date the examiner first contacts the applicant, the examiner will proceed under current after-final practice.
Practice tips AFCP 2.0 has been widely used by practitioners as an opportunity to gain allowance after final or at least obtain further guidance on prosecuting the application. While deciding whether to request AFCP 2.0 treatment in a particular case, the following considerations are usually weighed. The decision should be made on a case-by-case basis considering the specific facts and prosecution goals of the application. Oftentimes, an interview with the examiner before requesting AFCP 2.0 provides additional information to help decide whether participating in this pilot may be advantageous. For example, by presenting proposed amendments during the interview, the examiner might indicate whether the amendments would require more than three hours to search (so that the amendments will not be considered under the AFCP 2.0 procedures), or whether they have the potential to lead to an allowance. Applicants that decide to submit under AFCP 2.0, should consider the following:
Pros Free to participate7
Easy to prepare
Cons Some delay may incur and may end up paying extension fee if does not result in allowance More prosecution history that may create estoppel
Opportunity to get allowed without RCE
No guarantee that the amendment will be entered
Get a preview of prior art and arguments even if not allowed
Cannot use it if do not wish to amend or wish to make extensive amendments
May expedite prosecution even if end up still filing an RCE
Cannot use if wish to broaden in any aspect
1. File as early as possible. The examiner has 45 days after a properly filed request to respond. Conducting an interview may cause more delays. However, even if an after-final amendment is eligible for AFCP 2.0 consideration, such amendment does not toll the deadline for responding to the outstanding final office. Therefore, applicants may not want to file an AFCP 2.0 request if the application is already beyond the first month extension in responding to the outstanding final office action. 2. Avoid extensive claim amendments. AFCP 2.0 is most effective when the contemplated amendment will bridge relatively small gaps between the applicant and the examiner on the issue of patentability 3. Communicate with the examiner often to gain status updates and possibly persuade the examiner to consider the submission early. 4. If an RCE is nevertheless filed, file it as soon as possible. The examiner is more likely to pick up the RCE early while his memory about the application is still fresh. Composed on this occasion by Anthony C. Tridico, Ph.D. and Mandy J. Song, Ph.D (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP). For more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony.tridico@finnegan.com. This article merely provides information and does not constitute legal advice.
References 1.
http://www.uspto.gov/patents/init_events/rce_outreach.jsp
2.
http://www.uspto.gov/patents/init_events/afcp.jsp
3.
Id.
4.
78 Fed. Reg. 29117, 29118
5.
See MPEP §1412.03
6.
See 78 Fed. Reg. at 29118-9
7.
Although applicants represented by counsel should also consider attorney fees required for preparing the amendment and conducting the interview, if applicable.
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Quarterly US update Ending xenophilia: will foreign trade mark owners be required to comply with use requirements of US trade mark law? A USPTO pilot programme reveals the extent of foreign originating “deadwood” trade marks (ones which are not actually used in the US). Brett Heavner and Morgan Smith summarise some of the pilot study findings, and provide some useful ammunition to persuade clients that they should take the declaraion of use requirements seriously, and flag up a consultation by the USPTO on further measures to address false declarations. Traditionally, in the US, trade mark rights are established through use of a mark, rather than through registration with the United States Patent and Trademark Office (USPTO). Indeed, as a prerequisite for trade mark registration, US law requires that US citizens and US-based companies submit evidence that the applied-for mark is being used in US commerce1. The public policy behind US trade mark law’s “use in commerce” requirement is that trade mark rights, and the USPTO trade mark registry, should reflect the actual marketplace. In other words, a business should only be accorded trade mark rights for marks for the products and services that consumers would actually use to identify those products and services.
Foreign registrants can temporarily circumvent use requirements Non-US trade mark owners may avoid the “use” prerequisite for a US registration by employing the Paris Convention2 or the Madrid Protocol3 to register their trade marks with the USPTO. Thus, foreign trade mark applicants may circumvent the keystone “use” requirement of American trade mark law and still obtain a US registration. Obviously, the treaty obligations embodied in the Paris Convention and the Madrid Protocol thwart the policy goal of tying trade mark rights to actual market conditions. However, US law developed a remedy that would eventually fit US registrations obtained under the Paris Convention and Madrid Protocol into the US’s “usebased” trade mark system. Specifically, by the sixth anniversary of any registration date, and again at the filing of each renewal, all registrants (whether US or foreign) must submit to the USPTO a sworn declaration that the trade mark is being used in US commerce, and must also submit specimens evidencing use of the mark for each class covered by the registration.4 Failure to file the declaration of use and specimens will result in cancellation of the registration.5 Thus, while foreign trade mark owners have a significant advantage over US trade mark owners during the application process and for the first few years after registration, they too will ultimately be required to establish use of their marks in the US to maintain their trade mark registrations. Because many foreign trade mark owners are accustomed to receiving broad registrations at home without proving use, they have difficulty understanding and complying with the post-registration use requirements imposed under US trade mark law. Often, failing to understand the importance of the sworn declaration of use, foreign trade mark owners will submit false or inaccurate declarations stating that their trade
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mark is being used in US commerce for all of the goods and services listed in the registration, when in truth the trade mark is not used in the US at all, or is only used for a small subset of the listed goods and services. In some cases, foreign trade mark owners submit specimens of use that have never circulated in US commerce or are out of date and no longer being circulated in the US. When that occurs, the registrant is able to maintain a US trade mark registrations to which they are not legally entitled covering goods and services that they are not offering in the US. These improper or overly broad trade mark registrations are frequently referred to by the USPTO as “deadwood” that should be pruned from the US trade mark registry. Such “deadwood” registrations pose a serious issue for the USPTO. Not only do they continue to frustrate the US policy of having the US trade mark registry parallel actual marketplace conditions, but they effectively clog the entire trade mark system. These broad foreign registrations are often cited as a basis to refuse other applications on likelihood of confusion grounds. This places a significant burden on the junior applicant, who will have to determine whether the registered mark is actually being used for all of the listed goods and services and, if not, commence a lengthy cancellation action to narrow the registration to the actual goods and services the owner is offering in the US. For example, in SaddleSprings Inc. v Mad Croc Brands Inc., 104 USPQ2d 1948, (TTAB 2012), SaddleSprings’ CROCTAIL for wines and spirits was refused by the USPTO on the grounds of an overlap with Mad Croc’s CROC-TAIL Madrid Protocol registration for alcoholic beverages. SaddleSprings, therefore, had the burden of cancelling Mad Croc’s registration on the ground that it covered goods that Mad Croc did not actually offer under the mark in the US. In denying Mad Croc’s motion to dismiss, the USPTO Trademark Trial and Appeal Board (TTAB) noted: Trademark rights are acquired and maintained in this country through use in commerce… In the absence of justifiable non-use, section 66(a) registrations which have never been used, or for which use has been discontinued with no intent to resume use, may be subject to cancellation for abandonment even if the international 6 registration remains valid and subsisting.
Unfortunately for SaddleSprings, the cancellation proceeding is still ongoing, Mad Croc’s registration remains in force, and SaddleSprings’ application cannot mature to registration. These overly broad registrations also make conducting clearance searching difficult for new marks because the
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Quarterly US update actual scope of the owners’ trade mark rights cannot be determined from the list of goods and services. Finally, these overly broad trade mark registrations can weaken similar marks owned by others by making it appear that multiple similar marks co-exist in a particular product or service field when in fact, only a few or perhaps even one such mark is being used for goods and services in that field.
The dangers of submitting false declarations of use: fraud and cancellation Submitting false or inaccurate sworn declarations of use to the USPTO also places the foreign trade mark owner in serious jeopardy. US declarations of use to support trade mark applications and registrations are accompanied by a sworn statement with the following warning: “willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001.” Violations of 18 U.S.C. § 1001 are punishable by fine or imprisonment up to five years.7 This declaration is not merely an administrative checkbox and, those signing it swear, on threat of criminal liability, to its truth. In the US, a registration may be cancelled at any time if it was obtained fraudulently or contrary to 15 U.S.C. § 1054.8 Fraud in procuring a registration involves an applicant knowingly making false, material representations of fact in connection with an application with the intent to deceive the USPTO.9 The TTAB recently voided an application because the applicant submitted a fraudulent declaration of use.10 In Nationstar, the applicant filed a sworn statement that he began using his mark in commerce in April 2005 for real estate and mortgage brokerage services.11 However, the claim regarding the 2005 first-use date was a lie. During a subsequent opposition proceeding, the evidence showed that the applicant did not incorporate its business until May 2006 and was not licensed to engage in business as a mortgage broker until October 2006.12 Further, the applicant could not provide documentary proof and could not recall detailed facts about the promotional materials he claimed had been created in 2005. After being caught in these lies, the TTAB found that the applicant had committed fraud on the USPTO and voided his application in its entirety.13 The applicant’s false declaration constituted fraud because he was aware of the importance of reading and verifying the accuracy of his sworn statements and was aware of the clear distinction between his actual services and the services listed in his application.14 Overbroad registrations are also vulnerable to full or
Basis for Registration
partial cancellation if the applicant lacked a bona fide intent to use the mark in US commerce on each of the listed goods. For example, in Sandro Andy, S.A. v. Light Inc., No. Civ. 2392 (HB), 2012 WL 6709268 (S.D.N.Y. Dec. 27, 2012), the plaintiff petitioned to cancel a French company’s Madrid Protocol registration on the grounds it was obtained fraudulently because the company did not have a bona fide intent to use the mark on the some 250 goods listed in the registration.15 In reality, the defendant only used the mark in connection with apparel.16 The court therefore ordered the French company delete the unused goods and services from its US extension of the International Registration.17
USPTO pilot programme results The USPTO has for many years questioned the effectiveness of the post-registration use filings with respect to US registrations obtained under the Paris Convention and Madrid Protocol. To gauge the seriousness of the problem of “deadwood” registrations, the USPTO instituted a two-year pilot programme in 2012 that was completed in July 2014. During the programme, the USPTO randomly selected 500 registrations18 for which declarations of use had just been filed in order to test the truthfulness of those sworn declarations. The selected registrants were required to submit additional specimens of use for two of the other listed goods and/or services for each class. If the selected registrant could not meet these requirements, the registration would be partially cancelled with respect to the goods and/or services for which it was unable to submit a specimen of US use. Furthermore, should the registration be partially cancelled after an inaccurate initial sworn declaration was submitted, the USPTO could require the selected registrant to submit a specimen of use for each and every product or service listed in the registration. Further partial cancellation of the registration would occur for any products or services for which the registrant could not prove use in the US. If a registrant did not respond to the pilot programme inquiry at all, the entire registration was cancelled.19 The results of the pilot programme indicate that a substantial majority of foreign registrants, 73% under the Madrid Protocol and 65% under the Paris Convention [Editor: OHIM – please note that register clutter is real], have submitted false declarations of use and have therefore received trade mark protection to which they are not entitled in the US. While most were able to salvage a part of their registrations through deleting the goods that were not
Percentage of registrations deleting goods/ services queried under pilot programme
Percentage of registrations receiving notices of cancellations
Original use-based registrants
27%
18%
Paris convention registrants
58%
7%
Madrid protocol registrants
59%
14%
Combined bases for registration
63%
13%
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Quarterly US update in use, a significant number of Madrid Protocol and Paris Convention registrations were cancelled in their entirety. The USPTO delineated these results based on the original filing bases of the registrations:20 Although the pilot programme has reached its conclusion, the high percentage of failures (particularly for Madrid Protocol registrations) suggests that the USPTO will continue to address its concern for an accurate trade mark register and the elimination of “deadwood” registrations. The USPTO will likely use the pilot programme results to justify issuing office actions requiring additional specimens or evidence of use more frequently. Foreign applicants can expect the USPTO to carefully scrutinise declarations of use in the future and should submit declarations only for the goods and/or services in connection with which they actually use the mark in the US. The USPTO has suggested four potential changes in USPTO practice going forward: 1. Creating a streamlined expungement procedures, similar to Canadian procedures, for parties to request that owners prove use for certain goods and/or services. If the owner complies, the procedure ends. But if the owner fails to prove use, any goods and/or services for which the owner does not provide proof of use would be deleted from the registration 2. Require registrants to submit specimens for all goods and/or services listed in the registration when filing their first declarations of use. Alternatively, require registrants to submit specimens for all goods and/or services listed in the registration when filing their first declarations of use, and require that the specimen be a photograph showing use of the mark in conjunction with the goods and/or an advertisement for the services. 3. Increase the solemnity of the declaration by (1) requiring the registrant state that he/she understands the seriousness of the oath or (2) require a statement accompanying a declaration of use detailing the steps taken to verify use. 4. Conduct random audits of declarations of use; require registrant to file a section 7 request (with fee) to delete any goods and/or services queried by the USPTO for
which the registrant cannot prove use after filing its declarations of use. The USPTO will accept public comment or other suggestions sent to TMPolicy@uspto.gov and is holding a roundtable discussion on 12 December 2014, focusing on the pilot programme data compiled through 15 October 2014.21 Although the USPTO has not yet made any specific decisions regarding “deadwood” registrations and false declarations of use, foreign trade mark registrants should expect some sort of use-verification procedure to be instituted in the future.
Conclusion Now that the USPTO has concrete results confirming its suspicions, trade mark applicants and registrants in the US – particularly those basing their US registrations on the Paris Convention and Madrid Protocol registrants – should closely scrutinize the goods and/or services enumerated in any declaration they sign. Foreign registrants cannot simply sign off on broad descriptions of goods and services because doing so could result in a finding of fraud and criminal liability. To avoid the problems associated with submitting false and overbroad declarations of use, foreign registrants should determine exactly what goods and services they use their mark in connection with in the US before submitting declarations of use. Foreign registrants could also consider collecting specimens of use for each of the goods and services listed in their US registrations to ensure they will be able to prove use for all goods and services, should the USPTO request it. Going forward, foreign registrants must keep the centrality of “use” to the US trade mark system in mind when preparing declarations of use to ensure that they accurately and fairly represent how their marks are actually being used in the US. *Composed on this occasion by B. Brett Heavner and Morgan E. Smith of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. For more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony.tridico@finnegan.com. This article merely provides information and does not constitute legal advice.
References 1.
See 15 U.S.C. § 1051; Trademark Manual of Examining Procedure (“TMEP”) §§ 903, 904.
2.
15 U.S.C. § 1126(d), (e).
3.
15 U.S.C. § 1141.
4.
15 U.S.C. § 1058; TMEP § 1604.
5.
15 U.S.C. § 1058(a).
6.
SaddleSprings Inc. v Mad Croc Brands Inc., 104 USPQ2d 1948, 1952 (TTAB 2012).
7.
18 U.S.C. § 1001.
8.
15 U.S.C. § 1064(3).
9.
See In re Bose Corp., 530 F.3d 1240, 1245 (Fed. Cir. 2009).
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10. Nationstar Mortg. LLC v Ahmad, 112 USPQ2d 1361 (TTAB 2014). 11. 12. 13. 14. 15.
Id. at 1363. Id. at 1367. Id. at 1370, 1375. Id. at 1375. Sandro Andy, S.A. v Light Inc., No. Civ. 2392 (HB), 2012 WL 6709268, at *3-4 (S.D.N.Y. Dec. 27, 2012). 16. Id. at *4. 17. Id. at *4-5. 18. This represents approximately 1% of the total number of declarations of use usually processed during a typical six-month period.
19. Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases, 77 Fed. Reg. 30,197-208 (May 22, 2012) (to be codified at 37 C.F.R. pts. 2 and 7). 20. October 15, 2014 Post Registration Proof of Use Pilot Programme Status Report available at: www.uspto.gov/trademarks/notices/ roundtable_ensuring_accuracy_tmregister. jsp. 21. See www.uspto.gov/trademarks/notices/ roundtable_ensuring_accuracy_tmregister. jsp.
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Quarterly US update Versata v Callidus: a framework for analyzing CBM stays CBM or Covered Business Method Review provides an alternative revocation procedure (before the USPTO) for some patents where litigation is pending. It is intended to shorten or simplify proceedings in cases where a business method (CBM) patent is in issue. This article analyses an appeal over whether to stay the litigation, pending the CBM challenge. Even if it paints a picture of how CBM review can be yet another convolution in already convoluted US patent litigation practice, it provides some guidance as to when staying proceedings may be beneficial and when it may be ordered, as well as how an appeal procedure may or may not be useful in developing jurisprudence, and provides some insights into developing strategies for clients faced with US patent proceedings. Interestingly, the analysis has parallels in two current questions on the rules of procedure for the European Unified Patent Court: reconciling parallel revocation and infringement proceedings when bifurcation takes place; and how appeals on interlocutory procedure may be used to develop precedent. The America Invents Act (AIA) requires district courts to consider four statutory factors when deciding whether to stay patent litigation pending covered business method (CBM) review of those same patents in the U.S. Patent and Trademark Office (USPTO). The Federal Circuit’s November decision in Versata Software, Inc. v. Callidus Software, Inc.1 marks the third appellate case2 to analyze these four factors. It is the second overturning a district court’s refusal to stay litigation.3 Although the Federal Circuit refrained from setting out a clear standard for appellate review in Versata, it provided guidance to courts and litigants regarding what relevant facts and factors favor a stay.
The AIA requires district courts to consider the appropriateness of stays CBM review offers an adversarial post-grant review procedure administered by the USPTO. Available only for qualifying patents, CBM review requires a petitioner to prove, as a threshold matter, that the patent at issue claims a covered business method4 – essentially a method or apparatus for data processing or similar operations – rather than a technological invention. Unlike other post-grant review procedures in the USPTO, only parties sued for or charged with infringement may file a CBM petition.5 This statutory framework triggers a high likelihood of parallel proceedings for patents covering business methods. As a result, the ability to stay district court litigation is especially advantageous for alleged infringers, where CBM review provides an opportunity to invalidate the allegedly infringed patent in a forum that may be far friendlier than the district courts. As of 1 November 2014, no instituted claims [Editor: That is claims that have passed the first hurdle – a showing that the USPTO should consider them for review] have survived CBM review.6 And in most cases, the Board institutes trial (ie accepts for challenge) against at least some claims, generally reducing issues in parallel litigation. Up to 30 November 2014, the Board had declined to institute only 43 CBM petitions. The petitioner’s procedural failures (e.g., late responses) rather than a substantive finding about the claims’ validity accounted for 10 of the 43 denials.7 Unsurprisingly, alleged infringers have taken advantage of CBM review, with the number of petitions filed growing markedly in the past three years. Fifteen petitions were filed
in 2012, 89 were filed in 2013, and 96 have been filed in 2014.8 The vast majority of these petitions arose from pending litigations – only two petitioners relied on threats of suit for obtaining the necessary jurisdiction.9 The statute creating CBM review requires district courts to consider and decide whether to put in place a stay in co-pending litigation during review if a party requests one.10 Since inception, district courts have stayed cases during CBM review, a process that takes roughly a year.11 The statute requires a district court to balance four factors when considering a request to stay: whether a stay will simplify the case; whether discovery is complete; whether a stay will prejudice the non-moving party; and whether a stay will reduce litigation burdens.12 There is little consensus among district courts on how to apply these factors. Some courts have demonstrated a willingness to stay cases even before the Board has instituted review,13 while some have seemed reluctant to stay at all.14 To settle the issue well before the final disposition on the merits, the AIA provides for interlocutory review of decisions granting or denying motions to stay, but does not explicitly state what standard – abuse of discretion or de novo review – the Federal Circuit should apply.15
Versata v Callidus: the case and its disposition In Versata Software, Inc. v Callidus Software, Inc., the Federal Circuit recently decided an interlocutory appeal of a decision to stay under the AIA. The case began in the District of Delaware, where Versata Software sued Callidus Software alleging infringement of three of Versata’s patents.16 Callidus countered by asserting three of its own patents and by petitioning the patent office for review of all three patents.17 This first round of petitions, filed in August 2013, covered all independent claims of the patents, but omitted dependent claims of two patents.18 Callidus moved for a stay pending a Board decision, but the district court chose not to consider the motion until the Board instituted review.19 As the Court and the parties awaited the Board’s institution decision, the litigation progressed. The district court determined the case schedule and Versata identified the claims it would assert, some of which were not implicated by Callidus’s first petitions for CBM review.20 In March 2014, the Board instituted review on each challenged claim from Callidus’s August 2013 CBM petitions. Callidus promptly filed additional petitions addressing the
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Quarterly US update remaining claims asserted by Versata in the district court. Callidus also renewed its motion to stay the litigation in view of the now-instituted CBMs.21 In May 2014, the Court granted Callidus’s motion in part, staying the case with respect to a single patent that was challenged on all claims before the USPTO. The litigation would otherwise advance on the two remaining asserted patents, though both were implicated in other instituted CBMs.22 Callidus appealed and during the pendency of the appeal the Board instituted review of Callidus’s remaining CBM petitions, covering all of Versata’s asserted claims in the litigation.23 On appeal, the Federal Circuit reversed the district court’s decision and ordered it to grant the motion to stay with respect to all asserted patents.24 In its reasoning, the Court identified the district court’s missteps and built on its prior analysis in Benefit Funding Sys. LLC v Advance Am. Cash Advance Centers Inc. and VirtualAgility Inc. v Salesforce.com, Inc.
What Versata did not resolve: no clear standard for appellate review of CBM requests for stays Notably absent from the decision in Versata is a clear standard for how the Federal Circuit should review district courts’ AIA decisions on stays. The AIA, while mandating that the Federal Circuit “shall review the district court’s decision to ensure consistent application of established precedent, and such review may be de novo”, leaves open the exact standard of review the Court must apply.25 Outside the AIA CBM context, for example, the Federal Circuit reviews a district court’s decision to stay under a more deferential abuse of discretion standard.26 This is in direct conflict with the AIA’s requirement that the Federal Circuit “ensure consistent application of established precedent”, which may include using the less deferential de novo review standard.27 The Federal Circuit has twice before side-stepped the issue. In VirtualAgility, the Federal Circuit explicitly refused to decide the issue.28 Later, in Benefit Funding, the Court provided slightly more clarity, stating that statutory review of CBM stays was “more searching” than the traditional abuse of discretion review.29 But the Court determined that even under the traditional abuse of discretion standard, the stay in Benefit Funding had been properly granted, and did not conduct a full de novo review.30 Following its earlier decisions, the Federal Circuit has once again shied away from establishing a clear bright-line standard. In Versata, the Federal Circuit appeared to apply de novo review by conducting its own analysis of the facts and applying the four-factor test. But the Federal Circuit ultimately concluded that even under the abuse of discretion standard, the district court’s decision was incorrect.31 Thus, Versata leaves open whether the Federal Circuit will ever conduct a full de novo review in a CBM stay case.
Without a clear standard of review, Versata provides guidance for district courts and litigants alike Though the Versata decision fails to determine what standard of review the Court will apply going forward, the Federal Circuit provided valuable guidance to district courts and litigants regarding what facts and factors point toward a stay.
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The first factor: whether a stay will simplify the case Considering the first factor, the district court decided that a stay would not simplify the issues for trial because the Board, at that time, had instituted review on only some of the asserted claims.32 This rationale appears to be supported by both Benefit Funding and VirtualAgility, where, in contrast, all of the asserted claims were subjected to CBM review.33 In those cases, the Federal Circuit relied on the complete overlap of claims to determine that the first factor weighed in favor of a stay. But in Versata, the Federal Circuit went even further, indicating that the mere fact that only some claims are subject to Board review does not prevent a stay outright. The Court cautioned, however, that just because some claims are up for USPTO review does not immediately tip the scales in favor of a stay.34 Rather, the Court found, a proper analysis of the first factor delves into what issues will be resolved by CBM review and what remains.35 Considering those underlying issues, the Federal Circuit concluded that for Callidus, the issues would largely be resolved by CBM review and would streamline if not outright negate the district court litigation.36 The Federal Circuit also concluded that the fact that Callidus raised only some of its invalidity contentions in the CBM petitions, leaving others solely for the litigation, did not bar the stay.37 This determination mirrors the Court’s logic in VirtualAgility, where it found that despite the alleged infringer’s decision to place some prior art before only the district court, the first factor still favored a stay.38 Unlike in other post-grant review proceedings, the AIA specifically allows petitioners to raise different invalidity grounds before the Board and the district courts, and as a consequence the Federal Circuit has concluded that the decision to do so does not bar a stay.39 Versata makes clear that a petition addressing all asserted claims40 and all asserted grounds41 tips the first factor more heavily in favor of a stay. Defendants may also benefit from challenging all independent claims. In Versata, the Court relied on the fact that the Board had instituted review of all challenged claims, taking judicial notice of that intervening fact, but pointed out that even when the district court decided the motion, all independent claims faced Board review.42 Thus, the district court must examine the relationship between the claims and grounds reviewed and those asserted when deciding whether to stay a case. Potential CBM petitioners may want to consider addressing – at the very least – all of the asserted independent claims to push the first factor toward a stay.
The second factor: whether discovery is complete Considering the second factor, whether discovery is complete and whether a trial date has been set, the Federal Circuit confirmed that a district court must analyze what “remains to be done in [the] litigation”.43 In general, the Federal Circuit noted, this analysis focuses on the state of litigation when the motion to stay is filed, with the important caveat that the district court may await the Board’s institution decision, and may consider developments prior to institution.44 In Versata, discovery began between the motion’s filing and the first institution decision, but neither Versata nor Callidus had deposed any witnesses, and neither had filed expert reports or
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Quarterly US update taken expert depositions.45 Thus, the case had not advanced much between Callidus’s filing of its motion to stay and the Board’s institution decision on Callidus’s first petitions. Because the remaining burdens and expense of “completing both fact and expert discovery, resolving summary judgment motions, completing the Markman process, and preparing for trial”, the Federal Circuit found that the facts underlying the second factor favored a stay.46 In this confirmation of Virtual Agility, the Federal Circuit constrained the ability of district courts to hold a motion to stay in abeyance, allowing a case to reach critical mass before deciding the issue. District courts may postpone their decision to stay until the Board institutes review, but the state of the litigation is evaluated without regard to the time of decision.47 For potential CBM petitioners, this means, perhaps, that it may be advantageous to request a stay pending the Board’s institution decision. Patentees seeking to undermine a stay may want to ensure that the pace of litigation keeps moving forward, attempting to complete fact discovery well in advance of any Board institution decision.
The third factor: whether a stay will prejudice the non-moving party Considering the third factor, the Federal Circuit found the district court had again erred: first, by mistaking Callidus’s position – the defendant had moved to stay the entire case, not just Versata’s claims – and second, by relying on
References 1. 2.
3.
4.
5. 6.
7.
8. 9. 10. 11. 12. 13.
14.
No. 2014-1468, 2014 WL 6480522 (Fed. Cir. Nov. 20, 2014). See VirtualAgility Inc. v Salesforce.com, Inc., 759 F.3d 1307 (Fed. Cir. 2014); Benefit Funding Sys. LLC v Advance Am. Cash Advance Centers Inc., 767 F.3d 1383 (Fed. Cir. 2014). VirtualAgility overturned the decision of the Eastern District of Texas, but Benefit Funding, affirms the District of Delaware’s decision to stay. VirtualAgility, 759 F.3d at 1320; Benefit Funding, 767 F.3d at 1387. The statute defines a covered business method as a “patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.” America Invents Act, Public L. No. 112-29 § 18(d)(1) [hereinafter AIA § 18]. AIA § 18(a)(1)(B). Finnegan, Claim and Case Disposition, America Invents Act (Nov. 1, 2014) www.aiablog.com/claim-and-case-disposition. See USPTO, Patent Review Processing System, Search/Browse Proceedings (November 30, 2014), https://ptabtrials. uspto.gov/ (providing access to all petitions). See id. See CBM2013-00048 and CBM2014-00155. AIA § 18(b)(1). Finnegan, Timing, AIA (Nov. 1, 2014) http://www.aiablog.com/timing. AIA § 18(b)(1)(A-D). See, e.g., SightSound Techs. LLC v Apple Inc., No. 2:11-cv-01292-DWA, 2013 WL 2457284 (W.D. Pa. Jun. 6, 2013). See, e.g., VirtualAgility, Inc. v Salesforce.com,
15.
16. 17. 18. 19. 20. 21. 22. 23. 24. 25. 26. 27. 28.
29. 30. 31. 32. 33. 34. 35. 36.
Callidus’s motions practice to decide that Callidus would be unfairly advantaged by a stay.48 But the Federal Circuit concluded that unless the movant’s motions are frivolous or otherwise improper, they cannot form a basis to deny a further motion to stay.49 The Court’s discussion of this point builds on VirtualAgility. In that case, the Court explained that irreparable harm (of the type supporting a preliminary injunction), delay in filing the case, and the age and health of witnesses could all be considered in determining undue prejudice.50 Similarly, delay in filing a CBM petition or a defendant’s choice to save key pieces of prior art as insurance against a failed CBM challenge might represent an unfair tactical advantage.51 But no such circumstances were present in Versata, and the Federal Circuit found this third factor also favored a stay. Generalized complaints of “stale evidence, faded memories, and lost documents” failed to tip the scales back toward Versata’s position.52
The fourth factor: whether a stay will reduce litigation burden Finally, the Court discussed the fourth factor. The district court had relied on Callidus’s past tactics and motions practice – including motions to transfer venue and to dismiss the complaint for failure to state a claim – to decide this factor weighed against a stay,53 but the Federal Circuit disagreed, noting the proper analysis looks forward.54
Inc., No. 2:13-CV-00011-JRG, 2014 WL 94371, at *1 (E.D. Tex. Jan. 9, 2014) rev’d, 759 F.3d 1307 (Fed. Cir. 2014). AIA § 18(b)(2) (“The United States Court of Appeals for the Federal Circuit shall review the district court’s decision to ensure consistent application of established precedent, and such review may be de novo.”). Versata, 2014 WL 6480552 at *1. Id. Id. Id. Id. Id. Id. at *2. Id. at *2. Id. at *7. AIA § 18(b)(2) (emphasis added). See VirtualAgility, 759 F.3d at 1309-10 (discussing the issue). AIA § 18(b)(2). VirtualAgility, 759 F.3d at 1310 (“Nothing in this opinion should be read as deciding the standard of review applicable to the ultimate stay decision or the individual factors. We leave it to a future case to resolve what Congress meant when it indicated that our ‘review may be de novo.’”). Benefit Funding, 767 F.3d at 1385. Id. at 1387. Versata, 2014 WL 6480552 at *2. Id. at *2. VirtualAgility, 759 F.3d at 1308-09; Benefit Funding, 767 F.3d at 1384. Versata, 2014 WL 6480522 at n. 3. Id. at *3. Id. (“We agree with Callidus, on the facts here,
37. 38.
39. 40. 41. 42.
43. 44. 45. 46. 47. 48. 49. 50. 51. 52. 53. 54. 55. 56. 57. 58.
that a stay will simplify the issues and streamline trial, and this factor weighs in favor of a stay.”). Id. at *4. VirtualAgility, 759 F.3d at 1314. In addition, the VirtualAgility court chastised the district court for improperly considering whether the Board’s decision to institute review was correct. Id. at 1313. The Court confirmed this point in Benefit Funding, where it reiterated that the merits of the institution decision could not be reviewed by the district courts. Benefit Funding, 767 F.3d at 1386. Versata, 2014 WL 6480522 at *4. Id.at *3. Id. at *4. Id. at *3. Notably, the Federal Circuit also relied on intervening facts in VirtualAgility, taking judicial notice of the fact that the patentee had filed an intervening motion to amend claims before the Board. VirtualAgility, 759 F.3d at 1313. Versata, 2014 WL 6480522 at *4. Id. at *5. Id. Id. Id. at *5. Id. at *5-6. Id. at *6. VirtualAgility, 759 F.3d at 1318-19. Id. at 1320. Versata, 2014 WL 6480522 at n. 6. Id. at *6. Id. Id. at n. 7. Id. at *6. Id. at *6. Id. at *7.
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Quarterly US update Though the Court conceded that a district court may consider its own familiarity with the patents at issue,55 the past actions of the parties have no bearing on this factor. Advancing its analysis from Virtual Agility, the Court reminded litigants that the first- and fourth-factor analysis often point “in the same direction.”56 Because the CBM review would conclusively decide claim construction and invalidity issues on all claims, a stay avoided duplicative expenses for the parties and the courts.57 With that note, the Federal Circuit reversed the district court on all four points, and remanded the case with instructions to grant the stay.58
What does Versata mean for CBM litigants Although the Federal Circuit has not yet explicitly set forth a standard for review of a decision to stay, its analysis in Versata illuminates how it views the four-factor test. Versata explains that even where all claims and grounds are not before the
Board, a stay remains available to the petitioner, and affirms that a court must examine the state of litigation at the time of the motion, though it may consider events occurring prior to the institution decision. Versata also establishes that the parties’ past motion practice, unless frivolous or otherwise improper, has no bearing on a decision to stay. In conjunction with VirtualAgility, and Benefit Funding, Versata provides valuable guidance for courts and practitioners as the number of petitions filed, and the number of cases stayed, continues to grow. Composed on this occasion by Anthony C. Tridico, Ph.D., Erin M. Sommers, Ph.D., and Cara Lasswell (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP). For more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony.tridico@finnegan.com. This article merely provides information and does not constitute legal advice.
Good news for branded drugs at the PTAB In a trio of final written decisions1 the Patent Trial and Appeal Board (PTAB) announced what appears to be its first decisions in the pharmaceutical field, finding that three patents2 owned by Supernus Pharmaceuticals, all related to the drug Oracea,3 survived inter partes review. Amneal Pharmaceuticals filed inter partes review (IPR) petitions on the three patents on 20 June 2013, challenging them as allegedly obvious4. The PTAB instituted the IPRs on the sole question of whether the patents were obvious over WO 02/080932 (to Ashley), which incorporates 60/281,854 (to Ashley) and U.S. Patent No. 5,348,748 (to Sheth)5. The Oracea patents at issue are directed to combinations of immediate release and delayed release portion formulations of doxycycline6. The claims, generally speaking, set forth ratios of immediate to delayed release portions in the formulations7. Amneal argued that the Ashley references taught combining immediate and delayed release (as well as other claimed elements), while Sheth allegedly taught the final element, the ratio of immediate to delayed release portions8. The PTAB disagreed. Claim construction of all three patents hinged on the meaning of “delayed release”9. The PTAB “agree[d] with Amneal that the broadest reasonable construction of ‘delayed release’, in light of the specification of the ’740 [Oracea] patent,” was “not limited to formulations requiring that there be no substantial release in the stomach”10. Instead, the PTAB found, the phrase encompassed “release of a drug at a time other than immediately following oral administration”11. Applying this construction, the PTAB found nevertheless that the patents were not obvious in light of the cited references. The PTAB credited the patentee’s expert and found that Sheth did not teach “delayed release” within the meaning of the claims at issue12. The PTAB found the twolayer coating taught by Sheth was water-soluble and would dissolve almost immediately after administration with no “appreciable delay”13. Because Sheth did not include
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teachings relating to delayed release administration, the PTAB found it could not teach a ratio of immediate to delayed release portions. Thus, Amneal’s challenges failed.14 The three decisions represent a win for brand-name Supernus in its dispute with Amneal15. Further discussion of these cases will occur in a later issue. Composed on this occasion by Anthony C. Tridico, Ph.D. and Cara R. Lasswell of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. For more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony.tridico@finnegan.com. This article merely provides information and does not constitute legal advice.
References 1.
Amneal Pharm., LLC v Supernus Pharm. LLC, IPR2013-00368[1]; Amneal Pharm., LLC v Supernus Pharm. LLC, IPR2013-00371[2]; Amneal Pharm., LLC v Supernus Pharm. LLC, IPR2013-00372[3].
2.
U.S. Patent Nos. 8,206,740; 8,394,405; 8,394,406.
3.
Food & Drug Admin., Orange Book, Appl. No. 50805, Prod. No. 001, available at www.accessdata.fda.gov/scripts/cder/ob/ docs/obdetail.cfm?Appl_No=050805&TABLE1=OB_Rx.
4.
[1], Paper 2 at 2 (June 20, 2013); [2], Paper 1 at 2 (June 20, 2013); [3], Paper 2 at 2 (June 20, 2013).
5.
[1], Paper 8 at 14 (Dec. 17, 2013); [2], Paper 11 at 14 (Dec. 17, 2013); [3], Paper 8 at 14-15(Dec. 17, 2013).
6.
[1], Paper 94 at 4 (Dec. 9, 2014); [2], Paper 96 at 3 (Dec. 9, 2014); [3], Paper 92 at 5 (Dec. 9, 2014).
7.
[1], Paper 94 at 4; [2], Paper 96 at 4; [3], Paper 92 at 5.
8.
[1], Paper 94 at 11; [2], Paper 96 at 11; [3], Paper 92 at 11.
9.
[1], Paper 94 at 5; [2], Paper 96 at 5; [3], Paper 92 at 5.
10. [1], Paper 94 at 7; [2], Paper 96 at 7; [3], Paper 92 at 7. 11. [1], Paper 94 at 8; [2], Paper 96 at 8; [3], Paper 92 at 8-9. 12. [1], Paper 94 at 13; [2], Paper 96 at 13; [3], Paper 92 at 13. 13. [1], Paper 94 at 13; [2], Paper 96 at 13; [3], Paper 92 at 13-14. 14. [1], Paper 94 at 14; [2], Paper 96 at 14; [3], Paper 92 at 14. 15. Editor: it is understood that these claims are part of a dispute, stayed by joint agreement, while the IPR took place, between the parties, in which Galderma and Supernus allege infringement of the ‘740 patent by Amneal’s proposed version of Oracea.
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Not-so-secret diary of a CIPA Vice-President The not-so-secret diary of a CIPA Vice-President
By Andrea Brewster (Fellow)
7 October 2014: I begin planning my Grand Tour in earnest. So far I have had invitations to Cardiff, Edinburgh, London, Oxford, Derby and Munich. These are all from people who took pity on me and decided that having me round for an hour or so and offering me a caramel custard tart would be a small price to pay for me LEAVING THEM ALONE for the rest of the year. The Munich invitation is particularly attractive. However, I am not sure the Internal Governance Committee, with its new expenses policy, is going to countenance a trip to the Christmas markets, even if it does yield a bit of feedback from CIPA members and even if I do promise to bring back a large Lebkuchen heart. The next gigs are in Oxford and Cardiff. Fortunately both these places are pretty much on the M4 although with Oxford you have to be a bit creative to make that happen and it is the type of creativity that the Highways Agency is not always comfortable with. I think Derby and Edinburgh are on the M4 too, roughly. I do not think Munich is on the M4. 8 October 2014: So anyway, today there is a meeting of the Media & PR Committee, aka the Shouty Things Committee. During the meeting the Shouty People are introduced to Mr Lampert, who is now Chief Shouty Person for CIPA and responsible for our PR. He tells us he used to work for the Probation Service, and before that the Criminal Justice System. So he knows all about trying to put a positive spin on things which are inherently unpalatable. Mr Lampert announces that soon we are going to have our very own Communications Strategy. Also a Stakeholder Engagement Strategy. Well that’s nice. The more CIPA tat the better. 8 October 2014: The Shouty Things Committee wants to hear from CIPA members who have interesting IP-related stories to tell. Stories which would attract journalists and excite the national press, if not into a frenzy then at least into a state of approximate interest. For the avoidance of doubt, the following are unlikely to excite the national press:
The Not-so-Secret Diary is now available in blog form, with additional material and more up-to-date news from the exciting world of the CIPA VeePee. You can follow her at http://notsosecretcipadiary.blogspot.co.uk/
• Winning an argument with the EPO about an Article 54(3) citation. • Discovering a fascinating new etymological fact. • Outrage at the inappropriate use of a semicolon. • The IPO re-numbering one of its standard letters. • The results of your office survey on paper clips. What we need is stories of companies who have done excellently well thanks to their excellently good IP attorneys. We need clients who are prepared to attest to the excellent goodness of their IP attorneys and their undying faith in the patent system. We need tales of multiple-claimdrafting heroes and IP derring-do, of knights in clear, concise and shining armour slaying patent trolls and waving presumptions of validity from the parapets, who rescue damsels from the perils of further processing and preferably also the UK economy from decline. Then we will publish these stories in the Financial Times and The Economist and Sad People's Weekly.
10 October 2014, 2pm: We are going to rewrite the Bye-Laws! From scratch! This is so exciting that I have to leave the room to find more biscuits half-way through the Constitutional Committee’s meeting. The new Bye-Laws are going to be much simpler than the current ones. Let’s face it, the current ones make it impossible to do anything much in CIPA apart from reading out the minutes of the last meeting, at which you also did nothing. To give you a flavour, this is the kind of tone we are aiming for in the new set: Meetings. We will hold meetings if we need to. We will hold them wherever and whenever we want, and they will not be posh. We will only be unquorate if we run out of biscuits. Voting. If we do anything important we will ask our members first. Members will be allowed to cast their votes any way they choose. Straw polls will not be encouraged, however, because there is too much straw in this Institute already. Classes of membership. There will be lots of classes of membership so that everyone can find a niche, however eccentric. New classes will include Accidental Member, Reluctant Member, Innocent Member and Asymptomatic Member. Applications for membership. If you want to be a member, send us your name and address and some dosh. We will publish your name on a list and give people a chance to CIPA October 2014
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Not-so-secret diary of a CIPA Vice-President object but we really hope they don’t because it creates so much faff. Officers. We will elect ourselves a President and a VicePresident to be erudite and authoritative on our behalf. Every now and then, if we feel like it, we will elect ourselves a comedy Vice-President who is neither erudite nor authoritative but is high on entertainment value. Our Head of Media & PR will sort out any resultant publicity problems.
16 October 2014, 10.30am: The EyePeePee, Mr Davies and I are going to meet some patent attorneys in Cardiff. It is gig number two of our Grand Tour. We decide we will walk from where we are now to where we need to be because the map makes it look very easy. It turns out to be a stupid map and because of the stupid map we get a little bit hideously lost. The long straight pink thing on the stupid map is actually a long straight flyover which has an air about it of not being adapted for pedestrians. At last we find a tourist information map. Yay! Our joy is short-lived, however, because the You Are Here arrow is in the top left corner. Which, forgive my bluntness, means that this is basically a map of somewhere-you-are-on-the-edgeof. The somewhere-we-want-to-be is not on the map at all. In emergency situations like this, it is important for the team to function effectively. But none of us is prepared to be Project Manager because of what happens on The Apprentice. So we divide the work thus: the EyePeePee finds our destination on Google® Maps and leads us off down a tow path into someone’s back garden. I phone the patent attorneys we are supposed to be visiting and apologise for being on a tow path and not in their meeting room. And Mr Davies deals with sending tweets. To make sure that everyone knows that CIPA’s EyePeePee and VeePee cannot even lead an expedition to Cardiff Bay let alone a Chartered Institute. Our hosts are very understanding. When we arrive, they offer us Welsh cakes and 60 different varieties of tea, not one of which is normal enough for Mr Davies. He is an explumber and plumbers are not used to having breakfast tea with essence of lychee. We ask our hosts what they think of CIPA. They say CIPA is alright; would you like another Welsh cake? We say but what about the webinars, and the Journal, and Congress, and Mr Lampert’s wizzy e-newsletter with the light bulbs at the top? They say, yeah, these things are alright too; do have another Welsh cake. The Welsh cakes are more than alright; they are perfect after our route march through Cardiff this morning. Mr Davies is alright too, despite having to drink tea with essence of alpine buttercups: he has found someone to talk to about dartboards. Patented dartboards, no less. Everyone is happy.
19 October 2014, 11.30am: Today, I tell myself, I am not going to do anything CIPA-related. It being a Sunday and all. But then I get involved with some domestic chore or other related to putting food on the table. And as everyone knows I am easily distracted from domestic chores, and before I know it I am firing off emails again and the domestic chore is stuck to the inside of the oven.
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I have a reputation at CIPA for sending too many emails. In fact, it is beginning to look bad that I don’t include an “unsubscribe” option in my signature. I cannot help it though. I just keep getting these ideas. And unfortunately they come through unfiltered, so I have to send them to my friends at CIPA for what is generally referred to as a sanity check but which in my case is obviously some way past that point. Usually people ignore my messages. But every now and then someone says “ok then”, just for a laugh, or perhaps for a dare, and then I end up running a task force or organising a meeting or going On Tour. Actually, the reason they agreed to the On Tour idea was because they thought it would keep me out of their hair for a bit. My family were similarly supportive of the idea of me not being around for long periods, and were in fact most dismayed to find me back this weekend sticking domestic chores to the sides of their kitchen appliances.
26 October 2014: I am practising a talk for business advisors at an IPO event. It is my job, at this event, to explain the importance of using a proper qualified IP attorney. It matters to me that IP is not tinkered around with by amateurs. It is not good when a client turns up and says here’s one my local IP Wizard patented for me on a TM1, after my successful press release, and here’s my claim 1 specification of goods and my drawing of the one I copied from my competitor, and now can you help me sue them for infringement on a £75 budget – they know to expect it because I sent them a defamatory threat the other day which you can download from my website. Oh and by the way I have called the website McProduct.com and the IP Wizard said that was okay.
27 October 2014: I am secretly making plans for the annual Council pantomime. I say “the”, but actually there is no antecedent yet: it is just such a brilliant idea that I am sure the lack of antecedent will not worry even the most pedantic of patent attorneys. The Council pantomime will be similar to a Council meeting, but with one or two significant improvements. For a start there will be custard pie fights, or more precisely caramel custard tart fights. (I do like a good tart fight.) Instead of sober suits there will be sequinned leotards, feathers and thigh-high boots. If anyone asks where Mr Davies has put the Bye-Laws we will all shout “Behind you!!” and if they say something is outrageous we will shout “Oh no it isn’t!” We have yet to cast the key characters but there is likely to be strong competition for the evil villain and quite a few takers for the principal boy. Mr Lampert and Mr Davies will be the front and rear ends respectively of the pantomime horse, Mr Davies being the best person to go at the back because he can deal with the plumbing. And the EyePeePee will be the pantomime tractor, which was not in the original script but he is very pleased we have added it for him and even more pleased that Mr Davies has volunteered to help with the valves. We should also decide which fairy story to use as the basis for our pantomime. But it’s not crucial; we don’t usually stick to the agenda so why would we stick to a storyline?
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Patents Patent decisions Notes: All the Court decisions listed in the first section below are available on the free-to-use website www.bailii.org.
Security for costs Guardian Barriers v Global Vessel Security [2014] EWHC 3753 (IPEC) 22 September 2014 HHJ Hacon
This case related to an application for security for costs by the defendant in relation to an action for patent infringement. The claimant appeared to be a shell company with the patent in suit and a community registered design being the only assets. In addition, an email from the solicitors of the claimant indicated that the claimant did not currently have cash flow to pay £50,000 into court. The claimant submitted that it would be able to pay the defendant’s costs at the time of any trial. In particular, the claimant submitted evidence purporting to show firm orders for goods. The judge took the view that the evidence was not sufficient, and that he was not entitled to conclude that the claimant was bound to be in a position to pay the defendant’s costs, should the defendant succeed at trial. Therefore, security for costs was necessary. The question was how much security should be paid. HHJ Hacon noted that on the one hand, the parties needed to return to court for a case management conference, and so it could be appropriate to order security for costs up to the present and allow the defendant to renew their application at the case management conference. He noted in the alternative that, particularly in the Intellectual Property Enterprise Court (IPEC), successive applications for anything, including security for costs, are to be discouraged. The judge found, on balance, that he would order security only in relation to the costs so far, but with permission for the defendants to renew their application at the case management conference, with strict instruction from the judge at that point.
Settlement agreement • Whether validity can be put in issue Stretchline v H & M (UK) [2014] EWHC 3605 (Ch) 14 October 2014 Sales J
Stretchline was the owner of United Kingdom Patent No. 2309038 relating to tubular fabric for use in underwired bras. Stretchline had previously brought infringement proceedings under the patent against H & M. H & M had made a counterclaim for revocation. Those proceedings had been settled by way of a settlement agreement. Some time later, Stretchline believed that H & M was in breach of the settlement agreement and brought the current action to enforce the settlement agreement. H & M relied on a defence of invalidity. This decision dealt with whether H & M was precluded by the settlement agreement from relying on such a defence. Sales J held that the settlement agreement definitively settled all issues between the parties in the first action, so that H & M could not put validity in issue by way of defence or counterclaim.
Perpetual motion machine • Industrial application • Insufficiency Peter Crowley v Comptroller General Of Patents [2014] EWHC 3871 (Ch) 14 October 2014 Mann J
This judgment related to an appeal from a decision of the IPO to refuse Mr Crowley’s United Kingdom Patent Application No. 0819309.6. This decision was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 22 October 2014. The patent application in question related to a machine that allegedly generated more output energy than the input energy it required. The application was initially refused for two reasons. Firstly, the IPO examiner found that the invention contradicted the laws of thermodynamics and was therefore devoid of any industrial application. Secondly, the IPO examiner found that the disclosure of the application was insufficient in the sense that it would be impossible for the skilled person to put into effect an invention that contradicted the laws of thermodynamics. At first instance, the IPO hearing officer upheld the IPO examiner’s decision to refuse the application, confirming that it indeed contradicted the laws of thermodynamics. Mann J dismissed the appeal, finding no faults in the analysis and conclusion of the hearing officer. In particular, the judge identified several shortcomings of the application, including the lack of a proper consideration of the causes of energy loss
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Patents • IPO and the incorrect assumption that the force of gravity is external to the system that encompasses the machine, and commented that: Mr Crowley may be correct in his description of the potentially continuous nature of the operation of the machine if Mr Crowley were to take it into a world which is an ideal world… However, Mr Crowley and the rest of us do not live in such a world.
Anna Hatt, John Hull, Jonathan Markham and Matthew Ng, Beck Greener
IPO decisions Note: Patent decisions of the Comptroller can be found on the IPO website (www.ipo.gov.uk) via http://bit.ly/ipodecisions, and opinions issued under section 74A via http://bit.ly/ipoopinions.
Restoration: Section 28 AspenBio Pharma, Inc BL O/485/14 13 November 2014
The applicant’s EP(UK) patent ceased as a result of failure to pay a renewal fee. The applicant applied for restoration, arguing that the failure to pay the renewal fees was unintentional because it was as a result of inaccurate information provided to them by an external consultant, who had advised not to proceed with the patent. The hearing officer, whilst accepting that the applicant had relied upon the external consultant, and agreeing that the normal English definition of ‘unintentional’ should be used, nevertheless refused the application for restoration. He considered that the applicant had made a conscious decision to follow the advice of the external consultant, which could not be deemed to be unintentional. Thus the requirement of section 28 was not met. The application for restoration of the patent was refused.
Entitlement: Section 37 Daletech Electronics Limited v Jemella Limited BL O/501/14 27 November 2014
The claimant (Daletech) initiated proceedings under section 37, claiming sole or joint entitlement to a patent granted to the respondent (Jemella) for an improved hair iron. The claimant had been commissioned by the respondent to design the patented hair iron, and argued that its employees had identified and solved the problem leading to the improved hair iron. The respondent accepted that the claimant’s employees had solved the problem, but that one of its own employees had identified the problem, and so was entitled to be considered an inventor. The respondent further argued that they were entitled to any IP resulting from the commissioned work by virtue of an earlier commissioning agreement. The hearing officer held that employees of both companies were inventors. With regards to the commissioning agreement, the hearing officer found that the agreement was solely concerned with previous work, not the invention in the disputed patent. However, he found that the document, along with several other documents making some reference to IP rights, indicated that the respondent’s general position at the time was to secure intellectual property protection. In contrast, there were no documents originating from the claimant referencing IP rights, or any evidence that the claimant sought IP rights resulting from their work. In the absence of any written terms explicitly relating to ownership of the IP in the patent in question, the hearing officer held that both the claimant and respondent had assumed that the respondent would be entitled to any IP. The hearing officer concluded that the respondent was rightly entitled to the patent granted to them because the claimant had failed to establish otherwise.
Amendments in revocation proceedings: Section 75 Ability International Limited v Monkey Tower Limited BL O/484/14 12 November 2014
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The patentee, Ability International Limited (AIL), filed amendments under section 75 following revocation proceedings, which concluded that various claims of the patent were invalid. The opponent (MTL) opposed the amendments on the grounds of novelty and inventive step with respect to newly cited prior art documents. The patentee asked for sections of the opponent’s grounds for opposition to be struck out on the basis that they should not be allowed to re-litigate the case under the guise of section 75. The
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IPO • EPO opponent insisted they were within their rights to introduce the new prior art, especially as the proposed claims were not available to them in the initial revocation action. The opponent argued that the case was similar to cases decided on by the Court of Appeal, particularly Nikken v Pioneer [2006] FSR 4, in which amending to a new claim after trial was not allowed, because there was almost bound to be a further battle which would arise. The hearing officer determined that the problem was how to avoid further litigation in accordance with the Court of Appeal’s directions whilst still meeting the requirements for opposition under section 75. The hearing officer considered that section 74(2) should apply, preventing the question of validity being examined in amendment proceedings. Otherwise, section 75(5) must be interpreted narrowly, referring only to those principles which are relevant to the enquiry at hand. By either route, the hearing officer held that the end result would be the same: that the opportunity for re-litigation should be limited. The hearing officer concluded by noting that the opponent was entitled to attack the validity by beginning new revocation proceedings. All grounds of opposition not relating to whether the amendments overcame the defects in the original revocation proceedings were struck out on the basis that they were an abuse of the opposition process.
Opinions: Section 74A Opinion 18/14 Aeromet International PLC 1 December 2014
A request was made for an opinion as to whether claim 1 of the proprietor’s patent was invalid in light of several documents. The proprietor asserted that the documents should be deemed inadmissible because they had been previously raised as third-party observations at the EPO before grant of a corresponding European patent. The requester suggested that, as the documents and arguments were submitted pre-grant at a different office, namely the EPO, they should be admissible in the present hearing before the IPO. The examiner rejected the requester’s argument, believing that to allow it would lead to a reappraisal of the examination performed by the EPO, which he considered was not the purpose of the opinion service. The examiner did, however, note that the third party observations had not been referred to in any documents sent by the EPO, and so concluded that the observations had not been considered by the EPO. As such, the examiner decided to consider the request, but ultimately found the claim to be novel and inventive over the cited documents. David Pearce and Callum Docherty (Barker Brettell LLP)
EPO decisions Inventive step – Articles 52(1) and 56 EPC This was an appeal from a decision of the Examining Division, refusing the application T 1343/12: Oil Solution for Dust Adsorption /Uni-Charm Corporation, for lack of inventive step (Article 52(1) and 56 EPC) in view of two Japanese prior art references, submitted with machine translations into English. The application concerned Sanyo Chemical Industries oils for dust adsorption comprising an anti-allergenic component and surfactant. On appeal, amended claims were filed late at oral proceedings but admitted under TBA decision of 10 October 2014 the Board’s discretion. The claims satisfied the Board’s assessment of clarity (Article 84 EPC) and were not of undue breadth (Article 123(2) EPC). However, the question Chairman: B. Czech Members: E. Bendl and U. Lokys of whether the invention defined by the amended claims involved an inventive step could not be answered. The Board’s evaluation of inventive step led it to conclude that the assessment hinged to a great extent on the closest prior art’s disclosure relating to surfactant contents. A particular difficulty arose from the quality of the machine translation of this prior art. The wording of the translation was ambiguous as to the amount of surfactant disclosed and hence it could not be established whether the disclosure pointed towards the claimed invention or taught away. As such, the Board held that: a definitive conclusion regarding the issue of inventive step in the light of D1 cannot be reached based on the machine translation thereof, which appears to be unclear and/or ambiguous in several relevant aspects.
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EPO Notes: Legal Board of Appeal (LBA) and Technical Board of Appeal (TBA) Decisions are available on the EPO website at http://legal.european-patent-office.org/dg3/updates/index.htm and similarly decisions of the Enlarged Board of Appeal (EBA) can be downloaded from www.european-patent-office.org/dg3/g_dec/index.htm. A list of the matters pending before the EBA is included at www.european-patent-office.org/dg3/g_dec/pending.htm Recent notices and press releases of the EPO are published at www.european-patent-office.org/news/info/index.htm and www.european-patent-office.org/news/pressrel/index.htm respectively, and recent issues of the Official Journal can be downloaded from www.european-patent-office.org/epo/pubs/oj_index_e.htm. The Board ordered that the Examining Division’s finding of lack of inventive step be set aside and the case remitted to the Examining Division for further examination of inventive step based on a certified translation of the closest prior art document.
Evidence and Internet publications T 0286/10: Pointsec Mobile Technologies AB/ Bouygues Telecom TBA decision of 21 May 2014 Chairman: M. Tardo-Dino Members: M. Müller, A. Teale
This was an appeal by the opponent following the Opposition Division’s decision to maintain a patent relating to a method for making secure access to a digital resource. The most significant point arising from the decision concerns the fact that the standard to assess evidence of prior art disclosures should not be stricter for internet publications. The language of the decision is French. In order to argue that the patent lacked inventive step, the opponent relied on internet publications. The Opposition Division had ruled that these documents could not be admitted as evidence since they did not comply with decision T1134/06 (requiring that if an internet publication is relied upon as evidence of the state of the art according to Article 54(2) EPC, a stricter standard should be applied in that the burden of proof should be beyond any reasonable doubt). The Board disagreed with the decision in T1134/06 and ruled that there is no legal basis to set a higher standard of proof to establish the public availability of a document published on the internet than for a traditional publication. The Board held that the principle of free evaluation of evidence based on a balance of probabilities should also apply to internet publications, despite the fact that internet publications can be subject to more uncertainties than other types of publication. If a piece of evidence is considered sufficiently convincing to make a prior art disclosure probable, it should be presumed to have been publicly available unless there exists sufficiently convincing evidence to the contrary.
Novelty and remittal – Articles 54 and 111(1) EPC This was an appeal from a decision of the Examining Division to refuse the application T1488/10: Ultrasonic Horn Assembly stack component connector for lack of novelty under Article 54 EPC. The application was refused based on prior art consisting of a patent specification for a device and in particular its drawings, from / Kimberly-Clark Worldwide, Inc. which relative dimensions of particular parts of the device could be obtained by carrying out measurements on the drawing. TBA decision of The Board overturned the decision of the Examining Division, stating that such an 25 September 2014 approach to determining the dimensions of the prior art device was not conclusive. First of all, the particular dimensions were not referred to by any reference signs in the Chairman: G. Eliasson drawings. Furthermore, they were not described as having any specific significance of Members: T.M. Häusser the prior art invention and no advantages were mentioned in the description concerning and P. Mühlens particular choices of the dimension of these parts. The representation of the dimensions of these parts of the device could have been influenced by factors such as the need for clarity in the drawings, and therefore the relative dimensions in the drawings may not have corresponded to their actual dimensions. Accordingly, the relative dimensions obtained merely by measuring the schematic drawing did not form part of the disclosure of the prior art patent specification. As such the application was novel. However, the Board found the patent invalid for lack of inventive step. The appellant requested remittal of the case to the department of first instance under Article 111(1) EPC on the basis that the Examining Division had not fully considered
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EPO the ground of inventive step. The Board refused the request and held that the objection of lack of inventive step had been considered during the examination proceedings and the mere fact that the objection was not included as a further ground for refusal in the contested decision did not warrant remittal of the case.
Partial priority – Article 88(2) and (3) EPC T 0571/10: Pharmaceutical compositions comprising a HMG COA reductase inhibitor TBA decision of 3 June 2014 Chairman: D. Boulois Members: D. Semino and P. Schmitz
This was an appeal from a decision of the Examining Division refusing grant of a divisional patent application. The most significant point arising from the appeal concerns the EPO’s approach to partial priority. A new main request, filed by the applicant during oral proceedings before the Board was admitted and examined for compliance with the provisions of the EPC. Claim 1 was drafted so as to combine the former independent claim 2 with three of the dependent claims in the former claims set. Its breadth was permissible, fulfilling the requirements of Article 123(2) EPC, but it was held to be a generalisation of certain features disclosed in the priority document and hence priority could not be acknowledged for the entire scope of the claim. The question arose as to whether partial priority could be acknowledged, with reference to Articles 87-89 EPC and in particular Article 88(2) and (3) EPC. The Board considered the Enlarged Board decision in G 2/98, dealing with the so-called “OR” type of claim, which contains a number of clearly defined alternative subjectmatters. This type of claim has the effect of rendering acceptable the use of a generalisation where multiple priorities are claimed; different subject-matters can take different priorities. G 2/98 has been followed in previous decisions of other Boards (T 1877/08, T 476/09, T 1443/05 and T1127/00). However, the TBA preferred the approach taken in T 1222/11 (where a detailed analysis of G 2/98 was conducted), which leans away from a strict literal approach. T 1222/11 was understood by the present Board to enable partial priority to be acknowledged provided it is possible to conceptually identify, by a comparison of the claimed subject-matter with the disclosure of the priority document, a limited number of clearly defined alternative subject-matters, including among the alternatives the specific embodiments which are directly and unambiguously derivable from the priority document. It is not necessary that the clearly defined alternative subject-matters are actually spelt out as such in the application, nor that the word “or” is actually used. The Board applied this understanding to the present case, concerned with pharmaceutical combination compositions containing an active agent plus an inorganic salt for which several alternative combinations could be identified: the acid, the calcium salt or a different salt for the active agent plus a tribasic phosphate salt or a different inorganic salt for the salt. The Board identified, by comparing the claimed subject-matter with the disclosure of the priority document, two clearly defined alternative subject-matters covered by claim 1 of the main request. It was found that the subject-matter of the first alternative (calcium salt plus tribasic phosphate salt) was fully disclosed in the priority document and therefore was entitled to the claimed priority, while the subject-matter of the second alternative (any acid or salt plus any inorganic salt, except the combination of the first alternative – calcium salt plus tribasic phosphate salt) was not directly and unambiguously derivable from the priority document and was not entitled to priority. For the second alternative, the question then arose whether the parent application had become poisonous as novelty only prior art under Article 54(3) EPC, bearing in mind that the application at hand was a divisional. The Board concluded that there was no lack of novelty. The parent application suffered the same condition as the divisional and hence contained two alternative subject-matters, the second of which lacked priority. As such, and because the subject-matters were clearly distinguishable with no overlap, the parent application did not poison the divisional – the subjectmatter of the parent’s first alternative, entitled to its priority, was not novelty destroying for the subject-matter of the divisional’s second alternative. As such, and the application having met the other requirements of the EPC, the decision of the Examining Division was set aside and the case was remitted to the Examining Division with an order to grant the patent on the basis of the claim set in the main request.
This month’s contributors from Bristows were Gemma Barrett, Anne-Laure Bouzanquet, Laura von Hertzen and Shauna Garvey.
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Trade marks Trade marks The reported cases marked * can be found at www.bailii.org/databases.html#ew and the CEU and GC decisions can be found at http://curia.europa.eu/jcms/jcms/j_6/home. Appointed Persons’ decisions can be found at www.ipo.gov.uk/types/tm/t-os/t-find/t-challenge-decision-results.htm. Abbreviations used: BoA=Board of Appeal; GC=General Court; CJEU or CJ=Court of Justice of the European Union; A-G=Advocate General; IPEC=Intellectual Property Enterprise Court
Decisions of the GC and CJ Ref no.
Application (and where applicable, earlier mark)
Comment
CJ
GOLDEN BALLS – paper, cardboard and goods made from these materials (16) – household or kitchen utensils and containers (21) – textiles and textile goods (24) – slot machines, apparatus, sound and image carriers (9) – games and playthings, gymnastic and sporting articles, decorations for Christmas trees, electronic games (28) – education and entertainment activities (41)
The CJ set-aside the judgments of the GC (T-437/11 & T-448/11, reported in October [2013] CIPA 589) and also annulled the decisions of the BoA to the extent that they dismissed IntraPresse's oppositions regarding certain goods under Article 8(5). The GC held that there was no likelihood of confusion under Article 8(1)(b). The CJ confirmed the GC's analysis and rejected Intra-Presse's submissions regarding the GC's findings under Article 8(1)(b) as inadmissible or unfounded. However, since the GC found a low degree of conceptual similarity between the marks, it erred by not conducting an overall assessment of the marks for the purposes of Article 8(5) in order to decide if the low degree of similarity was sufficient to establish a link between the marks. The degree of similarity required under Article 8(1)(b) and Article 8(5) was different; a lesser degree of similarity may have been sufficient to establish a link under Article 8(5). This part of the GC's judgment was set aside. The BoA had found a likelihood of confusion under Article 8(1)(b) for some of the goods/services applied for, however, it failed to consider the remaining goods under Article 8(5). The CJ therefore also annulled the BoA's decisions in relation to such goods.
C-581/13 C-582/13 Intra-Presse SAS v OHIM; Golden Balls Ltd 20 November 2014
BALLON D'OR – goods and services in classes 9, 14, 16, 18, 25, 28, 38, 41
GC T
297/13
Junited Autoglas Deutschland GmbH & Co. KG v OHIM; Belron Hungary Kft – Zug Branch
UNITED AUTOGLAS – vehicles, parts for land vehicles, namely windscreens, glass for car windows, sunscreen films, headlamps and headlamp glasses, sun roofs and mirrors (12) – repair, installation services, automobile glazing services, glazing (37)
16 October 2014
– windshields, windscreens, windows, sunroofs, mirror glasses (12) – glass for vehicle windows, unworked and semi-worked glass,
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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 BoA was correct to find that the relevant goods and services were similar or identical. Neither element of the mark applied for was more distinctive than the other. Given the high degree of similarity between the earlier mark and the second element of the mark applied for, overall there was low degree of visual similarity and a medium degree of phonetic similarity. The relevant public (the general public in Poland) would not have associated “autoglas(s)” with glass for automobiles, however, “auto” might be associated to automobiles, therefore, the marks were considered conceptually similar to some degree. The relevant public required a certain level of English or German for “autoglas(s)” to be considered descriptive. However, despite the “united” element, even a highly
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Trade marks Ref no.
Application (and where applicable, earlier mark)
Comment
glassware, glass for vehicle lamp, glass fibres (21) – glass for vehicle windows, unworked and semi-worked glass, glassware, glass for vehicle lamp, glass fibres (21) – installation of windscreens, glass and glazing products, windows, body glass, maintenance and repair of vehicle glass (37)
attentive consumer might think that the mark sought was a variant of the earlier and a likelihood of confusion could not be precluded.
(Polish mark) GC T-53/13 Vans, Inc. v OHIM 6 November 2014
– leather, animal skins, travelling bags, umbrellas, walking sticks, whips, harness, saddlery, wallets, bags, rucksacks, belt bags, briefcases, bags for school, bags for sport, beach bags, key rings, card holders, hip bags (18) – clothing, footwear, headgear, belts, gloves (25)
The GC upheld the BoA's decision that the mark was devoid of distinctive character pursuant to Article 7(1)(b). The BoA had been correct to apply the same general reasoning to all the goods in question as they were all used by consumers to convey a particular image and were therefore all fashion items that formed the same homogenous group (rather than four sub-groups). The BoA had also been correct to find that the mark would be perceived by the relevant public as an exclusively ornamental element. There was no striking element capable of attracting the consumer's attention. Furthermore, the evidence submitted by Vans did not make it possible to establish that distinctive character had been acquired through use. Mere sales volumes were insufficient as they did not establish that the relevant public perceived the mark as an indicator of commercial origin.
The GC upheld the BoA's decision to reject an application for invalidity of the URB mark based on Articles 53(1)(a) and 8(1)(b) and Article 52(1)(b). T-506/13 The BoA was correct to hold that Urb Rulmenti was not authorised to file the application under Article Urb Rulmenti Suceava URB 53(1)(a) as it was not the proprietor of the earlier SA v OHIM; Harun collective marks, nor was it a licensee with proper Adiguzel authorisation. In relation to the application for bad faith under 7 November 2014 Article 52(1)(b), the GC held that it could take into – various goods and services in classes 6, 7, account matters other than those listed in Lindt (C-529/07, reported in July [2009] CIPA 491) including 35 and 42 the commercial logic underlying the application and the chronology of events leading to that filing. (Collective marks and international The evidence submitted did not establish bad faith on marks) the part of Adiguzel. When Adiguzel applied to register the CTM, Urb Rulmenti did not have the same rights over the earlier collective URB trade marks as Adiguzel, so the premise on which the bad faith submission was based was false. Furthermore, Urb Rulmenti failed to substantiate its claim that Adiguzel's application had been artificial in nature and devoid of logic in commercial terms, nor had it established that Adiguzel had intended to exclude Urb Rulmenti from the market. GC
URB – various goods and services in classes 6 and 7
CIPA December 2014
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Trade marks Ref no.
Application (and where applicable, earlier mark)
Comment
GC
KAATSU – scientific, life-saving and teaching T-567/12 apparatus and instruments, prerecorded videos, DVDs and computer Kaatsu Japan Co. Ltd v software (9) – surgical, medical, dental and OHIM veterinary apparatus and instruments (10) 7 November 2014 – paper, cardboard and goods made from these materials (16) – games and playthings, gymnastic and sporting articles (28) – education, training, entertainment, sporting and cultural activities (41) – medical services, veterinary services, hygienic and beauty care, physical therapy services (44)
The GC upheld the BoA’s decision that the mark applied for was descriptive of the goods and services at issue under Article 7(1)(c). The BoA's finding that the relevant public included the general public and also a specialist public (including professionals, companies specialised or operating in the medical field and trainers and fitness centres) was not challenged by the parties. The term KAATSU could be used to designate a particular method or technique of physical exercise and also to inform consumers that the goods or services in question concerned that method or technique of physical exercise. Given this, the GC found that the term KAATSU must, having regard to the public interest under Article 7(1)(c), remain available for public use and not become the subject of a monopoly, even if the term was not yet commonly used. Therefore, the BoA was correct to find the mark descriptive under Article 7(1)(c).
GC
The GC upheld the BoA's decision to reject the opposition under Article 8(5). The BoA was correct to find that the marks were visually dissimilar. Whilst both marks contained the letter combination “vol” it was located in different positions. Given that this letter combination was meaningless in itself, there was no evidence to suggest that the average consumer would contemplate switching its position within the mark applied for. Nor would the average consumer split up the mark applied for into the syllables “lov” and “ol” and consider reading the first of these backwards. The BoA was correct to find that the marks were aurally dissimilar. It was not the case that both marks were only composed of the syllables “vol”, “vo” and “lov”, the mark applied for was LOVOL not LOVVOL. The fact that both marks contained the letters “v”, “l” and “o” and the letter combination “vol” was not sufficient to make them aurally similar. The BoA was further correct to find that both marks were invented words and no conceptual comparison of similarity was possible. The marks were, therefore ,dissimilar. The BoA had been correct to reject the opposition.
T-524/11 T-525/11 Volvo Trademark Holding AB v OHIM; Hebei Aulion Heavy Industries Co., Ltd 12 November 2014
– harvesters, agricultural machines, road rollers, excavators, loaders, bulldozers, concrete mixers, cranes (7) – automobiles, vehicles for transport for agricultural use, motorcycles, derrick cars, cycle cars, bicycles, electric vehicles, engines for land vehicles, fork lift trucks, concrete mixing trucks, tractors (12) VOLVO – various goods in classes 1 to 9, 11, 12, 14, 16 to 18, 20 to 22, 24 to 28 and services in classes 33 to 42 (Community and UK marks)
GC
NATUR – table covers (24)
T-549/10 Natura Selection, SL v OHIM; Afoi Anezoulaki AE 13 November 2014
692
– commercial retailing and via worldwide telematics networks, advertising services, all the above relating to textiles and textile goods,
CIPA December 2014
The GC annulled the BoA’s decision and held that there was a likelihood of confusion between the marks under Article 8(1)(b). It was not disputed that there were visual and phonetic similarities between the marks, as well as a high degree of conceptual similarity. The BoA had erred in holding that table covers of the mark applied for and the class 35 retail services of the earlier marks relating to table covers had a low degree of similarity.
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Trade marks Ref no.
Application (and where applicable, earlier mark)
Comment
not included in other classes, bed and table covers (35)
Accordingly to settled case law, such as Oakley v OHIM (T-116/06 reported in October [2008] CIPA 586), there was similarity between goods and retail services relating to those goods. Consequently, there was a similarity between table covers and retail services relating to table covers. Furthermore, this similarity was accentuated because the services of the earlier mark constituted one of the possible distribution channels for the goods of the mark applied for. The BoA, therefore, erred in finding that there was no likelihood of confusion between the marks.
THE YOUTH EXPERTS – bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices (3) – pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides (5)
The GC annulled the BoA's decision in so far as it declared the mark devoid of any distinctive character under Article 7(1)(b) in relation to the goods which were not the subject of the appeal. The remainder of the action was dismissed. The OHIM examiner had accepted registration of the mark in respect of certain goods (such as cleaning preparations, fungicides and herbicides – the “non-contested goods”), but refused registration in respect of the remainder of the goods (the “contested goods”) under Article 7(1)(b). On appeal, the BoA found the mark devoid of distinctive character in respect of all goods applied for. The GC held that the BoA had exceeded its powers under Article 59 in reopening the examination of the non-contested goods. This part of the BoA’s decision was annulled. In relation to the contested goods, the GC agreed with the BoA's reasoning that the mark would be perceived by the relevant public as a promotional indication/slogan – the English words “youth” and “experts” were commonly used for marketing purposes in the cosmetics, pharmaceutical and healthcare services sectors in order to promote the desirable qualities of those goods. The mark was, therefore, devoid of any distinctive character for these goods.
FUNNY BANDS – jewellery; rings; bracelets (14) – rubber, gutta-percha, gum, T-344/13 asbestos, mica and goods made from these materials and not Out of the blue KG v OHIM; Frédéric Dubois included in other classes; plastics in extruded form for use in manufacture; threads (17) 19 November 2014 – import-export agencies; procurement for others (purchasing of goods and services for other businesses); demonstration of goods; distribution of samples (35)
The GC upheld the BoA's decision to reject the opposition on the basis that use of more than local significance of the earlier unregistered mark had not been established under Article 8(4). The BoA had not erred by finding that the economic dimension of the Article 8(4) criteria had not been established by the mere presence of an earlier right such as a website. It was necessary to show the existence of actual and sufficient business activities. The BoA was also correct to find that WHOIS data and website screenshots alone could establish the presence of a website, but not the claimed intensity of trade. Invoices showing sales of a product named “Funny Bands” did not refer to the trade name or domain name and therefore did not establish the intensity of use of the rights relied on. Finally, Out of the blue's submission that the BoA should take into account German national law (which set no threshold for intensity of commercial activity) was rejected; the criteria relating to use must be interpreted solely in the light of EU law.
GC T
484/13
Lumene Oy v OHIM 18 November 2014
GC
FUNNY BANDS funy-bands.com (Community and UK marks)
CIPA December 2014
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Trade marks Ref no.
Application (and where applicable, earlier mark)
GC T-556/12
– goods in classes 8 & 21
Royalton Overseas Ltd v OHIM; S.C. Romarose Invest Srl
KAISERHOFF – goods and services in classes 11, 21 and 35
25 November 2014
(Romanian mark)
GC T-240/13 Aldi Einkauf GmbH & Co. OHG v OHIM; Alifoods, SA 26 November 2014 [Only extracts of this decision have been translated into English.]
– goods and services in classes 29, 32 and 35 ALDI – services in class 35 (International mark)
Comment
The GC annulled the BoA’s decision to refuse to suspend the opposition proceedings pending the outcome of Romanian proceedings concerning a cancellation action brought by Royalton Overseas in respect of the earlier mark. The BoA had failed in its duty of diligence and infringed Article 76(1). The BoA did not examine carefully the evidence in the documents before it and was wrong to find that Royalton Overseas had not provided proof of the cancellation action. Filing the cancellation action while opposition proceedings were still pending was not evidence of bad faith by Royalton Overseas and, therefore, not a reason in an of itself on which to base a refusal. Finally, the BoA had failed to weigh up the competing interests involved and was wrong to assume the third cancellation action following two failed cancellation actions, had the objective of holding up the opposition. The GC upheld the BoA's decision and rejected the opposition as unfounded under Rule 19(2)(a)(ii) of Regulation No. 2868/95. The GC confirmed the BoA's finding that Aldi had failed to prove the existence, validity and scope of protection of its earlier international mark for the purposes of Rule 19(2)(a)(ii). Aldi had only submitted a printout of its earlier mark from the OHIM database; this did not constitute a copy of the relevant registration certificate or equivalent document from the administration which registered the mark (in this case WIPO).
Shape marks Simba Toys GmbH & Co. KG ('Simba') v OHIM; Seven Towns Ltd ('STL')
The GC upheld the BoA’s decision, rejecting the action for invalidity of the shape of a ‘Rubik’s Cube’ as a 3D shape mark under Articles 52(1)(a), 7(1)(b) and 7(1)(e)(i)-(iii). STL was the owner of a CTM consisting of the 3D shape of a Rubik’s Cube (the CTM), registered in class 28 for 3D puzzles:
GC; T-450/09 25 November 2014
Simba applied to invalidate the CTM under Article 52(1)(a) on the ground that it lacked distinctive character under Article 7(1)(b) and that it consisted exclusively of the shape of the goods necessary to obtain a technical result under Article 7(1)(e)(ii). Simba additionally alleged infringement of Articles 7(1)(e)(i) and (iii). OHIM rejected the application for invalidity. Simba’s appeal to the BoA was dismissed. Simba further appealed to the GC, which upheld the decision of the BoA and rejected the invalidity action in its entirety for the reasons set out below.
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Trade marks Article 7(1)(b) The GC agreed with the BoA that the CTM included sufficient characteristics to be inherently distinctive. The external appearance of the CTM did not constitute the “norm” in relation to 3D puzzles and was not a commonplace design when compared to other goods in that area. A cube displaying a grid structure was just one of the possible structures such a puzzle may take. The shape would not be spontaneously perceived as representing a 3D puzzle without prior knowledge of its purpose. The grid structure gave the CTM the appearance of a “black cage”, which was specific and arbitrary enough to confer an original aspect on the CTM, enabling the average consumer to distinguish the goods it was registered for.
Article 7(1)(e)(ii) The GC confirmed the BoA’s finding that the essential characteristics of the CTM were the cubic grid structure, including the cube per se, and the grid structure on each surface (demarcated by black lines). The GC rejected Simba’s submission that the black lines were a consequence of the rotating capability of the individual elements of the CTM. Article 7(1)(e)(ii) required that the essential characteristics of the mark at issue themselves performed the technical function of the goods and had been chosen to perform that function, not simply that those characteristics were the result of that function. In any event it was possible for a cube whose surfaces or other elements were rotatable not to contain visible separating lines. Furthermore, the CTM was not restricted to 3D puzzles having a rotating capability. Simba’s submission that the black lines performed the technical function of separating the individual elements of the CTM so that they could rotate was rejected since that capability resulted from an internal mechanism that was invisible on the graphical representations. The GC distinguished the case from the decisions in Lego Juris v OHIM (T-270/06 reported in December [2008] CIPA 729) and Philips Electronics v Remington (C299/99 reported in July [2002] CIPA 355). In Philips, it was apparent from the graphical representation of an electric razor with three circular heads and rotating blades that the technical function was shaving. Similarly, Lego was a straightforward inference from the graphical representation of two rows of studs on a toy brick registered for ‘construction toys’ that they were designed for the assembly of toy bricks with secondary projections and a hollow underside, even though those elements were not visible on the graphical representation.
Article 7(1)(e)(i) and (iii) The GC held that the nature of a 3D puzzle did not necessarily require that it be in the shape of a cube with surfaces that had a grid structure. This was supported by evidence that showed 3D puzzles, including those with a rotating capability, in a large variety of different shapes and sizes. Furthermore, Simba had not claimed that substantial value could be attributed to the aesthetic aspect of the shape. Therefore, Articles 7(1)(e)(i) and (iii) did not apply.
CA allows INTERFLORA appeal and remits case for retrial Interflora Inc v Marks & Spencer plc (“M&S”)* Patten & Kitchin LJJ and Sir Colin Rimer; [2014] EWCA Civ 1403
The CA (Kitchin LJ giving the lead judgment) allowed M&S’s appeal from the decision of Arnold J that it had infringed the INTERFLORA trade mark under Article 5(1)(a) by bidding on it as a keyword search term for its flower delivery service on Google AdWords (reported in June [2013] CIPA 350). The CA remitted the case for retrial in the High Court.
Average consumer 5 November 2014
The parties accepted that, in the context of internet advertising, the average consumer and the reasonably well-informed and reasonably circumspect internet user were one and the same. The CA rejected M&S’s criticisms of Arnold J’s application of the reasonably well-informed and reasonably observant internet user test, i.e. that he had wrongly converted what was a hypothetical person with an objectively defined standard of knowledge and perspicacity into a population of individuals with varying degrees of knowledge and perspicacity. The CA held that the Judge was entitled to have regard to
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Trade marks the effect of the advertisements upon a significant section of the relevant class of consumers, and that he was not barred from finding infringement by a determination that the majority of consumers were not confused. The CA said that it did not understand Lewison LJ in the Court’s previous judgment in the case ([2012] EWCA Civ 1501) to have been suggesting that the average consumer was some form of mathematical average. It made no difference whether the question of confusion was asked and answered from the perspective of the single hypothetical well-informed and reasonably observant internet user or whether that hypothetical person provided the benchmark or threshold for the purposes of identifying the population of internet users whose views were material.
Onus of proof The CA rejected Arnold J’s view that the CJ had, in Google France, imported a conventional likelihood of confusion test into the assessment of whether there was an adverse effect on the origin function of the mark in question, at least in the context of keyword advertising cases. It also rejected the Judge’s finding that that decision imposed a reverse burden of proof requiring the alleged infringer to show that the use of the sign in context was sufficiently clear that there was no possibility of confusion. The CA held that the general position under EU and UK law was that the burden of proving an allegation of infringement lay on the person making the allegation, and it was not the purpose of trade mark law to protect the trade mark proprietor against fair competition. The CA was of the view that had the CJ intended to equate the test under Article 5(1)(a) with that under Article 5(1)(b) then it would have said so. Accordingly, the Judge had wrongly elided the burden of proof in legal proceedings with the need in practice for third party advertisers to craft their advertisements with appropriate clarity to enable normally informed and reasonably attentive internet users to ascertain whether the goods or services referred to in the advertisement originate from the trade mark proprietor.
Initial interest confusion The CA held that Arnold J had been wrong to introduce the concept of initial interest confusion into his analysis. It stated that it was not helpful to seek to import the US concept into EU law, at least in the present context, as it had the potential positively to mislead by putting a “gloss” on the tests the CJEU has articulated. As Arnold J’s decision had been “finely balanced”, the CA was satisfied that it depended in significant part upon those particular findings in relation to which he had fallen into error. Given that the case was of considerable importance to the parties and one in which they had invested substantial time and resources, the CA concluded that it had no choice but to remit the case for retrial, particularly as it had not been taken to all the documents and had not had the benefit of hearing the oral evidence of the witnesses. In a subsequent judgment ([2014] EWCA Civ 1448) the CA ordered that the case be remitted for retrial before a different judge of the Chancery Division.
Court of Appeal upholds finding of non-infringement of IDEAL HOME mark IPC Media Ltd v Media 10 Ltd* The Master of the Roles, Kitchin & Bean LJJ; [2014] EWCA Civ 1439 12 November 2014
696
CIPA December 2014
The CA dismissed both IPC’s appeal and Media 10’s cross-appeal from the decision of Mr John Baldwin QC, sitting as a deputy judge in the IPEC (reported January [2013] CIPA 41). It held that the Judge was right to find that Media 10’s use of “Ideal Home Show” did not infringe IPC’s trade mark for IDEAL HOME, and that the mark was validly registered. IPC was the publisher of the market-leading Ideal Home magazine which was launched in around 1920. It had sold mail order goods by reference to the “Ideal Home” sign since the 1960s. Following the launch of its website in 2005, its IDEAL HOME mark was registered in 2006 in class 35 for the sale over the internet of home interest products. In January 2009, IPC launched an online shop called the “Ideal Home Shop”, selling a range of home interest products via the internet. The Ideal Home Show (a popular UK home wares exhibition run since 1908) had been operated by Media 10 since 2009. From 2008 the Ideal Home Show had an online shop selling third parties’ goods and, in May 2012, it launched the Ideal Home Show Shop with a dedicated website under that name. IPC brought trade mark infringement proceedings against Media 10 under sections
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Trade marks 10(1), 10(2) and 10(3) in response to its launch of its online shop. Media 10 counterclaimed for invalidity of IPC’s mark under sections 3(1)(b), 3(1)(c) and 5(4). Neither party was successful on any of its claims at first instance and both parties appealed. IPC’s appeal was based only on infringement pursuant to section 10(2) and Media 10’s appeal was based only on invalidity of IPC’s mark pursuant to section 5(4)(a).
Infringement appeal The Court of Appeal (Kitchin LJ giving the lead judgment) considered that the essential issue in the appeal was whether the use made by Media 10 of IDEAL HOME in relation to online sales adversely affected the essential function of IPC’s trade mark, i.e. to guarantee to consumers, without confusion, the origin of the goods as those of the trade mark owner and no one else’s. The impugned use had to have an adverse effect on the functions of the mark in the particular circumstances of the case, which included the fact that both parties had used IDEAL HOME in respect of their respective businesses for very many years. The Court referred to its decision in Budvar v Anheuser-Busch [2013] RPC 12 in which it held that where there was long-established honest concurrent use of a mark by two parties, the guarantee of origin of a mark was not that the mark indicated the goods of one user only, but rather the mark indicated that the goods originated from one or the other user. Kitchin LJ considered that because online retail services of home interest products was so closely related to both parties’ core businesses (home interest magazines in the case of IPC and home interest exhibitions in the case of Media 10) the natural extension of use by Media 10 did not cause any greater confusion than already existed as a result of those years of honest concurrent use. Further, the fact that Media 10 offered online services a few years after IPC began offering online services did not cause any greater level of confusion than if each of the parties had offered them at the same time. In both circumstances, IPC’s services had the same level of guarantee of origin as they always had, i.e. some consumers always had been and inevitably always would be confused as to whether the goods/services were those of IPC or of Media 10. Accordingly, IPC’s appeal was dismissed.
Invalidity appeal In order for Media 10 to be successful in its invalidity action it had to show that, at the date of IPC’s trade mark application, Media 10 would have been able to prevent that registration on the basis of a claim for passing off. The CA held that in the same way that Media 10’s extension into online sales was an entirely natural step for its business, so was IPC’s extension. At the date of IPC’s trade mark application the use of IDEAL HOME had always signified the business of either the show or the magazine or both of them; therefore by using IDEAL HOME, IPC was not misrepresenting its goods as those of Media 10 and a passing off claim brought by Media 10 would have been unsuccessful. IPC’s trade mark was therefore not invalid.
Site-blocking injunctions Arnold J held that injunctions against the ISPs requiring them to block access to websites which infringed the Richemont Group’s trade marks could extend to other websites hosted at the same IP address, provided the website was engaged in unlawful activity. The Richemont Group owned the well-known luxury brands Cartier, Montblanc Arnold J; [2014] EWHC 3765 (Ch) and Richemont, including a broad portfolio of trade marks. The ISPs were five companies who together had a market share of approximately 95% of UK broadband users. In October 2014, the High Court granted injunctions against the ISPs requiring 13 November 2014 them to block access to websites which sold counterfeit goods under the Richemont Group’s trade marks (reported in November [2014] CIPA 648). Arnold J gave judgment on the scope of the injunctions and, in particular, whether the ISPs were required to block access to websites that shared IP addresses with other websites against which no trade mark infringement has been established. He held that where a server hosting the IP address of an infringing website hosted other sites, the ISPs were required to block the IP address provided the applicant certified that the Cartier International AG & Ots ("Richemont Group") v British Sky Broadcasting Ltd & Ots (“ISPs")*
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Trade marks • Copyright sites (other than the infringing site) were all engaged in unlawful activity of some kind. In addition, where the site had a contact address, the applicant was required to give notice that an order had been made and invite the site to move to a different server or explain why its operation was lawful.
Copyright Websites targeting the UK Birss J found that the defendants’ website “www.escortgps.xxx” and the sub-domain at “www.southafrica.escortgps.xxx” were communicating reproductions of Omnibill’s photographs to the public in the UK. As a result, the defendants were found to have infringed Omnibill’s copyright under section 20 CDPA. A large number of (mainly pornographic) photographs that appeared on a website Birss J; [2014] EWHC 3762 (IPEC) operated by Omnibill for the provision of escort services in South Africa also appeared on a website providing similar escorting services at www.escortgps.xxx (the “Escortgps 17 November 2014 Website”) which was owned by EGPS. There was no dispute that the copyright in the photographs belonged to Omnibill. EGPS was a UK company which went into liquidation after the proceedings were issued. Mr Carter was a UK resident and the sole director and shareholder of EGPS, and Omnibill claimed that Mr Carter was personally liable for the infringements. The technical work to set up the Escortgps Website was undertaken by Mr Van Tonder, a friend of Mr Carter resident in South Africa who was not an employee, director nor shareholder of EGPS. EGPS was incorporated after Mr Van Tonder received a letter before action from South African lawyers on behalf of Omnibill. The letter related to an earlier website, www.escortsouthafrica.xxx. The Escortgps Website was set up after receipt of the letter. On instructing a web browser to go to the URL for the Escortgps Website, the user was presented with a page bearing the flags of seven countries including the UK and South Africa. The flags were presented under the heading: “Escort country websites click below to find escorts in the country of your choice”. On clicking on a country a user was taken to a sub-domain where they were presented with an advertisement for escort services. The reproductions of Omnibill’s images appeared in the South African sub-domain. The questions before the court were: (i) was EGPS legally responsible for the Escortgps Website; (ii) were the relevant parts of the EGPS Website targeting the UK; and, if so, (iii) was Mr Carter liable for the actions of EGPS. Omnibill (Pty) Ltd v EGPSXXX Ltd (“EGPS”) & Anr*
Legal responsibility for the EGPS website In finding that EGPS had legal responsibility for the Escortgps Website, Birss J found that: (i) the domain name was supposed to have been registered in the name of EGPS rather than Mr Van Tonder; (ii) Mr Carter paid all the relevant costs so that the Escortgps Website would belong to EGPS; and (iii) any instructions given by Mr Carter to Mr Van Tonder were given on behalf of EGPS.
Targeting the UK Since the relevant servers were not located in the UK, the Escortgps Website or relevant parts of it had to be targeting the UK in order for copyright infringement to have occurred. Referring to Arnold J’s analysis in EMI v BSkyB [2013] EWHC 379 (Ch), Birss J said that the question of whether a website was targeted to a particular country was a multi-factorial one which depended on all the circumstances. It was generally accepted that the primary country at which the EGPS Website was targeted was South Africa, however, Birss J said that it was important to take into account the possibility that a website or webpage may be targeted at more than one state. Considering the relevant visitor figures, Birss J found that between about 10% and 25% of the daily visitors to the South African sub-domain came from the UK. This was considered to be a substantial proportion of the total visitors and it was irrelevant that visitors from the UK might only be visiting the sub-domain for titillation; considering the structure and nature of the Escortgps Website, it was properly regarded as a global website with national elements and it was not correct to analyse the sub-domains as a series of
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Copyright national sites. Further, one could infer from the content of the EGPS website that the operators intended that visitors from the UK would visit the South African sub-domain because they earned revenue from advertising by generating traffic to the site. It was therefore in their interests to attract traffic from anywhere in the world to any of the subdomains. Birss J, therefore, concluded that the Escortgps website and the South African sub-domain were communicating reproductions of Omnibill’s photographs to the UK.
Liability of Mr Carter Birss J found that the only rational explanation for registering EGPS as a company in the UK was that it was an attempt by Mr Carter and Mr Van Tonder to seek to avoid liability in South Africa, following receipt of the letter before action sent on behalf of Omnibill. He also found that when Mr Van Tonder transferred the content to the Escortgps website he was acting on the personal authorisation of Mr Carter to carry out infringing acts under section 16. When considering whether Mr Carter was liable for infringements committed by EGPS as a joint tortfeasor, Birss J found that Mr Carter was the only person through whom the company could act at all and, since he had agreed with Mr Van Tonder to set up the Escortgps Website in EGPS’s name, Mr Carter was personally liable as a joint tortfeasor.
No infringement of copyright or unregistered design right in fabric design John Kaldor Fabricmaker UK Ltd v Lee Ann Fashions Ltd* Judge Hacon; [2014] EWHC 3779 (IPEC) 21 November 2014
Judge Hacon held that a dress fabric supplied to Marks & Spencer by Lee Ann did not infringe the copyright or unregistered design right in John Kaldor’s fabric. John Kaldor was a design house which made and designed fabrics. Lee Ann made and designed garments for the fashion industry. Lee Ann was asked to pitch fabrics to Marks & Spencer (M&S) for its upcoming clothing collection, and John Kaldor therefore supplied a sample of fabric (the “JK Fabric”) to Lee Ann for that purpose. Although Lee Ann’s pitch to M&S was successful, the JK fabric was not used in the M&S collection. However, John Kaldor alleged that Lee Ann had amended the design of the JK Fabric to create a design for a dress sold by M&S in the “LA Fabric”. The JK Fabric and the LA Fabric are shown below:
Copyright infringement
JK Fabric
As the design of the JK Fabric was created on a computer, the artistic work in which copyright was claimed was the relevant computer file. The Judge considered the design corpus in relation to the copyright claim as well as the design claim in order to give him an objective idea of where the design features fell on the spectrum between commonplace and strikingly original in assessing whether there was a prima facie inference of copying. Assessing this also by reference to a list of similarities between the two designs pleaded by John Kaldor, the Judge concluded that there was a prima facie possibility of copying but that it was neither strong nor negligible. However, the Judge concluded that the evidence of Lee Ann’s print designer as to how she had come to design the LA Fabric independently of the JK Fabric was credible on its face. Although Lee Ann accepted that she could have seen the JK Fabric, she said that she came up with the design herself having been given a general brief which included the requirement of a tribal look. Finally, the Judge rejected John Kaldor’s alternative allegation of unconscious copying as the similarities between the two designs were not sufficiently compelling.
Unregistered Community design right infringement LA Fabric
It was common ground that the question whether the design of the LA Fabric did not produce on the informed user a different overall impression to that produced by the JK fabric stood or fell with the copyright claim. Therefore, John Kaldor’s claim for infringement of its unregistered Community design right was also dismissed. Katharine Stephens, Zoe Fuller and Hilary Atherton
Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Ahalya Nambiar, Toby Bond, Tom Darvill, Mark Livsey, Mohammed Karim, Rebekah Sellars, Henry Elliott, Ning-Ning Li, Rebecca O’Kelly-Gillard, Emily Mallam and Will Smith.
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Informals news The ‘Formal’ Informals Council has recently accepted a proposal, which we prepared with CIPA's Chief Executive Lee Davies and his colleagues, to integrate the Informals into CIPA. Until now, students (or typically their employers) paid membership fees to join CIPA but it was the Informals’ Committee that organised lectures and moots, socials and sporting events for trainees with little support from CIPA. Now, student members’ fees will in part be allocated to the Informals to a these events. I hope that the integration will help students feel part of CIPA, provide them with a reason for becoming members, and show them early on how CIPA can help them through their careers. Importantly, as Lee Davies mentioned in the November 2014 CIPA Journal (page 592), the Informals will retain its independent nature, which allows us to adapt and respond to the requests for support that we receive from trainees across the UK. In December, I had the opportunity to meet new trainees at the CIPA & ITMA New Members Induction Day, and dine with some of the past Informals Honorary
Secretaries, many of whom are now CIPA éminences grises. I was pleased to hear that both parties – despite being at opposite ends of their careers – generally want the same things from the Informals: to create a community for students to build relationships that could span their entire careers; to provide guidance through the early years in the profession; to provide a voice for the student body, particularly on matters that affect training and education. The Informals’ Committee works hard to provide these services. Our activities have expanded into more regions outside London; we have published a new Handbook for Trainee Patent Attorneys to help explain the examination systems and provide trainees with useful resources; and we continue to monitor changes in education policy, such as IPReg’s proposal to change the UK qualification process. Employers do not always encourage, permit, or pay for, their trainees to attend CIPA or Informals events (which is rather shocking). While the Informals do not have the power to change this, we ensure that
at least our educational offerings are available to students free of charge and without requiring too much travel. For example, trainees can participate in all our annual lecture series, in person or via webinar, as well as listen to the recordings at their leisure. We have also overhauled our tutorial system so that there is no longer a fee to participate in the tutorials. This year we have received offers for EQE tutorials from Fellows based in London, Leeds, Cambridge, Manchester, and Bristol, and a number of Fellows offered their tutorials via webinar, which further helps the Informals to support trainees wherever they are based in the UK. I would like to personally thank all Fellows who have volunteered to give EQE tutorials or a lecture in our upcoming Foundation and EQE lecture series. Having the support of all members helps the Informals to provide trainees with the assistance they need to become the next generation of CIPA Fellows. Parminder Lally, Honorary Secretary of the Informals
CIPA Informals – Advanced EQE Lecture series 2015 The EQE lectures are normally held on Monday lunchtimes (but sometimes Thursdays to maximise the number of lectures). Lecturers have been asked to go through a recent paper (normally 2013/2014). CIPA Students can listen live and ask questions on the day and the recordings will also go up on the CIPA website to listen to afterwards. Previous years' lectures are also on the CIPA website. Members can see full details at www.cipa.org.uk/pages/2015-EQE-lectures Thursday 8 January 2015 – 12.30pm Pre-EQE Tutorial Parminder Lally and Philip Lenden (Marks & Clerk)
Monday 26 January 2015 – 12.30pm Paper D – 2011 Deborah Hart (Kilburn & Strode)
Monday 12 January 2015 – 12.30pm European Case Law Update Derk Visser (EIP)
Monday 2 February 2015 – 12.30pm Paper A (Chem) – year TBC Kathryn Formanuik (Kilburn & Strode)
Thursday 15 January 2015 – 12.30pm Paper B (chem) – 2014 Stephen Garner (Mathys & Squire)
Monday 9 February 2015 – 12.30pm Paper A (Electro/Mech) – 2014 Sean Leach (Mathys & Squire)
Monday 19 January 2015 – 12.30pm Paper C – 2014 Thomas Zvesper (Mathys & Squire)
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Informals news • Education & CPD seminars CIPA Informals – Foundation Lecture series 2015 Below is the timetable for the 2015 Foundation Lecture series. The lectures will be held at 5.30pm at the Institute Hall. The Hall is on the third floor of 95 Chancery Lane, London WC2A 1DT. The lectures will be broadcast via WebEx for those who cannot make it and recordings will be available here after the event. Members can see full details at: www.cipa.org.uk/pages/2015-Foundation-Lectures Monday 12 January 2014 – 5.30pm Introductory Lecture Gwilym Roberts (Kilburn & Strode LLP) and Stuart Forrest (Carpmaels & Ransford LLP) Monday 19 January 2015 – 5.30pm Novelty and Inventive Step Sarah Lau (Kilburn & Strode LLP)
Monday 26 January 2015 – 5.30pm Patentability & Excluded Matter Paul Cole (Lucas & Co.) Monday 2 February 2015 – 5.30pm Patent Searching Richard Wood (UKIPO)
UCL Institute of Brand and Innovation Law and CIPA
Intellectual Property and Trade Secrets Wednesday 14 January 2015; 3.30 - 6pm, followed by a reception The two panels will cover: • The Commission Proposal for the Trade Secrets Directive • Practical Considerations for Companies Globally Speakers: • Professor Tanya Aplin (King's College London) • Professor Anselm Kamperman-Sanders (Masstricht University) • Jorge Novais Goncalves (European Commission) • Daniel Alexander QC (8 New Square) • Dr Bobby Mukherjee (BAE Systems) • Doug Davidson (Cap Gemini) • Mark Trafford (Criminal Bar Association) Chaired by The Rt Hon Professor Sir Robin Jacob (UCL IBIL) and Catriona Hammer (CIPA President) Accreditation 2.5 CPD Points are available for this event from the SRA and BSB Queries If you have any queries about this course please contact Lisa Penfold at the UCL Faculty of Laws by emailing lisa.penfold@ucl.ac.uk
Victorian Letters Patent For Sale Victorian Letters Patent number 55 dated 8 January 1853 to John Abraham for a new improved method of manufacturing percussion caps. Two-page document, seal attached and in its metal container. Document and seal in a blue box with Coat of Arms. For further information and offers to purchase please contact R. Russell at loufarey@aol.com.
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Education & CPD seminars EPO Oral Proceedings Course Report if the CIPA EPO Oral Proceedings Course, 14 November 2014. If you are interested in attending this course in 2015 please email CPD@cipa.org.uk. The course actually began some months before the day of the course, much like oral proceedings before the EPO. Each delegate was sent a hefty 176 page course manual and links to 19 webinars. The webinars ranged from three minutes to 67 minutes in length and covered topics that included ‘The Legal Context’, ‘The Summons’, ‘The Written Procedure’, ‘Case Preparation and Project Management’, ‘Advocacy Skills’, ‘At the Hearing’ and ‘The Basics about Appeals’. Helpfully, webinars were given from both the attorney’s perspective and the EPO perspective. The EPO perspective webinars were given by Christopher RennieSmith, who in a previous incarnation was a member of one of the EPO Boards of Appeal. The attorney perspective webinars were given by a combination of patent attorneys, namely Huw Hallybone, Peter Jenkins and Gwilym Roberts as well as barristers, namely Piers Acland QC and Michael Silverleaf QC. The webinars were then reinforced with complimentary reading material in the course manual. Also in the course manual were examples of summons from the EPO which demonstrated the varying level of detail one can expect in the accompanying written opinions! Shortly before the day itself delegates were provided with some materials that included ‘The Patent’, prior art, an examination report, a response previously submitted, response thereto and the summons to attend oral proceedings. In order for the delegates to familiarize themselves with the materials for the day the delegates were asked to prepare and submit their written submissions. Finally, a couple of days before the course, in true EPO style, additional materials were sent to the delegates which included additional prior art submitted by the opponent and auxiliary requests submitted by the proprietor. On the day of the course itself the delegates were, therefore, well prepared to jump straight into the nitty gritty of oral proceedings before the EPO! Helpfully, the same tutors were present who had given the webinars which led to continuity and the option to question the tutors directly about what they have said in the webinars.
The morning began with oral proceedings before the Examination Division. Gwilym set the ball rolling by discussing the purpose of the written communications and auxiliary requests that are filed before the day of the oral proceedings and the layered approach to be adopted. Peter and Huw chipped in with their own views on auxiliary requests and how they employ such requests in real life. The tutors then moved onto the examination hearing and how to prepare, including trying to spot any potential flaws in your case and thinking up suitable rebuttals, and working out the best way to handle the human aspect of the examiner to persuade him to agree with you. Michael and Piers also gave helpful advocacy tips to assist with the presentation of the oral submissions. The delegates were then broken up into small groups and given time to prepare and present their own oral submissions before the ‘Examining Division’, before coming back together to hear some general feedback as to how they all did. After lunch the focus shifted to oral proceedings before the Opposition Division. The delegates were broken up into four groups, two representing the opponent and two representing the proprietor. In the groups the delegates used the materials they had been provided with previously to prepare their cases. Two sets of oral proceedings were then heard simultaneously, which gave every delegate an opportunity to speak, each being focused on a particular issue such as admissibility, novelty and inventive step. After the Opposition Divisions had reached their respective (different!) decisions the delegates were then brought back together for general feedback on the oral submissions before a Q&A session at the end. All in all it was a very enjoyable and worthwhile day packed full of helpful advice, the most important of which being to always make sure you have your pink highlighter pen to hand! Many thanks to course leader Andrea Brewster and all of the tutors for giving up their time. Alicia Instone (Fellow)
Booking seminars and webinars online CIPA is encouraging members to use online booking for CIPA webinars / seminars in order to operate more efficiently. All members are encouraged to use the "Book me on Event" button at the foot of each events page. Credit/debit card payments are preferred, although members can request payment on invoice when booking online if they cannot pay right away. See the events listings for more details: www.cipa.org.uk/members/multievents/layout5.asp.
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Education & CPD seminars Patents Case Law Report of CIPA’s patents case law CPD seminar, Manchester, Monday 1 December 2014. This seminar was also held in London and Bristol. The 2014 Manchester Patents Case Law Seminar opened with a round-up of UK court decisions by Jon Markham. As well as the Supreme Court decision in Les Laboratoires Servier v Apotex Inc et al, Jon managed to cover decisions relating to obviousness, construction, added matter, priority, employee compensation, negligence and computer-implemented inventions. A detailed description is beyond the scope of this summary! However, to give a brief “taster”, we heard about: an unusual obviousness argument (Teva v LEO [2014] EWHC 3096 (Pat)); the identity of the skilled person for assessing Swiss type claims (Actavis v Lilly [2014] EWHC 1511 (Pat)); and a plausibility requirement in a test for priority (Hospira v Genentec [2014] EWHC 1094 (Pat)). The second half of the first session was also devoted to patent decisions in the UK, this time by the IPO, as James Porter took us through a birds-eye view of ex parte and inter partes decisions of the last year. Unsurprisingly, the majority of the ex parte decisions dealt with the issue of excluded subject-matter, though sufficiency also came up this year. In his summary, James stressed the importance of identifying the “contribution of the invention” as this can be key to the outcome of a case when assessing excluded matter (Gene Onyx Ltd, BL O/435/14 and Toshiba Research Ltd, BLO/453/14). He also took time to discuss the outcome of applications for SPCs for devices, drawing attention to the difficulties faced by applicants who are obliged to find approval for their product via the Medical Devices Directive, but who then encounter difficulties when applying for SPC protection. The second part of James’ presentation related to inter partes decisions. Of these, the discussion of instances in which the Comptroller may “decline to deal” (and some rare audience participation!) provided a lively end to the first half of the seminar and prelude to a coffee break. Following the break, Ewan Nettleton and Dominic Adair provided an update on EPO case law. Ewan took us through some important developments over the past year in decisions relating to patentability, highlighting in particular decisions T1780/12 and T0879/12 both dealing with the allowability of Swiss type and EPC 2000 type medical use claims in parent and divisional applications. He also updated us with recent EPO cases relating to human embryonic stem cells and essentially biological processes, including a recent decision (T1729/06 – Seedless Watermelons) in which the claims escaped the “essentially biological process” exclusion. Procedural developments were dealt with by Dominic in a rapid summary of what he described as a busy year in this area. Brief reference was made to the Enlarged Board of Appeal referral G3/14, questioning what constitutes a “claim amendment” which needs to be fully examined by an Opposition Division or Technical Board of Appeal. We
also heard about the G1/11 decision, holding that an appeal of an Examining Division decision refusing to refund search fees should be heard by a Technical Board of Appeal. Away from the Enlarged Board, Dominic took us through the T1843/09 decision which appears to expand the equity exception to the principle of prohibition of reformatio in peius, and finished up with a number of bite size references to other interesting decisions. These included T2522/10, in which the Board of Appeal refused to exclude from the public file confidential annexes to an Appeal Notice, and T1961/13, holding that dates on Google search results are not conclusive evidence of a document being made publicly available. The seminar was brought to a close by Leytham Wall, who, bravely standing in for Anthony Tridico, took us through the year in US case law. Once again, the US Supreme Court has been busy in the patent arena, issuing decisions dealing with inter alia, standards for indefiniteness (the “insolubly ambiguous” standard), joint infringement, and patentable subject-matter. At the Federal Court level, Leytham alerted us to a finding that the obviousness type double patenting rejection “works both ways” (Gilead Scis. Inc. v Natco Pharma Ltd., No 2013-1418). In other words a later-issued, but earlier-expiring patent can still invalidate an earlier-issued, later-expiring patent under the obviousness type double patenting provisions. The session finished with a round-up of news from the USPTO Patent Trial and Appeal Board, including a comparison of the inter partes review (IPR), post grant review (PGR) and covered business method (CBM) provisions. Leytham highlighted in particular the Liberty Mutual Ins. Co. v Progressive Casualty Ins. Co. decision, confirming that only one claim of a patent needs to be a CBM for the entire patent to be eligible for a CBM review, and suggested that this could be usefully exploited in some cases. The seminar was brought to a close by the chairman, who offered our thanks and appreciation, echoed here, to all of the speakers for bringing us a much-appreciated, concise and helpful summary of the year in patent law. Karen Russell (Fellow)
Missed a CIPA seminar or webinar? You can search the archive online and buy recordings of most CIPA seminars and webinars that you have missed. Prices from £36. See www.cipa.org.uk/pages/Webinarrecordings-for-sale; or email cpd@cipa.org.uk.
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Education & CPD seminars Intellectual Property Enterprise Court – Use your rights! Tuesday 9 June 2015 at CIPA, 95 Chancery Lane London WC2A 1DT and Thursday 25 June – Saturday 27 June 2015 at Missenden Abbey, Great Missenden, Bucks HP16 0BD With the growing popularity of the IPEC amongst SMEs, and its EPO-like procedures, patent attorneys are starting to take the opportunity to offer competitive litigation services. The aim of this course is to provide experienced patent attorneys (3+ years PQE) with an understanding of the procedures of the court by running a patent case study from issue to trial. This course, which was run successfully in 2011 and 2012, will give you the tools to conduct proceedings in IPEC, either alone or with a barrister – or at the very least give you the confidence to look after your client through the litigation process. This time, we also hope to provide direct experience of the IPEC in action by arranging for at least some attendees to act as marshals in the court after they complete the course. The course starts with an introductory day at CIPA Hall followed by a residential “long weekend” (Thursday lunch time to mid-Saturday pm). This takes place at conveniently situated Missenden Abbey, in the Chiltern Hills. Much of the time will be spent in groups of four or five working on the case study, under the supervision of a tutor. There will also be plenary sessions dealing with procedural law, case management and practical aspects of running a case and preparing for trial. There is nothing like a “long weekend” course, with hands-on experience for delivering the required levels of competency and confidence to act.
Session 1 (non-residential) Tuesday 9 June 2015 – CIPA, London Introductory day: Reading into the case study. Plenary sessions on getting started. Preparation of initial statements of case.
Session 2 (residential) Thursday 25 to Saturday 27 June 2015 – Missenden Abbey, Bucks: Preparation for the case management conference. Plenary sessions on getting the case to trial, including disclosure and evidence. Preparation of skeleton arguments. Trial (including cross-examination of expert witnesses). Judgment. Feedback. The course leaders are Vicki Salmon (IP Asset) and Richard Davis (Hogarth Chambers). The other tutors will be IP barristers, solicitors or PALs. There will be a guest speaker at the introductory day on Tuesday 9 June 2015 (the PCC/IPEC judge in previous years). The course is designed for Fellows of CIPA, but there are a limited number of places available for solicitors and barristers. The course is limited to 30 delegates, to ensure that everyone gets the opportunity for hands-on learning. Please book early to avoid disappointment! The cost of the course includes accommodation at Missenden Abbey together with meals. CPD: 16+ hours Cost: Members: £1,560 (£1300+VAT), Non-Members: £1920 (£1600+VAT) Please e-mail cpd@cipa.org.uk to register your interest.
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REUTERS/Luke MacGregor
YOUR PATENTS QUESTIONS ANSWERED CIPA GUIDE TO THE PATENTS ACTS NEW 2 ND SUPPLEMENT
Chartered Institute of Patent Attorneys (CIPA) Editor: Paul Cole, Lucas & Co Consultant Editor: Stephen Jones, Baker & McKenzie
The second supplement publishes September 2014 7th Edition and 2nd Supplement, Hardback and Paperback ISBN: 9780414024632 Price: £425 2nd Supplement only, Paperback ISBN: 9780414034570 Price: £110 2nd Supplement only, eBook
Visit: sweetandmaxwell.co.uk to find out more and place your order
SWEET & MAXWELL
ISBN: 9780414034686 Price: £110 (+ £22 VAT = £132)
CoverA3-Dec-2014_Layout 1 22/12/2014 10:19 Page 1
C I PA
Journal
incorporating the transactions of the Chartered Institute of Patent Attorneys
CEO’s report: what’s in a Fellow and more? Reflections on the Boards of Appeal – and arguments that do not work
PATENTS TRADE MARKS DESIGNS COPYRIGHT
Out for the count? Patent Box reforms Checking up on licensees: an audit clause too far? USA update: – Low down on foreign TMs: are they really used? – Life after a final rejection – More on challenging weak patents: • Versata & CBM reviews? • Branded drugs survive the PTAB A short history of the UP and the UPC
December 2014 w Volume 43 w Number 12