CIPA Journal, January-February 2017 by CIPA Journal

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

January-February 2017 / Volume 46 / Number 1-2

What happens next? Charting a course to make the UPC a success

The Chartered Institute of Patent Attorneys

Cost control in IPEC – Part 36 offers Andrew Clay

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Appeals in IP litigation in England & Wales and Germany

US update: AIA; quality patents; double patenting Finnegan

CPD reports: Life Sciences; Uniﬁed Patent Court

The not-so-secret diary of a CIPA President Andrea Brewster

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CIPA CONTACTS

Editor Editorial Panel

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

Tony Rollins President

Stephen Jones Vice-President

Andrea Brewster Immediate Past-President

Chris Mercer Honorary Secretary

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

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Contents 16-25 26

UP FRONT

ARTICLES

EDUCATION

UPC – Past, Present and Future

46 47

Institute events Life Sciences Conference

Editorial

Tony Rollins 3

Chief Executive Report

Andrew Clay 14

Lee Davies 3

Council Minutes

Cost control in IPEC UPC – UK ratification

Alan Johnson 16

Lee Davies

Alexis Harper

Jonathan Myers

AIA health check

Finnegan 19

Quality Patents

Finnegan

PERSONAL

NEWS

Double Patenting

UPC ratification by the UK

Litigation appeals

49 49

International Liaison Committee – Asia 2016

Andrew Bowler, Emma Muncey, Georg Rauh

Finnegan Vicki Salmon

Richard Mair 8

CIPA in Japan CIPA in the US

DECISIONS 29

Tony Rollins 9

IPO press release

Overseas Report

EQEs

Amanda R. Gladwin

The not-so-secret diary

New year message

Going Remote

Alasdair Poore Heather Lane

Patent decisions

Beck Greener

UK signals green light to UPC Agreement

Ben Charig Andrea Brewster

Tony Rollins 9

Announcements Informals: “Thank You”

Obituary

IPO decisions

Barker Brettell EPO decisions

THE PINKS

Bristows 37

Trade marks and other IP

Bird & Bird

55 57

Courses and events Recruitment

Registration of professional training and activities

Volume 46, number 1-2

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UK ratification of the UPC

Dr Tony Rollins, President

his month sees the publication of an article on the UPC by Alan Johnson and a statement from the chair of CIPA’s Litigation Committee (pages 14 and 6). CIPA’s position on the UK’s future in the Unitary Patent and the UPC has been strong and consistent: CIPA supports the ratification of the UPC Agreement with the UK’s continuing participation in the Unitary Patent and UPC post-Brexit. Now that the formert Minister for Energy and Intellectual Property, Baroness Neville-Rolfe, has signalled that the UK government will continue its work to ratify the UPC Agreement, we will turn our attention to ensuring we make the most out of the new system whilst the UK remains a member of the EU and to secure the UK’s continuing participation

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in whatever the new landscape looks like when the UK leaves the EU. CIPA members will appreciate that the politics of Brexit are complicated and Baroness Neville-Rolfe has worked hard to ensure that the UPC can come into being with the UK as a full partner. The decision to press on with ratification at a time when the UK is preparing to leave the EU would have been a difficult one to take, not least because the public and the media cannot often distinguish between international collaboration in Europe in areas such as patent law harmonisation and the European Union. However, other countries were pushing for the UPC to go ahead without the UK had the government not signalled its determination to bring the UPC into being. There is significant support for

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the UK’s participation post-Brexit from the other UPC members and it should be easier to ensure our continued presence within the system if we are part of it from the start. At its meeting on 7 December, CIPA Council agreed to set up a working group to look into the options for ensuring that the UK can participate fully in the UPC and UP post-Brexit. A number of possible models have already been proposed and the group will look at the pros and cons associated with these and then report back to Council in the New Year. t

Baroness Neville-Rolfe DBE CMG was appointed Commercial Secretary to the Treasury on 21 December 2016, and was previously Minister of State at the Department for Business, Energy and Industrial Strategy.

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NEWS

COUNCIL

Chief Executive’s report Bye-laws A long overdue update on the Bye-laws. Following a few amendments, we are in the position where we can send a final draft to the Privy Council, with a view to organising a Special General Meeting in the first quarter of 2017. One of the last pieces of the jigsaw was how CIPA incorporates patent administrators into membership. Having provide a qualification for administrators for a number of years, Council thought that the time was right to develop a membership structure for those who provide much needed support to the patent attorney profession. Following consultation and deliberation, Council agreed to retain the ‘Paralegal Member’ membership category, introduced in the original draft of the Bye-laws, for those who have completed the Certificate in Patent Administration and to allow use of the title Intellectual Property Paralegal (or IP Paralegal). Once the Bye-laws are approved by the membership at a Special General Meeting, we can begin the task of ensuring that we offer an attractive range of benefits and services for Paralegal Members. This will include a dedicated CPD programme to

allow Paralegal Members to remain in good professional standing.

Regulation At its November meeting, Council was disappointed to hear that Caroline Corby had stood down from her role as Chair of IPReg for personal reasons, having been appointed in April 2016. IPReg Board member Steve Gregory has taken on the mantle of Acting Chair until such time as the IPReg Board is able to make a decision about the recruitment of a new Chair. We very much look forward to working with Steve on issues of mutual concern, including the provision of litigation certificates to enable UK patent attorneys to secure rights of representation before the UPC.

Congress 2017 An early date for your diary. The next CIPA Congress will be held on Thursday 22 September 2017, in London. The Congress Steering Committee has commenced its work organising the programme, which will follow the successful format adopted for the 2016 Congress. Confirmed keynote speakers include Benoît Battistelli, President of the

European Patent Office, and Sir Michael Pitt, Chairman of the Legal Services Board. The Congress Steering Committee is always on the lookout for new ideas and would welcome input from members, including members who would like to join the Committee.

New Members’ Induction Day One of my personal highlights of the year is the New Members’ Induction Day, aimed primarily at new student members to welcome them to CIPA and offer then an insight into what is in store. We held two induction days at the end of November and the beginning of December and huge thanks go to Immediate Past President, Andrea Brewster, for organising the events and providing great inspiration to our new student members. For me, one of the most interesting sessions during the day is the focus on membership of CIPA and what student members want by way of support from their professional body. There are always ideas aplenty and I hope to see some of these materialise into tangible benefits for students in the future. Lee Davies, Chief Executive

Council Minutes Minutes of the Council meeting held on Wednesday 5 October 2016 at 14:30. Item 1: Welcome and apologies Present: A.J. Rollins (President, in the Chair), S.F. Jones (Vice-President), R.J. Burt (by phone), P.G. Cole, S. Ferrara (by phone), J.A. Florence, G.J. Iceton (by phone), J.T. Jackson, R.P. Jackson, A. Mukherjee, B.N.C. Ouzman (by phone), A.D. Poore, T.W. Roberts and V.B. Volume 46, number 1-2

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Salmon (by phone). Lee Davies (Chief Executive) and Neil Lampert (Head of Media and PR) were in attendance. Apologies: A.R. Brewster (Immediate Past President), R. Ackroyd, J.P. Asquith, J.D. Brown, C.P. Mercer (Honorary Secretary), M.P. Dixon, C.M. Hammer, S.

Harte, A.C. Instone, R.D. Mair, G.V. Roberts and S.M. Wright.

Item 2: Minutes 251/16: The Minutes of the meeting held on Wednesday 7 September, 2016, were approved, following amendment of minute 239/16 to record that Council had

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NEWS

given the Patents Committee the power to act on its behalf in responding to the EPO’s proposals for the online payment of fees. Council approved the following amendment to minute 227/16 from the meeting held on Wednesday 3 August, 2016. Original minute 227/16 Council asked Richard Mair, as Chair of the International Liaison Committee, to revisit the proposal to include a trade mark attorney who is not a Fellow of CIPA as an official delegate for overseas visits. Council took the view that, whilst it was acceptable to have non-Fellows included in delegations as guests, those formally representing the Institute should be Fellows. Amended minute 227/17 Council considered a proposal from the International Liaison Committee for a trade mark attorney, who is an Associate Member of CIPA, to become a full member of the Committee and to represent CIPA on overseas visits. A number of Council members expressed concerns that this suggested that CIPA did not have sufficient trade mark expertise among the Fellows on the Committee, whilst others took the view that Associate Members bring additional skills and experience and should be encouraged to be active in representing the Institute. In the absence of a clear decision, Council asked the Chair of the International Liaison Committee, Richard Mair, to ask the Committee to reconsider the proposal and present it to a future Council meeting.

Item 3: Conflicts of interest 252/16: Tim Roberts asked if being in receipt of a pension from a previous employer with an interest in plant breeding rights placed him in a position of conflict when such matters were discussed. Council decided that there was no conflict of interest. Council determined that members of Council who were based in industry and/or who were connected with the IP Federation were 4

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not in a position of conflict in relation to discussions about Brexit.

Item 4: Brexit 253/16: Stephen Jones updated Council on the recent meeting with the German Patentanwaltskammer, where he, Chris Mercer, Tim Jackson and Lee Davies represented CIPA. Stephen said that the representatives of the Patentanwaltskammer were seemingly well informed on the legal issues relating to CIPA’s position on the UPC, even before the publication of Counsel’s opinion. The Patentanwaltskammer’s position was closely aligned to CIPA’s and was supportive of the UPC coming into being with the UK’s full participation post-Brexit. It was clear that the Patentanwaltskammer did not want to lose the momentum which existed and, if the UK was not soon in a position to deposit its deed of ratification, was exploring options including the renegotiation of the UPC Agreement to allow ratification to take place without the UK. Tony Rollins said that Counsel’s opinion provided the degree of legal certainty required, though Council might like to consider further questions to put to Counsel. Tony added that the matter was now largely a political one, in particular the degree to which there was likely to be any appetite on the part of the UK government to accept the primacy of EU law and the role of the CJEU in the UPC. Vicki Salmon advised Council that she was liaising with the IP Federation and with the Intellectual Property Lawyers' Association (IPLA) on additional questions for Counsel and that she would be happy to receive thoughts from Council members on what those questions should be. Tony informed Council that, during his presentation to the Global Network of Intellectual Property Practitioner Associations in Madrid, he had mainly taken questions from the German delegates in attendance at the conference. Tony added that he and Lee Davies had recently attended a meeting of the

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Intellectual Property Practice Directors’ Group (IPPDG) and that the large firms represented on that group were appreciative of CIPA’s support but wanted to know what more CIPA could do to help them reach out to clients and overseas associates to reinforce the ‘business as usual’ message. Neil Lampert advised Council that, following consideration by the Patents Committee, a tender document had been sent to a small number of leading research agencies, regarding conducting economic research on the impact of Brexit on the UK IP system. Neil added that the Media and PR Committee was considering how best to communicate with MPs, peers and other key influencers to ensure that CIPA’s message is heard. Neil said that Tony Rollins had written to the Federation of Small Businesses and the British Chambers of Commerce setting out CIPA’s position on the Unitary Patent and the UPC. Neil advised Council that he was liaising with Catriona Hammer on a survey of members on their use of the IPEC.

Item 5: Promoting the professions abroad 254/16: Neil Lampert advised Council that the promoting the professions abroad group had not met since the last meeting of Council but that preparation of marketing materials was well advanced.

Item 6: Regulatory issues 255/16: Council noted the Legal Services Board’s document outlining its vision for regulatory reform and asked the Regulatory Affairs Committee to monitor developments and act on behalf of Council if a response is required Action: Lee Davies to raise the LSB’s position on regulatory reform and what the LSB expects by way of a response from CIPA at his next meeting with the chief executive of the LSB. 256/16: Council noted the response from IPReg following the letter from Lee Davies to Ann Wright setting out the www.cipa.org.uk

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NEWS

Regulatory Affairs Committee’s concerns about IPReg’s response to a complainant and the response from IPReg to a letter from Tony Rollins setting out the wider concerns raised by the Committee. Council was disappointed by the line taken by IPReg, particularly on concerns raised about the maintenance and accuracy of the statutory Register, and advised Tony Rollins to write to the Chair of IPReg, Caroline Corby, seeking a meeting outside the Approved Regulators’ Forum (ARF) to address these concerns. Action: Lee Davies to draft a letter from Tony Rollins to Caroline Corby, assuring IPReg that CIPA is not attempting to interfere in the regulatory process and that Council has concerns about the management of the Register of Patent Attorneys. 257/16: Council noted the response to IPReg’s consultation on its business plan and budget consultation prepared by the Regulatory Affairs Committee and submitted to Ann Wright by Lee Davies.

Item 7: Unitary Patent and UPC 258/16: The Unitary Patent and UPC were discussed under item 4.

Item 8: IPO and EPO matters 259/16: Tony Rollins advised Council that he, Tim Jackson, Chris Mercer, Vicki Salmon and Lee Davies were due to meet with EPO President Benoît Battistelli and senior staff of the EPO on 19 October 2016, in Munich. Tony said the meeting would start with presentations on the work of the European Patent Academy and the EPO’s academic research programme and then move into discussions about harmonisation, the Boards of Appeal and Brexit.

Item 9: Committees and committee reports 260/16: Congress Steering Committee Alasdair Poore advised Council that the Committee had not met since Volume 46, number 1-2

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Congress had taken place and that he had written to members of the Committee asking for feedback on how well each session had gone. 261/16: Patents Committee Tim Jackson informed Council that much of the Committee’s time had been taken up with conversations about Brexit. Tim said that the Committee had considered President Battistelli’s plans to move the Boards of Appeal to Haar, an eastern suburb of Munich. The Committee concluded that it could not oppose the move on the grounds of geography alone, but was concerned about the cost implications and whether or not the new facility had the resources required for the Boards of Appeal to operate efficiently. Tim added that the Committee was also concerned that attorneys from the UK who travel to Munich for hearings may be placed at a disadvantage. Tim Jackson alerted Council to a consultation by the USPTO on examiner access to the Global Dossier. Council granted the Committee the power to act on its behalf to submit a consultation response by the end of October. Tony Rollins said that he would raise the Global Dossier at the meeting with the EPO and also in his meeting with Michelle Lee of the USPTO when in the United States for the AIPLA annual meeting. 262/16: Education and Professional Standards Committee Council noted the report from the Education and Professional Standards Committee. 263/16: Pro Bono Sub-Committee Council was advised that the IP Pro Bono initiative would be launched on 17 October 2016 at an event hosted by Baroness Neville-Rolfe and His Honour Judge Hacon, venue to be confirmed. Council members were asked to forward any suggestions for invitations to Gary McFly.

264/16: Litigation Committee Council noted the report from the Litigation Committee. 265/16: Designs and Copyright Committee Council noted the report from the Designs and Copyright Committee.

Item 10: Officers’ reports 266/16: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 267/16: Council noted the Chief Executive’s report.

Item 12: Applications for election 268/16: Fellows Council approved the following first time Fellow applications: Young-In Timothy Kim; Steven Peter Pediani; Anton Martyn Roman Baker; Timothy Young. Council approved the following second time Fellow applications: Kirwin Lee; Alistair George Alan HolzhauerBarrie; Catrin Petty; Ritchie Lewis Daniel; Sebastian Mooser; Rachel Sarah Mercer; Edward Osmond Leslie. 269/16: Associate Members Council approved the following first time Associate Membership applications: Richard Andrew Roberts; Oliver Laing; Nick McDonald; Andrea Allcock. Council approved the following second time Associate membership application: Tim Mount. 270/16: Students Council approved the following Student Membership applications: Rebecca Kate Blundell; William Okell; Kimberley Timmins; Peter Youle; Parvathy Nair; Liam O'Connor; Khushbu Solanki; Lucy Coe; James Peter Lovett; Suzu Sato.

Item 13: Resignations, etc 271/16: Council noted the report on resignations.

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Item 14: Any other business 272/16: Council approved the response to the draft guidance document for the plant breeding sector prepared by Tim Roberts on behalf of the Life Sciences Committee. Alasdair Poore said that he would review the document for publication in the Journal. [See November [2016] CIPA 15.] 273/16: Council asked the Trade Marks Committee to consider the application by CPA Global to file a trade mark application. 274/16: Council agreed to amend the draft Bye-laws to read: ‘The quorum for a Council meeting shall be five members of Council’.

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Council decided to retain the current wording of the draft Bye-laws, stating that: ‘Council shall comprise the President, the Vice-President, the Immediate Past President and 24 ordinary members’. Tony Rollins advised Council that at the meeting with the IPPDG, concerns had been expressed about the use of the term ‘paralegal’ as a category of membership with regard to patent administrators. Council recognised that the use of the term could cause difficulties as it is not widely used by firms or industrial departments and asked Lee Davies to provide a revised version of the membership categories for consideration.

Action: Lee Davies to review the categories of membership in the Byelaws and propose an alternative to the use of the term paralegal. 275/16: Alasdair Poore alerted Council to the European Commission’s consultation on the EUIPO draft implementing regulation and Council granted the Trade Marks Committee the power to act on its behalf.

Item 15: Date of next meeting 276/16: Wednesday 2 November, 2016.

The President closed the meeting at 17:17 Lee Davies, Chief Executive

UPC ratification by the UK What happens next? In order for the UK to ratify the

was agreed in June 2016 – for

these will be laid in the separate

UPC Agreement, the UK must first

details see here https://www.

parliaments early next year.

amend its legislation so that the

unified-patent-court.org/news/

They are expecting them to be

new agreement can be brought

protocol-privileges-and-immunities.

debated in committee, not by the

into effect and then deposit an

This will be implemented by

whole parliament. Once these

instrument of ratification.

secondary legislation. The

have passed and the Protocol on

Statutory Instrument needs to pass

Privileges and Immunities has been

the Patents Act has already been

by affirmation, rather than pass

laid in Parliament for 21 sitting

passed and is waiting to be

because there are no objections

days, the UK will be ready to ratify.

brought into force. A copy of the

raised. In this case, one SI needs

The Foreign and Commonwealth

Unified Patent Court Agreement

to be introduced to Parliament in

Office prepares a submission to

was laid before Parliament in July

Westminster and second needs

the Foreign Secretary and once

2013. So this part is ready.

to be introduced in the Scottish

he has signed the instrument

Parliament in Holyrood.

of ratification it will be sent to

So far the legislation to change

However, there is another

The IPO is finalising these

Protocol which needs UK legislation, this is the Protocol

documents with other relevant

on Privileges and Immunities. It

departments and expects that

Brussels and deposited. Vicki Salmon, Chair CIPA Litigation Committee

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COMMITTEE NEWS

INTERNATIONAL LIAISON

International Liaison Committee – Asia 2016 Report of the CIPA delegation to the Far East in October 2016 – Thailand, Singapore and APAA/Bali, Indonesia Bangkok, Thailand Monday, 3 October: This was the

first-ever meeting between CIPA and IPAT (the Intellectual Property Association of Thailand). IPAT had also invited the Thai National Group of APAA (Asian Patent Attorneys Association) to make it a joint event. The CIPA delegation presented a CPD seminar on a range of patent, design and trade mark subjects to IPAT and APAA members in the British Ambassador's Residence, which is within the Embassy compound. There were around 50 attendees – mainly Thai patent and trade mark attorneys, together with some Thai IP lawyers, academics, some officers of the Department of Intellectual Property (the Thai IPO), and members of the judiciary, including Mr Thammanoon Phitayaporn, Deputy Chief Justice of the Central IP and International Trade Court. Richard Mair commenced the proceedings with a presentation on CIPA and its history, role and current activities. Bobby Smithson followed with a discussion of various prosecution issues at the EPO and a talk on patents for graphical user interfaces. Then Carin Burchell gave a presentation on registered designs in the light of the Trunki case. Following the break, Tim Powell spoke about patent litigation in Europe, and the seminar was concluded by a talk on the registration of 3D trade marks in Europe by Clare Cornell. The seminar was very well received, and some interesting questions were put by attendees to the CIPA speakers, showing that the presentations were well understood by the audience. Volume 46, number 1-2

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Although IPAT had not requested a presentation on Brexit, a couple of points about that inevitably arose but the Thais quickly understood that the EPC is not affected by Brexit and were interested about the prospect of the UK remaining part of the UPC Agreement despite Brexit. The first half of the seminar was moderated by Mr Satyapon Sachdecha, President of IPAT, and the second half by Mr Rutorn Nopakun, President of the Thai APAA National Group. The British Ambassador to Thailand, His Excellency Mr Brian Davidson, was not able to attend the seminar but did come to meet the CIPA delegation during the reception.

Singapore Wednesday, 5 October: As for IPAT in Bangkok, this was the first-ever formal meeting between CIPA and the Association of Singapore Patent Attorneys (ASPA). The delegation again provided a seminar, the programme for which may be seen at www.aspa.org.sg/ events/cipa-seminar-2016/. It generally followed the seminar programme in Bangkok but included a full presentation by Bobby Smithson on Brexit and a short session on dealing with conflicts of interest by Clare Cornell.

There were about 60 attendees – mostly members of ASPA but also a WIPO representative from the WIPO Arbitration and Mediation Center and the UK IPO’s IP Attaché for South East Asia, Christabel Koh. The seminar included a lunch for the delegation together with all the seminar attendees. The seminar was greatly appreciated by the attendees – Adam Bogsch, President of ASPA, reported that: “We have received very positive feedback from our members about the interesting presentations provided by the CIPA delegates”. CIPA has been invited to return to give similar seminars in future, and ASPA has expressed a desire to work more closely with CIPA in the future. In return for ASPA’s kind reception and hospitality, the CIPA delegation entertained the ASPA Executive Committee to dinner at the wellknown Tanglin Club.

APAA meetings, Indonesia As usual at the annual conference of the Asian Patent Attorneys Association (APAA), CIPA members (including the delegation that had given seminars the previous week in Bangkok and Singapore) took the opportunity to meet up with sister IP associations

International Liaison Committee delegation, Asia October 2016 Richard Mair, ILC Chairman (Abel & Imray) Clare Cornell, ILC South East Asia Working Group Lead (Finnegan Europe LLP) Carin Burchell, ILC Member (Branded!) Tim Powell, ILC Substitute Member (Potter Clarkson LLP) Bobby Smithson, ILC Substitute Member (Appleyard Lees)

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COMMITTEE NEWS

from several countries in order to promote the UK IP profession as the optimum choice for professional representation in Europe. There was a natural focus this year on Brexit, and there were numerous opportunities to answer questions about its effect and to provide reassurance. In particular, it was surprising how many conference attendees had not understood the distinction between the EPC and the EU; there was a noticeable sense of relief on their part when that was explained to them. Taiwan: CIPA and the Taiwan Patent Attorneys Association (TWPAA) now meet for an annual lunch at APAA. This year it was the turn of TWPAA to host the event. The new President of TWPAA, Mr Justin Wu, welcomed the CIPA attendees and

INTERNATIONAL LIAISON

emphasised how much TWPAA values its friendly relationship with CIPA. He explained the depth of concern in the Taiwanese profession about Brexit, but was sure that this would not affect that relationship. In return, Richard Mair on behalf of the CIPA attendees congratulated Mr Wu on his election as President, thanked TWPAA for its generous hospitality and indicated that likewise CIPA appreciated the warmth of that relationship. He said that, while not wishing to give a lecture on Brexit, he reassured the Taiwanese attorneys present that the European patent system was not affected by Brexit and that clear legal advice had been received that it would even be possible for the UK to remain part of the UPC post-Brexit. The UK and Taiwanese attending the lunch posed afterwards for a group photograph.

Australia and New Zealand:

CIPA similarly met up as usual at APAA for drinks with the Institute of Patent and Trade Mark Attorneys of Australia (IPTA) and with the New Zealand Institute of Patent Attorneys (NZIPA). Indonesia: For the first time, CIPA

members also met with officers of the host Indonesian IP Attorneys Association (AKHKI). The meeting was arranged by Mr Kusno Hadi Kuncoro (Vice Chairman, Government Liaison and External Cooperation, AKHKI). It was agreed by those present that this would be the start of relations between AKHKI and CIPA, with the intention that further meetings between the two organisations would be arranged and associated seminars held in future. Richard Mair (Fellow), ILC Chairman

CIPA in Japan Report on CIPA’s visit to JIPA and JPAA, 13 and 14 October 2016.

aiful Kahn and Ben Lincoln of the International Liaison Committee and myself visited Tokyo on behalf of CIPA in October 2016. The purpose of the visit was to provide information and answer questions on the effect of Brexit on the European IP landscape. We met two representatives from the British Embassy and gave presentations to the Japan Intellectual Property Association (JIPA) and the Japan Intellectual Property Association (JPAA). I also gave the Brexit presentation to the IP group of Anderson Mori & Tomotsune, which is now the second largest Japanese law firm, and met with a partner of the Tokyo office of Hogan Lovells and discussed Brexit. Saiful and Ben also had separate meetings with Japanese colleagues at which Brexit was discussed. Overall, our visit and 8

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presentation were well received and generated questions and discussion. It was clear that our Japanese colleagues are interested in Brexit and wanted to learn more about it. It was not lost on them that UK patent attorneys are now about 30% cheaper than they were before the referendum! At least one firm mentioned that they had received a visit from a German attorney suggesting that they switch their work to them. Our JIPA and JPAA audiences did not appreciate that the process for granting

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a Unitary Patent will be the same as a national European patent, there simply being a box ticking exercise at the validation stage. The issues that generated most discussion were probably the UPC/ UP and TMs/designs granted by the EUIPO. We also mentioned the proposed visit in March 2017 and indicated that we hoped that Judge Hacon would visit with us. We will keep those we visited updated with our Brexit news releases and send them our paper on Brexit electronically. I heard that the Japan Patent Office is going to provide information on Brexit to Japanese companies so we will also write to them and provide our Brexit paper and suggest we meet them during our proposed visit in March. It was a worthwhile and timely visit. Tony Rollins, CIPA President www.cipa.org.uk

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COMMITTEE NEWS

INTERNATIONAL LIAISON

CIPA in the US Report on CIPA’s attendance at AIPLA Annual Meeting in Washington DC, 23-25 October 2016

tephen Jones, Vicki Salmon, Michael Williams and myself (also Simon Wright for USPTO meeting) represented CIPA at various meetings during the 2016 American Intellectual Property Law Association (AIPLA) Annual Meeting.

AIPLA visit to Europe 2017 (AIPLA Europe Committee) It was agreed that the arrangements for AIIPLA’s 2016 visit were preferable to previous years’ and that 2017 should follow the same format; being held in just one place.

our position on the UPC. In addition, Vicki reviewed progress on IP Inclusive and Stephen reported on the recent IP pro-bono launch. We also discussed the possibility of joint educational events/ materials. chairs/members that I was invited to attend. There are significant differences within the US on how to proceed. AIPLA has produced a survey on some of the key issues to clarify them and get membership support and the meeting was largely concerned with this.

Meeting with AIPLA Executive AIPLA Patent Harmonisation Committee This meeting was concerned with the B+ substantive patent law harmonisation discussions. It was a closed meeting of about 30 AIPLA board members and committee

Stephen, Michael, Vicki and I met the AIPLA Executive including the new President and Vice-Presidents. This was a useful and constructive meeting that focused heavily on Brexit. We discussed if AIPLA support would assist us with

Meeting with IPIC Michael, Stephen and I met the IPIC President. The discussions primarily concerned IPIC visiting the UK in 2017, probably in May, but we also reviewed areas of mutual interest including IPIC’ s progress on setting up a Regulator, they will probably set up an internal Regulatory body.

Meeting with Michelle Lee Michael, Stephen, Vicki, Simon Wright and myself met with the Director of the USPTO and two of her policy colleagues. The meeting was just over half an hour

UK signals green light to Unified Patent Court Agreement IPO press release – 28 November 2016. The UK Government has confirmed it is proceeding with preparations to ratify the Unified Patent Court Agreement (UPCA). This is part of the process needed to realise the Unitary Patent and Unified Patent Court. Under the new regime, businesses will be able to protect and enforce their patent rights across Europe in a more streamlined way – with a single patent and through a single patent court. The court will make it easier for British businesses to protect their ideas and inventions from being illegally copied by companies in other countries. UK Minister of State for Intellectual Property, Baroness Neville Rolfe said:

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"The new system will provide an option for businesses that need to protect their inventions across Europe. The UK has been working with partners in Europe to develop this option. As the Prime Minister has said, for as long as we are members of the EU, the UK will continue to play a full and active role. We will seek the best deal possible as we negotiate a new agreement with the European Union. We want that deal to reflect the kind of mature, cooperative relationship that close friends and allies enjoy. We want it to involve free trade, in goods and services.

We want it to give British companies the maximum freedom to trade with and operate in the Single Market – and let European businesses do the same in the UK. But the decision to proceed with ratification should not be seen as pre-empting the UK's objectives or position in the forthcoming negotiations with the EU." Following the announcement, the UK will continue with preparations for ratification over the coming months. It will be working with the Preparatory Committee to bring the UPC into operation as soon as possible.

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and focused primarily on Brexit. We also used the opportunity to review our pro-bono, IP Inclusive and educational activities. In relation to the last, I will be provided with a contact at the USPTO who is responsible for their general IP education programme, for example, Michelle mentioned in her speech to the AIPLA meeting that a Girl Guide badge that had been established for IP!

Seminars on Brexit

Conclusion

There were two sessions on Brexit, one featuring John Brunner from Carpmaels, Andreas Von Falk from Hogan Lovells and an EPO representative, which focused on the UPC, and a second session which looked at Brexit more broadly and had Tania Clark, CITMA VP, and Michael Williams as speakers and myself as moderator.

CIPA’ s involvement at this meeting was very worthwhile. We have established a good relationship with the AIPLA, both with the Executive and the Administration, that we hope to build on in the future. We also have good contacts with the USPTO, although Michelle Lee will be leaving when the new President takes office. Tony Rollins, CIPA President

Overseas report International treaties Patent Law Treaty (PLT) On 4 October 2016, the Government of the Republic of Liberia deposited its instrument of ratification of the PLT. The Treaty will enter into force, with respect to Liberia, on 4 January 2017. Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 5 October 2016, the Government of the Republic of Botswana deposited its instrument of accession to the Marrakesh Treaty. The Treaty will come into force, with respect to Botswana, on 5 January 2017. On 5 October 2016, the Government of the Democratic Socialist Republic of Sri Lanka deposited its instrument of accession to the Marrakesh Treaty. The Treaty will come into force, with respect to Sri Lanka, on 5 January 2017. On 6 October 2016, the Government of the Republic of Liberia deposited its instrument of accession to the Marrakesh Treaty. The Treaty will come into force, with respect to Liberia, on 6 January 2017. Madrid Protocol (International Registration of Marks) On 6 October 2016, the Government of Brunei Darussalam deposited its instrument of accession to the Madrid Protocol. The instrument contained a declaration in accordance with Article 5(2)(d), under Article 5(2)(b) of the Protocol, the time limit of one year to exercise the right to notify a refusal of protection referred to in Article 5(2)(a) is replaced by 18 months and under Article 5(2)(c) of the Protocol, when a refusal of protection may result from an opposition to the granting of protection, such refusal may be notified to the International Bureau after the expiry of the 18-month time limit. The Protocol will enter into force, with respect to Brunei Darussalam, on 6 January 2017.

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Beijing Treaty (Audiovisual Performances) On 10 October 2016, the Government of the Republic of El Salvador deposited its instrument of ratification of the Beijing Treaty on Audiovisual Performances. The date of entry into force of the Treaty will be notified when the required number of ratifications or accessions is reached. Convention for the Protection of producers of Phonograms On 4 November 2016, the Government of the Republic of Ghana deposited its instrument of accession to the Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms. The Convention will enter into force, with respect to Ghana, on 10 February 2017. The Hague Agreement (International Registration of Industrial Designs) On 25 November 2016, the Government of the Kingdom of Cambodia deposited its instrument of accession to the Geneva Act of the Hague Agreement. The Act will enter into force, with respect to Cambodia, on 25 February 2017.

Patents Indonesia The Indonesian Directorate of General Intellectual Property has issued a circular clarifying how the authorities will handle annuity payments for patents granted before the enactment of the new patent law on 26 August 2016. Under the new law an annuity payment is due at the beginning of the protection period rather than the end of the period. According to the circular, any unpaid annuities for patents registered before the new law must be paid according to the new rules. The circular establishes a transition period for payment between 26 August 2016 and 30 December 2016. Failure to submit an annuity payment before 30 December will result in the patent being cancelled. Dr Amanda R. Gladwin (Fellow), GSK

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Cost control in IPEC Phonographic Performance Ltd v Raymond Hagan (aka Raymond Edward Hagan) and others: did someone just open the floodgates? By Andrew Clay (Associate).

here is near universal consensus amongst contentious IP practitioners in the UK that the Intellectual Property Enterprise Court (IPEC) has been a great success over recent years. The combination of extremely able and experienced judges together with a set of rules designed to control costs have made the court the option of choice for many litigants with IP disputes where the amount of damages/profits sought is under the IPEC threshold of £0.5m1. The crown jewels of the cost-control measures in IPEC are the scale costs provisions2, which, subject to very limited exceptions3, impose two types of limit on the amount that litigants in IPEC can recover from their opponents. The first type of limit is an absolute cap on the total amount recoverable: i. for all the steps taken in the determination of a claim in relation to liability – £50,000 ii. for all the steps taken in the inquiry as to damages or account of profits – £25,000

In addition, there are also limits on the amount recoverable in relation to particular stages of the litigation process. Some examples of the maximum amounts that can be recovered in respect of certain litigation stages in IPEC are set out in the table below: Stage of claim

As anyone familiar with the costs of litigation in general and those of patent litigation in particular will be aware such costs will often represent only a relatively small fraction of the costs actually incurred by a litigant in taking such steps. Even a winning litigant in IPEC will often be materially out of pocket in relation to their own costs. IPEC has proven very reluctant to sidestep the scale costs provisions, which it could do for example on the basis that a party’s conduct amounts to an abuse of process4, tending to take the view that: (a) the costs cap is in essence the absolute bedrock of the whole IPEC system; and (b) the certainty its rigid application gives litigants is a paramount consideration.

Immovable force meets an irresistible object It was against this background that His Honour Judge Hacon delivered on 30 November 2016 his judgment in Phonographic Performance Limited v Raymond Hagan (aka Raymond Edward Hagan) t/a Lower Ground Bar and The Brent Tavern and others5 (“Phonographic Performance”). Phonographic Performance was a fairly standard copyright infringement action, albeit one with a rather colourful main defendant. Prior to obtaining judgment, the claimants had made a Part 36 offer to Mr Hagan. A Part 36 offer is, as further set out below, a special type of offer to settle a claim, the non-acceptance of which can open up the non-accepting party to, inter alia, certain significant costs sanctions. Mr Maximum amount of costs recoverable

Particulars of claim

£7,000

Defence and counterclaim

£7,000

Attendance at a case management conference

£3,500

Preparing witness statements

£6,000

Preparing for and attending trial and judgment

£16,000

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Hagan did not accept that offer, although he subsequently tried to pretend that he had. The claimants subsequently obtained a judgment against Mr Hagan, which was better than the offer they had made to him.

The Question The question before the court was therefore: should it punish Mr Hagan by applying the Part 36 costs (and other) sanctions or were its hands tied by the IPEC scale costs rules?

The Legal Background What is a Part 36 offer? A Part 36 offer is an offer that meets certain requirements6 including but not limited to: • • •

•

it is in writing; it makes it clear on its face that it is a Part 36 offer; it specifies a period of not less than 21 days (the “Relevant Period”) within which the defendant will be liable for the claimant’s costs if the offer is accepted; it states whether it relates to the whole of the claim or to part of it or to an issue that arises in it and if so to which part or issue; and it states whether it takes into account any counterclaim.

Costs signiﬁcance of a Part 36 offer If the defendant does not accept the claimant’s Part 36 offer then if the claimant subsequently obtains a judgment in its favour which is at least as advantageous to the claimant as the proposals contained in its Part 36 offer, then pursuant to CPR 36.14(3)(b)7 unless it is unjust to do so, the court will order the defendant, inter alia8, to pay the claimant its costs on the indemnity basis from the date on which the Relevant Period expired. Costs paid on the indemnity basis will often be a very substantial proportion of the winning party’s costs as if such costs are assessed by court the court will resolve any doubt which it may have as to whether the costs: (a) were reasonably incurred; and (b) were of a reasonable amount in favour of the winning party. There is no longer any requirement that such costs be proportionate.

IPEC

ii. Held that it would have been legitimate as an aid to construction to Part 36 to refer to an explanatory memorandum to certain 2013 changes made to Part 36 which made it clear that if a claimant had made a successful Part 36 offer it was not to be limited to its fixed costs but was to have its costs assessed on an indemnity basis in accordance with CPR 36.14(3)(b). The court, in Phonographic Performance, took the view that these two grounds could be applied by analogy to the tension between CPR 36.14 and the IPEC scale costs provisions and held that the former overrode the latter. Part 36 did not state that the IPEC scale costs were intended to prevail. Hacon J held therefore that neither the stage costs nor the overall costs cap applied to an award of costs under CPR 36.14(3)(b). Accordingly, the judge awarded costs on the indemnity basis from the end of the relevant period, which were not subject to the IPEC scale costs caps.

Significance Claimants The costs of taking many cases to trial in IPEC will considerably exceed the scale costs that are recoverable from the other side. A moderately heavily fought patent action could easily cost each side several hundred thousand pounds to fight. Thus the difference between potentially being able to recover a large portion of one’s costs on an indemnity basis rather than only on the IPEC scale cost basis is very significant. Phonographic Performance is likely to change the optimum strategy in IPEC litigation: savvy professional advisors are likely to ditch the standard letter before action (containing a threat to sue unless undertakings are given) in favour of a full-blown pre-action Part 36 offer. It may also be advantageous to make a number of different offers during the course of action. As the costs effects of making a Part 36 offer in IPEC can be potentially so significant, professional advisors who fail to advise their clients about the need to at least consider making a Part 36 offer early on may breach the duty of care they owe their clients and thus potentially be open to negligence claims.

What the court decided The court decided that the costs consequences of not accepting a Part 36 offer trumped the IPEC scale costs regime The court noted that Lord Dyson, in the 2016 Court of Appeal decision in Broadhurst v Tan9, which concerned the interaction between the fixed-cost regime for low-value personal injury actions and Part 36, had: i. Referred with approval to a submission from counsel that under the Part 36 scheme, where fixed costs are intended to prevail, that Part 36 says so; 12

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Defendants There is a disparity in the Part 36 regime as between the sanctions for failing to accept a claimant’s Part 36 offer and a defendant’s Part 36 offer. Whereas a claimant who beats its own offer can have its costs awarded on the indemnity basis, a claimant who fails to obtain a judgment more advantageous than a defendant’s Part 36 offer only has to pay the defendant’s costs from the date on which the relevant period expired10. It is currently an open question as to whether the defendant in such a situation is entitled only to such costs www.cipa.org.uk

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in accordance with the IPEC scale or in accordance with ordinary High Court costs principles (the so-called standard basis11). The correct view must surely be the latter as any other result would frustrate the policy objective behind Part 36, would be inconsistent with Broadhurst v Tan and would unfairly stack the IPEC costs rules in favour of claimants. On this basis, there would appear to be every reason for defendants to buy some significant costs protection in IPEC by making their own Part 36 offers. The question then becomes: what kind of offer does the defendant have to make to obtain the advantages of Part 36 and Phonographic Performance? As the defendant’s offer will have to be “at least as advantageous” as the judgment then if the claimant IP owner wins (asserted right valid and infringed) the defendant’s Part 36 offer will surely, in most cases, have had to have included, inter alia, an offer to cease infringement for it to benefit from Part 36 and Phonographic Performance. A more interesting question is whether a defendant, who for example thinks the claimant’s patent is hopelessly invalid, can buy the cost advantage of making a Part 36 offer merely by offering the claimant patentee a nominal sum (perhaps £5,000) plus his costs very early on. This may not work as IPEC, like other courts, can always refuse to award costs under CPR 36.17(3) where it considers it unjust to do so and it might well consider that such a nominal money-only offer without an offer to cease infringing the patent was not a genuine attempt to settle the action12, which should attract the Part 36 cost consequences. How the court will deal with such nominal money-only offers remains, for now at least, unclear.

Information It is inevitable that another aspect of the Part 36 regime that is likely to become a fertile battleground going forwards is going to be the information available to the person receiving the offer. This is because CPR 36.17(5)(c) provides that when a court is considering whether or not it is unjust to make an order for costs or indemnity costs under Part 36 it shall take into account “the information available to the parties at the time when the Part 36 offer was made” as well as “the conduct of the parties with regard to the giving of or refusal to give information for the purposes of enabling the offer to be made or evaluated”. Thus, lengthy requests for information are also likely to become part of the standard response to a Part 36 offer.

A forward or backward step? The entire raison d’être of Part 36 is to encourage parties in litigation to settle. His Honour Judge Hacon’s brave decision in Phonographic Performance should further that policy objective and is to be welcomed on that basis. It should make it more difficult for defendants, faced with a strong claim, to Volume 46, number 1-2

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use the hitherto near impossibility of recovering anything other than scale costs in IPEC as a bargaining tool to cut a better deal. Phonographic Performance should also provide defendants, who admit infringement and are prepared to stop but are faced with a claimant seeking a wholly unrealistic level of damages or account of profits, with a powerful tool to bring the claimant to their senses. It is unclear that the decision will help those who perhaps suffer the most as a result of IPEC’s scale costs regime – defendants, who did not chose IPEC, but have a winning case that cannot be transferred out of IPEC. If such defendants want to carry on the acts complained of it is unclear, absent some further development of the law in this area, that Part 36 can help them even after Phonographic Performance, unless they have some kind of counterclaim. At this stage it is too early to talk of floodgates having been opened. However, one thing is certain: those that practise in IPEC are going to have to become very much better acquainted with the complexities of Part 36 of the Civil Procedure Rules. Andrew Clay (Associate) is a consultant at Squire Patton Boggs in Leeds.

References 1. Set out in the Patents Country Court (Financial Limits) Order 2011. 2. Provided for in CPR 63.26(3), CPR 45.30 – 45.32 PD 63 section IV. 3. See CPR 45.30(2) and note also costs awarded at the conclusion of a hearing where a party has behaved unreasonably don’t erode the overall costs cap – see CPR 45.32. 4. CPR 45.30(2)(a). 5. [2016] EWHC 3076 (IPEC) 6. Set out in CPR 36.5. 7. This was the rule considered by the court in Phonographic Performance. The rules were changed with effect from 6 April 2015 so that the current equivalent rule is set out in CPR 36.17(4)(b). 8. There are other sanctions on the losing defendant who does not accept the claimant’s offer – see CPR 36.14(3) – but these are not considered further in this case report. 9. [2016] EWCA Civ 94 10. CPR 36.17(3)(a). 11. Under which a typical litigant would expect to recover about 65 – 75% of their legal costs from the other party. 12. See CPR 36.17(5)(e).

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UPC – UK ratification We now know that the UPC will go ahead – probably in mid to late 2017 – with the UK on board. Why was this such a surprise? In a year when we have seen a vote for Brexit and the election of President-elect Trump, surely we should have seen this coming. In this article Bristows partner, Alan Johnson (Associate), looks at why this was possible, and the path to UK ratification.

hy did we all get it so wrong? There were no opinion polls to pore over, and no bookmakers’ odds to consider, but all the signs seemed to point toward the UK refusing to ratify. Views expressed in this country included: • • • •

The UK cannot continue post-Brexit, so why would they join the system when they will have to leave again? How would they dare try to push this through Parliament? It is totally incompatible with what the PM said about Brexit. What would the Daily Mail make of it?

Abroad there was despondency too. It seemed that if the Brits would not play ball and allow the UPC to start, there was no chance that the other states would go ahead with us: • • •

We must have the UK in the system (a Nordic view especially). We would need a new treaty and re-ratification – it would take for ever. There would be too big a fight over the work of the London branch.

But as the dust settled, things changed. The first real sign came from the exchange in Parliament on 5 September, when David Davis, the Secretary of State for exiting the European Union, responded to a question on the UPC from the MP for Chesham and Amersham – is this the CIPA President’s local MP one might wonder, and if so, is it purely a coincidence that she chose to raise this topic? 14

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Mrs Cheryl Gillan … The UK was due to ratify that later this year alongside Germany and one other country. Will my right hon. Friend give businesses the undertaking that the UK will ratify this agreement before the end of this year and that we will continue to play a full part so that British businesses benefit from being able to be part of a larger unified patent authority? Mr Davis For as long as we are a member of the European Union, which by the sounds of it will be at least two years, we will meet all our obligations and we will take our responsibilities extremely seriously, including the one that my right hon. Friend has outlined. At the time the AmeriKat asked: “Does this exchange mean that the UK is going to ratify the UPC Agreement soon?” Her answer was that this was unlikely, though with the benefit of hindsight the answer was obvious – but then we all know how often novel concepts seem obvious with hindsight. More than that, one needs to look at the other factors in the equation which explain why the UK government took the decision it did. This is not just of academic interest, but also informs the debate on whether the UK government will experience any problems in the forthcoming Parliamentary process. First, it became clear that the position of the other states hardened during the months following the referendum. From a mood of despondency, there emerged a feeling that they would not be defeated by the UK. The problems of producing www.cipa.org.uk

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ARTICLE

a new treaty and re-ratification looked as if they would be circumvented by the adoption of a Protocol which would not need ratification, but mere signature. It would declare that only the two, not three, most popular states for EPs would be required to trigger the start. By the time of the UK’s announcement, the Protocol was already circulating in European capitals with a plan to sign it in February 2017. The plan was also, at least on a temporary basis, to relocate the London work of the Central Division in Paris and Munich. Hence, if the UK did not ratify, the other states really would go ahead without the UK, meaning that UK plc, and especially its legal services industry would miss out on opportunities. German patent attorneys would be able to offer a one-stop shop, and German lawyers an almost panEuropean litigation system. Second, it is not necessarily the case that the UK will have to leave the UPC on Brexit. There could be political and/or legal issues, of course. As to the political ones, if 24 hours is a long time in politics, two years is an eternity. A soft Brexit, or even a relatively hard one could perhaps contemplate CJEU jurisdiction in limited areas and could include patents. As to the legal issues, the Gordon/Pascoe opinion expresses the view that a means can be found, and other views include that little or nothing needs be done – though it is fair to say that these latter views appear particularly optimistic. (See October [2016] CIPA 16.) Third, joining the system at the outset would keep options open for the future. We can safely assume that the UK made its commitment to ratify not assuming that it would necessarily have to leave the system on Brexit. Indeed, from the political perspective, we see from the IPO’s press release announcing the decision that Baroness Neville-Rolfe is attributed as saying that: “the decision to proceed with ratification should not be seen as pre-empting the UK’s objectives in the forthcoming negotiations with the EU”. Fourth, there are clear benefits, for the UK legal market – not just London, but the entire country – in having a part of the Central Division and a local division based in London. This is qualitatively obvious but was quantified by a report commissioned by the English Law Society at the prompting of certain Intellectual Property Lawyers' Association (IPLA) firms in order to encourage David Cameron to fight for a part of the Central Division in 2012. Fifth, it is politically helpful in terms of passage of relevant legislation through Parliament that the UPC is an international court and not an EU court. The description as it being an international court is not strictly true from a legal perspective – it is more accurately categorised as a national court common to a number of states – but it is clearly not an EU court. Sixth, it is likewise helpful that it will comprise several English (and perhaps Scottish) judges. Seventh, the role of the CJEU should be fairly minor in terms of substantive law anyway – there is a real fear, of course, that early UPC case law will be dominated by jurisdictional Volume 46, number 1-2

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issues requiring CJEU interpretation of the re-cast Brussels Regulation, but that is a matter for another article. And finally, the UPCA is the phoenix of the European Patent Litigation Protocol (EPLP) and the European Patent Litigation Agreement (EPLA) for which the UK was a strong advocate even before the EU became involved in the project. It will be recalled that in 1999 the idea of an optional litigation protocol to the EPC was mooted. Although, not then supported by either France of Germany, it made good progress until the EU to some extent hijacked the process with its proposal for a Community patent and a court in which to litigate that patent and other EPs. As the Baroness has said, the UK has been pressing for this for “years and years”.

Next steps The legislative process which the UK must follow for ratification has, of course, already been largely completed with the passage of amendments to the Patents Act and approval of a Statutory Instrument (SI) to implement further changes to come into effect upon the UPC itself coming into effect, and the laying of the UPC Treaty before Parliament. The remaining procedure therefore is much more limited. It will involve, so far as Parliament is concerned, mainly the process for approval of an SI to give effect to the Immunities and Privileges Protocol which gives the UPC legal personality and privileges and immunities for its staff in the UK. The process is the so-called Affirmative Procedure involving committees in both Houses of Parliament and an equivalent committee in the Scottish Parliament. The final step is then preparation of a formal instrument of ratification, and its signature by the Foreign Secretary. The date in which it is lodged in Brussels will then complete the steps required under Article 84 UPCA to trigger commencement of the UPC. The Parliamentary part of the process might well be complete before Article 50 notice is given, with signature of the instrument to follow in April or later if the IT system (or any other practical issue) requires a short delay. If so, and provided Germany also completes its own ratification process as is expected in January or February, the UPC will start in Q3 of 2017, possibly as early as 1 July, but more likely October. This will probably leave the UPC operational for at least 18 months before Brexit. What will follow then is at this stage a matter of supposition, but is a matter to which the UK government will doubtless turn when the wider Brexit negotiations commence after Article 50 notice is given. Certainly, UK industry will justifiably press for clarity as to how to ensure the UK’s ongoing participation if politically possible, and a “plan B” in case it is not. Until then, and regardless of the long-term position, the UK professions in private practice will doubtless grasp the opportunities which the UPC provides with both hands. That we have this opportunity may have come as something of a surprise, but it is not to be missed. Alan Johnson is a partner at Bristows JANUARY-FEBRUARY 2017

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AIA health check The Federal Courts offer a five-year check-up on procedural issues in post-grant proceedings. By the Finnegan team.

ive years after the passage and signing into law of the America Invents Act (AIA) in September 20111, courts have begun to weigh-in decisively on many of the procedural nuances that the new post-grant proceedings raise. The latter half of 2016 – time enough for such issues to percolate up to the Federal Circuit en banc and even to the Supreme Court – has seen many questions put to rest, with others still to come. This article explores some of these recent procedural holdings.

Cuozzo Speed Technologies, LLC v Lee Some answers and more questions: In In re Cuozzo, a split panel of the Federal Circuit – reviewing the first inter partes review (IPR) petition ever filed – held that the appeals court lacked jurisdiction to review the Patent Trial and Appeal Board’s (PTAB’s) institution decision, even after the PTAB’s final written decision2. Moreover, the majority held that the PTAB was not obligated to use the same Phillips3 standard that district courts use for claim construction, but may use the same “broadest reasonable interpretation standard” for claim construction that the USPTO has employed for decades4. And in a 6-5 ruling, the Federal Circuit declined to review the panel decision en banc5. The Supreme Court agreed with the original panel majority, holding that despite the strong presumption in favor of judicial review, 35 U.S.C. §314(d) explicitly bars challenges to the PTAB’s decision to institute an IPR.6 The Court did not, however: “decide the precise effect of §314(d) on appeals that implicate constitutional questions, that depend on other less closely related statues, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond ‘this section7.” 16

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The Court also affirmed that the “broadest reasonable interpretation” standard was a reasonable exercise of rulemaking authority that Congress had delegated to the USPTO8. While declining to directly weigh-in on the USPTO’s handling of motions to amend claims, the Court noted that the: “opportunity to amend, together with the fact that the original application process may have presented several additional opportunities to amend the patent, means that the broadest reasonable construction standard is, as a general matter, not unfair to the patent holder in any obvious way9.”

Shaw Industries Group, Inc v Automated Creel Systems, Inc A sneak peek at IPR estoppel? In Shaw Industries Group, Inc. v Automated Creel Systems, Inc., the Federal Circuit addressed a common situation in PTAB proceedings – institution on some grounds, but not all grounds10. In particular, the PTAB did not institute review on the “Payne” reference, reasoning that the petitioner Shaw’s “Payne-based” arguments were “redundant” of other instituted grounds11. While the PTAB ultimately found some of the challenged claims unpatentable, other claims survived12. Shaw petitioned for a writ of mandamus, arguing that extraordinary relief was necessary to avoid estoppel as the Payne reference under 35 U.S.C. §315(e)13. The Federal Circuit denied mandamus relief, holding that the petitioner had not shown that such a “drastic and extraordinary” remedy was necessary14. The court noted that under §315(e), an IPR petitioner may not later assert that a “claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review15.” But this provision, the court reasoned, would not bar Shaw from raising the Payne reference in a future proceeding. www.cipa.org.uk

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US UPDATE

AIA

“Shaw did not raise – nor could it have reasonable raised – the Payne-based ground during the IPR. The plain language of the statute prohibits the application of estoppel under these circumstances16.”

true where the only issues to be considered are what the prior art discloses, whether there would have been a motivation to combine the prior art, and whether that combination would render the patented claims obvious30.”

In other words, because the Payne-based grounds of unpatentability were never actually instituted as part of the IPR, Shaw could not have raised them “during the IPR,” and thus, estoppel would not apply. Judge Reyna concurred in the result, but noted that: “[w]hether estoppel applies… is not for the Board or the PTO to decide. Nor is it for us to decide in the first instance… because the issue is not properly before us17.” According to Judge Reyna: “whether the ‘redundant’ grounds are subject to estoppel must be determined in the first instance by the district court or the US International Trade Commission18.”

After addressing the proper burden shifting framework, the Federal Circuit analyzed the Board’s decision to rectify some of the deficiencies in the petition:

In re Magnum Oil Tools Federal Circuit looks at burdens in IPR: In re Magnum Oil Tools Int’l, Ltd. presented another interesting procedural issue. In the case, McClinton Energy had filed a petition for IPR against Magnum’s US Patent No. 8,079,41319. The patent relates to fracking and a “shearable” release mechanism for a “setting tool20.” The Board instituted review based on three prior art references: Lehr, Cockrell, and Kristiansen21. The Board eventually held all claims unpatentable for obviousness on the basis of these references22. On appeal, Magnum argued that neither the petitioner nor the Board had established a prima facie basis for the rejection23. The USPTO, who had intervened in the appeal, argued that “upon institution of an IPR, the Board necessarily finds that the petitioner has demonstrated a ‘reasonable likelihood of success,’” and that this finding “operates to shift the burden of producing evidence of non-obviousness to the patentee24.” The USPTO thus implied that “the Board’s conclusion on obviousness in an IPR can be based on less than a preponderance of the evidence if the patent holder does not affirmatively disprove the grounds upon which the IPR was initiated25.” The Federal Circuit disagreed. The Federal Circuit explained that there are two distinct burdens of proof: the burden of persuasion and the burden of production26. Regarding the burden of persuasion, this burden is always on the petitioner to prove “unpatentability by a preponderance of the evidence,” 35 U.S.C. §316(e), and the burden never shifts to the patentee27. The court noted that the Supreme Court has never imposed a formal burden shifting framework28. Regarding the burden of production, where the only question is: “whether due consideration of the four Graham factors renders a claim or claims obvious, no burden shifts from the patent challenger to the patentee29… This is especially Volume 46, number 1-2

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“[W]e address the PTO’s assertion that the Board did not err in making an obviousness argument on behalf of [the petitioner] based on the primary reference Lehr because this argument ‘could have been included in a properly-drafted petition’… It is true that the entire IPR process is one designed as an ‘efficient system for challenging patents that should not have issued’. Cuozzo Speed Techs., 136 S. Ct. 2131 (quoting H.R. Rep. No. 112-98, pt. 1, at 39-40 (2011)). But it is still a system that is predicated on a petition followed by a trial in which the petitioner bears the burden of proof31. ” The Court concluded that: “the Board erred in shifting the burden of proof on obviousness in this IPR from the petitioner, McClinton, to the patent owner, Magnum32.” As a result, the Court reversed.

In re Aqua Products, Inc Federal Circuit will look en banc at burdens on motions to amend: For patent owners, the AIA’s inclusion of the ability to amend claims during post-grant proceedings was touted as a salutary feature33. But since 2012, only a handful of motions to amend have been granted by the Board34. The Federal Circuit has looked at this issue of burdens on motions to amend several times35, before and after the Supreme Court’s decision in Cuozzo, but has now resolved to settle the matter en banc. Aqua Products, Inc.’s (“Aqua”) US Patent No. 8,273,183 claims a jet-propelled pool cleaner36. A competitor, Zodiac Pool Systems, sought inter partes review of numerous claims of the ’183 patent. During the proceedings, Aqua moved under 35 U.S.C. §316(d) to amend claims 1, 8, and 20 of the ’183 patent37. Aqua explained that the substitute claims had specification support and were narrower in scope than the original claims, satisfying the statutory requirements38. Aqua further detailed why the substitute claims were patentable over the prior art relied on to institute the inter partes review. But the Board denied the motion to amend39. It held that Aqua failed to satisfy its burden of showing patentability in order to prevail on its motion40, based on its regulation governing motions practice generally: “The moving party has the burden of proof to establish that it is entitled to the requested relief41.” Aqua appealed, inter alia, the Board’s amendment procedures that require the patent owner to demonstrate that amended claims are patentable over the prior art of record. Aqua argued to the JANUARY-FEBRUARY 2017

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Federal Circuit panel42 that the statute expressly places the burden on the petitioner, including demonstrating the unpatentability of amended claims under 35 U.S.C. §316(e), which states: “In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” Aqua further argued that it had satisfied its only statutory obligation with respect to amended claims, i.e., demonstrate that the amendments do “not enlarge the scope of the claims of the patent or introduce new matter43.” The panel opinion, issued May 2016, nonetheless noted that: “Pursuant to the statutory framework, the Patent and Trademark Office (PTO) promulgated 37 C.F.R. §42.121, which allows the Board to deny a motion to amend if the amendment expands the claim scope or “does not respond to a ground of unpatentability involved in the trial.”

Notes and references

22. Id. at 1373.

1. Leahy-Smith America Invents Acts (AIA), Pub. L. No. 112-29, 125 Stat. 284 (2011).

24. Id.

2. In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268, 1273 (Fed. Cir. 2015)

26. Id. at 1375.

Because PTO regulations place the burden for any motion on the movant, see 37 C.F.R. §42.20(c), the Board has interpreted §42.121 as placing the burden on the patentee to show that the proposed amendments would make the claims patentable over the known prior art44.” The Federal Circuit panel determined that “precedent has upheld the Board’s approach of allocating to the patentee the burden of showing that its proposed amendments would overcome the art of record45.” Aqua sought en banc review on 6 June 2016, and on 12 August 2016, its petition was granted on the following questions: a. When the patent owner moves to amend its claims under 35 U.S.C. §316(d), may the PTO require the patent owner to bear the burden of persuasion, or a burden of production, regarding patentability of the amended claims as a condition of allowing them? Which burdens are permitted under 35 U.S.C. §316(e)?

23. Id. at 1374. 25. Id.

3. Phillips v AWH Corp., 415 F.3d 1303 (Fed Cir. 2005) (en banc).

27. Id. (citing Dynamic Drinkware, LLC v Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)).

4. In re Cuozzo, 793 F.3d at 1276-79.

28. Id.

5. In re Cuozzo Speed Technologies, LLC, 793 F.3d 1297 (Fed. Cir. 2015).

29. Id. at 1376.

6. Cuozzo Speed Technologies, LLC v Lee, 136 S. Ct. 2131, 2139 (2016).

31. Id. at 1380-81.

7. Id. at 2141. 8. Id. at 2142-46. 9. Id. at 2145. 10. Shaw Indus. Grp., Inc. v Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016). 11. Id. at 1296-97. 12. Id. at 1297. 13. Id. at 1299. 14. Id. 15. Id. at 1299-1300 (quoting 35 U.S.C. §315(e)). 16. Id. at 1300. 17. Id. 1304. 18. Id. 19. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1367 (Fed. Cir. 2016). 20. Id. at 1368-69. 21. Id. at 1369.

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30. Id. 32. Id. at 1381 (“Thus, while the PTO has broad authority to establish procedures for revisiting earlier-granted patents in IPRs, that authority is not so broad that it allows the PTO to raise, address, and decide unpatentability theories never presented by the petitioner and not supported by record evidence.”). 33. See Synopsys, Inc. v Mentor Graphics Corp., 814 F.3d 1309, 1326 (Fed. Cir. 2016) (Newman, J., dissenting); see also Id. at 132627, 1341-42 (discussing the “extensive policy balances in the AIA, as eventually enacted.”). 34. See Patent Trial and Appeal Board Statistics (7/31/2016), available at www.uspto.gov/sites/default/files/ documents/2016-07-31%20PTAB.pdf; PTO, Patent Trial and Appeal Board Motion to Amend Study 4 (Apr. 30, 2016), https://www.uspto.gov/sites/default/files/ documents/2016-04-30%20PTAB%20 MTA%20study.pdf.

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35. See, e.g., Microsoft Corp. v Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015); Prolitec, Inc. v ScentAir Techs., Inc., 807 F.3d 1353 (Fed. Cir. 2015); Nike, Inc. v Adidas, AG, 812 F.3d 1326 (Fed. Cir. 2016). 36. In re: Aqua Prods., 823 F.3d 1369, 1371 (Fed. Cir 2016) (vacated by the en banc order). 37. Id. at 1372. 38. See 35 U.S.C. §316(d); see also 37 C.F.R. §42.121(a)(2)(ii). 39. In re: Aqua Prods., 823 F.3d at 1372. 40. Id. 41. 37 C.F.R. §42.20. 42. Before Chief Judge Prost, circuit Judge Reyna (author), and the Honorable Leonard P. Stark, Chief District Judge, United States District Court for the District of Delaware, sitting by designation. 43. 35 U.S.C. §§316(d). 44. In re: Aqua Prods., 823 F.3d at 1373. 45. Id. (citing Microsoft Corp. v Proxyconn, Inc., 789 F.3d 1292, 1307−08 (Fed. Cir. 2015); Prolitec, Inc. v ScentAir Techs., Inc., 807 F.3d 1353, 1363 (Fed. Cir. 2015); and Nike, Inc. v Adidas, AG, 812 F.3d 1326, 1333−34 (Fed. Cir. 2016)). 46. In re Aqua Prods., 2016 U.S. App. LEXIS 14862 (Fed. Cir., Aug. 12, 2016). A pending petition for rehearing en banc raising the same issues, Prolitec, Inc. v ScentAir Technologies, 807 F.3d 1353 (Fed. Cir. 2016), was stayed by the same order pending resolution of the matter in Aqua. Id. 47. Id.

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AIA • QUALITY PATENTS

b. When the petitioner does not challenge the patentability of a proposed amended claim, or the Board thinks the challenge is inadequate, may the Board sua sponte raise patentability challenges to such a claim? If so, where would the burden of persuasion or a burden of production, lie?46 The additional briefing on these issues is now complete, and the en banc court will hear the case on 9 December 201647.

Conclusion While the Federal Circuit and Supreme Court have now addressed several important procedural issues, the courts are still in the process of deciding additional issues unique to AIA proceedings. These additional issues remain for another day. Composed on this occasion by Jason L. Romrell, Daniel C. Cooley and J. Derek McCorquindale. For more information on Finnegan or the authors of this article, please visit www. finnegan.com. Contact: anthony.tridico@finnegan.com

Quality Patents Post-Prosecution Pilot (P3) Program expands after-final rejection possibilities. By the Finnegan team.

s part of its Enhanced Patent Quality Initiative1, the United States Patent and Trademark Office (USPTO) started the post-Prosecution Pilot (P3) program on 11 July 20162. The P3 program provides applicants another option for responding to final office actions, combining the features of two of the USPTO’s other pilot programs: the After Final Consideration Pilot 2.0 (AFCP 2.0) program3 and the Pre-Appeal Brief Conference Pilot (Pre-Appeal) program4. It is scheduled to end on 11 January 2017, or whenever 1,600 requests (200 in each of the eight USPTO technology centres) are reached. This makes it a relatively short pilot program, unless the USPTO extends it, as it has done with other pilot programs. The P3 program allows an applicant with a finally rejected utility application to request a 20-minute conference with three examiners: the examiner of record for the application, the

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supervisory primary examiner (SPE) for the application, and a third primary examiner. During the conference, the applicant can discuss the arguments already in the record with the panel, assisting in the panel’s understanding of the application. The applicant may also present new arguments that were not previously in the record and may propose amendments. As with most dealings with the USPTO, any materials used by the applicant during the oral hearing will be placed in the record. After the conference, the panel provides written notification as to whether the final rejection is upheld, the application is found allowable, or if prosecution is reopened (because the arguments to the current rejections were persuasive)5. It also notifies the applicant if any proposed amendments were entered during the process. The written notification is simply a form that the panel completes; a detailed explanation of its decision is not provided6. If the final rejection is upheld, the applicant must JANUARY-FEBRUARY 2017

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take action – e.g., file a Request for Continued Examination (RCE) or file a Notice of Appeal – by the date set forth in the final rejection or by the date of the notice of the panel’s decision (whichever is later). If the panel finds the application allowable, a Notice of Allowance will issue with their decision. If the panel decides that prosecution must be reopened, a new office action withdrawing the prior rejections and presenting the new rejections will be mailed. The P3 program is free, but it must be requested within two months of the mailing date of the final rejection. The P3 program must also be requested in lieu of the applicant’s other options. A P3 request will not be accepted if the applicant has already requested consideration under the AFCP 2.0 or PreAppeal programs. Similarly, once a P3 request is accepted, the applicant cannot subsequently request consideration under the AFCP 2.0 or Pre-Appeal programs. Any response

AIA • QUALITY PATENTS

after final arguments or amendments to the claims will not be entered unless requested by the examiner. The application will automatically be withdrawn from the P3 process if the applicant files a notice of appeal or RCE before the panel makes its decision7. Applicants request the P3 program by filing a P3 request form with certifications that the application meets the P3 requirements and that the applicant is willing and available to participate in the P3 conference with the panel of examiners8. A five-page response summarizing their arguments must also be submitted with the request. Any proposed amendments must not broaden the claims and, applicants are limited to a single set of amended claims. As long as the request meets the P3 criteria, it will be accepted into the program, and the USPTO will contact the applicant to schedule the conference. The USPTO is supposed to contact the applicants within one

Notes and references 1. For more information on the USPTO programs that make up the Enhanced Patent Quality Initiative, see https://www.uspto.gov/ patent/initiatives/enhanced-patent-quality-initiative-0.

10. Post-Prosecution Pilot Program, 81 Fed. Reg. 44845, at 44848 (11 July 2016), available at https://www.gpo.gov/fdsys/pkg/ FR-2016-07-11/pdf/2016-16423.pdf.

2. Post-Prosecution Pilot Program, 81 Fed. Reg. 44845 (11 July 2016), available at https://www.gpo.gov/fdsys/pkg/FR-2016-07-11/pdf/ 2016-16423.pdf.

11. Koba, Wendy, “feedback,” 16 September 2016, available at https://www.uspto.gov/sites/default/files/documents/ p3comments_f_koba_16sep2016.pdf.

3. For more information on the AFCP 2.0 program, see Tridico Ph.D., Anthony C., Marks, Jessica L.A., Sommers Ph.D., Erin M., Designed to Streamline, January [2016] CIPA 24, available at www.finnegan. com/resources/articles/articlesdetail.aspx?news=085fb0bc-eea2-44dfbbef-940b3998ed35; and Tridico, Anthony C., Ph.D., and Mandy J. Song, Ph.D., Opportunity to Get Your Application Allowed After Final Rejection – Introducing the After Final Consideration Pilot, December [2014] CIPA 673, available at www.finnegan.com/resources/articles/ articlesdetail.aspx?news=d9b7b75b-cb17-4490-a624-285c5fd6308d.

12. USPTO Post-Prosecution Pilot (P3) PTC Examiner Training 2016, at slide 11, available at https://www.uspto.gov/sites/default/files/ documents/post-prosecution-pilot-training.pdf.

4. For more information on the Pre-Appeal program, see https://www. uspto.gov/web/offices/com/sol/og/2005/week28/patbref.htm. 5. USPTO Notice of Decision from Post-Prosecution Pilot Program (P3) Conference, Form PTO-2324, available at https://www.uspto. gov/sites/default/files/documents/PTO-2324%20Notice%20of%20 Decision%20from%20P3%20Conference.pdf. 6. USPTO Notice of Decision from Post-Prosecution Pilot Program (P3) Conference, Form PTO-2324, available at https://www.uspto. gov/sites/default/files/documents/PTO-2324%20Notice%20of%20 Decision%20from%20P3%20Conference.pdf. 7. The application will also be automatically withdrawn from the P3 program if the applicant expressly abandons the application, requests an interference, or petitions for a derivation proceeding. Post-Prosecution Pilot Program, 81 Fed. Reg. 44845, at 44849 (11 July 2016), available at https://www.gpo.gov/fdsys/pkg/FR-2016-07-11/pdf/2016-16423.pdf. 8. The P3 request form PTO/SB/444 is available at https://www.uspto. gov/sites/default/files/documents/sb0444.pdf. 9. Koba, Wendy, “feedback,” 16 Sept 2016, available at https://www.uspto. gov/sites/default/files/documents/p3comments_f_koba_16sep2016.pdf.

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13. USPTO Post-Prosecution Pilot (P3) PTC Examiner Training 2016, at slide 16, available at https://www.uspto.gov/sites/default/files/ documents/post-prosecution-pilot-training.pdf. 14. Post-Prosecution Pilot Program, 81 Fed. Reg. 44845, at 44848, available at https://www.gpo.gov/fdsys/pkg/FR-2016-07-11/pdf/2016-16423.pdf. 15. Neifeld, Rick, “Comments regarding the Post-Prosecution Pilot Program (P3 Program),” 9 July 2016, available at https://www.uspto.gov/sites/ default/files/documents/p3comments_f_rneifeld_09jul2016.pdf. 16. USPTO Post-Prosecution Pilot, available at https://www.uspto. gov/patent/initiatives/post-prosecution-pilot (indicating that as of 28 October 2016, Technology Centers 3600 and 3700 had already reached 200 requests). 17. Post Prosecution Pilot External [Survey], available at https://www.surveymonkey.com/r/Post_Prosecution_Pilot_External. 18. See Comments on the Post-Prosecution Pilot Program, available at https://www.uspto.gov/patent/laws-and-regulations/comments-public/ comments-post-prosecution-pilot-program (posting the comments submitted in response to the Federal Register Notice). 19. See, e.g., USPTO OG Notices: 7 February 2006, available at https:// www.uspto.gov/web/offices/com/sol/og/2006/week06/patexcf. htm (extending the Pre-Appeal program); USPTO After Final Consideration Pilot 2.0 webpage, available at https://www.uspto.gov/ patent/initiatives/after-final-consideration-pilot-20 (noting that the program “has been extended through 30 September 2017).

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It appears that much of the decisionmaking power is left to the examiner who initially issued the final rejections.

AIA • QUALITY PATENTS

or two weeks of filing the request, but some applicants have found that the USPTO is not that prompt9. When the applicant is contacted, however, the conference must be scheduled within ten calendar days or the application may be removed from the program10. Preliminary anecdotal evidence shows that there are some good aspects of this new pilot program. Unlike a Pre-Appeal conference, which only includes examiners, a P3 conference provides the applicant an opportunity to meet with the panel, which can be beneficial when explaining complicated technologies or legal arguments. Some participants have indicated that the conference resulted in suggested amendments to place the application in condition for allowance. Some have indicated that they were able to move applications past the “logjam situation[s]” experienced during normal prosecution11. There may also be some drawbacks. Instead of random assignment of an impartial third examiner or quality assurance specialist to the panel, the SPE and the examiner of record mutually agree upon the third examiner12. Additionally, although the panel is supposed to reach a consensus on the decision, the outcome is a “recommendation to the primary [examiner] of record,13” and only the examiner of record decides whether any proposed claim amendments are entered14. Thus, it appears that much of the decision-making power is left to the examiner who initially issued the final rejections. Furthermore, as a pilot program, some of the kinks still need to be worked out of the system. As explained in a comment submitted to the USPTO about the program, it is unclear whether amendments or additional evidence presented by the applicant during the P3 process must be accompanied by a showing of good and sufficient reasons why they were not presented earlier15. The P3 instructions refer to 37 CFR 1.116, which requires such a showing, but the remaining P3 instructions do not address it. Moreover, if showing good cause is required, it is unclear whether an applicant can provide the explanation during the panel conference or if it must be part of the written arguments, which are limited to only five pages. Despite these potential issues, the P3 program has proven popular. In fact, at least two of the eight technology centres have already reached their 200 application maximum and are no longer accepting requests16. To improve the next iteration of the program, should the USPTO extend it, the USPTO is conducting a survey of applicants who have submitted P3 requests so that it can determine the effectiveness of the program17. The USPTO is also reviewing the comments submitted in response to the Federal Register notice to the program18. These efforts indicate that the USPTO may extend this program as they have done with many of their popular pilots19. Composed on this occasion by Anthony C. Tridico Ph.D., Jessica L.A. Marks, and Erin M. Sommers Ph.D. For more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony.tridico@finnegan.com

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Double Patenting The Finnegan team outlines recent US developments in the doctrine of obviousness-type double patenting.

fter the Uruguay Round Agreements Act (URAA) (effective 8 June 1995), US patents have a patent term of 20 years measured from the filing date or the earliest-claimed priority date. The 20-year term, however, can be shortened if a terminal disclaimer is filed to overcome an obviousness-type double patenting (ODP) rejection issued by the US Patent and Trademark Office (USPTO) during prosecution, or during litigation, if patent claims are later challenged under ODP. ODP is a judicially created doctrine that is designed to prohibit a party from extending the duration of the right to exclude with claims in a later patent that are not “patentably distinct” from claims in an earlier patent. See, e.g., Eli Lilly & Co. v Barr Labs., Inc.1 ODP may exist between a reference application/patent and a challenged application/patent where there is at least one common inventor, common applicant, and/ or a common assignee/owner. See MPEP §804. ODP may also exist where the inventions claimed in the conflicting patents/ applications were made as a result of activities undertaken within the scope of a joint research agreement.2 To overcome an ODP challenge, an applicant (pre-grant) or a patentee (post-grant) can either establish that the challenged claims are “patentably distinct” from the reference claims (i.e., show that the challenged claims are not anticipated by, or would not have been obvious over, the reference claims), or file a terminal disclaimer to disclaim any portion of the 20-year statutory term of the challenged patent/application that extends beyond the expiration date of the reference patent. To file a terminal disclaimer, the reference patent and the challenged patent/application must be commonly-owned at the time of filing of the terminal disclaimer, and throughout the term of both patents3. As the Federal Circuit has explained, disclaiming patent term that extends beyond the expiration date of the reference patent prevents “unjustified timewise extension of

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the right to exclude granted by a patent,” because all claims could have been granted in a single patent, and the requirement for common ownership prevents “multiple infringement suits by different assignees asserting essentially the same patented invention.” In re Hubbell4.

Terminal disclaimer cannot cure every ODP issue While filing of a terminal disclaimer appears to be a quick solution to an ODP challenge, it has some drawbacks. A terminal disclaimer truncates the term of the entire patent based on an ODP challenge of a single claim. Moreover, while a terminal disclaimer can be filed during litigation after a finding that the challenged patent is invalid for ODP, a terminal disclaimer cannot be filed if the reference patent has already expired. Boehringer Ingelheim Int’l GmbH v Barr Labs., Inc.5 Furthermore, because common ownership is not a requirement of a proper ODP challenge, e.g., overlap in inventorship can be sufficient for an ODP challenge, a terminal disclaimer cannot be properly filed if the underlying patent is not commonly owned, as was the case in Hubbell. In Hubbell, the USPTO rejected the claims of a pending application claiming a genus for ODP over an issued patent, which claimed a species. On appeal, during prosecution, the Board affirmed the examiner and rejected Hubbell’s argument that common ownership is a requirement for ODP, reasoning that ODP applied because the issued patent and the pending application had two common inventors. On appeal to the Federal Circuit, Hubbell argued that ODP rejection should not apply where an application and a reference patent do not have identical inventive entities, were never commonly owned, and are not subject to a joint research agreement. The Federal Circuit disagreed. The Court reasoned that there was no basis for barring application of ODP in instances where the conflicting claims share only common inventors, www.cipa.org.uk

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rather than common ownership, and that implementing such an exception would create the potential for harassment of a potential infringer by multiple assignees.6 Thus, under Hubbell, conflicting patents that have at least one common inventor can be at risk for an ODP challenge, and a terminal disclaimer may not be feasible because the underlying patent is not commonly owned, and Hubbell serves as a caution to patent owners. For example, assignees should monitor the patent filings of the assignor, because unassigned patents and applications with common inventors may present unexpected ODP challenges. Additionally, ODP issues may arise if inventors move between employers.

What qualifies as an ODP reference? Soon after Hubbell, the Federal Circuit decided two additional cases – Gilead Sciences, Inc. v Natco Pharma Ltd7 and AbbVie Inc. v Mathilda & Terence Kennedy Inst. of Rheumatology Tr.8 – which significantly expanded the scope of ODP. Before Gilead, analyzing an ODP challenge focused on the issue dates of the respective patents and applications – i.e., an earlier-issued patent was used as the ODP reference for rejecting or invalidating the claims of a later-issued patent or pending application. See Eli Lilly9. In Gilead, however, the Federal Circuit held, in a split decision, that an ODP challenge must focus on the expiration date, not the issue date – i.e., a patent that issues after but expires before can qualify as an ODP reference for an earlier-issued, later-expiring patent. Gilead10. In Gilead, the patents at issue, US Patent Nos. 5,763,483 (“the ’483 patent”) and 5,952,375 (“the ’375 patent”), were issued to the same inventors and were commonly owned by Gilead, but they were not part of the same patent family and had different expiration dates11. The ’483 patent was filed after the application was filed for the ’375 patent, but it issued first and had a later expiration date (due to its later filing date)12. (The timeline is reproduced below). The ’483 patent issued during prosecution of the application for the ’375 patent

DOUBLE PATENTING

and Gilead filed a terminal disclaimer to overcome an ODP rejection based on the ’483 patent disclaiming any portion of the ’375 patent term that would extend beyond the expiration date of the ’483 patent (even though the ’483 patent had a later expiration date)13. The application that led to the ’375 patent was not used as part of an ODP rejection with respect to the ’483 patent or its underlying application. During litigation, however, the ’375 patent was the basis of an ODP challenge. Thus, the question presented in Gilead was: whether the later-issued, but earlier-expiring ’375 patent could serve as an ODP reference for the earlier-issued, later-expiring ’483 patent? The panel majority found that it could. The fact that the reference patent (i.e., the ’375 patent) issued later than the conflicting patent (i.e., the ’483 patent) was of little import to the Court. Instead, the Court concluded that expiration date (rather than issue date) was key to determining which patent is the “earlier” patent for ODP analysis. That is, the “earlier” patent is the patent that expires earlier, not the patent that was filed earlier or issued earlier, and that a later-issued patent can serve as an ODP reference for an earlier-issued but later-expiring patent14. In the US, ODP arose when patents were granted a term of 17 years from issuance, instead of the current 20 years from filing term15. In Gilead, the Court reasoned that focusing on issue date for 20-year term patents post the Uruguay Agreement(URAA) could lead to “gamesmanship during prosecution,” i.e., inventors could potentially obtain additional patent term for obvious modifications of an invention by filing multiple applications for the obvious variants, claiming priority to different applications in each, and then arranging for the application with the latest filing date to issue first16.The Court also noted the possibility for significant yet arbitrary differences in inventors’ period of exclusivity over their inventions based on prosecution delays leading to different patent issuance dates17. The Court concluded that: “[p]ermitting any earlier expiring patent to serve as a double patenting reference for a patent

Timeline of patents ‘483 and ‘375

12-27-96 ‘483 filed

2-27-95 ‘375 parent filed

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2-26-96 ‘375 filed

6-9-98 ‘483 issued

12-27-16 ‘483 expires

9-14-99 ‘375 issued

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2-27-15 ‘375 expires

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subject to the [20-year patent term of the] URAA guarantees a stable benchmark that preserves the public’s right to use the invention (and its obvious variants) that are claimed in a patent when that patent expires” and further, it “preserves the ability of inventors to use a terminal disclaimer of later-expiring patents to create one expiration date for their term of exclusivity over their inventions and obvious variants.”18 As the dissent in Gilead explained, ODP was judicially created to curtail the practice of filing successive continuations on obvious modifications, and receiving 17 years of staggered patent term for each continuation19. The dissent in Gilead further argued that the expansion of ODP to invalidate earlier-issued but later-expiring patents was unwarranted because, among other things, successive continuations do not result in any additional patent term for post-URAA patents (because patent term is based on filing date), and thus a primary motivation behind ODP is largely no longer applicable, i.e., successive patents, each with later issue dates and thus later expiration dates (as was the term for pre-URAA patents).20 Any difference in term for successive continuations results from the statutorily prescribed patent term adjustment (PTA) for USPTO delays.21 To have patents with different terms, an applicant must file separate, staggered applications (not continuations) with different priority dates. This practice of staggering patent filings was specifically addressed by the Federal Circuit in AbbVie Inc. v Mathilda & Terence Kennedy Inst. of Rheumatology Tr.22. The question presented in AbbVie was whether an applicant can choose to file separate applications for overlapping subject-matter and claim different priority dates without running afoul of ODP. The Court found it cannot. In AbbVie, the patentee, Kennedy Institute, had two separate patents. A first patent with claims to a method of treating rheumatoid arthritis (a “broad genus”) and a second patent with claims to a method of treating rheumatoid arthritis of a specific class of patients (a “narrower species”)23. The two patents had different priority dates, resulting in a six-year difference in patent term between them, with the broad genus claims expiring before the narrow genus claims24. AbbVie sought a declaratory judgment that claims of the ’442 patent were invalid over the ’766 patent for ODP. During litigation, Kennedy argued that the species of the ’442 patent was patentably distinct from the genus of the ’766 patent25. Kennedy’s claim of non-obviousness, however, rested on its theory of unexpected results for the “narrower species,” which was derived from the same study reported in the first patent directed to the “broad genus.”26 The court found that the claims of the second patent (directed to the “narrower species”) were obvious in view of the reference patent, thus rendering them invalid for ODP27. In determining the question of obviousness, the court looked to the reference patent’s disclosures of utility, and specifically stated that: “[w]e have repeatedly approved examination of the disclosed utility of the invention claimed in an earlier patent to address the question of obviousness.”28 24 CIPA JOURNAL

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DOUBLE PATENTING

The court further explained that it was making explicit what was implicit in Gilead: that ODP continues to apply, even to post-URAA patents, whenever two patents that claim the same invention have different expiration dates.29 In the court’s view, a patentee is not entitled to extra years of monopoly simply because it filed separate applications unless the claimed inventions are patentably distinct.30

Recent District Court decisions expanding the reach of Gilead Given the significant shift following Gilead, it is likely that the validity and patent term of many existing patents may be affected, particularly if the reference patent has already expired and therefore a terminal disclaimer cannot be filed to overcome the ODP challenge. But even if terminal disclaimer is available as an option to overcome an ODP challenge, patent owners should consider the potential impact on any PTA of the terminally disclaimed patent. In a recent district court case, Magna Electronics, Inc. v TRW Automotive Holdings Corp.31, the principle of ODP set out in Gilead was applied to override the statutory grant of PTA. In that case, the reference and the challenged patents belonged to the same family and had the same priority date, but the expiration dates differed because one of the patents accrued PTA while the other did not. Both patents were postURAA and were entitled to a 20-year term plus any statutory PTA. Without any PTA, both patents would have otherwise expired on the same date. The district court used the earlierexpiring patent (the patent without PTA) as an underlying ODP reference to invalidate the claims of the later-expiring patent (the patent with PTA)32. This, in effect, eliminated the statutory PTA of the “later-expiring” patent. Because this is a district court case, it is still an open question whether filing of a terminal disclaimer can override the statutory grant of PTA of the disclaimed patent. The parties in Magna Electronics subsequently settled and the ODP issue was not appealed to the Federal Circuit. We will continue to monitor this topic to see if other district courts will similarly apply ODP to PTA-adjusted term of a patent, and whether the Federal Circuit will further extend the reach of ODP to allow a judicially created doctrine to supersede the statutory grant of PTA. In another recent district court case, Janssen Biotech Inc. et al. v Celltrion Healthcare Co. Ltd. et al.33, the district court granted defendant Celltrion’s “Gilead Motion,” finding a preURAA patent invalid for ODP based on a post-URAA patent. There, both the reference and the challenged patents belonged to the same family and claimed the same earliest priority date in 1991. The challenged patent was filed in 1994, pre-URAA, and issued in 2001. Standing alone, the challenged patent would have expired in 2018 (17 years from the date of issuance). The reference patent, was filed in 2001, post-URAA, and expired in 2011 (20 years from the 1991 priority date). Patent owner Janssen did not dispute that the claims of the challenged patent www.cipa.org.uk

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were not “patentably distinct” from the claims of the reference patent34. Thus, the only question before the court was whether Gilead (using expiration dates to analyze ODP challenges for post-URAA patents) can be applied to a pre-URAA patent35. The court found that the reasoning in Gilead did apply to pre-URAA patents, and that URAA neither intended to alter the ODP doctrine nor statutorily guaranteed at least 17 years of patent term36. Citing Gilead, the court explained that if the pre-URAA patent is not invalidated, it would violate the “bedrock principle” that “when a patent expires, the public is free to use not only the same invention claimed in the expired patent but also obvious or patentably indistinct modifications of that invention.”37 The court further explained that the patent owner knowingly took a risk when it applied for and obtained the (later-filed) reference patent because the ODP doctrine was well-established at that time38.

Strategies to consider by patent owners Given the Magna Electronics decision and the possibility that other district courts may follow the same approach, patent owners should carefully consider how best to address an ODP challenge, whether during prosecution or litigation, i.e., distinguish the conflicting claims on the merits or file terminal disclaimer. Indeed, additional consideration should be given if one (or more) patents at risk for an ODP challenge has significant PTA. Patent owners should also weigh the pros and cons of pursuing narrower claims (e.g., to species or specific embodiments) and broader claims (e.g., to a genus) in separate applications. This is a relatively familiar practice39, but the broader claims may be at risk for an ODP challenge based on the narrower claims. Because it is likely that the narrower claims may be granted before the broader claims and the narrower claims are likely to receive less (or no PTA) compared to the broader claims, application of the narrower claims against the broader claims may eliminate any PTA

Notes and references 1. 2. 3. 4. 5. 6. 7. 8. 9. 10. 11. 12. 13. 14.

251 F.3d 955, 967 (Fed. Cir. 2001) Id. 37 C.F.R. §1.321(c)(3) 709 F.3d 1140, 1145 (Fed. Cir. 2013) 592 F.3d 1340, 1347 (Fed. Cir. 2010) Id. at 1146-47 753 F.3d 1208 (Fed. Cir. 2014) 764 F.3d 1366 (Fed. Cir. 2014) 251 F.3d at 968, 974-75 753 F.3d at 1215, 1217. Id. at 1210. Id. Id. Id. at 1215

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15. 16. 17. 18. 19. 20. 21.

22. 23. 24. 25. 26. 27.

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available to the broader claims. Two strategies might help. First, applicants should consider filing multiple claims in a single application in the likely event that the USPTO will issue a restriction requirement identifying different embodiments as patentably distinct from others. If so, applicants can take advantage of the “safe harbor” provision of 35 U.S.C. §121. This provides that a patent issued on a divisional application that was filed as a result of a restriction requirement in the parent application is immune from ODP challenge based on the patent. But see Pfizer, Inc. v Teva Pharmaceuticals USA, Inc.40 (finding that the safe harbor protection of §121 applies only to a divisional application filed as a result of a restriction requirement, and not to other types of continuing applications). Second, applicants should consider filing strategies for pursing narrow and broad claims in separate applications. One possibility is to file narrow claims in the first patent of a family, and pursue broader claims in a subsequent continuation. The first filed application in a family, usually receives the largest PTA of any patent in that family. Pursuing narrow claims in the first (parent) application may safeguard any PTA-extended term of the parent, because the second (continuation) application may not be applicable as an ODP reference against the parent because those broader claims may not anticipate or render obvious the narrower claims. The growing body of precedent described here holds many lessons regarding ODP for both patent challengers and patent owners. We will continue to monitor this area of patent law and watch how the Federal Circuit will apply its recent holdings in Gilead and AbbVie to other cases, in particular, those ODP challenges directly dealing with PTA. Composed on this occasion by Timothy P. McAnulty and Arpita Bhattacharyya. For more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony.tridico@finnegan.com.

See id. at 1217-18 (Rader, C.J., dissenting) Id. Id. at 1215-16 Id. at 1216 See Id. at 1217-18 (Rader, C.J., dissenting) Id. at 1218 PTA is a statutory grant of additional patent term due to USPTO delays in prosecution. 37 C.F.R. § 1.703. 764 F.3d 1366 (Fed. Cir. 2014) AbbVie, 764 F.3d at 1371-72 Id. at 1370-71 Id. at 1379 Id. at 1380 Id.

28. 29. 30. 31. 32. 33. 34. 35. 36. 37. 38. 39. 40.

Id. Id. at 1374 Id. No. 1:12-cv-654 (W.D. Mich., 10 December 2015) Id., slip op., at *5 No. 1:15-cv-10698 (D. Mass. 28 September 2016) Id., slip op., at *2 Id., slip op., at *3 Id., slip op., at **3-4 Id. Id., slip op., at *7 See AbbVie, 764 F.3d at 1371-72 518 F.3d 1353, 1362 (Fed. Cir. 2008)

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Litigation appeals Appeals in intellectual property litigation in England & Wales and Germany. By Andrew Bowler (Associate), Emma Muncey and Georg Rauh.

ny well-functioning justice system includes the right to appeal. Appeals serve as a process for error corrections and for clarifying and interpreting the law. This applies to all areas of law, including intellectual property (“IP”) law as set out in the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”). TRIPS is an international treaty that requires all World Trade Organization members (currently 164 countries) to adopt minimum protections for IP. Article 41.4 of TRIPS states that: “Parties to a proceeding shall have an opportunity for review by a judicial authority of final administrative decisions and, subject to jurisdictional provisions in a Member’s law concerning the importance of a case, of at least the legal aspects of initial judicial decisions on the merits of a case.” In addition, Article 32 of TRIPS states that: “An opportunity for judicial review of any decision to revoke or forfeit a patent shall be available.” This article compares the appeal procedures in the two main European jurisdictions in which IP disputes are litigated, England & Wales and Germany.

Appeals in England & Wales Appeals of IP claims in England & Wales are generally limited to a review (and not rehearing) of the first instance decision. The Court of Appeal – or High Court where the action was brought at the UK Intellectual Property Office (“IPO”) in the first instance – will generally not re-open factual findings made at first instance without good reason. Furthermore, to succeed on appeal the appellant has to show that the trial judge made an “error of principle” in applying the law to the facts. Such a review involves a consideration of the relevant material at first instance in such depth as is necessary for the appellate Court to understand the case and to address the criticisms that the appellant has raised. Additionally, the appellate Court will generally not receive evidence that was not before the Court at first instance. 26 CIPA JOURNAL

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Procedure Civil Procedure Rule 52 and its supporting Practice Directions set out the procedure governing all civil appeals in England & Wales. These rules changed following an update which came into force from 3 October 2016. The most significant of these changes are highlighted below. As a prerequisite to the appeal, the appellant must be granted permission to appeal. On a first appeal, the Court will grant permission where it considers that the appeal would have a real prospect of success (or where there is some other compelling reason why the appeal should be heard). On a second appeal (i.e., where a decision of the IPO has been appealed to the High Court and the High Court decision is being appealed to the Court of Appeal), the Court of Appeal will grant permission where it considers that the appeal would have a real prospect of success and raise an important point of principle or practice (or where there is some other compelling reason why the appeal should be heard). The addition of the bar as to the appeal’s prospect of success for second appeals is the first significant change to the rules. If permission is granted by the judge at first instance, the appeal is fixed. If permission is refused at first instance, the appellant can seek permission from the appellate Court. The appellate Court will initially decide whether or not to grant permission on the papers. However, the judge considering the application on the papers may then direct an oral hearing if he or she considers that the application cannot otherwise be fairly determined but there is no right to an oral hearing if permission is refused. This is the second significant change to the rules where pre-October 2016 there was an automatic right to renew an unsuccessful request for permission at an oral hearing. The recent changes to CPR 52 were made as part of an attempt to ease the burden on, and backlog in, the Court of Appeal. Prior to these changes, the Court of Appeal held that a decision by a Court of Appeal judge or judges (on the papers or following an oral hearing) as to whether or not to grant permission to appeal is a judicial review as called for by Article 32 of TRIPS1. This suggests that the removal of the automatic right to an oral hearing still abides by TRIPS. www.cipa.org.uk

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ARTICLE

LITIGATION

The English courts had previously indicated that appeals in patent litigation were a special case and permission to appeal should be granted more easily than in other cases because of the complex technical subject-matter2. However, the courts have recently confirmed that this is no longer the case and patent cases will not be treated differently to any other case3. In general, permission to appeal is harder to obtain in patent litigation where the appeal involves a challenge to a decision in relation to the inventive step or sufficiency of a patent. This is because the application of legal standards such as obviousness and sufficiency are often a matter of degree and “a kind of jury question”4 on which the trial judge, who heard the live crossexamination of experts, is in the best position to adjudicate. On the other hand, permission is often easier to obtain on issues like claim construction.

Appeals in Germany Following the reform of the German Code of Civil Procedure (ZPO) in 2001/2002, appeals in civil law matters including IP claims in Germany are generally limited to a review (not a rehearing) of the first instance decision. The only exception to this was, prior to 2008, in relation to appeals in patent validity proceedings. Due to the bifurcated system in German patent litigation, these proceedings are governed by rules in the German Patent Act (PatG) and therefore were unaffected by the general reform of the ZPO. In principle, there is a clear justification behind allowing a full rehearing of the case in patent validity appeals: why should a first instance decision confirming the validity of the patent be upheld just because a procedural rule does not allow new evidence to be considered at the appeal stage when, for example, a relevant piece of prior art has been discovered following the first instance decision? After all, surely it is in the public interest to invalidate patents, the subject matter of which is neither new nor inventive. However, after a reform of the PatG in 2008, patent validity proceedings are now also limited to a review of the first instance proceedings, thus helping to speed up proceedings and reduce the backlog in patent validity appeal cases. “Review” means that the appeal can only be based on an error of law or on the basis that the facts to be considered by the appeal Court justify a different decision. In making its decision on appeal, the Court will take the complete first instance file into consideration, in particular all facts and evidence filed during the first instance. However, new facts and evidence are only allowed under strict rules if they: i. concern an aspect that has clearly been overlooked or (wrongly) held to be irrelevant by the first instance Court; ii. were not asserted at first instance due to a procedural error; or iii. were otherwise not asserted at first instance, other than due to negligence of the party.

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CIPA JOURNAL

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ARTICLE

The main difference between England & Wales and Germany in relation to appeals of IP claims is the German automatic right to appeal.

LITIGATION

i. not have been able to be obtained with reasonable diligence at first instance; ii. be such that, if given, it would probably have an important influence on the result of the case though it need not be decisive; and iii. be apparently credible though it need not be incontrovertible. This seems to be a stricter test than in Germany, where new evidence can be admitted on appeal if it was not asserted at first instance other than due to negligence of the appellant. A third difference in relation to patent litigation is that, due to the bifurcated system in Germany, the trials and then appeals of both the infringement and validity issues generally take longer than the equivalent combined infringement and validity trial and appeal in England & Wales. In Germany, both appeals are generally complete around three to four years after the first set of proceedings has been issued. Whereas in England & Wales, it is about two years from the start of the claim to the end of the appeal hearing. Further the English courts can be quite flexible as demonstrated in a recent case5 where the appeal was heard within six months of the claim being issued. A final key difference in relation to patent litigation is that a preliminary injunction granted in England & Wales may be upheld up to and during any appeal even if the patent is held invalid at first instance. This is because the tests for a preliminary injunction and permission to appeal are the same, i.e., the claim/appeal has to have a real prospect of success6. Whereas, in Germany, due to the bifurcated system, if a patent is held invalid by the Federal Patent Court then any preliminary injunction is usually removed pending appeal. Andrew Bowler is a partner and Emma Muncey an associate at London-based Bristows LLP; Georg Rauh is a partner at Vossius and Partner in Germany.

Procedure If the value of the claim is more than €600, permission to appeal is not needed. Therefore, as most IP claims are of high value, permission to appeal is not usually needed.

3. Teva v Boehringer [2016] EWCA Civ 1296

The main difference between England & Wales and Germany in relation to appeals of IP claims is the German automatic right to appeal. As stated above, in England & Wales, permission to appeal will only be granted where the Court considers that the appeal would have a real prospect of success or where there is some other compelling reason why the appeal should be heard. A second difference between the two jurisdictions is when new evidence can be brought on appeal. In England & Wales, the evidence must:

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1. Pozzoli SPA v BDMA SA [2007] EWCA Civ 588 2. Ibid.

Comparison

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References

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4. Biogen v Medeva [1997] RPC 1 45 HC and Smith Kline Beecham’s Patent [2006] RPC 323 5. Napp v Dr Reddy [2016] EWCA Civ 1053. It should be noted that this was a claim for infringement only. 6. Note that for the preliminary injunction to stay in place, the patentee/exclusive licensee also needs to continue to show that the requirements for irreparable harm are met.

www.cipa.org.uk

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DECISIONS

Patent decisions Inventive step | Sufficiency | Added matter | Priority of section 2(3) reference | Novelty Idenix Pharmaceuticals Inc v (1) Gilead Sciences Inc, (2) Gilead Sciences Ltd, (3) Centre National de la Recherche Scientifique, (4) Università Degli Studi di Cagliari, (5) L’Université de Montpellier II [2016] EWCA Civ 1089 8 November 2016 Patten LJ, Kitchin LJ and Floyd LJ

This was a decision from the Court of Appeal following the judgment of Arnold J of 1 December 2014, [2014] EWHC 3916 (Pat), reported January [2015] CIPA 41. The lead judgment was given by Kitchin LJ, with the other judges being in agreement. The judgment related to European Patent (UK) No. 1523489, which was directed towards a family of nucleoside analogues having anti-Flaviviridae activity. Arnold J found the claim 1 to be not novel and not inventive, both in the form as granted and as proposed to be amended by Idenix. In addition, he found that the patent did not make it plausible that the invention would work across the scope of the claim. Arnold J also found claim 4 to contain added subject-matter. However, he considered that Gilead’s proposed sale of sofosbuvir would infringe claim 1, as granted and as proposed to be amended if claim 1 was valid. Idenix contended that the judge fell into error in deciding a prior art reference was entitled to priority and therefore valid prior art under section 2(3) of the 1977 Patents Act. In addition, Idenix contended that the judge fell into error in his assessment of common general knowledge, in finding that the patent lacked inventive step and was insufficient and also in finding that claim 4 and claim 1 as proposed to be amended contained added matter. Gilead filed a respondent’s notice contending that the judge ought to have found claim 1 of the patent as granted contained added matter. Kitchin LJ discussed the evidence in relation to common general knowledge in detail. He reached the conclusion that he could detect no error of approach by Arnold J and that he was satisfied that the judge was entitled to reach his conclusion on common general knowledge. Warner-Lambert subsequently made a conditional application to amend the patent. However, Arnold J decided that this application constituted an abuse of procedure in the abuse judgment. At first instance, Arnold J found that the claims in issue were invalid for obviousness because they made no technical Volume 46, number 1-2

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contribution to the art. The judge considered it implausible that all compounds covered by the claim had anti-Flaviviridae activity, either as granted or as proposed to be amended. Kitchin LJ considered that Idenix had not identified any error of principle in the way the judge addressed the issue of obviousness, and therefore he was entitled to reach the conclusion he did. The patent was found insufficient based on three separate attacks, each of which succeeded. First, the disclosure of the patent did not make it plausible that the invention would work across the scope of the claims. Second, the patent did not enable the skilled team to perform the invention without undue burden and third, the invention could not be performed across the breadth of the claims without undue burden. Kitchin LJ, on reviewing the evidence, found that the judge was correct in his assessment that the patent did not make it plausible that the invention would work across the scope of the claims and also that it did not enable the skilled person to perform the invention without undue burden. On the third point, Kitchin LJ noted that although he was inclined towards the view that the judge was entitled to reach his conclusion, as it was not necessary to reach a decision on this point, he would not do so. In relation to the issue of added matter, Kitchin LJ also agreed with the decision of Arnold J. He considered that claim 1 as granted did not add subject-matter, but that claim 4 did. Furthermore, he agreed that claim 1 as proposed to be amended did add subject-matter. For the claims to be found not novel, it was necessary for an earlier reference, the “Pharmasset PCT” to be entitled to its priority date. Although Kitchin LJ noted that it was not necessary to address the question of novelty, following his findings on inventive step and sufficiency, he provided his view briefly. The main issue was whether the applicant of the PCT was the inventor’s successor in title at the filing date. The main issues to be considered were set out by Kitchin LJ, but he declined to reach any conclusion on the main points. Accordingly, the appeal was dismissed.

Infringement | Expedited trial | Construction | Numerical ranges Napp Pharmaceutical Holdings Ltd v (1) Dr Reddy’s Laboratories (UK) Ltd, (2) Sandoz Ltd [2016] EWCA Civ 1053 1 November 2016 Patten LJ, Gloster LJ and Floyd LJ

This was a decision from the Court of Appeal following the judgement of Arnold J of 28 June 2016, [2016] EWHC 1517 (Pat). This decision was discussed briefly on the IPKat blog (http://ipkitten.blogspot.co.uk) on 21 November 2016. The lead judgment was given by Floyd LJ, with the other judges being in agreement. JANUARY-FEBRUARY 2017

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The case concerned Napp’s European Patent (UK) No. 2305194 relating to a transdermal patch for use in the treatment of pain. Napp contended that both Sandoz and Dr Reddy’s Laboratories threatened to infringe the patent by marketing their own transdermal patches. In the first instant decision, Arnold J held that there would be no infringement by either defendant if they were to market their product. Arnold J did, however, order continued interim relief against both defendants until 16 August 2016 and gave permission for Napp to appeal. Napp lodged its notice of appeal on 20 June 2016 and Floyd LJ ordered expedition of the appeal. Notably, a final decision was obtained in under six months from the issue of proceedings. The appeal concerned two main issues in relation the construction of claim 1 of the Patent which reads as follows: “A buprenorphine transdermal delivery device comprising a polymer matrix layer containing buprenorphine or a pharmaceutically acceptable salt thereof, for use in treating pain in humans for a dosing interval of at least 7 days, wherein the transdermal delivery device comprises 10%-wt buprenorphine base, 10 to 15%-wt levulinic acid, about 10%-wt oleyloleate, 55 to 70%-wt polyacrylate, and 0 to 10%-wt polyvinylpyrrolidone.” The first point of construction that the Court considered was whether the amounts specified for the various elements of the transdermal device refer to the “input” amounts used in the formulation (i.e. they are ingredients in a recipe) or the “output” amounts in the finished device. In the first instance decision, Arnold J concluded that the claim was referring to the finished product. Napp advanced a number of reasons to support their argument that the claim refers to the “input” amounts in the formulation. Floyd LJ was not persuaded by these arguments and noted that the starting point had to be the language of the claims, which requires a transdermal delivery device comprising a defined API in a specific percentage and excipients also in a defined percentage. He stated that: “It is a product claim, not a method claim. There is no sense in which the product, i.e. the device, is made at the stage of mixing the ingredients. The normal approach to such a claim would be to determine what the device contained, not to determine the percentages used in some earlier stage of the manufacturing process… It is therefore the proportions of the materials in the finished products which are important, not those elsewhere.” Floyd LJ therefore held that the defendants’ interpretation was the correct one and rejected Napp’s attack on the judge’s conclusion that that the claim is referring to output percentages. 30 CIPA JOURNAL

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The second point of construction related to the upper and lower limits of the numerical features and ranges in the claim, and in particular, what is meant by “10%-wt buprenorphine base”, “10-15%-wt levulinic acid” and “about 10%-wt oleyloleate”. At first instance, Arnold J held that the both the buprenorphine and levulinic acid limits were expressed to the nearest whole number. He therefore concluded that the buprenorphine range extended from 9.5-10.5%-wt and the levulinic acid range extended from 9.5-15.5%-wt. As regards the term “about 10%-wt oleyloleate”, Arnold J considered that this allowed a margin of error of 1% around the figure “10%wt” because the word “about” would be understood to give a small degree of imprecision over and above that permitted by normal rounding. Napp argued that the buprenorphine and the levulinic acid ranges were both expressed to the nearest 5%-wt and submitted a number of reasons in support of this interpretation. Floyd LJ reiterated the approach taken by Kitchen LJ in Smith & Nephew plc v ConvaTec Technologies Inc [2015] EWCA Civ 607, [2015] RPC 32 and agreed with Arnold J that the figures for buprenorphine and levulinic acid are expressed to the nearest whole number. In relation to the oleyloleate, Napp argued that the skilled person would understand “about 10%-wt oleyloleate” to extend to 15%-wt. Floyd LJ accepted that the use of the word “about” suggests that the patentee must have been intending something wider than would have been the case if he had omitted that word. However, he noted that if the skilled person were to follow Napp’s reasoning, he or she would be: “wholly unclear as to where the limits of the claim actually lay”. Floyd LJ therefore agreed with Arnold J’s interpretation of the claim and stated that: “There are obvious difficulties with trying to prescribe precise outer limits to an integer which uses the word “about”, but I would not disagree with the judge’s conclusion that the claim extends no further than 9 to 11%.” Accordingly, the appeal was dismissed.

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

www.cipa.org.uk

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DECISIONS

Revocation | Novelty | Prior use | Confidentiality Thoratec Europe Limited v AIS GmbH Aachen Innovative Solutions [2016] EWHC 2637 (Pat) 28 October 2016 Arnold J

This decision related to a claim for revocation and declaration of non-infringement, brought by Thoratec, against European Patents (UK) No. 2047872 and No. 2234658, owned by AIS GmbH. The decision also related to a counterclaim for infringement. Both patents were directed to a “catheter device” and were related to Ventricular Assist Devices (“VADs”) for assisting the operation of the human heart. In particular, the patents related to VADs that are inserted into the body and driven via catheters. The matters in dispute were largely the same for the two patents, which stood and fell together. The judge therefore placed the majority of focus on European Patent (UK) No. 2047872. The parties were in agreement regarding the identity of the person skilled in the art and the scope of common general knowledge. There was minor dispute on some points of construction. However, none of the important issues turned on those points. The main issue in connection with novelty concerned the use of a type of VAD, known as a Reitan Catheter Pump (RCP), and whether the use before the priority date constituted prior art. It was common ground that the particular RCP in issue fell within the scope of the claims. Thoratec argued that the supply of the RCP to a university research group and its use thereof constituted noveltydestroying prior use. In particular, Thoratec argued that although the specific features of the RCP were not disclosed in a subsequent journal article (“Dekker”, pleaded as a separate documentary prior art), members of the research group were free to disclose that information to others. AIS GmbH countered that although there was no expressed obligation of confidence, the research group was nevertheless bound by an implied obligation under Dutch law (the national jurisdiction to which the parties were subject). The judge noted that the principles under Dutch law were similar to English law in that duties of confidence may arise implicitly as well as by express agreements. The judge noted further that any prima facie presumption that research carried out by a university or other academic institution for a third party is confidential is rebuttable. In deciding the issue, the judge referred to the evidence given by Dr Andreas Dekker, the main researcher of the research group at the time. Dr Dekker explained that it was the usual practice of the research group to publish results of their Volume 46, number 1-2

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experiments in the scientific literature and that prior to the publication of Dekker the work was presented in an academic conference. Dr Dekker also explained that he was very clear that he did not sign any confidentiality agreement and was not aware that the supplier of the RCP had any objection to the publication of his research. The judge also referred to the evidence of Dr Öyvind Reitan, the inventor of the RCP and an employee of the supplier, in which he indicated that the supplier had been demonstrating the RCP at conferences since 1997 (before the priority date). In conclusion, the judge held that the evidence firmly rebutted any presumption that the supply of the RCP to the research group was subject to an implied obligation of confidentiality. On that basis, the judge found that the patents were not novel in view of the prior use of the RCP. For completeness, the judge found that the patents were not inventive over Dekker on the premise that the prior use was not available as prior art. The judge also found that the alleged infringing product fell within the scope of the claims.

EQEs – registration of professional training and activities On 24 November 2016, the Examination Secretariat for the EQEs at the EPO circulated a notice on the Obligatory Registration for Candidates of the European qualifying examination It is now compulsory for EQE candidates to register at the beginning of their professional activities and training. Candidates who have not registered will not be able to enrol next year to the pre-examination 2018.

Transitional period Candidates who register during the transitional period, which expires on 31 March 2017, will benefit from: registration free of charge; and the possibility to register all past periods of relevant training (without limitation). As of 1 April 2017 there will be a registration fee and only training which occurred two months immediately before registration will be taken into consideration. It will no longer be possible to have professional training and activities taken into account retroactively. The EPO urges candidates to register for the EQE without delay using the web portal which can be accessed from the EQE website – see www.epo.org/learning-events/eqe.html. Further information can be found in the FAQs – see www.epo.org/learning-events/eqe/faq.html.

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IPO decisions Reinstatement: section 20A Peter David Hurley BL O/514/16 3 November 2016 An application was terminated as a result of a request for examination being filed late. The IPO wrote to the applicant's recorded address to inform him of the possibility of extending the deadline by filing a Form 52, but no request for extension was made. The IPO then issued a refund of the examination fee that had been paid late. The applicant subsequently filed a request for reinstatement, indicating that he had moved address and had not received any mail relating to the patent application since the application had been filed. The applicant had, however, received a receipt for the fee paid on a Form 9A, as his new address had been indicated on the accompanying fee sheet. The applicant's understanding was that he had informed the IPO of his new address by doing this. The IPO, however, argued that the application for reinstatement had been filed too late and that no request to change the address for service had been made. The hearing officer determined that the request for reinstatement had been filed too late because it had been more than 12 months since the final date for requesting examination, and the time limits under Rule 32(2) could only be extended under Rule 107 if there had been a procedural irregularity on the part of the IPO. It was not normal procedure for the IPO Finance Section to check names and addresses supplied on FS2, since anyone, not just the applicant, could pay the search fee. There was no reason why the Finance Section should have considered the new address indicated on the fee sheet to be a request for a change of address, especially as there was no covering letter, email, or note to indicate that the address should be changed. The hearing officer concluded that there had been no procedural irregularity, and so the time limit under Rule 32(2) could not be extended using Rule 107, meaning the request for reinstatement had been filed late and could not be considered further.

PATENTS: UK IPO

applicant argued that the application was analogous to the invention in Protecting Kids the World Over [2011] EWHC 2721 (Pat) (PKTWO), in which a system for monitoring the content of electronic communications sniffs data packets from a communications channel to analyse their content, generating an alert notification to users in response to detecting inappropriate content. Floyd J found that generating an alarm alerting a user at a remote terminal to the fact that inappropriate content is being processed was a physical process, and therefore concluded that the invention in PKTWO was patentable. The hearing officer accepted that the analogy with PKTWO was readily apparent, noting that both generated a notification to a user at a remote terminal that an event was taking place. The applicant identified that a difference was that the invention notified users of events taking place as opposed to notifying them of inappropriate content. The applicant argued that the alarm notification in PKTWO was patentable irrespective of the type of message content, particularly noting that claim 20 of PKTWO relating to identifying inappropriate content was found to be excluded, but its dependent claim 33 defining an improved alarm was not. The hearing officer was, however, not convinced that Floyd J would have found the same technical contribution if the alarm of PKTWO was not generated in response to inappropriate content. He noted that protecting users from inappropriate content was not the same as notifying users of an event and its location, and that the only examples of events given in the application were a company offsite activity, a wedding, a sport event and a street festival, all of which were not technical in nature. The invention was therefore a method of doing business. The hearing officer further considered whether the invention was a program for a computer as such. Although the problem solved existed outside of the computer, it lay in the field of business. As such, overcoming the problem did not have a technical effect. In conclusion, the invention did not have a technical effect outside of the computer, and was excluded as a program for a computer as such. The application was refused.

Post-grant amendment: section 27 Patentability: section 1(2) Synchronoss Technologies, Inc. BL O/528/16 14 November 2016 The application related to automatically identifying and notifying users about particular events using content generated and submitted by users to a network based sharing service. The examiner objected that the claimed invention was excluded from patentability as a method for doing business and a program for a computer as such. The 32 CIPA JOURNAL

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MWUK Limited v Fashion at Work (UK) Limited BL O/531/16 15 November 2016 The patentee (Fashion at Work) applied to amend its patent under section 27 following an opinion under section 74A finding that the patent lacked novelty (opinion 15/15, issued 22 December 2015). The application to amend was opposed by the requester of the opinion (MWUK), which argued that the proposed amendments failed to cure the defects that they were intended to rectify. The www.cipa.org.uk

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opponent further argued that the amended patent would remain invalid with respect to the document cited in the opinion and also with respect to five other documents, some of which had been cited in the search report of the application. The patentee objected to the introduction of new documents and sought to strike out all reference to them from the opponent’s statement of grounds, arguing that new documents beyond those cited by the patentee in its application should not be considered in section 27 proceedings. In response, the opponent argued that the substantive issue of novelty and inventive step had been raised by the patentee in its application to amend, and that it was legitimate to oppose amendment on those grounds using whatever prior art was relevant. At the preliminary hearing the patentee argued that one of the documents had been taken into account during examination of the patent, and so should not be considered again, referring in particular to decisions relating to opinions under section 74A. The hearing officer was not, however, persuaded that IPO practice in dealing with requests for opinions was relevant in proceedings under section 27. The available case law, including Baxi Heating (BL O/238/04), Clear Focus Imaging (BL O/079/00) and Crown Cork and Seal (BL O/062/03), was considered to be clear, in that an opponent could only question whether a proposed amendment had the effect of curing the defect as specified by the patentee, and could not advance arguments which challenged validity of the patent beyond that suggested by the patentee. The hearing officer further noted the guidance given in the Manual of Patent Practice in relation to section 27, indicating that the examiner should determine if the proposed amendments were novel and inventive over the specified prior art in light of common general knowledge. The hearing officer determined that the common general knowledge referred to in the Manual would be that from the examiner’s own background knowledge, and not from elsewhere. The hearing officer concluded that the opponent was not allowed to argue that the invention lacked novelty over a document cited in the search report, or an inventive step over the document cited in the opinion request in view of common general knowledge defined by other documents. The application to strike out these parts of the opponent's statement was consequently successful.

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

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Patentability: section 1(1)(b) Dr Kartar Singh Lalvani BL O/610/16 20 December 2016

The application claimed a method of manufacturing chapati or naan bread with a dough having constituents consisting of wheat, barley and oat flour, together with inulin prebiotic fibre. The examiner objected that the invention lacked an inventive step over a number of articles published on the Internet. The examiner contended that the state of the art was represented by a first article, disclosing a dough having wheat, barley and oat flour, while the addition of inulin was part of the skilled person’s common general knowledge, as represented by three other Internet articles disclosing the use of inulin for other bread products. The applicant contested the date of the first article, and argued that the only true date was the one on the search report. The hearing officer did not accept this, as this would mean that any Internet citation could not form part of the state of the art, and that on a prima facie view it was reasonable to take the stated date of publication as valid. A final determination was deferred, since it would only become relevant if a negative decision was reached on inventive step. Considering inventive step, the examiner argued that the use of inulin in bread was well known in the industry. The applicant, however, argued that the articles had not been widely read, citing traffic figures for the web pages, suggesting that the use of inulin was not widely known. The hearing officer first considered how much weight should be given to the exposure of a website in determining whether it represented the common general knowledge to bakers of Indian breads in the UK, concluding that information about website traffic did not, of itself, help to answer the question of whether the articles were common general knowledge. Instead, the question was whether the skilled person would visit the website. The hearing officer considered that there was no evidence or sufficiently compelling argument that a baker of Indian breads would be minded to view the articles, which did not provide evidence of a major industry trend that inulin was widely used in the baking field at the priority date. Instead, it appeared that the articles were confined to a niche area of the Internet. As a result, the skilled person would not have the use of inulin as a possible ingredient for chapati or naan bread as part of their common general knowledge, and the claimed invention was consequently not obvious. The question of whether the Internet citation was prior art did not therefore arise. The application was remitted to the examiner for further prosecution to resolve a remaining issue of clarity.

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EPO decisions Novelty and prior public use – Article 54 EPC T 2440/12: SIMCON kunststofftechnische Software GmbH / Moldflow Pty Limited TBA decision of 15 September 2015 Chairman: R. Moufang Members: M. Rognoni and R. de Man This decision relates to an appeal by Moldflow Pty Ltd following the Opposition Division’s decision to reject its opposition against a patent concerned with a method to be performed by a computer. Of particular interest is the Board’s consideration of the level and form of disclosure required to prove prior public use of a software product. The patent in issue claimed a method for the simulation of fluid flow and structural analysis within thin walled three dimensional geometries. Moldflow’s opposition of this patent was predicated on a number of grounds, of which only lack of novelty under Article 54 EPC was in issue at the appeal. It was not in dispute that, before the patent’s priority date, SIMCON Kunststofftechnische Software GmbH had commercialized a software product (CadMould) which embodied the claimed invention. Further, it was not in dispute that any person who had purchased the software product, before the patent’s priority date, was able to perform the claimed method by running the software on a computer. Moldflow opposed the patent on the grounds that such commercialization amounted to prior public use. In assessing the level of disclosure required, the Opposition Division found that the mere disassembly of the software product would not enable the person skilled in the art to reconstruct the underlying mathematical method for a finite element program. The person skilled in the art could not directly and unambiguously derive the specific features of the method (being the use of a framework of rod elements generated between nodes of the surface meshes). As such, the Opposition Division upheld the validity of the patent.

PATENTS: EPO

On appeal before the TBA, Moldflow argued that the Opposition Division had set the bar for disclosure inappropriately high. There was no requirement for the person skilled in the art to be able to deduce the underlying algorithm. A person skilled in the art could, using a disassembler, reverse engineer the software product. It was sufficient that, by working through the disassembled software on a line-by-line basis, the person skilled in the art would execute the claimed method and understand all the functions performed by the computer running the software. Moldflow argued that the software program was merely an alternative form of disclosure of the method, expressed in computer readable form rather than the abstract language used in the patent or in another more formal mathematical language. During the appeal, SIMCON relied heavily on the findings of the Opposition Division, asserting that the use of the software product did not mean that the underlying algorithm could be considered to be state of the art. SIMCON argued that the essential teaching of the patent (being the rod elements described above) could not be derived from the output of a disassembler without an undue burden. Although the Board agreed that there was no evidence that the person skilled in the art could derive the rod elements from the output of the disassembler, the Board considered that the prior use of the software product makes the method it implemented part of the state of the art since the person skilled in the art could execute it line-by-line on a computer without infringing copyright protection and in doing so would carry out the method and gain knowledge of the steps performed by the computer. In line with case G 1/92, the Board held that it was possible for the person skilled in the art to discover the composition of the internal structure of the software product (being the set of instructions which constitute a program to be run on a computer) and reproduce it without undue burden. The Board also agreed that the software product was a different disclosure of the method and that the form of disclosure did not alter the method being disclosed.

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

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The Board allowed the appeal and the patent was revoked on the basis that claim 1 was not new within the meaning of Article 54 EPC. Although the argument was not raised by Moldflow, the Board also commented, obiter, that the acquisition and use of the product running the software automatically executed the method of claim 1 and therefore could, in itself, be novelty destroying.

Partial priority and Novelty – Article 54(3) EPC G1/15: Use of cold flow improvers / Infineum EBA Order of 29 November 2016 Chairman: W. van der Eijk Members: P. Carlson, I. Beckedorf, C. Vallet, F. Blumer, W. Sieber, H. Meinders and P. Martorana The Enlarged Board of Appeal has published its order in response to questions referred by the Technical Board of Appeal in case T557/13 on the subject of partial priority. The reasoned decision has yet to be published but from the response of the EBA, responding only to the first question put, it appears that applicants are now in a better position by being able to claim entitlement to partial priority for generic “OR”-claims and hence avoid the published priority document poisoning the later filed application through lack of novelty under Article 54(3) EPC. In answer to the first question referred, “Where a claim of a European patent application or patent encompasses alternative subject-matters by virtue of one or more generic expressions or otherwise (generic “OR”-claim), may entitlement to partial priority be refused under the EPC for that claim in respect of alternative subject-matter disclosed (in an enabling manner) for the first time, directly, or at least implicitly, and unambiguously, in the priority document?” The EBA answered: “Under the EPC, entitlement to partial priority may not be refused for a claim encompassing alternative subjectmatter by virtue of one or more generic expressions or otherwise (generic "OR"-claim) provided that said alternative subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an enabling manner in the priority document. No other substantive conditions or limitations apply in this respect.”

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Novelty / Prior Use – Article 54(2) EPC T 2048/12: PU catalysts / AIR PRODUCTS TBA decision of 19 January 2016 Chairman: B. Czech Members: P. Ammendola and C. Vallet This was an appeal against a decision of the Opposition Division (“OD”) dated 24 July 2012 rejecting the opposition filed against European Patent No. 1,878,492 (the “Patent”). The Patent related to the production of polyurethane using a catalyst described by a specified formula. The main claims at issue (claims 1 and 5) claimed a contact product of at least one of a list of polyols and at least one compound according to the specified formula and the method for producing it. The OD rejected all grounds of invalidity raised against the Patent, including anticipation by prior use. The appeal decision is of interest insofar as it deals with the level of information made available by a prior use. The prior use novelty attack was based on a commercially available compound BDMAEE (bis-(2dimethylaminoethyl)ether) which was sold under the trade name JEFFCAT ZF-20 (“JEFFCAT”) as a catalyst for producing polyurethane foams. In addition to BDMAEE (98.6% wt min) and 0.5%wt water, JEFFCAT also contained trace amounts of TMAEE (N,N,N’-trimethyl-bis(aminoethyl)ether), a compound according to the formula specified in the main claims of the Patent. It was common ground between the parties that JEFFCAT contained trace amounts of TMAEE (<0.3%wt) and that it could have been identified by conventional chemical analysis. BDMAEE did not fall within the scope of the claimed formula. The appellant argued that the commercialisation of JEFFCAT disclosed TMAEE and its prior use anticipated the subject-matter of claims 1 and 5 of the Patent. Claim 1 was framed widely and did not claim any specific quantities of components disclosed nor did it describe any of them as a catalyst. Claim 5 in contrast called for a “catalytically effective amount of [the] catalyst” as defined by the specified formula. The Board found claim 1 to encompass any composition containing detectable amounts of either component. In contrast it found claim 5 to be limited to methods for making polyurethane in which a compound according to the specified formula was present in a quantity sufficient to contribute significantly to the catalysis of polyurethane formation. The appellant relied on G1/92 in support of its argument that a chemical composition of a product is state of the art when a product is made available to the public and can be analysed by the person skilled in the art, irrespective of whether any reasons exist to carry out that analysis. The Board, however, distinguished G1/92 on the basis the decision did not go so far as to disclose all impurities present and had not mentioned it in the context of the JANUARY-FEBRUARY 2017

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product’s commercialisation The Board stressed that context was particularly important when addressing the subject of impurities in chemical composition. In the present case the person skilled in the art would have viewed JEFFCAT as a “high-purity” product and as such would have only conducted an analysis of the BDMAEE and water content. Accordingly, the determination of chemical composition would not in this context disclose the nature and amounts of minor impurities such as the TMAEE. Consequently, the Board held that a composition containing at least one of the polyols and TMAEE was not part of the state of the art to considered according to Article 54(2) and therefore concluded that the subjectmatter of the product claim (claim 1) and process claim (claim 5) were novel. This case provides a timely reminder of the importance of context when considering the extent of the disclosure a product made available to the public makes to the state of the art.

Exceptions to patentability – Article 53 EPC Notice from the EPO dated 24 November 2016 concerning the staying of proceedings due to the Commission Notice on certain articles of Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions. On 24 November 2016, the European Patent Office (EPO) issued a Notice that all proceedings in examination and opposition cases in which the invention is a plant or animal obtained by an essentially biological process will be stayed ex officio. The EPO Notice was issued in response to the recent Notice of the European Commission (2016/C 411/03) related to certain articles of Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions (‘Biotech Directive’), which concludes that in the Commission’s opinion, according to the EU legislator, plants and animals derived from essentially biological processes should not be considered patentable. By way of background, in G2/12 and G 2/13 (Tomatoes II and Broccoli II, respectively) the Enlarged Board of Appeal carried out a lengthy and in-depth analysis leading to the conclusion that a narrow interpretation of the exception to patentability in Article 53(b) EPC was appropriate and thus plants and animals even if they were inevitably derived from essentially biological processes were in principle patentable. Following this, the European Parliament in December 2015 asked the Commission to consider various issues concerning the Biotech Directive which resulted in the 36 CIPA JOURNAL

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Commission’s Notice 2016/C 411/03 of 3 November 2016. The exclusion to patentability in the Biotech Directive is framed much like that in Article 53(b) EPC, i.e. it expressly excludes from patentability essentially biological processes for the production of plants and animals but does not mention products derived from such processes. The Commission reviewed the context and provisions of the Biotech Directive to conclude that the European Union legislators’ intention when adopting the Biotech Directive was to exclude from patentability such products. The Notice states that it is intended only as guidance in applying the Biotech Directive. The decision by the EPO to stay relevant examination and opposition proceedings was taken following the discussion by EPO member states in the Patent Law Committee of the Administrative Council in view of the potential impact of the Commission Notice. This potential impact arises because in 1999 the EPC Implementing Regulations were amended to include the main provisions of the Biotech Directive. Furthermore, according to Rule 26(1) EPC examining and opposition divisions should use the Biotech Directive as a supplementary means of interpretation and, in addition, decisions of the Court of Justice of the European Union are taken into account as persuasive (Guidelines for Examination G-II, 5.2 and 5.3). The EPO Notice does not specify how long proceedings will be stayed, but it does disclose that the EPO is discussing this issue with the European Patent Organisation member states and, “should the […] member states follow the interpretation offered by the European Commission Notice, the EPO will implement their decision”.

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TRADE MARKS

Trade marks Decisions of the CJ and GC Ref no.

Application (and where applicable, earlier mark)

GC T-824/14

Eveready Battery Company, Inc. v EUIPO; Imran Hussain and Ots 18 October 2016 Reg 207/2009

– bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices (3) – hand tools and implements (handoperated); cutlery; side arms; razors (8) EDGE

– bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices (3)

GC T-14/15

Lufthansa AirPlus Servicekarten GmbH v EUIPO; SC Mareea Comtur SRL

– advertising; business management; business administration; office functions (35) – transportation; packaging and storage of goods; travel arrangement (39)

Comment

The GC held that genuine use of the earlier mark had not been demonstrated as required under Articles 15(1) and 15(2). The BoA found the evidence filed, namely a sworn statement, six invoices and clippings and pictures of labels and displays relating to EDGE shaving gels, was insufficient to prove genuine use of the earlier mark between July 2005 and July 2010. The GC endorsed the BoA’s assessment of the evidence: (1) The statement merely gave approximations of units sold and did not enable the precise sales volume of goods sold under the earlier mark to be ascertained; (2) the invoices did not show a sufficient duration and frequency of the use of the earlier mark; and (3) the copies of product offerings and images from point of sale did not provide any information regarding the duration or the extent of the use of the mark on the goods at issue. The GC confirmed that a change in the proprietor of the earlier mark was not a proper reason for non-use of the earlier mark and did not remove the requirement for use to be genuine and supported by solid and objective evidence of actual, sufficient use of the mark in the relevant market.

The GC partially annulled the BoA’s decision that there was a likelihood of confusion pursuant to Article 8(1)(b) in respect of the class 35 services. The BoA failed to take into account a decision issued in other proceedings before the Opposition Division in which registration of the mark applied for was refused for services in class 35 on the basis, inter alia, of a likelihood of confusion pursuant to Article 8(1)(b) in respect of the following mark:

AIRPLUS INTERNATIONAL

20 October 2016 Reg 207/2009

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– data processing equipment, computers; computer software (9) – advertising; business management; business administration; office functions (35)

Before the BoA made its decision, this other decision became final. The BoA therefore should have declared that there was no need to adjudicate and should have

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Ref no.

Application (and where applicable, earlier mark)

– insurance; financial affairs; monetary affairs; real estate affairs (36) – design and development of computer hardware and software (42)

GC T-578/15 and T-614/15

Azur Space Solar Power GmbH v EUIPO 20 October 2016 Reg 207/2009

– electronic generators using solar cells (7) – semiconductor devices for solar cells and solar modules, solar cells made of III-V material, solar cells having a plurality of band gaps; solar cell modules with an array of solar cells (9)

TRADE MARKS

Comment

freely allocated the costs by analogy with Rule 21(3) of Regulation 2868/95. It was no answer that the applicant did not suffer any damage. Further, it was not for the applicant to mention the other proceedings to the BoA; it was for the UK IPO to inform the parties.

In both cases, the GC upheld the BoA’s decisions that the figurative marks lacked distinctive character pursuant to Article 7(1)(b). The GC confirmed that the more closely the shape of a mark resembled the relevant products, the greater the likelihood that the mark would be devoid of distinctive character pursuant to Article 7(1)(b). The marks applied for would be immediately perceived by the relevant professional public in the EU as a very simple schematic representation of an array of solar panels. The fact that the marks in issue represented merely one variant of a wider variety of structural possibilities was irrelevant. The marks were too simple to attract the attention of the relevant public and did not have any memorable elements which endowed them with distinctive character or made it possible to identify the origin of the relevant goods.

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

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DECISIONS

Ref no.

Application (and where applicable, earlier mark) CAFFÈ NERO

T-29/16 T-37/16

Caffè Nero Group Ltd v EUIPO 27 October 2016 Reg 207/2009

– coffee and other hot beverages and confectionery (30) – online and retail store services connected with coffee and other hot beverages (35)

GC T-579/15 P

For Tune sp. z o.o. v EUIPO; Gastwerk Hotel Hamburg GmbH & Co. KG 8 November 2016 Reg 207/2009

– advertising; business management; business administration; office functions and other services in this class (35) – education; providing of training; entertainment; sporting and cultural activities and all other services in this class (41) FORTUNE-HOTELS

– advertising; business management; business administration; office work; market research; hosting of exhibitions (35) – entertainment; conducting of tutorials; meetings and continuing education courses (41) (German mark)

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Comment

The GC upheld the BoA’s decision refusing the registration of the marks pursuant to Article 7(1)(c). The GC confirmed that the words CAFFÈ and NERO would be understood by the Italian general public as meaning ‘black coffee’ i.e. coffee without cream, milk or sugar – the mark was evocative of black coffee, even if coffee was not commonly referred to by colour. This meaning would also be commonly understood by the general public in other Member States. The BoA was correct to find that the marks were descriptive and that the figurative mark was not distinctive under Article 7(1)(b). Neither the typeface, the positioning or size of the word elements, nor the rectangular frame and background colour were sufficient to make the mark distinctive, whether taken individually or as a whole. Those elements would be common elements in the eyes of any consumer.

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under Article 8(1)(b). The relevant German public had an average degree of attention for such services. The services at issue were in part identical and in part similar and had an average visual similarity. Both signs contained the word element FORTUNE which would be recognised by the relevant public in the overall impression created by the marks, as the word had entered the German language. FORTUNE was understood by a substantial proportion of the relevant public as signifying ‘chance or luck’ and would not be broken down into separate words FOR and TUNE. The marks had average phonetic similarity, taking into account the omission of HOTELS from the proposed mark. A certain degree of conceptual similarity could not be ruled out.

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Application (and where applicable, earlier mark)

Ref no.

CJ C-43/15 P

BSH Bosch und Siemens Hausgeräte GmbH v EUIPO; LG Electronics Inc

– electrical cleaning machines and apparatus; parts for the above goods (7) – apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes (11)

8 November 2016

KOMPRESSOR KOMPRESSOR PLUS

Reg 207/2009

– electrical washing machines; vacuum cleaners; dishwashers; mixers; power generators (7) – gas ranges; kitchen and microwave ovens; air conditioning, purification and ventilation apparatus; refrigerators; (11) (national registrations)

GC T-67/15

Polo Club v EUIPO; Lifestyle Equities CV 10 November 2016 Reg 207/2009

– soaps; perfumes, perfumery; essential oils, cosmetics, hair lotions; dentifrices (3) – training, education, entertainment; arranging and conducting of conferences, colloquiums, workshops, congresses, seminars, competitions; organisation of exhibitions for cultural or educational purposes (41)

– soaps, perfumery, essential oils, cosmetics, lotions, creams, gels, powders, lipsticks, deodorants and antiperspirants (3) – education; providing of training; entertainment; sporting and cultural activities (41)

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Comment

The CJ upheld the GC’s decision that there was a likelihood of confusion between the marks under Article 8(1)(b). The CJ confirmed the GC had taken sufficient account of the weak distinctive character of the earlier marks during its global assessment and by concluding that the small differences in the signs were sufficient to avoid a likelihood of confusion. The CJ confirmed that a likelihood of confusion may exist in respect of marks with a weak distinctive character, particularly in view of the similarity of the signs and of the goods or services at issue. Distinctive character was one factor in the global assessment of likelihood of confusion, and should not be given such importance that it deprived the degree of similarity between the signs of any significance.

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to Article 8(1)(b). The class 3 goods were identical and the class 41 services were in part similar and in part identical. The GC endorsed the BoA’s assessment of similarity on the whole but held that ‘arranging and conducting of conferences, colloquiums, workshops, congresses, seminars, competitions’ and ‘organisation of exhibitions for educational purposes’ covered by the mark applied for were identical, and not merely similar, to ‘cultural activities’, ‘education’, and ‘providing of training’ covered by the earlier mark. The image of a polo player and the words ‘polo club’ had enhanced inherent distinctiveness in relation to the class 3 goods and normal inherent distinctiveness with regard to the class 41 services. The BoA was correct to find the marks were visually and phonetically similar to a low degree and conceptually similar to at least an average degree.

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Ref no.

Application (and where applicable, earlier mark)

GC T-290/15

Smarter Travel Media LLC v EUIPO

– various travel services and online services in classes 35, 38, 39, and 42

9 November 2016 Reg 207/2009

Trade Marks Keyword advertising Victoria Plum Ltd v Victorian Plumbing Ltd & Anr* Carr J; [2016] EWHC 2911 (Ch); 18 November 2016 Carr J held that the defendant was liable for infringement of the claimant’s “Victoria Plum(b)” trade marks by bidding on identical and similar marks as search advertising keywords. These resulted in the display of sponsored advertisements which did not enable normally informed and reasonably attentive Internet users, or enabled them only with difficulty, to ascertain whether the goods or services referred to by the advertisements originated from the claimant or an undertaking economically connected to it, or on the contrary, originated from a third party. The judge also allowed the defendant’s counterclaim for passing off against the claimant. Both the claimant and defendant were bathroom retailers. The claimant had operated exclusively online under the names Victoria Plumb and Victoria Plum. The defendant operated primarily online, and each party had been trading since 2001. The claimant claimed infringement by the defendant of a number of its trade marks, including a registration for the word mark VICTORIA PLUMB which was registered for goods in classes 11 and 20 and services in class 35 (the Volume 46, number 1-2

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TRADE MARKS

Comment

The GC upheld the BoA’s decision that the mark was descriptive and devoid of any distinctive character pursuant to Article 7(1)(b) and (c) and Article 7(2). The word element SMARTER TRAVEL would be understood by the relevant public as a more intelligent way to journey and was therefore descriptive when viewed in the context of the services. The mark would immediately be understood by consumers to refer to the characteristics and subject-matter of those services. The figurative element, a suitcase modified to be reminiscent of a speech bubble, was not sufficient to confer distinctive character on the mark as a whole. Instead, it reinforced the idea of travel conveyed by the word element and was therefore incapable of diminishing the descriptive message of the mark. The GC dismissed the argument that the BoA had erred in its decision as other ‘smarter travel’ marks had been registered to the applicant. The GC noted that it was not bound by the first instance decisions at the EUIPO – each mark must be subject to a comprehensive and independent examination.

“Victoria Plumb marks”). It alleged that the defendant had infringed its trade marks and committed passing off by bidding on the term “Victoria Plumb” and trivial variations as search advertising keywords, and by displaying adverts on searches of those terms which included: (i) any of the same terms, (ii) “victoria plumbing”/”victoriaplumbing”, or “victorian plumbing”/”victorianplumbing”. Applying Google Franc Sarl v Louis Vuitton Malletier SA (Case C-236/08), the judge found that by bidding on the keywords concerned, the defendant had used signs identical to, or immaterially different from, the Victoria Plumb marks. He also found, and it was admitted, that the claimant had established a valuable reputation and goodwill in the name “Victoria Plumb”. He went on to find that the keywords bid upon were identical or confusingly similar to Victoria Plumb marks. Given that the relevant services in question (namely the bringing together of bathroom items enabling customers to conveniently view and purchase those goods via a website) were identical, as were the types of goods offered on those websites, and that Internet users who searched for the claimant’s trade mark were likely to be expecting to find links to the claimant’s website, the judge concluded that confusion was likely and indeed was occurring on a significant scale. This was because the defendant’s advertisements did not enable normally informed and reasonably attentive Internet users, or enabled them only with difficulty, to ascertain whether the goods or services referred JANUARY-FEBRUARY 2017

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to by the advertisements originated from the claimant or an undertaking economically connected to it, or on the contrary, originated from a third party (Interflora, Inc. v Marks & Spencer Plc [2014] EWCA Civ 1403).

Honest concurrent use defence The judge rejected the defendant’s defence based on the principle of honest concurrent use. Firstly, while he found that the defence could apply in the case of closely similar marks as well as identical marks and could entitle a defendant to continue to use its own name or mark, it could not entitle the defendant to use the claimant’s mark where the two were different. Secondly, the defendant had never used the Victoria Plumb marks other than by bidding on them as keywords, which was the subject of the present complaint. Thirdly, it could not be correct that honest concurrent use could justify the defendant’s use of the Victoria Plumb marks because it would then be able to apply to register as trade marks “Victoria Plum” and “Victoria Plumb”. Fourthly, the defendants acknowledged that this was not a case where a mark had become a guarantee of origin of two unrelated entities so that it could not be said to be an exclusive guarantee of origin of either – the Victoria Plumb marks indicated the claimant exclusively and not the defendant. In case his conclusion was wrong, the judge went on to consider the honesty of the defendant’s use, concluding that the defendant had taken steps which exacerbated the level of confusion beyond that which was inevitable and which were not consistent with its duty to act fairly in relation to the legitimate interests of the trade mark proprietor.

Statutory acquiescence The judge also rejected a defence of statutory acquiescence under section 48 on the basis that: (i) the claimant was objecting to use by the defendant of the Victoria Plumb marks, to which the defendant had no earlier right, and (ii) there was no evidence of any significant trade by the defendant by the time the claimant started trading under “Victoria Plum” in 2001, and it would not therefore have had an earlier right on which to base a passing off claim at that time.

Counterclaim for passing off The defendant complained of the claimant’s bidding on the name “Victorian Plumbing” as a keyword so as to cause the return of sponsored links containing the text “Victoria Plum(b)”. The judge found that there was a lower likelihood of confusion amongst users searching for “Victorian Plumbing” than amongst those searching for “Victoria Plum(b)”. However, as there was nothing in the claimant’s advertisements to indicate the absence of a connection between the parties and a substantial proportion of the relevant public were likely to have been misled into believing such a connection existed, he found that the claimant’s actions amounted to passing off. 42 CIPA JOURNAL

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Copyright Broadcasters not entitled to claim fees from hotels with rooms containing television sets Verwertungsgesellschaft Rundfunk GmbH v Hettegger Hotel Edelweiss GmbH A-G Szpunar for the CJ; Case C-641/15; 25 October 2016 A-G Szpunar has opined on the interpretation of Article 8(3) of Directive 2006/115/EC on rental and lending rights to the extent that broadcasters should not be entitled to collect fees from hotels which have rooms containing television sets. A hotel room should not be considered a place accessible to the public against the payment of an entrance fee for the purposes of Directive 2006/115/ EC – to do so would be contrary to the intention of the legislation as drafted. Consequently, television broadcasts in hotel rooms were not held to be subject to the exclusive right under Article 8(3). An isolated interpretation of Article 8(3) would lead to the conclusion that a hotel room was a place accessible to the public against the payment of an entrance fee. However, Article 8(3) was derived from Article 13(d) of the Rome Convention which defined a place accessible to the public against the payment of an entrance fee as a place where a fee was levied precisely for the purpose of viewing a television broadcast. In contrast, hotels levied a fee for the purpose of providing accommodation in a hotel room, not for the purposes of viewing a television broadcast. The availability of television broadcasts through the television sets in a hotel room was an additional service ancillary to the primary purpose of accommodation. The protection for broadcasters under Article 8(3) should not extend to hotel rooms.

Copyright Term Directive does not apply to copyright which lapsed under national law before 1 July 1995 Montis Design BV v Goossens Meubelen BV CJ; Third Chamber; C-169/15; 8 October 2016 The CJ confirmed that Article 10(2) of Directive 93/98 (the “Copyright Term Directive”) must be interpreted such that the terms of protection do not apply to copyright initially protected by national legislation but which was extinguished prior to 1 July 1995. The Copyright Term Directive did not preclude national legislation which had initially granted copyright protection to a work but which caused that copyright to be definitely extinguished before 1 July 1995 by reason of noncompliance with a formal requirement. Montis owned international model registrations and copyright in the ‘Charly’ armchair and ‘Chaplin’ chair. Montis failed to submit the maintenance declaration form as required under Article 21(3) of the Uniform Benelux Law (the “Uniform Law”). As a result, the international model rights and the copyright were extinguished on 18 April 1993. www.cipa.org.uk

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In 2008, Montis brought proceedings against Goossens in the Netherlands for copyright infringement. Goossens submitted that, in the absence of a maintenance declaration, the copyright in the chairs had been extinguished. Montis claimed that its copyright should be held to have been restored by virtue of the repeal of Article 21(3) of the Uniform Law on 1 December 2003, submitting that the repeal had retroactive effect. In the alternative, Montis claimed that its copyright should be held to have been restored following the adoption of the Copyright Term Directive. The Benelux Court of Justice referred three questions to the CJ for a preliminary ruling. The CJ confirmed that the wording of Article 10(2) of the Copyright Term Directive indicated that legal effect should be given to the situation under national law as existing precisely on 1 July 1995 and not on an earlier or later date. It was held that the first condition laid down in Article 10(2) read together with Article 13(1) must be interpreted as meaning that the terms of protection did not apply to copyright which was initially protected by national legislation, but which was extinguished prior to 1 July 1995 and which is not protected in the territory of any other Member State. It was neither the object nor effect of Article 10(2) to determine the conditions under which that protection could be extinguished before 1 July 1995; this continued to be governed by the applicable national legislation.

Court of Appeal confirms FA’s claim for unauthorised use of domestic satellite decoder card to show matches in commercial setting not contrary to EU law The Football Association Premier League Ltd (“FAPL”) v Anthony Luxton* Tomlinson & Floyd LJJ; [2016] EWCA Civ 1097; 9 November 2016 The CA (Floyd LJ giving the lead judgment) dismissed Mr Luxton’s appeal from the decision of Rose J to grant summary judgment to FAPL in its action for infringement of copyright relating to Mr Luxton’s unauthorised use of a satellite decoder card in order to show live Premier League Football matches in his pub. Mr Luxton ran a pub in Swansea. FAPL claimed that Mr Luxton relayed live Premier League Football matches on screens in his pub which included on-screen graphics and logos which FAPL added to its live feeds (the “copyright works”). FAPL claimed that this was done without its consent because the satellite decoder card which Mr Luxton obtained from FAPL’s licensed Danish broadcaster and used for this purpose was a domestic card rather than a card that entitled the user to display the broadcasts in a commercial setting. Rose J had rejected Mr Luxton’s defence under EU law, i.e. (i) that FAPL was motivated in bringing the action by a desire to enforce strict territoriality in the reception of broadcasts of its live football matches contrary to Articles 101 and/or 56 TFEU, and (ii) that his use of a domestic card in his pub was a consequence of Volume 46, number 1-2

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unlawful agreements or concerted practices between FAPL and its licensed broadcasters to restrict the supply of foreign commercial cards outside the territory in which that broadcaster operated. Rose J granted an injunction and inquiry as to damages and refused Mr Luxton permission to appeal. Having initially refused it on the papers, Floyd LJ granted permission to appeal after an oral hearing. Floyd LJ said that he did not see how the present proceedings could be described as an illicit attempt on the part of FAPL to preclude the use by Mr Luxton of a foreign decoder card to receive broadcasts from a foreign broadcaster within the EU. This was because FAPL’s right as a copyright owner to prevent the unauthorised communication to the public of copyright works did not depend on the card used being a ‘foreign’ card. That right, Floyd LJ said, would be enforceable against a person in the UK who used in a commercial setting a domestic card issued by FAPL’s UK licensee, Sky. Therefore, the enforcement of the right did not become unlawful if a foreign card was substituted for a UK card. Floyd LJ also rejected Mr Luxton’s alternative argument, i.e. that even if FAPL had lawfully brought the proceedings to prevent the use of a domestic card for commercial purposes, FAPL had a second purpose which was to reinforce its unlawful agreements or practices restricting the reception of its broadcasts to the territories of its licensees. Floyd LJ found that the right on which FAPL relied was not capable of reinforcing unlawful agreements to partition the market precisely because it was not a right which depended on the territory in which the alleged unauthorised use was being made. There was, he said, no suggestion that FAPL or its licensees allowed the use of domestic cards for commercial purposes to proceed unrestrained provided it occurred in the territory of the relevant broadcaster. While it could be said that FAPL’s elimination of use of a particular foreign domestic card in the UK was consistent with FAPL’s policy of keeping the markets separate, this was insufficient to create a relevant nexus. Floyd LJ went on to reject Mr Luxton’s second argument that his use of a domestic card was a consequence of unlawful agreements or concerted practices between FAPL and its licensed broadcasters. At the time of Mr Luxton’s order for a commercial card, the card reseller he approached had run out of commercial cards and therefore, unknown to Mr Luxton, installed a domestic card with the intention of exchanging it for a commercial card once one became available. Floyd LJ found that, at most, FAPL’s agreements and practices provided Mr Luxton with the occasion for use of a domestic card, but that such use could not accurately be described as a consequence of FAPL’s agreements and practices. Finally, Floyd LJ found that it could make no difference to his analysis that Mr Luxton had set out to obtain a commercial card and was, unknown to him, supplied with a domestic card. Otherwise FAPL’s agreements and practices would prevent FAPL from enforcing its copyrights against foreign domestic cards however obtained, and a publican who deliberately sought out a foreign domestic card would be in the same position as Mr Luxton. The CA having found that Mr Luxton had no defence, his appeal was dismissed. JANUARY-FEBRUARY 2017

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INSTITUTE EVENTS

UPC – Past, Present and Future Report of a CIPA webinar, "Unified Patent Court – Past, Present and Future", 23 November 2016

Late breaking news: After the webinar had aired, Baroness Neville-Rolfe, Minister of State at the Department for Business, Energy and Industrial Strategy, announced on 28 November 2016 that the UK government will proceed with preparations to ratify the Unified Patent Court Agreement. (See December [2016] CIPA 32.) Webinar speakers Pippa Allen (Appleyard Lees) and Leythem Wall (Finnegan Europe LLP) reviewed the Unitary Patent and Unified Patent Court (UPC), and representation rights for EPAs. When the UK renounces European Union (EU) membership, it is considered that the UK could continue to participate in the Unitary Patent system by entering a new international agreement with EU member states alongside appropriate changes to the UPCA. For several decades, member states of the EU have been negotiating the creation of a single EU patent (the Unitary Patent) and associated Unified Patent Court (UPC). Now, the treaty – the UPC Agreement (UPCA) – is open to accession and participation by any EU member state. The UP/UPC has never been a certainty, and has a history of

over 50 years of political discussion plus a long-felt need to place intellectual property into an EU context (see table below). The UP will be available only in EU member states which have ratified the UPCA and will not be available to non-EU (EPC) member states. The unitary system will sit alongside existing systems, with a UP obtained via the current EPO process, and with no change to prosecution timelines or costs to grant. Within a month of grant, the applicant will choose to proceed with an EP (validating in EP states), a UP (with effect in all UPC states that have ratified at that time), or potentially a combination of the two (to cover non UPC-ratifying Spain and Croatia, and non-EU EPO states e.g. Norway, Switzerland). Regulations indicate that the Unitary Patent (UP) and its jurisdiction status will be virtual; distinguishable from an EP by reference to register(s). Advantages of the UP (compared with the current system) include a single translation cost at grant during a 12-year transitional period, no validation fees and more cost-effective renewals (if an EP is validated in more than five states). UPs will only be enforced and challenged in the UPC, and cannot be opted out of the UPC. All EPs will eventually be subject

Short history of a unified patent 1943-1946

Establishment of a ‘Council of Europe’.

1949-1963

‘Longchambon plan’ for a European patent deemed impractical, but did lead to the Convention on Patent Formalities, the IPC, and Strasbourg Patent Convention.

1963-1973

Creation of the European Patent Convention and, in 1973, the Protocol on Interpretation of A69.

1978

Entry into force of the EPC: unitary patent and a European Court as future goals.

1962-1989

Community Patent Convention… generated, rejected, revised, and finally rejected.

1989

EP0101656B1 (‘Improver’) litigation represented lack of uniformity in decision-making. It was found to be infringed in BE, DE, IT and NL, and not infringed in AT, FR and UK: European IP not serving the interests of SMEs (with the claimant bankrupt).

2003, 2008

Interest in the EU patent re-awakened, London Agreement (provision of reduced translation costs for EP validation).

2010-2013

Core Regulations (EU) No 1257/2012, 1260/2012 and Agreement on a UPC.

June 2016

UK, a key signatory and with UPCA ratification outstanding, voted to leave the EU.

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to the UPC but there is a transitional period of seven years (and which may be prolonged by a further seven) for court jurisdiction of EPs: UPC or national courts (the UPC ‘opt out’). An opt out can be withdrawn (as long as the EP is not being challenged nationally) and, similarly, opting out of the UPC cannot occur if there is a challenge at the UPC level. Irrespective of UK membership of the EU, (UK) EPAs will be able to apply for/withdraw opt-outs, will have rights of privilege before the UPC, and will have rights of audience before the UPC. Rights of representation will be contingent on an appropriate qualification, such as a European Patent Litigation Certificate (EPLC). The exact nature of this certificate is not yet known, but a syllabus has been set-out. EPLC rules state a Bachelor or Master degree in law, according to relevant educational standards in an EU member state or, during a one-year transitional period from entry into force of the UPCA, the lodgement of appropriate qualifications (e.g. the Nottingham Law School or Queen Mary University of London qualifications). The UPC will use, amongst others, the EPC as a source of law on which decisions can be based; using only EPC Articles 138(1) and 139(2) as grounds for revocation, and further satisfying Articles 84 and 123(2), (3) EPC during claim amendment. A comparison of UPC revocation and EPO Opposition timelines indicates that there will be fundamental similarities but with the UPC aiming to have a tighter schedule, with the final written decision within 14 months of the filing of the action.

INSTITUTE EVENTS

Industry consultation has indicated that if the UPC enables continuity of representation (e.g. EPAs that currently have direct rights of representation before the EPO), it will stand more chance of being chosen as the preferred court, especially for small to medium-sized business’ rights issues which are not usually litigated nationally, owing to cost. In 2016, EPLIT/IPO/CIPA staged a mock trial of the ‘Improver’ case (see table above) in UPC Local Divisions in Munich and London. Interestingly both jurisdictions found the patent valid and infringed, although there were stylistic differences between the same judgment. The common framework of rules in the UPC system will be hugely important for uniformity. There are general international trends (e.g. in Japan, US, Switzerland) towards convergence and harmonisation of IP systems. There is a state of readiness for the UPC; the rules and cost structures have been developed, fees carefully worked out, and the terms upon which judges will be engaged. “Of course some problems remain. But there is every reason to hope that the system is now as good as a system of this kind can be.” (Lord Justice Kitchin, 14 July 2016). Alexis Harper (Associate) Jalcyon Limited Missed this webinar? A recording is available from CIPA, contact cpd@cipa.org.uk.

Cricket Club nets at Lord's and the Oval Cricket practice nets have been organised at Lord’s and the Oval starting Tuesday 24 January running through to late April. Further details may be found on the CIPA ITMA Cricket Club website: http://www.cipacc.org.uk/ fixtures/?season= Nets are generally from 7pm to 8pm and we usually go for a drink afterwards. If anybody not on the current mailing list is interested in signing up for nets and potentially games next year, please email me at: cipaitmacc@gmail.com for further details. Additional information may also be found at the club website: www.cipacc.org.uk. Stuart Lumsden (Fellow)

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INSTITUTE EVENTS

Institute Events For more information and to book onto any event please see the CIPA website or email cpd@cipa.org.uk Thursday, 19 January 2017 Social

Winchester Happy Hour Time: 18.00–19.30pm Location: The Green Man, 53 Southgate Street, Winchester, SO23 9EH

Join us in the South of England for after work drinks and a chance to network with other CIPA members. Please note, booking is mandatory and drinks tokens will be distributed on arrival. FREE for CIPA members, register at www.cipa.org.uk/whats-on/events/

Monday, 23 January 2017 Seminar

ECF Everything

Time: 16.15–19.15pm Location: CIPA, 95 Chancery Lane, London, WC2A 1DT The seminar will inform about the reasons, aims and implementation of the Early Certainty initiatives at the EPO. Further recent developments at the EPO will also be addressed. This event will be followed by drinks and nibbles. Speakers: Heli Pihlajamaa, Director of

patentability of diagnostics in the US. This discussion looks at the current patentability of diagnostics with an eye towards maximizing the likelihood of success. Speakers: Brett Nelson & Rachal Winger, Lee & Hayes CPD: 1; Prices: £72 (members £48)

Thursday, 26 January 2017 Seminar

USPTO – Patentable Subject-Matter

This seminar provides a practical discussion on the USPTO guidelines and suggestions to help navigate a sound path from disclosure development through to application drafting. It also includes current experience of the USPTO’s most recent guidance. Please email cpd@cipa.org.uk for further details. Speakers: Michael Piper, Conley Rose CPD: 1.5; Prices: £97.20 (members £81)

Tuesday, 31 January 2017 Seminar

The UPC: Where we are and why

Time: 12:30–13.30pm

A series of US Supreme Court decisions severely limited the 46 CIPA JOURNAL

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Time: 18.00–19.30pm Location: Ye Olde Cock Tavern, 22 Fleet Street, London, EC4Y 1AA Join us in London for after work drinks and a chance to network with other CIPA members. Please note, booking is mandatory and drinks tokens will be distributed on arrival. FREE for CIPA members, register at www.cipa.org.uk/ whats-on/events/

–

CPD: 2; Prices: £156 (members £102)

Patentability of Diagnostics in the US – Will the Decline Ever Reverse?

London Happy Hour

Time: 15.30–18.30pm Location: CIPA, 95 Chancery Lane, London, WC2A 1DT

Patent Law at EPO, John Beatty, director Practices and Procedures Management at the EPO

Wednesday, 25 January 2017 Webinar

Wednesday, 1 February 2017 Social

Time: 17.00–19.00pm Location: CIPA, 95 Chancery Lane, London, WC2A 1DT

Chaired by Tony Rollins, this seminar will bring you up to speed on the latest UPC developments. CPD: 2

JANUARY-FEBRUARY 2017

Wednesday, 22 February 2017 Thursday, 23 February 2017 Residential Course

Intellectual Property Enterprise Court – Use your rights! And learn skills for the UPC

Location: Missenden Abbey, London Road, Great Missenden, Bucks, HP16 0BD 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 a 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. CPD: 16; Prices: £1,980 (members £1,668)

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INSTITUTE EVENTS

Life Sciences Conference Report of the CIPA Life Sciences Conference 2016 (14-15 November 2016) at The Grand Hotel, Brighton. By Jonathan Myers (Fellow), Barker Brettell LLP

he 2016 CIPA Life Science Conference headed south to the seaside city of Brighton. The setting was in The Grand Hotel, which was infamously bombed in 1984 in a failed assassination attempt of Margret Thatcher and her cabinet. Thankfully, the hotel was restored to its former glory and served as a comfortable and inviting venue. Despite the beach being outside the front door, there did not appear to be a rush of conference attendees attempting a dip in the foggy November sea. The following is a summary of the talks and discussions over the two-day event. A copy of the talks is available to nonattendees for a fee – contact cpd@cipa.org.uk.

Day one Introduction & Welcome: The conference attendees were warmly welcomed by Simon Wright of J.A. Kemp. With the recent political turmoil Simon acknowledged that this had been an interesting year, which was both unprecedented and depressing. It seemed inevitable that many talks of the day would feature a discussion on the impact of Brexit and the new President Elect, Donald Trump. The first talk of the day was “UPC Post Brexit” by Ewan Nettleton of Novartis. Ewan started by reminding us of the Unitary Patent Court (UPC) and Unitary Patent implementation and current state of ratification. The UK is one of the three essential ratifiers based on the three highest European patent filing countries, with Italy poised to take up the third position in the event of the UK leaving. Additionally, London is one of the locations of the court’s “Central Division” for revocation actions, which is written into the UPC Agreement. Ewan summarised the number of scenarios for the UPC following Brexit (if at all), and emphasised the importance of a well-functioning patent system for the pharma industry. The hope was that the UPC should not be unreasonably delayed, but at least some delay appears inevitable. Next up was Liz Cohen of Bristows on the topic of “Coordination of Parallel UK & US Proceedings”. Liz emphasised that you cannot look at litigation in isolation from other actions taking place and it was important to leverage UK/US litigation coordination. It was acknowledged that European litigation typically started after the US, but this is starting to change following better understanding from the US and the availability of new proceedings in Europe. It was emphasised that the strategy is typically to win, and hopefully Volume 46, number 1-2

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win quickly (whilst limiting risk and costs). Liz summarised a number of important considerations for such strategic coordination of litigation. View on Brexit from the US: We next welcomed US attorney Seth Levy from the Los Angeles office of Nixon Peabody. Seth acknowledged that it had been a very difficult week in America, with people marching in the streets in frustration of the Trump win. The Republicans have taken over of the senate and there is potential for a future change in the conservative balance of the Supreme Court. The impact on IP may not be large or immediate, but there have been an increasing number of important actions moving from the Federal Circuit to the Supreme Court. Seth did not consider that there would be a significant shift in outcomes following a rebalancing towards conservative representation, but acknowledged that the healthcare-related battlegrounds, such as so-called Obamacare and pro-life movements, could have some indirect influence. Duncan Curley of Innovate Legal continued after the morning tea break with a talk on “Regulatory Data Protection”. Duncan acknowledge that regulatory talks can often get deep into the details, but it is helpful to occasionally pull back to the surface and have an overview of the system. We were reminded that the legal framework for the approval of medicines in the European Union is contained in the harmonised body of law entitled the Community Code Relating to Medicinal Products for Human Use (Directive 2001/83/EC). Duncan pointed out that this would become somewhat un-harmonised once the UK leaves Europe. Will we have our own equivalent scheme after Brexit? The data and market exclusivity periods were overviewed and it was concluded that overall the system provides a positive benefit, with clear legislation organised on the basis of clear policy objectives. SPCs: Tony Rollins was next with a discussion on his research and analysis of supplementary protection certificates (SPCs). Tony has reviewed the history and development of SPCs and the protection they provide in Europe and he acknowledge the introduction of similar extensions of patent protection in the US and Japan. The scope of protection was reviewed and how this was linked to the meaning of “active ingredient” and “product” in SPC applications. Robert Fitt of Mylan finalised the morning session with a talk on “Entry to Market: A Generics Perspective”. There is an ever increasing presence of generic drugs on the JANUARY-FEBRUARY 2017

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market and they now account for up to 90% of prescriptions. Robert summarised the reasoning for choosing generic drug candidates and the launch date. There are a number of strategic options for launching a generic including awaiting expiry, nullity proceedings, seeking declaration of noninfringement, and launching at risk. Robert guided the audience through some of these considerations, including the launch of generics in the US. Following a break for lunch Nigel Crockett (Tukan Partners Ltd) introduced us to pharma-biotech partnering with his talk on “Dating: How to know they are the one for you – valuing your ideal partner”. Nigel expressed that partnering was a marriage of convenience; with the emphasis on money, but also trust and mutual reward for the parties. The need for successful partnering was overviewed, where drug approval rates are fairly low and there is a need for pharma to access external sources of innovation. Nigel ran through some different partnering options and case studies and finished by recognising the value of partnerships for biotech, pharma and investors. Rachel Thornley of GlaxoSmithKline (GSK) was up next, where she complemented Nigel’s talk by providing a discussion on “Making it Work, Secrets of a Successful Working Relationship”. Rachel gave a pharma perspective and what big pharma looks for in a perfect partner, how good partnering should be managed on both sides, and the implications for a patent attorney working in a partnering environment. Luke Kempton of Gowling WLG continued the partnering theme with a discussion on “Tying The Knot: Putting The Right Agreement Together”. This discussion centred on the issues to consider for an agreement, including licence grant, financial terms, performance, confidential information – know how, and termination. Luke emphasised that parties need to find a balance between risk/reward and certainty/flexibility in many areas of the agreement, and a strong agreement is not a substitute for each party knowing the other side well before they enter into it. Partnering from a non-patent attorney perspective was next, with a talk on “Partnering with pharma: better to be single” from Andre Hoekema of Galapagos. Andre took us through the rollercoaster journey of the Galapagos drug discovery, development and associated partnering with pharma. The success, failures, twists and turns of their partnering experiences were illuminating and it demonstrated that the margin between success and failure is razor-thin. Lessons have been learnt and Galápagos is now in a healthy position. After a short tea break we ventured into a new direction, heading East to a discussion on “Patent Litigation in China” with Tom Carver of JA Kemp. Tom’s insightful discussion follows several years of experience living in China. The procedural aspects were highlighted including an overview of the timeline and some acute hurdles to overcome (such as the collection and use of evidence and the access of judges to premises, which can be an issue in China). Tom noted 48 CIPA JOURNAL

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the usefulness of custom seizures to prevent export. Despite specialist IP courts introduced in 2014, China remains a challenging jurisdiction for litigation. In the final slot before dinner we welcomed a scientific presentation from Laurence Pearl CSO of Domainex and Head of Life Sciences at the University of Sussex. Laurence took us through a journey of his experiences in research and how this resulted in “Four Patents and a Missed Opportunity”. The missed opportunity was a failure to patent protect a promising specific active site inhibitor of HIV protease (unfortunately in the light of discouraging advice from a patent agent at the time), which seven years later turned out to be very similar to important clinical drugs Ritonavir and Saquinavir. However, despite this early disappointment, Laurence went on to highlight four later innovations and associated patent applications, which have brought increasing business and clinical success. At the end of the first day we were then welcomed to dinner with a heartfelt pre-dinner talk from Michael Silverleaf QC, 11 South Square. Michael expressed his great concern and frustration with the treatment of the judiciary following the recent Article 50 ruling (relating to Brexit) at the High Court. There appeared to be a unanimous applause for Michael’s comments in the room. Michael then went on to express some colourful opinions on the way court decisions are decided.

Day two Day 2 was welcomed in by Charlotte Teall of Forresters who introduced the first speaker of the day Nigel Swycher of CIPHER. Nigel’s topic was “On the shoulders of giants: how patent analytics will help the life science industry”. Nigel started with an introductory video of IBM’s Watson, which uses machine learning and data science to make connections where humans cannot. Nigel contrasted the approach of patent searches that can take weeks to make connections and draw information that would take such machines five seconds. The use of IP analytics was described as a tool for pharma development to see where opportunities and gaps exist and to help focus research efforts and investment decisions. Mark Ridgway of Allen & Overy LLP followed with a discussion on “Second medical use claims. Where are we now?” Mark provided an overview of Warner-Lambert v Activis, which concerned the Court of Appeal providing an observation on the test for direct and indirect infringement when faced with second medical use claims. Whilst the comments were obiter, because the claim was struck down, the case should provide some useful insights in this area of infringement.

Missed this conference? Slides and mp3 recordings are available to purchase through CIPA. £280 for the whole conference or £25 for a talk.

www.cipa.org.uk

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PERSONAL CPD & EDUCATION

Next Dev Crease of Keltie provided a talk on “UK Case Law Update, The Best of The Rest”. The topics were: plausibility in enablement, novelty and inventive step, looking at MSD v Ono [2015] EWHC 2973 (Pat), Activis v Eli Lilly [2015] EWHC 3294 (Pat); obviousness, looking at AS & E v Rapiscan [2016] EWHC 756 (Pat); and other cases, such as Hospira v Cubist [2016] EWHC 1285 (Pat) (Prejudice in the art), FKB v AbbVie [2016] EWHC 2204 (Pat) (Declarations and Threats, including an “Arrow Declaration”), and Global Flood Defence v Beheer [2016] EWHC 99 (IPEC) (Threats). We next left the UK and went back east to an “Asia-Pacific IP Update” provided by Chong-Yee Khoo of Cantab IP Pte Ltd. We were treated to a grand tour of countries having the most significant changes including Japan, discussing product-by-process claims; India, discussing some filing formalities, examination and hearing developments; China, discussing features of use, human embryonic stem cell cases, and commercial success as an indicator of inventive step; Hong Kong’s new patents act; Indonesia, where claims to processes and improvements are now available, and there are new annuity rules; Malaysia, development of case law where dependent claims are invalid if the main claim is invalid; the TransPacific Partnership (unlikely following Trump’s intentions); and finally Singapore, case law updates, closure of the foreign route and changes in fees. Following the final tea break of the conference we returned to Seth Levy of Nixon Peabody LLP who provided a “US Law Update”. Seth provided an update on divided infringement

ANNOUNCEMENTS INSTITUTE EVENTS

(Akamai Technologies Inc. v Limelight Networks Inc. Fed. Cir. 2015 and Eli Lilly and Co. v Teva Parenteral Medicines, Inc, et al 1-10-cv-01376, SDIN); persisting §101 issues on diagnostic methods (Ariosa Diagnostics, Inc. v Sequenom Inc., 788 F.3d 1371, Fed. Cir. 2015); CRISPR patent interference; and the upcoming US Supreme Court case of Promega Corp. v Life Technologies, 773 F.3d 1338 (Fed. Cir. 15 December 2014). The final session was an “EPO Update Panel Discussion” chaired by Charlotte Teall (Forresters) with the speakers of Siobhán Yeats of the EPO, Hazel Ford of Finnegan Europe LLP and Christopher Rennie-Smith (European Patent Consultant and former chairman of an EPO BoA and member of the Enlarged BoA). The topics for discussion were the patenting of human embryonic stem cells and plants derived from a biological process; the speed of prosecution at the EPO and recent changes in practice; early certainty from opposition with changes in opposition processing; reform of the Boards of Appeal; and case law concerning disclaimers. A question-andanswer session followed. The 2016 conference was drawn to a close with a midday lunch to allow some final catch-ups between old friends and colleagues. We look forward to 2017 where motor-racing enthusiasts will be interested to know that the next location is near Silverstone Race Circuit.

A “Thank You” from the Informals The Informals are heavily reliant on the generosity of volunteers to make their various events happen. Those volunteers include not only the members of the Informals Committee but also a number of other people who give up their time to support the Committee’s work. On behalf of the Informals, I would like to thank the following individuals, who volunteered as tutors for the 2016 UK exam tutorials. Between them, they offered an impressive number of tutorials, covering all four of the PEB “Final” papers.

Jonathan Myers (Fellow), Barker Brettell LLP

Announcements HGF is delighted to announce that Mike Nelson (Fellow) will be moving to Basel in January 2017 to lead the HGF Basel office. The firm opened the office in February 2016 to predominately work with the Swiss healthcare Industry. Further details can be found at www.hgf.com. CIPA members please be aware the annual renewals for 2017 have been

Sarah Brearley, Elizabeth Dale, Callum McGuinn, Eliot Ward and Rhiannon Wescott of Mewburn Ellis; Philip Barnes, Ian Bingham and Isobel Creek of IP Asset; Kate Hickinson and Graham Johnson of Appleyard Lees; Lucy Barnes of J A Kemp; Patrick Lloyd of Reddie & Grose. If you are interested in volunteering as a tutor for future Informals tutorials, please look out for emails from the Informals Tutorial Coordinator.

issued and are due for payment in January 2017. If you have not received anything by email or post please contact renewals@cipa.org.uk to check your details and receive your subscription. Letters for the Editor and announcements

Ben Charig, CIPA Informals Honorary Secretary 2015-2016

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NOT-SO-SECRET DIARY

SEPTEMBER 2015

2015

The not-so-secret diary of a CIPA President

By Andrea Brewster

Dere CIPA, This is my Mum writing, to you to say that I cannot come in to the meeting’s in Lunnden today becuas I SEPT am to grumpy. someone have complaynd that I am bein to freindly with iPReg and that is not rite becuas Counsel dus’nt want me to be frendly with IPREG and i am only their to do what counsel sais I shud and not to do my own adjenda and stuff !! And my Mum, sais that is unfare becuas otherwighs how am I supost to be In Chahj of the Instagram or am i not in Chahj afterorl and if so plees cud someone giv me my life back. As its a long way, to go to lunnden and I wud of had to got up at 5.a.m. in the Morning witch, is two urly wen you are grumpy!! she sed i am not too go there and I am to stay and do sum sunbayvin wereby it is better that way and I can get less grumpy If you have a problem with this you shud contact the Under Sind, who is my mum and she ses she wil sort you out. Yours Respectfuly ex-seterah, Mrs Brewster (Mrs)

Today CIPA is conducting an evil experiment to see how many meetings you can subject human beings SEPT to in one day before they break. Thus we have a Congress Steering Committee meeting from 10 till 11 am, an Internal Governance Committee meeting from 11 am till 1 pm, and from 1 pm till 2 pm a meeting of the CIPA bigwigs, i.e. the VeePee and the EyePeePee and the Onssek and the Chief Eggsek and also me. At 2.30 pm there is a Council meeting, which I must chair, and straight after that there is an Ordinary General Meeting, which I must also chair, so actually it is far from ordinary. And then, apparently, it is Happy Hour. I am not sure what there is to be happy about. A meeting that starts at the same time as another meeting ends is not only unhealthy, it is a breach of basic human rights, such as for example the right to food and water and the right to check emails. The other subjects of the experiment survive longer, but I am well broken by half past one. I believe, nevertheless, that it is what one might term a Productive Day. We almost finalise the Congress programme,

apart from the bits I am supposed to have organised. We check the accounts and the budget, and then ignore them both for long enough to decide how to fund regional meetings and international liaison trips. We decide some stuff about regulation, which is largely to do with me being too namby-pamby and friendly and not realising that everyone I meet is actually trying to get one up on CIPA. We decide some stuff about committees, which is largely to do with them having to make a list of the things they do and then Council saying The list is not good enough go and do it again, so that in the end every committee’s list will say simply “We make lists.” We almost decide CIPA’s view on the EU referendum, too, except that we cannot agree on the wording. The rest of us refer to the referendum by the popular codeword “Brexit”. Mr Davies refuses to call it Brexit because he says Brexit is an ugly word, so he is particularly slow writing the minutes today because “referendum” may be more beautiful, as words go, but it has a whole lot more letters than “Brexit”. In the OGM I talk about the diversity task force (da-da-daDA!) and show people a video about unconscious bias. Everyone laughs and says We are not like that in the IP professions; we are not biased at all. Next month I will show them a video about irony.

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Mr Davies and I visit the President of the Law Society. This is a humbling experience. The Law Society has a gazillion members across the whole of SEPT the solar system, and it has the ear of everybody from the Lord Chancellor downwards, possibly upwards as well. And it is on telly a lot and famous around the world, so that the President has to do a lot of exhausting travelling because he is so much in demand. And also he has a real live drinks trolley in his office so he can serve us tea. He tells us what the Law Society is up to these days, which takes a while because what it is up to is Tons of Important Stuff. Then he asks what CIPA is up to these days. We sip our tea and shrug and we say, Well, pretty similar really, you know how it is.

www.cipa.org.uk

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NOT-SO-SECRET DIARY

I attend a meeting of the Litigation Committee. Lucky old Litigation Committee. The people there are dead excited about UK patent attorneys getting SE P T representation rights in the UPC. I do not find this exciting; I find it terrifying. But some people find it exciting. And this is why I am a CIPA President and not a patent attorney litigator. After the meeting I have lunch with the Chair of the Litigation Committee and the Chair of the Constitutional Affairs Committee. We talk about committee terms of reference. Council has decreed that forthwith shall each and every committee prepare for itself some duly fitting statement of the remit and objectives thereof, which shall be called Terms of Reference and shall be proffered for the blessing of Council to be bestowed upon them. They say We are not quite sure what to put in our Terms of Reference. I say Eat up we’ll think of something later. Towards the end of lunch, we are joined by the Chair of the EPO Liaison Ex-Sub-Committee of the Patents Committee and Vice-Chair of the International Liaison Committee’s Working Group for China, or Gwilym Roberts for short. Mr Roberts is too late for lunch so I buy him a coffee instead. Then I return to CIPA for a meeting with the Chair of the Designs & Copyright Committee. He is the sixth committee chair I have met with in the last two days. But it is important to be in with the committees at CIPA, because it is the committees who know what’s going on. Pretty much everyone else is just guessing.

10.30 am: The Protected Titles Committee holds a telephone meeting. There are only four of us, and I am only there because I am the Pee. It is hard to find SEPT people to get excited about Protected Titles. We talk about dissolving what’s left of the committee. We are thinking that if anyone is ever naughty enough to call themselves a patent attorney when they’re not a patent attorney, we can just set Mr Davies onto them. And it does not take a whole committee to set Mr Davies onto someone. In any case, why would anyone call themselves a patent attorney if they didn’t have to?

1 pm: CIPA Hall is packed. We have a live link-up to the EPO in The Hague, where some kindly folk are going to stage a mock oral proceedings for us to watch. Mr Roberts is chairing and I am there in case he needs anyone to blame. It is all extremely exciting. Every ten minutes or so, the live link-up becomes a dead link-up and we have to fetch Mr Mische from his den full of unpatentable subject-matter. He uses his IT skills to resuscitate the link-up and the excitement resumes. Eventually I learn that the IT Volume 46, number 1-2

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skills involve a green button with a picture of a telephone on. There is also a microphone that allows Mr Roberts to talk to the people in The Hague. Only, we are not allowed to use the microphone all the time because of the Echo, so Mr Roberts has to keep unplugging himself. When he forgets, I unplug him. The subject-matter of the patent-in-a-suit is a garden hose. It is so well claimed that it is anticipated by a device intended to keep cod steaks moist on the supermarket fish counter. The attorney in The Hague says the cod-steak moisturiser would be totally unsuitable for watering a garden, on account of it being too tiny. The Primary Examiner says but you might have a tiny garden. For instance a bonsai garden. This is a difficult argument to refute. When we reach the most exciting part of the oral proceedings, which is the part where the Examining Division has decided the auxiliary requests are as rubbish as the main request, we adjourn to discuss what the attorney in The Hague should do in response. The Primary Examiner is still going on about bonsai gardens. Goaded by Mr Roberts, we decide we would like to submit an auxiliary request number 2½, instead of auxiliary request number 3 in the instructions Mr Roberts was given beforehand. He plugs himself back in to break this news to the Examining Division. They become flustered. I have to unplug Mr Roberts again to avoid upsetting them further. There is much talk about the dimensions of garden hoses, and bonsai gardens, and PVC, and bonsai gardens. Eventually auxiliary request 2½ is rejected for being unplugged and insufficiently bonsai-d and auxiliary request 3 is allowed. It is time to press the red button with a picture of a telephone on, and send everyone home. That went well, says Mr Roberts. For the sixth time today, I unplug him.

I have managed to persuade Council that although our Strategic Plan is a three-year Strategic Plan, this does not mean we only have to look at it again in SEP T 36 months’ time. We need to Review it. We need to Refresh it. We need to keep it on a rolling programme of ongoing strategic-ness, because that is what being strategic is all about. So we hold a meeting. Just a few of us who really care about this type of thing. And although there are no flip charts this time, there are certainly 36 months’ worth of biscuits. Mr Davies takes notes, so that when he drafts the New Reviewed Refreshed Strategic Plan, he can pretend he only wrote what we told him to. We all know he makes it up as he goes along. But he does it so well.

The Not-so-Secret Diary is available in blog form, with additional material and more up-to-date news – http://thenotsosecretdiary.weebly.com/ JANUARY-FEBRUARY 2017

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NOT-SO-SECRET DIARY

With my colleagues at the day job, I am undergoing some coaching on time management. S E P T The coach says: identify your least productive times of day, and do your emails in them. I say I spend the least productive parts of my day in meetings. He says Do your emails in the more productive times then. I say I spend the more productive times in meetings too. He says When do you do your emails? I say I think I do my emails in my sleep. I say: Other people think that too.

SEPTEMBER 2015

I write up some meeting notes. The others say You cannot write that. Then I draft a letter on Important Regulatory Business. The others say You SEPT cannot write that either. Finally, I write a speech to welcome a new High Court judge, because that is apparently what the CIPA President has to do and no one was able to think quickly enough to avert this potential disaster. This time I am not going to show it to anyone; I am just going to go out there and say it. So there! A leader needs to be bold now and then, I feel.

New Year’s Message from the Editor

The Corpus Clock designed by John C. Taylor was unveiled in 2008. It represents many of the enigmas of time, running accurately but also irregularly, showing the correct time only once every five minutes, yet illustrating the endless progression of time.

King’s College Chapel is one of the landmarks of Cambridge, built from 1446 to 1515, with its stained glass windows completed in 1531, just in time to see England’s split with Rome in 1534, followed (in 1532 to 1536) by a rood screen dividing the chapel, celebrating Henry VIII’s marriage to Anne Boleyn, the cause of England’s separation.

Wishing you a very happy and successful New Year: time moves on, but history repeats itself Alasdair Poore, CIPA Editor Photo credits: www.johnctaylor.com and Adobe Stock

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PERSONAL

Going . . . e ot Rem

emote Year certainly likes to take you from one extreme to the other. After a month on the beach in Thailand, I think it would have come as quite a shock to be back in any big city, but Phnom Penh really takes the biscuit. I’ve heard the city described as the Wild, Wild West of the Far, Far East – and it made KL feel like a walk in the park. On the streets, cars speed past you, seemingly buoyed by a continuous sea of scooters (carrying everything from smartlysuited commuters to entire families, pets and even household appliances), punctuated by tuk-tuks. There appear to be no rules – traffic lanes are mere suggestions and even the pavements are fair game. Walking anywhere is a real obstacle course. There’s a constant soundtrack of engines, horns, music from a nearby wedding taking place in the middle of a road, and persistent tuk-tuk drivers hoping for your custom. And on top of that you have the dust, heat and humidity. It all makes every venture out of your front door feel like a major expedition. But persist, and you shall be rewarded – for Phnom Penh is a city of hidden gems. And one of the good things about travelling in a big group is that between you, you can unearth them pretty quickly. Before long we had found all sorts of coffee shops, cafes and restaurants that any of the big European cities would be proud of – plus peaceful oases in the form of shady courtyard gardens and colonial houses. It also turns out that tuk-tuks aren’t a bad way to get around – just cling on (to the vehicle and to your belongings), and shut your eyes at the intersections. And while at the moment it feels like these green shoots of regeneration are relatively few and far between, I’m sure that in a few years’ time it will be a quite different story. The city is changing before our eyes, with skyscrapers going up and construction cranes dotting the skyline. Undoubtedly this is a country looking to the future, and wanting to put its indisputably brutal recent history well behind it. That’s not to say they want it to be forgotten though, and I was surprised to find how willing and open the people I met were to talking about what had happened.

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Cambodia: Phnom Penh By Heather Lane (Fellow) One area where the devastation wreaked in those four short years, less than 40 years ago, is evident is the coastal region around the towns of Kampot and Kep, where we headed for our first weekend out of the city. Once a popular beach resort, Kep in particular is still a shell of its former self, with empty, derelict villas lining its wide and once-glamorous streets. Kampot seems to be more on the up, full of ice-cream parlours and pizza places with unlikely sounding names (“Ecstatic Pizza”, anyone?), and certainly making the most of its beautiful sweeping river. Nonetheless, visiting the ruins in the national park on Bokor Mountain – home to what was once a world-class resort, and even the King’s holiday retreat – was a sobering experience. On a happier note, we spent our final weekend visiting a very different set of ruins – the famous temple complexes of Angkor Wat, Angkor Thom and Ta Prohm, near the city of Siem Reap. Starting out before dawn, we made it to Angkor Wat in time to see the sun rise over the temple – just us and about 3000 other people with the same idea! I have never seen such a high density of selfie sticks. Nonetheless, the temples themselves more than lived up to expectations. Both huge and intricate at the same time, it is incredible to think how quickly they were built (I am told that Angkor Wat, albeit still unfinished, was constructed in 37 years – only just longer than it has taken to build me). Ta Prohm in particular I found stunning as it has not been cleared of trees or restored so it appears as if it is emerging from the jungle. All in all, I’ll have to admit that Cambodia was not the easiest of months, combining a steep learning curve with being the most outside my comfort zone I’ve felt yet. But then, Remote Year was never meant to be easy. Speaking of which, how better to end the Asia leg and kick off our three months in Europe than with an Opposition Appeal hearing at the EPO…? Next month: Split, Croatia (via Munich!) Heather Lane is a Senior Associate at Gill Jennings & Every LLP, working remotely while travelling round the world with Remote Year. If you cannot wait for next month’s Journal to find out how the Appeal hearing went, you can follow Heather’s adventures on her blog https://expatandtea.wordpress.com/ and on Instagram as @expat.and.tea http://www.gje.com/person-13-heather-lane.html www.remoteyear.com

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PERSONAL

Fahim Ahmed 1981-2016 With deep sadness, we announce the passing of our friend and colleague Fahim Ahmed. Fahim joined Elkington + Fife in 2008 and took over as Records Manager in 2009. With his friendly face, easy manner, and sharp sense of humour, from the start it was hard not to like him. He became known for an infectious chuckle and equally infectious enthusiasm that brought the firm closer together. He was somebody who might say anything, and to whom you could say anything back! Having grown up in north west London before studying economics at university, Fahim was streetwise and practical as well as bright. His north London roots gave him a love of Watford, Arsenal, and Saracens (where he was a season-ticket holder). Having family in the south of France connected him to another winning rugby team, in Toulon. He played amateur rugby himself as a fly-half, until he was forced to quit following a head injury. While he never managed to convince his work colleagues at E+F to join him on the rugby field, he did cajole many of them into various runs, adventure races, bike rides, and a triathlon. His small frame disguised serious athleticism and stamina – he ran several marathons and ultramarathons. Indeed, there was a time when he would go for a marathon-distance training-run in the morning before clocking on for a full day at the office. Fahim brought the same endless energy to his professional life. His range of talents was reflected in the diversity of his career, which sandwiched an entrepreneurial stint running his own decorating business between two longer periods in patent and trade mark formalities. Working in records certainly suited his methodical style and extraordinary memory for detail – traits which were also put to good use setting questions for the Christmas party table quiz at E+F (something that he instituted and made an annual highlight). As a manager, Fahim was loyal to a fault and took great pride in his team. Despite working at 100mph he

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invariably had time to chat and share a joke… preferably at the expense of Tottenham Hotspur. He was active both professionally and socially in the Inprotech European User Group (IEUG). While at E+F, he successfully managed a number of significant upgrades and extensions to the firm’s records-software and he had laid the groundwork for a new document management system when he fell ill in the summer of 2016. He was perhaps most memorable for his generosity – not only giving freely of his time, energy, and money for charitable causes (such as the Saracens Sport Foundation, for which he ran the London He will be missed Marathon in 2012 – finishing despite a immensely but dislocated shoulder), but his memory also on a personal level will continue to always being ready to inspire those help out or do a favour, who knew while rarely asking anything of others. him, just as These and other he inspired us qualities made him many during his life. enduring friendships. While some might find it unusual (and most would find it difficult) to remain friends with their ex-wife after divorce, it was somehow natural for Fahim to succeed in doing so. Fahim passed away at his home in Tonbridge on 14 December 2016, aged 35, after a short battle with cancer. He will be missed immensely but his memory will continue to inspire those who knew him, just as he inspired us during his life. He is survived by parents and relatives, to whom we extend our sincere condolences, by his many friends within the profession and beyond, and by his two cats, on whom he doted. Elkington + Fife

www.cipa.org.uk

12/01/2017 14:02:04

THE PINKS

COURSES

BASIC LITIGATION SKILLS COURSE 2017 PUBLIC COURSE DATES www.cpdtraining.net We currently have places available on the following public courses in central London:

6-10 March 2017 8-12 May 2017

11-15 September 2017 6-10 November 2017

The course and assessment comprises 4 days of intensive training; a short oral assessment on the morning of Day 4; and a 2 hour written assessment on Day 5. We only train small groups (maximum 16) to ensure every candidate gets individual attention. Feedback from our candidates is consistently excellent, with praise for our teaching style, course materials and the knowledge of our trainers. The price is £1,500 plus VAT per candidate. For more information or to make a booking please visit www.cpdtraining.net/bookings or contact Chris Taylor, Head of Litigation Training, on chris.taylor@cpdtraining.net. We also offer in-house courses at your firm, anywhere in the UK and on your choice of dates. We need a minimum of six candidates and offer discounts for larger groups. Please see our website for further details.

Case officers The IP Pro Bono service has been started with a very small group of voluntary case officers who meet regularly and develop a consistent policy for deciding who qualifies for assistance. A case officer needs a certain amount of time to be able to sift through papers and make an assessment of the applicant’s eligibility and the type of firm that would be able to provide advice. Case officers need to be able to provide a sympathetic ear and be able to understand the problem and tease out any necessary facts that will be needed to establish whether help is appropriate. The case officer will not be providing the assistance to the applicant themselves, but will refer them to a firm who has indicated a willingness to help. The case officer will make the introduction between the applicant (the ‘assisted party’) and the firm. The assisting firm will then establish a client relationship with the assisted party. This would be like any other client relationship except there will be a pro bono relationship with the assisted party and a provision for termination at a particular stage in the proceedings or on the conditions that may have been negotiated by the case officer. The case officer will not generally need to stay in touch with the assisted party until the matter is resolved. The scheme provides for the assisted party to make a new application for further assistance, if required, at a later date. At that point, the request for assistance will be assessed afresh. It may help (and be up to the case officers) if the same case officer performs the assessment and referral if the assisted party needs alternative or further assistance. See more details at: http://www.ipprobono.org.uk/how-to-volunteer.html

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THE PINKS

COURSES

REVISION COURSES FOR THE PEB 2017 EXAMS MAY, JUNE, JULY AND AUGUST 2017 We are holding residential revision courses in May, June, July and August for the 2017 Patent Examination Board (PEB) Foundation Certificate (FC) and Final Diploma (FD) examinations. We will announce course dates on our website towards the end of January 2017. For the FD papers, we are offering a range of options and an Introduction to FD4 course in May 2017. The courses, which are in Milton Keynes, include a residential element, but if accommodation is not required the course fee will be reduced. We have an online Moodle resources forum to support the courses. There are discounts for the booking of five or more courses by a firm. For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791959630. We are a CIPA Approved Training Provider. E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk Fax: +44(0)800 0664016 JDD Consultants, 5 Tennyson Road, Bedford MK40 3SB

Assimilate IP is providing the following courses at the London School of Economics: • Building, Managing and Monetizing Your IP Portfolio 20 February 2017 • IP for the Life Sciences and Pharmaceutical Industries 27 February 2017 • Freedom to Operate for the Life Sciences and Pharmaceutical Industries 20 March 2017 Full details can be found at: http://assimilateip.com/home. We are happy to offer CIPA members a 10% discount.

To advertise job vacancies, IP events or services to IP professionals in the CIPA Journal and / or the CIPA website please email sales@cipa.org.uk or call 020 3289 6445

56 CIPA JOURNAL

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Is it time to turn over a new leaf?

Patent Secretary : London TJB50669 Join a Practice at the top of its game. This highly regarded business is seeking a Patent Secretary to provide full and comprehensive secretarial and PA support at Partner level. Ideally CIPA qualified, you will be rewarded with not only a fantastic financial package but also a lovely working environment and active social scene. Patent Paralegal : London TJB50702 Paralegal sought to join the London office of this highly regarded IP firm. An exciting role awaits with lots of variety and plenty of scope to develop. Highly competitive salary package. In-House Engineering Attorney : North East VAC50462 Sought is a Patent Attorney from an Engineering or Generalist background with the commercial acumen to take the reins of this stand-alone role. Those from Part Qualified (EPA or CPA) standard upwards will be considered for the position should they have a strong commercial attitude and experience of strategic advice. *O )PVTF &OHJOFFSJOH 5SBEF .BSL "UUPSOFZ .JEMBOET 7"$ This is an In-House role with an enormity of variety, client contact and industry exposure. Required is an attorney from an Engineering background of at least finals standard, either EPA or CPA, or both! A significant part of the role will be Trade Mark filings and prosecutions, and whilst you do not require a qualification, being comfortable with these responsibilities is a pre-requisite to the role. First In-House Patent Attorney : Cambridge CEF50356 A successful and prominent start-up requires an expert Patent Attorney to join their Cambridge office. For the commercially minded, who are genuinely invested in the progression of a small enterprise, this is an exciting role with a rare opportunity to influence the company's development, both within the IP team and as a whole.

For further information about this selection of opportunities or to discuss any other aspect of IP recruitment, please contact: Tel: +44(0)113 245 3338 or +44(0)203 440 5628 or email: DBUIFSJOF GSFODI!TBDDPNBOO DPN t MJTB LFMMZ!TBDDPNBOO DPN WJDUPSJB DMBSL!TBDDPNBOO DPN PS UJN CSPXO!TBDDPNBOO DPN

$IFNJTUSZ "UUPSOFZ #FSLTIJSF $&' Fantastic In-House opportunity for an Attorney with a background in Chemistry to become part of a globally renowned FTSE 100 firm. If you're great at working autonomously and as a team, and have the commercial knowledge to see the bigger picture, this opportunity is for you! You will be 1-5 Years PQE and ideally dual qualified - excellent perks, international insight and a competitive salary awaits! Electronics Attorney : London or Cambridge CEF50529 Electronics Patent dynamo required for an innovative leading IP Firm! Our client, an internationally praised and acclaimed IP firm, requires an outstanding Electronics Attorney to join their Technology department. Expect a wide client base, from FTSE 100 innovators to impressive SME's from all across the globe. Part or Recently Qualified Chemistry Attorney : London LKA48936 Super Practice with an excellent reputation are looking for an additional part through to just qualified Attorney. You will undertake a full array of patent related tasks whilst benefiting from first-class training and regular 1:1s, supporting you to realise your short, medium and long term ambitions at every stage of your career. Life Sciences Patent Attorney, full or part time : London LKA49817 A real breath of fresh air! Modern, relaxed but impressive Private Practice offering ample flexibility regarding hours and home working in order to make the role work for you! Excellent quality work, lots of variety and client contact – a firm that can genuinely offer something different! Electronics & Engineering Attorney : Manchester LKA49813 Brand new opening for an autonomous, proactive Attorney to provide an exceptional client service for an existing portfolio. An impeccable caseload and the chance for the more ambitious to take a senior, lead role at an exciting time – definitely one to explore!

Scan the QR Code for our website

www.saccomann.com

A5XFFU VT BU XXX UXJUUFS DPN TBDDPNBOOJQ XXX MJOLFEJO DPN BU UIF A4BDDP .BOO *OUFMMFDUVBM 1SPQFSUZ (SPVQ ‘Sacco Mann is an equal opportunity employer and offers the services of an Employment Agency for Permanent Recruitment and an Employment Business for Temporary Recruitment’

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Dawn Ellmore Employment Patent, Trade Mark & Legal Specialists 3DWHQW $WWRUQH\V 1RUWK (DVW :H DUH FXUUHQWO\ ZRUNLQJ ZLWK D IULHQGO\ DQG IDVW SDFHG ÀUP LQ WKH 1RUWK (DVW RI (QJODQG WKH\ DUH H[SDQGLQJ DQG ORRNLQJ WR WDNH RQ QHZO\ RU IXOO\ TXDOLÀHG SDWHQW attorneys of any technical background. This role SURPLVHV H[FLWHPHQW FKDOOHQJHV DQG D VXSSRUWLYH professional atmosphere, as well as great pay.

(QJLQHHULQJ 6RXWK :HVW $Q H[FHOOHQW RSSRUWXQLW\ IRU D IXOO\ TXDOLÀHG DWWRUQH\ in the South West. Our client is looking for a candidate with a broad engineering background, capable of handling both mechanical and electrical engineering technologies. They are offering the opportunity to work with their varied and interesting client base.

,Q KRXVH 3DWHQW $WWRUQH\ We are pleased to be working on a fantastic opportunity WR MRLQ WKH VXFFHVVIXO DQG ZHOO HVWDEOLVKHG LQ KRXVH team of a multinational corporation in the South East of England. If you are a PQ / FQ Chemistry Patent Attorney ZLWK D VHQVH RI FRPPHULFDO DZDUHQHVV DQG H[SHULHQFH advising on patent protection, get in touch!

%LRWHFKQRORJ\ <RUNVKLUH Don’t miss this once in a career move for a part or IXOO\ TXDOLÀHG 3DWHQW $WWRUQH\ ,I VXFFHVIXO \RX ZRXOG EH ZRUNLQJ DPRQJ LQWHUHVWLQJ H[SHULHQFHG FROOHDJXHV GRLQJ JURXQG EUHDNLQJ ZRUN 2XU FOLHQW LV ORRNLQJ IRU someone between trainee level and FQ with 5 years PQE, but are open to hearing from anyone!

Chemistry Patent Attorney +DYH \RX TXDOLÀHG DV D SDWHQW DWWRUQH\ ZLWKLQ WKH ODVW 5 years? Is your technical background chemistry? Are \RX ORRNLQJ WR MRLQ D VXFFHVVIXO ÀUP RI ,3 VSHFLDOLVWV LQ London, with a chemistry department who can boast as clients many household names, universities and start ups? Then get in touch! This opportunity is for you!

Electronics Patent Attorney TPA/ PQ – Life Sciences $Q XQSDUDOOHOHG SULYDWH SUDFWLFH ÀUP LQ WKH 1RUWK :HVW LV ORRNLQJ IRU D SDUW RU UHFHQWO\ TXDOLÀHG SDWHQW attorney who specialisies in high tech subject matter, such as electronics or telecoms. Successful candidates FDQ H[SHFW DQ LPSUHVVLYH VDODU\ WKH RSSRUWXQLW\ WR ZRUN with a variety of clients and an increasing workload. 34 /LIH 6FLHQFHV /RQGRQ Due to a fast growing Life Sciences department, WKLV UHSXWDEOH ,3 ÀUP KDV D QHZ UHTXLUHPHQW IRU DQ attorney to work alongside some of the best minds in WKH SURIHVVLRQ 7KLV LV D ÀUVW UDWH RSSRUWXQLW\ IRU D KLJK calibre attorney who is seeking to progress their career DQG EH UHZDUGHG ZLWK DQ RXWVWDQGLQJ ZRUN OLIH EDODQFH

(OHFWURQLFV 34 14 $WWRUQH\ 'R \RX ZDQW WR ZRUN IRU D ÀUP ZLWK FOLHQWV UDQJLQJ from multinational corporations to SMEs and individual LQYHQWRUV" :H DUH ZRUNLQJ ZLWK D ÀUP LQYLWLQJ DSSOLFDWLRQV IURP SDUW RU UHFHQWO\ TXDOLÀHG DWWRUQH\V specialising in electronic engineering. The team is friendly and meritocratic and the work is interesting.

CALLING ALL PATENT SECRETARIES AND ADMINISTRATORS! $UH \RX DQ H[SHULHQFHG 3DWHQW 6HFUHWDU\" $UH \RX DQ H[SHULHQFHG 3DWHQW $GPLQLVWUDWRU" $UH \RX DQ ,QWHOOHFWXDO Property Legal Secretary seeking a change? If you answered yes to any of the above then we would love to hear from you! We are urgently seeking candidates ZLWK WKLV EDFNJURXQG WR ÀOO D PXOWLWXGH RI YDFDQFLHV :KHWKHU \RX KDYH PRQWKV H[SHULHQFH RU \HDUV WKHQ ZH have something to suit you! Patent secretarial and administrative duties will be required for all roles. This is an H[FLWLQJ WLPH IRU WKH LQWHOOHFWXDO SURSHUW\ DQG OHJDO LQGXVWU\ VR WDNH WKH RSSRUWXQLW\ WR MRLQ LW QRZ

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OPPORTUNITY IN AUSTRALIA A UK / EUROPEAN PATENT ATTORNEY! OPPORTUNITY INFOR AUSTRALIA FOR A QUALIFIED UK / EUROPEAN QUALIFIED

PATENT ATTORNEY!

Unspoiled nature, fantastic healthcare systems, wonderful weather and a laid back lifestyle... Interested? 'DZQ (OOPRUH (PSOR\PHQW LV WKULOOHG WR EH ZRUNLQJ ZLWK D IDQWDVWLF ÀUP LQ $XVWUDOLD LQ WKHLU VHDUFK IRU D 8. (XURSHDQ TXDOLÀHG SDWHQW DWWRUQH\ ZLWK D VWURQJ HQJLQHHULQJ EDFNJURXQG 7KLV UROH FDQ RIIHU VLJQLÀFDQW H[SRVXUH WR direct clients leading to a good amount of original drafting and prosecution. Our client is offering a high degree of DXWRQRP\ ZLWKLQ WKH UROH DQG JHQXLQH RSSRUWXQLWLHV IRU DGYDQFHPHQW ZLWKLQ WKH ÀUP $SSO\ QRZ DQG WDNH \RXU ÀUVW step towards a better lifestyle, fantastic pay and interesting work!

Patent Records Clerk

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We are currently working on 2 opportunities for H[SHULHQFHG UHFRUG FOHUNV ZLWK D YHU\ ZHOO UHVSHFWHG client. These roles would be initially started on a contract basis with a view to going permanent. This is D IDQWDVWLF RSSRUWXQLW\ IRU DQ H[SHULHQFHG FOHUN ZKR LV currently between jobs or someone looking for a change!

PA / Patent Secretary

If you are interested in working in a fast moving and UDSLGO\ H[SDQGLQJ HQJLQHHULQJ WHDP WKHQ 'DZQ (OOPRUH is currently working on the perfect opportunity! Our FOLHQW LV D SUHVWLJLRXV ÀUP ORRNLQJ IRU D SDWHQW VHFUHWDU\ to support their head of engineering. This opportunity ZRXOG VXLW VRPHRQH H[SHULHQFHG ORRNLQJ IRU D VWHS XS

Patent Team Secretary

'RQ·W PLVV WKLV RSSRUWXQLW\ WR ZRUN IRU D WRS WLHU ÀUP with blue chip clientele. This role promises plenty of responsiblity and interesting work for a candidate with SOHQW\ RI SDWHQW NQRZOHGJH DQG D ÁDLU IRU 3$ ZRUN If successful, you would be working closely with an impressive electronics partner.

$UH \RX DQ H[SHULHQFHG SDWHQW VHFUHWDU\ ZKR ORYHV ZKDW \RX GR DQG LV UHDG\ IRU WKH QH[W SHUIHFW VWHS LQ \RXU career? Dawn Ellmore is currently working on a fantastic opportunity for a candidate looking for an impressive salary and genuine opportunities to learn and progress. -RLQ D SURJUHVVLYH DQG IULHQGO\ ÀUP WRGD\

Float Patent Secretary

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Patent Secretary

Variety is the spice of life! A leading London Patent and Trade Mark practice has an opportunity for a proactive Patent Float Secretary to assist at all levels within all departments and technical disciplines. This role would VXLW DQ H[SHULHQFHG VHFUHWDU\ ORRNLQJ IRU D YDULHG DQG rewarding role offering an attractive salary.

Patent Administrator

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Incredible opportunity within a successful and SURJUHVVLYH ÀUP LQ WKH 6RXWK :HVW ZLWK D UHSXWDWLRQ IRU SURIHVVLRQDO H[FHOOHQFH DQG HPSOR\HH VDWLVIDFWLRQ 2XU client is looking for a motivated patent administrator ZLWK SUHYLRXV H[SHULHQFH WR MRLQ WKHLU WKULYLQJ WHDP 7KLV LV D SHUIHFW QH[W VWHS LQ D FDUHHU LQ SDWHQWV

Dawn Ellmore Employment

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

@Dawn_Ellmore

+44 (0)20 7405 5039

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DawnEllmore1

www.dawnellmore.co.uk

12/01/2017 13:52:24

THE PINKS

RECRUITMENT

PERSONAL

EXPERT

DISCREET

Patent Attorney – Chelmsford Area 2XU FOLHQW LV D PHGLXP VL]HG ZHOO HVWDEOLVKHG DQG YHU\ VXFFHVVIXO UHJLRQDO ĆUP WKDW ODVW \HDU RSHQHG DQ RIĆFH LQ &KHOPVIRUG 7KH\ KDYH UHWDLQHG XV WR DGYLVH LQ UHFUXLWLQJ RQH RU PRUH TXDOLĆHG SDWHQW DWWRUQH\V LUUHVSHFWLYH RI VXEMHFW PDWWHU VSHFLDOLVP ZKR PD\ FXUUHQWO\ EH OLYLQJ LQ WKDW DUHD DQG ZKR ZDQW HLWKHU WR EH EDVHG WKHUH ZLWK WKHLU FDUHHU IURP QRZ RQZDUGV RU WR ZRUN EHWZHHQ &KHOPVIRUG DQG WKH ĆUPèV /RQGRQ RIĆFH

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We’re hiring! Avidity IP invite applications for the following key positions. All roles are advertised on a full time basis, however we always consider individual FLUFXPVWDQFHV DQG FDQ R΍HU ȵH[LEOH RU SDUW WLPH working for those seeking an improved work/life balance. $OO UROHV R΍HU D FRPSHWLWLYH SDFNDJH WR LQFOXGH bonus scheme and, upon completion of one year’s service, participation in the employee ownership dividend scheme. For more information and to request a job description, please email: jessica.obrien@avidity-ip.com

AVIDITY IP 60 CIPA JOURNAL

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Senior European Patent Attorney (QJLQHHULQJ 2[IRUG RU &DPEULGJH 5HFHQWO\ 4XDOLȴHG (XURSHDQ 3DWHQW $WWRUQH\ (QJLQHHULQJ 2[IRUG RU &DPEULGJH Senior European Patent Attorney /LIH 6FLHQFHV 2[IRUG RU &DPEULGJH 5HFHQWO\ 4XDOLȴHG (XURSHDQ 3DWHQW $WWRUQH\ /LIH 6FLHQFHV 2[IRUG RU &DPEULGJH Experienced Patent Secretaries &DPEULGJH Records & Formalities Manager Stratford-upon-Avon

www.avidity-ip.com/vacancies

www.cipa.org.uk

12/01/2017 13:52:57

3…2…1… Trainee Patent Attorney, Electronics, London Get the best possible support and training in order to develop into a fully rounded and successful patent attorney. There’s nothing wrong with making a move early on in your career, and this firm will most definitely help with the transition – with a close knit family feel and a substantial portfolio of international clients to choose from.

Senior Associate, Electronics/Engineering, Midlands Do you feel overlooked for Partnership? Have you reached a stalemate in your career and no longer feel challenged? This firm can help with that – there’s an all but guaranteed track to Partnership within a two year time frame and an established client base of interesting local start-ups and larger multinationals waiting for you.

Recently Qualified Patent Attorney, Physics, London It’s sometimes difficult to get the variety of work you would like, with work often originating from a single major client. This is far from the case at this firm, who ensure that each attorney has exposure to technologies spanning the entire breadth of their expertise and interest.

Newly Qualified Patent Attorney, Biotechnology, London This firm invests heavily in local industry and is known for their involvement with initiatives supporting start-ups across the biotechnology field. The practice is commercially astute and the firm on the whole is not afraid of making bold decisions to ensure they remain ahead of the competition.

Partner Opportunity, Yorkshire Given the range and mix of existing clients available, this role is both commercial in respect to providing strategic IP advice as well as procedural in terms of original drafting and prosecution. There will be opportunities to be involved in firm management, business development and training, as well as funded overseas trips.

Up to 2 Years’ PQE, Electronics, London Work alongside an incredibly diverse team of IP specialists across a range of offices in the UK and Europe, and provide a truly full service offering to your clients. The firm has particular expertise in the technology, communication and media sectors, and has strong client relations in Europe and Asia.

Finalist, Physics, South Join a firm with a strong reputation and foothold in Europe, and benefit from a dedicated tried and tested training scheme. The firm places a huge investment in the ongoing development of their attorneys, with regular in-house seminars, encouragement to attend CPD events, and close contact with Partners available at every stage of your career.

Qualified Patent Attorney, Chemistry, London Gain a great deal of responsibility and the opportunity to develop your career in a way that suits your interests. The role will encompass the full range of patent activities, and you will also be encouraged to develop your client skills through business development initiatives and attendance at networking events as well as delivering seminars and joining working groups.

Recently Qualified Patent Attorney, Physics, North Manage a portfolio of diverse and interesting local clients, plus wide ranging and dynamic international corporations. Build relationships with SMEs and universities, and help develop and organise their IP strategies through IP capture, drafting, filing and prosecution in the UK and Europe, as well as coordinating a network of associate attorneys internationally.

Qualified Patent Attorney, Mechanical Engineering, South Be instrumental in the development of your clients' IP strategy through IP capture, opinion and advisory work. The existing work originates predominantly from direct clients, allowing for significant client contact, with a degree of agency work enabling you to gain experience liaising with and instructing foreign associates from across the world.

Part Qualified Patent Attorney, Engineering, London Become part of an extremely specialised and successful team, and be fully supported throughout your UK and EU qualification. The firm are strong believers in experiential learning and encourage their attorneys to become involved in business development, client contact and the more strategic areas of the business from day one.

Patent Attorney, Engineering, Manchester Client satisfaction is at the forefront of this firm’s ethos, as is departmental connectedness and the provision of an open and supportive working environment. The firm offers its attorneys a great deal of room for professional development and the opportunity to work on a broad and challenging client portfolio.

For more information or to apply to any of these roles speak to Pete Fellows or Phillipa Holland on 0207 903 5019 or email: contact@fellowsandassociates.com. www.fellowsandassociates.com @fellowsandassoc

www.linkedinfellows.com google.com/+FellowsandAssociates

Fellows and Associates Ltd. acts as an agency within the meaning of the Conduct of Employment Agencies and Employment Businesses Regulations 2003. We operate a strict equal opportunities policy. Fellows and Associates is a trading name and registered UK trade mark of Fellows and Associates Limited

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ELECTRONICS  MANCHESTER Qualiﬁed (Ref: 970591) Join the North-West Migration. Join a market leading electronics and engineering practice and grasp WKH RSSRUWXQLW\ WR VLJQLȶFDQWO\ contribute to the development of the newly formed Manchester RIȶFH RI WKLV KLJKO\ UHJDUGHG ȶUP $ ȷDW PDQDJHPHQW VWUXFWXUH ensures a comfortable and ȷXLG FRPPXQLFDWLRQ EHWZHHQ WKH SDUWQHUVKLS DQG WKH ȶUPƱV H[SDQGLQJ ZRUNIRUFH 'XH WR WKH LQIDQF\ RI WKH QHZ SUDFWLFH RSSRUWXQLWLHV H[LVW IRU WKRVH RI ERWK VHQLRU DQG MXQLRU TXDOLȶHG VWDWXV $ UHPXQHUDWLRQ SDFNDJH WR match that of London counterparts will be offered to the successful DSSRLQWHHV

ELECTRONICS/ENGINEERING  LONDON Qualiﬁed or Finalist (Ref 970764)

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the detail... WKDW ZKHQ \RX FRQWDFW XV DERXW D VSHFLȶF UROH ZH ZLOO UHDGLO\ VKDUH WKH ȶUP WKH WUDLQLQJ DQG GHYHORSPHQW RIIHUHG DQG JLYH \RX DQ RYHUDOO FOHDU BIOTECHNOLOGY  LONDON Finalist to Newly Qualiﬁed (Ref 907139)

ELECTRONICS  LONDON OR BRISTOL Qualiﬁed or Finalist (Ref 907113)

Be A Contentious Specialist. $ UDUH RSSRUWXQLW\ WR IRFXV H[FOXVLYHO\ RQ FRQWHQWLRXV ZRUN ZLWKLQ WKH ELRWHFKQRORJ\ DQG SKDUPDFHXWLFDO GLVFLSOLQHV <RX ZLOO MRLQ D PDUNHW OHDGLQJ SUDFWLFH WKDW LV OHG E\ D UHQRZQHG SDUWQHU ZLWK DQ LQWHUQDWLRQDO UHSXWDWLRQ 'XH WR VLJQLȶFDQW YROXPHV RI ZRUN RSSRUWXQLWLHV H[LVW IRU WKRVH DW QHZO\ TXDOLȶHG RU ȶQDOV VWDQGDUG OHYHO 7KH ȶUP DV ZKROH KDV JURZQ VLJQLȶFDQWO\ LQ UHFHQW \HDUV DQG QRZ UHVLGHV LQ RQH RI WKH &LW\ƱV PRVW LFRQLF EXLOGLQJV $Q H[FHOOHQW ZRUNLQJ HQYLURQPHQW H[LWV ZLWKLQ WKH ȶUP ZLWK UHJXODU VRFLDO HYHQWV WDNLQJ SODFH

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ELECTRONICS/ ENGINEERING  EAST MIDLANDS Qualiﬁed & Part Qualiﬁed (Ref: 927120) Consider A Move to The Regions. Intrigued by the prospect of a move WR WKH UHJLRQV" 6HHNLQJ D FOHDU SDWK WR SURJUHVVLRQ" $ EHWWHU ZRUN OLIH EDODQFH" 7KLV WKULYLQJ ȶUP WLFNV ERWK RI WKRVH ER[HV 6HHNLQJ WR EROVWHU LWV EXV\ HQJLQHHULQJ DQG HOHFWURQLFV SUDFWLFH WKH ȶUP LQWHQGV WR DSSRLQW ERWK D TXDOLȶHG DQG SDUW TXDOLȶHG DWWRUQH\ 7KH ȶUP KROGV DQ HQYLDEOH FOLHQW OLVW DQG FDQ RIIHU DQ H[WHQVLYH YDULHW\ RI ZRUN 'HVSLWH EHLQJ RQH RI WKH 8.ƱV ORQJHVW HVWDEOLVKHG ȶUPV WKH HQJLQHHULQJ WHDP UHPDLQV GHOLEHUDWHO\ FRPSDFW resulting in an inclusive and supportive ZRUNLQJ HQYLURQPHQW $ FRPSHWLWLYH remuneration and relocation packages ZLOO EH DYDLODEOH

ENGINEERING OR ELECTRONICS  GLASGOW Partner or Associate (Senior) (Ref: 970810) New Start-Up Opportunity/Established Firm. $UH \RX D *ODVJRZ RU (GLQEXUJK EDVHG 3DUWQHU 'LUHFWRU RU 6HQLRU $VVRFLDWH HDJHU IRU D UHYLWDOLVLQJ QHZ EXVLQHVV RSSRUWXQLW\" ([FLWLQJ WLPHV OD\ DKHDG IRU WKLV H[SDQGLQJ IRUZDUG WKLQNLQJ ȶUP DV LW H[SDQGV LWV RSHUDWLRQV LQWR 6FRWODQG LQ 5HQRZQHG IRU LWV VHFWRU OHDGLQJ HOHFWURQLFV DQG HQJLQHHULQJ SUDFWLFHV WKH ȶUP LV VHHNLQJ WR DSSRLQW a senior attorney at either partner or senior associate level to lead a QHZ *ODVJRZ EDVHG RIIHULQJ :KLOVW DQ DELOLW\ WR GHYHORS EXVLQHVV LV DQ HVVHQWLDO TXDOLW\ WKHUH ZLOO EH DPSOH H[LVWLQJ SRUWIROLRV IRU \RX WR ZRUN RQ LQLWLDOO\ HQVXULQJ D VPRRWK WUDQVLWLRQ IURP \RXU FXUUHQW UROH <RXU H[SHUWLVH PD\ EH LQ HLWKHU RI WKH HOHFWURQLFV RU WKH PHFKDQLFDO FKHPLFDO HQJLQHHULQJ ȶHOGV 2YHU WKH ORQJ WHUP \RX ZLOO GHYHORS DQG OHDG D VHOI JHQHUDWLQJ SUDFWLFH WR VWDQG DORQJVLGH WKH ȶUPƱV RWKHU 8. DQG LQWHUQDWLRQDO RIȶFHV 7KH ȶUP RSHUDWHV DQ LQQRYDWLYH DQG PDUNHW leading bonus structure in addition to the provision of a rewarding DQG YHU\ FRPSHWLWLYH VDODU\

IT & ENGINEERING  LONDON Part Qualiﬁed (Ref: 907178) Open Remit. 3DUW TXDOLȶHG HQJLQHHULQJ RU electronics specialist seeking a new project? The IT & engineering team at this top UDQNHG ȶUP DUH LQ WKH XQLTXH SRVLWLRQ RI KROGLQJ VXIȶFLHQW work in in both disciplines to accommodate a part TXDOLȶHG KLUH 7KLV LV D XQLTXH opportunity to make your mark in an internationally UHQRZQHG ȶUP WKDW KDV H[SHULHQFHG D FRQWLQXRXV upwards trajectory in recent WLPHV $ WUDQVSDUHQW DQG uncluttered career path DZDLWV

ENGINEERING  BRISTOL Qualiﬁed or Finalist (Ref 907137)

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Rapid Development. $V WKLV \RXQJ DQG G\QDPLF ȶUP FRQWLQXHV WR GHYHORS LWV KLJKO\ LPSUHVVLYH FOLHQW SRUWIROLR RSHQLQJV DUH DYDLODEOH IRU SDUW DQG IXOO\ TXDOLȶHG DWWRUQH\V LQ ERWK RI LWV HOHFWURQLFV DQG OLIH VFLHQFHV GHSDUWPHQWV 7KH ȶUP LV OHG E\ WZR YHU\ ZHOO UHVSHFWHG DQG SURPLQHQW ȶJXUHV ZLWKLQ WKH SURIHVVLRQ ZKR DUH UHQRZQHG IRU WKHLU SURYLVLRQ RI D KLJK TXDOLW\ VHUYLFH DQG FOLHQW GHYHORSPHQW VNLOOV $ YDULHG FDVHORDG will be available to an attorney who is enthused at the prospect of working within DQ HQYLURQPHQW WKDW GLIIHUHQWLDWHV IURP WKDW RI D ODUJH ȶUP 7KH ȶUP LV DFWLYHO\ VHHNLQJ WR H[SDQG LWV SDUWQHUVKLS DQG H[FHOOHQW RSSRUWXQLWLHV IRU SURJUHVVLRQ H[LVW

Career Legal is a recruitment agency and are advertising these vacancies on behalf of their clients To enquire about any of the above opportunities, please contact Dan Lloyd on 020 7628 7117 or email danlloyd@careerlegal.co.uk

REC-pp62-63-career legal_DPS_2.indd 63

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THE PINKS

RECRUITMENT

In partnership with

IP Recruitment Specialists 35 years experience

TUFQIFO!DBTFMUPODMBSL DP VL

Senior Patent Attorney

Patent Attorney

THE NETHERLANDS

HOME COUNTIES

Specialism: Electronics / Physics

Specialism: Biotechnology and Life Sciences

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Technology Transfer / Licensing

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LONDON

Specialism: Physics / Engineering

Specialism: Mechanical / Electrical

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

patentlyjobvious.com

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Your partners in Patent recruitment

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

Elec/Physics/TeleComm/Mech Eng

Electronics

Software Engineering

Qualiﬁed - Birmingham

Part / Qualiﬁed - London/Southampton

Trainee - London

Ref: 124305

Ref: 118671

Ref: 124284

An open remit exists in Birmingham for patent

You will be working with a specialist team of

You are undertaking or have passed the certiﬁcate in

attorneys

electromechanical attorneys and design solicitors

Intellectual property Law or MSC in Management of

electronics or mechanical engineering backgrounds.

handling

Intellectual Property Law with a Computer Science

You will work closely with the group’s lead partner

design matters. Would you like to maximise your full

or Software Background.

pro-actively contributing towards the development of

potential and achieve your long term career goals?

and comes from growth. This appointee will play a

the group and the business. The successful candidate

Feel like you have heard this before? The ﬁrm has a

pivotal role in the strategic development of existing

will have the ability to work independently and work

fantastic proven track record of delivering this. The

and future clients. Closely linked with a lead partner

directly with small, medium and large industrial

ﬁrm is fully committed to enabling you to achieve

you will be entrusted to build and nurture close

clients and universities in the UK and overseas.

your goals at the pace that works for you.

relationships with a global technical team.

Patent Attorney

Attorney

Engineering & IT/Software

Trainee - Nationwide

Part Qualiﬁed - Nationwide

Qualiﬁed - East Anglia

Ref: 124333

Ref: 124315

Ref: 120211

Are you seeking a trainee patent attorney position

Are you a part qualiﬁed Patent Attorney considering

The Cambridge branch of this ﬁrst tier ﬁrm is in

with a well-respected Intellectual property ﬁrm

your career prospects? I am working with a ﬁrm

expansion mode and seeks a mid-level qualiﬁed

that has a proven track record of developing

that has grown from 15 partners to 42 within 8

attorney with broad experience of either mechanical

careers? If so, I want to hear from you, I am

years. This success is largely due to their fantastic

engineering or electronics related subject matter.

working with a variety or ﬁrms throughout the

people and the company’s commitment to training

Whilst there are extensive existing portfolios for you

UK seeking such individuals. Once I understand

and developing their staff. There is an open door to

to work on, you will be provided with ample support

your career motivations, I can help advise the

progression that is not reliant on other people moving

and encouragement to contribute to the continued

companies best equipped to introduce you to and

within the organisation. Impressive expansion plans

development of the practice. A very competitive

kick start your patent career.

with nationwide opportunities.

salary will be available to the successful appointee.

Engineering/Physics

Chemistry

Electronics

Part Qualiﬁed - West Midlands

Qualiﬁed - London

Part / Newly Qualiﬁed - London

Ref: 120116

Ref: 124268

Ref: 120151

Experience an engaging yet supportive working

Qualiﬁed

environment at this highly regarded Midlands

constraints?

based patent ﬁrm. Due to high volumes of fantastic

autonomous

This

for thought for those enthused at the prospect

work, the ﬁrm is seeking an additional part qualiﬁed

international ﬁrm have a strong presence in

of becoming involved in contentious matters

attorney to assist its hi-tech team with mechanical

London as well as a solid reputation in Europe.

early in their career. Working with a client base

engineering and physics related subject matter. You

An opportunity has now arisen for an attorney

containing cutting edge technology corporations,

will hold an excellent academic record and have

specialising in chemical subject matter to join its

you will assist in a range of contentious activities,

between six months and two years’ experience in

busy London office. A competitive salary and good

opposition’s appeals and litigation support. Drafting

the profession.

promotional prospects will be on offer.

and prosecution work will also form a signiﬁcant

with

high

tech,

physics,

telecoms,

all

non-contentious

chemistry

and

specialist

Seeking working

contentious

shackled

New to the company

In a market where opportunities for electronics

collaborative,

attorneys are plentiful, this role presents food

environment?

percentage of the role.

For further details regarding any of the roles please contact Lee Townsend Managing Consultant. Absolute conﬁdentiality is assured.

Email attorneys@g2legal.com

Tel 0207 649 9296

G2 Legal 26 Finsbury Square London EC2A 1DS

REC-pp65-G2_1.indd 65

Mob 07426 043744

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

12/01/2017 13:56:11

THE PINKS

RECRUITMENT

New Year, New Start! ßäæäñæü éòõ ä ÚøäïìĤèç Ùä÷èñ÷ Ê÷÷òõñèü If you are looking to move your career forward and have a genuine say in the GLUHFWLRQ RI \RXU SRVW TXDOLǌFDWLRQ UROH WKHQ KHUH LV WKH RSSRUWXQLW\ IRU \RX 6ZHHWLQEXUJK DQG :LQGVRU DUH D JURZLQJ ǌUP RI SDWHQW DQG WUDGH PDUN DWWRUQH\V EDVHG LQ &UDZOH\ :HVW 6XVVH[ :H DUH VLWXDWHG EHWZHHQ /RQGRQ DQG %ULJKWRQ DQG ZRUN ZLWK D EURDG VFRSH RI FOLHQWV IURP 60(V DQG XQLYHUVLWLHV WR VSLQ RǋV DQG RYHUVHDV DVVRFLDWHV :H DUH ORRNLQJ IRU D TXDOLǌHG &3$ DQG RU (3$ WR WDNH RYHU DQ H[LVWLQJ SRUWIROLR RI ZRUN DQG WR EHFRPH DQ LQWHJUDO SDUW RI WKH ǌUP PRYLQJ IRUZDUG <RX ZLOO EH JLYHQ WKH RSSRUWXQLW\ WR KDYH D VD\ LQ KRZ \RXU UROH GHYHORSV EXLOGLQJ RQ \RXU H[LVWLQJ SRVW TXDOLǌFDWLRQ H[SHULHQFH LQ D G\QDPLF ZRUNLQJ HQYLURQPHQW ZLWK D IULHQGO\ DQG VXSSRUWLYH WHDP DQG HQMR\LQJ D FRPSHWLWLYH VDODU\ ZLWK SHUIRUPDQFH UHODWHG ERQXVHV If you are interested, then please send a CV to Mark or Louise via mail@sweetwindsor.com

GSK Consumer Healthcare Senior Counsel, Patents – Nyon, Switzerland Purpose of the Job We are currently looking for a high calibre qualified Patent Attorney, to join the Consumer Healthcare patent group in Nyon, Switzerland (close to Geneva), or possibly in London, to support the research groups based in Nyon. Successful candidate will face the full range of patent challenges associated with protecting and defending today’s products and the product opportunities of tomorrow; including a high proportion of direct-client, transactional and EPO opposition work. He/She will be involved in the whole variety of IP challenges you would associate with managing products at all different stages of lifecycle. To take advantage of this opportunity you will need a first degree in a Physical or Life Science, Patent support of the Consumer Healthcare business will involve experience in the drafting and prosecution of formulation inventions and mechanical inventions. Ideally, you will have achieved qualification as a European Patent Attorney and may have a national Patent Attorney qualification.

Basic qualifications • • • • •

First degree in a Physical or Life Science; Fully qualified European Patent Attorney; You will have at least about 6 to 10 years’ experience of patents in the Physical or Life Science field, either in private practice or industry; You will have excellent written and oral skills in English; The job further requires exceptional interpersonal and communication skills, and the candidate should enjoy working in a culture that is changeorientated, entrepreneurial and fast-moving.

To find out more and apply, just click on the link below: https://careers.peopleclick.com/careerscp/client_gsk/external1931/gateway.do?functionName=viewFromLink&jobPostId=316821&localeCode=en-us

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A new w agee in n IP reccru uittmen nt.

We Recruit. You Protect. www.ip-support.co.uk

REC-pp67-law support group_bleed_1.indd 67

020 7776 8966

info@ip-support.co.uk

12/01/2017 13:57:04

THE PINKS

RECRUITMENT

Qualified Patent Attorney

Dublin, Ireland

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

John A. O’Brien & Associates Patent Attorneys

Qualified European Patent Attorneys We are recruiting qualified European Patent Attorneys to join our team in Dublin. Our company is one of the leading patent attorney firms in Ireland. We work directly with a wide range of clients to optimise patent strategy. The successful candidate will be exposed to varied and challenging work in a dynamic environment. The ideal candidate will be a fully qualified EPA with 3 years’ relevant experience. An honours degree in chemical, mechanical, or biomedical engineering, or a related discipline is preferable. This position offers a highly competitive salary and excellent opportunities for progression.

Please send your CV to our office manager Colm O’Brien: colm@obrienja.ie Feel free to contact Colm directly should you wish to discuss the role in more detail on +35312883877.

Duncairn House, 14 Carysfort Avenue, Blackrock, County Dublin, Ireland. 68 CIPA JOURNAL

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www.cipa.org.uk

12/01/2017 13:57:37

THE PINKS

Rosemary Dena Laurence Gail Richard Elle-Mai Edwin Valentina

Theo Wai Yee Debbie Ruth Bobby Kristina Alistair Greg

RECRUITMENT

Robin Carrollanne Gwilym YOU Harry Roxna Sarah Magdalena

Priya Martin Tom Dayle Iain Edmund Paloma Amanda

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

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hiring@kilburnstrode.com

020 7539 4257

Volume 46, number 1-2

REC-pp69-kilburn and strode_1.indd 69

JANUARY-FEBRUARY 2017

CIPA JOURNAL

12/01/2017 13:57:56

THE PINKS

RECRUITMENT

IT & Engineering Vacancies in Cambridge, London and Manchester Our IT & Engineering practice is thriving across all of our offices and we are keen to hear from ambitious, commercially minded attorneys who would like to join us.

If you have a background in electronics, telecommunications, software, physics or engineering and are interested in working with a lively, fun team focused on adding value for clients across the globe, we’d love to hear from you. !,-0)ì;)ì0-/)ì83ì+-:)ì6)74327-&-0-8=ì %7ì7332ì%7ì396ì%88362)=7ì%6)ì 6)%(=ì*36ì-8Aì8,)6)ì;-00ì%0;%=7ì&)ì 7944368Aì+9-(%2')ì%2(ì731)32)ì 83ì&392')ì-()%7ì3**ì;,)2ì=39ì 2))(ì-8@

With a clear career progression path, first rate support systems and a truly meritocratic environment we are confident we have a lot to offer you in return. For a confidential chat call Morwenna Scholes our HR Director on her direct line: 020 3770 6127 or apply direct to mscholes@mathyssquire.com

Mathys & Squire LLP T +44 (0)20 7830 0000 // E info@mathys-squire.com // @Mathys_Squire // www.mathys-squire.com London // Manchester // Cambridge // York // Paris // Munich

70 CIPA JOURNAL

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THE PINKS

RECRUITMENT

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Volume 46, number 1-2

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JANUARY-FEBRUARY 2017

CIPA JOURNAL

12/01/2017 13:58:41

“Coming together is a beginning; keeping together is progress; working together is success” – Henry Ford

Director/Partner Designate Swindell & Pearson · Equity available within two years · Mechanical, electronics or physics technical background · Substantial support for building own practice · No client following required

For more information visit: www.fellowsandassociates.com/swindell To apply contact Pete Fellows or Phillipa Holland Phone: +44 20 7903 5019 Email: contact@fellowsandassociates.com

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12/01/2017 13:59:01

Olswang is an industry leading Tech, Media and 7HOHFRPV ODZ ¿UP ZLWK D commanding reputation in Intellectual Property. Olswang is unique in the market, as its IP group is:

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A competitive salary and FRPSUHKHQVLYH EHQH¿WV SDFNDJH

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A values driven environment

3-IBC-olswang-2017_1.indd 3

12/01/2017 09:13:21

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

4-OBC-DYoung-Jan-Feb2017_1.indd 4

12/01/2017 09:13:39