CIPA Journal, March 2017 by CIPA Journal

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

March 2017 / Volume 46 / Number 3

Review of patent cases The last decision in Sir Robin Jacob’s long and fruitful judicial career

The Chartered Institute of Patent Attorneys

Visibility in Community designs Nick Braddon

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UPC countdown: not just another false dawn? Alan Johnson

Measurement and patentability Matthijs Branderhorst

Car crash derails IPEC Alasdair Poore and Mark Pearce

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 (original photograph by Robert Chadwick) 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 CITMA) 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 Coordinator: Johanna Lynch Membership and Events Coordinator: Charlotte Russell Membership Finance Coordinator: Frances Bleach Chief Executive Lee Davies Executive Assistant Antoinette Sinesi 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 38 15

UP FRONT

ARTICLES

EDUCATION

70 75

Institute events Patents Case Law – Bristol

Trade Mark seminar

The USPTO post-Alice

Editorial

Alasdair Poore 3

Dr Matthijs Branderhorst

Council Minutes

Lee Davies

Measurement and patentability

Community designs

Y. Suzanne Orian

Nick Braddon

NEWS

UP & UPC – getting ready to practice

Pippa Allen 9

Alexis Harper

Alan Johnson 18

Countdown to the UPC Review of UK patent cases in 2016

Bristows team 38

PERSONAL

Car crash derails IPEC

Alasdair Poore, Mark Pearce

UPC: where we are and why

Dr Anthony Breen

Rebecca Gulbul 10 10 11 15

Overseas Report

Amanda R. Gladwin

DECISIONS

Italy ratifies the UPC Agreement Official News

Patent decisions

Manual of Patent Practice updates

IPO decisions

79 80

Announcements Going Remote

Heather Lane Beck Greener

THE PINKS

Barker Brettell

UPC to open December 2017

Alan Johnson

The not-so-secret diary

Andrea Brewster

EPO decisions

Bristows 60

Trade marks and other IP

82 83 84

Courses and events International Recruitment

Bird & Bird

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Editorial

ast year, as readers will no doubt have noticed, was an eventful year. That was no less so in relation to intellectual property, with, of course, one of the key events, the Referendum to leave the EU, having both immediate effect and longer term implications for intellectual property. These events also show that it is impossible for attorneys just to focus on a small area of practice – not only can one learn from events outside ones own core field of interest, but they often have a tangible impact on practice. The Referendum, apart from distracting a large part of the profession

was CIPA’s position. The Prime Minister, Theresa May, confirmed towards the end of the year that the UK would ratify the Agreement, and, as reported by Alan Johnson in this issue (page 15), active steps are being taken to bring the Court into effect in December this year. If nothing else, that will give patent attorneys the task of advising clients on whether to opt in or opt out before the end of 2017. Of course, that is only part of the story as we will still have to learn what the UK can do in the UPC after leaving the EU – but at least it provides a use for a few years for the space at Aldgate Towers (and the Editor’s

It is impossible for attorneys just to focus on a small area of practice – not only can one learn from events outside ones own core field of interest, but they often have a tangible impact on practice. for at least an entire day’s work, looked set to derail progress towards the European Unified Patent Court (UPC), on which many both within and outside CIPA had worked hard to see implemented. The Editor somewhat jumped the gun, no doubt suffering from the exhaustion induced by Brexit debates, by not only encouraging support for going ahead with ratifying the UPC, but reporting at an early stage that that 2

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accidentally tweeted photographs of a court room there), in which the UK section of the Central Division of the UPC will be located. On the European front, 2016 also saw the introduction of the amended Community Trade Mark provisions. These eventually resolved the outcome of another area in which CIPA had played a substantial part, the IP Translator case, with another mass deadline in

Alasdair Poore

October 2016, for attorneys in relation to correcting the specification of goods and services for EU trade mark registrations to “means what it says” specifications. CIPA has also been actively involved in reform of the Threats Legislation, with Vicki Salmon, Chair of the CIPA Litigation Committee and an advisor to the Law Commission, giving evidence to a House of Lords Committee on aspects of the proposed reforms, especially in relation to liability of attorneys for making threats on behalf of their clients. When implemented both UK and foreign attorneys acting on their client’s instructions will be protected. This might have some relevance to the sort of (alleged) threat made by German attorneys in Nvidia Corporation & Ors v Hardware Labs Performance Systems reported in the Trade Marks and Other IP report (page 68). That report also provides a short summary of another “multidisciplinary” case, PPL v Hagan. This was a copyright enforcement dispute. Mr Hagan should have paid royalties for playing of music recordings in two bars in London. His main line of defence, somewhat implausibly was “it wasn’t me; it was another Mr Hagan” or indeed two other Mr Hagans! However, a key aspect of the decision, as reported in the Trade Marks and Other IP report (page 69), and as also reported in last month’s issue (page 11), in a dispassionate way, was HHJ Hacon’s decision in IPEC that the cost cap in IPEC proceedings will not always apply. In particular, if the claimant makes an offer to settle (under Part 36), for example, agreeing to accept less than full damages, and beats it at trial, the claimant is entitled to indemnity costs and these are not subject to the costs cap. This decision is www.cipa.org.uk

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UP FRONT

highly relevant to any attorney who gets (professionally) involved in potential disputes, whether acting for an intending claimant or a reluctant defendant. It is already resulting in a change in practice with tactical offers of settlement being made. PPL v Hagan also requires a wider multi-disciplinary understanding. The decision draws on a Court of Appeal decision in Broadhurst v Tan, which on closer investigation relates entirely and specifically to road traffic accidents. A much longer discussion of why PPL v Hagan should be undone is at page 38. Read more on that and learn how IPEC has become embroiled in a car crash in a way which could remove one of the key principles underlying IPEC. Finally, in terms of events, Bristows’ excellent report of the year’s activities in the patent field (Patent Review 2016, see page 18) highlights what an active year it has been, from the “final” retirement of

EDITORIAL

Sir Robin Jacob from the Bench, to the wide range of cases developing all sorts of aspects of patent law in the UK. A word of caution. Now we turn to the more technical aspects of why attorneys should keep an interest in other fields. It is easy to think that lots of the reported patent cases are all about pharmaceuticals. Do not be fooled; do not skip them. Even if your only interest is in computers or metal bashing. Just one example shows that even the pharma cases should be much wider reading. Several cases develop the law on insufficiency. The specific argument is on “plausibility”: it is not plausible that the benefit of the alleged invention will apply across the whole scope of the claim. At a recent seminar it was suggested that “plausibility” was not seriously an issue in relation to most mechanical or electronic inventions. Once described, it would usually be easy to see how

they could be performed effectively. However, that is not the end of the story. “Plausibility” or more accurately implausibility is being advanced on a tactical basis in a number of proceedings. In order to respond to this the patentee is tempted to say that it is entirely obvious how the invention would work – and meet the riposte: “thank you for saying that; so the invention is actually obvious then”. Of course there are simple answers to this, but the reason that it is important is that it can place great emphasis on the presentation, not only during the proceedings, of what is common general knowledge, but also how the prior art is described in the patent application initially. Keeping an eye open for developments in other areas of technology or in other fields of intellectual property or even in what happens when there is a car crash – all can be important.

Council Minutes Minutes of the Council meeting held on Wednesday 7 December 2016 at 14:30. Item 1: Welcome and apologies Present: A.J. Rollins (President, in the Chair), S.F. Jones (Vice-President), A.R. Brewster (Immediate Past President, by phone), C.P. Mercer (Honorary Secretary), J.D. Brown, R.J. Burt (by phone), S. Ferrara, J.A. Florence, G.J. Iceton (by phone), A.C. Instone, J.T. Jackson, R.P. Jackson (by phone), R.D. Mair, A. Mukherjee, B N.C. Ouzman (by phone), A.D. Poore, G.V. Roberts and T.W. Roberts. Apologies: R. Ackroyd, J.P. Asquith, P.G. Cole, M.P. Dixon, C.M. Hammer, S. Harte, V.B. Salmon and S.M. Wright. Lee Davies (Chief Executive) and Neil Lampert (Head of Media and PR) were in attendance.

Item 2: Minutes 303/16: The Minutes of the meeting held on Wednesday 2 November, 2016 Volume 46, number 3

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were approved following amendment of ‘Business and Finance Committee’ to ‘Budget and Finance Committee’ in minute 285/16.

auditor had raised the matter of a register of interests and related parties and that he was working on a draft declaration form for IGC’s consideration.

Item 3: Conflicts of interest

Item 4: Brexit

304/16: No conflicts of interest were declared. Lee Davies confirmed that he had asked the auditor for further guidance on recording and assessing potential conflicts of interest, following the discussions at the October and November meetings of Council. The auditor took the view that a member of Council in receipt of a pension from a previous employer with an interest in a topic being discussed by Council was not placed in a position of conflict but that members of Council were advised to declare such interests when appropriate. Lee Davies added that the

305/16: Tony Rollins advised Council that, at a meeting of the EU’s Competitiveness Council, the Minister of State for Energy and Intellectual Property, Baroness Neville-Rolfe, had announced that the UK Government would be proceeding with its preparations to ratify the Unified Patent Court Agreement and that the Government would be working with the Preparatory Committee to bring the Unified Patent Court into operation as soon as possible. Tony informed Council that the Officers had been made aware of the Minister’s intention to make MARCH 2017

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the announcement in advance of the meeting of the Competitiveness Council but that it had been made clear that the information was being shared with key partners on a highly confidential basis. Tony said that it was now likely that the Government would ratify the UPC Agreement before any safeguards ensuring the UK’s ongoing participation in the new Court system were in place. Council reaffirmed its endorsement of the position that CIPA supports the ratification of the UPC Agreement with the UK’s continuing participation in the Unitary Patent and UPC post-Brexit. Bobby Mukherjee advised Council that the IP Federation did not support ratification without appropriate safeguards first being in place. Council supported a proposal from Tony Rollins that it should establish a small working group to assess the situation now that the UK had signalled its intention to ratify the UPC Agreement and to consider the various options open to the UK in terms of remaining in the UPC post-Brexit, any alternatives such as the UPC being part of the European Patent Convention outside of the EU framework and any transitional arrangements should it not be possible for the UK to participate in the UPC. Julia Florence, Alasdair Poore, Chris Mercer and Bobby Mukherjee agreed to join the working group under the leadership of Tony Rollins. Bobby Mukherjee said that, whilst he would be attending as a member of CIPA Council, he would be able to provide insight into the position likely to be taken by the IP Federation. Action: Neil Lampert to liaise with the members of the working group with the aim of securing a meeting date before the Christmas break. Council supported a proposed vote of thanks made by Richard Mair to Tony Rollins, the Officers and all those involved in working closely with the UK IPO and other stakeholders on the UPC since the UK voted to leave the EU.

Item 5: Update on the Bye-laws 306/16: On the proposal from CITMA for the use of the title ‘Chartered Patent 4

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and Trade Mark Attorney’, Council took the view that CIPA’s Charter covers the four IP rights of patents, trade marks, copyright and designs and, as such, a dual qualified patent and trade mark attorney who is on both registers and who is a member of CIPA but who is not a member of CITMA is entitled to use the title ‘Chartered Patent and Trade Mark Attorney’. Council observed that CITMA’s Charter did not cover patents, meaning that a dual qualified patent and trade mark attorney who is on both registers and who is a member of CITMA but who is not a member of CIPA was not entitled to use the title ‘Chartered Patent and Trade Mark Attorney’ in a manner which suggested that he or she was a Chartered Patent Attorney. Council was not convinced that CITMA’s rules of membership needed to provide for the title ‘Chartered Patent and Trade Mark Attorney’. On the use of titles by firms, including the title ‘Chartered Patent and Trade Mark Attorney’, Council took the view that very few firms would be likely to describe themselves in the terms suggested by CITMA and that a guidance document setting out the ways in which titles should be used by firms in their marketing materials was not required. Council asked Lee Davies to write to the Chief Executive of CITMA and explain its position. Action: Lee Davies to write to the Chief Executive of CITMA setting out Council’s position on the use of the title ‘Chartered Patent and Trade Mark Attorney’ and Council’s decision that further guidance on the use of titles by firms was not required. 307/16: Lee Davies informed Council that he had taken the proposed amendments to the Paralegal Member grade of membership to the Administrators Committee. The Committee was united in its view that it wished to retain the Paralegal Member grade and the majority of members supported the requirement that membership be restricted to those who had successfully completed the

Certificate in Patent Administration. Lee Davies advised Council that a number of members of the Committee had made the observation that CITMA intended to use the term Paralegal for its administrator members and was considering introducing a mandatory CPD requirement. Council supported the Committee’s view and asked Lee Davies to ensure that the final draft version of the Bye-laws presented to the Privy Council and to the membership for approval included the Paralegal Member grade of membership. Council agreed to amend the draft Byelaws to allow Paralegal Members to use the designation ‘Intellectual Property Paralegal’ and the post-nominal letters ‘I.P. Paralegal’. Council agreed that it would consider the issue of CPD for Paralegal Members once the Bye-laws were adopted and there was a membership package in place for administrators. Action: Lee Davies to revise the Paralegal Member grade of membership in the draft Bye-laws to include the designation ‘Intellectual Property Paralegal’ and the post-nominal letters ‘I.P. Paralegal’.

Item 6:Regulatory issues 308/16: Tony Rollins informed Council that he had received a letter from IPReg stating that Caroline Corby had resigned from her appointment as Chairman of the IPReg Board with immediate effect and that Steve Gregory, one of the lay IPReg Board members, had become Acting Chairman until such time as an appointment was made. Council was saddened to hear that Caroline had resigned and wished her well. Tony said that he and the other Officers had worked with Steve Gregory in areas such as promoting the professions abroad and that he was confident that IPReg was in good hands. Tony Rollins said that he had been unable to attend the CIPA and CITMA joint executives’ meeting and invited Lee Davies to provide a brief summary. Lee said that the joint executives’ meeting had taken place on the basis that there www.cipa.org.uk

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was to be a meeting of the Approved Regulators’ Forum with Caroline Corby in December, but that this had not taken place. Lee added that the meeting had focused on a number of CIPA’s current concerns about regulation, including IPReg’s vires to regulate firms in Scotland and Northern Ireland, compliance by IPReg with the Delegation Agreement in areas of corporate governance, the accuracy and maintenance of the Register, the requirement for patent attorneys to receive litigation certificates in order to secure the right to represent clients before the UPC and the need for accurate data to determine the number of newly qualified patent attorneys required to obtain a litigation qualification. Stephen Jones suggested that it was important that these issues were not allowed to drift and that CIPA should write to Steve Gregory welcoming his appointment as Acting Chairman and setting out Council’s concerns. Tony Rollins agreed and asked Lee Davies to draft a letter to Steve Gregory on his behalf, inviting him to a meeting before the Christmas break and giving sufficient background information to allow the meeting to be productive. Action: Lee Davies to draft a letter to the Acting Chair of IPReg, Steve Gregory, on behalf of Tony Rollins asking for an urgent meeting and setting out Council’s most pressing concerns. 309/16: Council considered the paper from CITMA requesting that CIPA sign a Deed of Novation covering the regulatory obligations delegated to IPReg via the Delegation Agreement. Council could not see any obvious issues about the Deed of Novation, but was concerned to hear that IPReg was seeking a formal legal opinion before signing the document. Council delegated authority to the President to sign the Deed of Novation after CITMA and IPReg reach agreement on the legal position. Action: Lee Davies to write to the Chief Executive of CITMA setting out Council’s position on the Deed of Novation. Volume 46, number 3

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Item 7: Unitary Patent and UPC 310/16: The Unitary Patent and UPC were discussed under item 4.

Item 8: IPO and EPO matters 311/16: Chris Mercer advised Council that the disquiet over EQE candidates being told that they had to sit the examinations in Munich had been sorted out by CIPA providing additional space at the venue in Walsall. Chris added that communication about the UK EQE venue was complicated by the fact that the EPO and the EQE Secretariat would only deal directly with the UK IPO, not with CIPA. Chris said that CIPA had not been aware of a significant increase in the number of candidates registering to sit the pre-examination early enough in the planning stage. Chris Mercer informed Council that he and Lee Davies had set out the issues for the Internal Governance Committee and that the only practical long-term solution would be for CIPA to use purpose-built examination centres or conference venues capable of accommodating two hundred or more candidates to the specifications laid down by the EQE Secretariat. Lee Davies added that this would require venues of between eight hundred to one thousand square metres and would mean a significant increase in the current budget.

Item 9: Committees and committee reports 312/16: Congress Steering Committee John Brown advised Council that the 2016 Congress had made a surplus of approximately twenty-six thousand pounds, but that this did not reflect the full cost of Congress in that staff time was not included in the final accounts whereas the cost of the external contractor was included when the organisation of Congress was outsourced. John Brown said that he wished to have the Committee’s appreciation of the hard work of the CIPA staff acknowledged by Council. John informed Council that a provisional date of 28 September had been set for the 2017 Congress and that the President of the

EPO had agreed to be a keynote speaker. Council approved the appointment of Sarah Brearley to the Committee. 313/16: Patents Committee Tim Jackson informed Council that the Committee had met on Thursday of the previous week and had looked at the Warner-Lambert v Actavis Supreme Court appeal, which was now with the Life Sciences Committee for its consideration. The Committee had also considered the proposal from the Working Party on Rules to move the entry to the national phase of the PCT to 34 months and reduce the time for a Rule 161 EPC communication from six months to three months. Tim reported that the Committee had been united in the opinion that this was not a good idea. 314/16: Education and Professional Standards Committee Council noted the report from the Education and Professional Standards Committee. 315/16: Exploitation Committee Council noted the report from the Exploitation Committee. 316/16: Life Sciences Committee Council noted the Committee’s report on the guidance document for the Pharmaceutical sector. 317/16: International Liaison Committee Council noted the report from the International Liaison Committee and approved the appointment of Robert McDougall and Isobel Finnie to the Committee. 318/16: Computer Technology Committee Council approved the appointment of Julian Asquith to the Committee. 319/16: Internal Governance Committee Bobby Mukherjee advised Council that the last two meetings of the Committee had focused almost exclusively on the financial position of the Patent MARCH 2017

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Examination Board, which was operating at a significant deficit. As the PEB is a Committee of CIPA, any deficit in the financial position of the PEB has a negative impact on CIPA’s overall position. Bobby informed Council that the PEB had looked at a number of models to return it to a surplus and that the most likely scenario was an increase in the cost of the qualifying examinations to return the PEB to a positive financial position. Bobby Mukherjee explained that, in addition to the annual loss arising out of the qualifying examination, the PEB had suffered a substantial loss due to the fact that the anticipated number of newly qualified patent attorneys taking the litigation qualification had not materialised. Bobby added that this was compounded by the fact that CIPA had lost a significant amount of money setting up the Litigation Skills Course, which suffered similarly from a low uptake from newly qualified patent attorneys. Bobby said that it was vitally important that this was addressed with the Acting Chairman of IPReg and that he noted that this would form part of the letter being sent to Steve Gregory on behalf of Tony Rollins. Bobby concluded by apologising that the minutes from the last two Committee meetings had not yet been submitted to Council and that these were being amended for agreement at the next Internal Governance Committee meeting, after which they would come to Council. 320/16: Media and PR Committee Council congratulated the Committee on the case study videos, which were shown at the meeting.

Item 10: Officers’ reports 321/16: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 322/16: Council noted the Chief Executive’s report.

Item 12: Applications for election

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Council approved the following first time Fellow applications: Samuel Jinks; Edmund Lobb. Council approved the following second time Fellow applications: Thomas Parry; Katherine Dainty; Gemma Holly Wooden; Andrea Renata McShane; Emily Helen Anstis. 324/16: Associate Members Council approved the following first time Associate membership applications: Sanae Ueda; Sarah Cantrill. 325/16: Students Council approved the following Student Membership applications: Abi Heath; Amy Sarah Nick; Sean Blake; Toby Willis; Matthew Gallon; Claudia Hallam; Claire Weston; Sarah Abou-Shehada; Lauren Stephens; Edmund Eustace; Ben Lydiard; Marc Jarvis; Kathryn Sayer; Ross Ward; Mark Levy; Alan Murphy; Davide Faggiani; Robert Wiseman; Alexi Gerolemou; Alastair Jones; Joseph Guy Beeby.

Item 13: Resignations, etc 326/16: Council noted the report on resignations.

Minutes of the Council meeting held on Wednesday 4 January 2017 at 14:30.

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

Item 2: Minutes 1/17: The Minutes of the meeting held on Wednesday 7 December, 2016, were approved following amendment.

Item 3: Conflicts of interest Item 14: Any other business 327/16: There was no other business.

2/17: No conflicts of interest were declared.

Item 15: Date of next meeting

Item 4: Brexit

328/16: Wednesday 4 January, 2017.

3/17: Tony Rollins advised Council that the UPC Working Group established at the December meeting of Council had met and had considered the various options open to the UK in terms of remaining in the UPC post-Brexit, any alternatives such as the UPC being part of the European Patent Convention outside of the EU framework and any transitional arrangements should it not be possible for the UK to participate in the UPC. Tony Rollins invited members of Council to consider the following three scenarios and send any comments to the Working Group, which would meet later in January to identify the advantages and disadvantages of each:

The President closed the meeting at 17:02 Lee Davies, Chief Executive

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1. The UK ratifies the UPC Agreement and remains a full participant in the new Court system following Brexit. 2. The UK seeks to amend the UPC Agreement (in line with Counsel’s opinion) with the cooperation of the signatory EU member states. 3. The UK proposes a UPC+ model, in line with the original intent of the Court being part of the European Patent Convention framework outside of the EU and the influence of the CJEU, with all countries in the Convention able to participate. Tony advised Council that the working group would bring a revised set of options to the February meeting of Council. Tony informed Council that, as the IP Federation was working on proposals for the transitional arrangements should the UK have to leave the UPC following Brexit, the Working Group had agreed to not spend time considering any such arrangements. Action: The UPC Working Group to meet towards the end of January and bring a revised set of options to the February meeting of Council.

the formal stage. Following adoption at the Special General Meeting, the Privy Council requires: •

• •

•

Item 5: Update on the Bye-laws 4/17: Lee Davies informed Council that he had made the revisions to the draft Bye-laws agreed at the December Council meeting and that Chris Mercer had reviewed the document. Lee added that he would now send the revised draft Bye-laws to the Privy Council Advisors for a second informal consultation, prior to seeking the support of the members at a Special General Meeting. Once adopted by the members, the Bye-laws will be returned to the Privy Council for its formal approval. The Privy Council requires the resolution put to members at the Special General Meeting to include a ‘latitude clause’ requiring the members to adopt the Bye-laws ‘subject to any minor amendments the Privy Council may require’ to allow a degree of flexibility should the Privy Council suggest any minor changes at Volume 46, number 3

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A letter formally requesting that the Privy Council considers the proposed amendments, and providing a narrative on the changes and the reasons they are being sought. The letter should also confirm that the proposals are unchanged from those previously seen informally by Privy Council Advisors. If there are additional changes these should be clearly indicated on the tracked change document. A signed and sealed copy of the resolution. Confirmation that the proposed amendments have been considered and agreed in accordance with the relevant provisions of the Institute’s Charter. A copy of the bye-laws showing the proposed amendments as tracked changes. A clean copy of the bye-laws, incorporating the proposed amendments. A Schedule of the proposed amendments.

Item 6: Regulatory issues 5/17: Tony Rollins informed Council that he had had a very positive meeting with Steve Gregory, the Acting Chairman of IPReg. Tony said that the discussion had been wide ranging and had included IPReg’s vires to regulate firms in Scotland and Northern Ireland, compliance by IPReg with the Delegation Agreement in areas of corporate governance, the accuracy and maintenance of the Register, the requirement for patent attorneys to receive litigation certificates in order to secure the right to represent clients before the UPC and the need for accurate data to determine the number of newly qualified patent attorneys required to obtain a litigation qualification. Tony informed Council that Steve Gregory recognised the importance of ensuring that the UK’s patent attorneys

had a litigation certificate in time to apply for the right to act as a representative in the UPC, now that the UK had signalled its intention to ratify the agreement. Tony said that he had restated CIPA’s offer to help IPReg produce and distribute the litigation certificates. Tony added that Steve Gregory had followed up on an action agreed at the meeting and had forwarded information on the demand for the Litigation Skills Course in terms of numbers of newly qualified attorneys going on to the Register since 1 January, 2017, who needed to obtain the litigation skills qualification. Tony Rollins said that he had raised the issue of the completion of a litigation skills qualification being a post-registration requirement with Steve Gregory and had suggested that IPReg might want to consider making the course part of the core training for patent attorneys. Vicki Salmon said that she had always supported this but that she was unsure how this would be viewed by the wider profession. Tony Rollins proposed that the Education and Professional Standards Committee consider the issue on behalf of Council and that he would raise the litigation skills requirement at his next meeting with the Informals. Tony said that Steve Gregory had agreed to work with CIPA to define the role of patent attorneys and the services they provide in order to write to the Treasury and the Financial Services Authority to make the case that there was no risk to the public under the Money Laundering Regulations. Matt Dixon said that he would collate the various documents produced during the discussions with IPReg, including Counsel’s opinion and the submission made in response to the Government’s Red Tape Challenge, and send these to Tony Rollins. On the subject of the non-Council members of the Approved Regulators Forum attending IPReg Board meetings as observers, as required by the Delegation Agreement, Tony Rollins advised Council that Steve MARCH 2017

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Gregory had agreed to make IPReg Board papers and minutes available to the President and Vice-President of CIPA and CITMA. Tony said that this should be sufficient to give the ARF an insight into the operation of the IPReg Board and that attendance by observers might not be needed. Stephen Jones added that it was important to establish that this did not mean that the two Institutes were waiving the right to have observers at IPReg Board meetings. Tony Rollins said that he intended to raise Council’s concerns about the maintenance and accuracy of the Register with Steve Gregory at the next ARF meeting, which was now scheduled to take place later in January. Action: Lee Davies to offer Ann Wright CIPA’s support in producing and distributing litigation certificates. Lee Davies to forward the information on newly qualified attorneys who needed to obtain the litigation skills qualification to Vicki Salmon. The Education and Professional Standards Committee to consider litigation skills being incorporated into the core training of patent attorneys. Tony Rollins to discuss the litigation skills requirement at his next meeting with the Informals. Matt Dixon to collate the documents produced during the Money Laundering Regulations discussions with IPReg and send these to Tony Rollins.

Item 7: Unitary Patent and UPC 6/17: The Unitary Patent and UPC were discussed under item 4.

Item 8: IPO and EPO matters 7/17: There was nothing to report or discuss under this standing agenda item.

Item 9: Committees and committee reports 8/17: Congress Steering Committee John Brown advised Council that the planning for the 2017 Congress was going well and that, subject to an approval visit being made by Lee 8

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Davies, the Glaziers Hall had been selected as the venue. John added that the President of the EPO and the Chair of the Legal Services Board had been confirmed as keynote speakers. ‘Navigating to the Future’ had been agreed by the Committee as the working title for Congress. 9/17: Patents Committee Council noted the report from the Patents Committee. 10/17: International Liaison Committee Richard Mair advised Council that the International Liaison Committee would report to the February meeting

of Council. Stephen Jones informed Council that he was travelling to Tokyo to represent CIPA at the Third President Meeting organised by the Japan Patent Attorney Association. Tony Rollins said that he would look at the proposed declaration asking delegates to reaffirm the significance of using a local representative in National Phase Entry using the ePCT route, prior to Stephen’s departure for Japan. 11/17: Litigation Committee Vicki Salmon advised Council that the Committee was organising a series of seminars on the UPC which would commence with a launch event on 31

UP and UPC – getting ready to practice CIPA will launch a series of webinars covering all aspects of Unitary Patents and the Unified Patent Court, to run approximately fortnightly throughout the next 6-8 months, up to the projected start of the “provisional phase” preceding entry into force of the UPC and UP. The series features webinars designated as “Core” (relevant to patent attorneys engaged in obtaining grant of European patents), or “Specialist/Advanced” (relevant to patent practitioners also intending to take part in actions before the UPC). The series recognizes that UPs, which will be critical to patent practice, can be studied without any desire to act in the UPC. A date is to be announced shortly for the first webinar “UPC – getting ready to practice”, which is to air mid to late March. This webinar follows the projected UPC timetable for the coming year culminating in entry into force, thereby enabling practices and industry to compile a timetable for actions. This “timetable and action” based approach addresses giving clients the answers they are seeking, despite uncertainties in the practicalities of the optout, and uncertainties in UK participation in the UP and the UPC post Brexit. This approach also demystifies fundamentals of opt-out and the UP, which on first sight may appear complicated or confusing. Work is ongoing on topics and speakers for the remaining webinars. CIPA’s UPC subcommittee welcomes assistance from members at every level of patent knowledge and experience, in planning and delivery of the series as well as liaising among the profession to implement feedback and ensure that the series meets the needs of members. Being involved in the planning and delivery of this webinar series is a very effective means to translate your own academic knowledge of the UPC and UP into skills needed to advise and practice. Patent practices and in-house departments will benefit from active or observer involvement. Please contact dwaine@cipa.org if interested. Pippa Allen (Fellow), CIPA Litigation Committee

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January, which would be broadcast live on the Internet. [See panel] 12/17: Life Sciences Committee Council considered the Committee’s position on CIPA filing a submission in support of the Supreme Court hearing the Warner-Lambert v Activis appeal. Council voted against making an intervention, with two members of Council in favour and nine members of Council against. Council noted that taking the decision not to intervene at this stage did not prevent CIPA doing so if the Supreme Court decided to hear the case.

COUNCIL • UPC

Item 12: Applications for election 15/17: Fellows Council approved the following first time Fellow applications: Ian Andrew Norton; Antony Mark Latham; Thomas William Pagdin; Duncan Nevett; Sarah Richmond. Council approved the following second time Fellow applications: Samuel Jinks; Edmund Lobb. 16/17: Associate Members Council approved the following first time Associate membership applications: Ruth Patterson; Andrew Baker. Council approved the following second time Associate membership applications: Sanae Ueda; Sarah Cantrill.

Item 10: Officers’ reports 13/17: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 14/17: Council noted the Chief Executive’s report.

Natasha Collins; Kate Selwyn; Sarah Linnett; Rushan Vellani; Lloyd Edwards; Christopher Lawrence; Lucy Rose Holt; Alex Wilson; Luke Jones; Caroline Humphrey; Martin Arnold; Gregory Aroutiunian; Benjamin Pfundner.

Item 13: Resignations, etc 18/17: Council noted the report on resignations.

Item 14: Any other business 19/17: Council approved a request from Roger Burt that he be allowed to continue to represent CIPA on the Design Council’s Spark initiative.

Item 15: Date of next meeting 17/17: Students Council approved the following Student Membership applications: Deepti Nigam; Jaskiranjit Kang; Thomas Ricketts; John Somerton; Michelle Hickey;

20/17: Wednesday 1 February, 2017. The President closed the meeting at 16:45 Lee Davies, Chief Executive

UPC: where we are and why Report of the CIPA seminar, “The UPC: where we are and why”, 31 January 2017.

seminar provided a helpful summary of the journey towards the coming into existence of the UPC. It ran through the hurdles left to overcome before the UPC Agreement (UPCA) can come into force in December 2017. The webinar took place in CIPA Hall and was streamed live to an audience of over 500 people watching from all over the world. The speakers were Laura Starrs from the IPO’s UPC Taskforce and Kevin Mooney from Simmons & Simmons, Chairman of the Committee responsible for drafting the UPC Rules of Procedure. CIPA members can view a recording of the seminar in the “members news” area of the CIPA website.

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Tony Rollins, CIPA President, opened the session telling the audience about CIPA’s position on the UPC and how Brexit had for some time made the future of the UPC uncertain. CIPA has a detailed position paper on the impact of Brexit on various IP rights which is regularly updated, and which has been distributed to Parliamentarians, various other stakeholders and international patent organisations [see CIPA’s website]. CIPA has been keen to promote the message: Business as usual for UK and EPC patents. CIPA members have taken this message across the world on visits to countries such as China, India, Japan and the US. CIPA has also collaborated with other UK organisations to ensure that we promote a consistent message. Last year, a UPC Working Group reporting to Council was set up.

Tony ended by thanking Baroness Neville-Rolfe for her support and enthusiasm for the UPC project. He will be meeting with the new IP Minister Jo Johnson in the next couple of days. Laura Starrs’s presentation focused on the work required to make the UPC operational. She said that everything was on track until the results of the EU Referendum were announced in June 2016. This created a period of uncertainty about whether the UK would continue with the process or not. Work on ratification of the UPC Agreement has resumed apace since Baroness Neville-Rolfe affirmed in November 2016 that the UK would continue with the process. As part of the UPC Taskforce team, Laura has been in charge of the measures necessary to implement the MARCH 2017

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UPC • OVERSEAS

Italy ratifies the UPC Agreement Italy has ratified the Unified Patent Court Agreement. It is the 12th member state of the Unitary Patent project to do so. The instrument of ratification, the formal final step in the procedure, was deposited with the EU Council on 10 February 2017.

UPC into national law. The Protocol on Privileges and Immunities – an international treaty – was signed in December, giving the Court in the UK the necessary powers to function as an international court. Laura said that the last Preparatory Committee will be held on 15 March and the IPO expects this to be followed by a period of provisional applications in May. The sunrise period is expected to

last from September to December and the UPC should be open for business in December. Amongst tasks left to be completed before December are judicial recruitment and judicial training. The Patents Order 2016 No.388 was made in March 2016. This implements the necessary changes to the Patents Act 1977 to recognised the jurisdiction of the UPC, recognise the UP within the Act and add two exceptions to

infringement which is not found in UK law. Laura confirmed that the UPC premises at Aldgate Tower had now been completed. Kevin Mooney also covered the timetable during his presentation and said he believed that the UK would most likely ratify the Agreement before Article 50 was triggered. He explained that once this was done, only Germany would have to ratify before the Agreement comes into force. He also discussed the Rules of Procedure and how the 18th draft is likely to be adopted by the PrepCom at their meeting in March 2017. He provided details on opt-outs and also discussed the Case Management System. Kevin Mooney talked about the UPCA post-Brexit in detail. Opinion 1/09 of the CJEU of 8 March 2011

Overseas report International treaties

Patents and trade marks

Madrid Protocol On 9 January 2017, the Antigua and Barbuda deposited the following declarations:

Turkey On 10 January 2017, a new IP law entered into force in Turkey. The new law covers all industrial property matters (trade marks, patents, industrial designs and geographical indications), which were previously protected by individual decrees and introduces a range of changes to the existing law.

•

In accordance with Article 5(2)(b) of the Madrid Protocol, the time limit of one year to exercise the right to notify a refusal of protection referred to in Article 5(2)(a) thereof is replaced by 18 months, and under Article 5(2)(c) of the said 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. In accordance with Article 8(7)(a) of the said Protocol, Antigua and Barbuda, in connection with each international registration in which it is mentioned under Article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wants to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee.

The said declaration will enter into force, with respect to Antigua and Barbuda, on 9 April 2017.

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Qatar On 12 February 2017, the Qatari Trademark Office will start accepting trade mark applications for services that fall under classes 43, 44 and 45. ARIPO The African Regional Intellectual Property Organization (ARIPO) recently amended the Harare Protocol on Patents and Industrial Designs and announced an increase in official fees. The amendments entered into force on 1 January 2017. The said amendments include the revision of the provisions for post-grant amendments, restrictions and clarification on multiple dependencies in claims, further clarification of patentable and non-patentable inventions, and an extension on time limits. Dr Amanda R. Gladwin (Fellow), GSK

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was also discussed. Kevin explained how the Agreement did not explicitly say that non-EU states were excluded but questioned whether this was a necessary consequence. Citing the legal opinion commissioned by CIPA, ITMA and the Law Society from Richard Gordon QC, Mooney said that there was no reason why the

OFFICIAL

UK could not stay in the UPC having ratified, as long as the supremacy of EU law was respected – see October [2016] CIPA 14. Accordingly, to remain a member, the UK needs to ratify the UPCA before Brexit; there should be an international agreement between the UK and EU covering the possibility of damages and infringement proceedings

if EU law is breached and the obligation to make references to the CJEU should be preserved. Consequential amendments to the Agreement would be made by the Administrative Committee. The event ended with a Q&A. Rebecca Gulbul, Policy Officer at CIPA

Manual of Patent Practice updates The 30 December 2016 changes that have been incorporated into the latest version of the Manual of Patent Practice are listed below. The updated table of changes can be viewed on the gov.uk website, see www.gov.uk/guidance/manual-of-patent-practice-mopp. Paragraphs

Update

Sections 1, 2, 3, 14, 17, 18 60

Each of these sections has been updated to have a contents section. On the online version of the manual this appears as ‘collapsible’ headings, while on the PDF version there are headings which link to the relevant part of each section.

Throughout

The manual has been updated throughout to remove references to the ambiguous term “early publication”. This term has been replaced with either “A-publication” or “accelerated publication” as appropriate.

14.139.2 and 14.144

Updated to provide additional examples of where support objections may arise.

14.148

To encourage the use of compact consistory clauses, where the statement of invention refers to the claims. This avoids repetition and often removes the necessity for redrafting the description following amendment of the claims.

15.21

Discretion under r.108(3), in relation to extending the compliance period to allow a divisional application to be filed, will normally be exercised only if the applicant shows that the circumstances are exceptional and that they have been properly diligent.

15.41

Examining procedure where a divisional application is in order and the invention in suit was clearly claimed in the published parent application.

18.03.6

Examining procedure where an application is in order for grant directly after a supplementary search.

18.86.2

Where the applicant would like an application to grant sooner than the date indicated in a notification of intention to grant letter, a written request must be submitted.

21.14

To clarify procedure where third party observations are received before the issue of a report under section 18(4) but too late to prevent its issue.

89B.12.2

If the substantive examiner disagrees with the International Search Authority’s assessment of plurality, and as a result determines that further searching is needed (bearing in mind 89B.12), this should be carried out without requiring an additional fee.

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Measurement and Patentability By Dr Matthijs Branderhorst (Fellow)

ne may think of measurements as fairly basic methods involving a meter which determines a parameter such as time or distance, but many industrial methods involve advanced mathematics and abstract concepts to determine relevant parameters. Even the most basic measurements involve the mental act of choosing a basis in which to carry out the measurements and there is always some mixture of abstract and technical features. One example of a more complicated estimation process is the determination of where to extract hydrocarbons from in the oil and gas sector. There is no direct way of determining the presence of hydrocarbons, but their presence needs to be determined indirectly based on surveys using acoustic or electro-magnetic measurements. The survey data are processed and decisions are subsequently made based on the outcome of that data processing. Inversion methods for determining the presence of hydrocarbons in a formation usually involve complicated algorithms for processing the large amounts of survey data. Improved methods sometimes reduce the runtime of algorithms from months to weeks, and improve the accuracy of the decision as to where to drill; so protection of those methods is desirable. However, the presence of abstract aspects sometimes gives rise to incorrect assessment by the examiners that there is nothing more than those abstract aspects and that the claimed methods define excluded subject-matter as such. By way of example, UK patent GB 2479172 involved an estimation process based on an initial model. The initial model was inverted together with ‘real world’ data to provide a second model which provided an updated and more accurate model than the first model – effectively constituting a measurement process. There are many methods which base an

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estimation on an initial model, such as maximum likelihood estimation, Bayesian estimation or least squares methods. An analogy is the classical Monty Hall brain teaser, sometimes used in interview questions: suppose you are in a game show and you are provided with three closed doors, one of which hides a prize such as a car. You pick one door as your initial guess, subsequently the game show host opens a second door which does not have the car behind it and asks the question: do you wish to change your initial choice? Your answer will be an ‘updated guess’ with a reduced uncertainty by way of the ‘real world’ interaction. At that stage, the ‘updated guess’ will not be a purely abstract concept which only exists in the mind of the user but it will have become an empirical estimate, or a measurement. This distinction was initially not appreciated by the examiner, who followed partially the reasoning of the earlier opinion BL O/174/10. The examiner initially did not consider the invention to constitute a “real” measurement merely due to the fact that the claimed method provides “only” an improved prediction. The examiner went as far as saying: “It is just an improved prediction of a value from an estimated model rather than a value derived from real measurements”. Besides the evident step of deriving the final model from ‘real world’ data, this statement actually suggests that there is such a thing as ‘non-real’ measurements. This reasoning was partially based on the earlier opinion BL O/174/10 by the UKIPO in which an inversion method was rejected because it was allegedly purely abstract. In the rejected method, predicted values of rock and fluid properties www.cipa.org.uk

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are assigned to a model of the subterranean geology, which then calculates a predicted seismic response of the modelled geological volume to produce synthetic data. This synthetic data is then compared with real seismic data and the model is updated to improve the estimation. The hearing officer who rejected the patent application considered that “although the method appears to provide a prediction of what the rock and fluid properties might be, it is not really providing a measurement” and therefore rejected the patent application. However, the hearing officer acknowledges in the same paragraph that after performing the claimed method, the set of values which populate the model are considered more representative of the equivalent set of values in the real world. There appear to be fundamental flaws in these rejections. Some guidance is provided by a standard definition of measurement according to information theory which is “a set of observations that reduce uncertainty where the result is expressed as a quantity”. Thus in practical terms, in performing a measurement “one begins with an initial

guess of the value of a quantity, and then, using various methods reduces the uncertainty in that value”. Provided the uncertainty is reduced a (useful) measurement has been effected. The boundary at which estimation becomes “determination” depends on one’s criterion as to the acceptable uncertainty, usually based on the practical application. Since all measurements are inherently uncertain, one can only ever hope to reduce the uncertainty in an estimate of a physical property’s value, but one can never eliminate it. This applies both to complicated inversion methods and to basic measurements such as a determination of a distance carried out with a ruler. Therefore, there is not a clear distinction between estimation and measurement. Based on these generally accepted definitions, the objections in first mentioned example were overcome. With this general framework of reasoning in mind, it is also expected that these types of measurements will remain patentable in the UK. Dr Matthijs Branderhorst (Fellow) is a senior associate at Marks & Clerk in Oxford.

Community designs Evidence persuades EUIPO’s Boards of Appeal of possible visibility in normal use of Community design. By Nick Braddon (Fellow)

wo recent decisions (R1862/2013-3 and R1863/2013-3) of an EUIPO Board of Appeal applied narrowly the requirement for a Community design for a component part of a complex product to be visible in normal use. Somewhat circumstantial evidence submitted by the holder of the contested designs was sufficient to convince the Board that there was a reasonable doubt that the designs at issue could, in fact, be visible in normal use, and hence should not be invalidated. Under Article 4(1) Community Designs Regulation (CDR) a design is to be protected as a Community design to the extent that it is new and has individual character. Furthermore, according to Article 4(2) CDR a design which constitutes a component part of a complex product is only considered to be new and to have individual character if the component part, once it has been incorporated into the complex product, remains visible during normal use and to the extent that those visible features of the component part fulfil in themselves the requirements as to novelty and individual character.

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In cases R1862/2013-3 and R1863/2013-3, the designs at issue before the EUIPO Board of Appeal related to an element of a ventilating façade system (or curtain wall), specifically a bracket. The brackets serve, in use, as a connecting element between the façade system and the load bearing elements of a building construction. It was held at first instance (EUIPO Invalidity Division), and upheld by the Board of Appeal, that the façade system represented a complex product and the designs at issue (the brackets) were a component part of the complex product. In view of evidence (pamphlets, catalogues and website extracts) provided by the applicant for invalidity, which related to the use of an earlier bracket design, the Invalidity Division found that the contested designs were invalid due to lack of novelty and lack of individual character, due to their being a component part of a complex product and being completely invisible in normal use. In all of the examples shown in the evidence provided, the earlier brackets could not be seen when MARCH 2017

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they were incorporated into a façade system. Interestingly, the reasons for which the Invalidity Division found the contested designs to be invalid were not the reasons pleaded by the applicant for invalidity, which had based its case on an allegation of lack of novelty and/or lack of individual character over its earlier bracket designs. However, the Board of Appeal reversed the decision of the Invalidity Division, on the basis of evidence submitted by the holder of the contested designs in response to an invitation to submit evidence showing that the brackets are visible, either from the inside or the outside of the building, in a finished, fully operational building, i.e. during normal use. The proprietor’s evidence included some photographs showing the glass façade of a shopping centre in Prague. Brackets could be seen in the photographs as connecting elements of the glass panels. Even though the Board of Appeal could not determine conclusively that the brackets in the photographs were the same as those of the designs at issue, it concluded that there was a reasonable doubt that the designs at issue (both the earlier designs and the contested designs) might be used by a creative architect in a way which is not included in the catalogues of the producers in dispute. This doubt was sufficient for the Board of Appeal to reverse the finding of the Invalidity Decision that the designs at issue would be completely invisible in normal use. The Board of Appeal then compared the contested designs with the earlier designs and found that the contested design was new and had individual character. Accordingly, the requests for declarations of invalidity were rejected. The evidence submitted by the holder of the contested design was somewhat circumstantial in that it did not categorically show either of the designs at issue (the earlier

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designs or the contested designs) in use in a façade system, in which the brackets could be seen. The evidence did, however, lead the Board of Appeal to conclude that the designs at issue would not necessarily be completely invisible in normal use. Therefore, the contested design should not be invalidated on that basis (and, by extension, the earlier design should be considered as prior art). The Board of Appeal’s approach in these cases should be welcomed by holders of Community designs for component parts of complex products, since by adopting a threshold of “reasonable doubt”, it applies the “visible in normal use” criterion relatively narrowly. In an invalidity dispute, holders of such Community designs would be well advised to submit evidence, even if it might be somewhat circumstantial, to show that the designs can in some (if not all) circumstances be visible in normal use. An interesting point of comparison is provided by EU General Court cases T-615/13, T-616/13 and T-617/13. In these cases, the contested designs were each held to relate to a component part of a complex product (a domestic boiler), in which the component part would not be visible in normal use. Hence, the designs were declared invalid. The holder of the contested designs did not provide any evidence showing that the designs could be used in a complex product, whilst remaining visible in normal use. Perhaps, if the holder of the contested designs had submitted some evidence of use of the design, say by a creative boiler designer, in a boiler with transparent sides (if such a thing is more than merely a hypothetical possibility), then the result might have been different. Nick Braddon is a partner at Barker Brettell LLP

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Countdown to the UPC On 16 January the UPC Preparatory Committee announced an intended start date for the UPC of December 2017. Back in 2013 when the UPC Agreement was signed, the European Commission said the system would be up and running by spring 2014, and since then the start date has been pushed back with monotonous regularity. Can we really believe that the UPC will be with us in ten months’ time? Alan Johnson (Associate) looks at the timetable to the predicted start date and whether there is still scope for more delays.

he Commission’s prediction in February 2013 when the UPCA was signed that the system would start just over a year later was always hopelessly optimistic. The Agreement itself was drafted such that the Unified Patent Court (UPC) would almost magically pop into existence as a fully formed organisation. But how could it have been thought possible to set up a brand new multi-national court from scratch in a matter of months? And what chance was there of 13 ratifications in this timescale? Processes for ratification vary hugely from country to country. Whilst France was constitutionally able to ratify first and sort out practical steps second, the opposite is true for the UK where protocol requires that all steps to implement necessary legislation must be completed before ratification. Most countries have some form of relatively slow Parliamentary process. UPCA ratification has, in the end, proceeded at a gentle pace, but in part this has reflected a lack of urgency given the speed at which practical steps have moved forward. As to this, it is difficult to overstate the magnitude of the task which faced the Preparatory Committee when it convened a few weeks after the 19 February 2013 signature of the UPCA. Courts, rules, systems, and personnel were all required. It was not as if the Agreement provided ready-made answers on any of these issues. No thought had been given to what the Court’s budget would look like, and no EU financing was available to assist. And of course to make life more difficult than it might have been, a very complex organisation had been agreed with courts in multiple locations operating in multiple languages. On the Unitary Patent side of the equation, the task was less imposing, but still difficult politically. Not only did renewal fees have to be agreed, but also a distribution key to share out Volume 46, number 3

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those fees. Your author seriously doubted at one stage that this could be agreed, since back in 2003/04 it was one of the two issues which had caused the Community Patent project to collapse – and that was at a time when far fewer countries had to agree (the deadline which could not be met was the date of accession of six new eastern European countries). In truth it was no real surprise, therefore, that there were delays. But as of 23 June last year, a specific start date (2 May 2017) was being talked about, and thought realistic. The main tasks which remained to be completed were, in brief: signature of the Privileges and Immunities Protocol1, completion of the IT system, and appointment of judges. But the Privileges and Immunities Protocol had been agreed (although not yet published and open for signature); the IT system had been handed over by the UK to the UPC IT team in Luxembourg (in March) and was well in hand; and the judicial application process had already been opened (in May). Further, very shortly after the Brexit vote, on 30 June, the Preparatory Committee resolved to press on with its work and took various steps to approve a number of papers, a Code of Conduct, revised court Rules of Procedure, and a draft budget. Work on the IT system continued, the process of judicial selection was taken as far as possible without actually interviewing judges (a process which took until mid-October), and the Netherlands became the tenth non-mandatory country to ratify. Hence, the real delays resulted from the stalled UK and German ratification processes (France being the only mandatory country to have ratified). Then, of course, the UK made its announcement of 28 November and both those processes quickly restarted. This meant that what had been caused by the 23 June referendum was little more than a five-month delay. Add five months to a May 2017 start date MARCH 2017

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and one comes up with a revised start date of October. In that light, a proposed start date of December looks entirely feasible. Looking in more detail at the Preparatory Committee’s 16 January timetable, the Committee’s statement made clear that the timetable was: “conditional and provided with the clear disclaimer that there are a number of factors that will dictate whether it is achievable.” It continued: “The most important factors in meeting these dates is the necessary ratifications of the UPCA and accession to the Protocol on Provisional Application. If these are not achieved the time-plan will be disrupted.”

Is UK and German ratification on course? Looking at the first of the two components mentioned, UK and German ratification are both on course. The UK had already completed the more difficult parts before 23 June, to pass legislation to permit amendment to the Patents Act 1977, and then to pass those amendments in the form of a Statutory Instrument. Ratification was being held up by the Privileges and Immunities Protocol, which, although agreed (in February 2016), was not open for signature until 29 June (when several countries signed). However, the UK has now signed (on 14 December), and it was laid before Parliament (as a Command Paper) on 20 January. The next stage (national legislation on privileges and immunities) is to be subject to Committee approval in the Commons, Lords and in the Scottish Parliament (but no vote will be required in either House in Westminster, nor in Holyrood). Plainly something might go wrong, but it seems unlikely given the somewhat mundane subject-matter (giving legal personality to the UPC and creating privileges and immunities – in the style of the EPO’s special status – for the Court and its staff in the new international organisation). Once this process is over, the last steps will be for the IPO (presumably the Minister, Mr Jo Johnson MP) to write to the Foreign and Commonwealth Office with evidence that all necessary steps have been completed to enable ratification and requesting that an instrument of ratification be prepared, signed by the Secretary of State (the IP Minister’s brother, Mr Boris Johnson) and then lodged with the UPC ‘depositary’ in Brussels. Germany had put its own ratification process on ice pending a decision from the UK on its UPC participation, but is now also back on track. It had apparently started the process using the wrong procedure, but is now using the correct one, and it is predicted that it too will complete its substantive processes by “spring”. In contrast to the UK, however, Germany plans to hold back the formal deposit 16

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of its instrument of ratification as this would trigger the countdown to the Court opening in accordance with Article 89 UPCA.

The Provisional Application Phase Now to the second of the elements mentioned by the Preparatory Committee statement: the timing of the Provisional Application Phase. This was created by a Protocol to the UPCA (signed on 1 October 2015) and has its own “Entry into Force” provision. Provided German substantive procedures for ratification are indeed complete, the Provisional Application Phase will be able to start in May, in accordance with the Preparatory Committee announcement, despite Germany not having quite completed its ratification. The significance of the Provisional Application Phase is twofold. First, it permits the creation of the various UPC Committees, one of which, the Administrative Committee, is responsible for judicial appointments. Hence, the final stage of that process (interviewing applicants) can begin. There are so many interviews to conduct that the process is expected to take upward of six months, but it is to be hoped that the appointments can be finalised within the necessary period. One possible issue, perhaps, might be that of where judges will actually work. Some judges will be based in their own local divisions, which should be uncontentious. However, there is a need for visiting judges (allocated from a pool) for local divisions which have only one local judge, and even those with two local judges will require one non-local judge serving on a long-term basis. Similar issues arise with the central and regional divisions. Will judges be prepared to be allocated for an extended period to a foreign country or engage in longdistance commuting? Might some applicants decline positions as judges unless offered ‘home’ positions? Further, in the context of English judges potentially working part-time in the Patents Court (or Court of Appeal) and part-time in the UPC, wasted travel time might disincentivise the Ministry of Justice from agreeing to English judges spreading their expertise over several divisions (which many users, not just in the UK, would like to see).

The ‘sunrise period’ The final milestone before the Court opens and the EPO begins to grant unitary patents is the so-called ‘sunrise’ period. At one time this was envisaged as starting at the same time as the Provisional Application Phase, but it is instead scheduled for ‘early September’. This would seem to coincide with the date when Germany will have to deposit its instrument of ratification, and hence start the formal countdown to the Court opening. (Deposit by Germany any time in August will trigger a 1 December start date, and conveniently August is just before the German elections, a fact which may not be coincidental.) The sunrise period’s purpose is to allow patent proprietors to opt out any existing European patents and published applications which they do www.cipa.org.uk

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not wish to have subject to the jurisdiction of the UPC. This article is not the place to discuss the factors patentees may take into account in devising opt-out policies and how they should be implemented. Suffice to say that any patentees who have not already started the process of considering what they will do with their existing portfolio, but who might want to register opt-outs in the sunrise period, should start work on this more or less immediately, since it is not a simple task. What is more, it is quite possible that the sunrise period might close a couple of weeks before the UPC opens so as to avoid a last-minute rush of applications which might cause IT or other administrative problems on the eve of the Court opening, so regarding timings, that should be taken into account too2.

The big day The Preparatory Committee announcement refers to the system starting in December. In fact, as intimated above, according to Article 89 UPCA, the date should be the first of a month (unless it falls on a weekend or public holiday). Hence we can expect the actual start date to be Friday 1 December 2017. It is not just in respect of existing EPs that pre-start up (in that case opt-out) planning is required. For pending applications proceeding to grant, will patentees want unitary protection? And if the grant looks like coming sooner than 1 December and patentees might want unitary protection, can and should they do something to delay that? As with opting out, whether or not to seek unitary protection is not an entirely simple decision: it requires devising a policy and method of implementation, including taking into account the current uncertainty over the UK’s long-term future participation, and the possibility of dividing out new applications to hedge bets. None of the decisions relating to the new system are simple, and many an in-house patent counsel may have secretly breathed a sigh of relief that he or she did not have to grapple with a new set of issues and downed tools on 24 June. Now is the time to pick those tools up again, because it really does look like this time the UPC will be with us this year. Alan Johnson is a partner at Bristows.

References 1. As noted later, this gives legal personality to the Court in the UK, and provides for immunities and privileges to the Court and its staff appropriate to an international organisatjon in the UK. 2. The UK IPO has stressed the desirability of ensuring that optouts are lodge early, rather than waiting to the end of the sunrise period. If a large proportion of opt-outs are delayed to the last moment, there is a risk that the it system will not be able to handle them. (That is to say, patent attorneys should not follow their usual course of waiting until the deadline!) Ed.

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Unified Patent Court to open in December 2017 The UPC Preparatory Committee posted the news that the UPC is expected to open in December 2017 – see https://www.unified-patent-court.org/news. Since Article 89 of the UPC Agreement provides for the opening of the court on the first day of a month, the target opening date is presumed to be 1 December. With UK ratification expected in April, and Germany expected to be able to confirm its intention to do likewise, the UPC "Provisional Application Phase" can begin in May. This phase, the result of a Protocol to the UPC signed on 1 October 2015, allows various parts of the UPC Agreement to come into force early. The Provisional Application Phase will mean the hand-over of preparations from the Preparatory Committee (which will have its final meeting in early March) to UPC committees which can, for example, interview and recruit judges and other personnel. The Provisional Application Phase will also include a "sunrise period" for accepting opt-outs for existing European patents and applications. This sunrise period will, however, not start until about September, allowing further time for the IT system to be refined before this online system is available to users, but still allowing users three months to file opt-outs prior to the system going live. As well as the UPC opening, 1 December will also see the EPO able to issue unitary patents for newly granting European patents. Hence in the next ten months users must address their policies not only for opting out (or not) their existing patent portfolio, but also their future patenting policy. Alan Johnson (Associate), 16 January 2017 See more at: www.bristowsupc.com/ latest-news/upc-to-open-december-2017

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Review of UK patent cases in 2016 By the Bristows team – Brian Cordery, Dominic Adair, Naomi Hazenberg, Emma Muncey, Manuel Rey-Alvite Villar

hat a year 2016 was. By the end of it, we had learnt to expect the unexpected, but until that time each unexpected event seemed more remarkable than the last. Putting aside Leicester City’s Football Premiership title win, Brexit was the first, and most immediate, shock which left many patent practitioners in a state of confusion, if not depression. Was this the end of the UPC project? What would happen to our beloved SPCs? How long would it take to sort out the mess? Then Donald Trump was elected US President, and the world reeled again. But that was not the end of it. Just a few weeks later, another shock, at least in the patent community: although the UK is leaving Europe, the UK announced it would still ratify the UPC Agreement. All bets are back on – at least for now. What a year. Our usual UPC author Alan Johnson provides his personal perspective at the end of this review. In amongst these gargantuan events, the law relating to patent litigation in the UK continued to evolve and there were a number of developments to keep patent practitioners on their toes. The following are particularly noteworthy: •

A change in the approach to permission to appeal in patent cases, set out by Floyd LJ in Teva v Boehringer Ingelheim1. From now on, patent cases will be treated no differently from other cases, losing their easier passage to permission on account of their technical complexity.

•

A new approach to disclosure in patent cases, set forth by Birss J in Positec v Husqvarna2 and confirmed by Henry Carr J in Illumina v Premaitha3. Standard disclosure is no longer the default option.

•

Arrow4 declarations are back on the menu after a ten-year absence. The idea of getting a declaration to say that a product is immune from infringement because it represents nothing

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more than the state of the art (or obvious modifications thereof) was reawakened by Fujifilm Kyowa Kirin Biologics in a case against AbbVie relating to the world’s top-selling drug, Humira5. •

Plausibility remains a popular theme. The Gilead6 and Shionogi7 cases illustrate that claims containing Markush formulae covering billions or trillions of compounds (or more) risk being found invalid on the basis that it is not plausible that they make a technical contribution across the scope of the claim.

•

The law on indirect infringement in second medical use claims was examined by the courts in the pemetrexed8 and pregabalin9 litigations, with some clarity emerging on the steps necessary to avoid liability.

•

The year was not a good one for appellants. In addition to the change in approach to granting permission to appeal, the statistics on appeal showed that all first instance decisions on the merits were upheld, the Court of Appeal reminding the parties on more than one occasion that issues such as obviousness and insufficiency are multifactorial assessments with which, absent a clearly identified error of principle, the Court is unlikely to interfere10.

•

The English courts continue to position themselves as being competitive in Europe. A clear example of just how quickly a case can progress from inception of claim to conclusion of appeal emerged with the Napp v Dr Reddy’s11 case. The answer is less than six months.

•

As reflected in our quotation of the year, 2016 also saw the last decision in Sir Robin Jacob’s long and fruitful judicial career. Floyd LJ spoke for the profession when he said: “all www.cipa.org.uk

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Index Quotation of the year ..................................................22

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those who have practised in this field of law are very greatly indebted to him for sharing with us, in the vast number of so clearly expressed judgments which he has drafted on [the Civil Appeals Judgment] template, his great depth of learning in this subject”12.

Claim construction and infringement Numerical ranges .................................................... 19 De Minimis infringement ......................................... 19 Second action for infringement ............................. 20 Indirect infringement ............................................. 20 FRAND and competition defences ......................... 20 Validity Novelty ..................................................................... 21 Entitlement to priority ............................................. 21 Obviousness ........................................................... 23 Skilled addressee ................................................... 24 Insufficiency ........................................................... 25 Arrow declarations ................................................. 26 Supplementary protection certificates (SPCs) ........ 25 Damages Section 69 deductions ........................................... 28 Costs Overall winner .........................................................27 Indemnity basis ...................................................... 28 Summary assessment ............................................ 28 Procedural issues Experts .................................................................... 28 Scientific advisers .................................................. 29 Jurisdiction ............................................................. 29 Trial dates ............................................................... 30 Amendment ............................................................ 30 Disclosure ............................................................... 30 Experiments............................................................. 31 Interim injunctions .................................................. 31 Final injunctions ..................................................... 32 Permission to appeal .............................................. 32 Unjustified threats .................................................. 33 Stays pending EPO proceedings ........................... 33 Issues from the IPEC............................................... 33 Unitary European Patent / Unified Patent Court ...... 33 2016 in a nutshell ................................................... 34 The timetable going forward.................................. 35 The UK in it for the long haul? ................................ 35 Looking ahead to 2017 ............................................... 36

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The courts were as busy as ever. In fact, it is remarkable how consistent the number of patent decisions is in any given year. In 2016, the total number of substantive decisions from the High Court and the Court of Appeal was 82 decisions, compared to 78 in 2015 and 79 in 2014. As with previous years, this review attempts to summarise the most important decisions on a topic-by-topic basis. The UK Patents Act 1977 is referred to as the “Act” and the European Patent Convention 2000 as the “EPC”. As ever, the authors have endeavoured to cover every important development that occurred during the course of the year. However, as this is a condensed summary, not every decision is mentioned.

Claim construction and infringement Numerical ranges The single question from Kirin Amgen13 remains the bedrock of claim construction in the English courts, namely what the person skilled in the art would have understood the patentee to be using the language of the claims to mean. As ever, context is king. Readers will recall the decision of the Court of Appeal in Smith & Nephew v ConvaTec14, which related to a patent concerned with silverised wound dressings. It was held that the skilled person would interpret the numerical limits in the claims using a whole numbers approach (i.e. a claim to a range between 1% and 25% was held to extend from 0.5% to <25.5%). The same approach was applied by Arnold J in Napp v Dr Reddy’s15 in relation to Napp’s patent for the composition of a buprenorphine transdermal patch for use in the treatment of pain. He held that ranges expressed as “10% to 15%” should be construed as “≥9.5% to <15.5%”. Additionally, on the construction of the phrase “about 10%”, the Judge held that “about” should be taken to allow a small degree of permitted imprecision over and above the usual rounding, which in this case amounted to a permitted range not broader than ≥9.0 to <11.0%. Finally, distinguishing the case from Cephalon v Orchid Europe16, he held that the figures referred to the composition of the finished product rather than the ingredients in the recipe. The Court of Appeal (Floyd LJ giving the leading judgment) upheld Arnold J’s decision on all three points17.

De minimis infringement In Napp v Dr Reddy’s18 Arnold J also considered the issue of de minimis patent infringement on a quia timet basis, with reference to the possibility that a small number of products to be manufactured in the future by Dr Reddy’s and Sandoz could fall within the scope of the patent’s claims. Having reviewed the case law on this topic, on the facts before him the Judge set the MARCH 2017

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threshold below which infringement could be discounted as de minimis as 1 in 10,000 products. In fact, based on the evidence presented, only between 1 in 153 million and 1 in 69 million products would potentially fall within the claims. Therefore, Arnold J held there could be no threatened infringement by Dr Reddy’s and Sandoz.

Second action for infringement In the ongoing dispute between AP Racing and Alcon19, on appeal from an Order of HHJ Hacon in the IPEC, Henry Carr J had to consider whether it was an abuse for AP Racing to include in a new infringement action seven brake callipers that were made and distributed by the defendant at the time of the initial infringement action. In considering Alcon’s strike out application, the Judge reaffirmed the principle that there was no duty on a patentee to investigate all possible infringements at the outset of a claim and that not doing so did not preclude the availability of relief in respect of them. Indeed, he noted that having to examine all possible infringements in the initial liability trial would be “wasteful, time consuming and a recipe for delay”. It was found that there was no abuse of process by AP Racing and HHJ Hacon’s order to reject the strike out application was upheld.

Indirect infringement The issue of indirect infringement is a hot topic in pharma patent cases. There are two long-running disputes in which the issue has arisen: the pregabalin and pemetrexed cases. As readers will recall, indirect infringement carries a knowledge requirement such that for liability to attach, the supplier of the goods in question (i.e. the means relating to an essential element of the invention) must know or it must be obvious to a reasonable person in the circumstances that some end users will intend to use the goods to infringe. In the pregabalin litigation, the question of intention was whether the goods would be prescribed for the patented indication of pain. In the pemetrexed litigation, the question was whether preparations of pemetrexed salts would be reconstituted with saline, thus creating the solution of patented pemetrexed disodium. In both cases, the alleged infringer took extensive steps to demonstrate that it did not have the requisite knowledge, such as writing letters and issuing notices to end users stating that the patented use should be avoided. Practitioners advising clients on the steps necessary to avoid indirect infringement will be grateful for the main judgments in these cases. The pemetrexed case20, more accurately referred to as “the dextrose remission judgment”, follows the Court of Appeal’s decision21 that Lilly’s patent for pemetrexed disodium was not infringed directly by Actavis’ pemetrexed products consisting of other salts, but that indirect infringement would occur when preparations containing those salts were diluted with saline (containing sodium ions). Actavis requested that the Court remit to first instance the issue of whether indirect infringement would occur if the pemetrexed products were 20 CIPA JOURNAL

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diluted with dextrose solution instead (lacking sodium ions). The bulk of the judgment on the dextrose remission issue deals with the likelihood that, notwithstanding the instructions to reconstitute with dextrose, healthcare practitioners would nonetheless reconstitute with saline, and whether Actavis would know that. The issue was made more difficult to determine by the long period of time left remaining before Lilly’s patent expired, during which time the circumstances could change (e.g. a motivation to prefer saline could arise). In a typically thorough judgment, Arnold J found that Actavis did not possess the requisite knowledge that an end user might dilute its products with saline. The Summary of Product Characteristics, indicating dilution with dextrose, would be adhered to unless good reasons to depart existed. There were no such reasons and, in particular, no reason to prefer saline on the basis that a saline solution would be more stable nor that any data showing a greater stability in saline would be published in the foreseeable future. Accordingly, the Judge granted Actavis the declaration of non-infringement sought. In the pregabalin appeal22, the comments on infringement of Swiss-form second medical use claims were obiter. Floyd LJ examined Arnold J’s comments that he did not understand the previous obiter comments from the Court of Appeal on indirect infringement23. He reviewed the pregabalin decisions from across Europe, noting that sometimes the outcome of the infringement question can turn on a technical distinction as to the nature of the acts performed downstream of manufacture. For example, the Danish decision24 highlights that a pharmacist who merely intends to dispense the drug for the patented indication does not bring the upstream manufacturer into liability because there is no “downstream act of manufacture”. However, if the same pharmacist applies a label, this can result in direct infringement by the pharmacist – having undertaken an act of manufacture – as well as indirect infringement by the manufacturer. Floyd LJ noted that he agreed with the Danish analysis (i.e. that the process of preparing the composition can continue through any packaging step performed by the manufacturer and includes the labelling step performed by the pharmacist) and noted that he disagreed with Arnold J’s view that there is no prospect of any downstream infringing act. In the context of direct infringement, Floyd LJ also considered what would be sufficient to negate the existence of the relevant intention by the manufacturer, and concluded that it must be more than merely skinny labelling; the manufacturer must take “all reasonable steps within his power to prevent the consequences occurring”. No further guidance on what is enough to satisfy this requirement was provided.

FRAND and competition defences The Court of Appeal confirmed that an ETSI FRAND declaration given by a company that is not a member of the European Telecommunications Standards Institute (ETSI) provides the same rights to third parties as one made by an ETSI member25. This arose as part of an appeal from Birss www.cipa.org.uk

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J’s decision to strike out elements of Samsung’s competition law defences to Unwired Planet’s standard-essential patent infringement action, which argued that the French law that governs ETSI declarations of members and non-members confers different rights on a third party26. Kitchin LJ decided that Birss J’s decision on this point was unimpeachable and upheld the strike out. However, the Court of Appeal did restore a second aspect of the defence relating to the incomplete transfer of the non-discrimination obligation from Ericsson to Unwired Planet. Samsung was held to have a realistic prospect of persuading a judge at a full trial that, in the circumstances of the case, Article 101 TFEU required the effective transfer to Unwired Planet of Ericsson’s FRAND obligation so that Unwired Planet could not obtain more favourable terms from its licensees than Ericsson could itself have obtained. Samsung had argued that as part of Unwired Planet’s much smaller portfolio, the patents would achieve a higher royalty rate than they would as part of the large Ericsson portfolio, and that this was contrary to the FRAND obligations which should follow the patents transferred to Unwired Planet. Overturning the Judge’s decision to strike out this element, the Court of Appeal stated that it was arguable that this potential for a higher royalty rate would distort or restrict competition. The Illumina litigation, concerned with gene sequencing technology, has proved that competition law defences are not the sole preserve of mobile phone or computer chipset cases27. The defendants made allegations of abuse of dominant position and anti-competitive agreements in response to Illumina’s claim for patent infringement. However, these defences were raised late in the day and it fell to Roth J to decide how to manage them. He adjourned the application to plead the competition law defences until after the “technical trial”, i.e. the infringement/validity trial. He noted that only then would the competition law aspects take shape – e.g. there may be no abuse at all if there is no infringement. In contrast, John Baldwin QC (sitting as a Deputy Judge) granted HTC’s application that its licence defence be dealt with as a preliminary issue in its case against Philips relating to High-Speed Packet Access (HSPA) standard essential patents28. HTC argued that, as a consequence of a nonassert provision in a licence agreement between Philips and Qualcomm, it had a defence to the majority of the claims in the action. HTC argued that dealing with this issue first could dispose of a large portion of the action without the need for a full technical liability trial and that, whilst it was relying on the provision, it was not able to challenge the validity of the patents in suit. Philips argued that on the correct construction of the agreement there was no licence, and that, in any event, the agreement was void because it was contrary to the competition law provisions of the TFEU. Using the criteria set out by Birss J in Wagner v Earlex29, the Deputy Judge allowed the preliminary issue to proceed, stating that there was likely to be substantial savings in costs and resources. Volume 46, number 3

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Validity Novelty Merrell Dow v Norton30 is a difficult case. If it were otherwise, the judgment from Lord Hoffmann would not need a separate section headed “The Intuitive Response”, explaining why the intuitive response is wrong. Reliance was placed on this case in GSK v Wyeth31, GSK stating that it supported their argument that prior use of a vaccine in Cuba anticipated Wyeth’s patent for a meningitis B vaccine. Anticipation was one of many grounds of invalidity pleaded against the patent and dealt with by Henry Carr J in a wide-ranging judgment. It was argued that Merrell Dow made it unnecessary for the skilled person to analyse and identify the relevant protein administered in the vaccine at the priority date; it was sufficient that the vaccine was given and worked. Henry Carr J disagreed. Mere prior use by patients of the vaccine without knowledge of its constituents was not enough for anticipation. To anticipate, the skilled person must have been able to identify the relevant protein in the vaccine and reproduce it without undue burden. On the evidence before the Court, Henry Carr J held that the analyses necessary to identify the protein would not have been within the capability of the skilled person at the priority date. In contrast, regarding the allegation that the patent lacked entitlement to the second of two priority dates, Henry Carr J held that the priority document did contain an enabling disclosure despite the fact that it did not include the gene sequence listings which were set out in the patent. The Judge held that there were sufficient directions to conduct experiments which would yield the relevant sequences and that it did not matter that there were mismatches between the experimental output and the claimed sequence. In a claim for revocation of a medical device patent in Thoratec v AIS32, Thoratec was successful in arguing public prior use based upon the provision of another ventricular assist device for a study in the Netherlands which had been reported in a medical publication. AIS had claimed that, under Dutch law, the provision of the device for the study was under an implied duty of confidence. Arnold J noted the position under English law that Thoratec had the burden of proof in showing that the prior use made the product available to the public, but if this was satisfied the burden of proof would shift to AIS to show confidentiality. Based on evidence from Dutch legal experts from both parties, the Judge held that under Dutch law there was a rebuttable presumption that research carried out for a third party by a university or other academic institution is confidential. However, the Judge was convinced, on the evidence, that the presumption had been rebutted.

Entitlement to priority The test for entitlement to priority is different from that for novelty. To lack novelty, the prior document need only disclose one thing which falls within the claims. However, to be entitled to the priority of the prior document, the MARCH 2017

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claims must be supported by that document across their whole breadth. Sometimes it will be possible to generalise a specific disclosure without losing entitlement to priority (for example, in Samsung v Apple33, Floyd J (as he then was) opined that the disclosure of a “nail” in a priority document could be generalised into a claim for “fixing means” without losing priority because the skilled person could derive the generalisation directly and unambiguously from the disclosure). In Nicocigs v Fontem34, this was not possible. The claims of Fontem’s patent, concerned with an aerosol-forming electronic cigarette, covered any spatial arrangement of an atomiser component and a liquid reservoir component whereas the disclosure of the priority document concerned only one configuration. Entitlement to priority having been lost, the claims were anticipated by the disclosure of the priority document which had been reproduced in a co-pending patent application. The person claiming the right to priority must be the applicant or his successor in title35. Although obiter, in Idenix v Gilead36 Kitchin LJ agreed with Arnold J at first instance37 and said that what constitutes an effective transfer is a matter for national law and as far as English law is concerned, a transfer of the substantive right – equitable title – is probably enough where the formalities effecting transfer of legal title have not been perfected. In Actavis v ICOS38 Birss J held that the burden of proof for the priority of a co-pending patent application (relevant under section 2(3) of the Act) lies with the party attacking the novelty of the patent, but shifts to the patentee if “sufficient evidence is available to support an inference that legal priority exists”. The relevant patent application, “Stoner”, was made in the name of Merck & Co. and Ms Waldstreicher for jurisdictions outside the US and Ms Stoner for the US (this difference arises from US practice whereby patent applications have to be made in the name of the inventor even if subsequently assigned to the employer). The priority document named the inventors as Ms Stoner and Ms Waldstreicher. There was no evidence as to the correct transfer of rights. However, the Judge found that the Court could draw the necessary inference where the third party applicant is a major international pharmaceutical company, such as Merck & Co., with a professional patent department whose function is partly to ensure formalities are correctly complied with. ICOS was unable to rebut this inference (by, for example, adducing evidence from Merck or the inventors of Stoner) and therefore Birss J found that Stoner was entitled to its priority. However, Birss J did note that the position might have been different had Stoner been an application belonging to one of the parties to the dispute. Although Stoner was entitled to its priority, the Judge found that the disclosure in the co-pending application was not enabling and, therefore, did not anticipate ICOS’ tadalafil dosage regimen patent. The patent was held valid and infringed. 22 CIPA JOURNAL

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Quotation of the Year:

For the last time, with some sadness, I have pressed the "Start New Civil Appeals Judgment" button of the judgment template. Per Sir Robin Jacob in Gedeon Richter v Generics (UK) [2016] EWCA Civ 410

2016 saw the last decision in Sir Robin Jacob’s long and fruitful judicial career. www.cipa.org.uk

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Obviousness To bring a drug to market, clinical trials are necessary. Recent case law has shown that publications surrounding those clinical trials can put the validity of an associated patent in peril. For example, readers may recall the case of Hospira v Genentech39 in last year’s review, in which one of Genentech’s trastuzumab patents was held to lack inventive step over a prior art citation which disclosed a Phase III trial of trastuzumab in combination with paclitaxel and other agents, but did not disclose any results from that trial. The patent was held to be novel over the disclosure because the claim required an effective therapy and the prior art, lacking results, was silent about efficacy. However, the disclosure was fatal to inventive step. In 2016, this decision was upheld by the Court of Appeal40. On the obviousness question, Floyd LJ rejected Genentech’s submission that for claims requiring a therapeutic effect to be obvious the expectation of success must be so high that it is more or less self-evident that the purported invention ought to work. The Court refused to create a lex specialis for such claims. Floyd LJ also dismissed Genentech’s argument that Arnold J had failed to put himself in the position of the skilled person when assessing the work that would be required to carry out a Phase III clinical trial, confirming that although the necessary clinical trials would consume significant time and expense, the work was not technically challenging and was within the skilled person’s capacity. A not dissimilar situation arose in the case of Hospira v Cubist41. Cubist, the patentee, had published a press release stating that it would be conducting certain clinical trials, including a Phase III trial of a dosage regimen which fell within the scope of the claims. The press release was published after the first priority date but became an issue because Henry Carr J found that the relevant patent was not entitled to that priority date. The disclosure of the clinical trials was cited for both anticipation and obviousness. In keeping with the trastuzumab case, the novelty attack failed because the publication said nothing about efficacy and Cubist’s claimed dosage regimen had to be interpreted as a therapy that was efficacious. Nevertheless, Henry Carr J found the claimed dosage regimen obvious in light of the press release because the skilled team would consider that the proposed clinical trials would have a fair expectation of success in demonstrating efficacy. Arguments from Cubist that there was a cloud over the drug because its development had been previously abandoned by Eli Lilly did not gain traction. The Judge held that positive results about the drug were part of the CGK. Furthermore, the pursuit of Phase III trials clearly indicated that the Phase II results must have been encouraging. It seems pharma companies should proceed cautiously with pre-priority (or pre-filing) publications around clinical trials in the future. It is often said that hard cases make bad law; that out of extreme fact patterns emerge judgments that can be difficult to reconcile. Conversely, but usually unsaid, is the idea that clarity in the law emerges from fact patterns that are similar, but different. A good example of this is the other Court of Appeal judgment in Hospira v Volume 46, number 3

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Genentech42, and the question of whether it is obvious to pursue a particular formulation in a screening programme. Here the Court of Appeal was asked to overturn an obviousness finding by Birss J in respect of two trastuzumab formulation patents: the Judge found it obvious to include in a screening programme a number of excipients from the CGK and that the resulting formulations would include those claimed. It was argued that this fell foul of the EPO’s “could/would” test, which finds obvious anything that a skilled person would do (not just could do). Floyd LJ explained that the English courts are not tied to the “could/would” test and that the skilled person can sometimes be faced with a range of obvious possibilities; the fact that the statistical likelihood of settling on any one of them is low (i.e. there is no “would”) does not make that option inventive. Equally, the fact that one cannot point in advance to those options which might work does not prevent a finding of obviousness. A comparison was made with the previous year’s case of Teva v Leo43, another decision of Birss J on a formulation patent that was appealed. In that case Birss J was overturned, the Court of Appeal finding that it would not have been obvious to include a particular non-aqueous solvent in a screening programme because the circumstances were such that there was no expectation that a non-aqueous solvent would work. Obviousness for lack of technical contribution, or “AgrEvo obviousness”44, was at the forefront of the appeal decision in Idenix v Gilead45. Idenix’s patent claimed a family of nucleoside analogues for treating HCV and other infections caused by viruses in the Flaviviridae family. The patent, claim 1 of which specified compounds under a Markush formula effective against Flaviviridae, was in trouble from the moment that Idenix’s own expert conceded during trial that the claim, which was conservatively estimated to cover about 50 billion compounds, covered classes of compounds which it was not plausible would be effective. In light of this concession, Idenix had made a conditional application to amend the claims to focus on the sub-class of compounds which was said to be efficacious. Nevertheless, the claims in amended form were held by Arnold J to lack inventive step for making no technical contribution to the art, a finding upheld on appeal. For example, there were no experimental data for the compounds in question and no credible theory or rationale why the compounds in this class might all be effective. An even broader claim was the subject of an AgrEvo obviousness attack in Merck v Shionogi46. Drafted in the Swiss form and relating to use of a class of compounds as integrase inhibitors for the treatment of viral diseases, the Markush formula in the main claim had so many variable substituents that the number of chemical compounds covered was said to be in the order of 1039. To put the size of this number in context, Merck’s counsel estimated that if 200 compounds a week were tested for efficacy, even to test 0.01% of the claimed compounds would take a period of time 2 x 1021 times the age of the Earth. Arnold J dismissed Shionogi’s argument that no lack of technical contribution attack could be made because the claims contained a functional limitation, i.e. the technical contribution MARCH 2017

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was written into the claims. Referring to Idenix v Gilead47 and Novartis v Johnson & Johnson48 he noted that in order for such claims to make a technical contribution, the patentee must identify a principle which permits a reasonable prediction to be made that substantially all the products falling within the scope of the claim share the functional characteristic claimed. In this case, what was lacking in terms of principle was a defined “pharmacophore” – i.e. the relative positioning of the functional groups identified by structure-activity relationship studies – which would enable a prediction of integrase inhibition to be made. Furthermore, the specification did not include any data demonstrating the compound’s antiviral efficacy, merely some biochemical assay results which were held to fall short of the mark. Amendments proposed by Shionogi were held not to affect the conclusions reached. In American Science and Engineering v Rapiscan Systems49, the patentee raised a familiar question when arguing that there were secondary indicia of non-obviousness, namely: if it was obvious, why was it not done before? The case concerned x-ray backscattering for security imaging and, although the period between the priority date and the publication of the prior art was only six years, the field was very active. The defendant argued that nobody else could develop the claimed invention because of the patentee’s existing patent protection and, as a result, the burden moved to the patentee to show that this was not the case. Arnold J dismissed this “extraordinary submission”. He confirmed that, if a party attacks a patent on the grounds that it is obvious and wishes to rely upon a fact to explain why it was not done earlier, the burden of proving the existence and relevance of this fact lies with that party. This was equally true whether that fact was the availability of raw materials, a regulatory restriction, a commercial factor or the existence of earlier patent protection. The Court of Appeal dismissed Gedeon Richter’s appeal on the obviousness of its emergency contraception dosage regimen patent over prior art which repeatedly stated the incorrect dosage50. Giving his last judgment, and following Sales J’s finding at first instance that the skilled person would contact the author of the prior art who would then revert with the correct dosage, Sir Robin Jacob stated that he could not see any logical distinction between a case where it is obvious to look something up and a case where it is obvious to ask the author and clear that the answer would be given because in both cases “the prior art spurs the action of [the skilled person] finding out [the answer] in a non-inventive way”. It is possible that the case may come to be seen as being confined to its facts. Several cases in 2016 reiterated the caution advised by Floyd J (as he then was) in ratiopharm v Napp51 in pleading a case of obviousness over the CGK alone and highlight the difficulties with this approach. In Accord v Medac52 Birss J found Medac’s patent for the use of methotrexate for the treatment of inflammatory autoimmune diseases inventive over the CGK alone but obvious over a piece of prior art combined with the CGK. In so doing, the Judge elaborated on Floyd J’s position with regard to the necessary scrutiny that such attacks should be given, stating that: 24 CIPA JOURNAL

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“The problem with arguments over common general knowledge alone is that the combination of features relied on is always and necessarily one created with hindsight knowledge of the invention, and worse, is one which the person attacking validity has not been able to find as a preexisting combination in the concrete prior art. Either the combination has not been made in the concrete prior art at all or it only appears with additional inconvenient details. If an invention is not obvious over the concrete prior art which is relied on, the court is entitled to be sceptical that an argument that it is nevertheless obvious over common general knowledge alone is correct”53. The importance of properly pleading a case on obviousness over the CGK alone was underlined both by Birss J in the third Unwired Planet technical trial54 and by Daniel Alexander QC, sitting as a Deputy Judge in Meter-Tech55. In Unwired Planet, the need for a proper pleading was mentioned by the Judge despite an agreement between the parties that the defendants’ expert report would serve as the statement of case; the case had shifted slightly before trial. The defendants’ case was said to have created a hindsight-driven combination of features that sidestepped the inconvenient details contained in contemporaneous documents and at a level of generality which itself was crafted with hindsight. Later in the year, Daniel Alexander QC explained that a party’s statement of case should set out not only what the CGK was at the relevant time, but also how that differs from the invention and why it renders the claim obvious. In addition to setting out the starting point, this was said to require pleading the allegedly obvious route to the invention so that the notional thinking of the skilled person can be evaluated. Having made these observations, the Judge declined to make a finding on the argument – not because the claims in question were not obvious in light of the CGK alone but because it would not be fair to make such a finding given the manner in which the pleadings developed in the case. Whilst this seems to impose a heavy burden on parties wanting to take this route to attack a patent, Daniel Alexander QC noted that the Court should not place “undue forensic weight” on the precise manner of the pleading and that the fact that the argument develops in light of the patentee’s points should carry only limited weight. This caution was echoed again by Roger Wyand QC, sitting as a Deputy Judge in Sony v SSH56. When Sony failed to establish that its four key propositions were CGK, it was found that no identifiable starting point had been established for an assessment of obviousness and, as a result, it was not possible to apply the Pozzoli questions, leading to a fatal flaw in the attack.

Skilled addressee In Saertex v Hexcel57 HHJ Hacon revisited the oft-cited statement of Lord Diplock in Catnic58 where it was said that the patentee addresses the patent to “those with a practical interest in the subject-matter of his invention”59. HHJ Hacon held that this “practical interest” referred to: www.cipa.org.uk

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“an interest which is held by the putative skilled person in directly performing the invention as claimed – either by himself or, where the facts require, in co-operation with one or more other skilled persons, each with different expertise”. With this emphasis on direct performance of the invention as claimed, it would seem that account should be taken of the category of claim, such that, to take an example used by the Judge, a skilled user of a product made according to a patented method will not necessarily be part of the skilled team.

Insufficiency Although the concept of plausibility was born at the EPO in the context of inventive step, it is in the context of insufficiency that

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it is becoming most well developed in English jurisprudence. In 2016, there were several notable cases in this area. The Court of Appeal decision in the pregabalin case confirms that the test for plausibility is a “very low threshold”60. The patent in suit claimed that pregabalin was an effective treatment for pain (claim 1) and, more specifically, neuropathic pain (claim 3). Floyd LJ rejected the appeal by Warner-Lambert against Arnold J’s decision that neither claim was plausible across its scope, essentially because neuropathic pain had two components – central and peripheral – and only efficacy in the treatment of peripheral neuropathic pain was plausible. The fact that plausibility is a low threshold test meant that it is not necessary for there to be enough in the patent specification for the skilled person to make a firm prediction, or to be motivated

Supplementary protection certificates (SPCs) What was once a torrent of references to the Court of Justice of the European Union (CJEU) on SPCs has now become a trickle77. But the trickle continues. There was one reference in 2016: MSD v Comptroller of Patents78, in which Arnold J referred questions concerning the application of Articles 3(b) and 10(3) of the SPC Regulation79, i.e. whether a valid MA had been granted at the time of the SPC application and, if not, whether an irregularity could be subsequently rectified by the applicant80. At the time of MSD’s SPC application in relation to its ezetimibe/atorvastatin product, whilst the decentralised procedure had concluded and an ‘End of Procedure’ notice had been sent, the Medicines and Healthcare Products Regulatory Agency had not yet adopted the decision to grant a UK MA. MSD no doubt chose to file its SPC application before MA grant because the patent on which it relied was due to expire the day after the application was filed, hence it was left with little room for manoeuvre. Arnold J asked the CJEU whether an End of Procedure notice can be considered equivalent to a granted MA for the purposes of Article 3(b) and, if not, whether MSD could cure the irregularity under Article 10(3) upon grant of the UK MA. Arnold J agreed with the IPO’s reasons in rejecting the application,

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namely that an End of Procedure notice is not only not mentioned in the SPC Regulation, but does not have any legal effect and certainly does not allow a third party to market its product in the UK. Also, the Judge noted that Article 10(3) allows an applicant to remedy a failure to file a copy of its MA with the application but, in his opinion, cannot be used to overcome the requirement in Article 3(b) to hold a granted MA at the time of the application. The sole decision from the CJEU in 2016 concerning the interpretation of the SPC Regulation followed a reference from the Estonian Supreme Court81. The case concerned the chemotherapeutic agent capecitabine, which is marketed by Roche under the brand name Xeloda. Roche had obtained an MA in Switzerland in 1998 and in Estonia in 2001. Calculating the duration of the SPC on the basis of the former would have resulted in SPC expiry in 2013 and on the latter in 2016. Roche contended that as the SPC was issued prior to Estonia joining the EU, Estonian law applied – according to which the duration of the SPC should be calculated by reference to the Estonian MA. The CJEU disagreed; the Swiss MA was to be considered the relevant MA. The IPO issued an interesting decision concerning Abraxis’ application

for an SPC for paclitaxel formulated as albumin nanoparticles (“nab-paclitaxel”), the formulation of its anti-cancer drug Abraxane82. Abraxis contended that nab-paclitaxel was a new single active ingredient and therefore a new “product” for the purposes of Article 1(b) of the SPC Regulation that was distinct from paclitaxel, which had previously been the subject of an MA. The hearing officer disagreed and concluded that nab-paclitaxel was in fact a combination of active ingredients. Despite demonstrating that nab-paclitaxel had a distinct pharmacological activity when compared with paclitaxel, Abraxis was not able to demonstrate that the albumin component had a therapeutic effect of its own. As a result, in accordance with CJEU jurisprudence stating that all active ingredients in a combination must have their own therapeutic effect83, Abraxis was not entitled to an SPC. In the alternative, Abraxis argued that the CJEU decision in Neurim (C-130/11) should be construed broadly to allow for SPCs not only for new indications but also for new formulations. The hearing officer also rejected this submission. However, the decision has been appealed and Arnold J has subsequently decided to refer the latter issue, concerning Article 3(d), to the CJEU84.

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to carry out tests with a reasonable expectation of success; it is enough that a patent specification contains a reasonably credible theory or some data encouraging the reader to try the invention. In this case, animal model data (rat paw formalin test) in the specification suggested that the drug might be effective for treatment of peripheral neuropathic pain – so that was plausible. This conclusion was fortified by it being established by the evidence at trial that the skilled team would be encouraged by the data in the patent to carry out simple tests to confirm the suitability of pregabalin for peripheral neuropathic pain. But it was not possible to extend this to other types of pain based on a theory that there was a unifying principle at work. EPO jurisprudence, and particularly Salk61, suggests that a disease as a whole can be made plausible by narrow data if that data shows that the drug has a direct effect on a molecular mechanism specifically involved in the disease. But there was nothing in the patent or CGK to support the patentee’s argument that there was a unifying characteristic or principle in the present case. Unsurprisingly, having held that the patent in suit in Idenix v Gilead62 did not make a plausible technical contribution to the art, the Court of Appeal also dismissed the appeal from Arnold J’s decision that the claims were insufficient because it was not plausible that any technical contribution extended across the full breadth of the claims. The appeal decision also upheld Arnold J’s findings on other aspects of insufficiency, including the fact that the skilled person would not be able to make the compounds claimed or perform the invention without undue burden. It was contended that Arnold J had made an error of principle by focusing on whether the compounds could be made via “routine methods” instead of asking whether the effort involved would amount to an “undue burden”. Kitchin LJ dismissed this argument, noting that the Judge’s approach had been “entirely appropriate”. The appeal decision serves as a reminder that the Court of Appeal will be reluctant to interfere with a first instance decision relating to insufficiency unless there is a clear error of principle, something that Kitchin LJ himself underlined with reference to the House of Lords decision in SmithKline Beecham’s Patent63. A similar conclusion was reached by Arnold J in Merck v Shionogi64, the Judge finding that the patent presented the skilled team with a vast research project with a high likelihood of failure. Both parties submitted evidence of experimental work done on compounds falling within the claimed Markush formula within the four-year disclosure window. Arnold J concluded that the evidence demonstrated that a significant proportion of the compounds either did not possess antiviral activity or did possess antiviral activity but were unduly toxic. Regeneron’s patent for transgenic mice that could be used as platforms for therapeutic antibody discovery was found insufficient by Henry Carr J65 on the basis that claim 1 of the patent covered large insertions and deletions of mouse genome which could not be performed by the skilled person without undue burden. 26 CIPA JOURNAL

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In the third technical trial of Unwired Planet66, Birss J agreed with Arnold J’s finding in Generics v Yeda67 that the fact that a claim has a “fuzzy boundary” does not render it insufficient for ambiguity. He noted that the only instances of truly ambiguous claims in modern law were in Kirin-Amgen68 and Sandvik69 and that these claims were invalid because the skilled person could not know if they were carrying out the correct technical test to establish if a product/process fell within the claim. However, the Judge commented that the principle was not limited to claims including technical tests, as shown in SmithKline Beecham70. If a defendant is found to infringe, that in itself demonstrates that the claim is at least clear in some respects, which will mean that an insufficiency by ambiguity argument is likely to be met with scepticism. In considering the claim in question, it was noted that it did not matter that it was wide in scope. The important thing was that the skilled person would be able to implement a scheme in accordance with the claim without undue effort. In coming to this conclusion, the Judge distinguished the claim, which required a conversion to be carried out to allow a comparison of value from two different systems, from that considered in Kirin-Amgen, because the claim scope was not dependent on the outcome of the comparison.

Arrow declarations One of the most notable developments of 2016 was the reawakening of the so-called “Arrow declaration” as a form of relief, used against patentees when clearing the way. Named after the interim decision of Kitchin J (as he then was) in Arrow v Merck71, the form of the order is to declare that certain products or acts were known or obvious at the priority date of a patent, thereby giving immunity from future claims for infringement by deploying a Gillette defence72. There were three judgments of substance during the year. All related to the same patentee and product: AbbVie and its antibody product Humira (adalimumab), the world’s biggest selling drug. Seeking the Arrow declarations were biosimilar product manufacturers Fujifilm Kyowa Kirin Biologics (FKB) and Samsung Bioepis. The cases related to the question of whether such declarations can be granted as a matter of principle, which remained unanswered because the original Arrow case had settled before trial. AbbVie contended that the declarations were not available, and sought to strike out the biosimilars’ claims. It is important to note that the background facts were unusual. The claims for declarations were originally made alongside applications for revocation of granted European patents. During the course of the proceedings, certain divisional patent applications that were also the subject of the declarations whilst pending, granted. But in each case, during the pendency of the proceedings, AbbVie took steps unilaterally which led to the revocation of the patents at the EPO or their de-designation from the UK. It was alleged that AbbVie was deliberately avoiding adjudication on the merits of the patents’ validity and that the declarations were therefore necessary to achieve www.cipa.org.uk

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commercial certainty in respect of the pending applications in the same family which was not available via any other route. In the first case73 Henry Carr J refused AbbVie’s application to strike out FKB’s claim for a declaration, explaining that: “[i]f there was no jurisdiction to grant Arrow declarations, then it would be impossible for parties who wished to clear the way for the launch of a product to do so without facing years of commercial uncertainty posed by cascading divisional applications pending before the EPO”. In the second case, relating to a different set of AbbVie’s Humira patents, Arnold J agreed74. FKB had a real prospect of establishing that AbbVie’s actions at the EPO were: “to shield some or all of the subject-matter of [its patent] from timely scrutiny by the Court, or at least to prolong the uncertainty as to whether such subject-matter founds a valid patent”. The Judge also held that the Court has jurisdiction to grant an anti-suit injunction to restrain the bringing of any infringement suits in relation to acts covered by the declarations. The decisions in these first and second cases were appealed75. In the third case76, Henry Carr J dismissed a further application by AbbVie for summary judgment or strike out. By this time, in addition to taking steps which led to the loss of its granted patent rights in the UK, AbbVie had also offered undertakings that it would not obtain any patent protection in the UK that would be infringed by use of the dosage regimen for FKB’s products for which the declarations were sought. AbbVie then argued that the declarations sought would not serve any useful purpose because, as a result of AbbVie’s acts, FKB had already cleared the way. However, Henry Carr J held that there was a real prospect that the judge at trial would grant the declarations sought because: 1. it could be implied from AbbVie’s refusal to submit to judgment, or to provide an acknowledgement to the declarations sought, that the declarations serve a useful purpose to FKB; 2. the spin-off value of a judgment in a contracting state could be very valuable; 3. the declarations sought would protect FKB’s supply chain to the UK and other parts of Europe in the sense that it would comfort third parties; 4. the declarations sought would provide more clarity than AbbVie’s undertakings; and 5. the declarations sought would promote settlement in that they change the parties’ negotiating positions. The upshot of the three decisions is that the case against AbbVie proceeded to trial and was heard in January 2017. Volume 46, number 3

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Costs Overall winner Generally, when assessing costs, the English courts continue to follow the issue-based approach exemplified by Jacob LJ in SmithKline Beecham v Apotex86 and repeated in MMI v Cellxion87: “An issue-by-issue approach is therefore one that should be applied so far as it reasonably can. On the other hand such an approach is not the be-all and end-all. Whether or not ‘it was reasonable for a party to raise, pursue or contest a particular allegation’ remains a relevant factor to be taken into account as part of the conduct of the parties.” Henry Carr J’s costs decision in Hospira v Cubist88 concerned the circumstances in which costs payment may be shifted, such that the overall winner pays the loser’s costs of a particular issue. Referring to MMI v Cellxion and the commentary in the “White Book”, it was established that an issue-based costs order should only be made in a “suitably exceptional case”, requiring something more than success on the issue in question. Henry Carr J also made clear that “exceptional” is not intended to imply that the award of costs will be extremely rare. In the case before him, he decided to shift the order for payment on two issues: 1. Hospira’s case that the patent in suit was insufficient, “obviously a bad point” on which it failed at trial; and 2. Hospira’s challenge to the first priority date, a point on which Cubist succeeded at trial. The latter fell into the “suitably exceptional” category because upon receiving a first tranche of disclosure from the patentee, Hospira refused to admit certain facts and insisted on pursuing further disclosure to see if anything inconsistent turned up. Following his finding that Unwired Planet’s patent was invalid89, Birss J looked carefully at the law relating to when not to simply make deductions for distinct issues on which the overall winner did not prevail, but also award costs to the losing party. The Judge took the view that the law had moved on from the “suitably exceptional” test described in Monsanto90 to a more measured test: whether it is appropriate, in the circumstances of the case, to make the Order the Court is considering. The Judge also commented on the percentage approach to costs that has become the “norm” in patent cases. Although the approximate nature of this exercise cannot be overstated, it was considered that the alternative of having a detailed assessment does not obviously produce a better approximation of justice, especially in view of the significant extra cost. However, one must be aware of the difficulties associated with the rough and ready assessment of these percentages using the proxy methods available, especially as a small percentage difference can equate to a large sum of money. Applying this logic, the Judge made several deductions to the successful defendants’ costs, but did not award the patentee any costs. Part of his consideration was MARCH 2017

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that the patentee had initially contended that 69 claims were independently valid but, by trial, this number had reduced to three.

Indemnity basis Rapiscan were ordered to pay the costs of AS&E’s infringement case on an indemnity basis after it failed to admit that offers to dispose of the infringing products had been made in its marketing materials91. Despite it being abundantly clear from the outset that the marketing materials were in issue, Rapiscan only admitted infringement after the first day of trial following concessions during cross examination of its managing director. Arnold J noted that it must have known all along that it had been making these offers and that its failure to make the necessary admissions cause the expenditure of a great deal of money.

Summary assessment For the first time, the costs of a patent action have been summarily assessed following cost budgets being drawn up and accepted as reasonable and proportionate92. Having found that SSH’s patent was infringed but invalid, Roger Wyand QC, sitting as Deputy Judge, had to grapple with the provisions allowing a party to depart from an approved budget. Following the approach set out by the Court of Appeal in Henry v News Group93, it was noted that whilst it was possible to depart from the budget, it should only be done when the Court is satisfied that there are good reasons to do so having considered all the circumstances. Sony was allowed to increase the budget for both the expert report and trial phases as the case was said to have developed in a way that neither party had anticipated. Sony was also permitted to amend the apportionment figures that it had voluntarily added to the cost budget to estimate the split of costs between the issues of validity and infringement and it was noted that where that was wrong it would be invidious of the Court not to make its own assessment. This seems to be a lenient approach, given the rigours of the cost budgeting regime.

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Procedural issues Experts Readers may recall the guidance given by Arnold J in MedImmune v Novartis on the preparation of expert reports in patent cases94. Arnold J highlighted, in particular, two “common traps for the unwary”, the first of which was to take care to present a balanced view of the prior art and not just cherry-pick the bits that best support the expert’s view. Interestingly, in Hospira v Cubist95, Henry Carr J seemed to be quite relaxed about this point. Upon reviewing criticism of Cubist’s expert for selectively quoting from a textbook, he noted that: “it is important to keep criticisms of this nature in perspective… Experts have to choose which sections to quote from texts, and it is often suggested that they have not included material passages. I do not consider that [Cubist’s expert] was trying to mislead the court”96. Arnold J has now issued further guidance relating to experts, this time on the cross-examination of expert witnesses in patent cases. Set out over two pages in his judgment in Merck v Shionogi97, he urges caution if criticising an expert for omissions from evidence unless it is clear that the fault lies with the expert rather than the instructing legal team: “cross-examiners must refrain from using the fact that the expert has not mentioned something in their report as a stick to beat the witness with unless the cross-examiner has real grounds for suggesting that this reflects on the witness’ impartiality, competence or approach to the issues rather than upon the instructions they have been given”98. More generally, he takes the view that too much time is spent by cross-examiners in patent cases on personal attacks that are unfair to the witness, unhelpful to the Court and wasteful of expensive time.

Damages – section 69 deductions HHJ Hacon dealt with an interesting point on damages following the Court of Appeal’s finding on infringement in AP Racing’s favour85. Despite accepting that the infringing brake calipers fell within the claims of the application, Alcon argued that AP Racing was not entitled to all damages back to the date of publication of the application under section 69 of the Act. It asked for a deduction to be made under section 69(3) because, as there was prior art cited against the majority of the claims in both the EPO and the IPO search reports, the skilled person would not reasonably expect those claims to be granted and, therefore, did not reasonably expect the patent to grant

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with the same scope of protection. The Judge noted that, even if it was right to say that the skilled person would look at the search reports, it did not follow that the prior art in the search reports gave rise to a reasonable expectation that those claims would not be granted. In any event, HHJ Hacon recorded Alcon’s evidential difficulty in sustaining its argument, the Judge having taken the deliberate decision in an earlier case management conference to refuse further evidence on the skilled person’s reasonable expectations in all the relevant circumstances on the basis that the issue did not satisfy the cost/benefit test applied to all issues in the IPEC.

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Continuing to have a strict view on the approach to expert evidence, Arnold J considered two different approaches to an expert’s consideration of obviousness in American Science and Engineering v Rapiscan Systems99. Both parties followed the structured approach of asking their expert to consider the skilled person and the CGK, then the prior art and finally the patent. The difference arose at the point that each expert was asked to consider obvious steps. AS&E’s expert considered this question before seeing the patent. As a result, his considerations were necessarily conducted in the absence of knowledge of the patent but his evidence did not address whether the differences between the prior art and the claimed invention were obvious. However, the Judge viewed this favourably compared to Rapiscan’s approach. Its expert was not asked to consider the question of obviousness until after he had read the patent. Further, when asked in cross examination, its expert confirmed that his understanding of the question of obviousness was by reference to the claims. As a result, the Judge noted that he did not appear to have understood the importance of trying to avoid hindsight. It would appear that to avoid criticism the expert must state that he is aware of the dangers of hindsight and has avoided it.

Scientific advisers The body of case law on scientific advisers was reviewed by Birss J in a case management hearing between EMGS and PGS100. PGS proposed that the Court be assisted by an adviser versed in the relevant technology. EMGS resisted, arguing that the case was no more complex than usual and that, crucially, it was concerned that there would be a lack of transparency about what information the Court was receiving. Furthermore, as there was a dispute about the fundamental science involved, EMGS argued that a scientific adviser might unwittingly impart views on this topic without the parties being aware. This problem had been acknowledged by the Court of Appeal in Halliburton101, but the Judge reiterated that a fair minded and reasonable observer would understand the respective roles of the Court and the scientific adviser and that it was the task of the Court, not the scientific adviser, to decide the case. Adopting a similar approach to Nokia v Interdigital102, the Judge received a non-controversial private day-long teach-in from a neutral scientific adviser, following which the adviser played no further role in the case. Despite the parties settling after trial, Birss J gave judgment on the utility of the teach-in103. He noted that, without the parties present, he was able to ask candid questions and learned a lot. This allowed the trial to proceed more briskly, saving time and cost. Having the adviser’s instructions settled by the Court in advance and then making the written material available to parties after the teach-in ensured an appropriate degree of transparency.

Jurisdiction Readers will be familiar with the early decisions in the Actavis v Eli Lilly litigation concerning pemetrexed, where the English courts held that they did have jurisdiction to Volume 46, number 3

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grant declarations of non-infringement in relation to foreign designations of a European patent in circumstances where validity was not in issue104. An interesting contrast came before Arnold J last year in Anan Kasei v Molycorp105. The patentee had brought proceedings before the Patents Court for infringement of the UK and German designations of its European patent. The defendant wished to challenge the validity of the patents and having commenced nullity proceedings in Germany, consequently challenged the jurisdiction of the English court to hear the infringement case on the basis that the German courts have exclusive jurisdiction to consider the validity of the German patent under Article 24(4) of the Recast Brussels I Regulation106 and the two were intertwined. Arnold J applied the reasoning in GAT v LuK (C-4/03) and Solvay v Honeywell (C-616/10), holding that the infringement claim was “concerned with” or, at least, “principally concerned with” the validity of the German patent (therefore within the exclusive jurisdiction of the German courts under either Articles 24 or 27 of the Regulation), as it was implicit in a finding of infringement that the patent was valid, as there cannot be infringement of an invalid patent. This was despite the claimant's “transparent attempt” to circumvent the scope of the Regulation by drafting the claim in such a way that it was acknowledged that any finding of infringement would be conditional on a ruling of validity in the German proceedings. Meanwhile, the concurrent jurisdiction of the Patents Court and the Competition Appeal Tribunal (“CAT”) was considered by Birss J when considering the correct forum for the nontechnical aspects of a case involving standard essential patents107. It has only been possible to transfer a stand-alone case to the CAT since 1 October 2015, so this is a relatively new issue with which to grapple. The large scale litigation between Unwired Planet and Samsung and Huawei involved disputes about FRAND licences as well as counterclaims for breaches of competition law based on Unwired Planet’s acquisition of the patents from Ericsson. Samsung applied to transfer the competition aspect under section 16(1)(a) of the Enterprise Act 2002, which provides that the court can transfer to the CAT “so much of any proceedings before the court as relates to an infringement issue”. In this context, an “infringement issue” is one relating to a possible breach of Article 101 or 102 of the Treaty on the Functioning of the European Union. The Judge considered relevant provisions of CPR Practice Direction 30 as well as the decision of Barling J to transfer the case to the CAT in Sainsbury’s v Mastercard108. Considering these together with the overriding objective, the Judge set out some key factors to consider, including creating delay or additional cost, the assistance of the two economic and competition specialist panel members in the CAT as well as the issues created by dividing the case between the two tribunals. However, when considering the breadth of the possible transfer, it was noted that the power conferred by the section was not wide enough to allow the transfer of the distinct issues that did not themselves concern a competition law infringement issue, MARCH 2017

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even if they arise in the same context and raise closely related factual, legal and policy questions. In particular, the contractual FRAND issues, which did not relate to a breach of competition law, could not be transferred. As a result, and “not without some regret”, Birss J concluded that it was not practical to divide the case, especially considering the centrality of the FRAND issues in suit. To do so would have been a recipe for confusion.

Trial dates “An important change to the management of patent cases” is how Henry Carr J described the Practice Statement of 7 December 2015109, the purpose of which is to bring patent cases on for trial where possible within 12 months of the claim being issued, something which the parties are expected to cooperate to achieve. Explaining that the policy of the new practice is to make the English courts more competitive with courts in Europe generally, and Germany in particular, in Celltrion v Biogen110 Henry Carr J used the practice direction to order a split trial of a multi-patent revocation action within the 12-month guideline. The same Practice Statement was used by HHJ Hacon in Fujifilm v AbbVie111 to decide that it was not appropriate to adjourn the listing of a trial pending the determination of the jurisdictional challenge and strike out application. While it was true that the 12-month goal was not a straitjacket, the Judge ruled that it should not be set aside just because of the existence of the jurisdictional challenge and the strike out application. The Napp v Dr Reddy’s proceedings are a remarkable example of the degree of expedition which can be achieved with adequate case management and the cooperation of the parties. Despite the complexity of the issues in suit, the case proceeded from issue of the claim to a final decision on appeal within less than six months112. Both Arnold J at first instance and Floyd LJ on appeal saw fit to record this feat, appreciating the effort of the parties’ legal teams.

Amendment An interesting question relating to amendment arose on the appeal of the Warner-Lambert v Actavis case113, namely whether it was an abuse of process for Warner-Lambert to seek post-trial amendment of one of the claims, being a limiting amendment which made express the meaning of the claim Warner-Lambert put forward at trial (which had been rejected). The Court of Appeal upheld Arnold J’s decision that to do so would amount to an abuse of process. Although Floyd LJ confessed to being attracted at one point by Warner-Lambert’s argument that it would not be abusive because in principle there would not be any new subject-matter before the court, the case at trial may have run a different course had Warner-Lambert indicated at the start of trial that the amendment would be sought on a conditional basis – in particular, the focus of Actavis’ evidence may have changed. In the Court’s view there was no getting away from the fact that Warner-Lambert should have raised the amendment issue earlier. Pursuing the amendment post-trial 30 CIPA JOURNAL

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would have effectively constituted Warner-Lambert having a second bite of the cherry.

Disclosure Last year marked a turning of the tide in relation to disclosure in patent cases. In truth, the tide had turned some years earlier with the amendment of CPR 31.5 in 2013, following the Jackson reforms. CPR 31.5 sets out a menu of options for disclosure, ranging from an order dispensing with it to an order to give standard disclosure. As a result there is no longer a prima facie rule in favour of standard disclosure. This applies even in patent cases, where the parties’ disclosure obligations are already limited by CPR Practice Direction 63 para 6.1. This was made clear by Birss J in Positec v Husqvarna114 in a case about robotic lawnmowers. Having quoted CPR 31.5(7), the Judge said: “Two things emerge from this. First is the reference to the overriding objective and the need to limit disclosure to that which is necessary to deal with the case justly. This helps to focus the court's mind on the task to be undertaken. Second, and critically, is that the effect of this provision is that standard disclosure is one of six options. Counsel for Husqvarna submitted that this meant that standard disclosure was not the default option any more. I agree. The Chancery Guide (paragraph 17.35) makes the same point. As the Guide states, careful consideration should be given to the alternatives to standard disclosure.”115 Although it was contended by Positec, the defendant seeking a four-year window disclosure from Husqvarna, that Nichia v Argos116 prevented the Court adopting a prima facie rule dispensing with standard disclosure, Birss J held that Nichia was no longer a binding authority in light of the amendment to CPR 31. In Positec, the value of the dispute was characterised as somewhere in the middle of the range usually before the Patents Court. The Judge held that the cost of the disclosure exercise (£90,000, against total budgeted costs of about £1 million on each side), was not justified by its probative value, bearing in mind that it went only to the pleaded issue of obviousness and no reliance had been placed by the patentee on the invention story, aspects of which could have been illuminated by the exercise. Some months later, the change to CPR 31.5 and the Positec case was used by Henry Carr J to refuse a disclosure request in the Illumina v Premaitha proceedings117, on any view a large, high-value and important case pending before the Patents Court. The Judge encapsulated the change in climate as follows: “[The defendant’s solicitors], both very experienced solicitors, have made the point that in major patent actions in the United Kingdom, such as the present, it is not uncommon for the parties to review 10,000 or more documents. No doubt this has historically been the case. The judgment of Birss J in the Positec case and the present www.cipa.org.uk

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judgment, I hope, indicate that, given the changes in the rules and the menu-based option, this practice needs to be re-assessed against a proper cost-benefit analysis. For these reasons, I decline to grant [the defendant’s] request.”118 The request refused in Illumina was for documents traversing a 14-year period, estimated to require review of tens of thousands of documents, documents that had already been disclosed in related proceedings in the US. The documents were said to support the argument that the invention, relating to a gene sequencing tool used for non-invasive antenatal screening, overcame significant difficulties in the prior art. Disclosure of a similar scope had already been ordered in connected proceedings in relation to one of the other patents in suit, just a few months earlier, but before Positec had been decided. Henry Carr J noted that the same order would no longer be made. However, he did agree that the documents, which had already been disclosed in the connected proceedings, could be shared with the defendants in the present proceedings given that the cases were to be heard together. Meanwhile, Birss J confirmed that the service of a Product and/or Process Description (PPD) dealing with the nature and characteristics of the product or process in issue and the question of whether that falls within the claims, does not relieve a party of the obligation to provide disclosure in relation to other factual issues in the case. This dispute arose in Varian v Elekta119, in which the defendants had not provided disclosure in relation to the factual question of whether certain acts had been carried out. It was noted that, although in many cases there is no debate on these issues or the PPD includes admission such that no disclosure is needed, CPR 63 r63.9 and Practice Direction 63 para 6.1 do not negate the obligation to provide disclosure on these issues. Although some disclosure was later provided, it was found not to comply with Elekta’s obligation and the Judge put in place an “unless order”, of which Elekta was subsequently found to be in breach120. In Anan Kasei v Molycorp121, Arnold J rejected an application for the provision of samples to support infringement proceedings in Germany. The Judge held that the question of whether the Court has the power to grant such an order was a matter of English law independent of the application of the Recast Brussels I Regulation. Having reviewed the available routes whereby the Court has the power to order the provision of samples, Arnold J concluded that the Court would only have such power pursuant to a request from the German court (the patentee had not even commenced German proceedings yet). The Judge however noted that, were the Court to have power, it would be expedient in the circumstances to grant the order sought.

Experiments Birss J confirmed in Electromagnetic Geoservices122 that computer modelling should be subject to the regime for Notices of Experiments and endorsed the reasoning of Pumfrey J in Consafe v Emtunga123. He stressed that the same difficulties Volume 46, number 3

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arise as with any other experiments, namely that the output of modelling depends on the input and that running the same test with different data could produce a different result. The key factor to ensure that the experimental result relied upon is genuine is the availability of witnessed repeats. Whilst it may be that the other party can run the model themselves, this critically depends on all the data and code being made available to it. He also stressed the importance of explaining to the Court the role the experiments would play in the case so as to allow the Court to make further appropriate directions.

Interim Injunctions One of the consequences of the Court of Appeal decision in Warner-Lambert v Actavis124 is that, although Warner-Lambert is continuing to pursue an appeal to the Supreme Court, it has stated that it will not prevent generics from marketing pregabalin for indications which are protected only by claims held invalid by the Court of Appeal. In particular, it said it would not seek an injunction based on claim 3, directed specifically at neuropathic pain and held to be invalid on the basis that it was not plausible that pregabalin was an effective treatment for both central and peripheral neuropathic pain. This was seized upon by Sandoz, which had been the subject of an interim injunction in respect of its full-label product at the end of 2015, having launched shortly after the patent had been held invalid at first instance. Although Arnold J rejected Sandoz’ submission that the Court of Appeal’s decision to uphold the first instance decision on validity amounted to a material change in circumstances that might justify reconsideration of the interim injunction decision, Arnold J accepted that Warner-Lambert’s concession regarding the enforcement of the claims held invalid was material. Notwithstanding Sandoz’ argument that it would be disproportionate for the injunction to remain in place given that the asserted claims covered a small proportion of the market, Arnold J, admitting that he had “not found this an easy question to decide”, upheld the injunction against Sandoz. Having conducted an assessment of the American Cyanamid questions125, he was persuaded that the harm to WarnerLambert in allowing Sandoz’ product on to the market was greater than the loss of first mover advantage to Sandoz under the injunction. In particular, Sandoz was using a full label and full-label products are very much preferred by certain pharmacy chains because they only have to keep in stock and dispense one product. The Judge held that entry of a Sandoz full-label product would mean other full-label generics would quickly follow, and soon there would be a “free-for-all in the full-label market” (in which, presently, the only full-label product is Warner-Lambert’s). The Judge also took note of the fact that the size of the market at risk included indications which were outside the full label, but covered by the claims of the patent, and that these off-label uses, amounted to almost 14% of the market. He was unpersuaded by Sandoz offering to take steps to prevent prescribing of its full-label product. MARCH 2017

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Until 2016, Novartis v Hospira126 stood alone as an example of a case in which an unsuccessful patentee still managed to secure an interim injunction pending appeal. Readers will recall that in that case, Novartis’ patent relating to zoledronic acid was revoked at first instance but Novartis nevertheless secured an injunction, which was lifted when the Court of Appeal upheld the revocation decision. 2016 brought a further example of this type of “Hail Mary” injunction. In Napp v Dr Reddy’s127, Napp lost on the merits of the infringement case relating to its patent for buprenorphine transdermal patches, Arnold J dismissing Napp’s quia timet action against Dr Reddy’s and Sandoz. However, Arnold J granted Napp permission to appeal the non-infringement decision on claim construction, including the point relating to numerical ranges mentioned earlier in this review. Napp applied for an interim injunction. Arnold J granted the application128 on the basis that the fixed period of the injunction he granted was short (based on the information before him and the limited nature of the appeal, he estimated that the Court of Appeal could determine the case within a couple of months) and that the balance of injustice favoured Napp. A number of generics were waiting in the wings and it seemed inevitable that, if Dr Reddy’s or Sandoz launched, there would be a price war and significant price depression. Although the decision risked causing irreparable harm to Dr Reddy’s and Sandoz, promotion by Napp of an authorised generic product in the intervening period meant that the generics’ first mover advantage was already compromised. Interestingly, the Judge expressed concern that the Court of Appeal decision granting the injunction in Novartis v Hospira had not considered the Privy Council case of National Commercial Bank of Jamaica v Olint129, in which Lord Hoffmann made clear that the strength of the arguments on the merits of the proposed appeal was a factor the courts may take into account. Here, his view was that Napp’s case was weak, but he felt obliged to follow the Court of Appeal in Novartis v Hospira. This emphasises that the Court will not normally form a view on the strength of the merits provided the threshold has been cleared of showing that there is a real, as opposed to a fanciful, prospect of success on appeal.

Final injunctions Are the remedies for a contractual breach of a settlement agreement not to infringe any different than for infringement per se? This issue was explored by Henry Carr J in Stretchline v H&M130. Readers may recall from the Court of Appeal case131, reported last year, that the parties had entered a settlement agreement to compromise claims of patent infringement in relation to the use of fusible yarn in brassieres to prevent penetration of the underwires. The Court of Appeal refused to allow the validity of the patent to be challenged owing to the existence of the settlement agreement. The question now arising was whether the Court would grant an injunction to restrain further breach following the identification of certain acts alleged to infringe in breach of the agreement. Henry Carr J noted that, in principle, an injunction could be granted for breach of contract in these circumstances. However, on the evidence, it was not 32 CIPA JOURNAL

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appropriate. Injunctions are discretionary remedies and there was no evidence of a continuing threat to infringe. Also, the terms of the settlement agreement required the parties to pursue a cooperation mechanism before bringing court proceedings. The Judge also refused Stretchline’s request for Island Records132 disclosure to enable it to elect between damages and an account of profits. An account of profits is a statutory remedy for patent infringement and, whilst it was possible in principle for the Court to make the same order for breach of contract133, this was appropriate only in exceptional circumstances, which did not exist here. In Actavis v ICOS134 Birss J shed further light on his approach to quia timet injunctions in Merck v Teva135. In that case, he considered that all of the relevant circumstances should be viewed objectively and subjectively to decide whether there is a sufficiently strong probability that an injunction would be required to prevent the harm to the claimant such that it is justified in bringing proceedings for infringement. Significantly, in this case the Judge added that, although bringing revocation proceedings is not proof of an intention to sell, it does help support that inference based on the existence of an MA application. In other words, the act of clearing the way can add to the injunction risk. Birss J found that ICOS’ infringement counterclaim with regard to its tadalafil dosage regimen patent was justified because: 1. the UK market for tadalafil is large and valuable; 2. it was obvious that a generic would want to sell tadalafil once the SPC had expired; 3. Actavis had applied for an MA which is an expensive and time consuming process; 4. Actavis had brought proceedings to clear the way; 5. launching at risk could be attractive and profitable even if stopped by an emergency injunction; and 6. Actavis had not given any undertaking that it would abandon its MA if the revocation action was lost. Therefore, it appears that, in some circumstances, to avoid being subject to a quia timet injunction, a generic seeking to clear the way should also provide an undertaking to the relevant patentee that it will not launch its generic product unless the patent is revoked or until the patent expires.

Permission to appeal Until recently, applications for permission to appeal in patent litigation were treated by the courts as a special case, such that permission to appeal should be granted more easily than in other cases because of the complex technical subject-matter136. However, the Court of Appeal has held that this approach is no longer correct and that when considering permission to appeal, patent cases should no longer be treated differently to any other case137. In Teva v Boehringer Ingelheim, Floyd LJ stated: “I think the time has come to say that the technical complexity of the background is not a factor which trial judges should www.cipa.org.uk

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take into account in favour of granting permission to appeal. For that reason, there is no justification, in granting or refusing permission to appeal, for treating patent cases any differently to any other cases. In my judgment, the approach in Pozzoli138 should no longer be followed”139.

Unjustified threats We reported in last year’s review on HHJ Hacon’s refusal to grant summary judgment in Global Flood Defence v Van Den Noort140, an action for groundless threats of patent infringement proceedings in relation to a patent application that had yet to grant, the Judge relying on the Court of Appeal’s ruling in Brain141 to hold that a patent owner can seek to rely on the defence of justification upon patent grant under certain circumstances. The case took another turn when HHJ Hacon ordered the adjournment of the trial in circumstances where the EPO had at that time issued a notice of intention to grant the patent, but where formal grant would not take place until a week after the trial date142. Appeals against both decisions of the IPEC were decided in the Patents Court by Arnold J143, who held that Brain (which concerned a threat to bring proceedings made on a contingent basis, i.e. if and when the patent application was granted) was not a direct authority on whether a threat of proceedings for infringement of a granted patent made when only the patent application existed was capable of being justified. Nevertheless, the Judge decided that HHJ Hacon had been correct to hold that such threats were capable of justification. He relied on the fact that section 70 of the Act provides for strict liability, meaning that there need be no proof of damage in order for a threat to be actionable. Were the Court to conclude that such threats could not be justified, it may inhibit commercial freedom of speech and prove an obstacle to settlement negotiations. In addition, in considering justification, the Court must consider whether the threat related to acts which would constitute infringement (which may take place pre-grant) and not whether the terms of the threat were justified. Arnold J also concluded that HHJ Hacon had not erred in principle in exercising his discretion to adjourn the trial pending the grant of the patent, as grant was imminent. However, it remains to be seen whether the trial date would be postponed in circumstances where the grant date was unclear or distant.

Stays pending EPO proceedings In contrast to the old Glaxo144 guidelines, the new IPCom145 guidelines favour the stay of English proceedings, pending the outcome of parallel EPO proceedings, if all other things are equal. The relative timing of the two concurrent proceedings is often heavily influential as a factor in deciding whether or not to stay. This makes the decision of Rose J in Eli Lilly v Janssen146 particularly interesting. Here, the EPO proceedings against Janssen’s patent were well advanced and the English proceedings only just starting. However, a stay was refused on the basis that Lilly needed commercial certainty which the English proceedings were better placed to deliver. That is because the question of infringement was central to the English proceedings Volume 46, number 3

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– Lilly was seeking a DNI. Furthermore, and most interestingly, Lilly needed to know in the near future whether to apply for an MA for its product, the risk being that, if granted, this could be used by Janssen as the basis for an SPC, thus subjecting Lilly to up to five more years of liability. Janssen offered various undertakings to provide Lilly with commercial certainty, but its failure to specify a royalty rate for damages or an account of profits in the event of a successful infringement claim meant that such undertakings were not enough.

Issues from the IPEC The overall cap on costs in Intellectual Property Enterprise Court (IPEC) proceedings was subject to a new challenge in Global Flood Defence v Van Den Noort147. The proceedings involved three issues: 1. a claim for unjustified threats of infringement proceedings that was adjourned; 2. a claim for misrepresentation that failed; and 3. a counterclaim for outstanding royalties that succeeded. A decision on whether to adjourn the assessment of costs turned on the meaning of the word “claim” in CPR 45.31, the relevant provision on the costs cap. If it meant the proceedings as a whole, costs could not be assessed until all issues were decided, whereas, if it meant all of the claims which had been the subject of a final determination, costs could be determined in relation to the second and third issues (applying the statutory cap) and the assessment of costs in the remaining issue could be done at a later stage (a separate cap applying to that part of the proceedings). HHJ Hacon held that “claim” referred to a single set of proceedings and could therefore not be assessed until all issues were resolved, noting that any other interpretation would create uncertainty as to the potential liability for costs of litigants at the start of proceedings and could even incentivise parties to argue preliminary points or summary judgment applications in relation to individual issues in order to increase the maximum recoverable costs.

Unitary Patent / Unified Patent Court148 Every year your author of this section re-reads his effort for the previous year to see how clear (or foggy) was his crystal ball. This year he has looked back not just to last year, but the year before when he said: “Hence 2017 is more realistic, and your author’s current best guess is second half 2017. To be predicting anything earlier would be a triumph of hope over experience….” Last year he said: “…do not bank on a Brexit de-railing the UPC, and certainly not in terms of your UPC planning.” MARCH 2017

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Of course to pick and choose quotes in this way is a little mischievous. So to give balance, last year’s piece also said: “… one must… have firmly in mind that it is not possible to be a part of the UPC if not also a part of the EU. That was decided by the CJEU in March 2011 in Opinion 1/09.”

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the UPC should continue as normal. This would include the completion of the judicial recruitment process, and in line with that position, the Preparatory Committee: • •

This last comment now seems a less wise insight. It is a view with which everyone who had ever expressed an opinion would have agreed a year ago, but is now very much a minority view. And it is this topic which will be of most interest to readers: can, and if so will, the UK continue its membership of the UPC now that the UK has decided, despite the 23 June 2016 referendum result, to proceed with ratification of the UPC? But first, a quick review of 2016.

2016 in a nutshell The Bristows UPC website reported over 40 latest news items in the pre-23 June period of 2016. These were mostly incremental progressions toward UPC start-up, notably including progress in both the UK and Germany toward their ratifications in the early part of the year. In May, Italy too started its process. Also in May, the application process for UPC judges was opened. Then came 23 June. Surprisingly (to some) business carried on as usual. Within a week of the UK vote, the Netherlands had ratified the UPC Agreement (UPCA) and a crucial Protocol on the Privileges and Immunities of the Court had been signed by 13 states including France and Germany. On 5 July at its first post-23 June meeting, with the endorsement of the UPC Preparatory Committee, the Chair (Alexander Ramsay) stated that work related to the technical implementation of

•

agreed the Code of Conduct for representatives who appear before the UPC; agreed consequential amendments to the Rules of Procedure to reflect the agreement on court fees; endorsed a number of papers setting out the rules on financial management during the provisional application period, corporate function structure and regulations relating to judges and staff; and endorsed the draft UPC budget and recognition that the budget will be a “living document” subject to amendment before its adoption by the Administrative Committee.

On 2 August, the IPO published a guide: ‘IP and BREXIT: The facts’, in which it stated: “The UK remains a Contracting Member State of the Unified Patent Court at present. We will continue to attend and participate in UPC meetings in that capacity. There will be no immediate changes.” Nonetheless, it seemed to many that the combination of politics and the common understanding of the effect of CJEU Opinion 1/09 already referred to would make it very unlikely that the UK would ratify, because all that would happen would be that it would join the system, then leave it again within two years. This view was reinforced by the Prime Minister’s “Brexit means

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

Brian Cordery Partner

Dom Adair Partner

Naomi Hazenburg Associate

Emma Muncey Associate

Manuel Rey-Alvite Villar Professional Support Lawyer

Alan Johnson Partner

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Brexit” mantra and her references to freeing the UK of its deference to the CJEU – an integral part of the UPC system. Pressure then built up on the UK to come to a decision. It was widely rumoured that, if the UK would not ratify, or would not make a decision, the other states would go ahead without the UK. There was even a Protocol drafted (apparently removing the UK as a mandatory ratification country by reducing the number of mandatory countries from three to two) which was circulating round the capitals of Europe and was planned to be signed in February 2017 if necessary. Baroness Neville-Rolfe promised a decision at the Competitiveness Council meeting on 28 November, and it was a clear, no-strings-attached “yes”. In its press release that day, the IPO quoted the Baroness as saying: “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.” And as a first step back on the track toward ratification, the UK signed the Protocol on Privileges and Immunities on 14 December. The Protocol was then laid before Parliament on 20 January to sit for 21 days as the next part of the process. The most significant announcement since the UK decision to proceed was, of course, that by the Preparatory Committee on 16 January that the new system would start in December 2017 – given the terms of Article 89 UPCA (the commencement provision), on 1 December 2017.

The timetable going forward The IPO’s plan is to have the remaining steps toward UK ratification completed if possible before notice is given under Article 50, so by the end of March 2017. That may be slightly ambitious and certainly even if the remaining Parliamentary steps are completed in that timescale (approval in Committee of the Statutory Instrument ratifying the Privileges and Immunities Protocol), the preparation and signature of the formal instrument of ratification will come a little later. It will also be about April (officially ‘spring’) before Germany completes its own, delayed, ratification process. Nonetheless, all of this is consistent with the Preparatory Committee’s 16 January 2017 announcement which said that the Provisional Application Phase should start in about May. Since one important process to complete in this Phase is judicial appointments, anyone who has applied to be a UPC judge (legal or technical) can expect to hear about the fate of their application and potentially receive a call to interview, any time after then – although there are so many interviews to conduct that the waiting time may be several months. Another significant date for the diary – especially for inhouse patent attorneys – is “early September” which is the predicted start date for the “sunrise period” for opting out existing European patents. And finally, before moving on and for the avoidance of doubt, the decision of the Supreme Court that Parliament must Volume 46, number 3

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have a say in the giving of Article 50 notice can have no impact on the UPC timetable, whether or not the Bill has a smooth passage through Parliament.

The UK in it for the long haul? Will the UK stay in the UPC post-Brexit or not? That is a very big question requiring a state of the art crystal ball. As already mentioned, the question has both a political and a legal element. The political element is one where no-one can have much more than an educated guess. It is clear, however, that the UK is genuinely committed to the UPC in the short term, and is entering into the system with at the very least an understanding that it will not necessarily be leaving on Brexit. The new IP Minister Jo Johnson (brother of Boris) seems unlikely, based on his initial statements, to change the Government’s direction (and in any event it seems probable that the decision to proceed with the UPC was taken at a far higher level than the IP Minister – indeed probably at the highest level). Further, whilst Italy may not be ecstatic that Milan will lose the opportunity to host the London part of the UPC Central Division, there is for the most part great support in Continental Europe for the UK to continue in the system. That being so, and if the domestic politics permits the UK to remain in the UPC, that leaves the legal element. The view that Opinion 1/09 means it is unlawful to be in the UPC whilst outside the EU is a very real issue and deserves at least a brief analysis, as do some related issues. To re-cap, Opinion 1/09 was requested so as to approve (or not as it transpired) a previous iteration of what is now the UPCA. The Court held the then-existing draft Agreement incompatible with EU law. In so doing, it criticised various short-comings of the arrangements. These short-comings were remedied by including specific provisions in Chapter IV of the UPCA such as explicitly recognising the primacy of “Union law in its entirety”. At no point in its Opinion did the CJEU state that the UPC was limited to EU Member States, but the UPCA was drafted as an EU-only “club”. With those amendments, it was thought unnecessary to re-seek CJEU approval, and in any event for technical reasons it would have been difficult to do so. Hence, it was merely an assumption that the EU-only part of the arrangements was necessary. As the implications of the Brexit vote were thought through, so too was this assumption. Most pertinently, CIPA, IP Federation, and a few IPLA members including Bristows, sought an opinion of Counsel (Gordon/Pascoe) that concluded that the assumption was wrong. Continued membership of the UPC is possible from both a UK constitutional perspective and an EU constitutional perspective, in the latter case if the Chapter IV protections for EU law are retained and certain other steps are taken. Unfortunately, that is not the end of the story. At present noone seems able to agree exactly what are the aforementioned “other steps” which need to be taken. They would obviously include technical (and rather minor) amendments to the UPCA to change references to such things as EU Member States. There would also be needed some way to extend the Unitary Patent and Language Regulations (1257/2012 and 1260/2012) to the MARCH 2017

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UK if the UK wished to remain in the Unitary Patent part of the system as well as the UPC (though a hybrid arrangement where the UK was in the UPC, but not the UP, is eminently possible). But what else? The Gordon/Pascoe view is that the CJEU would need a new legal basis for accepting references from the UPC rather than reliance on the present version of Article 267 TFEU which entitles only national courts of EU Member States to refer matters to the CJEU. The UPC is a curious beast, but can be regarded as a national court common to EU Member States for so long as all relevant states remain in the EU, but not, according to Gordon/Pascoe, once the UK has left. That would therefore suggest that what is needed is an EU Treaty change, possibly as part of the Article 50 exit agreement, to enable the post-Brexit UPC to remain able to refer matters to the CJEU, and hence be fully compliant with EU law. In the end, the old adage “where there’s a will, there’s a way” springs to mind when it comes to the legal element. One cannot predict the reaction of the CJEU to whatever is agreed, but the fact that the UPC has already survived two legal challenges in the CJEU by Spain/Italy then Spain alone, must give one hope, perhaps even confidence, that it would survive a third challenge in the future. In case it is not politically possible, however, for the UK to remain in the system post-Brexit, steps would have to be taken to ensure that a smooth UK departure from the UPC is possible. The UPCA has no exit provisions. This omission was pointed out in a paper written in June 2011 by, among others, your author, entitled “Concerns of Principle”. Regrettably this

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paper was largely ignored, including on this issue, but it should fortunately be relatively easy to draft and agree a transitional protocol to deal with a UK exit from the UPC. But let us hope that, not only will 2017 be the year when the UPC actually comes into force with the UK as a fully paid-up member, but that it will stay that way in the long term.

Looking ahead to 2017 2017 is already shaping up to be an important year. Unless the cases settle, we can expect the Patents Court to decide whether to grant the first UK Arrow declaration in the FKB and Samsung Bioepis litigation against AbbVie; the Supreme Court to issue a decision in the Actavis v Eli Lilly case; and the first decision from the English courts on what constitutes a licence on FRAND terms in the Unwired Planet case. SPC enthusiasts can dwell on the further references that have already been made in 2017 on Articles 3(a) and 3(d) of the SPC Regulation. Procedurally, we can expect the courts to continue their drive to running cases in a more streamlined fashion, with proper consideration given to the cost-benefit analysis, and the timetable being such that most cases at first instance will be heard within a year. Of course, the most significant event of all will be the opening of the UPC in December. We look forward to reporting on all these events, and more, in next year’s edition. The authors in the Bristows team are Brian Cordery, Dominic Adair, Naomi Hazenburg, Emma Muncey, Manuel Rey-Alvite Villar: they can be contacted via the firm’s website www.bristows.com.

Notes and references

14. [2015] EWCA Civ 607

29. [2011] EWHC 3897 (Pat)

15. [2016] EWHC 1517 (Pat)

30. [1995] UKHL 14

1. [2016] EWCA Civ 1296

16. [2011] EWHC 1591 (Pat)

31. [2016] EWHC 1045 (Ch)

2. [2016] EWHC 1061 (Pat)

17. Napp v Dr Reddy’s [2016] EWCA Civ 1053

32. [2016] EWHC 2637 (Pat)

18. See footnote 15, ante

34. [2016] EWHC 2161 (Pat)

5. Fujifilm v AbbVie [2016] EWHC 425 (Pat)

19. AP Racing v Alcon [2016] EWHC 815 (Ch)

6. Idenix v Gilead [2016] EWCA Civ 1089

20. See footnote 8, ante

35. Article 4A of the Paris Convention for the Protection of Intellectual Property (as amended, 1979).

7. Merck v Shionogi [2016] EWHC 2989 (Pat)

21. Actavis v Eli Lilly [2015] EWCA Civ 555

36. See footnote 6, ante

8. Actavis v Eli Lilly [2016] EWHC 234 (Pat)

22. See footnote 9, ante

37. [2014] EWHC 3916 (Pat)

23. Warner-Lambert v Actavis [2015] EWCA Civ 556

38. [2016] EWHC 1955 (Pat)

24. Warner-Lambert v Krka, decision of the Maritime and Commercial High Court dated 25 June 2015

40. Hospira v Genentech [2016] EWCA Civ 1185

25. Samsung v Ericsson [2016] EWCA Civ 489

42. [2016] EWCA Civ 780

26. Unwired Planet v Huawei [2015] EWHC 2097 (Pat)

43. [2015] EWCA Civ 779

27. Illumina v Premaitha [2016] EWHC 1726 (Pat)

45. See footnote 6, ante

3. [2016] EWHC 1516 (Pat) 4. From Arrow Generics v Merck [2007] EWHC 1900 (Pat)

9. Warner-Lambert v Actavis [2016] EWCA Civ 1006 10. E.g. Idenix v Gilead [2016] EWCA Civ 1089 at para 167 11. [2016] EWHC 1517 (Pat) and [2016] EWCA Civ 1053 12. Gedeon Richter v Generics (UK) [2016] EWCA Civ 410 at paragraph 30 13. Kirin Amgen v Hoechst Marion Roussel [2004] UKHL 46

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28. Koninklijke Philips v Asustek [2016] EWHC 867 (Pat)

33. [2013] EWHC 467 (Pat)

39. [2015] EWHC 1796 (Pat)

41. [2016] EWHC 1285 (Pat)

44. From AgrEvo T 0932/92 46. See footnote 7, ante 47. See footnote 6, ante

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48.

[2009] EWHC 1671 (Pat)

78.

[2016] EWHC 1896

113. See footnote 9, ante

49.

[2016] EWHC 756 (Pat)

79.

Regulation (EC) No. 469/2009

114. See footnote 2, ante

50.

Gedeon Richter v Generics (UK) [2016] EWCA Civ 410

80.

CJEU reference C-567/16

115. [2016] EWHC 1061 (Pat), at para 21

81.

[2008] EWHC 3070 (Pat)

F. Hoffmann-La Roche v Accord Healthcare (C-572/15)

116. [2007] EWCA Civ 741

51. 52.

[2016] EWHC 24 (Pat)

82.

Abraxis BioScience BL O/410/16

118. Ibid, at para 29

53.

Ibid, at para 123

83.

MIT (C-431/04), GSK (C-210/13)

119. [2016] EWHC 2679 (Pat)

54.

Unwired Planet v Huawei [2016] EWHC 576 (Pat)

84.

Abraxis BioScience v Comptroller-General of Patents [2017] EWHC 14 (Pat)

120. Varian v Elekta [2017] EWHC 55 (Pat)

55.

Meter-Tech v British Gas [2016] EWHC 2278 (Pat)

85.

AP Racing v Alcon Components [2016] EWHC 116 (IPEC)

122. See footnote 100, ante

56.

[2016] EWHC 2584 (Pat)

86.

[2004] EWCA Civ 1703

57.

Saertex France v Hexcel Reinforcements [2016] EWHC 966 (IPEC)

87.

[2012] EWCA Civ 139

88.

[2016] EWHC 2661 (Pat)

58.

Catnic Components v Hill & Smith [1982] RPC 183

125. American Cyanamid v Ethicon [1975] UKHL 1

89.

Unwired Planet v Huawei [2016] EWHC 410 (Pat)

126. [2013] EWCA Civ 583

59.

Ibid, at para 242

90.

Monsanto v Cargill [2008] FSR 417

60.

Warner-Lambert v Actavis [2016] EWCA Civ 1006, at para 130

91.

American Science & Engineering v Rapiscan [2016] EWHC 1384 (Pat)

61.

Salk Institute for Biological Studies T 0609/02

92.

Sony v SSH [2016] EWHC 2985 (Pat)

93.

[2013] EWCA Civ 10

62.

See footnote 6, ante

94.

[2011] EWHC 1169, at paras 99-114

63.

[2006] RPC 323

95.

See footnote 41, ante

64.

See footnote 7, ante

96.

Ibid, at para 21

65.

Regeneron v Kymab [2016] EWHC 87 (Pat)

132. Island Records v Tring International [1995] FSR 560

97.

[2016] EWHC 2989 (Pat), at paras 87-93

133. Attorney General v Blake [2001] 1 AC 268

98.

Ibid, at para 89

134. See footnote 38, ante

99.

See footnote 49, ante

135. [2013] EWHC 1958 (Pat)

66.

See footnote 54, ante

67.

[2012] EWHC 1848 (Pat)

68.

See footnote 13, ante

100. Electromagnetic Geoservices v Petroleum Geo-Services [2016] EWHC 27 (Pat)

69.

Sandvik v Kennametal [2011] EWHC 3311 (Pat)

101. [2006] EWCA Civ 1599

70.

[2004] EWCA Civ 1568

71.

[2007] EWHC 1900 (Pat)

72.

From Gillette Safety Razor Company v Anglo-American Trading (1913) 30 RPC 465, in particular Lord Moulton’s speech at pp. 480-481.

73.

See footnote 5, ante

74.

Fujifilm v AbbVie [2016] EWHC 2204 (Pat)

102. [2007] EWHC 3007 (Pat) 103. Electromagnetic Geoservices v Petroleum Geo-Services [2016] EWHC 881 (Pat) 104. [2012] EWHC 3316 (Pat) and [2013] EWCA Civ 517 105. [2016] EWHC 1722 (Pat) 106. Regulation (EU) No. 1215/2012 107. [2016] EWHC 958 (Pat) 108. [2015] EWHC 3472 (Ch)

117. See footnote 3, ante

121. See footnote 105, ante 123. [1999] RPC 154 124. See footnote 9, ante

127. See footnote 15, ante 128. Napp v Dr Reddy’s [2016] EWHC 1581 (Pat) 129. [2006] UKPC 16 130. [2016] EWHC 162 (Pat) 131. Stretchline v H&M [2015] EWCA Civ 516

136. Pozzoli v BDMA [2007] EWCA Civ 588 137. See footnote 1, ante 138. See footnote 136, ante 139. See footnote 1, ante, at 12 140. [2015] EWHC 2087 (IPEC) 141. Brain v Ingledew Brown Bennison & Garrett [1996] FSR 341 142. Global Flood Defence v Van Den Noort [2016] EWHC 99 (IPEC) 143. Global Flood Defence v Van Den Noort [2016] EWHC 1851 (Pat) 144. Glaxo Group v Genentech [2008] EWCA Civ 23

In its first decision of 2017, the Court of Appeal has upheld the first instance decisions and held that as a matter of principle the declarations can be made: Fujifilm v AbbVie [2017] EWCA Civ 1

109. Practice Statement: Listing of Cases for Trial in the Patents Court 111. Unreported. LTL 28/6/2016 EXTEMPORE

146. [2016] EWHC 313 (Pat)

76.

Fujifilm v AbbVie [2016] EWHC 3383 (Ch)

77.

Albeit that with two references already made in 2017 at the time of writing, the flow may return

112. The Court of Appeal informed the parties that the appeal would be dismissed extempore at the hearing on 2 August 2016, the claim having been filed on 19 February 2016. The full reasoned judgment was published on 1 November 2016.

148. The Authors are grateful to Alan Johnson of Bristows for drafting this section of the review.

75.

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110. [2016] EWHC 188 (Pat)

145. IPCom v HTC Europe [2013] EWCA Civ 1496 147. [2016] EWHC 189 (IPEC)

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Car crash derails IPEC PPL v Hagan could allow claimants to recover “unlimited” costs in the Intellectual Property Enterprise Court. Alasdair Poore (Fellow) and Mark Pearce of Mills & Reeve LLP argue against its conclusion and that action should be taken to restore predictable cost-capping in IPEC.

Introduction PPL v Hagan – reported in last month’s CIPA Journal – is a stark case. It tears a large hole in the protection given to litigants by capping costs recoverable from a party to proceedings in the Intellectual Property Enterprise Court (IPEC). Capped costs are part of the bedrock of the IPEC. As readers will know, the underlying principle in relation to almost all cases in the IPEC is that costs are capped. The only1 exceptions are that a party is guilty of an abuse of process, or that a party has behaved unreasonably in relation to an application. If a party behaves in a manner which amounts to an abuse of process, the capped costs regime does not apply, and costs will be assessed under the general principles applicable to costs – and very likely, if there is an abuse of process, on an indemnity basis2. If a party behaves unreasonably in relation to an application, the stage cap for an application will apply, so that the costs in relation to that application will still be limited to those which can be awarded in relation to an application, but those costs can be additional to any other costs, and therefore can lead to costs more than the overall cap (£50,000 for liability proceedings) being awarded 3 4. The issue in PPL v Hagan arises because of the rules under Part 36, which are intended to provide an incentive to take a settlement offer seriously. These rules are particularly favourable to a claimant, at least in most intellectual property proceedings. If a claimant makes a genuine offer which complies with Part 36 to settle the claim, then the defendant has to make a choice: they can agree to settle (in which case they will be liable for the costs incurred up to that time); or they can refuse and fight. If they fight and the claimant wins, and wins as much as or more than their offer, the claimant is entitled to be awarded costs on an indemnity basis from 38 CIPA JOURNAL

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the end of the period specified in the Part 36 Offer (not less than 21 days after the offer was made5). When assessing costs on an indemnity basis the Court will award costs unless the defendant can show that the costs were unreasonably incurred or unreasonable in amount6. In contrast to standard costs, the court is not expressly required to consider whether they were proportionate7, although the Court should still take into account the amount, value, importance and complexity8 of the case. Only in exceptional circumstances can a judge choose not to award those costs on an indemnity basis9. In addition the judge has a discretion to uplift those costs by applying an interest rate of up to 10% per annum from the end of the relevant period and an uplift on damages of up to 10% with a maximum of £75,00010. It would be possible to apply Part 36 – allowing for an assessment based on indemnity costs, and nevertheless to limit the costs to the usual IPEC costs cap. Indeed, until PPL v Hagan it was assumed that the costs cap would apply even if Part 36 also applied. See, for example, Abbott v Design & Display Limited11 and PPL v Hamilton12, where HHJ Birss QC said: “3. At the hearing on 5 September I rejected the defendants’ Costs Lawyer’s submission that the terms of Part 36 meant that when a Part 36 Offer was accepted, the costs rules applicable in the Patents County Court did not apply13. The submission included an argument that in such a case the costs had to be subject to a detailed assessment and the provision that costs in the Patents County Court are summarily assessed – in what is now r45.30(3) – was not applicable. I rejected that argument. It would defeat the purpose of the Patents County Court costs rules, which form a key part of the overall code applicable in www.cipa.org.uk

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the Patents County Court, if they did not apply in cases in which a Part 36 offer had been accepted.” [Emphasis added.] The argument, however, in PPL v Hagan was that, in the light of the Part 36 Offer made in that case, no costs cap should apply.

Part 36 wins PPL v Hagan recognizes a tension between Part 36.14(3) – as it then was14 – prescribing indemnity costs, and Part 45.31 (which caps costs). The decision in PPL v Hagan (see January-February [2016] CIPA 11), means that Part 36 wins: if the claimant has made a Part 36 Offer, and wins at trial at least as much as their offer, they are entitled to uncapped costs on an indemnity basis15. This means that a defendant now faces the risk of uncapped cost, just because they or their advisors were simply wrong, and the claimant wins. No abuse is required. No unreasonable behaviour. A simple misjudgment or misassessment or merits is enough – or indeed a perfectly fair judgment or assessment of the expected outcome, but one with which, for one reason or another, the judge disagrees. The party’s view may have been entirely reasonable and they may have acted reasonably throughout the case. But if they get that assessment wrong, and the claimant wins and has made a well judged Part 36 offer, the defendant becomes liable for

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the claimant’s costs on an indemnity basis without a cap. In addition they become liable to other penalties. This transforms the balance of power in many IPEC cases in favour of the claimant. Effectively it appears to open the door to claimants in many cases being able to recover indemnity costs in IPEC, rather than having to live with capped costs, while the defendant will still usually only be able to recover capped costs. As mentioned above, the court can refuse to award indemnity costs, but only if it considers it unjust to do so.16 However, Part 36 is applicable in a wide range of other cases, and it would be unusual in those if the mere fact that the defendant had made an error in judgment on the merits of a case would be sufficient reason not to apply Part 36. There are additional consequences. The conclusion in PPL v Hagan means that it would likely be negligent of a professional not to advise a client to make an appropriately framed Part 36 offer in most cases before the IPEC. There is already anecdotal evidence that tactical Part 36 offers are being used in this way. And the substantial impact in terms of liability to additional costs if a Part 36 offer is made and the claimant beats the offer could raise an immediate prospect of satellite litigation over the meaning of Part 36. In addition, the impact of a successful claimant’s Part 36 Offer, and the defendant’s consequent liability to indemnity costs, exposes defendant’s advisors to the risk of claims that they did not advise sufficiently or competently on the prospects of the defendant’s success. A confident assessment can often be difficult in intellectual property cases, especially where

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validity arises. The advisor will need to ensure that their client understands this additional risk, so further increasing the costs to the defendant.

How did we get here? In order to understand the decision in PPL v Hagan, we need to look at another case, Broadhurst v Tan, decided by the Court of Appeal17 on 23 February 2016. This decided that in the specific context, Part 36 did displace a fixed-costs regime. However, it has been hailed more generally as “Part 36 trumps” fixed costs18.

Broadhurst v Tan – first instance decision: •

Broadhurst v Tan arises out of two road traffic accident compensation cases in which Part 36 offers were made, and beaten by the claimant. The usual rule under Part 36 in such a case would be that the claimant would receive standard costs shortly after the offer was made, and indemnity costs in respect of the period from that time until judgment.

•

However, in certain low-value road traffic accident cases there are prescriptive rules about what costs may be recovered. Essentially these are fixed costs for each stage of the proceedings. The relevant rules19 say: 45.29B: “Subject to …20 , if, in a claim started under the RTA Protocol, the Claim Notification Form is submitted on or after 31 July 2013, the only costs allowed are – (a) the fixed costs in rule 45.29C; (b) disbursements in accordance with rule 45.29I.21”

and 36.14(3): “Subject to paragraph (6), where [the claimant beats the claimant’s Part 36 Offer], the court will, unless it considers it unjust to do so, order that the claimant is entitled to… (b) his costs on the indemnity basis from the date on which the relevant period expired.22” So there is an apparent conflict. • •

The Court then had to answer a superficially simple question. Which rule prevailed. There were several arguments put forward by the claimant in support of its claim that the Part 36 rule – that is indemnity costs – prevailed. Before turning to these it is worth saying that to a large extent the defendant supported most of these arguments, and put forward an entirely different argument to limit the costs it would pay. That was the argument adopted by the first instance judge, namely that the amount of the “indemnity costs” in this case were the fixed costs set out Part 45. The judge’s reasoning was that, if he did not take this approach, various other

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consequences under Rule 45 would be anomalous and cause significant difficulties.

Broadhurst v Tan in the Court of Appeal So let’s look at the arguments considered by the Court of Appeal. The claimants arguments are set out para 11 to 17 (emphasis added): “11. The following is a summary of the submissions of Mr Benjamin Williams QC. The starting point is that “fixed costs” and “assessed costs” are conceptually distinct. There is a tension between rule 45.29B and rule 36.14A23. The former says that the only costs to be awarded in section IIIA cases are fixed costs; whereas the latter says that, in such cases, rule 36.14 will apply subject only to the modifications stated in rule 36.14A and following, and none of those modifications affects rule 36.14(3). The rule that claimants are entitled to an indemnity basis assessment of their costs where they have made a successful Part 36 offer is thereby preserved. 12. The tension between rule 45.29B and rule 36.14A is resolved by the principle that the general provisions yield to specific provisions: see Solomon v Cromwell Group [2012] 1 WLR 1048 at para 21. Rule 45.29B contains the general rule which applies to all section IIIA cases. But rule 36.14A contains the specific rule, which prescribes the costs consequences following judgment where section IIIA of Part 45 applies. Rule 36.14A(1) expressly states that rule 36.14 will apply to section IIIA cases as a whole and makes no modification of rule 36.14(3), with its provision for an indemnity basis assessment of costs where a claimant makes a successful Part 36 offer in such cases. Furthermore, rule 36.1 is a self-contained procedural code: this indicates that Part 36.14A is intended to prevail over rule 45.29B which is a rule of a more general nature. 13. This interpretation is consistent with the wider scheme of Part 36, as amended by the 2013 Amendment Rules. Where fixed costs are intended to prevail, Part 36 says so. 1. First, rule 36.10A24 is introduced to disapply the right to costs assessed on the standard basis which would otherwise arise where a Part 36 offer is accepted by a claimant in a fixed-costs case. 2. Secondly, rule 36.14A makes specific provision for fixed, rather than assessed, costs in situations other than those where a claimant makes a successful Part 36 offer. Thus, if a defendant’s offer is successful, rule 36.14A provides for the claimant only to recover fixed costs until the effective date of the offer, in place of the usual rule that the claimant will recover standard basis www.cipa.org.uk

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costs until that date. Thereafter, the defendant is also limited to fixed costs (rule 36.14A(7)).

As noted above the defendant’s position was consistent with this (emphasis added):

3. Thirdly, regard should be had to rule 36.21, which deals with offers made within the Ministry of Justice portal process. Here again, the rule specifically provides for fixed, rather than assessed, costs to be payable in such cases, even where the claimant has made a successful Part 36 offer (rule 36.21(4)).

“17. Mr Laughland’s primary submission is that Judge Robinson reached the right conclusion for the reasons that he gave. At para 42 of his judgment, the judge said: ‘Thus I am driven to conclude that rule 36.14(3) must apply to a case where a claimant makes a Part 36 offer to settle in a case where Section IIIA of Part 45 applies, and where the judgment is at least as advantageous to the claimant as the proposals contained in the offer’.”

14. In these circumstances, it is all the more telling that rule 36.14A makes no modification to rule 36.14(3). Where there is an intention for only fixed costs to be recoverable under Part 36, Part 36 has been modified to make this clear. In short, the specific provisions of rule 36.14A prevail over the general terms of rule 45.29B. 15. Mr Williams submits that, if there is any doubt as to this conclusion, it should be resolved in the claimants’ favour by the Explanatory Memorandum to the 2013 Amendment Rules which was laid before Parliament to accompany the draft statutory instrument. It is admissible as an aid to the construction of the rules: see per Lord Nicholls in R v Secretary of State for the Environment ex parte Spath Homes Ltd [2001] 2 AC 349, 397C-398D. The Explanatory Memorandum states at para 7.1(e): ‘New rules 36.10A and 36.14A make provision in respect of the fixed costs a claimant may recover where the claimant either accepts or fails to beat a defendant’s offer to settle made under part 36 of the CPR. Provision is also made with regard to defendants’ costs in those circumstances. If a defendant refuses a claimant’s offer to settle and the court subsequently awards the claimant damages which are greater than or equal to the sum they were prepared to accept in the settlement, the claimant will not be limited to receiving his fixed costs, but will be entitled to costs assessed on the indemnity basis in accordance with rule 36.14.’ 16. In short, Mr Williams submits that the reasoning of Judge Freedman, which substantially reflected his submissions, is to be preferred to that of Judge Robinson.” In other words the claimant’s arguments are: • •

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general provisions yield to specific provisions and Rule 36.14A is the specific provision; the scheme of Part 36, in the context of the amendments made to address the road traffic accident cases25, is that Part 36 provides a self contained code for offers of settlement; this is made clear by the Explanatory Memorandum to the rules which introduced this scheme in relation to road traffic accident cases.

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The judge’s reasoning to support fixed costs still applying was, as noted above, that fixed costs and indemnity costs were the same. I do not need to address that further here. The Court of Appeal then considered the defendant’s counsel’s additional argument – essentially that the particular prevails of over the general: “21. Although Mr Laughland supports the judge’s reasoning as to the equiparation of fixed costs and costs assessed on the indemnity basis, he also submits (in agreement with Mr Williams) that there is indeed a tension between rule 49.29B and Part 36.14A But he submits that this should be resolved in favour of the fixed-costs regime prescribed by the former. First, rule 36.14(3)(b) (costs assessed on the indemnity basis) is the general provision and rule 45.29B (fixed costs) is the specific provision. The latter should, therefore, prevail over the former. Secondly, Mr Laughland relies on the fact that rule 45.29B is expressed to be subject to a number of rules, but none of these is concerned with the situation which arises where a claimant makes a successful Part 36 offer. All the exceptions to the application of rule 45.29B retain what he calls the fixed-costs methodology for determining what profit costs may be recovered.” This argument (the particular prevails over the general) is the same as the claimant’s but seeking to reach the opposite result, characterizing as the particular rule, the rule that the claimant’s counsel argued was the general rule and vice versa. The Court of Appeal decided in favour of the claimant “largely for the reasons stated by [the claimant’s counsel26.” However, the Master of the Rolls then expands on that, pointing out that the need to take account of Part 36 offers in section IIIA cases was recognized by the draughtsman, giving examples27. The Court reached the conclusion that rule 36.14(3) prevails on the basis of straightforward construction28, and that the basis was clear. The provisions covering section IIIA specifically include amendments to rule 36, but not to rule 36.14(3), and it is reasonable to presume that this was deliberate. The Court draws further support from another provision in Part 36, 36.14A(8), which would have been unnecessary on the defendant’s MARCH 2017

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construction. Again this provides simple support for the construction based on straightforward principles of construction. Finally, the judge observes that he finds further support “in the wider contextual points raised by [claimant’s counsel] referred to earlier (in para 13)”. It is easy to think that these are much more general points of construction or principle, and perhaps reinforced by the opening words of para 13: “This interpretation is consistent with the wider scheme of Part 36”. Perhaps these have lead to the generalisation that Part 36 “trumps” fixed costs. However, taken in context, what the Master of the Rolls actually said was followed by “This interpretation is consistent with the wider scheme of Part 36, as amended by the 2013 Amendment Rules”. Those are the rules which brought into effect the changes which were designed to deal expressly with the effect of settlement offers in road traffic accident claims – the same context as the remainder of the amendments discussed in Broadhurst v Tan. They do not relate to some grander scheme applicable under Part 36 at all, but reflect the very persuasive argument that, if you make some changes to Part 36 to reflect a specific approach to settlement offers in road traffic accident claims, then if you do not make a change to other parts of Part 36, more likely than not you did not intend that part of Part 36 to be changed. Paragraph 13 also refers to the Ministry of Justice Portal Process – that too is a specific provision relating to road traffic accident claims. One might well ask: what is the relevance of road traffic accident claims to intellectual property claims in the IPEC?

damages30 would not fall under the cap on damages. He then referred to Broadhurst v Tan, saying that it had a bearing on costs awarded under CPR 36.14(3)(b). First, he looked at the core reasoning in Broadhurst v Tan. That reasoning, as noted above, was that CPR 36.14 was specifically referred to in CPR 36.14A. Rule 36.14A provided expressly that rule 36 would be applied in a modified way in relation to the road traffic accident claims which were being considered in Broadhurst v Tan. Judge Hacon observes that there is no equivalent provision to rule 36.14A in relation to IPEC costs31. He therefore, reasonably, did not rely on that aspect of the case. Secondly, he considered the Solomon v Cromwell principle32, that “general provisions must yield to specific provisions”. He observed that there might be some analogies in relation to the argument. However, he declined to rely on that argument on the basis that the Court of Appeal had not relied on that reason and it had not been argued before him33. Judge Hacon then refers to other grounds that Lord Dyson MR had considered supported the conclusion in Broadhurst v Tan34. He observed that the first was not relevant (relating to CPR 36.14A(8), which, since CPR 36.14A is not relevant, clearly was also not relevant) and an amendment to Rule 45 which has no parallel in IPEC). Then he observed:

Letting the cork off costs in the IPEC How do we get from Broadhurst v Tan to PPL v Hagan?

Finally he referred to the support provided by the explanatory memorandum36. Judge Hacon concludes by saying that the third and fourth points can be applied in PPL v Hagan – I understand these to be the “wider scheme” argument and the explanatory memorandum. His summary conclusion is:

PPL v Hagan was a case brought by Phonographic Protection Limited, the organization that is widely known for collecting royalties for playing of sound recordings in public venues, such as bars and clubs. Mr Hagan was involved in two such bars, and following their usual approach PPL sought royalties from him for playing recordings in those clubs. Mr Hagan’s approach to the proceedings appears to have been largely to ignore them, and when finally forced to pay attention, to deny that he had anything to do with the bars in question (that was “another Mr Hagan”), with the result that the proceedings were no doubt significantly more costly than if he had simply admitted what he had done and agreed to an assessment of the appropriate damages. The final outcome was that PPL won, and beat their own Part 36 offer by a very significant margin. However, by that stage Mr Hagan was bankrupt. Consequently, written submissions were made by the Trustee in Bankruptcy on his behalf. HHJ Hacon first refers to Abbott v Design & Display29, observing that in that case he accepted the argument that, where an offer had been made which was then [beaten] at trial, the cap on costs would still apply but the uplift on 42 CIPA JOURNAL

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“Lord Dyson also referred to with approval a submission that under wider scheme of Part 36, where fixed costs are intended to prevail, Part 36 says so (at [27], referring back to [13])35”.

“Guided by the third and fourth grounds set out by Lord Dyson, both of which, it seems to me, can be applied by analogy to the tension between rule 36.14(3)(b) and rule 45.31, I conclude that the former overrides the latter: the limits on costs in the IPEC, both stage costs and the overall cap, do not apply to an award of costs under rule 36.14(3)(b)37.” However, in Broadhurst v Tan these were only relied on precisely because they addressed the very specific interaction between the amendments being made under Part 45, and the Part 36 regime, and specific amendments being made to Part 36 in the context of road traffic accident claims. In particular, in relation to the third ground, the reference to the “general scheme” is, as noted above, to the scheme as amended by the rules specific to road traffic accident claims: “This www.cipa.org.uk

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interpretation is consistent with the wider scheme of Part 36, as amended by the 2013 Amendment Rules38 39”. The fourth ground was that the Explanatory Memorandum to the 2013 Amendment Rules. That Memorandum specifically said that in the cases under consideration (that is the amendments to CPR 36 being specifically made to address settlement offers in fixed-cost road traffic accident cases) indemnity costs would apply40. Again it is quite clear and only refers to the specific amendments being made in relation to the road traffic accident scheme41. Thus it appears that the third and fourth grounds provide no support for the proposition that any fixed-costs regime should be trumped by Part 36, unless it says otherwise. Nor do they provide a more general principle that Part 36 takes precedence – especially in circumstances where Part 36.14(3) (as it was then) can be applied (by giving indemnity costs), while making it consistent with IPEC capped costs (by capping the amount of indemnity costs). So what of the other more general proposition that: “the principle to be maintained in relation to CPR 36.14(3) is that it should be applied in a way such as to generate a vigorous incentive to make and accept claimants’ Part 36 offers”. However, Part 36 already provides other incentives to settle on the basis of a claimant’s offer which are applicable to the IPEC costs regime: an uplift on interest on costs, an uplift in damages (and if there are no damages, and additional uplift on costs), and potentially indemnity costs within the cap. It would appear therefore that there is no need to follow Broadhurst v Tan in the context of IPEC proceedings, and we would submit undesirable to do so, for the reasons set out above and at the end of this article.

Lowin v W Portsmouth & Co In the period between Broadhurst v Tan and PPL v Hagan, another case involving the relation between specific cost regimes and Part 36, Lowin v W Portsmouth42, arose. Lowin is of interest because it addresses a capped-cost position rather than fixed costs. It appears that HHJ Hacon was not referred to it. Lowin involved a settlement proposal made in respect of the costs assessment stage of proceedings. In that case there was argument, amongst others, about whether Broadhurst v Tan applied only to fixed-cost cases or whether it should also apply to cases where costs are assessed. Mrs Justice Elisabeth Laing, decided that the claimant could recover indemnity costs under rule 36.17(4)43 even though the regime was a capped costs regime. However, it is important to appreciate that this too is a case in which specific reference was made in the relevant rule, CPR 47.20, albeit it in a slightly different context, to applying Part 36 to costs assessments under CPR Volume 46, number 3

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47. Laing J observed that: “As the matter of a construction of the express provisions of the rule, the answer seems to us to be relatively clear.44” Her reasoning was: “The intention of the draftsman of Part 37 appears to be to import the provisions of Part 36 into Part 47 with four express modifications which are not relevant on the facts of this case. The issue is whether, if the assessment does not go beyond a provisional assessment, a party who can invoke the provisions of Part 36 in his or her favour, is nonetheless restricted to the amount of costs capped by rule 47.15(5)”. Laing J discusses this conclusion in more detail in paragraphs 26 to 31, amongst other things rejecting the application of the general/particular argument. Her analysis is summarized in paragraphs 31 and 32: “31. It seems to us that there is a conflict in a sense between Part 47.15(5) and Part 36. This conflict arises not because Part 47.15(5) provides for fixed costs, because it does not provide for fixed costs. Rule 47.15(5) does potentially derogate from the entitlement to have costs assessed on an indemnity basis which is conferred by Part 36. For it to derogate in fact, the draftsman would, it seems to us, have had to have provided specifically in rule 47.20 that the provisions of Part 36 would apply to the costs of the detailed assessment with modifications that included 47.15(5). 32. It seems to us that, because he has not so provided, it must follow that the provisions of Part 36 apply to this case and that they are not displaced by a provision of rule 47.15(5) . To that extent it seems to us that the scheme of the reasoning in Broadhurst helps us to reach a conclusion on the correct relationship between Part 36 and Part 47 on the facts of this case.” This makes it clear that what was important was precisely that the draughtsman had specifically considered what amendments should be made to Part 36 to reflect the regime which it was intended to put in place. The reasoning is the same as in relation to Broadhurst v Tan – and is not reasoning applicable to the interaction between Part 36 and Part 45 (IPEC) capped-costs regime.

What should the approach be in the IPEC? One of the purposes of a capped cost regime in the IPEC was explicitly to ensure that litigants such as SMEs have certainty as to their exposure on costs. This was part of the evidence relied on in Lord Justice Jackson’s review of costs, when recommending the capped-costs regime: “It should also be noted that Arnold J cited some powerful evidence in support of his thesis that court MARCH 2017

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Notes and references 1. In most cases. Where there is a certificate of contested validity in a patent, registered design or trade mark case, costs are not capped. (CPR 45.30(b)). 2. 45.30(2): This Section does not apply where – (a) the court considers that a party has behaved in a manner which amounts to an abuse of the court’s process. 3. CPR 45.32: Costs awarded to a party under rule 63.26(2) are in addition to the total costs that may be awarded to that party under rule 45.31; (CPR 63.26(2): Where a party has behaved unreasonably the court may make an order for costs at the conclusion of the hearing. 4. Everseal v Document Management Solutions (IPEC June 2015 (unreported)). 5. CPR 36.5(1)(c) [A Part 36 offer must] specify a period of not less than 21 days within which the defendant will be liable for the claimant’s costs in accordance with rule 36.13 or 36.20 if the offer is accepted 6. CPR 44.4(1)(b) 7. see CPR 44.4(1)(a) 8. CPR 44.4(3)(b), (c), (d) 9. If the Court considers it “unjust to do so”: CPR 36.17(4) 10. There are also rules providing for an uplift if the only remedies are non-monetary: CPR 36.17(4)(d)(ii) 11. Abbott v Design & Display Limited [2014] EWHC 3234 para 21: HHJ Hacon “I see no sanction in those provisions for lifting the caps to accommodate [36.14(3)](b) [costs on the indemnity basis from the date on which the relevant period expired].” 12. [2013] EWHC 3467 (IPEC) 13. If the offer is accepted Part 36 provides that costs assessed on a standard basis apply 14. now CPR 36.17(4) 15. PPL v Hagan [2016] EWHC 3076 (IPEC), para 39 17. Broadhurst v Tan [2016] EWCA Civ 94 18. See, for example, the Law Society Gazette headline: “Fixed Cost trumped by Part

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36 offer, rules Court of Appeal” (https:// www.lawgazette.co.uk/law/fixed-coststrumped-by-part-36-offer-rules-courtof-appeal/5053809.article); and “Part 36 trumps fixed costs” in the New Law Journal (https://www.newlawjournal.co.uk/content/ part-36-trumps-fixed-costs), as well as many law firm releases. 19. The relevant rules are those introduced in the The Civil Procedure (Amendment No.6) Rules 2013 (www.legislation.gov. uk/uksi/2013/1695/pdfs/uksi_20131695_ en.pdf). This article quotes those rules in discussing Broadhurst v Tan, with a footnote reference to the current corresponding rule. 20. Subject to rules 45.29F [Defendant’s costs: not to exceed equivalent claimant’s costs], 45.29G [Counterclaims], 45.29H [Fixed costs on Interim Application] and 45.29J [Exceptional circumstances] 21. Part 45 (www.justice.gov.uk/courts/ procedure-rules/civil/rules/part45-fixedcosts) 22. Part 36 – www.justice.gov.uk/courts/ procedure-rules/civil/rules/part36 23. 36.14A starts: “(1) Where a claim no longer continues under the RTA or EL/PL Protocol pursuant to rule 45.29A(1), rule 36.14 applies with the following modifications.” 24. Rule 36.10A begins: “36.10A. – (1) This rule applies where a claim no longer continues under the RTA or EL/PL Protocol pursuant to rule 45.29A(1). (2) Where a Part 36 offer is accepted within the relevant period, the claimant will be entitled to the fixed costs in Table 6B, Table 6C or Table 6D in section IIIA of Part 45 for the stage applicable at the date on which notice of acceptance was served on the offeror.” 25. Underlining added to emphasise that it is the Scheme in the context of the amendments which is relevant – not the overall Scheme of Part 36 itself. 26. para 22 27. para 23

16. CPR 36.17(3)

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28. para 25

31. para 35 32. Broadhurst v Tan, para 13 (quoted above) 33. para 35 34. para 36 35. para 37 36. para 39 37. para 39 38. Broadhurst v Tan para 13 39. Even if this is intended to mean the overall scheme of Part 36, and that that overall scheme is reflected in the fact that specific mention is made in the amendment rules (which is not the phrasing used by Lord Dyson MR) it would seem strange that an amendment made after the PCC rules came into effect, with reference to a completely different set of circumstances, should be an appropriate basis on which to interpret the original Part 36. 40. para 7.1(e): “the claimant will not be limited to receiving his fixed costs, but will be entitled to costs assessed on the indemnity basis in accordance with rule 36.14” www.legislation.gov.uk/uksi/2013/ 262/pdfs/uksiem_20130262_en.pdf 41. Again it might be argued that the Explanatory Memorandum shows that the writer of that Memorandum considered that a fixed-costs regime was displaced by Part 36. However, while it may be permissible to rely on an Explanatory Memorandum to interpret the piece of legislation it is explaining, it cannot be appropriate to rely on it for interpretation of another earlier piece of legislation; still less to do so in a context totally unrelated to the amendment being made. 42. [2016] EWHC 2301 (QB) 43. the renumbered equivalent of the older CPR 36.14(3). 44. para 24 45. para 3.6 (page 253): “ 46. [2012] EWPCC 34 47. para 18 48. para 20, 21

29. [2014] EWHC 3234 (IPEC)

49. HHJ Birss QC, [2013] EWPCC 19 (Costs hearing)

30. para 21

50. see above at footnotes 11 and 12

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users are more fearful about indeterminate costs liability if they lose than about shortfall in costs recovery if they win: see PR paragraph 29.5.8.45” It has been repeated in a number of cases since then, such as Gimex v The Chill Bag Company46 where HHJ Birss QC, as he then was, said: “The costs cap has an important role in facilitating access to justice in that it allows a litigant to be confident about its possible costs exposure if it loses the case47.” and “The same principles also apply to a small potential defendant. If it receives a letter before action making a claim for IP infringement which the small defendant could not in the past have afforded to defend regardless of its merits, with the Patents County Court regime in existence, the small defendant can reply denying the claim and making clear it wishes to be sued in the Patents County Court (and if the claimant chooses not to, to have the matter transferred there). I think the terms of CPR r45.42(1) were drafted with a clear intention behind them. The words are clear. The court will not order a party to pay total costs of more than the capped sum. That means a litigant in the PCC has the security of knowing that, subject to certain exceptions, the costs cap will protect their exposure to the other party’s costs. This interpretation of r45.42(1) facilitates access to justice for smaller and mediumsized enterprises. This interpretation cuts against a fully compensatory approach to costs but it does so in a context in which another forum is available with a more compensatory costs regime (the High Court)48.” And his observations in Henderson v All Around the World Recordings49: “40. As I have repeated on numerous occasions hitherto, the point of the Patents County Court is to facilitate access to justice for smaller litigants in intellectual property cases. To make a costs award which risks causing a winning claimant to be deprived to a significant extent of the fruits of her victory is very unwelcome. However I believe what is really happening in this case is an example of a psychological phenomenon I have become familiar with in the PCC. When the risk was in the future, the claimant wished to litigate in the Patents County Court to protect herself against the risk of an adverse costs award. That is why proceedings were brought and pursued in this court with this costs regime. The impact of the PCC cap on the claimant’s actual costs if she won was predictable. If the claimant Volume 46, number 3

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had lost, the costs cap would have been strongly relied on. The claimant was able to enforce her intellectual property rights in this case because of the predictability of the costs cap remaining in place. She was relying on it. Now that the claimant has won, the uncertainty has evaporated. The balance of risk and reward is now entirely different. In today’s circumstances it now seems to the claimant quite unfair that the cap prevents her from recovering a higher share of her costs. But that is because the position after judgment is very different.” It is also accepted within this structure that the costs recovered may well not reflect the full costs incurred in bringing or defending proceedings. Even taking into account the procedural economy in the IPEC, it is still recognized that in more substantial cases, especially in relation to patents, the costs of bringing or defending a case may substantially exceed the cap on costs. There is also a significantly stronger argument in relation to IPEC that the Solomon principle (that general provisions yield to specific provisions) favours the conclusion that Part 36, at least in relation to removing the cap on costs in the IPEC, does not trump Part 45. Part 36, is a rule of very general application covering cases in a wide range of different contexts. The IPEC capped-costs rules are specific rules designed for a specific class of case and litigants. While, the difficulty with the Solomon principle is always that there are arguments and counter arguments as to what is particular and what is general, the fact that IPEC judges have readily reached a conclusion, prior to Broadhurst v Tan, that the rules under Part 36 do not displace the fixed-cost regime50, strongly suggests that the natural interpretation of Part 36 is that it does not override the capped-costs regime in the IPEC. As discussed above, there is provision for costs on a non-capped basis already provided in the rules. Essentially these relate to unreasonable or conduct which is an abuse of process. The effect of PPL v Hagan is that now, even if a party (most particularly the defendant) behaves entirely reasonably, it may find that its liability for costs is not capped. That cannot be consistent, even as a measure to encourage settlement, with the scheme behind the IPEC. Indeed it is precisely contrary to the central aim of the IPEC referred to above, that a party should not be deterred from playing a part in proceedings in which they have a genuine dispute because of the fear of the costs that may be awarded against them. PPL v Hagan urgently needs review. There are already anecdotal instances of the use of Part 36 in a tactical manner following PPL v Hagan, and we would invite urgent consideration to a rule amendment which clarifies that Part 36 remains subject to the IPEC cost rules, specifically, CPR 45.30 to 33. Alasdair Poore and Mark Pearce are partners at Mills & Reeve LLP, based at the Cambridge and Leeds offices respectively. MARCH 2017

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PATENTS: UK

Patent decisions

Interim injunction

Revocation | Obviousness | Obvious to try with fair expectation of success

Warner-Lambert Company LLC v (1) Sandoz GmbH, (2) Sandoz Limited [2016] EWHC 3317 (Pat) 21 December 2016, Arnold J

Hospira UK Limited v Genentech Inc [2016] EWCA Civ. 1185 30 November 2016 Longmore LJ, Kitchin LJ and Floyd LJ

This was an unsuccessful appeal by Genentech against the decision of Arnold J ([2015] EWHC 1796 (Pat), reported at July [2015] CIPA 48) to revoke its European Patent (UK) No. 1037926 for obviousness. The case is one of a series of actions by Hospira to clear the way to marketing its breast cancer treatment following expiry of Genentech’s supplementary protection certificate for the monoclonal antibody trastuzumab. The patent in question related to the use of trastuzumab in combination with a taxane chemotherapeutic agent for the treatment of breast cancer in patients expressing the marker HER2. Genentech argued that the patent was not obvious over the prior art document Baselga 97. This document disclosed a Phase III clinical trial of trastuzumab in combination with the taxane paclitaxel for treatment of HER2-positive breast cancer, but did not disclose the results of the trial. Genentech argued first that Arnold J had taken a wrong approach to what was a fair expectation of success. It argued that for a claim requiring a clinical effect to be obvious there would need to be a very high expectation of success, referring to the Saint Gobain standard of “more or less self-evident that it ought to work”. Floyd LJ, giving the lead judgment, disagreed. He commented that this would amount to the creation of a lex specialis for claims requiring a clinical effect, and that this was not mandated by the case law. Genentech then argued that the acceptance by its expert witness that a Phase III trial would be “justified” did not support a conclusion of obviousness, because such justification might be based on the potential reward rather than the likelihood of success. Floyd LJ did not accept this, noting that the evidence of Hospira’s expert witness had been preferred by Arnold J. Finally, Genentech also argued that Arnold J had failed to take proper account of the position of the skilled person, who would need to obtain and purify the antibody and perform Phase I and Phase II trials as initial steps. Floyd LJ did not accept this submission. He agreed with Arnold J that the work was within the capacity of the skilled person because it was no more than Genentech expected of the skilled person when putting the patent into effect; the patent specification could be used as a guide to the nature and burden of the work involved. Kitchin and Longmore LLJ agreed. Thus, the appeal was dismissed. 46 CIPA JOURNAL

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This case related to an application by Sandoz to vary an interim injunction granted against Sandoz in Arnold J’s judgment of 17 November 2015 ([2015] EWHC 3153(Pat) (referred to as “Sandoz I”). The Sandoz I judgment followed on from the various earlier proceedings between Warner-Lambert and Mylan and Actavis (with the judgment on validity and infringement of 10 September 2015 being reported November [2015] CIPA 41 and subsequently appealed). The background to Sandoz I was that Sandoz had commenced supply with a “skinny label” authorisation in June 2015. Both sides exchanged multiple letters, with Sandoz confirming it would give Warner-Lambert seven days’ notice of any launch of generic pregabalin in the UK. On 2 October 2015, following the above decision in Warner-Lambert v Mylan and Actavis, Sandoz informed Warner-Lambert that it had decided to supply and started to supply a full label generic pregabalin product. On the same day, 102,519 packs of the full label product were supplied to AAH Pharmaceuticals Ltd and were sold to Lloyds. In Sandoz I, in order to decide whether to grant the injunction, Arnold J considered whether Sandoz had cleared the path for the launch of the full label product and what was the status quo to be preserved. He noted that although the validity of the patent had already been challenged by Mylan and Actavis, Sandoz had failed to clear the path by not seeking a declaration of non-infringement in relation to the full label product, which raised issues which had not arisen in the earlier proceedings. In addition, he noted that the status quo prior to launch of the Sandoz product was that a number of generic suppliers had launched a skinny label generic product, but no one was marketing a full label generic product. Therefore, in Sandoz I, Arnold J concluded that granting the relief sought by Warner-Lambert against Sandoz would create a lesser risk of irremediable harm than refusing it, and so the interim injunction was granted. Following from Sandoz I, the Court of Appeal upheld Arnold J’s judgment on validity in [2016] EWCA Civ 1006 (hereinafter referred to as “Warner-Lambert CA II”). In previous cases in this action, Arnold J had ordered the NHS to issue prescription guidance to ensure that skinny label pregabalin products were not dispensed for the treatment of the patented indications. Following Warner-Lambert CA II, Warner-Lambert attempted to revise this guidance with the www.cipa.org.uk

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NHS by requesting that pregabalin should be prescribed by brand name for any of the indications covered by a claim which had been held valid (i.e. not just those for which Lyrica is approved). The NHS agreed to amend its prescription guidance. However, a number of generic pharmaceutical companies objected to the proposed guidance and suggested that it may amount to a breach of the ABPI Code or Directive 2001/83 since it resulted in an effective promotion of Lyrica for off-label purposes. The NHS subsequently indicated a need to consider the issues further at a “senior clinical level”. In addition to seeking to revise the NHS Guidance, WarnerLambert made a concession to allow generic companies to obtain “intermediate marketing authorisations” whereby they were entitled to extend their authorised indications to include central neuropathic pain (held not to be plausibly disclosed by Arnold J and subsequently in Warner-Lambert CA II) but not peripheral neuropathic pain (held to be plausibly disclosed, but without any benefit to the validity of claim 3). Subsequently, Sandoz sought to vary the terms of the Order of Sandoz I, such that it would be entitled to launch its own pregablin product subject to its agreement not to offer for sale, sell or supply the product for conditions for which Lyrica is protected and authorised and for which Warner-Lambert maintains valid claims following the Court of Appeal decision (acute herpetic pain, postherpetic pain or causalgia pain). In the present decision, Arnold J had to decide whether to allow the variation of terms. In order for Sandoz to succeed in its application, a threshold requirement had to be met in that there had to have been a “material change” in circumstances since Sandoz I. Considering the points, Arnold J did not consider that the Court of Appeal’s decision to uphold his decision to revoke particular claims of the patent in Warner-Lambert CA II to be material, noting: “While it is true that Warner-Lambert’s appeals to the Court of Appeal were dismissed, the fact remains that the appeal process has not yet been exhausted. If the Supreme Court grants permission to appeal, which it will generally do if it considers that the case raises one or more arguable issues of law of general public importance, then it may yet turn out that claim 3 is either held to be valid even as construed by this Court and the Court of Appeal or valid because it is more narrowly construed or that WarnerLambert is permitted to pursue its amendment application (which would then have to be considered on its merits but might lead to a valid claim of narrower scope). At this stage, it cannot be assumed that the Supreme Court will refuse permission to appeal. Accordingly, I accept the submission of counsel for Warner-Lambert that the change of circumstances as a result of Warner-Lambert CA II is not a material one. This Court’s task in Sandoz I was to decide what course would Volume 46, number 3

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be least likely to cause one party or the other irremediable harm in circumstances where the merits of WarnerLambert’s claims had not yet been finally determined. At present, it remains the case that the merits of WarnerLambert’s claims concerning the validity of claims 1, 3, 4, 6, 13 and 14 have not yet been finally determined. Nor, for that matter, have the merits of its claims concerning the validity of claims 10, 11 and 12 been finally determined, since it remains possible that the Supreme Court will grant Mylan and Actavis permission to cross-appeal. Finally, the merits of Warner-Lambert’s claims for infringement of those claims (if valid) have not been determined even at first instance.” However, Arnold J did consider that Warner-Lambert’s statement that it would not prevent generics from marketing pregabalin for indications which are only protected by claims which were held invalid by the Court of Appeal amounted to a material change. This is because it enabled Sandoz to advance its case on proportionality, with the judge noting: “The conclusion I have reached is that Warner-Lambert’s change of position with regard to the enforcement of claim 3 by injunction is a material change of circumstances. Whereas Warner-Lambert’s position at the time of the 17 November Order was that it relied upon claim 3 to prevent generic access to the pregabalin market prior to expiry of the Patent, it no longer does so. This matters when it comes to the assessment of the balance of the risk of injustice, because claim 3 confers a broader monopoly on Warner-Lambert than claims 10, 11 and 12, particularly if claim 3 covers both peripheral and central neuropathic pain as is WarnerLambert’s primary contention. In particular, as noted in the preceding paragraph, it enables Sandoz to advance its argument on proportionality. That argument was not open to Sandoz in the same way at the hearing on 21 October 2015 because at that stage Warner-Lambert was still relying upon claim 3. While it is true that I held in Sandoz I that Warner-Lambert had an arguable case of infringement of claims 10, 11 and 12 even if claim 3 was invalid, I went on to assess the balance of the risk of injustice on the basis that Warner-Lambert had a real prospect of success on claim 3 and I did not carry out a separate assessment on the assumption that Warner-Lambert only had a real prospect of success on claims 10, 11 and 12.” The UK patent court case reports are prepared by Jonathan Markham, Anna Hatt, Matthew Ng and Sarah-Jane Poingdestre of Beck Greener. All the court decisions listed in this section are available on the free-to-use website www.bailii.org.

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The Court further considered the facts that i) WarnerLambert’s infringement action against Sandoz has been stayed and the March 2016 trial date has been vacated, and ii) that the Court of Appeal has given further consideration to the law relating to infringement of Swiss-type claims. Having held that there had been a material change since Sandoz I, Arnold J reviewed the assessment as to WarnerLambert’s entitlement to an interim injunction. Sandoz focused on proportionality (as set out above) and in particular the importance of the Court considering “whether the injunction was proportionate and a legitimate barrier to trade”. In relation to the latter, Arnold J accepted Sandoz’ submission that Article 3(2) of Directive 2004/48/EC (“the Enforcement Directive”), concerning the need for proportionate enforcement measures, was directed not only to the legislature of member states but also to national courts when considering whether or not to grant an injunction: “As counsel for Sandoz submitted, the CJEU has confirmed in this passage that Article 3(2) of European Parliament and Council Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights (“the Enforcement Directive”) is directed to national courts when considering whether or not to grant an injunction (and not merely to the Member States’ legislatures when framing national laws) and that this applies not merely to injunctions against intermediaries under the third sentence of Article 11, but also to the other measures specified in the Enforcement Directive, which include interim injunctions (Article 9(1)). I entirely accept that the court must consider the proportionality of any injunction, including an interim injunction. Nevertheless, I consider that there is an important difference between considering the proportionality of a final injunction after the merits of a dispute have been determined (at least at first instance) and considering the proportionality of an interim injunction before the merits of the dispute have been determined. In the latter situation, the court’s primary task remains that of taking the course which appears least likely to cause one party or another irremediable prejudice. Although there is no reference to Article 3(2) of the Enforcement Directive in Warner-Lambert CA II, counsel for Sandoz also relied upon the statement by Floyd LJ at [187] that “the remedies for infringement will have to be moulded so as to achieve fair and proportionate relief tailored to the very special circumstances of this type of case”. That statement was, I think, primarily directed to final relief, but I accept that, subject to the point I have just made, it is also applicable to interim relief.” It was then necessary for Arnold J to consider whether there was a serious issue to be tried. The judge held that there was in 48 CIPA JOURNAL

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relation to claim 10 (“trigeminal neuralgia”), claim 11 (“acute herpetic and postherpectic pain”) and claim 12 (“causalgia pain”), all of which are types of peripheral neuropathic pain. Sandoz’ drug was indicated for treatment of peripheral neuropathic pain and referred to post-neuropathic neuralgia in the Summary of Product Characteristics for the Sandoz full label product. In the assessment of irreparable harm, Sandoz argued that the indications covered by claims 10, 11 and 12 comprised only 1.13% of the market. However, Arnold J held that even though the claims covered only a small percentage of the market, if the marketing of pregabalin by Sandoz infringes the claims, Warner-Lambert is prima facie entitled to an injunction to prevent such marketing prior to expiry. The judge also warned: “If Sandoz were permitted to market the Sandoz Full Label Product now, it is clear that they would be quickly followed by other generic companies. Some might be able to launch very quickly after Sandoz, while others might have to wait 30-60 days. Within a couple of months, however, there would be a free-for-all in the full label market. The consequence would be further pressure on the market price of pregabalin. This would require Pfizer to spend even more money on Brand Equalisation deals if it was to try to maintain the exfactory price of Lyrica.” Based on this analysis, Arnold J maintained his position that the risk of irreparable harm to Warner-Lambert was greater than to Sandoz. Turning to the balance of convenience, Arnold J accepted Warner-Lambert’s submission that Sandoz’ failure to clear the way and the preservation of the status quo were factors which favoured the grant of the injunction. In addition, the judge noted that Sandoz’ submissions disregarded the fact that numerous claims of the patent were upheld and that these claims amount to 13.8% of the market. The fact that Lyrica is not authorised for these conditions was “immaterial”. Based on the facts, the judge refused Sandoz’ application for the injunction be lifted: “The main cause of the problem which faces Sandoz is the preference which certain pharmacy chains have to stock full label product. Even though the conditions covered by claims 10, 11 and 12 represent a small percentage of the total market, Warner-Lambert is prima facie entitled, assuming that its claim for infringement of those claims succeeds, to use that monopoly to protect the full label market for pregabalin (as distinct from the skinny label and intermediate label markets). I do not consider it disproportionate to grant an injunction to enforce that entitlement on an interim basis.” www.cipa.org.uk

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Arrow declaration | Summary judgment | Abuse of process | Request for strike out | Invalidity Fujifilm Kyowa Kirin Biologics Company Ltd, (1) Samsung Bioepis UK Limited, (2) Biogen Idec Limited v AbbVie Biotechnology Ltd, “FKB1” Fujifilm Kyowa Kirin Biologics Company Ltd v (1) AbbVie Biotechnology Ltd, (2) AbbVie Ltd, “FKB2” [2016] EWHC 3383 (Ch), 29 December 2016, Carr J

This was an interim decision from Mr Justice Carr in the ongoing battle concerning the subject-matter of a family of secondary patent applications in AbbVie’s adalimumab (Humira®) portfolio. This decision was discussed on the IPKat Blog (http://ipkitten.blogspot.co.uk) on 5 January 2017.

Background This judgment concerns the latest in a series of applications by AbbVie, the effect of which, if successful, would be to avoid trial in the UK in relation to its dosage regime patents for adalimumab. Fujifilm Kyowa Kirin Biologics (hereinafter “FKB”) and Samsung Bioepsis and Biogen Idec (hereinafter “SB/Biogen”) issued separate proceedings in 2015 and 2016 to revoke European Patents (UK) 2940044 (“EP044”) and 1944322 (“EP322”) in an attempt to clear the way for their proposed biosimilar product launches after the expiry of the AbbVie’s basic adalimumab patent and associated SPCs in October 2018. The claimants sought declarations that their products were anticipated and/or obvious at the priority date. A declaration of this kind is referred to as an “Arrow declaration”, since it was first allowed in the case Arrow Generics Limited v Merck & Co. Inc. [2007] EWHC 1900 (Pat). If such declarations are granted, then the claimants will have a so-called “Gillette defence” to complaints of acts committed in the UK, on the basis that if there is infringement of any of the patents in suit, then these patents must be invalid. In his judgment of 1 March 2016, Carr J dismissed an application from AbbVie to strike out parts of FKB’s claim concerning EP044 and EP322 (“the FKB1 judgment”). AbbVie’s most recent application concerned FKB’s claim against EP European Patent Application 1737491 (“EPA491”). This was dismissed by Arnold J in his judgment of 8 September 2016 and FKB were granted permission to amend the Particulars of Claim (“the FBK2 judgment”, reported at November [2016] CIPA 51). Appeals by AbbVie regarding the FKB1 and FKB2 judgments were heard on 28 and 29 November 2016, and judgment was reserved.

Recent developments On 15 November 2016, AbbVie informed FKB and SB/Biogen, without any explanation, that it had de-designated the UK from EP044 and had also ‘disapproved the text’ of EP322, leading to its Volume 46, number 3

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revocation. It was also discovered by FKB that AbbVie had applied for a fifth divisional, on the last day possible before the grant of EP044. AbbVie had also offered an undertaking that it would not obtain any patent protection in the UK that would be infringed by the claimants’ biosimilar products as a result of their use of the dosage regimens for the indications specified in the declarations sought. It also agreed to pay the costs of the proceedings and provided draft consent orders. The claimants declined this offer, and invited AbbVie to submit to judgment, which would ultimately end the proceedings. AbbVie refused to do this and has continued to resist the grant of any declarations by the court.

Summary judgment Carr J identified the principal area of dispute between the parties to be the issue of whether the declarations sought serve a useful purpose. In its application for summary judgment, AbbVie argued that the fact that were now no existing patents in the UK, together with it its undertakings, means that there is no risk that patent protection in the UK will be infringed by the claimants’ products as a result of their use in accordance with the dosage regimens at issue. Therefore, the claimants have cleared the way of patent protection in the UK, and so have achieved that utility and commercial purpose of Arrow declarations. Therefore, AbbVie’s argument was essentially that there was no real prospect of the court granting the declarations, because there was no real prospect of the Court concluding they would serve a useful process. Whilst the judge agreed that AbbVie’s submissions were relevant when considering whether there was a real prospect that the judge at trail will grant the declarations, he had a number of reservations. In particular, he stated that: “… if as AbbVie submits, the declarations have no useful purpose, and the steps that they have taken have the same effect in clearing the way, it is very difficult to see why it refuses to submit to judgment, or alternatively to give an acknowledgement in the same form as the declarations. In the absence of any explanation in evidence, there is a strong inference that AbbVie recognises that the declarations are more damaging to its strategy in relation to its Humira patent portfolio, than the rather complex set of undertakings and abandonment of UK patent protection that it proposes.” The position of FKB and SB/Biogen was that AbbVie’s reason for refusing the declarations is precisely because they will serve a number of useful purposes. In particular, they argued that the declarations would provide a clear indication throughout Europe that the biosimilar products have been cleared in the UK, thus removing any confusion in the marketplace. AbbVie was resisting such clarity because it has threatened to pursue proceedings for infringement throughout the world. MARCH 2017

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The claimants also argued that that the latest move by AbbVie cannot be viewed in isolation and that it is consistent with AbbVie’s well-established strategy of dragging out proceedings as long as possible, whilst threatening to sue for infringement, and then abandoning its patent rights at the last moment, whilst filing further divisionals. They argued that this strategy is designed to encourage market uncertainty, whilst shielding AbbVie’s patents from the risk of a finding of invalidity and causing maximum expense and inconvenience to its competitors. Carr J ultimately agreed with the claimants’ submissions and concluded that there is a real prospect that the judge at trial will consider that that the grant of the declarations will achieve one or more useful purposes. In particular, he agreed that that the declarations would likely serve a useful purpose in protecting the claimants’ supply chains to the UK and Europe and that AbbVie’s threats of worldwide litigation are likely to have a chilling effect on competition from biosimilars, including on third-party suppliers. He also agreed that a useful purpose of the declarations would be to provide clarity in the UK for both the claimants and third parties, and that this clarity is not provided by AbbVie’s complex undertaking. Carr J also considered the “most unusual facts of this case” and concluded that the judge at trial will consider that there are “special reasons” which support the grant of the declarations including AbbVie’s conduct of threatening infringement whilst abandoning proceedings at the last moment (in order to shield its patent portfolio from scrutiny).

Abuse of process AbbVie had also argued that the UK Court should not act as an advisory body for other courts around Europe, and that the continuation of these proceeding would be an abuse of process, and a disproportionate waste of court resources. Carr J disagreed with AbbVie and considered that the continuance of these claims is a proportionate use of the resources of the UK courts and certainly not unfair to AbbVie. He held that this is a case where a great deal is at stake given the huge size of the UK market. He concluded: “There is a real prospect that the court will consider that the grant of the declarations will serve a useful purpose, and that this is the reason why AbbVie continues to resist them. In the circumstances, it is not an abuse of process by the claimants to continue to seek the relief which AbbVie refuses to offer. This is not a case where it can be said that the game is not worth the candle. On the contrary, it is worth a great many candles.”

Summary In conclusion, Arnold J dismissed AbbVie’s application for summary judgment and its application to strike out these proceedings as an abuse of process and granted the amendments to the Particulars of Claim in the form currently pursued by the claimants. 50 CIPA JOURNAL

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Arrow declaration | Infringement | Anti-suit injunction | Invalidity Fujifilm Kyowa Kirin Biologics Company Ltd v (1) AbbVie Biotechnology Ltd, (2) AbbVie Ltd [2017] EWCA Civ 1, 12 January 2017 LJ Longmore, LJ Kitchin, LJ Floyd

This decision from the Court of Appeal was discussed on the IPKat Blog (http://ipkitten.blogspot.co.uk) on 13 January 2017. This was a further instalment in the long-running dispute between Fujifilm Kyowa Kirin Biologics (hereinafter “FKB”) and AbbVie Biotechnology Ltd (“AbbVie Bermuda”) and AbbVie Ltd (hereinafter collectively referred to as “AbbVie”, except where necessary to distinguish between them). The judgment related to two separate appeals concerning AbbVie’s adalimumab (Humira®) portfolio and FKB’s attempts to clear the way for the launch of is adalimumab biosimilar. FKB intended to market a generic version of adalimumab in the UK when AbbVie’s basic patent protection for the drug expires in October 2018. However, since AbbVie have filed secondary European patent applications protecting dosage regimens, formulations and uses of adalimumab, FKB was seeking to protect itself from any subsequent infringement action by applying for a declaration that their dosage regimes would have been obvious and/or anticipated at the priority date of the patent in question (and as such, cannot fall within the scope of any additional protection granted to AbbVie by the European Patent Office). Such declarations are referred to as “Arrow declarations”, since they were first considered in the case Arrow Generics Limited v Merck & Co. Inc. [2007] EWHC 1900 (Pat). The first appeal was from the decision of Carr J (1 March 2016), in which he refused to strike out FKB’s claim for an Arrow declaration in relation to AbbVie Bermuda’s European Patents (UK) No.s 2940044 (“EP044”) and 1944322 (“EP322”) (“the FKB1 judgment”). The second appeal was from the decision of Arnold J dated 8 September 2016 in which he refused to strike out a claim by FKB for a similar declaration in relation to European Patent Application No. 1737491 (“EPA491”), as well as for an injunction AbbVie to restrain them from threatening or commencing proceedings for patent infringement in respect of acts covered by the declaration (“the FKB2 judgment”, reported at November [2016] CIPA 51).

Arrow declarations The main issue considered by the Court of Appeal concerned the question of whether Arrow declarations are a permissible remedy. The appellants, AbbVie, contended that the Arrow case was wrongly decided and that Arrow declarations are precluded by UK patent law since sections 74-78 Patents Act 1977 make it clear that you cannot challenge the validity of pending patent www.cipa.org.uk

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applications, and that you cannot institute proceedings seeking only a declaration of invalidity of a granted patent. This issue arose in both FKB1 and FKB2. The Court of Appeal, disagreeing with AbbVie, held that there is no issue of principle which prevents the granting of Arrow declarations in appropriate cases. The legal position was summarised with the following points: “i. A declaration that a product, process or use was old or obvious at a particular date does not necessarily offend against section 74 of the Act. ii. Such a declaration may offend against the Act where it is a disguised attack on the validity of a granted patent. iii. Such declarations do not offend against the scheme of the EPC or the Act simply because the declaration is sought against the background of pending divisional applications by the counter-party. iv. On the other hand, the existence of pending applications cannot itself be a sufficient justification for granting a declaration. v. Whether such a declaration is justified depends on whether a sufficient case can be made for the exercise of the court’s discretion in accordance with established principles.” The Court of Appeal also considered that the granting of an Arrow declaration is a matter of the Court’s discretion, and that an important factor to be borne in mind is the existence of the statutory proceedings for revocation, which should be regarded as the normal vehicle for obtaining any desired findings of invalidity. The Court of Appeal further stated that: “It seems to us that the pleaded facts in both cases are at least open to the interpretation that AbbVie are deliberately trying to shield the claims of their patents from scrutiny in the EPO and in the national court. Had the patents not been voluntarily de-designated or revoked, FKB would have had the opportunity to seek findings of invalidity of granted patents in the usual way. Those findings would have gone a long way to establishing its freedom to operate before launch. Because of the way AbbVie have appeared to act, there is a case for the court to intervene by way of declaration to provide FKB with a measure of useful commercial certainty.”

Supplementary issues The Court of Appeal also considered two supplementary issues that arose in FKB2. The first of these was whether the claim for an injunction to restrain AbbVie from threatening or commencing proceedings for patent infringement in respect of acts covered by the declaration is arguable or should be struck out. AbbVie argued that the injunction barred AbbVie’s right of access to the Courts contrary to Article 6 ECHR and that the proceedings were being brought maliciously and without proper Volume 46, number 3

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foundation. The Court of Appeal stated that the question to be considered was not if an injunction will be granted or what its scope might be, but rather whether there is a real prospect of any injunction being granted at trial. The Court of Appeal concluded that the claim for an injunction should not be struck out at this stage on the ground that an appropriately framed injunction may be an alternative to the declaration. The final issue to be considered was whether the claim against AbbVie Ltd should be struck out on the ground it has no real prospect of success. This issue arose principally because AbbVie Ltd has no involvement in the proceedings before the EPO and is not the patentee or the exclusive licensee of any relevant patent or application. In FKB2, Arnold J refused to strike out AbbVie Ltd from the proceedings on the ground that it is probable that AbbVie Bermuda will grant an exclusive license to AbbVie Ltd at some point in the future, and that even if it is not granted an exclusive license, AbbVie Ltd will have a significant financial interest in the inventions in the patent family because it will be the one who exploits the inventions in the UK. AbbVie contended that Arnold J’s reasons for leaving AbbVie Ltd in the proceedings were contrived and that there was no basis for not accepting at face value the evidence given as to whether an exclusive license would be granted. The Court of Appeal was not persuaded by AbbVie’s submission, and agreed with Arnold J’s decision to not to strike out AbbVie Ltd from the proceedings. In summary, both appeals were dismissed.

Reference to CJEU | SPCs Abraxis BioScience LLC v The Comptroller-General of Patents [2017] EWHC 14 (Pat) 13 January 2017, Arnold J This case was discussed on the IPKat blog (http://ipkitten. blogspot.co.uk) on 26 January 2017 and on the SPC Blog (http:// thespcblog.blogspot.co.uk/) on 16 January 2017. Abraxis appealed a decision of 26 August 2016 on behalf of the Comptroller-General of Patents to refuse a supplementary protection certificate (SPC) application for paclitaxel formulated as albumin bound nanoparticles. Abraxis markets the paclitaxel nanoparticles as nab-paclitaxel under the trade name Abraxane. Paclitaxel had been marketed previously by other parties under earlier marketing authorisations. The basic patent was European Patent (UK) No. 0961612. Claim 33 of this patent covered a composition comprising particles of a pharmacologically active agent, namely paclitaxel, coated with a protein, namely albumin, in which the average diameter of the particles was less than 200 nm and part of the paclitaxel was contained within the albumin coating and part was associated with free albumin associated with the coating. MARCH 2017

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The hearing officer found that in nab-paclitaxel, the albumin and paclitaxel were tightly bound together in the particles with an interaction stronger than that between free albumin and paclitaxel. However, that bond did not consist of a covalent bond. The hearing officer also found that nab-paclitaxel behaved materially differently to paclitaxel in a number of ways. The main issues were whether nab-paclitaxel was a single active ingredient according to Article 1(b) of the SPC regulation, or a combination of active ingredient with an excipient or adjuvant, and if not, whether Article 3(d) of the SPC regulation covered a new formulation of an old active ingredient. In relation to Article 1(a), Abraxis contended that nabpaclitaxel was a single active ingredient and was a different active ingredient to paclitaxel. Abraxis considered this conclusion to be supported by the practice of granting SPCs for pro-drugs and PEGylated proteins, although both of these are modified by covalent bonding of additional components. However, the judge considered that it was clear that nabpaclitaxel was not the active ingredient within the meaning of Article 1(b) of the SPC Regulation. Paclitaxel was the active ingredient and albumin was the carrier. Considering the earlier judgments of the CJEU in MIT, GSK and Forsgren, he noted that Article 1(b) is to be interpreted narrowly and cannot cover a substance which does not correspond to an active ingredient. In addition, he noted that Abaxis did not challenge the hearing officer’s findings of fact that nab-paclitaxel was not a single active ingredient, that the active ingredient was paclitaxel and that the albumin functioned as a carrier which was not covalently bonded to the paclitaxel. The judge also noted that, from Forsgren, when considering whether a substance produces an effect of its own so as to constitute an active ingredient, it is proper to refer to both the SmPC of the marketing authorisation and the EPAR which led to the marketing authorisation. In this case, both made it clear that the active ingredient was paclitaxel. Therefore, in order for an SPC to be granted, it was necessary to consider whether Article 3(d) covered a new formulation of an old active ingredient. The relevant case was Neurim, which held that the authorisation referred to in Article 3(d) was the first authorisation within the scope of the basic patent to place the product on the market as a medicinal product. However, this case related to a new therapeutic use of an old active ingredient. Abraxis contended that the same policy consideration from Neurim also applied to a new formulation of an old active ingredient. However, Abraxis accepted that it was not clear from Neurim that this was the correct interpretation. The Comptroller contended that the CJEU’s decision in Neurim was confined to new therapeutic uses of old active ingredients. The Comptroller considered that the CJEU had made it clear in MIT, GSK and Forsgren that SPCs could not be obtained for new therapeutic formulations of old active ingredients. The Comptroller submitted that this distinction 52 CIPA JOURNAL

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was drawn in paragraphs 11 and 12 of the Explanatory Memorandum proposing what became Council Regulation 1768/92/EEC. Arnold J concluded that it was not clear how far the reasoning of the CJEU extended in Neurim. As such, he decided to refer a question to the CJEU: “Is Article 3(d) of the SPC Regulation to be interpreted as permitting the grant of an SPC where the marketing authorisation referred to in Article 3(b) is the first authorisation within the scope of the basic patent to place the product on the market as a medicinal product and where the product is a new formulation of an old active ingredient?” The judge provided his own suggested answer to the question: “In case it assists the Court of Justice, I will offer my own answer to this question. While I fully acknowledge the force of counsel for Abraxis’ argument that the primary purpose of the SPC Regulation is to reward innovative research of the kind that led to the development of nab-paclitaxel and to compensate patentees for delays in obtaining marketing authorisations of the kind that Abraxis experienced with Abraxane, it must be recalled that the SPC Regulation was intended to provide a simple and predictable system that could be operated by the competent authorities of the Member States, and in particular the national patent offices, in a uniform manner. Moreover, as discussed, the SPC Regulation aims to balance the interests of patentees with those of other stakeholders. To achieve those objectives, it is necessary to have bright-line rules even if they sometimes deprive meritorious inventions of extended protection. Article 1(b) is such a rule, and the Court of Justice has held that it should be strictly interpreted. In my view it would be inconsistent with a strict interpretation of Article 1(b) to interpret Article 3(d) as permitting SPCs to be obtained for new formulations of old active ingredients. If Article 3(d) were to be interpreted in that way, it would be likely to lead to uncertainty and inconsistency as to the circumstances in which SPCs for new formulations could be obtained, as the existing case law illustrates. For example, could an SPC be obtained where the basic patent protected a key ingredient in the new formulation other than the active ingredient (as in MIT, the first application in GSK and Forsgren), rather than the new formulation containing the active ingredient (as in the second application in GSK and the present case)? Moreover, I agree with the Comptroller that paragraphs 11 and 12 of the Explanatory Memorandum appear to indicate that SPCs should be available for new applications (i.e. new therapeutic uses) of old active ingredients, but not for new formulations. Accordingly, I would answer the question no.” www.cipa.org.uk

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Reference to CJEU | SPCs (1) Teva UK Limited, (2) Accord Healthcare Limited (3) Lupin Limited and Lupin Europe Limited (4) Generics (UK) Limited trading as Mylan v Gilead Sciences, Inc. [2017] EWHC 13 (Pat), 13 January 2017, Arnold J This case was discussed on the IPKat blog (http://ipkitten. blogspot.co.uk) on 26 January 2017 and on the SPC Blog (http:// thespcblog.blogspot.co.uk/) on 16 January 2017. The claimants challenged the validity of Gilead’s supplementary protection certificate SPC/GB05/041 for a mixture of Tenofovir disoproxil and Emtricitabine, marketed as TRUVADA. TRUVADA is an anti-retroviral medication used to treat HIV. The claimants argued that the SPC product was not protected by the basic patent, European Patent (UK) No. 0915894, because the patent claims covered a mixture including emtricitabine but the patent did not identify this compound. The SPC therefore did not meet the requirements of Article 3(a) of the SPC Regulation. Gilead argued that the SPC product was protected by the basic patent, but asked for a referral of this matter to the CJEU if the judge did not agree. The SPC had orginally been rejected under Article 3(a), but this decision had been overturned by Kitchin J – [2008] EWHC 1902 (Pat). Arnold J considered the matter afresh in view of additional CJEU judgments in the meantime, as well as new evidence and arguments. The judge reviewed the case law of the CJEU on the interpretation of Article 3(a), including Farmitalia, Medeva, Yeda, Queensland, Daichii, Actavis v Sanofi (C-443/12), Lilly and Actavis v Boehringer. He commented that the CJEU’s reasoning was hard to follow and did not provide national authorities with a useful test to apply. He noted that divergent decisions had been reached around Europe in corresponding cases. The judge therefore decided to refer Question 1 of the Actavis v Sanofi case to the CJEU again, that question being: “What are the criteria for deciding whether ‘the product is protected by a basic patent in force’ in Article 3(a) of the SPC Regulation?” The judge commented that: “Although counsel for the laimants submitted that there was no reason to think that a further reference would result in a different answer being given by the Court to the answers which it had previously given in Medeva and Lilly, I am encouraged by what the Court said in Actavis v Sanofi and Actavis v Boehringer to believe that there is a realistic prospect of the Court providing further and better guidance to that which it has hitherto provided.” Volume 46, number 3

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The judge provided his own suggested answer to the question: “it is now clear that it is not sufficient that dealings in the product would infringe a claim applying the Infringing Act Rules. It is also clear that it is necessary that the product falls within at least one claim of the basic patent applying the Extent of Protection Rules. In my view, however, it is not sufficient that the product falls within at least one claim of the basic patent applying the Extent of Protection Rules… What more is required? In my view, the answer is that the product must infringe because it contains an active ingredient, or a combination of active ingredients, which embodies the inventive advance (or technical contribution) of the basic patent. Where the product is a combination of active ingredients, the combination, as distinct from one of them, must embody the inventive advance of the basic patent… This is not a question of the wording of the claims of the basic patent, which as discussed above can be manipulated by the patent attorney who drafts it, but of its substance… In my view, this interpretation of Article 3(a) would accord with the object of the SPC Regulation, which is to encourage invention in the field of medicinal products by compensating inventors for the delay in exploiting their inventions due to the need to obtain regulatory approval, and not to confer unjustified monopolies. For the avoidance of doubt, this interpretation of Article 3(a) would not prevent a patentee from obtaining an SPC in circumstances where the patent protected a single active ingredient A, but the patentee had only obtained a marketing authorisation for that active ingredient in combination with another active ingredient B. In those circumstances, as the Court of Justice held in Medeva, the patentee could obtain an SPC for product A.”

Employee compensation Ian Alexander Shanks v (1) Unilever PLC, (2) Unilever BV and (3) Unilever UK Central Resources Limited [2017] EWCA Civ 2, 18 January 2017, Arnold J This case related to an appeal against a dismissal by Arnold J ([2014] EWHC 1647 (Pat)) of an appeal against a decision on behalf of the Comptroller-General of Patents (BL O/259/13). The further appeal related to an unsuccessful claim by Professor Shanks against Unilever PLC, Unilever NV and one of their subsidiaries (collectively “Unilever”) for employee compensation in respect of European Patent (UK) No. 0170375 and related patents (collectively “the Shanks patents”). In the first instance case, the hearing officer concluded that (i) the benefit to Unilever from the patents was £24.5 million; (ii) that this benefit was not outstanding; and (iii) if (contrary MARCH 2017

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to his conclusion) the Shanks patents were of outstanding benefit, a fair share of the benefit for Professor Shanks would be 5%. Professor Shanks challenged both the hearing officer’s conclusion that the Shanks patents were not of outstanding benefit and his conclusion as to fair share. Professor Shanks was employed by Unilever UK Central Resources Limited (CRL) from 1982 to 1986. CRL was a wholly-owned subsidiary of Unilever Plc and employed all of Unilever’s research staff in the UK. It was common ground that, in accordance with section 39(1) Patents Act 1977, the rights to any inventions created by Professor Shanks in the course of his employment belonged to CRL. Further, in accordance with standard Unilever policy, CRL assigned the rights in the invention to Unilever Plc. Professor Shanks signed two confirmatory assignments, for which he received $1 each. Between 1992 and 2001 the majority of companies in the blood glucose testing field took non-exclusive licences for the remaining life of the Shanks patents. Under the terms of the licence, the licence fees were payable in instalments. Professor Shanks had little involvement in the licensing of the Shanks Patents and did not develop the technology, nor push forward the commercial exploitation, in any other way. The hearing officer’s conclusion that the benefit which Unilever derived from the Shanks patents was £24.5 million was challenged by both parties. Professor Shanks contended that an additional sum should have been included to reflect the “time value” of the money to Unilever. In other words, Unilever had use of the money which was in itself an economic benefit to Unilever. It was argued that this was a “benefit” within section 43(7). Arnold J dismissed this on appeal and agreed with Unilever’s submissions that the benefit derived by Unilever from the Shanks patents is the benefit net of tax. On appeal, Arnold J also agreed with the hearing officer’s determination that the research would have been undertaken, even without a patent. Therefore, the judge upheld the hearing officer’s conclusion that £250,000 for the costs of filing, prosecuting, maintaining and licensing the Shanks patents could be deducted, but not the £1.75 million research and developments costs attributable to the development of the technology. Finally, on appeal Arnold J commented on what comprised a fair share: “In my judgment this is where the hearing officer’s failure to take Unilever’s ability to extract licence fees due to its size and financial resources into account becomes important. He awarded Prof Shanks a larger percentage than Dr Kelly because Unilever did not put substantial resources at risk, whereas Amersham did. That is true, but it overlooks the fact that the benefit which Unilever derived from the Shanks Patents was obtained purely from licences which Unilever was 54 CIPA JOURNAL

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able to conclude at least in part because of its size and financial resources. In those circumstances I do not think it would have been right to award Prof Shanks a greater percentage than Dr Kelly and Dr Chiu together, that is to say, 3%.” In summary, Arnold J decided that the Shanks patents were not of outstanding benefit to Unilever and dismissed the appeal. Permission to appeal was granted by Floyd LJ for this second appeal on the basis that it raised important issues of principle in relation to what constitutes outstanding benefit and how it should be calculated. Professor Shanks challenged the decision of the hearing officer as affirmed by Arnold J that the patents did not confer an outstanding benefit on Unilever and repeated the submission that the calculation of benefit should include an allowance for the “time value” of money. He also contended that a fair share of the benefit to Unilever would be at least 33% rather than the 5% which the hearing officer would have awarded. Finally, he invited the Court of Appeal to overturn Arnold J’s conclusion that the financial benefit should be calculated net of tax.

Outstanding benefit The Court first noted that there was no statutory definition of “outstanding”. The Court first considered the established case law and noted: “Although attempts to re-define the statutory test by the use of a variety of synonyms are to some extent inevitable as part of the process of statutory construction, I agree that they are largely unhelpful. Outstanding is an ordinary English word with a readily understood meaning and was doubtless chosen by Parliament to identify the exceptional nature of the benefit that must exist. It may be useful for this purpose to consider whether the benefit to the employer exceeded what would normally be expected to result from the work for which the employee was paid so long as one bears in mind that the focus of s.40(1) is on the benefit to the employer and not on the degree of inventiveness of the employee. For that reason, I would not adopt the suggestion made in British Steel PLC’s Patent (quoted above) that the patent must stand out from the rest except in the sense of its return or value to the employer.” Unilever’s central argument on outstanding benefit was that the £24.5 million, although not an inconsiderable sum in itself, was simply dwarfed by the turnover and profits of the Group as a whole. Unilever manufactures a wide range of highly successful products from Viennetta ice-cream to deodorants which on the evidence generated billions of pounds in sales over the life of the patents and hundreds of millions of pounds in profits. Although it was accepted that the rate of return on many of www.cipa.org.uk

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those products is much lower than on the Shanks patents, that was said not to be enough to make the benefit from the Shanks patents outstanding when regard is had to the size and nature of the employer’s undertaking which it must be in accordance with section 40(1). This argument was described by Shanks as “Too big to pay“. Shanks argued that if section 40(1) calls for no more than a simple comparison between the value of a patent and the turnover and profitability of the employer’s undertaking, it must follow that in relation to companies like Unilever it would be all but impossible for any employee to establish that the benefit generated by the relevant patents had been outstanding. Therefore, the compensation regime contained in section 40 would have no possible application to a whole raft of major research industries. Before deciding this point, the Court first considered three specific issues that had a direct bearing on the calculation of the financial benefit to Unilever. They were: i. what constituted the employer’s undertaking for the purpose of section 40(1); ii. whether the £24.5 million should be increased to reflect the time value of the money to Unilever; and iii. whether the £24.5 million should be reduced to take account of corporation tax.

i. Undertaking In relation to the undertaking (i), the Court decided: “An assessment of what constitutes the undertaking based on the economic and business realities of the employer’s organisation is the correct approach. If one takes a strictly legal approach to the construction of the statute it can be said that the employer is CRL and that CRL’s undertaking in financial terms is limited to the nominal payments it receives on the assignment of the patent rights. But if that approach is to govern s.40(1) it must also apply to s.41(1) with the consequence that the benefit derived from the patent is limited to those sums and does not include the £24.5m subsequently received by other companies in the Group from licence fees.” The Court thus concluded that the undertaking included Unilever Plc and Unilever NV.

ii. Time value of money The Court first noted that there was no doubt that the time value of money was a quantifiable financial benefit so that its loss can be the subject of an award of compound interest as part of a claim in restitution. However, the Court drew a distinction between a claim for damages or unjust enrichment and Professor Shanks’ right to statutory compensation under the terms of section 41(1) which Volume 46, number 3

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limit any award to a fair share of the benefit derived by the employer from the patent. The Court therefore upheld the decisions of Arnold J and the hearing officer: “I agree with Arnold J that this is limited to direct receipts from the exploitation of the patent rights and does not include an allowance for the fact that the employer has had the benefit of those receipts for a period of time prior to any award under s.41(1). As he pointed out, the monies received would have been employed in other activities which were either profitable or loss-making but the results of bringing that into account could be random and unpredictable and bear no relation to what the patent produced for the Group. It is the opening balance which counts. I think that the hearing officer was also right to point out that if the calculation of benefit is to include an allowance for the time value of money then a similar adjustment would need to be made to the calculation of Group income in order to compare like with like.”

iii. Tax Shanks challenged Arnold J’s reduction of the amount of the benefit by reference to the amount of corporation tax which Unilever paid on the licence fees. The judge’s decision was, it was argued, wrong in principle and results in tax being deducted twice; first by the allowance for corporation tax and secondly because the award would be taxable in Professor Shanks’ hands. The Court agreed with this argumentation and rejected Arnold J’s approach that the benefit to be assessed is the benefit net of tax: “I think that the judge was right to reject an analogy with the calculation of damages as unhelpful because the first stage in any s.41(1) calculation is to determine the benefit derived from the patent. But I think that he fell into error in treating that amount as the licence income net of tax. An adjustment of the gross sum to take account of corporation tax would require an investigation into the employer’s tax position taking into account years of loss as well as profit; the possibility of carrying losses forward and an assessment of whether and to what extent any payment to the employee would be deductible. I do not consider that this was what Parliament can have intended when it referred to the benefit derived from the patent. The incidence of tax is unconnected to the financial benefit which the patent produced for the employer. Its deduction is no more part of the calculation of what constitutes the benefit than the time value of the money received. Both are consequences of the benefit rather than part of it. The £24.5m should not therefore be reduced to take account of corporation tax.” MARCH 2017

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DECISIONS

Too big to pay

Obviousness | Infringement

On the “too big to pay” point, the Court reviewed the facts of the case and essentially dismissed this ground of appeal on the basis that the hearing officer had not considered this as the sole factor in determining the benefit: “The argument that [222] of the decision embodies a misdirection can only succeed if what the hearing officer decided was that the only relevant and determinative factor was the size of the profits generated by the Shanks patents in comparison to the overall profits of the Group. As I mentioned earlier, Mr Green put it in argument in terms of this being simply a comparison with total profitability. If the correct reading of the decision is that the hearing officer did carry out an analysis of the other factors which were pressed on him as relevant but concluded that on balance they did not make the benefits outstanding then it would not be right in my view for this Court to interfere. The weight to be given to those factors was a matter of judgment for the hearing officer. What I think does matter is that he properly took all these matters into account but was not persuaded that the benefits which the patents did bring could be described as outstanding when looked at in the context of the overall performance of the Group. That seems to me to be what he was required to do under s.40(1). There is, I think, something to be said for Mr Alexander’s argument that if all that the patents produced was money then it is not irrelevant to look at the benefit they brought largely in money terms. In any event, it is a misreading of the decision to suggest that the hearing officer reached his conclusion solely on the basis that the income from the patents was a small part of Group income in the relevant years. Ground 1 therefore fails.” Therefore, the appeal was dismissed. However, Briggs LJ noted in a secondary judgment: “I agree that this appeal should be dismissed, for the reasons given by Patten LJ. I do so with some reluctance because this does appear to be a case in which the sheer size of the employer’s undertaking was, at the end of a careful and balanced analysis by the hearing officer, the key factor in his conclusion that the benefit which Unilever derived from Professor Shanks’ invention was not ‘outstanding’ within the meaning of that word in s.40(1) of the 1977 Act. It may be going too far to say that Unilever was simply ‘too big to pay’, but there is no escaping the fact that Professor Shanks might well have succeeded had his employer had a much smaller undertaking than did Unilever.” The other grounds of appeal were dismissed on the facts. Therefore, Shank’s appeal failed. 56 CIPA JOURNAL

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MARCH 2017

Wobben Properties GmbH v (1) Siemens Public Ltd Company, (2) Siemens Wind Power A/S (3) Siemens AG, (4) Dong Energy A/S, (5) Westermost Rough Ltd (6) Dong Energy Gunfleet Sands Demo (UK) Ltd (7) A2Sea A/S (8) A2Sea Ltd [2017] EWCA Civ 5, 19 January 2017 Kitchin LJ, Floyd LJ and Longmore LJ This decision related to an unsuccessful appeal by Wobben against the decision of Birss J ([2015] EWHC 2114 (Pat)), finding that European Patent (UK) No. 0847496 was invalid and not infringed. The patent in question related to a method of operating a wind turbine, and to a wind turbine, that continuously reduced the output power and rotor speed in dependence on the wind speed when the wind speed became dangerously high. At first instance, Birss J found that the patent was obvious in view of a journal article (Bossanyi). Birss J also found that the defendants’ wind turbine (“HWRT”) operated differently to the claimed invention. In connection with obviousness, Birss J held at first instance that the skilled person would look to the teachings of Bossanyi, which related to out-dated fixed speed wind turbines, and would apply it to modern variable speed turbines. On appeal, Wobben argued that the trial judge had failed to recognise that the skilled person would not implement a reduction of the rotor speed even if he were to apply the teachings of Bossanyi to variable speed turbines. Wobben argued further that the expert calculations on which the first instance decision had been based relied on unjustified starting points and therefore should have been discounted. In dismissing these arguments, Kitchin LJ noted that although the expert calculations were flawed, they should not be discounted altogether. Kitchin LJ noted further that at the time of the priority date, the skilled person applying the teachings of Bossanyi with common general knowledge in mind would readily consider reducing the rotor speed as well as the more conventional practice of reducing the output power. In connection with infringement, Birss J held at first instance that the defendants’ wind turbine reduced the output power and rotor speed at high wind speeds in dependence on the rate of change of the wind velocity, i.e. acceleration, which is distinguished over wind speed. On appeal, Wobben argued that the trial judge had erred in this analysis of the evidence and experts’ reports. In dismissing these arguments, Kitchin LJ noted: “It seems to me that the difficulty [Wobben] faces is that this case depends on the facts and the judge was simply not persuaded that, having regard to the particular way that HWRT operates, filtered rotor acceleration is a surrogate for wind speed.” Floyd LJ and Longmore LJ agreed with Kitchin LJ, and the appeal was dismissed. www.cipa.org.uk

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DECISIONS

IPO decisions Clarity – section 14 Acumen Design Associates Ltd. BL O/031/17 26 January 2017 Editor’s summary: An application for an invention defined by result – an aircraft seating arrangement in which a path lay between the aisle and the second seat of a pair – was permitted as the result could be determined by, e.g. CAD modelling, and specifying all the elements would be unduly restricting. The applicant filed a divisional application, following objection under section 14 being raised in relation to one of the independent claims of the parent application. This claim was deleted from the parent, which then proceeded to grant, and was the subject of the divisional application. The claimed invention defined a seating assembly for use in an aircraft cabin, comprising a pair of seat units that could be arranged in the aircraft cabin such that a path between the aisle and a second seat of the pair was provided when a series of seating assemblies were placed end to end. The examiner objected that this lacked clarity because it was defined in terms of a result to be achieved, i.e. the arrangement of seats required when in the aircraft. The examiner also objected that the claimed invention conflicted with the parent because the same invention was claimed, contrary to section 18(5).

PATENTS: UK IPO

The hearing officer noted that the Manual of Patent Practice (MPP) indicated that claims defined by a result to be achieved were only allowable if the invention could only be defined in such terms and if the result was one which could be directly and positively verified by tests or procedures adequately specified in the description or known to the person skilled in the art. The examiner argued that it was possible to define the subject-matter in a way that avoided reference to the result to be achieved, and that a manufacturer would have to undertake experiments to determine infringement. The applicant argued that the required tests would be straightforward to the skilled person, using CAD software or paper cut-outs. The hearing officer agreed that the experiment would be straightforward, but also considered that the claim could be worded to avoid the result to be achieved. However, he further noted the EPO guidelines on the same topic differed from the MPP, and allowed claims defined in terms of a result to be achieved if they could not otherwise be defined without unduly restricting the scope of the claim. On the specific facts of the case, the claim was sufficiently clear to meet the requirements of the Act. Turning to the consideration of conflict with the parent application, even if claims were linked by a single inventive concept they could still contain different inventions, and section 18(5) only prohibited multiple applications for the same invention. The hearing officer concluded that the parent application and the divisional application were directed to different inventions and did not conflict. The application was remitted to the examiner to complete examination.

Figure 1 of the application (Acumen Design Associates Ltd) Volume 46, number 3

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Element Six Technologies US Corporation BL O/001/17 3 January 2017 Editor’s summary: Evidence of use of Raman spectroscopy in diamonds supported grant of an application for an invention based on the diamond properties being defined by their Raman signals. The application related to a semiconductor device structure having a layer of polycrystalline diamond material, an interface between the diamond and the semiconductor including a diamond nucleation layer, defining properties of the diamond nucleation layer in terms of relative intensities of Raman signals. The examiner objected that the claimed invention was not clear because it defined the invention by means of a result to be achieved, and that it was not supported across its entire scope. The hearing officer first noted that an invention could be defined by a result to be achieved, but only when there was no other way to define the invention. The applicant described the context of the invention and the overall aim of increasing thermal conductivity of the diamond layer, and highlighted the link between the Raman signal, the grain size, and thermal conductivity of the diamond nucleation layer. The hearing officer noted that there was no worked example of the invention in the application showing a Raman spectrum that corresponded to it, but there was a figure showing the correlation between thermal conductivity and a characteristic of a peak of the Raman signal, and a further figure showing where the peaks in the Raman signal lay. This was enough to show that the Raman characteristics correlated with thermal conductivity. Having received further evidence at the hearing that Raman spectroscopy as a means of characterising diamond was well known in the art, the hearing officer concluded that the Raman characteristics in the claimed invention was not some obscure parameter but one that was acknowledged in the art as an appropriate way in which to measure the quality and purity of polycrystalline diamond materials. As such, defining the device by reference to a Raman spectrum in this particular instance was not a definition by result. The hearing officer was further persuaded that there was enough support in the application for the skilled

PATENTS: UK IPO

person to arrive at a device with the necessary Raman characteristics. The claimed invention was thus found to be clear and supported, and the application was remitted to the examiner to complete the examination process.

Opinions – section 74A Opinion 29/16 Glasswall (IP) Limited 30 January 2017 Editor’s summary: US infringement proceedings and hypothetical potential infringements not grounds to refuse to give an IPO opinion. A request for an opinion on infringement was made regarding an EP(UK) patent in relation to two cited products. The proprietor (Glasswall) objected that the request was not allowable because the case was the subject of litigation in the US, and the requester (Clearswift) had other opportunities to challenge the patent. The proprietor also objected that the request was not sufficiently well defined for a sensible opinion to be reached, because the requester had conceded that certain features of claim 1 of the patent were not present but were asking the examiner to assume that they were. In relation to the points regarding the requester’s position in the US and at the EPO, the examiner noted that no opposition had been filed at the EPO and that the US proceedings were not related to the patent in question. The question did not therefore seem to be frivolous or vexatious, nor was it likely to be covered by relevant proceedings. In relation to certain features of the claims not being satisfied by the cited products, the examiner noted that hypothetical products could be the subject of an opinion and that this was a legitimate basis for a request. The examiner proceeded to assess the patent claim and found that neither of these hypothetical products contained all the features in question and would not therefore infringe the patent.

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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DECISIONS

EPO decisions Partial priority – Articles 88(2) and 88(3) EPC G 01/15: Use of cold flow improvers in fuel oil compositions / INFINEUM EBA decision of 29 November 2016 Chairman: W. van der Eijk Members: P. Carlson, I. Beckedorf, C. Vallet, F. Blumer, H. Meinders and W. Seiber This was a referral to the Enlarged Board of Appeal (EBA) by the Technical Board of Appeal (TBA) on appeal from the Opposition Division’s decision to revoke a divisional patent on the basis that the subject-matter of claim 1 was anticipated under Article 54(3) EPC by the application for its parent patent. Claim 1 of the divisional patent was a “generic “OR” claim” which included a chemical formula. This claim was an intermediate generalisation of the disclosure of priority document D16. It therefore did not disclose the “same invention” as D16, which would have entitled the entire claim to priority, nor did it “give rise to the claiming of a limited number of clearly defined alternative subject-matters” as required by the Enlarged Board’s decision of G2/98, which would allow it to claim partial priority from D16. In contrast, the relevant disclosure in the parent application was identical to that in D16 meaning that the parent application was entitled to claim priority from D16 and was therefore Article 54(3) prior art to the divisional patent. Other examples of generic “OR” claims include ranges and chemical compositions, or other generalisations which cannot be written out as “A or B”. The TBA referred five questions to the Enlarged Board of Appeal, the first of which being: “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?”

PATENTS: EPO

The EBA analysed the legal framework of priority rights including Articles 88(2) and 88(3) EPC, Articles 4F and 4H of the Paris Convention and the travaux préparatoires to the EPC 1973 – FICPI Memorandum C, as well as a large number of amicus curiae briefs and concluded that the answer was “no”. The only requirement, even for generic “OR claims, is that the subject-matter for which priority is sought is: “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.” It has therefore moved away from the additional requirement of G2/98, as set out above. As reported in last month’s Journal (page 35), the aforementioned wording of the EBA’s Order in case G1/15 was published on 29 November 2016. The reasons for the EBA’s decision were published on 1 February 2017. In the reasoned decision, the EBA sets out the following steps in order to assess whether a generic “OR” claim may enjoy partial priority: 1. determine the relevant subject-matter in the priority document (in accordance with the established disclosure test in G2/98); and 2. determine whether this subject-matter is encompassed by the claim of the application/patent claiming priority. If the answer to part 2 is yes: 3. conceptually divide the claim into two parts, the first being the part to which you answered “yes” which therefore is entitled to priority, and the second, being the remaining part of the “OR” claim, which is not entitled to priority. Having answered the TBA’s first question in the negative, the EBA did not answer the other questions referred. This decision signals the end to the concept of “poisonous priority” and is therefore likely to be welcomed by patentees, although care will still need to be taken to ensure that the “same invention” test is satisfied.

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 contributor from Bristows was Rachel Mumby.

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DECISIONS

TRADE MARKS

Trade marks Decisions of the CJ and GC Application (and where applicable, earlier mark)

Ref no. GC T-579/14

Birkenstock Sales GmbH v EUIPO 9 November 2016

– surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; suture materials; suture materials for operations; orthopaedic footwear and parts thereof (10) – leather and imitations of leather, and goods made of these materials; animal skins, hides; bags; rucksacks; purses; trunks and travelling bags; umbrellas; whips, harness and saddlery (18) – footwear and parts/fittings thereof; inner soles; clothing; headgear; belts; shawls; neckerchiefs (25)

Reg 207/2009

CJ C-30/15 P

Simba Toys GmbH & Co. KG v EUIPO; Seven Towns Ltd 10 November 2016

– three-dimensional puzzles (28)

Reg 207/2009

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Comment

The GC partially annulled the BoA’s decision that the mark lacked distinctive character pursuant to Article 7(1)(b) in respect of certain goods in classes 10 and 18. The BoA had erred in holding that it was possible for the mark to be used as a raised surface pattern on the packaging of ‘artificial limbs, eyes and teeth’, ‘suture materials; suture materials for operations’ and ‘animal skins, hides’, to enable a more secure grip. Packaging for these goods would merely be for transport purposes, making it unlikely to have a surface pattern for decorative purposes. The BoA therefore incorrectly assessed the distinctiveness of the mark in relation to those goods. It was not unlikely for the remaining goods to have a surface pattern applied for decorative or technical purposes. Given the simplicity of the mark and the infinite number of different designs used for surface patterns, the mark did not depart from the usual practices of the sectors concerned. The relevant public would therefore perceive the mark as a simple surface pattern and not as an indication of commercial origin.

The application to cancel the mark was rejected by the Cancellation Division whose decision was upheld by both the BoA and the GC. Nevertheless, the CJ held that the mark was invalid pursuant to Article 7(1)(e)(ii) as it consisted exclusively of the shape of goods necessary to obtain a technical result. The GC held that the essential characteristics of the mark were a cube and grid structure on each surface of the cube and that this grid structure did not perform any technical function on the basis that inferring the existence of an internal rotating mechanism would not have been consistent with the requirement that any inference of technical function must be drawn as objectively as possible from the shape of the mark as represented. The CJ held the decision was vitiated by an error of law: the GC should have assessed the essential

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

TRADE MARKS

Comment

characteristics of the shape in the light of the technical function of the actual goods, namely a 3-D puzzle. The analysis of the graphic representation could not be made without, where appropriate, additional information on the actual goods (Lego v OHIM, C-48/09P and other cases). This meant that the GC had been wrong not to take into consideration the rotating capability of the puzzle. Furthermore, the CJ noted that the registration would protect all types of 3-D puzzles, regardless of the principles by which they functioned, contrary to the objective of Article 7(1)(e)(ii).

GC T-315/15

Dale Vince v EUIPO 17 November 2016 Reg 207/2009

ELECTRIC HIGHWAY

– transmission, distribution and supply of electricity and gas; transmission, distribution and supply of hydro electricity; storage, transportation and delivery of gas and electricity; transmission, distribution and supply of electricity for vehicles (39)

The GC upheld the BoA’s decision that the mark was descriptive within the meaning of Article 7(1)(c). The BoA was correct to conclude that the services at issue were aimed at professionals working in the field of energy supply distribution and average consumers of electricity and users of electrical vehicles. The GC endorsed the BoA’s assessment that the mark complied with the rules of English syntax. The relevant public would understand it as referring to a road equipped with charging stations for electric vehicles, rather than any metaphorical meaning. The GC confirmed that this interpretation was sufficiently direct and specific to the services at issue, enabling the relevant public to perceive without further thought the nature and intended purpose of those services. It was irrelevant that the mark was not actually put to use in a descriptive way but sufficient that the mark may have been used for such purposes. In light of the above, it was not necessary for the BoA to consider Article 7(1)(b).

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, Sam Triggs, Zain Ali, Rebekah Sellars, and Toby Sears.

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DECISIONS

Application (and where applicable, earlier mark)

Ref no.

GC T-349/15

CG Verwaltungsgesellschaft mbH v EUIPO; Perry Ellis International Group Holdings Limited 24 November 2016 Reg 207/2009

– clothing and accessories namely, swimsuits, jackets, shorts, leotards, swimsuits, swim trunks, casual shirts, shorts, workout pants, warmup shirts and suits, cover-ups, socks, sport bras, sweatshirts, sport shirts, T-shirts, underwear; headwear and footwear (25)

– protective helmets for sports; sunglasses and goggles for sports (9) – clothing; footwear, in particular sports shoes; headgear (25) – protective clothing for sports (28)

TRADE MARKS

Comment

The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks pursuant to Article 8(1)(b). The BoA was right in its conclusion that the goods were either identical or highly similar. In considering the perception to the relevant public (i.e. the general public) of the mark applied for, the BoA had erred in part: it should have held that the words ‘pro player’ were descriptive of the sporting nature of certain of the goods in class 25 and therefore weakly distinctive for those goods. Nevertheless, the error did not affect the BoA’s conclusion that the word element was co-dominant with the figurative letter ‘p’ as, following Xentral v OHIM – Pages jaunes (T-134/06), a weak distinctive character of an element of a composite mark can still constitute a dominant element. Therefore, as the BoA had held, the signs should not be compared solely on the basis of the figurative elements comprising the letter ‘p’. As a consequence, the BoA rightly concluded that there was a very low degree of visual and phonetic similarity between the signs such that there was no likelihood of confusion.

(EUTM & German marks)

GC T-458/15

Automobile Club di Brescia v EUIPO; Rebel Media Ltd 30 November 2016 Reg 207/2009

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– vehicles; apparatus for locomotion by land, air or water (12) – precious metals and jewellery (14) – leather and imitations of leather (18) – clothing, footwear, headgear (25) – advertising, in particular for competitions with electrical vehicles; organisation and arranging of advertising events; commercial sponsoring, also on the Internet; MARCH 2017

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to Article 8(1)(b). The relevant territory was the EU and the relevant public consisted of both the general and professional public. The BoA had not erred in its comparison of the goods and services at issue: ‘advertising, in particular for competition with electrical vehicles’, ‘commercial sponsoring, also on the Internet’ and ‘business management’ in class 35 and ‘sporting and cultural activities’ in class 41 were similar (rather than identical) to services covered by the earlier marks. The GC endorsed the BoA’s assessment of the figurative elements of the mark applied for – whilst essentially decorative, they were not completely negligible in the www.cipa.org.uk

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

Comment

business management; business administration; office functions (35) – education; providing of training; entertainment; sporting and cultural activities (41)

overall impression given by the mark. The BoA was correct to find that the marks were visually similar to a low degree and phonetically similar to a below average degree. Conceptually, the word ‘miglia’ had no meaning for the non-Italian speaking public. Therefore, in light of the average distinctive character of the earlier mark, the BoA was correct to find that there was a likelihood of confusion.

MILLE MIGLIA

– various goods and services in classes 12, 14, 18, 25, 35 and 41

GC T-24/16

Sovena Portugal — Consumer Goods, SA v EUIPO; Mueloliva, SL

FONTOLIVIA

– edible oils and fats; olive oils (29) FUENOLIVA

– virgin olive oil (29) (Spanish mark)

13 December 2016 Reg 207/2009

CAFÉ DEL SOL

T-548/15 T-549/15

Ramón Guiral Broto v EUIPO; Gastro & Soul GmbH

– goods and services in classes 30, 35, 41, 42, 43 and 45

13 December 2016 Reg 207/2009

– services in class 42

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The GC annulled the BoA’s decision to refuse registration of the mark applied for pursuant to Article 8(1)(b). The BoA had incorrectly held that the evidence filed demonstrated that the earlier mark had been put to genuine use in relation to the goods at issue within a substantial part of Spain. Three of the ten invoices did not conclusively show use of the earlier mark, and six of the remaining seven showed sales to a single wholesaler over a period of less than a year. The evidence was therefore insufficient to demonstrate that the earlier mark had been put to use to the required extent and duration. The remaining evidence was tenuous and did not demonstrate serious evidence of public onward use of the mark. The opposition was therefore rejected.

In joined opposition proceedings, the GC annulled the BoA’s decisions that the oppositions were unfounded due to a failure to submit evidence in the language of the proceedings, pursuant to Rule 19 Regulation 2868/95/EC. The BoA held, after it raised the issue of its own motion, that Mr Guiral Broto had not substantiated the scope of protection of the earlier figurative mark as he failed to provide an English translation of the colour claim and the descriptive part of the registration certificate for that mark, as required under Rule 19. The BoA consequently dismissed the opposition pursuant to Rule 20(1), without giving Mr Guiral Broto the opportunity to be heard on the issue of the procedural irregularity. Rule 50(1) and Article 76(2) conferred discretion on the BoA to decide whether to accept supplementary evidence in the event of procedural irregularity. As such, it could not be ruled out that if Mr Guiral Broto had been heard on the issue, a supplementary translation may have been submitted, which may have led to a different outcome. The BoA’s decisions therefore infringed the principle that the parties should be heard. MARCH 2017

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DECISIONS

Ref no. GC

Application (and where applicable, earlier mark) APAX

13 December 2016

– paper, cardboard; printed matter and photography; instructional and teaching material (16) – advertising; business management; business administration; office functions (35) – insurance; financial affairs; monetary affairs; real estate affairs (36)

Reg 207/2009

APAX

T-58/16

Apax Partners LLP v EUIPO; Apax Partners Midmarket

– printed matter and publications of all types (16) – business services, especially business management assistance, commercial or industrial management assistance; business management consultancy (35) – investment activities; financial and monetary affairs (36) (International registration designating Spain)

GC T-2/16

K&K Group AG v EUIPO; Pret a Manger (Europe) Ltd 30 November 2016 Reg 207/2009

– meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables… (29) – coffee, tea… flour and preparations made from cereals, bread, pastry and confectionery (30) – services for providing food and drink in restaurants… food and drink catering (43)

TRADE MARKS

Comment The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to Article 8(1)(b). The BoA was correct to find that ‘photographs’ were similar to ‘printed matter’ covered by the earlier mark as the latter may be entirely devoted to photography. Both kinds of goods shared a common purpose to display text and/or images. The BoA was also correct to find a low degree of similarity between ‘advertising’ and ‘office functions’ covered by the mark applied for and the ‘business management’ services covered by the earlier mark. ‘Business administration’ services in class 35 were held to be similar to ‘business management’ services covered by the earlier mark, as they shared the same purpose and were addressed to the same target consumers. The GC endorsed the BoA’s assessment of ‘insurance’ services in class 36 as being similar to ‘financial affairs’. Given the identity of the marks at issue, the BoA was correct to find a likelihood of confusion on the part of the relevant public.

The GC upheld the BoA’s decision that the mark applied for would take unfair advantage of the distinctive character of the earlier mark, pursuant to Article 8(5). The BoA correctly assessed that the earlier marks had been put to genuine use in respect of certain goods in classes 29 and 30 and services in class 43. The GC held there was a certain visual and phonetic similarity between the marks and that the average consumer in the UK would perceive a link between them. The earlier mark had a ‘very significant’ reputation in the UK and, as a result of the very powerful image produced by the earlier mark (which was inherently distinctive), the mark applied for would take an unfair advantage of the reputation of the earlier mark. The risk was further substantiated by the fact that the earlier mark and its shortened version PRET were recognised by the relevant public as household names.

– snack foods; prepared meals; all being available for immediate consumption (29) – coffee, tea; sandwiches; cakes; prepared meals; all being available for immediate consumption (30) – self-service restaurants; restaurants; cafés; cafeterias; catering services (43) 64 CIPA JOURNAL

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DECISIONS

Trade Marks Court of Appeal dismisses challenge to plain tobacco packaging legislation The Queen on the application of British American Tobacco (UK) Ltd & Ors (“the tobacco companies”) v Secretary of State for Health* Green J; [2016] EWHC 1169 (Admin); 19 May 2016 The CA (Lewison LJ giving the lead judgment) dismissed the appellant tobacco companies’ appeal from an order of Green J dismissing claims for judicial review of The Standardised Packaging of Tobacco Products Regulations 2015 (the “2015 Regulations”), reported in August-September [2016] CIPA 42. The 2015 Regulations restricted the tobacco companies’ ability to advertise their brands on tobacco packaging or upon tobacco products themselves, limiting tobacco product packaging to certain standardised colours or shades. The tobacco companies challenged the 2015 Regulations as unlawful on a number of grounds, including the following:

Trade Mark Directive (TMD) The CA rejected the tobacco companies’ argument that the 2015 Regulations were a breach of the TMD because they, at the least, constituted an interference with the rights or freedoms conferred by a registered trade mark. The CA held that registration of a trade mark did not give rise to a positive legal right to use it. It reached this conclusion because relevant legislation (including the TMD, CTMR and TRIPS) expressed trade mark rights in negative terms, and because the right or freedom to affix a distinguishing sign to goods or to designate services by a distinctive sign existed independently of the registration of any trade mark. The CA rejected the tobacco companies’ first counterargument to this, i.e. that CJEU case law or Article 17 of the Charter of Fundamental Rights of the European Union had turned negative rights into positive rights by virtue of registration. The CA also rejected a second counterargument that a trade mark gave a positive right to use it because an unused trade mark was liable to be revoked. The CA reasoned that genuine use did not require use in the whole of the EU and a mark would not be revoked if there were proper reasons for non-use, which constituted reasons arising independently of the will of the trade mark owner, including government requirements for goods or services protected by the mark.

TRADE MARKS

1. The registration of a design did not give rise to an absolute right to use that design (but merely conferred the right to stop someone else from using it). 2. The use of a design was not prohibited by the 2015 Regulations in any part of the EU; it had only been prohibited for the packaging of cigarettes in part of the EU and so the tobacco companies were free to use their designs throughout the EU (including in the UK) to package anything else.

Article 1 of Protocol 1 (A1P1) of the European Convention on Human Rights (ECHR) Green J had rejected the tobacco companies’ submission that the State had, by introducing the 2015 Regulations, unlawfully expropriated their property rights without offering to pay compensation, contrary to A1P1 of the ECHR. The CA agreed with Green J that this was a question of control of use rather than of expropriation and that therefore a fair balance test was to be adopted when considering whether there was an obligation on the State to pay compensation to the tobacco companies. The CA concluded that the Judge was entitled to conclude that the 2015 Regulations struck a fair balance for the purposes of A1P1.

Community Design Regulation (CDR) The CA rejected the tobacco companies’ argument that the 2015 Regulations were in breach of the CDR because the CDR granted a positive right to use a Community registered design and use could not be prevented in only part of the EU. The CA rejected this submission because: Volume 46, number 3

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Articles 17 and 52 of the Charter of Fundamental Rights of the European Union The CA concluded that whether the restriction introduced by the 2015 Regulations complied with the Charter was resolved by an assessment of proportionality in the context of the objectives pursued by the impugned measure, the importance of the rights they affected, and the extent of the interference. The Charter added nothing material in this respect to the issue of proportionality under A1P1, and the CA held that the Judge was entitled to find that the 2015 Regulations were compatible with the Charter.

Common law The CA agreed with Green J that the common law did not assist the tobacco companies in their attack on the validity of the 2015 Regulations. The tobacco companies relied on case law which concerned the destruction of property in order to argue that the 2015 Regulations were invalid because they made no provision for any compensation. However, as this was a case about control of use rather than destruction of property, the CA rejected this argument.

Incompatibility with CTMR The CA rejected the tobacco companies’ argument that the 2015 Regulations were in breach of the CTMR (now EUTMR) because they denied their CTMs their unitary character and effect across the EU. The CA said that there were three answers to this point: 1. Article 110(2) TMD entitled a member state to use its civil, administrative or criminal law to prohibit the use of a CTM to the extent that the use of a national trade mark may be prohibited under the law of that member state; 2. regulation 13 made it explicit that compliance with the 2015 Regulations would amount to “proper reasons” for non-use both under the CTMR and the domestic legislation; and 3. if there was a flaw in the 2015 Regulations, it lay in regulation 13 which was clearly severable from the rest of the 2015 Regulations.

Competence and compatibility with TRIPS The CA went on to find that the 2015 Regulations were also compatible with TRIPS for the reasons given in the judgment of Green J. It also concluded that the 2015 Regulations fell within the shared competence of the EU and member states because they concerned the functioning of the internal market. Therefore, to the extent that the EU had not “occupied the ground”, the UK was entitled to regulate the packaging of cigarettes.

Green J had rejected the tobacco companies’ complaint that the 2015 Regulations were disproportionate because the

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measures they introduced were not appropriate or suitable for meeting their stated objective of improving public health. He also rejected the argument that the 2015 Regulations were disproportionate because there were other equally effective but less restrictive measures, finding that Parliament had acted reasonably in concluding that there was no equally effective less restrictive measure which met the aims and objectives of standardised packaging. He also went on to reject the complaint that the 2015 Regulations failed to strike a fair balance between the competing interests of the State (invoking public health) and the tobacco industry (invoking private rights to property). While the CA expressed their disapproval of Green J’s proposed process for expert evidence in judicial review proceedings, its criticisms did not affect its conclusion that that the Judge had not erred in law in reaching his conclusion on the general issue of proportionality.

Article 24(2) of the Tobacco Products Directive The CA rejected the tobacco companies’ submissions that the UK government and Parliament failed properly to take into account that the Tobacco Products Directive (TBD2) states that it shall not affect the right of a member state to maintain or introduce further requirements in relation to the standardisation of tobacco products packaging where it was justified, taking into account the “high level of protection of human health achieved through the Directive”. The CA said that specific comparative evidence of the impact of TPD2 and the standardised packaging measures was not required by Article 24(2), and the evidence taken into account by the Secretary of State considered the benefits of standardised packaging, which was plainly an aspect of tobacco regulation which was not covered by TPD2. The CA also went on to dismiss arguments made by appellants who were the producers of the tipping paper that wrapped around the filter of a cigarette, thereby dismissing the appeal on all grounds.

Infringement and passing off actions stop use of Titanic Spa but not use of Titanic Quarter and Titanic Quarter Hotel Liverpool Property Renaissance Ltd T/A Titanic Spa (“Titanic Huddersfield”) v Stanley Dock Hotel Ltd T/A Titanic Hotel Liverpool & Anr (“Titanic Liverpool”)* Carr J; [2016] EWHC 3103 (Ch); 2 December 2016 Pursuant to an Order of Norris J, Carr J heard together:

Proportionality

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1. “The Appeal”: Titanic Liverpool’s appeal from a decision of the hearing officer to revoke its TITANIC QUARTER www.cipa.org.uk

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device mark for non-use (which he allowed). 2. “The IPEC Claim”: a claim by Titanic Huddersfield against Titanic Liverpool for infringement of its TITANIC SPA mark and passing off (which succeeded in respect of past acts but, having regard to steps taken and proposed to be taken by Titanic Liverpool, failed in relation to future acts). 3. “The High Court Claim”: a claim by Titanic Liverpool and Titanic Belfast against Titanic Huddersfield for infringement of various TITANIC QUARTER marks and invalidity of the TITANIC SPA mark (which failed). The Judge granted a declaration that Titanic Liverpool was entitled to use the signs “Titanic Quarter” and “Titanic Quarter Hotel Liverpool” in relation to hotels in the UK. Titanic Huddersfield had, since 2005, run a luxury spa in a Huddersfield textile mill which had been known since 1911 as Titanic Mills and offered overnight accommodation. In 2011, it filed a word mark for TITANIC SPA which was registered for various services in classes 35, 41, 43 and 44. Titanic Liverpool had opened Titanic Hotel Liverpool in 2014 and had advertised the hotel’s “T-Spa”. Following complaints from Titanic Huddersfield it had rebranded the spa as “the Spa” and later as the “Maya Blue Spa”. However, Titanic Huddersfield maintained its claim for trade mark infringement and passing off in respect of both the spa and the use of “Titanic” in the name of the hotel. Titanic Liverpool operated its hotel under licence from Titanic Belfast which was the proprietor of several trade marks for (or which included) the words “Titanic Quarter”, certain of which pre-dated the registration of the TITANIC SPA mark and the opening of the Titanic Spa. Titanic Quarter was the biggest property development scheme ever undertaken in Northern Ireland. Both Titanic Belfast and Titanic Liverpool were operated and controlled by the same individual, who had chosen to expand the Titanic brand from Northern Ireland to Liverpool due to its historic connections with the ill-fated RMS Titanic.

The appeal Carr J found that the hearing officer had erred in refusing to admit further evidence of use of the TITANIC QUARTER device mark. He therefore allowed Titanic Belfast’s appeal and determined a fair specification of services for that mark, having regard to the use which had been made of it.

The IPEC claim Considering whether Titanic Huddersfield’s TITANIC SPA mark had been infringed by the acts of Titanic Liverpool in respect of the Titanic Hotel Liverpool, the Judge found that there was a likelihood of confusion within the meaning of section 10(2) between TITANIC SPA and “Titanic Hotel”/”Titanic Liverpool” because the average consumer might believe it was the Liverpool branch of Titanic Spa. Volume 46, number 3

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He did not accept, as alleged by Titanic Huddersfield, that the dominant and distinctive element of the TITANIC SPA mark was the word “Titanic” and that the word “spa” added no significant level of disctinctiveness to the mark. On the contrary, he considered it to be a composite mark which did not contain any negligible elements. However, he considered there to be a conceptual similarity between TITANIC SPA and the sign “Titanic Hotel” because it was common for hotels to have spas and the average consumer might therefore believe goods or services provided under those names to come from the same or economically linked undertakings. Applying the relevant factors set out by the CA in Maier v Assos [2015] EWCA Civ 220, when considering the question of honest commercial practices in the context of the own name defence, Carr J concluded that Titanic Liverpool was not able to rely on the own name defence under section 11(2). Although it had taken measures to prevent confusion arising, the Judge concluded, on balance, that they had been somewhat belated and there had been instances of actual confusion before the spa had been rebranded. However, the Judge went on to find that, provided Titanic Liverpool undertook to place a prominent notice on its website which made it clear that there was no connection with Titanic Huddersfield and ceased all use of the word “spa” in connection with its hotel, the own name defence should succeed in respect of the future.

The High Court claim As the Judge had rejected Titanic Huddersfield’s wide claim, to the effect that it could monopolise all use of the word “Titanic” in the name of a hotel, the “squeeze” advanced by Titanic Belfast by way of a counterclaim failed. He further went on to find that there was no likelihood of confusion between the Titanic Quarter marks and the “Titanic Spa” sign, and therefore the challenge to the validity of the Titanic Spa mark failed. The Judge accepted that Titanic Huddersfield had acquired goodwill in the name “Titanic Spa” in relation to the provision of spa services with temporary accommodation, but did not accept that it had acquired a substantial goodwill throughout the UK in the mark “Titanic” alone. He considered that, before the rebranding, there was an actionable misrepresentaion by Titanic Liverpool which was evidenced by instances of both “wrong way round” and “right way round” confusion. However, once Titanic Liverpool had taken its proposed steps to avoid a likelihood of confusion, he found that there would be no passing off. Concluding that it would serve a useful purpose, the Judge granted a declaration sought by Titanic Belfast and Titanic Liverpool that they were legitimately entitled to use the signs “Titanic Quarter” and “Titanic Quarter Hotel Liverpool” and a device mark incorporating “Titanic Quarter”. MARCH 2017

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Groundless Threats Nvidia Corporation & Ors v Hardware Labs Performance Systems Inc* Mann J; [2016] EWHC 3135 (Ch); 6 December 2016 Mann J allowed an application by Hardware Labs Performance Systems (HLPS) for summary judgment or striking out of Nvidia’s claim for groundless threats. Nvidia Corp was the parent company of the Nvidia Group, of which the other 11 claimants were subsidiaries based around the world. Of those that were relevant, three were English, and two were German. The Nvidia Group manufactured and sold hardware for generating graphics in computers, and used the designations GTX and GTS in that regard. HLPS was a Philippine corporation which claimed to be a pioneer in the computer watercooling industry and owned three EUTMs for GTX, GTS and GTR in various classes. HLPS’s German attorneys sent a letter, written in English, to Nvidia Corp at its California address. Nvidia claimed that this amounted to a groundless threat of proceedings in the UK under section 21, and HLPS applied for summary judgment and striking out of Nvidia’s claim. The Judge agreed with the dicta of Mr Stephen Jourdan QC, sitting as a deputy judge in Tech 21 UK Ltd v Logitech Europe SA [2015] EWCH 2614, that it was appropriate to consider whether a letter threatening proceedings would have been understood by a reasonable recipient, who had received correct legal advice on the provisions governing where proceedings for infringements of the relevant rights could be brought. However, Mann J was of the view that the letter in the present case did not contain enough legal technicalities to even require legal explanations to be given, as he thought that it was clear on its face that the letter as a whole did not threaten proceedings outside of Germany. While the letter was addressed to the parent company of the Nvidia Group which suggested a world-wide approach, examples provided of alleged infringing trade mark use were examples of the parent acting through its German subsidiary. There was no explicit or implicit reference to proceedings in the UK and a reference to a potential panEuropean injunction was not sufficient to replace what had already been said in the letter. The Judge therefore found that it was sufficiently clear without the need for a trial that the letter sent to Nvidia on HLPS’s behalf did not contain a threat to sue in the UK. Mann J went on to dismiss for lack of good reason Nvidia’s application to stay its claim for a declaration of non-infringement. He also rejected HLPS’s application for the remaining proceedings to be transferred to IPEC or to be run in the shorter trial scheme, because the proceedings were too substantial.

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Passing Off Professional reputation distinct from goodwill Juthika Bhayani v Taylor Bracewell LLP (“TB”)* Judge Hacon; [2016] EWHC 3360 (IPEC); 22 December 2016 Judge Hacon allowed Taylor Bracewell’s application for summary judgment in respect of Ms Bhayani’s claim for passing off. However, the application for summary judgment did not succeed in relation to Ms Bhayani’s claim to revocation of TB’s trade mark for BHAYANI BRACEWELL. Ms Bhayani was a solicitor of some note at a firm in Sheffield, specialising in employment law. She was invited to join TB as a salaried partner to expand the employment law side of their business. She entered into both a contract of employment and partnership agreement with TB, in which it was agreed that the firm would offer services under the name ‘Bhayani Bracewell’. TB subsequently registered a UK trade mark for BHAYANI BRACEWELL. After the breakdown of her relationship with TB, Ms Bhayani left and set up the second claimant, Bhayani Law Ltd, which specialised in employment law. For a time, TB continued to offer employment law services under the Bhayani Bracewell name, and Ms Bhayani claimed that TB had, in this and other respects, falsely represented that she was still involved with the business. The Judge found that the professional acts Ms Bhayani had carried out which had earned her the reputation she enjoyed were done either in the course of the business of her previous firm or that of TB. Therefore, the relevant goodwill vested in those firms and not Ms Bhayani. Ms Bhayani’s personal reputation had to be distinguished from goodwill, which was required to form the basis of a claim for passing off, and it was long-established that goodwill generated by the activities of employees in the course of their employment vested in the employer and that, likewise, goodwill generated in the course of duties carried out within a partnership vested in the partnership. (However, the Judge distinguished this from goodwill generated by acts done outside duties to the employer or partnership, citing Irvine v Talk Sport [2002] EWHC 367. He also observed that if a solicitor moved from firm A to firm B and firm A represented that the solicitor was still an employee or partner, then the goodwill associated with the name of the solicitor would vest in firm B and would provide a cause of action. In the present case Ms Bhayani’s new firm was not pursuing a claim in passing off and this was therefore not relevant). Judge Hacon therefore held that Ms Bhayani had no realistic prospect of establishing that in law she owned goodwill on which to base a case of passing off against TB. However, he found that Ms Bhayani’s claim for revocation of the BHAYANI BRACEWELL trade mark under section 46(1)(d) (i.e. that it was liable to mislead the public to believe that Ms Bhayani was still associated with TB) had a realistic prospect of success and therefore the application for summary judgment did not succeed. www.cipa.org.uk

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Copyright Additional damages Phonographic Performance Ltd v Raymond Hagan & Ors* Judge Hacon; [2016] EWHC 3076 (IPEC); 30 November 2016 Also see January-February [2017] CIPA 11 Judge Hacon awarded Phonographic Performance Ltd (PPL) additional damages in the sum of £2,000 under section 97(2) CDPA for infringement of copyright by Mr Hagan. Mr Hagan was found to have infringed copyright in sound recordings by the playing of those recordings without a licence from PPL in two bars of which he was the premises licence holder. PPL sought additional damages under section 97(2) and claimed damages arising from unfair profits pursuant to Article 13(1) of the Enforcement Directive. Both required knowledge on the part of Mr Hagan that he was infringing and the Judge found that this condition was satisfied because: 1. Mr Hagan had previously held a licence from PPL and therefore by implication knew how the system worked; 2. he was sent various letters by PPL’s solicitors; 3. infringement continued after Mr Hagan was given notice of the proceedings; and 4. it was widely known among those in the hospitality industry that it was necessary to obtain a licence from PPL in order lawfully to play recorded music in public.

the music played in his pubs, he would have been entitled to benefit in this way had he paid the licence fee, which he had now paid. Therefore, the Judge was of the view that damages had already been awarded in this respect. The Judge observed that the focus in Article 13(1) was on prejudice suffered by the rightholder, not how flagrantly the defendant had conducted himself – although he said that Article 13(1) may be flexible enough to take flagrancy into account. He considered that PPL was entitled to further relief on account of Mr Hagan’s flagrancy under section 97(2), taking into account that an important factor was the extent to which an award of additional damages was likely to be dissuasive (whether to the defendant or other actual or potential infringers), as required by Article 3 of the Enforcement Directive. Given that Mr Hagan was bankrupt and had been described as illiterate and an alcoholic, the Judge awarded just £2,000 to PPL under section 97(2). However, he said that other flagrant infringers may require a good deal more dissuading and were therefore liable to expose themselves to an award of additional damages on a higher scale.

Part 36 offers in IPEC Applying by analogy a recent decision of the CA in Broadhurst v Tan [2016] EWCA Civ 94, a road traffic accident case, Judge Hacon held that rule 36.14(3)(b) of the CPR overrode rule 45.31, concluding that the limit on costs in the IPEC, both stage costs and the overall cap, did not apply to an award of costs under rule 36.14(3)(b), i.e. an award of costs to the claimant on the indemnity basis from the date on which the relevant period expired.

Judge Hacon recapped the relationship between section 97(2) and Article 13(1) as he had discussed in Absolute Lofts South West London Ltd v Artisan Home Improvements Ltd [2015] EWHC 2608 (IPEC), i.e. Article 13(1) provided an EU-wide baseline minimum of protection for owners of IP rights, so where it provided for more extensive remedies than section 97(2), a successful claimant could rely on that article. To the extent that section 97(2) provided the greater remedy, the copyright owner could rely on that section. However, it did not follow that national law and the Directive could be cumulatively applied to double-up damages. Due to the overlap between the relief provided by section 97(2) and the unfair profits provision of Article 13, the Judge said that in practice this would mean choosing between one and the other. However, separate relief under Article 13(1), in particular that related to non-economic factors, would always be additionally available in the (limited) circumstances in which it was appropriate. Non-economic factors did not arise in the present case, and the Judge concluded that PPL had already been compensated for its financial loss by payment of the licence fees that Mr Hagan should have paid. As regards unfair profits, although Mr Hagan had benefitted indirectly from Volume 46, number 3

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CPD & EDUCATION

INSTITUTE EVENTS

Institute Events For more information and to book onto any event please see the CIPA website or email cpd@cipa.org.uk Thursday, 9 March 2017 Seminar

East of England CPD Meeting 2017 and 819th OGM

Time: 12.30–17.00pm Location: Hilton Cambridge City Centre, 20 Downing Street, CB2 3DT Join us at the Hilton Cambridge City Centre for the 2017 East of England Meeting. This meeting will include talks on a range of topical issues, and give plenty of networking opportunities throughout the day. See www.cipa.org.uk/ whats-on/events for more details.

Thursday, 16 March 2017 Social

Manchester Happy Hour

Time: 17.30–19.30pm Location: Liquorice Bar, Manchester, 50 Pall Mall, Manchester, M2 1AQ Join us in Liquorice Bar 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: 3.5; Prices: £234 (members £156) Tuesday, 21 March 2017 Webinar

Wednesday, 15 March 2017 Seminar

IP, Brexit and Beyond – Opportunities and Challenges

Time: 12.30–17.00pm Location: CIPA Hall, London, WC2A 1DT A joint CIPA and IPAN seminar. Discussion of the impact of Brexit on UK trade and industry is high on the national agenda as the Government prepares to trigger Article 50 of the Lisbon Treaty in March. Whole sections of industry and commerce may be left with inadequate or no IP protection unless the UK’s position post-Brexit is carefully addressed. IPAN is providing a timely platform to discuss the IP issues for different sectors of the UK economy – opportunities and challenges – at its Brexit IP Event. Early booking is essential as numbers will be limited. Email ipan@cipa.org.uk to reserve your place. CPD: 3.5; Prices: £234 (members £156)

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MARCH 2017

Canadian Patent Practice Time: 16.00–17.00pm

This Update on Canadian Patent Practice will include a review of recent developments, including tips on avoiding some traps peculiar to Canada, in the following practice areas: Utility requirement – the doctrines of false promise and sound prediction; Double patenting; Patentable subject-matter – Canadian Intellectual Property Office guidelines; Patent agent privilege; Patent team extension; and New industrial design office practices. CPD: 1; Prices: £72 (members £48)

Thursday, 23 March 2017 Seminar

The Merseyside Meeting 2017

Time: 12.30–20.00pm Location: Double Tree Hotel, 6 Sir Thomas St, Liverpool, L1 6BR

Join us for this year's Merseyside meeting at the Double Tree Hotel Liverpool. An afternoon conference, with confirmed

speaker Michelle Sutton (Damar Training), additional speakers and a full programme can be seen online. CPD: 3.5; Prices: £234 (members £156)

Tuesday, 28 March 2017 Webinar

US PTAB Trials

Time: 12.30–13.30pm Launching, conducting & defending against a post-grant attack at the USPTO: strategies for surviving at the PTAB. There have been more than 1,000 decisions on petitions for inter partes review (IPR) during the past three years from the Patent Trial and Appeal Board (PTAB) of the USPTO. This seminar will provide guidance on navigating the process and developing practical strategies to both defend your IP and attack a third party. The programme will also examine the role of post-grant proceedings as a component of a litigation strategy. CPD: 1; Prices: £72 (members £48)

Thursday, 6 April 2017 Seminar

The York Meeting

Time: 12.30–18.30pm Location: The Principal York, Station Road, York, YO24 1AA This year we will be holding the annual regional meeting in The Principal York Hotel; you can expect talks from Louise Edwards, Jane Lambert, David Bloom and an update from the IPO. Do not miss out on a fantastic opportunity to pick up three CPD points as well the chance to network with other IP professionals in the region. CPD: 3; Prices: £234 (members £156) www.cipa.org.uk

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CPD & EDUCATION

Monday, 10 April 2017 Webinar

Outside your comfort zone: software and patenting Time: 12.30–13.30pm

Michael Williams, partner at Cleveland, will present a talk about how the EPO treats applications in the software area. Michael will provide some examples and compare with the situation in the UK and the US, followed by some practice tips. CPD: 1; Prices: £72 (members £48)

Tuesday, 25 April 2017 Webinar

IPO opinions service and revocation of patents Time: 12.30–13.30pm

The IPO's patent opinions service allows parties to get an impartial opinion on matters relating to the infringement or validity of patent. The webinar will provide an update on how the service is being used and also provide advice to parties thinking of requesting an opinion or considering how and if to make observations. Phil Thorpe will also review recent changes to the service in particular the possibility now for the IPO to revoke patents after a patent opinion has been issued. CPD: 1; Prices: £72 (members £48)

Thursday, 18 May 2017 Seminar

The Scotland Meeting 2017 Time: 12.30–18.30pm Location: Hilton Glasgow Grosvenor, 1-9 Grosvenor Terrace, Glasgow, G12 0TA

This year we will be holding the annual regional meeting in Hilton Glasgow Grosvenor; you can expect talks from Pippa Allen of Appleyard Lees on the UPC and Unitary Patent, amongst others. Do not miss out on a fantastic opportunity Volume 46, number 3

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to pick up three CPD points as well the chance to network with other IP professionals in the region.

up for the course, contact cpd@cipa.org.uk. Places are limited, so do not delay. Price: £468

CPD: 3; Prices: £234 (members £156)

Friday, 26 May 2017 Webinar

UK & EU Competition Law Time: 12.30–13.30pm

This webinar will give a brief introduction to the interrelationship of patent law and competition law and the legal framework for the latter. It will then give a round-up of the recent case law before the competition authorities and courts, including on licensing and no-challenge provisions (Genentech – Court of Justice), exclusive patent licensing terms (Qualcomm investigations) and patent settlement agreements (e.g. Citalopram – General Court; Paroxetine – Competition and Markets Authority), amongst others. In each case, the webinar will focus on practical issues for practitioners, and will seek to raise awareness of when competition law intervention may be a risk. CPD: 1; Prices: £72 (members £48)

Monday, 19 June 2017 Seminar

EPO Oral Proceedings 2017

Time: 08.00–17.00pm Location: Hallam Conference Centre, 44 Hallam Street, London, W1W 6JJ Our course is in two parts. The first is a remote learning module, in the form of pre-recorded webinars and an accompanying printed training manual. This part can be completed any time within a two-month window, at the student’s convenience. The second part is a one-day workshop which will take place in London on Monday, 19 June 2017. The workshop includes two mock hearings, one before an “examining division” and one before an “opposition division”. For more information, or to sign

Tuesday, 20 June 2017 Webinar

How to liaise with in-house attorneys: life on the inside Time: 12.30–13.30pm

Book onto our webinar to listen to David Galaun from Cisco Systems who will be informing us what it is like to work as an in-house attorney at a large tech company. CPD: 1; Prices: £72 (members £48)

Thursday, 28 September 2017 Conference

Congress 2017 Navigating to the future…

Location: Glaziers Hall, 9 Montague Close, London SE1 9DD Following the success of CIPA Congress 2016, the Congress Steering Committee are hard at work putting together a programme that will not only provide great CPD at an affordable price, but will also supply you with high-quality speakers. We are pleased to announce that we have already confirmed Benoît Battistelli, President of the European Patent Office, and Sir Mike Pitt, Chairman of the Legal Services Board, as speakers at this event. For more details see www.cipa.org.uk/ whats-on/events. CPD: 8; Prices: Please e-mail cpd@cipa.org.uk for details of rates.

16th & 17th November 2017 Conference

2017 Life Sciences Conference

Location: Whittlebury Hall, Whittlebury, Northamptonshire, NN12 8QH More details to follow. MARCH 2017

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NOT-SO-SECRET DIARY

OCTOBER 2015

2015

The not-so-secret diary of a CIPA President

By Andrea Brewster

SEPT

Today I am being Regal and Statesmanlike for a visiting delegation of Korean attorneys. Apparently it is important that our visitors meet the President herself, even if the President herself is covered in

straw. I excel myself. I smile graciously and shake hands and nod my head and collect business cards, and I am careful to read the business cards before slipping them into my pockets with the straw. Every now and then, I make little speeches thanking everyone for being so lovely. I accept some beautiful Korean gifts and nod some more and I have my photo taken holding the gifts and smiling from ear to ear. Mr Lampert tweets the pictures. In return, we give the Korean visitors CIPA pens. The CIPA pens are a little old and the ink has dried out inside them. This may not be classy, but it is at least fully compliant with the Bribery Act 2010. Then we tell them about IP in Europe, and they tell us about IP in Korea, which is getting more like IP in Europe all the time, except more efficient. Tomorrow, they are going to visit the French patent attorneys. And after that, the German patent attorneys. So I am glad they have CIPA pens to remind them who is best in Europe.

I go to CIPA Congress. You can see my not-so-secret report of it in the November 2015 CIPA Journal, page 53.

SEPT

No sooner have I delivered my Congress opening speech, than I am required to write more. I continue to find it bewildering that a liability such as myself OCT should be allowed to go out into the world and make speeches on CIPA’s behalf. I can only think that the sooner Mr Lampert finishes our new Communications Strategy, the better, because although the Strategy will say lots about going out and being shouty, surely it will also say something about the quality of

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the shouting? One of the speeches is to welcome a new judge to the High Court. I have only met this judge once, and I have never been to the High Court. But unqualified for it or not, this is just one of the things that the CIPA Pee has to do. It’s the Law.

Today’s Congress Steering Committee meeting takes the form of a “debriefing”. A month ago, we all swore blind we would never do another CIPA OCT Congress ever again. Today we say, Yeah, that was fun, let’s do another one, only let’s make it bigger and better than ever before. People have short memories. Later, after this month’s Council meeting, we have drinks with the CIPA staff, to give them the chance to meet Council members and see for themselves why I get so terrified on the first Wednesday of every month. Several of these charming Council members take the opportunity to tease me about my “Welcome Your Judge-ness” speech tomorrow. They tell me I will have to wear a gown for the occasion. They tell me we have some gowns at CIPA for exactly this purpose. The gowns are way too big for me. When I put one on, as the others insist I do, the overall effect is of a pile of black curtain fabric that has landed heavily on a little person and made them even littler. So in the evening I email the ITMA President, who is also making a speech tomorrow, to confer about sartorial arrangements. We agree that gowns are overrated.

I go to court. Several barristers from the wigs-and-gowns section of the room make witty and confident speeches in posh accents. OCT Eventually it is my turn to stand up, wig-less and gown-less and un-posh, to say something on behalf of CIPA. I say: My Lord (because this is how you address a High Court judge – see, I have done my homework), welcome to your new job. I say:

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I don’t know anything about you myself but some other patent attorneys who’ve worked with you think you’re a thoroughly nice man. I say: From a patent attorney, that is praise indeed. There is some polite sniggering in the wigs-and-gowns section, which the person doing the shorthand later records as “(Laughter.)” I say My Lord, you are renowned for your expertise with vacuum cleaners. And parts thereof. (Laughter.) I say My Lord, the UK is a centre of excellence in all things IP-related (I am wittering by now) and that, My Lord, is mainly due to our fantastic IP judges, and we are glad you are going to be a fantastic IP judge now too. The new judge – who is wearing a red gown but still looks a little bit like a load of curtain fabric has landed on him – says Thank you very much. He means Thank you for stopping, not Thank you for starting.

I am on my second teleconference of the day. It is a meeting of the Internal Governance Committee, or IGC for short. And it is a serious one, because one OCT of the functions of the IGC is to make sure the Officers behave responsibly. It usually discharges this most vital of its duties by not asking what the Officers are doing and being glad they are getting on with it quietly. But when someone makes a complaint, the IGC must spring into action. And a complaint has been made, because I have decided to do something I thought was in the Presidential job description, without getting permission from anyone first. There is an implication that I am untrustworthy. Well of course I am untrustworthy: everyone knows that. Someone who writes a diary like mine, and makes it available for public inspection, should not be trusted with so much as a paper clip, let alone an entire presidency. It is terrifying that I am in this job at all. For everyone concerned.

OCTOBER 2015

I have been to various Women in IP events, and often they are quite macho affairs. Often they involve women demonstrating to one another that they are as good as men, which they do by being much like men except a bit better dressed. Today’s event is different. It is, in the nicest possible way, very feminine and very maternal. There is frequent and warm applause. Even mentioning that you are the CIPA President causes a polite ripple of appreciation, although in a rather confused kind of way because not everyone in the audience has heard of CIPA and those that have are struggling to believe that its President does pantomime sketches. Unfortunately, the women who have already come across IP don’t regard it that highly anyway: they think that if the IP system had been set up by women, it wouldn’t be all about keeping things to yourself, it would be about publishing and sharing and swapping ideas. Actually I suspect that if women had been put in charge of setting up an IP system, they would have scrapped the idea completely and done something useful instead.

I travel to Munich. There I meet with the VeePee and the EyePeePee and Mr Davies and Mr Roberts, and we all O CT catch the S-Bahn to our hotel. Mr Davies is in charge of buying the tickets, but luckily we don’t get found out. In the evening some epi folk take us for a traditional Bavarian meal. Bavarian food is like normal food but on steroids. Whole animals have been sacrificed for the side orders alone. I am served a dumpling that must have been cooked in a cauldron. During the meal, Mr Davies practises his German, which he learnt from watching It’s A Knockout. “Links, links, gerade aus, links, rechts!” he shouts. As a result, it takes me twenty minutes to find the ladies’ loo. During this twenty minutes, another half a pig arrives by way of an amuse-bouche, which in German translates as Ein Mundlachenmachenvorspeiseereignis and is, therefore, a bit of a mouthful in all senses of the word.

The CIPA delegation, still digesting last night’s dinner, trundles off to meet with some high-ranking EPO OCT officials to talk about Things the UK Profession Would Like to Change. We have been told what to say by the CIPA Patents Committee. The EPO are largely unimpressed. No, they cannot give us any more legal certainty over the e-Drex. No, they cannot update the Guidelines to flag which bits are likely to change because of new case law. And no, despite the shortage of

I attend a conference of women inventors and innovators. I give them an inspiring talk about the differences between men’s and women’s behaviour OCT and about women reclaiming their share of the floorspace and the airspace and having the courage to be themselves. Unfortunately, when I was planning my speech I did not realise there would be men in the room too. I cut short my pantomime sketch about what happens when a bloke sits next to a woman on a crowded train.

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

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English-speaking examiners, they are not prepared to recruit people who are too lazy to learn any other languages. OK, so perhaps that last question was a little bit tactless. Lunch follows, with HRH The President Battistelli. It is a super lunch, and fortunately not too Bavarian. The President graciously talks his way through it so as to leave us free to enjoy our food. Now and then I make little noises of agreement, because I am also a President, but I do not think my input is particularly valuable and on this at least I believe I have President Battistelli’s full support.

OCTOBER 2015

Even though it is Sunday, I spend all day dealing with emails. Mainly the emails are about organising meetings and travel plans and seminars. OCT There are many types of meetings: round-table; breakfast; formal; informal; plenary. They sound like different types of biscuits. I do not have permission for any of them.

Book now for the East of England Meeting Date: Thursday, 9 March 2017 Time: 12.30-17.00pm Location: Hilton Cambridge City Centre Speakers: Alex Turnbull, TLIP Ltd; Rt. Hon. Professor Sir Robin Jacob, 8 New Square; Alex Gardiner, European Patent Office; Belinda Gascoyne, IBM UK Ltd; Sally Curran, AstraZeneca; Alex Gardiner, EPO.

CIPA’s East of England representative, Parminder Lally (TLIP Ltd) has organised the annual East of England meeting, which is taking place on Thursday 9 March 2017, from 12:30 to 17:00. The meeting is being held at the Hilton Cambridge City Centre, and will be followed by a happy hour open to all CIPA members in the region. Parminder has put together a programme featuring a diverse group of speakers hailing from different areas within the IP professions, who will cover an equally diverse range of topics.

The programme for the meeting is as follows: 12:30 13:30 13:40 14:20 14:50 15:30 15:50 16:30 17:00

Registration, buffet lunch and networking Welcome and introduction – Alex Turnbull, TLIP Ltd ADR and mediation in IP matters – Rt. Hon. Professor Sir Robin Jacob, 8 New Square Computer-implemented inventions: the EPO v. the USPTO – Alex Gardiner, European Patent Office Drafting and prosecuting in the UK/EP in view of US litigation – Belinda Gascoyne, IBM UK Ltd Refreshment break Open innovation in pharma and the impact on IP – Sally Curran, AstraZeneca EPO streamlined opposition proceedings: impact on procedure and practical tips – Alex Gardiner, European Patent Office 819th Ordinary General Meeting (OGM) of the Chartered Institute Drinks reception / CIPA Happy Hour (open to all)

CPD: 3.5 hours  Price: Non-Member £234.00; Member £156.00 For details and booking visit www.cipa.org.uk/whats-on/events 74

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Patents Case Law Review of the Patents Case Law Seminar, Bristol on 28 November 2016

he Patents Case Law road show kicked off at the Brigstow Hotel in Bristol, where over 60 attendees gathered to be updated on this year’s main patent decisions of the UK courts, and UK, EP and US patent offices. After an introduction by the Chair, Andrew Teuten of Sagittarius IP, Dr Jon Markham of Beck Greener gave us a run-down of the topten decisions by the UK courts in 2016, covering topics as diverse as the scope of discovery in court proceedings, the relevant time zone determining date of disclosure, and the squeeze between plausibility and obviousness. Perhaps unsurprisingly, the number one spot was taken by Warner-Lambert v Actavis and Others, otherwise known as “the Lyrica saga”. Jon fleshed out the informative slides with interesting contextual details before whisking off on his way to the Hague. Next, James Porter, Deputy Director at the IPO, summed up this year’s patent decisions by the Comptroller. As usual, the bulk of the decisions on inter partes matters had related to entitlement, and the majority of the ex parte decisions had dealt with excluded matter (with none of the 21 decisions on this topic resulting in allowance). A particularly interesting feature of James’ presentation was his discussion of how the IPO is exercising the Comptroller’s new power to revoke on the basis of a negative opinion on validity. The IPO is only proceeding to revocation in cases where the lack of novelty/ inventive step is sufficiently clear cut, to get manifestly bad patents off the register. James’ advice to those faced with revocation after a negative opinion is to tackle the underlying validity problem rather than arguing on the issue of whether or not lack of validity is “clear cut”. After the coffee break, Timothy McAnulty of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP brought us up to speed on the main patents case law in the US in 2016. Timothy concentrated mainly on selected decisions by the US Supreme Court and by the Court of Appeals for the Federal Circuit, while also providing interesting remarks and statistics on the work of the Patent Trials and Appeals Board. A significant Supreme Court decision, made in a case consolidating claims by Halo Elecs Inc and Stryker Corp, saw the Supreme Court

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rejecting the two-part test for enhanced damages that had been set out in the earlier Seagate decision. So US district courts should now feel freer to award enhanced damages when they deem it appropriate. The afternoon held a moment of drama when James Porter intervened to announce that he was now free to inform us that Baroness Neville-Rolfe, UK minister for Intellectual Property, had notified the Competitivity Council of the EU that the United Kingdom intends to ratify the Agreement on the Unified Patent Court. Hot on the heels of this exciting news came Dr Ewan Nettleton of Novartis Pharma AG and Dr Dominic Adair of Bristows LLP to summarize 2016’s corpus of jurisprudence from the EPO Boards of Appeal. Although the Enlarged Board of Appeal had been pretty quiet during 2016 there had been another of the rare successful reviews (R2/14) of a Technical Board of Appeal decision, and a new referral regarding disclaimers and added matter (G1/16 based on T437/14). Ewan took us through a few more decisions on substantive law (method and use claims, inventive step) before handing over to Dominic to cover decisions dealing with procedural matters. Despite slim pickings this year in terms of decisions on procedural matters, Dominic managed to find several cases with interesting elements. Of note to practitioners who are not located near Munich or Rijswijk is decision T2068/14 (Psion Inc) related to a UK-based practitioner’s desire to ensure that an oral hearing would be held by video conference. In response to remarks arguing that it was onerous for the representative to be forced to travel to the EPO’s premises, the Board made the somewhat troubling remark that: “The applicant chose to appoint a representative whose place of business was not near to the EPO’s premises” (TBA’s reasons at 1.2.5). All of the speakers had a great command of their material and this annual summary of jurisprudence remains one of the unmissable CIPA events of the year. Y. Suzanne Orian (Fellow), Cabinet Beau de Loménie MARCH 2017

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IP Outside Your Comfort Zone: Trade Marks CIPA webinar report, 11 January 2017

ophie Maughan’s (Scott & York IP Law) interesting presentation was a refresher for those not routinely involved in trade mark work. Topics covered included the registration process, passing off, trade marks and passing off in relation to product ‘get-up’, and some law changes in the pipeline. Sophie concentrated specifically on UK law, and EU law as it applies in the UK.

What is a trade mark? A trade mark is a sign which distinguishes the goods or services of a trader from those of other traders (an ‘indication of origin’). Any trade mark can be acknowledged ™, but only registered marks can use the ® acknowledgement. A key feature of trade marks is that they are renewable indefinitely, usually for ten-year periods: a powerful right.

Registrability Marks can be ‘traditional’ words, phrases, letters, numerals, acronyms or logos. It is also possible to register non-traditional marks such as shapes, sounds, colours, packaging, position marks and smells. Under EU law, to be registrable a mark must be ‘capable of being represented graphically’. This requirement will be removed, effective 1 October 2017, following which: ‘signs can be represented in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective’. EU member states will have until 14 January 2019 to implement this change. Following Brexit, the UK will need to either retain the requirement, or harmonise with the EU.

Process A pre-filing clearance search can be performed to check whether there is any risk of infringing third party rights, or existing marks which might present a bar to registration. An application must include a representation of the mark and a description of the goods/services to be covered. Goods (classes 1-34) and services (classes 35-45) are split into 45 sections under 76 CIPA JOURNAL

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the Nice Classification system. Each class summarises the types of goods/services falling within the ‘Class Heading’, but it is not an exhaustive list. Prior to 2012, the Class Heading summary indicated that an application covered all the goods/ services in that class. This was considered to be unclear for third parties. A UK test case brought by CIPA and taken to the CJEU (‘IP Translator’) clarified that use of a class heading does not automatically cover all the goods or services in that class. For example, an application covering clothing, footwear, headgear (class 25) does not afford protection to insoles, which would need to be listed separately.

Examination A mark will be refused registration if it is devoid of distinctive character, is descriptive of the goods/services, or is a term commonly used in the trade to which the goods/services refer. It may be possible, however, to register a descriptive or non-distinctive mark if it can be shown to have acquired distinctive character through use. Certain objections cannot be overcome, even with evidence of acquired distinctiveness through use. A mark will be rejected if it consists exclusively of the shape, or another characteristic: 1. which results from the nature of the goods. 2. which is necessary to obtain a technical result. 3. which gives substantial value to the goods.

Passing off In the UK, the common law right of passing off allows owners of unregistered trade marks to contest use of an identical or similar mark. A leading case, Reckitt & Colman Ltd v Borden Inc [1990] known as the ‘Jif Lemon’ case, set out the tests for passing off, where the onus is on the claimant to demonstrate three elements (‘classic trinity’): • •

the mark has acquired goodwill and reputation in the relevant marketplace; an intentional or unintentional misrepresentation has occurred, leading to confusion by the relevant public about the source of the goods; www.cipa.org.uk

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INSTITUTE EVENTS

Trade marks v designs

damage to goodwill has resulted.

An equivalent remedy outside the UK is the unfair competition law.

For certain products, it might be appropriate to seek both trade mark and design registration. Certain features of marks vs designs were compared in the table below.

Beneﬁts of registration

Cases relating to get-up

It is generally easier and cheaper to enforce a registered mark than an unregistered mark (via passing off ). For a registered mark, there is no requirement to prove a reputation or demonstrate goodwill in the mark. In addition, presence on the register alerts others to the existence of a mark and may deter them from selecting an identical or confusingly similar mark.

Sophie reviewed some interesting cases relating to get-up and lookalike products.

Non-traditional marks It is very difficult to register olfactory marks. UK application No. 2,000,169 covering ‘the smell, aroma or essence of cinnamon’ in relation to furniture was refused because the description was considered to be too imprecise. Sophie shared some interesting examples of registered non-traditional marks: the sound mark EU012438628 – the 20th Century Fox fanfare depicted in the registration as a sonograph; the colour marks EU003793361 – a particular Pantone purple, registered for foodstuffs for cats and milk for cats and EU004381471 – specific combination of blue and silver Pantones; the position marks EU008845539 – the colour red applied to the sole of a shoe, EU009045907 – a colour combination, red, black and grey applied to specific parts of a tractor, and EU000001991 – the colour green applied to specific areas of a garage forecourt display; and the animated/movement mark E013225107 – which shows how a mark moves or changes.

Successful passing off cases: • Edge v Niccolls [1911] – the Dolly Blue (laundry-blue whitening products) case • United Biscuits v Asda [1997] – Penguin and Puffin biscuits: based largely on potential confusion of origin. Unsuccessful passing off cases: • Moroccanoil Israel v Aldi [2014] – Moroccanoi and Miracle Oil hair oils: insufficient evidence that the public would believe there was a common manufacturer, or would be deceived, partly influenced by the different cost of goods. • Gama Healthcare Ltd v PAL International Ltd [2016] – disinfectant wipes: different distribution channels, accepted use of colours, and each product sold under a different trade mark. • George East Housewares Ltd v Fackelmann GmbH & Co. KG & Anor [2016] – kitchen measuring cups: conspicuous differences in external appearance. A separate CIPA webinar is planned to discuss the overlap between trade mark and design right law [see 71]. Alexis Harper (Associate), Jalcyon Limited

Trade Mark

Design

Filing Requirement

distinctive, not descriptive

new and have distinctive character

Timing of Filing

no time limit, even if already made public

within 12 months of disclosure

Use Requirement

vulnerable after five years

Limited to goods covered in the application

yes – limited to the same or similar goods (or dissimilar goods if the mark has a reputation)

Duration

ten-yearly renewals, indefinitely

25-year maximum

Enforcement

identical/similar mark, identical/similar goods and likelihood of confusion

same overall impression

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The USPTO’s fear of commitment in the post-Alice world – some practical guidance Report of the CIPA webinar of 29 June 2016.

his CIPA webinar was presented by Mark D. Simpson, an IP attorney from the Philadelphia-based business law firm Saul Ewing. Starting from the June 2014 US Supreme Court case of Alice v CLS Bank, the webinar discussed:

i. why most of the USPTO’s official actions on software-related patent applications, up to May 2016, contain “patenteligibility” rejections under 35 USC §101; ii. the decision issued on 12 May 2016 by the US CAFC (US Court of Appeals for the Federal Circuit) in Enfish, LLC v Microsoft Corporation, Fiserv, Inc., et al.; and iii. how several helpful statements from the Enfish decision might be useful to overcome §101 rejections against US software patent applications. The Alice decision held that a patent, claiming a method for reducing the risk of non-payment by debtors, was a “patentineligible abstract idea” and that “merely requiring generic computer implementation fails to transform that idea into a patent-eligible invention”. This decision was in the context of US public disapproval of “patent trolls”. Alice, and other recent US Supreme Court decisions, have led to the following test under §101 (omitting Alice Step 1 for brevity): •

•

Alice Step 2A: “Is the claim directed to a law of nature, a natural phenomenon or an abstract idea (judicially recognized exceptions)?” If “no”, the claim qualifies as eligible subject-matter under §101. If “yes”, then you go to Step 2B. Alice Step 2B: “Does the claim recite additional elements that amount to significantly more than the judicial exception?” If “yes”, the claim qualifies under §101. If “no”, then the claim fails under §101.

Therefore, a claim can be patent-eligible by passing the Step 2A test or the Step 2B test. The speaker explained that, after the Alice decision, which did not define clearly the terms “abstract idea” or “something more”, USPTO examiners felt the need to apply Alice by objecting under §101 to almost all software-related applications. The speaker said orally that, though the USPTO denies it, there is a de facto second, harsh level of USPTO examination for software inventions, because of the existence of §101 “specialists” in the USPTO, who 78

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are more senior than US examiners, who often tell US examiners that the claims proposed to be accepted are not patent-eligible, and who are usually deferred to by US examiners even though they do not have to defer. So, as at May 2016 (before Enfish), US examiners feared commitment regarding software inventions, and so tended to reject most of these inventions under §101 and to maintain those rejections despite good arguments by the applicant. The speaker opined that, after Alice and before Enfish, many software applicants argued that their claims had additional elements that were “significantly more” than an abstract idea, i.e. using Step 2B of the Alice test, to argue for §101 eligibility. The problem with this test is that it is subjective. As the speaker’s slides said, “reasonable minds may differ (and unreasonable minds may differ more)” in determining which features are “significantly more” (and so can confer patent-eligibility) and which features are conventional in the field (and so cannot). Therefore, §101 rejections persisted, not because the examiners were intransigent, but probably because the USPTO §101 specialists continued to be harsh in the absence of clarifying US case law before Enfish. These continuing rejections were despite the fact that the USPTO Guidance (instructions to examiners) in force in early 2016 said that computer-implemented processes can be significantly more than an abstract idea, and thus eligible, if generic computer components claimed in combination improve computer functioning. Overall, up to May 2016, using Alice’s Step 2B test gave few allowances for software inventions. Some months before the May 2016 Enfish decision, the speaker Mark Simpson started to use eligibility arguments based on the Alice Step 2A test, as an alternative way forward, with some success. This strategy was confirmed and given judicial weight in the Enfish decision of May 2016, which according to the speaker has led to a decrease in §101 software rejections since May-June 2016. The speaker advised that Alice Step 2A arguments involve attacking the process used to characterize the claims as “directed to” an abstract idea. He said that Enfish says that “directed to” means that the judicial exception is recited in the claim (i.e. the claim sets forth merely the abstract concept without more); if the invention is merely based on or involves a judicial exception but the claims recite more than just an abstract concept, the claim is not “directed to” an exception and is eligible. The relevant Enfish quote is that, for Alice Step 2A, one “cannot simply ask whether the claims involve a patent-ineligible concept”. So, after a §101 rejection alleging the www.cipa.org.uk

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PERSONAL

claim constitutes an “abstract idea” (often poorly substantiated by the examiner), the applicant should firstly argue this is not sufficient and ask the examiner to prove where the abstract concept is recited in the claims. As a second argument, the speaker also recommended reading the positive and negative examples from the latest USPTO Guidelines, picking the closest patent-eligible example(s) therein, and including in USPTO responses arguments showing how your claim is analogous to eligible examples from the USPTO Guidelines. If it is possible to do this based on the facts, then you give the US examiner what he or she needs to win the approval of the USPTO §101 specialist. The speaker also strongly recommended using the many helpful statements from Enfish in USPTO arguments for §101 software eligibility, as this CAFC decision carries weight. The speaker said that Enfish stated that (this is not a quote) an abstract idea can be identified by comparison to similar concepts found abstract by the courts; and that examiners should not identify a concept as an “abstract idea” unless it is similar to at least one concept that the US courts have identified as an abstract idea. This is important as it reverses the burden of proof. It is now the examiner who has to prove that the invention is an abstract idea, and, if an improvement is argued, this means that the examiner may have to argue that the invention does not improve the functioning of the computer (see below) to maintain a §101 rejection. Critically, Enfish makes clear that if a claim, including a software claim, achieves an improvement in the operation or functioning of a computer, the claim is patent-eligible under the Alice Step 2A test, without needing to go to Step 2B. Enfish says:

Announcements HGF announced the arrival of Lucy Johnson (Fellow) who joined the firm on 1 February 2017 as a partner based in the Newcastle office. Further details can be found at www.hgf.com. Appleyard Lees announced the opening of a new office in Cambridge. The new office will be headed by Julia Gwilt (Fellow). The firm also promoted two patent attorneys to Associates in January 2017 – James Myatt (Fellow)in Manchester and Christopher Mason (Fellow) in Leeds. Further details can be found at www.appleyardlees.com.

Letters for the Editor and announcements should be e-mailed to: editor@cipa.org.uk

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ANNOUNCEMENTS

“Software can make non-abstract improvements to computer technology just as hardware improvements can… We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analysed at the second step [Step 2B] of Alice, nor do we believe that Alice so directs. Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step [Step 2A] of the Alice analysis.” Based on this Enfish quote, the speaker advised patent attorneys to include a discussion of the invention and its technical advantages over the prior art in the original patent specification, for software inventions, as Enfish effectively directs US examiners to check whether the specification discloses technical advantages when analysing §101. The presentation was insightful, timely and relevant, though some of the helpful tips and explanations were only given orally. CIPA helpfully gave each attendee an e-copy of the slides and a link to a recording of the webinar, which allowed all the points to be captured. All statements, opinions and recommendations expressed by the speaker, and repeated by the present writer, reflect the speaker’s personal opinions only, and do not constitute legal advice. Dr Anthony Breen (Fellow)

Attention all in-house IP departments! IP Inclusive has tweaked the wording of its Charter for Equality, Diversity and Inclusion to make it easier for in-house IP attorneys/departments to sign the Charter. In particular, IP Inclusive has made it clearer that senior managers in an IP department of a company or corporate group structure are signing the Charter on behalf of the IP department only, and that the IP department will comply with the Charter to the extent appropriate and possible within the larger organisation. IP Inclusive hopes that more in-house IP departments will sign the Charter and make a public commitment to adhere to the principles of equality, diversity and inclusion in all aspects of employment practice, especially recruitment and retention, career development and workplace ethos. The sign-up page can be found here: www.ipinclusive.org.uk/sign-up-to-thecharter.html. Parminder Lally European Patent Attorney at TLIP Ltd

MARCH 2017

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Going . . . e ot Rem

appy new year! It seems like an age has passed since my last instalment, so I feel I should start this column with a recap – but seeing as this is already going to be a bumper edition, “two months for the price of one” column, I’ll save you that and hope you can bear with me. Suffice to say, last time I wrote, we were at the end of our time in Asia and I was sitting in Phnom Penh airport waiting for my flight back to London. I’ll be the first to admit that, when I signed up to Remote Year, the “Europe leg” of Split, Prague and Lisbon was not top of my to-do list. That’s not because I didn’t want to visit the cities, but just because, living in London, they are all relatively accessible and I felt I could have gone there another time. I suppose I also thought they are less exotic and therefore less interesting. But, as often happens, it turns out I was wrong and Remote Year knew exactly what they were doing – because living in Asia is exciting and exhausting in equal measure, and so after three months there we were ready for a rest and something a bit more relaxing. Well, nearly. First there was the small matter of that Opposition Appeal hearing to attend to – so I took ten days away from the rest of the group to check-in on real life, flex my oral proceedings muscles… and repack my winter wardrobe. I’ll admit it was a welltimed summons! Before flying to Munich I was back in our London office for a few days to finish preparing the case and to reacquaint myself with wonders such as Pret a Manger and normal milk. Not to mention paper – one of my all-time favourite inventions, it turns out. Whilst I’ve got quite used to working entirely on-screen the vast majority of the time, there are some types of work for which only scribbling notes over copious amounts of real-life A4 will do, and preparing for a hearing is definitely one of them. As readers of the Journal will be all too aware, attending a hearing in Munich in December is like being the designated driver at the mother of all Christmas parties. The EPO is possibly the only place in the city which is steadfastly immune to festive spirit. But all went well and, after a long day debating the ins and outs of holograms with the Board of Appeal, we left with an early

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GOING REMOTE

Croatia and the Czech Republic By Heather Lane (Fellow)

Christmas present in the form of a maintained patent – and a happy client. After a quick 24-hour turnaround, it was time for my sixth flight and fifth country in ten days as I headed to Split in Croatia to rejoin Remote Year, where the rest of the group had arrived from Cambodia a few days earlier. I’d had reservations about going to Split in December given that it is really known as a summer sailing destination, but I was quickly won over. The clear, bright skies gave a whole new meaning to the term winter sun, and whilst it could rarely be described as warm, the crisp sea air certainly blew the cobwebs out. Not wanting to let the dust settle, after a week in Split I headed to Dubrovnik, where walking through one of the two huge drawbridges into the old, walled city, it really does feel like you are entering some sort of fairy tale castle, especially dressed at it was for Christmas. Everything – the pavements and the buildings – is in matching white stone which seems to glimmer

Prague castle cathedral

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PERSONAL

in the sunshine. There is also an abundance of cats which drape themselves elegantly on any available surface, including doorsteps, walls and even ATMs. It wouldn’t surprise me if they are the ones in charge of this other-worldly city. I should mention that, to get to Dubrovnik from Split, you have to drive through Bosnia-Herzegovina… and so with that in mind you won’t blame me for being unable to resist ticking another country off the list which is just an hour’s drive south – Montenegro. (Yep, both Extension States in one week! Next I’m planning a tour around the EPO’s filing offices*). Here we skirted around the stunning Bay of Kotor, an inlet you just can’t take your eyes off, to the old city of Kotor itself – which, dare I say it, proved even more charming than Dubrovnik. With a less-polished and more lived-in atmosphere, it felt more like a well-loved doll’s house, perhaps. Every bit as beautiful though. After another week in Split and the small matter of Christmas to attend to, on New Year’s Eve we boarded our Remote Year private jet (ok, ok, a chartered flight – but the height of glamour as far as I am concerned), to see in month five and 2017 at the same time. In doing so we left sunny Croatia behind us and two hours later stepped out into what appeared to be a life-sized snow globe. Prague in winter turns out to be an ice queen of a city – frozen but beautiful, and really quite enchanting. This is fortunate, since with daytime temperatures getting as low as minus 17°C, I’ll be the first to admit to having to fight a strong urge to spend the month in hibernation. But Prague has plenty to rival any bedtime story. Walking through the cobbled streets in the historic old town, it feels as if you’re inside the pages of Grimm’s Fairy Tales. No two buildings are alike, each one looking like an elaborately iced cake, and all of them painted in a palette of pastels – creating a muted but multicoloured scene that I wouldn’t be at all surprised to see Hansel and Gretel running through at any moment. Then the gothic spires of the cathedrals and the stately statues lining Charles Bridge transport you instantly to the world of Beauty and the Beast. Even our workspace for the month, housed in what used to be the Dutch embassy, looked like something Cinderella might aspire to live in. The city skyline is dominated by the twin spires of the castle cathedral, high up on a hill looking down over the river and the rest of the city, and about as Disney-esque as you can imagine. The castle also has its own stories to tell. Once upon a time, I am told, the royal family to which the castle was home disliked the cold almost as much as me, and so decided to rearrange things so that they could enjoy their favourite pastimes indoors. The fact that these were hunting and jousting did nothing to put them off. Now the castle serves as the seat of the Czech government and the official residence of the President. Not the most popular chap, it appears, as the castle hit the headlines again in September 2015 when a group of protesters (disguised as chimney sweeps – I can only hope of the Mary Poppins variety) managed to gain access to the roof and replace the presidential flag with a giant pair of red pants. But whatever your views on the President, he himself has Volume 46, number 3

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some pretty enviable ones – from the vantage point of the castle, the snow-coated city looked positively edible. Another story for which Prague castle is famous comes from the early 1990s, just after the country had emerged from communist rule. Before then, the castle was unlit and simply disappeared into the darkness at night, which none other than Mick Jagger thought a shame – and so, with the newly free country having a few other things to worry about at the time, the Rolling Stones arranged (and paid) for it to be floodlit. It’s easy to forget that the country was part of the Soviet regime as recently as that, since Prague feels like a truly cosmopolitan city, lined with busy shops, restaurants, pubs and wine bars. But under the surface there are echoes of times past. A large proportion of the underground metro system, for instance, doubles as a nuclear bunker able to accommodate 300,000 people for three days once hermetically sealed – which explains why its escalators feel about twice as long and steep as those I’m used to in London. And, once a month, loudspeakers across the city wail for two long minutes to test the air raid sirens. We could probably have done with some warning of that. Stepping back much further in time, on our final weekend in the city we visited the town of Kutna Hora, an hour’s train ride east of Prague, to see the famous Sedlec Ossuary, better known as the Bone Church – an idea worthy of the Brothers Grimm if ever there was one. Eerily beautiful and certainly haunting, this 500-year-old chapel is decorated with the bones of somewhere between 40,000 and 70,000 victims of war and disease, exhumed from graves previously located where the church now stands. And I do mean decorated. The centrepiece is a huge chandelier containing at least one of every bone of the human body, the ceiling is hung with what I can only describe as skull and crossbones bunting, and the coat of arms on the wall is a coat of actual arms. I can safely say it’s the only time I’ve felt the need to describe a church as “a bit too piratey” for my liking. But it’s certainly unusual, and who can say that’s not the better way to memorialise your ancestors? And all this in boring old Europe? Who’d have thought. This is one time I’ve been very happy to be proved wrong. Bring on the next chapter… *This is a joke, in case you were worried (or is it?!)

Next month: Lisbon, Portugal 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

MARCH 2017

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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. The FC courses are between 23 June and 8 July and the FD courses between 22 June and 23 August. We also have an Introduction to FD4 course on 25 May. The courses are in Milton Keynes and 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

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. 82 CIPA JOURNAL

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INTERNATIONAL

Volume 46, number 3

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Dawn Ellmore Employment Patent, Trade Mark & Legal Specialists Serving the IP profession since 1995 PATENT FORMALITIES

JUNIOR PATENT AND TRADE MARK CLERK

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IN HOUSE PATENT ADMINISTRATOR - EAST ANGLIA

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IN HOUSE PATENT ATTORNEY - WEST MIDLANDS :H DUH WKULOOHG WR EH ZRUNLQJ ZLWK RXU SUHVWLJLRXV FOLHQW ZKR DUH VHHNLQJ D KDUGZRUNLQJ SDWHQW DWWRUQH\ WR MRLQ WKHLU legal team. You will be supporting all aspects of intellectual property with close attention to producing patent rights and DOVR FRQWUROOLQJ WUDGH PDUN DQG GRPDLQ QDPH GLVSXWHV 7KH SHUIHFW FDQGLGDWH ZLOO EH D TXDOLÀHG SDWHQW DWWRUQH\ ZLWK D EDFNJURXQG LQ (QJLQHHULQJ RU 3K\VLFV DQG KDYH H[WHQVLYH H[SHULHQFH LQ PHFKDQLFDO SDWHQW GUDIWLQJ 7KLV LV D IDQWDVWLF RSSRUWXQLW\ IRU WKRVH VHHNLQJ FRQWLQXRXV FDUHHU GHYHORSPHQW DQG SHUVRQDO OHDUQLQJ LQ D VWLPXODWLQJ LQWHUQDWLRQDO HQYLURPHQW ,Q UHWXUQ IRU FRPPLWPHQW DQG IRFXV \RX ZLOO EH UHZDUGHG ZLWK DQ LPSUHVVLYH VDODU\ DQG EHQHÀWV SDFNDJH

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CHEMISTRY PATENT ATTORNEY

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CONTACT US Attorney vacancies: kevin.bartle@dawnellmore.co.uk Support vacancies: dawn.ellmore@dawnellmore.co.uk Business support: james.smithson@dawnellmore.co.uk +44 (0)20 7405 5039

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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.

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For more information and to request a job description, please email:

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jessica.obrien@avidity-ip.com

AVIDITY IP 86 CIPA JOURNAL

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www.avidity-ip.com/vacancies

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Let us put the Spring CBDL JO ZPVS TUFQ

Patent Secretary : London TJB51156 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 Search Manager : London TJB50488 Superb International Intellectual Property firm requires a brand new Patent Search Manager. You will contribute to the firm by managing a range of search-related duties to the firm's fee earners, and ultimately the firm's clients. With a strong Chemistry academic background, Ideally at PhD level, you will have previous experience of patent searching. In-House Engineering Attorney : North East VAC50462 This is an opportunity not be missed. 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 being comfortable with these responsibilities is a pre-requisite to the role. Chemistry Patent Attorney : London VAC51085 Top London IP firm with superb ongoing training and support require a Chemistry Attorney. You will enjoy close interaction with both clients and colleagues, as you progress along this clear, meritocratic career path. Ideally you will be of finalist level through to 2 years PQE and ready to join a friendly environment which promotes career development!

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

Enterprising Patent Attorneys : Birmingham CEF51346 Launch your career with the best in the business! Our client, a globally recognised and market leading IP firm, is wanting to grow their all-star team of Patent Attorneys in their Birmingham office. If you are either a Part Qualified or Qualified Patent Attorney from any discipline, we want to hear from you. Hi-Tech Electronics Attorney : Cambridge CEF50866 Industry leading innovators seek a High Tech expert! Our client is looking for a Part-Qualified Electronics or Physics Attorney to join their talented Technology department. The work will be challenging and varied, including a mix of high tech electronics, physics, and increasingly, nanotechnology, an area of considerable growth in the Cambridge market. &MFDUSPOJDT &OHJOFFSJOH "UUPSOFZ -POEPO $&' If you're looking for a firm that recognises and rewards your ability, as well as encouraging you to be the very best that you can be, this is the definitive career move! Our client is an esteemed innovator within the IP industry, seeking an Electronics or Engineering Attorney to support their thriving team. Our client offers flexible and part-time working across the board, and they are really big on developing talent. Part Qualified Biotech Attorney : Cambridge LKA50834 Standout position in Cambridge! You will benefit from expert training in all aspects of an Attorney’s role combined with work of the very highest calibre. Wonderfully supportive environment where you will truly be encouraged to reach your full potential; transparent route to Partnership and excellent compensation along the way. In-House Patent Attorney : Hampshire LKA43985 Lovely opportunity for an Attorney seeking a new challenge working in-house! You will work closely with the IP Manager, building and managing an existing IP portfolio and assisting in the provision of comprehensive IP advice to the product development teams. Those applying will ideally have a technical background in physical sciences or engineering and will preferably be a CPA and / or EPA.

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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RECRUITMENT

Stockley Park, Uxbridge

Patent Attorneys As a leading global patent holder, Canon was granted 3665 patents in the USA alone during 2016. We’re now recruiting for the Patent Department within our European HQ. You’ll be joining a close team with strong international collaboration between patent attorneys, our formalities staff and other professionals in the broader IP and Legal team. The company more broadly has a warm and friendly culture, supported by flexible working policies.

Patent Attorneys We’re looking for two qualified Patent Attorneys with a background in physics, electronics, software, medical imaging or optics. You’ll work closely with our Research function and patent engineers at Canon to create and file UK and European patent applications, and to prosecute related patent applications throughout the world. The role will also involve infringement clearance and opinion work, and may involve patent enforcement activities from time to time. You’ll also be willing to travel within Europe to meet with clients or attend EPO hearings as needed.

Qualified Intellectual Property Attorney We’re also looking for a qualified patent attorney with additional experience in the fields of Intellectual Property law - including trade mark enforcement, contract drafting and negotiation, copyright, e-commerce, consumer protection law and/or anti-counterfeit would be desirable.

IP Administrator Canon is the world’s best imaging company – driven to enrich people’s lives and businesses with innovative products and smart digital solutions. Today we are a truly global brand, constantly challenging ourselves to find new ways of adding value through our growing portfolio of services and solutions. Across the EMEA region, we employ 18,000 people. Together we work in a respectful yet ambitious environment – collaborating to achieve the exceptional for our customers and always honouring our corporate philosophy of Kyosei, ‘to live and work together for the common good’.

Expect the excepƟonal 88 CIPA JOURNAL

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One IP administrator capable of handling the full range of patents formalities from filing through prosecution to grant. Responsibilities will include preparing and filing documents for UK and foreign filings as well as diary management responsibilities to ensure the timely and efficient management of cases. You’ll ideally hold the CIPA Administration Certificate but this is not essential.

To apply, search for “Patent” or “Intellectual Property” on Canon Careers: www.canon-europe.com/about_us/careers

www.cipa.org.uk

02/03/2017 08:09:01

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

Engineering & Electronics

Qualiﬁed - Birmingham

Part / Qualiﬁed - London or Southampton

Qualiﬁed EPA - Nationwide

Ref: 124305

Ref: 118671

Ref: 124284

An open remit exists in Birmingham for patent

Would you like to maximise your full potential and

I am currently looking for a qualiﬁed European

attorneys

achieve your long-term career goals? Feel like you

Patent Attorney with a background in engineering

electronics or mechanical engineering backgrounds.

have heard this before?

The ﬁrm has a fantastic

and electronics with a specialist knowledge of

You will work closely with the group’s lead partner

proven track record of delivering this. You will be

telecommunications nationwide. The company is

pro-actively contributing towards the development of

working with a specialist team of electromechanical

well established and regarded as a top tier ﬁrm. Key

the group and the business. The successful candidate

attorneys and design solicitors handling all non-

responsibilities include (but are not limited to): Patent

will have the ability to work independently and work

contentious and contentious design matters. The

prosecution including drafting, ﬁling and opposition

directly with small, medium and large industrial clients

ﬁrm is fully committed to enabling you to achieve

work, liaising with clients and overseas attorneys and

and universities in the UK and overseas.

your goals at a pace that works for you.

undertaking legal research as and when required.

Physics

Patent Attorney

Engineering & IT/Software

Trainee - Nationwide

Part / Newly 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 top 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? Providing you have a degree in physics

years. This success is largely due to their fantastic

engineering or electronics related subject matter.

I want to hear from you. I am working with a

people and the company’s commitment to training

Whilst there are extensive existing portfolios for you

variety of ﬁrms throughout the UK seeking such

and developing their staff. There is an open door

to work on, you will be provided with ample support

individuals.

to progression that is not reliant on other people

and encouragement to contribute to the continued

motivations, I can help advise the companies best

moving

development of the practice. A very competitive

equipped to introduce you to.

expansion plans with nationwide opportunities.

salary will be available to the successful appointee.

Biotech & Biochemistry

Chemistry

Elec/Eng/Telecom

Part / Newly Qualiﬁed - London

Qualiﬁed - London

Senior Associate - London

Ref: 68693

Ref: 124268

Ref: 120151

Due to growth, opportunities exist for those at newly

Qualiﬁed

qualiﬁed or ﬁnals standard level to focus exclusively

constraints?

on contentious work in these disciplines, working

autonomous

This

for thought for those who are enthused at the

alongside a renowned partner. The ﬁrm is a world

international ﬁrm has a strong presence in London as

prospect of becoming partner in the near future.

class leading practice that has enjoyed some of the

well as a solid reputation in Europe. An opportunity

This ﬁrm’s reputation is outstanding within this

highest growth over the last few years and is widely

has now arisen for an attorney specialising in

ﬁeld. Working with a client base containing cutting

regarded as an excellent working environment.

chemical subject matter to join its busy London

edge technology corporations, you will gain the

Progression of people is key to the performance

office. A competitive salary and good promotional

opportunity to assist in a range of contentious

of this company, so the right individual will have a

prospects will be on offer.

activities

with

high

tech,

physics,

telecoms,

Once I understand your career

within

the

chemistry

organisation.

specialist,

Seeking

working

Impressive

shackled

In a market where opportunities for electronics

collaborative,

attorneys are plentiful, this role presents food

environment?

tailored approach to managing their development.

including

opposition’s

appeals

and

litigation support.

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

Email attorneys@g2legal.com

Tel 020 7649 9298

G2 Legal 26 Finsbury Square London EC2A 1DS

REC-pp89-G2_1.indd 89

Mob 07426 043744

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

02/03/2017 08:09:23

THE PINKS

RECRUITMENT

PATENT ATTORNEY Staines-Upon-Thames Are you a qualified or part-qualified Patent Attorney and want to join a friendly, client-focused firm in the centre of Staines-upon-Thames, south-west of central London? If you have a strong technical background in physical sciences and electronics, and you enjoy building relationships with clients, you may be the one we are looking for. Our diverse client base provides a wide range of interesting and high-quality work. We have an opening in the physical sciences/electronics side of our business, and need someone who can handle all aspects of patent practice, including helping clients identify inventions, drafting and prosecuting patents applications, advising clients, dealing with oppositions, and carrying out freedom-to-operate assessments. The work atmosphere will be informal and relaxed, within a balanced and supportive, modern working environment. If you prefer to work part-time or flexible working hours, we would be happy to accommodate this as far as possible. For the right person, we will offer excellent remuneration. If you believe you are the right person for the job or would like to find out more, please contact Sue Stevens at the above address or by confidential e-mail to S.Stevens@mathisenmacara.co.uk.

Alistair Hindle Associates European Patent & Trade Mark Attorneys

We’re hiring Alistair Hindle Associates is a growing patent and trade mark attorney practice based in Edinburgh. We have a reputation for excellence in both the quality of the work that we do and the client service that we provide. As a result we have a loyal following of direct clients who come to us by word of mouth. We are looking to hire an additional fee earner to work on a wide range of physical sciences and engineering subject matter, much of which is technically challenging. Although our immediate requirement is for a trainee or recently qualiﬁed patent attorney, we are also interested to hear from more experienced attorneys. We can consider part-time working and consultancy arrangements.

Edinburgh, Scotland We offer a friendly, positive working environment, interesting and challenging work, a commitment to training and professional development, an opportunity to get involved in decision making, and excellent long-term opportunities. Interested? Please send your CV and covering letter, addressed to Alistair Hindle, to: careers@ahpatent.com Please apply by 7 April 2017. Alistair Hindle Associates are signatories of the IP Inclusive Charter.

66 Hanover Street, Edinburgh, EH2 1EL, United Kingdom. www.ahpatent.com

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THE PINKS

RECRUITMENT

SPRING HAS SPRUNG... Brand new start, brand new opportunities… ENGINEERING, PHYSICS  LONDON Qualiﬁed, Finalist or Part Qualiﬁed (Ref: 907675) 'XH WR DQ LQȷX[ RI QHZ LQVWUXFWLRQV DQ opening has arisen for an engineering specialist ZLWK D SK\VLFV RU PHFKDQLFDO HQJLQHHULQJ HGXFDWLRQDO EDFNJURXQG WR MRLQ DQ H[WUHPHO\ KLJKO\ UHJDUGHG WHDP 7KH ȶUP KDV D UHOD[HG VHW XS LQ WHUPV RI ERWK VWUXFWXUH DQG ZRUNLQJ culture yet has a long-established reputation IRU SURGXFLQJ WKH KLJKHVW TXDOLW\ RI ZRUN DV LV HYLGHQFHG E\ WKH ȶUPƱV FRQVLVWHQW UDQNLQJ LQ the top tier of the leading legal directories. The SUHGRPLQDQW IRFXV RI \RXU FDVHORDG ZRXOG EH LQ WKH PHFKDQLFDO HQJLQHHULQJ ȶHOG ZLWK WKH opportunity to undertake a small amount of VXSSOHPHQWDU\ ,7 DQG HOHFWURQLFV UHODWHG ZRUN LI GHVLUHG 7KH ȶUP SULGHV LWVHOI RQ LWV RSHQ DQG transparent culture and employs a structure ZKHUH WKHUH DUH QR LQGLYLGXDO WDUJHWV

ENGINEERING (MECHANICAL)  LONDON Qualiﬁed or Finalist (Ref: 904325)

ELECTRONICS, SOFTWARE, MECHANICAL  LONDON Senior Associate (Ref: 908066)

CHEMISTRY (PHARMA)  LONDON Qualiﬁed or Finalist (Ref: 907110)

ELECTRONICS  LONDON Part Qualiﬁed (Ref: 903147)

7KLV WRS WLHU ȶUP LV VHHNLQJ WR DSSRLQW D TXDOLȶHG RU ȶQDOV VWDQGDUG OHYHO pharmaceutical specialist to its sector leading chemistry team. Working on a predominantly SKDUPDFHXWLFDOV IRFXVHG FDVHORDG \RX ZLOO be enthused at the prospect of joining a large WHDP ZKR KDQGOH KLJK HQG ZRUN ,Q DGGLWLRQ WR RULJLQDO GUDIWLQJ DQG SURVHFXWLRQ ZRUN WKH ȶUP LV DOVR YHU\ ZHOO NQRZQ IRU LWV SUHVHQFH in oppositions and appeals matters. With SODQV IRU FRQWLQXHG JURZWK LQ SODFH WKLV UROH UHSUHVHQWV DQ H[FHOOHQW RSSRUWXQLW\ IRU \RX WR HOHYDWH \RXU FDUHHU WR WKH QH[W OHYHO

2QH RI WKH JOREDO ,3 KHDY\ZHLJKWV LV VHHNLQJ to continue the steady development of LWV /RQGRQ RIȶFH 'HVSLWH EHLQJ D UHODWLYH QHZFRPHU WR WKH /RQGRQ VFHQH WKH ȶUP KDV PDGH VLJQLȶFDQW SURJUHVV LQ GHYHORSLQJ LWV (XURSHDQ DUP $Q RSSRUWXQLW\ KDV QRZ DULVHQ IRU D SDUW TXDOLȶHG HOHFWURQLFV VSHFLDOLVW ZLWK DW OHDVW WZR \HDUVƱ H[SHULHQFH LQ WKH SURIHVVLRQ WR MRLQ LWV JURZLQJ WHDP ,I \RX DUH seeking something a little bit different and are HQWKXVHG DW WKH SURVSHFW RI ZRUNLQJ IRU RQH RI WKH ZRUOGƱV PRVW UHFRJQLVDEOH ,3 ȶUPV WKHQ WKLV RSSRUWXQLW\ LV ZHOO ZRUWK H[SORULQJ

ELECTRONICS & MECHANICAL  LONDON Qualiﬁed (Ref: 907199) 4XDOLȶHG HOHFWURQLFV PHFKDQLFDO VSHFLDOLVW FRQWHPSODWLQJ D FKDQJH" (YHU ZRQGHUHG ZKHWKHU WKHUH PD\ D EHWWHU RSSRUWXQLW\ RXW WKHUH IRU \RX" 7KLV WLHU RQH UDQNHG ȶUP LV VHHNLQJ WR PDNH DW OHDVW RQH QHZ KLUH WR LWV ERRPLQJ electronics and engineering division. Volumes RI ZRUN FRQWLQXH WR JURZ DV WKH ȶUP UHFHLYHV repeat instructions for its long-standing client base DV ZHOO DV VXFFHVVIXOO\ ZLQQLQJ ODUJH DPRXQWV RI QHZ EXVLQHVV 7RS TXDOLW\ KLJK HQG ZRUN GD\VƱ KROLGD\ VHQVLEOH ZRUNLQJ KRXUV DQG DQ H[WUHPHO\ FRPSHWLWLYH UHPXQHUDWLRQ SDFNDJH DUH just a very small number of stand-out features of WKLV H[FHSWLRQDO RSSRUWXQLW\

ENGINEERING (MIXED)  LONDON Part Qualiﬁed (Ref: 902262)

Due to the impending retirement of a senior attorney a rare opportunity has arisen in hi-tech team of this prestigious top ranked ȶUP <RX ZLOO KDYH WKH RSSRUWXQLW\ WR ZRUN DFURVV D YDULHW\ RI HOHFWURQLFV VRIWZDUH DQG mechanical related disciplines in conjunction ZLWK D ORQJ HVWDEOLVKHG FOLHQW EDVH FRQVLVWLQJ of mainly multinational organisations. A JHQXLQH URXWH WR SDUWQHUVKLS H[LVWV IRU DQ DWWRUQH\ ZKR FDQ GHPRQVWUDWH D KLJK OHYHO RI WHFKQLFDO FRPSHWHQFH DORQJ ZLWK WKH DELOLW\ WR FRQWULEXWH WRZDUGV WKH FRQWLQXLQJ development of the practice.

ELECTRONICS & ENGINEERING  LONDON Qualiﬁed or Finalist (Ref: 903140) 7KLV IRUZDUG WKLQNLQJ IXOO VHUYLFH ,3 ȶUP ZLWK DQ H[WHQVLYH FOLHQW SRUWIROLR DLPV WR further enhance its very successful electronics HQJLQHHULQJ SUDFWLFH ZLWK WKH KLUH RI D TXDOLȶHG RU ȶQDOLVW OHYHO DWWRUQH\ <RX ZLOO MRLQ D ODUJH IULHQGO\ DQG LQFOXVLYH WHDP GHDOLQJ ZLWK D PL[WXUH RI HOHFWURQLFV SK\VLFV DQG engineering related subject matter. The ZRUNLQJ HQYLURQPHQW LV IDQWDVWLF ZLWK ȷH[LEOH ZRUNLQJ DQG DQ ưRSHQ GRRUƱ SROLF\ RSHUDWLQJ WKURXJKRXW WKH ȶUP $ YHU\ FRPSHWLWLYH UHPXQHUDWLRQ SDFNDJH ZLOO EH RQ RIIHU WR WKH successful appointee.

Engineering focused attorney seeking to specialise in the mechanical space? This UDSLGO\ H[SDQGLQJ DQG SURJUHVVLYH ȶUP KDV DQ RSHQLQJ IRU D TXDOLȶHG RU ȶQDOLVW OHYHO attorney to join its thriving engineering WHDP :LWK D ODUJH GLUHFW 8. FOLHQW EDVH WKH ȶUP KDV DQ HVWDEOLVKHG SUHVHQFH DFURVV WKH DXWRPRWLYH DHURVSDFH PHGLFDO GHYLFHV DQG LQGXVWULDO VHFWRUV <RXU ZRUNORDG ZLOO FRPSULVH RI GUDIWLQJ SURVHFXWLRQ RSLQLRQ and contentious activities across a range of engineering related subject matter. The ȶUP SURPRWHV D YHU\ VXSSRUWLYH ZRUNLQJ environment and holds a healthy approach WR D ZRUN OLIH EDODQFH

CHEMISTRY (INDUSTRIAL FOCUS)  LONDON Newly Qualiﬁed or Finalist (Ref: 908027) $Q RSSRUWXQLW\ KDV DULVHQ IRU HLWKHU D QHZO\ TXDOLȶHG RU SDUW TXDOLȶHG SXUH FKHPLVW WR MRLQ D EXV\ ȶUP ZLWK DQ LQWHUQDWLRQDO reputation. The role has arisen due to LQȷX[ RI QHZ LQVWUXFWLRQV LQ WKH WHDP RI the lead chemistry partner in the London RIȶFH 7KH ȶUP LV NQRZQ IRU LWV LQQRYDWLYH business development initiatives and LQFOXVLYH ZRUNLQJ HQYLURQPHQW 7KHUH DUH H[FHOOHQW FDUHHU SURJUHVVLRQ SURVSHFWV IRU an ambitious and technically savvy attorney. $Q H[FHOOHQW UHPXQHUDWLRQ SDFNDJH ZLOO EH offered to the successful appointee.

7KLV LQWHUQDWLRQDOO\ UHQRZQHG ȶUP LV VHHNLQJ WR FRQWLQXH LWV H[FHSWLRQDO SURJUHVV ZLWK WKH KLUH RI D SDUW TXDOLȶHG DWWRUQH\ ZLWK D SK\VLFV educational background. If you have at least PRQWKVƱ H[SHULHQFH LQ WKH SURIHVVLRQ DQG are enthused at the prospect of furthering \RXU FDUHHU DW D WRS UDQNHG ȶUP WKHQ WKLV opportunity could be for you. A varied PL[ RI HOHFWURQLFV DQG HQJLQHHULQJ UHODWHG VXEMHFW PDWWHU ZLOO IRUP WKH EDVLV RI \RXU FDVHORDG ZLWK DFWLYLWLHV FRPSULVLQJ RI GUDIWLQJ DQG SURVHFXWLRQ ZRUN $ KLJKO\ FRPSHWLWLYH UHPXQHUDWLRQ SDFNDJH ZLOO EH RQ RIIHU WR WKH successful appointee.

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

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THE PINKS

RECRUITMENT

Patent Attorney Harwell, Oxford

JOB OVERVIEW 

Identifying inventions and securing valid patent/IP protection across relevant jurisdictions.



Leading the formulation of patent strategies in research and development projects.



CRITERIA SKILLS

DUTIES AND TASKS

Directing and advising internal clients on patent related IP issues across the business to enable the R&D project teams to meet their commercial goals and scientific objectives. Managing patents (including other related IP aspects) whilst collaborating with those engaged in R&D activities. Attending technical reviews and management meetings and having a genuine interest in, and affinity with, Element Six. Creating awareness of the importance and commercial advantage that IP can provide.



Drafting, filing and prosecuting patent applications.



Providing patent clearance information and FTO analysis.

Hold a degree in materials science, physics, chemistry or a related discipline. A PhD would be advantageous.



Managing and instructing outside counsel and overseas associates to act on behalf of Element Six.

Be at ease in handling a breadth of technical areas, and approach new technologies with passion and enthusiasm.



Be a qualified EPA and preferably CPA (or equivalent).



Have a successful career record, in either private practice or an in-house patent department.

Providing advice, including infringement and validity advice, on both Element Six and third-party patents, and managing opposition proceedings when required.



Providing IP input to colleagues working on research, partnerships/collaborations, mergers and acquisitions.



Excellent client management/service skills and portfolio management experience are highly desirable.



Liaising closely with scientists, engineers, project managers and business colleagues with a view to becoming an integral member of the Team.



Possess an innate commercial ability.



Be a confident communicator, with excellent liaison and diplomatic skills coupled with good interpersonal skills.



Be a self-starter, able to prioritise and to work to tight deadlines.



Have a hands-on approach, able to demonstrate effective problem-solving skills, and a high level of attention to detail.



Maintaining and improving one’s professional expertise so as to enhance and contribute to Element Six’s IP centre of excellence.

To apply, please submit a covering letter and your CV to careers@e6.com Element Six Element Six, part of De Beers Group of Companies, is the world’s leading synthetic diamond and super – materials producer. An industry leader, the company has been operating for over 50 years. We are recognised as operating at the forefront of our industry. The materials we manufacture are classed as advanced engineering materials. Today synthetic diamond is widely used across industries and markets around the world; from playing a vital role in the production of next generation automotive engines, to powering high speed digital telecommunications equipment, the synthetic diamond and related materials we design and manufacture impact all of our lives. The role is based at our Global Innovation Centre in our Harwell, Oxford.

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Finalist, Electronics, London Complete your qualifications at a firm with an impeccable training record and a fantastic support structure, with access to a wide variety of Partners and fellow fee earners. You will work with an impressive scope of technologies and be encouraged to add to this portfolio to reflect your own strengths and interests.

Finalist Patent Attorney, Chemistry, London Manage an interesting melting pot of overseas and local clients offering a portfolio of innovative and pioneering technologies. This firm has a culture of giving all their attorneys exposure to clients early on in their career, allowing you to build your own practice from day one.

Qualified Patent Attorney, Chemistry, London Work across a variety of subject areas, including pharmaceutical, industrial chemistry and chemical engineering, and enjoy an excellent balance of work between original drafting, prosecution and contentious work. You will be encouraged to challenge yourself, with an ever changing mix of responsibilities ensuring you’re not just stuck behind your desk completing draft after draft.

Newly Qualified, Physics, London This firm has a truly international client base, with the opportunity to work closely with clients across the high tech, electrical and engineering fields. There is a fairly relaxed working style with focus placed on the quality of work you produce, as opposed to how long you spend in the office. Secondments to in-house clients are not uncommon and travel to networking events is encouraged.

Senior Associate, Electronics, Midlands Ready for the next step in your career but feel you are constantly overlooked at your current firm? This firm can all but guarantee Partnership within a very short timeframe, and will ensure your voice and opinion is heard in the meantime. Duties away from the day-to-day prep and pros are encouraged; including participation in industry committees, and organising and hosting IP awareness and educational events.

Various Roles, IP Formalities, Midlands We’re working on some interesting roles for those who have a passion for IP, but don’t necessarily want to qualify (or continue working) as a patent attorney. These include a Legal Analyst, Supplier Relationship Manager and Services Solutions Manager. The company in question offers some rather creative perks and are not restricted when it comes to rewarding their employees’ commitment and success.

Trainee Patent Attorney, Electronics, Midlands Benefit from the same level of training, support and client base (not to mention salary) as working in London, but with the perks of a smooth running commute, lower cost of living and the fantastic natural surroundings of the regions. Gain experience in all areas of patent work and have the opportunity to share in supervisory and managerial tasks and decisions from early on.

Qualified Patent Attorney, High Tech, Cambridge Be part of a highly specialised and experienced team working with cutting edge technologies across the IT, software and wider electronics fields. The growing workload is due both in part to the firm’s well established reputation in the industry, as well as their ability to adjust effectively to meet their clients’ needs and the ever changing developments in the industry.

Part Qualified Patent Attorney, Electronics/Engineering, London Drive the direction of your own development with a flexible bespoke structure that allows you to develop at your own pace and have a say in the type of training you receive. The working environment is highly collaborative and close knit, with a family friendly feel and emphasis placed on a healthy work life balance.

Associate, Electronics, North Career progression is more than achievable at this firm - with clear cut guidelines on what you need to achieve, an impressive and challenging client base allowing you to further develop your skills, and plenty of support from your supervisors and peers along the way.

Qualified Patent Attorney, Engineering, Cambridge Attend local and overseas networking events, speak at industry functions, and represent the firm in new client affairs at this commercially astute practice. You can tailor your portfolio to be as wide or as narrow as you like, and if there’s an area you’re particularly interested in - the firm are always open to taking on new clients offering innovative and challenging breakthroughs in technology.

Partner Designate, Electronics or Engineering We have a number of Partner level positions available across the country, including London, Yorkshire and the Midlands. The firms considering applicants all have demonstrable experience in successfully accommodating senior lateral hires and are in a position to offer a share of the pot within an exceptionally short time frame.

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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RECRUITMENT

Patent Attorney – Oxford Competitive salary + benefits Oxford Nanopore Technologies is a vibrant, fast-growing company developing a revolutionary method of single-molecule analysis. Our lead application is DNA sequencing. The technology combines elements of chemistry, biochemistry, electronics, engineering and informatics. We are seeking an experienced (2-3 yrs PQE minimum) European Patent Attorney to join our IP team who will be responsible for the substantial and growing portion of our IP estate. The successful candidate will have a background in life sciences or chemistry with knowledge of life sciences but will also be someone who is comfortable with interacting with scientists/mathematicians/engineers from the other disciplines within the company. The ideal candidate is someone who is dynamic, self-assured, able to work independently, has excellent technical and commercial awareness with excellent communication, team working, patent prosecution/drafting and project management skills. We welcome applications from those with an industry or private practice background.

Reporting to the Head of IP, this role will provide substantial flexibility in growing and shaping the patent portfolio in alignment with the business strategy as well as helping shape the future direction of the IP department. Responsibilities will include the prosecution and management of the IP estate, drafting of applications, management of relationships with external collaborators as well as other IP related aspects such as agreements and competitor monitoring. You will work closely with the internal R&D and corporate team, external counsel and licensors. Closing date: End of March 2017. For more information and to apply online, please visit our website www.nanoporetech.com/careers. No agencies please.

Newly qualified or part qualified patent attorney Milton Keynes Urquhart-Dykes & Lord LLP are seeking a patent attorney with expertise in mechanical engineering to join our Milton Keynes team. Some experience in other technical fields, for example electronics or software, would be advantageous but is not essential. You will be either newly qualified or well on your way to completing your final exams, with an appetite to learn and take on your own portfolio. Whilst there is an existing caseload for the successful candidate, a desire to acquire, foster and grow new clients and contacts is a key aspect of the role. Therefore, you will need to demonstrate effective communication skills and the drive to grow the practice. You must have a minimum of a 2:1 degree in a relevant subject, for example physics or mechanical engineering. You will need to be able to interact with clients confidently and clearly, and understand and interpret new and complex technical concepts quickly. Enthusiasm, attention to detail, and a willingness to take on responsibility at an early stage are essential attributes, as are excellent written and verbal communication skills and an ability to work well within a team. The position offers excellent career prospects. UDL has an open and transparent career structure that we would be pleased to explore with you at interview. The position carries an attractive salary, private healthcare, life assurance and pension scheme. Please quote reference MK-PA01-CIPA on your application. If you are interested, please send your CV and covering letter, in confidence, to: Samantha Chambers l Practice & HR Manager l Urquhart-Dykes & Lord LLP l Arena Point l Leeds LS2 8PA l E-mail: careers@udl.co.uk

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Don’t give up on your New Year’s Resolutions! Explore new opportunities in IP www.weareaspire.com/IP

Software/Electronics - Senior Associate up to £80,000 + attractive package. London, ref 1010620

Electronics/Telecoms - part qualiﬁed/ﬁnalist £Very competitive + bens package. Cambridge, ref 1008811

A fantastic opportunity for a commercially astute software/electronics specialist has arisen within a truly dynamic and progressive international firm. You must be CPA or EPA qualified (up to 5 years PQE) having gained significant experience of original drafting and contentious areas of IP. Due to a substantial increase in referral work with many pivotal innovation-lead blue-chip brands, there is an immediate requirement for a bright, conscientious and ambitious team-player to add value to the firm’s growth plans. This role will challenge and excite in equal measure; a truly unique position with enviable clients and a brilliant career structure tailored to your professional ambitions.

NEW! A superb opportunity has arisen for a part qualified/finalist in physics, telecoms, or electronics to join a hugely reputable and progressive UK firm. Widely regarded as one of the most successful and meritocratic firms, they have further underlined their credentials by attracting talent this year. Owing to a significant rise in new instructions within their high-tech group, applications are immediately sought from attorneys with a minimum of 2 years professional experience. You must be commercially minded, technically gifted and feel confident advising clients of all sizes. You’ll be joining a really dynamic team with excellent supervisory and mentoring experience.

Engineering (CPA or EPA) - Industry £Excellent + bonus + package. Hampshire, ref 1011683

Biotechnology Attorney - Finalist/Qualiﬁed £Excellent + package. London, ref 1002491

NEW! Do you want to join a truly exciting in-house team where IP genuinely underpins product innovation? This product-led organisation are looking to appoint a CPA or EPA with a background in engineering/physical sciences to help develop and implement IP strategy on an international scale. You must have a hands-on approach to liaising with stakeholders at all levels, so your interpersonal skills should be ﬁrst-class. Experience of opposition/appeal cases would be advantageous, as would FTO and commercial licensing exposure. You’ll be joining a progressive company that genuinely values the input of patent attorneys across their network of R&D sites.

Fantastic Life Sciences opening for a qualified Biotechnology Attorney (up to 5 years PQE) to join a prestigious and hugely progressive London practice. Recognised as a truly international firm, they pride themselves on a quality driven service across a broad range of clients. You should possess an incisive and commercially sound legal mind to manage a number of key accounts of high-value strategic worth. Applications are sought from attorneys who are looking for significant professional rewards, as well as highly challenging and exciting technology. Their support infrastructure is superb, so professional staff retain a high level of responsibility for their own caseloads too.

Computer Science/Software CPA or EPA £Excellent + bonus + package. London, ref 1006955

Electronics/Physics - Finalist/Qualiﬁed £Excellent + bonus + beneﬁts. London, ref 1008811

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

A superb opportunity has arisen for a finalist/qualified attorney with an electronics or physics background to join a hugely reputable and progressive firm. Widely regarded as one of the most successful and meritocratic practices, they have further underlined their credentials by securing several lateral hires this year. Owing to a surge in new instructions within their high-tech group, applications are immediately sought from attorneys with a minimum of 3 years experience. You must be commercially savvy, technically gifted and feel confident advising clients of all sizes. You’ll be joining a really dynamic team with excellent supervisory and mentoring experience.

Chemistry/Pharmaceutical CPA or EPA £Attractive package + bonus, ref 1011441

Physics/Electronics - ﬂexible working role £Excellent package + bonus. London, ref 996986

NEW! You are an EPA or CPA qualiﬁed attorney with a track record of handling chemistry, formulations and pharmaceutical-related patent families, speciﬁcally looking for an industry role. This international IP team wishes to secure a progressive individual who has experience of commercial in-licensing and FTO analysis, as well as core drafting and prosecution skills. You must also be adept at liaising with non-patent professionals, particularly marketing and business development managers. Prior exposure to trademark registrations would also be advantageous. This is a very product-lead organisation, so your IP knowledge will lend itself to strategically commercial and competitive

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

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

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jamesdawesaspire

www.weareaspire.com/IP

02/03/2017 09:28:46

UK Aberdeen Birmingham Cambridge Edinburgh Glasgow London Manchester Oxford France Paris Sophia Antipolis Luxembourg China Beijing Hong Kong Malaysia Kuala Lumpur Singapore Canada Ottawa

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M&C appears bigger from the outside than it feels working on the inside. That’s because each ofﬁce is its own community with a distinct identity. Having said that, our extensive network and the strength of our client portfolio allows attorneys to work on the technology that best suits them, wherever they are based. We work hard to help good people ﬂourish at Marks & Clerk. David Ward, UK Managing Partner

We want to hear from attorneys who are passionate about their clients and their careers. If this describes you, let’s talk.

lets-talk@marks-clerk.com

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02/03/2017 09:29:12

THE PINKS

RECRUITMENT

In partnership with

IP Recruitment Specialists 35 years experience

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

Patent Attorneys, Sydney • Join us and work in Sydney’s CBD, the true work / life balance capital of the world.

• Opportunity to work for a global business, who are enjoying fantastic success across APAC in the IP area.

• Work in partnership with innovative, blue chip clients and further your career overseas. Role Overview: Our client is looking for talented Mechanical Patent Attorney professionals, we are also interested in hearing from Patent Attorneys from other practice areas. Our client is a market leader, with an outstanding reputation and a first class client base. They have an exceptional leadership team who are now looking to hire ambitious people to add to their successful, evolving sectors. The firm boasts unrivalled financial strength and is making significant gains across APAC, predominantly in their Mechanical and Technology areas. What’s on Offer: Our client is looking for a Patent Attorney in the Mechanical sector who wants to accelerate their career and be rewarded with a competitive remuneration and relocation package. Pacific Talent Partners are a specialist executive talent consultancy, for a confidential discussion please send your resume to Debbie Jardine, Talent Manager, debbiejardine@ptpaustralia.com +61 2 8318 1810 │www.pacifictalentpartners.com.

Part or Recently Qualified Patent Attorney We are a relatively small but fast growing firm of Chartered Patent Attorneys based in Croydon, Surrey which is seeking a part or recently qualified patent attorney preferably with an electronics background to assist with an ever increasing patent and trademark work load mainly from UK based companies operating in a variety of technologies and disciplines. Real partnership prospects will be available for the right candidate. If you are interested, or would like to learn more about this excellent opportunity, please contact Alan Fry at Alan@agile-ip.co.uk. Agile IP LLP, Airport House, Purley Way, Croydon, Surrey CR0 0XZ Phone: +44 (0)20 8915 1010 | Fax: +44 (0)20 8915 1049

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“

IP Support have a good understanding of the specific needs of our industry and have proven themselves capable of sourcing high quality candidates

”

Patent & Trade Mark Attorney Firm

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

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020 7776 8966

info@ip-support.co.uk

02/03/2017 09:32:49

THE PINKS

RECRUITMENT

Biotech Opportunities – London Our Biotech practice is acknowledged to be a leader in its ﬁeld and has been growing steadily for the past 10 years. Success breeds success and we are keen to hear from ambitious, commercially minded attorneys who would like to join us.

attorneys who enjoy what they do and do it to the best of their ability every day. With a clear career progression path and ambitious plans for the future, we are conﬁdent that we have a lot to offer you in return.

The team can offer ﬁrst rate opportunities to work for major multinational clients in the biotech ﬁeld, with drafting, prosecution and opposition work all available. Our focus is on quality above all else. We aim to recruit the brightest and the best to ensure we maintain and build a thriving team of

For a conﬁdential chat call Morwenna Scholes, our HR Director, on 020 3770 6127 or apply direct to mscholes@mathys-squire.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

100 CIPA JOURNAL

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THE PINKS

RECRUITMENT

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CIPA JOURNAL 101

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THE PINKS

RECRUITMENT

carpmaels.com

Carpmaels & Ransford is recruiting :H DUH D IXOO VHUYLFH (XURSHDQ LQWHOOHFWXDO SURSHUW\ ȴUP at the forefront of the rapidly changing IP landscape. :H DUH UHFUXLWLQJ IRU SDUW TXDOLȴHG /LIH 6FLHQFH SDWHQW DWWRUQH\V WR MRLQ RXU WKULYLQJ /RQGRQ WHDP Those joining our team will have:

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A Biotech or Pharma background with excellent academics

A supportive and sociable team-based working environment

1-4 years’ experience in the profession

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For more information contact us: T +44 20 7242 8692 W carpmaels.com/careers E careers@carpmaels.com

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Associate Patent Attorney Roles (London) IT & Engineering As a result of strong growth we are seeking two recently qualified patent attorneys to join our IT & Engineering team. Whilst software and telecoms experience is preferred, successful candidates can expect to be involved in a variety of technologies with a spread of different client types and a good balance of direct and agency work.

Play to your strengths At GJE we understand that our fee-earners bring a host of different skills with them each day besides their technical and legal expertise. From an early stage you will have the opportunity to contribute to the success of the firm in the areas which are a best fit for you. So, whether you are natural at bringing in new business, have a passion for mentoring less experienced colleagues, or you prefer the nuts and bolts of what being a patent attorney is all about, you can forge a role for yourself here at GJE.

Our success is down to the people we employ Our firm has a clearly defined strategic vision for where we are heading and an impressive track record to match. There are around 100 of us in our City office, so we’re small and friendly enough for you to get to know everyone – but big enough to offer you great career prospects. Plus you’ll get your own office in the iconic Broadgate Tower.

8S WR WKH FKDOOHQJH EXW QRW \HW TXDOLïHG" If you see yourself growing into one of these roles but have not yet qualified then perhaps now is the time to develop your career under new tutorage? At GJE we offer our trainee attorneys a full range of direct client work with intellectually and technically challenging subject matter, allowing a seamless transition into the Associate role.

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Apply now at www.gje.com/careers or email your CV to careers@gje.com

REC-pp103-GJE_1.indd 103

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THE PINKS

RECRUITMENT

Qualified Patent Attorney Engineering/Physics/Generalist New oﬃce, central London

London Calling The addition of our London office strengthens Wynne-Jones IP’s continued growth and significance in the national and international IP law market place. We’re on the look-out for a qualified Patent Attorney to play a key part in developing this important new office. Making the Grade

Opportunity Knocks

The successful candidate will be a qualiﬁed Patent Attorney who will exemplify the commercial and forwardthinking ethos that is Wynne-Jones IP’s hallmark. You will have excellent client facing skills, a feel for high quality customer service and an appetite to go beyond the brief; your mindset will be that of a ‘team’ player.

Our new London oﬃce is a serious investment and reﬂects the Firm’s continued strength and growth within national and international markets.

Your background can embrace mechanical engineering through to electronics/IT and physical sciences but candidates with degrees outside of these ﬁelds should not be discouraged from applying if they have skills as a generalist.

Wynne-Jones IP’s proven and effective professional support systems and the Firm’s visionary commitment to an enlightened work/life ethos are key elements that make this appointment unique. Add in a highly competitive remuneration package and this is an opportunity not to be missed for the candidate with flair, drive and an eye to career progression. This is a key appointment and the overall remuneration package reflects this importance.

For more details about Wynne-Jones go to our website www.wynne-jones.com Interested? Then please get in touch with our retained consultant Graham Marlow on +44 (0)1423 522838 or email your CV to: graham@marlowiprecruit.com quoting reference 2043. This assignment is being handled by Marlow IP Recruitment and all direct or third party applications will be forwarded to them for consideration.

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Olswang offers its people:

Join our global law firm with a commanding reputation in IP

Patent Attorneys London, UK wide

A competitive salary and

Olswang is a full service law firm where our people are empowered to deliver to our clients.

Opportunities include

Patent Attorney – Software/Electronics Part Qualified Patent Attorney – Life Sciences Trainee Patent Attorney – Electronics

Excellent client exposure and sector driven approach

These key roles will involve prosecution work, including drafting, filing and opposition work, as well as the opportunity to work on exciting commercial and litigation projects. These specialist career paths will suit ambitious people looking to progress their careers as UK and European Patent Attorneys.

Interested in being part of our firm? Visit www.olswang.com/careers to find out more. Alternatively, connect with our recruitment team recruitment@olswang.com to explore the range of opportunities.

A modern, technology-focussed environment enabling flexible and remote working

CMS, Nabarro and Olswang will combine on 1 May 2017, creating the sixth largest law firm in the UK. The new firm will have 450 partners and over 2,500 lawyers in the UK. CMS will have over 4,500 lawyers across 65 offices in 36 countries worldwide. This combination will deliver a distinctive, technology-driven offering to clients, bringing together market-leading sector specialists with outstanding global reach, underpinned by a 250 year heritage in the City and Scotland.

A values driven environment

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TOP TIER FIRM YOUR LIFESTYLE Working at D Young & Co offers attorneys the opportunity to work with world renowned clients, alongside highly acclaimed and motivated peers, and forge exciting and successful careers. Whether your lifestyle leads you to want the cosmopolitan city life or to be based in WKH FRXQWU\ \RX FDQ IXOO\ KDUQHVV \RXU SRWHQWLDO E\ MRLQLQJ D ¿UP WKDW RIIHUV D WRS WLHU IXOO ,3 ODZ VHUYLFH ZRUNLQJ DORQJVLGH RWKHU VSHFLDOLVWV LQ \RXU WHFKQRORJLFDO ¿HOG Described by Managing IP as having “a dynamic partnership and talented people”, you could join our team and help to deliver real excellence to our world class clients. We are currently looking for attorneys to join our Electronics, Engineering and IT GHSDUWPHQW ,I \RX DUH UHFHQWO\ TXDOL¿HG RU DQ H[SHULHQFHG DWWRUQH\ DQG DUH NHHQ WR combine your career with living the lifestyle you want, please contact our recruitment team on 02380 719500 or view our current vacancies at www.dyoung.com/careers.

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01/03/2017 18:19:10