CIPA Journal, May 2017 by CIPA Journal

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

May 2017 / Volume 46 / Number 5

IP rights after the EU A special edition of the CIPA Journal: intellectual property rights and Brexit

The Chartered Institute of Patent Attorneys

Wider Brexit issues for the IP community Bristows

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Ratification of the UPC Agreement Vicki Salmon

SPCs and regulatory exclusivities Julia Florence

Should the UK leave the Nagoya Protocol? Tim Roberts

CIPA webinar series “UP and UPC” is here Pippa Allen

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Contents 66 13

3-36

BREXIT

NEWS

EDUCATION

51 66

Non-institute events “UP and UPC” is here

70 76

Institute events Patent Practice in the UK

View from the IPO

Sean Dennehey 4

Brexit and the UPC/UP

Vicki Salmon 6

40 41

EU Competition Law

Helen Hopson, Noel Watson-Doig, Alan Johnson Data protection and enforcement

Trade marks and designs

Alicia Instone 16

SPCs and Regulatory Exclusivities

Julia Florence

Patent Box and R&D Relief

Beverley Ouzman

View from China

Nagoya Protocol

Tim Roberts

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PERSONAL 62

Overseas report

Manual of Patent Practice

The not-so-secret diary

Andrea Brewster Going Remote

Heather Lane 72 74 75

Obituaries Announcements Crossword

Unconventional No.8 by Edgar Wunder

EPO decisions

Bristows Patent decisions

THE PINKS

Beck Greener 49

Frederick Ch’en 34

Alison Madgwick

Erin M. Sommers, Kassandra M. Officer

DECISIONS

Hiroshi Sheraton, John Groom, Birgit Clark

View from Japan

Proposed changes to statutory patents fees

Pippa Allen

Dr Amanda R. Gladwin

Handong Ran 33

Examination prizes Withdrawal from the European Union Singapore – new patent rules and fees

Gladys Mirandah 42

Alexander Dittel, Alan Johnson 13

Council Minutes

Lee Davies

IPO decisions

Barker Brettell 52

Trade marks and other IP

79 82 84

Courses and events International Recruitment

Bird & Bird

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CIPA JOURNAL Editor Deputy Editors Special Edition Editor Publications Committee Production and advertising Design Cover design Contact

Alasdair Poore Sean Gilday; Jeremy Holmes Rebecca Gulbul Bill Jones (Chairman) Iain Ross, 020 3289 6445, sales@cipa.org.uk Neil Lampert Jonathan Briggs 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.

CIPA CONTACTS

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 Lea Weir Samuels 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 Education Administrator: Bernadette Dulko 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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View from the IPO

n its long and illustrious history, the CIPA Journal has covered numerous topics of great interest and importance. Even compared with those, the subject of this special edition must rank highly: the decision of the British people to leave the European Union, and the process of implementing that which is now underway, is truly unprecedented. When the Prime Minister triggered Article 50, firing the starting gun on a period of negotiation ahead of the UK’s

for both the UK and our European partners. There is no question that the negotiations will be very wide-ranging and complex. Even within the field of intellectual property, and those which it touches, there are myriad questions, complexities and nuances to be identified, analysed, and resolved. The UK intellectual property regime is one of the best in the world. In saying that, I have in mind not only my own personal belief, but also the evidence of various surveys and indices. I am also

The UK’s hard-earned reputation matters and is worth protecting if we are to make the UK the best place in the world to innovate, to patent, and to set up and grow a business. withdrawal from the EU, she made clear that we are seeking a deep and special partnership with Europe, and that our objective is to secure a deal that works well

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conscious that this position derives from the synergistic interaction of various factors, including the legal framework, the enforcement mechanisms, the

Sean Dennehey

educational initiatives, and of course the broad spectrum of IP professionals, among whom members of the Chartered Institute of Patent Attorneys are very eminent. I hope you will also agree that the Intellectual Property Office forms an important part of that mix. The UK’s hard-earned reputation matters and is worth protecting if we are to make the UK the best place in the world to innovate, to patent, and to set up and grow a business. We at the IPO are working very closely indeed with government colleagues to make sure that intellectual property issues are fully considered in the preparations for leaving the EU, with the clear goal of maintaining an effective intellectual property ecosystem that supports British innovation and creativity. As ever, we are keen to work in partnership with the IP community, to understand perspectives and concerns, to inform and to explain, so as to deliver solutions which work in the real world. CIPA is and will remain central to that endeavour, providing up-to-date and robust thinking. This special edition of the CIPA Journal amply demonstrates how well placed it is to do that. Sean Dennehey is the Acting Chief Executive and Comptroller-General of the IPO.

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Brexit and the UPC/UP Dead in the water or ready to launch? An update on the UK’s ratification of the UPC Agreement. By Vicki Salmon (Fellow)

hen I woke up on 24 June 2016, I thought that the European project for a Unitary Patent (UP) and Unified Patent Court (UPC) was dead. My first reaction was “all that work, gone to waste”. However, I soon found myself back in the mix, working out whether that first reaction was justified and, if not, how we could go forward. The upshot of the work which was done in the summer and autumn of 2016, is that we are on the point of ratifying the UPC/UP. What is still required from the UK is the passage of two statutory instruments relating to the Protocols on Privileges and Immunities. One of these will be laid in the Westminster Parliament and one in the Scottish Parliament. We had hoped that these would be laid earlier this year, before the triggering of Article 50. However, this did not happen. We were then expecting them to be laid after the Easter recess, however, the calling of a General Election has again cast doubt on the timetable. Although I understand that the IPO is pressing for them to be swept up in the legislation being passed before Parliament is prorogued, it is unlikely that this will happen, which will lead to further delay. In the meantime, the UK has continued to move towards implementation. Remaining international treaties were laid in Parliament earlier this year, as required. The Statutory Instrument extending the UPC/UP to the Isle of Man was passed in February 20171. Once the legislative process is complete, then the Foreign Secretary will be asked to sign the instrument of ratification and that will be deposited. The delay in this process has led to some saying that the UK will not ratify. However, as far we know, the UK is still intending to ratify. The start of the UPC/UP requires 13 ratifications, including the UK, France and Germany. France has ratified, as have 11 other European Union member states, Italy having done so in February 2017. So once the UK and Germany ratify, the system will be up and running. Ratification is in hand in several other EU states and German ratification is expected later this year. Germany will first notify an intention to ratify, but is expected to hold back on formal ratification until the court

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is ready to start. This is because the UPC Agreement has no transitional provisions. So that final ratification starts the fourmonth count down to the start date. We also have the Protocol on Provisional Application – a transitional provision protocol – which was agreed so that the Registry and Administrative office can start before the UPC Agreement comes into force allowing cases to begin. It can hire and train its staff, roll out the IT system, complete the recruitment of judges and make sure that there can be a sunrise period for any opt outs and other registrations. That Protocol on Provisional Application needs to be ratified by 13 states. It is short of the necessary signatures, but it is expected that those will be forthcoming. The hoped for start date is December 2017. That may not be achieved now, but a start by early 2018 is likely. So we and our clients need to get ready. It is hard to know how Brexit will impact the UP or the UPC, especially as we are now in the throes of a general election and must await a new government to take the process forward. We believe that the UK can stay in and with sufficient political will, the UK should be able to do so. The UPC is formed under an international treaty. It is not a court of the EU, even though it is to be set up by countries within the EU. It will have a first instance and an appeal court. Where it needs to decide questions of EU law and that is not “acte clair”, references will be made to the Court of Justice of the European Union (CJEU). That does mean that the CJEU would continue to affect law in the UK, but it is not directly applied by the UK courts. So from the point of view of the government’s stated wish to be free from the CJEU, this is an exception (but possibly not the only one), but due to the international nature of the UPC, it stands in its own space. Staying in the UPC when we are not a member of the EU will require some amendment of the UPC Agreement. For example, references to EU member state will need to be changed to a state contracting under the UPC. One of the problems with the UPC Agreement is that it is lacking in many respects. At one point, it was “too early” to comment on the details and try to amend the wording. Then, following the triggering of “Enhanced Co-operation”, the agreement was suddenly set in stone and www.cipa.org.uk

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UPC/UP

it was “too late” to make any changes. Changes ahead of implementation would require complex treaty negotiations. But once the UPC is up and running, the Administrative Council has some leeway to make amendments and that is expected to be an easier forum in which to make necessary changes. Any required changes may more easily be done after the UPC starts, than now. There is also a question as to whether the UPC Agreement member states can confer the jurisdiction on the CJEU to accept references on points of EU law, if one of the contracting member states is not a party to the EU. Some commentators think it is enough that the UPC Agreement provides for such referrals. However, others think that a separate agreement with the EU would be necessary in order for the CJEU to accept that it has jurisdiction to hear any references. This will doubtless be ironed out in the course of the Brexit negotiations. There is also a question as to how, if we stay part of the regime, unitary patent protection can continue for the UK. The Unitary Patent Regulation is EU legislation. So this will need a mechanism for replacement and it may take more than just a by-line in the Great Repeal Bill. Article 142 of the EPC may continue to provide a mechanism for this: 142(1) Any group of Contracting States, which has provided by a special agreement that a European patent granted for those States has a unitary character throughout their territories, may provide that a European patent may only be granted jointly in respect of all those States. The detail has still to be worked out. Being patent attorneys, we like to know about the potential downsides and what would happen if we go into the UPC, but have to come out again. That mechanism still needs some work. The focus has been on how to go in and stay in. We will need to address the “what ifs” as well. However, discussing divorce provisions at the same time as you are trying to stay married could be interpreted as us trying to leave. It is therefore helpful that other voices have begun to discuss what happens if someone (not necessarily the UK) wants to leave the UPC. Dr Margot Fröhlinger, Principal Director of Patent Law and Multilateral Affairs (EPO), addressed the Westminster Legal Policy Forum Seminar “The Future for UK’s patent framework” in London on 2 February 20172. She chose to depoliticise this issue and discuss what would happen if any member state chose to leave. There are no provisions in the UPC Agreement for any state to leave, whether they just wish to come out of the UPC Agreement or whether they are leaving the EU as well. Departure would need to be orderly and preserve existing rights. This would be a way of enhancing user confidence. She said: Volume 46, number 5

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“UK or other UPC member state choosing to leave UPC and UP in the future should be obliged to meet principles of national and international law… governing any involuntary loss of protection”. Accepting therefore that not just UK but any UPC member state may leave the UPC in the future, Dr Fröhlinger pointed to a very logical way forward, by which much uncertainty falls away: “It is premature to talk about exit of UK. We should focus on making the UPC enter into force and make it a success. It is realistic to make general inclusion on transition now and specifics later.” If we were to start in the UPC and then come out, the rights that need to be preserved would include those of any unitary patents taken out while the UK was a member state, the continuation of any litigation begun while the UK was a member state, and the enforceability of decisions already taken by the UPC prior to exit. Article 175 EPC is a useful model for provisions of this nature but sadly does not have any effect in the context of UPC. There would also need to be a continued respect of the UPC either to give assistance during litigation (e.g. orders for disclosure which can be obtained using the letters rogatory process) or, as now, where the European judges pay attention to each others’ decisions in respect of common provisions of patent law derived from the EPC or the Community Patent Convention. Given how close we have come now to the UPC starting, we have to prepare for it coming into being, whether the UK is part of it or not. Any change in the law carries many uncertainties. This project carries many, not least because the decisions taken around the form of patent protection have such far-reaching implications. Once the election is over and the IPO is out of pre-election purdah, we will be continuing our discussions about how the UPC will start and all the “what if” scenarios for UK remaining in or coming out of UPC at Brexit. This is so that we can have as much information as possible before patentees have to start deciding whether to discuss opting EP patents out of the UPC jurisdiction or whether to embrace the UPC, including whether to seek unitary patent protection as part of their patent strategies and whether this might change once the risks around Brexit are past. Vicki Salmon is Chair of CIPA’s Litigation Committee. and a director at IP Asset.

Notes and references 1. The Patents (Isle of Man) (Amendment) Order 2017 (2017/162) 2. With thanks to Pippa Allen, Appleyard Lees, for her notes of the conference.

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EU Competition Law

The issues raised by Brexit for IP rights holders extend not just to the direct effect on IP rights such as SPCs and EUTMs. There are myriad regulations and parts of treaties that currently have direct effect and will fall away unless replaced in the Great Repeal Bill. In many cases, a simple “repeal-and-replace” approach will not work: it will not be possible for the government simply to enact UK legislation to mirror the regulations that will disappear. Lacunae may be created, or the UK will fall back upon equivalent, but not necessarily identical legislation or legal principles. In other cases, the issues that arise are more matters of international cooperation where the framework for cooperation is very much a bilateral matter incapable of being the subject of unilateral legislation. In this and the following article, the authors seek to identify issues, perhaps not central to readers’ day-today practice, but in which they will likely be interested and may therefore wish to keep an eye on as the UK’s Brexit position emerges. By Helen Hopson, Noel Watson-Doig and Alan Johnson (Bristows)

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hen it comes to the issues raised by Brexit, ignorance really is bliss. There are few areas of law – perhaps criminal law is one – where the tentacles of the EU have not reached. A brief inquiry into almost any topic immediately reveals issues of very significant complexity. It is hoped that the choice of topics, whilst very far from exhaustive, will at least cover the major areas of potential interest to readers both in private practice and in industry. In this first article we look at competition law and its cousin state aid.

Competition law At this stage, the exact implications for EU competition law in the UK post-Brexit remain inherently uncertain. However, recent developments have clarified some issues. When triggering Article 50 on the Treaty on the Functioning of the European Union (TFEU) on 29 March 2017, the Government announced that neither future EU laws nor rulings of the Court of Justice of the European Union (CJEU) will apply in the UK, following the Great Repeal Bill (the “Bill”) coming into force. At the time of writing it appears possible, although by no means certain, that these new arrangements will come into place only following a transitional period (or “implementation phase” as the Prime Minister has termed it) lasting for a number of years during which EU law and the primacy of the CJEU will continue to apply. However, it also made clear that the Bill will convert all directly applicable EU laws into UK law, as well as preserving the laws we have made in the UK to implement our EU obligations. That includes existing Regulations and (to the extent not fully enacted) Directives. However, according to the UK government White Paper ‘Legislating for the United Kingdom’s withdrawal from the European Union’ this process will only copy across treaty obligations where they give rights to individuals. In principle, that includes EU competition law, which is directly enforceable in private proceedings. www.cipa.org.uk

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However, it is not clear that this is in fact the government’s intention: the purpose appears to be to ensure that workers’ rights are protected. In any event, the process of copying across EU laws will precede a period during which those laws are removed or amended: in the longer term, EU competition law is highly likely to cease to apply directly in the UK. Whatever the status of EU competition law after Brexit, the government has confirmed that ‘historic’ CJEU case law will be given the same binding precedent status in our courts as the decisions of our own Supreme Court. The government has stressed that the Bill will seek to ensure that, wherever possible, the same rules and laws will apply on the day after we leave the EU as before. It therefore appears certain that the status quo (for all EU law including competition law) will be maintained in the immediate term and realistically that major changes are unlikely in the short to medium term, given the time and resources that will be required for the implementation of any major policy changes. At its highest level, Brexit is unlikely to alter the fundamental attitudes to competition policy in the UK, and there will be no direct impact on UK competition law itself. The UK and EU’s economic policies are based on the principle that undistorted competition results in the best outcome for the economy, and it therefore seems most unlikely that the UK would alter this position post-Brexit. However, in the longer term, the fact that an English court

will no longer be subject to its current obligation – arising under Article 4(3) TFEU – to ensure consistency between UK and EU competition, and will be free from the duty of sincere co-operation, means that greater divergence (and perhaps protectionism) will become possible. Moreover, there are many knotty issues of both procedure and substance as to how the government’s plan will play out in practice in the competition law arena. Below we set out what we consider to be the most relevant issues of which IP rights holders should be aware.

Competition law infringement, investigations and enforcement Even if EU law no longer applies in the territory of the UK, EU competition law (Articles 101 and 102 of the TFEU) will continue to apply to UK businesses post-Brexit if their agreements or conduct have an effect within the EU. Therefore, participation by a UK company in a cartel with effect in the EU will continue to face fines and investigation by the European Commission. However, post-Brexit the Commission will have no powers to carry out on-site investigations (dawn raids) in the UK, or to ask the Competition and Markets Authority (CMA) to do so on its behalf. The role of the Commission will be curtailed to making written requests for information, as it currently does for companies located outside of the EU.

Exhaustion of rights, parallel importation and trade agreements These important issues are intimately linked to the nature of the market. Since we do not yet know exactly what the UK’s relationship to the European Single Market and Customs Union will be, we cannot predict what changes may be necessary or desirable following Brexit. However, the Exploitation Committee and Council are very well aware that these issues are controversial and that different industry sectors may take opposing positions in future discussions. The IPO has established a working group of interested parties, including CIPA, to consider and discuss these issues. At the time of writing, the first meeting of that group has been scheduled, but has not yet taken place. Our position going into these discussions is that CIPA is not in favour of international exhaustion except as part of a trade agreement that opens up the market between the parties and where agreeing to international exhaustion does not result in an imbalance between the positions of the parties. However, we will be listening to the positions taken by the other participants in the working group and to views expressed by our members and will take these into account as we develop and refine our position. The Exploitation Committee is also developing principles that we believe should be taken into account when negotiating the IP provisions for Trade Agreements between the UK and other countries. These will be submitted to Council and other relevant Committees in May and published once finalised. Catriona Hammer, Chair of CIPA's Exploitation Committee

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The enforcement of competition law in the UK postBrexit is also likely to see significant changes. Currently, not only is the substance of UK competition law very similar to that of EU competition law, there is also a statutory requirement for UK competition law to be applied consistently with the rulings of the CJEU – section 60 of the Competition Act 1998. However, it seems likely that this obligation will be removed by the Bill. Even though, as noted above, existing EU case law will remain binding, this will not have direct precedential force where a breach of UK competition law is concerned. It appears that EU block exemptions for certain types of agreements and licences such as the Technology Transfer and Research and Development Block Exemptions will be transferred into UK law by the Bill. The accompanying guidance will not be formally transferred, but it can be expected that its relevance will continue to be rather similar: even now, these documents are not binding in the EU courts, and rather merely provide explanatory information about how the block exemptions should be applied. However, once these exemptions expire (in 2026 and 2022 respectively), the UK may see this as an opportunity to adopt more permissive replacements designed to make the UK a more attractive venue for R&D and licensing collaborations compared to the EU. Equally, subject to the rules of any trade deal that may be negotiated with the EU, the UK will no longer be subject to the ‘Single Market imperative’, which aims to ensure that parallel trade is not restricted. This change would result in the removal of certain limitations in the application of the block exemptions (i.e. those dealing with territorial restrictions aimed at protecting parallel trade and the single market). The prohibition on the CMA undertaking a parallel competition enforcement action to the Commission will fall away post-Brexit (Regulation 1/2003), so the CMA will no longer be prevented from taking parallel action to enforce UK competition law in relation to the UK aspect of a Europe-wide cartel being investigated by the Commission. Equally, the close co-operation between the CMA and the Commission may be weakened, with the future relationship looking more like the EU’s relationships with the competition authorities in non-EU third counties (although the CMA has made clear in a number of recent public pronouncements that it wishes to maintain close ties and co-operation with the European Competition Network – a network it holds in high regard).

It is important for IP owners to be aware that EU competition and state aid law will remain in force in the UK during the course of the Brexit negotiations and potentially until the end of a transitional period.

Competition litigation Private enforcement of competition law has the potential to be significantly affected by Brexit. Under existing EU law consumers and businesses can bring actions for damages and injunctions in the UK courts or the Competition Appeal 8

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Tribunal, either on a stand-alone basis or following on from an infringement decision by the Commission. Following Brexit, the UK will fall outside of the EU legal regime. However, the existing common law regime on jurisdiction and the recognition and enforcement of judgments is largely fit for purpose, already enabling many disputes involving non-UK/EU companies to be successfully litigated in the UK. The English courts are also well able to enforce foreign torts where it is an appropriate forum for a dispute. Nevertheless, claimants considering competition claims will wish to consider carefully the appropriate forum, and may need as a matter of prudence to bring parallel actions in the UK and the EU. Over time, the UK courts’ enforcement of competition law could start to diverge from that in the EU, resulting in a ‘North Atlantic drift’, particularly given it will be free from internal market policy considerations.

Mergers The implications of Brexit for merger control are considerable. The current parallel EU/UK merger system is a “one-stop-shop” in which larger mergers are reviewed by the EU and smaller mergers are considered by national authorities. Following Brexit, the UK will no longer be a Member State of the EU and will not be part of the Single Market. The “one-stop-shop” will no longer apply to mergers with effects in both the UK and the EU. This is likely to lead to the CMA having an increased case load, including considering larger mergers. At present, no substantive change to the UK merger regime is expected – other than the lifting of certain financial thresholds for a merger to fall within the regime, on which the CMA is currently consulting. In particular, it is intended that the regime should remain non-mandatory as a formal matter, although it is likely to remain the case that any merger presenting potential competitive overlaps should be notified. It is possible that, over time, additional areas of business will be given protection against acquisition by non-UK companies. There have previously been calls for such powers to be granted to the UK government, as during Pfizer’s proposed acquisition of AstraZeneca. The likelihood of such developments depends in part on the nature of any trade deal negotiated with the EU, and on the general political climate.

State aid

industry, the UK will be free (again subject to the terms of any UK-EU trade deal) to grant subsidies to industries throughout the UK, only restrained by WTO anti-subsidy rules. This could allow the government to decide to extend tax breaks available to research-driven organisations or decide to support the life sciences sector directly (as in the US) by reallocating funds previously destined for the EU. By contrast, beneficial tax treatment of corporations is currently an important area of development for EU state aid law – a notable example is the obligation on Apple to repay €13bn to Ireland, following unlawful tax rulings. The EU Commission continues to investigate a number of other similar cases.

Conclusion To conclude, it is important for IP owners to be aware that EU competition and state aid law will remain in force in the UK during the course of the Brexit negotiations and potentially until the end of a transitional period. UK competition law currently mirrors EU law, and will continue to apply in the same way both before and (initially) after Brexit. After the UK has fully left the EU, certain aspects of EU law will continue to apply for the short to medium term under the Bill. However, in the longer term it will be possible for the UK law to diverge from EU law. It is unlikely that this will affect the fundamentals of competition law; nevertheless, some divergence is likely, for example, to reflect the fact that the UK will no longer be a member of the Single Market so will not be bound by its objectives. As EU Regulations and Directives expire, further divergence is possible. On the UK’s exit from the EU, decisions of EU institutions will no longer apply in the UK (potentially with the exception of competition law infringements, such as cartels, that only come to light after the UK has left the EU), but they will continue to apply (within the EU) to the actions of UK companies that have effects in the EU. This is likely to result in parallel regulatory enforcement actions and litigation in the EU and the UK. Companies should be aware of the need to consider relevant notifications to both the EU and UK authorities, in particular in the spheres of mergers and cartel leniency. Alan Johnson is a partner, Helen Hopson a senior associate, and Noel Watson-Doig an associate at Bristows in London. See more at www.bristows.com.

State aid law prohibits Member States from distorting competition by giving financial assistance to specific businesses; it is purely a creature of EU law and is not mirrored in the UK. Post-Brexit, the need for aid to be assessed by the Commission will no longer apply. Although the UK has generally been hostile to taxpayer subsidies to Volume 46, number 5

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Data protection and enforcement In this second Bristows’ article, Alexander Dittel and Alan Johnson look at some wider areas of potential interest to IP professionals: data privacy / data protection, and enforcement issues, namely, exhaustion and Brussels Regulation issues.

ata protection law has been in the spotlight because of the impending General Data Protection Regulation (GDPR), which, in May 2018, will replace most data protection laws across Europe with a single regulation. Businesses operating in Europe, including the UK, have started preparing for the new law. However, Brexit has created further uncertainty about how the new law will apply in the UK. The GDPR will become law in its current form in the UK before Brexit happens but it is expected that the Great Repeal Act will make some necessary changes to the GDPR post-Brexit. These changes, however, are likely to be minimal as is suggested by the fact that the government considers it important to adopt the GDPR in full in order to facilitate the Brexit negotiations. Numerous UK regulators including the Information Commissioner’s Office (ICO) and the Financial Conduct Authority already operate on the basis that the GDPR will apply, as is evidenced by the guidance documents they have issued as well as the public statements made. The UK’s New Digital Strategy published on 1 March 2017 also refers to the GDPR. There are further reasons why the UK should fully adopt the GDPR. First, the GDPR will have extraterritorial application, which means that the majority of UK businesses operating in the EU will have to comply with it anyway. In such circumstances, it makes sense to adopt equivalent domestic law. Secondly, if the UK leaves the EU it will no longer be automatically considered as a jurisdiction providing adequate safeguards for personal data and organisations and EU Member States will not be able to freely transfer personal data to their counterparts and partner businesses in the UK. Instead, they will have to rely on one of the lawful transfer mechanisms such as the Model Clauses or Binding Corporate Rules. In order to ensure unrestrained data transfers, the UK will have to apply to the European Commission to obtain a finding of adequacy and set up something like a “UKEU Privacy Shield”. If the UK did not adopt the GDPR in full, this process could be significantly delayed. This is particularly important in light of other non-conforming legislation such as

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the Investigatory Powers Act 2016, which could also affect the speed of this process. The GDPR will bring important changes, including, among other things: •

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Increased consent requirements including the requirement of “explicit” consent for the processing of special categories of data, such as medical data. This will mean, for example, that more care will have to be taken in the preparation of consent forms in relation to healthcare research. Increased transparency requirements. The data controller will have to ensure that a transparency notice is made available to each individual whose data is being processed even if the data is obtained from a third-party source. Removal of the legitimate interest ground for processing by public authorities. On the other hand, the lawful grounds for processing necessary for medical and public health reasons will be extended. These will be relevant to the pharmaceutical sector not least for pharmacovigilance. Mandatory appointment of a Data Protection Officer (DPO) in most circumstances; The privacy by design concept which should not be ignored by inventors and patent attorneys. Increased statutory and contractual obligations on data processors. This means that, for example, in investigator-led clinical trials the sponsor will have additional contractual and statutory obligations relating to data protection. The introduction of pseudonymisation, which, if applied to, for example, patient data, will lower regulatory risk but not extinguish data protection requirements. Regulation of genetic data will be left to the laws of individual Member States. This may lead to an inconsistent regulatory landscape. The extension of matters that can be governed by industry data protection codes of conducts including international data transfers. We have not seen many codes of conduct www.cipa.org.uk

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but this may soon change. In this context, the European Commission is considering the revised Code of Conduct on privacy for mHealth apps, which will also be relevant to health data analytics. Increased rights of individuals in relation to their personal data including the new right to data portability. The more robust right to be forgotten could affect clinical trials and surveys. Increased information security requirements, which will also apply to data processors. Increased requirements on documenting compliance by way of policies, procedures, training, privacy impact assessments and other record keeping. Cross-border restrictions on data transfers will continue to apply. Mandatory notification of security breaches to the regulator as well as the affected individuals. Processors will have a statutory obligation to notify the controller. Significantly increased regulatory fines from the current £500,000 to the greater of 4% of global turnover and €20 million.

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However, some of the new changes are said to apply only to Member States and the UK will no longer be a Member State following Brexit. The following questions therefore arise:

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Will the ICO qualify to be considered a “lead authority” in relation to all cross-border processing of a multinational corporation across the EU as part of the one-stop shop concept envisaged by the GDPR? Multinational businesses will want to ensure that they are within the jurisdiction of a business-friendly regulator like the ICO. This issue may affect the ICO’s influence. Will UK businesses operating in the EU have to appoint a “representative” in the EU just like any other business caught by the extraterritorial scope of the GDPR or will the ICO qualify to be considered a relevant “data protection authority”? Will the ICO get a place at the table of the European Data Protection Board (EDPB), which will succeed the Article 29 Working Party, concerned with the consistent application of the GDPR across the EU? And will the consistency mechanism envisaged by the GDPR apply to the UK? Will UK businesses operating in the EU have to appoint a separate DPO in the EU? Will such businesses have to, in certain circumstances, notify breaches to the relevant EU DPAs as well as the ICO? To what extent will EDPB guidance and CJEU judgments regarding data protection be binding upon UK businesses and the ICO?

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The answers to these questions are not yet known and will depend on the direction of the Brexit negotiations. If the UK remains a part of the Single Market, which seems increasingly unlikely, the response to these questions would be in the affirmative. If, on the other hand, the UK negotiates a separate trade agreement with the EU the position will be determined by the agreed deal. It has been suggested that such a deal must leave the UK worse off but it is too early to say what this will mean for data protection. On a related note, the deadline for implementing the Network Information Security Directive is also May 2018. This means that the UK will have to adopt legislation that imposes information security requirements on operators of essential services and digital services providers. Under the Directive, it will become mandatory to safeguard the availability of services against likely risks and have in place business continuity and disaster recovery plans. Due to the increasingly close link between information security and data protection the UK is likely to match the Directive in domestic legislation. In conclusion, as most international and EU businesses get on with their data privacy compliance programmes and prepare for the new laws, some important questions remain unanswered relating to the continued participation of the UK in EU’s data protection regulatory framework. Data protection remains high on the agenda due to the importance of data flows for trade. A quick resolution of these issues, as well as other regulatory matters, could have a positive effect on the UK’s economy. However, we will have to be patient and wait for the outcomes of the upcoming Brexit negotiations.

Exhaustion of rights Exhaustion of rights within the EU is a natural consequence of the principle of freedom of movement of goods within the EU. Upon Brexit, these rules will no longer apply, so what will replace them? Unless a continuing participant in the Single Market, this is a difficult question, but without legislation on the topic, the most obvious result would be a return to the pre-accession position. At least in relation to patents, this would mean in effect international exhaustion, since the leading case Betts v Wilmott (1877) imputed into an unconditional sale an implied right to use and sell coextensive with the rights of the vendor. Whilst such rights could be limited contractually, the onus on the vendor would be very significant. So as to prevent rights arising for third parties purchasing bona fide without notice of limitations on the first sale, would goods have to be marked “for use in the UK only”? In many sectors, the return to such a position would seem highly undesirable. Hence a rule established by legislation would be preferable. What should that be? Most naturally it would be either for a continuation of regional (EU/EFTA) exhaustion or only national exhaustion. Stakeholders may wish to join the lobbying already taking place on this issue. 12

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Brussels Regulation Regulation (EU No.1215/2012) is the successor to the more familiar 44/2001, which in turn was the successor to the Brussels Convention 1968 (the UK joined in 1978). This instrument regulates the issues of jurisdiction, enforcement of judgments and service of documents in civil litigation, and as such plays an important role in the UK legal system. Its loss would, therefore, have major ramifications. It is also, it is to be added, a necessary part (although the Lugano Convention is a possible alternative) of continued membership of the UPCA. Preservation of the Regulation in some form, is therefore highly desirable. Paragraph 8.19 of the Government’s Brexit White Paper appears to recognise this. It reads as follows: “We recognise that an effective system of civil judicial cooperation will provide certainty and protection for citizens and businesses of a stronger global UK.” The questions, therefore, are probably: what are the ways potentially to keep the benefits of the system, and which is preferable? These matters have been considered by the London Solicitors’ Litigation Association (the LSLA) in a paper entitled “The UK’s future economic relationship with the EU”. As to the first question, they identify one step that can be taken without requiring the consent of the EU Member States namely to sign up to the 2005 Hague Convention on Choice of Court Agreements. That would, however, only provide a partial solution. A better alternative identified would be to sign up to the Lugano Convention. This is also sub-optimal, however, as the Convention has not been modernised in the same way that the Brussels Regulation has been – 1215/20102 is a recast version of 44/2001. Further, the updates provided in 542/2014 required for UPC purposes are also absent. This leaves the option (preferred also by LSLA), which is the so-called Danish solution. Due to its particular relationship with the EU, Denmark was not automatically bound by Regulation 44/2001 and instead entered into a jurisdiction agreement with the EU ([2005] OJ L/ 299/62). This could therefore be used as a precedent, and effectively extend the updated recast regulation to the UK. An issue would arise as to whether the CJEU would then be able to bind UK courts. Leaving aside the UPC issue, that could be avoided by the UK taking due account of CJEU decisions rather than being bound by them, and not referring questions to the CJEU (in any event, the ability of for references to be made to the CJEU relies upon Article 267 TFEU, and post-Brexit this would no longer apply to UK courts). If this arrangement could be agreed, it would essentially preserve, unchanged, the present system. As such, it is to be hoped this can be agreed to the mutual benefit of the UK and remaining EU Member States – a sentiment which may apply to many issues as we prepare for Brexit. Alexander Dittel is a data privacy and commercial lawyer in Bristows Commercial IP/IT team. Alan Johnson has advised on IP rights throughout his career with Bristows of more than 30 years. His experience extends across all industries and IP rights. www.cipa.org.uk

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Trade marks and designs A guide to some of the likely changes to trade marks and designs and how they could impact filing strategies in the wake of Brexit. By Alicia Instone (Fellow)

have been tasked with providing you with an informative article on how different aspects of trade mark and design law and practice will be affected by Brexit. One of the problems that I have with this is that at the moment we simply have no idea how trade mark and design law and practice will be affected by Brexit. European law and practice is so entwined in UK law that as one looks to see how we might “unpick” ourselves, new problems keep popping out of the woodwork. Putting all that on one side though, I will try to guide you through some of the more inevitable changes and how this should impact on the way you conduct filings, either for your clients if you are in private practice, or for yourselves if you are in-house.

The Jersey model: The UK unilaterally deems EUTM registrations to have effect in the UK. The IPO and UK courts would treat EUTMs as having effect in the UK for the purposes of examination, and this would involve a UK law deeming preBrexit EUTM registrations to cover the UK, without the need for recordal on the UK trade mark register or any other action.

Existing registrations

The Tuvalu model: Existing EUTM registrations would be entered onto the UK trade mark register, as for the Montenegro model, but only if the owner makes a positive decision to extend them to the UK – probably by filing a form within a set period.

EU Registered Rights, be they trade marks or designs, will no longer cover the UK when we leave the EU. CIPA have been working with the UK Intellectual Property Office (IPO) and other organisations to investigate what options the IPO has to prevent the loss of registered rights in the UK currently conferred by EU trade marks (EUTMs) and Registered Community Designs (RCDs). The Chartered Institute of Trade Mark Attorneys (CITMA) undertook work in August 2016 to map out seven possible options. However, we do have to remember that there is also an eighth option open to the government – do nothing and allow the loss of registered rights in the UK currently conferred by EUTMs and RCDs. I have set out below CITMA’s seven options (courtesy of Kate O’Rourke’s kind permission), along with a short explanation of what that option could include. Whilst the seven options are clearly trade mark based, one can envisage similar solutions for designs as well. UK plus: the European Union trade mark (EUTM) system ceases to be confined to the EU, instead extending to cover all EU countries plus the UK (and potentially other European countries such as Norway, Switzerland and EU candidate countries). Accordingly, all existing EUTM registrations would cover both the UK and EU, as well as other countries, after Brexit. Volume 46, number 5

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The Montenegro model: All existing EUTM registrations would be automatically entered onto the UK trade mark register as UK trade mark registrations with the same scope of protection, registration date and, where applicable, priority and seniority.

Veto: This scenario resembles the Tuvalu model, but the IPO would retain the right to refuse to allow a EUTM registration onto the UK register. This might particularly apply to marks which have previously been refused by the IPO, but were accepted for registration by the European Union Intellectual Property Office (EUIPO), or marks which are otherwise not inherently registrable under UK trade mark law or practice. The Republic of Ireland model: Owners of EUTM registrations would have the option to create a corresponding UK trade mark registration when renewing the EUTM registration, or up to a cut-off period (e.g. five years after Brexit), after which it would no longer be possible to opt in. The registration would be enforceable in the UK and EU until renewal. Conversion: Resembling the existing mechanism for conversion of EUTMs into national applications, the newly created UK applications would retain the application date of the EUTM registration and would undergo full examination by the IPO. MAY 2017

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The distinction from the existing conversion mechanism is that the EUTM registration would continue to exist. The Pros and Cons of each of these options has been further expanded upon in a number of articles both by CITMA and also by the Intellectual Property Lawyers’ Association (IPLA), which make very good reading. Practice point: If you are doing new filings in Europe now, please do not assume that the UK will end up being covered when it all comes out in the wash. If the right in the UK is important, suggest a dual filing to be on the safe side, particularly for designs where one cannot just re-file.

was sufficient for use while we were part of the EU) would still count after Brexit, and therefore if the use only continued in the UK and not in the EU, then those registrations would be open to cancellation for non-use after five years. The other way round is a little more tricky. What about all these “new” UK filings that have only ever been used in France, and have no intention to be used in the UK? Do we have to wait five years before we can get rid of all the “clutter” or will it be immediate? The answer at the moment is that we just do not know. Practice point: Do not panic about your EU registrations on Brexit. However, if the mark is not being used in the EU, consider using the mark in the EU to maintain use.

Existing applications

Seniority

At the moment we have no idea how these will be treated, and when they will be “moved” onto the UK register by whichever mechanisms is chosen.

Use

This is again a little tricky. What happens to any UK seniority claims when we create the “new” UK rights? Do they get lost? Do we create some concept of seniority in the UK that we have not really been comfortable with in the first place, or do all the UK-lapsed marks from which seniority was claimed suddenly be resurrected? And then, if all the UK-lapsed marks are suddenly resurrected, and let’s imagine that they are all single-class registrations from the 1948 Act, we no longer have any way to combine the registrations into one and so full renewal fees will be due on each one.

What about exiting registrations that have only been used in the UK. Will they suddenly be open to non-use cancellation actions at the EUIPO? The short answer is no. The use in the UK (if it

Practice point: Make sure you do not allow any applications to lapse going forward assuming that seniority is taken care of!

Practice point: Bear in mind that a case you have been fighting for the last three years (or more…) may end up not being “moved” and you will have to go through the whole fight again before the IPO.

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Deferred publication of registered designs

Representation

It is worth noting that the period by which publication of a design can be deferred in the UK is different to that in the EU, and by a considerable difference (12 months in the UK compared with 30 months in the EU). So what happens to designs which have been filed at the EUIPO with requests for deferred publication that become “new” UK registered designs? Again we do not know. We would suggest that the UK aligns itself for all designs to the 30 months, particularly as this will match up with the Hague international system, but this may not happen.

This is a thorny topic – and as it stands, without any negotiation, “we” will probably lose representation rights before the EUIPO. That being said this is a negotiation point, and wider legal services are also at issue. At present we do not know which way this will go.

Practice point: When filing designs going forward where deferment is to be requested, highlight the fact that when these become “new” UK registered designs, the deferment period could change to 12 months, which might have a knock on effect on patent filings.

International (Madrid/Hague) designations WIPO has given an indication that the UK will be treated as a successor state for Madrid Designations, and as we have not quite joined the Hague yet, that we would also either be treated as a successor state if we join before Brexit, or joint on Brexit. However, it is likely that if you want your International applications to designate the EU and the UK after Brexit regardless of what the IPO do for “national” EUTMs or RCDs, you will need to do something for international cases. Practice point: Do not assume that international cases designating the EU will be treated the same way as “national” EUTMs or RCDs, and most likely there will be a form to fill in and a fee to be paid.

Unregistered designs Now, while the White Paper on the Great Repeal Bill indicates that necessary legislation will be put in place so that on Brexit the law does not suddenly change overnight, if we want an unregistered design right that covers both the UK and the EU and offers the same scope of protection as the current EU unregistered design right, that is going to require some negotiation. Practice point: Do not rely on there being an equivalent EU unregistered design right on Brexit. If UK unregistered design right does not fit, then get the design registered if possible in the UK/EU depending on where protection is required.

Agreements It is likely that some decision will be made as to what EUROPE/ EU means at a higher level of government, and if “new” UK trade marks and designs are created that they will be a continuation of the EU right. Practice point: It is probably a good idea to revisit any agreements to see if there is a way to shore them up now to clarify what the parties mean by the EU / Europe, and to clarify that an EU right includes any UK right that may be derived from it arising. Volume 46, number 5

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Practice point: Look at how you can meet the current requirements for representation, assuming that the requirements do not change in negotiations. This might be through opening on office in the EU, employing an EU national who is qualified in the EU, or developing reciprocal arrangements with other EU firms to ensure that there is a seamless transition for the work.

Injunctions There is a question over whether a pan-EU injunction will still be effective in the UK on Brexit. Arguably the right will still exist here after Brexit with the “new” UK-created right that would have been the subject of the injunction. However, depending on the “use” provisions decided it might not be that long before the “new” right could be challenged if there was no use by the rights holder in the UK. Practice point: If you have had injunctions granted against you or against others using your marks keep an eye out for marks able to be challenged that may impact on the validity of the injunction.

Ongoing proceedings Another thing to bear in mind, stepping a little further outside my comfort zone, is the question of what will happen with ongoing proceedings. When will the cut-off be for UK courts to have jurisdiction, will they still be able to grant pan-EU injunctions, and when will we start to get shipped off for proceedings in Alicante?

Exhaustion A final thing to consider, which is fraught with political debate, is what type of exhaustion of rights will we end up having? Will it be national, regional or international and where will the hard borders be?

Summary At the moment, the situation is not clear and all we can do is guess the direction we might go in and plan for the worst-case situation, which should come as second nature to us all. CIPA is working closely with the IPO and other organisations in the alphabet soup to make sure that the IPO is aware of all the hidden problems in the areas I have discussed above, and more besides. All I can say at the moment is fingers crossed and watch this space. Alicia Instone joined the profession in 2005; she is a Chartered Patent Attorney, a European Patent Attorney, a Chartered UK Trade Mark Attorney, and Patent and Trade Mark Attorney Litigator at the newly merged Cleveland Scott York. Alicia sits on the Council for CIPA and is an active member of the CIPA’s Trade Marks, Designs & Copyright, and Business Practice committees. MAY 2017

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SPCs and Regulatory Exclusivities The impact of Brexit on Supplementary Protection Certificates, Regulatory Data Protection and Orphan Drug Exclusivity. By Julia Florence (Fellow).

he EU currently provides various rights, in the form of exclusivity periods, for pharmaceutical products, which are required to undergo a lengthy regulatory review. Certain of these exclusivities are also available for veterinary and plant protection products. Supplementary Protection Certificates (SPCs) effectively provide an additional period of patent protection, up to a maximum of five years, for a pharmaceutical, veterinary or plant protection product, which has received marketing approval in the EU/ EEA. Regulatory data protection (RDP) prohibits the EMA and national regulatory bodies within the EU from relying on an originator’s regulatory data, submitted in respect of a marketing authorisation for pharmaceutical or veterinary product, in order to approve a corresponding generic product, for a period of eight years from the original marketing approval in the EU. Such a generic product may not be placed on the market for a further two years (i.e. total of ten years from the original marketing approval in the EU). Orphan drug exclusivity (ODE) is intended to incentivize development of drugs for rare diseases, having an incidence of not more than five in 10,000 people within the EU. Orphan drugs may obtain ten years marketing exclusivity from the first approval in the EU, during that time European regulatory agencies may not authorise a ‘similar medicinal product’ for the same therapeutic use (although there are some exceptions to this). Finally, there are also rewards for carrying out paediatric clinical trials, in the form of a six-month extension to the SPC term, or a two-year extension to the ODE term.

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These rights are all linked to the European regulatory framework for human and veterinary medicines and their duration is effectively based on the first marketing approval – or in the case of ODE, first approval for an orphan indication – of a drug in the EU. RDP will generally run concurrently with the patent term; sometimes it provides a period of exclusivity beyond the patent term, but often expires before that. If the first marketing approval for a drug is in respect of an orphan indication, then ODE and RDP will run in parallel.

EU review of incentives for drug development In light of increased pressure on health funding in Europe, including drug costs, the European Commission has embarked on a review of the legislative instruments and related incentives for the development of medicinal products in the EU, with particular attention to SPCs, data exclusivity for medicinal products and market exclusivity for orphan medicinal products (referred to by the Dutch government as “the top-ups”). While the UK remains a member of the EU, it will play a full part in this review; even after Brexit EU provisions relating to medicinal products will of course be of great importance to the pharmaceutical industry. However, given the wide ranging nature of the review it seems debatable as to whether it will have reached a conclusion within the next two years.

What will happen post-Brexit? SPCs, regulatory data protection and orphan drug exclusivity are currently governed by various EU regulations, which poses major questions regarding their position in the UK www.cipa.org.uk

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after we have exited the EU. After triggering Article 50 on 29 March the UK government published a White Paper outlining the so-called ‘Great Repeal Bill’. This is intended simultaneously to repeal the European Communities Act and convert the existing body of EU laws and regulations into UK law (referred to as “domesticated EU law” or “EU-derived law”), initially with the minimum of changes. Although this will be effected by reference, and the EU regulations will not be ‘copied out’ in to UK law, it appears there will be provisions allowing for ‘technical’ changes to be made by secondary legislation to ensure the laws function properly once we have left the EU. The White Paper mentions, by way of example: “legislation [which] may refer to the involvement of an EU institution or be predicated on UK membership of, or access to, an EU regime or system”. This would seem to apply to the regulations concerning SPCs, RDP and ODE, as they are all predicated on the EU regulatory framework for medicines. Thus, in the short term at least, the provisions for SPCs, RDP, orphan drug exclusivity and paediatric exclusivities should continue to function in essentially the same way after the UK’s exit from the EU, as they do today. Changes may be made later, for example to refer to UK approvals rather than EU/EEA approvals as the trigger for these rights.

The regulatory framework As noted above SPCs, RDP and ODE are linked to the first marketing approval (respectively first approval for

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SPCs, regulatory data protection and orphan drug exclusivity in the UK are currently governed by EU regulations and directives, which will continue to be in force until the date the UK exits the EU. Until that time the UK will play a full part in any EU initiatives in relation to these rights, including the current EU review of incentives for the pharmaceutical industry. The UK government intends to convert all existing EU legislation into UK law effective on the day the UK leaves the EU.

an orphan indication) of a drug in the EU/EEA. This may be either a centralised marketing approval, issued by the European Commission following an Opinion from the European Medicines Agency (EMA) or a national marketing approval issued by the national regulatory body of an EU Member State. For the UK this is the Medicines & Healthcare products Regulatory Agency (MHRA), which – like other EU national regulatory bodies – currently provides support to the EMA in issuing EU marketing authorisations. At the time of writing, it seems that the location of the EMA will almost certainly need to move from its current UK base to one of the EU27 Member States, but the post-Brexit relationship of the MHRA with the EMA remains unclear. It is possible that after EU exit approvals for new medicines

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in the UK will only be available via a national UK marketing approval issued by the MHRA; these would be separate from those issued for the EU27 by the EMA/Commission and would likely take effect on different dates. However, it is far from clear whether the MHRA will have the capacity to start independently issuing approvals immediately after EU exit, or whether for a transitional period they would, for example, endorse the EU approvals. There is also the question of applications for marketing approval submitted before Brexit and still pending at the effective date of exit. Will these continue to be processed by the EMA, or transferred to the MHRA? If they are processed by the EMA, how will the eventual EU approval be treated as regards the UK? These issues need to be kept in mind when considering how the various regulatory exclusivities will function post-Brexit.

SPCs SPCs are currently governed by Regulation (EC) No 469/2009 (based on the earlier regulation 1768/92). The scope of this Regulation, as set out in Article 2, extends to:

There are no provisions for a unitary SPC and it therefore seems likely that a holder of a UP would still need to seek SPCs via national patent offices.

“Any product protected by a patent in the territory of a Member State and subject, prior to being placed on the market as a medicinal product, to an administrative authorisation procedure as laid down in Directive 2001/83/EC… relating to medicinal products for human use or Directive 2001/82/EC… relating to veterinary medicinal products…” One of the key requirements laid down in the Regulation for obtaining an SPC is that

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The exact date on which the UK will leave the EU – the deadline is 29 March 2019. Could it be earlier – or later? The extent to which secondary legislation will be used to amend the SPC, RDP and ODE regulations in order for them to function correctly post-Brexit. This may be necessary to ensure the provisions are linked to a UK rather than EU regulatory system. What the regulatory system for pharmaceutical and veterinary products will look like after we leave the EU. Will the MHRA function independently or will there be some reliance on or continued cooperation with the EMA, at least for a transitional period? Whether there will be any changes to the rights provided by SPCs, RDP and ODE in light of the current EU review of incentives – although it seems unlikely that any changes could be agreed and implemented in the next two years.

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“a valid authorisation to place the product on the market as a medicinal product has been granted in accordance with Directive 2001/83/EC or Directive 2001/82/EC, as appropriate.” [Article 3(b)] The SPC Regulation also makes reference to Regulation (EC) No 1901/2006, which relates to the paediatric extension. As noted above, it may not be sufficient to transpose the SPC regulation into UK law simply by reference, and it appears that secondary legislation may be necessary to ensure proper functioning of the provisions after EU exit. However, it is currently not clear how this will operate, and whether specific changes will be required e.g. to replace references to other EU regulations and directives. Depending on how changes to the regulatory framework are implemented, it may be necessary for a transitional period to retain reference to EU marketing approvals as well as UK approvals. Another key requirement of the SPC Regulation is that the product in respect of which the Certificate is being obtained is “protected by a basic patent in force” – Article 3(a). As far as the UK is concerned, this will be a UK national patent, or a UK patent derived from a European www.cipa.org.uk

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application. Of course such patents are not subject to EU law and so no changes are required in this respect. But what about the Unitary Patent? This adds a further layer of complexity. As yet there are no provisions for a unitary SPC and it therefore seems likely that a holder of a UP would still need to seek SPCs via national patent offices. The UP is governed by an EU regulation, and at present there is uncertainty regarding the position of the UK visa-vis the Unitary Patent post-Brexit, even if it is able to participate in the UPC. However, it is anticipated that any EU-derived IP rights covering the UK, will be preserved as UK rights. So, at least in the short term, following EU exit, the SPC provisions should continue to function in the UK more or less as they do now, and existing SPCs should be preserved. In view of the government’s intention for a ‘seamless transition’ it is anticipated that there will also be no change in respect of SPC applications still pending at the date of EU exit. However, where a UK SPC is applied for post-Brexit, and is based on a UK marketing approval rather than the first marketing approval in the EU, it may well result in a different duration of protection than that in the EU27 (as is currently the case for Switzerland). What about the longer term? Anyone who has worked with the SPC regulation will know that its provisions have been interpreted at length by decisions of the CJEU. The White Paper indicates that the Great Repeal Bill: “will provide that historic CJEU case law be given the same binding, or precedent, status in our courts as decisions of our own Supreme Court”. However, once the UK is outside the EU, future decisions of the CJEU will not be binding on the UK courts, and over time this could well lead to a divergence in the operation of the law as between the EU and the UK. In recent years the UK courts have been a fairly frequent source of referrals to the CJEU in respect of the SPC regulation, and it is clear that they are not entirely satisfied with the answers that have so far been handed down. We could therefore see the UK courts coming to different conclusions from those of the CJEU (and potentially a reduction in the number of referrals to the CJEU). The UK government has also made it clear that following EU exit it will review the laws that have been ‘taken in’ from Europe. It seems doubtful that the SPC regulation will be high on the list of priorities, but nevertheless, the possibility exists that it could be significantly revised; whether this is a challenge or an opportunity remains to be seen.

Regulatory data protection Provisions for regulatory data protection (in respect of products authorised via the Centralised Procedure) are included in Regulation (EC) No 726/2004, which lays down: Volume 46, number 5

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What we would like to happen • • •

The minimum of disruption to the existing regimes. Maintain at least the current standard of rights in relation to SPCs, RDP and ODE. Consider whether SPCs could be extended to other products subject to regulatory delay, such as medical devices.

“Community procedures for the authorisation and supervision of medicinal products for human and veterinary use and establishing a European Medicines Agency”. This would clearly seem to be “legislation [which] may refer to the involvement of an EU institution or be predicated on UK membership of, or access to, an EU regime or system” and thus very likely to require secondary legislation to ensure it functions in UK law. However, based on the White Paper, such secondary legislation is not intended to make any substantive changes to the effect of the law. We would therefore expect periods of regulatory protection to continue as before, albeit perhaps calculated from a UK rather than an EU marketing approval.

Orphan drug exclusivity Regulation (EC) 141/2000 provides incentives and rewards for developing medicines to treat rare diseases; it also contains provisions for setting up a Committee for Orphan Medicinal Products within the EMA. Thus, as for the RDP regulation it would appear that secondary legislation will be needed to bring this Regulation fully into UK law upon EU exit.

Conclusions On the basis of the proposed Great Repeal Act it appears that SPCs, RDP and ODE will continue to apply in the UK after Brexit in essentially the same way as they do today. CIPA, and industry, are fully engaged with the government in ensuring that IP rights and regulatory exclusivities are preserved and continue to function smoothly up to and after EU exit. Julia Florence is a senior patent attorney at GlaxoSmithKline and has extensive experience of managing IP portfolios for pharmaceutical products at all stages of development. This includes working with SPCs as well as advising on other types of exclusivity available for pharmaceuticals. MAY 2017

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Patent Box and R&D Relief Will Brexit have any impact on the UK Patent Box? By Beverley Ouzman

t its simplest, Patent Box is a tax incentive for UK-based innovation, which relies upon the grant of a qualifying right within a qualifying territory for an organisation to obtain a reduced level of corporation tax for profits gained on the technology concerned. The qualifying right must either be owned or exclusively in-licensed by the claimant for tax relief. As initially introduced, the UK Patent Box was subject to criticism (mainly from Germany and the Netherlands), and indeed the OECD (Organisation for Economic Co-operation and Development) concluded that it was ‘harmful and open to abuse’. In light of the criticism, phase-in of a modified Patent Box regime commenced in June 2016. As many will be aware, the modified Patent Box regime introduced significant changes to the ‘Patent Box’ system, which now require a ‘nexus’ (link) between the claimant for tax relief and the research and development investment, which must have a UK basis. These 2016 changes to Patent Box were made to align the UK Patent Box with the OECD Base Erosion and Profit Shifting (BEPS) project.

Patent Box after Brexit? The 2016 changes to Patent Box have not been driven by EU legislation, and the OECD (although based in France) is an international, rather than EU, organisation and has many member countries outside the EU. The UK would remain a member of the OECD after Brexit. The legislation underpinning the Patent Box scheme in the UK is domestic. So Brexit itself is unlikely to have any immediate impact on the current system (a huge relief for those of us who are still getting to grips with the latest changes and their complexities). That said, Brexit could trigger a review of the “qualifying rights” required to claim tax relief under the Patent Box system. At its heart, Patent Box requires there to be “qualifying right”. This is currently defined as patents granted by UK or EPO (irrespective of where the EP patent might be brought 20 CIPA JOURNAL

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into force), or by the national patent offices of certain countries within the EEA (namely Austria, Bulgaria, Czech Republic, Denmark, Estonia, Finland, Germany, Hungary, Poland, Portugal, Romania, Slovakia, Sweden), as well as patent applications otherwise allowable but not granted by the UK IPO due to being subject to a secrecy order. Thus, the definition of “qualifying rights” insofar as it relates to patents, was originally drafted so as to include patent rights that were considered to be similar in nature and to have similar examination procedures to a UK patent. The rationale for this definition will remain unchanged by Brexit and, of course, since the UK will remain a contracting state of the EPC there would appear to be no reason to change the options for a “qualifying right” insofar as patents are concerned. It is possible, but in our view unlikely, that the definition of “qualifying rights” as based on patents will be reviewed. We expect that the vast majority of “Patent Box” claims will rely upon patents rights, and so will therefore be unaffected by Brexit. There is the option, indeed for the definition to be broadened to include patents granted by non-EEA territories such as Japan or the US. However, the definition for “qualifying rights” is actually of broader scope than just patents and includes: • •

•

SPCs (Regulations (EC) 469/2009 and 1610/96); plant breeders’ rights and plant variety rights (granted either under Part 1 of the Plant Variety Act 1977 or under Community Plant Variety rights granted under Council Regulation (EC) No 2100/94); and certain marketing exclusivity rights and regulatory data protection rights (Regulation (EC) 726/2004 or Directive 2001/83/EC and which benefit from marketing protection by virtue of Article 14.11 of Regulation (EC) 726/2004 and Article 10.1 of Directive 2001/83/EC respectively, and also products benefiting from marketing protection under Regulation (EC) 141/2000). www.cipa.org.uk

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Such rights currently fall into the definition of “qualifying rights” and can be used as the basis of a claim for tax relief under Patent Box. There is a much stronger likelihood that the ability to claim Patent Box tax relief on the basis of “qualifying rights” derived from the EU Directives and Regulations indicated above will be reviewed and changed. This is of course particularly relevant to human and veterinary medicines, plant breeding and plant varieties to which the above Regulations and Directives apply. However, the urgency for such a review is likely to be low, in view of other priorities. Patent Box could also be affected by more general changes to rules around tax relief, which are currently influenced by the European Commission. As an example, SME Research and Development relief falls under the definition of “EU state aid” and therefore uses the EU definition of “SME” to ascertain whether an entity qualifies for the benefit. The EU also imposes a restriction that caps the amount of State Aid available to an SME and limits relief on projects that already benefit from State Aid. The State Aid regulations are imposed by the EU to ensure fairness in competition for companies across the EU. Any financial support provided under the SME R&D scheme requires approval from the European Commission in a process known as ‘notifying’ the State Aid and other sources of state funding

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such as the Seed Enterprise Investment Scheme (SEIS), funding from Innovate UK and even a grant for an IP Audit also fall within notified State Aid. Currently, any changes to State Aid requires EU-approval. These limitations are all EUderived so that it is possible that such restrictions could be reviewed and modified (or even abolished) following Brexit, and certainly more flexibility would be available to the UK government to design and to provide incentives to early-stage companies. Note that the parallel scheme for Research and Development Credit (RDEC), which is relevant to non-SMEs, is purely a UK-based regime with no influence from, or reliance on, the EU. There is no reason why this scheme should be impacted by Brexit and indeed, arguably, there is a heightened need to demonstrate incentive for business investment within the UK, so that it is difficult to see any reason for the government to abolish this scheme in the foreseeable future. In conclusion, Patent Box will remain largely unaffected by Brexit, and Brexit will provide increased flexibility for government support for SMEs than is currently possible. Both areas are likely to be of low priority for the UK government in tackling the issues arising from the Brexit process. Beverley Ouzman (Fellow) is a member of CIPA Council and runs Glasgow-based Ouzman IP. See more at www.ouzmanip.com.

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Copyright and neighbouring rights The potential effect of Brexit on copyright and neighbouring rights in the UK. By Hiroshi Sheraton, John Groom, Birgit Clark (Baker McKenzie).

hile the precise impact of Brexit still remains unclear as at early April 2017, the “leave” vote will definitely have implications on how intellectual property rights in Europe are managed and enforced. Much has been written about how Brexit may affect patents, the UPC and registered pan-EU rights, such as European Union Trade Marks and Registered Community Designs. This article, however, explores the potential impact of Brexit on copyright, which despite the existence of nine EU Directives in the field, is perhaps the least harmonised intellectual property law in the EU. As we will see, the effect of Brexit on copyrights and some selected neighbouring rights will not be uniform.

Ante-Brexit: the UK’s patchwork copyright system Copyright law represents one of the more complex areas when analysing the potential impact of Brexit, being very much a patchwork of national, EU and international law. On the one hand, much has been harmonised through various EU Directives and Regulations in certain specific areas of copyright law in the EU over the last 25 years and the Court of Justice of the European Union (CJEU) has set EU-wide standards for key aspects of copyright law. On the other hand, the UK has retained a degree of control over other unharmonised aspects of copyright law, perhaps more so than in other areas of intellectual property law (such as trade marks, designs) where harmonisation was more comprehensive. Ante-Brexit the UK thus has an asymmetrical copyright system, with some elements derived from EU law and others unique to the UK. Having said that, the scope for any dramatic change of copyright laws and principles postBrexit is somewhat limited due the framework provided by the various international copyright treaties and agreements of which the UK is a signatory1.

The Government’s Brexit White Paper As in so many other areas of Brexit, much will depend on the negotiations with the remaining 27 EU Member States (EU27) and whether a soft or hard Brexit will occur. Until we have more meaningful insights, much of what can be said at this time is 22 CIPA JOURNAL

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necessarily speculative. However, aside from various rumours that are circulating, what do we know at this stage? We have some information from the government. Aiming for a “new, positive and constructive partnership” with the EU, the UK Government’s Brexit White Paper “The UK’s exit from and new partnership with the European Union” of 2 February 2017 at first glance contains little from an intellectual property law perspective. The White Paper does not directly comment on IP law and it is perhaps fair to say that the government does not see IP as an area of utmost priority. The White Paper does, however, touch upon leaving the jurisdiction of the European Court of Justice (CJEU) and states the importance of science and innovation in the UK. It also – albeit in passing – mentions that there are Pan-European systems of intellectual property rights registrations, referring of course to registered European trade marks and designs. Copyright does not receive any specific mention.

Business as usual for the time being Brexit will not result in a full-blown departure of copyright and neighbouring laws from the European system. Instead, we expect business as usual for the time immediately following Brexit: most EU Directives relating to copyright have been implemented into UK law and the so-called “Great Repeal Bill” is expected to implement copyright-relevant EU regulations (i.e. those EU law instruments that have direct effect in the UK while it is an EU Member State) into UK laws once Brexit is complete. However, until then, EU law will also evolve, which adds another level of uncertainty to any prediction. Notably, the House of Commons European Scrutiny Committee on 6 April 2017 published a report on how the system by which the House of Commons scrutinises EU legislation may need to adapt in light of the Brexit withdrawal negotiations. The Committee in this report expressly notes that EU legislation and policy will continue to be developed while the UK negotiates Brexit. The Committee notes that even if changes at EU level do not involve the UK directly, they may make a significant difference to the context of negotiations. www.cipa.org.uk

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Copyright law represents one of the more complex areas when analysing the potential impact of Brexit, being very much a patchwork of national, EU and international law.

Brexit and harmonised copyright UK to voluntarily conform with EU copyright standards? As already mentioned, various EU directives and regulations impact the protection of literary and artistic works, particularly in the field of (digital) media. The UK has a highly sophisticated media tradition, and has developed an effective and profitable industry. However, this industry relies on access to EU consumers and markets. Practical considerations are therefore likely to impact how the government approaches this particular area since it would be difficult for the UK to function independently from the remainder of the EU in the face of increasing integration of markets for the consumption of digital content. While future UK governments may decide to re-assess UK legislation implementing EU laws, there is therefore an incentive for the UK to voluntarily decide to conform to the (copyright) standards adopted in the rest of the EU in many areas, much as Switzerland has done. This will be most pertinent when it comes to the EU Commission’s plans for a far-reaching EU copyright reform for the so-called Digital Single Market, which was released in September 2016 and thus after the Brexit vote. Volume 46, number 5

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Scope for change and independence? One immediate complexity will be on the scope of crossborder aspects of copyright since many provisions in existing laws refer to the “Community”, the “European Union”, a “Member State”, “another EEA state”, etc. This will require changes to some of the existing implementing provisions and/ or careful interpretation by the courts. However, Brexit will also allow the UK to gradually reconsider some aspects of its copyright regime that was previously dependent on the EU, within the confines of the global standards found in the various international copyright treaties and regimes2. Therefore, Brexit presents a chance for change and independence from EU law initiatives: will the UK introduce a new exception for commercial data mining? Could there potentially be a US-style fair use exception? Will the UK introduce new copyright-relevant rights for a type of digital patent? Will the UK post-Brexit decide to repeal the changes to section 52 Copyright Act?

The role of the UK courts Once Brexit is complete, UK courts tasked with interpreting UK laws that implement EU law will no longer be directly bound by the perceived purpose of any underlying EU legislation, nor by the jurisprudence of the CJEU. Indeed, where CJEU case law and interpretation went beyond (or against) the actual text of the directives and implementing UK laws, UK courts will no longer be bound by the CJEU’s guidance and may well decide that some case law should no longer be followed. UK courts could for example decide that the term “works” should be exhaustively defined was according to the traditional UK position rather than be non-exhaustive, as appears to the CJEU position. Another obvious field of divergence in interpretation is the issue of originality. Here UK courts could either continue following the EU approach of “the author’s own intellectual creation” or return to the more Anglo-Saxon concept of “skill, labour and judgment”. The list goes on. The interpretation of existing and/or implemented laws by independent UK courts could in time lead to an increasing divergence in the application and interpretation of the law.

The effect of Brexit on selected rights and issues While long-term divergence is difficult to predict, there are some selected areas of copyright that are likely to be more immediately and/or potentially more strongly affected by Brexit.

Computer software Two areas of law relating to protection of computer software present opportunities for divergence from EU laws – EU exhaustion and the scope of protection. MAY 2017

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By way of background: the EU Computer Programs Directive was implemented into UK law by the Copyright (Computer Programs) Regulations 1992 (SI 1992/3233) (Regulations) (amending the Copyright Designs and Patents Act 1988). This provides protection for software within the traditional framework of copyright as a whole, including the extended term of protection of lifetime plus 70 years.

1. Exhaustion In relation to computer software, Article 4(2) of the Software Directive (Directive 2009/24/EC) explicitly states that: “The first sale in the Community of a copy of a program by the rightholder or with his consent shall exhaust the distribution right within the Community of that copy…”. Article 4(2) InfoSoc Directive (Directive 2001/29/EC) includes similar provisions. This area of law has also been the subject of several high-profile CJEU decisions, including case C-128/11 UsedSoft and case C-166/15 Ranks and Vasilevics, in which the CJEU explored the limits of this exhaustion doctrine in much detail. Adoption of this principle into UK law on the day of Brexit implies free movement of software between the UK and the EU27, which may be inconsistent with the UK government’s broader approach to leaving the EU single market. This suggests that the question of exhaustion, and specifically whether to adopt UK or EU-wide (or broader) exhaustion, will need to be considered as part of the Brexit negotiations.

2. Policy considerations Secondly, longer term, there is the potential of the underlying UK laws on computer software diverging from EU law on the basis of policy considerations and in light of the government’s commitment to science and innovation. As artificial intelligence (AI) and machine-learning technologies become more prevalent, the way software is created and/or edited will change and increasingly involve editing by machines and it is difficult to reconcile such activities with the laws of copyright authorship. This could allow the UK to take a different approach to computer software law in response to technological developments, given that it will not necessarily have to compromise with the EU27’s interests and national legal traditions. New technologies in the fields of AI and machine learning have the potential to create new opportunities for UK businesses and industries, which could allow the UK to tailor its laws in order to allow for sufficient room for innovative and disruptive technologies to drive economic growth. This could lead to more significant differences from the EU position over time bearing in mind that the EU Parliament and Commission have already introduced initial draft laws in the field of AI in early 2017. 24 CIPA JOURNAL

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Sui generis database rights The EU sui generis database right is another significant area that will be affected by Brexit. Crucially, the existing EU sui generis database right is only available to European Economic Area (EEA) nationals and nationals of those countries that the EU, by specific legislation, recognises as providing “reciprocal protection” for databases. What is the difference? Under national UK law database rights are classified as literary works and receive copyright protection for the selection and/or arrangement of the contents under the Copyright, Designs and Patents Act 1988 (CDPA). This national UK protection is not the same as the EU “sui generis” right for database producers to “protect their investment of time, money and effort, irrespective of whether the database is in itself innovative (“non-original” databases)”. The perceived issue of a gap in protection post-Brexit is due to the “reciprocal protection” element mentioned above. The status of database rights in the UK in terms of not going to be enforceable across the EU would in all likelihood not be affected if the UK was to join the EEA post-Brexit. However, it appears from Mrs May’s speech in January 2017 on the UK’s strategy for exiting the European Union that the UK will be outside of this arrangement Some argue that post-Brexit a database created in the UK (at least those created post-Brexit) would no longer be protected, inter alia due to the loss of reciprocity. However, it is equally arguable that UK protection of non-original databases could be provided under the Great Repeal Bill. Similarly, newly created UK rights and/or an agreement with the EU could provide such reciprocal protection. In any event, this area is also one which should form part of the broader Brexit negotiations.

EU copyright reform As already briefly mentioned, the EU Commission in early September 2016, i.e. after the Brexit vote, released its digital single market provisions under its wide-reaching – and in some parts controversial – EU copyright reform. This is an evolving field of EU copyright law that may change before Brexit is complete, making any negotiations even more complex since the Commission’s plans are still changing.

Digital single market The Commission’s reform package includes a proposed EU Copyright Directive and Regulation and other laws relating to the digital single market and make for an ambitious laundry list: the proposed new EU Copyright Directive seeks to modernize the EU rules applicable to key exceptions and limitations in the areas of teaching, research and preservation of cultural heritage. It also focuses on digital and cross-border uses, seeks to address the perceived “value gap” between rights holders and user generated platforms and proposes a rather controversial press publishers’ right. www.cipa.org.uk

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If adopted, all of these proposals would substantially modernise and change EU and UK copyright laws. The current proposal by the Commission proposes a 12-month transposition period, which could, depending on the timing of the EU legislative system, mean that UK may be obliged to implement the EU copyright reforms prior to Brexit.

As before, the legal situation for UK consumers postBrexit will initially depend on negotiations between the UK and EU27. Having said that, portability is not entirely controversial and it is possible that rights holders and service providers will reach a commercial agreement to enable users to continue to benefit from portability after Brexit. This may happen regardless of whether the legal position changes.

Portability Regulation The first agreement related to the modernization on EU copyright rules as proposed by the Commission in the digital single market relates to the so-called Portability Regulation (Regulation). The final wording was agreed between negotiators of the European Parliament, EU Member States and the European Commission in February 2017. The Regulation sets out that providers of online portable audiovisual content services must enable cross-border portability for their users within the EU. This means that when, for example, a resident of France, is temporarily in another Member State (e.g. on holiday in Italy), he/she can still access all of the services that he/she subscribes to in his/ her home Member State. Once adopted, the Regulation will become directly applicable in all EU Member States, provided that the Regulation will take effect nine months after its publication (rather than the six months originally proposed). This is expected for early 2018 and would mean that, unless the UK has by then already left the EU, that the Regulation would initially also be directly applicable in the UK.

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Loss of formal UK influence Overall and as of early April 2017 it is unclear if and how the UK will adopt the EU copyright reform plans, even though practical and economic considerations will certainly play a role. What seems clear at this stage is that that post-Brexit the UK will be excluded from formally influencing EU legislation on new developments and technologies that are likely to affect intellectual property, such as the digital single market, and online transmission. In practical terms, there will still be opportunities for interested parties to communicate their views via lobbying and other channels, particularly for organisations with operations within the remaining EU states, but there is no doubt that the UK’s moderating, practical, more businessfriendly influence on the Commission is likely to diminish. While the UK government has already taken views from stakeholders and opened a consultation in September 2016 seeking comments on Brexit’s impact on, inter alia, copyright, creative industries and the digital single market, this is an area where stakeholders may decide to lobby the government.

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Audiovisual media services and broadcasting Another area of law likely to be affected by Brexit are audiovisual media services and broadcasting.

Audiovisual Media Services Directive In this context, the Audiovisual Media Services Directive (AVMSD) establishes a so-called country-of-origin principle. This requires that broadcasters who are licensed and regulated in one EU Member State be permitted to broadcast in other EU Member States without being subject to further regulation. It may well be that post-Brexit broadcasters established in the UK will need to acquire a license in every EU27 Member State where they provide services (or consider moving their establishments to an EU27 country). Looking at the effect of Brexit on different services more closely there are two distinct areas which will be affected in different ways: •

•

Linear services (i.e. traditional TV services, where the viewer watches a scheduled TV programme at the particular time it is offered): the Council of Europe’s Convention on Transfrontier Television contains a country-of-origin principle that is similar to that in the AVMSD. Post-Brexit broadcasters established in the UK may continue to provide linear services to countries that have signed and ratified the Convention. However, not all EU27 Member States are parties to the Convention. Broadcasting from the UK to those (and vice versa) may hence require additional licensing post-Brexit. Non-linear services (i.e. on-demand TV): these are not covered by the Convention on Transfrontier Television. As a result, services established in the UK could face local regulation in every EU27 Member State to which they provide non-linear services.

Promotion of European works The AVMSD also requires audio-visual media service providers to promote “European works”. Intriguingly enough, post-Brexit, EU27 broadcasters will continue to be under an obligation to promote UK works as “European works” since the AVMSD defines European works not only as works originating in EU Member States, but also as works originating in countries which are party to the Convention on Transfrontier Television, to which the UK is a party. On its part, as a signatory to the Convention, the UK will be required to promote works whose production is controlled by European natural or legal persons. Therefore, presumably, the UK will also be under an obligation to promote EU27 works post-Brexit. Nonetheless, the UK will wish to ensure that EU legislation continues to accord this preferential treatment to Convention countries post-Brexit.

Rights clearance The processes for clearance of copyrights are also likely to be impacted by Brexit. In this context, the EU Satellite and Cable 26 CIPA JOURNAL

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Directive facilitates a one-stop-shop for copyright clearance in Europe for satellite broadcasting. Recent reforms in this area of law propose to extend this one-stop-shop to certain Internet transmissions ancillary to broadcasting. Under these rules, the copyright-relevant act would take place in the country-of-origin of the broadcast. As a consequence, broadcasters would only need to acquire rights for the origin state to broadcast EU-wide and would not need to buy rights for every EU country. Post-Brexit, however, UK broadcasters may lose this one-stop-shop, making rights acquisition and clearance a more complex process.

Going forward: Brexit as an opportunity? In conclusion: Brexit will no doubt affect copyright laws in the UK and UK consumers and businesses. However, the effect will be more pronounced and immediate in some areas. As discussed, some changes will be brought about as a direct effect of Brexit, whereas other changes may be intentional decisions by UK lawmakers and UK courts and only happen gradually. As the UK IPO has stated in its recently (4 April 2017) updated guidance on IP and Brexit: The facts: “…while the UK remains in the EU, our copyright laws will continue to comply with the EU copyright directives, and we will continue to participate in EU negotiations. The continued effect of EU Directives and Regulations following our exit from the EU will depend on the terms of our future relationship.” Finally, and longer term, political, economic, technological and legal consideration will all influence the development of UK copyright law going forward and while Brexit will be disruptive, it also offers new possibilities and chances. Hiroshi Sheraton is a partner and John Groom is an associate in Baker McKenzie’s London IP team; Birgit Clark is a professional support lawyer in the firm’s EMEA IP practice group.

Notes and references 1. These include the Berne Convention for the Protection of Literary and Artistic Works, the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations, Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms, the Agreement on Trade-Related Aspects of Intellectual Property Rights and WIPO Copyright and WIPO Performances and Phonograms Treaties. 2. TRIPS, Berne and Rome conventions, the WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty.

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View from China Handong Ran (Fellow) interviewed a number of Chinese patent attorneys and in-house counsels on how they see the impact of Brexit on the UK and European IP landscape. Set out below is a summary of the main concerns and observations.

n a general economic level, Europe has been the most important trading partner for China in the past decade according to official statistics1. Despite the large volume of trade between Europe and China, many Chinese enterprises, especially SMEs, have had difficulties doing business in Europe or with European business partners, partly because of language and cultural differences and the rather complex legal systems in Europe. Having generally pro-free trade policies and English as the official language, the UK was naturally chosen by many Chinese enterprises as a bridge to reach the European market and to partly avoid the language and cultural barriers. This has worked well, and confidence among Chinese enterprises in this type of business models has built up over the years. However, for some, this confidence was shaken by results of the European Union (EU) membership referendum last year and subsequent triggering of Article 50 of the Treaty on the Functioning of the European Union. There is fear that the China-UK-Europe type of business models will not continue to work when the UK leaves the EU and if free movement cannot be maintained as result of the withdrawal negotiation (by way of the UK joining the EEA or otherwise). Concerns have also been raised in the intellectual property sector, some of which are discussed below.

Patent protection Many Chinese high-tech companies have started to realize the importance of patent protection to the growth of their businesses in the European market. This has been reflected by the increasing number of patent filings by Chinese applicants at the European Patent Office (EPO) in the last ten years (average year-on-year increase of more than 22%). In the last few years, the developments of the Unitary Patent (UP) system attracted a great deal of attention from Volume 46, number 5

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Chinese IP owners and users. There was high expectation for the UP system to become operational in 2014. Although the target launch date was pushed back several times, the attitude remained generally optimistic until serious doubt was cast on the future of the system by the referendum vote. Fortunately, confidence picked up again – as suggested by discussions in various IP-related WeChat groups – when confirmation was given by Baroness Lucy Neville-Rolfe (the UK’s IP minister at that time) on 28 November 2016 that the UK was set to ratify the Unified Patent Court (UPC) Agreement. It is now generally understood among Chinese IP owners and users – after great efforts have been made by officials from the UK Intellectual Property Office, professional bodies like CIPA, and individual attorneys from various UK firms to spread the “business as usual” message via media, in conferences and trainings – that the European Patent Convention (EPC 1973) is not EU legislation and will be unaffected when the UK leaves the EU. IP owners can continue to obtain UK patent protection by validating their European patents in the UK after the UK leaves the EU. Until Theresa May’s snap election call, it looked promising that the UP system would be operational from December 2017. The project may suffer further delay, but hopes are still high for a 2017 or early 2018 start date. Chinese IP owners and users need advice and/or up-to-date information on developments regarding the UK’s position in the system so as to design or adapt their patenting strategies for the change, and in particular for European patents to be granted within the period between the launch date and 28 March 2019 (the end of the two-year withdrawal negotiation). If the UK does not take part in the UP system from the launch date, which is unlikely, then no significant change in IP owners’ patenting strategies is needed insofar as UK protection MAY 2017

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is concerned. However, assuming the UK will take part in the UP system from the launch date but will not remain in system after it leaves the EU, it will not be a straightforward decision for some IP owners to make as to what validation plan should be taken for their European patents granted within this period of time. If an applicant wants to cover the UK by a European patent granted within this period of time, an applicant could either validate the European patent in the UK or elect unitary effect to cover the UK. As matters stand, applicants cannot validate in the UK in addition to electing for unitary effect2. If an applicant goes for the former option (UK validation), its rights in the UK will not be affected when the two-year period runs out (when the UK leaves the EU and the UP system). With this option, of course, the patent will not enjoy the unitary effect. If the latter (unitary) option is taken, when the UK leaves the EU, the unitary effect may no longer apply to the UK. Of course, it is unlikely that an applicant’s right in the UK will be lost suddenly, but it is unclear what transitional arrangements will be put in place to allow conversion of the UK coverage of the unitary patents to UK national rights or whether any actions need to be taken by the applicant to secure UK national rights.

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For patent applications recently filed or yet to be filed at the EPO, this is less likely to be a problem because they will probably not proceed to grant until after 28 March 2019. In view of these, one could ask, if the UK cannot maintain its position in the UP system after Brexit, maybe IP owners would be better off if the UK does not take part in the UP system from the launch date? Or perhaps, for inventions where UK protection is important and pan-EU protection is not crucial, Brexit is yet another reason for applicants to consider national routes rather than the EPO route.

Trade marks and designs Community Trade Mark rights and Registered Community Designs rights are created under EU regulations, which will no longer apply to the UK when the UK leaves the EU. It is unlikely for rights already granted to IP owners to become invalid overnight, but like the UP system discussed above, it is unclear what transitional arrangements will be put in place to allow right holders to convert their EU trade mark and design rights into national rights. If actions need to be taken by right owners before or within a period of time after Brexit in order to avoid losing their rights in the UK,

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a close watch on the development of the relevant rules will be needed. In terms of new applications, some companies have already started filing in the UK in parallel with European Union Intellectual Property Office (EUIPO) filings in order to be absolutely sure that their rights in the UK will not be affected. However, it is not clear what, if anything, needs to be done with regard to duplicate coverage in the UK after Brexit. A lot has been said regarding the importance of reviewing all licences/settlements/delimitation/co-existence agreements relating to portfolios of existing EU trade mark and design registrations and taking action now to mitigate any undesirable effects caused by a change in the geographical coverage of those registrations when the UK leaves the EU. However, this message appears to have not been well received by many Chinese IP owners. EU unregistered design rights were rarely used by Chinese IP owners. There seems to be a low level of interest in changes caused by Brexit on EU unregistered design rights.

Representation While it is now generally understood that UK-based European patent attorneys will still be able to prosecute patent applications at the EPO after the UK leaves the EU, clarification is needed as to whether UK-based European patent attorneys will be able to represent clients in postgrant proceedings relating to unitary patents, e.g., central revocation and infringement proceedings. Advice has been received by some Chinese IP counsels from various sources that UK-based European patent attorneys will not be able to represent them in central revocation and infringement proceedings for unitary patents. This has planted a seed of doubt in the minds of some Chinese IP counsels’ about the suitability of UK-based European patent attorneys to handle their European patent portfolios. Of course, every coin has two sides. For businesses where UK patent protection is crucial and where decisions have been made to go along the UK national route alone or in addition to the EPO route, it is still sensible to engage UK attorneys at the time of filing.

With regard to UK trade mark attorneys, there is no doubt that great efforts are being made to maintain their ability to continue to act before the EUIPO. However, Chinese IP owners tend to look at this with a more neutral (or less optimistic) view, and some of them have been advised that the risk of UK trade mark attorneys losing their representation rights at the EUIPO is not negligible. This may lead to a bias against UK trade mark attorneys when Chinese IP owners need advice relating to EU trade mark and design matters. Of course, for those companies that decide to file in the UK separately or in parallel with EU registration, it still makes perfect sense to engage UK trade mark attorneys.

Other topics of interest Some Chinese businesses, especially manufacturers exporting to Europe, are curious about whether there will be increased risks for them to be sued for patent infringement when the UPC is operational, and whether the new patent litigation system will be abused by non-practising entities. While understandably it is difficult to predict real effects of the UPC before the system has been tested for some time, observations on these points will be interesting for Chinese businesses. The start of the sunrise period for opt outs is scheduled to begin in September 2017, which will allow approximately three months for business to make any adjustments to EP grant strategies. It appears that many Chinese IP owners are yet to understand the importance of this opportunity. Another thing that needs to be borne in mind, by UK IP professionals when explaining effects of Brexit to Chinese audience, is that there has been a clear imbalance in awareness of potential effects of Brexit on the UK and European IP landscape between large businesses and SMEs. Many SMEs have received significantly less attention from European IP professionals than large businesses, but they too have clear needs to understand the effects so as to be able to prepare themselves for the change. Handong Ran is a partner at Maucher Jenkins, and head of the firm’s Beijing office; he is a member of CIPA’s International Liaison Committee.

Notes and references 1. https://www.census.gov/foreign-trade/balance/c5700.html http://trade.ec.europa.eu/doclib/docs/2013/may/tradoc_151348.pdf http://trade.ec.europa.eu/doclib/docs/2006/september/tradoc_113366.pdf http://ec.europa.eu/eurostat/documents/2995521/6893875/6-26062015-AP-EN.pdf 2. Patents (European Patent with Unitary Effect and Unified Patent Court) Order 2016 section 2, amending Patents Act section 77(1): “Subsection (1) does not apply and is to be treated as never having applied in respect of a European patent (UK) whose unitary effect is registered by the European Patent Office in the Register for unitary patent protection”.

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Brexit and Japanese companies Reassuring and supporting Japanese companies on the potential impact of Brexit. By Dr Frederick Ch’en (Hogan Lovells, Tokyo)

s Japan is eight hours ahead of British Summer Time, those of us waking up in Tokyo on Friday, 24 June 2016 experienced first-hand and in real time the referendum voting results as they were declared, culminating in the announcement around 3:30pm local time that the UK electorate had decided to “Leave the European Union”. The spike in urgent telephone calls and the rapidly falling sterling against the yen throughout that morning gave some indication of the likely outcome by lunchtime, but it was nevertheless an unexpected result to many in Japan. In the weeks and months after the result, we in Hogan Lovells’ Tokyo office have continued to support and advise our Japanese client companies and contacts on the likely issues and potential impact of Brexit, particularly on their UK and European operations. We have been fortunate to have a “Constitutional Taskforce” based in our London office, with which one of our Tokyo corporate partners, Jacky ScanlanDyas, is heavily involved. She has taken the lead for the AsiaPacific region within Hogan Lovells, and has interacted with the British Embassy, British Chamber of Commerce in Japan, NHK (the national broadcaster, equivalent to the BBC) and other media to help Japanese companies prepare for the possible changes ahead. We have also taken a sector-based and practice-based approach to informing Japanese companies of potential issues. Two of the strengths of Hogan Lovells globally are its international intellectual property (IP) practice and the multidisciplinary life sciences team. From this perspective, this article summarises some of the interactions we have had with Japanese companies, the topics that we have covered and some observations on how such companies appear to perceive Brexit.

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supplemented by on-going client seminars, in-house seminars and industry-sector newsletters that were tailored for Japanese companies. The remainder of this article focuses on the seminars that we gave in 2016 to Japanese companies interested in the potential impact on intellectual property, and also briefly on our sector approach to Japanese life sciences companies. As might be expected, we have seen increasing engagement as Brexit has become a more likely reality; indeed, many Japanese companies have been subscribing to our general and sector-specific webinars following Prime Minister May’s letter to the European Council on 29 March 2017 notifying it of the UK’s intention to leave the European Union.

Potential impact of Brexit on Japanese companies’ IP and related life sciences issues Brexit seminars generally In the majority of our Brexit seminars, we started by clarifying the difference between the 28 member states of the European Union (EU), the European Economic Area (EEA), and the European Free Trade Association (EFTA). We then explained the background to the UK referendum and that, from a legal perspective, it was advisory and has no legal force. We sought to emphasise that no laws have changed and that there is no certainty that any laws will change (at least at the time we gave the seminars). Given our audience, we also described in a little detail some of the key individuals in the UK and in Europe, along with their evolving political roles and responsibilities. We have also been keen to highlight some of the practical implications and actions that could be taken. For this reason, we covered likely next steps in the process, and discussed potential implications for Japanese companies, not only generally, but also divided into what might be expected in the short-term (e.g. market impact), between two and three years (e.g. change to UK laws and barriers to goods and services), and after three years (e.g. divergent regulation). In addition, www.cipa.org.uk

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we explained possible Brexit models, from “full divorce”, free trade, “pick & mix”, associate EU membership and adjusted EU membership. These commentaries appeared to be well-received and generated interesting discussion among our audiences. Consistent with the message from the British Embassy in Tokyo, and others, we explained that the possibility of real change has, naturally, increased and that the probability and shape of any real change (to the UK/EU relationship and, possibly within the EU) would become clearer during the course of 2016. One of our key themes was that there is still likely to be at least two years to prepare (because of the Article 50 mechanism) and, importantly, that Brexit is not all a threat to business: there will also be some opportunities and it would be a mistake for businesses to make fundamental changes at this stage. Our overriding recommendation was that Japanese companies’ current business priority should be to analyse, prepare and influence.

IP-focused seminars In the IP seminars to our Japanese audiences, we focused on three areas: patents, trade marks and IP transactions. We began by emphasising the current uncertainty (especially prior to the Article 50 notification), and that the position

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will change depending on the UK’s negotiations with the EU, whether the UK stays within the single market, and what transitional arrangements are agreed and implemented. Patents In relation to patents, we reiterated the differences among the member states of the EU, the EEA and EFTA, and, in addition, the European Patent Convention (EPC). As the EPC is not a creation of EU law, we emphasised that the UK would remain a member of the EPC. This has been an important point, not least because Japanese companies are prolific filers of European patent applications. A natural topic of interest has been the forthcoming Unitary Patent (UP) and Unified Patent Court (UPC), not just for Japanese life sciences companies, given London’s planned role within the Central Division of the UPC, but also for Japanese technology companies. Thus, in our seminars, we recapped the requirement for ratification of the new UP/UPC system by 13 member states, including France, Germany and the UK. During the summer of 2016, we explained that the UPC may likely need restructuring if Brexit were to proceed, and that because the UP/UPC only applies to EU members

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states, a UP granted after Brexit would not cover the UK: a Japanese company seeking to bring an action against UK infringers would be need to litigate before the UK courts. We also explained that a start date for the UP/UPC in 2017 looked improbable, and then discussed potential legal theories of how the UP/UPC could happen, with and without the UK’s involvement. Our audiences seemed interested in our account of the role of politics, and also what would happen to the UP/ UPC without the UK. For instance, we considered whether the system might have a different feel, e.g. without common law input (although as Japanese has a civil law system, the absence of discovery and cross-examination would be more familiar to Japanese companies). We also considered whether the UP/ UPC would remain attractive for its potential main users (the technology sector), and discussed the likelihood that the UK would continue to be a desirable venue for litigation given its speed, predictability and exportability, as well as the availability of discovery and cross-examination. Depending on the specific Japanese audience, we also touched on supplementary protection certificates (SPCs). As SPCs are created by EU regulation, we speculated on how they would be handled after Brexit, including whether the UK would take note of existing or future decisions of the Court of Justice of the EU (CJEU). The statement by Baroness Neville-Rolfe, the then UK Minister for IP, on 28 November 2016 that the UK would be ratifying the Agreement on the UPC appears to have been an unexpected but welcome development, especially after months of uncertainty following the Brexit vote on 23 June 2016. Our sense is that Japanese companies have been preparing for variations of the forthcoming system for at least the past five to ten years, with varying degrees of engagement, enthusiasm and bemusement; only now, with potentially only nine months before a possible start to the UP/UPC, have we started to see meaningful re-engagement.

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Trade marks In relation to trade marks, we explained that as EU trade marks (EUTM) are created by EU law, action will need to be taken as a result of Brexit. We said that one likely approach would be the creation of a UK national mark based on the EUTM. In terms of changes to UK trade mark legislation, we have advised that these will depend on the UK’s relationship with the EU; thus, for instance, if the UK is in the EEA, the UK would need to conform with existing harmonisation, while if there is a “hard Brexit”, relevant elements of EU law would need to be transposed into UK legislation. Our audiences seemed interested in some practical issues, such as the status of CJEU decisions, and whether the risk of having trade marks revoked for non-use in the EU (where proof of use is only in the UK) would lead to more national marks. There was also interest in our discussion of filing trends before the UK IPO, especially the comparative data and statistics. We noted in particular that there had been a 33% increase in trade mark filings in August 2016 (normally, with December, the quietest month) and that the proportion of non-UK applicants had increased to 11.22% (September 2016; 9.46% in 2015). Our audiences took note that, as of September 2016, there were: 1,276 filings from the US (1,212 for whole of 2015); 776 filings from China (681 for whole of 2015); and 149 filings from Germany (132 for whole of 2015). IP transactions In relation to IP transactions, we emphasised that the nature of the UK’s relationship with the EU after Brexit will be important, and that the potential impact of Brexit is currently very uncertain. We cautioned that, depending on the model that is finally adopted and the terms of any international agreements that are negotiated, Japanese companies’ contractual arrangements will likely need to be reviewed and updated, especially if they cover the EU as a defined territory, or relate to

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A four-staged approach to Brexit •

• •

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Analyse – we suggest that companies conduct a detailed review of the application of EU rules to their business, to assess which ones really matter and to consider the impact of potential Brexit models. We also suggest they identify priority areas, the actions their business might take once the likely Brexit model is clearer, and any areas of new opportunity, such as to influence UK rules. Communicate – we suggest that companies develop an external and internal communication strategy. Plan – we suggest that companies prepare action plans for the scenarios of most significant change, and to retain options and flexibility in decisions over the next few months. Influence – we suggest that companies consider engaging with the process in London, Brussels and relevant EU Member States, and encouraging policymakers to focus on companies’ priorities while taking account of political realities.

EU-wide IP rights. We highlighted in particular specific issues, such as governing law and jurisdiction clauses, definitions of “Territory” and “IP” (especially considering transitional or successor national rights), the export of personal data outside the EU, and compliance with regulations. In some of our seminars, we also considered “Brexit clauses”, namely possible contractual provisions that trigger some change in rights or obligations as a result of a defined Brexitrelated event (in essence, a variation on a Material Adverse Change clause). We discussed potential Brexit triggers that could be incorporated into a contract (e.g. a specific divergence between the rules applicable in the UK and those applicable in the EU), along with possible consequences (e.g. allocation of responsibility for addressing a particular consequence). Practical considerations Our overall message to Japanese companies, at least in 2016, was that the UK is unlikely to depart quickly from existing EU law: there would be a transitional period of at least two years, allowing Japanese rights holders to optimise their brand protection and enforcement strategies well in advance. Nevertheless, we cautioned that it is not unlikely that Parliament may bring in successor rights, and that there would be an impact on IP enforcement and litigation. Moreover, because the UK courts would no longer be required to interpret UK IP law in the light of EU rules, or comply with other EU legislation, e.g. the IP Enforcement Directive, we expected a period of uncertainty and increased litigation risk for Japanese companies. Volume 46, number 5

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In some of our more specialised seminars, we also touched briefly on other related issues that appeared to be of interest to Japanese companies, such as the impact of Brexit on parallel trade and exhaustion of rights, trade secrets and potential implications in the light of the EU Trade Secrets Directive 2016/943, regulatory data protection and the Bolar-type exemption.

Life sciences seminars For Japanese life sciences companies, we typically covered the topics in our IP-focused seminars before moving on to cover the potential impact of Brexit on three key issues, as follows. First, we considered marketing authorisations (MA) and, in particular, whether an EU marketing authorisation held by a Japanese company’s UK subsidiary would continue to be valid in the light of the MA holder no longer being established in the EU. We provided some practical advice on what steps need to be taken to ensure on-going validity, as well as on related pharmacovigilance obligations. Second, we considered European clinical trials, including the validity of UK clinical trial data and the consequences of Brexit for on-going, completed, and future clinical trials. This was in the context of the requirement that data from clinical trials conducted in a non-EU country, which are submitted in support of EU MA applications, must comply with EU requirements on the protection and safety of trial subjects. Third, we addressed European data privacy for life sciences companies and, in particular, the validity of informed consent provided by study subjects as well as the transfer of personal data outside the EU.

Reaction of Japanese companies Generally, the reaction of Japanese companies to Brexit and to the forthcoming UP/UPC has been to seek as much information, data and, ultimately, certainty, as possible. As with many other companies around the world, it appears that the key difficulty is not knowing – once issues have been identified and assessed, companies can manage their risk and develop appropriate strategies. In this context, we have been advising our clients and contacts, not just in Japan but also globally, to adopt a fourstaged approach to Brexit [see panel]. We hope that this will provide some helpful guidance (more resources and up-to-date information can be found at: www.hoganlovells.com/brexit). Dr Frederick Ch’en is a partner in Hogan Lovells’ Tokyo office. He combines his scientific training (biochemistry and medical sciences) and cultural background to advise on a broad range of contentious and non-contentious IP matters, especially in the life sciences area. Frederick has been practising in Japan since 2010 as a registered foreign lawyer. He is a solicitor (England & Wales), U.S. attorney (California), U.S. patent attorney, and a U.K. chartered biologist (see more at www.hoganlovells.com/frederick-chen). MAY 2017

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Nagoya Protocol Should the UK remain a member of the Nagoya Protocol? Tim Roberts (Fellow) assesses what needs to change.

he Nagoya Protocol to the Convention on Biological Diversity (CBD) is well-intentioned, but not wellbalanced. It obstructs important research on genetic resources, so work on crucial topics such as human health and food security is complicated, delayed or does not happen. It needs to be interpreted and enforced in a way which gives proper weight to all three objectives of the the CBD, as well as to other important public policy objectives. The EU regulation that applies it fails to do this. This argues against transposing it unchanged into UK law.

History The CBD was negotiated and signed in 1993, in order to safeguard biodiversity. Nearly all countries are members, with the important exception of the US1. It has three objectives (set out in Article 1): 1. to conserve biodiversity; 2. to promote its sustainable use; and 3. to share equitably the benefits resulting from such use. In pursuit of these objectives, it ‘reaffirms’ (Preamble) that member states ‘have sovereign rights over their own biological resources’. Article 15 recognises that ‘access’ to genetic resources (GR) is controlled by ‘national governments’ (CBD members: i.e., Parties). It relates to the provision of GR by national governments – Parties to the CBD – where those Parties are either ‘countries of origin’ of that GR, or have received them under CBD agreements from other Parties. Parties are to facilitate access to GR – for ‘environmentally sound uses’. Access is subject to ‘prior informed consent’ (PIC) from the ‘provider country’, and is to be on ‘mutually agreed terms’ (MAT), which may include any conditions acceptable to both provider and recipient. Two difficulties immediately arise: 1. What is ‘access’? 2. Which GR is the provider country’s ‘own’? 34 CIPA JOURNAL

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Take the latter first. Is mere presence of a GR in a country sufficient to make that GR the country’s ‘own’? No doubt it is sufficient to give the country ‘sovereign rights’ over the GR, in the sense of the ability to control what happens to it while it remains in the country (including the power to control export). However, sovereignty (unlike ownership) ceases at national borders. Article 15 gives two classes of GR which the Party may control access to – GR for which it (Party A) is the ‘country of origin’ and GR which it has received from another country (Party B) under a CBD agreement. It seems implausible to regard the latter GR as the ‘own’ GR of Party A – so it is reasonable to assume that only GR for which Country A is the ‘country of origin’ is Party A’s ‘own’. ‘Country of origin’ is defined in the CBD (Article 2) as “the country which possesses those genetic resources in in-situ conditions” (e.g., growing wild). A Party is clearly entitled to control ‘access’ to a GR growing in its territory in the wild as long as it remains in that country. But, now, what does ‘access’ mean? One simple interpretation is ‘physical access’. If you have in your possession a sample of a GR, you have the physical access that enables you (within broad limits) to do what you like with it. If you do not already have a sample in your possession, you may need to negotiate with a ‘provider country’ to provide you with one, subject if required to PIC from that country and MAT. Another interpretation is ‘legal access’. According to this, the owner of a GR sample has no inherent right to do anything with it that has not been (specifically or by clear implication) approved by the ‘provider country’ that previously possessed it. This interpretation is favoured by most developing countries. Under it, any research on a GR may first require the specific formal approval of the country providing it. And if in the course of that research a new line of inquiry opens up, a new negotiation for PIC and MAT is required. When the CBD came into force, it was hoped that considerable benefits would flow to less-developed www.cipa.org.uk

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countries that were, relatively, economically poor but rich in biodiversity. Disappointment that this was not happening led to the Nagoya Protocol, emphasising the equitable-sharing objective of the CBD. The Protocol was negotiated in 2010 and came into force on 12 October 2014 when 50 countries had ratified it. The EU is a member, and the UK has also ratified in its own right. Nagoya controls research with GR. In principle, doing research (at least with a view to development) on a GR requires PIC and MAT from the ‘provider country’, in accordance with the CBD, if the ‘provider country’ asserts its rights. (Many Nagoya members, including the UK, do not). Nagoya is weighted heavily towards countries who provide genetic resources. It does nothing directly to conserve biodiversity or to promote its sustainable use. It may well cut back the benefits to provider countries that it aims to increase.

EU Regulation 511/14 Nagoya is currently enforced throughout the EU by EU Regulation 511/14. This is over-prescriptive in two respects: it fails to balance the third CBD objective of benefit-sharing with the other two. It also disregards other important objects of public policy. These include research freedom in general; and in particular making easier research on vital objectives such as human health and food security. Even so, it does not meet the full aspirations of developing countries to control GR research. In principle, the Regulation takes the view that ‘physical access’ is what Nagoya controls. Thus, under the Regulation, samples of GR received by a researcher before the operative date (which is set at one year after Nagoya came into force, so 12 October 2015) are not controlled. However, ‘research’ on GR samples accessed after that date is strictly controlled. Before commencing ‘research’, the researcher must use ‘due diligence’ to satisfy himself that the GR has “been accessed in accordance with applicable access and benefit-sharing legislation or regulatory requirements” of the ‘provider

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country’ and that (if required) there are benefit-sharing arrangements in place (Regulation Article 4.1). Note the use of the passive tense – it is not only the access of the enquiring researcher that is in question, but of all in the chain of ownership of the GR (back until 12 October 2015, apparently). Declarations of ‘due diligence’ are required at two points: when a researcher has received research funding (public or private) for work on the GR (Regulation Article 7.1) ; and “at the stage of final development of a product” resulting from the research (Art 7.2). ‘Due diligence’ requires either a formal certificate regarding the resource from the ‘provider country’ as filed with the Access and Benefit-sharing Clearing House of the Nagoya Protocol; or (if, as most often, there is no such certificate) the researcher must ‘seek, keep and pass on to other [researchers]’ ‘information and documents on’ when and where the GR was accessed; a description of the GR; the direct source; presence or absence of conditions on benefitsharing; etc. These requirements are dauntingly complex. They are far too broadly framed. They should have been designed to control the activities of researchers seeking GR samples from within countries claiming rights in their resources. As it is, nearly all GR first accessed after 12 October 2015 requires ‘due diligence’ – even if it is native to, and accessed in, a country such as UK where no such rights are claimed. There are some narrow exceptions, but these are quite inadequate. For example, Article 4.8 of the Regulation provides that if the GR is implicated in a grave public health threat, research may be started before the requirements are met, but if formalities are not completed within three months, such (potentially essential and life-saving) research must stop! Three months is too short to agree PIC and MAT – often it is not enough even to find out who has authority to make such agreements2. In some cases countries have simply refused any access. The government of Indonesia invoked “viral sovereignty” in order to deny access to a new strain of avian influenza (H5N1) virus that was first detected in that country. A Regulation so complicated and all-embracing must put researchers off. To be confident of operating legally, one will need legal advice, perhaps often and expensive, and sometimes expensive and protracted investigations of the history of specific GR samples. These may lead to difficult and lengthy negotiations with a ‘provider country’ to obtain necessary permissions. This will only be practical for the largest international organisations. Even they may not consider seeking such permissions worthwhile where they judge a particular GR unlikely to lead to a commercial product. For many SMEs and academics, the only practical option will be to avoid many areas of GR research. The Regulation fails in two important respects. It discourages extending uses of GR, in direct opposition to two of the three objectives of the CBD. Making research MAY 2017

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more difficult frustrates the development of new uses for GR. And fewer new uses mean fewer benefits to share. It also seriously interferes with other legitimate objects of public policy. It inhibits important research, for example on public health and agriculture. It limits the freedom to do many kinds of research – which should not be curtailed without clear need.

What should be done? It is highly desirable that Regulation 511/14, in its current form, should not remain part of UK law. Should the UK also leave Nagoya? A case could be made that the UK should leave Nagoya. It brings no clear benefit for UK citizens. While nearly 100 other countries are members, there are several significant countries who have not yet joined. Australia and Brazil have signed but not so far ratified; Canada has not signed; the US has not signed Nagoya or ratified the CBD. The consequences for the US of not being bound by the CBD or Nagoya are that companies working in the US are free to develop new products without the constraints of either and are then free to sell these around the world. Another possible drawback of Nagoya has recently emerged. Provider countries are pressing to extend the obligations of Nagoya to cover not only research on samples but also use of published information derived from such samples (for example, DNA sequences published in databases). This demand, if agreed, would alter the whole basis of the CBD. No longer would CBD control use only of physical samples, but also of derived published information – in perpetuity! It is often said that developing country members of Nagoya, rich in GR, will be unwilling to make their GR available to non-member countries, so that leaving the Protocol would disadvantage UK researchers. However, it seems likely that most such countries overvalue the financial benefits obtainable from their resources, as well as underestimating the difficulty and cost of realising these. If so, any losses to the UK could be small. Where valuable resources were identified, it would still be possible for special agreements to be negotiated that would benefit all parties. However, on balance, it would not seem advisable to leave Nagoya. Politically it would be difficult. If done now, it might complicate Brexit negotiations. Developing countries set great store by Nagoya. It is seen, perhaps wrongly, by other countries, and by much of the British public, as an agreement important for the environment. Also, to get full benefit from leaving Nagoya, it would probably be necessary also to leave the CBD, which would be even more difficult politically. What the UK should seek to do – as a long-term aim – is to establish a sensible and practicable framework for 36 CIPA JOURNAL

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interpreting and applying Nagoya. This should recognise the rights of ‘provider countries’ to control ‘their’ genetic resources (that is to say, samples of resources for which they are the ‘country of origin’) while those samples are within their boundaries. ‘Sovereignty’ applies within national boundaries, not worldwide. Once such GR was outside these boundaries, the rights of ‘provider countries’ would be limited to enforcing contractual terms against parties with whom they had made access agreements. Breach of such terms – or exporting GR in defiance of local laws – might also be offences against the laws of ‘provider countries’. The duties of other countries should be limited to requiring nationals not knowingly to ‘utilise’ GR which had been exported from a ‘provider country’ illegally or passed to them in breach of an access agreement. But in general, there should be no duty of ‘due diligence’ to determine if GR had been ‘legally accessed’, in the absence of some reason to suppose it had not. This should be combined with appropriate exceptions in cases of need, e.g. for research to combat pathogens. To introduce a new law in UK conforming with such notions would require new legislation, drafted with some care. It could not be an immediate or short-term aim. But relaxing the grip of Regulation 511/14 on UK research may be too urgent to wait. On Brexit, the Regulation might be transposed into UK law in the Great Repeal Bill, but with specific exceptions. Thus, Article 4.8 (imposing special requirements on pathogen research) could be omitted, and preferably also Article 7.1, so that any obligation to show ‘due diligence’ would be deferred until a product was ready for launch. This could be combined with instructing the enforcing agency (NMRO – the National Measurement and Regulation Office) to concentrate on ensuring that any GR sample collecting in Nagoya ‘provider countries’ was conducted in accordance with local laws. Tim Roberts (Fellow) is a consultant, a member of CIPA Council and a past-president of the Institute. Tim worked for ICI for 35 years and was a Board of Appeal Panel Member at the Community Plant Variety Office for over 20 years.

Notes and references 1. This may benefit the US – see below. 2. According to the Wellcome Trust, “the protocol has the potential to hamper disease monitoring. Red tape could make it harder to quickly share samples across borders, which in turn could cripple efforts to monitor drug resistance in malaria, for example, or outbreaks of Escherichia coli.”

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COUNCIL

Council Minutes Minutes of the Council meeting held on Wednesday 3 March, 2017 at 14:30.

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

Item 2: Minutes 47/17: The Minutes of the meeting held on Wednesday 1 February, 2017 were approved following amendment. 48/17: From minute 25/17. Lee Davies advised Council that the action relating to the Bye-laws from the February meeting of Council was not completed as he had not yet received a response from the Privy Council Advisors. Council agreed to defer the date of the General Meeting, currently scheduled for Wednesday 4 April, 2017, until a positive response is received from the Privy Council Advisors. Lee Davies added that, whilst time was becoming tight, the transition was not scheduled to take place until 1 October, 2017 and still allowed CIPA to hold its AGM in the calendar year, as required by the current Bye-laws. 49/17: From minute 26/17. Tony Rollins thanked Matt Dixon for a briefing note he had prepared on behalf of CIPA and Volume 46, number 5

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CITMA on the roles of patent and trade mark attorneys. Tony explained that the intention was to use the briefing note in the two Institutes’ work with IPReg on Money Laundering Regulations and client accounts and that IPReg had suggested sharing the note, once agreed, with the Treasury and the Financial Conduct Authority. Tony added that the briefing note would also be helpful in CIPA’s work with its wider group of stakeholders, including the new Minister and senior civil servants who were not familiar with the work of patent and trade mark attorneys. 50/17: From minute 31/17. Lee Davies advised Council that the Internal Governance Committee had asked Spurgeon Manuel to go back to the preferred investment broker following the guidance offered by Council. Lee added that the broker had adjusted the risk profile for CIPA’s investments from 6/7 to 5/6 (where ten is a high appetite for risk) and that the Internal Governance Committee was content with the broker’s revised proposal.

Item 3: Conflicts of interest 51/17: There were no conflicts of interest.

Item 4: Brexit 52/17: Tony Rollins provided Council with a report on his meeting with Robin Walker, Parliamentary Under Secretary of State at the Department for Exiting the European Union. Neil Lampert and Tony Rollins met with the Minister, who was accompanied by his liaison officer at Westminster. Tony said that the meeting had gone well and that he was impressed with the Minister’s understanding in relation to the intellectual property system and CIPA’s aspirations for the Unitary

Patent (UP) and Unified Patent Court (UPC) following Brexit. The discussion included a variety of topics, including the UP and UPC, rights of representation before the EUIPO and the transitional provisions for trade marks and design rights. Tony concluded by saying that he hoped to have a further meeting with the Minister and that he would consider revising Matt Dixon’s briefing note on the roles of patent and trade mark attorneys for the Minister. Tony Rollins advised Council that he had been invited to a roundtable meeting with the IP Minister, Jo Johnson, on Monday 7 March, along with other representative groups such as CITMA and ACID. Tony said that he expected it to be a broad discussion covering trade marks, design rights, the Hague Agreement, the Unitary Patent, the UPC, SPCs, rights of representation, exhaustion of rights, future trade relationships and the Government’s industrial strategy. Alicia Instone reported on a meeting on trade marks at the UK IPO on 28 February. Alicia said that the meeting had focused on the transfer of EU trade marks and design rights to the UK. Alicia said it was most likely that existing rights would be mirrored in the UK on exiting the EU and that a strategy would be put in place for thinning the register at renewal. Tony Rollins said that there would be the need for the UK to re-enact EU unregistered design rights law following Brexit and that he would like either a sub-committee of Council or the Designs and Copyright Committee to look at this. Alicia Instone said that she would liaise with members of the Designs and Copyright Committee and that she would also consult with colleagues at CITMA. Tony Rollins suggested linking with the IP Federation on aspects of industrial designs. MAY 2017

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Action: Alicia Instone to lead on developing CIPA’s position on unregistered design rights, in consultation with CITMA and the IP Federation. Tony Rollins reminded Council that CIPA was continuing to develop its position on IP rights as the UK prepares to leave the EU, with the Exploitation Committee looking at exhaustion of rights and the Trade Mark Committee leading on rights of representation at the EUIPO. Tony added that Mike Barlow was doing some work on industrial strategy and IP rights in the post-Brexit world. Tony said that it was important that CIPA continued to support and help the UK IPO wherever possible and that he would liaise with Sean Dennehey. Tony concluded by advising Council that there would be a special edition of the Journal focusing on the impact of Brexit on the IP system.

Item 5: Visit to Taiwan, Japan and Korea 53/17: Richard Mair updated Council on the arrangements for the planned visit to Taiwan, Japan and Korea and said that he was delighted that His Honour Judge Hacon had confirmed his attendance on the Japanese leg of the visit. Richard said that Tony Rollins would be part of CIPA’s delegation and that there would also be representation from the UK IPO. Richard advised Council that there would be representation from CITMA during the visit and that CITMA had generously agreed to provide some funding for the Japanese leg, which would include a reception at the British embassy in Tokyo. Richard asked Council if it felt that it would be appropriate to host a similar reception in Korea, possibly at Aston Hall at a cost of approximately £3000. Council supported this proposal.

Item 6: Regulatory issues 54/17: Tony Rollins informed Council that he and Lee Davies had met with Kate O’Rourke and Keven Bader to discuss various issues relating to the work of IPReg, including the recruitment of a new Chief Executive and Chair of the 38 CIPA JOURNAL

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COUNCIL

IPReg Board. Tony said that this was a good opportunity to focus on the way in which IPReg operates and, in particular, the cost of regulation and how this might be remodelled in the future. Tony advised Council that he still had concerns about IPReg’s vires to regulate in Scotland and Northern Ireland despite the letter of assurance sent by IPReg in response to questions raised at the Approved Regulators Forum (ARF). Tony advised Council that he had also raised concerns about the accuracy and upkeep of the Register of Patent Attorneys and observed that the public register was still not available on the IPReg website, having been taken down in early January. Tony informed Council that he felt progress was being made on IPReg’s statement that the Money Laundering Regulations cover the work of patent and trade mark attorneys and that a revised version of Matt Dixon’s briefing paper had been sent to CITMA for its consideration, prior to being adopted as a joint statement by IPReg, CIPA and CITMA. On the question of IPReg’s vires to regulate in Scotland, Tony Rollins said that it was not clear to him that the Delegation Agreement provided IPReg with powers under the Copyright, Designs and Patents Act 1988, as set out in IPReg’s letter of assurance. Council supported a proposal from Tony Rollins that a briefing paper be prepared in order to obtain Counsel’s opinion and that it might be appropriate to seek that opinion from an advocate in Scotland. Action: Tony Rollins and Lee Davies to prepare a briefing paper for Counsel.

Item 7: Education 55/17: Georgina Sear updated Council on CIPA’s education work. Georgina advised Council that the Patent Examination Board (PEB) was nearing the end of its third year of operation and that the PEB would be putting together its annual self-assessment report in May. Georgina added that this would be the second cycle of external

quality assurance and that the PEB was likely to commission the Quality Assurance Agency (QAA) to undertake this work. Georgina advised that it was particularly important to ensure that the external quality assurance mechanism was in place as the PEB was subject to reaccreditation against the criteria set out in the recently published Accreditation Handbook. Georgina said that all examining bodies, including the universities providing qualifications leading to exemption from the foundation examinations, would have to go through reaccreditation by December 2017 and that the PEB had little work to do in this regard as the foundation examinations set the benchmark for the other providers. Georgina Sear advised Council that she was yet to see the outcomes of the research commissioned by IPReg into the FD4 (P6) examination. Georgina added that she had received some interim feedback which pointed towards candidate preparation being the main reason for the low success rate, rather than the level and/or administration of the examination. A number of Council members observed that this was common knowledge and that it probably did not need extensive research to reveal this. Georgina Sear informed Council that it was a busy period for her team, with the results of the Introductory Certificate in Patent Administration due to be published on Monday 6 March and the results of the patent attorney qualifying examinations being released the following week. Georgina said that she would be out of the office during this period as she was overseeing the arrangements for the EQEs being held in Walsall from 6 March. Georgina Sear said that she was saddened to have to inform Council that Debbie Slater was leaving the UK for Australia and that this would have a huge impact on the patent administration course. Council echoed Georgina’s thanks to Debbie for the work that she has done on CIPA’s education provision for patent administrators. Georgina said that the recent focus had been attending www.cipa.org.uk

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to the feedback on the previous course, which pointed towards improvements in the webinars and greater testing of the content before publication. Georgina added that the Administrators Committee was currently mapping the content of the introductory course with a view to identifying the content for an advanced course. Georgina said that it was most likely that this would be presented as a series of CPD modules, rather than as an examined course. Georgina advised Council that there did not appear to be significant market demand for the Litigation Skills Course, now that the initial surge in newly qualified patent attorneys taking the qualification had abated. Georgina said that she was exploring alternative ways of offering the training element of the course, such as bespoke in-house training and distance learning. Georgina informed Council that the Internal Governance Committee had asked the PEB to retain the examination element of the course. Council advised Georgina that it would support a remodelled budget for the training element of the course that did not seek to fully recover internal staff costs. Action: Georgina Sear to remodel the budget for the Litigation Skills Course and send to the Internal Governance Committee.

COUNCIL

58/17: Patents Committee Council noted the report from the Patents Committee and approved the Committee’s submission of an Amicus Brief on the Enlarged Board case G1/16. (See April [2017] CIPA 14.) 59/17: Exploitation Committee Council noted the report from the Exploitation Committee. Council approved the Committee’s request for the power to act on behalf of Council in submitting a response to the Government’s industrial strategy consultation, which is being led by Mike Barlow. 60/17: Education Committee Council noted the report from the Education Committee. Tony Rollins advised the Committee that the professional standards framework should be shared with IPReg following the consultation with members. 61/17: Life Sciences Committee Council noted the report from the Life Sciences Committee and approved the Committee’s submission to the IPO in relation to the CJEU referral C-681/16. (See April [2017] CIPA 12.)

Item 10: Officers’ reports 62/17: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 63/17: Lee Davies advised Council that work was progressing well on securing a new office for CIPA before the expiry of the lease on 95 Chancery Lane in August 2017. Lee said that, from a longlist of 45 premises, he had presented the Internal Governance Committee with three suitable offices and the IGC had approved provisional offers on two of the offices. Lee added that this did not commit CIPA to anything at this stage, but allowed negotiations to commence on Heads of Terms and for designers to carry out space planning. Lee said that, subject to progress continuing at the current pace, he hoped to be in a position to bring a formal proposal to the April meeting of Council.

Item 12: Applications for election 64/17: Fellows Council approved the following first time Fellow applications: Elizabeth Moore; Jonathan Paul Moodie; Emily Teresa Weal. Council approved the following second time Fellow applications: Zoe Marie Goodrum; Luigi Roberto Distefano; Gregory Dykes; Adam P. Gregory; Peter Lawrence Lucas; Mark David Aldred; Thomas Woodhouse. 65/17: Associate Members Council approved the following first time Associate membership applications: Bethan Hopewell; Nicholas Barrow

Item 8: IPO and EPO matters 56/17: Council considered the IPO’s contribution to the science and innovation element of the Government’s consultation ‘Building our Industrial Strategy’. Council noted that the Exploitation Committee was considering the consultation paper and that the deadline for response was 17 April, 2017.

Item 9: Committees and committee reports 57/17: Congress Steering Committee Alasdair Poore informed Council that the planning for the 2017 Congress was continuing to progress well, with only a small number of speakers still to be confirmed. Volume 46, number 5

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PEB – important dates Qualifying Examinations • Examination Dates: between Monday 9 October and Friday 13 October 2017 • Results issued via email: Monday 12 March 2018 Introductory Certificate in Patent Administration • Mock Examination: between Monday 4 December 2017 and Friday 12 January 2018 • Final Examination: Thursday 25 January 2018 at 2.00pm • Results issued via email: Monday 5 March 2018 Litigation Skills Examinations • Written examination: Thursday 16 November 2017 • Oral Examination: w/c Monday 13 November 2017 • Results issued via email: Monday 18 December 2017

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66/17: Students Council approved the following Student membership applications: Jonathan Axon; Ryan Mitchell; Matthew Greengrass; Will Dearn; Matthew Bennett; Jade Cheng; Peter Marchand; Alex Maxwell-Keys; Daniel Sproston; Sian Bailey; Philip Colbran; Tobias Eriksson; Joel Edward Beevers; Dean Houston; Nico Cousens; David Hole; Simon Schofield; William Liu; Louise Gray.

Item 13: Resignations, etc 67/17: Council noted the report on resignations. Vicki Salmon informed Council of the death of Sue Harding, formerly of Hogarth Chambers, who passed away just before Christmas. Vicki added that Robert Onslow, a barrister and former student member of CIPA, had passed away and that a memorial service would take place in Salisbury in due course. Alasdair Poore said that he would prepare obituaries for the Journal.

Item 14: Any other business 68/17: Council accepted Julian Asquith’s formal notice of his intention to stand down as a member of Council and thanked him for his contribution. 69/17: Council noted the report from Lee Davies on the review of the Strategic Plan and decided that, given the changing circumstances of Brexit and CIPA’s proposed move to new premises, it would be appropriate to have a planning day to refresh the Strategic Plan. Action: Lee Davies to liaise with the Officers on potential dates for a strategic planning meeting. 70/17: Council approved the appointment of Michael Conway to the Designs and Copyright Committee.

Item 15: Date of next meeting 71/17: Wednesday 5 April, 2017. The President closed the meeting at 17:19

COUNCIL

PEB examination prizes 2016 Following the publication of the 2016 PEB examination results in March 2017, Council awarded these prizes: The Gill Prize for the candidate achieving the highest aggregate mark in the Final Diploma examinations (FD1, FD2, FD3 and FD4): Jonathan Edward Gilbert, Reddie & Grose (London). The Strode Prize for the candidate achieving the highest mark in the FD1 examination Advanced IP Law and Practice: Gavin Turner Dundas, Reddie & Grose (Cambridge). The Drafting Prize for the candidate achieving the highest mark in the FD2 examination Drafting of Specifications: Olivia Murphy, Haseltine Lake (Bristol). The Michael Jones Prize for the candidate achieving the highest mark in the FD3 examination Amendment of Specifications: Jonathan Edward Gilbert, Reddie & Grose (London). The Ballantyne Prize for the candidate achieving the highest mark in FD4 examination Infringement and Validity: Katie Sarah Howe, Barker Brettell

(Birmingham). The Moss Prize for the candidate achieving the highest aggregate mark in the FC1 and FC3 examinations UK Patent Law and International Patent Law: Minghui Sun, Marks & Clerk (Manchester). The Keith Farwell Prize for the candidate achieving the highest mark in the FC5 examination Trade Mark Law. The Keith Farwell Prize was won by two candidates: Callum Docherty, Barker Brettell (Birmingham); and Alexandra Fehn Chua-Short, Potter Clarkson (Nottingham). The Mike Higgins Prize for the candidate achieving the highest mark in the FC4 examination Design and Copyright Law: Alexandra Fehn Chua-Short, Potter Clarkson (Nottingham). The Chris Gibson Prize for the candidate achieving the highest mark in the FC2 examination English Law:

Michael Euan Ford, Alistair Hindle Associates (Edinburgh).

The Brown Prize 2016-17 The Brown Prize is for the candidate achieving the highest mark in the PEB Introductory Certificate in Patent Admainistration Examination. This year there were two candidates that were awarded the top mark: Kimberley Harding, Mewburn Ellis (Manchester) Natalie Crean, Wynne-Jones IP (Cheltenham)

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COUNCIL • OVERSEAS

Withdrawal from the European Union Set out below is a message sent to CIPA President Tony Rollins on 30 March 2017 from Sean Dennehey, Acting Chief Executive and Comptroller-General of the IPO.

s you will know, on Wednesday the Prime Minister formally started the process of the UK’s withdrawal from the European Union with a letter to the President of the European Council. The Government published earlier today a White Paper on the Great Repeal Bill. This will provide legal certainty by converting the body of existing EU law into UK law, wherever practical and appropriate, at the point of exit. The Prime Minister confirmed that it is the Government’s aim to conclude an ambitious and comprehensive free trade agreement that is of greater scope

and ambition than any such existing agreement, covering sectors crucial to our linked economies. The Government wants negotiations to proceed in a fair and orderly manner, minimising disruption and, as we move from our current relationship to our future partnership, the aim is to agree implementation periods to allow a period for adjustment to new arrangements. I know that businesses want an early understanding of the terms of the future UK-EU partnership in order to plan effectively. So, negotiating withdrawal, implementation and future partnership issues together will also ensure that

arrangements complement each other, making the process as we move from implementation to future partnership as smooth and orderly as possible. I want to reassure you that the Intellectual Property Office continues to contribute fully to the Government’s work towards exiting the EU with the clear goal of ensuring an effective IP regime that supports UK innovation and creativity. We will continue to seek your views and input as the process for withdrawal and building a future partnership develops, and of course will always be keen to hear your views and ideas.

Singapore – new patent rules and fees

ingapore recently announced a range of major changes to its patent system that will affect those seeking protection in a variety of ways. On 28 February 2017, changes to the Patents (Amendment) Bill were approved to revamp the patent application system, commencing on 1 January 2020. The new Bill aims at a more stringent and domestically-focused examination process for patents in Singapore. Presently, some patents are applied for through the foreign route, which allows a patent to be granted by reliance on the allowance or grant of a corresponding application or a positive International Preliminary Report on Patentability (IPRP) by requesting a supplementary examination report based on a foreign examination report. This new Bill will eliminate the foreign route option and will therefore require applicants to file a request for a local substantive examination with the Intellectual Property Office of Singapore

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(IPOS) for new Singapore patent applications filed on or after 2020. Patent applications filed on or after 1 January 2020 refers to: • •

•

national applications having a date of filing on or after 1 January 2020; international applications entering national phase having a date of filing on or after 1 January 2020; and divisional applications having an initiation date on or after 1 January 2020.

The measure reflects the will of the Singapore government and IPOS to ensure that every patented invention or process is subject to the standards of scrutiny set nationally. Nevertheless, it will still be possible to rely upon searches conducted by approved foreign patent registries. Furthermore, the move will grant inventors a grace period of 12 months to disclose their research prior to application for a patent in Singapore. This will undoubtedly be a welcome

move – allowing for extra time to market and attract potential investment in a new product or process. A number of fee reductions have also been announced for requests of patent search and examination reports to incentivise patent applicants in the lead-up to this change in policy. At the same time, fees for patent renewals are being increased. However, patent holders who are willing to license their patents will be given a 50% discount on their renewal fees.

Trade marks The same fees trend is being followed by IPOS with respect to trade marks as part of the April 2017 upheaval, with a 30% discount for applicants wishing to register marks in certain pre-approved categories of goods and services – contrasted with the first increase in trade mark renewal fees in Singapore in ten years. Gladys Mirandah (Foreign Member) and Juvelyn Cubilla of Mirandah Asia. See more details at www.mirandah.com MAY 2017

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OFFICIAL • OVERSEAS

IPO's proposed changes to statutory patents fees

he IPO is currently seeking comments on their proposed changes to patents fees. On 13 April, the IPO published a consultation document outlining the following proposals:

Proposal 1 Introduce the following changes to the basic application fee: •

•

Increase the fee for paper applications from £30 to £90 when the application fee is paid at the time the application is filed. Increase the fee for e-filed patent applications from £20 to £60 when the application fee is paid at the time the application is filed. Introduce a 25% surcharge on the application fee if the fee is not paid at the time of filing.

Proposal 2 Introduce the following changes to the basic fees for search and substantive examination: •

Increase the fee for requesting a search to £150 for requests filed electronically and to £180 for requests filed on paper.

•

Increase the fee for search of an international application (UK) to £120 when requested electronically and to £150 for requests filed on paper. Increase the fee for requesting a substantive examination to £100 for those requests filed electronically and to £130 for requests filed on paper.

Proposal 3 Introduce a fee of £30 for each of the 16th and subsequent claims contained in a patent application.

Proposal 4 Introduce a fee of £10 for each additional page of description over the initial 35 pages.

Alternative proposal Make a small increase to patent renewal fees, along with smaller increases to the up-front fees than set out in proposals 1-4. Comments need to be submitted by 11:45pm on 6 June 2017. See more at https://www.gov.uk/government/ consultations/proposed-changes-tostatutory-patents-fees.

Overseas report – International treaties Berne Convention (Protection of Literary and Artistic Works) On 2 March 2017, the Government of Tuvalu deposited its instrument of accession to the Berne Convention. The said Convention will enter into force, with respect to Tuvalu, on 2 June 2017. On that date, Tuvalu will also become a member of the International Union for the Protection of Literary and Artistic Works. Patent Cooperation Treaty (PCT) On 9 March 2017, the Government of the Hashemite Kingdom of Jordan deposited its instrument of accession to the PCT. The PCT will enter into force, with respect to Jordan, on 9 June 2017. Dr Amanda R. Gladwin (Fellow), GSK 42 CIPA JOURNAL

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Patents Renewal Reminders Change in practice at the IPO – Patents Renewal Reminders. Where a patent is not renewed on time, the IPO sends a reminder to the registered proprietor by post. From 6 April 2017: •

•

This reminder will be sent to the last address specified for this purpose by the proprietor. The IPO will keep this address on record until advised of a change.

This change in practice will mean that patent proprietors no longer need to notify the IPO each year of an address in part 6 of Form 12. They should only do so if there has been a change to the address to be used for renewal reminders. If the patent proprietor would like the renewal reminder to be sent to a new or different postal address, they should write to the IPO or renew by post using Patents Form 12. The IPO provides an online renewals service (https://www.gov.uk/renewpatent) that can be used in all other situations. It remains the case that if no specific address is provided for the renewal reminder, the IPO will send the reminder to the address for service shown on the Register. Legislative background This change in practice arises from a change to rule 39 of the Patents Rules 2007, which came into force on 6 April 2017 (see the Patents (Amendment) (No.2) Rules 2016 and www.gov.uk/government/ publications/changes-to-patentsrules-on-1-october-2016-and-6april-2017 for further details). Sarah Barker, Patents Legal Section, IPO

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OFFICIAL

Manual of Patent Practice updates The 31 March 2017 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

4A.31

Updated in light of Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2016] EWCA Civ 1006.

14.117.4

Updated in light of Napp Pharmaceutical Holdings Ltd v Dr Reddy’s Laboratories (UK) Ltd [2016] EWCA Civ 1053.

14.120

Updated in light of Acumen Design Associates Ltd BL O/031/17.

18.86.2

Requests to forgo the intention to grant period are only able to be accepted after the notification of intention to grant letter has been issued.

18.86.4

A notification of intention to grant will be sent out on all applications including applications that are found in order for grant near or after the compliance date.

18.86.5

Rule 108(2) and rule 108(3) can be used to extend the compliance period after the notification of intention to grant letter has been sent out providing the application has not been sent to grant. Therefore, it would be good practice for the applicant to request any extension to the compliance period before the date set out in the notification of intention to grant letter.

19.21 19.22.1

Indicating the procedure for processing voluntary amendments received after a report under section 18(4).

25.12

Indicating that, from 6 April 2017, a renewal notice is issued to the last address specified for the purpose of receiving renewal notices by the proprietor. [See page 42.]

27.09.1

Updated in light of MWUK Ltd v Fashion at Work Ltd BL O/531/16.

60.16.1 60.19.2

Updated in light of Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2016] EWCA Civ 1006.

SPM1.04.1 SPM1.04.2 3.05

Updated in light of Abraxis Bioscience LLC v the Comptroller General of Patents [2017] EWHC 14 (Pat).

SPM5.04

To assist in determining if particular compositions or acts infringe an SPC it is possible to request this Office gives a non-binding opinion on infringement.

CITMA Summer Reception Tuesday 4th July 2017  6.30pm – 8.30pm  Sea Containers, London Gather with the IP profession on the banks of the river Thames for an evening of networking at the stunning Sea Containers on Tuesday 4th July. You will enjoy panoramic views of the signature London skyline from one of the newest addresses in town. With a curvaceous green bar, amazing canapés provided by the award-winning Green & Fortune and a guest list spanning the entire profession, we are set to have a great evening. For more details and booking go to: https://www.citma.org.uk/calendar/event/view?id=217 Cost: ITMA members – £59 (plus VAT)Non-members – £69 (plus VAT) Volume 46, number 5

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DECISIONS

Patent decisions Construction | Infringement | Validity | Added subject-matter | Amendments IPCom GmbH & Co KG v (1) HTC Europe Co. LTD, (2) Ingram Micro (UK) Limited, (3) HTC Corporation [2017] EWCA Civ 90; 28 February 2017 Longmore LJ, Kitchin LJ, and Floyd LJ

This decision relates to a successful appeal against the judgment of Birss J in [2015] EWHC 1034 (Pat) (reported May [2015] CIPA 33). At first instance, Birss J found that IPCom’s European Patent (UK) No. 1841268 was valid but not infringed by HTC’s devices. Birss J also found that the patent was not essential to the UMTS mobile communication standards. In the appeal, IPCom argued that the trial judge had erred in finding no infringement by overlooking important but unchallenged evidence of HTC’s expert. HTC cross-appealed, arguing that the trial judge had in fact construed the claims too broadly. HTC also argued that the amendments allowed at first instance added subject-matter and the judge should not have exercised discretion to allow the amendments. On construction, the main issue at appeal concerned the requirement of “as a bit pattern”. At first instance, the trial judge concluded that the wording of the amended claim was not restricted to “a single bit pattern”. HTC argued that the skilled person would in fact understand that the wording was expressly based on the second embodiment and that it would be surprising that a claim based on the second embodiment would cover the first embodiment. However, Floyd LJ disagreed and found that the trial judge had given due consideration of the skilled person’s understanding and had come to the correct construction. On infringement, IPCom argued that the trial judge had simply overlooked the relevance of HTC’s expert evidence as it was based on a different construction of the claims eventually arrived at by the trial judge. HTC argued that the point was not opened to IPCom to take on appeal as the trial judge’s attention had not been drawn to its impact at first instance and that the expert evidence was in a different context. Floyd LJ noted that: “Whilst IPCom’s failure to stress paragraph 8.33 of the Mr Simmons’s report before the judge is regrettable, I have come to the conclusion that it should not be treated as a bar to IPCom’s success on this appeal. That is because HTC have not, at least to my mind, advanced any tenable reason why Mr Simmons’s evidence should not be accepted at face value.” On added subject-matter, HTC argued that the amended claim was an intermediate generalization of two separate embodiments. 44 CIPA JOURNAL

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However, Floyd LJ found that the trial judge had rightly noted that the skilled person would understand from the specification that the teaching was sufficiently general and that the concept of the second embodiment was not limited to the precise teachings. Floyd LJ also noted that the skilled person would understand that the amended claim referred to the second embodiment as described and minor variants thereof. On discretion to allow the amendments at first instance, HTC argued that because the amendments allowed had a different scope to the claims allowed by the Opposition Division of the EPO and pending appeal, the trial judge should not have allowed the amendments. Floyd LJ disagreed. Noting that: “This court will not interfere with the exercise of a discretion unless the judge is shown to have gone wrong in principle, for example by taking into account some matter which he ought to have ignored, or by ignoring some matter which he should have taken into account.” Floyd LJ found that the trial judge had taken all due consideration in exercising his discretion. In conclusion, Floyd LJ allowed IPCom’s appeal and dismissed HTC’s cross appeal. Kitchin Longmore LLJ agreed.

Edwards sought revocation of two co-divisional patents of Boston, European Patents (UK) Nos. 2749254 and 2926766, both relating to transcatheter replacement heart valves (THV). Boston counterclaimed for infringement in relation to Edwards’s SAPIEN 3 THV. The patents related to sealing arrangements for preventing leakage of blood around the exterior of the THV anchor (frame) when deployed. The ‘254 patent claims required the THV to have a “bunched up” fabric seal. The ‘766 patent claims required the THV to include at least one “sac” to provide a seal. Edwards relied on arguments of lack of novelty, lack of inventive step, added subject-matter and insufficiency (as a “squeeze” argument with inventive step) for each patent. It was common ground that the skilled team would include a clinician and a biomedical engineer; the judge held that the clinician would be an interventional cardiologist, that is, a physician rather than a surgeon.

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Construction With regard to construction of divisional applications, the judge referred to Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062 and commented that: “In the context of a patent derived from a divisional application, the skilled person would... not assume that an example of the claimed invention, as described or illustrated in the specification, embodies only that invention. It might, but equally it could also embody one or more of the other inventions claimed in the parent application.” The judge construed various terms. He noted in particular that “bunched up” was not a term of art but held that it should be purposively construed, starting from its dictionary definition, as requiring the forming of folds with sufficient excess fabric to function as a seal. He also held that a sac “disposed about the exterior of the anchor” could include a wall on the interior of the anchor, as this would not prevent the seal from functioning.

Infringement The judge held that both patents were infringed based on his construction. He noted that Edwards’s Product and Process Description (PPD) did not provide sufficient information on various essential points and that as a result adverse inferences were liable to be drawn.

Novelty and obviousness The judge considered four patent prior art documents (“Cribier”, “Bessler”, “Thornton” and “Seguin”). He held that “bunching up” would not be an inevitable result of following the teaching of Cribier or Bessler so these documents were not novelty-destroying for the ‘254 patent (nor were they novelty-destroying for the ‘766 patent). Boston relied on an argument that if the inventions of the patents had been obvious, Edwards would have made them earlier. The judge reviewed the law on secondary evidence, that is, evidence other than that of expert witnesses as to whether the relevant step would have been obvious to the skilled man based on the prior art. He referred to Mölnlycke AB v Procter & Gamble Ltd [1994] R.P.C. 49 and Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA Civ 819. The judge found Boston‘s secondary evidence relevant but not conclusive. He found, however, that the existence of an inventive step over each of Cribier and Bessler was confirmed by the primary evidence for both patents, and that Edwards’s arguments relied on hindsight. 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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Thornton related to endografts for treating aneurysms rather than to THVs. Boston argued that the skilled person would not have consulted such a document. However, the judge accepted that the skilled person would have found it obvious to apply the sealing arrangement of the Thornton endograft to a THV with a reasonable expectation of success, so that the ‘254 patent lacked inventive step. By contrast, the ‘766 patent did not lack inventive step over Thornton (or over Seguin).

Other pleaded grounds of invalidity The judge held that the patents were sufficient, the squeeze argument having become irrelevant as the arguments developed. The judge reviewed the law on added subject-matter in AP Racing Ltd v Alcon Components Ltd [2014] EWCA Civ 40 and held that the patents did not involve added subject-matter.

Conclusion The judge held that the ‘254 patent was invalid for obviousness (but would have been infringed if valid) and that the ‘766 patent was valid and infringed.

SPCs | Articles 3(a) and 3(c) of SPC Regulation | Construction | Combination as distinct invention | Role of expert evidence in assessing SPC validity (1) Teva UK Limited , (2) Accord Healthcare Limited (3) Generics (UK) Limited trading as Mylan v Merck Sharp and Dohme Corporation [2017] EWHC 539 (Pat); 21 March 2017 Arnold J

This decision was discussed on the IPKat blog (http://ipkitten. blogspot.co.uk) on 31 March 2017. Teva challenged the validity of MSD’s supplementary protection certificate SPC/GB08/022 for a combination of efavirenz, emtricitabine and tenofovir. The SPC covered the antiretroviral medication ATRIPLA used for treatment of HIV. Teva contended that the SPC did not comply with article 3(a) or (c) of European Regulation 469/2009/EC (the SPC Regulation). This was on the grounds that the product was not protected by the basic patent (European Patent (UK) No. 0582455), as required by article 3(a), and because MSD had previously obtained an expired SPC for efavirenz, such that the product had already been the subject of a certificate within the meaning of article 3(c).

Article 3(a) The relevant claim of the basic patent (claim 16) required a combination of efavirenz (a non-nucleoside reverse transcriptase inhibitor, NNRTI) with a nucleoside analogue having biological activity against HIV reverse transcriptase (NRTI). In construing claim 16, the judge held based on the expert evidence that tenofovir was a nucleoside analogue. He also held MAY 2017

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that “a” nucleoside analogue meant that only a single nucleoside analogue was present. In reaching the latter conclusion he distinguished from the use elsewhere in the patent of “one or more” and references therein to double and triple combinations. He commented that MSD’s arguments to the contrary were “exactly the sort of meticulous verbal analysis deprecated in the authorities”. Based on this construction, the judge held that claim 16 did not cover a combination of all three active ingredients, so that the product was not protected by a basic patent. Thus, the SPC was invalid under article 3(a).

Article 3(c) The judge reviewed the case law on the interpretation of article 3(c) and held that: “In my judgment it is clear from this case law that article 3(c) precludes the grant of an SPC for a combination of active ingredients where one of those active ingredients embodies the ‘core inventive advance’ or ‘sole subjectmatter of the invention’ of the basic patent and has already been the subject of an SPC based on that patent even if the patent contains one or more claims which protect the combination. On the other hand, it does not preclude the grant of an SPC for a combination of active ingredients, even if one of those active ingredients is protected by the basic patent and has already been the subject of an SPC, if the combination represents a distinct invention protected by the patent. If the combination is a distinct invention, it should not matter whether it is protected by the same patent or by a different patent.” The judge considered expert and documentary evidence and concluded that the skilled person would have considered that there was a reasonable likelihood that a combination of a NRTI and a NNRTI would be either synergistic or additive in vitro. Contrary to the conclusion reached on article 3(a), the judge assumed for the purposes of assessing the article 3(c) case that claim 16 of the patent covered the product. He formulated and answered the question to be decided as follows: “Counsel for the claimants submitted that it should be assumed for this purpose that the skilled person had efavirenz and its activity against HIV reverse transcriptase disclosed to them at the priority date. Although counsel for MSD took issue with this, I consider that it is correct. The question to be considered is not the conventional one of whether a claim is invalid over a particular item of prior art read in the light of the common general knowledge, but whether, given the invention of efavirenz, claim 16 represents a distinct invention such that it could in principle form the subject-matter of a separate patent. Considered in that way, I consider that claim 16 is not 46 CIPA JOURNAL

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independently valid over the claims which protect efavirenz and does not represent a distinct invention. There is nothing in the patent to suggest that claim 16 represents a distinct invention. Given the need for a simple and transparent system for the grant of SPCs, it seems to me that that should ordinarily be the end of the matter and that it should not be necessary to adduce expert evidence on this question. If it is appropriate to have regard to the expert evidence, however, I consider that the evidence establishes that, given efavirenz, it would have been obvious to combine it with a NRTI in vitro because that would have been an obvious thing to try and the skilled person would have had a fair expectation of success.” Thus, the SPC was also invalid under article 3(c).

Revocation | Validity | Obviousness | Added subject-matter Synthon B.V. v Teva Pharmaceutical Industries Limited [2017] EWCA Civ 148; 21 March 2017 Kitchin LJ, Briggs LJ, Floyd LJ

This is a decision from the Court of Appeal following an appeal by Synthon B.V. (“Synthon”) against a judgment of Birss J of 21 May 2015 – [2015] EWHC 1935 (Pat) – to dismiss Synthon’s action to revoke European patent (UK) 2 361 924 (“the Patent”) in the name of Teva Pharmaceuticals Industries Ltd (“Teva”). The patent at issue relates to glatiramer acetate (marketed as Copaxone®), which is used in the treatment of relapsing multiple sclerosis and accounts for $4.2 billion worth of annual sales worldwide and 21% of Teva group’s total revenues. Glatiramer acetate is a mixture of synthetic polypeptides made from the four amino acids, alanine, glutamic acid, lysine and tyrosine. The manufacture of glatiramer acetate includes an acidolysis step using a solution of hydrobromic acid (HBr) in glacial acetic acid (AcOH), i.e. HBr/AcOH. Synthon brought an invalidity action against two of Teva’s patents which describe an improved manufacturing process for the drug. This appeal concerns only European patent (UK) 2 361 924. The specification of the patent explains that there are two aspects to the invention. One aspect relates to reducing the levels of free bromine in the HBr/AcOH solution used in the acidolysis step by adding a “scavenger” to absorb the bromine. The other aspect relates to the presence of metal ion impurities in the HBr/AcOH solution, and the use of glass or Teflon-lined vessels to keep the formation of metal ion impurities below a specified level. In the first instance judgment, the Judge found all claims of the patent to be valid notwithstanding attacks based on lack of novelty, obviousness and insufficiency, and dismissed the claim for revocation. In the appeal, Synthon relied only on obviousness www.cipa.org.uk

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and submitted that the judge had fallen into correctable error on both aspects of the invention. By a separate appeal, Teva challenged the decision that certain claims of the patent were invalid for added subject-matter. On the metal ion aspect of the invention, Synthon argued that the patent taught expressly that, provided that non-metal apparatus was used, the HBr/AcOH solution was free of metal ions and that the claims relating to the metal ion impurity levels were obvious on this basis. Synthon emphasized that the teaching of the patent was that HBr/AcOH should be kept away from metal during its production by the use of a glass-lined reactor vessel and Teflon-lined pipework, and that was, in essence, all that was claimed about metal ion impurities in the claims. In view of the common general knowledge that HBr/ AcOH is highly corrosive to metal, Synthon asserted that it was obvious to keep metal away from HBr/AcOH during its production. Synthon argued that Birss J had not considered whether it was obvious to use a solution of HBr/AcOH which, during its manufacture, storage, and putting into use had not come into contact with metal. Synthon further argued that Birss J’s conclusions that adopting glass reactors for HBr/AcOH would not prevent metal ions from coming in at other stages did not apply to the manufacture of HBr/AcOH, or its use in the acidolysis (deprotection) step but were in the context of the overall process of making the finished glatiramer acetate product, where metal ions could come in from other sources. Floyd LJ (who gave the main judgment) dismissed these arguments on the ground that keeping HBr/AcOH away from metal surfaces, and creating a solution of HBr/AcOH with less than 500 ppm metal ion impurities (as required by the claim) are not the same thing. He argued Synthon had not adduced any evidence to prove that, if steps were taken to keep HBr/AcOH away from metal surfaces, then this level of purity would be achieved and that they had only pointed to the teaching of the patent specification. As regards the free bromine claims, Synthon advanced two main arguments. The first argument was that prior art, freshly made, clear HBr/AcOH would have a free bromine level of less than 0.1% and therefore fall within claim 1. Synthon argued that it was obvious to use freshly made HBr/AcOH. They further submitted that the judge had been wrong to say that there was no reliable evidence as to the level of free bromine in freshly prepared HBr/AcOH kept away from light and oxygen, and that he ought to have accepted the evidence from the expert witness that it was less than 0.1% Floyd LJ stated that this aspect of the appeal simply asks whether the judge was entitled to treat as unreliable the evidence of the expert witness as to the level of bromine which would cause discolouration. He concluded that based on the evidence provided, the judge was plainly entitled to reject as unreliable the evidence of the expert witness on the issue, and that the Court of Appeal would not be justified in making a finding that the level was less than 0.1%. Volume 46, number 5

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Synthon’s second argument was that the judge had lost sight of the fact that in the context of the invention was the manufacture of a pharmaceutical, where purity was an important consideration and that he been led astray by evidence as to what would be done in a university research laboratory, where less stringent requirements for purity would apply. In the pharmaceutical context, impurities such as free bromine, when noticed because of the discolouration, would be removed. Floyd LJ provided a number of reasons for rejecting this argument. Amongst these, he said that he found it difficult to accept that Birss J, a judge with enormous experience of cases involving pharmaceutical processes, would not have considered that the relevant context was a pharmaceutical process, and that the attitude toward impurities in that context might be more stringent than in a research laboratory. As regards Teva’s appeal against the finding of added matter, Floyd LJ accepted that the requirement for a direct and unambiguous disclosure does not exclude an implicit disclosure. However, he held that a general teaching to minimise the levels of impurity is not equivalent to a disclosure of glatiramer acetate with less than 1000 ppm of impurity and concluded that Birss J was right in relation to the issue of added subject-matter. In summary, both appeals were dismissed. Both Briggs LJ and Kitchin LJ agreed.

Construction | Infringement | Validity | Aesthetic creation | Obviousness Epoch Company Limited v Character Options Limited [2017] EWHC 556 (IPEC); 22 March 2017 HHJ Hacon This decision relates to an infringement action brought by Epoch, the proprietor of UK Patent No. 2498410. The defendant, Character Options (“CO”), counterclaimed for invalidity based firstly on the ground that the patent related to an aesthetic creation as such and secondly on the ground that it was obvious. This decision is also related to an earlier failed application for an interim injunction, [2015] EWHC 3436 (IPEC) – reported February [2015] CIPA 20. The patent related to a children’s toy, comprising beads made of a water soluble resin. The beads are “transparent” and glittered in the light. A child may arrange the beads into a pattern/shape in a tray. When water is sprayed on to the arranged beads, they would meld together to form a decorative article. Claim 1 of the patent specified a “fusible bead toy comprising a polyhedral particulate bead made of transparent and water soluble resin”. In an uncontested application before trial, Epoch conditionally proposed to amend claim 1 to require plural beads and to further include a tray having dents arranged at intervals substantially equal to but slightly smaller than a particle diameter of the beads. CO had been importing and marketing a range of toys known as “Beados Gems”. The Beados Gems toy included water MAY 2017

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soluble resin beads and a tray with dents on which the beads may be arranged.

Construction A point of contention on construction related to the meaning of the term “transparent”. CO advanced arguments based on the dictionary definition of the term. However, favouring the purposive approach advanced by Epoch, the judge noted that the technical effect of the “transparent” requirement is to enable light to reflect and refract when the beads are illuminated. The judge therefore concluded that a bead was “transparent” if it displayed visibly more brilliance than an opaque bead that only reflected light when illuminated.

Infringement Turning to infringement, the judge considered claim 1 as granted and as proposed to be amended in turn. In connection with the granted claim, the issue was whether the Beados Gems beads were “transparent”. A sample of the beads made into a decorative article was provided to the judge. Some of the beads were opaque and some were non-opaque. Based on his observations, the judge concluded that the non-opaque beads of the Beados Gems toy displayed greater brilliance than the opaque beads. The judge therefore found that the Beados Gems beads infringed claim 1. In connection with the proposed amended claim, the issue was whether the dents in the Beados Gems tray had the required spacing. In that respect, it was agreed upon at trial that the require spacing would result in adjacent beads touching each other whilst at the same time sitting stably in their respective dents. Although the judge found no clear indication in the evidence and arguments advanced at trial, he came to the view that it would not be intuitive for the Beados Gems tray to be designed with dents that did not stably accommodate the beads. On that basis, the judge found that the Beados Gems toy infringed proposed amended claim 1.

Validity Turning to validity, CO argued that the patent related to an aesthetic creation as such. CO also argued that the patent was obvious in view of common general knowledge and in view of two pieces of prior art; a document known as “Tobias” and the prior use of a similar fusible bead toy product known as “Bindeez Aquadots”. On the issue of aesthetic creation, CO referred to Gram Engineering Pty Ltd (BL O/275/08), in which the hearing officer refused an application directed to arrangements of panel formations on a cladding panel. CO argued that where the only technical contribution of a claim is aesthetic in nature, it must be directed to an aesthetic creation as such. In reply, Epoch referred the judge to the decision of the EPO Board Of Appeal in T686/90 (Hettling-Denker/Translucent building materials, [2004] EPOR 5). The judge noted that: 48 CIPA JOURNAL

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“In Hettling-Denker the invention was a building module which gave the impression of being a stained glass artwork. The contribution to the art was a new type of effect imparted by a building module. One could reasonably call it an aesthetic effect, but it was not an effect consisting of any particular design or group of designs. It was a technical effect. The design used could have been anything. The invention was therefore not an aesthetic creation as such. In Gram Engineering the claim was to arrangements of panel formations on a cladding panel. The contribution here was again an aesthetic effect, this time imparted by the panel. It was achieved by profiling the panel to incorporate in it formations arranged within the constraints set out in the claim. Every such profiling, when done, would constitute a design. In reality the contribution to the art was the claimed group of designs, to be made on a cladding panel. A design is an aesthetic creation. Thus, the invention was an aesthetic creation as such – more exactly, a group of aesthetic creations as such.” The judge concluded that: “The contribution to the art in the present case could also reasonably be described as an aesthetic effect, imparted by a fusible bead toy. An aesthetic effect is not, though, of itself an aesthetic creation. In particular, the effect here is not achieved by the creation of a particular design or group of designs. The invention claimed is therefore not an aesthetic creation as such.” On the issue of obviousness in view of common general knowledge, CO argued that the claimed invention is a mere juxtaposition of known features and must therefore be obvious. The judge, referring to the well-known “sausage machine” decision (Williams v Nye, [1890] 7 RPC 62), noted that the correct assessment is whether there was synergy in the combination and whether such a combination was obvious; if there was no synergy then the individual features must be considered separately. On the facts of the case, the judge was of the view that there was synergy in the combination of feature in claim 1 and dismissed the arguments based on common general knowledge alone. On the issue of obviousness in view of the cited prior art, the matter turned on whether it would be obvious to replace the spherical beads of Bindeez Aquadots with polyhedral beads. The judge noted that Tobias hinted at the use of non-spherical beads. The judge also noted that CO’s expert report indicated that the skilled person would be aware of polyhedral beads. The judge therefore found that claim 1 lacked inventive step.

Conclusion In conclusion, the judge held that the patent was invalid for obviousness, but would have been infringed had it been valid. www.cipa.org.uk

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IPO decisions Excluded matter: section 1(2) BQR Reliability Engineering Ltd et al. BL O/145/17 27 March 2017 The application related to a computerised method for estimating reliability of a system using failure rate models adjusted in response to real world data. The examiner maintained the invention was excluded as a combination of a program for a computer and a mathematical method as such. The applicant argued that the method had a technical effect outside of a computer (the first of the AT&T/CVON signposts), and provided a list of real world applications the method might be used for. The hearing officer noted that these applications were not included in the claimed invention. While the claimed invention used real-world data, the only outcome was an improved estimate of reliability. The applicant further argued that the reliability metric determined by the method was an intrinsic property of the system under test. The hearing officer noted that the method produced a prediction, which could not be considered the equivalent of a measured value, and contrasted the present invention with an improved voltmeter. A voltmeter could be entirely conventional in its physical construction, but novel in its internal software, which generated a more accurate measure of voltage based on an input. Such a device would not be considered excluded because it contributed a better voltmeter, and voltage was an intrinsic property. The hearing officer thus disagreed that the estimate of the reliability output by the current invention was an intrinsic property of a device being investigated. The applicant also drew analogies with the decision of the EPO in Vicom (T 208/84), in which image data was processed to produce better data. The hearing officer did not accept the analogy because the prediction of the claimed invention did not have an effect on a process outside of the computer, unlike the better image produced in Vicom. The applicant further argued that the fifth AT&T signpost, where the perceived problem was overcome rather than circumvented, was met. The examiner agreed, but considered the problem to be a mathematical problem overcome by a computer program. The hearing officer concluded that the invention fell

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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exclusively within the excluded fields. As a final remark, the hearing officer noted that it remained entirely possible that an application in the field of reliability engineering could meet all of the requirements for grant, but that each application had to be considered on a case-by-case basis. The application was refused.

Revocation: section 72 John Horsfall & Sons (Greetland) Ltd v Robert J. MacDonald BL O/138/17 23 March 2017 The claimant (Horsfall) sought revocation of the defendant's (MacDonald) patent on grounds of lack of novelty or lack of inventive step over a prior art document D1. The patent related to improvements in a particular type of fitted sheet for mattresses. The patent explicitly stated that it related to an improvement of a specific fitted sheet disclosed in another patent, D2. When construing the claim, the question arose of whether an “end” of the sheet must be construed as meaning the head and foot of the sheet (relative to a person lying on the sheet), or whether “end” may include the sides of the sheet. The defendant argued that, as the patent explicitly related to an improvement over D2, the skilled person would read the description of D2 to construe the claims of the present patent. The claimant countered that it was absurd to construe the claims using information from D2, noting that the patent claimed any fitted sheets suitable for any mattress and that the claims should be construed accordingly. The hearing officer noted that the patent clearly stated it related to an improvement of the sheet of D2, and that the description of the present patent was less than one page long. It was therefore appropriate to use the description of D2 to construe the claims of the patent. As D2 clearly referred to the head/foot ends as “the ends” in contrast to “the sides”, the hearing officer determined that “ends” should be construed narrowly. Considering novelty and inventive step, the hearing officer noted that claim 1 required a knit material. The implicit problem solved by D1 was to prevent ripping of an inelastic fabric. A knit material was elastic, so D1 could not implicitly disclose a knit material as the claimant had suggested. Claim 1 was therefore novel. The hearing officer similarly concluded that it would not be obvious to modify the inelastic material of D1 to use a knit material, and so the patent did not lack an inventive step. The claimant further argued that D2 was common general knowledge, and that it would be obvious to modify D1 to get the claimed fitted sheet. The description of the patent stated that the sheet of D2 was “fabricated from a knit material and is known in the trade as an envelope sheet”, which the claimant argued was an admission that the envelope sheet of D2 was common general knowledge. The hearing officer did not accept this argument, considering that the specific sheet described in D2 would not have become common general knowledge. The application for revocation failed. MAY 2017

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EPO decisions Patentable subject-matter – article 53(b) T 2323/11: Recombination cassettes and methods for sequence excision in plants / BASF Plant Science GmbH TBA decision of 24 January 2017 Chairwoman: G. Alt Members: B Claes and L. Bühler This is an appeal from a decision of the Examining Division refusing the grant of European patent application No. 05796045.2 pursuant to article 97(2) EPC. The patent application relates to a method of producing a transgenic plant comprising an introduced gene for an agronomically valuable trait. The method concerns the removal of unwanted sequences from the genome by the sexual crossing of two distinct transgenic parent plants. The genome of the first transgenic parent plant (having the sequences of interest conferring a particular trait on the plant) contains an undesired gene sequence (the “target gene”). The second transgenic parent plant comprises a transgene encoding a particular sequencespecific DNA endonuclease which, when expressed in a cell which comprises the target gene in its genome, irreversibly excises it. From such crosses, descendant plants, which lack the marker sequences in their genome, can be isolated. The Examining Division rejected the application on the basis that the method of claim 1 of both the main request and auxiliary request constituted an essentially biological process which is excluded from patentability under article 53(b) EPC. The Examining Division also stated as obiter dictum that the subject-matter of claim 1 of both requests lacked inventive step (article 56 EPC). The applicant appealed the decision and at the oral hearing argued that the invention was not excluded from patentability as the method claimed by claim 1 constituted “an additional step of a technical nature, which step by itself introduces a trait into the genome or modifies a trait in the genome of the plant produced, so that the introduction or modification of that trait is not the result of the mixing of the genes of the plants chosen for sexual crossing” as set out in G 2/07 and G 1/08.

PATENTS: EPO

However, the board disagreed and considered that claim 1 of the main request and the first auxiliary request were not patentable given article 53(b) EPC. In the reasons for its decisions G 2/07 and G 1/08, the Enlarged Board considered that, under article 53(b) EPC, excluded: “Processes were characterised by the fact that the traits of the plants resulting from the crossing were determined by the underlying natural phenomenon of meiosis. This phenomenon determined the genetic make-up of the plants produced, and the breeding result was achieved by the breeder's selection of plants having the desired traits.” The board agreed with the applicant that the factual excision of the target gene in the context of the claimed process occurs after the zygote has been formed. However, the board noted that in the context of the claimed invention the step of the excision of the target gene in the genome of the progeny of the two particular parent plants can only occur if the zygote generated upon crossing the parent plants combines the features of: 1. the presence of the target gene (from the first parent plant); and 2. the presence of the transgene encoding a particular sequence-specific DNA endonuclease (from the second parent plant). The presence (or absence) of these features in the genomes of the respective gametes which fuse to generate the desired zygote, and thus the plant resulting from the crossing, is determined by meiosis upon the production of these gametes. Accordingly, the reasoning of G2/07 and G1/08 applied to exclude the invention from patentability. Auxiliary requests 2 and 3 were limited to product and use claims and had not been considered by the Examining Division. As the Examining Division had not expressed an opinion on the issues in these requests the Board exercised its discretion under article 111(1) EPC and remitted the case back the Examining Division for further prosecution.

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

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Entitlement to priority – article 87(1) EPC 1973 T 0577/11: Threaded tube joint / TENARIS CONNECTIONS TBA decision of 14 April 2016 Chairman: M. Poock Members: H. Schram, M. Blasi, P. Lanz, and T. Karamanli This was an appeal from the Opposition Division’s decision that, whilst priority had been validly claimed, claim 1 of the main request was impermissible for added matter – articles 100(c) and 123(2) EPC 1973 – and claim 1 of the first and second auxiliary requests were impermissible for lack of inventive step (article 56 EPC). In reply to the proprietor’s appeal the opponent appealed the Opposition Division’s decision that priority was validly claimed. The patent claimed priority from an Italian national application filed by Dutch company Tenaris Connections BV, whereas the subsequent PCT application was filed by a Lichtenstein company of the same group, Tenaris Connections AG. When the priority right was challenged in opposition, Tenaris relied on an agreement governed by Dutch law between the BV and AG companies assigning the priority right, which was dated three days after the PCT application was filed but included a clause stipulating that the assignment was to be retroactively effective from 1 January of that year (thus prior to the filing of the PCT application). The TBA noted that it was for the proprietor to establish that priority was validly claimed. In this regard the TBA noted that the PCT application was deemed to be a European patent application as of its international filing date in accordance with article 150(3) EPC and therefore the EPC was the relevant law for the assessment of entitlement to priority. The TBA held that it was clear from article 87(1) EPC that the transfer of the priority right must have taken place prior to the filing of the subsequent application. This conclusion was in accordance with article 4A(1) of the Paris Convention and the legislative history of both treaties, and follows the consensus in previous national and EPO case law. The key point to be determined was therefore whether the priority right had been validly assigned to Tenaris Connections AG on a date prior to the filing of the PCT application. In considering the contractual arrangement establishing the retroactive effect of the priority assignment, the Board addressed the proprietor’s arguments under Italian and Dutch law and (without determining which would be the applicable law) found that the proprietor had failed to make out a case for effective transfer under either law, having at best only proven an assignment of the economic rights to the priority application under Dutch law. In this regard the TBA found that the proprietor had not established that the transfer of economic rights was sufficient to claim priority from an earlier application under Dutch law and in the Board’s opinion did not result in an a transfer of overall rights of ownership. The Volume 46, number 5

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Board distinguished this case from J 19/87 in that economic ownership was different from ownership “in equity” under English law. As the Board did not find that legal title has been passed with retroactive effect, it did not consider whether such retroactive assignment was sufficient under article 87(1) EPC. The proprietor had also made submissions in support of an earlier assignment of the priority right via an agreement by “conclusive action” under Italian law, i.e. a mutual agreement implied by conduct and concluded by carrying out convincing behaviours. According to the proprietor, the sole filing of a subsequent application by a company of the same group claiming priority from an earlier application filed by another company within the group would amount to a mutual agreement to transfer the priority right. The Board held that such a filing did not, in isolation, clearly imply a mutual agreement to transfer the ownership, and therefore held it was not proven that the transfer had taken place. The patent was therefore not entitled to priority under article 87(1) EPC.

Non-institute events EPLIT 4th Annual Meeting Provider: European Patent Ligitgators Association Date: 11-12 May 2017 Introduction to Intellectual Property Provider: Assimilate IP Date: 22 May 2017 Freedom to Operate Provider: Assimilate IP Date: 22 May 2017 Introduction to FD4 course Provider: JDD Courses Date: 25 May 2017 UNION-IP spring dinner meeting Provider: UNION-IP Date: 28 May 2017 72nd Annual General Meeting Provider: Benevolent Association of the Chartered Institute of Patent Attorneys Date: 7 June 2017 FC1, FC2, FC3, FC4 and FC5 revision courses for PEB 2017 Provider: JDD Courses Date: 23 June-8 July 2017 FD1, FD2, FD3 and FD4 revision courses for PEB 2017 Provider: JDD Courses Date: 22 June-23 August 2017 Freedom to Operate for the Life Sciences and Pharmaceutical Industries Provider: Assimilate IP Date: 26 June 2017 FD4 (P6) re-sitter course Provider: JDD Courses Date: 1 July 2017 Unitary Patent & Unified Patent Court Conference Provider: Premier Cercle Date: 5 July 2017 Basic Litigation Skills Course Provider: CPD Training Date: 11-15 September 2017 See full details at www.cipa.org.uk/whats-on/non-institute-events/ MAY 2017

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TRADE MARKS

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

Ref no. GC T-30/16

M. I. Industries, Inc., v EUIPO; Natural Instinct Ltd

foodstuffs for dogs and cats; dog food; cat food; dog biscuits; bone and chewing bones for dogs; treats (foods) for dogs and cats; litter for dogs and cats (31)

15 February 2017

INSTINCT

– pet foods and pet treats (31) Reg 207/2009 NATURE’S VARIETY

– pet foods and pet treats (31)

LAND GLIDER

T-71/15

– electric vehicles (concept cars), except two-wheel vehicles (12)

Jaguar Land Rover Ltd v EUIPO; Nissan Jidosha KK

LAND ROVER

16 February 2017 Reg 207/2009

– land vehicles and their engines; components and accessories for land vehicles (12) (UK and EUTM registrations)

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The GC partially annulled the BoA’s decision, in so far as it held that the evidence filed in the opposition was insufficient to demonstrate that earlier mark INSTINCT had been put to genuine use. The GC endorsed the BoA’s assessment regarding lack of genuine use in respect of NATURE’S VARIETY. With regard to the earlier mark INSTINCT, the BoA incorrectly attributed lower evidential value to an affidavit from the owner of Cats’ Country (the sole importer and EU distributor of Natural Instinct Ltd) on the basis of the close links between the parties on account of their commercial relationship. The GC held that the existence of contractual links between two distinct entities did not, in isolation, mean that an affidavit from one of those entities was not from an independent source and should not be attributed the same value. Contrary to the BoA’s decision, the affidavits, invoices and label mock-up submitted in evidence demonstrated that goods bearing the mark INSTINCT had been made available on the German market. Evidence of sale to end consumers was not required to prove that the mark had been used publically and outwardly and the BoA had incorrectly found that use addressed to professionals in the sector concerned did not amount to genuine use of a mark.

The GC annulled the BoA’s decision that there was no likelihood of confusion between the marks at issue pursuant to article 8(1)(b) and that the mark applied for did not take unfair advantage of the earlier marks, pursuant to article 8(5). The identity of the goods at issue and the assessment of the relevant public, being the general public of the EU with an enhanced level of attention, were not disputed by the parties. The BoA erred in finding that the relevant public would perceive the common element ‘land’ as descriptive of the goods at issue, as the word would not be understood by the whole of the relevant public as a reference to a solid part of the Earth’s surface. As a result, the BoA was also incorrect to find that the word was weakly distinctive or even devoid of distinctive character. The BoA’s assessment of the similarity of the marks was also incorrect. The BoA had found that, owing to the descriptive nature of the first element, the relevant public www.cipa.org.uk

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Ref no.

Application (and where applicable, earlier mark)

TRADE MARKS

Comment

would pay more attention to the second element of the marks concerned. As the element ‘land’ could not be said to be descriptive, the BoA had erred in concluding the marks at issue were only visually and phonetically similar to a low degree. The BoA’s reasoning on dilution under article 8(5) was also vitiated by errors as a result of the above findings. The BoA failed to carry out a comprehensive analysis of the evidence of enhanced distinctiveness, preventing them from consideration in full the factors relevant to article 8(5).

GC T-596/15

Batmore Capital Ltd v EUIPO; Univers Poche 17 February 2017

– portable handheld digital electronic devices for recording, organising, transmitting, manipulating and reviewing text, data, images and audio files (9) (International registration designating the EU)

Reg 207/2009

– pre-recorded data carriers, magnetic disks, optical disks, compact disks (audio-video), DVDs, all digital magnetic or optical data carriers; electronic publications; software (recorded programs); electronic databases (9) – reading sheets, educational sheets, periodical publications, including boxes consisting both of books or booklets and of audio and or video supports such as CD-ROMs and video disks (16) – providing Internet chat rooms; downloading services of data (information, images and sounds) (38) – provision of teaching materials provided through computer networks; providing online electronic publications

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks at issue pursuant to article 8(1)(b). The GC endorsed the BoA’s assessment of similarity of the goods at issue. There was a significant degree of complementarity between the goods in class 9, as the goods protected by the earlier mark could not be used without the additional electronic hardware covered by the mark applied for. The goods could be sold through the same channels which created a likelihood that the relevant Frenchspeaking public would assume they had the same origin. The marketing concept of those goods, which was liable to change over time, was irrelevant in the assessment of similarity and did not impact the protection conferred by a registered trade mark. The class 16 goods and classes 38 and 41 services covered by the earlier marks were also similar to the goods covered by the mark applied for, as the relevant public may consider that the same undertaking would offer both content and the hardware on which to visualise or listen to that content. The BoA had not erred in finding visual, conceptual and phonetic similarities between the marks at issue.

(several French registrations)

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Application (and where applicable, earlier mark)

Ref no.

PALOMA

– roses and rose plants; propagation material of roses (31)

T-369/15

Hernández Zamora, SA v EUIPO; Rosen Tantau KG 17 February 2017 Reg 207/2009

GC T-351/14

Construlink – Tecnologias de Informação, SA v EUIPO; Wit-Software, Consultoria e Software para a Internet Móvel, SA 17 February 2017 Reg 207/2009

– fruits, garden herbs (31)

GATEWIT

– design of computer systems; creation and maintenance of websites, for others; research and development (for others); computer software design; consultancy in the field of computer hardware (42)

– consultancy in the field of computer hardware and software; computer programming; computer system design; … research and development for others; … computer software design (42)

TRADE MARKS

Comment

The GC upheld the BoA’s finding that there was no likelihood of confusion between the marks pursuant to article 8(1)(b). The BoA was correct to find that the goods at issue were different: ‘roses and rose plants…’ were non-edible living organisms usually with aesthetic purpose whereas the goods covered by the earlier mark were used for culinary purposes. The nature and intended use was very different, the goods could not be said to be in competition or complementary and the distribution channels of the goods differed significantly. Although the goods may be sold within the same department store, consumers would not automatically believe those goods had the same origin. The BoA was correct to conclude that specialist shops would not stock all of the goods at issue. The BoA was entitled to find that there was no likelihood of confusion, irrespective of the degree of similarity or identity of the marks at issue.

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks at issue pursuant to article 8(1)(b). The BoA was correct to find that the element ‘wit’ was the dominant element within the earlier mark because of its fanciful nature, the larger size and central positioning within the earlier mark and its unusual stylised font. The general or professional public specialising in computing would perceive the element ‘gate’ in the mark applied for as descriptive of the IT and computing services at issue, whilst the element ‘wit’ would be considered fanciful. The BoA was correct to find that ‘wit’ was therefore the more distinctive and important element of the mark applied for. However, the BoA had erred in its assessment of visual and conceptual similarity as low. The GC held the marks were visually similar to a normal degree and were conceptually neutral rather than similar. The BoA had nevertheless been entitled to find overall similarity on the basis of the visual and phonetic similarity of the marks. The GC therefore endorsed the finding of a likelihood of confusion on the part of the relevant public specialising in computing.

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, Emma Green and Hilary Atherton 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: Rebekah Sellars, Paul Sweeden, Toby Sears, George Khouri, and Sam Triggs. 54 CIPA JOURNAL

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Ref no.

GC T-400/16

Maximum Play, Inc. v EUIPO 9 March 2017 Reg 207/2009

Application (and where applicable, earlier mark) MAXPLAY

– … computer software; computer game software; computer for video game and computer game development and operation, media authoring, and game authoring; computer game software for use on mobile devices; virtual reality game software (9) – entertainment services, namely, providing online computer, video and electronic games; providing temporary use of non-downloadable electronic, interactive, computer and video games… (41) – computer programming for computer and video games; designing, developing and modifying computer game software and virtual reality software... (42)

High Court finds no trade mark infringement or passing off in respect of Google AdSense ads Argos Ltd v Argos Systems Inc* Richard Spearman QC; [2017] EWHC 231 (Ch); 15 February 2017 Richard Spearman QC (sitting as a Deputy Judge of the Chancery Division) rejected Argos Ltd’s (AUK) claims for trade mark infringement under articles 9(1) and 9(1)(c) and passing off in respect of Argos Systems Inc’s (AUS) use of the sign ARGOS in the form of the domain name ‘www. argos.com’ and on AUS’s website by reason of the display of advertisements placed there through the Google AdSense advertising programme. AUK is a very substantial UK-based retailer of non-food consumer products that began trading in 1973 through catalogues and retail stores. It operates primarily in the UK and the Republic of Ireland under the mark ARGOS (for which it ownes two EUTMs registered for advertising and retail services) and via the domain name ‘www.argos. co.uk’. AUS is a US company that provides CAD systems for the design and construction of residential and commercial buildings. It had traded under the name ARGOS since 1991 in North and South America; it had no clients in the EU and had made no attempt to enter the European market. It Volume 46, number 5

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Comment

The GC upheld the BoA’s decision that the mark applied for was descriptive for the purposes of article 7(1)(c). The mark consisted of two elements ‘max’ and ‘play’ which were easily identifiable by the English speaking general public. Both words were held to be common and widely-used in the English language and the mark as a whole did not contain any unusual syntactical element which made the expression anything other than the mere combination of the two words. In light of the goods at issue, the mark would inform consumers immediately and without any further thought of the quality and intended purposes of those goods, namely that they offer ‘maximum play’ or ‘best play’. The BoA had correctly examined the overall impression created by the mark as a whole, notwithstanding the fact that it had considered the meaning and significance of the individual elements of the mark. Given the BoA’s finding on article 7(1)(c), it was not necessary for the GC to consider whether the mark had distinctive character pursuant to article 7(1)(b).

had registered the domain name ‘www.argos.com’ before AUK registered the domain name ‘www.argos.co.uk’. AUK claimed that AUS’s use of the sign ARGOS in conjunction with some versions of its homepage were directed at UK Internet users by reason of the display of advertisements placed there via Google’s advertising programmes with the consent of AUS. AUK did not object to the use of AUS’s domain name in relation to a simple website promoting its CAD services. However, AUK claimed that AUS’s domain name when used in relation to a webpage bearing ads, including ads for AUK, amounted to trade mark infringement, particularly when people based in the UK increasingly began entering the AUS domain name into a web browser guessing wrongly that it was AUK’s website address, thereby allowing AUS to generate advertising revenue. AUS counterclaimed for a declaration of non-infringement and claimed an indemnity under a contract made between AUK and Google, on the basis that the contract conferred third party rights on AUS. The Judge held that AUK did not and could not have objected to AUS’s use of the sign ARGOS in its domain name. AUK had, by accepting Google’s advertising programme terms, expressly and unequivocally consented to AUS’s use of the sign ARGOS in its domain name together with and in the context of displaying advertisements on AUS’s website, any claims by AUK MAY 2017

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depending upon AUS’s display of AUK’s ads on AUS’s website were bound to fail because AUK had consented to AUS acting in that way. Consent, for the purposes of article 9, did not require AUK to know that AUS was using the sign in that way. Even if AUK did not know that ‘www. argos.com’ had been registered by a third party, or did not know that the third party was AUS or that the sign ARGOS was being used by the third party in the third party’s domain name, it was sufficient that AUK did not exercise its right to exclude any website having the ‘www.argos.com’ domain name from those which were otherwise included in AUK’s grant of rights to Google and its partners. There was also evidence that AUK knew that its ads were being displayed on AUS’s website while AUS also used the sign ARGOS in AUS’s domain name, including that the agent who managed AUK’s advertising campaigns had information concerning the performance of AUS’s website as a placement for AUK’s ads. In relation to ads for AUK’s competitors appearing on AUS’s website and to which AUK had not consented, the Judge concluded that that there was not enough evidence that this had in fact occurred. The court’s jurisdiction was limited to acts of trade mark infringement and passing off in the territory of EU member states. This depended on the concept of targeting. Most UK visitors to the website visited it by mistake and left it almost instantly. Since the display of Google ads was the determinative factor when assessing the issue of targeting, this raised a question of how ads were perceived by the average Internet user. The court considered that the average Internet user would know or suspect that the Google ads that appeared would be affected by an individual’s conduct or characteristics, particularly browsing history. On the evidence, having regard to the perceptions of the average consumer, the court could not hold that the proportion of UK visitors to AUS’s website who would have regarded the site or any part of it as aimed or directed at them warranted the conclusion that it was targeted at them. Statistics as to bounce rates and the duration of visits made to AUS’s website by UK users made it likely that the vast majority of UK visitors did not look at the ads at all. As the ads were the only part of the website aimed at UK visitors, most would not have regarded AUS’s website or any part of it as being directed at them. Most individuals searching for AUK’s website would have realised instantly that they had reached a website that was not, and was not related to, AUK’s website. Accordingly, the Judge dismissed AUK’s trade mark infringement and passing off claims. He also dismissed AUS’s indemnity claim but did not decide on its claim for declarations of non-infringement.

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Apple’s IWATCH appeal rejected Apple Inc v Arcadia Trading Ltd* Arnold J; [2017] EWHC 440 (Ch); 10 March 2017 Arnold J dismissed Apple’s appeal from a decision of the hearing officer that IWATCH was descriptive in respect of the following goods in class 9: Computer software; computers; monitors and monitoring devices; computer hardware; wireless communication devices; audio and video devices; global positioning system devices; accessories; parts, components, and cases for all of the foregoing goods. The hearing officer held that IWATCH was descriptive for such goods because the GC had established that the prefix ‘I’ would most likely be viewed as ‘Internet’ which, when used in conjunction with the descriptive term ‘watch’, resulted in IWATCH being descriptive of a watch-like device with Internet connectivity. Although Apple had numerous registrations for ‘I’ prefix marks, there was evidence that other third parties also used the ‘I’ prefix. ‘Computer software’ was found to be descriptive because such goods were closely connected to smart watches. The hearing officer found that use of Apple’s existing marks such as ‘iPOD’, ‘iPAD’ etc did not amount to use of IWATCH for the purposes of establishing acquired distinctiveness and, in any event, registration of IWATCH would give Apple an exclusive right to it in any form of normal use, rather than merely in the form of a lower case ‘i’ followed by a capital letter which was part of what identified Apple’s existing family of marks. First ground of appeal: the hearing officer was wrong to hold that the class 9 specification covered smartphones in the shape of a watch or smart watches. Arnold J rejected Apple’s first ground of appeal. He said that the fact that “smartwatches” were not specifically included in the list of goods in class 9 in the tenth edition was immaterial and the hearing officer was entitled to find that they had a dual functionality and were proper to class 9 as well as class 14, and fell within the broad terms of the specification of goods above. The Judge also rejected Apple’s claim that the hearing officer had construed the specification of goods by reference to Apple’s commercial intentions with respect to goods bearing the mark. Second ground of appeal: the hearing officer was wrong to hold that the trade mark was descriptive for computer software. Arnold J did not accept Apple’s argument that the hearing officer had misapplied the reasoning of Geoffrey Hobbs QC sitting as the Appointed Person in FOUNEAUX DE FRANCE Trade Mark. Apple argued that computer software was not so closely connected to smart watches as to make the trade mark IWATCH descriptive of computer software. However, Arnold J was of the view that smart watches www.cipa.org.uk

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depended for their operation on the computer software they incorporated and therefore the hearing officer had not made any error. Third ground of appeal: the hearing officer was wrong to reject Apple’s case of acquired distinctiveness. Arnold J found that the hearing officer was fully entitled to conclude that IWATCH had not acquired a distinctive character in relation to smart watches for the reasons the hearing officer had given. Although Arnold J said that he had not received full arguments from either side on the context and purpose of article 3(3) and he was therefore reluctant to express a concluded view on the matter, he also rejected Apple’s argument based on the recent judgment of the GC in Case T-518/13 Future Enterprises Pte Ltd v EUIPO. There, McDonalds successfully sought a declaration of invalidity in respect of a third party’s registration for MACCOFFEE in relation to goods in classes 29, 30 and 32, relying on its marks which included McCHICKEN, McFISH, McMUFFIN and McTOAST. The GC held that the relevant public had come to recognise marks having the prefix ‘Mc-’ as denoting goods and services emanating from McDonalds and, importantly, the prefix was not descriptive of any characteristics of the goods or services in question. Unlike the present case, nor were any of the relevant trade marks, including the contested trade mark, viewed as a whole, descriptive. Therefore, Arnold J observed that it did not necessarily follow that a trade mark which was descriptive (or otherwise lacked distinctive character) could acquire distinctive character as a result of the use of other trade marks with which it shared a common feature.

Damages awarded on account of profits basis against non-engaging defendant Champagne Louis Roederer v J Garcia Carrion S.A. & Ots (“JGC”)* Master Bowles; [2017] EWHC 289 (Ch); 23 February 2017 Rose J had found that Roederer’s CRISTAL marks, which were registered for champagne and wines, were infringed by JGC’s importation into and sale in the UK of its Spanish cava product under the sign CRISTALINO ([2015] EWHC 2760 (Ch), reported in December [2015] CIPA 48). In the present hearing, Master Bowles determined that the recoverable profits derived by JGC from its infringement were just over €1.3 million. JGC had failed to comply with an Island Records v Tring disclosure order made by Rose J. Master Bowles was satisfied that all methods employed by Roederer and its lawyers to bring relevant matters, including Roederer’s election for an account of profits, to JGC’s attention had Volume 46, number 5

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been effective. In light of JGC’s non-compliance and nonengagement, Master Bowles had directed that Roederer’s evidence would stand as unchallenged. JGC did not appear at the hearing and was not represented. Roederer explained in witness evidence that it had been able to piece together information as to JGC’s sales in the UK from a number of sources. This included information put forward by JGC in other proceedings in other jurisdictions and from UK supermarkets to which JGC had sold Cristalino products. Based upon those materials, a forensic accountant expert witness for Roederer was able to conclude that there was evidence to support infringing sales of Cristalino to the extent of 2,417,829 bottles. Master Bowles was of the view that whilst the nonengagement or non-compliance of a defendant could not entitle the court to act on assumptions that went against the weight of the evidence or were otherwise unlikely, the court was entitled to do the best it could without entering into the realm of speculation. Accordingly, Master Bowles made a deduction for some sales which appeared to have been made under a different, non-infringing, brand name in the relevant period. Also, where sales data was not available from one supermarket, he assumed in JGC’s favour that sales had declined during the economic crisis of 2008-2010 as had the other supermarkets, reducing the infringing number of bottles sold to 2,868,183. Master Bowles went on to accept Roderer’s expert’s unchallenged evidence as to JGC’s gross profit of €1.3 million. Having regard to Hollister v Medik (which established that it was not appropriate to make any automatic deduction from profits arising from the sale of infringing goods to reflect general overheads of the defendant’s business), the Master did not consider it appropriate to make any deduction to reflect JGC’s general costs. In light of Rose J’s finding that it was likely or probable that consumers had bought Cristalino in the belief that it was a product of Roederer, the Master did not consider it appropriate to make any other allocation or allowance against the profits, concluding on the evidence that no part of the profits were derived other than from JGC’s infringement.

Objection to registration of SOVEREIGN for gold commemorative coins upheld The Royal Mint Ltd v The Commonwealth Mint & Philatelic Bureau Ltd* Newey J; [2017] EWHC 417 (Ch); 3 March 2017 Newey J dismissed The Royal Mint Ltd’s (RM) appeal from a decision of the hearing officer to refuse registration of SOVEREIGN for “gold commemorative coins” on the grounds of sections 3(1)(c) and (d). MAY 2017

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RM was a private limited company owned by HM Treasury and appointed by it as the sole and exclusive manufacturer, provider and distributor of UK circulating coins and UK commemorative coins. The Commonwealth Mint & Philatelic Bureau Ltd (CMPB) specialised in producing legal tender commemorative coins for various countries around the world. With regard to section 3(1)(c), the hearing officer found that “‘sovereign’ was a kind of gold commemorative coin” and was perceived as denominative by relevant average consumers rather than as an indication of origin. As for section 3(1)(d), the hearing officer found that although GB sovereigns were by far the most common gold commemorative coins traded in the UK at the relevant date, the word sovereign alone did not guarantee the trade origin of such goods because it had become customary in the current language or in the bona fide and established practices of the trade. Considering the question of acquired distinctiveness, the hearing officer found that while RM had sold sovereigns for a long time and in large volumes prior to the relevant date and enjoyed a very significant share of the UK market for gold commemorative coins, a significant proportion of relevant average consumers would also have been aware that one or more territories also produced gold commemorative coins called sovereigns, which were traded in the UK. On appeal, Newey J held that the hearing officer was entitled to proceed on the basis that RM’s expert witnesses (the curator of medieval and early modern coinage at the British Museum and the director of the Royal Mint Museum Ltd) were not average consumers and therefore their evidence could not be regarded as determinative. He also rejected RM’s claim that the hearing officer had erred in finding that ‘sovereign’ was a denomination of money; the hearing officer was entitled to reach this conclusion based on evidence that included: •

• •

the Coinage Act 1971 (which prohibited the issuing of sovereign and other coins without the authority of the Treasury); the fact that a sovereign was legal tender in the UK; and the way in which RM used the name in its marketing materials.

Newey J also rejected RM’s argument that the fact that no one but RM could make sovereign coins for UK purposes meant that the word ‘sovereign’ must be distinctive of its coins – it had been clearly established before the hearing officer that the trade in gold commemorative coins was international in nature and that sovereign coins from other jurisdictions commonly bore the word ‘sovereign’. RM’s ground of appeal based on acquired distinctiveness also failed because, although the hearing officer had stated that a large proportion of the relevant public associated the 58 CIPA JOURNAL

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name ‘sovereign’ with coins issued by the UK government and/or RM as its agent, he made no finding that the association was because of the trade mark.

Suspension of opposition proceedings before the EUIPO Unilever NV v EUIPO (Technopharma Ltd) General Court; T-811/14; 17 February 2017 The GC annulled the BoA’s decision which refused to suspend opposition proceedings on the basis that the BoA had incorrectly assessed whether the request met the necessary requirements. Unilever NV filed a EUTM application for the following figurative mark, covering a range of personal care goods, cosmetics and perfume goods in class 3:

Technopharma Ltd owned an earlier EUTM application for NEW YORK FAIR & LOVELY, covering class 3 and 5 which was later concerted into national pending applications in the Benelux, Germany, Spain, France and the UK. Technopharma Ltd also owned earlier national registrations for the mark FAIR & LOVELY in Italy and the Benelux. The BoA had found a likelihood of confusion, pursuant to article 8(1)(b), between the mark applied for by Unilever NV and the various earlier national registrations relied on by Technopharma Ltd. Unliever appealed, and sought the cancellation of the BoA’s decision or, in the alternative, a suspension of the opposition proceedings pending the outcome of the on-going cancellation actions against Technopharma’s earlier rights obtained as a result of the converted EUTM. The BoA had examined the likelihood of confusion in relation to Technopharma’s earlier Benelux registration, and not the earlier Spanish trade mark on which the Opposition Division’s decision had been based (for reasons of procedural economy). Technopharma’s submissions within the opposition proceedings were the same in relation to all other earlier national trade mark registrations relied on and, as such, the BoA had been entitled to conduct a new examination regarding likelihood of confusion on the basis of an earlier Benelux registration. The BoA’s decision did not infringe the principle of legitimate expectations and no misuse of powers by the BoA. With regard to the suspension of proceedings, the GC held that the BoA had committed a manifest error in its assessment and had misapplied rule 20(7)(c) and rule 50(1) of Regulation No 2868/95. Contrary to the finding of the BoA, Unilever NV had in fact provided evidence of both the www.cipa.org.uk

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existence of cancellation proceedings before the competent Netherlands court and details of the bad faith grounds relied on therein, having submitted the relevant summons and statement of grounds. The BoA therefore incorrectly held that, by granting the application for suspension, the BoA’s original decision refusing the registration of the mark applied for on the basis of the earlier Benelux registration would be rendered ‘devoid of purpose’. The BoA had failed to appreciate that the cancellation proceedings against the earlier Benelux registration relied on bad faith and not the existence of earlier trade marks. The GC considered that those errors may have prevented the BoA from taking into consideration all the factors relevant to the proceedings such that, when considering Unilever NV’s request for suspension, the BoA: 1. did not address the whole picture; 2. was not in a position to properly weight the various interests of the parties; and 3. could not correctly evaluate the chances of success of the cancellation proceedings on which the BoA based its decision to dismiss the application.

Copyright First blocking order granted in respect of streaming servers The Football Association Premier League Ltd v British Telecommunications Plc & Ots* Arnold J; [2017] EWHC 480 (Ch); 13 March 2017 Arnold J made an Order requiring the defendant UK ISPs to take measures to block access by their customers to streaming servers which delivered infringing live streams of Premier League footage to UK customers. The Football Association Premier League Ltd (FAPL) was the governing body of the football Premier League and owned copyright in films comprising television footage of all Premier League matches and in artistic works that appeared within that footage. The defendants were the six main retail ISPs in the UK. FAPL’s application was supported by other rights holders, including the BBC, England and Wales Cricket Board, PGA European Tour and Rugby Football Union. Arnold J said that while, in some respects, the present application was similar to one by FAPL which led to a blocking injunction being made in respect of a particular website – FAPL v Sky [2013] EWHC 2058 (Ch) – this was the first time such an order had been sought in respect of streaming servers. Since FAPL v Sky, the problem of illegal streaming had been exacerbated by: Volume 46, number 5

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1. consumers increasingly using set-top boxes, media players and mobile device apps to access infringing streams, rather than web browsers running on computers, meaning that traditional website blocking orders would be ineffective in preventing infringement; 2. a dramatic decrease in the skill and effort required to find and use such devices and apps to access infringing content; 3. it was now possible to access a large number of highquality infringing streams of footage of each match; 4. a significantly higher proportion of UK consumers believed it lawful to access unauthorised streams using such devices and software than believed it lawful to access such content via file-sharing websites; and 5. the streaming servers used to make available infringing streams to the public had increasingly been moved to offshore hosting providers who did not cooperate with right holders’ requests to take down infringing content at all or in a timely manner (which was important given that any intervention had to occur during the course of a match). It was because a single server could be accessed via a number of different user interfaces that FAPL sought to block access to streaming servers. The Order sought included the following criteria: 1. it identified specific IP addresses at which infringing streaming servers had been located and identified by FAPL; 2. it focused on the more egregious infringers; 3. FAPL had to reasonably believe that the server had the sole or predominant purpose of enabling or facilitating access to infringing streams of Premier League match footage; and 4. FAPL had to neither know nor reasonably believe that the server was being used for any other substantial purpose. Arnold J also granted the injunction on the basis that: 1. it was a ‘live’ blocking order (meaning that blocking need not occur outside match times); 2. the list of target servers could be ‘reset’ each week (meaning that old servers would not be blocked after the end of a week unless they continued to infringe); 3. the Order was for a short period (coming into force on 18 March 2017 until the end of the current Premier League season on 22 May 2017) thereby allowing an assessment of its effectiveness ahead of the next season; and 4. the Order required the relevant hosting providers to be notified when one of its IP addresses was subject to blocking and gave them permission to apply to set aside or vary the Order (along with the operators of the target websites and any customer of the defendant ISPs who claimed to be adversely affected by the Order). MAY 2017

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Arnold J went on to find that the requirements of section 97A CDPA were met and that an Order should be made, taking into account that the limited interference with Internet users’ rights to impart or receive information was justified by a legitimate aim and was proportionate: no equally effective but less onerous measures were available to FAPL, the Order avoided creating barriers to legitimate trade, it was not unduly complicated or costly, and it contained safeguards against misuse.

History book found not to infringe copyright in earlier created chapters concerning the same historical events Adenike Ogunkoya v Charles Harding* Miss Recorder Amanda Michaels; [2017] EWHC 470 (IPEC); 10 March 2017 Recorder Michaels dismissed Ms Ogunkoya’s claim that in writing his book “The Fascinating History of My Liberated Ancestors”, Mr Harding had made unlawful use of elements of three chapters of a book she had written, thereby amounting to copyright infringement and/or breach of confidence. Ms Ogunkoya was a specialist in the history of the Creoles and their diaspora along the coast of West Africa and in the Western Hemisphere. She had become interested in the Smith family of Sierra Leone and, in particular, in the lives of five sisters born between about 1860 and 1871 in Freetown. In 1999, she started to write a book about them (which she never finished). In 2010, in order to fund further research for her book, she sold a copy of the first three chapters of it to (among others) the mother of Mr Harding who was a descendant of the Smith family. Mr Harding practised as a barrister in Sierra Leone and later as a solicitor in the UK. He started to research his family history in 2009 and around that time purchased a third-party biography of one of the Smith sisters. Later in 2009, he prepared a family tree as a birthday gift for his mother and, when he retired from practise in 2014, started researching for his own book. Mr Harding’s book was published in 2016, consisting of some 400 pages and set out in 11 chapters. Its bibliography did not reference Ms Ogunkoya or her three chapters. Ms Ogunkoya’s complaint related to two chapters of Mr Harding’s book which dealt with the Smith family. Recorder Michaels observed that ten examples of alleged ‘plagiarism’ identified by Ms Ogunkoya did not include any allegation of direct copying of language, but related to the choice of incidents or facts mentioned in both books and, in some cases, to use of the same source materials. She found no evidence that Mr Harding had made use in his work of material derived directly or indirectly from Ms Ogunkoya’s work and, in respect of most of the ten examples, he had identified and produced copies of credible, independent and 60 CIPA JOURNAL

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publicly accessible sources of his information. Although the Recorder considered whether Mr Harding would have looked at Ms Ogunkoya’s three chapters with at least a reasonable degree of interest, she thought this unlikely given their limited value as advanced drafts rather than a finished article. Even if she was wrong and Mr Harding had made some use of Ms Ogunkoya’s work in producing his work, Recorder Michaels held that it did not amount to copying a substantial part of Ms Ogunkoya’s work or her expression of her intellectual creation. Recorder Michaels also made no finding of breach of confidence on the basis that, on the facts, no express or equitable duty of confidence was imposed upon Mrs Harding when Ms Ogunkoya’s three chapters were disclosed to her, or on Ms Harding when looking at his mother’s copy of the three chapters.

Registered designs Antrax It Srl v EUIPO; Vasco Group NV GC; T-828/14 and T-829/14; 16 February 2017 The GC upheld the BoA’s decision that the designs applied for lacked specific individual character within the meaning of article 6 of the Community Designs Regulation (6/2002). Antrax owned earlier Community Design registrations for ‘radiators for heating’ (the “Antrax Designs”)

Vasco Group applied to invalidate the Antrax Designs on the basis that they did not satisfy the requirements of articles 4 to 9, relying on following earlier registered designs. www.cipa.org.uk

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DESIGNS

The Cancellation Division declared the Antrax Designs invalid on the basis that they lacked of novelty pursuant to article 5 but this decision was annulled by the BoA for failure to provide adequate reasons. The BoA subsequently declared the Antrax Designs invalid for lack of individual character pursuant to article 6. The GC held that the BoA had failed to take into account saturation of the state of the art in the market, which may have made an informed user more sensitive to the differences in the designs at issue. The case was referred back to the BoA and the parties submitted observations and evidence on the saturation of the state of the art in relation to radiators. However, the BoA once again dismissed the action and held the Antrax Designs were invalid for lack of individual character, as the overall impression produced by them on an informed user were no different from that produced by the earlier designs owned by Vasco Group. The GC held that, in its assessment of the evidence submitted, the BoA had carried out the assessment of the state of the art as at the wrong date, considering the state of the art at the time of the earlier decisions and not at the date of registration of the Antrax Designs. This error was nevertheless insufficient to annul the BoA’s decision, as they had correctly assessed evidence that did relate to the year of registration and had ultimately reached their decision having considered the issue of saturation by assessing the number, quality and relevance of the evidence submitted. The GC therefore endorsed the BoA’s decision and dismissed the appeal.

The Life Sciences Committee is pleased to announce

The 2017 CIPA Life Sciences Conference Thursday 16th – Friday 17th November 2017 Whittlebury Hall Hotel, Whittlebury, Towcester, Northamptonshire, NN12 8QH Whittleb Up to 9 hours CPD The CIPA Life Sciences Conference is the UK’s premier annual educational and networking event for patent and IP professionals active in the pharma, medical technology and biotechnology sectors. Over nearly two decades the Conference has provided unrivalled expert insight into the latest developments in patents, regulatory and IP law in the global life science industry. Most importantly, the event provides a friendly environment for in-house and private practice professionals to network and share experiences. Pre-dinner speech by Mr Justice Birss Presentation topics include:      

UK, EPO, Russia and US law updates Nagoya – update and in practice UPC update and a panel session on life post-Brexit Plausibility in the UK and at the EPO Patenting antibodies and regulatory issues for biosimilars Making money out of technology

Prices held from last year Full conference: £550+VAT (members), £765+VAT (non-members) Day one: £250+VAT (members), £375+VAT (non-members) Day two: £130+VAT (members), £195+VAT (non-members)

To book, please visit the Institute events page of the CIPA website or contact cipa@sequenceofevents.co.uk for more information

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2015

The not-so-secret diary of a CIPA President

By Andrea Brewster

Today is the day of the Grand CIPA Outing. A group of officers, staff and committee folk are taking a trip to the IP Office in Newport, which is, strictly, an overseas O CT visit. When we get to the IPO we play party games and the IPO give us a picnic lunch, and at the end everyone gets a party bag to take home. We also have some really constructive discussions on the IP issues of the day, and on opportunities for collaboration, and we see some demonstrations of the IPO’s new online tools. But the party games are more fun. The games are run by a Facilitator. A Facilitator is a person who is qualified to turn business meetings into Interactive Discussion Forums through the medium of entertainment. The main party game today is called “What Makes A Good IP System?” We are put into groups to write our ideas onto laminated pictures of IP ships trying to sail across IP seas, and we have to identify the metaphorical anchors that are holding them back, apart from clients being stupid and pretty much everything else being outrageous. Only a Facilitator could get away with this, I am thinking.

6 NOV

9am: Once again it is Workshop Day for our course

on EPO proceedings. The delegates look bleary-eyed, as though they have just arrived in Munich on the first flight of the day. I am gratified to see that they are throwing themselves into their roles like this. Even to the point of not having read all the papers yet. We launch straight in with a hard-hitting talk about auxiliary requests. This bit is always good fun because our tutors include barristers (who think auxiliary requests are a sign of weakness), patent attorneys (who daren’t leave the house without them) and a former Board of Appeal Chairman (who will not let you file them anyway). And Mr Roberts, who doesn’t take anything seriously. Noon: I have sneaked out sneakily from the workshops – from which, to be fair, no one will miss me – to meet with some visitors from the Chinese IP Office. I have left Mr Roberts with instructions to keep the delegates entertained. He seems more than happy to rise to this challenge and I have no doubt that by the time I return, no one will be taking anything seriously. We give the visitors a short presentation about how fantastic CIPA is. CIPA has been going since 1882, we say. Although obviously, we say, not all of us remember that far back. We say: 62 CIPA JOURNAL

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CIPA is full of top-notch, world-class patent attorneys. Better than the Germans. We are much better at arguing than the Germans. Although history might suggest it’s a pretty close call. The Chinese, however, are not really interested in CIPA; they want to know about IPReg and the PEB and who gives UK patent attorneys their registration certificates. In reply to their many probing questions, I make up many authoritative-sounding answers. I do not tell them about the presentation evening where we hand out blank sheets of paper, rolled up with pretty pink ribbons, to the people who’ve passed their qualifying exams. I have a hazy idea that the real registration certificates are prepared by the IPReg Pixies, but I am worried this idea might lose something in translation so I keep it to myself. 5pm: I have spent the afternoon wandering between mock opposition hearings to see how well the delegates were doing and to make sure the tutors were still awake. In each of the hearings I helped myself to a biscuit or two, so I am now strung up like a toddler on Haribo®. In the final plenary session, the tutors and I share the benefit of our Great Wisdom and Experience around presenting at oral proceedings. I actually have very little wisdom and experience in this field myself, but as we have already established, I am good at bluffing. The delegates probably think I have taken part in 500 hearings and won them all. There is little to gain, I feel, by correcting them. My words of wisdom are about putting your key points clearly and concisely. There is nothing worse than an advocate who makes a good argument in the first thirty seconds and then spends another five minutes repeating it, embellishing it and eventually grinding it into an unrecognisable mush. Good arguments are not like homeopathic remedies: they do not benefit from dilution. Their vital energy is not released by adding gesticulations and sock fluff. To emphasise my own clear and concise key point, I tell the delegates about my lunch-time meeting with the Chinese. About the need to express yourself in bite-size chunks and then wait, for agonising minutes, listening to the echo of your own inanities while the interpreter struggles to translate the sock fluff. You have to make your point clearly and then move on to the next, I say. You cannot waffle. Interpreters don’t do waffle. Mr Roberts gives me a look that says: now it is time for you to shut up too. I give him a look back that says: you are only here for the entertainment. I’ll bluff as much as I like, thank you. www.cipa.org.uk

05/05/2017 08:00:17

We are at the annual Cardiff CPD seminar. The scariest talk of the afternoon is about cybercrime and cyber security. Cybercrime is things like ransomeware NOV and denial of service and phishing and identity theft, and of course malware and spyware and generallyincrediblyevilware. Cyber security is what you do to stop cybercrime happening. There is actually no such thing as cyber security. Cybercrime is easy. Apparently you can hire a bot for $50 a day to take out someone else’s website. Apparently you can go to a part of the internet called The Dark Market – which I’ve no doubt is run by Amazon® because what part of the internet retail space isn’t these days – and buy all manner of software with which to commit your cybercrimes. Apparently this software is cheap, and for obvious reasons – because its customers do not mess about with returns policies, they just send in a hit-man – the backup support and customer service levels are better than you’d get with the average Microsoft® product. Not that that is setting the bar particularly high. The Dark Market sounds like an ideal place, in fact, to do your Christmas shopping.

We are planning next year’s webinar schedule. And to do this, we are trialling a brand new, state-of-the-art project management technique. It involves seven NOV blank sheets of paper labelled January to July, spread out in the middle of the table. On the sheets of paper, using a special tool called a Pen, we write the names of the webinars we are going to run in the relevant months, for instance “Something about trade marks” and “Commercial stuff ”. It seems to work, this new technique. Before long, we have webinars planned for at least the first 26 weeks of 2016. Mr Davies is pleased about this, because without webinars not only do patent attorneys become ignorant but also CIPA becomes poor.

19 NOV

3pm: For the first time ever, I am at the annual Life

Sciences Conference. This is almost as good as the main CIPA Congress, but better attended and with a lower entrance fee, the two facts being potentially related. People come back to this conference year after year, to meet with old friends and exchange news about mitochondrial DNA, telomeres and pluripotency. I try to look as though I understand the presentations. I don’t, of course. I have no idea what nucleotides and primers are, or why you can have a certain percentage of homology and still get away with it. Personally I think you should only be able to patent proper molecules with hexagons in. After lunch there is a speaking slot which is affectionately known, to those of us who often get asked to speak in it, as the Graveyard Slot. My job in today’s Graveyard Slot is to provide Volume 46, number 5

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a ten-minute update about CIPA. I am imagining how keen the delegates are likely to be, straight after their lunch, to hear an update about a Chartered Institute from someone who doesn’t know a nuclease from a protease. So I feel I have nothing to lose. And I lose it manfully by doing a pirate-themed talk which is only a little way short of a pantomime sketch. I wave a plastic cutlass, I put on a thick Wess Curntry accent, and I talk about the narrrsty poyrrrates that can be seen from the crow’s nest of The Good Ship CIPA. I tell the audience about The Rocks of Referendum and Das Gute Schiff Rumtopf, and an IPReg patrol boat called The Happy Heap that is looking for incompetent patent attorneys who’ve drunk too much overproof rum. To liven things up, I rummage through my bag for props. I draw out: my Presidential eye patch (which allows me, I say, to turn a blind eye to the overproof rum); my Presidential beard (which allows me, I say, to turn up to Council meetings incognito and actually get my views heard); my pirate treasure; my pirate bottle of rum; and quite a lot of straw. Oh, and a copy of the CIPA Strategic Plan. These props come from diverse sources: a dressingup box, Amazon®, Mr Davies’s local pet shop, my wardrobe and the CIPA stationery cupboard. No prizes for guessing which is which. During my talk, people laugh a lot. I’m not sure you should laugh at your Institute President, but on the plus side, at least they are still awake at the end of the Graveyard Slot. 6pm: In my hotel room, I pour a gin and tonic, put my feet up and reach for the hotel spa brochure for a laugh. I read about “herbal steam temples” and “medicinal chakra muds” and “hot lava shells”. This is worse than nucleases and proteases. Hot lava shells, apparently, release your blocked energy, thus “providing a sense of balance to the entire body and mind”. They also allow you to release quite a bit of financial collateral, providing slightly less of a sense of balance to the credit card account. For an even higher price, higher still at the weekend because hot lava shells have Special Powers at weekends, you can combine your energy-unblocking experience with a glacial ice therapy, which tackles congestion areas, stimulates the lymphatic system and eliminates toxins. And also makes you feel cold. (You can put your glacial ice therapy straight in my glass of gin therapy, thank you.) OR you can simply go for a swim. Presumably the pool is also full of luxurious, toxin-releasing, rebalansifying marine energy sources. And for these prices, there would have to be dolphins in there too. It must be possible, I think, to unblock your blocked energy without having to sell your kids to raise the capital. I finish my gin and head off for dinner with the life scientists.

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

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PERSONAL

Going . . . e ot Rem

think it’s safe to say that Lisbon may have lulled me into a false sense of security (not to mention a food coma) – after a month living there, I thought I’d got a reasonably good feel for the city, and maybe I was getting the hang of this working/exploring thing. But Mexico City – or CDMX to its friends – is a whole different kettle of tacos. It’s grande in every sense of the word. Way up at 2,250 metres above sea level, even just the central part of the city, home to over 8 million people, is already the size of Greater London and the urban area sprawls far beyond that, giving a total population of over 20 million. You couldn’t hope to get to know the whole place in four short weeks, and I’ll be the first to admit that I’ve only succeeded in scratching the surface of the city this time round. But what a surface. Tree-lined boulevards, verdant parks, cafes spilling out onto the streets and dog-walkers everywhere. I could be describing Paris. Except here the trees are often purple (the Jacarandas are in bloom), the parks look more like well-kept jungles, the cafes have stiff competition from the street vendors on every corner selling freshly made tacos (ten a penny), and the dog-towalker ratio is at least 6-to-1. It’s true of course that large swathes of the city are likely nothing like this – we are lucky to be based in the up-and-coming neighbourhoods of La Condesa and Roma Norte – but the same can be said of pretty much any major city in the world. They all have their good and not-so-good districts. One thing you don’t immediately notice about the surface though, is that it is sinking beneath your feet. According to a study carried out in 2014/5, parts of the city are sinking at a rate of over 20cm a year. This may not sound like a lot, until you see the alarming angles some of the older buildings in the city centre are leaning at as a result. Why? Well, I don’t want to point any fingers, but it can’t be said that the first settlers here – the Aztecs – were unimaginative.

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Mexico City By Heather Lane (Fellow)

According to legend, what became Mexico City was founded in 1325 by the Aztecs after a decades-long pilgrimage, in search of a sign from their Gods as to where the tribe should settle. Specifically: an eagle on a cactus, eating a snake (which graphic now adorns the Mexican flag). And that is what they apparently found here. Admirably, the fact that the cactus was on a small island in a massive mountain lagoon did not put them off, and so what is now Mexico City sits on what was once a huge lake complex, drained and filled-in with land over the centuries. So a little subsidence here and there is probably understandable. I’m pleased to say, though, that structural problems aren’t the only things modern Mexico has inherited from its ancestors, as it seems to me that their imagination, resourcefulness and entrepreneurial spirit live on in a big way. From the 101 different ways you can eat tortillas (I strongly recommend virtually all of them), to the woman who drives past our workspace every day with a loudspeaker inviting all

A sinking feeling? Blame it on the Aztecs

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PERSONAL

and sundry to buy a mattress from the back of her truck (after a month of this I am beginning to be quite tempted), creativity thrives here. One of the city’s most famous creatives has to be the artist Frida Kahlo (1907-1954) whose house in the Coyoacán district, La Casa Azul, now serves as a museum dedicated to her life and art. I’ll be the first to admit I knew far too little about Frida’s story before visiting (I hadn’t even seen the film) – and it is far too complex to attempt to repeat here – but one aspect that came as a particular surprise to me was her strong political belief in Communism, which lead to Leon Trotsky staying at La Casa Azul while in exile from Russia. Just a short walk away is the compound to which he then moved and stayed in hiding – although ultimately unsuccessfully, as it is also where he was assassinated. Suffice to say, the hideout of an exiled Russian Communist leader is probably the last place I expected to find myself while in Mexico City. But getting back to our imaginative friends the Aztecs, one place that you can’t miss if you are visiting CDMX is the ancient city of Teotihuacan, home to some of the largest Mesoamerican pyramids ever built. Except, contrary to popular belief, it turns out that this is one thing the Aztecs can’t take any credit for. The city was built some 1000 years or more before the Aztec tribe happened upon its ruins during their pilgrimage, believing it to have been the home of their

GOING REMOTE • INFORMALS

Gods. Nonetheless, the Aztecs remain strongly associated with Teotihuacan, with the two major pyramids taking their names from the tribe’s belief that this was the site where the sun and the moon were created by the Gods. Whether or not this is what actually happened, after climbing the 250 or so steps to the top of the majestic Pyramid of the Sun – the third largest pyramid in the world – you can see why they would have believed it. So it’s been a fascinating month here in CDMX – I’m just very aware that I only saw the tip of the iceberg. All I need now is for someone to imagine up some extra time to explore the rest of the country. In the meantime it’s onwards and upwards to one of the few capital cities at an even higher altitude than this one… Next month: Bogota, Colombia (via Cuba and Panama City!) Heather Lane is a Senior Associate at Gill Jennings & Every LLP, working remotely while travelling round the world with Remote Year. To see how Heather is coping without a time machine, and for more photos, you can follow her blog at https://expatandtea.wordpress. com/ and on Instagram as @expat.and.tea https://www.gje.com/people/heather-lane/ www.remoteyear.com

Opportunity to visit the IPO with the Informals The Informals Committee is happy to announce that the highly popular annual Informals trip to the IPO in Newport has been arranged. This year the visit will take place on the: • • •

Thursday 1 June 2017 Friday 9 June 2017 Thursday 15 June 2017

This visit is a great opportunity for trainee patent attorneys of any level of experience to see what happens in the IPO. Previously the programme included: • • • •

Various talks organised by the IPO on topics such as accelerated patent prosecution, litigation and dispute resolution, and seminars on either patentability of biotech inventions or excluded matter. A claim drafting workshop. A meeting with an examiner. A buffet lunch.

Due to the high demand of the visit, places are limited and you will therefore have to sign up. Places are allocated on a first come and first-served basis. Please sign up by emailing your details (name; firm; technical background; level of experience and dietary requirements e.g. allergies) to: cipainformalsvisits@gmail.com. We look forward to seeing you all. Sanam Habib, Informals Patent Office Liaison

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CIPA webinar series “UP and UPC” is here UPC may be suffering another delay, but CIPA training is running to time. By Pippa Allen

ebinar 1 aired on 27 April to record participation (and that does not count those that could not sign in, a problem not before encountered as CIPA have not had the chance to test the system with so many participants, for which please accept our profoundest apologies). When you read this I hope that this problem (and the beeps) was rectified by the time webinar 2 went out on 10 May. And participants to webinar 1 will of course have received slides and a link to the recording. We have so far received rave reviews from those who did get onto the webinar (see panel). Questions are also coming in and we will address these in a special monthly column, and pooling hot topics for dedicated attention. Remember that if you missed the webinar you can still register to receive the recording via the CIPA Membership Team. The UPC timetable. Ah yes. This has received yet another blow from UK politics, see “Brexit and the UPC/UP” by Vicki Salmon on page 4. Back to talking seasons not months, we expect a slow down as UK ratification is sidelined to make way for electioneering. With summer recess following soon after, perhaps an autumn UK ratification, a winter Provisional Application Phase (PAP) of between four and six months – and thus quite a long wait until the Case Management System (CMS) for pre-registering opt out notification is complete – a New Year sunrise and we are almost certainly now looking at Entry into Force in (early?) spring 2018. This is all speculation of course. But there is (so) much to learn and to prepare, so the CIPA timetable will run to dates originally planned, and the benefit gained will be all the better for the delay, and time to consolidate learning and discuss UPC practicalities – please resist the temptation to spill your valuable learning time on the morals of UPC and such like – over a beverage with colleagues.

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Part I of the series (CORE) runs until the summer break and aims to give you the knowledge and skills to deal with practice / division management challenges, address portfolio considerations and interface informatively and safely with clients and users, navigating the hazards that lie in the path to Entry into Force. We think that once you have experienced Part I, many will be hooked and itching for the summer to pass, and bring on Part II.

“UP and UPC” webinar feedback • “Possibly the most popular CIPA webinar ever.” • “After the ‘talk the talk / walk the walk’ and ‘disc world’ slides, which made me realise a few things I had not realised before, I was just keen to absorb as much as possible.” • “Triple the time and add coffee breaks?” • “A lot of work, skillfully distilled.” • “Thanks for the first webinar – a lot of ground covered.” • “Enjoyable and very informative.” • “I am feeling a mix of panic and excitement about UP/UPC.” • “I thought the webinar was great – there is so much to cover, but I liked your very practical approach to what needs to be put in place and by when.” • “It certainly got the partners here engaged with the UP and UPC.” • “Great reviews of your webinar today – looking forward to listening to the recording.” • “Hey ho, ‘UPC and beyond’, that is what we have to focus on now.” • ”Keep up the good work.”

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EDUCATION

Part II kicks off again in September, featuring topics required to participate in an action before UPC or to advise or take high-level business decisions based on pre-action considerations. Classed as INTERMEDIATE to ADVANCED, it is also CORE material for patent attorneys engaged in EPO opposition practice, whose skill set places them well to take on UPC revocation work. Part II culminates with a Christmas special Mock UPC Revocation – which may now be a New Year Special if there is need to revise the timing. More details to follow. Admin Part webinars are yet to be scheduled. We are talking to the UPC IT Team to catch a window for “Walking through the opt-out” when the CMS is finalised and the beta test site is still available for experimentation and idle gaming purposes (the eagerly awaited game “Withdraw your competitors opt out” is X certificate rated/censored and may not appear on the beta version, and we hope will also never appear on the release version). Likewise “Walking through the request for unitary effect” will be scheduled with the facility to work from model forms. As mentioned above, the value of webinars really comes to the fore here. If you are unable to register for the live airing of an event, do not overlook the chance to register to receive the recording and slides and any handouts – every bit as good as the original, if you do not mind having the beans spilt on punchlines, by colleagues who watched live.

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UP & UPC WEBINARS

CIPA’s objectives are to: •

•

provide a basis knowledge of UP and UPC, in the direct context of patent practice, upon which members can fill in gaps and develop their knowledge; and provide the understanding needed to practice, and to advise clients, rather than simply quote law.

We have had a great response with members getting in touch to lend their effort to the task in hand in planning and delivering this series. There are a few tasty tasks still to be undertaken, not least rewriting Improver as a Revocation Action for the Mock Trial. Please get in touch if you want to report on webinars in the Journal and elsewhere. We also encourage members to start up study groups and discussion groups to unfold the intricacies of issues flagged up in the series, and please feedback so we can put together topics for future events. 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 cpd@cipa.org.uk if interested. Pippa Allen is a consultant with Appleyard Lees in Leeds and a member of CIPA’s Litigation Committee.

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EDUCATION

UP & UPC WEBINARS

CIPA UP / UPC Education Series April-November 2017 PART I • C O R E • Getting Practical with European Patents and the UPC April

May

Thursday 27 April 1. What do I need to do, when and how? Pippa Allen (Appleyard Lees) • Duty of care, negligence, housekeeping including records systems and cost of opt out • Actions set against time line to entry into force of UPC and UP Past event: recording and slides available via CIPA Membership Team

Wednesday 10 May 2. Managing knowns and unknowns of the “opt out” Pippa Allen (Appleyard Lees) • Analysis by patent family • Update on CMS beta test site Past event: recording and slides available via CIPA Membership Team

Tuesday 30 May 3. What will the UPC landscape look like? Vicki Salmon (IPAsset) • The big 3 – national courts, EPC, UPC: differences, what you DO get, what you DO NOT get; parallel systems in the transition, economics v. speed, double patenting

June

July

Tuesday 6 June 4. How will the Unitary Patent affect your patent strategy? Dave Croston (Withers & Rogers) • Mixing and matching national, classical and unitary patents; which combinations are possible, which are not?

Tuesday 4 July 6. Validity and infringement opinions in the UPC Leythem Wall (Finnegan Europe) • Jurisdiction (in or out & co-extension) and template clauses, applicable law (EPC), exemptions from infringement, parties • IPO opinions service

Wednesday 21 June 5. Getting legal with the Unitary Patent and how to get it Chris Mercer (CIPA/epi) • Regulations, rules, registers and more • Designated states, texts, translations • Delaying grant and strategy options

Tuesday 18 July 7. Getting legal with licences, agreements, ownership: due diligence for UPC Martyn Fish, Michelle Davies (HGF) • Checks, obligations/rights, loop holes, fit for UPC? actions available by owner

Special appearance! The Scotland Meeting 2017 Thursday 18 May Workshop : Opt out strategy considerations, applied to fictional EP families Speaker/facilitator: Pippa Allen (Appleyard Lees)

ADMIN PART • A D M I N / C O R E • Practically in the UPC Date to be confirmed

Date TBC (CMS interface to be finalised but pre-release) 1. A walk through the “opt out” • Screen shots or mock link to “beta test site” opt out interface

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September

Thursday 28 September CIPA Administrators Conference In construction!

November

Tuesday 14 November (TBC; EPO forms/interface to be available) 2. A walk through the Request for Unitary Effect • Model forms or mock link to EPO interface

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EDUCATION

UP & UPC WEBINARS

PART II • C O RE * & ** / I N T E R M E D I A T E / A D V A N C E D • European Patents at work in the UPC * CORE for those engaged in EPO opposition work with anticipated progression into revocation actions ** CORE for those responsible for litigation and commercial strategy

September

October

November

Tuesday 12 September 1. Pre-Action considerations* Caitlin Heard/Gareth Morgan (Olswang) • Jurisdictional forum shopping • Mediation and arbitration • Protective letters • Pre-action steps • Commencing an action and service • Defendant considerations – practicalities such as translating the claim timing of defence; finding experts

Tuesday 3 October 2. Court Procedure I: Overview* Richard Davis (Hogarth Chambers) • Court structure, judges, timetable, bifurcation / consolidation / transfer

Tuesday 7 November 5. Revocation action* Speaker: Leythem Wall (Finnegan Europe) • Article 65(2) UPC-A, similarities with EPO law and opposition proceedings, compare and contrast EPO opposition and UPC revocation, what a revocation action at the UPC will entail, timeline, economics, parallel actions at EPO and UPC

Tuesday 10 October 3. Court Procedure II: Case Management* Matthew Critten (Abel & Imray) • Interim conference, case management, disclosure, inspection, experiments, stay of proceedings

Tuesday 24 October 4. Provisional and protective measures** Panel: incl. Gareth Morgan (Olswang), William Bird (IPLodge) Chair: Mr Justice Henry Carr • Interim injunctions, security for costs, freezing orders, pre-action discovery and saisie

Tuesday 21 November 6. Actions for Infringement and Declaration of non infringement** Priya Nagpal (Olswang) • Sources of law, final injunctions, damages assessment and request to lay open books, other remedies, recoverable costs, appeals, enforcement of decisions

CHRISTMAS SPECIAL • C O R E / I N T E R M E D I A T E / A D V A N C E D Date to be confirmed MOCK REVOCATION ACTION BEFORE UPC CENTRAL DIVISION (London) Representatives including: Koen Bijvank (Brinkhof Advocaten), Leythem Wall (Finnegan Europe); Panel of Judges: tbc • Featuring an adaptation of original Improver case, as run by EPLIT / CIPA/ IPO and further adapted as a straight revocation action with opt out issues.

RESERVE TOPICS TO BE SCHEDULED CORE – Final details before entry into force: Brexit & transitional provisions for UK designations/validations of Unitary and not “opted out” patents INTERMEDIATE/ADVANCED – The Court seized and the law applicable (articles 5 and 7 of Reg. 1257/2012), lock in from Infringement and DNI actions

All dates should be checked (CIPA events page or dedicated event announcement) before registering. Volume 46, number 5

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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 Tusday, 9 May 2017 Seminar

Canadian IP and Patent Practice

Time: 14.30–17.30pm Location: CIPA, The Chartered Institute of Patent Attorneys, 95 Chancery Lane, London, WC2A 1DT This seminar will focus on Canadian Patent Practice, including an overview of where the Canadian patent system differs from EP / UK practice, upcoming legislative changes and recent patent cases of interest. CPD: 2.5; Prices: £126 (members £84)

Wednesday, 10 May 2017 Webinar

The CIPA UP/UPC Series: getting practical EP2 Time: 12.30–13.30pm

Getting Practical: managing the knowns and unknowns of the "opt out". Welcome to Episode 2 of Getting Practical. Please note – as this is a CORE webinar, access to this will be FREE for members. This second ultra practical webinar uses the timeline of webinar EP1 to get to grips with the "opt out" and “request for unitary effect”. Speaker: Pippa Allen (CIPA Litigation Committee, consultant Appleyard Lees) CPD: 1; Prices: £72 (members £48)

Wednesday, 10 May 2017 Seminar

Mock oral proceedings

Time: 13.00–16.00pm Location: CIPA, The Chartered Institute of Patent Attorneys, 95 Chancery Lane, London, WC2A 1DT Via a live video-link between CIPA Hall 70 CIPA JOURNAL

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and The Hague, watch EPO examiners and EPA Chris Mercer enact a mock examining division hearing.

Friday, 26 May 2017 Webinar

UK & EU Competition Law Time: 12.30–13.30pm

CPD: 3; Prices: £96 (members £72)

Tuesday, 16 May 2017 Webinar

Outside your comfort zone: patent searching Time: 12.30–13.30pm

Highlighting some key free sources, such as Espacenet (EPO), PatentScope (WIPO) and Google Patents, this webinar will help you better understand the structured nature of the information within a patent document and how it relates to the patent search process, as well as provide awareness and tips to enable you to carry out effective and efficient patent searches and gain an insight into patents, held by other parties and their legal status, in support of your patentability, clearance and validity assessments. 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.

An introduction to the interrelationship of patent law and competition law and the legal framework for the latter. 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)

Wednesday, 7 June 2017 AGM

The Incorporated Benevolent Association of CIPA 72nd Annual General Meeting Time: 14.00pm Location: CIPA, 95 Chancery Lane, London, WC2A 1DT

For more details see page 80.

Monday, 19 June 2017 Seminar

EPO Oral Proceedings 2017

Time: 08.00–17.00pm Location: Hallam Conference Centre, 44 Hallam Street, London, W1W 6JJ

CPD: 3; Prices: £234 (members £156) Our course is in two parts. The first is a remote learning module, in the form of prerecorded webinars and an accompanying www.cipa.org.uk

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CPD & EDUCATION

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”. Contact cpd@cipa.org.uk. Price: £468

Tuesday, 20 June 2017 Webinar

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

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)

INSTITUTE EVENTS

Friday, 1 September 2017

Litigation Skills Course

Location: venue to be confirmed

Introductory Patent Administrators’ Course

Registration for this course opens on Monday 31 July and closes on Monday 21 August. The online course opens on Friday, 1 September and the faceto-face course takes place on 4 and 5 November. The examinations will take place in London as follows: the written examination on 16 November and the oral examinations w/c 13 November.

Registration for this course opens on Monday 15 May and closes on Monday 3 July. The mock examination will take place between 4 December 2017 and 12 January 2018 with final examinations taking place on Thursday 25 January 2018 at 2.00pm. Results are issued by email on Monday 5 March 2018.

To register go to www.cipa.org.uk/patent-examination-board

Administrative Council's ‘Regulation on discipline'; the epi ‘Code of conduct'; and the SRA's ‘Solicitors' Code of Conduct'. A joint CIPA/CITMA webinar. CPD: 1; Prices: £72 (members £48)

Thursday, 22 June 2017 Seminar

East Midlands Meeting 2017 Time: 12.30–18.30pm Location: Marriott Breadsall Priory, Marriott Breadsall Priory, Moor Road, Morley, DE7 6DL

Do not miss out on a opportunity to pick up CPD points as well the chance to network with other IP professionals in the region. CPD: 3.5; Prices: £234 (members £156)

Wednesday, 5 July 2017 Webinar

Thursday, 13 July 2017 Webinar

Educating the Client Time: 12.30–13.30pm

This webinar will discuss how providing IP awareness training sessions to clients seems to be better than expecting clients to learn through routine casework. In this webinar, it is suggested that an audience-focused approach (e.g. “legal-light” in the case of lay clients) allows such sessions to pay off not only for the client but also for the practitioner. CPD: 1; Prices: £72 (members £48)

Professional Ethics Time: 12.30–13.30pm

A look at ethical best practice for UK patent and trade mark attorneys, who are subject the IPReg ‘Rules of conduct'. Many UK patent and trade mark attorneys are subject also to one or more of the following: the EPO Volume 46, number 5

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W/C 4 September 2017

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 is putting together a programme that will provide great CPD at an affordable price and high-quality speakers. We are pleased to confirm Benoît Battistelli, President of the EPO, and Sir Mike Pitt, Chairman of the Legal Services Board, as speakers at this event. CPD: 8; Prices: starting at £200+VAT. Please e-mail cpd@cipa.org.uk for details of rates.

Thursday, 28 September 2017 Conference

CIPA Administrators Conference Building for the future… Location: Glaziers Hall, 9 Montague Close, London, SE1 9DD

Book now to get your place at the Early Bird Rate – Limited time only! This conference will cover the following topics: PACE, Updates from the IPO, Copyright, Letter writing and effective communication to overseas attorneys, Trade Secrets. Prices: starting at £200+VAT. Please e-mail cpd@cipa.org.uk for details MAY 2017

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PERSONAL

OBITUARIES

John Stuart Macara 1920-2017

ohn Macara, founding partner practice, he came across an advert of Mathisen & Macara, sadly by Anders Mathisen and applied died on 5 February 2017, aged straight away. Mathisen had come to 96. this country from Europe and after Born in 1920, he was blessed with qualification set up a patent practice an excellent brain which gained him a in London. In the late 1930s, he was first class honours degree in Electrical consulted by a client who had invented Engineering from Imperial College, a system for suppressing explosions. London. Mathisen recognised the potential From there he was called up into of this invention for both civil and the RAF, commissioned and landed in military applications and he moved France on 19 June 1944 at Viervillefrom his patents practice, as it shrank sur-Mer, D-Day plus 12; this made due to the war, into the development him a Normandy veteran, something and subsequent production of of which he was very proud. He this invention, which found great travelled around France, Belgium and application in aircraft during the war, Holland as technical signals officer aided by official funding. When peace with responsibility came, the patent work in for providing all this field expanded and John technical radar Mathisen had to find was greatly and signals spares. someone to carry out respected within the work. Fortunately, Towards the end his firm for his of the war he Mathisen and John volunteered to go Macara came together hard work and to India. However, wise advice, and and formed a partnership Japan surrendered which served both of his charisma the day before he their needs, though from gained him many the beginning Mathisen was due to leave; John claims they’d very much took a back friends. heard he was seat. coming! But he Here John met Sir fancied an adventure so he went to India Vernon Brown who is credited as being anyway. He had a great time travelling largely responsible for the increased the country and this was where he was safety of air transport as a result of his made Squadron Leader. As he was efforts in the development of air crash leaving, his bearer asked him for his investigation prior to and during World bicycle. John left it gladly and the bearer War II. They became firm friends. was a proud and happy man! Another contact from that period His war work was recognised by his controlled the major UK manufacturer being Mentioned in Dispatches. of razors and blades and John defended After leaving the RAF at the end of the company against its international the war, he started his career in patents competitors over many years. by entering the Patent Department of One of John’s former RAF colleagues a large company where he qualified went on to co-found a prominent UK as a Patent Agent. In March 1953 electronics company and John and his while looking for a position in private colleagues were very proud to represent

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the firm, and he was at the forefront of early mobile telephone technology when the company expanded into that area. John had many connections with overseas attorneys including many in the US, Germany and Japan whom he visited regularly and his wise advice and attention to detail were much appreciated by them. A less usual client was the then USSR agency Sojuzpatent and the visits from their representatives were always memorable. Work continued in the field of fire suppression and the part played by Mathisen and the firm was recognised by the naming of a road Mathisen Way – possibly one of the few roads named after a patent attorney. John ensured that Mathisen & Macara was a founder member of Computer Patent Annuities and his wise advice was much valued in its early days. John was greatly respected within his firm for his hard work and wise advice, and his charisma gained him many friends within the profession and outside. He set very high professional standards within the firm and possessed great business acumen which was very much appreciated by his clients. He was regarded with affection by his staff who respected his high standards but recognised his fairness and concern for

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PERSONAL

their well-being. The firm continues to prosper and still embodies the principles which John established. He was very reluctant to talk about his charitable work but over many years he was actively engaged in the Samaritans and marriage guidance and in other aspects of counselling including with Combat Stress, which supports veterans with mental health problems.

OBITUARIES

After John parted from his first wife, the mother of his two daughters, he married Nan who, like John, was involved in charitable work, in particular counselling. As increasing age took its toll, John became more dependent on Nan, so that when she died suddenly early in 2016, John was bereft. After a fall at his home in Beaconsfield, John moved to a care home in Berkhamsted

near one of his daughters where he died. He will be sadly missed by his daughters, grandchildren and his many friends and colleagues. Thanks are due to one of his daughters, Moira, for much of the information in this obituary. Stephen Knott, David Foster, Derek Taylor

David Leslie McNeight 1938-2017

mill. From an early age, David showed t is with much sadness that we write of an interest in music, swimming and the passing of David Leslie McNeight: mathematics. He was an excellent of Counsel, TLIP and co-founder of student and a good pianist. Stockport-based firm McNeight & It was inevitable therefore that the Lawrence. young David McNeight would enter David was a businessman focused university and so he did in 1956, at the on innovation and sought to use his University of Birmingham to study expertise in IP as a patent attorney to mathematics. It was at university that make a difference. During his career, he realised he had a talent for science, David formed more than one patent business and law, something he was practice and also played a large part to spend the next 50 in the success years enjoying. He also David will be of numerous IP joined the University Air rich companies, sorely missed, Squadron and learned to arranging their but his legacy fly in a Chipmunk. funding and growth. He married Enfys and will live on Many of these had three children: David through the companies insisted Jnr, Lesley and Linne. energy, drive and on making David After training as a a director and entrepreneurial patent attorney, David shareholder of the spirit that he worked for a while at company in return imparted Boult Wade Tennant for his keen strategic in London and then at to all. advice. Ernest Scragg and Sons, David was born in Macclesfield, one of the in Warrington and leading manufacturers grew up the son of the first David Leslie, in the UK of processing machinery for a former Merchant Navy boilerman textiles. After Ernest Scragg and Sons he who became a pay clerk for a paper established himself as a sole trader, one

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of the first, and worked out of a small home office with a secretary. He was always incredibly busy. David then took the decision to set up a patent practice with John Lawrence, and so McNeight and Lawrence was formed in 1980 in Stockport, with the main client being ICI and later Zeneca at Alderley Park. McNeight and Lawrence was eventually sold in 2001 to Lloyd Wise, which itself became part of the Marks & Clerk group. Retirement was David’s goal, but he was soon approached by Hill Dickinson, Manchester, to set up a patent practice to complement their intellectual property group, and so from 2002 he became an IP consultant at the Manchester office. Working at Hill Dickinson gave David the opportunity to blend his unique talents in

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PERSONAL

patent prosecution within a commercial setting, getting involved in contentious IP, licensing, fund raising and contracts. His portfolio grew quickly and so it was in 2009 that it became time for David to retire again. Of course, retirement was never an option. His clients simply would not allow it. Carrying business cards listing him as a director in over half a dozen companies, he held the roles of CEO, Company Director, Company Secretary and Chief Patent Counsel, to name but a few. I was introduced to David in 2012 when patent attorney Nick White (who had known David from an early age) suggested my previous firm and David worked together on patent services for an OLED innovation company. David was introduced to me as the company’s patent attorney, company secretary, inventor and person responsible for securing significant Carbon Trust funding as well as external private venture capital funding. Little did I know that this encounter was to change not only the way I looked at the role of a patent attorney, but also my own career. After a whirlwind of numerous patents filings, cash burn on R+D and a relocation of the inventors and labs, David took me

OBITUARIES • ANNOUNCEMENTS

to one side to tell me that he intended to retire for a third time and that this OLED innovation company was just the tip of a rather large iceberg of patent clients occupying much of his time. It was at this time, in late 2014, that Paul Lynch and I had formed TLIP and David was proposing that we took over his portfolio. He insisted on doing things properly, of course, and so lunch was arranged at Sam’s Chop House, Manchester, where by coffee we had agreed terms on a handshake. Not only had we doubled our client base over lunch, but we had inherited a Manchester office, and one with a rather extensive wine list, to boot. David managed to stay retired for around a week, and what started out as monthly get-togethers with TLIP in 2014 quickly became weekly calls in 2015. By the time of his unfortunate passing he was working full time leading a practice as diverse as a trade secret dispute, design right litigation, working on Nobel Prize winning research and yet still finding time to draft original patents to technologies as varied as perspective instruments and security aspects for mobile communication. He was highly regarded by technology transfer offices around the UK. In the

late 1970s and early 1980s and beyond, he was in the vanguard of getting universities to consider their IP and push to commercialise it. He sowed the spark of interest in IP commercialisation for many. There are numerous people who have been encouraged and coached by David to actually think about their IP in a commercial way. He spoke to people in practical language and always tried to avoid the usual legal verbosity. His view was to enlighten as opposed to bamboozle. To offer solutions not further problems. He was prepared to go that extra mile and with the trust of his clients tell them what they should do and why. He was trusted completely by his clients to do the right thing for them. David will be sorely missed by all of us at TLIP, but his legacy will live on through the energy, drive and entrepreneurial spirit that he imparted to all the TLIP attorneys and colleagues throughout his career that were lucky enough to have worked alongside him. David leaves behind his second wife, Georgina, his three children, two stepchildren and six grandchildren. Alex Turnbull, TLIP, with thanks for the input from Nick White of Tangible IP

Announcements On 1 April 2017, Cleveland IP merged with Scott & York IP Law to Mewburn Ellis LLP is pleased to announce that John Addiss

form Cleveland Scott York. The firm has offices in London,

(Fellow) and Emma Graham (Fellow) have joined the partnership.

St Albans, Reading and Brussels. The principal office continues

Further details can be found at www.mewburn.com.

to be located at Fetter Lane in the City of London, to which the London, Guildhall Yard offices of Scott & York will move.

HGF Ltd is delighted to announce that on 1 of May 2017 Richard

The new Brussels office provides the firm with a valuable EU

Wylie, Andy Camenisch (Fellow), Jason Lessard (Fellow),

presence. It is one element in the firm’s strategy to maintain an

Douglas Drysdale (Fellow) and Dr Bal Matharu (Fellow) have

EU trade mark filing capability after the UK leaves the EU.

been promoted to partner. Craig Thomson (Fellow) joined the

Further details can be found at www.csy-ip.com.

firm’s Glasgow office as a partner on 18 April 2017. Further details can be found at www.hgf.com.

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

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Unconventional No.8

CROSSWORD

by Edgar Wunder

Edgar’s crossword does not fully comply with the provisions of the EPC and, as a result, the wordplay in 9 clues is missing three letters. The Examining Division has hidden the relevant objection in the grid and the 11 relevant squares should be highlighted once the puzzle has been completed. Across 1. Care for the environment – half of crew goes by bike. (7) 5. A choice between a metal and a metalloid in marketplaces. (6) 9. Girl who loses head is somebody to be relied on? (4) 10. Insect is an unknown quantity in the destruction of hebe. (8) 12. A cyst turns into something else. (4) 14. Alcoholic drink causes father to come last after slipping right into hole. (6) 17. Twist, for example, is caned cruelly. (5) 18. Small part of audio tape. (4) 20. Ostler put in new order for organic molecule. (6) 21. Herb found in region of Normandy used to make dessert. (7) 22. Extreme members of cult radicalised. (5) 23. Amphibian finds place in chieftains heart. (3) 24. Distressed neurotic loses twitch in French city. (5) 27. Oxidised aromatic compound – one of five. (7) 30. Very right to have less delay. (6) 34. It helps you see and hear sea. (4) 35. Beginner makes mark by jumping into current. (5) 36. Does writer following river become more profound? (6) 37. Parisian’s tooth makes impression. (4) 38. Manufacturer made to drop fake cure for degeneration. (8) 39. With a king involved, such amusements could be a horror story! (4) 40. High street leads to the centre of Cadiz. (6) 41. Initially hesitate to pen the truth. (7)

Please e-mail your entries to editor@cipa.org.uk by 10 June 2017. A bottle of fizzy wine for the first correct entry drawn. This crossword can also be downloaded from the CIPA website.

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Down 1. Attacks right disease. (5) 2. Eleventh tribe, alphabetically, makes metallic noise. (5) 3. Disrespectful revolutionary makes key change. (6) 4. Have fun with English head girl in city. (5) 6. Spin with lead dodgem causes terrible tragedy. (6) 7. Soldier loses heart and turns round at sound of explosion. (6) 8. Pen for actor. (8) 11. Sodium salt and boron used to make bridge-forming structure. (5,4) 13. Alcoholic is heard questioning refusal. (4) 15. Flower suffers damage to shortened stamen. (7)

16. Walk open-armed into trouble. (9) 19. Standard cut vegetable. (7) 20. Sounds like a number abroad have hardened. (3) 21. Sinks on both port and starboard, perhaps. (8) 23. Hear cockney exclamation of surprise – with this? (3) 25. Work by Ravel involving oboe played with two hands. (6) 26. Withdraw unlawful decree. (6) 28. Temporarily not working with father absent – taken advantage of! (4) 29. Work experience student cooks a dinner with salt but no salad. (6) 31. Book found in library lent for free, no charge made. (5) 32. Singers take part in the ideal Tosca. (5) 33. Footballer, reportedly, is untidy. (5) MAY 2017

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CPD & EDUCATION

INSTITUTE EVENTS

Patent Practice in the UK A joint seminar by the UK IPO and CIPA. Vorhoelzer Forum, Technical University of Munich, 15:00 – 17:00, 11 October 2016

he seminar “Patent Practice in the UK” was organised by Muncih-based CIPA members Greg Sach and David Lucas as the pilot event for what may become a series of seminars given by CIPA on UK patent practice in other EPC countries. About 40 people attended, mostly patent attorneys from about 25 private firms in and around Munich, some in-house attorneys and EPO employees. The seminar was aimed at giving patent attorneys in Munich a brief but informative overview of patent practice in the UK, both from the point of view of the UK IPO and from the user’s perspective. The talks were structured into two sessions, the first led by Suzanne Gregson and Eleanor Wade of the IPO and the second led by Adrian Tombling, a UK patent attorney based in the Munich office of Withers & Rogers.

Introduction to the UK IPO Suzanne Gregson, a Senior Patent Examiner at the IPO and coordinator of its Customer Visit Programme, gave a very accessible introduction to the IPO and how it can be used, what it does and how it works, as well discussing the main stages in applying for a UK patent. The IPO, based in Newport and with a further office in London, is responsible for national policy and rights granting on all aspects of IP, including patents, designs, copyright and trade marks. As published in their corporate plan of 2016-2017, the IPO’s priorities include delivering excellent customer service, increasing the number of businesses that understand how to manage and exploit their IP and making access easier by expanding their digital services. The IPO’s tasks include not only granting IP rights, but also working with the police to support IP enforcement, educating businesses and customers and creating policy in all fields of IP, including international policy. The Patents Division of the IPO is organised into 18 groups by subject-matter and employs more than 350 examiners. There has also been a large amount of examiner recruitment in recent years, so a lot of senior examiner time is taken up in training new examiners. Examiners work in specific subject areas, so clients working in a particular technical area will often come across the same examiners time and again. Suzanne described filing, search, substantive examination and grant processes – £20 if filing online. The IPO’s target time for completing a search is six months after request of the 76 CIPA JOURNAL

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search, a target which is reached in roughly 90% of cases. Only the first invention of an application will be searched. Further search requests can be filed for each subsequent invention, but only upon payment of additional search fees. In the examination phase the application is examined for compliance with the UK Patents Act 1977 and considered in the light of the case files for equivalent applications in other countries. Amendments can be made at this stage to overcome any objections and there is no limit set on the number of amendment rounds. It is encouraged to contact the examiner by telephone to discuss outstanding issues, but if a resolution cannot be found in writing or by phone, hearings may also be offered or requested. In order to make sure that the examination phase is carried out efficiently and therefore to provide certainty for the applicant and third parties, there is a compliance date 4.5 years from the priority date at which point no further amendments can be made to the patent application. This period is extended by 12 months if examination is not finished after 3.5 years, with a further extension possible subject to specific requirements and a fee of £135. When no objections remain, an application can proceed to grant. Since the case is considered closed after grant, a notification of grant is sent to allow the applicant time to file any divisional applications they may wish to apply for.

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CPD & EDUCATION

The date of grant must also be at least three months after publication, in order to give third parties the time to file observations. Renewal fees are due from the fifth year in the life of the patent, but these are not payable until after grant, so if the time of grant is more than five years after filing, then the first fees to be paid may in fact be multiple fees, for more than one year. There are several options for accelerating a patent application at the IPO upon request. One of these is combined search and examination, in which the first exam report is issued with the search report. Accelerated search or examination by the UK Fast Track option is also possible, but there must be a good reason given when requesting this, such as that there is a potential infringer or that investment must be secured. The two-month target on these applications has a 98% success rate. Publication may also be accelerated to six weeks from request and no reason need be given for requesting this.

Dispute resolution at the IPO Eleanor Wade, also a senior patent examiner at the IPO, works alongside Suzanne Gregson on the Customer Visit Programme. Her talk covered all aspects of dispute resolution at the IPO, as well as discussing the UK approach to inventive step and to excluded matter. She concluded the first session by briefly guiding the audience through the IPO’s website. If an impasse is reached during patent prosecution at the IPO there is the option of an ex parte hearing. This can be conducted on papers or orally, either in person at the IPO’s Newport or London office, or via a video conference. Present at the hearing will be the applicant and/or the applicant’s attorney, the hearing officer and the examiner as the technical expert in the field. The applicant can also bring their own experts if needed. It is unusual for decisions to be issued on the day, so hearings are recorded. A fully-reasoned written decision will then be issued a few weeks later, with the target being to issue 80% of reports within nine weeks and 95% within 17 weeks. If after the hearing the application meets the requirements of the Patents Act, it will be remitted to the examiner for further processing toward grant. If it does not, it may be completely refused or it may be send back to the examiner for further examination. An appeal can be requested within 28 days. Inter partes hearings occur at the IPO when there is a dispute between more than one party about ownership, technical issues, licences, infringement or the like. This is, however, considered a last resort, so parties are strongly encouraged to reach a resolution in an alternative manner, such as by mediation. To this end, a mediation service is offered commercially by the IPO. Patent opinions can also be requested anonymously on issues such as validity or infringement, to indicate to a party whether or not a hearing would be worthwhile. It is also possible for any party to be informed of events relating to an application of relevance to them. Volume 46, number 5

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Another job of the IPO is to ensure that no applications exist as both GB patents and as EP (UK) patents. Such potential conflicts are checked during substantive examination and if anything is found the applicant is warned and a caveat raised with a marker put on the file for the examiner’s attention. If there does indeed turn out to be a conflict, the UK patent will be revoked. It is not possible to surrender the application to stop revocation. The UK approach to inventive step is that of the four-step Windsurfing/Pozzoli approach. First, the notional skilled person must be identified, as well as the common general knowledge of that person. An important factor to consider in identifying the common general knowledge is that it not only varies in time, but also regionally. It is important therefore to identify the relevant common general knowledge as what was known not only at the priority date of the application, but also specifically in the geographical area of the application. This is in contrast to prior art, which does not depend on locality but is a worldwide absolute. The second stage of the Windsurfing/Pozzoli approach is to identify or construe the inventive concept of the claim in question. Thirdly, any differences between this and the prior art should be identified, before finally asking the question: Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention? Although this approach to inventive step takes a different route to that used in the EPO, the same conclusion should be reached. The UK approach to excluded matter uses the Aerotel/ Macrossan test, another four-step test. The first step in this approach is to construe the claim, the second is to identify the contribution of the invention to the relevant technical field. The third step asks the question of whether the contribution identified in step two falls solely within the excluded matter or not. If it does, then the claim is not allowable. If it does not, the fourth step must be taken into account. This asks the question of whether the alleged contribution is actually technical in nature. If it is not, then the claim is not allowable, but if it is then it can be allowed. The IPO webpages can be found on the UK’s crossgovernment website at www.gov.uk/ipo. The most relevant section for professionals is the Law and Practice section, whilst the rest is more aimed at informing the general public. The search tool searches the entire cross-government website, so it is important when searching IP to filter the search results by organisation to show just the results from the IPO pages. It is also possible for certain manuals, such as the Manual of Patent Practice (MOPP), to search the actual manual for specific search terms that you are interested in. Updates are also listed and individual pages can be printed, these being recently added features. MAY 2017

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UK patent system from a user’s point of view The third talk was given by Adrian Tombling, head of the life sciences and chemistry group at Withers & Rogers. His talk focused on the UK patent system from a user’s point of view and followed up on some of the topics already discussed by the first two speakers. Additionally, he drew the audience’s attention to several aspects of UK patent practice not previously covered, such as for example the Intellectual Property Enterprise Court (IPEC). As discussed by Suzanne, there is a 4.5 year compliance period for UK patent applications. This can be extended by three months if there is a third party observation filed, but only if the observation is relevant, so it is not possible to use this simply as a delaying tactic. Further extensions are also only discretionary, with decisions on such being firm but fair. Although this seems like a lot of pressure, the compliance period can be very positive, as when you start getting close to the end of it you start to work closely with the examiner, with subsequent exam reports being issued very shortly after the responses are filed. The compliance period therefore ensures that cases at the IPO are dealt with efficiently. The compliance period presents more difficulties when it comes to divisional applications, as the compliance period of the parent application applies to all divisionals. It is therefore very important that all divisional applications are in order for grant before expiry of the compliance period of the parent case and maintaining divisional applications for a prolonged period is not possible. Prior to 1 October 2016, the grant date was considered to be the date that the IPO indicated that a case was in order for allowance, causing further potential problems for divisional applications, as they could be stopped before they could even be filed. Since then, one month’s notice of grant is given to file any further divisional applications. Divisionals are also relatively low cost at the IPO. Examiners are generally flexible and happy to discuss cases to find the best way forward. A hearing can be called if an impasse is reached and the hearing decision can be appealed to the Patents Court within 28 days. It is best to present all evidence during prosecution, as permission of the court is needed to add extra evidence in appeal proceedings. The IPO’s opinion service can also be very useful in cases of potential infringement and similar matters. The opinion is not binding, but can give a good indication of the likely outcome of a hearing. The IPO will write to the patent holder to notify them of the opinion request and the notification will be anonymous, so it can be a very effective bargaining tool, and cheaper than full court proceedings. Also, if a patent is clearly found to be lacking in novelty or inventive step, it may be revoked.

INSTITUTE EVENTS

full power to revoke patents, grant injunctions and order delivery up of goods. IPEC will consider validity and infringement at the same time. Trials are limited to two days, whilst all evidence steps are subject to a cost-benefit analysis. There is limited discovery available and limited expert testimony and crossexamination allowed. Damages are capped at £500k1, whilst attorney cost awards are capped at £50k2. The typical time from issuing a claim to receiving a judgment is less than 15 months and appeals are rare. All these features lead to the IPEC being considerably quicker and cheaper than the Patents Court, so it is the obvious choice for lower-cost cases, especially where the goal is to obtain an injunction. Patent Box: UK Patent Box can reduce corporation tax from 20% to 10% for income from technology protected by UK, EP or other EPC national patents. It does not apply for technology protected by other national patents, such as US patents, or by utility models. A large proportion of the relevant research needs to have been done in the UK for it to apply and it is also subject to profit apportionment, as some of the profit from a technology is considered not to be due to innovation, but due to other factors.

Summary In summary, the UK patent system is relatively cheap and the IPEC is a low-cost litigation forum in the UK. Prosecution is generally quicker than in the EPO, as well as being more flexible and informal. Often, the IPO will allow slightly broader protection than the EPO, particularly on inventive step and added subject-matter. The IPO’s Opinion Service can also be a very effective tool. All in all, the IPO is a good place to file for many cases if you want patent protection in the UK. To sum up the seminar in general, it was very accessible and informative and the attendees agreed over drinks that they had learned a lot of interesting things about the UK patent system. It was generally agreed that more events of this kind should be held in Munich in the future, in order to strengthen links between CIPA and UK patent attorneys abroad and in order to allow German patent attorneys and attorneys of other nationalities to learn more about UK patent practice. Report written by Alison Madgwick (Student)

References Intellectual Property Enterprise Court: IPEC is a lowercost alternative to Patents Court proceedings. IPEC has the power to hear all types of IP actions including being a European Trade Marks and Designs court. IPEC has 78

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1. Unless the parties agree (Ed) 2. For the liability hearing; 25k for inquiry into damages (Ed)

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COURSES

Training for the EQE Dates: 13-15 November 2017 8-10 January 2018 Venue: &HQWUDO /RQGRQ YHQXH WR EH FRQÀUPHG Are you training to be a European Patent Attorney? Are you preparing to take the EQE in Spring 2018? Support your studies by attending our preparatory course, learn from experienced practitioners and previous candidates, and network with fellow professionals. This course is for candidates preparing for the main papers (A, B, C and D) of the European Qualifying Examinations (EQE) EHIRUH WKH (XURSHDQ 3DWHQW 2IÀFH ,W LV VWUXFWXUHG LQ WZR SDUWV DQG UHÁHFWV WKH practical nature of the examinations. Bookings for Parts 1 and 2 are now accepted.

Why book Queen Mary University of London’s course? • Between 2007 and 2012 the pass rates of QMUL trained candidates were generally in excess of 90%, in some years rising to 100%. • In-depth study of previous EQE papers in small groups and with highly experienced tutors. • The course is continuously adjusted to the changing requirements of the examination and the profession. Our tutors have been teaching this course for at least six years. • Queen Mary University of London has nearly 30 years’ experience running this programme and provides close academic supervision. For more information and to register please go to www.ccls.qmul.ac.uk/events

www.ccls.qmul.ac.uk/events Volume 46, number 5

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THE PINKS

COURSES

REVISION COURSES FOR THE PEB 2017 EXAMS & EQE 2018 MAY-AUGUST & NOVEMBER-DECEMBER 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 and in November and December for EQE 2018. 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 and you can attend one course or a combination. For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791959630. We are a CIPA Approved Training Provider. E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk Fax: +44(0)800 0664016 JDD Consultants, 5 Tennyson Road, Bedford MK40 3SB

Assimilate IP is providing the following courses: Introduction to Intellectual Property 22 May, Harwell Innovation Centre  Freedom to Operate 22 May, Harwell Innovation Centre  Freedom to Operate for the Life Sciences and Pharmaceutical Industries 26 June, London School of Economics 

Details and registration are on our website: http://assimilateip.com/courses

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

THE INCORPORATED BENEVOLENT ASSOCIATION OF THE CHARTERED INSTITUTE OF PATENT ATTORNEYS Registered Charity No 219666 A company (Reg No 319970 England) limited by guarantee Incorporated in London 1936

R egistered O ffice 95 C hancery Lane LO N D O N W C 2A 1D T

NOTICE IS HEREBY GIVEN THAT THE 72nd ANNUAL GENERAL MEETING of the Association will be held at the Chartered Institute of Patent Attorneys, 3rd Floor, 95 Chancery Lane, London WC2A 1DT, on Wednesday 7 June 2017 at 2.00 pm D.R. Chandler Secretary 4 April 2017 80 CIPA JOURNAL

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THE PINKS

COURSES

CEIPI preparation courses for the European Qualifying Examination 2017 A complete range of high-quality courses using proprietary high-quality training material Our offer for English-speaking candidates:

Preparation for the EQE pre-examination 2018 Preparatory seminar for the EQE pre-examination from 6 to 10 November 2017 in Strasbourg Fee: 1 700 €*. Closing date for receipt of applications: 15 September 2017. Enrolment via: preparationeqe@ceipi.edu

Intensive “last-minute course” for the pre-examination on 25 and 26 January 2018 in Munich Last-minute opportunity to candidates wishing to improve their skills in respect of this paper. Fee: 750 €*. Closing date: 18 December 2017. Enrolment via: preparationeqe@ceipi.edu

Preparation for the EQE main examination 2018 Introductory courses on papers A+B, C and D in Paris Papers A+B: 29 September 2017 Paper C: 30 September 2017 Paper D: 27 - 28 September 2017 Each part (A+B, C, D) can be attended separately. Fee: 300 € for half a day*. Closing date: 13 July 2017. Enrolment via: preparationeqe@ceipi.edu

Preparatory seminars for papers A+B, C and D in Strasbourg Papers A+B and C: 20 to 24 November 2017 Paper D: 8 to 12 January 2018 Fee: 1700 € for the five-day seminars (ABC or D), 875 € for the A+B or C part on their own*. Closing date: 15 September 2017. Enrolment via: seminareqe@ceipi.edu

Special course paper C for resitters on 1 and 2 December 2017 in Strasbourg Fee: 850 €. Closing date: 2 October 2017. Enrolment via: preparationeqe@ceipi.edu

Intensive “last-minute courses” for papers A+B on 23 and 24 (p.m.) January 2018 and for paper C on 24 (a.m.) and 25 January 2018 in Munich For candidates wishing to improve their skills in respect of these papers. Participants should have followed either a CEIPI introductory course or a recent CEIPI seminar preparing for these papers, or both. Each course (A+B or C) can be taken separately. Fee for intensive course A+B or for intensive course C: 750 €*. Closing date: 18 December 2017. Enrolment via: preparationeqe@ceipi.edu *The CEIPI offers reduced package prices for candidates enrolling for the complete range of courses preparing for one or more papers of the EQE.

Further information about the courses and enrolment is available in OJ EPO 4/2017 and on our website: www.ceipi.edu. Contact: Christiane Melz, CEIPI International Section, tel. +33 (0)368 85 83 13, email: christiane.melz@ceipi.edu

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THE PINKS

INTERNATIONAL

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/Ŷ ĂƐƐŽĐŝĂƟŽŶ ǁŝƚŚ

5th annual conference

Unitary Patent & Unified Patent Court 2017 5 JULY 2017 EUROPEAN PATENT OFFICE I MUNICH, GERMANY

The new unitary patent system on the launchpad This event takes place on the eve of the start of the Unitary Patent and the establishment of the hŶŝĮĞĚ WĂƚĞŶƚ ŽƵƌƚ͘ dŚĞ ƵƉĐŽŵŝŶŐ ƐǇƐƚĞŵ͛Ɛ ŽĸĐŝĂů ůĂƵŶĐŚ ŝŶ ĞĐĞŵďĞƌ ϮϬϭϳ ǁŝůů ďĞ ĚŝƐcusseĚ ďǇ ƵƌŽƉĞĂŶ ũƵĚŐĞƐ͕ ƚŚĞ ŽŵŵŝƩĞĞƐ͕ /W ƉƌĂĐƟƟŽŶĞƌƐ ĂŶĚ /ŶĚƵƐƚƌǇ͘ TOPICS COVERED: > > > > > >

WƌĞƉĂƌĂƚŽƌǇ ĂŶĚ ĚŵŝŶŝƐƚƌĂƟǀĞ ŽŵŵŝƩĞĞƐ͗ ƚŚĞ ƐƚĂƚĞ ŽĨ ƉůĂǇ :ƵĚŐĞƐ͛ ƐĞůĞĐƟŽŶ ƉƌŽĐĞƐƐ͗ ƋƵĂůŝƚǇ ŽĨ ƚŚĞ ŽƵƌƚ Are the countries ready to start? Court of First Instance and Court of Appeal of the future UPC: are the judges ready? /ŵƉĂĐƚ ŽĨ ƚŚĞ ŶĞǁ ƵŶŝƚĂƌǇ ƉĂƚĞŶƚ ƐǇƐƚĞŵ ŽŶ ƉĂƚĞŶƚ ƉŽƌƞŽůŝŽƐ ZĞŐŝƐƚĞƌŝŶŐ ƵŶŝƚĂƌǇ ƉĂƚĞŶƚƐ ĂŶĚ ĮůŝŶŐ ƐƵďŵŝƐƐŝŽŶƐ Ăƚ ƚŚĞ hW ŝŶĐůƵĚŝŶŐ ŽƉƚͲŽƵƚƐ

dŚŝƐ ĞǀĞŶƚ ŝƐ ŽƌŐĂŶŝƐĞĚ ŝŶ ĂƐƐŽĐŝĂƟŽŶ ǁŝƚŚ ƚŚĞ ƵƌŽƉĞĂŶ WĂƚĞŶƚ KĸĐĞ ŽŶ :ƵůǇ ϱ͕ ϮϬϭϳ in their DƵŶŝĐŚ ŚĞĂĚƋƵĂƌƚĞƌƐ (Germany). Join us and be inspired, surrounded by ϯϬ ŚŝŐŚͲƌĂŶŬŝŶŐ speakers and ϮϴϬн ĚĞůĞŐĂƚĞƐ from Ϯϲ ĐŽƵŶƚƌŝĞƐ.

KŶĞ ŽĨ ŽƵƌ ĐŽŶĮƌŵĞĚ ƐƉĞĂŬĞƌƐ͗

His Honour Richard Hacon

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WWW.UNITARYPATENTSYSTEM.EU

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Dawn Ellmore Employment

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IN-HOUSE PATENT ATTORNEY - HERTFORDSHIRE 'RQ·W PLVV RXW RQ WKLV QHZ H[FLWLQJ RSSRUWXQLW\ WR MRLQ WKH ÁRXULVKLQJ ,3 WHDP RI WKLV LQVWDQWO\ UHFRJQLVDEOH FRPSDQ\ EDVHG LQ +HUWIRUGVKLUH 7KLV KRXVHKROG QDPH KDV DQ H[FHSWLRQDO UHSXWDWLRQ ZLWKLQ LWV VHFWRU DQG WKH\ DUH VHHNLQJ DQ HQWKXVLDVWLF SDWHQW DWWRUQH\ WR MRLQ WKH WHDP ZRUNLQJ ZLWK WKH FRPSDQ\·V ,3 'LUHFWRU WR HQVXUH WKDW WKH FRPSDQ\·V ,3 ULJKWV DUH IXOO\ SURWHFWHG DQG HQIRUFHG 6XLWDEOH DSSOLFDQWV ZLOO EH FXUUHQWO\ DW ÀQDOV VWDQGDUG RU ZLOO KDYH TXDOLÀHG ZLWKLQ WKH ODVW IHZ \HDUV DQG ZLOO KDYH D WHFKQLFDO EDFNJURXQG LQ HOHFWURQLF HQJLQHHULQJ VRPH H[SRVXUH WR DQG ZLOOLQJQHVV WR ZRUN ZLWK FRPSXWHU UHODWHG VXEMHFW PDWWHU ZRXOG DOVR EH ZHOFRPHG 7KLV LV DQ DPD]LQJ UROH ZLWK D EULOOLDQW FKDQFH WR MRLQ D FRPSDQ\ ZKHUH \RX ZLOO EH DEOH WR PDNH \RXU PDUN 7KH FRPSDQ\ SURPLVHV D UDQJH RI UHZDUGLQJ EHQHÀWV ZLWK DQ DSSHDOLQJ VDODU\ VR GRQ·W KHVLWDWH WR JHW LQ FRQWDFW

EUROPEAN GRANT ASSISTANT - LONDON

INPROTECH ADMINISTRATOR - LONDON

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SENIOR PATENT PARALEGAL - LONDON

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PATENT PARALEGAL PA - SOUTH WEST

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PATENT SECRETARY - NORTH EAST

PATENT RECORDS ASSISTANT - LONDON

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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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www.dawnellmore.co.uk

Dawn Ellmore Employment @Dawn_Ellmore DawnEllmore1

05/05/2017 08:26:13

THE PINKS

RECRUITMENT

Assistant Patent Counsel Needed Help Mylan Build Better Health for a Better World. Mylan is a global pharmaceutical company committed to providing the world’s 7 billion people access to high quality medicine and setting new standards in healthcare. At Mylan, every employee has a role in supporting our mission. If you want to be part of an organisation that places a premium on passion, innovation and teamwork, Mylan may be the place for you. Our Hertfordshire, UK, location currently has an opening for an assistant patent counsel who is part-qualified or finals ready. Responsibilities include: • Conduct and analyse searches, provide freedom-to• Managing a portfolio of products and providing the operate opinions, provide validity and non-infringement necessary intellectual property (IP) advice in relation to opinions in relation to specific patents and nonthem. This may include strategic and risk assessment for infringement strategies for third party patents. the company, initial analysis to determine launch strategy • Identify European opposition opportunities, and draft, file and associated advice before and after launch. and handle oppositions and appeals before the EPO. • Managing the prosecution of our patent portfolio. The successful candidate will have a degree in chemistry, biochemistry or a related discipline. Ideally, pre-qualification experience would include work in the pharmaceuticals industry or related field. Excellent project management, communication and presentation skills are desired. To apply please submit cover letter and CV to patents@mylan.co.uk.

Are you a big thinker who’s ready to do some hard hitting? Qualified Patent Attorney, Dublin, Ireland and Belfast, N. Ireland Hanna IP is a young, fast-growing IP practice with offices in Belfast and Dublin. We’re respected for our thoughtful, responsive and client-focused approach – and, as a result, we’ve been growing steadily in size over the last ten years. We now have a significant opening in both our Dublin and Belfast Office for someone with talent and drive who wants to make a move into an environment where they really have the opportunity to make their mark. Our current openings, for a qualified Patent Attorney EPC/CPA, combines day-to-day patent work with business development. The ideal candidate will have a good first degree in Physics, Computer Science, Electrical Engineering or Electronics and, ideally, two to three years post-qualification experience. Exceptionally, we may also consider a recently qualified attorney for the role if they can demonstrate notable potential. The role will be a diverse one, allowing full practical experience of all aspects of Patent Attorney work including opinion work, drafting, prosecuting, oral proceedings and due diligence work. It will also involve the handling of a significant amount of existing prosecution work before the EPO, UK IPO and the USPTO in the field of mechanical engineering. A working knowledge of trade marks would also be useful. Business development with new clients will also be an important part of the position, so the ability to demonstrate aptitude and experience in this area will also be important. The successful candidate will need to be able to work confidently with existing and potential clients, and show a clear ability to quickly develop an understanding of both the long-term objectives and the immediate requirements of clients. Therefore, prior experience of a broad range of client-facing work will be a distinct advantage. If you’re a suitably qualified Patent Attorney looking for the opportunity to thrive within a strong, forward-looking team, we’d love to hear from you. The package on offer will be highly competitive and commensurate with your skill and experience. Please apply, in confidence, with a covering letter and enclosing your CV to john@hannaip.com, marked for the attention of John Hanna. Hanna IP, 58 Howard Street, Belfast, BT1 6PJ Block B, The Crescent Building, Northwood, Santry, Dublin 9 www.hannaip.com

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MAY 2017

www.cipa.org.uk

05/05/2017 08:26:31

Giving you a helping hand

Paralegal : Bath TJB52026 The fastest growing IP practice in the industry want you to join their South West outfit as a Patents & Trademarks Paralegal. You'll work closely with your allocated Attorney, dealing with a mix of secretarial, administrative and paralegal duties. Find out today how you can thrive in this exciting environment. *1 4FDSFUBSZ 1BSBMFHBM )BNQTIJSF 5+# An award winning Intellectual Property practice are looking for a Trade Marks Paralegal/Secretary to support the thriving Hampshire outfit. This is an amazing opportunity for an experienced Legal Secretary to make the move into an IP environment, or a step up for a Patents or Trade Marks professional who wishes to develop in an award winning firm. %FQVUZ )FBE 1BUFOU "UUPSOFZ .JEMBOET 7"$ Joining the in-house team as Deputy Head, you will be responsible for more than traditional Patent Attorney responsibilities and will be actively involved in the training and supervision of more junior members of the team. The work will comprise engines, transmissions, emissions and cooling systems. You must be a qualified attorney and have at least 3 years' post qualification experience. &MFDUSPOJDT "UUPSOFZ .BODIFTUFS -FFET 7"$ A rare chance for a Finalist or Newly Qualified level Electronics Attorney to join a leading practice in a position where waves can be made from an early stage if you can hold your own! Sought is someone of a proactive and dynamic nature to join this team to continue the successful growth of the department. There is a wealth of work available from a diverse and high profile portfolio, what better way to learn! *O )PVTF &OHJOFFSJOH 1BUFOU "UUPSOFZ /PSUI &BTU 7"$ 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.

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

1SPGFTTJPOBM 4VQQPSU 0GGJDFS :PSLTIJSF $&' Utilise your IP expertise with something completely different. You will be a crucial part of the Professional Support department, assisting in the circulation of IP & legal developments across this world-class IP firm, and to clients & associates. Our client is looking for an attentive and intuitive professional who has a real interest in Intellectual Property law. -JGF 4DJFODFT "UUPSOFZ .JEMBOET $&' Our client is a leader in the industry, with an enviable Life Sciences department and an impressive client base. This is a great environment where you can flourish as a member of a team as well as independently. You'll enjoy high profile work with superb peers, generous remuneration, stellar benefits and exciting growth plans. &OHJOFFSJOH "UUPSOFZ (MBTHPX $&' Incredible Glasgow based opportunity for a superstar Patent Attorney! This key role has scope for portfolio management, and additionally a focus on business development. The ideal applicant will be fully qualified with impressive drafting and prosecution experience in the field of Mechanical Engineering. &OHJOFFSJOH 1IZTJDT "UUPSOFZ 4VSSFZ -," Well established, solid Practice requires an Engineering Patent Attorney to join its team in Surrey. Promoting the highest standards of client care, the firm acts as a much valued advisor to those they are representing. If you are fed up of the daily race to the City, why not think about enjoying a different pace, without having to compromise on the standard of work available? $IFNJTUSZ BOE &OHJOFFSJOH PQQPSUVOJUJFT .JEMBOET -," Lovely, well organised, modern Practice has capacity to recruit three Attorneys to join their friendly team. The firm continues to blossom and they would be keen to talk to those with a background in Chemistry or; Mechanical Engineering / Physics or; Trade Marks. A relaxed but busy environment, the firm are set up to accommodate home working and are prepared to think creatively to meet both their client's and their employee's needs.

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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THE PINKS

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 Attorney We’re looking for a qualified Patent Attorney 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. 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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MAY 2017

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

05/05/2017 08:27:17

Recently Qualified Chemist, Midlands A small yet strategically minded practice in the Midlands requires a recently qualified attorney to help manage their current work load, as well as adding to their portfolio with additional clients across the chemical and pharmaceutical fields. Individually tailored support and training is offered to fee earners at all levels, and the career prospects and earning potential is excellent.

1-2 Years’ PQE, Chemist, London Work with an eclectic portfolio with a largely European focus. You will be expected to work hard at this firm, but you will be rewarded accordingly with a generous remuneration and accelerated career progression. Duties can vary depending on the day, but you can expect a healthy mix of drafting and prosecution, complex IP strategy, oppositions and appeals, and some SPC work.

Finalist – 3 Years’ PQE, Physics, Midlands Enjoy an extremely broad client base and handle innovative technologies originating from a range of fields, including mechanical, electronics and medical devices. The firm adopts a modern approach and has witnessed steady growth over recent years, with attorneys joining from a variety of backgrounds and areas of expertise.

Newly Qualified Patent Attorney, Mechanical Engineering, South West This firm has a refreshing take on the traditional IP business model and is not afraid to adapt their working practices to suit changes over time. They are growing their outfit in the South West to help manage work from two major international clients, but there will also be opportunity to work with smaller independents and SMEs.

Part Qualified Patent Attorney, Electronics, London Currently training but don’t feel the fit is quite right with your current firm? There’s no need to stick it out until after qualification! This firm has a track record of welcoming attorneys at an early stage in their careers and encouraging them to thrive in their supportive, family friendly environment.

2 Years’ PQE+, Electronics, North Working in the regions doesn’t necessarily mean you’ll lose out on the top clients or earning potential. What it does mean is the opportunity to work with interesting local talent, a fantastic work life balance, and less obstacles when it comes to moving up the career ladder.

2-4 Years’ Experience, Electronics, Cambridge You will have the best of both worlds at this firm, with world class clients, market leading remuneration and a beautiful setting just a stone’s throw from the capital. The firm has cross office teams allowing you to collaborate with colleagues across the UK on a range of interesting client projects, and plenty of flexibility when it comes to home/remote working.

Qualified Patent Attorney, Electronics, London Looking for something ‘a bit different’? We can honestly say that this firm is very much that, and can offer you an interesting change to your everyday private practice. There will be the opportunity to work with professionals from all corners of the IP community and provide a full service to your clients, from initial IP capture to all ongoing protection and managing any developments or objections that may occur.

Associate, Electronics/Engineering, Birmingham Represent the local community with well established relationships with local academic institutions, universities, entrepreneurs and SMEs. You will be expected to become involved in all areas of IP, including advising on design rights, licensing and litigation; and more commercially focused areas such as working closely with tech transfer companies and spin-outs.

Nearly/Newly Qualified, Electronics, London There’s plenty of opportunities for electronics patent attorneys at the moment so what makes this one so special? Maybe it’s the fact the firm will give you the freedom to make the role completely your own, with flexible working, the opportunity to seek out clients to match your interests (no matter how niche), and a variety of Partners and fellow fee earners available to you to draw experience from.

Newly Qualified, Biotechnology, London Join one of the most highly regarded practices in London and handle an unusual case load with plenty of high value and complex work, including oppositions and appeals for clients in the US and Europe. The firm is visible at many of the leading industry conferences and there will be the opportunity for you to travel to these, as well as meeting with existing and potential clients across the world.

Senior Associate, IT&E, North Want to help further build a steadily growing practice in the North? This is a fantastic opportunity for someone who may be reaching an impasse in their career and wants a new challenge. You will be responsible for shaping key management decisions, training and supervising the next generation of IP talent, and representing the firm in question at top networking and industry functions.

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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THE PINKS

RECRUITMENT

PATENT ATTORNEY CHEMISTRY

BEST OF BOTH WORLDS Be in London, be in Europe – join the London office of a truly integrated pan-European firm. Individual value, team dynamic – make your mark as part of Europe’s largest private practice chemistry and life sciences group, with a proven track record of success. Family firm, international reach – benefit from a close-knit office atmosphere, with the support and global reputation of one of Europe’s leading IP law firms. We are looking for a finals standard or recently qualified British and European Patent Attorney to join the chemistry team in our London office. You will be able to demonstrate a high level of technical competence and have a drive for success. The role will include a mixture of prosecution and EPO opposition work across a broad spectrum of chemical technologies, including opportunities to represent clients in oral proceedings. You will also have the chance to spend time working in our Munich office, and there are travel opportunities associated with the work. Criteria for progression within the firm are transparent and performance-based. The working language of the firm is English.

Please send your CV and cover letter to London_recruitment@HoffmannEitle.com

MÜNCHEN

90 CIPA JOURNAL

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LONDON

MAY 2017

DÜSSELDORF

HAMBURG

MILANO

MADRID

www.cipa.org.uk

05/05/2017 08:27:52

Patent Attorney Competitive Salary + Bonus + Excellent Beneﬁts Cambridge Science Park

We do things differently at Mundipharma International.

biology, biochemistry, etc, and be a qualiﬁed UK and/or

Our approach is nothing like the traditional pharmaceutical

European Patent Attorney. The candidate will be expected

business model. Innovation guides everything we do and

to have excellent communication, team working and

we make it our business to watch, respond and adapt to

interpersonal skills.

new market pressures. The candidate will have proven experience in managing We are an organisation that is built on an entrepreneurial spirit - we are always looking for the right opportunity. We provide fully integrated, strategic support and services

pharmaceutical or similar portfolios preferably obtained in a commercial in-house position although candidates having private practice experience will also be considered.

to individual companies within the global Mundipharma network of over 50 independent associated companies which is dedicated to the research, development and commercialisation of highly effective and innovative medications.

This is a highly responsible and challenging role, with genuine scope for further professional advancement, so a commercially astute approach to departmental goals and deadlines will be essential. Due to the diversity of projects

To further strengthen our in-house IP resource, we now require a high calibre, commercially-oriented patent attorney to join our team in Cambridge.

and the growth in the global Mundipharma IP function, we will consider a wide range of experience levels up to and including partner level and principal in-house patent attorneys.

The role covers the full range of IP responsibilities with particular emphasis on FTO, due diligence and portfolio

In addition to a competitive salary and bonus, the role

management and will involve working closely with external

comes with an excellent package of ﬂexible beneﬁts,

IP counsel.

commensurate with experience and background.

A signiﬁcant aspect of the role will involve liaising with the

If you feel you have the requisite drive, ambition and

various commercial project teams to support commercial

experience to apply for this key appointment, then please

launches and provide ongoing advice on IP strategy and

contact our retained consultant James Dawes at Aspire

life cycle opportunities.

recruitment consultants on 020 7612 3941 or alternatively email your CV securely to jamesd@weareaspire.com

Candidates should be educated to at least degree level in

outlining your suitability for the position.

chemistry, pharmacy or a related life sciences subject, e.g.

REC-pp91-Aspire_1-RHS.indd 91

@jamesdawesIP

120 New Cavendish Street

linkedin.com/jamesdawesaspire

London

www.weareaspire.com/IP

W1W 6XX

05/05/2017 08:28:10

THE PINKS

RECRUITMENT

Fully Qualified Patent Attorney (wireless communications and electrical engineering) Are you looking to achieve your long term career goals? Are you looking to work with high profile clients while maintaining a genuine work/life balance? Are you looking for interesting and engaging work with a leading firm? Do you want to join an experienced and highly regarded team? Look no further! The Role: Maucher Jenkins is seeking a talented and ambitious Patent Attorney to join our growing patents group. From our London or Surrey Office, this role will primarily support a major and prestigious US client protecting their substantial patent portfolio. About you: The right candidate will have a background in wireless communications and electrical engineering and a proven track record in delivering the highest standard of client service. The right candidate will be committed to working towards their own professional development and that of others and to promoting our practice as a leader in the marketplace. This is an ideal opportunity for an ambitious client-focused Patent Attorney to take their career to the next stage. A genuine opportunity for partnership is available as the firm goes from strength to strength. A very competitive salary will be available to the successful appointee. About us: Maucher Jenkins is a firm of two well-established and dynamic private practices of UK, German and European patent and trade mark attorneys, attorneys at law and IP litigators. Our main offices are located in London and Munich, with additional offices in the UK, Germany, Switzerland and China. The firm has grown to around 50 professionals across Europe and Asia, covering all areas of IP, together with a dedicated support team of around 90 people. Location: Salary: Job type: Posted: Closing date: Apply:

Contact: Telephone:

Please visit us at www.maucherjenkins.com 92 CIPA JOURNAL

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MAY 2017

London (or Surrey, if candidate prefers) Competitive, plus benefits Permanent, full time 1st May 2017 31st May 2017 Please apply with your CV and covering letter to Emily.Hutley@maucherjenkins.com, or write to us at 26 Caxton Street, London, SW1H 0RJ Emily Hutley 0207 931 7141 No agencies www.cipa.org.uk

05/05/2017 08:28:31

THE PINKS

RECRUITMENT

Part Qualified Patent Attorney (wireless communications and electrical engineering) Maucher Jenkins is seeking talented and ambitious part qualified Patent Attorney to join our growing patents group. This role will primarily support a major and prestigious US client protecting their substantial patent portfolio. You will have a background in wireless communications and electrical engineering. You will be looking to work in a challenging environment with early responsibility; you will be looking for excellent training and support, surrounded by experts in their field. You will be enthusiastic, with a true ambition to continue the journey to become a fully qualified Patent Attorney. A very competitive salary and benefits package will be available to the successful appointee.

About us: Maucher Jenkins is a firm of two well-established and dynamic private practices of UK, German and European patent and trade mark attorneys, attorneys at law and IP litigators. Our main offices are located in London and Munich, with additional offices in the UK, Germany, Switzerland and China. The firm has grown to around 50 professionals across Europe and Asia, covering all areas of IP, together with a dedicated support team of around 90 people.

Location: Salary: Job type: Posted: Closing date: Apply:

Contact: Telephone:

Please visit us at www.maucherjenkins.com

Part or Fully Qualified Patent Attorney We are looking for an ambitious qualified or part-qualified Patent Attorney with a background in electronics, communications or electro-mechanical subject matter, to join our growing patent practice in the UK and China. ౯ժ੔࿢Ӟٍ֖॓ኪৼ̵᭗‫מ‬౲๢ኪᶾऒದ๞ᙧวጱ᝕ࢵ ཾၖӫ‫ڥ‬ դቘՈҁํਠ‫ق‬դቘᩒᨶ౲૪᭗ᬦ᮱‫ړ‬ᘍᦶ҂‫فے‬౯ժள᭛౮ᳩጱ᝕ࢵ Ӿࢵࢫᴚ̶๜ᘳ֖੦ٌᭇ‫૶ݳ‬๕‫ک‬Ӿࢵҁ۹Ղ౲Ⴎ ࣉ҂‫઀ݎ‬౲ᘏౄ఺य़᮱‫ړ‬෸ᳵଉḦӾࢵጱդቘՈ҅ଫᘷՈާզٍ॓᝕ࢵ౲஛ࢵԪ‫ۓ‬ಅጱૡ֢ᕪḵԅ̶֯ ౯ժտ൉‫׀‬ӿܹጱಸᯘ҅ଚӬտԅଫᘷ౮‫ۑ‬ጱ᭗ᬦ᮱ ‫ړ‬ᘍᦶጱդቘՈ൉‫׀‬꧌‫ړ‬ጱङᦒ޾ඪ೮҅զٌۗੱ෱ ‫ݐ‬஑ਠ‫ق‬ጱդቘᩒᨶ̶ ‫ى‬ԭ౯ժғ MaucherJenkins是一家欧洲知识产权事务所，在伦敦、法纳姆、慕尼黑、弗莱堡和北京均有办公室。

ૡ֢ࣈᅩ Ӿࢵ۹Ղ?Ⴎࣉ ૡᩒ݊ᐰ‫ڥ‬ғ սܹ ૡ֢௔ᨶғ ‫ق‬ᘳ̵ᳩ๗ ೗ᘷ๗ғ ଙ ์ ෭ᛗ ଙ ์ ෭ ኩ᧗ොୗғ ᧗ਖ਼ᓌܲ݊࿢ᘳ‫מ‬᭗ᬦኪৼᮒկ‫ݎ‬ᭆ ᛗғEmily.Hutley@maucherjenkins.com ౲ᮒੀᛗ ғ26 Caxton Street, London, SW1H 0RJ ᘶᔮՈғ Emily Hutley ኪᦾғ 0207 931 7141 No agencies

᧗ᦢᳯ౯ժጱԆᶭ - www.maucherjenkins.com

Volume 46, number 5

REC-pp92-93-Maucher-jenkins_2.indd 93

MAY 2017

CIPA JOURNAL

05/05/2017 08:28:33

THE PINKS

RECRUITMENT

Exciting In-House Opportunities Senior Patent Attorney / Patent Attorney CPA or EPA Qualiﬁed - Chemistry, Biochemistry, Molecular Biology, Materials Science, Physics Near Cambridge We are looking to recruit two bright, versatile EPA/CPA or equivalent patent attorneys with excellent interpersonal skills to support our 100 strong interdisciplinary research team with world-class expertise in physics, chemistry, engineering, micro-electronics, materials and life-sciences. CDT currently has a portfolio of nearly 400 patent families in a broad range of countries and has recently ramped up its ﬁling activity to keep in-line with its fast-paced innovative R&D. CDT is the European Research Centre for Sumitomo Chemical, our parent company based in Japan, and our team is currently working on a wide range of exciting research topics including: FlexOLED, Organic Photodiodes for x-ray and sensors, Organic Electronics, BioSensors, Energy Harvesting and Storage, as well as OLED Lighting, at levels ranging from fundamental understanding to optimising materials and devices for market applications. Experience of working with business managers as well as R&D teams would be advantageous (as would be experience of FTO

We’re hiring! Avidity IP invite applications for the following key positions.

analysis for at least one of the positions). Applicants will ideally hold a higher degree in a relevant discipline and a range of technical backgrounds will be considered. This is an outstanding opportunity to be part of a dynamic environment where your contribution will earn full recognition and reward. CDT offers a competitive salary and beneﬁts package including 27 days holiday, private health and dental care, life assurance and pension scheme. Please apply with full CV to: The Human Resources Department, CDT Ltd, Unit 12, Cardinal Park, Cardinal Way, Godmanchester PE29 2XG. E-mail: careers@cdtltd.co.uk. Please quote the reference ‘Patent Attorney’ in the subject heading. A full job description is available on request. Direct applicants will be given preference over agency presented candidates. CDT is an equal-opportunities employer.

www.cdtltd.co.uk

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MAY 2017

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www.avidity-ip.com/vacancies

www.cipa.org.uk

05/05/2017 08:28:53

THE PINKS

RECRUITMENT

New bespoke opportunities… ELECTRONICS, SOFTWARE, TELECOMS  LONDON Part Qualiﬁed & Finals Standard (Ref: 909112) Seeking an autonomous working environment ZKHUH D RQH VL]H ȶWV DOO DSSURDFK KDV QR SODFH" Interested in a culture where each individual VNLOO VHW LV GUDZQ XSRQ" 7KLV KLJKO\ VXFFHVVIXO ȶUP GLIIHUHQWLDWHV LWVHOI IURP LWV FRPSHWLWRUV E\ LWV DSSURDFK WR VWLPXODWLQJ LWV ZRUNIRUFH 2SSRUWXQLWLHV QRZ H[LVW IRU HOHFWURQLFV ,7 SK\VLFV VSHFLDOLVWV DW SDUW TXDOLȶHG SRVW 40 DQG ȶQDOV VWDQGDUG OHYHO WR MRLQ WKH ȶUPƱV ODUJHVW SUDFWLFH DUHD 7KH ȶUP SULGHV LWVHOI RQ the variety of work it can offer and ensures D EUHDGWK RI VXEMHFW PDWWHU DQG GLHW RI ZRUN E\ LQYLWLQJ QHZ DSSRLQWHHV WR ZRUN ZLWK D VHOHFWLRQ RI SDUWQHUV $ KLJKO\ FRPSHWLWLYH UHPXQHUDWLRQ SDFNDJH DQG \RXU RZQ RIȶFH LQ D PRGHUQ KL WHFK EXLOGLQJ DZDLWV

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ENGINEERING  BRISTOL Qualiﬁed (Ref: 907113)

MECHANICAL, PHYSICS, ELECTRONICS  EAST MIDLANDS Newly Qualiﬁed or Finalist (Ref: 908558)

CHEMISTRY  LONDON Qualiﬁed or Finalist (Ref: 908027)

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ELECTRONICS, HITECH  LONDON or SOUTH COAST Qualiﬁed (Ref: 907199) 4XDOLȶHG HOHFWURQLFV 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 least one new hire to its booming electronics DQG HQJLQHHULQJ GLYLVLRQ 9ROXPHV RI ZRUN FRQWLQXH WR JURZ DV WKH ȶUP UHFHLYHV UHSHDW instructions for its long-standing client base as well as successfully winning large amounts of QHZ EXVLQHVV 7RS TXDOLW\ KLJK HQG ZRUN GD\VƱ KROLGD\ VHQVLEOH ZRUNLQJ KRXUV DQG DQ H[WUHPHO\ FRPSHWLWLYH UHPXQHUDWLRQ SDFNDJH DUH MXVW D YHU\ VPDOO QXPEHU RI VWDQG RXW IHDWXUHV RI WKLV H[FHSWLRQDO RSSRUWXQLW\

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

Volume 46, number 5

REC-pp95-Career-Legal_1.indd 95

MAY 2017

CIPA JOURNAL

05/05/2017 08:29:17

THE PINKS

RECRUITMENT

-PUHSZ :[HUKHYK VY 8\HSPÄLK 7H[LU[ ([[VYUL` ¶ :V\[O ,HZ[ $UH \RX D ðQDOV VWDQGDUG RU TXDOLðHG SDWHQW DWWRUQH\ ORRNLQJ IRU D FKDQJH" 'R \RX KDYH H[SHULHQFH RI PHFKDQLFDO GUDIWLQJ" 3HUKDSV \RX VSHFLDOLVH LQ DQRWKHU DUHD RI WHFKQRORJ\ EXW ZRXOG DOVR OLNH WR KDQGOH D SRUWIROLR RI PHFKDQLFDO ZRUN" Sweetinburgh & Windsor is a modern, MVY^HYK [OPURPUN ÄYT MVYTLK PU With a varied and established client base ^L HYL UV^ SVVRPUN [V JVU[PU\L V\Y NYV^[O Our work involves a great deal of drafting HUK KPYLJ[ JSPLU[ ^VYR >L HYL HSZV HISL [V VќLY L_JLW[PVUHS VWWVY[\UP[PLZ MVY [OL M\[\YL (Z H YLSH[P]LS` `V\UN ÄYT V\Y Z[Hќ WSH` H RL` YVSL PU ZOHWPUN [OL M\[\YL VM [OL ÄYT HUK [OLYL HYL L_JLSSLU[ VWWVY[\UP[PLZ MVY WHY[ULYZOPW

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A Night in Neverland IP Ball, Saturday 15 July 2017 The IP Ball Committee would like to invite you to A Night in Neverland, in support of Great Ormond Street Hospital Children’s Charity. This year’s ball will be held on Saturday 15 July, at the De Vere Grand Connaught Rooms. To celebrate never growing up, a drinks reception will commence at 7pm, followed by a three-course dinner at 7.30pm, with live entertainment to follow before we all fly home at 1am. The dress code is black tie, although pirate hats and fairy dust are encouraged! Tickets are now on sale at £105 per person. This year, unlimited drinks between the hours of 9.30 and 11.30 are available for an additional cost of £35, this can be purchased now or added to your ticket at a later date. To purchase a ticket, please complete the form at http://tinyurl.com/mvu49s3, or contact 2017ipball@gmail.com should you wish to purchase more than two tickets for your firm/organisation. The deadline for purchasing tickets is 17 June 2017. For more information and updates on the IP ball, see the IP Ball Facebook page (http://www.facebook.com/theipball) and the IP Ball page on the Yellow Sheet blog (https://yellowsheet.wordpress.com/ip-ball/) in the coming months. We look forward to seeing you there! The IP Ball Committee

96 CIPA JOURNAL

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MAY 2017

www.cipa.org.uk

05/05/2017 08:29:44

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

Electronics

IT & Engineering

Patent Attorney

Qualiﬁed/Part Qualiﬁed - LDN/Southampton

Qualiﬁed - Worldwide

Part Qualiﬁed - Nationwide

Ref: 118671

Ref: 127340

Ref: 124315

You will be working with a specialist team of

A truly unique opportunity exists to work remotely

Are you a part/newly qualiﬁed Patent Attorney

electromechanical attorneys and design solicitors

as a Patent Attorney anywhere in the world. Maybe

considering your employment options and career

handling

contentious

you have an ambition to relocate, but securing

prospects?

design matters. Would you like to maximise your full

employment within your chosen country is difficult.

grown their business from 15 partners to 42 within

potential and achieve your long term career goals?

This top IP ﬁrm have Attorneys working globally

8 years. This success is largely due to the fantastic

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

in multiple destinations and are opening their ﬁrst

people within the organisation and the company’s

fantastic proven track record of delivering this. The

office in the UK this year. With offices throughout

commitment to training and developing their staff.

ﬁrm is fully committed to enabling you to achieve

the US and Germany great opportunities exist to

There is an open door to progression, not reliant on

your goals at the pace that works for you.

work oversees.

other people moving within the organisation.

Biotech & Biochemistry

Elec/Physics/Telecoms/Mech Eng

Chemistry

Part/Newly Qualiﬁed - London

Qualiﬁed - Birmingham

Qualiﬁed – London

Ref: 68693

Ref: 124305

Ref: 124268

Very

all

exciting

non-contentious

opportunity

and

focus

I am working with a ﬁrm that has

almost

Somewhat of an open remit exists In Birmingham

Qualiﬁed chemistry specialist shackled by constraints?

exclusively on contentious work within the

for Attorneys with high tech, physics, telecoms,

Seeking a more collaborative, autonomous working

biotechnology and pharmaceutical disciplines

electronics or mechanical engineering backgrounds.

environment? This international ﬁrm has a strong

by joining a world class leading practice led by a

You will work closely with the lead partner in the

presence in London as well as a solid reputation

renowned partner. Due to growth, opportunities

group and pro-actively contribute towards the

in Europe. An opportunity has now arisen for an

exist for those at newly qualiﬁed or ﬁnals standard

development of the group and of the business. The

Attorney specialising in chemical subject matter to

level. The ﬁrm has enjoyed some of the highest

successful candidate will also have the ability to

join its busy London office. A competitive salary and

growth and is widely applauded for its excellent

work directly with small, medium and large industrial

good promotional prospects will be on offer.

working environment

clients and universities in the UK and overseas.

Electronics/Engineering/Telecoms

Physics - Trainee Patent Attorney

Engineering & IT/Software

Senior Associate - London

Nationwide

Qualiﬁed – East Anglia

Ref: 120151

Ref: 124333

Ref: 120211

In a market where opportunities for electronics

Are you seeking a trainee Patent Attorney position

The Cambridge branch of this ﬁrst tier ﬁrm is in

Attorneys are plentiful, this role presents food for

with a well-respected intellectual property ﬁrm that

expansion mode and seeks a mid-level to senior

thought for those who are enthused at the prospect

has a proven track record of developing careers?

qualiﬁed Attorney with broad experience of either

of becoming Partner in the near future. This ﬁrm’s

Providing you have a degree in physics, I want to

mechanical engineering or electronics related subject

reputation is outstanding within this ﬁeld. Working

hear from you. I am working with a variety of ﬁrms

matter. Whilst there are extensive existing portfolios

with a client base containing cutting edge technology

throughout the UK seeking such individuals. Once

for you to work on, you will be provided with ample

corporations, you will gain the opportunity to

I understand your career motivations, I can help

support and encouragement to contribute to the

assist in a range of contentious activities including

advise the companies best equipped to introduce

continued development of the practice. Partnership

oppositions appeals and litigation support.

you to.

opportunities available.

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-pp97-G2_1-RHS.indd 97

Mob 07426 043744

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

05/05/2017 08:30:43

THE PINKS

RECRUITMENT

Taking care of your IP

Patent Attorney – Chemistry Patent Attorney – Physical Science BioCity Nottingham Office Adamson Jones is a successful firm of patent and trade mark attorneys, which has grown steadily from a single-practitioner firm to a team of nine patent attorneys. We recruit high calibre personnel and provide a level of service that consistently exceeds clients’ expectations. Our principal office is located within BioCity, Nottingham’s healthcare and bioscience innovation centre, close to the city centre. The working environment is modern, in the heart of a thriving scientific and business community. Our clients range from small start-ups and established private companies to multinational corporations. Our work is mainly for direct clients, but with a healthy mix of diverse incoming agency work.

We are looking for a recently-qualified or near-qualified patent attorney with a background in chemistry, to work with a broad range of medical and healthcare technologies from pharmaceutical chemistry to medical devices. We are also looking for a recently-qualified or near-qualified patent attorney with a background in physical science, to work with mechanical and electrical technologies, including medical devices. We work as a team, and are committed to excellence in the work that we do. We seek people who share those values: high calibre individuals with a record of academic achievement, who can contribute to the continuing growth of our business.

Our objective is continued steady growth over the coming years. We believe in treating people well, providing flexible working arrangements where appropriate, and when we find the right people we aim to retain them. Long-term prospects for those who join the firm are therefore excellent.

Do you see yourself at Adamson Jones? Send your CV and covering letter by email to careers@adamson-jones.co.uk

Nottingham

Leicester

London

X Call +44 (0)115 947 7977 X Email us careers@adamson-jones.co.uk X Visit us www.adamson-jones.co.uk

98 CIPA JOURNAL

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THE PINKS

RECRUITMENT

Quality career, quality coffee… WP Thompson is a full service IP firm with offices in Liverpool, London and Munich. Due to ongoing expansion we currently have vacancies in all disciplines for at least part qualified patent attorneys in both of our UK offices. Each position offers a competitive package including private healthcare and appropriate training where required, and will involve exposure to a wide range of direct-client and agency work covering all aspects of preparation and prosecution, and also contentious matters. If you would like to be involved in the ongoing expansion of the firm and apply for a position, or even just visit one of our offices for an informal chat and a coffee from one of our state-of-the-art-freshly-roasted-bean-handling-machines* or simply meet our current attorneys and trainees, in the first instance please contact: London – David Gill london@wpt.co.uk 020 7405 4442 Liverpool – Nick Manley liverpool@wpt.co.uk 0151 236 6688 *subject to availability

100 CIPA JOURNAL

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THE PINKS

RECRUITMENT

Patent Attorney CPA and/or EPA qualified | Bath

EXCELLENT REMUNERATION | BONUS SCHEME | HEALTH INSURANCE | FLEXIBLE WORKING ENVIRONMENT | RELOCATION ASSISTANCE

We are looking for a qualified patent attorney (although part-qualified candidates will be considered, dependent upon experience) with a background in, ideally, physics, electronics, software or telecoms who shares our ethos for exceptional client care. You will work closely as part of a team to create and protect IP for some of the most prestigious high-tech companies in the world. You will have excellent commercial acumen to complement your proven technical ability, a flexible attitude, and be able to demonstrate a willingness to contribute to the continuing growth of the business. The longterm prospects for the right person are excellent. For more information contact us: 01225 428877 Volume 46, number 5

REC-pp101-bryerlaw_1.indd 101

careers@bryerlaw.com MAY 2017

CIPA JOURNAL 101

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THE PINKS

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carpmaels.com

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THE PINKS

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Electronics Patent Attorney :LJLYUH 337 PZ H YHWPKS` NYV^PUN ÄYT ^P[O VѝJLZ PU @VYR HUK 5L^JHZ[SL >P[O HU PUJYLKPISL JSPLU[ SPZ[ HUK H O\NLS` L_WLYPLUJLK [LHT [OL ÄYT VќLYZ H \UPX\L VWWVY[\UP[` [V M\Y[OLY `V\Y JHYLLY ^P[OPU H Z\WWVY[P]L HUK MYPLUKS` LU]PYVUTLU[ >L OH]L H UL^ VWLUPUN MVY H ÄUHSPZ[ UL^S` X\HSPÄLK ,SLJ[YVUPJZ :VM[^HYL WH[LU[ H[[VYUL` ^P[O ÄYZ[ JSHZZ WYVMLZZPVUHS HUK PU[LYWLYZVUHS ZRPSSZ The Opportunity )\PSK VU HU LZ[HISPZOLK KVTLZ[PJ HUK PU[LYUH[PVUHS JSPLU[ IHZL +L]LSVW H WYHJ[PJL [OH[ KVLZ UV[ YLS` VU ]VS\TL agency work 6^U H OV\ZL YH[OLY [OHU YLU[ H ÅH[ =HZ[S` YLK\JL [PTL ZWLU[ JVTT\[PUN LHJO KH` -\SS Z\WWVY[ HUK [YHPUPUN ^PSS IL NP]LU [V [OVZL Z[PSS ZLLRPUN [V X\HSPM` 1VPU H ÄYT ^OLYL `V\ JHU THRL HU PTWHJ[

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Patent Attorney – London >L HYL SVVRPUN [V YLJY\P[ H X\HSPÄLK WH[LU[ H[[VYUL` MVY V\Y 3VUKVU VɉJL" LP[OLY ZVTLVUL HTIP[PV\Z HUK SVVRPUN [V QVPU H ZTHSSLY ÄYT VY ZVTLVUL ^OV Q\Z[ ^HU[Z [V JVTL PU HUK KV OPNO X\HSP[` ^VYR ^P[OV\[ OH]PUN [V ^VYY` HIV\[ I\ZPULZZ KL]LSVWTLU[ .P]LU [OL ÄYT»Z JSPLU[ IHZL [OPZ WLYZVU»Z IHJRNYV\UK JV\SK IL PU HU` ÄLSK VM WO`ZPJZ LUNPULLYPUN VY JOLTPZ[Y` HUK [OL` KVU»[ ULJLZZHYPS` OH]L [V ^VYR PU 3VUKVU KH`Z H ^LLR I\[ JV\SK ^VYR WHY[ VM [OL ^LLR PU HU VɉJL ULHY [OLPY OVTL 07 PZ H ÄYT VM H[[VYUL`Z HUK [YHPULLZ ^P[O VɉJLZ HJYVZZ ,HZ[ (UNSPH HUK 3VUKVU >L HYL H ^LSS LZ[HISPZOLK Z\JJLZZM\S HUK Z[HISL ÄYT [OH[ OHZ ZLLU Z[LHK` NYV^[O V]LY [OL WHZ[ `LHYZ ZPUJL PUJLW[PVU ;V KPZJ\ZZ [OPZ WVZP[PVU M\Y[OLY WSLHZL JVU[HJ[ LK^HYK QVULZ'O\U[SL`ZWLUJL JV \R V\Y YL[HPULK YLJY\P[LY www.ip21.co.uk

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“

We don’t fill these pages with generic job descriptions. We listen to what you want and make it happen. Daniel John, Director

”

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

3-IBC-LSG_1.indd 3

020 7776 8966

info@ip-support.co.uk

04/05/2017 11:42:46

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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04/05/2017 11:43:06