CIPA Journal, June 2017 by CIPA Journal

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

June 2017 / Volume 46 / Number 6

PEB Examinations Report of the 2016 Qualifying Examination Candidate Survey and the PEB's response

The Chartered Institute of Patent Attorneys

Professional development framework for CPAs

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IPO formalities and register administration Glenn Rose’Meyer

US update: PTAB “reversals” and patent quality Finnegan

Building the UK's Industrial Strategy CIPA’s response

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

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We are fast becoming the market leader... ...which is why we have been appointed to exclusively partner with a number of companies in their search for talent

www.ip-support.co.uk

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020 7776 8966

info@ip-support.co.uk

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Contents 27-35 14-25

UP FRONT

ARTICLES

EDUCATION

54 51

Institute events UP and UPC webinars

54 60

Institute events Life Sciences Conference

Education update

Georgina Sear 4

Timothy P. McAnulty and Kevin D. Rodkey

Chief Executive’s report

Lee Davies 6

Council Minutes

US update: insight on PTAB “reversals”

Lee Davies

US update: enhanced patent quality initiatives

Jessica L.A. Marks and Timothy P. McAnulty

NEWS

PERSONAL

The not-so-secret diary

Andrea Brewster SIPO – accelerated patent examination

Pippa Allen

You are never alone

Lee Davies

40 58 61

Patents Committee 11

16 18 24

DECISIONS

Education & Professional Standards Committee

THE PINKS

Constitution of the PEB Qualifying Examinations

Candidate Survey Report

Announcements Letter to the Editor

Professional Development

Foundation Certificate Exams

EPO decisions

Bristows Patent decisions

Beck Greener IPO decisions

Barker Brettell

Qualifying Examinations

PEB Response to Survey 25

Heather Lane 62 62

Building our Industrial Strategy

CIPA’s response to Green Paper 14

CITMA Summer Reception A Night in Neverland Going Remote

Trade marks and other IP

63 64 67 68

Recruitment Courses and events International Announcements

Bird & Bird

Georgina Sear 26

IPO formalities and register administration

Glenn Rose’Meyer

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

Alasdair Poore Sean Gilday; Jeremy Holmes 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 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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Education update

n this edition of the Journal there is a flurry of activity reported from the Education team and from the Patent Examination Board (PEB) in particular. In addition to a reminder about the forthcoming CIPA Litigation Skills Course on page 55, booking is currently open for those wishing to register for the CIPA Introductory Course in Patent Administration. The closing date for receipt of completed registration forms for this course is Monday 3 July. The Qualifying Examination registration period is from 30 May 2017 to Friday 28 July 2017. The PEB has now published its Constitution [see page 16]. The PEB was initially accredited in 2013 under the terms of a Constitution, which it has slightly modified during its threeyear existence. Under the terms of the Constitution the PEB is required to undertake an annual self-assessment and publish a report. The report covering the period ending in March 2017 is now available on the PEB website1. The PEB is in the process of seeking reaccreditation with IPReg for the Foundation Certificate examinations. The requirements are set out in the IPReg Accreditation Handbook2. The PEB is aiming to

submit its accreditation request in the late summer, and has already held positive meetings with IPReg about this process. Any changes will affect Foundation Certificate examinations from October 2018 onwards and students will be issued with information about any changes well in advance of the October 2018 examinations. This reaccreditation requires the PEB to submit, as well as its self-assessment report, an external assurance report from the Quality Assurance Agency (QAA)3. This external assurance process was last undertaken in 2015. The 2017 process will be complete in June 2017 and the report will be published by the PEB. The 2015 report can be found on the PEB website4. Finally, on issues that impact students directly.

Georgina Sear

the PEB has commissioned a review of the results of all three student surveys (2014, 2015 and 2016) in order to review progress and/or identify persistent issues that need addressing. FD4 (P6) Examination Review Project: During 2016-2017 IPReg commissioned a review into the traditionally low and variable pass rates for FD4(P6). Both CIPA and the PEB were represented on the steering group of this project. IPReg has just published the report on its website5. The PEB and CIPA are currently considering the report, and will be communicating with the wider community on any actions they plan to undertake as a result of the suggestions made. Georgina Sear, Head of Education

Student Survey: The PEB was delighted with the high response rate to its annual Qualifying Examination Student Survey. It has considered all the comments, and has for the first time produced a response to the points raised [see pages 18 and 24]. Part of the PEB’s upcoming work is to consider implementing some of the recommendations for improvements that have been made. Additionally,

References 1. See documents at www.cipa.org.uk/patent-examination-board/communications/general-communications 2. See documents at http://ipreg.org.uk/pro/getting-qualified/examinations-and-exemptions/ipreg-accreditation-handbook 3. See documents at www.cipa.org.uk/patent-examination-board/communications/general-communications 4. See documents at www.cipa.org.uk/patent-examination-board/communications/general-communications 5. http://ipreg.org.uk/fd4-p6-infringement-and-validity-exam-research-report

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Chief Executive’s report

t is time to bid a sad farewell to the Institute’s home for the last 15 years, 95 Chancery Lane. When I arrived at CIPA in February 2012, I was struck by the fantastic facilities available for members, in the shape of the Hall, the Library and the Members’ Room. CIPA is one of those professional bodies that enjoys a high level of member engagement and this includes many members visiting the office to take advantage of the premises, from wellattended seminars in the Hall, through to individual meetings or just a bit of quiet time in the Members’ Room. I have to say, however, that I was less than taken with the back office and the facilities for staff. Having come from a large, open plan office environment, I found the lack of flexibility in the office layout somewhat awkward. CIPA is a small organisation, yet the compartmentalised office tends towards a silo working style and does not lend itself towards a more open and collaborative culture. When Council made the decision to look for new premises, rather than seek to extend the lease beyond August 2017, I was excited by the prospect of finding somewhere that would retain or better the facilities available to members and offer significant improvements for staff. Two weeks ago, I dusted off the heavyduty press; which had sat unused on the window sill of my office since the day I arrived, and duly affixed the Institute’s seal to the lease of Halton House, Holborn. Halton House is a recently refurbished suite of offices a little west of Chancery Lane tube station. With 2,700 square feet of open plan office space and an additional 230 square feet of storage in the basement, the premises are 1,500 square feet smaller than the total space at 95 Chancery Lane, but being open plan means that it has full flexibility in layout. I hope to be able to create the equivalent to the Hall, a meeting space similar to the

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Library and a space for members to meet Members’ Room, with these being able to be opened out to provide a conference facility for up to 100 delegates. If all things go to plan, we should be moving offices towards the end of July. Whilst it is just a few hundred yards to the new office, there will be considerable disruption for staff. We will, of course, try to keep disruption for members to an absolute minimum, but your patience and understanding during the move will be very much appreciated. You should be able to contact staff by email and by telephone throughout the move. Plans are in progress for a welcome event for members and will be publicised once we have a fixed moving in date.

Bye-laws review It is with a real sense of disappointment that I have to report that we are yet to receive a response from the Privy Council to our proposals to amend the Bye-laws. I am told that the period of purdah in the lead up to the General Election is likely to delay progress, as some government departments interpret purdah very strictly whilst others will continue working on matters deemed to be noncontroversial. There are consequences for CIPA’s governance and this also means that our plans to introduce new categories of membership for European Patent Attorneys and paralegal patent administrators will be delayed. At its meeting in June, Council will consider the situation. I will be recommending that we schedule an AGM under the current Bye-laws for late September or early October of this year. This will allow Tony Rollins to serve the extended term as President that he understood he was taking on and for Stephen Jones to make the transition from Vice-President to President. We will then need to review the draft Bye-laws currently residing with the Privy Council

and make amended plans for transition. I still hope to be in a position to bring in the amended Bye-laws in time for the 2018 membership year, but this is entirely dependent on the Privy Council.

Legal Services Board I thought it might be helpful to share with members the outcomes of a meeting I had recently with Neil Buckley, Chief Executive of the Legal Services Board (LSB). Doctor Helen Phillips, Chair of Chesterfield Royal NHS Foundation Trust and a member of the Sheffield Business School Advisory Board, has become the interim Chair of the LSB, following Sir Michael Pitt’s resignation. We thank Sir Mike for his leadership of the LSB and look forward to working with Helen in the coming months as the LSB begins the process of appointing a new permanent Chair. The LSB is reviewing and updating its Regulatory Standards Framework, with consultancy support from KPMG. The LSB is considering a regulatory framework based on a proportional approach to risk.

Doctor Helen Phillips is the Interim Chair of the Legal Services Board.

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A formal consultation will be launched in June. Related to this, the LSB is reviewing and updating its Internal Governance Rules (IGRs), prompted by a complaint from the Solicitors Regulation Authority that it is being unduly influenced by the Law Society and that the Law Society was failing to differentiate between its representative role as a professional body and its regulatory role as the approved regulator1. The Competition and Markets Authority (CMA) has launched an Implementation Board to oversee the action plan arising out of its market study on the legal sector. The work strands are: •

•

Action to deliver a step change in standards of transparency to help consumers (i) to understand the price and service they will receive, what redress is available and the regulatory status of their provider and (ii) to compare providers. Promote the use of independent feedback platforms to help consumers to understand the quality of service

•

COUNCIL • COMMITTEE

offered by competing providers. Regulators should provide guidance to providers on how they should engage with public reviews. To facilitate the development of a dynamic intermediary market through making data more accessible to comparison tools and other intermediaries. Development of a consumer education hub.

IPReg has been asked to submit its action plan in respect of these work strands by the end of June. The CMA is particularly keen to hear the views of regulators who

see a distinction between business-tobusiness legal services provision and business-to-consumer legal services provision2. The LSB has published its Business Plan for 2017/18. The emphasis for the LSB will be on the continued promotion of access to legal services, pursuing greater transparency and data collection, understanding the issues relating to standards of education and training, and maintaining its focus on the need for independence of regulation from representative interests3. Lee Davies, Chief Executive

References 1. www.legalservicesboard.org.uk/what_we_do/investigations.htm 2. www.legalservicesboard.org.uk/news_publications/LSB_News/PDF/2017/20170419_LSB_ Responds_To_The_CMAs_Legal_Services_Market_Study.html 3. www.legalservicesboard.org.uk/news_publications/publications/pdf/2017/ Business%20Plan%20201718.pdf

SIPO – accelerated patent examination SIPO (the Chinese State Intellectual Property Office) issued a consultation on proposals for accelerated examination of patent proceedings. The IP attaché at the British Embassy in Beijing kindly offered to submit brief comments from CIPA's Patents Committee, and the following has been sent as a result.

IPA welcomes SIPO’s proposal for accelerated prosecution and re-examination/ invalidation. In prosecution matters a procedure for reasoned acceleration with clear timescales is of real benefit to applicants, and the specific reason of potential infringement is very important. It is important that the request can be made at any time, as commercial requirements can change very quickly.

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In re-examination/invalidity matters the potential for acceleration is also an essential feature although we believe that all parties to the matter should be consulted to ensure fairness and avoid abuse of procedure. However, we believe that acceleration measures should be equivalent before all patent offices, and we note that unlike most jurisdictions, preferred treatment is available in China for local as against overseas businesses. The PPH is a very helpful scheme but does

not provide an equivalent opportunity. We believe that both legally and procedurally the provisions for local and overseas businesses obtaining acceleration should be identical, and indeed feel that there is a risk that other national offices may otherwise follow suit in providing differential treatment, which would of course disadvantage Chinese businesses overseas. Prepared by Gwilym Roberts, CIPA’s Patents Committee. JUNE 2017

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Council Minutes Minutes of the Council meeting held on Wednesday 5 April, 2017 at 14:30.

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

Item 2: Minutes 72/17: The Minutes of the meeting held on Wednesday, 3 March 2017 were approved following amendment. 73/17: From minute 48/17. Bob Ackroyd questioned the accuracy of the announcement of a Special General Meeting to consider the Bye-laws that had gone out in the most recent edition of the Newsletter. Lee Davies thanked Bob for bringing this to his attention and said that he had not yet completed the announcement, which was still in draft form, and that he would check what had been sent out in the Newsletter and make any necessary correction. 74/17: From minute 52/17. Tony Rollins said that he would ask Alicia Instone to update Council on CIPA’s position on unregistered designs at the May meeting of Council. 75/17: From minute 54/17. Tony Rollins advised Council that, on the subject of IPReg’s vires to regulate in Scotland and 6

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Northern Ireland, he had been working on a draft briefing paper for Counsel which he was now in a positon to share with Council. Tony added that he would welcome feedback from members of Council on the briefing paper. Tony advised Council that CITMA did not feel the need to join with CIPA in obtaining Counsel’s opinion. Lee Davies added that he was aware that a number of complainants were concerned about the way their complaints about an attorney in Scotland had been handled by IPReg and that one of the complainants had challenged CIPA, as the Approved Regulator, on IPReg’s vires to regulate in Scotland. Council recognised that it had received assurances from IPReg on its vires to regulate in Scotland and Northern Ireland but agreed, given the challenge to this statement from the complainant, that it would be appropriate for CIPA, as the Approved Regulator, to seek Counsel’s opinion. Action: Tony Rollins to forward the draft briefing paper for Counsel to members of Council for comments. 76/17: From minute 56/17. John Brown asked if the Exploitation Committee had met to consider CIPA’s response to the Government’s consultation ‘Building our Industrial Strategy’. Catriona Hammer advised that Mike Barlow was leading the Exploitation Committee’s work on the consultation response and that a meeting had been scheduled to consider the response before the deadline of 17 April 2017. Lee Davies added that the Exploitation Committee had already been granted the power to act on behalf of Council and that this was recorded in minute 59/17.

77/17: From minute 69/17. In response to a question from Tony Rollins, Lee Davies apologised that he had not yet been able to arrange a date for Council to have a planning day to refresh the Strategic Plan and said that he would liaise with the Officers on potential dates before offering options to Council.

Item 3: Conflicts of interest 78/17: There were no conflicts of interest. Lee Davies presented a draft Register of Interests to Council, which he had prepared following best practice in similar membership organisations. Lee explained that the Register of Interests was required for the process of external audit and asked members of Council to send him any comments or suggestions for improvements. Action: Members of Council to send Lee Davies their comments or suggestions for improving the proposed Register of Interests. Item 4: Brexit 79/17: Tony Rollins informed Council that he had had a very positive meeting with the new IP Minister, Jo Johnson, but that sadly the meeting had been cut short when the Minister was called to vote in parliament. Tony said that the meeting had been largely unstructured and that some parties had used it as a forum to resurrect issues such as the criminalisation of design rights infringement. Tony added that the IPO was due to hold a meeting on the exhaustion of IP rights and that Catriona Hammer would represent CIPA. Tony advised Council that he had met with Margot Fröhlinger, who had expressed the concern that any further delay in ratification of the www.cipa.org.uk

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UPC Agreement would mean that the timetable set out by the Preparatory Committee would not be met. Tony said that he intended to follow up his meeting with the IP Minister with a letter setting out CIPA’s position on ratification. Action: Tony Rollins to write to the IP Minister expressing CIPA’s continuing support for the UK’s work on ratification. Matt Dixon raised the question of double patenting, saying that he understood that the IPO was still opposed but that there were good reasons to offer such a provision to allow the filing of a UK national application alongside a Unitary Patent to protect rights after Brexit. Matt added that, with Germany reversing its positon on double patenting, it was important to allow UK businesses to keep all options open during and after the Brexit negotiations. Tony Rollins said that the IP Federation was due to review its position on double patenting at its next Council meeting. Matt Dixon said that it was important that the voices of small businesses were heard alongside those of major industries and that CIPA was well placed to bring in the views of smaller companies. 80/17: Neil Lampert informed Council that he had received a research proposal from Dr Georg von Graevenitz and Dr Luke McDonagh in response to CIPA expressing an interest in developing an evidence base which will help make the case to the government for measures to support the needs and interests of UK patent attorneys. Tony Rollins asked Neil to circulate the research proposal to members of Council for consideration at the May Council meeting. Tony suggested that it would be helpful if Council members provide initial feedback via email over the next two weeks on the general principles of the research proposal and on the specific question of whether it provided value for money. Action: Neil Lampert to circulate the research proposal to members of Council. Volume 46, number 6

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Item 5: Visit to Taiwan, Japan and South Korea 81/17: Richard Mair provided Council with a report on the visit to Taiwan, Japan and South Korea. Richard said that the visit to Taiwan had included a seminar at the Taiwan Tech, the Taiwanese equivalent to Queen Mary University of London. Richard informed Council that His Honour Judge Hacon and Andy Bartlett of the IPO had joined the delegation for the Japanese leg of the visit, where seminars were held in Tokyo and Osaka. Richard added that the reception at the British Embassy in Tokyo had been particularly well-received by members of the Japanese Patent Attorney Association (JPAA) and that the Ambassador had been interested in the impact of Brexit. Richard thanked Richard Goddard, 2nd Vice-President of CITMA, for representing CITMA in Japan and thanked CITMA for agreeing to contribute towards the Japanese leg of the visit. Richard advised Council that Andy Bartlett had stayed on for the visit to South Korea and contributed to a seminar for the Korean Patent Attorney Association (KPAA), which was followed by a reception at Aston Hall in the British Embassy. Tony Rollins said that he had been invited to be interviewed by the Korean Financial News and that he had received an all-expenses paid invitation to speak at the KPAA annual conference in May. Tony proposed a vote of thanks to Richard Mair and all those involved in arranging the visit to Taiwan, Japan and South Korea, which was passed by acclamation. On the subject of other overseas visits, Council agreed with Tony Rollins that it was important to focus effort on the United States. Tony suggested that it might be possible to plan visits around the AIPLA Spring Meeting and Annual Meeting, but that it was probably too late to arrange anything for the 2017 Spring Meeting. Tony advised Council that the International Liaison Committee was in favour of increasing CIPA’s presence in the United States and that he and Catriona Hammer would put together some initial

proposals for visits to the East Coast, West Coast and Mid-West, to coincide with AIPLA events. Tony said that he and Catriona would make plans for the AIPLA Annual Meeting in October and bring these back to Council.

Item 6: Regulatory issues 82/17: Tony Rollins informed Council that he had heard nothing more on the recruitment of a Chief Executive to succeed Ann Wright since the last Approved Regulators’ Forum (ARF) meeting, when it was suggested that IPReg was considering separating out the Registrar’s responsibilities from those of the Chief Executive. Lee Davies added that he was not aware of the Chief Executive’s position being advertised. Stephen Jones said that he had been giving the subject of the keeping of the Register some consideration and was concerned that IPReg seemed to be failing to deliver on what was a relatively straightforward process. Vicki Salmon said that the recent complaint in Scotland had highlighted failings in the maintenance of the register, where the Register of Patent Attorneys on the IPReg website had been retrospectively amended in manuscript. Rob Jackson said that CIPA had a statutory responsibility to maintain the Register and that he was concerned to hear that the Register was not currently available on the IPReg website. Tony Rollins informed Council that Stephen Jones had raised with him a proposal to review the current arrangements for delegating CIPA’s regulatory responsibilities to IPReg. Stephen advised Council that he envisaged a small working group being set up to consider CIPA’s statutory responsibilities under the Legal Services Act 2007 and the Copyright, Designs and Patents Act 1988 and to advise Council on the effectiveness of the Delegation Agreement in devolving these responsibilities to IPReg. Stephen added that the working group would consider the advice given by Counsel in relation to IPReg’s vires to regulate in Scotland and Northern Ireland and that the working group’s brief should JUNE 2017

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include scrutiny of the level of practising fees levied by IPReg in relation to the services provided. Rob Jackson reminded Council that, whilst the Legal Services Act described regulation in terms of the reserved legal activities, the scope of regulation was much broader than those activities and that any review should reflect this. Action: Stephen Jones to establish a small working group to examine the effectiveness of the current regulatory arrangements. Item 7: Office relocation 83/17: Lee Davies informed Council that he was now in the position to recommend to Council that it considers taking a lease on new premises at Halton House in Holborn to provide a head office for CIPA following the expiry of the lease on 95 Chancery Lane in August 2017. Lee advised Council that Halton House had been fully refurbished and was ready for fit-out. Lee reported that the accommodation was just under 2,700ft2 of open plan office space, with an additional 230ft2 of storage in the basement. Lee said that, whilst this was approximately 1,500ft2 smaller than the total space at Chancery Lane, being open plan meant there was greater flexibility in layout and that it was possible to create meeting spaces equivalent to the Hall, Library and Members’ Room and sufficient workspace for staff. Lee advised Council that he had visited 45 potential offices and provided the Internal Governance Committee (IGC) with a shortlist of three: Halton House (Holborn), Montague Street (near the British Museum) and Queens House (Lincoln’s Inn). Lee said that members of the IGC had visited all three properties for second viewings. Queens House had been ruled out due to the anticipated amount of work required to make the T-shape floor configuration workable. Provisional offers were made on Halton House and Montague Street, to secure Heads of Terms from the landlords for each property. 8

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The terms offered by the landlord for Montague Street proved to be unacceptable, primarily because the landlord was offering a six-year lease, so that the new lease would run conterminously with that of the publishing house which occupies the adjacent building, and the IGC considered this to be insufficient security given the cost of fitting out the premises. The IGC approved the Heads of Terms for Halton House, subject to the landlord agreeing to relax the requirement under the terms of alienation to allow shared possession only with group companies and subject to the guideline of a maximum occupancy of 40 people being removed. Lee advised Council that both conditions had been met and that he had appointed Shoosmiths to act for CIPA on finalising the lease and the related legal work. Lee explained to Council that the financial position was challenging but achievable. Lee said that the IGC had originally set aside £100k of CIPA’s investment reserve for the move and that this, together with £210k derived from the 15 months’ rent-free period from the commencement of the lease, should adequately cover the relocation. Lee said that he was yet to appoint a fit-out company, but had secured three competitive tenders which placed costs at between £90k and £110k. Lee added that he estimated the cost of IT and related services to be in the region of £25k and removal costs to be approximately £25k. Lee said that CIPA would be required to pay £80k to cover the rent deposit and that the dilapidations estimate for 95 Chancery Lane was approximately £60k. Lee said that this provided costs of approximately £290k, leaving a contingency budget of £20k. Lee advised Council that, as the saving in rent takes place over 15 months and the dilapidations work, rent deposit fit-out and associated costs are all upfront, this would present CIPA with a significant cashflow challenge. Lee recommended that Council approve a larger call on CIPA’s reserves to ensure cashflow is preserved during the relocation and

early years of occupation, with a reserves recovery plan to be put in place by the IGC, based on future savings. Lee recommended that Council approve completion of the lease negotiations on Halton House and to agree to a project timeline which would see occupation taking place by mid-July at the latest. Paul Cole formally proposed the recommendations to Council, which were seconded by John Brown. The proposals were approved passed nem con. In relation to the design and decoration of the new office, Council had a brief discussion about brand and identity, with a number of members of Council making observations about the traditional use of the Three Graces as a logo and embellishment and the more recent introduction of a Coat of Arms. Bob Ackroyd suggested that the use of both introduced a degree of brand confusion to CIPA’s public image. Matt Dixon said that he was still unclear about whether or not there was proof of ownership of the IP for the Three Graces. Stephen Jones suggested that Neil Lampert, as Head of Media and PR, should use the office relocation as an opportunity to think about CIPA’s branding and image. Actions: Lee Davies to instruct Shoosmiths to complete the lease negotiations with the landlord’s solicitor and to put in place a project plan to complete the relocation by mid-July 2017. Neil Lampert to consider setting up a small working group to look at CIPA’s brand and public image. Item 8: IPO and EPO matters 84/17: Tony Rollins raised the issue of a number of members discussing CIPA’s position on personnel issues at the EPO on the Institute’s LinkedIn site. Tim Jackson said that he had contributed to the LinkedIn discussion, commenting that CIPA does regularly lobby the IPO on EPO issues and has previously made the point that the Boards of Appeal need adequate resources to do the job. Tony Rollins added that he had made that point to President Battistelli when www.cipa.org.uk

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representatives from CIPA met with the senior staff of the EPO in October 2016. Council reaffirmed its position that it could not get involved directly in industrial relations matters at the EPO, but could lobby the EPO when there was an impact on the services available to CIPA’s members. Action: Alasdair Poore to restate CIPA’s position in the Journal. Council agree to a proposal from Tony Rollins that Francis Gurry, the Director General of WIPO, be invited to address a future meeting of Council. Action: Lee Davies to draft a letter to Francis Gurry, inviting him to address Council. Item 9: Committees and committee reports 85/17: Congress Steering Committee John Brown advised Council that the Congress Steering Committee was in the final stages of completing the programme. John said that he was delighted to report that 42 delegates had already registered through the ‘early bird’ offer, which was significantly more than at the same time in previous years. In response to a question from Richard Mair about offering a reduced delegate rate for the Korean delegation coming to the UK in September, John Brown said that he and Lee Davies would discuss the matter outside of the Council meeting and that he would consider offering a reduced delegate rate so long as it did not have a negative impact on the budget for Congress. 86/17: Patents Committee Council noted the report from the Patents Committee. In relation to item 4 in the minutes of the Patent Committee, John Brown drew Council’s attention to a recent blog post by President Battistelli, where the President highlighted developments in the work on substantive patent law harmonisation and made a reference to industry representatives being close to Volume 46, number 6

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having advanced proposals in fields such as a grace period and prior user rights. John added that the President stated that positive discussions in Seville gave rise to hopes of progress being made during the User Symposium, which will take place on 20 June at the EPO. John Brown observed that the interests of industry in respect of substantive patent law harmonisation may not align with the interests of private practice and the position taken by CIPA, particularly with regard to the grace period. Tony Rollins said that he had outlined to the Patents Committee the conflicts between prior user rights and grace periods and the distinction between the US and Europe. Tony added that he recognised that this was a complex and sensitive discussion and that he had access to information that was not yet in the public domain. Tony said that a document was due to be published in May and CIPA would be able to confirm its position then. 87/17: Media and PR Committee Council noted the report from the Media and PR Committee. 88/17: International Liaison Committee Council noted the report from the International Liaison Committee and approved the appointment of Julie BarrettMajor, James Pitchford, Daniel Chew and Chong-Yee Khoo to the Committee. 89/17: Education and Professional Standards Committee Council noted the report from the Education and Professional Standards Committee and approved the Committee’s Professional Development Framework [see page 14]. John Brown advised Simone Ferrara to rephrase the final sentence of the document, which contained too many negatives. Rob Jackson suggested that the term ‘excellent time-management skills’ be amended to ‘appropriate time-management skills’. Simone said that he would amend the document as suggested and liaise with Lee Davies and Neil Lampert on publishing the Framework. Council

thanked Simone and the Education and Professional Standards Committee for an excellent piece of work. 90/17: Litigation Committee Council noted the report from the Litigation Committee. Item 10: Officers’ reports 91/17: Council noted the Officers’ reports. Item 11: Chief Executive’s Report 92/17: Council noted the Chief Executive’s report. Item 12: Applications for election 93/17: Fellows Council approved the following first time Fellow applications: Gregory Carty; Russell James Woolley; William Burrell; Katerine Victoria Barker; Michael Nielsen; Shu Yang; Gregory St Clair Jones; Michael Peter Vallance; Michael Ewan Pedley. Council approved the following second time Fellow applications: Elizabeth Moore; Jonathan Paul Moodie; Emily Teresa Weal. 94/17: Associate Members Council approved the following first time Associate membership application: James Mitchiner. Council approved the following second time Associate membership applications: Bethan Hopewell; Nicholas Barrow. 95/17: Students Council approved the following Student Membership applications: Joseph Rees Goldman; Sean Sullivan; Sarah Waterman; Caitlin Morris; Rufina Steffi Anthony Sesuraj; James Dalrymple; John Wells. Item 13: Resignations, etc 96/17: Council noted the report on resignations. Lee Davies advised Council that 92% of members had renewed their membership for 2017 and that final reminders were being prepared to be sent out to those who had not yet renewed. Council was saddened to learn of the death of John Stuart Macara, a Fellow of CIPA. [See May [2017] CIPA 72] JUNE 2017

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Item 14: Any other business 97/17: Council accepted Bob Ackroyd’s formal notice of his intention to stand down as a member of Council on 21 May 2017 and thanked him for his contribution to the work of Council. 98/17: Lee Davies advised Council that the 2017 EQEs in Walsall had been a success and that the venue had worked very well. Lee added that, despite evidence to the contrary, the EQE secretariat had taken the view that providing two examination halls in the same venue was not a satisfactory arrangement and that there was talk of a potential cap on numbers sitting the examinations in the UK in 2018. Lee said that he and Chris Mercer had met with the IPO to consider the feedback received from the EQE secretariat and that the IPO would make the case for all those who wished to sit the examinations in the UK being allowed to do so. Tony Rollins said that he would raise the matter directly with President Battistelli if Council deemed it appropriate to do so. Action: Lee Davies and Chris Mercer to continue to liaise with the IPO on the venue for the 2018 EQEs and advise Council accordingly. 99/17: Council noted the Supreme Court decision to grant permission to appeal in the Warner-Lambert v Actavis case and asked the Life Sciences Committee and the Litigation Committee to consider what, if any, contribution CIPA should make. 100/17: Lee Davies informed Council that he had still not received a response from the Privy Council and that the earliest a General Meeting could be held for the members to approve the Byelaws would be after the Council meeting in June, assuming a positive response was forthcoming before the May meeting of Council. Lee added that, as the transitional provisions took effect from 1 October 2017, he was becoming nervous that there may not be sufficient 10

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time to present the Bye-laws to the members and receive formal approval from the Privy Council. Tony Rollins said that he had been reflecting on his experience as President and that he had formed the view that the existing model of President, VicePresident, Immediate Past President and Honorary Secretary did not always mean that there were sufficient Officers to meet all of CIPA’s commitments, particularly during busy periods such as had been encountered following the result of the UK referendum on leaving the EU. Tony added that one of his biggest challenges had been coming to grips with the amount of corporate knowledge required to be President and, looking at the models used in other bodies such as CITMA, asked Council if it thought CIPA had the balance right. Tony said that he saw value in creating an additional Officer role to reinforce the presidential team. Richard Mair said that, from the perspective of the International Liaison Committee, having another Officer to support both overseas visits and delegations coming to the UK would be beneficial. Rob Jackson said that, whilst he recognised the increasing pressures on the Officers, creating another VicePresident or Deputy President could devalue the role. Bob Ackroyd said that he was concerned that this was being raised so late in the process of the Bye-laws review, with the Privy Council currently considering the proposed amendments to the Bye-laws, and reminded Council that alternative models had been considered by the Bye-laws Working Group and Council and that these had been rejected in favour of the currently-proposed model. Tony Rollins said that he recognised that he was bringing forward a proposal late in the day but that he wanted to give Council the time to consider his thoughts whilst the Bye-laws were in draft form. Matt Dixon observed that CIPA had a number of Past Presidents who were active in Council and in the profession in general and suggested that more use could be made of Past Presidents without amending the Bye-laws. Bob Ackroyd

added that Council had agreed to amend the Bye-laws so that there was automatic progression from Vice-President to President, to allow those considering seeking election to plan their personal and professional lives, and that any change now would disrupt this provision. Catriona Hammer said that it would be possible to introduce an addition role to support the Officers that was not part of the presidential succession, such is the case with the Honorary Secretary. Stephen Jones asked Council if it felt it was worth Tony Rollins and Lee Davies doing further work on this and bringing a proposal to the May meeting of Council. Bob Ackroyd reiterated his previous point that Council had already considered and rejected alternative models and that he could not see why Council should be revisiting the decision at this time. John Brown agreed, adding that any change to the presidential team was a serious matter and needed to be properly thought through. John suggested that this should form part of Council’s strategic planning meeting. Tony Rollins thanked members of Council for their views and said that he agreed with John Brown’s suggestion that Council should consider this at its next strategic planning meeting. 101/17: Tim Roberts asked Council to consider a paper he had drafted in conjunction with a number of members of the Life Sciences Committee on the Nagoya Protocol. Tim said that he wished to publish the paper in the Journal but recognised that there were a number of contentious points which might not have the full support of Council. As there was insufficient time for the paper to be considered at this meeting, Tim asked members of Council to provide him with written feedback so that he could redraft the paper. [See May [2017] CIPA 34] Item 15: Date of next meeting 102/17: Wednesday 3 May, 2017. The President closed the meeting at 17:28 Lee Davies, Chief Executive www.cipa.org.uk

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INDUSTRIAL STRATEGY

Building our Industrial Strategy CIPA’s response to HMG Green Paper ‘Building our Industrial Strategy’, submitted 11 April 2017

IPA welcomes HM Government’s initiative in carrying out a holistic consultation into what the United Kingdom’s future industrial strategy should be. If the nation and its citizens are to continue to enjoy the benefits of an affluent, tolerant and equal society, then having a strategy that recognises and confronts the associated industrial challenges in a targeted and realistic way is, we believe, a key enabler of long-term success. Indeed, it is becoming the more so as our international competitors continue to industrialise and provide ever-fiercer competition based on the thoughtful deployment of knowledge assets and intellectual property rights. In this respect, we would like to begin by making a general point. The green paper at the outset refers to the decision made on 23 June 2016 to leave the European Union. Whilst this is an important background consideration and clearly a complicating factor, we believe that most of the issues identified in the paper are particular to the United Kingdom and existed before this decision was made. And we think they would have continued to exist today irrespective of the outcome of that event. At the same time, it is clear that this decision has proven to be politically divisive and will continue to remain so for the foreseeable future. Consequently, we believe there is a real risk that short-term progress on addressing any conclusions reached by this consultation will be impeded and at worst become subject to political stasis. As evidence in the paper shows, many of the United Kingdom’s industrial shortcomings have been long in the making and will only be solved by an approach predicated on a world-class education system; continued access to an international skills-base and economic incentives underpinned by longlasting political consensus.

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Submissions As a representative body of regulated individuals practising intellectual property law and having significant day-to-day contact with inventors and technology entrepreneurs from all levels of society, CIPA welcomes the Government’s desire to further maximise the incentives created by the intellectual property system as part of this strategy. In this respect, we believe that the Government is starting from a position grounded in a track-record of significant achievements including: •

•

A world-class national Intellectual Property Office (IPO) which is attuned to the needs of inventors, designers and content creators. Tax-incentives for those developing technology-based offerings to the market in the form of R&D credits and corporation tax relief (Patent Box). The provision of a user-friendly and coherent body of online pedagogic material targeted at all ages and levels of understanding. Significant and continuing outreach work at both the national and international level explaining how the system functions and training the trainers. The creation of the IP Minister role driving joined-up thinking within Government and the Civil Service. A highly influential position on the Administrative Council of the European Patent Office; a rightsgranting organisation separate from the European Union. A network of IP attachés providing IP support to UK businesses around the world. A leading role in the fight against national and international IP crime.

We believe that this success has in part come about because of systematic

commissioning of evidence-based research and open-minded consultations with stakeholders. Consequently, we are pleased to see that the Government will continue this approach and commission a survey on approaches to the commercialisation of technology by licensing and the funding of equity-based ventures. However, we believe that such a survey should have a broader remit as these represent only part of a spectrum of business approaches. One additional area we think important is around understanding the business dynamics between small and big companies. This is especially so for many start-ups as (1) their pathsforward frequently involve significant partnering with large companies and (2) for many entrepreneurs, buy-out by way of a trade sale is the only realistic way to build the necessary degree of critical mass. Another area that should be investigated is understanding how these relationships compare with the situation in other countries having a more successful track-record. Finally, such a study must recognise national and international supply-chain issues if it is to be meaningful. The green paper suggests various IPrelated topics for consideration. First, an intent is stated to revisit the IP barriers in business-to-business interactions including the desirability of (1) model agreements and (2) IP registries and market places. These, we believe, are two separate matters. Model agreements have continued to show efficacy in universitybusiness relationships so this is clearly an area which is ripe for investigation. One way forward could be to modify and re-brand the recently-updated Lambert Agreements since much of their content is applicable in a simple B2B context. For more complex agreements, care needs to be taken and the Government should recognise that small businesses’ needs JUNE 2017

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do not always automatically equate to simple agreements. In fact, frequently the opposite is true. We therefore prefer a term-sheet approach where the key issues are identified and negotiated out on an ‘in principle’ basis before being passed to experienced legal advisers for reduction to bespoke contract language. The IPO has in the past produced a check-list of such issues and we would support updating it and developing teaching material off it. We recognise that this approach will not necessarily lead to a minimisation of cost for SMEs, but it will lead to them developing contractual relationships which have the best chance of being fit-forpurpose. Given the business-critical nature of many of these relationships, we are not convinced by those who take the position that the net effect of this approach is to make the best the enemy of the good. In this respect, we believe that there is scope for the IPO to articulate to users that the proper way to look at intellectual property rights is as an investment (asset) rather than simply a cost (legal right). We would not deny that accessing legal services can be expensive but if an entity is serious about the development and protection of its trade secrets, there needs to be a fundamental recognition that, if the IP system is to be of use in a business sense, these knowledge-based assets need to be of high quality and aligned with realistic business opportunities. In today’s world, the romantic notion that if you have a great idea the world will beat a path to your door is a gross oversimplification and highly misleading. Today’s entrepreneurs need to know what ‘intellectual assets’ they own and how they map onto their sources of competitive advantage; be clear about how they will be managed and transact them based on realistic cost-benefit analyses. To do otherwise, risks reducing the whole activity to one more akin to speculation; an outcome which we believe works to nobody’s economic benefit be it rights-holders, service providers or intellectual property offices. This issue is of course complicated by fact that such assets are highly individual and as a consequence have a valuation that is extremely fact-dependent or 12

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Green Paper January 2017

situation-dependent. The IPO has already commissioned useful work in this area but we believe there is considerable scope for the IPO to do more through international dialogues and the creation of support materials that have a practical bias. IP registries and online marketplaces are a good idea in principle. However, our experience is that the unique nature of IP has tended to mean that they have generated little tangible benefit. To our knowledge, a number of such approaches have been tried and failed in the past meaning that, for the time being, we remain uncertain as to how this marketfailure is best addressed. Certainly, our bias is towards approaches where the driver is to build relationships and communities of interest rather than simply catalyse one-off transactions. However, we acknowledge the difficulties in establishing line of sight between such activities and beneficial economic outcomes. Having IPO representatives based in key cities to help build local IP commercialisation capability through interactions with intermediaries is a good idea but having a clear view as to their roles would be helpful. In our experience, the IPO has in the past tended to offer systems-based, neutral advice, which although helpful can leave the recipient uncertain as to how to apply it in a specific business setting. CIPA has sought to fill this gap with weekly clinics offering business-focused IP advice, but the reality is that providing such support takes time and is expensive. Often, a client’s

problems are complex and multi-faceted requiring the thoughtful application of both IP and business experience. So, if the Government wishes to increase its impact in this area, we believe it will need to go beyond acting as an intermediary towards stronger partnerships with those in the IP ecosystem having relevant experience in the ‘business of IP’. At the same time, we believe further funding should be made available to support an activity which has traditionally been a low-level ‘pro-bono’ activity. If this funding is not available, we believe it will be hard to systematically address the ‘chicken and egg’ issue that, whilst funding often only follows the creation of a credible business-focused IP strategy, developing such a strategy in the first place can be a major set-up cost for SMEs. If practical support for entrepreneurs and inventors is being considered, one idea would be for the IPO to develop a simple tool, linked to the European Patent Office’s (EPO) Espacenet database, where innovators could do simple searching on an idea at a formative stage and receive realistic feedback on an intelligible scale showing how hard or easy it will be to obtain useful patent protection. The format and elements of such a tool would need to be carefully worked through with potential stakeholders and the limitations made clear, but we think the upside may outweigh the downside. At the moment the IPO simply leaves users to follow links from its website to places where they are essentially left on their own to retrieve relevant information. This is not ideal; especially if the technology concerned is complex or cross-cutting. More generally, however, if the IPO is to become more proactive in businesslife around IP then it needs to be recognised that this will inevitably affect its longer-term status in the community. Traditionally, the IPO’s principal role has been as a rights-granting and IP policydeveloping authority; something which is not only important but has a high degree of internal consistency. Put another way, good policy tends to lead over time to optimum organisational efficiency and high-quality outcomes for users. Once www.cipa.org.uk

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the IPO does more than dip its toes into the waters of Business IP, it risks creating tensions that may have unforeseen political and operational consequences. One could be around the issue of impartiality. Another could be the need to take a more active role in regulating an ecosystem that is diverse and where standards are not always consistent. This role would be quite separate from the type of legal services regulation overseen by bodies like IPReg or the Solicitors Regulation Authority (SRA). And it prompts many questions; for example, would the IPO be prepared to keep whitelists and black-lists of service providers and be prepared to be transparent about it? Would it be prepared to provide teeth for the sorts of best practice it has in the past sought to promulgate? If not, then how will users get assurance? It is not the purpose of this response to advocate for any particular outcome; rather to note that if the IPO goes down this route significant debate and consensus-building will be required. The green paper makes reference to a challenge prize programme as a way to reward innovators and technological success. We agree that these outcomelinked schemes can be powerful motivators but we also feel there is scope for recognising rank-and-file inventors and entrepreneurs who are either associated with less-attractive high-profile projects or who have tried and failed in multiple knowledgeintensive commercial ventures. To an extent, these unsung heroes, many of whom exhibit the commitment and determination needed to succeed in an unforgiving environment, represent the true entrepreneurial spirit of innovation, which we should be seeking to foster in our national culture. Perhaps there is scope to recognise these human and cultural qualities systematically through the Honours System; possibly through the establishment of an ‘National Innovation Medal’ and/or a ‘UK Innovation of the Year’ award along the lines of the annual EPO ‘Inventor of the Year’ event; the student inventor prize the EPO ran as part of its recent 40-year Volume 46, number 6

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celebrations, or even the Royal Society Innovation Awards. We have in mind something more broadly-based to reflect the achievements of entrepreneurs in all fields of creative endeavour and an approach that seeks to unify existing awards within a coherent framework. Such an approach might well attract significant sponsorship from the legal services and investment communities if it became high-profile and were to be endorsed by ministers or Royalty. We are generally in favour of establishing technical centres of excellence in certain sectors. This is predicated on the view that, where resources are scarce, it makes sense for the Government to focus on those sectors where the United Kingdom has a distinctive offering and/or is likely to enjoy a disproportionate contribution to its long-term GDP. This is akin, for example, to the successful model used to disseminate Olympic funding. The Centre for Battery Technology/Energy Storage/Grid Technology proposed in the paper certainly seems to be one option although there may be others. What is not so clear is how this proposal was arrived at, and whether it was done on the basis of a forecast of the likely impact on the UK economy. If not, we think it should be as there are likely other areas where targeted expenditure could also have a significant political and economic impact; e.g. around healthcare and other issues related to an aging population. Otherwise, the risk is that funding is simply being provided on the basis of a hope that particular sector funding of the science base will, automatically lead to UK benefit. It is likely that the UK can learn lessons here from the EU’s approach to its Framework Programmes. It may also be possible to obtain input from a technical perspective from our members as many are working closely on the ground with cutting-edge start-ups. It is possible that there may be overlap between the proposed centre and the remit of the Energy Technologies Institute (ETI) in Loughborough. Further institutes like the ETI, which are based on a mixture of public and private funding,

could become more attractive in a postBrexit world where EU state aid rules may no longer be applicable or are somewhat circumscribed. In our view, the best outcome will be achieved if the creation of this sort of centre is underpinned by a clear statement of what is trying to be achieved. A good example here is the original remit of NASA. Government schemes which sponsor early stage research and development will clearly play an important role in delivering a future industrial strategy. Often, however, these are carried out in consortia where the IP access and reporting rules can be very complex. We believe there is scope for identifying international best practices with a view to working towards contracts that provide more IP flexibility. Finally, a point on IP law harmonisation. Since EU law, especially in the field of patents, is relatively harmonised we believe that, all things being equal, the impact of the United Kingdom leaving the European Union should be at most second-order although we acknowledge there might be cost implications for users in the area of rights procurement. However, since competition and markets are becoming increasingly global, entrepreneurs still need a global system based on completely harmonised principles. This is a long-term project and the delay and difficulties in reaching a harmonised EU patent and associated enforcement regime does not fill us with optimism that global harmonisation will be resolved in anything other than the long term. Significant progress has been made in the area of procedural harmonisation through the joint efforts of the Industrial Trilateral and the IP5 patent offices. Nevertheless, it needs to remain a significant item on the Government’s agenda as there remain contentious issues in the area of substantive law harmonisation. We urge the Government not to let this take a back seat to, or become a casualty of, the inevitable bilateral and multi-lateral trade agreements, which will need to be negotiated in a post-Brexit world. JUNE 2017

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COMMITTEE

Professional Development Framework The Education & Professional Standards Committee has set out a Professional Development Framework for chartered patent attorneys. Below is the version agreed by CIPA Council in April 2017.

Vision

Purpose

This document aims to clarify the aspirations of a chartered patent attorney after qualification and underpin excellence in practice acting as a tool for continuing professional development. Whatever experience a qualified patent attorney may have, there is always something new to learn. Indeed, that is precisely what makes the profession so rewarding and engaging. Within constantly changing environments and contexts there are always new skills to be mastered and new knowledge to be acquired. Continuing professional development is an essential part of that process.

This document is intended to:

Aim

For ease of reference this document covers four domains: professional skills, knowledge, values and behaviour. It is intended that as a professional patent attorney the individual will demonstrate commitment to all of these in practice depending on levels of experience and the work context.

This document will be adapted or revised on a regular basis according to changes in the law or practice and feedback from chartered patent attorneys. This document is not intended as a framework for professional competence nor a code of conduct, which are instead provided for chartered patent attorneys by the Intellectual Property Regulation Board (IPReg). It is intended as a framework that reflects what might be displayed by an attorney achieving professional excellence. This is not to say that an attorney operating with lesser competence would not be contributing adequately, rather that there are skills that they might still acquire to enhance their performance, job satisfaction and the reputation of the profession. It is understood that patent attorneys will have different aspirations for their career, and this document is intended to support the patent attorney in whatever career aspirations they may have. It is expected that this document will be accompanied by examples of use and evaluation in practice. 14

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•

• • •

Set out clear expectations for the continuing improvement of effective practice. Enable patent attorneys to identify areas for their own and others’ professional development. Support the mentoring of new members to the profession. Provide a reference point for use regardless of the work context. Be read alongside the IPReg competency framework which includes indicative examples of skills.

Domains

1. Professional skills: a chartered patent attorney should maintain the following expertise and skills to ensure the best outcomes for clients and fellow professionals. 1(a) A member should be able to prepare, draft and file a patent application using the appropriate language and terminology, taking into account the applicant’s requirements and the fact that the specification may be used as the basis for a patent application in several jurisdictions. 1(b) A member should be able to prosecute a patent application through to grant using a variety of approaches and arguments most appropriate to the case and taking into account any corresponding patent applications in

other jurisdictions and the applicant’s commercial needs and objectives. 1(c) A member should be able to use the skills of oral and written advocacy to represent a party effectively and fairly in proceedings before the patent offices and the relevant court, when appropriate. 1(d) A member should be able to assess the infringement and/or validity of a patent and be able to prepare an opinion of their assessment, setting out their advice to a client to enable them to make an informed decision on appropriate actions and business strategies. 1(e) A member should have the skills and experience to work with a client to develop an intellectual property strategy that reflects the client’s business needs and, if required, to participate in its delivery. 1(f) A member should be able to identify suitable parties with allied professional skills who are able to assist their client and be able to liaise with these parties to provide an effective and holistic service. 1(g) A member should be able to deploy problem-solving abilities in an innovative way. 1(h) A member should have good timemanagement skills. 1(i) A member should have excellent communication and language skills in order to be able to adapt style and approach to meet the needs of clients. 1(j) A member engaged in training and mentoring should develop the commensurate skills in order to do this effectively. www.cipa.org.uk

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2. Professional knowledge: a chartered patent attorney should maintain a critically informed knowledge and understanding of key elements of practice. 2(a) A member should acquire and then keep up to date with the requisite legal knowledge of patent law in the UK and in overseas jurisdictions, as appropriate, in order to maintain their professional skills. 2(b) A member should acquire and then keep up to date with effective procedural knowledge of patent law in the UK and in overseas jurisdictions, as appropriate, in order to maintain their professional skills. 2(c) A member should acquire and then keep up to date with the requisite technical knowledge in order to maintain their professional skills. 2(d) A member should acquire and then keep up to date with the requisite knowledge of sound business practice (financial, operational and commercial) in order to i) understand a client’s business and commercial aspirations so as to be able to provide commercially relevant advice and ii) understand how a patent business/practice/department is run, be able to fulfil all their statutory obligations as it pertains to their circumstances and, if appropriate, be able to run a patent business/practice/department themselves. 2(e) A member should have an understanding of how intellectual property fits into general business strategies and the cycle of innovation, and should be able to articulate this to a client in a way that enables a client to take a “fit-for-purpose” approach to the management of its intellectual property portfolio.

COMMITTEE

competition law to enable them to provide advice regarding the implications of such laws and practice for clients and to enable them to refer clients for further professional advice and guidance if relevant and appropriate. 2(h) A member should have a sound understanding of the law and practice as it relates to litigation of intellectual property rights to enable them to provide advice regarding the implications of such laws and practice for clients and to enable them to refer clients for further professional advice and guidance if relevant and appropriate. 2(i) A member should recognise that they can improve their professional practice by critical reflection on feedback and should identify, reflect on and address their professional needs at least on an annual basis. 3. Professional values: a chartered patent attorney should maintain high standards of integrity, dignity and respect for the profession, fellow professionals and the wider business community. 3(a) A member should uphold the reputation of the profession at all times. 3(b) A member should treat all parts of the business community equally and with integrity. 3(c) A member should provide a highquality service exemplifying honesty of purpose and practice. 3(d) A member should work with the business community in a position of trust and exemplify trustworthiness.

3(e) A member should display inclusive and respectful behaviour. 4. Professional behaviour: a chartered patent attorney should exhibit clear judgement about what works with specific clients in specific contexts. 4(a) A member should behave ethically at all times in dealings with the business community. 4(b) A member should be able to manage effective relationships with all parts of the business community and communicate with sensitivity. 4(c) A member should be able to give advice to all parts of the business community in a way that a particular audience will understand and find pertinent, asking the difficult questions and teasing out information without being confrontational. 4(d) A member should be able to recognise when any task is beyond their professional skills and knowledge and to seek appropriate professional help and support in such circumstances, and, if appropriate, transfer the matter to another person who is better able to assist the client. 4(e) A member should be able to identify when a conflict of interest arises in their practice and seek to resolve the situation to ensure that no client’s interests are compromised in any way.

2(f) A member should be aware of the possible approaches to managing competitor intellectual property risk and be able to counsel clients accordingly. 2(g) A member should have a sound understanding of the law and practice as it relates to designs, trade marks, copyright, licensing, due diligence, contract and Volume 46, number 6

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PEB

Constitution of the PEB When the Patent Examination Board (PEB) was formed in 2013-2014 it was on the basis of a constitution. Since then the PEB has been in negotiation with IPReg. The PEB was also subject to a review by the Quality Assurance Agency (QAA) in 2015. As a result of the outcomes of the discussions with IPReg and the QAA review, refinements have been made to the original constitution, which is now finalised. The PEB is therefore delighted to be able to publish its constitution that is set out below. It can also be found electronically at www.cipa.org.uk/patent-examination-board. Any comments or questions about the PEB constitution are welcome. Please email peb@cipa.org.uk. Georgina Sear, Head of Education

1. The Patent Examination Board (PEB) is a committee of the Chartered Institute of Patent Attorneys (CIPA) and can only exist and operate as such. The PEB acts independently of CIPA’s Council and is fully and separately accountable for its plan of work and activities. 2. The PEB comprises a Governance Board (GB) and an Examination Committee (EC). The EC reports to the GB. 3. The PEB has an Operations Manager responsible for management of the operation of the PEB. The Operations Manager reports to the Chairman of the GB. 4. The PEB appoints Chief, Principal and Marking Examiners with expertise in the examined subjects as may be required for the PEB to satisfactorily administer the requisite patent examinations. 5. Changes or alterations to the provisions hereof shall not become effective until approved by the Intellectual Property Regulation Board (IPReg), in consultation with CIPA.

Membership of the PEB Governance Board 6. The GB consists of five members: three lay members with expertise in the area of education, assessment and examination and two members who are qualified patent attorneys. The patent attorney 16

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members shall not be members of CIPA Council. 7. The GB shall elect a Chairman from the lay members of the GB on an annual basis. 8. The Operations Manager is a non-voting member of the GB.

Examination Committee 9. The EC comprises the Chief and Principal Examiners. The EC also comprises ex-officio patent attorney and lay members of the GB as appropriate. Marking Examiners, or others with appropriate expertise, may be invited to the EC as required.

Terms of Engagement The Governance Board 10. Members of the GB appointed after 1 January 2015 shall be appointed for an initial term no longer than three years. 11. A GB member may be reappointed for a subsequent term of three years on a majority vote of the remaining GB members. 12. No member of the GB is permitted to serve for more than six consecutive years without having a break period of at least two years, with the exception that the lay member appointed for a period of four years at inception of the PEB shall be permitted a further period of office of three years before any break period.

13. Vacancies resulting from the natural termination of a period of office or through resignation on other grounds shall be filled through open competition and the appointment made by a panel comprising two lay members and one member who is a qualified patent attorney of the GB. 14. Members of the GB shall be remunerated at a rate to be determined annually by the GB, at a rate commensurate with other lay representation rates employed by IPReg. 15. The performance of individual members of the GB will be assessed one year after initial appointment, and one year after any re-appointment. 16. The Operations Manager will be appointed by the GB as part of the administrative support from CIPA, and in consultation with CIPA. 17. The terms of employment of the Operations Manager and any other administrative staff shall ensure that they report directly or indirectly only to the Chairman of the GB when engaged on PEB matters, in order to maintain the operational independence of the PEB.

Examination Committee 18. The GB on behalf of the PEB will appoint as many Chief and Principal Examiners to satisfactorily administer the requisite examinations from year to year. www.cipa.org.uk

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19. Principal Examiners and Marking Examiners will be appointed and reappointed on an annual basis in accordance with policies and procedures approved by the GB. 20. Members of the EC shall be remunerated at a rate to be determined annually by the GB.

Proceedings Governance Board 21. The GB shall operate in accordance with Terms of Reference (ToR) which shall be published and which shall be reviewed annually by the GB. The ToR determine the manner in which the PEB will conduct its business and regulate its proceedings.

PEB

Examination Committee 27. The EC shall operate in accordance with the Terms of Reference (ToR), which shall be published and which shall be reviewed annually by the GB. The ToR determine the manner in which the EC will conduct its business and regulate its proceedings. 28. The Operations Manager shall provide all members of the EC not less than seven days’ notice of the date, time and place of any meeting of the EC. Wherever practicable this notice should be accompanied by a copy of the agenda and all available papers delivered via electronic means.

Functions, powers and duties of the PEB

22. The GB has the power to convene such sub-committees and working groups as are necessary for the PEB to operate effectively whilst ensuring that the GB retains oversight of the activities of the PEB.

29. The PEB exists to provide examinations in the field of intellectual property.

23. Any sub-committee of the GB shall be chaired by a lay member.

31. The PEB shall publish guidance for candidates.

24. A meeting of the GB shall be quorate if two lay members and one member who is a qualified patent attorney of the GB are present. In the absence of the elected Chairman, a quorate meeting of the GB shall elect one of the lay members present as the Chairman.

32. The PEB shall prepare and publish information for candidates which will include but will not be restricted to the requirements for eligibility, the examination timetable, examination processes and the appeals procedure.

25. The Operations Manager shall provide all members of the GB not less than seven days’ notice of the date, time and place of any meeting of the GB. Wherever practicable this notice should be accompanied by a copy of the agenda and all available papers delivered via electronic means. 26. At any meeting, only the GB members present shall have voting rights. A motion shall be duly passed if a majority of the GB members present vote in favour. There shall be no casting vote. If a majority cannot be secured, the motion shall be deferred until the next meeting of the GB.

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30. The PEB shall publish the syllabuses for each examination in the examination year.

33. For the examinations which the PEB is approved to administer by IPReg, the PEB will administer these examinations in line with an operating plan submitted to IPReg. 34. The operating plan will set out the examination and financial objectives for the PEB on a three-year rolling cycle. There will an annual self-assessment by the GB and external verification by IPReg, the results of which will be published in a self-assessment report (SAR) produced by the GB. 35. The PEB shall be responsible for holding examinations on an annual cycle at such times and in such places as it thinks fit.

36. The PEB shall satisfy itself that each candidate undertaking all examinations has complied with the requirements for eligibility published within the examination regulations. 37. The PEB shall issue every successful candidate with a certificate of achievement. 38. All members of the GB and EC and Marking Examiners and the Operations Manager and all administrative staff shall be bound by rules to safeguard the confidentiality of the proceedings of the PEB and all examinations, and shall be required to make declarations as to all and any actual or perceived conflicts of interest. 39. The GB shall take full responsibility for quality assurance of examinations, subject to any additional external verification requirements put in place by IPReg, to ensure that examinations meet the minimum requirements for entry onto the register. 40. The GB Chair will be accountable for the validity, reliability, freedom from bias, and comparability of the question papers, the quality of marking and the monitoring of standards over time. 41. The GB shall be fully responsible for the financial affairs of the PEB and operate in a manner that is fully independent from the fiscal management of CIPA, save that financial transactions shall be managed and reported through CIPA’s accounting systems. 42. The PEB shall be financially selfsupporting and shall accumulate an appropriate reserve for contingencies such as appeals, legal challenges and excessive fluctuations in the demand for examinations. Any additional funds shall be used to reduce examination fees or to invest in the quality of PEB’s processes. The income of the PEB shall consist solely of such fees and payments as the PEB requires in order to undertake its activities as an examining body. MAY 2017

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PEB

PEB Qualifying Examinations 2016 Examinations Candidate Survey Report. See the PEB's response on page 24.

Introduction

Profile of participants

This report consolidates responses to an online survey conducted in December 2016, which sought feedback from candidates about the content of the PEB Qualifying Examinations and the usefulness of the preparation material. 227 respondents completed the survey. Please note the PEB has published a response to the points raised in this survey. Many candidates said that they found the past question papers, mark schemes and examiners’ reports helpful in preparing for the examinations. The survey also revealed:

The majority of candidates were male (63%), aged 25-34 (71%) and white (84%).

•

Concerns about some examinations, particularly FC2 and FD4 exams. These were criticised for having too much material to cover in the time, too much reliance on memorising obscure content, lack of relevance to professional work and inconsistent marking schemes.

What is your gender?

Female

35% 63%

Prefer ŶŽƚ ƚŽ ƐĂ

What is your age group? 24 or ƵŶĚĞƌ

4% 9%

Examination resitting, 21% of candidates were re-sitting the FD4 examination, with 28 candidates (13%) having taken the examination more than three times.

16% 25 Ͳ 34

Issues with venues, which candidates felt had impacted on their performance.

35 Ͳ 44 71%

Comments included: “The P2 [FD1] examination is a lottery, as the syllabus is poorly defined and there are instances of questions coming up that have no bearing on the material that should have been covered.” “The results from FD4 (P6) do not appear to reflect the abilities of the candidates. It is commonly accepted that perfectly capable attorneys can fail P6 multiple times. Having to resit a paper when you are capable of doing the job is incredibly frustrating, holds back career progression and can have effects on personal life choices. Therefore, I think that the P6 examination needs careful attention.”

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White Irish Any Other White ďĂĐŬŐƌŽƵŶĚ

Asian or Asian British Black or Black British 76% Chinese Prefer not to say

• • • JUNE 2017

White British

Further comments from candidates are included in this report.

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What is your ethnic origin? 4%

Male

92% spoke English as their first language. 8% (18) of respondents said English was not their first language. 1% (3) of respondents stated that they had some form of mental or physical disability and 4.5% (10) preferred not to say. www.cipa.org.uk

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PEB

Professional background

Examinations taken

Physics was the most common disciplinary background for candidates, with over one-third of respondents selecting this option (36%, 80 respondents).

The largest number of candidates taking the survey had registered for the FD4 (63%) and FD1 (52%) examinations in 2016.

What is your disciplinary background?

Which examinations were you registered for?62.6% 52.4% 33.5% 11.9%

12.3%

11.5%

16.7%

14.1%

26.9%

FC1 (P1) FC2 (Law) FC3 (P5) FC4 (D&C) FC5 (P7) FD1 (P2) FD2 (P3) FD3 (P4) FD4 (P6)

• •

The majority of candidates (60%) have between two and five years’ experience in the patent profession.

30% (68) of candidates said they were taking the FD4 examination for the first time. 21% (47) of respondents had taken the examination more than once before. 5% (12) of candidates had taken the examination more than four times.

How many times have you taken the FD4 examination?

How long have you been working in the patent profession?

ϳй

ϱй KŶĐĞ

ϵй

dǁŝĐĞ

ϰϵй 17%

32%

• •

23%

dŚƌĞĞ ƚŝŵĞƐ &ŽƵƌ Žƌ ŵŽƌĞ ƚŝŵĞƐ

ϯϬй

28%

Less than 2 years

More than 3 years but less than 5 years

Between 2 and 3 years

5 years or more

Most candidates work in a private practice (89%, 201 candidates) and 9% (20) work in industry. 64% (144) of respondents work in organisations of between 50 and 249 employees and 18% (41) work in companies with more than 249 employees.

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Support materials Overall 97% of respondents felt that the support materials they used were useful to some degree in their examination preparation. Past question papers, mark schemes and examiners’ reports were the most popular materials used by respondents, while less than half used final examination guidance in their preparations. Other resources used included the PEB resources such as webinars and guidebooks, Nigel Frankland and Doug Ealey’s books and JDD courses. 55% (123) found the materials very helpful and 42% (94) found them somewhat helpful. 3% (7) said that they were not helpful.

What, if any, materials on the PEB website did you use to prepare for your examination(s)?

98.7%

•

• •

•

Past question Examiner reports Finals papers and mark examination schemes guidance

Sample good pass scripts

Candidates had particularly positive feedback for the mark schemes and examiners’ reports in giving a better insight into how to approach the exams and clarifying the requirements:

•

76.3% 41.5%

•

changed. This made the preparation materials less helpful, and also seemed to contribute to the candidates feeling that the requirements for the qualification are unclear, inconsistent and therefore unfair. Several candidates felt that the level of difficulty varied a lot between years. The following comments are representative of the comments made in the survey about this point:

•

95.5%

75.9%

Examination syllabi

PEB

•

• •

“Good to be able to get into the mind-set of the examiner, especially with more recent papers where more useful comments/the marking scheme was provided.” “The past papers, examiners’ reports and, in particular, the mark schemes were extremely useful in giving me an understanding of the calibre of answers that were required.” “It was very useful to be able to attempt past paper questions in preparation for the exams and mark my answers with the help of the mark schemes and examiner comments.” “It’s good to know what the examiners are looking for, especially in FD4 (P6)” “Recent pass scripts are very helpful and have improved in recent years by showing marks awarded. Mark schemes are invaluable.”

• • • •

Some candidates requested older mark schemes to be posted online: •

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“The syllabus for FD4 (P6) isn’t as helpful as it does not tell you how this is marked in the paper. Some of the past papers seem inconsistent in terms of how marks have been awarded which can be confusing, particularly if you are resitting and repeatedly scoring close to the pass mark.” “The past papers and mark schemes were very helpful. However, the examiner’s reports were often unhelpful and even condescending without offering constructive advice.” “The inconsistent nature of the examination and its marking means you have to be careful how you use them.” “This year’s apparent shift of question style did not have very much antecedence, so previous papers had partially reduced relevance.” “The format, length and structure of this year’s FC2 examination was far removed from the papers of the last decade. Because of this, the material available inadequately prepares a candidate for this new examination format.” “I felt that the consistency across papers is just not there. This makes it difficult to know what the examiners are looking for.” “Amount required to write for each mark seems arbitrary and inconsistent across all exams, making it difficult to determine whether a question has been adequately answered or not.” “FD4 questions seem very variable, not always easy to pick out patterns in what the examiner is looking for.” “On the previous P6 examination I took, the two examiners gave me marks that were 14 marks apart.” “Examiner reports vary hugely in how comprehensive and useful they are. Additionally, there are some errors in some of the mark schemes and examiner reports.” “Useful materials are on the PEB website, but it is extremely difficult to find anything on the PEB website.”

“For old exams, there are no mark schemes; the expected answers are unpredictable, so it would be nice to have marking schemes for older papers as well.”

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PEB

Review of individual examinations

FC1

Candidates were asked to comment on each examination, with respect to:

The FC1 question paper was the most positively received of the examinations (though it should be noted that only 12% of candidates were sitting this examination).

• • •

Whether the question paper gave them a sufficient opportunity to demonstrate their knowledge and understanding. Whether the question paper fairly represented the learning outcomes provided for the examination. Whether there was sufficient time to complete the question paper.

• • •

72% of respondents felt the question paper FC1 (P1) gave them a “great deal” or “a lot” of opportunity to demonstrate their knowledge and understanding. 66% of respondents felt that the FC1 (P1) examination question paper represented the learning outcomes “a great deal” or “a lot”. 100% of respondents said there was enough time. 48% said there was “plenty of time”.

Assessment of individual papers FC2 and FD4 FC2 (Law) and FD4 (P6) were highlighted as the examinations where most candidates felt there was not enough time and that they did not have adequate opportunity to demonstrate knowledge and understanding.

For FC2 (Law): • •

•

Candidates who sat the examination were split equally about whether there was or was not enough time to answer this question paper. 40% felt that the paper represented the learning outcomes “a little” or “not at all” and that they had little or no opportunity to demonstrate their knowledge and understanding. One-third of candidates said it represented learning outcomes “a moderate amount”.

Comments included: •

NB: This includes candidates who answered “a great deal” or “a lot” when asked: to what extent the examination “gave them opportunity to demonstrate their knowledge” / “fairly represented learning outcomes”. It does not include the further ~30-40% of candidates who said “a moderate amount”.

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•

“Whilst I felt the two-hour time limit for the examination was enough for this year, I can easily see why people struggle to complete this paper. In my view, a reading of the syllabus should allow for a reasonable attempt at an examination without having to trawl through answers to past papers to obtain the relevant knowledge.” “The changes to English Law (FC2) have made the examination an almost pointless exercise. The questions on the 2016 paper, which are comparable with questions from previous years, attracted far fewer marks than in the past. This left candidates scrambling to try to write full answers to questions not worth many marks, as it is not clear how much detail is required to achieve the maximum marks. Either more time is needed, or the question paper should be simplified. There was also not even enough time to fully read the lengthy questions, which left candidates attempting to answer questions having briefly scanned the question.” JUNE 2017

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For FD4 (P6):

FC3, FC4, FC5, FD1, FD2 and FD3

•

Feedback was positive for these question papers. At least half of candidates felt that they had the opportunity to demonstrate their knowledge in these six papers, and that the papers fairly represented learning outcomes. For FC3, FC4, and FD1, most candidates reported that they had sufficient time to complete the papers. While it was not as problematic as for FC2 and FD4 (above), more than 50% of candidates felt that there was not enough time to complete papers FC5, FD2 and FD3.

•

Just under a quarter of candidates felt there was enough time and 35% of candidates felt that there was “nowhere near enough time” for the FD4 (P6) question paper. 40% of candidates said saying that the question paper represented the learning outcomes “a moderate amount”

To what extent do you feel that the paper provided the opportunity to demonstrate your knowledge and understanding? 100%

Relevance to professional work, and achieving the qualification

80%

40%

173 (77%) of respondents have been working in the patent industry for over two years and some felt that though they were capable of doing the job they were being held back by a difficult and unrealistic examination.

20%

•

60%

0% FC2 (Law)

FD4 (P6)

•

A great deal A lot A moderate amount A little

•

Not at all

Candidates commented: • •

• •

“The length of the P6 examination is excessive.” “It’s an unreasonable examination. It makes no sense why it’s so time pressured. It also makes no sense that people who practise in the life sciences are expected to do an examination that is not in their field.” “Way too much material to cover in P6 in the allotted time; not realistic test of skills and not representative of how you would work in real life practice”. “FD4 is an exercise in how fast you can write neatly. A total frustration and not remotely representative of real-life work.”

•

These comments are representative of similar comments made by other respondents. •

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“I believe the three exams I took were harder than last year’s, so once again it feels like a moving of the goal posts in terms of UK qualification.” “The examination papers asked questions which are not relevant to day-to-day practice and instead covered subjects which are almost never encountered. While a certain amount of this should be put in an examination, this year felt particularly disproportionate.” “The FD4 (P6) examination is a poorly structured paper. Whether you pass or fail is somewhat arbitrary depending on the whim of the mark scheme, and certainly does not reflect or correlate to a professional’s ability and competence in the relevant area of daily practice. The standard of the papers is enormously variable, and it is simply not good that the barrier to professional qualification is so unpredictable and arbitrary.” “No one in the industry would be expected to deal with a validity and infringement issue such as that posed in the examination in such little time and without the option to speak with the client.” “FD4 appears to be improving, it is becoming clearer what is actually being examined. However, the need for this examination in this format remains unclear. This hurdle, which bears no relation to the demands of biotech practice (I have been doing this job for 15 years), appears to exist solely to limit intake into the profession. No other branch of the legal profession places a similar obstacle before its trainees. I will not be a better or worse patent attorney for having passed it – I will simply be older, poorer and more cynically predisposed to question the purpose of the professional regulator’s existence.” “Even a casual comparison of today’s exams to those of ~20 years ago shows that exams have gotten significantly more difficult. I think the level they are at now (i.e., passable with significant preparation and understanding) is about right, but I hope the PEB will resist efforts to make it more www.cipa.org.uk

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•

difficult than it is now. What does need to be improved is for the exams to be more realistic – for example, it is unrealistic to compel people to construe every claim integer in the P6 examination, yet this is what people must do in order to pass. Finally, it should be noted that patent searching is one of the skills of the patent attorney that is currently not tested nor is any standard set for it.” “It is quite apparent that to gain a ‘part-qualified’ status as a patent attorney, there are much easier routes to take than the CIPA exams. The Queen Mary course offers teaching with explanation of the subject-matter, with simpler exams (for example, the equivalent ‘basic English law’ examination is multiple choice). The Bournemouth course offers an even simpler route, with only one examination. These easier routes, for obtaining the same qualification, completely devalue the foundation exams. It is difficult to see why CIPA chooses to see these qualifications as an acceptable alternative, when the requirements for the courses are so different to those of the exams.”

PEB

•

Examination content Related to the question of professional relevance, several candidates commented that the 2016 examinations tended towards being able to recite more obscure parts of the law which a patent attorney would not reasonably be required to know for their work: •

•

“Questions that require rote repetition of an obscure section of an act is pointless. In no real scenario would anyone ever have to recite the definition of a design court (this year’s DnC paper). For some key sections, some rote learning/regurgitation may be appropriate.” “There is too much focus in the foundation exams on reciting the law as written in the statute. It would be reasonable for this to be expected for core topics, but in some cases (particularly on the trade mark examination) a lot of marks were available for precise recitation of relatively obscure parts of the syllabus.” “The law tested in P2 2016 is a bit obscure. Testing whether or not the candidate is a ‘safe pair of hands’ seems to have stopped and checking the candidate knows some nigh on obsolete parts of the Patents Act seems to have taken its place. This is a little disappointing.” “What is the point in memorising the whole Patents Act while not knowing what does it mean? Pointless. Would be much better if the questions required a bit more using brain and a bit less memorising of random knowledge.” “It felt that both FD1 and FD2 were moving in the direction of asking questions with more obscure answers, apparently moving closer to the EPO’s approach of equating the ability to learn obscure facts with being able to competently practice as a patent attorney. FD1 looked for answers to issues that (in my experience) rarely arise in practice, and FD2 seemingly pushed towards a plug-

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•

and-socket type of draft that candidates were only likely to be familiar with if they had gone out of their way to learn the frankly less practically useful areas of drafting. Such requirements of course form a part of the necessary study for exams, but the papers seemed to rely overly much on it.” “I was disappointed after P5. I felt this years paper was structured such that it was difficult to demonstrate understanding but instead focused disproportionately on reeling off facts about territories; demonstrating memory skills. It is my understanding that, in practice, this is not how the profession works as UK attorneys would always seek advice from foreign associates before advising clients of matters of importance.” “This year it very much felt as if the examiners were scraping the bottom of the barrel in order to find questions which had not been asked previously. The result was examination papers which asked a number of questions which are not relevant to day-to-day practice and instead covered subjects which are almost never encountered. While a certain amount of this should be put in an examination, this year felt particularly disproportionate.” “I am aware that in previous years, complaints have been made as to how pointless the simple memorization of facts is… Evidently, in the last couple of years the Examination board has decided that to make the exams useful for candidates, the knowledge should be more applied. However, the syllabus remains just as broad and now an unpredictable mixture of both is required. This is especially apparent in the Basic English Law examination. The questions not only cover a much broader sample of the syllabus but also require a high level of applied knowledge. It is therefore difficult for candidates to ascertain what level of knowledge is required to answer questions. A base understanding of all subject material is required for the part A section, as well as in-depth knowledge for the part B section. Additionally, only two hours are given for a paper which, previously, required a much larger proportion of regurgitation of facts, and much less application which requires more time.”

Examination venues Candidates were very positive about the venues. Comments included: • •

“The QM venue was really lovely inside, which helped with the examination nerves” “The PEB exams have generally got very nice venues.”

The Bristol and Leeds venues were praised by several candidates. In some venues, candidates said that poor organisation and disruptions had adversely affected their performance. Several candidates complained of construction works close to the examination room and poor lighting JUNE 2017

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which affected their focus, and while some acknowledged that this was out of the PEB’s control they also felt that this should be taken into consideration. In one location, the desks and chairs were not set up, which resulted in a delay of one hour starting the examination, and several candidates said this caused excessive stress, and they had not had food from 10:00am until 4:00pm.

PEB

Additional recommendations from candidates Minor recommendations from candidates included: • •

Other comments included: •

•

“One venue had a fire alarm in the middle of the examination, completely derailing my train of thought. This was entirely unacceptable. The examination should be redone in a new venue. I am appalled at the lack of quality in the venue in all respects.” “The lighting in the venue was so insufficient that I came out with a headache and extremely painful eyes. It was clear that not all of the lights were turned on and when I took time out of answering questions to ask if additional lights could be turned on, I was told it was not possible.”

• • • • • •

•

A day’s break between P2 and P6, rather than on consecutive days. Start the examination at the advertised time (some exams started early for no specific reason, and the candidate had to make adjustments to the timings). Please supply parking information for the venue. More signs to examination room would have been useful. Allow Foundation papers to be taken in Singapore. More support for candidates re-taking the exams. Better proof-reading to avoid mistakes in the exams. “It would be nice if mark schemes could be posted early, since there is such a long wait... Early release of a mark scheme may give candidates some idea as to how they have done and a little piece of mind”. “Stop using CIPA membership numbers as candidate numbers. The examiners remember and this clouds their judgement”.

PEB Qualifying Examinations 2016 Examinations Candidate Survey Report; PEB Response, March 2017

he PEB Governance Board and Examiners are very grateful to the candidates who took the time to complete this year’s Candidate Survey. The following is the PEB’s response at this point in time. The survey findings will feed into our on-going monitoring of the Qualifying Examinations. During the course of the coming 18 months, the PEB will advise candidates of any changes that relate to the concerns raised.

Foundation Certificate Examinations Comments about the FC2 examination have been noted and the syllabus issue has been addressed in the FC2 Examiner’s Report. The FC2 Examiner did not notice any evidence of candidates running out of time to complete the examination. Nevertheless, from 2017, all of the Foundation Certificate examinations will be three hours in length. 24 CIPA JOURNAL

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Regarding the comment that there are different levels of difficulty between the routes to Foundation qualification, it is noted that IPReg has undertaken a review of the Foundation provision and has published an Accreditation Handbook to assist the Examination Agencies (such as universities and the PEB) in delivering courses and/or examinations which meet the required standards. As part of the PEB seeking reaccreditation from IPReg to run the 2018 Foundation Examinations, the issues of consistency of format of the examinations will be addressed. Mistakes in question papers are very much regretted, and are thankfully rare. The question papers are proof read by an external proof reader, and signed off by the Principal Examiner. The PEB felt it took suitable action in allowing ten extra minutes for the time taken to explain the error. The content of FC3 reflects the aim of the UK profession to provide a high

standard of service in a globalised and international market. FC3 thus tests whether a UK attorney has a basic knowledge of patent systems around the world and in particular the differences when compared with the UK and European systems. Such knowledge enables UK attorneys to know what options are available and to ask the right questions when seeking advice from a foreign associate. Questions covering broad country lists should thus be expected and will inevitably involve recitation. In line with the IPReg Accreditation Handbook, the Foundation level examinations assess whether a candidate meets an initial academic stage of training. Studying the law necessarily involves rote learning and in contrast to some scientific studies, it is not possible to derive answers from first principles. Accordingly, full marks are only available for accurate recitation of the law. As noted in the mark schemes, candidates will gain some marks, for www.cipa.org.uk

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imprecise recitations. The syllabi for the examinations are well defined and candidates should expect questions to cover the whole syllabi over time.

Final Diploma Examinations During 2016 the historically low pass-rate of FD4 has been the subject of a major piece of research conducted by Middlesex University on behalf of IPReg, and with a steering group including members of the PEB and CIPA. At the time of writing, the final report has not yet been published. We will advise you on any changes that will arise as a result of the findings of this research in due course. It is not likely that this will impact the 2017 examination. If it does any such changes will be relatively minor, and we will give as much notice as possible of the changes and support we will offer. It is expected that more significant changes, if required, will be phased in over a longer time period. As set out in the Examiner’s Report, FD1 is an advanced paper to determine suitability to practise as a patent professional by giving advice to clients regarding complicated scenarios and is not a memory recall test. Marks are awarded for applying knowledge, not simply reciting everything that a candidate has learnt. It is noted that for each of the compulsory questions (except the design and copyright question) in Part A, the average mark was above the pass mark of 50%. The average mark for the scenario questions in Part B is between 28% and 44% despite the bulk of the marks for these questions being awarded on core topics such as validity,

PEB

infringement, remedies, inventorship and ownership. The analysis of this year’s paper indicates that it includes questions on core topics and does not unduly focus on obscure parts of the syllabus. The perception from some candidates that the focus of the paper is changing is noted and will be kept under review. It is an essential drafting skill to be able to recognise all the elements of a client’s invention which can be independently protected, otherwise the client’s scope of protection is drastically reduced. The ability to recognise that a ‘plug and socket’ type set of claims is needed is a core skill for the competent patent attorney and one with which candidates from all technical backgrounds should be familiar. As noted in the Examiner’s Report, it was possible to pass FD2 with only one independent claim but it was much harder. The PEB notes several comments about the examinations getting harder. Pass rates viewed overall would seem to indicate this is not the case. The perception is noted and the issue will be kept under review.

Venues The examination venues are selected with care, to criteria, within a budget. Where good venues are found the PEB will reuse them subject to availability. Where an issue at a venue, such as noise or late delivery of desks, affects all candidates, candidates are written to advising them that it will be taken into account by the

examiners. This is done by comparing statistics of affected cohorts with others from venues where there were no issues. If a difference in performance is detected then suitable actions are taken to ensure no one is disadvantaged as a result of the disruption. This same consideration is also given to any individuals lodging a Special Consideration request. Other issues raised 1. It is unlikely that the PEB will be able to prepare and issue mark schemes for question papers published by the JEB [Joint Examination Board]. The PEB is committed to producing transparent mark schemes examinations to build up the bank of mark schemes. 2. The PEB is happy to receive comments about any errors in published materials at any time. 3. The PEB will supply parking information for venues. 4. The PEB will consider the possibility of offering the Foundation Certificate examinations in Singapore. 5. At this time, the PEB is unable to publish mark schemes significantly earlier than on results day. It will keep the issue under review. 6. From 2017 all candidates will be issued with a unique five-digit Examination Reference Number to be used in all correspondence about examinations. 7. The PEB will explore the possibility of timetabling FD1 and FD4 other than on consecutive days.

Foundation Certificate Examinations The PEB, partly in response to student comments from the 2016 Student Survey and partly in response to a recommendation in the Quality Assurance Agency report – external assurance of the PEB 2015 – has decided that from the October 2017 examinations onwards all the Foundation Certificate Examinations will be three hours in length. There is a note to this effect on the PEB website and the relevant PEB syllabi for FC2 and FC5 have been amended to reflect this change. For the avoidance of doubt there are no other changes to the affected examinations, which will follow the same format as previous years. All the other examinations (FC1, FC3 and FC4) remain unchanged in format and length. Georgina Sear, Head of Education

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NEWS

OFFICIAL

IPO formalities and register administration Guidance from the IPO to help tackle recurring issues with documents, forms and evidence filed at the IPO that cause delays in processing.

t the IPO, we are always looking for ways to improve our services and efficiency. High levels of work are experienced by a number of areas of the IPO, particularly at busy times of the year. A few simple steps can help to speed up processing, reduce backlogs and minimise unnecessary queries. Please note that if we have to raise a query, any updated/corrected version filed with us will likely not be processed immediately. Here are a few suggestions covering the main work areas which will help our teams to process your work.

Initial filing Always use the electronic filing option where it is available if possible, especially for initial filings. However, while we are still developing further digital services, please do not upload items such as withdrawal letters (see below) and those forms that are not available in electronic format. Please note that forms which are fee bearing cannot be processed.

Amended applications If you make amendments to an application, please file the full formal amended description and/or claims (instead of individually amended pages), as well as tracked changes for the amended pages. This significantly reduces the amount of time it takes for our formalities teams to process an amended application when it is filed at the IPO.

Register maintenance Our Register Maintenance team receives a high volume of work and pendency times are longer than we would like. Please bear with us while we strive to improve this, but, to assist with speedier processing, we would suggest the following: •

Formalities Drawings: coloured drawings are currently not acceptable and that an objection will be raised at Preliminary Examination until the position changes. • E-mail addresses: we have two dedicated e-mail addresses which are monitored by staff throughout the day; in order to make the most efficient use of these, please use them for their dedicated purposes only: •

•

pateot@ipo.gov.uk should only be used to request the first automatic extension of time under rule 109. Please do not use this route to file Form 52 or Form 14. withdraw@ipo.gov.uk is the most efficient and reliable way to withdraw an application as requests are continuously monitored. We cannot guarantee the same level of monitoring for withdrawal requests filed by other means.

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•

Requirement to supply evidence when recorded as Address for Service There is no requirement for supplying evidence (except in the case of a death which requires a copy of the death certificate, will and/or probate), because we will use the information supplied on the form to update the Register. If evidence is supplied and this evidence conflicts with the information on the form, this will usually result in a query. Difference in address or date detail The address of the Applicant/ Proprietor on the Register must mirror the address on the Form 21 and any submitted evidence, otherwise this will be queried. If the address differs please confirm in a covering letter what the actual address was at the time of the transaction. Similarly, the date of the transaction on the Form 21 should match the date on any evidence. Please check dates are in order before filing forms. Schedules of mixed EP/GB cases In the past, GB/EP cases have been easily distinguishable by number, but we are now in a situation where the

•

EP case numbers have over taken the GB case numbers – there are now many cases that share the same number, but with a different prefix. These create significant problems that can result in errors when recording updates on the Register and which are difficult to rectify. Please always use the relevant prefix and supply clear EP and GB schedules. If you wish, you may use the schedule template available here: https://www.gov.uk/ government/publications/applicationto-register-or-give-notice-of-rights Clarity regarding Change of Name or Change of Legal Entity Many Form 20s are filed requesting a change of name when in fact there has been a change of legal entity (e.g. Inc. to LLC), which has to be recorded on a Form 21. Poor-quality photocopied fax copies Please ensure any fax filed documents are of a good quality before sending them. If the documents are illegible in part or in full, we will need to request a clean copy and this again causes a delay.

If you have any queries about any of the issues I mention above or indeed any others, please do not hesitate to contact us using the details below. • Initial filing – Lyndon Davies – Head of Patent Admin Support Services – 01633 814604 – lyndon.davies@ipo.gov.uk • Formalities – Steve Bender – Head of Administration – 01633 814422 – steve.bender@ipo.gov.uk • Register Maintenance – Christine Farrington – Head of Register Services – 01633-814701 – christine.farrington@ipo.gov.uk Glenn Rose’Meyer, Divisional Head of Administration, Business Operations Division, Intellectual Property Office www.cipa.org.uk

02/06/2017 17:51:17

US UPDATE

PTAB

Insight on Patent Trial and Appeal Board “Reversals” Post-grant proceedings include two primary decisions by the Board: Institution, when the Board determines if a petitioner is likely to prevail on the merits in a full proceeding, and Final Decision, when the Board determines if the petitioner has shown the claims are unpatentable. The Finnegan team surveys the Board’s final written decisions issued during the first quarter of 2017 to determine how often and why the Board “reverses” its institution decision.

ust over four-and-a-half years ago, the America Invents Act (AIA) created post-grant proceedings at the US Patent and Trademark Office (USPTO), which created an alternative path to challenge the validity of patents. These proceedings have become very popular, with over 5,000 challenges filed since they became available. Although three separate post-grant review proceedings were created under the AIA – IPR, CBM, and PGR1 – they all have common procedural features. We have discussed the details of the various procedures in several earlier CIPA Journal articles, but all post-grant proceedings can generally be divided into two phases: pre-institution and post-institution. The pre-institution phase begins when a petitioner files a petition challenging the validity of at least one claim of a patent2. The patent owner has the option to file a preliminary response and explain why a proceeding should not be instituted, whether on procedural or substantive grounds3. A panel of three administrative patent judges (Board) then reviews the petition and preliminary response and issues an institution decision either granting or denying institution based on whether the petitioner has sufficiently shown that it is likely to prevail on the merits at final written decision4. Post-institution, the patent owner may object to a petitioner’s evidence, cross-examine petitioner’s expert witnesses, file additional expert testimony supporting patentability, and file a patent owner response rebutting the petitioner’s arguments. After the Board holds an oral hearing, it issues a final written decision and determines whether the challenged claims are patentable5. The distinction between pre-institution denials and a final written decision post-institution is significant. For example, Volume 46, number 6

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when the Board issues a final written decision, the AIA’s estoppel provisions attach and the petitioner is precluded from arguing at district court or at the USPTO that the claims decided in the final written decision are unpatentable on various grounds6. This estoppel does not attach if the Board denies institution. When a Board institutes a proceeding, it also increases a petitioner’s ability to obtain a stay of a co-pending litigation, which will delay trial and a potential judgment on infringement and damages until after patentability is resolved at the USPTO. While an ultimate finding of unpatentability by the Board could moot the litigation, a finding of patentability can simplify the issues at trial by removing certain defenses. A finding of patentability in a final written decision can therefore have a significant impact on corresponding litigations. This article surveys the Board’s final written decisions issued during the first quarter of 2017 to determine trends in why the Board “reverses” its initial institution decision, where it found a petitioner likely to show at least one claim unpatentable at institution, yet found that the petitioner failed to make the required showing that the challenged claims are unpatentable at final written decision.

Methodology Copies of the 193 final written decisions issued between 1 January and 11 April 2017, were pulled using Docket Navigator7. These decisions were reviewed to determine whether the final written decision found one or more claims patentable. Decisions finding at least one claim patentable were analyzed to determine the reason the Board found the claim patentable and categorized into groups, as discussed below. JUNE 2017

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Final written decision outcomes by proceeding Of the 193 final written decisions reviewed, 59 decisions (30.6%) found at least one instituted claim8 patentable. Of those 59 decisions, 43 (22.3% of the total decisions) found all instituted claims patentable and 16 (8.3% of the total decisions) found at least one instituted claim patentable and the remainder unpatentable. The remaining 134 decisions (69.4%) found all instituted claims unpatentable. Based on this survey, after institution there is about a two-thirds chance that all instituted claims will be found unpatentable in the final written decision. [See chart below.] Although the number of decisions finding all instituted claims unpatentable may appear high, it roughly corresponds to the USPTO’s own data that 65% of all IPR final written decisions and 81% of all CBM final written decisions found all claims unpatentable9,10. Significantly more IPR petitions are filed than CBM petitions, and our compiled data from the first quarter of 2017 appears to be similar to the USPTO’s reported overall data. It is also worth noting that of the 59 decisions finding at least one claim patentable at final written decision, practically all of the “reversals” were in IPRs. Only one CBM decision found all claims patentable11 and only one CBM decision found some claims patentable (while still finding other claims unpatentable)12.

PTAB

The lower rate of “reversals” for CBM proceedings could be due to the different thresholds for instituting review. For an IPR to be instituted, the petitioner must show: “that the information presented in the petition… shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition13.” In CBM proceedings, a petitioner has a different threshold and must show that: “the information presented in the petition… if such information is not rebutted, would demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable14.” For both proceedings, a petitioner must prove “a proposition of unpatentability by a preponderance of the evidence15.” The threshold to institute a CBM is closer to the final evidentiary burden to establish unpatentability than the threshold to institute IPR, which may account for the lower “reversal” rate of CBMs in the cases surveyed. CBM proceedings can also be instituted on more grounds, including purely legal bases such as patent-ineligible subject-matter under 35 U.S.C. §101, which may also account for the lower “reversal” rate of CBMs.

Reasons for “reversing” institution decision

8.3% 22.3%

69.4%

All instituted claims unpatentable All instituted claims patentable Some instituted claims patentable 28 CIPA JOURNAL

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Each of the surveyed decisions finding at least one claim patentable was reviewed and the Board’s reasoning was categorized into one of the groups in the table opposite. The percentage of decisions representing each category is shown in the bar chart16. This data17 appears to show a few relevant trends that are applicable to both patent owners and petitioners. The three most common reasons for finding claims patentable at final written decision were claim construction, missing elements, and lack of motivation to combine references. The Board relied at least one of these three bases in almost 30% of its final written decisions. By contrast, the Board relied on the next most common basis – that a reference was not a printed publication – just 11% of the time. Although this may seem like a substantial gap, context may explain why claim construction and missing elements are two of the most common reasons for “reversal.” These arguments form the basis for almost all disputes between petitioners and patent owners and are relevant in nearly all proceedings, applying equally to anticipation and obviousness challenges. As such, they are probably the most common arguments made by patent owners. Other reasons, such as lack of motivation to combine, lack of reasonable expectation of success, and secondary considerations, are relevant only to obviousness challenges. Similarly, the defense that a reference is antedated is available only in certain circumstances. www.cipa.org.uk

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PTAB

US UPDATE

Reasons for “reversing” institution decision Category

Description of Reasoning for “reversing” institution decision

CAFC decision

An intervening decision of the United States Court of Appeals for the Federal Circuit determined the same issue as the final written decision

Claim construction

The Board adopted a claim construction at final written decision different from the one applied at institution

Missing element

The prior art did not disclose a particular claim element

Lack of motivation

The petitioner failed to meet its burden to show a motivation to combine references in an obviousness analysis

Lack of expectation

The petitioner failed to meet its burden to show a reasonable expectation of success in combining references in an obviousness analysis

Secondary considerations

The patent owner’s evidence of secondary considerations of non-obviousness overcame the petitioner’s obviousness combination

Not printed publication

The petitioner failed to meet its burden to show that a reference was publicly available as a printed publication before the patent was filed

Not 102 prior art

The patent owner provided sufficient evidence to antedate the prior art reference

Other

Reasoning that does not conform to one of the categories listed above

28% 27%

27%

Percentage of decisions representing each category

11% 9%

er th O

N p r ot i o 10 ra 2 rt

N pu ot p bl rin ic t at ed io n

ns Sec id o er nd at ar io y ns

L ec ac ta k o tio f n ex p

ot Lac iv k at o io f n m

M i em ssin en g t el

C uc lai tio m n

de C ci AF si C on

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An interesting note about this data is that the most common basis for finding claims patentable – failure to show motivation to combine references – is an argument available to patent owners facing just obviousness challenges. The relatively high proportion of decisions citing a petitioner’s failure to show motivation to combine may be due to recent Federal Circuit decisions vacating18 or reversing19 final written decisions where the Board did not properly assess whether the petitioner provided a sufficient motivation to combine the references. Another notable basis for finding claims patentable is where the petitioner failed to show that a reference is prior art. Patent owners have this argument available only when a petitioner relies on non-patents references, for example, journal articles, dissertations, white papers, or industry presentations, which makes it a less common argument available to patent owners. The Board’s reliance on this basis may be buoyed by the Federal Circuit’s decision in Blue Calypso v Groupon20, which affirmed the Board’s reasoning in a final written decision that a reference raised by the petitioner was not prior art21. Patent owners as well as petitioners should consider the overall impact of the Court’s reasoning in Blue Calypso when non-patent literature documents are used as part of a prior art challenge. To further highlight these bases – lack of motivation to combine and failure to show that a reference is prior art – we discuss each of them in more detail through a case study. As these studies show, the Board treats the petitioner’s burden to establish motivation to combine references and that documents are prior art as meaningful throughout post-grant proceedings. Petitioners should bear this in mind when developing their arguments before filing a petition to anticipate patent owner’s counterarguments and help avoid having an institution decision “reversed” at final written decision. Patent owners may also wish to consider this when planning their response strategies both before and after institution. We also provide a short study of another case to provide some context regarding other reasons the Board has found instituted claims patentable in a final written decision.

Case Study A: failure to show motivation to combine references Spectrum Brands v Assa Abloy22 provides an instructive example of the Board’s reasons for determining that the petitioner failed to show a sufficient motivation to combine references. In Spectrum Brands, the petitioner argued that a combination of two published patent applications – Nielsen23 and Karkas24 – rendered two patent claims obvious25. Although the Board instituted the IPR, in the final written decision, it determined that petitioner failed to show a motivation to combine these references, because petitioners: “[did] not explain sufficiently why the skilled artisan would turn to Karkas’s teaching in order to remedy the acknowledged deficiency in Nielsen.”26 The Board faulted the petitioner for providing only “general reasons” to combine the references. For example, the Board took issue with the petitioner’s alleged rationales that “both references were published in the same year, and both disclose analogous access control systems… [b]oth references describe using mobile devices 30 CIPA JOURNAL

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PTAB

as keys, electronic locks, and a central management system;” and both “describe mobile phones with embedded electronic access codes and similar wireless communication protocols27.” The Board found these reasons generic and insufficient to show motivation to combine the teachings of the references because they did not “identify any specific benefit to be gained from using Karkas’s PIN number as Nielsen’s password28.” The Board also found the purported similarities of the references unconvincing, stating that the “mere fact that Nielsen and Karkas are ‘similar’ in many respects… is not itself a reason to combine their teachings in the manner claimed29.”

Case Study B: failure to show printed publication In Sony v Imation30, the Board found that the petitioner failed to show that two technical specifications – the “MMC Specification31” and the “SD Specification32” – were publicly available before the challenged patent’s filing date33. The Board explained, even if these standards were generally “known, or even well-known,” that “does not provide evidence regarding the specific documents relied on by Petitioner34.” The Board explained that “general citation[s] to the standards in the prior art cannot substantiate the publication status of the specifically cited MMC Specification and SD Specification documents” relied on by petitioner35. In other words, the Board found that the petitioner failed to link the standards known in the prior art to the specific documents relied upon in the petition36,37. The Sony v Imation decision presents a useful case study, not only for its substantive value, but also because the patent owner did not challenge whether the MMC Specification and SD Specification were prior art38. The Board raised this issue on its own, explaining that a “Petitioner must demonstrate… that the challenged claims are obvious and one aspect of such a showing is that the references relied upon are patents or printed publications39.” Thus, this case shows that the Board may interpret a petitioner’s burden to show unpatentability as including demonstrating that printed publications are prior art, even when the patent owner does not raise that argument. The outcome in Sony could be due to the evidentiary difference between the threshold for institution (“reasonable likelihood”)40 and the higher threshold to show unpatentability at final written decision (“preponderance of the evidence”)41.

Case Study C: “Other” reasons for finding patentability One other notable category is the “other” category. During the time period surveyed, only two decisions fell into this category, both of which related to procedural issues unique to practicing before the Board: Nissan v Joao Control42 and Coxcom v Joao Control43. These final written decisions highlight potential institution decision pitfalls that could result in estoppel at final written decision if not timely corrected. In Nissan v Joao Control, the Board found that a dependent claim was patentable on one asserted ground44 because the petitioner failed to explicitly include all of the references relied on to challenge the independent claim as part of the combination challenging the dependent www.cipa.org.uk

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US UPDATE

claim45. The Board explained that, because only two references were relied on in the dependent claim, which did not include a third reference relied on to challenge the independent claim, the petition did “not have a specific allegation as to how and why the teachings of all three references… may be combined” to show that the dependent claim was unpatentable46. In Coxcom v Joao Control, the Board determined that a dependent claim was patentable because it depended from an independent claim, which the Board did not institute IPR on47. The petitioner relied on the same arguments for the dependent claim as it did for the independent claim that the Board already found unpersuasive48. As a result, the Board determined that the dependent claim was patentable at final written decision for the same reasons that it declined to institute the independent claim49.

Whether the persuasive argument was first presented after institution Although the reasons for finding claims patentable at final written decision are instructive, it is also useful to consider whether the arguments the Board found persuasive were previously argued in a preliminary response prior to institution. As shown below, in just 39% of cases, patent owners presented the same argument in a preliminary response pre-institution as they did post-institution50. Of the remaining 61% of cases, the vast majority of them (57.8% of the total cases) included patent owners filing a preliminary response, but raising new arguments after institution. In just a small percentage of the cases (4.7% of the total cases), the patent owner did not file a preliminary response51. Thus, new arguments presented after institution may have a statistically higher chance of persuading the Board that the challenged claims are patentable rather than repeating arguments presented pre-institution. While every case has its own facts and warrants its own strategy, the practical implications of the two-phases of post-grant proceedings are worth considering. [See chart opposite.] In more than half of the cases, the patent owner did not raise the ground the Board found persuasive until after institution. This has several interesting implications. It may indicate that patent owners “saved” their more persuasive arguments until after institution or that they adjusted their arguments based on the Board’s institution decision. It may also be affected by the lower institution threshold for IPRs, such that patent owners choose to reserve some arguments until after institution in the event the IPR is instituted. It is worth noting that the final written decisions in this study are cases that were in cases with petitions (and preliminary responses) filed before the Board implemented its new rules allowing patent owners to submit expert testimony prior to institution52. Thus, in all of these cases, the patent owner could not submit new expert testimony until after institution, which may also explain why certain arguments were not raised in a preliminary response. For example, some arguments may be more persuasive with testimony from a technical expert. While these arguments could have been made pre-institution before Volume 46, number 6

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the USPTO changed its rules, they would be based almost entirely on attorney argument. Although patent owners can now submit testimonial evidence pre-institution, the Board’s rules require any disputed material facts to be “viewed in a light most favorable to the petitioner” for purposes of institution53. Thus, in certain instances, some arguments may still be more persuasive after institution, when viewed by the Board on a full record.

Conclusions In the first quarter of 2017, the Board’s reasons finding claims patentable at final written decision were heavily weighted in three general categories, but the Board relied on several different bases over that time. Although the strongest arguments available to patent owners depends on the facts of each case, it appears that there is a trend in decisions issued in the first quarter of 2017 to enforce petitioners’ burdens of proof with respect to motivation to combine references in obviousness analyses and to show that references were publicly available prior art. This trend may also prove useful to patent owners defending against petitions and to petitioners who might place additional emphasis on these aspects of their petitions moving forward. Authors: Timothy P. McAnulty and Kevin D. Rodkey; for more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony.tridico@finnegan.com.

4.7%

39.1% 57.8%

All instituted claims unpatentable Not Argued in POPR No POPR JUNE 2017

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PTAB

10. No post-grant review (PGR) final written decisions found claims patentable during this time period. 1. Inter partes review (IPR), post-grant review 11. See TradeStation Group v Trading Technologies, (PGR), and covered business method patent CBM2015-00161, Paper 129 (Feb. 17, 2017). review (CBM). 12. See TradeStation Group v Trading Technologies, 2. See 35 U.S.C. §§ 311, 312, 321, 322. CBM2015-00182, Paper 129 (Feb. 28, 2017). 3. See 35 U.S.C. §§ 313, 323. 13. 35 U.S.C. § 314(a). 4. See 35 U.S.C. §§ 314, 324. The standard for 14. 35 U.S.C. § 324(a). institution of IPR, CBM, and PGR proceedings 15. 35 U.S.C. §§ 316(e), 326(e). varies, but each has a threshold showing that a petitioner must meet for the Board to 16. Although the authors have tried to apply these institute. 35 U.S.C. §§ 314 (petitioner must show categories consistently, there is sometimes “that there is a reasonable likelihood that the some gray area between them. For example, petitioner would prevail with respect to at least “claim construction” may overlap with “missing one of the claims challenged in the petition” elements” of a claims because the Board might in IPR); 35 U.S.C. § 324 (petitioner must show explain the meaning of a claim element without “that it is more likely than not that at least providing a formal construction. To the extent it one of the claims challenged in the petition is may be possible to recategorize some decisions, unpatentable” in PGR and CBM). the authors do not believe it would materially affect the trends discussed here. 5. See 35 U.S.C. §§ 318, 328. 6. See 35 U.S.C. §§ 315(e), 325(e). A full discussion 17. The total percentage adds up to more than 100% because in several decisions the Board relied on of the scope of estoppel in each of IPR, CBM, multiple bases to find claims patentable. and PGR proceedings is beyond the scope fo this article. 18. In re Nuvasive, Inc., 842 F.3d 1376 (Fed. Cir. 2016). 7. The information in this article was compiled from all Patent Trial and Appeal Board final 19. In re Magnum Oil Tools Int’l, Ltd., written decisions on the merits available on 829 F.3d 1364 (Fed. Cir. 2016). Docket Navigator (www.docketnavigator.com) 20. Blue Calypso, LLC v Groupon, Inc., as of 11 April 2017, using the filter “Patent 815 F.3d 1331 (Fed. Cir. 2016). Trial and Appeal Board” and the sub-category 21. Id. at 1348-51. filters “Termination,” “Final Decisions,” and 22. IPR2015-01562, Paper 35 (Jan. 12, 2017) “PTAB Final Written Decision – Patentability 23. US Patent Application Publication No. of Challenged Claims.” Each discrete Final 2002/0180582 Written Decision was counted as a separate case, even where multiple decisions addressed 24. US Patent Application Publication No. the same patent. On the other hand, when 2002/0031228 multiple cases were joined into a single Final 25. See Spectrum Brands v Assa Abloy, IPR2015Written Decision, such cases were considered 01562, Paper 35, at p. 10. Petitioner also asserted to be a single decision. that Nielsen alone rendered additional claims These statistics do not include settlements, obvious. Id. requests for adverse judgment, motions to 26. Id. at 33. terminate, still-pending cases, requests for rehearing, or appellate outcomes. The statistics 27. Id. at 32-33. 28. Id. at 33. reflect case outcomes on a per-case basis, and incorporate a number of decisions and 29. Id. at 33-34 (citing Kinetic Concepts, Inc. v Smith assumptions designed to eliminate redundancy & Nephew, Inc., 688 F.3d 1342, 1369 (Fed. Cir. while providing the most impartial, accurate, 2012)). and useful information possible. While care 30. IPR2015-01557, Paper 19 (Jan. 3, 2017). has been taken to ensure the accuracy of this 31. MMCA Technical Committee, the data, the numbers presented here should be Multimediacard System Specification, Version treated as an estimate. 1.4 (1998). 8. This article refers to “instituted claims” to 32. SD Group, SD Memory Card Specifications mean claims that were adjudicated at final – Simplified Version of: Part 1 Physical Layer written decision. Specification Version 1.01 (2001). 9. See Patent Trial and Appeal Board Statistics 33. IPR2015-01557, Paper 19, at 28-34. 3/31/2017, at 10, available at https://www. The Board ultimately determined that the uspto.gov/sites/default/files/documents/AIA%20 claims were unpatentable, on other grounds. Statistics_March2017.pdf. See id. at 10-28, 33.

Notes and references

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34. 35. 36. 37. 38. 39. 40. 41. 42.

43. 44.

45. 46. 47. 48. 49. 50.

51.

52. 53. 54.

55.

Id. at 31-32. Id. at 32 (emphasis added). Id. 35 U.S.C. § 316(e). Id. at 30. Id. 35 U.S.C. § 314(a). 35 U.S.C. § 316(e). Nissan N. Am., Inc. v Joao Control & Monitoring Sys., LLC, IPR2015-01508, Paper 31 (Jan. 25, 2017). Coxcom, LLC v Joao Control & Monitoring Sys., LLC, IPR2015-01762, Paper 35 (Feb. 15, 2017). The claim was found unpatentable on another instituted ground. Nissan, IPR2015-01508, Paper 31, at 27. Id. at 35-36. Id. Coxcom, IPR2015-01762, Paper 35, at 25. Id. Id. at 25-26. In many cases whether the same argument was presented by patent owners in the preliminary response is subjective, because the argument relied on by the Board may be a variation on the same argument. The authors have attempted to draw reasonable distinctions where the argument relied upon was sufficiently different from the preliminary response. The data presented here, however, should be treated as an estimate. Arguments raised sua sponte by the Board, such as discussed above with respect to Sony v Imation, are considered as having been first raised post-institution. 81 Fed. Reg. 18750-66 (Apr. 1, 2016). 42 C.F.R. §§ 42.108, 42.208. The statistics referenced and relied on in this article provide several perspectives on postgrant practice at the USPTO, and additional statistics are available at Finnegan’s AIA Blog at www.aiablog.com. Various other PTAB metrics collected and generated by Finnegan are reserved for the use of Finnegan and its clients. This information is a purely public resource of general information that is intended, but not guaranteed, to be correct and complete. It is not intended to be a source of solicitation or legal advice. This information is not intended to create, and receipt of it does not constitute, an attorney-client relationship. The laws of different jurisdictions may be implicated, and facts and circumstances can vary widely. Therefore, the reader should not rely or act upon any information in this article, but should instead seek independent legal advice.

www.cipa.org.uk

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US UPDATE

PATENT QUALITY

USPTO quality initiatives Although many of the USPTO’s 12 Enhanced Patent Quality Initiative programs have concluded, they have changed the way the USPTO operates. The Finnegan team provide an overview of these initiatives and reviews some ways that practitioners can take advantage of the ongoing programs.

n February 2015, the USPTO launched an Enhanced Patent Quality Initiative with the goal of improving work product, metrics for measuring patent quality, and customer service1. To implement this initiative, the USPTO created 12 EPQI programmes2. As detailed in this article, only a few of the programmes are still in place, but they have all influenced the way the USPTO operates. Several of the EPQI programmes were directed to better education and training of examiners. First, the Clarity of the Record Training ran through the USPTO’s fiscal year 2016 and offered examiners a series of training courses on the various patentability rules. The training focused on educating examiners on the requirements and developing case law regarding section 101 (subject-matter eligibility) and section 112 (written description, enablement, definiteness, and functional limitations of claim language). These were small-group training sessions that were led by a core group of trainers and designed to be interactive. Although the official Clarity of the Record Training initiative ended, the USPTO plans to continue offering similar sessions in the future. A second set of training sessions made up the Clarity of the Record Pilot programme. In this programme, randomly selected examiners, with at least two years’ experience, were provided tips on best practices for claim interpretation, providing reasons for allowance, and drafting interview summaries. The programme ended in August 2016, and the USPTO is analyzing if and how this programme should be implemented for the entire examining corps. A third set of training sessions were part of the EPQI’s Scientific and Technical Information Center (STIC) Awareness Campaign. The STIC is a resource centre for all examiners and was established by the Patent Act 18363, but has been underutilized in recent years. The STIC Awareness Campaign included a computer-based training series, technology centre roadshows with STIC staff visiting each technical centre, and participation in the USPTO’s Volume 46, number 6

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Patents Training at Headquarters Expo. The Campaign ended in August of 2016, but the STIC has announced that it will incorporate several of its efforts from the Campaign into its standard operating procedures. In addition to the training sessions, a fourth initiative, the Interview Specialist programme, was also launched. This programme identified experts in each technology centre to assist with interview logistics4. The experts were well versed in USPTO interview policy and procedure and were available to provide guidance on the format of the interview and assistance in setting up, for example, WebEx interviews or public interview rooms. This initiative is ongoing with the goal of improving customer service by preparing examiners for interviews and reducing the technical issues that can derail an interview and possibly delay prosecution. Some of the EPQI initiatives were designed to evaluate innovative prosecution proposals. The Post-Prosecution Pilot (P3) programme ran between 11 July 2016 and 12 January 2017. The CIPA Journal reviewed this programme in detail5, but in brief, it allowed applicants to provide oral arguments to a panel of examiners after a final rejection and before appealing the rejection. After arguments, the panel would then render a decision. About 60% of the decisions resulted in the panel maintaining the final rejection, while around 20% of the decisions reopened prosecution and about 20% resulted in allowances6. The P3 programme was not extended past its initial conclusion date, and there is no word from the USPTO on how the information from the P3 programme will be used to improve the USPTO’s procedures. Another programme reviewed by CIPA Journal7, the Quick Path Information Disclosure Statement (QPIDS) programme, was also reevaluated as one of the EPQI initiatives. The QPIDS programme started in 2012 as a way for applicants to submit newly discovered references to the USPTO without withdrawing an application from issuance after paying an issue fee. The USPTO now receives approximately JUNE 2017

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3,000 QPIDS requests per year8. In re-evaluating the QPIDS programme, the USPTO considered changing the rules to make this programme permanent, but decided that it would be too time-consuming to do so. Instead, the USPTO decided to continue with the programme as is9. The EPQI programme also included the unique Topic Submission for Case Studies programme, which allowed the public to submit topics to be researched by the USPTO. The idea behind this programme was to address the issues that applicants and practitioners identified as needing the USPTO’s attention. The USPTO received over 135 submissions and selected six subjects to analyze. Three of the topics involved evaluating section 101 rejections (subject-matter eligibility), one topic involved the motivation statements for section 103 rejections (obviousness), and two topics involved section 112 rejections (written description and functional claim language)10. Although the USPTO expected to publish all of the study results “no later than March 201711,” it has not yet done so12. Some information on three of the studies was published as part of the 13 December 2016, Patent Quality Conference13, but it is unclear when the full results will be released. It is equally unclear what steps the USPTO will take in response to the results. However, given the USPTO’s continuing interest in working with stakeholders and providing more resources to examiners, we expect to see the USPTO to incorporate at least some of the feedback in future programmes. Finally, the 12 EPQI initiatives included several technical and procedural upgrades. For instance, the Design Patent Publication Quality programme implemented a new process for publishing design patents that improves the image quality for them. The Post-Grant Outcomes initiative began notifying examiners in April 2016 when they are examining an application related to a patent being challenged in a postgrant proceeding. In August 2016, the Post-Grant Outcomes initiative was enhanced by providing examiners a desktop viewer application that allows them to view the contents of the record of the proceeding and access any cited art. Based on the success of this programme, the USPTO is looking to expand it and include notice for reexaminations and district court cases that are related to the patent application14. To help analyze the prosecution process, the Clarity and Correctness Data Capture project created a single comprehensive Master Review Form

PATENT QUALITY

(MRF) to capture data about completed office actions. The new MRF replaces the two separate forms that were previously used by the Office of Patent Quality Assurance and the supervisors of the technology centres. The two separate forms made it impossible to aggregate the data; however, the new MRF solves this problem. The EPQI’s Quality Metrics initiative set out to replace the Quality Composite Score, which had been used to evaluate examiner’s work since 2011. The new quality metrics include product indicators to measure the correctness and clarity of office actions, process indicators to measure examiners’ efficiency and compliance with USPTO processes, as well as perception indicators to measure employees’ and applicants’ opinions about the USPTO’s work15. Although some metrics for these indicators have been developed, the USPTO is still working on creating a complete set of analytics to measure the quality of examination. The final programme of the 12 EPQI initiative is the Automated Pre-Examination Search Pilot, which is intended to eventually provide examiners with the results of an automated search of the prior art before the examiner begins a manual search. The USPTO decided to develop proprietary software, which has been under development since July 2016. Initial tests of the search tool have shown that in approximately 33% of the cases, the software capable of finding at least one reference cited by the examiner in an office action. Thus, the automated results may not only help an examiner learn about a field and develop more targeted search terms for a manual search, they may also provide art that the examiner can use in a rejection. Furthermore, because the search is automated, it does not cut into the time allotted to the examiner for examination. The USPTO plans to launch a pilot programme for this initiative sometime in 2017. With only a few remaining programmes, the EPQI appears to be ramping down. There is reason to believe, however, that more programmes may be added. The EPQI was a brainchild of Michelle K. Lee16, who was the USPTO Director when EPQI was announced during the Obama administration. Whether Director Lee — an Obama appointee — would remain in her role after Donald Trump took office remained unanswered question for several months into the new presidency. The USPTO recently confirmed that she is, and presumably will continue to be, Director of the USPTO17. Director Lee has long been a supporter of the USPTO’s patent quality initiatives18, so

US UPDATE CONTRIBUTORS For more information on Finnegan or the authors of these articles, please visit www.finnegan.com Contact: anthony.tridico@finnegan.com

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Timothy McAnulty Partner, Washington, DC

Jessica L.A. Marks Associate, Reston, VA

Kevin D. Rodkey Associate, Atlanta, GA

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with her status settled, there may be an uptick in the number of these EPQI programmes in the near future. Even though most of the 12 EPQI initiatives have or are close to concluding, applicants looking to become more involved in the USPTO’s operations can still participate in the EPQI’s ongoing programmes. For those new to patent law, the USPTO developed Stakeholder Training on Examination Practice and Procedure (STEPP)19. The STEPP runs three-day courses aimed at explaining the USPTO’s rules and procedures to inventors or new patent practitioners. These programmes are free, and they are held throughout the year at both the USPTO’s main Alexandria, Virginia campus and at its regional offices. For more experienced practitioners looking to influence the USPTO’s operation, the USPTO has begun hosting Patent Quality Chats20, which are monthly webinars covering topics ranging from the rationale statements in obviousness rejections

Notes and references 1. Enhanced Patent Quality Initiative Pillars, available at https://www.uspto.gov/patent/ enhanced-patent-quality-initiative-pillars 2. Enhanced Patent Quality Initiative, available at https://www.uspto.gov/patent/initiatives/ enhanced-patent-quality-initiative-0 3. Pub.L. 24–357, 5 Stat. 117, enacted 4 July 1836 (establishing a library of prior art to assist examiners). 4. A list of the current interview specialists can be found at https://www.uspto.gov/ patent/laws-and-regulations/interviewpractice/interview-specialist. 5. Tridico Ph.D., Anthony C., Marks, Jessica L.A., Sommers Ph.D., Erin M. “Quality Patents,” January/February [2017] CIPA 19. 6. Enhanced Patent Quality Initiative (EPQI): Program Results at p.18, from Patent Quality Conference: Advancing Quality Across the IP Community, available at https://www. uspto.gov/sites/default/files/documents/ PatentQualityConference%20Booklet.pdf 7. Tridico Ph.D., Anthony C., Marks, Jessica L.A., Sommers Ph.D., Erin M., “Designed to Streamline,” January [2016] CIPA 24. 8. Enhanced Patent Quality Initiative (EPQI): Program Results at p.19, from Patent Quality Conference: Advancing Quality Across the IP Community, available at https://www. uspto.gov/sites/default/files/documents/ PatentQualityConference%20Booklet.pdf 9. Enhanced Patent Quality Initiative (EPQI): Program Results at p.19, from Patent Quality Conference: Advancing Quality Across the

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to how to properly fill out an application data sheet (ADS). The USPTO leaves approximately 20 minutes at the end of each session to answer individual questions. The Patent Quality Chat webinars are also free and are open to the public. These 12 EPQI programmes are a part of the USPTO’s ongoing commitment to improving the patent process. Several other USPTO initiatives, such as the Automated Interview Request Tool and the Collaborative Search Pilot21, fall outside of the 12 EPQI programmes but are also designed to further the USPTO’s goal. Even if no more programmes are added under the auspices of EPQI, new initiatives, and new opportunities for practitioner involvement, seem likely to continue. Authors: Jessica L.A. Marks and Timothy P. McAnulty; for more information on Finnegan or the authors of this article, please visit www.finnegan.com. Contact: anthony.tridico@finnegan.com

IP Community, available at https://www. uspto.gov/sites/default/files/documents/ PatentQualityConference%20Booklet.pdf 10. “Topics Announced for Case Studies Pilot,” Director’s Forum Blog, posted 18 May 2016, available at https://www.uspto.gov/ blog/director/entry/topics_announced_for_ case_studies. 11. Enhanced Patent Quality Initiative (EPQI): Program Results at p.12, from Patent Quality Conference: Advancing Quality Across the IP Community, available at https://www. uspto.gov/sites/default/files/documents/ PatentQualityConference%20Booklet.pdf 12. Compare “Topics Announced for Case Studies Pilot,” Director’s Forum Blog, posted 18 May 2016, available at https:// www.uspto.gov/blog/director/entry/topics_ announced_for_case_studies (“we will post the study’s results on the Topic Submission for Case Studies Pilot webpage”) with Topic Submission for Case Studies Pilot webpage, https://www.uspto.gov/patent/ initiatives/topic-submission-case-studiespilot-program.html (providing no results). 13. Enhanced Patent Quality Initiative (EPQI): Program Results at pp. 12-14, from Patent Quality Conference: Advancing Quality Across the IP Community, available at https:// www.uspto.gov/sites/default/files/documents/ PatentQualityConference%20Booklet.pdf 14. Enhanced Patent Quality Initiative (EPQI): Program Results at p.10, from Patent Quality Conference: Advancing Quality Across the IP Community, available at https://www. uspto.gov/sites/default/files/documents/ PatentQualityConference%20Booklet.pdf

15. Enhanced Patent Quality Initiative (EPQI): Program Results at p.15-16, from Patent Quality Conference: Advancing Quality Across the IP Community, available at https://www.uspto.gov/sites/default/files/ documents/PatentQualityConference%20 Booklet.pdf 16. Remarks by Director Michelle K. Lee at the Patent Quality Conference Keynote, 13 December 2015, available at https:// www.uspto.gov/about-us/news-updates/ remarks-director-michelle-k-lee-patentquality-conference-keynote 17. Letter Re: Freedom of Information Act (FOIA) Request No. F-17-00099 from the USPTO Office of General Counsel, 10 March 2017, available at http:// www.ipwatchdog.com/wp-content/ uploads/2017/03/F-17-00099-FinalResponse.pdf. 18. Remarks by Director Michelle K. Lee at the Patent Quality Conference Keynote, 13 December 2015, available at https:// www.uspto.gov/about-us/news-updates/ remarks-director-michelle-k-lee-patentquality-conference-keynote 19. Stakeholder Training on Examination Practice and Procedure (STEPP), available at https://www.uspto.gov/patent/initiatives/ stakeholder-training-examination-practiceand-procedure-stepp#step1 20. Patent Quality Chats, available at https://www. uspto.gov/patent/initiatives/patent-quality-chat 21. See, e.g., Tridico Ph.D., Anthony C., Marks, Jessica L.A., Sommers Ph.D., Erin M., “Designed to Streamline,” January [2016] CIPA 24.

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Patent decisions Arrow declaration | Invalidity | Obviousness | Priority (1) Fujifilm Kyowa Kirin Biologics Company Ltd (2) Samsung Bioepis UK Limited (3) Biogen Idec Limited v AbbVie Biotechnology Ltd, “FKB1” [2017] EWHA 395 (pat); 3 March 2017; Carr J

This decision from Mr Justice Carr concludes the long-running dispute between Fujifilm Kyowa Kirin Biologics Company Ltd (“FKB”) and Samsung Bioepis UK Limited/Biogen Idec Limited (“SB/Biogen”), and the defendant, AbbVie Biotechnology Ltd (“AbbVie”). This decision was discussed on the IPKat Blog (http://ipkitten.blogspot.co.uk) on 3 March 2017. The case concerns AbbVie’s monoclonal antibody drug, adalimumab, marketed by AbbVie under the trade mark Humira. Humira is the highest selling prescription drug in the world by global sales, achieving net sales in 2014 in excess of $12.5 billion. Adalimumab is a fully human antibody that binds and neutralizes the activity of the cell-signaling protein, TNFα, and is approved for the treatment in adults of, among other indications, rheumatoid arthritis (RA), psoriatic arthritis and psoriasis. This case concerns a family of secondary patents and patent applications protecting dosage regimens of adalimumab in the treatment of various indications. The claimants (FBK and SB/Biogen) each intend to market a biosimilar adalimumab product in Europe, including in the UK, after expiry of the basic adalimumab patent and its associated SPCs on 18 October 2018. Due to regulatory requirements, it is necessary for the claimants to use the dosage regimens authorized for Humira (and the subject of their secondary patents and applications). These proceedings started as revocation actions by FKB and SB/Biogen during which the claimants also sought declarations that their products were anticipated and/or obvious at the priority dates of the patents in question. A declaration of this kind is referred to as an “Arrow” declaration, since it was first allowed in the case Arrow Generics Limited v Merck & Co. Inc. [2007] EWHC 1900 (Pat). If such declarations are granted, then the claimants will have a so-called “Gillette defence” to complaints of acts committed in the UK, on the basis that if there is infringement of any of the patents in suit, then these patents must be invalid. The patents in suit, at various times, were EP (UK) 1,406,656 (“the 656 patent”) in respect of autoimmune disorders including RA, and EP UK 1,944,322 (“the 322 patent”) in respect of psoriasis and psoriatic arthritis. The claimants indicated that they intended to add EP UK 2,940,044 (“the 044 patent”) in respect of RA to the proceedings, once it was granted. However, since 36 CIPA JOURNAL

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the commencement of proceedings, AbbVie disapproved of the text of both the 656 and 322 patents, with the effect of revoking them centrally, and so abandoning them for all designations, and de-designated the 044 patent, for the UK only. AbbVie had also given undertakings, the effect of which, it claims, gives at least as much protection to the claimants as the relief sought in the declarations. It also offered to pay the costs of the proceedings if its proposal was accepted and provided draft consent orders. Carr J divided the case into three principal issues: the priority case, the technical case, and the declaration case. As regards the priority case, the claimants challenged the entitlement of Abbott Bermuda to claim priority from the US priority application. After significant discussion and on consideration of the evidence provided by AbbVie, the judge concluded that AbbVie had proved that at the date of filing of the PCT application in question, Abbott Bermuda was “successor in title” to the invention of the US priority application and thus found the priority claim to be valid. The technical case relates to the issue of whether the administration of the claimants’ proposed products at a dose of 40mg sc every other week for the treatment of RA and also psoriasis and psoriatic arthritis lacked inventive step over certain prior art publications, when read in the light of the common general knowledge. The judge ultimately concluded that the administration if the claimants’ proposed products in the treatment of RA and also psoriasis and psoriatic arthritis was obvious at the priority date. In deciding the declaration case, the judge considered a number of factors. The main debate related to whether there was a “useful purpose” in granting the declarations. AbbVie argued there can be no useful purpose in the grant of declaratory relief because: a. all EP (UK) patents concerning the dosage regimens at issue in these granted patents had been revoked or surrendered in the UK and therefore there will never be any UK patent claims to the dosage regimes in question, and b. AbbVie had given clear an unambiguous undertakings to the Court which are just as useful as the relief sought by the claimants. AbbVie further argued that it is not the function of the UK Patents Court to act as an advisory body for other Courts around Europe, and it would be wrong to make a declaration purely for that purpose. FKB and SB/Biogen’s position was that AbbVie is not prepared to offer the relief, or even an acknowledgement in terms of the declarations, because it would be an unambiguous indication that the biosimilar products have been cleared in the UK. The claimants argued that AbbVie has threatened to pursue infringement proceedings throughout the world and suggested that AbbVie was refusing to submit to the declarations precisely because they will serve a number of useful purposes, by removing www.cipa.org.uk

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any confusion in the marketplace, promoting settlement, preventing interference with the claimants’ supply chains between Europe and the UK and by influencing other courts throughout Europe. The claimants further submitted that latest move by AbbVie cannot be viewed in isolation and that it is consistent with AbbVie’s well-established strategy of dragging out proceedings as long as possible, causing maximum expense and inconvenience to its opponents and then throwing in the towel by withdrawing its patents, just before they are scrutinised by the court, whilst covering the same subject-matter with further divisionals They argued that this strategy is designed to encourage market uncertainty, whilst shielding AbbVie’s patents from the risk of a finding of invalidity. After considering the evidence put forward by both sides, Carr J decided that the grant of the declarations would serve as a useful purpose, and provided a number of reasons for this decision. He concluded that the declarations would provide commercial certainty and further clarity than the undertakings given by AbbVie. In arriving at this conclusion, he focused on AbbVie’s conduct stating that: “In my judgment, AbbVie has consistently adopted a policy of publicly expressing its confidence in its Humira patent portfolio, and its intention to enforce it against competition from biosimilars, whilst at the same time shielding patents within the portfolio from scrutiny by the court. When patent protection has been abandoned by AbbVie, another sub-divisional has been applied for, thereby perpetuating commercial uncertainty.” He also agreed that the declarations would serve a useful purposes in helping to protect the claimants’ European supply chains for the UK and promoting settlement on a European or even worldwide basis by changing the parties’ relative positions in any negotiations. In considering if any special reasons for or against the grant of the declarations, Carr J highlighted “the most unusual facts of the case” and stated that “…there are special reasons which support the grant of the declarations. These include AbbVie’s conduct of threatening infringement whilst abandoning proceedings at the last moment (in order to shield its patent portfolio from scrutiny); the amount of money at stake for the claimants in 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. Volume 46, number 6

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terms of investment in clinical trials and potential damages if they launch at risk; and the need for commercial certainty, having regard to AbbVie’s threats to sue for infringement throughout the world”. In summary, Carr J concluded that it was in the interests of justice to grant the declarations.

Priority | Validity | Novelty | Obviousness Unwired Planet International Limited v (1) Huawei Technologies Co. Limited, (2) Huawei Technologies (UK) Co. Limited [2017] EWCA Civ 266; 12 April 2017 Gross LJ, Floyd LJ, and Arnold J

This decision relates to an unsuccessful appeal against the judgment of Birss J in [2015] EWHC 336 (Pat) (reported February [2016] CIPA 21), in which Unwired Planet’s European (UK) patent No. 2229744 was found valid and infringed. The decision was discussed on the IPKat blog (http://ipkitten. blogspot.co.uk) on 24 April 2017. The patent is one of a series of patents related to LTE 4G telecommunications that Unwired Planet had acquired from Ericsson. It is directed to a method of “polling”, in which a message is sent by a transmitter of data to a receiver for a status report of information received once the number of transmitted data units or data bytes has reached a predetermined level. The status report permits the transmitter to determine whether the data transmitted had been received and if not, which packets of data are missing and need to be retransmitted. Of the issues covered at first instance, three remained in the appeal; the validity of the priority claim, obviousness over a prior art document known as “Motorola TDoc”, and the availability to the public before the priority date of a novelty destroying document known as “Ericsson TDoc”.

Priority claim At first instance, the judge found that the feature of “counting the number of transmitted data units” covered the case in which the “protocol data unit” (PDU) was counted “upon assembly”, i.e. before transmission. The judge also found that the skilled person knew this was the conventional approach as a matter of common general knowledge and would understand that the language of “transmitted data” in the priority document was used loosely and non-limiting. In the appeal, Huawei argued that the only teaching in the priority document was of counting “transmitted data”, i.e. after transmission, and that common general knowledge was not sufficient to override such explicit teaching. Huawei also argued that the judge had erred in considering whether the priority JUNE 2017

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document excluded the concept of counting upon assembly and should have considered whether the concept was disclosed. Unwired Planet argued that the skilled person would not be concerned with such a level of detail and would approach the priority document with common general knowledge as the judge had found. Considering all the arguments, Floyd LJ noted that: “One does not assess priority, however, by asking whether everything which falls within the claim is clearly and unambiguously taught by the priority document. A test of that kind would make claiming priority impossibly hard. The exercise of determining priority involves asking whether the invention is directly and unambiguously derivable from the priority document, not whether every possible embodiment of the invention is so derivable. …the priority document must not be read in a vacuum, but with the benefit of the common general knowledge which forms the factual matrix against which the technical disclosure is assessed… It follows that an appellate court must exercise caution when differing from a trial judge on the interpretation of a priority document where its meaning may be coloured by the common general knowledge. An alternative construction may seem more plausible in the drier atmosphere which prevails on appeal, than it did to a judge who has been soaked in the evidence of those skilled in the art.” Floyd LJ took the view that the skilled person would indeed understand the priority document to be referring to the conventional approach and that reading the priority document in any other way would be to do so in a vacuum. On that basis, Floyd LJ held that the judge was correct in considering the common general knowledge of the skilled person and had come to the correct conclusion.

Obviousness Motorola TDoc was a document submitted to the 4G standards setting body as a proposal and disclosed a similar method of polling as that of claim 1 of the patent. The main distinction was that the polling method of Motorola TDoc required a trigger that was based on “byte count” whereas claim 1 required one that is based on “PDU count”. Huawei had argued that at the time of the priority date, the skilled person would be concerned with a problem that required the counting of PDUs and would readily combine the PDU counter known from the 3G standards with the method disclosed in Motorola TDoc. However, at first instance, based on secondary evidence including minutes of meetings of the standards setting committee, the judge found that the method of Motorola TDoc had already been rejected at the time of the priority date and that the general thinking of the standards setting community had moved even further from the concept of using a PDU counter. 38 CIPA JOURNAL

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In the appeal, Huawei argued that the “primary” evidence, that is the Motorola TDoc and the expert witnesses’ evidence, pointed clearly to the finding of obviousness and that no amount of “secondary” evidence could override this finding. Huawei argued further that standards setting committees were not solely concerned with solving technical problems and would have other motivations in mind such as lobbying for particular intellectual property to be included. Unwired Planet argued that the environment facing those working in the field was complex and multi-faceted and that looking at what actually happened in real life injected reality into what could otherwise be a simplistic view of what changes were necessary to arrive at the invention. Before considering any of the arguments, Floyd LJ noted that Kitchin LJ set out in MedImmune v Novartis ([2012] EWCA Civ 1234) that an appeal court is usually reluctant to interfere with any fact-based finding on obviousness of the trial judge unless there had been an error in principle. Nevertheless, Floyd LJ went on to note, of Huawei’s expert witness evidence: “The fact that individual components of an invention can be identified with hindsight from the prior art and advantageously combined together does not amount to a case of obviousness. It is notable that Mr Wickins only wanted to take the idea of the byte counter from Motorola and to combine it with other ideas from elsewhere. That approach is redolent of hindsight. Mr Wickins’ evidence takes no account of a number of technical facts.” In connection with the minutes of the standards setting committee meetings (Exhibit DC4), Floyd LJ noted that: “In the circumstances the judge was entitled to turn to the secondary evidence to see what assistance it provided him with in reaching his conclusion. I do not think the judge made any error of principle in placing such reliance as he did on Exhibit DC4. The judge was plainly aware of the evidential limitations of Exhibit DC4, and of the place which secondary material such as this had in his overall assessment of obviousness. He expressly warned himself against placing too much weight on it. On any view, it was not the only material which favoured a conclusion of inventiveness. It is not for this court to reevaluate the weight which a trial judge gives to any individual factor in his overall evaluation, in the absence of an error of principle. I would therefore reject the attack on claim 1 based on obviousness over the Motorola TDoc.”

Novelty It was common ground that the prior art document “Ericsson TDoc” would be novelty destroying if it was part of the state of the art. The issue hinged on whether Ericsson TDoc was made available to the public before the priority date of the patent. Ericsson TDoc was a document submitted, by the original proprietor of the patent, to the 4G standards setting body. The www.cipa.org.uk

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submission was made, and rendered the document available to the public, at 8:36 am Central European Time (CET) on 8 January 2008, or 2:36 am Eastern Standard Time (EST). Subsequently, at 10:59 pm CET on 8 January 2008, or 4:59 pm EST on 8 January 2008, the priority application was filed at the USPTO. Huawei had argued that at the point in time of the submission of Ericsson TDoc, it was 9:36pm on 7 January 2008 in Hawaii, meaning that it was made available to the public the day before the priority date. However, at first instance, the judge took EST, i.e. the time zone of the USPTO, as the reference point and found that Ericsson TDoc was not made available to the public “before the [effective] date of filing” within the meaning of article 54(2) EPC. In the appeal, Huawei argued that the determination of the date of the prior publication should be based on the place where the event of disclosure occurred, in this case, Hawaii. Unwired Planet argued that such an approach would permit the anomalous situation in which a publication subsequent to the filing of an application being rendered available to the public at a time zone that preceded the time zone in which the application was made and therefore becoming prior art. Floyd LJ, finding in favour of Unwired Planet, noted that: “The conclusion that the date is determined in the time reference of that patent office is in any event inescapable. It follows that the filing/priority date is the 24-hour period in that time zone during which the filing occurred… I can see no justification in the language of article 54(2) for introducing a concept of publication date… …a publication is not part of the state of the art unless it was published before the priority date. The priority date is the 24-hour period of the day on which filing took place, in the time zone of the patent office where it was filed. The publication must occur before that day, on a time basis, by reference to the time zone of the patent office of filing.” In conclusion, Floyd LJ upheld the decision of Birss J and dismissed the appeal in its entirety. Gross LJ and Arnold J agreed.

Supplementary protection certificate | Article 3(a) SPC Regulation (1) Sandoz Limited, (2) Hexal AG v (1) G.D. Searle LLC, (2) Janssen Sciences Ireland UC [2017] EWHC 987 (Pat); 3 May 2017; Arnold J

This decision was discussed on the IPKat blog (http://ipkitten. blogspot.co.uk) on 9 May 2017. In this case, Sandoz Limited and Hexal AG (collectively referred to herein as “the claimants”) challenged the validity of supplementary protection certificate SPC/GB07/03 (“the SPC”) for a product described in the SPC as “darunavir of the pharmaceutically acceptable salt thereof ”. The Volume 46, number 6

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proprietor of the SPC is the first defendant (“Searle”) and the exclusive licensee is the second defendant (“JSI”). The SPC in question covers a product marketed in Europe by companies related to JSI under the trade mark Prezista. Prezista is a protease inhibitor and is an anti-retroviral medication used in the treatment of human immunodeficiency virus (HIV). The SPC is based on EP (UK) 0 810 209 (“the Patent”), of which Searle is the proprietor and JSI is the exclusive licensee. The claims of the Patent define a class of compounds by reference to a Markush formula. Darunavir is a specific compound that falls within the scope of this formula. The claimants sought to revoke the SPC, which expires on 23 February 2019 in order to clear the way for the marketing of a generic darunavir product. The claimants admitted for the purposes of these proceedings only that, if the SPC is valid, then the marketing of their product prior to expiry of the SPC would infringe it. The claimants did not dispute the validity of the Patent, and only challenged the validity of the SPC on the ground that is did not comply article 3(a) of European Parliament and Council Regulation concerning the supplementary protection certificate for medicinal products (“the SPC Regulation”). Article 3(a) of the SPC Regulation specifies that an SPC can only be granted if the product is protected by a basic patent in force. The claimants asserted that, although darunavir falls within the scope of the claims, it is not “protected” by the patent within the meaning of article 3(a). Their argument was that darunavir is not specifically identified by name or structure in the claims or anywhere in the specification, nor is there any teaching in the patent which points to darunavir. The claimants proposed a test for determining whether Markush claims complied with article 3(a), which required determining whether the skilled person would consider the product to be part of the subjectmatter of the patent based on their reading of the specification and their common general knowledge as at the priority date, and concluded that this test was not satisfied in the present case. The defendants contended that, although the correct interpretation of article 3(a) remains unclear, upon any tenable interpretation of article 3(a), darunavir is a product which is “protected” by the Patent. In particular, the defendants argued that, although the claims of the Patent must be interpreted as at the priority date of the Patent, the question whether a product is “protected” by those claims is to be judged once the product is known. After consideration of the evidence provided by both sides and the various possible interpretations of article 3(a), Arnold J ultimately concluded that there was not any tenable interpretation of article 3(a) that leads to the conclusion that darunavir is not “protected” by the Patent. He held that the broad tenable interpretation of article 3(a) is that it is sufficient that the product falls within at least one claim of the patent applying the Extent of Protection Rules, but that, at present, it does not appear that this interpretation is correct, because the CJEU has so far held that more is required. JUNE 2017

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Arnold J referred to the CJEU decision in Medeva (C-322/10 Medeva BV v Comptroller-General of Patents, Designs and Trade Marks [2011] ECR I-12051) in which the CJEU ruled that article 3(a) precluded the grant of an SPC relating to active ingredients which are not “specified” or “identified” in the wording of the claims of the basic patent. He also made reference to the CJEU decision in Lilly (C-493/12 Eli Lilly & Co Ltd v Human Genome Sciences Inc.), in which it was held that it was sufficient for the active ingredient to be covered by a functional description provided that the claims “relate, implicitly but necessarily and specifically, to the active ingredient”. Arnold J reiterated his view that the tests laid out in both Lilly and Medeva are unclear and difficult to apply, but held that this did not matter for the purposes of the present case as Lilly sheds on the test laid down in Medeva. This suggests that it is sufficient for the claim to specify the product by means of a Markush formula which covers it, and therefore in this case darunavir is “protected” by the Patent. He also took the opportunity to suggest that a better approach to the interpretation of article 3(a) is a two-stage test under which a product is “protected” by the basic patent if: 1. the product falls within the scope of the claim when interpreted in accordance with the Extent of Protection Rules; and

PATENTS: UK

2. the product does so because it contains an active ingredient, or a combination of active ingredients, which embodies the inventive advance (or technical contribution) of the patent. If that test is applied to the facts of the present case, then it is clear darunavir is “protected” by the patent, since darunavir embodies the inventive advance of the Patent, namely the identification of the compounds covered by claim 1 as having utility as HIV protease inhibitors. The Judge also expressed his view that the claimants’ objection to the claims to be essentially that claim 1 is of excessive breadth. He explained that such an objection is an objection to the validity of the basic patent, and in so doing, distinguished it from an objection founded in SPC law. He commented that it is not the function of the patent offices when assessing applications for the grant of SPCs to have to consider whether the breadth of the claims of the basic patents relied on is justified as this would go against the “simple and transparent” system that had been envisaged by the European Commission before the SPC Regulation came into force. In summary, Arnold J concluded that the SPC complies with article 3(a) of the SPC Regulation and dismissed the claimants’ claim.

CITMA Summer Reception Tuesday 4 July 2017 | 6.30pm – 8.30pm Sea Containers, London

Important dates Qualifying Examinations • Examination Dates: between Monday 9 October 2017 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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Gather with the IP profession on the banks of the river Thames for an evening of networking at the stunning Sea Containers on Tuesday 4 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. Bookings can be made individually online or if you’re purchasing two or more tickets simply download and complete the registration form. For more details and to book see https://www.citma.org.uk Cost: CITMA members – £59 (plus VAT) Non-members – £69 (plus VAT)

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DECISIONS

IPO decisions Opinions: section 74 Fraunhofer-Gesellschaft Zur Förderung Der Angewandten Forschung E.V Opinion 02/17. 25 April 2017 A request for an opinion on validity in light of two cited documents was made regarding an EP(UK) patent. The requestor asked only whether certain claims lacked novelty over the documents. Observations in reply from the proprietor included arguments about inventive step. The examiner considered these arguments were not confined to the issues raised in the request, namely novelty, and so were not confined strictly to matters in reply as required by rule 96(4). The examiner therefore disregarded the inventive step arguments. The observations in reply also included exhibits containing additional documentary information as to the publication date of one of the prior art documents (referred to as RAO). As the publication date of RAO was disputed by the proprietor, the examiner considered the exhibits for the opinion. The requestor stated that RAO, a university thesis, had been made available to the public in May 1999, well before the priority date of the patent. In support, the requester cited an excerpt from an unidentified item of correspondence from the university library stating that RAO was catalogued in May 1999 and would have been available for review beginning in 1999. The observer argued that RAO could not be considered as pre-published prior art, as it was not possible to tell from the correspondence whether RAO was actually made available to the public, considering the statement to only assume that, if everything happened in the normal way, RAO would have been part of the library. The examiner was satisfied that on the balance of probability RAO was made available to the public from May 1999, and so formed part of the state of the art. The exhibits in the observations in reply, including the full letter from which the excerpt was taken, reinforced the examiner’s opinion. The examiner went on to consider the novelty of the requested claims. The requester argued a feature of claim 1 was shown from a combination of two figures of RAO, one showing an inverter and one showing a typical EMI filter topology. The requestor pointed to parts of RAO that mentioned EMI filters in relation to inverters to argue that a skilled person would combine the two figures. The examiner rejected this argument, considering that cited passages did not direct the skilled person, in a clear and unmistakable way, to combine the two figures. The examiner concluded that the requested claims were novel over RAO, but lacked novelty over the other prior art document. Volume 46, number 6

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Sufficiency: section 14(3) F Secure Corporation BL O/198/17 24 April 2017 The application related to a method of processing files for malware detection, including selecting from a plurality of known malware detection processing methods based on a combination of data. The examiner maintained objections that the application lacked novelty and sufficiency. The hearing officer first determined that the claimed invention was novel, and then moved on to consideration of sufficiency, noting that it was first necessary to define the skilled person. The skilled person was defined as a software engineer familiar with all commonly used malware detection processing methods, and aware of the relative processor power required to run the various methods. The applicant argued that selecting which malware detection method to use would have been known to a skilled person. The hearing officer agreed that the skilled person would be able to determine which method was suitable to use, but that this was different from selecting a method. There was, however, a lack of information on how the selection would be done, leading to a lack of disclosure of the essential features of the invention. The hearing officer allowed an extension to the compliance period for the applicant to consider sufficiency, and stated that if no amendments were received in time the application would be refused.

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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EPO decisions Internet disclosures | Standard of proof | Right to be heard – Article 113(1) EPC T 0545/08: Change capture for data warehousing / ORACLE INTERNATIONAL TBA decision of 24 March 2017 Chairman: R. Moufang Members: M. Rognoni and R. de Man This was an appeal requesting that the decision of the Examining Division to refuse a patent application be set aside owing to alleged procedural deficiencies of the first instance proceedings. When issuing its first communication pursuant to article 96(2) EPC 1973 the Examining Division considered a document (D1), which had been retrieved from the Internet on 15 December 2003, to belong to the prior art. Both the first communication and the international search report had regarded D1 as having been publicly-available in January 2002 as this was the date on the cover page of the document. Although this pre-dated the priority date of the application (24 May 2002), no explanation as to why D1 was considered to have been made available to the public in January 2002 had been provided. Only in oral proceedings did the appellant dispute the publication date of D1, submitting additional evidence in support of its arguments. The Examining Division refused to admit the new evidence on the grounds of late filing and because further investigations to determine the publication date of D1 would delay examination by preventing a decision being made in the oral proceedings. Furthermore, in the view of the Examining Division, the additional evidence did not prima facie establish that D1 had not been published before the priority date, and it was noted that the applicant had not challenged the publication date of D1 during the written procedure. On appeal, the TBA noted that in T 1134/06 the Board had held that it was necessary to prove beyond any reasonable doubt that an Internet disclosure constituted the state of the art. However, the TBA also cited other

PATENTS: EPO

decisions such as T 286/10 and T 2227/11 where for Internet disclosures the lower standard of proof on the balance of probabilities had been applied. While acknowledging that these standards were conceptually different, the TBA explained that divergent results could be avoided by applying the standard of the balance of probabilities with some qualification. Citing T 750/94, the TBA held that the standard of proof on the balance of probabilities should not be interpreted literally and would not be satisfied by “just tipping the balance slightly”. Instead, the facts must be established with a sufficient degree of certainty to convince the Examining Division (in this case) that the facts are correct, with the TBA noting that this is reflected in the section on Internet disclosures in the Guidelines (G-IV, 7.5.2). The TBA observed that this would hold true irrespective of which standard of proof is applied. Turning to D1, the TBA explained that the burden of proof lay initially with the Examining Division to establish at least prima facie evidence of its publication date. While the date on the cover page may have been prima facie evidence of the date of creation, it was not clear that D1 had been made available to the public in January 2002 as the date was both imprecise and unqualified. The TBA held that, as a result, the Examining Division had not been entitled to consider D1 as prior art without providing an explanation and further evidence as to why this was so. Consequently, there was no shift in the burden of proof to the appellant and it would not have been required to submit evidence to the contrary. Notwithstanding that the appellant’s additional evidence filed late during the first instance proceedings was not necessary, the Board went on to consider the Examining Division’s decision refusing to admit the evidence. While noting that the Examining Division had discretionary powers to disregard late-filed evidence, the TBA held that when exercising this discretion the Examining Division should have been aware that it had not provided further explanations or evidence as to D1’s availability before the priority date. Its failure to admit further evidence on this point had therefore deprived the appellant of its right to be heard pursuant to article 113(1) EPC. The TBA set aside the first instance decision and the case was remitted 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 contributor from Bristows is Craig Lumb.

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TRADE MARKS

Trade marks Decisions of the GC Ref no.

Application (and where applicable, earlier mark)

Comment

IWEAR

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to article 8(1)(b). The goods at issue were identical or similar (except horseshoes and pouch baby carriers). The BoA had correctly considered the overall impression created by the marks rather than analysing their individual parts. The marks had a high degree of visual and phonetic similarity – the ‘N’ was almost visually imperceptible, was likely to go unnoticed by the relevant consumer and would not prevent them from perceiving the identical sequence of five letters ‘I’, ‘W’, ‘E’, ‘A’ and ‘R’ within the mark applied for. The GC confirmed that case law did not always show that a consumer paid greater attention to the beginning of a mark. To the non-English speaking relevant public the marks had high phonetic similarity. Only English-speaking consumers would understand a phonetic difference between the marks. Neither of the marks had a conceptual meaning for the non-English speaking public and, even if the English word were recognised, a significant proportion would be unable to perceive different, meaningful elements between the marks. The weak distinctive character of the earlier mark was outweighed by the high degree of similarity and, having regard to the nature of the goods at issue, visual similarity carried greater importance within the overall assessment of confusion.

Lauritzen Holding AS v EUIPO; DK Company A/S

– leather and imitations of leather and goods made of these materials, trunks, travelling bags, umbrellas, parasols, walking sticks, whips harnesses saddlery (18) – clothing, footwear, headgear (25)

7 March 2017

INWEAR

T-622/14

Reg 207/2009

GC T-741/14

Hersill, SL, established in Móstoles (Spain) v EUIPO; KCI Licensing, Inc

– leather and imitations of leather and goods made of these materials, trunks, travelling bags, umbrellas, parasols, walking sticks, whips harnesses saddlery – clothing, footwear, headgear (25)

VACUP

– manually-operated medical apparatus for suction of fluids in the surgical field or of emergency secretions (10) MINIVAC

14 March 2017

– medical and surgical dressings (5) – medical apparatus for treatment of wounds; medical and surgical drapes (10)

Reg 207/2009

V.A.C.

– bandages, in particular foam bandages (5)

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The GC annulled the BoA’s decision that the earlier marks relied on in opposition proceedings had been put to genuine use. The GC confirmed that sworn statements were to be supported by other evidence that showed actual use of the mark on the goods or other documentation, to have evidential value. Pre-formulated declarations signed by health professionals and patients stating their involvement in use of V.A.C. product treatments did not establish evidence of actual use of the mark itself nor did it disclose the duration or extent of such use. A substantial amount of evidence lacked date information or contained dates outside of the relevant period and therefore were not relevant in the assessment of genuine use. Catalogues, product information and advertisements did

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DECISIONS

Ref no.

Application (and where applicable, earlier mark) – medical apparatus and instruments, in particular for treating wounds using negative pressure; devices for producing negative pressure (vacuum source) for medical purposes (10)

GC T-538/15

Edison SpA v EUIPO; Eolus Vind AB (publ) 14 March 2017 Reg 207/2009

– electric energy emanating from wind power (4) – plants for the production of renewable energy (11) – insurance; financial affairs; monetary affairs; real estate management; financial management of wind power plants (36) – construction of wind power plants and other buildings; repair of wind power plants and other buildings; installation services regarding wind power plants and other buildings (37) – electricity distribution of wind power energy (39) – energy production of wind power energy; leasing of wind power energy generating facilities (40) – scientific and technological services; industrial analysis and research services; technical planning and project management relating to the construction and use of wind power; technological engineering analysis in the field of wind power exploitation (42) – legal services (45)

TRADE MARKS

Comment not contain use of the V.A.C. mark per se, but showed a mark that included additional elements altered the distinctive character of the mark. The BoA also only examined the question of genuine use in relation to V.A.C. but not MINIVAC, which had also been relied on by KCI in the opposition. The threshold applied by the BoA in the assessment of genuine use was therefore too low.

The GC upheld the BoA’s decision found a likelihood of confusion between the marks at issue in relation to certain services pursuant to article 8(1)(b). The GC endorsed the BoA’s assessment that the two marks were not very similar. The marks were differentiated by the different colours and typefaces. The visual differences resulting from the specific stylisation outweighed any conceptual similarity the marks shared in representing energy or electricity. The conceptual identity of the marks was of little importance given that ‘e’ was descriptive of the goods and services at issue. The relevant public, comprising general consumer purchasing the goods and business professionals making decisions in light of specific professional knowledge and responsibility, had a higher level of attention. The relevant public would not therefore believe that the goods or services came from the same undertaking or economicallylinked undertakings. Given the low similarity of the marks, there was no likelihood of confusion between the goods, which were similar to a low degree. The BoA was, however, correct to find ‘electricity distribution of wind power energy’ and ‘energy production of wind power energy’ covered by the mark applied for were identical to ‘distribution of electrical energy and fuel’ and ‘generation of electrical energy’ covered by the earlier mark. A likelihood of confusion existed in relation to those services. There was no likelihood of confusion between the remaining services at issue. Documents relating to the general economic success of Edison SpA were insufficient to demonstrate that the mark applied for had acquired distinctive character through use.

– fuel, gas (4) – distribution of electrical energy and fuel (39) – generation of electrical energy (40)

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DECISIONS

Ref no.

Application (and where applicable, earlier mark)

GC T-495/15

Sociedad agraria de transformación No 9982 Montecitrus v EUIPO; Spanish Oranges, SL 16 March 2017

– preserved, frozen, dried and cooked fruits and vegetables (29) – oranges (31) – transport (39)

Reg 207/2009

– jams, compotes, jellies; preserved, dried and cooked fruits and vegetables; eggs; edible oils and fats; meat, fish, poultry and game; meat extracts (29) – fresh fruits and vegetables; agricultural, horticultural and forestry products and grains not included in other classes; live animals, natural plants and flowers; foodstuffs for animals; malt (31) – fruit drinks and fruit juices; syrups and other preparations for making beverages; beers; mineral and aerated waters and other nonalcoholic drinks (32)

TRADE MARKS

Comment

The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks at issue pursuant to article 8(1)(b). In its assessment of the relevant public, the BoA erred by not considering that the goods were sold to intermediaries, such as supermarkets, and not directly to customers. This error did not, however, have any impact on the BoA’s conclusion that the relevant public consisted of the section of the public with the lowest level of attention. The marks had a low degree of visual similarity, even though there were some letters common to both marks. The importance of the figurative element in the mark applied for, as well as the colour combination in the earlier mark, created a different overall impression. Even though the words would be pronounced differently, the BoA, in finding that there was a lower than average phonetic similarity, had failed to take into account that ‘mountain’ and ‘monte’ would sound similar if pronounced quickly and that the marks had the word ‘citrus’ in common (whereas the BoA held that it was not definitely so). The GC therefore held that there was an average degree of phonetic similarity between the marks. Depending on the linguistic knowledge of the relevant public, there was either a high degree of conceptual similarity or a lack of any similarity between the marks. In the global assessment of similarity, the BoA was correct to find that the visual elements were of greater importance because of the nature of the goods and the way in which they are sold. The GC endorsed the decision that there was no likelihood of confusion between the marks given the low visual similarity and lack of acquired distinctive character in the earlier mark.

The reported cases marked * can be found at http://www.bailii.org/databases.html#ew and the CJ and GC decisions can be found at http://curia.europa.eu/jcms/jcms/j_6/home Abbreviations used: A-G=Advocate General; BoA=Board of Appeal; GC=General Court; CJ=Court of Justice of the EU; CTM=Community Trade Mark; EUIPO=European Union Intellectual Property Office; EUTM=European Union trade mark; IPEC=Intellectual Property Enterprise Court This month’s contributors are Katharine Stephens, 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. Volume 46, number 6

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Application (and where applicable, earlier mark)

Ref no.

TRADE MARKS

Comment

Reg 207/2009

BRENT INDEX – electronic publications; interactive computer software and computer hardware for providing financial services (9) – financial services; operating a commodities and commodity derivatives exchange; providing financial exchange services for transactions involving currencies, commodities, futures, derivatives, securities, shares, stocks, options and bonds (36) – hosting an interactive website that gives multiple computer users simultaneous access to financial news, data and information; computer programming, research and design of interactive computer software and computer hardware for providing financial services (42)

The GC upheld the BoA’s decision that the mark applied for was descriptive pursuant to article 7(1)(b). The BoA’s assessment of the relevant public as professionals in the financial sector was not disputed. The mark applied for had a sufficiently direct and specific link with the goods and services at issue. Although not a financial word per se, ‘brent’ referred to a certain type of crude oil and was therefore commonly used by the relevant public. ‘Index’ was clearly a financial word, denoting a system applied in stock markets to compare the values and prices of share. BRENT INDEX did not therefore contain any unusual element in its syntax and immediately informed the relevant professionals that the goods and services at issue were associated with finance. The registration of a different mark comprising the word ‘BRENT’ for other goods and services did not preclude the BoA’s finding that the mark at issue was descriptive. The GC endorsed the BoA’s refusal of registration on this basis.

REGENT UNIVERSITY

In an application for a declaration of invalidity under article 53(1)(a), the GC upheld the BoA’s decision that the later word mark was invalid for educational services pursuant to article 8(1)(b), on the basis of a likelihood of confusion with the earlier figurative mark. The GC confirmed that the relevant public comprised professionals and students in the UK with a higher than average level of attention and that the services at issue were identical. The GC dismissed Regent University’s submission that ‘university’ and ‘college’ carried significantly different meanings. The distinctive and dominant elements of each mark were the word ‘REGENT’S’ and ‘REGENT’ which were virtually identical. The GC endorsed the BoA’s assessment of similarity for the purposes of likelihood of confusion and was therefore correct to find the word mark was invalid on this basis.

GC T-430/16

Intercontinental Exchange Holdings, Inc. v EUIPO 22 March 2017

T-538/15

Regent University v EUIPO; Regent’s College

– educational services, namely, developing, arranging for and providing courses of instruction and training at the undergraduate and graduate levels (41)

28 March 2017 Reg 207/2009

– college education, teaching and training services; arranging and conducting conferences, meetings and seminars (41)

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DECISIONS

Ref no.

GC T-387/15; T-388/15; T-389/15

Application (and where applicable, earlier mark) J AND JOY JN-JOY J&JOY

J & Joy SA v EUIPO; Joy-Sportswear GmbH 29 March 2017

– various leather goods (18) – various items of clothing and headgear (25)

Reg 207/2009

TRADE MARKS

Comment

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to article 8(1)(b). On the basis of the earlier registration relied on, the relevant public was comprised of German consumers. The BoA was correct to find that goods at issue were identical or similar. The GC confirmed that the presence of ‘joy’ within other marks in the same field was not sufficient to establish that this element had weak distinctive character. If the relevant German-speaking public understood the English meaning, it would be associated with happiness and not the goods at issue. The marks shared an average degree of visual and phonetic similarity on account of the ‘joy element’, which was present in all marks. These similarities were unlikely to be offset, even partially, by the conceptual differences, to the extent these would be perceived by the relevant consumer.

– clothing, headgear (25) (German mark)

APAX PARTNERS

Apax Partners UK v EUIPO; Apax Partners Midmarket

– insurance; financial affairs; monetary affairs; financial services; real estate affairs; corporate finance; private equity; investment services; capital, fund and trust investment services (36)

30 March 2017

APAX

T-209/16

Reg 207/2009

– financing services, financial and loaning operations, financial transactions; investment activities of all kinds and especially as regards equity capital; financial engineering; services; investment research; building and real estate appraisals, financial and monetary affairs (36) (International registration designating Sweden)

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In an application for a declaration of invalidity under article 53(1)(a), the GC upheld the BoA’s decision that APAX PARTNERS was invalid for insurance and financial services pursuant to Art 8(1)(b), on the basis of a likelihood of confusion with the earlier figurative mark. The BoA was correct to find that the relevant Swedish public had a relatively high level of attention in respect of the class 36 services at issue. The marks were similar overall, on account of the identical element ‘APAX’, which comprised the whole of the earlier mark and was positioned at the beginning of the mark at issue. The element ‘PARTNERS’ within the later mark was weakly distinctive in respect of the services concerned, as it was a common term used for financial or law firms. Insurance services and financial services were similar and the remaining services at issue were correctly held to be identical. The GC endorsed the BoA’s assessment that there was a likelihood of confusion between the marks which could not be safely excluded notwithstanding the high level of attention of the relevant public.

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DECISIONS

Peaceful coexistence of marks within part of the European Union Ornua Co-operative Limited v Tindale & Stanton Ltd España SL Opinion of Advocate General Szpunar C-93/16; 29 March 2017 Following a preliminary ruling from the Audiencia Provincial de Alicante (Provincial Court, Alicante, Spain), A-G Spzunar opined that articles 9(1)(b) and (c) were to be interpreted as meaning that the fact that conflicting trade marks coexisted peacefully in the territory of the EU, without giving rise to confusion, did not mean that a likelihood of confusion was automatically ruled out in another part of that territory. Coexistence was a relevant factor capable of being taken into account in the global assessment of likelihood of confusion and the existence of any link between the marks at issue. Use of the same indication of geographical origin in accordance with honest practices within the marks at issue did not serve as the basis for finding that there was a likelihood of confusion with an EUTM or any detriment to the reputation of that mark.

Background Ornua Co-operative Limited (‘Ornua’) sold dairy related products and was the registered proprietor of the EUTM registration for KERRYGOLD. It also owned two figurative marks containing the same word element (collectively, ‘the KERRYGOLD Marks’). Tindale & Stanton Ltd España SL (‘T&S’) imported and distributed dairy goods in Spain, made by Kerry Group Plc, which were sold under the mark KERRYMAID. Kerry Group Plc owned UK and Irish national registrations for KERRYMAID. Ornua brought infringement proceedings against T&S on the basis that use of KERRYMAID amounted to an infringement of the KERRYGOLD Marks pursuant to articles 9(1)(b) and (c). The court dismissed Ornua’s claim, finding that the word ‘KERRY’ referred to an Irish town known for breeding cattle and related dairy products and that the KERRYGOLD Marks had coexisted peacefully alongside KERRYMAID in Ireland and the UK. Owing to the unitary character of an EUTM, the Spanish Court held that the peaceful coexistence of the marks in two Member States extended to include the EU as a whole. Further, the Court placed relevance on the fact that the sign KERRYMAID was used in Spain for the purposes of marketing a product which had been marketed in other Member States for a number of years without challenge from Ornua. The Spanish Court referred the following questions:

TRADE MARKS

2. In respect of article 9(1)(b) could the geographical, demographic, economic or other circumstances of the Member States in which coexistence occurred be taken into consideration for the purpose of assessing the likelihood of confusion in other Member States, or to the EU as whole? 3. In respect of article 9(1)(c), could the fact that Oruna (as owner of the earlier KERRYGOLD Marks) had failed to oppose the later KERRYMAID marks and had acquiesced in the peaceful co-existence of those marks in the UK and Ireland be extended throughout the EU for the purpose of determining whether there is due cause for third parties to use the later marks?

Confusion and detriment The A-G observed that the fact the KERRYMAID marks did not give rise to a likelihood of confusion in Ireland and the UK did not in itself preclude a finding that such a likelihood may have existed in another part of the EU. On the other hand, peaceful coexistence in part of the territory of the EU was not an irrelevant consideration within the assessment of likelihood of confusion throughout the EU as a whole. The assessment of a likelihood of confusion required a global assessment of all the relevant factors which potentially related to the entire territory of the EU. It was incorrect to discard a factor solely because it related to circumstances in only one part of the EU. The A-G adopted a similar interpretation of article 9(1) (c) regarding marks with a reputation. When examining reputation, that reputation was to be present in a substantial part of the EU. In the present case, the marks peacefully coexisted in the UK and Ireland, which amounted to a substantial part of the EU in which reputation had been established.

Geographical origin The A-G also observed that geographical indication, namely reference to the Irish county ‘KERRY’, may have been one of the factors which accounted for the peaceful coexistence of the marks in Ireland and the UK. However, the A-G opined that an EUTM Court should not take into account such a similarity between marks to establish a likelihood of confusion or risk of detriment to the reputation of a mark, insofar that the relevant public would recognise the geographical link. Any such findings would diminish the application of the exclusive rights conferred by the EUTM pursuant to article 12(b).

1. Were the findings of the Court regarding an absence of likelihood of confusion in the UK and Ireland to be extended to other Member States or to the EU as a whole? 48 CIPA JOURNAL

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CA dismisses appeal concerning parallel imports and rebranding of pharmaceuticals Flynn Pharma v Drugsrus Ltd & Anr* The Chancellor of the High Court & LJJ Kitchin and Floyd [2017] EWCA Civ 226; 6 April 2017 The CA (Floyd LJ giving the lead judgment) dismissed Drugsrus’s appeal from a decision of Rose J in which she held that the rebranding (as ‘Flynn’) and marketing in the UK of Flynn Pharma’s epilepsy drug by Drugsrus infringed Flynn Pharma’s trade mark under section 10(1) (reported in December [2015] CIPA 49). The CA held that enforcement of UK and EUTMs for FLYNN against parallel imported phenytoin sodium (an anti-epileptic drug) bearing the sign “Phenytoin Sodium Flynn” was not a disguised restriction on trade between Member States contrary to article 36 TFEU. Flynn Pharma sold phenytoin sodium in the UK under the name “Phenytoin Sodium Flynn” and owned the UK registered trade mark and EUTM for the word FLYNN in respect of pharmaceutical products. Drugsrus planned to import phenytoin sodium into the UK from other Member States, where it was sold under the brand name Epanutin, and rebrand it with the name Phenytoin Sodium Flynn. Flynn Pharma claimed this would infringe its FLYNN trade marks. The CA held that Rose J was correct to reject the argument advanced by Drugsrus that the use of FLYNN was permitted under section 11(2). Floyd LJ said that the fact that Flynn Pharma had taken steps to educate the public as to the properties of the goods it sold under the FLYNN mark did not mean that the mark lost trade mark significance. He stated that there was: “a world of difference between educating the public as to a characteristic of marked goods and causing the trade mark to become an indication of that characteristic”. However, the CA went on to say that a dual enquiry was required when assessing whether the enforcement of a trade mark was justified in such cases. The CA’s view was that it was necessary to consider: 1. Whether the goods had been placed on the market by the trade mark owner or with trade mark owner’s consent? 2. Even if the answer to the first question is ‘no’, whether the party that placed the goods on the market was also in effective or “unitary” control of the trade mark which was sought to be enforced? If the answer to that question was also in the negative, the CA doubted that the enforcement of the trade mark could be anything other than one designed to protect the origin function of the mark. As for the first question, Rose J had found that whilst Volume 46, number 6

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Flynn Pharma was responsible for marketing phenytoin sodium in the UK, the manufacturer of the drug, Pfizer, was independently responsible for placing Epanutin on the market in other Member States. As for the second question, Rose J had concluded that Pfizer was not able to control the use which Flynn Pharma made of its trade mark rights. There was no basis for the CA to interfere with the Judge’s conclusion in this respect, and the Court therefore concluded that that enforcement of the trade marks for FLYNN by Flynn Pharma against parallel imported phenytoin sodium did not amount to a disguised restriction on trade between Member States. Floyd J observed that the Court had arrived at the same conclusion as Rose J although by a slightly different route.

Apple successful in ‘iWatch’ appeal Apple Inc v Swatch AG* John Baldwin QC; [2017] EWHC 713 (Ch); 10 April 2017 John Baldwin QC (sitting as a Deputy Judge of the Chancery Division) allowed Apple’s appeal from the decision of the hearing officer whereby he partially upheld an opposition by Swatch to the registration of the trade mark ‘iWatch’ in respect of certain goods in class 9. Apple applied to register ‘iWatch’ in classes 9 and 14. Following examination, the application was refused in its entirety for goods in class 14 on grounds that it was descriptive or devoid of distinctive character, but was accepted in relation to some goods in class 9. Swatch opposed the application, relying mainly on its international registration for the figurative mark shown below, designating the UK and EUTM and registered in respect of horological and chronometric instruments (including watches) in class 14 and services consisting of retail trading of horological products in class 35, arguing that registration would be contrary to sections 5(2)(b) and 5(2)(c):

Swatch’s opposition was upheld in part but the application was allowed to proceed to registration in relation to the following goods: computer software; security devices; computer peripherals; parts, components, and cases for all of the foregoing goods. Arcadia Trading Ltd also opposed the application on grounds that ‘iWatch’ was descriptive or devoid of distinctive character, following which the application was permitted to proceed in relation to only the following goods: security devices; cameras; computer peripherals; radios; accessories, parts, components, and cases for all of the foregoing goods. Arnold J dismissed Apple’s appeal against that hearing officer’s decision (reported in May [2017] CIPA 56). Apple sought to overturn the decision of the (different) hearing officer in Swatch’s opposition in case Arnold J’s decision was subsequently overturned on appeal. JUNE 2017

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DECISIONS

John Baldwin QC rejected Apple’s argument that the hearing officer had erred in conducting his analysis by reference to smart watches given that smart watches were not embraced by either Apple’s application or Swatch’s registration. As the hearing officer had accepted that smart watches were encompassed by the terms ‘computers; computer hardware; wireless communication devices’ and that the functions of [health] monitors and monitoring devices, cameras, radios, audio and video devices and global positioning devices may also be the functions of a smart watch’, the Judge rejected Apple’s argument that a smart watch was not covered by Apple’s proposed specification. However, the Judge concluded that the hearing officer had made an error in concluding that there was a high degree of similarity between horological and chronometric apparatus and instruments in class 14 and computers, computer hardware, wireless communication devices in class 9 and a medium degree of similarity between [health] monitors and monitoring devices, cameras, radios, audio and video devices and global positioning systems on the one hand and Swatch’s watches in class 14. The Judge concluded that the hearing officer’s error was to focus disproportionately on the fact that the purpose of a smart watch was the same as that of an ordinary watch, namely, to tell the time. The hearing officer went on to find that there was some overlap between the purposes of smart watches in class 9 and watches in class 14 and further observed that the goods were similar in nature in that watches and smart watches could both be small battery powered devices which looked very similar and that the method of use was the same, both being worn on the wrist. Reassessing the similarity of the relevant goods, the Judge found there to be a low degree of similarity and (contrary to the hearing officer’s decision) no likelihood of confusion if ‘iWatch’ was to be used for monitors and monitoring devices; cameras; computers; computer hardware; wireless communication devices; radios; audio and video devices; global positioning system devices; accessories, parts, components, and cases for all of the foregoing goods. Use of identical and similar marks in relation to pet food products found to tarnish and dilute marks

Azumi Ltd v Ms Zoe Vanderbilt* Judge Melissa Clarke [2017] EWHC 609 (IPEC); 10 April 2017 Judge Melissa Clarke held that the use by Ms Vanderbilt of the signs ‘dineinwithzuma.com’, ‘ZUMA’, ‘DINE IN WITH ZUMA’ and a device (the “DIWZ Device”) infringed Azumi’s UK and EU marks for ‘ZUMA’ (word marks and a figurative version) under section 10(3) and article 9(2)(c). Azumi operated sophisticated and high-end contemporary Japanese restaurants around the world, including Zuma in Knightsbridge in London which was established in 2002. It 50 CIPA JOURNAL

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owned UK and EUTMs for ZUMA and the following device registered in respect of, among other things, provision of food and drink and restaurant services in classes 42 and 43 (the “ZUMA Marks”):

In 2014, Ms Vanderbild incorporated ‘Zuma’s Choice Pet Products Ltd’ (“ZCPP”) for the purpose of manufacturing and selling high quality pet food for dogs and cats. She named the company after her dog Zuma, a Japanese Akita/GSD cross. She registered the domain name ‘dineinwithzuma.com’, which directed users to a website which marketed pet food products. The website included use of the word ZUMA and the phrase DINE IN WITH ZUMA, and the following device:

The Judge held that the ZUMA Marks enjoyed a sufficient reputation in the relevant market i.e. high-quality, high-end restaurants in London, as required by section 10(3) which was sufficient to establish reputation in the EU for the purposes of article 9(2)(c). She also held that, with the exception of ‘ZCPP’ which had solely been used as a company name, Ms Vanderbilt’s use of the signs complained of amounted to use in relation to goods and services (albeit prospectively as she had not yet made any sales). Having concluded that the marks were identical or similar to the signs, the Judge concluded that: (i) there was an opportunity for the average consumer to make a link between them in the event that ZCPP successfully grew its dog food business so that the average consumer either saw ZCPP products on the shelves of major supermarkets or were otherwise exposed to advertising for them; and (ii) the signs complained of would cause those average consumers to call the ZUMA Marks to mind and make a link. The Judge went on to find that there would be tarnishment of the ZUMA Marks because the use of the signs in relation to dog food would tarnish the ZUMA Marks and reduce their power of attraction over time. Further, given the serious likelihood that use of the signs complained of in the future would have an adverse effect on the economic behaviour of the average consumer with knowledge of the ZUMA Marks, the Judge was also satisfied that there would be dilution of the ZUMA Marks. There being insufficient due cause, and as ZCPP was not able to take advantage of the own name defence (Ms Vanderbild’s dog not being a party to the proceedings nor a natural person or company, and given that the own name defence was no longer available to companies), the Judge went on to make a finding of trade mark infringement. www.cipa.org.uk

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EDUCATION

UP & UPC WEBINARS

CIPA webinar series “UP and UPC” continues apace! Delving into feedback matters, by Pippa Allen

ebinars 2, 3 and 4 (May and early June) continued in the theme of webinar 1 in drawing mass registrations, and draw to a close the four free webinars in the series, which delivered an introduction to UP and UPC, and to the essential knowledge which all members should have at their disposal. As a number of our audience have commented (“extremely content rich”, etc), there is a lot more to Unitary Patent (UP) and Unified Patent Court (UPC) than many have appreciated, and that essential knowledge is pretty extensive. In the deluge of content, many are still querying the very fundamentals of the topic, do not despair… the series now moves on to “filling in the gaps” in the remaining three core webinars, two admin webinars and six alllevel to advanced webinars, each addressing a specific aspect of UP and UPC. As you read this edition of the CIPA Journal you will still have time to register for webinar 5, which has been rescheduled by a week to Wednesday 28 June. This webinar dealing with the UP and how to get it, is in the safe hands of Chris Mercer. My personal tip is to return to your recordings of the first four webinars in the run up to Christmas, armed with the wealth of knowledge you have acquired in the series, to place that knowledge in the context of practice. And do not forget that 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 (such as the moment Darth Vader moonlighted as a Stormtrooper in EP2). And check out the excellent reports from IPCopy reproduced in this Journal (tremendous thanks to Mark Richardson for so concisely and comprehensively making sense of, conveying and wrapping up the content of the first two webinars – see next month’s Journal). With a hectic start to the series, juggling planning of the series and delivery of the first webinars, together with teething problems, we still have the task of managing feedback including feeding it back into the series. If you are interested and have ideas for what you would like to see, please get in touch as soon as you can. The other massively important aspect of UP and UPC on which we can still feedback is the Case Management System (CMS, not

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to be confused with Contracting Member States to the UPC, whose initials the CMS has rather inconveniently ID squatted). Those who have checked out the Beta Test Site (https://secure.unified-patent-court.org/login) will have noticed that an update went live in early May, bringing the opt out application process into line with the latest Rules. I think (and I rely on more tech savvy members to confirm this) that some rather scary undertakings to be made by the person notifying the opt out have been addressed, notably removing statements, which we are not in a position to make, regarding ownership of patents. Check it out! And more importantly test the system and get involved. As well as working on webinar feedback, we will be working on a concerted effort to ensure that the Beta Test Site meets practitioners needs, and I am very pleased to say that we have a few tech savvy members who are taking this task on, more on this next month. Contrary to my last post, on the topic of experimentation and idle gaming on the Beta Test Site, the eagerly awaited game “Withdraw your competitors opt out” is very much in evidence. [To elaborate on my idle musing of last month, I wonder whether and why the option to withdraw an opt out might go live during sunrise (indeed why one might withdraw an opt out during sunrise?) and if so what effect this might have: as the opt out does not actually take effect until entry into force I am curious whether a sunrise withdrawal blows or preserves your once-only opt out.] I am sure that this feature, if no other, will merit in-depth investigation and experimentation by any who prefer to control the fate of their IP themselves. 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 practise. 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. JUNE 2017

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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

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 Past event: recording and slides available via CIPA Membership Team

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 28 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

Extra appearance! The Manchester Regional Meeting 2017 Thursday 7 September 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

www.cipa.org.uk

02/06/2017 17:57:09

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 6

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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 Tuesday, 13 June 2017 Webinar

UK Patent case-law update Time: 12.30–13.30 Join speakers Jon Markham (Beck Greener) and James Porter (IPO) for this CPD webinar that will focus on interesting patent decisions to have come from the UK courts and the Comptroller over the past 12 months. If you are a delegate from outside of the UK, please email cpd@cipa.org.uk for a non-VAT booking. CPD: 1; Prices: £72 (members £48)

in the US • Update on Supreme Court Decisions; Patents – Venue Reform • After final practice • Best practice and pitfalls in claiming priority • Update on Designs and Design Damages in the US. Students, members of FICPI-UK and CITMA please email cpd@cipa.org.uk to book onto this Seminar. Student members attend for FREE. CPD: 3.5; Prices: £126 (members £84)

Following the success of last years diversity breakfast, we are proud to again bring you this joint breakfast meeting. An excellent chance to listen to talks on diversity from various institutes within the IP world. This event is FREE for members and non-members alike but space is limited. Members please book online. Nonmembers please email cpd@cipa.org.uk

Time: 08.00–17.00 Location: Hallam Conference Centre, 44 Hallam Street, London, W1W 6JJ Our course is in two parts. The first is a remote learning module, in the form of prerecorded webinars and an accompanying printed training manual. This part can be completed any time within a two-month window, at the student’s convenience. The second part is a one-day workshop which will take place in London on Monday, 19 June 2017. The workshop includes two mock hearings, one before an “examining division” and one before an “opposition division”. Contact cpd@cipa.org.uk. Price: £468

Friday, 16 June 2017 Seminar

US IP Law and Practice Time: 13.30–17.00 Location: Holborn Bars – DeVere, 138-142 Holborn, London, EC1N 2NQ Join us for the joint CPD seminar on US IP Law and Practice. You can expect topics to include: Trade marks – Top Ten Tips and Tricks to Consider When Filing

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Time: 12.30–18.30 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)

Diversity in IP Breakfast Meeting Time: 8.15–09.45 Location: Holborn Bars – DeVere, 138-142 Holborn, London, EC1N 2NQ

East Midlands Meeting 2017

Monday, 19 June 2017 Seminar

EPO Oral Proceedings 2017 Friday, 16 June 2017 Seminar

Thursday, 22 June 2017 Seminar

Tuesday, 20 June 2017 Webinar

How to liaise with in-house attorneys: life on the inside Time: 12.30–13.30 David Galaun from Cisco Systems on what it is like to work as an in-house attorney at a large tech company. CPD: 1; Prices: £72 (members £48)

Thursday, 22 June 2017 Webinar

Russia/ Eurasia update Time: 12.30–13.30 This webinar will focus on: Trade marks in Russia – special aspects • Landmarks in last practice of the Russian Patent Office after adoption of the new Russian Patent Law • PPH programme – how it can be used to an applicant’s advantage • Changes in the Russian pharmaceutical patent landscape. CPD: 1; Prices: £72 (members £48)

Wednesday, 28 June 2017 Webinar

The UP/UPC series: getting legal with the UP and how to get it Time: 12.30–13.30 Join us for another webinar in the UP/UPC Series: This webinar will cover: Regulations, rules, registers and more • Designated states, texts, translations • Delaying grant and strategy options. Speaker: Chris Mercer, CIPA Honarary Member and EPI Past President CPD: 1; Prices: £72 (members £48) www.cipa.org.uk

02/06/2017 18:00:59

CPD & EDUCATION

INSTITUTE EVENTS

Monday, 3 July 2017 Webinar

The New Law on Unjustified Threats Time: 12.30–13.30 Join our speakers Rob Jackson (Dehns) and James Porter (Deputy Director of Patents at IPO) for a look at the new provisions on threats. CPD: 1; Prices: £72 (members £48)

Wednesday, 5 July 2017 Webinar

Professional Ethics Time: 12.30–13.30 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 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, 13 July 2017 Webinar

Educating the Client Time: 12.30–13.30 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 audiencefocused 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)

Friday, 1 September 2017

W/C 4 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

Wednesday 19 July 2017 Webinar

Assignments and Title Updates at the IPO

Congress 2017 Navigating to the future

Time: 12.30–13.30

Location: Glaziers Hall, London, SE1 9DD

Join speaker Roy Scott (Keltie) for this lunch time webinar that will cover how to review an assignment agreement to ensure that it contains the relevant information to enable the change of ownership to be recorded on the Register at the UKIPO.

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. See full programme online.

CPD: 1; Prices: £72 (members £48) This Webinar is FREE for Associate members of CIPA, please email cpd@cipa.org.uk to claim your free place

CPD: 8; Prices: starting at £200+VAT. E-mail cpd@cipa.org.ukfor details of rates.

Thursday, 28 September 2017 Conference Friday, 15 September 2017 Seminar

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CIPA Administrators Conference Building for the future…

How the drug discovery industry works

Location: Glaziers Hall, London, SE1 9DD

Time: 12.30–18.30 Location: CIPA, London

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.

Join our speaker Dr Ed Zanders (PharmaGuide) as he presents topics on the structure and commercial environment of the biopharmaceutical industry. CPD: 3.5; Prices: £234 (members £156)

Volume 46, number 6

Thursday, 28 September 2017 Conference

Prices: starting at £200+VAT. Please e-mail cpd@cipa.org.uk for details JUNE 2017

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2015

The not-so-secret diary of a CIPA President

By Andrea Brewster

It is already that time of year: the time when we invite new students to come and visit CIPA and subject them to an onslaught of lectures which are N OV supposed to reassure them but actually, I suspect, just terrify the pants off them.

Our key messages are roughly thus: Me: Welcome to CIPA, which is lovely. We hope you make lots of friends today. You are going to need them. Speaker 1: You thought you’d chosen a job about science and law, because you like science and law, but actually it is about business. Here is lots of information about business assets and strategic planning and competitive advantage. If you do not understand this you will be a rubbish patent attorney even if you do pass all the exams. Which is not a given. Me: Be nice to your clients. They are human beings. If you think you’re scared, they are ten times more scared. Speaker 2: Let’s talk about professional ethics and the IPReg Code of Conduct. If you are not ethical, RUIN will surely follow and you will be cast out from this wonderful profession for ever and left in the gutter to rot. Your clients will regularly try to persuade you to be unethical in pursuit of better client relations and increased billing figures. Accede at your peril. Clients are human beings and in the context of professional ethics, this is not a plus. Also, never do anything you’re not competent to do, and in particular never do it for two different clients at once as this is called a Conflict of Interest and patent attorneys can die from Conflict of Interest. Me: There are lots of ways that clients can complain about you, and lots of reasons they might do so, especially if you refuse to be unethical on their behalf. Also you might make mistakes. So you must follow my simple 21-step process for handling complaints and mistakes, which will require you

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to devote the next 15 working days to the maintenance of a detailed complaints handling file. Speaker 3: As well as being brilliantly competent, commercially astute, ethical and also Nice To Your Clients, and in between handling complaints and mistakes using the correct 21-step process, you are also expected to make some profit for your employer. You make profit by convincing clients – ethically, of course – to send you lots more work, and then making sure they pay you for it, preferably without complaining. You can convince clients to send you more work by getting other people to tell them you are brilliant. However, you must also remember there is a Bribery Act 2010. If you do not make a profit, your employer will go bankrupt and you and your colleagues will be out on the streets with nothing but a Pot Noodle® for your Christmas dinner. (There follows a lunch break, in which the shell-shocked youngsters are allowed to weep on one another’s shoulders in despair. We remind them that phoning a recruitment agency at this point will be treated as a serious disciplinary offence.) Mr Davies: And now you are going to come up with ideas about what you need from your representative body, because CIPA is bored of thinking of things on its own. And please do not say counselling and hostels for people who would otherwise be on the streets because they have been unethical or incompetent. We are a close-knit community and we rally together to SHUN anyone who is unethical or incompetent in our midst. Speaker 4: Your career will be beset by stress. There are many signs that stress is developing, and you probably have all of them. The only way you can beat stress is by not doing so much work, but this will stress other people, especially the ones who have to do the stuff you don’t finish. When you get stressed, you should talk to someone about it. But the people you must not talk to about being stressed are your boss (who might fire you), someone you fancy (who might suggest inappropriate ways of reducing the stress) and your doctor (who might prescribe pills to calm you down, which could result in your becoming so laid-back that you stick two fingers up at the Code of Conduct and run off to become a hermit). www.cipa.org.uk

02/06/2017 18:01:26

Speaker 5: Here is how you qualify as a patent attorney. It is a long and arduous path. This, for instance, is a timeline showing how many years it will take. And here is a graph showing pass rates for the final exams. If you fail at the first attempt you are very likely to fail all subsequent resits so do not be tempted to sit the exams until you are absolutely sure you have no other options left. Speaker 6 (who is actually Mr Heap from IPReg, being interviewed in the style of a talk show): I cannot remember what is in the Code of Conduct but if you think it is “light touch” you have another think coming. It is actually “principles-based”, which means that it is up to you to decide what you have to do to comply with it, and up to us to tell you afterwards whether you decided right. This is because we know what patent attorneys are like: if you give them clear rules they will find the loopholes, and if you give them unclear rules they will complain under Article 84, so it is better not to give them rules at all. Me: So you see, it is a fantastic profession you have joined. You have a lot to look forward to. Please exchange business cards now because in ten years’ time many of the people you met today will be on the streets, or will be hermits, or will have retrained as stress counsellors, and in the latter case you might need to get back in touch.

Because I am now Important and A Little Bit Famous, I am going to be interviewed by a journalist. The journalist is very friendly and he N OV has brought a lady journalist along too, in case I start doing any girly things like crying or falling in love or rummaging in my handbag. He asks me what I have been doing in my time as President. Naturally I do not tell him the truth. Instead I tell him all the things I wanted to do, and all the things I have told other people I have done, and all the things I am just about to do, honest. The truth is, of course, that mostly I have been compiling a to-do list and every weekend I spend an hour thinking what an impressive set of plans I have and moving all the dates on by a month until eventually they end up in the period when someone else is Pee. The truth is that I have not had time to do many of the things on the to-do list, and the ones I have done have resulted in complaints. I tell the journalists that CIPA has been Engaging with its Stakeholders. This is what Mr Lampert told me to say. They ask Who are these Stakeholders that you have been Engaging with? I knew there was a reason I shouldn’t have said what Mr Lampert told me to. I say, They are the people we have been Reaching Out to, because CIPA is a Thought Leader and a Go-To Organisation and it will head up the Key Mindset-

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Changing Initiatives going forward. Shall we talk about diversity? So we do. And then the journalists ask if I think the professions will look different in ten years’ time. Mr Lampert did not tell me the answer to that one, so I guess it is a trick question. I say Of course they will look different. Absolutely they will look different. They’d better do.

Gathered at CIPA Hall is a roomful of patent and trade mark attorneys and IP solicitors. Plus two people from the IPO. Plus Mr Davies, who introduces himself NOV as the plumber who came four years ago to fix the toilet and forgot to leave (this is not helpful in the context, I feel, especially since the toilet is still not fixed but everything else has been well and truly disrupted). Plus Mr Lampert, who is going to take notes in Pitman shorthand, because he is a journalist and cannot do proper writing. I have summoned, I mean invited, these people so that we can all talk together about promoting the UK’s IP system abroad. We are fed up of going to foreign lands and saying, “The UK is quite good at IP, a little bit,” and the foreign land people saying, “But the Germans said they were better.” And then us saying, “Oh, yes, sorry, perhaps you’re right, we’ll get our coats.” We decide that we absolutely must rally together to establish the UK as a Centre of IP Excellence (I have no idea what this means, but I have been saying it so much that now everyone assumes it is a valid expression). To do this, we absolutely must first develop some Key Messages about Why the UK is a Centre of IP Excellence and indeed about What Exactly Is a Centre of IP Excellence, and then we can all go out and spread these messages, and the IPO and their friends in the Government can take the messages in their diplomatic briefcases wherever they go.

Here are our Key Messages: 1. The UK’s IP professionals are really rather good. Quite a bit better than the Germans, actually. (No, no, sorry: after you.) 2. We are terrifically well schooled and terribly sporting, especially now we’re being watched by the Regulator. 3. We are spiffing to work with because we have English as our mother tongue, indeed our only tongue, apart from Latin which we really only use for incantations. Having English as your mother tongue means that everyone understands you, even if you don’t understand them. And bear in mind that ours is a rich language, full of idioms about cricket and rural life and canine anatomy, with which it is, frankly, a privilege to become acquainted.

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NOT-SO-SECRET DIARY

4. The UK has a long-established, seriously historic IP system. It has Heritage. You only have to look at the beautiful buildings our barristers work in. And their wigs and gowns. That’s proper Heritage, that. 5. UK professionals take a truly global view of IP, so they can help you with the whole of your international portfolio. People in Britain have always been good at taking a global view, ever since we started sailing forth to take a global view about potatoes, tobacco, spices and the slave trade. We also have fantastic passports and a healthy grasp of immigration law. 6. Don’t listen to the Germans: IP is not that expensive in the UK. It might be cheaper to run a court action in Germany but you will need ten of them whereas in the UK a single trial will be sufficient to keep you occupied for years. Anyway, if you want a cheaper trial, we have all sorts of cost-effective alternatives, like the IPEC and the IPO and the IPKat, so we can find just the right solution for your IP needs, whatever they are. 7. In the UK, all our IP professionals work together. The patent attorneys absolutely do not squabble with the solicitors and the solicitors absolutely do not squabble with the barristers and none of us absolutely do squabble with the unregulated charlatans who give you strategic and commercial IP advice (which incidentally is also quite a bit better than the Germans could give you). #Justsaying.

NOVEMBER 2015

8. In the UK, we know about data protection and cyber security. We have Doctor Who and Torchwood and Spooks. You can feel safe in the UK. 9. The UK’s IP professions can die of verse and can offer Perspex tiffs from other jury stictions. (I may have misread this one; Pitman shorthand works phonetically.) Also we have more women than the Germans – in IP, I mean, not generally; obviously the Germans have Angela Merkel and you cannot argue with that. 10. Proper Brits are a joy to work with. We are Terribly Polite. We will: • • • • • •

Queue patiently for our patent applications to be examined. Apologise for filing them. Offer you tea in meetings. Always check you’re OK with the weather. Begin all our sentences “with respect”. Even the ones pointing out how stupid you are.

I am pleased with this collection of Key Messages. It was a good morning’s work, superbly chaired by Yours Truly, and I only had to tell people twice that they were veering off topic. We were not supposed to be talking about Lederhosen.

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

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PERSONAL

LAWCARE

You are never alone During Mental Health Awareness Week 2017, CIPA’s Chief Executive Lee Davies discussed the support that professional bodies can provide for their members, and reminded us of the LawCare helpline available to CIPA members and other legal professionals.

he media focus on the footballer Aaron Lennon is a vivid reminder, if we should need one, that providing support for those who face living and working with mental health issues is a challenge for us all. No profession is immune. We all experience increasing demands on our time at work and at home, and it seems that we accept that anxiety, stress and depression are the price we have to pay for leading successful working lives. All of us, at different points in our lives, will need support. If we are fortunate, we will have around us a network of family and friends who can help us when we need help most. That does not mean that we are confronting a serious mental health issue. This year, however, Mental Health Awareness Week reminded us that the key question is not why so many people are living with mental health problems, but why too few of us are thriving with good mental health? Why should this matter to a professional body like CIPA? Surely it is up to CIPA’s members to thrive in the fast-moving world of intellectual property law? What could a membership organisation offer that would lend itself to the needs of those who, rather than thrive in this world, are struggling to survive in it? My response to questions such as these is a simple one. A professional body that does not take seriously the challenge of supporting its members as

individuals when they need it most will not thrive itself, indeed it may not survive. I believe that, at CIPA, we do take the mental health and wellbeing of our members seriously. We do have in place a great sense of community and we do encourage our members to network outside of the immediacy of the workplace. Creating an atmosphere of friendship and trust, which extends beyond an individual firm or industrial department, is one of the ways we can create the conditions for good mental health within a profession. This will not, however, provide the critical safety net we all need when times are really tough. At CIPA we are fortunate to have a long-established Benevolent Association, funded by the profession and managed by hardworking volunteers, where members can seek financial support, which is so often at the heart of a problem. Good mental health, however, extends beyond a healthy bank balance and when CIPA’s members are confronted with other challenges in their personal or professional lives, they can call on the services of LawCare. LawCare is a registered charity, founded in 1997, which is completely independent of the legal professional bodies but which is funded by contributions from organisations like CIPA. LawCare provides support and information for anyone in the legal community who is feeling the pressure of work or study, experiencing relationship or financial problems, coping with illness, dependency, bereavement, anxiety or depression. LawCare offers a free, independent and confidential helpline 365 days a year, supported by trained staff and volunteers who have worked in the law and understand the demands of legal education, training and practice. I would say this to CIPA’s members and those working in the wider intellectual property system: you are never alone. Please do not be afraid to talk to a colleague, ring your professional body or go direct to a support agency such as CIPA’s Benevolent Association, IP Inclusive or LawCare. Together we can ensure that IP is a place where people thrive with good mental health.

LawCare helpline: 0800 279 6888 Website: www.lawcare.org.uk

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CPD & EDUCATION

INSTITUTE EVENTS

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 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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PERSONAL

Going . . . e ot Rem

o this month’s instalment is going to be a bit of a break from the norm in every respect – no digital nomading, and nothing of the city where I was meant to be based. But that’s really quite fitting when it comes to Cuba. After two weeks’ holiday travelling round the isolated island, I’m still not quite sure what to make of it. The only thing I am certain of is that it’s by far the most “different” place I’ve been yet. Arriving in Havana early on a Saturday evening, we were picked up from the airport in a car that summed up all my preconceptions of Cuba perfectly: a beautifully-preserved, 1950s, sky-blue Chevrolet. Any suspicions I had had that this type of welcome was just put on for the tourists were quickly put right on the drive into town when I realised that, while there were a few modern vehicles (mainly taxis and coaches, all from China I think), the vast majority of the traffic was actually made up of classic cars, in various states of repair but all running impressively well. It really does feel like someone hit the pause button 60 years ago and the intervening decades just haven’t happened. Whether that “someone” was the USA or Castro or both is of course a matter of debate, and not one that I am qualified to weigh in on, but the result is that a lot of things we (OK, I) take for granted in other countries either aren’t available or are a lot more difficult to access in Cuba. New cars, obviously, and replacement parts for broken lifts too, it would appear, but also many day-to-day goods and services. For instance, it turned out that at the weekend 6pm is too late to exchange Mexican Pesos or use an ATM in Havana (and of course nowhere takes cards) so if we hadn’t been with a group who kindly lent us some cash, it would have been a hungry first evening. Also I don’t think I managed to buy even a bottle of water from a shop (as opposed to a café) without help from our local guide (either to locate a shop, or to persuade it to open for us, or both) the whole fortnight. And as for the Internet – well, this is one of the few places yet to be

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GOING REMOTE

(not) Bogotá By Heather Lane (Fellow)

invaded by digital nomads. It is possible to get online, but to do so you have to buy pre-paid cards which will give you say an hour’s access and then find a wifi zone where you can log on – typically the town park. Not the most productive of environments. The restrictions Cubans face are particularly evident in the east end of the island, probably due to the long distance from the tourist hotspots of Havana and Trinidad – many supplies just don’t seem to make it this far, from what we could tell, at least from the food on offer. The biggest city in this region is Santiago de Cuba, where we met the first of a series of lovely landladies who would be looking after us during our stay – there aren’t so many hotels in Cuba and so instead you stay in a casa particular, i.e. a private house whose owners rent out a couple of rooms. It’s a bit like a B&B in the UK, and one of the few types of private enterprise allowed in Cuba. Inevitably, all the casas vary somewhat in their amenities – electricity and water included – but throughout our hosts

Did someone hit the pause button 60 years ago?

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PERSONAL

were incredibly warm and welcoming, and treated us like royalty. It leaves no doubt as to how important the income from tourists is. Still, Cubans certainly know how to have a good time. Every night is salsa night, and when we got to Baracoa – a small seaside town on the north coast of the easternmost tip of the island – the party was in full swing with a funfair spread out along the promenade to celebrate national students’ day (the Cuban education system is one of their big successes) and the anniversary of the town’s founding. Given that this area was devastated by Hurricane Matthew less than a year ago (and there are still downed palm trees lying everywhere if you were in any doubt), it’s impressive how quickly they have rebuilt and recovered. Travelling back west, via the towns of Bayamo and Guantanamo (yes, the Bay is just a few km away) we spent a night in Camaguey, and then headed on to Trinidad. A UNESCO heritage site, this is one of the most visited towns in Cuba – and you can see why. Its colourful cobbled streets and giant bird-cage style windows make it a wonderful place for a wander – and not only was the variety of food on offer notably better, it was also so much easier to find. Unlike in the towns further east, here the shops, cafes and bars did actually seem keen on advertising their presence (rather than hide in someone’s backyard). Trinidad is also popular for its

Letter to the Editor Generating Genius I would like to draw your readers’ attention to the advertisement appearing on page 66 of this issue of a Charity Ball on Thursday 27 July at the Brewery, 52 Chiswell Street, London EC1Y 4SD. Why? Because one of the beneficiaries of the evening will be Generating Genius (“GG”), a charity known to and supported by many patent attorneys. In brief for those less sure why GG deserves your support (either by coming to the Ball or by more conventional ways) is because GG works successfully with under-represented and underprivileged (mainly BAME) school students to enhance their chances to get into good universities to study science/engineering, also known as STEM, subjects. In the longer run this should improve the size and diversity of the talent pool from which we patent attorneys recruit into our profession. I hope to see many of you and your partners there for a really good evening!

GOING REMOTE • LETTERS • ANNOUNCEMENTS

beautiful sandy beaches a short drive away, just off the coast of which is a beautiful coral reef perfect for snorkelling. Sadly though, Cubans themselves don’t get to enjoy it – as they aren’t allowed on a boat without permission, just in case they don’t come back… And so back to Havana, with more questions than answers. But one thing’s for sure, next time someone says to me that they want to visit Cuba “before there’s a Starbucks on every corner”, I’ll tell them not to rush. Nothing happens quickly in Cuba, least of all something so delicate. I suspect, though, for the average man on the street there, change can’t come quickly enough. And coming from somewhere where choice, variety and freedom is taken so much for granted, I really hope it does. Next month: Bogotá (this time, I promise) and Medellín, Colombia 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

Announcements Wilson Gunn announced on 5 May 2017 that Chris McDonald (Fellow), Marc Lewis (Fellow) and Mark Jolly (Fellow) have joined the partnership. All three are based in the firm’s Manchester head office. For more details see www.wilsongunn.com.

On 2 May 2017, Appleyard Lees announced the appointment of a second partner to its Cambridge office. Barbara Fleck (Fellow) joins as a specialist biotechnology Patent Attorney. For more details see appleyardlees.com.

Stratagem IPM Ltd has acquired Page Hargrave with effect from 1 May 2017, and will fully integrate the two businesses. See the full notice on page 68. Letters for the Editor and announcements should be e-mailed to: editor@cipa.org.uk

Tibor Gold (GG trustee and ex-CIPA President)

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Associate/ Senior Associate Patent Attorney Roles (London) IT & Engineering As a result of strong growth we are seeking qualified patent attorneys to join our IT & Engineering team. We are looking to fit the role to the right person, rather than the right person to the role. Whilst software or telecoms experience is preferred, successful candidates can expect to be involved in a variety of technologies with a spread of different client types and a good balance of direct and agency work.

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

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

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

Ready to take the next step? Apply now at www.gje.com/careers or email your CV to careers@gje.com

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THE PINKS

COURSES

REVISION COURSES FOR THE PEB 2017 EXAMS & EQE 2018 JUNE-AUGUST & NOVEMBER-DECEMBER 2017 We are holding residential revision courses in June-August for the 2017 Patent Examination Board (PEB) Foundation Certificate (FC) and Final Diploma (FD) examinations and in November-December for EQE 2018. The EQE courses comprise a Pre-exam course (4-5 December), Introduction to Paper C and Paper D courses (2-3 November 2017) and Papers A&B, C and D courses (on 27 November – 1 December). 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

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THE PINKS

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 Examination (EQE) RI 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 6

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THE PINKS

EVENT

Thursday 27th July at 6.30pm The Brewery, 52 Chiswell St, London EC1Y 4SD Individual Ticket: £149 Standard Table: £1500 Premier Table: £2040 Included in the ticket price: drinks reception, 3 course dinner, entertainment throughout the evening and a DJ until late.

Dress code: Black Tie / Evening Wear For more information and to purchase tickets, visit

www.sthreefoundationcharityball.com Supporting our partners: 66 CIPA JOURNAL

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THE PINKS

INTERNATIONAL

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THE PINKS

ANNOUNCEMENTS • RECRUITMENT

STRATAGEM ACQUIRES PAGE HARGRAVE We are delighted to announce that Stratagem IPM Ltd has acquired Page Hargrave with effect from 1st May 2017, and will fully integrate the two businesses. Page Hargrave was formed in 1991 by the merger of two specialist intellectual property firms, Page & Co. in Bristol (founded on work from the famous British Westinghouse engineering firm) and Hargrave & Company in London (based on acquired trade mark practices). Owing to the complementary skills and expertise in the two firms, and their similar visions, the merger was a great success. Stratagem’s mission is to deliver a strategically different intellectual property management service in order to build successful businesses, both with, and for its clients, and has grown to thirty four staff since it was founded in 1999. Whilst Stratagem has the capability to cover all technologies including biotech/pharma, medtech, physics, engineering and electronics, and all forms of intellectual property advice and management of patents, designs, trademarks, copyright, trade secrets, licensing, due diligence and commercialisation support, the merger with Page Hargrave will help step change the business. In addition to its UK-based clients, Page Hargrave has a wide geographic presence and long-term experience of assisting overseas corporations and professional firms with their intellectual property requirements in the UK and Europe. They bring to the combined business considerable experience of handling patent work involving electrical engineering and the physical sciences, and trade mark work globally. We are confident that this very complementary merger will be to the benefit of Stratagem and Page Hargrave’s existing and new clients alike. The Page Hargrave office in Bristol will be retained, complementing the Stratagem head office of the combined businesses in Cambridge. It is intended that the Welwyn Garden City office of Page Hargrave will be incorporated into the Cambridge head office over time. We anticipate that this merger will be just as successful as the merger of Page & Co. and Hargrave & Company 26 years ago, and are very excited about the increased capability this brings to Stratagem. See more details at www.stratagemipm.co.uk.

Telephone: +44 (0)1256 782938 Web: www.optimus-patents.com

Send application and CV to: Tony Wray, Director Tony.wray@optimus-patents.com

PART-TIME OR FULL-TIME QUALIFIED PATENT ATTORNEY REQUIRED Extensive experience in patent draŌing/prosecuƟon at the forefront of electronics, soŌware, telecommunicaƟons, semiconductors and/or medical devices technologies is required to add value and enhance our InternaƟonal clients’ patent porƞolios to help maintain their market dominance. Do you want to provide bespoke services to clients: from innova on crea on through dra ing, prosecu on to strategic por olio management? Do you want flexible working condi ons: hours to suit, re-loca on or your own oﬃce premises if you work remote. Are you prepared to add value to each work item and go the extra mile for clients?

Do you want variety in your day-to-day drafting and prosecution and client interaction work? Do you want to be appreciated by your firm, the staff and your clients? Since 2002, Optimus’ reputation for exemplary quality and service has grown, year-on-year. Offices in Hampshire, Cornwall, Michegan (USA).

This is a unique opportunity for an ambiƟous, client-focused candidate to join the OpƟmus team. Highly compeƟƟve remuneraƟon package to suit high-quality, experienced candidates. No agencies. Closing date for applicaƟons is 30th June 2017.

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*1 4FDSFUBSZ 1BSBMFHBM -POEPO 5+# A practice you'll be proud to be associated with, our client is a dynamic and progressive IP firm that boast top tier ratings and a stellar reputation in the industry. They seek a skilled Paralegal to join their London team, to enjoy a wide range of IP duties. Enquire today! 1BUFOU 4FDSFUBSZ 0YGPSE 5+# Outstanding opportunity with one of the biggest players in the industry! Our client seeks an organised, driven and motivated Secretary or Administrator to support their bustling Oxford office. You will possess previous secretarial experience alongside excellent written and verbal skills and great IT knowledge with the ability to work under pressure. Deputy Head Patent Attorney : Midlands VAC51833 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

&OHJOFFSJOH "UUPSOFZ 4PVUI 8FTU $&' With a proven track record for offering In-house secondment opportunities to their attorneys, this is a working environment with a commitment to career development as well as client service. This award winning firm requires a commercially astute Attorney to join the South West office to work alongside both established IP experts and big name clients! -JGF 4DJFODFT "UUPSOFZ -POEPO $&' The fastest growing IP Practice in the UK seeks an expert Biotech Attorney to join their impressive London outfit. You'll be welcomed by a sensational cast of IP professionals, alongside a stimulating workload, from immunology to DNA probing! You'll be a PQ to recently qualified Patent Attorney with 2-3 years' experience in the field. &MFDUSPOJDT &OHJOFFSJOH "UUPSOFZ /PSUI &BTU $&' An unbeatable chance to attain your Patent ambitions with an industry pioneer! Our client seek Attorneys at the top of their game to join the North Eastern office, within the reputable and established Engineering/Electronics department. We're interested in Attorneys from a part to recently qualified level, with experience in the Engineering or Electronics sector. &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? 1BSU PS 3FDFOUMZ 2VBMJGJFE $IFNJTUSZ "UUPSOFZ -POEPO -," Super Practice with an excellent reputation are looking for an additional part through to just qualified Attorney. You will undertake a full array of patent related tasks whilst benefiting from a first-class training and regular 1:1s, supporting you to realise your short, medium and long term ambitions at every stage of your career.

Scan the QR Code for our website

www.saccomann.com

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

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Dawn Ellmore Employment Patent, Trade Mark & Legal Specialists Serving the IP profession since 1995 Patent Attorney Vacancies: In House Patent Attorney ŏ North of London $ XQLTXH RSSRUWXQLW\ IRU D SDUW TXDOLÀHG RU ÀQDOV VWDQGDUG SDWHQW DWWRUQH\ WR MRLQ D SUHVWLJH FRPSDQ\ RIIHULQJ D IULHQGO\ ZRUN DWPRVSKHUH

Electronics Patent Attorney ŏ Yorkshire $ QHZ RSSRUWXQLW\ KDV DULVHQ ZLWKLQ D ÀUP ZLWK DQ XQPDWFKHG UHSXWDWLRQ IRU SURIHVVLRQDO H[FHOOHQFH DQG HPSOR\HH VDWLVIDFWLRQ

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Chemistry or Life Sciences Attorney ŏ Luxembourg $ RQFH LQ D OLIHWLPH FDUHHU RSSRUWXQLW\ KDV EHFRPH DYDLODEOH LQ DQ HPLQHQW JOREDO ,3 ÀUP IRU D IXOO\ TXDOLÀHG (XURSHDQ 3DWHQW $WWRUQH\

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Patent Support Vacancies: In House Patent Administrator ŏ London $ EUDQG QHZ RSSRUWXQLW\ IRU D VWURQJO\ RUJDQLVHG FDQGLGDWH WR VXSSRUW ZLWK SDWHQW DGPLQLVWUDWLRQ GXWLHV UHSRUWLQJ WR WKH VHQLRU VWDII PHPEHU

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,I \RX DUH LQWHUHVWHG LQ ÀQGLQJ RXW PRUH DERXW WKHVH vacancies, please get in touch: Call us on: 020 7405 5039 Visit: www.dawnellmore.co.uk Or Contact: luke.rehbein@dawnellmore.co.uk for attorney vacancies daniel.airey@dawnellmore.co.uk for support vacancies james.smithson@dawnellmore.co.uk for business support

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THE PINKS

RECRUITMENT

Finals/Qualified Patent Attorney (Electrical) A.A. Thornton & Co. is a top tier firm and our patent practice has been identified as one of the best in London, in Legal500 ranking for the past 3 years. We pride ourselves on our high standards of professional service and our focus on each client’s particular business needs, and in order to do so it is important that the individuals we employ are dynamic, pro-active and confident in contributing ideas, creating solutions and seeing them through. If this sounds like you, and you are finals standard or newly qualified CPA and/or EPA patent professional with the relevant technical background, then we want you to join our busy Electrical Patent department. For further information about this vacancy please contact Karen Genuardi on 020 7440 6881 or visit our website at www.aathornton.com/careers

Patent Attorney LOCATION: Warwick University, Warwickshire An ever-evolving heritage. A truly exciting future. Two of the world’s most iconic brands. Jaguar Land Rover is revered across the globe. Continually pushing the boundaries of innovation and redefining the benchmark for excellence, we set the standards others want to follow. We want to keep it that way too. Which is where you join the journey. WHAT TO EXPECT Our Patents team work closely with our Research & Development and Manufacturing functions to identify and evaluate inventions before preparing, filing and prosecuting patent applications in the UK and overseas. They also manage the eventual commercialisation of the patent portfolio. The Patents Department is part of the Office of the General Counsel and is responsible for identifying and protecting valuable Intellectual Property (IP) generated across the business. The Department’s objective is to identify innovative developments and protect them in order to enhance our competitiveness, improve our market position and increase the value of the company. The Department is also responsible for enforcing Jaguar Land Rover’s patent portfolio against unauthorised users, and for defending the company against threats or litigation related to patent infringement. The Patents team is growing rapidly in order to keep pace with increasing levels of innovation being created across the business as a result of Jaguar Land Rover’s ambitious cycle plan and an increase in the Research & Development investment. The Patents Department covers all areas of vehicle technology and the team is split into technology groups to facilitate this. You’ll join the Patent Department’s Powertrain Group, reporting into Group’s head and providing additional attorney resource to ensure that all valuable intellectual property relating to Jaguar Land Rover’s powertrain technologies (engine, transmission, driveline etc.) is captured, protected and exploited, and that patent-related risks are managed. WHAT YOU’LL NEED You’ll need to be a qualified UK and/or European Patent Attorney preferably; finalist level candidates may be considered. A background in or experience of mechanical or electrical engineering or another appropriate discipline as well as experience of the assessing patentability of inventions would be important. You’ll have experience of filing and prosecuting patent applications before the UKIPO, EPO and other national patent offices. Excellent English language skills, both verbal and written, good communication skills, strong attention to detail and a relevant degree or equivalent would be required. BENEFITS Bring all this to the home of premium innovation, and you’ll find the opportunities to further your career with a world-class team, a discounted car purchase and lease scheme for you and your family, membership of a competitive pension plan and a performance-related bonus scheme. All this and more makes Jaguar Land Rover the perfect place to continue your journey. Jaguar Land Rover is committed to equal opportunity for all.

CIPA JOURNAL

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Engineering, Finalist, Midlands This independent firm with an excellent local client base is working to extend its operation by appointing a number of new hires. Whilst they have a close connection with large automotive businesses in their region, they also work with some very impressive international companies directly. The work tends to be a mix of complex drafting and prosecution, and you will be encouraged to develop your own client base even while training.

Biotechnology, Qualified, Cambridge The Cambridge office for this firm is in a key stage of its development. The firm is keen to attract attorneys who are interested in helping further develop a practice from a very strong base of clients. The practice does have an abundance of work but wants to build more local connections. For attorneys who want a mix of big name clients and a chance to go out and develop a portfolio that builds on their own interests this could represent a great opportunity.

Engineering, Associate, Midlands Moving positions is sometimes about improving your medium term career opportunities. This firm very much appreciates this and has a timetable that they will discuss with you in respect to achieving the higher levels within the practice (including Partner). This clarity of vision should make them very attractive as you will be given a clear sense of what you need to do to vastly improve your circumstances, particularly if you find career progression limited in your current firm.

Engineering (or Electronics), Qualified Patent Attorney, Cambridge This is a very high profile appointment for this firm with significant opportunities for development. Ultimately the firm will need more Partners in Cambridge and therefore wishes to boost its qualified staff with an attorney who will have the abilities to step into a leadership role in the years to come. If you feel your career is stagnating a tad then the firm can offer a great deal plus an excellent work life balance with very reasonable billing targets.

In-House, Biotechnology, London An ideal position for attorneys wishing to move to a corporate environment for the first time as the role will suit attorneys relatively recently qualified or possibly those at finalist level. The company is fast growing and cutting edge, and you will certainly be given the opportunity to work in the areas that can make an in-house position appealing – providing strategic IP advice, being involved in litigation and discussing commercial arrangements.

Engineering (or Physics), Part Qualified to 2 Years’ PQE An international IP practice with an excellent portfolio requires an attorney who will ultimately be based in London after a short secondment to Germany. You will gain experience in other jurisdictions and work closely with attorneys from around the world. The firm is keen to develop its attorneys’ commercial know-how via a platform of direct client contact and networking opportunities.

Biotechnology, Finalist or Newly Qualified, London Work for a highly regarded boutique firm with a growing biotechnology practice. The environment is radically different to most of the larger firms so would really suit someone who feels they need a change. There is a great deal of flexibility on the work you will be offered but candidates with an interest in the areas of DNA probing and immunology will fit very well.

Head of Formalities/IP Support Step in to a newly appointed senior management role with a leading European firm. You will be responsible for leading the formalities function, as well as streamlining the firm’s working policies to create a more efficient, client focused, and commercially strong business model. Additional high level responsibilities will become available further down the line as part of the firm’s ongoing development plan.

Chemistry, Qualified (or finalist), London A role that would likely suit an attorney not massively interested in pharmaceuticals but wanting to deal with all of the other areas a chemist can be involved. Their portfolio touches on chemical engineering, materials, and there is a great deal of oppositions work. The firm has an international profile and is great at attracting large corporate clients.

Electronics, Part Qualified, London We have numerous opportunities in London for attorneys with an electronics background. Training bad where you are? We have you covered. Want more drafting work? Less drafting work? We have that covered too. Oppositions? No Oppositions? Nicer people? Terrible people? Whatever you want we’ll have loads of suggestions.

Engineering or Electronics, Finalist/Qualified, Bristol One of the highest profile firms in the Bristol region is further developing its electronics and engineering practice. The firm is very open to ideas on background and experience so if you work or wish to work in the South West they would very much encourage an informal chat with them to ascertain if they have a position that would suit.

Electronics, Newly Qualified, London A commercial role for a leading law firm. The work will therefore encompass exposure to patent litigation as well as drafting and prosecution. Clients are varied but the firm has particular experience in software.

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

Ready for a change? Patent Attorney — Physics/Electronics/Engineering 0DQFKHVWHU 2IĠFH wilsongunn.com :H DUH ORRNLQJ IRU D TXDOLĠHG RU QHDU TXDOLĠHG SDWHQW DWWRUQH\ WR MRLQ RXU WHDP LQ 0DQFKHVWHU 7KLV LV D IDQWDVWLF RSSRUWXQLW\ IRU VRPHRQH ORRNLQJ WR KDQGOH D YDULHG DQG LQWHUHVWLQJ FDVHORDG DQG ZRUN GLUHFWO\ ZLWK FOLHQWV

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To apply, email your CV to: careers@wilsongunn.com To discuss the position in FRQĠGHQFH FDOO -DPHV 5REH\ on 0161 827 9400

Experienced Patent Records Assistant – London Beck Greener is a London-based firm of patent and trade mark Attorneys, located in the heart of London’s legal district, overlooking Gray’s Inn. We currently have a vacancy for a patent records assistant with at least 2 years’ experience to support a busy team. The role involves dealing with incoming correspondence, and updating computer-based records, and requires a thorough understanding of IP processes, from prosecution through to grant, as well as a good knowledge of the preparation and filing of new British, European, International, and foreign applications. A knowledge of the “Inprotech” system would be highly desirable, and some experience of trade marks would be preferable though not essential. Other desirable attributes are excellent attention to detail, and good communication and interpersonal skills. You should be able to work under your own initiative, as well as in a team structure.

The role will be based in our offices at 12 Fulwood Place, London, WC1V 6HR. Salary is dependent on experience. Hours are 35 hours per week, 9am - 5pm, Monday to Friday. Holidays – 25 days (pro rata) in the first year increasing by 1 day each year thereafter up to a maximum of 30 days. Benefits are: discretionary annual bonus, workplace pension scheme, season ticket loan after 6 months’ employment. To apply please send your covering letter and CV, quoting Reference RA17, to Jane Speer on email address: recruitment@beckgreener.com, or post to: Jane Speer, Fulwood House, 12 Fulwood Place, London, WC1V 6HR, marking your application as “private & confidential”. Please advise of the salary level you are seeking with your application.

The role reports to a departmental manager.

CIPA JOURNAL

JUNE 2017

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Your partners in Patent recruitment

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

Freelance Patent Attorney

Electronics

IT & Engineering

Nationwide

Part/Qualiﬁed- London or Southampton

Qualiﬁed - Worldwide

Ref: 135092

Ref: 118671

Ref: 127340

Have you been considering working for yourself but

You will be working with a specialist team of

A truly unique opportunity exists to work remotely as

would not know where to start? I have a unique

electromechanical Attorneys and design Solicitors

a Patent Attorney anywhere in the world for a well-

opportunity whereby we are looking for Patent

handling all non-contentious and contentious

respected Patent & Trade Mark Intellectual Property

Attorneys to join a business that is set up to allow

design matters. Would you like to maximise your full

ﬁrm. Maybe you have an ambition to relocate, but

you to work remotely and beneﬁt from the following:

potential and achieve your long term career goals?

securing employment within your chosen country

Managed bench of Paralegals, ability to work your

Feel like you have heard this before? The ﬁrm has

is difficult to achieve. This top IP ﬁrm have Patent

own hours, charge your own fees, be your own boss.

a fantastic proven track record of delivering this and

Attorneys working globally in multiple destinations

If you like the sound of this ﬂexibility, get in touch.

committed to enabling you to achieve your goals.

and are opening their ﬁrst UK office this year.

Physics

Engineering & IT/Software

Physics

Trainee - Nationwide

Qualiﬁed - London

Part/Newly Qualiﬁed – Bristol

Ref: 124333

Ref: 120211

Ref: 125274

Are you seeking a trainee Patent Attorney position

The London branch of this ﬁrst tier ﬁrm is in

Currently seeking Patent Attorneys with high tech,

with a well-respected IP ﬁrm that has a proven

expansion mode and seeks a mid-level to senior

physics,

track record of developing careers? Providing

qualiﬁed Patent Attorney with broad experience

engineering backgrounds. You will work closely

you have a First degree in Physics, I want to hear

of either mechanical engineering or electronics

with the lead Partner in the group and will work pro-

from you. I am working with a variety of ﬁrms

related subject matter. Whilst there are extensive

actively to contribute towards the development of the

throughout the UK seeking such individuals. Once

existing portfolios for you to work on, you will be

group and of the business. The successful candidate

I understand your career motivations I can help

provided with ample support and encouragement

will also have the ability to work independently

advise the companies best equipped to introduce

to contribute to the continued development of

with small, medium and large industrial clients and

you to.

the practice.

universities in the UK and overseas

Biotech & Biochemistry

Chemistry

Electronics/Engineering/Telecoms

Part/Newly Qualiﬁed - London

Qualiﬁed - London

Senior Associate – London

Ref: 68693

Ref: 98939

Ref: 120151

Very

exciting

opportunity

focus

almost

Qualiﬁed

chemistry

specialist

Seeking

shackled

electronics

mechanical

In a market where opportunities for electronics

collaborative,

Attorneys are plentiful, this role presents food for

exclusively on contentious work within the

constraints?

biotechnology and pharmaceutical disciplines.

autonomous

You will join a world class leading practice in this

international ﬁrm has a strong presence in London as

of becoming Partner in the near future.

technology that is led by a renowned Partner. Due

well as a solid reputation in Europe. An opportunity

reputation is outstanding within this ﬁeld. Working

to growth, opportunities exist for those at newly

has now arisen for an Attorney specialising in

with a client base containing cutting edge technology

qualiﬁed or ﬁnals standard level. This role could

chemical subject matter to join its busy London

corporations, you will gain the opportunity to

act as your ﬁrst foray into the biotech ﬁeld.

office. A competitive salary and good promotional

assist in a range of contentious activities including

prospects will be on offer.

opposition’s appeals and litigation support.

working

telecoms,

environment?

This

thought for those who are enthused at the prospect This ﬁrm’s

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-pp75-G2_1.indd 75

Mob 07426 043744

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

02/06/2017 16:14:56

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 76 CIPA JOURNAL

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

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

www.cipa.org.uk

02/06/2017 16:15:15

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Chemistry/Pharmaceutical ġƫCPA or EPA ġƫ £highly attractive package +bonus, Cambridge, ref 1011441

Mechanical/Materials/Chemical - EPA £up to £80,000 + package. Oxfordshire, ref 1013338

NEW! You are an EPA or CPA qualiﬁed attorney with a proven track record of handling chemistry, formulations and pharmaceutical cases, looking for a key industry role. This international IP team wishes to appoint a progressive individual who has experience of commercial in-licensing and FTO analysis, as well as core drafting and prosecution skills. You must also be adept at liaising with non-patent professionals, particularly marketing and business development managers. Prior exposure to trade mark registrations would also be advantageous. This is a very product-lead organisation, so you’ll thrive in a hands-on and strategically commercial team.

You are an EPA qualiﬁed patent attorney with a proven background in mechanical, materials or chemical related subject matter, gained either in-house or in private practice. This global innovation organisation are looking to expand their IP team with a passionate and commercially astute attorney who enjoys inventor-contact and the full patent-lifecyle of drafting, through oppositions/appeals, to grant phase. You’ll be exposed to some truly pioneering product-driven IP, and become an integral member of an already experienced team who thrive on managing numerous patent families. Applications are welcomed from attorneys up to 5 years PQE. A great industry role.

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

Computer Science/Softwareƫġ CPA or EPA £excellent + bonus + package. London, ref 1006955

A fantastic opportunity for a commercially astute software/electronics specialist has arisen within a truly dynamic and progressive international firm. You must be CPA or EPA qualified (up to 5 years PQE) having gained significant experience of original drafting and contentious areas of IP. Due to a substantial increase in referral work with many pivotal innovation-lead blue-chip brands, there is an immediate requirement for a bright, conscientious and ambitious team-player to add value to the firm’s growth plans. This role will challenge and excite in equal measure; a truly unique position with enviable clients and a brilliant career structure tailored to your professional ambitions. Biotechnology Attorney - Finalist/Qualified £Excellent + package. London, ref 1002491

ƫġ NEW! You are a progressive, qualified (CPA or EPA), attorney with a proven background of computer science and software related patent technology, looking for a senior role. Exposure to encryption, cryptography, blockchain and biometrics would be highly desirable as you’ll be working alongside inventors and technical teams with key clients from the outset. This is a unique, strategic appointment for an attorney who is attracted to building a team, forging new client partnerships and making commercial decisions, whilst taking responsibility for a truly exiting portfolio of pioneering subject matter. Flexible working, fantastic career prospects and a great firm to work for await you. Electronics/Telecoms - Part Qualified/Finalist £very competitive + bens package. Cambridge, ref 1008811

Fantastic biotechnology opening for a finalist/newly qualified attorney to join a prestigious and higely progressive UK practice. Commended as a true international firm, they pride themselves on the calibre and range of client portfolios. You should possess an incisive and commercially sound legal mind to manage a number of key accounts of high-value strategic worth. Applications are sought from attorneys who are looking for significant professional rewards, as well as highly challenging and exciting technology. Their support infrastructure is superb, so professional staff retain a high level of responsibility for their own clients. Ready to step up in 2017?

NEW! A superb opportunity has arisen for a part qualified/finalist in ph ysics, telecoms, or electronics to join a hugely reputable and progressive UK firm. Widely regarded as one of the most successful and meritocratic firms, t hey have further underlined their credentials by attracting talent this year. Owing to a significant rise in new instructions within their high-tech group, applications are immediately sought from attorneys with a minimum of 2 years professional experience. You must be commercially minded, technically gifted and feel confident advising clients of all sizes. You’ll be joining a really dynamic team with excellent supervisory and mentoring experience.

Telecoms/Engineering - CPA/EPA Qualiﬁed £excellent + beneﬁts. South West, ref 1013303

Electronics/Physics Attorney - CPA or EPA £attractive + bonus. London or Bristol, ref 1012867

NEW! You are a qualified CPA/EPA with experience of electronics and/or telecommunications related subject matter looking for a firm to match your professional ambitions. You’ll be responsible for a profitable and wide-ranging portfolio of established multinational clients; many of which have UK based requirements. You must be commercially astute with fantastic client-facing skills to complement your technical competencies. This thriving practice will appeal to those who want to work in a friendly, supportive culture with an excellent platform to advise clients of all sizes. Long-term prospects are exceptional for those who harbour partnership aspirations.

NEW! This renowed firm is looking to secure an ambitious attorney for their expanding electronics and engineering practice. Applications are keenly sought from finalists and qualified attorneys with a physics, electronic engineering or computer science background. You should have gained a minimum of 4 years experience, and be ready to make the next step up in your IP career. Recognised as one of the top 10 UK practices, this firm continues to reward their employees with a diet of pioneering and challenging work from a diverse client base. If you are looking to ignite your career with a defining move this year, then look no further!

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

jamesdawesaspire

www.weareaspire.com/IP

120 New Cavendish Street, London, W1W 6XX

REC-pp77-Aspire_1-RHS.indd 77

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THE PINKS

RECRUITMENT

In partnership with

IP Recruitment Specialists 35 years experience

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

New Zealand Patent Attorney (Elec/IT/Mech) Love the outdoors? Thinking about a move to somewhere different? Want a change of pace to a fun dynamic firm?

How about a move to a country where you and your family can enjoy an active, healthy lifestyle, with landscapes just like these within easy reach? Ellis Terry is a boutique patent attorney firm, located in beautiful New Zealand. We work with some of the most exciting technology companies in the country, ranging from large listed companies to start ups. We are looking for a positive and motivated qualified or part qualified patent attorney to join our team. Someone with an electronics or physics background would be ideal, although a mechanical background with competence in IT or electronics might also be suitable. We offer stimulating work, focusing on local technology clients with international portfolios and contentious work. We focus on what matters and avoid bureaucratic rules that don’t impact clients or the firm. We have a very collegial environment and offer a high degree of flexibility, with remuneration packages that reward performance. To explore this opportunity please email jenny.mccaul@ellisterry.com

CIPA JOURNAL

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ENGINEERING SPECIAL

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Career Legal is a recruitment agency and are advertising these vacancies on behalf of their clients To enquire about any of the above opportunities, please contact Dan Lloyd on 020 7628 7117 or email danlloyd@careerlegal.co.uk REC-pp79-Career-Legal_1.indd 79

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THE PINKS

RECRUITMENT

Looking for a new work-life balance? Fed up with the daily commute to London? Oxford | Brighton | Flexible We are expanding our teams of experienced Patent Attorneys with a background in Engineering, Physics, Electronics, Maths and Computing. Opportunities exist for experienced patent attorneys with at least 2 years’ working in the profession, up to around 2 years post-qualification. Working as part of a leading Top Tier firm, you will build a long term career, with responsibilities and challenges that will both push you and develop your skills further. If you would like to be part of an inclusive working environment and pride yourself on the efficiency and accuracy of your work, come and join us. Dehns offers: • Varied caseload • Independent client work • Business development • Flexible and remote working • Competitive salary • Employee benefits package • Friendly, sociable environment to work in Visit www.dehns.com/site/careers to find out more, or contact HR careers@dehns.com for further information and to arrange an initial confidential chat.

www.dehns.com/site/careers Volume 46, number 6

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RECRUITMENT

European Patent Attorney (Life Science Team) Dublin/Belfast Are you a European Patent Attorney looking for a more diverse and fulfilling role? In our EU-based Dublin Office or our UK-based Belfast Office, we are currently recruiting a fully-qualified European Patent Attorney (or final year EQE candidate) with a PhD or equivalent in (micro)biological, biomedical, biomolecular, (bio)chemical, or natural science (or a related technical discipline); with a view to helping you develop a multifaceted and versatile career path. About us Our technical expertise ranges from electronics and mechanical systems to medical devices and healthcare – and we represent a range of inventors from SMEs, academic institutions, and international corporations – offering a diverse and intensive work experience. We provide an open-door policy to give access to all professional levels, and we nurture a friendly atmosphere to contribute to a supportive working environment. Previous European Patent Attorneys have not only trained and qualified with us, but have advanced their careers to partner level – thus, we are invested in advancing the careers of our highly-motivated European Patent Attorneys. About the role The role complements the expansion and progression of our Life Science Team to one of the most competent teams in Europe, and is aimed at developing your professional commitments as a European Patent Attorney in all proceedings before the European Patent Office, with particular opportunity to directly manage higher level opposition and appeal proceedings. You will have occasion to work both on your own and in a group, with direct access to clients and case work with a healthy combination of directly prosecuted and communicated matters – providing you with a varied and extensive caseload. The role boasts a competitive compensation package with clear and definitive opportunities to promote and progress your career. Your skills We are looking for you to provide practical strategic advice through an analytical and organisational perspective, and an active approach to business development. A highly motivated and self-starting attitude to working as an individual must also be combined with the ability to interact and develop strong working relationships with colleagues. Application to the role If you are a European Patent Attorney looking for a more diverse and fulfilling role, please send a cover letter outlining your eligibility for this role together with a detailed CV, by email to Jane Rice, HR Officer (hr@frkelly.com). If you are a European Patent Attorney looking for a more diverse and fulfilling role, please send a cover letter outlining your eligibility for this role together with a detailed CV, by email to Jane Rice, HR Officer (hr@frkelly.com) by Monday 26th June 2017.

82 CIPA JOURNAL

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THE PINKS

RECRUITMENT

COMPETITIVE SALARY PLUS EXCELLENT BENEFITS

7(;,5; (;;695,@ )90:;63 Being a Patent Attorney at Airbus is different. But what does ‘different’ actually mean?

It means using your expertise in intellectual WYVWLY[` [V KPYLJ[S` PUÅ\LUJL H [Y\S` NSVIHS WPVULLY in the aerospace industry. You will be immersed in some of the most amazing technologies and products in the world today and you will exchange ^P[O JVSSLHN\LZ MYVT KPMMLYLU[ JV\U[YPLZ KPZJPWSPULZ and backgrounds on a daily basis.

Your workload will involve core Patent Attorney ^VYR Z\JO HZ PU]LU[PVU OHY]LZ[PUN WH[LU[ KYHM[PUN HUK WYVZLJ\[PVU VWWVZP[PVU ^VYR HUK WYV]PKPUN MYLLKVT [V VWLYH[L ZLY]PJLZ 0U HKKP[PVU `V\ ^PSS IL PU]VS]LK PU JVTTLYJPHS JVU[YHJ[ ^VYR PUJS\KPUN HK]PZPUN WYLWHYPUN HUK ULNV[PH[PUN PU[LSSLJ[\HS property clauses in collaboration agreements and V[OLY JVU[YHJ[Z @V\ ^PSS NL[ ÄYZ[ OHUK L_WLYPLUJL >L J\YYLU[S` OH]L HU VWLUPUN MVY H X\HSPÄLK <2 HUK of intellectual property in action and how it can be European Patent Attorney to join our team in Bristol used to boost competitive advantage. and be part of the next steps in the evolution of the aerospace industry as we push the boundaries of What we can offer in return is an unrivalled [LJOUVSVN` HUK ZOHWL [OL M\[\YL VM ÅPNO[ opportunity to join an innovative team and help to really shape the future of this expanding division. Your professional experience will enable you This is a highly visible role and offers the successful to be comfortable dealing with technologies in candidate autonomy and freedom to express their the aerospace sector. You will have excellent ideas and contribute to the on going success communication skills and have the ability to tailor within the organisation.

-VY TVYL PUMVYTH[PVU HIV\[ [OL YVSL VY H KPZJ\ZZPVU PU JVUÄKLUJL please contact Matthew Beatson (matthew.beatson@airbus.com). Apply online at www.airbusgroup.com

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your communication style to suit your audience. You will be given a high level of autonomy and have If being a Patent Attorney at Airbus sounds like it is [OL ÅL_PIPSP[` [V WYPVYP[PZL `V\Y V^U ^VYR SVHK IHZLK [OL JOHSSLUNL `V\ HYL SVVRPUN MVY ^L ^V\SK SV]L [V on business need. You will be comfortable working hear from you. PU H [YHUZUH[PVUHS [LHT HUK IL OHWW` [V [YH]LS HZ needed in a global company such as Airbus.

JUNE 2017

CIPA JOURNAL

02/06/2017 16:17:48

THE PINKS

RECRUITMENT

Vacancies for Ambitious Attorneys Graham Watt & Co is a small and friendly practice with a respected and long-established client base. The firm is modern and forward-thinking with a dynamic and challenging workload. We work with direct corporate clients of all sizes, from start-up ventures to large international companies, as well as with individuals, and for a very wide range of technologies. Details of the firm can be found at www.grahamwatt.co.uk We have two opportunities, both ideally suited to recently qualified / part qualified UK/European patent attorneys:

Telecoms / IT Engineering / Electronics For both positions the candidates will require an excellent academic record. Relevant experience in private practice or industry, in the relevant technical area will be advantageous, but not essential. The positions will be based in our office in Sevenoaks and will involve a varied caseload, under the initial supervision of a Partner. The successful candidates will be given autonomy from an early stage and encouraged to be involved in practice development. Partnership prospects are good.

The positions offer competitive salaries. Please apply with covering letter and CV to Alison.private@grahamwatt.co.uk.

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JUNE 2017

www.cipa.org.uk

02/06/2017 16:18:19

THE PINKS

RECRUITMENT

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

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

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

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

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

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JUNE 2017

CIPA JOURNAL

02/06/2017 16:18:38

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

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JUNE 2017

www.cipa.org.uk

02/06/2017 16:18:59

THE PINKS

RECRUITMENT

Maucher Jenkins is looking for talented part or fully qualified Patent Attorneys to join our growing patents group in the UK Part or fully qualified Patent Attorney – flexible working options!

Part or fully qualified Patent Attorney – Mandarin speaking

(Wireless Communications and Electrical Engineering)

(Electronics, Communications or Electro-mechanical Engineering)

Are you looking for a flexible role to suit your schedule? Are you looking to work with high profile clients while maintaining a genuine work/life balance? Are you looking to join a highly skilled and experienced team?

Due to our exciting expansion plans, Maucher Jenkins is looking for an ambitious part or fully qualified Patent Attorney to join our patents group to support our continued growth in the UK and China.

Maucher Jenkins is seeking a part or fully qualified Patent Attorney with a background in wireless communications and electrical engineering to join our growing patents group in the UK. Working with a strong team, this role will primarily support a prestigious US client to protect and enforce their substantial patents portfolio. This is an exciting opportunity for a motivated Attorney to join a friendly, supportive and fast-growing business. If you have relevant experience and are a commercially minded, self-starter, we want to hear from you! If you are fully qualified, we will support you with your continued professional development. If you are part-qualified, we will support you to achieve full qualification as a Chartered Patent Attorney and European Patent Attorney. We offer a competitive salary, attractive bonus scheme and a flexible working arrangement – all options will be considered. Location: Role type: Salary:

London (or Surrey, if candidate prefers) Permanent, flexible Competitive with an attractive bonus scheme, plus benefits

Qualifications: Part-qualified: Under-graduate degree in relevant STEM subject and Intellectual Property Law Postgraduate certificate or equivalent foundation level UK qualification Fully qualified: Chartered Patent Attorney and European Patent Attorney Closing date: 30th June 2017

The right candidate will have a background in electronics, communications or electro-mechanical engineering and will be a self-starter, dedicated to the highest standards of client service. As this role will work closely with our colleagues in China, strong written and oral Mandarin language skills are required. If you are fully qualified, we will support you with your continued professional development. If you are part-qualified, we will train and support you towards achieving full qualification as a Chartered Patent Attorney and European Patent Attorney. A very competitive salary will be available to the successful appointee. We can’t wait to hear from you! Location: Role type: Salary:

London (or Surrey, if candidate prefers), with travel to China Permanent, full time Competitive with an attractive bonus scheme, plus benefits

Please apply with your CV and covering letter to Emily Hutley (Emily.Hutley@maucherjenkins.com) or write to us at, 26 Caxton Street, London, SW1H 0RJ. In your application, please mention CIPA. No agencies

Please visit us at www.maucherjenkins.com

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JUNE 2017

CIPA JOURNAL

02/06/2017 16:19:21

If you’re 100% happy with where you are now, DON’T READ ON... …but if you want to be among the best and the brightest, work in a flexible and supportive environment where your ideas are encouraged, then read on... We are seeking patent attorneys with a background in electronics or biotechnology to join our Glasgow and Edinburgh offices.

If you’re excited by the challenge of delivering outstanding results for your clients, taking a leading role in advising on diverse portfolios and in employing not only technical excellence but strategic acumen, then please contact us:

Murgitroyd.com/Careers gordon.stark@murgitroyd.com

Opportunity. Innovation. Global Reach.

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Murgitroyd.com

02/06/2017 16:19:43

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