CIPA Journal, July-August 2017 by CIPA Journal

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

July-August 2017 / Volume 46 / Number 7-8

SPC review UK questions await CJEU answers

Appeals in first instance judgments Holly Mitchell

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Limits of the jurisdiction of the UPC Nicholas Fox

Are changes to Rules 27 and 28 EPC illegal? CIPA’s comments

Surviving Alice in the finance arts Mark Nowotarski

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

05/07/2017 11:22:42

A global, future-facing law ﬁrm whose unique team of patent specialists works with clients directly in all the most interesting sectors.

Creative Modern Specialists It’s not just the quality and variety of our clients that keeps our patent attorneys engaged, it’s the ﬂexible working, cutting edge technology and career development. Partnership’s a possibility, not a pipe dream. Energy / Financial Services / Infrastructure & Project Finance / Life Sciences and Healthcare / Real Estate / Technology, Media & Telecommunications

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CMS Cameron McKenna Nabarro Olswang LLP is a member ﬁrm of CMS.

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Contents 34-43 63

UP FRONT

ARTICLES

EDUCATION

64 66 67 68 69 70 71 72 76 78

Editorial

Alasdair Poore 4 5

Holly Mitchell

Chief Executive’s report

Lee Davies

Council Minutes

Lee Davies

Surviving Alice in the finance arts

Mark Nowotarski 24

NEWS

First instance judgments – keeping us in suspense?

Jurisdiction of the UPC

Nicholas Fox 27

SPC Summer Review 2017

Carpmaels & Ransford 8

Media report

Neil Lampert 9

China update: SIPO

Toby Mak 39

Changes to Statutory Patent Fees Are changes to rules 27 and 28 EPC illegal? Overseas report

Amanda R. Gladwin 15

Thailand update

DECISIONS

Book Review Institute events UP and UPC webinars Life Sciences Conference CIPA Congress 2017 Patents Case Law South of England seminar Trade Secrets Directive EPO Oppositions and Appeals Life on the Inside

China update: litigation

PERSONAL

Toby Mak 74

The not-so-secret diary

Andrea Brewster

61 62 63 65

Going Remote Announcements Letter to the Editor Former President of CIPA, awarded OBE

Gladys Mirandah & Hilmi Bin Zaini 15 16

Manual of Patent Practice updates UPC case management system

Patent decisions

Beck Greener 45

Mark Richardson

Barker Brettell 46

EPO decisions

Bristows 48

THE PINKS

IPO decisions

80 83 82

Courses and events International Recruitment

Trade marks and other IP

Bird & Bird Volume 46, number 7-8

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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 Admin 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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Editorial Brexit: entanglement and the uncertainty principle Readers will know that I was not in support of Brexit – a guarantee of mediocrity at the best were views I had expressed previously. Well we are now on the rather bumpy road to achieving it, whatever it may be; we are moving from the blissful sunny brilliance of the Mediterranean into the murky rough waters of the Clyde estuary, where we cannot really see where we are going. That is what I want to talk about. That road has been considerably more bumpy than even the best forecasters predicted over the last few months. Calling the election was a real surprise, and while some patent attorneys may have fretted about the delay and possible jeopardy that might place the Unified Patent Court (UPC) in, those with a wider view point, pointed to the chunk of time removed for reaching agreement on where Brexit was going. Since the election there has been additional consternation from the unforeseen result – a government without an overall majority seeking to navigate safely through potentially very turbulent waters, with a danger of capsizing at any moment. All of which has made for very excitable discussion. But I have been struck by a different perspective, illustrated at two events in recent weeks, a perspective that we should all, including IP professionals, pay much more attention to communicating widely. One was a “question time” with contributors from both for and against camps, and from the business and economics community; the second a life sciences event for exchanging ideas relevant to the pharmaceutical and biosciences sectors. What was striking about both Volume 46, number 7-8

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events was the positive approach contributors took to addressing Brexit – at complete contrast to the excitable discussion in the press and other media. Broadly this was: there will be changes in the business environment; business has to cope with changes all the time; changes give innovative businesses opportunities. That is not to say that some of those changes may make things more difficult but it is important to keep that in perspective. We are moving from (possibly) a calm and sunny Mediterranean to a more turbulent and foggy Atlantic – at

Alasdair Poore

spread about the future status of UK and EU intellectual property rights following Brexit. But is there really such great uncertainty as to what the most likely outcome will be? No doubt the arguments along the way may be vociferous and loud – but do practitioners seriously believe that there is any significant likelihood that the UK will not, for example, provide for EU trade marks to be given effect to in the UK, and to be given effect to with their original filing dates. Or that such rights will be open to challenge in the UK in the same way that they can be challenged

Clients should approach Brexit as an opportunity and with a good degree of confidence – not panic. present there is uncertainty as to the road which will be taken. However, one should not be too morose about the outcome. I would suggest that, while the route may have substantial uncertainty, there is actually far less uncertainty about the destination – with one large caveat: we are in the hands of politicians, and politicians have individual agendas, which may be more important to them than the interests of the UK or the EU. So translating that to the intellectual property field, we experienced at the recent INTA meeting in Barcelona considerable uncertainty being

now before the EU Intellectual Property Office (EUIPO). Yet we were told that UK professionals were suggesting that this was not the case and that it would be important to apply afresh for a UK trade mark in addition to an already existing EU trade mark. And there may be uncertainty about what is going to happen to the UPC – but we have already had uncertainty about the UPC for 60 years, and we can live with the outcome; it does not impact the value of patent protection in the short term. At the beginning of the year I illustrated Brexit with a picture of King’s College Chapel in Cambridge JULY-AUGUST 2017

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UP FRONT

and reference to the former Brexit – the split with the Roman Catholic Church in 1534 and the beginning of the Reformation. (A smart observer pointed out that Oxbridge colleges had not done too badly out of that Brexit, and were still living with some of the substantial windfalls from it, especially from the dissolution of the monasteries). I am no historian so I cannot confirm or deny that. I did, however, add that one hoped that Theresa May treated her partners with greater tact than Henry VIII. Now with the result of the election, she will probably have to treat them with kid gloves, rather than execute them. But they will have to throw their weight around carefully not to capsize the boat. The result makes it more likely that a sensible compromise will be reached and that politics – at least from the UK side – will have a more limited influence. That is also the opinion of a well-respected commentator: that the election was called not because Theresa May wished to endorse her mandate before Parliament, nor because she thought she could bolster her majority when the Labour leader was weak (as if anything his trajectory before the election was to get weaker),

EDITORIAL • COUNCIL

but because she wanted to stamp her authority on her own backbenchers in relation to the possible Brexit payment, which they would use to chastise her and challenge her authority. I return to the message I believe we should put real energy into conveying: the outcome of Brexit is most likely not totally unpredictable; mainly the generally outcome is predictable, with a fair degree of confidence; and one can also have a fair degree of confidence that the more uncertain outcomes can be addressed effectively. Most clients should approach Brexit as an opportunity and with a good degree of confidence – not panic. And even if politicians wish to promote an atmosphere of uncertainty and distrust, professional practitioners should take a more level-headed perspective. And I begin to be persuaded that Brexit may not mean a guarantee of mediocrity, but presents real opportunities to be grasped by our clients. You may not agree at all. As has been observed by those involved in workshops on Brexit, there is an unbelievable amount of detail to be addressed. That alone may derail any desired outcomes. So please feel free to lob other points of view into the pot (editor@cipa.org.uk).

Chief Executive’s report Update on the Bye-laws Unfortunately, I have to inform CIPA’s members that we did not receive a response from the Privy Council Advisors in time to allow us to complete the review and adoption of the Byelaws within the current governance cycle. CIPA has to operate within the constitutional terms set out in its Charter and current Bye-laws and it would now be too much of a challenging task to hold a General Meeting of the Institute for members to consider the proposed amendments to the Bye-laws and secure the approval of the full Privy Council in time for the presidential succession to take place, as planned, in October this year. At its meeting on 7 June 2017, Council agreed to schedule an AGM for the beginning of October, most likely following the Council meeting scheduled for 4 October 2017, under the existing Bye-laws. This will allow Council to present its annual report and audited accounts to the membership and for the elections to Council and the offices of President and Vice-President to take place. Once it has met its constitutional obligations under the existing Byelaws, Council will present the proposed amendments to the Bye-laws to the membership in the hope that the approval of the Privy Council can be secured in advance of the start of the new membership year on 1 January 2018.

It is election time (again) Alicante, the calm Mediterranean and the seat to the EU Intellectual Property Office (an institution that strongly reflects the European Union’s presence in the intellectual property field); and rough waters and mist in the Clyde estuary (the gateway through which many British ships trading with the rest of the World first set sail).

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I hope that members are not feeling too fatigued with voting, as we now need to call for nominations for Council and for the offices of President and Vice-President. Stephen Jones, CIPA’s www.cipa.org.uk

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Vice-President, has confirmed that he intends to stand for President. Up to eight members of Council are required to stand down each year. Retiring members of Council are eligible to stand for re-election, however, this year a number are not standing for Council so there will be vacant seats to fill. The primary commitment is the ability to attend Council meetings regularly, which are held on the first Wednesday of every month in London. There is always the facility to attend Council meetings remotely and I hope that this will be further improved with the provision of video conferencing at the new office. The call for nominations will close at an Ordinary General Meeting to be held at least 21 days before the AGM, this is likely to be after the Council meeting scheduled for 6 September 2017. Nominations for President and Vice-President must be made in writing to me and require

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the support of four other Fellows. Nominations for Ordinary Members of Council may be made in writing to me by the candidate alone. The ballot will be held online with a postal option for those Fellows who do not have ready access to the technology or who prefer a paper ballot for accessibility reasons. Please let Lea Weir Samuels (lea@cipa.org.uk) know at your earliest convenience if you will require a postal ballot. Please consider standing for Council. The world of IP continues to change and evolve rapidly, and CIPA Council is lobbying actively on a number of fronts to achieve the best policy outcomes for UK professionals and for rights holders. Council is at the very heart of CIPA’s work on influencing policy formers and decision makers at home and abroad and we can be sure, with Brexit looming large on the horizon, that we will need to continue to lobby hard if we are to be

successful. I hope that this will inspire members to stand for Council as CIPA needs to be governed by those who are finely tuned to the environment in which it operates. If you would like to find out more about the work of Council and what it takes to be a Council member, please do get in touch with me.

Key dates: •

• •

OGM for the approval of the ballot list under Bye-law 34 (a) – most likely to be held on Wednesday 6 September 2017, following the Council meeting scheduled for that date. Election opens Monday 11 September 2017. AGM Wednesday 4 October 2017, following the Council meeting scheduled for that date. Lee Davies, Chief Executive

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

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

Item 2: Minutes 103/17: The Minutes of the meeting held on Wednesday 5 April, 2017 were approved following amendment. Volume 46, number 7-8

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104/17: From minute 80/17. Tony Rollins said that he wanted to clarify with Council that the research proposal from Dr Georg von Graevenitz and Dr Luke McDonagh originated from an earlier discussion in Council about the value of the UK’s patent system in terms of the wider economy. Tony said that the Officers had asked Neil Lampert to investigate potential research partners and that the current proposal was arrived at following a telephone conference between Neil, Catriona Hammer and Roger Burt. Tony added that the subsequent concerns about the cost and scope of the research proposal, raised by a number of Council members via email, had led him to conclude that the proposal should not be taken up by CIPA. Catriona Hammer said that the UK IPO’s Research Expert Advisory Group (REAG) might be interested in some of the

concepts raised in the research proposal and that she would raise this at the next REAG meeting. Stephen Jones said that it might be possible to obtain information on patent litigation through the Intellectual Property Enterprise Court (IPEC) or to ask for Judge Hacon’s impression on the volume of cases. Tony Rollins said that he understood that the number of cases heard in the IPEC was low, but that he believed that about 200 cases were started each year. Matt Dixon said that this information would be helpful as it would allow CIPA to make contact with those firms that were actively involved in litigation. Roger Burt said that it would be useful to understand the market within which patent attorney firms conduct litigation, which was not apparent within the research proposal. JULY-AUGUST 2017

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Neil Lampert reminded Council that the initial discussion leading to the research proposal had started from the idea of surveying members and firms and asked if it might be worth revisiting this idea. Matt Dixon said that this would be a useful exercise from the perspective of private practice but that he did not know the extent to which industrial departments were engaged in litigation. Tony Rollins said that some departments had access to in-house litigation teams whilst others outsourced any contentious work. Tony added that it might be worth asking industrial departments a slightly different set of questions. Tony said that it was his understanding that Council wished to gain an insight into the direct involvement of patent attorneys representing clients and the indirect involvement through outsourcing litigation to third parties. Catriona Hammer suggested that the survey could focus on a simple set of questions addressing members’ involvement in advocacy and instruction and be followed by a more detailed survey, depending on the responses received. Matt Dixon said that it would be interesting to obtain an estimate of the amount of time spent on contentious matters such as advising clients on enforcement and infringement. Neil Lampert said that he would liaise with Vicki Salmon, as Chair of the Litigation Committee, and would bring a proposal for a survey back to Council. Action: Neil Lampert and Vicki Salmon to consider the scope and content of a survey of members designed to gather information on the scale and nature of litigation activities undertaken by patent attorneys. 105/17: From minute 83/17. Neil Lampert informed Council that he had discussed CIPA’s brand and image with the Officers and that there was general agreement that the ‘Three Graces’ image with the IP rights strapline accurately portrayed CIPA’s history and purpose. Neil advised Council that he saw no reason to invest in refreshing CIPA’s brand identity at this time. Neil said that 6

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he would develop comprehensive style guidelines to ensure that CIPA’s brand was presented in a consistent fashion.

to IPReg, such as its response to the Competition and Markets Authority’s implementation action plan, were on the next ARF agenda.

Item 3: Conflicts of interest 106/17: There were no conflicts of interest.

Item 4: Brexit 107/17: Tony Rollins advised Council that, with the calling of a General Election and the dissolution of Parliament, the Statutory Instruments required to bring the UPC into being had not yet been passed. Tony added that the new Parliament would be likely to sit for the first time on 19 June 2017 and that the summer recess would commence on 21 July, leaving a small window for the Statutory Instruments to be passed. Tony said that it was important that CIPA was ready to press for immediate action following the outcome of the election and to be prepared to brief a new Minister, should there be a change in ministerial portfolios. Tony Rollins said that it was important for CIPA to take stock of the wider IP issues related to the UK leaving the EU, such as the Nagoya Protocol, tax credits, exhaustion of rights, etc. Tony said that he had discussed holding a symposium to start to formulate CIPA’s position on issues such as these. Lee Davies suggested that it might be possible to host a roundtable policy event in the CIPA Hall and to broadcast this to the membership. Action: Lee Davies, Neil Lampert and the Officers to liaise on an appropriate date for a symposium focused on the non-UPC/EUIPO Brexit considerations.

Item 5: Bye-laws 108/17: Council noted the report on the Bye-laws and agreed to defer any decision on scheduling an AGM under the existing Bye-laws until the June meeting of Council. [See page 4.]

Item 6: Regulatory issues

Item 7: Office relocation 111/17: Lee Davies informed Council that the lease negotiations for Halton House were progressing well and that he hoped to be in the position to complete on the lease shortly. Lee advised Council that the Charter required two members of Council to witness the Institute’s seal being applied to the lease. [See page 7.]

Item 8: IPO and EPO matters 112/17: Tony Rollins informed Council that he was due to attend a harmonisation meeting at the IPO on 12 June to consider proposals from the Industry Trilateral. Tony added that he hoped to receive the papers within the next two weeks. Tony said that he would arrange a pre-meeting with others from CIPA who were attending the IPO meeting and, if necessary, arrange a follow-up discussion before the EPO meeting scheduled for 20 June. Action: Tony Rollins to arrange a premeeting for CIPA members attending the IPO harmonisation meeting. 113/17: Richard Mair said that he would attend the IPO attachés’ meeting scheduled for 16 May 2017. Tony Rollins said that he would need to send his apologies for the meeting, as he would be speaking on behalf of CIPA at a conference in South Korea. 114/17: Council noted the report on the IPO’s Corporate Plan and asked the Exploitation Committee to consider making a response on behalf of CIPA. Action: Catriona Hammer to ask the Exploitation Committee to consider the IPO’s Corporate Plan and to advise Council on making a response.

109/17: Confidential minute. 110/17: Council noted the report from Lee Davies on his meeting with the Chief Executive of the LSB. Tony Rollins said that he would ensure that actions relating

115/17: Council noted the Exploitation Committee’s response to the Government’s Industrial Strategy Green Paper and thanked Mike Barlow for leading on this. (June [2017] CIPA 11) www.cipa.org.uk

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Item 9: Committees and committee reports 116/17: Congress Steering Committee Lee Davies advised Council that the Congress Steering Committee had met that morning and that the development of the programme was going well. Lee added that the Committee was concerned to learn that Sir Michael Pitt had resigned as Chair of the Legal Services Board, as he was scheduled to deliver a keynote speech. Lee said that he had approached the LSB to see if Dr Helen Philips, the interim Chair, would be honouring this commitment. Tony Rollins suggested that he could ask Tim Moss, the new Chief Executive of the IPO, to speak at Congress when he meets with him. [See Congress advert on page 69.] Action: Tony Rollins to invite Tim Moss to speak at Congress. 117/17: Exploitation Committee Council noted the report from the Exploitation Committee. Action: Catriona Hammer to draft a letter to the UK IPO setting out CIPA’s thoughts on the trade agreement between the EU and Korea being used as a potential starting point for agreements between the UK and other countries after Brexit.

118/17: Patents Committee Council noted the report from the Patents Committee and granted the Committee the power to act on behalf of Council in submitting a response to the IPO’s consultation on patent fees. Council noted the Committee’s response to the SIPO consultation on accelerated patent examination. 119/17: Life Sciences Committee Simon Wright advised Council that the Committee’s preparations for its conference at Silverstone on the 16-17 November were going well [see advert on page 68]. Council approved the appointment of Glyn Truscott (Elkington Fife) and Barbara Rigby (Dehns) to the Committee. Tim Roberts informed Council that he would bring a revised paper on the Nagoya Protocol and the impact of Brexit to the June meeting of Council. Simon Wright informed Council that at a recent Committee on Patent Law meeting at the EPO, a paper was presented outlining four potential scenarios: do nothing, amend the EPC, amend the Rules to specify that the products of biological processes are not patentable or change the Guidelines. Council supported the proposal that the Life Sciences Committee should write to

WE ARE MOVING!

Patents

Trade Marks

Designs

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the EPO and the IPO setting out CIPA’s position. Simon Wright advised Council that the Committee was split on the matter of submitting an Amicus Brief in relation to the Warner‐Lambert v Actavis case before the Supreme Court. Council asked Simon to canvass the opinion of the Committee and put this to a vote, possibly by email given the timescale. Paul Cole added that he was of the view that there were sufficient grounds for submitting an Amicus Brief and to identify concerns about plausibility and post-grant amendment. Tim Jackson asked that the Patents Committee be kept informed, but recognised that this was more related to the work of the Life Sciences Committee. 120/17: Media and PR Committee Council noted the report from the Media and PR Committee. 121/17: Administrators Committee Council noted the report from the Administrators Committee and approved the appointment of Stephen Turner (Slingsby Partners LLP) to the Committee.

Item 10: Officers’ reports 122/17: Council noted the Officers’ reports.

CIPA is moving from Chancery Lane to a new home just around the corner at Halton House, 20-23 Holborn EC1N 2JD. The office move will take place on Monday 31 July, and we will be closed all day on Friday 28 July to make final preparations for the big day. We look forward to welcoming members and friends to our modern new offices in August and, while we do our utmost to keep disruption to a minimum, would ask for a little patience and understanding during the final week of July as we begin the moving process.

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Item 11: Chief Executive’s Report 123/17: Council noted the Chief Executive’s report.

Item 12: Applications for election 124/17: Fellows Council approved the following first time Fellow applications: Alexandra Kathleen Reid; Seon-Hee Sunny Chang; Susan Jane Bradley; Holly Fiona Cowie; Anis Naidu; Gregory Carty; Matthew David Morton; Maximilian Thoma; Xingye Huang; Richard Jaszek; Dominic David O’Connor; Charles Thomas Dempster; Craig Edward Titmus; Bethany Katherine Gibbs; Samantha Laura Blackham; Laura Clews; Lucy Suzanne Williams; Annabel Williams; Olivia Josephine Creemer; Sarah Elizabeth Dobson; Svilen Dimitrov Mirtchev; Alexander Thomas White; Peter David Edmund Herrick; Gregory James Ball; Katie Sarah Howe; Andrew James McKinlay; Zephyr Guangyi Su. Council approved the following second time Fellow applications: Gregory

MEDIA

Carty; Russell James Woolley; William Burrell; Katerine Victoria Barker; Michael Nielsen; Shu Yang; Gregory St Clair Jones; Michael Peter Vallance; Michael Ewan Pedley. 125/17: Associate Members Council approved the following second time Associate membership application: James Mitchiner. 126/17: Students Council approved the following Student Membership applications: Victoria Bruce; Piotr Mach; Matthew Sullivan; Claire Windle; Emma Tinney; Diana Jane D’Arcy.

Item 13: Resignations, etc 127/17: Council noted the report on resignations.

been unable to attend his final Council meeting as he wanted to thank him in person for the contribution he had made to the work of CIPA over many years. Council thanked Bob in his absence by acclamation. Tony said that he would write to Bob to thank him and wish him well in his retirement. 129/17: Lee Davies advised Council that the he had heard from Chris Mercer that the EQE secretariat was now satisfied with the proposal to run the 2018 EQEs in Walsall and that the venue had been booked. 130/17: Vicki Salmon advised Council that the webinar series on the Unitary Patent and the UPC was progressing well. Council thanked Pippa Allen and her team for leading on the development of the webinars. [See page 67.]

Item 15: Date of next meeting Item 14: Any other business

131/17: Wednesday 7 June, 2017.

128/17: Tony Rollins said that he was disappointed that Bob Ackroyd had

The President closed the meeting at 17:24

Media report

Financial News – South Korea

IPA has been busy promoting intellectual property and the UK profession to national and international audiences in recent weeks.

The Bottom Line Vicki Salmon, Chair of CIPA’s Litigation Committee, was the panel expert when BBC Radio 4’s The Bottom Line programme discussed intellectual property and industrial espionage on 15 June. The show covered all IP rights, from trade secrets to patents, with Vicki explaining the practicalities of IP enforcement. She mentioned the CIPA clinics and also the small claims track at the Intellectual Property Enterprise Court (IPEC) during the discussions. Other guests were security expert and thriller writer Chris Morgan-Jones 8

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and baby product entrepreneur and IP champion Mandy Haberman. The episode, entitled Corporate Espionage, can be listened to online or downloaded as a podcast by searching for Radio 4, The Bottom Line, on the BBC website.

On the international front, CIPA President Tony Rollins gave an interview to the Financial News, a daily newspaper in South Korea, during the visit to the Far East of CIPA’s International Liaison Committee in March. During an in-depth feature interview he spoke about the impact of Brexit on IP, how it was business as usual for UK patent attorneys and explained how the European work of UK patent attorneys would be unaffected by Brexit because neither the EPC or EPO were European Union institutions. This interview led to an invitation for Tony to give the keynote speech at the seventh International Intellectual Property and Industrial Security Conference, 17 May 2017. His speech www.cipa.org.uk

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was entitled ‘Strategies to lead global intellectual property’. He told the audience that UK patent and trade mark attorneys were worth more than £1 billion per year to the British economy and that CIPA members provided policy input at national, European and international level to improve the system. He also pointed to the annual Taylor Wessing Global IP Index, which consistently ranks the UK’s IP system as either the best, or among the best, in the world. Tony said: “The key issue for the Korean patent attorney profession is being able to represent clients in front of a court. So at the Korean Financial News conference I talked about the rights we had in the UK and I answered questions about this as part of a panel. I emphasised what we do in relation to IPEC, for example. Effectively I did three different things at the conference: the talk itself; then a panel session that I participated in; and finally an interview with the Financial News. I was selling the UK profession, so I focused on what the UK profession does, the advantages we can offer and how it is at the forefront of global IP developments.” In his speech Tony reiterated CIPA’s “business as usual” Brexit message, which was also stressed heavily during the visit to Korea six weeks previously. He spelled out the reason why the European work of UK patent attorneys would continue unaffected – because neither the EPC not the EPO were EU institutions. He also referred to WIPO statistics that show the rise of global patent filings in recent years and gave his view that this provided a challenge for patent offices around the world to collaborate, seek efficiencies and work towards the harmonisation of patent law. Neil Lampert, Head of Media and Public Affairs Volume 46, number 7-8

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IPO

Changes to Patent Fees CIPA’s response to the IPO’s Consultation on Proposed Changes to Statutory Patent Fees, 6 June 2017

e welcome the consultation documents and agree with the concerns and the objectives stated. The UK patent system is well-developed, has a great reputation and is highly effective. We believe that quality is essential and “balancing the books” vital. Reliance on renewal fees makes sense and we would be happy to see a small increase. The pre-grant fees are exceptionally low and we believe that an increase would not dissuade legitimate users of the system in any way, whilst potentially helping with frivolous users. We believe the use of e-systems should be encouraged strongly.

Our response to the specific proposals We agree with the proposals 1-4 and the alternative proposal with the minor provisos set out below. Answers to the specific related questions are also provided below.

Proposal 1 We agree with the first two bullet points in the summary. However, rather than introducing a 25% surcharge on the application fee in certain circumstances, we believe that the application fee should be due within one month of filing rather than at the one-year stage. The UK appears to be exceptional in the length of the delay it permits and behaviour internationally is tuned to more “upfront” payments. The one-month period maps exactly, for example, to the EPO approach. We think this would not discourage legitimate users but could have an impact on frivolous patent applications. Q1: We believe that the proposals would have a positive effect on legitimate users. With our proposed change to proposal 1, we also believe that requiring payment

of the application fee much earlier would deter frivolous users. Q2: We believe that the reduced cost for e-filing should encourage behaviour to file electronically, and we are very keen that this behaviour should be stimulated wherever possible.

Proposal 2 Q3: The proposed fee increases for search and examination are modest compared to international levels and we believe that they would still be highly attractive to users. Therefore, users would not be significantly affected.

Proposal 3 We agree with the amount of the fee but believe that the threshold number of claims is too low. We appreciate that this number maps onto what the EPO offers, but our experience is that in some areas of technology it unfairly penalises users (particularly in the field of life sciences, and the field of telecoms in which often there are multiple independent claim types all requiring different dependent claims, which can be difficult to fit within 15 claims). Hence, we would propose that the fee be introduced for the 26th and each subsequent claim. We believe that the proposal that the fees be paid at search and any top-ups at grant is appropriate and in line with international practice. However, we believe that there should be an option on Form 9A to specify which claims are to be searched and then excess claims fee payment (if more than 25 claims selected) is only made for those claims. This would allow many claims to be filed initially, without having to pay excess claims fees for all claims and without the examiner having to search all claims. This is useful for priority purposes. Further, in the case that excess claims JULY-AUGUST 2017

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fees are paid at the search stage, we propose that, instead of the application being deemed withdrawn if any excess claims fees are not paid, instead the claims for which no fees have been paid are deemed abandoned. This is in line with current EPO procedures. However, in the case that excess claims fees are due at the grant stage and payment is not made, we agree that the application being deemed withdrawn is the appropriate action. This is again in line with EPO procedures. Q4: In view of our suggested alternative proposal above (increasing the threshold number of claims that are “free”), we believe that the introduction of claims fee would lead to succinct but fair drafting practices. Q5: Again we believe that the excess claims fees should be paid at search with any top-ups at grant, similar to the EPO.

Proposal 4 We agree with the proposal of introducing excess pages fees. We suggest, however, that such a fee be due when requesting a search, instead of being part of the application fee, as we believe that the proposed application fee timing above would deal with frivolous filings. Q6: We do not think the excess pages fee would have any particular effect on the drafting of the description, positive or negative, but reflect the additional time spent by the examiners in reading lengthy documents. Q7: As mentioned above, we believe the excess pages fees should be paid on requesting search.

IPO

Q9: Too great an increase in renewal fees could exacerbate the current observed decrease in the lifetime of patents as companies become more sophisticated in budgeting. However, the proposed modest increases would not, we believe, have a significant impact. Q10: It is essential that pre-grant fees do not become so great that companies cannot invest in filing new patent applications. We believe, however, that a fair balance has been struck with all of the proposals discussed above. Q11: If our excess claims fee proposal is adopted, we believe that the only applicant who may be disproportionately affected would be frivolous applicants, which we believe is a good policy. If our proposal is not adopted, however, certain fields such as life sciences and telecoms may be disproportionately affected since these fields usually require more claims. Where a patent reflects potentially commercially valuable innovation, we believe the fees should not, at the proposed level, dissuade patent filing. Legitimate businesses can and must appreciate the necessity to invest in IP and the need to pay for good-quality examination and processing. Q12: We believe it is appropriate for the IPO to invest in future systems and continue its role as world leading in IP systems innovation. Whilst one-off patentees may object that increased fees are paying for systems which they feel will not benefit them in the future, in fact if their patents last the full 20 years then they are very likely to see the benefits within the lifetime of their own cases.

Alternative proposal We agree with the proposed increase and would not be adverse to a greater increase if there were a mood for this. Q8: As indicated above, we are comfortable with an increase to both pre-grant and post-grant fees given the current very low levels, and the attractive policy of subsidising the system with successful granted patents. 10

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Conclusion We fully support the fee increase proposals with the provisos and comments above. We believe that the sums involved maintain the UK at the forefront of cost-effective, quality patenting.

The IPO's proposals Proposal 1: Introduce the following changes to the basic application fee: •

•

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

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

•

Increase the fee for requesting a search to £150 for requests filed electronically and to £180 for requests filed on paper. Increase the fee for search of an international application (UK) to £120 when requested electronically and to £150 for requests filed on paper. Increase the fee for requesting a substantive examination to £100 for those requests filed electronically and to £130 for requests filed on paper.

Proposal 3: Introduce a fee of £30 for each of the 16th and subsequent claims contained in a patent application. Proposal 4: Introduce a fee of £10 for each additional page of description over the initial 35 pages. Alternative proposal: Make a small increase to patent renewal fees, along with smaller increases to the up-front fees than set out in proposals 1-4.

See gov.uk – https://tinyurl.com/yc5troty www.cipa.org.uk

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EPC

Are changes to rules 27 and 28 EPC illegal? CIPA’s comments on the proposed amendment of rules 27(b) and 28 on the exclusion from patentability under article 53(b) European Patent Convention of plants and animals produced by essentially biological processes (CA/56/17). These comments were sent to the UK IPO and other members of the Administrative Council of the EPO on 19/20 June 2017. See the full response at www.cipa.org.uk/policy-and-news.

he following comments are provided by CIPA to alert the IPO (as well as the heads of the delegations to the Administrative Council from other EU Member States) to a grave risk of EU Member States obligations under a fundamental provision of EU law (Article 267 TFEU) being contravened if rules 27 and 28 EPC are amended in accordance with the proposal of the President of the European Patent Office as set out in CA/56/17. CIPA also wish to draw attention to financial liabilities on EU Member States and/or their delegates to the Administrative Council that may arise if the amendments to rules 27 and 28 EPC are successful in achieving their intended purpose.

Background The primacy of EU law As explained, for example, in paragraph 65 of the CJEU’s Opinion 1/09, a particular characteristic of EU law is its primacy: “It is apparent from the Court’s settled case-law that the founding treaties of the European Union, unlike ordinary international treaties, established a new legal order, possessing its own institutions, for the benefit of which the States have limited their sovereign rights, in ever wider fields, and the subjects of which comprise not only Member States but also their nationals (see, inter alia, Case 26/62 van Gend & Loos [1963] ECR 1, 12 and Case 6/64 Costa [1964] ECR 585, 593). The essential characteristics of the European Union legal order thus constituted are in particular its primacy over the laws of the Member States and the direct effect of a whole series of provisions which are Volume 46, number 7-8

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applicable to their nationals and to the Member States themselves (see Opinion 1/91 [1991] ECR I 6079, paragraph 21)” [emphasis added]. The primacy of EU law has the consequence that EU Member States’ obligations under that law cannot be overridden (e.g. by contrary provisions in national laws of EU Member States, or in international agreements to which those Member States are a party).

If such a question is raised in a case pending before a court or tribunal of a Member State with regard to a person in custody, the Court of Justice of the European Union shall act with the minimum of delay”. The case law of the CJEU, such as Cilfit (C283/81), has clarified that the obligation under article 267 TFEU to refer questions to the CJEU is mandatory for “any court or tribunal against whose decisions there is no judicial remedy under national law” when:

Article 267 TFEU One of the cornerstones of EU law is the preliminary reference procedure set out in article 267 of the Treaty on the Functioning of the European Union (TFEU): “The Court of Justice of the European Union shall have jurisdiction to give preliminary rulings concerning: a. the interpretation of the Treaties; b. the validity and interpretation of acts of the institutions, bodies, offices or agencies of the Union; Where such a question is raised before any court or tribunal of a Member State, that court or tribunal may, if it considers that a decision on the question is necessary to enable it to give judgment, request the Court to give a ruling thereon. Where any such question is raised in a case pending before a court or tribunal of a Member State against whose decisions there is no judicial remedy under national law, that court or tribunal shall bring the matter before the Court.

1. interpretation of a provision of EU law is relevant to national proceedings; 2. the interpretation is not acte éclairé; and 3. the interpretation is not acte clair.

2.3 Interpretation of article 4(1) (b) of the Biotech Directive Article 4(1)(b) of the Biotech Directive excludes from patentability “essentially biological processes for the production of plants”. However, there is nothing in the Biotech Directive to indicate that the products of such (excluded) processes are also excluded from patentability. The provisions of article 4(1)(b) of the Biotech Directive have been interpreted by a judicial authority of an EU Member State. Unsurprisingly, the decision of that judicial authority (the Court of Appeal of The Hague; 28 May 2013, Cresco v Taste of Nature; http://bit.ly/2rH5S80) was that the products of essentially biological processes for the production of plants are not excluded from patentability. (As an aside, we also note that the above-mentioned decision of the Dutch court arrived at an interpretation of article 4(1)(b) of the Biotech Directive that is JULY-AUGUST 2017

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wholly consistent with the interpretation of article 53(b) EPC arrived at by the EPO Enlarged Board of Appeal in decisions G2/12 and G2/13). By way of contrast, Notice C/2016/6997 from the EU Commission (OJ EU 2016/C 411/03) reaches a completely different conclusion on the interpretation of article 4(1)(b) of the Biotech Directive. Irrespective of the persuasiveness (or otherwise) of the reasoning used to arrive at the conclusions in Notice C/2016/6997, it is important to note that: • •

•

the EU Commission is an executive and not a judicial body; to date, the CJEU has not provided a ruling on the interpretation of article 4(1)(b) of the Biotech Directive; and in the introduction to the abovementioned Notice, the Commission acknowledges that “Only the Court of Justice of the European Union is competent to interpret Union law”.

In the light of the above, it is possible to reach the following conclusions. 1. Due to the issuance of Notice C/2016/6997, there is an ongoing (and, as yet, unresolved) dispute over the interpretation of the exclusion of article 4(1)(b) of the Biotech Directive. 2. There has been no relevant CJEU ruling, and so the matter is not acte éclairé. 3. In the light of the divergence of opinion between the Court of Appeal of The Hague and the EU Commission, the interpretation of article 4(1)(b) of the Biotech Directive proposed Notice C/2016/6997 is not acte clair. As will be evident from conclusions (2) and (3) above, this means that any dispute regarding the interpretation of article 4(1)(b) of the Biotech Directive must (in the light of article 267 TFEU and the interpretation of that provision in Cilfit) now be settled either by: • •

confirmation of the prior judicial interpretation; or a reference to the CJEU, seeking a ruling on the interpretation of article 4(1)(b). CIPA JOURNAL

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EPC

EU law vs. the EPC There is nothing in decisions such as Cilfit to suggest that the delegation of certain tasks to an international organisation (such as the EPO) is capable of relieving EU Member States of their obligations under article 267 TFEU. Indeed, we submit that opinions provided by the CJEU make it clear that not only do those obligations persist (in keeping with the principle of primacy of EU law), but also that any attempts to dispense with them will call into question the compatibility of the international organisation with EU law. Firstly, the CJEU’s Opinion 1/09 (relating to the proposal to create a European and Community Patents Court) held as follows: “68. It should also be observed that the Member States are obliged, by reason, inter alia, of the principle of sincere cooperation, set out in the first subparagraph of article 4(3) TEU, to ensure, in their respective territories, the application of and respect for European Union law (see, to that effect, Case C 298/96 Oelmühle and Schmidt Söhne [1998] ECR I 4767, paragraph 23). Further, pursuant to the second subparagraph of article 4(3) TEU, the Member States are to take any appropriate measure, general or particular, to ensure fulfilment of the obligations arising out of the Treaties or resulting from the acts of the institutions of the European Union. In that context, it is for the national courts and tribunals and for the Court of Justice to ensure the full application of European Union law in all Member States and to ensure judicial protection of an individual’s rights under that law (see, to that effect, Case C 432/05 Unibet [2007] ECR I 2271, paragraph 38 and case-law cited). ... 80. While it is true that the Court has no jurisdiction to rule on direct actions between individuals in the field of patents, since that jurisdiction is held by the courts of the Member States, nonetheless the Member States cannot confer

the jurisdiction to resolve such disputes on a court created by an international agreement which would deprive those courts of their task, as ‘ordinary’ courts within the European Union legal order, to implement European Union law and, thereby, of the power provided for in article 267 TFEU, or, as the case may be, the obligation, to refer questions for a preliminary ruling in the field concerned” [emphasis added]. In other words, the CJEU held that, where the (national courts of) EU Member States have obligations under EU law, those obligations cannot be delegated to a body that is unable to make preliminary references under article 267 TFEU. The purpose of article 267 TFEU is to provide “a fundamental mechanism of European Union law aimed at enabling the courts and tribunals of the Member States to ensure uniform interpretation and application of that law within the European Union” (see the CJEU’s “Recommendations to national courts and tribunals in relation to the initiation of preliminary ruling proceedings”, OJ EU 2012/C 338/01). In this respect, the importance of preliminary references under article 267 TFEU to ensuring judicial protection of rights under EU law cannot be overstated. Indeed, this very point was central to the CJEU’s Opinion 2/13 (which ruled the proposed accession of the EU to the European Convention on Human Rights to be incompatible with EU law): “176. In particular, the judicial system as thus conceived has as its keystone the preliminary ruling procedure provided for in article 267 TFEU, which, by setting up a dialogue between one court and another, specifically between the Court of Justice and the courts and tribunals of the Member States, has the object of securing uniform interpretation of EU law (see, to that effect, judgment in van Gend & Loos, EU:C:1963:1, p12), thereby serving to ensure its www.cipa.org.uk

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consistency, its full effect and its autonomy as well as, ultimately, the particular nature of the law established by the Treaties (see, to that effect, Opinion 1/09, EU:C:2011:123, paragraphs 67 and 83)”. These principles of EU laws are neatly summed up in the comments of the CJEU Judge Allan Rosas (in his article “The National Judge as EU Judge: Opinion 1/09” in the book “Constitutionalising the EU Judicial System”): “The added value of Opinion 1/09 lies undoubtedly in its emphasis of the essential role played by national courts as integral parts of the Union judicial system. Just as the tasks of Union Courts cannot be transferred to non-EU bodies, the national courts of EU Member States have a constitutional mandate which cannot, in principle, be outsourced. Both Union Courts and national courts fulfil a ‘duty entrusted to them both’ of ensuring that in the interpretation and application of the Treaties law is observed”. Thus, regardless of their participation in the EPC, we submit that the EU Member States are still obliged to ensure that all patents filed in or in respect of those States are handled in accordance with relevant EU legislation (such as the Biotech Directive).

Obligations of EU Member States regarding the EPC When examining patent applications filed in respect of EPC Contracting States, the EPO (including its Boards of Appeal) is bound only by the provisions of the EPC. Further, despite being a “court or tribunal against whose decisions there is no judicial remedy under national law” for patent applications filed in respect of (i.e. designating) EU Member States, the Boards of Appeal of the EPO (in common with the Enlarged Board of Appeal) are unable to refer questions to the Court of Justice of the EU (a conclusion confirmed in G2/06). Volume 46, number 7-8

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EPC

This places the EU Member States in a delicate position with regard to patent applications filed in respect of those States where: • •

examination is effectively “outsourced” to the EPO; and patentability (in EU Member States) of claimed subject-matter must be determined by interpretation of provisions covered by EU law (such as the Biotech Directive).

This is because the EU Member States’ obligations under article 267 TFEU will be contravened if such patent applications are refused by the EPO in circumstances where the applicant is entitled to obtain a preliminary reference to the CJEU regarding the interpretation of relevant provisions of EU law. Thus, the EU Member States’ obligations under article 267 TFEU will only ever be satisfied if the Boards of Appeal of the EPO, when dealing with provisions of the EPC that overlap with provisions of EU law, interpret those provisions in a manner that: a. is acte éclairé under EU law (i.e. in accordance with a CJEU judgment); b. is acte clair under EU law (i.e. based upon an interpretation that is so obvious that no reasonable doubt is left); or c. affords the benefit of the doubt to the patent applicant (i.e. allows for the grant of a patent that, if necessary, can give rise to preliminary references to the CJEU via legal actions before national courts).

Relevance to the proposed amendments of rules 27 and 28 EPC The proposed amendments to rules 27 and 28 EPC do not fall under any of categories (a) to (c) above. This is not least because they are intended to produce a result (rejection of patent applications directed towards the products of essentially biological processes) that directly contradicts the interpretation of article 4(1)(b) of the Biotech Directive arrived at by the Court of Appeal of The Hague (see section 1.3 above).

Therefore, if implemented, the abovementioned amendments would give rise to a grave risk of EU Member States contravening their obligations under EU law, and in particular their obligations under article 267 TFEU. That is, if implemented, the proposed amendments would inevitably give rise to the situation where a Board of Appeal of the EPO (or the Enlarged Board of Appeal) is faced with a decision to either: 1. provide a ruling in accordance with rules 27 and 28 EPC as amended; or 2. reaffirm the decision in G2/12 and G2/13 on the grounds that rules 27 and 28 EPC as amended are invalid – due to inconsistency with article 53(b) EPC. In that situation, the obligations of EU Member States under article 267 TFEU would only be satisfied if the (Enlarged) Board of Appeal proceeded in accordance with option (2), i.e. by effectively nullifying the amendments to rules 27 and 28 EPC. On the other hand, if any such Board of Appeal instead elected to proceed in accordance with option (1), this would lead to a contravention of article 267 TFEU. This is because: •

•

for the reasons outlined in section 1.3 above, a reference to the CJEU is now mandatory under article 267 TFEU if a final rejection of a patent application in (or in respect of) an EU Member State is contemplated, based upon any interpretation of article 4(1)(b) of the Biotech Directive that diverges from that arrived at by the Court of Appeal of The Hague; but the Board in question would be incapable making the reference to the CJEU that would be required in order to ensure that the EU Member States obligations under article 267 TFEU are fulfilled.

Conclusion We believe that, to the extent that the proposed amendments to rules 27 and 28 EPC are effective in denying patentability to the products of essentially biological JULY-AUGUST 2017

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processes, those amendments would contravene the obligations of EU Member States under article 267 TFEU. This contravention of EU Member States’ obligations under EU law would persist unless and until the CJEU interprets article 4(1)(b) of the Biotech Directive in accordance with the proposed amendments to rules 27 and 28 EPC. (Though we note that one effect of the proposed rule changes would be to reduce the number of granted patents that could give rise to cases in which a national court might seek a preliminary reference from the CJEU – which could, in turn, have the effect of prolonging the period during which the contravention of article 267 TFEU persists.)

Possible consequences With regard to possible consequences of the above-mentioned contravention of EU law, we note that these might include the following.

Constitutional law Contravention of article 267 TFEU would, we believe, represent the removal of a fundamental right (to a preliminary reference) that is guaranteed under a founding treaty of the EU. As such, that contravention may also have repercussions under the constitutional laws of those countries whose constitutions incorporate the provisions of the TFEU.

Financial liabilities The case law of the CJEU has established that the failure of Member States to honour their obligations under EU law can give rise to financial liability for either a Member State – e.g. as in the joined cases of C-46/93 (Brasserie du Pêcheur) and C-48/93 (Factortame) – or an individual official of the State (e.g. as in as C-470/03 (A.G.M.-COS.MET). We therefore believe that any contravention of EU law (such as article 267 TFEU) that arises due to adoption of the proposed amendments to rules 27 and 28

EPC could give rise to financial liability for: • •

EU Member States; and/or individual officials (AC delegates) of such Member States.

Further, even if the CJEU ultimately interprets of article 4(1)(b) of the Biotech Directive in accordance with rules 27 and 28 EPC as amended, we note that it is far from certain that this would eliminate the liability of Member States for prior infractions of the fundamental right (enshrined in article 267 TFEU) of patent applicants to obtain a preliminary reference to the CJEU, e.g. according to the CJEU’s ruling in Cilfit. The article was drafted for CIPA by an informal plant subcommittee of CIPA Life Sciences Committee. The key draftsperson was Mike Snodin, with contributions from Tim Roberts, Simon Wright, Robin Nott and Michael Roberts.

Overseas report International treaties Madrid Protocol On 3 April 2017, the Government of Brunei Darussalam deposited a declaration that in accordance with article 8(7)(a) of the Madrid Protocol, Brunei Darussalam, in connection with each international registration in which it is mentioned under article 3ter of the said Protocol, and in connection with the renewal of any such international registration, wishes to receive, instead of a share in the revenue produced by the supplementary and complementary fees, an individual fee. The declaration will enter into force, with respect to Brunei Darussalam, on 3 July 2017. Berne Convention (Protection of Literary and Artistic Works) On 3 May 2017, the Government of the Cook Islands deposited its instrument of accession to the Berne Convention. The said instrument contained a declaration according to which the Cook Islands avails itself of the facilities provided for in article II of the appendix to the Convention. The Convention will enter into force, with respect to the Cook Islands, on 3 August 2017. On that date, the Cook Islands will also become a member of the Berne Union.

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Beijing Treaty (Audiovisual Performances) On 9 May 2017, the Government of the Independent State of Samoa deposited its instrument of accession to the Beijing Treaty. The said instrument contained a declaration according to which pursuant to article 11(3) of the Treaty, the provisions under articles 11(1) and (2) do not apply to Samoa until such time that the national laws have been reformed. The date of entry into force of the Treaty will be notified when the required number of ratifications or accessions is reached.

Marrakesh Treaty (Access to Published Works for the Visually Impaired) On 29 March 2017, the Government of the Republic of Honduras deposited its instrument of accession to the Marrakesh Treaty. The Treaty will enter into force, with respect to Honduras, on 29 June 2017. On 15 May 2017, the Government of the Kyrgyz Republic deposited its instrument of accession to the Marrakesh Treaty. The Treaty will enter into force, with respect to the Kyrgyz Republic, on 15 August 2017. Dr Amanda R. Gladwin (Fellow), GSK www.cipa.org.uk

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OVERSEAS • OFFICIAL

Thailand update Thailand Patent Registry set to enforce a modified patent examination regime to help boost efficiency.

n February 2017, Prime Minister Prayut Chan-O Cha pledged to urgently deal with a problem: thousands of domestic and international patent applications made to the Department of Intellectual Property (DIP) still awaited a decision. After meeting key stakeholders – in government bodies including the DIP and those in the food, health, pharmaceuticals, technology and trade industries – the Thai government

announced its intention to issue a section 44 order to speed up patent examination. The solution introduced by the order is termed ‘modified examination’. Under this new system, the DIP predicts the time taken for the examination of applications will be cut in half. About 20,000 patent applications in Thailand are unexamined. The DIP’s hope that under this scheme around 12,000 of these applications will proceed to grant within three months.

To apply for modified examination, an applicant must have: filed an application, which has not been published, with the DIP over five years ago; or requested a substantive examination at the DIP over five years before the section 44 order was announced. To be applicable for modified examination, the corresponding patent must have been granted in Europe, the US, Japan, China, Korea or Australia – the six International Searching

Manual of Patent Practice updates The 30 June 2017 changes that have been incorporated into the latest version of the Manual of Patent Practice are listed below. The updated table of changes can be viewed on the gov.uk website, see www.gov.uk/guidance/manual-of-patent-practice-mopp. Paragraphs

Update

5.25.1-3

Updated to include Novartis AG v Johnson & Johnson [2009] EWHC (Pat) 1671 and to provide further guidance on partial and poisonous priority.

14.120.1

A claim is a product-by-process claim if a product claim includes any method or process steps. Also, a product-by-process claim will result if a product claim incorporates a method or process step by reference to another claim.

14.137

Trade marks such as Bluetooth (RTM) and Wi-Fi (RTM) may be allowable in claims their use in certain claims may be regarded as unavoidable.

18.07.1

Updating the procedure for dealing with requests under the Patent Prosecution Highway.

18.07.2

When there is insufficient time remaining on the compliance date to allow for three months of publication, the issue of an intention to grant letter should be delayed to allow as much time as possible for section 21 observations to be filed without delaying beyond the compliance date.

19.21

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

123.10.3, 123.47-47.2

Updated to provide further guidance on the procedure for dealing with lost, misdirected or delayed correspondence.

SPM3.02.6

Updated in light of Teva UK & Ors v Gilead [2017] EWHC 13 (Pat).

SPM3.04

Updated to include C-577/13 Actavis Group PTC EHF, Actavis UK Ltd v Boehringer Ingelheim Pharma GmbH & Co. KG.

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Authorities (ISAs) and International Preliminary Examination Authorities (IPEAs) recognised by the DIP. The section 44 order is expected before the end of 2017. Patent holders with outstanding applications must, therefore, be vigilant in order to process their matters more swiftly using the new initiative. Using a section 44 order shows that the Thai government is serious about improving the enforcement of IPRs.

OVERSEAS • UPC

Another step towards improving the efficiency of the Thai patent system is the two-year extension of the Patent Prosecution Highway (PPH) pilot programme between the DIP and the Japanese Patent Office. The PPH will now run until December 2017. Another avenue for an accelerated examination process in Thailand is via ASEAN cooperation. In addition to the Thailand’s participation in the ASEAN Patent

Examination Cooperation programme, ASEAN cooperation in the patent sphere is set to be boosted in 2017 with the DIP expected to recognise the Intellectual Property Office of Singapore as a competent ISA and IPEA for PCT applications filed with the DIP or WIPO’s International Bureau as the receiving office. Gladys Mirandah and Hilmi Bin Zaini (Mirandah Asia).

UPC case management system Testing the Unified Patent Court case management system: new version expected soon.

he UPC will have an electronic case management system (CMS) for lodging actions, applications, opt-out requests and appeals. European Patent Attorneys have the benefit of experience with EPOline in approaching the CMS, and this is very useful as the CMS should be as accessible as EPOline to operate. The CMS is currently in beta testing and CIPA is keen that as many potential users as possible take up the opportunity offered by the UPC Preparatory Committee to try out the system. The CMS is, at the time of writing this article, on version 0.39. This version covers all of the actions mentioned above. However, it is the author’s understanding, following a recent conversation with Eileen Tottle (Head of Secretariat, UPC Preparatory Committee), that a new “pared down” version of the CMS will be released in July 2017 (potentially mid-July). This new version of the CMS will apparently focus on the opt out process. Since the opt out section of the CMS is likely to be the area that patent

UPC CMS test site: front page

attorneys initially use, all readers are encouraged to set up a user account for testing and to feed comments back to CIPA for consolidation/sharing to the CMS developers/UPC Committee in addition to feeding back to the software developers. Please keep an eye open for communications from CIPA regarding the preferred mechanism for the submission of comments.

Further information •

•

Rules of Procedure – see Rule 5 for the Opt-out process – https://www.unified-patent-court.org/sites/default/files/ upc_rules_of_procedure_18th_draft_15_march_2017_final_clear.pdf There are walkthroughs of earlier versions of the CMS on the IPcopy blog –see https://ipcopy.wordpress.com/tag/cms-beta/ for more background on the CMS.

At the time of writing, we eagerly await the new version to see whether and how it addresses a number of issues that were flagged up in feedback to the developers. Once the new version is released it will be important that it is fully tested so that any remaining issues be identified and resolved before the system is finalised. Accessing the CMS: The CMS can be found on the UPC website at https:// www.unified-patent-court.org/ – Look for “Cases” in the right-hand menu and click the link to be taken to the log in page of the CMS. Setting up a user account for testing purposes only takes a few minutes. Mark Richardson (Fellow)

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First instance judgments – keeping us in suspense?

It is apparent that in some circumstances, the question of whether appeals have a suspensive effect in first instance judgments in England and Wales is not clear-cut. Holly Mitchell provides a useful reminder on what happens when a right to appeal is granted and how it might impact on the judgment or order itself, as well as the implications for costs and damages.

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he Civil Procedure Rules 1998 set out the prescribed procedure for dealing with judgments and appeals here in England and Wales, with a first instance judgment having immediate effect from the moment it has been given (or as the court may otherwise specify) (CPR r40.7). Even when an appeal is granted, by either the appeal court or the lower court, unless either court orders otherwise, it will not stay an order or judgment by the lower court (CPR r52.16). When the judgment and relevant orders are deemed to take effect, and are actionable by the parties, will therefore be determined on a case-by-case basis. Considering the process by which an appeal arises following a decision at first instance, a party must be granted permission to appeal (CPR r52.3) or if this is not expressly requested at lower court proceedings, a party may subsequently make an application to appeal. The potential appellant must overcome the relevant threshold (see CPR r52.3) in order for the court to grant permission to appeal: the appeal must have a real prospect of success, or there is some other compelling reason why it should be heard. An application for permission to appeal is usually made to the lower court at the hearing at which the decision was made. Alternatively, an application for permission to appeal can also be made to the appeal court in a formal appeal notice. Every appellant’s notice (including one seeking permission to appeal) must be filed not later than 21 days after the date of the decision of the lower court (CPR r52.4) If a party wishes to stay an order made in a judgment pending an appeal, it will need to seek a stay of that order. JULY-AUGUST 2017

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ARTICLE

This is especially the case where taking action on the order would negate the benefit of a successful appeal. A party may subsequently be granted a stay of execution by the court pending the appeal. Such stays are not granted automatically, but might be ordered where solid grounds are shown, and subject in appropriate cases to certain conditions. The court may also, using its general power under CPR r3.1(f ), of its own volition stay an order or judgment, either generally or until a specified date or event. This power can be used if the court deems it appropriate when an application for permission to appeal has been granted. If an order is stayed pending appeal, that order will not come into effect until the appeal has been determined. In this sense, the judgment is suspended until the appeal has been heard. However, the appeal does not itself have an automatic suspensive effect on the judgment. Given that in some circumstances only part of a judgment may be appealed, the effect of the first instance judgment may end up being piecemeal in its application in some cases. If a point of law going to liability in a case is appealed, the court will usually stay any related order pending outcome of the appeal. For example, it is easier to reinstate a registered right than to grant a positive right to use an invention and subsequently try and re-box that use if the position is reversed on appeal. An example of this occurred in Napp Pharmaceutical Holding v Dr Reddy’s Laboratories, where the High Court held that despite the first instance decision ruling that the defendant’s products did not infringe the claimant’s patent, it was appropriate to delay the entry of the defendant’s products into the market a little longer. This was done to avoid the risk of allowing generic competition when it might be reversed by the Court of Appeal in future. It should be noted though that in Napp Pharmaceutical Holding v Dr Reddy’s Laboratories, damages were not considered to be an adequate remedy and it was anticipated that the Court of Appeal could give judgment within just two months. These factors heavily influenced the court’s decision and whether they would have been willing to make such a decision without them is questionable, particularly given the likely harm to the defendant, which the court sympathised with. It is also worth bearing in mind that a client’s decisions, on whether to seek or oppose the continuation of an injunction during the appeal process, could be significantly influenced by commercial factors. For a defendant, where the harm of not entering the market until after the appeal process is complete is minimal, then it may be worth waiting until the process is complete in order to avoid increased damages should the appeal fail. Alternatively, if the cost of the cross-undertaking in damages is likely to prove too high for an injunction applicant, should the appeal decision not go their way, they may wish to consider whether to make the application for the stay at all. 18

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APPEALS

Any costs at judgment will not be suspended pending appeal. This position is in line with the court’s powers in relation to judgments on other issues.

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ARTICLE

APPEALS

Damages

Interim remedies

Under the CPR, payment of a money judgment must take place within 14 days of the date of the judgment or order unless the judgment or order (or the CPR) specifies a different particular time for payment or the court has stayed proceedings on the judgment (CPR r40.11). As such, any orders in respect of costs or damages will take effect within the specified time, unless the court orders to the contrary. Damages in patent cases will not normally be considered until the position on liability has been determined. However, the general rule is that a successful party is entitled to pursue an inquiry for damages even if there is a possibility of an appeal, albeit at his own risk as to costs if the decision on liability is reversed at the appeal. What’s more, as with other orders which may be made under the first instance judgment, if an order is made regarding damages payable, these will need to be paid in accordance with the judgment.

Finally, it is important to consider the implications of a judgment and any consequent appeal on interim remedies sought. Any interim injunctions may expire on judgment being given at first instance, in which case a party will need to consider whether to apply to extend them. An interim injunction which may be in place pending trial might not be extended pending outcome of the appeal, or the court may decide to extend it. If leave to appeal is granted, then the court may agree to extend an interim order if requested by a party. A party may be granted interim protection if it is seeking to restrain some irreparable harm pending appeal, notwithstanding that it had been unsuccessful in asserting its right at the first instance trial. While it is possible to gain this interim protection, the Court of Appeal in Novartis v Hospira has stated that, even where the court is satisfied that the appeal in question has a real prospect of success it does not automatically follow from the fact that if an interim-injunction had been granted pre-trial (or would have been granted pre-trial), that an injunction pending the appeal should be granted. Instead the court must assess all the case’s relevant circumstances following the judgment, and balance the hardship of each party relating to whether the injunction is granted. This makes determining whether an interim injunction will be granted pending an appeal very fact-specific, as the court by way of further clarification merely stated that the grant of an injunction is not limited to situations where refusal to grant it would render the appeal nugatory. The Court of Appeal in Novartis v Hospira further elaborated that, in relation to the grant of permanent injunctions that would otherwise be granted to a successful claimant, the court should endeavour to arrange matters so that the Court of Appeal was best able to do justice between the parties once the appeal had been heard.

Costs The CPR states that any costs at judgment will not be suspended pending appeal (CPR r 47.2). This position is in line with the court’s powers in relation to judgments on other issues. Under CPR PD 47 rule 47.2, an application to stay the detailed assessment of costs pending an appeal can be made to the court whose order is being appealed or to the court which will hear it. This confirms that the court will not suspend a costs order pending an appeal unless it feels that it is correct to do so in the light of the successful application for appeal. The Court of Appeal further clarified its position on pursuing an inquiry for damages in patent cases where there was a possibility for appeal to a Technical Board of Appeal (TBA) of the European Patent Office (see Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group). Here an inquiry as to damages was not stayed pending appeal to the TBA because the revocation of a patent would not completely annul a final earlier order to the contrary in the English court. For example, if the patent was revoked by the EPO, there could still be an entitlement to damages, regardless of the fact that any relevant injunction would lapse. In some cases, the court will grant an interim payment on costs, despite there being leave to appeal. The party seeking leave to appeal can ask that certain safeguards are ordered pending appeal, e.g. an undertaking to repay the interim payment if the appeal is successful, or that the interim payment is held in a solicitor’s account pending resolution. The court will then determine if such safeguards are appropriate. This in itself, although not suspending an order from the first instance judgment, may have a delaying effect on the outcome, in the event payment of costs is stayed or payment not made in full.

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In summary Naturally, each case will have its own particular set of circumstances but the following general points should be borne in mind: •

• • •

Is there a risk of irreparable harm or significant hardship to a party if the first instance order is implemented? If so, should an extension of any interim protection originally granted be sought? Is there a compelling reason as to why an interim order for costs should be made? If an interim costs order is made, is it appropriate to seek safeguards in respect of such costs?

Holly Mitchell is an IP solicitor and associate at Potter Clarkson. See more details at www.potterclarkson.com JULY-AUGUST 2017

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Surviving Alice in the finance arts

The US Supreme Court’s 2014 decision in Alice Corp. v CLS Bank (“Alice”)1 has had a dramatic impact on the allowability of computer-implemented inventions in the field of business methods (i.e. finance and e-commerce). The Alice decision held that “abstract ideas”, including ideas related to fundamental economic practices, were not statutory subject-matter under 35 U.S.C. 1012. The patents held invalid in the Alice decision were in the field of business methods. This is the first in a series of articles by Mark Nowotarski exploring the dynamics of that impact on the prosecution of business method patent applications as a useful guide for patent practitioners.

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he US patent examiner corps is organized by technology centres (e.g. 3600 computer-implemented business methods3). Technology centres are organised by work groups (e.g. 3620 and 3680 e-commerce, 3690 finance). This paper will focus on work group 3690 finance. The next paper will focus on work groups 3620 and 3680 e-commerce. Work group 3690 is the most heavily impacted work group by the Alice decision. The patent applications examined by this work group include computer-implemented inventions in the fields of banking, investment, portfolio selection, tax strategies, trading, credit, funds transfer, and insurance. Figure 1 shows the total number of allowances per month, abandons per month and appeals per month for patent applications examined in work group 3690. It covers the period from January 2014 to February 2017. The data is originally from the USPTO’s public PAIR4 system. PatentAdvisor™ was used to collect and process the PAIR data5. There are currently about 80 examiners in this work group. The work group produces about 8,400 office actions-on-the-merits per year (i.e. non-final rejections, final rejections and allowances). Prior to Alice, about 2,100 of the actions per year were allowances (25% of the total actions). Post-Alice, only 220 of the actions per year have been allowances (2.6% of the total actions). Inventions in the finance arts are classified primarily as US classes 705/035 through 705/045, as well as 705/004 (insurance)6. The patents invalidated in Alice were all in these classes7. While it is not surprising to see that there was a substantial drop in allowances in the finance work group, what is surprising was how fast the allowance rate dropped after the Alice decision. The Alice decision was handed down on 19 June 2014. Six days later the USPTO issued a three-page preliminary guidance memo that simply summarized the case. The allowances per month in the finance work group plunged the very next week to onewww.cipa.org.uk

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tenth of its pre-Alice value. The median number of allowances per examiner in the first two years after Alice was one. That means that a typical examiner in the finance work group is only allowing one case every two years. Many have not allowed any at all. The USPTO followed up its initial guidance with the December 2014 “Interim Guidance”, the “July 2015 Guidance”, and the May 2016 “101 Guidance”.8 None of this guidance has had any measurable impact on increasing the allowances per month in this work group. The drop-in allowances per month has led to a predictable increase in abandons per month. The abandons per month for applications in the finance work group is up by more than a factor of two. The appeal rate went down, then up, then down again. It is now at about the same level as before Alice. Prior to Alice, however, appeals were mostly related to novelty (35 U.S.C. 102) and obviousness (35 U.S.C. 103). Now the appeals are mostly related to 101 rejections under Alice. While exploring the sharp drop off in allowances, I discovered quite a few cases allowed before Alice that had their allowances withdrawn right after Alice. These withdrawals were announced by the USPTO on 4 August 20149. The

allowed cases that had not yet issued by the time of the Alice decision were examined again in July 2014. Those that were not considered statutory under Alice had their allowances withdrawn. There was also a second smaller batch of postAlice allowances that were withdrawn in October 2014. We refer these bulk withdrawals of allowances as the “July 2014 recall” and the “October 2014 recall”. Figure 2 (page 22) shows the recalled allowances on the dates the allowances were originally issued. The allowances withdrawn in July 2014 are shown in red. The allowances withdrawn in October 2014 are shown in black with a red border. The allowances that ultimately issued as patents are shown in green. After each recall, the cases were reassigned back to examiners and new rejections under 35 U.S.C. 101 based on Alice were issued. These new rejections came out over a period of several months. At the time of the July 2014 recall, there were about 405 cases allowed but still pending. Subsequently, 250 of these cases had their allowances withdrawn and 78 proceeded to issue on a normal schedule. Another 77 had their issuance delayed until the end of December for reasons that are unknown. The October 2014 recall was much smaller and different in scope, in that while only five allowances were withdrawn, all

Figure 1: Alice impact on allowance, abandons and appeals, Work Group 3690 (Finance)

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US UPDATE

of them were post-Alice allowances. In other words, while the examiners found the applications allowable under the new Alice guidance, they were overruled presumably by either a supervisory patent examiner (i.e. their boss) or a quality assurance specialist. The 255 recalled cases have not done well. Only 11 have been allowed again, 66 have been appealed, and 83 are still being prosecuted before their respective examiners. The largest subset, 95, have been abandoned. The July 2014 recall had a powerful impact on examiners. For most examiners, the only cases they have allowed since the July 2014 recall have claims that incorporate “physical devices.” I looked at a random sample of 100 allowed cases to see what might count as a “physical device” in this work group. In about one-half of the cases, I could identify a limitation added by amendment that was enough of a physical device to overcome the 101 rejection. A sample of these limitations is presented in the table opposite. Of the allowances I looked at: 42% involve claims with some sort of mobile or remote device; 19% had a physical sensor in the claims; 12% had a physical payment limitation; and 19% had a limitation related to a specific system structure. Only 8% of the allowances I looked at seemed to be purely computerimplemented business methods. For applicants filing cases now, the message is clear. Incorporate a physical device into your claims. For those

SURVIVING ALICE

pending applications that do not disclose a physical device, then perhaps the best strategy is to direct the claims to improvements in the functionality of the overall system. In my next article, I will explore what is happening in the other business method work groups, 3620 and 3680. These work groups cover the rest of business methods including accounting, online discounts, operations, electronic shopping, point-of-sale terminals, health technology, and cryptography. Some of these fields show the same impact as finance with an immediate and permanent drop in allowances per month. Others show an initial drop in allowances, followed by an increase and then followed by yet another drop off. Still others have shown no impact of Alice at all. We will explore these variations and see how this influences an applicant’s strategy for getting US patent protection on a business method invention. This is an updated version of “Surviving Alice in the Finance Arts” that appeared on Bilski Blog, 30 January 2017. Mark Nowotarski is a registered US patent agent and technology consultant specializing in business methods and consumer products. He has had his own practice, Markets, Patents & Alliances, since 2001 [see http://marketsandpatents.com]. Prior to being a patent agent, Mark was a corporate research fellow for Praxair where he developed and patented green manufacturing technologies for the electronics, metals, food and healthcare industries.

Figure 2: Withdrawn allowances since Alice, Work Group 3690 (Finance)

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SURVIVING ALICE

Limitations leading to allowance Mobile device 42% of allowances

Physical sensor 19% of allowances

Physical payment 12% of allowances

System structure 19% of allowances

mobile device, GPS

receiving… from a camera

point of sale computing device

virtual card available through a browser

mobile device

computing hardware associated with an electrical device

point of sale computer

data processor

first entity computer

preventing the vehicle from starting

receiving an order from a merchant site

machine readable encrypted coding

mobile wallet computer

optical sensor, remote device

smart card

computer hardware component over a computer network

mobile device of the account holder

electrical heating device

cash automation machine

triggers the metrics application to automatically…

communication device receiving a calculator interface

RFID reader

a merchant site

plurality of automated trading bots

portable device remotely located

the signal activates and causes one of the robotic arms…

cash-handling device

base commands is processing in response to receipt

remotely located service provider server

causing the device controllers to adjust the energy consumption…

automatic teller machine

web server, content processor, predictive model processor

remote client device

receiving from a GPS unit

display the entire surface area of the check image

displaying…on a graphical user interface

currency depositing section

determining whether the current reader view has changed

dynamically generated by the meter the usage of the mobile client device available internal resource by the remote computing system

Notes and references

5. www.reedtech.com/products-services/intellectual-property-solutions/ lexisnexis-patentadvisor

1. Alice Corp. v CLS Bank Int’l, __U.S.__, 134 S. Ct. 2347 (2014).

6. After 1 January 2016, the USPTO no longer published the US Patent Classifications on issued patents, and instead used the Cooperative Patent Classifications. However, applications are still assigned to art units based on the old USPTO classification system. These are the classifications still presented in PAIR.

2. 35 U.S.C. 101 reads “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” The Court held that “new and useful process” did not include abstract ideas and that executing an abstract idea on a machine (e.g. a computer) did not render the abstract idea patentable. 3. Work group 3600 also includes mechanical inventions. We will not be looking at those. We will only be looking at computerimplemented business methods. 4. Patent Application Information Retrieval system. http://portal.uspto.gov/pair/PublicPair

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7. US 5,970,479, US 6,912,510, US 7,149,720 and US 7,725,375 8. For the USPTO guidance on subject-matter eligibility, see https:// www.uspto.gov/patent/laws-and-regulations/examination-policy/ subject-matter-eligibility 9. USPTO Commissioner for Patents, Peggy Focarino, “Update on USPTO’s Implementation of Alice v CLS Bank”, Director’s Forum: A Blog from USPTO’s Leadership, 4 August 2014.

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Jurisdiction of the UPC The slightly surprising limits of the jurisdiction of the Unified Patent Court. Nicholas Fox (Fellow) picks apart the options on jurisdiction, and highlights a wider geographical jurisdiction in respect of damages and provisional measures.

he jurisdiction of the Unified Patent Court (“UPC”), within its area of competence, is somewhat broader than might be expected. Complexity arises not only due to the manner in which amendment of the Brussels Regulation1 brings the UPC into the wider European context but also due to the interplay between the Brussels Regulation with the Lugano Convention. Before addressing the scope of the jurisdiction of the court, it is useful to look at the extent to which European Patent Convention contracting member states (i.e. the countries for which European patents might be granted) are members of the various relevant agreements. These relationships are illustrated in the diagram opposite. Roughly half of the EU member states have now ratified the Agreement on a Unified Patent Court (the “UPC Agreement”). Germany, the UK and France need to ratify the UPC Agreement in order for the UPC to enter into operation. So far, of these three countries, only France has ratified the agreement. UK and German ratification is expected sometime in 2017. Beyond the EU, Norway, Switzerland and Iceland are all signatories to the Lugano Convention. Whereas eight further countries, the most significant of which is Turkey, are members of the European Patent Convention without being members of the Lugano Convention or the EU.

Jurisdiction of the Unified Patent Court The UPC Agreement and the amended Brussels Regulation divide the jurisdiction of the UPC on the basis of the rights involved and the accession or otherwise of the relevant states to the UPCA, the EU and the Lugano Convention. This is summarized in the table opposite. In general, as is shown in the table, the jurisdiction of the UPC is limited to disputes relating to Unitary Patents and 24 CIPA JOURNAL

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non-opted out European patents and related supplementary protection certificates (SPCs) arising in the UPC contracting member states. However, there are two exceptions to this.

1. Damages jurisdiction over infringements occurring outside of the EU First the Court has a limited “long-arm” jurisdiction to award damages for acts of infringement of European patents in force outside of the European Union2. In most cases the “long-arm” jurisdiction of the Court will be of limited interest since it only applies to the assessment of damages and is only available where the jurisdiction of the Court is founded on infringements occurring within the UPC contracting member states as well as outside the EU. The “longarm” jurisdiction is further hedged with various qualifications including that: the defendant must have property located within an EU member state; the extra territorial infringement must give rise to damage within the EU; and the dispute must have “sufficient” connection with the member state where property is located. Furthermore, as indicated in the table, this “longarm” jurisdiction is not available in respect of infringement occurring in any of the Lugano member states, if the defendant is domiciled in a Lugano member state. The latter restriction arises due to the provisions within the Brussels Regulation which give primacy to the Lugano Convention and the fact that the Lugano Convention has not been amended to acknowledge the “longarm” jurisdiction of the UPC.

2. Provisional measures Secondly, the UPC has the power to grant provisional measures for infringement of European patents, even where proprietors opt out of the jurisdiction of the Court or in respect of infringement occurring outside of UPC member states. In principle, this is www.cipa.org.uk

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UPC

ARTICLE

European Patent Convention Contracting States Albania Monaco

Serbia Bosnia

Liechtenstein Montenegro

FYR of Macedonia San Marino

Turkey

Lugano Convention Contracting States Norway

Switzerland

Iceland

EU Member States Croatia Czech Republic

Cyprus Estonia

Greece Hungary

Ireland Latvia

Lithuania Poland

Romania Slovenia

Slovak Republic Spain

UPC Contracting States (that have ratified or are required to ratify for the UPC to come into force) Austria Belgium Italy Luxembourg United Kingdom

Unitary Patents and associated SPCs

Bulgaria Malta

Non-opted out EP patents in UPC contracting states and associated SPCs

Denmark Netherlands

Opted-out EP patents in UPC contracting states and associated SPCs

Finland Portugal

EP patents in EU non-UPC contracting states and associated SPCs (e.g. Poland and Spain)

France Sweden

Germany

EP patents in non-EU Lugano contracting states and associated SPCs (e.g. Switzerland)

EP patents in non-Lugano contracting states and associated SPCs (e.g. Turkey)

Jurisdiction UPC has over revocation exclusive jurisdiction

UPC shares None. National courts have exclusive jurisdiction over revocation jurisdiction with national courts

Jurisdiction over infringement

UPC has exclusive jurisdiction

UPC shares None. National courts have jurisdiction with exclusive jurisdiction over national courts infringement

Provisional Measures (e.g. Preliminary injunctions)

Available at discretion of the Court

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UPC has limited jurisdiction to award damages if infringement also occurs in a UPC member state provided defendant is not domiciled in a non-EU Lugano contracting state

UPC has limited jurisdiction to award damages if infringement also occurs in a UPC member state.

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ARTICLE

not that unusual; article 35 of the Brussels Regulation permits actions for provisional measures to be obtained from any EU court, even if another court has exclusive jurisdiction as to the substance of the matter. The grant of provisional measures will always be at the discretion of the Court. The circumstance where the Court might be persuaded to grant provisional measures over an opted out patent or a European patent outside a non-UPC contracting member state are likely to be highly fact specific. i. EU non-UPC contracting states Potentially, the ability to seek provisional measures in respect of European patents in non-UPC EU contracting member states may be significant. At present many EU countries have yet to ratify the Unified Patent Convention and it is likely that when the UPC does come into effect, many will still fall into this category. It will remain to be seen the extent to which the UPC might be persuaded to grant provisional measures having effects beyond the UPC contracting member states. It is certainly not impossible that the Court might be willing to grant interlocutory relief, where a European patent has been maintained broadly both in UPC contracting states and beyond or where a Unitary Patent has been granted and European patents obtained in nonparticipating states, upon an undertaking to initiate parallel proceedings in those non-participating states. Grant of such interlocutory relief is entirely consistent with the ethos behind the Brussels Regulation, which permits provisional measures to be granted even though a Court lacks jurisdiction over the substance of a matter. The essence of the UPC is that it already has an international jurisdiction and as such it may be possible to persuade the Court to grant relief in circumstances where national courts would be more reluctant to do so. ii. Opted out European Patents Article 83 of the UPC Agreement provides for a transitional regime which is to apply for the first seven years of the existence of the UPC, a period which can, if thought appropriate following consultation, be extended by a further seven years. During this transitional period, article 83(3) states that, provided no action has already been brought before the Court, a proprietor of or an applicant for a granted European patent or pending European patent application or the holder of any associated SPC can opt individual patents and applications and associated certificates out of the exclusive competence of the Court. When it comes to opted out patents, normally a patent proprietor can withdraw an opt out at any time and doing so would then place a patent firmly within the jurisdiction of the Court. It is, however, possible to foresee circumstances where the Court might be persuaded to grant provisional measures notwithstanding that an opt out has not been withdrawn. The first, and probably the most likely scenario, would be where a patent proprietor wishes to take action against an 26 CIPA JOURNAL

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UPC

infringer but there is some kind of formal issue regarding the proprietor’s ability to withdraw an opt out. This could potentially arise if there were a delay in updating the opt out register (for example due to an IT issue) or in circumstances where co-ownership of a patent resulted in difficulties or a delay in filing a withdrawal request. Where immediate action to prevent infringement was required and a proprietor undertook to withdraw an opt out as soon as possible, it is possible that the Court might look favourably on a request for preliminary measures despite a patent formally not falling within the remit of the court. A second and potentially more interesting scenario would be where a request for preliminary measures was brought based on multiple patents, at least one of which did fall within the jurisdiction of the Court. Such a scenario could arise where, for example, a patent proprietor sought provisional measures based on related patents such as a parent patent and an associated divisional patent where one of the patents had been opted out of the jurisdiction of the Court. Ordinarily, an opt out can be withdrawn at any time and it would be expected that the Court would normally be persuaded to exercise its discretion to grant provisional measures only upon an undertaking to withdraw an opt out or to initiate corresponding litigation in the national courts in due course. However, an exception exists where an opted out patent has been involved in national proceedings. This gives rise to the possibility that a potential infringer might initiate national invalidity proceedings in an attempt to “pin” an opt out patent in the national courts. In such a scenario, where a related patent falling within the jurisdiction of the Court existed and a patentee provided an undertaking to initiate parallel proceedings in the national courts in due course, it is possible that the Court might be persuaded to grant broader provisional relief based on a right which was not formally within the scope of its jurisdiction. Nicholas Fox (Fellow), Simmons & Simmons LLP

References 1. Regulation (EC) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgements in civil and commercial matters (OJ L 351, 20.12.2012, p.1) as amended. 2. For further details and historical background see Pierre Véron, “Extent of the Long-Arm Jurisdiction Conferred upon the Unified Patent Court by article 71(b)(3) of the Brussels I Regulation as Amended by Regulation 542/2014, 15 May 2014: Turkish Delight and a bit of Swiss Chocolate for the Unified Patent Court”, EIPR Vol. 37 Issue 9, 2015 pp 588 – 596.

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SPC summer review 2017 The past year has seen several interesting developments for supplementary protection certificates (SPCs) in Europe. There has been new case law from the Court of Justice of the European Union (CJEU) and several important decisions from the national courts and patent offices. This review summarises the key judgments since its last review in mid-2016, arranging them within broader topics that have been exercising SPC practitioners over the years. These issues include when does a patent “protect” an active ingredient, what happens if a marketing authorisation has not quite been issued by the time the basic patent expires, and what scope of protection is provided by an SPC in the biologics field. In the first of a two-part review, Carpmaels & Ransford’s summarise the current state of play in this interesting and fast-moving area of IP law. Daniel Wise (Fellow) and Natalia Wegner-Cribbs (Fellow)

Article 3(a) and SPCs for combination products How do you determine whether a product is protected by a patent? This issue, as far as it relates to article 3(a) of the SPC Regulation, has been the subject of several CJEU referrals over the years. In Medeva v Comptroller General of Patents, Designs and Trade Marks (C-322/10), the CJEU held that the product must be “specified” in the wording of the claims of the basic patent in order to be protected. Later, we learnt in Eli Lilly & Co Ltd v Human Genome Sciences Inc (C 493/12) that functional wording is sufficient in principle to “specify” a product, provided that the claims relate to the product “implicitly but necessarily and specifically”. The question of compliance with article 3(a) has often arisen alongside article 3(c) in the context of SPCs for combination products. For example, in Actavis UK Ltd v Boehringer Ingelheim Pharma GmbH & Co. KG (C-577/13) the CJEU held that article 3(c) precludes the grant of a second SPC for a combination product where the basic patent has already been used to obtain an SPC for a constituent active ingredient constituting the “sole subject-matter of the invention” protected by that patent. National courts (as well as practitioners and patent offices) now face the difficult task of making sense of this flurry of CJEU judgments. In the UK courts, this task has repeatedly fallen to Mr Justice Arnold, who handed down three judgments in this area in the past year.

CJEU to consider article 3(a)… again Teva & others v Gilead Sciences Inc [2017] EWHC 13 (Pat) concerned Gilead’s SPC based on its marketing authorisation for Truvada®, which contains a combination of tenofovir disoproxil and emtricitabine. Teva had challenged the validity of the SPC on the ground that the basic patent did not protect the combination of tenofovir disoproxil and emtricitabine as required by article 3(a) because the basic patent does not mention emtricitabine. However, Volume 46, number 7-8

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Gilead argued that the combination of tenofovir disoproxil and emtricitabine falls within the scope of protection of, and is therefore “protected” by, a dependent claim referring to a pharmaceutical composition comprising tenofovir disoproxil “together with a pharmaceutically acceptable carrier and optionally other therapeutic ingredients”. Despite the many previous references to the CJEU regarding article 3(a), Arnold J decided that the test to be applied under article 3(a) remains unclear. At paragraph 91, he held: “In my judgment the test to be applied in order to determine whether a product is ‘protected’ by a basic patent within the meaning of article 3(a) remains unclear. It is clear that it is not sufficient that dealings in the product would infringe a claim applying the Infringing Act Rules. It is also clear that it is necessary that the product falls within at least one claim of the basic patent applying the Extent of Protection Rules. But it is not clear whether that is sufficient. It appears from the case law of the CJEU that it is not sufficient, and that more is required; but it is not clear what more is required. Accordingly, it is necessary to refer the question once more to the Court of Justice in the hope that finally a clear answer will be given.” Therefore, Arnold J referred the following question to the CJEU on the interpretation of article 3(a) of the SPC Regulation: “What are the criteria for deciding whether ‘the product is protected by a basic patent in force’ in article 3(a) of the SPC Regulation?” In view of the imminent patent expiry in July 2017, Arnold J requested resolution of the referral on an expedited basis, noting that this would avoid delaying the date on which generic medicinal products will be available for the NHS. The CJEU made short shrift of this reason, refusing to expedite the referral because there were no exceptional circumstances warranting expedition, in particular because the continued availability of (non-generic) Truvada® meant that there were no circumstances which might constitute an imminent risk to public health.

Next time… In the September 2017 issue of the CIPA Journal, Carpmaels & Ransford will consider whether an SPC’s term can be corrected after grant, and whether the specific mechanism works differently for SPCs compared to patents. As well as looking ahead at plans for SPCs in the much-delayed UP/UPC environment, and also at the EU Commission’s review into whether it is time to overhaul the SPC system in its entirety.

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Merck’s combination SPC for Atripla® invalidated In Teva & others v Merck Sharp & Dohme [2017] EWHC 539 (Pat), a second combination SPC case, Arnold J held that Merck’s SPC for Atripla® did not comply with either article 3(a) or article 3(c) of the SPC Regulation. Under article 3(a), Teva argued that the product for which the SPC was granted (“[a] combination of efavirenz, emtricitabine or a pharmaceutically acceptable salt or ester thereof, and tenofovir or a pharmaceutically acceptable prodrug, salt or ester thereof, particularly tenofovir disoproxil, especially tenofovir disoproxil fumarate”) was not protected by the basic patent. In particular, Teva argued that the product was not protected by a dependent claim that referred to “[a] combination of [efavirenz] or a pharmaceutically acceptable salt thereof with a nucleoside analog having biological activity against HIV reverse transcriptase”. Arnold J agreed, concluding that the scope of protection of this claim extended to a combination of efavirenz and tenofovir or to a combination of efavirenz and emtricitabine, but not to a combination of all three agents. Under article 3(c), Teva argued that the product had already been the subject of an SPC because Merck had previously obtained an SPC for efavirenz based on the same patent. Taking into account CJEU case law, in particular Actavis Group PTC EHF and Actavis UK Ltd v Sanofi (C-443/12) and Actavis v Boehringer above, Arnold J held that article 3(c) precludes the grant of an SPC for a combination of active ingredients if the patent has already been the basis of an SPC for one of the active ingredients and the combination does not represent a distinct invention over that active ingredient. Arnold J concluded that Merck’s SPC was invalid under article 3(c) because the combination claimed in the dependent claim did not represent a distinct invention over the claims relating to efavirenz alone.

Confirmation that SPCs can be based on Markush claims? Markush formulae are a type of chemical shorthand that allow large numbers of related chemical compounds to be represented as a single genus, and are ubiquitous in pharmaceutical patents. In Sandoz Limited & Other v G.D. Searle LLC & Other [2017] EWHC 987 (Pat), Arnold J confirmed that a Markush formula is sufficient to “protect” a product under article 3(a). In this case, darunavir fell within the scope of a Markush formula in the claims of the basic patent. However, Sandoz argued that this was not sufficient under article 3(a) because darunavir was not “specified” by name or structure in any of the claims of the patent and because of the “immense breadth” of the claims at issue. Arnold J pointed to the CJEU’s decision in Eli Lilly v HGS above, as evidence that the number of other compounds covered www.cipa.org.uk

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by a structural formula cannot be a factor in the assessment of article 3(a). If this were so, then Eli Lilly v HGS (where the claims were to an antibody defined in terms of its target protein binding activity, potentially encompassing thousands of antibodies) would have had a straightforward and negative answer. He concluded that, by falling within the scope of a Markush claim, darunavir is sufficiently protected by the basic patent under article 3(a). The SPC was therefore held to be valid. This decision has now been appealed and the Court of Appeal’s judgment is eagerly awaited. Although Arnold J was able to come to a decision in two of the above three cases, it is clear that he had difficulty grappling with the tests so far provided by the CJEU. It remains to be seen whether the CJEU will take the opportunity to clarify the meaning of article 3(a) once and for all in the new Teva & others v Gilead Sciences Inc (C-121/17) referral. Paul Kaufman (Fellow)

What constitutes a valid marketing authorisation for SPC purposes? In yet another referral to the CJEU, Mr Justice Arnold asks for guidance as to whether, under certain circumstances, an SPC application may be filed where an MA has not yet granted (C-567/16). The case arose from the IPO’s refusal of an SPC to Merck Sharp & Dohme Corporation (MSD) for its product Atozet®, a combination of ezetimibe and atorvastatin. The hearing officer decided that at the time the SPC application had been filed, article 3(b)’s requirement for there to be a valid authorisation of the product was not fulfilled. MSD appealed the decision, and Arnold J considered two related questions in his resulting judgment,w Merck Sharp & Dohme Corporation v The Comptroller-General of Patents, Designs and Trade Marks [2016] EWHC 1896 (Pat): whether the application complied with article 3(b) of the SPC Regulation; and whether the absence of an MA was an irregularity, which could be rectified under article 10(3). By way of background, MSD had used the decentralised procedure for obtaining national MAs for Atozet®. A key step at the end of the decentralised procedure is the reference member state’s production of the end of procedure notice (“EoP notice”). It is then up to each member state to issue a national MA in accordance with the EoP notice, which is to be done within 30 days from the closure of the procedure. When MSD filed its UK SPC application for Atozet®, the basic patent was about to expire and MSD did not yet have a UK MA. MSD did, however, have the EoP notice from the German Medicines Agency, which was the Reference Member State agency for the decentralised procedure. MSD therefore filed the SPC application and referred to the EoP notice from the German Medicines Agency in its SPC application. Volume 46, number 7-8

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The UK MA granted a few weeks later, after the patent had expired, and MSD provided a copy to the UKIPO with arguments that the document was filed to rectify any irregularities in the original application. Article 3(d) of the SPC Regulation requires that: “a valid authorisation to place the product on the market as a medicinal product has been granted in accordance with Directive 2001/83/EC or Directive 2001/82/EC, as appropriate”. Arnold J accepted MSD’s arguments that the EoP notice is expressed in “mandatory terms”, but he did not accept that the grant of an MA by the national authorities is an “administrative formality”; each member state has to decide subsequent to the EoP notice to grant the national MA. The judge noted explicitly that there may be reasons why the grant of the national MA might not happen. He also rejected MSD’s arguments that the EoP notice is equivalent to an MA, in particular noting that an EoP notice does not allow a party to market its product in the UK. As to whether the deficiency could be rectified after filing, MSD had argued that article 10(3) of the SPC Regulation requires the UK IPO to give the applicant an opportunity to rectify the irregularity. MSD referred to the earlier DuPont decision (EI du Pont de Nemours & Co v UK IPO [2009] EWCA Civ 966), which related to a paediatric extension application where the applicant had completed all of the steps necessary in the UK, but was unable to provide confirmation that the MAs had been updated in all of the EU member states as required by the Paediatric Regulation. The UK High Court in DuPont held that it was not detrimental to the extension application that the applicant was unable to provide such a confirmation at the deadline for filing the application. However, Arnold J accepted the distinctions that the UKIPO drew between the DuPont decision and the case before him. These included the fact that in DuPont, the product had already been subject to a valid MA and an SPC had already been issued. Further, in DuPont, there was no recital or other indication in the SPC Regulation suggesting that everything must be in the extension application or capable of being in the application by the date it must be filed. This was not seen as the case for article 3(b), which explicitly states that there must be a valid MA “at the date of the application”. Finally, and possibly most importantly, it was impossible to cure a defect that continued to exist. Irrespective of when the MA was provided to the UKIPO, it remained the case that at the time that the SPC application was filed there was no valid MA. Despite agreeing with the UKIPO on both these issues, Arnold J did not feel that his conclusions were acte eclair and he therefore referred two questions to the CJEU. The existence of divergent decisions within the same SPC family JULY-AUGUST2017

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amongst different member states was also a clear motivation for the referral. The questions deal with both whether an EoP notice can be treated as equivalent to an MA under the SPC Regulation, and whether, if not, the absence of a granted MA is an irregularity that can be cured once the MA has been granted. It will be interesting to see how the CJEU deals with these questions. Whilst the facts of this case are certainly specific, there could be wider reaching implications if the CJEU finds that an EoP notice is equivalent to an MA. It is hoped that the CJEU will bear in mind that the date of the first authorisation is relevant beyond article 3(d), and that a liberal but nonspecific approach in relation to this particular case might have unforeseen effects on other aspects of the Regulation. Anna Leathley (Fellow)

The scope of protection provided by an SPC Norway casts doubt on validity of broad SPCs for biologics There is still relatively little guidance regarding the scope of protection provided by an SPC and the significance of the definition of the “product” in the SPC in relation to its scope and validity. Uncertainty regarding the range of products that may be covered by an SPC, and the optimum product definition in an SPC application, is particularly acute for biologics. A recent judgment from the Norwegian Borgarting Court of Appeal in Pharmaq AS v Intervet International BV (15-170539ASDBORG/01 – 15-204605ASD-BORG/01), which declared that an SPC with a broad product definition is invalid, provides an important addition to SPC jurisprudence. Proprietors who might have been granted SPCs with broad product definitions will wait with trepidation to see if the CJEU, other national courts and/or patent offices will adopt a similar approach. The case involved Pharmaq AS and Intervet International BV, who had each developed vaccines against viral pancreatic disease in salmon using different inactivated virus strains. Pharmaq sought a declaration that a Norwegian SPC held by Intervet does not cover the virus strain in the Pharmaq vaccine, or otherwise that the SPC is invalid. The SPC in question is based on a marketing authorisation for the specific strain used by Intervet, but the SPC was granted with a broader product definition that encompasses the Pharmaq strain. Previously, the EFTA Court – which fulfils a role similar to the CJEU for non-EU states Norway, Iceland and Liechtenstein – was asked to consider:

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The entry of biosimilars to the market generally respects innovators’ SPCs covering reference products, but it has not been confirmed that an SPC for a reference product will necessarily always cover a biosimilar.

1. whether the scope of protection for an SPC can cover not only the specific strain included in the relevant medicinal product, but also other strains covered by the basic patent and the SPC product definition; and 2. whether an SPC is valid if it is granted with a product definition that is not limited to the authorised strain. 30 CIPA JOURNAL

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The EFTA Court appeared to confirm the view that the SPC Regulation should be interpreted broadly and that SPCs should cover “therapeutically equivalent” products, which normally must cover biosimilars, for example. However, when applying the EFTA Court judgment to the technical facts of the case, the Court of Appeal has focused on particularly narrow language that the EFTA Court used. This issue is significant because practice regarding how a product should be defined in an SPC application, and the resulting scope of the granted SPC, is not settled. Article 4 of the SPC Regulation states that “the protection conferred by a certificate shall extend only to the product covered by the authorisation to place the corresponding medicinal product on the market”, but as in the present case, many SPCs are granted with product definitions that encompass (at least from a linguistic perspective) other products in addition to the authorised product. Also, the scope of protection provided by SPCs, in particular in relation to biologics, has not been clearly defined in the case law. Currently, the entry of biosimilars to the market generally respects innovators’ SPCs covering reference products, but it has not been confirmed that an SPC for a reference product will necessarily always cover a biosimilar. The CJEU held a number of years ago in Farmitalia (C392/97) that an SPC “is capable of covering the product, as a medicinal product, in any of the forms enjoying the protection of the basic patent”, which suggests that a broad interpretation of article 4 is appropriate. However, Farmitalia related to a small chemical entity and there is doubt as to whether the reasoning in Farmitalia can be transposed to complex biologics.

The Norwegian view on SPC scope and article 4… In its earlier opinion, the EFTA Court apparently confirmed that the reasoning in Farmitalia is relevant to complex biologic products, such as the vaccines at issue in the present case, and the EFTA Court repeated the observation in Farmitalia that an excessively narrow interpretation of article 4 would allow medicinal products that are “therapeutically equivalent” to the product protected by the SPC to enter the market, which would frustrate the purpose of the SPC Regulation. However, in seeking to apply the EFTA opinion, the Court of Appeal commented that Farmitalia “gives limited guidance for understanding the term ‘the same active ingredient’ used in biological medicinal products”. Instead, the Court of Appeal considered the Yeda judgment of the Dutch Raad van State Appeal Court (2000809060/1/H3) to be more informative for biological products. In that case, it was held that Yeda should not be granted an SPC that covered antibodies other than the specific antibody of the relevant marketing authorisation, which was for adalimumab. The Court of Appeal was persuaded by reasoning in Yeda explaining that minor differences in antibodies can have significant effects on quality, safety and Volume 46, number 7-8

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efficacy, unlike the salts and esters with identical medical effect that were considered in Farmitalia. The Court of Appeal did not commit to a particular position on what differences might indicate that a biological molecule is not the same active ingredient as the authorised product, but it did say that: “the difference between the products must at least be expressed in such a manner that it has a practical and appreciable effect on the quality, safety and efficacy of the medicine in question”. This comment appears reassuring for innovators who hold SPCs and face biosimilar competition, because a biosimilar must generally have the same quality, safety and efficacy as the reference product. When assessing the technical evidence presented to it, the Court of Appeal considered the Intervet strain and the Pharmaq strain to exhibit significant differences in vaccine efficacy, with Pharmaq’s product being more potent. The Court of Appeal concluded that the SPC therefore covered improved vaccines that could not be considered to fall within the meaning of “the product covered by the authorisation” referred to in article 4. The Court of Appeal was particularly convinced by challenge trials, submitted after the first instance court’s decision, which showed that Pharmaq’s vaccine conferred increased protection. It is interesting to note that the two vaccines used by Intervet and Pharmaq are derived from different virus subtypes, so it is perhaps not surprising that Pharmaq was eventually able to convince the Court that there are practical and appreciable differences between the vaccines. The Court’s comments noted above suggest that its conclusion would have been different if the potentially-infringing product had been a biosimilar more closely based on the original product.

… and its effect on validity The Court of Appeal then considered the effect of its conclusion that the product definition was broader than that permitted by article 4. Strikingly, the Court of Appeal concluded that there is no procedure to correct the granted SPC, so it must be declared invalid. The EFTA Court had previously concluded that “a supplementary protection certificate is invalid to the extent it is granted a wider scope than that set out in the relevant marketing authorisation”, which appeared to offer the possibility of an SPC with a broad product definition being maintained but held unenforceable beyond the authorised active ingredient. However, when applying the EFTA Court’s opinion in practice, the Court of Appeal found it had no option but to declare the entire SPC invalid. Many SPCs are granted with definitions that are not identical to the product definition in the marketing authorisation, so this aspect of the Court of Appeal’s judgment may be of particular concern to SPC proprietors. JULY-AUGUST2017

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Where does this decision leave us? The judgment is, of course, focused on the issues as they relate to the specific inactivated virus vaccines that were in dispute. Whilst it seems clear that the vaccine products differ more than, for example, biosimilars of a monoclonal antibody, the Court’s reasoning might be more relevant to other situations, such as proteins of slightly different sequence. Regarding validity, another court or SPC holder might be able to identify creative solutions for maintaining SPCs that do not conform to a narrow interpretation of article 4, and it appears unlikely that the many SPCs with broad product definitions are at risk. For example, another court might be happy to leave an SPC on the register whilst potentially offending article 4, since article 4 is not a cause for invalidity in article 15. Alternatively, it might be possible to “correct” an SPC to narrow the product definition, if a court found the definition to be a problem. Therefore, it is difficult to predict the extent to which the Norwegian Court’s position will influence other national courts and patent offices. Nevertheless, this case is an important addition to SPC jurisprudence, especially in the current absence of guidance from the CJEU on these points. Ian MacLeod (Fellow)

SPC term: set in stone? The CJEU’s decision in Hoffmann-La Roche (C-572/15) and the referral of further questions in Incyte Corporation (C492/16) try to pin down how SPC term should be calculated, in particular, whether retroactive shortening or lengthening of SPC term is permitted.

Is SPC term affected by EU accession? In F. Hoffmann-La Roche AG v Accord Healthcare OŰ (C572/15), the CJEU was asked to consider whether the duration of a national SPC can be retroactively shortened following accession to the EU of the member state that granted the SPC. The case concerned Roche’s Estonian SPC for Xeloda®, which was based on the approval of Xeloda® in Estonia. Taking the expiry date of the SPC as 15 years from this approval, Roche brought an action against Accord, alleging that its intended launch of a generic medicinal product containing the same active ingredient would infringe its SPC. Accord countered that, following Estonian accession to the EU, the transitional provisions set out in article 21(2) of the SPC Regulation require that the term of Roche’s SPC be recalculated using the date of the first authorisation in the EU (as set out in article 13). On that basis, Roche’s SPC had already expired. Questions were referred to the CJEU on whether article 21(2) of the SPC Regulation should be interpreted 32 CIPA JOURNAL

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as shortening the duration of an SPC that was issued in a member state under national law before the accession of that state to the EU. The referring court also asked whether such an interpretation would be compatible with the general EU principles of the protection of acquired rights and the prohibition on the retroactive effect of law. In its decision, the CJEU referred to the text of article 21(2) itself, which states that the SPC Regulation applies to national SPCs granted by a member state prior to its accession to the EU. Following its decision in Merck Canada v Accord Healthcare (C 555/13), the Court confirmed that article 13 of the SPC Regulation provides that the holder of a patent and an SPC should not be able to enjoy more than 15 years of exclusivity from the time of the first MA granted in any member state of the EU. Thus, for the purposes of calculating the duration of the SPC, the relevant authorisation was held to be that issued first in the EU (or the EEA), rather than that issued in Estonia, even though the SPC had been granted before Estonian accession. The first authorisation for Xeloda®, following the CJEU’s decision in Astrazeneca (C-617/12), was that issued in Switzerland via its automatic recognition by EEA Member State Liechtenstein. Accordingly, Roche’s SPC was deemed to have expired. The CJEU explained that calculating SPC term from the first authorisation in the EU, as required by article 13(1) of the SPC Regulation, ensures that the extension of protection conferred by an SPC expires in all of the member states at the same time (thus upholding the free movement of goods). Addressing the referring Court’s concerns regarding retroactive effect and legal certainty, the CJEU noted that SPCs take effect only on the expiry of the basic patent, which in the present case occurred after the date that Estonia acceded to the EU. The SPC Regulation was therefore in force when the SPC came into effect and did not have any retroactive effect. Nevertheless, as the transitional provisions in the SPC Regulation had been agreed between the acceding member and the EU, the court held that it had no jurisdiction to rule on the validity of such arrangements.

Post-grant correction of SPC term The CJEU has also been asked in Incyte Corporation v Szellemi Tulajdon Nemzeti Hivatala (C 492/16) whether it is possible to lengthen the term of a granted SPC to take into account the extra few days of SPC term sometimes provided by the Seattle Genetics (C-471/14) decision. Although the Seattle Genetics decision has been welcomed by SPC holders, the lack of guidance on how to implement it, especially with regard to granted SPCs, has led to widespread inconsistencies between the national patent offices. Following Seattle Genetics, patent offices across the EU have started calculating SPC term for new SPC applications www.cipa.org.uk

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based on the notification date of an MA (rather than the decision date). For SPC applications that were pending at the date of the CJEU’s decision, it seems that most local patent offices are recalculating the SPC term using the notification date, either on request from the SPC applicant or ex officio. Some patent offices are also allowing correction of the term for granted SPCs; others, such as Austria, France, Hungary, Spain and Sweden, are not, particularly where the period for appealing the decision to grant the SPC has passed. In Sweden, multiple patent office rejections of requests to recalculate the term of granted SPCs have been appealed to the Swedish Patent and Market Court, where the appeals have then been rejected. For example, Bayer Intellectual Property GmbH (case no. PMÄ 10972-16) filed an appeal against the patent office’s refusal to recalculate the term of an SPC and the Court reasoned that the SPC Regulation contains no provisions for reviewing a decision to grant an SPC once that decision has become final, which it considered in the interests of legal certainty. It also refused Bayer’s request to refer questions to the CJEU, stating that the patent office’s decision to grant an SPC could not be corrected, irrespective of any interpretation of the law provided by a CJEU referral, because the decision was not incorrect at the time it was issued. By contrast, the Hungarian court in Incyte saw no problem referring questions on the same point to the CJEU. In this case, Incyte appealed against the Hungarian patent office’s refusal to recalculate the SPC term in line with Seattle Genetics, this refusal being based on the consideration that the contested decision to grant an SPC did not contain any errors at the time it was issued.

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On appeal, the referring judge noted that article 17(2) of the plant protection product Regulation (which is incorporated into the medicinal product Regulation by virtue of Recital 17) allows for an appeal aimed at rectifying the duration of an SPC where the date of the first authorisation in the SPC application is incorrect. The judge therefore asked the CJEU to confirm whether this article should be interpreted as allowing rectification of the SPC expiry date where the date was determined without taking into account Seattle Genetics, even if the SPC was granted before this judgment and any time limit for appealing the decision had expired. In addition, the CJEU was asked to clarify whether the entity entitled to grant SPCs in a member state is under any obligation to rectify, of its own motion, the SPC expiry date to comply with Seattle Genetics. From an EU perspective, the referral makes good sense: discrepancies in the various patent offices’ implementation of Seattle Genetics are leading to different terms across Europe for related SPCs, potentially impeding the common market. Moreover, the outcome is important: SPC holders’ entitlement to the correct SPC term, and legal certainty for third parties, hangs in the balance. Susan Hancock (Fellow) This information provides a summary of the subjectmatter only. It should not be acted on without first seeking professional advice. Any views expressed in this document do not necessarily reflect the views of Carpmaels & Ransford or its attorneys or clients. For more information, please contact: daniel.wise@carpmaels.com or see carpmaels.com.

SPC SUMMER REVIEW For more information on Carpmaels & Ransford or the authors of these articles, please visit https://www.carpmaels.com/

VOLUME 46 NUMBER 07-08 2017

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Daniel Wise Partner

Anna Leathley Senior Associate

Ian MacLeod Senior Associate

Natalia WegnerCribbs Associate

Susan Hancock Associate

Paul Kaufman Associate

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SIPO update Continental Drift: SIPO’s April 2017 examination guidelines bring significantly improved alignment with EU and US rules in software and pharma fields

The Chinese State Intellectual Property Office (SIPO) has significantly revised its examination guidelines with respect to inventions relating to business methods and software, submission of post-filing data for chemical/bio inventions, scope of post-grant amendments during invalidation proceedings, inspection of files before and after grant, and stay of SIPO proceedings due to court orders. Many of these changes are the result of efforts from the discussions with various foreign parties with SIPO. Toby Mak discusses the details.

IPO has revised its patent examination guidelines (the “Guidelines”), and these became effective on 1 April 2017. The changes cover:

1. 2. 3. 4.

inventions relating to business methods; inventions relating to software; submission of post-filing data for chemical/bio inventions; scope of post-grant amendments during invalidation proceedings; 5. inspection of files before and after grant; and 6. stay of SIPO proceedings due to court order Many of these changes significantly change patent practice in China, and are discussed in detail below. My own personal comments are in square brackets.

Inventions relating to business methods (Section 4.2, Chapter 1, Part II) After the revision, the Guidelines specifically include a statement: “If a claim related to business method includes business features and technical features, then the possibility of this claim being patentable should not be excluded according to article 25 of the Patent Law [Note: this is the article in the Chinese Patent Law relating to patentable subject-matter]” – in the examples of determining whether a claim is substantially directed to business or mental method. [Comment: This section of the Guidelines highlighted the above statement, but only after the examples, and acted as an exception only when a claim was not substantially directed to business or mental method. A claim was considered to be substantially directed to business or mental method if its limiting contents are business or mental method other than the 34 CIPA JOURNAL

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preamble, while only features novel from the prior art were considered as limiting features. That is, before the above change, even if a claim included a technical feature, like a computerimplemented step, a non-patentable subject-matter objection could be raised if this technical feature was considered by an examiner to be not novel. It is believed that the above change is to extend this previous exception to all determinations of whether a claim is directed to business or mental method, i.e. as long as a claim has a technical feature, a non-patentable subject-matter objection should not be raised. This change may be much needed by the booming local software/Internet-related businesses in China. This change was a topic discussed with the AIPLA’s China delegation in the last few years.]

Inventions relating to software (Chapter 9, Part II) Software recorded on computer-readable medium is now patentable. [Comment: This completely changes the current practice. Computer-readable medium recording new and inventive software was not patentable in China.] The following changes are even more substantial: •

Component(s) of an apparatus claim can include not only hardware but also software. [Comment: If applied broadly, this would allow claims in the format “An apparatus incorporating the method of claim 1”. However, an examiner may interpret the amendment narrowly, requiring that an apparatus claim must recite a hardware component; this could be overcome easily, for example, by reciting a processor performing the software’s method steps (therefore it is advisable to state that the method steps of a software invention could be performed by a processor or other components in the specification to provide basis of amendments). Either way, this change could prevent an examiner objecting to an apparatus claim reciting method steps on the basis that such steps could not limit the apparatus claim. Such objections were typical in China upto now.]

•

A module in an apparatus claim can be in the form of a software module, instead of functional module (as was required before the changes).

[Comment: This corresponds to the change of allowing an apparatus claim to include a software component. This further confers broader scope to an apparatus claim incorporating software, as it is no longer necessary to recite functional module, which could be interpreted as discrete physical module in the apparatus. Although the Guidelines before the revision already specified that a functional module was not an actual physical module but could be a virtual module realizing a step of a software, some Chinese courts adopted a strict literal Volume 45, number 7-8

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interpretation of the language “a device configured to perform a step/function”, and considered this to be ambiguous, and that the claim was not enforceable. Hopefully, this change could resolve these issues. These changes would allow an invention relating to software to be patentable in the form of apparatus claims more easily with broader scope. Again, the above changes may be much needed by the booming software/Internet-related businesses in China. It is also interesting to note that these changes were one of the topics discussed with the AIPLA’s China delegations in recent years.]

Submission of post-filing data for chemical/bio inventions (Section 3.5, Chapter 10, Part II) Before the revision, the Guidelines specifically exclude submission and consideration of post-filing data to support sufficient disclosure of an invention. After the revision, the Guidelines now require that supplemental experimental data submitted after the date of filing is examined, provided that the technical effect proved by such post-filing data shall be available to the person skilled in the art from the disclosure of the patent application. [Comment: The strict bar of submission of post-filing data has troubled many applicants in the chemical, pharmaceutical, and biotechnology fields in China. SIPO has received requests from various foreign entities to lift this bar (for example, this was always one of the topics in meetings between SIPO and AIPLA delegations to China), and SIPO has finally provided a positive response. The following points should be noted. The current wordings of the Guidelines require that in order for the post-filing data to be admissible, “the technical effect proved by such post-filing data shall be obtainable by a person skilled in the art from the disclosure of the patent application”. It is not certain what would be considered as sufficient. For example, would a declaration from one of the inventors confirming that the post-filing data submitted is from experiments repeated according to those in the specification be enough? What if the technical effect proved by the postfiling data was not explicitly recited in the specification but, nonetheless, could be derived from the specification? If so, is it necessary for the technical effect be derived directly and unambiguously from the specification, as required to avoid added matter in China? In any event, I believe the current wording “the technical effect proved by such postfiling data shall be obtainable by a person skilled in the art from the disclosure of the patent application” is included to specifically prevent selection of a specific compound in a Markush claim while the original disclosure contains no recitation of any superior property of this specific compound over other compounds in the Markush claim. This was what happened in the invalidation of the Viagra patent in China. Specifically, the active compound sildenafil – 5-[2-ethoxyJULY-AUGUST 2017

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5-(4-methylpiperazin-1-yl)sulfonylphenyl]-1-methyl-3propyl-4H-pyrazolo[4,3-d]pyrimidin-7-one – was selected during prosecution due to a novelty objection, which led to a patent being granted in 2001. This Viagra Chinese patent was declared invalid in 2004 on the basis that there was no reason to choose this single compound from the other compounds due to lack of data in the specification supporting the selection, i.e. the specification did not describe or provide data showing the superiority of sildenafil. This led to SIPO requiring experimental data for each and every single compound in the claims for proper support from 2004 to the second instance of the invalidation of the Viagra Chinese patent in 2007, which reversed the invalidation and laid down the current test of sufficiency in China: “whether a person skilled in the art can reasonably expect the invention to work”. It appears that SIPO has learnt the lesson, and tries not to allow such seemingly random selection by the current requirement: “the technical effect proved by such post-filing data shall be obtainable by a person skilled in the art from the disclosure of the patent application”. In order to mitigate this, while it is always preferred to include in the specification experimental data proving the superiority of a particular compound, if such data could not be made available at filing, it is advisable to include at least a brief description why any potentially useful compound is better than other compounds covered by a general chemical formula. However, it should be noted that such a description may not be helpful if the post-filing data is not consistent in supporting the specific superiority recited in the specification. For example, if a particular compound was described to have better stability towards acid compared to other compounds described in the specification and therefore could improve shelf life, but then the data shows that the compound in fact has better stability towards base, such an inconsistency could make a relevant post-filing data inadmissible. Personally, I believe it would be easier to submit post-filing data for composition claims than compound/bio material claims: for compound/bio material claims, it would be easier for an examiner to reject the claim on the basis that a person skilled in the art could not expect the technical effect for a compound/ bio material with changes in structure, for data (and therefore effect) not contained in the specification, and particularly for pharmaceuticals (due to uncertainties on efficacy) and for bio materials (due to uncertainties on conformational structure), unless the prior art shows that compounds/bio materials of similar structure perform in a similar manner (which could then attract obviousness objections…). The changes are directed to submission of post-filing data for sufficiency. It is not clear whether an examiner should consider post-filing data for supporting inventiveness of claim in a similar manner. Nevertheless, I have already tried this in a recent response to an office action, and let’s wait and see the examiner’s response.] 36 CIPA JOURNAL

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Scope of post-grant amendments during invalidation proceedings Before the revision, only three types of amendments were allowed after the grant of a Chinese patent in invalidation proceedings. More specifically, in invalidation proceedings as the Patent Re-examination Board of SIPO (a Chinese court, more specifically the Beijing IP Court, at present only deals with appeals against the Board’s decision): a. Deletion of an existing claim. [Comment: This is a welcome amendment.] b. Deletion of technical solutions from a claim, for example deletion of a compound from a ‘Markush claim’, which are typical for chemical or pharmaceutical inventions to cover various compounds by a general chemical formula. A ‘Markush claim’ covers many possible permutations, and each of these permutations is considered to be a technical solution covered by this claim. [Comment: Another welcome change.] c. Combination of existing claims according to their dependencies. For example, if claim 4 having two features (1) and (2) depends on claim 3, and claim 3 depends on claim 1, if claim 4 is to be incorporated into claim 1, then claim 4 has to be incorporated together with claim 3 to claim 1. [Comment: As readers would agree, the above restrictions require that all possible permutations of any invention be included in the claims when drafting a patent specification, or at least be added before the application is granted. No patentee or patent attorney has a crystal ball knowing how the validity of a granted patent would be attacked. While it may be argued that a patentee should draft claims covering all technical characteristics of the invention disclosed in a patent specification, in many cases this could not be done due to various reasons, for example limited budget or lack of time (for example, due to excess claim fees). The Chinese Supreme Court’s decision stated that it is unfair to the patentee to reject forms of amendments not in accordance with those limited in the Guidelines if such amendments fulfill the requirements in the Chinese Patent Law (supported by the original disclosure and does not broaden the scope of protection). This decision further recites that while in usual cases the forms of amendments are limited to those recited in the Guidelines, other forms of amendments are not absolutely excluded. By contrast, various leading patent offices – US, UK and EPO – allow amendments during invalidation proceedings to incorporate technical characteristic(s) into a granted claim as long as such incorporation is supported by the original disclosure, and does not broaden the scope of Volume 45, number 7-8

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protection, contributing to technical advancements in these jurisdictions. SIPO has waited six years before changing the Guidelines in light of the 2011 Supreme Court’s decision.] After the revision, the Guidelines now allow incorporation of one or more features recited in the grant claims to a claim to narrow the scope of protection at an invalidation proceeding. [Comment: That is, while the above forms of amendments (a) and (b) remain unchanged, form (c) has been opened up, a little bit. Specifically, taking the above example (claim 4 depends from claim 3, and claim 3 depends from claim 1), if claim 4 has two features (1) and (2): •

Before the revision, as mentioned above, it was not allowable to incorporate only feature (2) into claim 1. Instead, the whole claim 4 having features (1) and (2) had to be incorporated to claim 1 along with claim 3.

•

After the revision, claim 1 can be amended by only incorporating feature (1) or (2) of claim 4 into claim 1 without incorporating claim 4.

While this is an improvement, the current revision still fails to address the issues stated in the 2011 Supreme Court’s decision. That is, the current revised Guidelines still apply more restrictive limitations on post-grant amendments than the Chinese Patent Law. According to the explanation from SIPO, allowance of incorporation of feature only recited in the description but not in the claims was considered, but this form of amendment did not get through in light of concerns that a third party would not be able to foresee these new combinations, providing unbalanced advantage to the patentee. SIPO may try to justify the refusal of allowance of incorporation of feature only recited in the description but not in the claims by article 5 of the ‘Interpretation of the Supreme People’s Court on several issues concerning the application of law in the trial of patent infringement dispute cases’ effective since 1 January 2010 (the 2010 Interpretation), which stipulates that a Chinese court shall not support a claim for technical solution described only in the specification but not included in the granted claims in a patent infringement case. This is considered as an adoption of the donation principle in the US – Miller v Brass Company, 104 U.S. 350 (1881). However, there are several issues with this basis as the SIPO’s explanation: •

The above Chinese Supreme Court’s decision is in 2011, which is later than the 2010 Interpretation.

•

The Interpretation 2010 is apparently directed to patent infringement cases, and it is not sure whether this could be applied to invalidation proceeding. JULY-AUGUST 2017

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•

The US donation principle does not appear to be applicable to China. In Miller v Brass, there was a delay of 15 years to apply for re-issuance of the patent for the alternative scope originally not claimed. However, China does not have re-issuance of a granted patent as in the US allowing the patent to pursue alternative scope of patent protection.

However, this is not news to Chinese patent practitioners – for example, restrictions on addition of new claims when responding to an office action is another area of the Guidelines imposing restrictions not in the Law.]

Inspection of files before and after grant Pending and published invention patent application before grant Before the revision, for a pending and published invention patent application, office actions issued during substantive examination and their respective responses were not available to a third party. These are now available to a third party. [Comment: I never figured out why the above documents were not available to the public. This change should be welcomed, which makes a lot of things easier, for example submission of third-party observations to a pending application, monitoring progress of an application to determine whether invalidation should be filed after the application is granted, and so on. I welcome this change. The following should be noted: •

Only the response to an office action is available, but not the amended claims as filed. This is an established proceedure in China, again for reasons unknown to me, that the amended claims filed when responding to an office action are not available to the public. Nonetheless, the response could give hints on how the claims are amended, or in many cases clearly indicating how the claims were amended. This may be the reason why the amended claims are not available, but it should not take SIPO too much effort to make these amended claims available, either. SIPO may consider this as the next improvement.

•

SIPO has recently made available electronically filed applications for online inspection of files. However, applications filed before 2014 are not available, as electronic filings were not popular at that time, and most (if not all) of the filings were on paper. With the volume of applications received by SIPO, this is entirely understandable.

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•

The priority document is not available. This will be discussed later.]

Already granted patents Before the revision, while almost all documents before (e.g. office actions and their responses) and after (e.g. invalidation notifications or decisions) grant are available to the public, for an unknown reason the priority document of a granted patent was not available; now the priority document is available. [Comment: Although it is not clear why the priority document was not available to the public in the past, again this should be a welcomed change, which could make challenging the priority claim of a granted patent easier. On the other hand, it is unclear why the availability of priority document is not extended to pending and published invention patent applications.]

Stay of SIPO proceedings due to court order Before the revision, the length of stay was limited to between six and 12 months depending on the court proceedings involved (12 months for ownership dispute, and six months for disputes involving property preservation). After the revision, the length of stay will be determined by the court, which is in turn bound by the Supreme Court’s Explanation Applicable to Civil Litigation Law of 2015 to be not more than three years. [Comment: These changes are reasonable and to avoid conflict with the operation of a Chinese court.]

Conclusion Most, if not all, of the revisions should be welcomed by Chinese patent practitioners. These revisions bring the Chinese practise closer to those of the US and Europe. Business method claims are now less likely to receive a non-patentable subject-matter objection. Software methods recorded on computer-readable medium, and apparatus claims reciting method steps are now allowable. Submission of post-filing data is no longer an absolute bar in China. The scope of post-grant amendments, and inspection of patent prosecution files, particularly those of pending and published invention patent applications, have been broadened. However, it is intriguing, if not astonishing, to see that SIPO insisted that the incorporation of feature only recited in the description but not in the claims is not allowed despite a contradicting Supreme Court’s decision in 2011. Another interesting observation is that the efforts from the discussion of various foreign parties with SIPO could result in substantive changes, which is encouraging. Toby Mak, Tee & Howe Intellectual Property Attorneys. www.cipa.org.uk

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Patent litigation in China Disputes over standards essential patents are increasingly being exposed in the courts, as can be seen from the CJEU decisions (such as Huawei v ZTE) and in the UK in relation to the Unwired Planet litigation1, giving a detailed insight into a wide range of issues beyond simple infringement and validity. In his discussion of Sony’s defeat in the recently established Beijing IP Court, Toby Mak shows that such cases in China are no different, with punitive damages and an injunction being granted, as well as (by Chinese standards) substantive costs.

n 22 March 2017, the Beijing Intellectual Property Court (“the Court”) issued a decision confirming that Sony2 infringed an Iwncomm3 patent. The Court imposed punitive damages on Sony, which was ordered to pay Iwncomm 9,103,367 RMB (about £1.03 million). This included expenses for litigating the case of 474,194 RMB (about £53,750), and damages of 8,629,173 RMB (about £978,240). The Court also granted an injunction against Sony. According to reports of the Court’s decision, Sony presented some very interesting, if not intriguing, arguments to defend against Iwncomm’s infringement claim, which could be illuminating4. After setting out the background, this article focuses on the following issues: 1. Why Sony failed to defend itself against infringement. 2. Why punitive damages were invoked, and an injunction granted. 3. Why compensation of 9.1 million RMB awarded against Sony was reached. As usual, my personal comments are in square brackets.

Background The technology involved in this case was the WLAN Authentication and Privacy Infrastructure, or “WAPI”. This is a security protocol for wireless networks (WLANs). More commonly known wireless network security protocols include WEP, WPA, and WPA2. [Comment: If you have tried to set up your own WLAN security with your router, this is one of the options you need to choose.] WAPI became a Chinese national standard in 2003. China tried to make this an ISO standard, but this was rejected in 2006, and the attempt was finally withdrawn in 2011. However, WAPI remains a Chinese standard, and each and every mobile phone having a WLAN function is required to be tested for compliance with this WAPI standard if it is to be sold in China. Volume 45, number 7-8

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No need to guess – Iwncomm, a Chinese company, has a Chinese patent, Patent No. ZL02139508.X (ZL ‘508) covering the WAPI standard. As such, to sell a mobile phone with WLAN function in China, it is necessary to obtain a licence from Iwncomm. ZL ‘508 has family members in the US (US8726022), Europe (EP1589695B), Japan (JP4286224B), and South Korea (KR100832893B), and according to the online records, art least US8726022 and EP1589695B are in force. ZL ‘508 has only one independent claim covering how a mobile terminal (MT), like a mobile phone, interacts with an access point (AP), and an authentication server, (AS), in order for the mobile terminal (MT) to gain access to a wireless network provided by the AP. [Comment: Apparently, when this CN patent was drafted, claims directed to the MT, AP, and AS were not considered individually. Otherwise, Sony might have been caught by direct infringement on the claims for the MT individually. Instead, Iwncomm had to rely on additional infringement arguments for indirect infringement.] Iwncomm offer licences in respect of ZL ‘058. Again, no need to guess – Sony did not obtain a licence from Iwncomm. Iwncomm had tried to get Sony on board to take a licence in respect of the WAPI technology, including ZL ‘058 since 2009. However, Sony continuously refused to obtain a licence , first denying that their mobile phones selling in China infringed the above Chinese patent, and requesting Iwncomm to provide details to substantiate Iwncomm’s claim, for example by providing claim charts. Then, after Iwncomm agreed to provide claim charts if Sony signed a non-disclosure agreement (NDA), Sony refused to sign the NDA. The negotiations finally broke in 2015, and Iwncomm sued Sony shortly thereafter. Sony tried to invalidate ZL ‘508 by filing an invalidation petition on 23 July 2015, but this failed. (Apple also tried to invalidate ZL ‘508 with an invalidation petition filed on 10 May 2016; that also failed.) [Comment: It appears that Sony’s invalidation petition was filed shortly after the negotiations with Iwncomm broke down.] Sony has registered the exact number of mobile phones qualified to be sold in China with the Telecommunication Equipment Certification Center of the Ministry of Industry and Information Technology of the Chinese government. Iwncomm’s standard licence fee is 1 RMB per mobile phone according to four licence contracts submitted by Iwncomm, with evidence of official Chinese payment receipts from Iwncomm’s licensees.

Why Sony failed in its defence against infringement As ZL ‘508 does not have any claim directed to the mobile terminal on its own, i.e. Sony’s mobile phones individually, Iwncomm’s claim of direct infringement was denied by the Court. However, Sony was found to indirectly infringe ‘508. Sony defended in the following ways, all of which failed. 40 CIPA JOURNAL

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Sony’s mobile phone is not specifically made for performing WAPI Sony argued that, as with other mobile phones, their phones carried out other functions including making phone calls, taking photos, connecting WIFI, and therefore are not specific devices for performing WAPI. [Comment: If this argument got through, then mobile phones would not infringe many standard essential patents (SEPs).] The Court did not agree, stating that the WAPI function module in Sony’s mobile phone has no other substantive uses other than performing the WAPI function, and therefore ruled that Sony infringed.

Sony activities were covered by exhaustion of rights While the access point, AP, and authentication server, AS, used by Sony “during research and development” were all sold by Iwncomm, Sony argued the components in Sony’s mobile phones which implemented the WAPI function were from chip suppliers Qualcomm and Broadcomm, who had themselves obtained licences from Iwncomm. The Beijing IP Court asked Qualcomm several questions, including whether Qualcomm had obtained a licence in respect of WAPI by Iwncomm. Qualcomm said it had not obtained a licence to Iwncomm’s WAPI patent, but only a licence in respect of copyright and trade secrets from Iwncomm, and that Qualcomm does not pre-install software on chips provided to Qualcomm’s customers except for the necessary basic operating system software. [Comment: My immediate reaction when I saw Qualcomm’s answer in the decision is, “what on earth is this?”5 On the other hand, the decision did not mention whether Broadcom was asked if it had obtained a licence on WAPI from Iwncomm, or Broadcom’s answer.] Regarding the access point, AP, and authentication server, AS, the Court stated that exhaustion of rights for method claims is only applicable to products obtained directly from a manufacturing method; method of use claims do not have an issue of exhaustion of rights, as the relevant article 69 of the Chinese Patent Law does not provide for products involved in method of use claims, which are sold by the patentee giving rise to exemption from patent infringement. [Comment: This follows German practise. As the readers may know, China is strongly influenced by Germany in patent law. This is different from the view from the US, see Quanta v LG, 553 U.S. 617 (2008), which requires the items sold to embody essential feature(s) of the patented invention such that its only reasonable and intended use is to practice the patent. See also Keurig Inc. v Sturm Foods Inc. (2013-1072, Oct. 17, 2013). I will be grateful to readers enlightening me on the situation in the UK. It should be noted that article 69 of the Chinese Patent Law specifically stipulates that patented products and products www.cipa.org.uk

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obtained directly from a patented manufacturing method sold by the patentee and its licensees would be exempted thereafter from patent infringement with respect to use, offer for sales, sales and import of that product.]

Sony did not use the process during production As Sony assembled its mobile phones using the WAPI chips which had been provided by the Qualcomm and Broadcom, Sony argued that no use of the method in the patent was necessary during any production process. Sony’s submission to the Beijing IP Court under the Court’s instructions clearly admitted that the WAPI function was tested in some of Sony’s mobile phones during the researchand-development stage, but the WAPI functionality was never tested during the production stage. Therefore, Sony argued that the method of ZL ‘508 was not used. Further, In relation to the “WAPI Wireless AccessPoint” of Iwncomm bought by Sony, Sony asserted “these prototypes are only used for assessment, test and verification, but are not to be used for sales” in the photos submitted to the Court. [Comment: Below is the voice in my mind when I read the above in the decision, but please feel free to ignore: While Sony provided WAPI testing results to the Chinese authority to obtain approval for sales in China, Sony never even tried to verify whether their mobile phones comply to the WAPI standard during production. That is, what happened appears to be, as long as sales authorization could be obtained, whether the products complied with the required standard is of no concern to Sony.6] In the decision, the Court stated:

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[Comment: Sony had placed itself in a Catch 22 situation, and the Court pushed back – Sony must have performed a WAPI test, and therefore had performed the method of ZL ‘508 on their mobile phones, or their mobile phones should not appear on the market in China.]

Sony did not encourage or teach the user to use WAPI There were no teachings in Sony’s mobile phone itself or its manual to use WAPI, while WAPI’s signal and installation of WAPI’s certificate were all started by WAPI’s AP. [Comment: The Court did not comment on this point, which appears to be irrelevant in the first place with respect to direct infringement.]

WAPI is a Chinese national standard and therefore could not be infringed Iwncomm is obliged to license ZL ‘508, and therefore Sony’s acts were not infringing. Further, as Iwncomm’s patents led to the establishment of the WAPI’s standard, and Iwncomm did not specifically refuse to license [the patent on which the standard it is based], it should be considered as allowing others to practice the invention of ZL ‘508. This argument was simply denied by the Court on the basis that whether or not the relevant patent is a standards essential patent does not affect the decision on infringement; and a FRAND licensing statement from Iwncomm does not mean a licence has been granted. [Comment: I am speechless, but I am interested to hear what SEPs owners would say about this argument.]

“If the defendant (Sony) asserted that they did not execute this standard, the defendant should provide internal quality management documents, including the internal testing protocols and so on, to the Court as proof. The defendant is a legally registered Chinese enterprise. It is reasonable for the Court to believe that the defendant has specific, strict quality management requirements – the defendant either designs and formulates internal rules on quality management, or follows the standards of Quality Management Systems Requirements. [Comment: Both require Sony to test that their mobile phones produced work with WAPI.] Since the defendant refused to provide the testing standard used for realising the WAPI function, demanded by the Court, the Court holds the opinion that the defendant admitted testing the WAPI function on some models of the allegedly infringing products during the research-and-development stage. Additionally, the Court reasonably presumes and believes that the defendant followed the standards of Quality Management Systems Requirements to perform WAPI test during production and the involved mobile phones are released to the market.” Volume 45, number 7-8

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Why were punitive damages awarded, and why was an injunction granted These were determined based on whether Iwncomm, on the one hand, or Sony, on the other, was in the wrong in relation to the licence negotiations. The Court specifically stated that in an infringement case involving a SEP, an injunction should be granted if the defendant was in the wrong in the negotiations, and vice versa7. [Comment: SEP owners should be aware of this – if a Chinese court ruled that they were in the wrong, i.e. showing bad faith during negotiations, they may not be able to obtain injunction relief in a subsequent infringement case.] The Court ruled on this based on the following two issues.

1. Was Sony asking Iwncomm to provide claim charts reasonable? The Court ruled that this was not reasonable. The Court stated that the provision of claim charts is not a must, particularly when Sony has sufficient information to evaluate infringement. In this case, WAPI is a Chinese national standard that Sony must comply with in order to sell mobile phones in China. During negotiations, Iwncomm explained the WAPI-related technologies and provided patent lists and licensing contracts. Based on these, Sony should be able to judge whether the WAPI functional software operated in its relevant mobile phones fell within the scope of protection of the claim of the involved patent, rather than having to rely on claim charts provided by Iwncomm. On the other hand, Sony repeatedly referred to its “not agreeing that its present or planned products used the WAPI patent”, that it “found no reason why Sony needed to obtain a patent licence from Iwncomm”, that “we had not identified that these patents related to our products” and other assertions without substantive reasoning, which was obviously delaying the negotiations. Therefore, the Court ruled that Sony asking Iwncomm to provide claim charts is not reasonable. [Comment: This could be controversial, as a defendant should not be the one to prove infringement – this is the plaintiff ’s task. However, in this case, the Court’s ruling may not be without merit. After all, Sony has bought access points and authentication servers from Iwncomm to test whether Sony’s mobile phone would work with WAPI “during the researchand-development stage, only”. Further, what Sony practised was a standard wireless network protocol. In return, Sony repeatedly denied infringement using mere statements.]

2. Was Iwncomm asking Sony to sign an NDA in order to provide claim charts reasonable? The Court ruled that this requirement was reasonable, as the claim charts could contain Iwncomm’s views and opinions on infringement. [Comment: I always advise my client that claim charts should be kept confidential as much as they can. I am not sure whether Sony’s refusal to sign the NDA is a company policy, or the terms in Iwncomm’s NDA were not acceptable. For the former, this policy apparently backfires. For the latter, the 42 CIPA JOURNAL

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decision does not indicate whether Sony requested Iwncomm to revise the NDA to become acceptable to both Sony and Iwncomm, which I believe should be achievable. The decision did not mention whether Sony’s attempt to invalidate ZL ‘508 demonstrated bad faith, which in my view should not, as every entity is allowed to challenge the validity of a patent according to the Chinese Patent Law.]

How was the compensation of 9.1 million RMB against Sony determined Sony argued that the licence contracts submitted by Iwncomm showing a licence fee of 1 RMB per mobile phone are standard pool contracts, in which ZL ‘508 is only one of the patents involved, and therefore Iwncomm’s request for compensation of 1 RMB per mobile phone was not reasonable. Sony submitted English copies of three US court decisions, and asserted that according to the determination rate of the Wi-Fi standard essential patent in these three decisions, whether calculated according to terminals, or each patent, the licensing fee standard of 1 RMB per mobile phone claimed by Iwncomm does not conform with the FRAND principle. The Court ruled that although Iwncomm’s submitted contracts are standard pool contracts, ZL ‘508 is the core patent in the standard pool, and therefore the licence fee of 1 RMB per mobile as requested by Iwncomm could be used as the basis of compensation calculation for this case, which was in fact used directly by the Court in the calculation of compensation. [Comment: Sony may argue for this in an appeal, as 1 RMB per mobile phone is the value of ZL ‘508 plus other patents and technologies in the standard pool contract. Even though the Court may be correct that ZL ‘508 is the core patent in the standard pool, the Court’s ruling could mean that other patents and technologies in the Iwncomm’s standard pool contract are worthless.8] Regarding the US court decisions, these were dismissed by the Court as Sony did not submit Chinese translations of these decisions to conform with the formality requirements on evidence in China. Further, the Court stated that these decisions are not related to the WAPI technology and therefore this case. [Comment: I have no idea why Sony did not submit Chinese translations of the US decisions to the Court, as any non-Chinese documents submitted to a Chinese court must be translated into Chinese. I am not sure whether Sony considered these US decisions to be not very useful, and therefore did not want to spend money on the translations. On the other hand, I agree with the Court that the US decisions are not relevant, as WAPI is a Chinese-only standard, and what happened in the US bears little relevance to this case.] With the above points determined, the remaining elements were just simple calculations. The total number of Sony’s mobile phones registered with the Telecommunication Equipment Certification Center of the Ministry of Industry and Information Technology of the Chinese government is 2,876,391. Three times www.cipa.org.uk

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CHINA UPDATE

punitive damage was imposed by the Court due to bad faith demonstrated by Sony during licence negotiations, resulting in 8,629,173 RMB (2,876,391x3) compensation for infringement. The Court also awarded Iwncomm 474,194 RMB for expenses of suing Sony, in which 400,000 RMB are the legal costs. [Comment: It is encouraging to see that the Beijing IP Court awarded reasonable legal costs for infringement cases. In comparison, legal costs in the region of only 10,000 RMB were awarded by a Chinese court. Whether this will make China become more litigious at least in patents, we will have to wait and see.]

Summary As a huge multinational corporation, it is disappointing to see the level of due diligence (Qualcomm’ did not obtain a WAPI licence from Iwncomm, while Sony tried to rely on Qualcomm’s chip for exhaustion of rights), care (no submission of Chinese translations of foreign language documents to a Chinese court), and sophistication (arguments of non-infringement including Sony’s mobile phone is not specifically made for performing WAPI, and WAPI is a Chinese national standard and therefore could not be infringed) demonstrated by Sony in this case. Better performance is expected. Below is what could be learnt from this case: • •

Try not to be in a Catch 22 situation, in which either of the conclusions are bad. If a product is said to comply with a standard, it will be difficult for me to say otherwise in a court without hardcore technical proof (for example, for arguing non-

LITIGATION

•

• •

•

infringement). However, if compliance to this standard is a legal requirement, this would get into other kind of trouble if it could be successfully demonstrated that the product indeed does not comply to the standard. It is always useful to draft claims directed to individual functional components in a system, for example a mobile terminal, an access point, and a server, to secure direct infringement against individual suppliers of these components in the system. Reliance on exhaustion of rights should be done with due care. Always do homework, more carefully. Method of use (but not method of manufacturing) claims are not subject to exhaustion of rights in China, and therefore could be valuable. During negotiations for a licence under an SEP, if you deny anything, avoid using mere statements. The denial is better accompanied with substantive reasons and/or proof to avoid bad faith. If a Chinese court found bad faith on a SEP owner, that SEP owner may not be able to obtain injunction relief in a subsequent infringement case. For standard implementer, punitive damages may be imposed. Therefore, please play nice. Chinese courts are rewarding substantial legal costs to a patentee (but not defendant) in successful infringement claims to encourage patentees to defend their patent rights more actively.

Toby Mak, Tee & Howe Intellectual Property Attorneys.

Notes and references 1. E.g. Huawei v Unwired Planet: [2017] EWHC 711 (Pat) and all its predecessors 2. Sony Mobile Communications (China) Co. Ltd. 3. Xi’an China Iwncomm Co.,Ltd 4. A quick review of the WAPI standard in Wikipedia, shows that it has had a fairly colourful history, which may explain some of the approaches taken in this case. For example, apparently when ISO/ IEC did not accept the first attempt at recognition, the Standards Administration of the People’s Republic of China delegation walked out, and there were allegations of a conspiracy, intimidation and threats. 5. Editor: I anticipate that this arises (amongst other reasons), because the ZL ‘058 patent relates to the operation of the protocol, which only arises at the point of use, and that patent holders prefer to license as close to the final point of use as possible, at which point the value of the licensed product is highest.

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6. Editor: This is perhaps a little unfair as there are myriads of functions in any mobile phone, and, as with many digital devices, not all functions will be tested – but perhaps more to the point, according to Wikipedia: “In addition, despite mandates for WAPI to be implemented in China in Wi-Fi enabled mobile phones and by the three Chinese service providers, it is very rarely used in practice.” (https://en.wikipedia.org/wiki/WLAN_Authentication_and_Privacy_ Infrastructure) 7. Editor: Essentially consistently with EU law: Huawei v ZTE (CJEU Case C-170/13 (http://curia.europa.eu/juris/document/document. jsf?docid=165911&doclang=en)) 8. Editor: See, by way of contrast, Birss J’s decision in Huawei v Unwired planet, with a detailed analysis and discussion of methodologies for assessing FRAND rates (at least for ETSI FRAND undertakings) which rejects the notion of different values for different patents in that case ([2017] EWHC 711 (Pat)).

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Patent decisions Revocation | Application to amend | Construction | Reference numerals | Novelty | Obviousness | Added subject-matter | Clarity Curt G. Joa, Inc. v Fameccanica Data SpA [2017] EWHC 1251 (IPEC) 24 May 2017; HHJ Hacon This case was reported and discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 7 June 2017. Joa applied to revoke FDS’s European Patent (UK) No. 1355604 relating to a disposable absorbent garment (such as a nappy) having breathable side panels on the grounds of lack of novelty and obviousness over a patent document, Coslett. In response, FDS applied unconditionally to amend its patent. The IPO had reviewed the amendments and reported that they introduced added subject-matter and lack of clarity. Joa endorsed the IPO’s objections and argued that the amended claims also lacked novelty and were obvious. The invention required the garment to have side panels with inner and outer material layers, a stretchable material layer in between, and vent sites at which the layers were joined by ultrasonic bonding. The vent sites were also referred to as “bond sites”: the judge noted that the same reference numeral was used for both features and held that the terms were interchangeable (with reference to Jarden Consumer Solutions (Europe) Ltd. v SEB SA [2014] EWCA Civ 1629). There was disagreement between the parties as to the nature and position of the breathable passage at the vent sites disclosed in the description of the patent application. Joa’s interpretation was that the breathable passage took the form of a central hole through all layers at the vent site, surrounded by an annular bond. FDS’s interpretation (on which its amendments were based) was that the breathable passage was annular, surrounding the bond, with no hole being formed through all layers. This interpretation was based on a photograph which the judge referred to as “of uncertain provenance”. The judge reviewed the issue in detail and preferred Joa’s interpretation inter alia because it was supported by the natural meaning of the patent wording. Based on his construction, the judge agreed with the IPO in holding that the term “no apertures being formed in the inner and outer layers” involved added subject-matter compared with the application as filed. The judge further agreed with the IPO that the term “outer and inner layers bond through the aperture in the stretchable material” was unclear in combination with the requirement for a vent to be present and there to be no apertures in the inner and outer layers. However, the judge disagreed with the IPO in holding 44 CIPA JOURNAL

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that the feature “aperture larger than the bond site is formed through the stretchable material” was clear and did not involve added subject-matter. Because of the finding that the amended claims were unclear and involved added subject-matter, the patent was revoked. The judge accepted that, if the amendments had been acceptable, the claims would have been novel and nonobvious over Coslett.

Application for strike-out | Jurisdiction Chugai Pharmaceutical Co. Ltd v (1) UCB Pharma S.A., (2) Celltech R&D Limited and between Chugai Pharmaceutical Co. Ltd v UCB Biopharma sprl [2017] EWHC 1216 (pat) 26 May 2017; Carr J In these proceedings, Chugai Pharmaceutical Co. Ltd (“Chugai”) is seeking a declaration against the defendants (“UCB”) that it is not obliged to continue to pay royalties under a patent licence. The licence relates to a portfolio of patents relating to products containing a humanised anit-IL-6 receptor antibody known as tocilizumab. From 12 January 2016, only one patent to which the licence applies is still in force, namely US 7,556,771 (“the 771 patent”. Chugai claims that its tocilizumab products fall outside the scope of the 771 patent. UCB argues that although the claim is framed as a declaration relating to contract, part of the proceedings concerns the scope and the validity of the 771 patent. This judgment relates to an application by UCB to strike out certain paragraphs of the Chugai statement of case because the English court had no jurisdiction over validity of a US patent. In the alternative, UCB applied for summary judgment in respect of these paragraphs. The underlying dispute relates to the interpretation of the scope of the claims of the 771 patent. As part of its line of argumentation of interpretation, Chugai relies on an argument based on United States principles of construction in relation to ambiguous claims. UCB sought to strike out the paragraphs relating to this argument and how they support Chugai’s construction. UCB argued that the statement of case of Chugai attempted to raise issues of validity of the 771 patent dressed up as a declaration about royalties. UCB’s position was that the English court cannot hear a dispute concerning validity

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

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of a foreign patent as it would constitute an affront to comity contrary to the Moçambique principle (British South Africa Co v Compania de Moçambique [1893] AC 602) and/or the foreign act of state doctrine. Chugai argued that the claims raised a contractual question which is justiciable and that it was no part of its contentions that the 771 patent was invalid. The judge first considered whether the argument was an attack on validity. He noted that not every infringement dispute is concerned with, or principally concerned with, a challenge to validity, such as where it related only to noninfringement. Carr J rejected UCB’s submission that Chugai was challenging the validity of the 771 patent. Further, he noted that the arguments advanced in the disputed paragraphs were incidental to the essential nature of the claim, which was directed towards determination of its royalty obligations. The judge then considered the interpretation of the licence. The judge noted that in the licence, the parties had agreed to submit generally to the exclusive jurisdiction of the English courts. A qualification of this related to a “valid claim”, which required a claim to be treated as valid if it had not been held to be invalid or unenforceable in a decision of a court of competent authority having jurisdiction over such patent. UCB argued that the provisions of licence made no difference as subject-matter jurisdiction could not be conferred by agreement between parties. As such, it was argued that issues of infringement and validity were inseparable, which would result in clauses in patent licences which gave exclusive jurisdiction in respect of infringement of foreign patents to the English court would be generally unenforceable. The judge was reluctant to reach such a conclusion. He considered that the terms of the licence were not immaterial on this point. The judge went on to consider the rule in Moçambique and its application to the present case, concluding that he did not consider that the court should decline jurisdiction in respect of the disputed paragraphs on that basis. Carr J also concluded that, for the same reasons, the court should not decline jurisdiction on the basis that it would be contrary to the doctrine of act of state. Therefore, the judge dismissed the application, considering that the English court has jurisdiction. However, the judge did consider briefly the question of whether a direct challenge to validity of a foreign patent was justiciable. He reached a provisional view that it should not be justiciable but noted that it was not necessary to reach a conclusion on this point.

PATENTS: UK • IPO

IPO decisions Patentability: section 1(2) Fisher-Rosemount Systems Inc. BL O/246/17 22 May 2017 The application related to a user display system for use in a process plant, in which the display system was configurable to allow an operator to select which aspects of the process plant were displayed, the system being reconfigurable during running of the plant. The examiner maintained that the invention was excluded from patentability as a combination of a program for a computer and the presentation of information. On construing the claim language, the hearing officer considered that the key feature of the invention was that some degree of control was effected over the associated process plant in response to data received by chosen gadgets on a dashboard display. This indicated a causal link between configuring the display and control of the process plant. The contribution made by the invention was therefore considered to relate to a process plant display and control system which provided a user configurable display, editable during runtime, wherein control of the process plant was dependent on process plant data received at user configured portions of the display. Regardless of whether control of the process plant was automatic or manual, the hearing officer considered that the contribution was not excluded because this indicated that the claimed technical effect had an effect on a process carried on outside the computer (according to the first signpost of AT&T/CVON). The application was remitted to the examiner for further processing and consideration.

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 Partial priority | Novelty | Inventive step | Insufficiency – articles 54(3), 56 and 100(b) EPC T 0260/14: Polyether-based preparations and use thereof / 3M Innovative Properties Company TBA decision of 13 April 2017 Chairman: J. Riolo Members: A. Usuelli and Y. Podbielski This was an appeal by the patentee and the opponent against the Opposition Division’s decision to maintain EP 2 046 262 in amended form. It is of note because it is believed to be the first case in which a Board has applied G1/15 relating to partial priority. The patent related to the provision of a dental impression material. The Opposition Division found that the patent was not entitled to its claimed priority date and therefore the priority document (which was published after the filing date of the patent) was prior art. The patentee’s third auxiliary request was held to meet the requirements of the EPC. On appeal, the patentee argued that claim 1 was entitled to partial priority based on a working example disclosed in the priority document and the patent. The Board applied the test from G1/15 by first determining the relevant part of the priority document, and then considering whether that subject-matter was encompassed by the patent claim, noting that the consideration did not depend on whether the subject-matter was expressly identified as a separate alternative in the claim. This could be determined by comparing the ambit of the claim with the content of the priory document. In this case the working example was held to be one specific embodiment of the claim and multiple alternative working examples would be possible. As such, the working example was held to be alternative subject-matter under a generic “OR”-claim which falls within the ambit of the patent in suit. Hence, the part of claim 1 which concerns the working example was entitled

PATENTS: EPO

to partial priority. As a result, the novelty attack under article 54(3) EPC did not succeed. The Board rejected the opponent’s argument that the questions in G1/15 did not apply to this case because the scope of the patent was more limited than the general disclosure in the priority document (rather than being wider than the specific embodiment disclosed in the priority document). In comparison with the priority document, claim 1 of the patent included a narrower range of molecular weights for the fluidity improver. The Board noted that the opponent may be questioning how partial priority should be assessed where the alternative subjectmatter in question was a sub-range within a broader range of the claim but the Board considered that this was not in issue in the instant case. In relation to inventive step the Board accepted the experiments submitted by the patentee showed an improvement over the prior art and therefore formulated the technical problem as providing a dental impression material in the form of two components which is easier to prepare and deliver from a dispenser. The prior art did not disclose that selecting copolymers of low molecular weight would be relevant for solving the technical problem so the patent did involve an inventive step under article 56 EPC. The Board also held that the patent satisfied article 100(b) EPC, rejecting the opponent’s argument that the skilled person would not be able to distinguish polymers useful as fluidity improvers from other substances such as surfactants which might optionally be present in the dental impression materials. There was sufficient guidance in the patent to allow the skilled person to select copolymers which were useful as fluidity improvers.

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 Amy Cullen and Alex May.

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Inventive step – article 56 EPC T 1570/13: polyolefin composition with improved impact properties / Braskem America, Inc. TBA decision of 23 March 2017 Chairman: D. Semino Members: M.C. Gordon and C. Brandt This decision dismissed the proprietor’s appeal against the Opposition Division’s revocation of EP 1 263 873, a patent that discloses an elastomeric polypropylene composition with improved impact and melt properties. The main request was a single claim to a composition comprising a coupled impact propylene copolymer formed by the reaction of a particular class of coupling agent with an impact propylene copolymer made up of a heterophasic in-reactor blend of a continuous propylene phase and a dispersed elastomeric phase. There were five auxiliary requests before the Board, each of which was only a single claim. The Opposition Division had previously decided that the closest prior art was a patent application (D4) that discloses a mechanically blended heterophasic polypropylene/ elastomer composition, which differed only from the claimed invention in that it was a mechanical blend rather than an in-reactor blend. However, a textbook (D7), to which D4 referred, taught the skilled person that use of an in-reactor blend would improve physical properties and melt uniformity. The claimed invention was therefore found obvious under article 56 EPC. On appeal, the proprietor argued that D7 rather than D4 was the closest prior art. The proprietor accepted that D7 discloses all features of the claimed invention except the use of a coupling reaction on the blend. Further to this, the proprietor submitted expert evidence to the effect that adding a coupling agent to an in-reactor blend resulted in a composition with unexpected advantages in terms of its impact and melt properties. The Board decided that D4 and D7 were equally suitable as closest prior art. Both documents address the same problem as EP 1 263 873 and each document omits one feature in comparison with the claimed invention; in D4, this was the use of in-reactor blends, and in D7, it was the use of a coupling agent. Consequently, the Board decided that where two equally relevant documents could be the closest prior art, the obviousness analysis must be carried out for each document. If the claimed invention is obvious based on one of these documents, it does not satisfy article 56 EPC, irrespective of whether it is inventive over the other document. Starting from D4, there was no evidence of any unexpected advantages when replacing a mechanical blend with an in-reactor blend, so the objective technical problem in light of D4 was to provide further thermoplastic Volume 46, number 7-8

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polyolefin compositions. This problem was solved by the use of an in-reactor blend, but that solution was obvious because D7 taught the skilled person to make that change. None of the auxiliary requests introduced any further distinguishing features over D4, so EP 1 263 873 was revoked.

Unified Patent Court – a new timetable? On 27 June 2017, the chair of the Preparatory Committee, Alexander Ramsay, made an announcement about the progress being made towards the start of the UPC. In Estonia the necessary laws have been passed towards formal ratification, and the UK government has laid the orders implementing the Protocol on Privileges and Immunities in Parliament, which signals a firm intent to ratify the UPC Agreement (UPCA). Three additional approvals of the Protocol on Provisional Application are necessary, including Germany’s. In Germany, further progress has been delayed as a result of a complaint that has been filed with the German Constitutional Court. It is presently not clear what the timetable in Germany is, but the Preparatory Committee is hopeful that the sunrise period can start in early 2018, which would mean that the UPC could open its doors mid-2018. Further information can be found on the UPC website https://www.unified-patent-court.org/ Pippa Allen (Fellow) Editor: There is also lots of interesting and hot debate on the subject in IPKat. Read the comments as well as the main note: http://ipkitten.blogspot.co.uk/2017/06/ update-former-constitutional-court.html

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TRADE MARKS

Trade marks Decisions of the GC Ref no.

Application (and where applicable, earlier mark)

GC T-681/15

Environmental Manufacturing LLP v EUIPO; Société Elmar Wolf 3 May 2017

– machines for professional and industrial processing of wood and green waste; professional and industrial wood chippers and shredders (7)

Reg 207/2009

– motor-driven lawnmovers; land cultivation implements; agricultural implements; instruments and accessories for the lawn, the garden, horticulture and land cultivation (7) (International registrations designating Spain and Portugal)

GC T-36/16

Enercon GmbH v EUIPO; Gamesa Eólica, SL 3 May 2017 Reg 207/2009 – wind energy converters, and parts thereof (7)

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Comment The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to article 8(1)(b). The figurative element in the earlier marks was dominant and the marks were held to be inherently distinctive. They had also acquired enhanced distinctive character through use. The GC endorsed the BoA’s decision that a phonetic comparison of the marks was not possible, as the mark applied for did not correspond to a specific word and may refer to a wolf, dog or other canine. Where a purely figurative mark represented a specific, concrete word, it was possible that the relevant public would use that word to refer to the mark. However, the various interpretations of the mark applied for prevented an assessment on this basis. The marks were visually similar to an average degree. Both marks included a figurative element of a canine with a menacing expression and were therefore conceptually similar to an average degree. Where consumers possessed a sufficient level of English, the conceptual similarity would be heightened as a result of the word element ‘WOLF’ and the figurative element of the mark applied for. Reporter’s note: readers will recognise these marks as the CJEU previously upheld the applicant’s appeal, setting aside the decision of the GC which upheld the decision of the BoA finding that the mark applied for might dilute the opponent’s mark under article 8(5) (C-383/12 P, December [2013] CIPA 746).

In invalidity proceedings, the GC upheld the BoA’s decision that the mark was devoid of distinctive character under articles 7(1)(b) and 52(1)(a). The BoA was correct to assess the mark as a colour mark, as clearly stated in the application. The scope of protection therefore only extended to the specific combination of colours at the bottom of the shape, but not the shape itself. The assessment of distinctive character was to be carried out by reference to the mark as filed, and not with reference to the category in which the relevant public may perceive the mark. The five shades of green and white were typically applied to wind energy converters and parts thereof and therefore exclusively conveyed a decorative element

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Ref no.

Application (and where applicable, earlier mark)

TRADE MARKS

Comment of those goods. The mark was not capable of indicating commercial origin. The fact that green was a natural colour which was commonly associated with ecological or environmentally friendly goods reinforced this conclusion. The presence of the colour white did not alter this assessment, given its neutral character. The GC held that in light of the high capital value of the goods, the relevant public (namely specialist business consumers who intended to resell or produce wind energy products) would not identify or purchase the goods by reference to decoration or external presentation, but would instead be guided by precise and accurate information regarding the origin of those goods. Reporter’s note: readers will recognise this mark. In T-24/12 (December [2013] CIPA 744), the GC annulled the BoA’s decision on the basis that it had wrongly considered it as a 2D figurative mark, not a colour mark.

CJ C-417/16 P

August Storck KG v EUIPO 4 May 2017 Reg 207/2009

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– confectionery, chocolate, chocolate products, pastries, ice-creams and preparations for making the aforementioned products (30)

The CJ upheld the GC’s decision that the mark was devoid of distinctive character pursuant to article 7(1)(b). In its decision (T-806/14, July [2016] CIPA 43), the GC had not erred in finding that the relevant public had a low level of attention and the mark consisted only of a combination of presentational features typical of packaging of the goods concerned. Relevant consumers were not accustomed to viewing this kind of mark as an indication of trade origin. The image affixed to the mark, in combination with the grey edges of the packaging, would be perceived by the relevant consumer as decorative, rather than an indication of origin. As such, the GC had not erred in assessing the distinctive character of the mark by reference to the criteria for three dimensional marks and was correct to find that these graphic elements were insufficient to confer distinctive character on the mark.

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Ref no.

GC T-262/16

Globo Media, SA v EUIPO; Globo Comunicação e Participações S/A 5 May 2017 Reg 207/2009

Application (and where applicable, earlier mark) GLOBO MEDIA

– advertisement services; publicity agencies; radio and television advertising; rental of advertising space; rental of advertising material; dissemination of advertisements (35) – broadcasting of radio and television programmes; radio broadcasting services; cable television broadcasting; satellite transmission; press information services; news agencies; telecommunications services (38) – production of radio and television programmes; (41)

– television production, television programmes, information programmes and info shows; entertainment; entertainment shows for television, including television series and programmes, particularly in the area of news, series, sports and variety shows (41)

TRADE MARKS

Comment

The GC upheld the BoA’s decision which refused the registration in relation to certain of the services in class 35 and all of the services in classes 38 and 41, on the basis of a likelihood of confusion with the earlier mark pursuant to article 8(1)(b). The assessment of the relevant public as the Portuguese general and professional public was not disputed and it was agreed that the services at issue were at least similar. The word elements were the dominant elements of the earlier mark as consumers would not refer to the mark by reference to its figurative elements, which were merely decorative or commonplace. ‘Portugal’ and ‘TV’ were descriptive of the services at issue such that the BoA correctly identified ‘globo’ as the distinctive element of the earlier mark. The mark applied for reproduced the word ‘globo’, which produced a medium degree of phonetic similarity, taking into account the high level of attention of the relevant public, who were likely to refer to the mark applied for as ‘Globo Media’ and in the earlier mark ‘Globo’ ignoring the descriptive words ‘TV’ and ‘Portugal’. The marks were visually similar to a low degree but shared high conceptual similarity on account of the shared element ‘globo’, the meaning of which was reinforced by the figurative element of the earlier mark.

(Portuguese 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: Paul Sweeden, Toby Sears, George Khouri, Archie Ahern, Sara Nielsen, Mark Livsey and Sam Triggs. 50 CIPA JOURNAL

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Ref no.

Application (and where applicable, earlier mark)

CJ C-437/15 P

EUIPO v Deluxe Entertainments Services Group Inc. 7 May 2017 Reg 207/2009

– motion picture and television films featuring various genres; digital media of various types listed featuring various genres (9) – services relating to advertising and business of audio-visual media (35) – services relating to rejuvenation of various audio-visual media (37) – services relating to transport, packaging and storage of various audio-visual media (39) – services relating to duplication and replication of various audio-visual media (40) – services relating to postproduction of various audio-visual media (41) – technology related services for various audio-visual medias (42) – services relating to the security of audio-visual media (45)

L’ECLAIREUR

– clothing, shoes, headgear (25) T-680/15

Les Éclaires GmbH v EUIPO; L’éclaireur International 8 May 2017 Reg 207/2009

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Comment

The CJ annulled the GC’s decision on a finding that the BoA was correct in refusing registration of the mark on the basis that it lacked distinctive character, pursuant to article 7(1)(b). The BoA had rejected the application in finding the 90 goods and services included in eight different classes had the common characteristic that they could be presented as having or providing “superior quality” thereby devoid of distinctive character under article 7(1)(b). The GC overturned the decision of the BoA in finding that, in the assessment of distinctive character, the BoA failed to indicate that there was a sufficiently direct and specific link between the goods and services to group them all within the same homogenous category. The CJ, however, annulled the GC’s decision on a finding it failed to take account of the specificity of the mark applied for, in particular, of its perception by the relevant public. The CJ held that the GC failed to have regard to the possibility that, despite their differences, all the goods and services at issue could have a common characteristic, which could justify their placement within a single homogenous group. The CJ set aside the decision and referred the case back to the GC.

The GC upheld the BoA’s decision which refused to revoke the mark in its entirety, pursuant to article 51(1)(a). The BoA partially annulled the decision of the Cancellation Division and held that proof of genuine use had been established in respect of clothing and shoes in class 25. Although the evidence of use did not conclusively show that a significant volume of goods had been sold to consumers, the goods to which the mark was applied were high-end luxury fashion products. In this context, the use which had been demonstrated was sufficient to establish genuine commercial activity under the mark during the relevant period. The mark had been used publicly and outwardly as a result of the collaboration with fashion designers, fashion labels and professionals well known in the field of art and design, and such use was sufficient to enable the relevant consumers to create a link between the mark and the goods at issue.

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Application (and where applicable, earlier mark)

Ref no. CJ C-421/15

Yoshida Metal Industry Co Ltd (Yoshida) v EUIPO; Pi-Design AG, Bodum France SAS, Bodum Logistics A/S 11 May 2017 Reg 207/2009

– cutlery, scissors, knives, forks, spoons, whetstones, whetstone holders, knife steels, fish bone tweezers (8) – household or kitchen utensils and containers (not of precious metal or coated therewith), turners, spatulas for kitchen use, knife blocks for holding knives, tart scoops, pie scoops (21)

GC T-107/16

Airhole Facemasks, Inc. v EUIPO; sindustrysurf, SL 16 May 2017 Reg 207/2009

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– thermal clothing (25) – games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees (28)

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Comment

In invalidity proceedings, the CJ upheld the GC’s decision that the registrations were invalid pursuant to articles 52(1) (a) and 7(1)(e)(ii). The CJ held that the GC had not erred its conclusions regarding the essential characteristics of the marks (representations of knife handles), nor had it distorted any of the facts presented to it within that assessment. A fresh assessment of the relevant facts was outside the jurisdiction of the CJ. The CJ endorsed the GC’s finding that article 7(1)(e) (ii) applied where all the essential characteristics of a mark perform a technical function, even where that mark had ornamental or decorative elements, which did not play an important role in the shape of the goods. The CJ noted that acquired distinctive character would not preclude the application of article 7(1)(e)(ii) where the mark consisted exclusively of a shape that was necessary to obtain a technical result. Reporter’s note: this is the second time the CJEU has considered these marks. In the first, the Court set aside the GC’s decisions to invalidate the marks and had referred them back to the GC for reconsideration (joined cases C-337/12 and others, reported in April [2004] CIPA 239).

The GC annulled the BoA’s decision and held that the registration was invalid on the grounds of bad faith, pursuant to article 52(1)(b). The BoA erred in finding that sindustrysurf ’s behaviour at the time of the application did not indicate that it had acted in bad faith. The GC took into account the evidence that the mark had been registered by sindustrysurf as a distributor, on instruction from its supplier, Airhole Facemasks. However, contrary to the agreement between the parties sindustrysurf registered the mark in its own name and not that of Airhole Facemasks and therefore lacked the requisite consent to register the mark. The GC held that the ‘commercial logic’ underlying the application for the mark and the earlier chronology of events indicated that Airhole Facemasks intended to extend the protection of its mark to the EU. Factual evidence regarding sindustrysurf ’s intention to usurp Airhole Facemasks’ rights was also taken into account. Sindustrysurf therefore had no lawful reason to register the mark on its own behalf and the application had, as a result, been filed in bad faith.

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Ref no. GC T-375/16

Sabre GLBL Inc v EUIPO 18 May 2017 Reg 207/2009

Application (and where applicable, earlier mark) INSTASITE

– computer software, in particular for design, development, testing, installation, maintenance, updating, hosting and customisation of websites (9) – advertising services; search engine optimisation of websites for advertising and marketing purposes; business information services; business administration services; business consulting services; storage, organisation, administration, maintenance and searching of data in computer databases; information and consultancy regarding the aforementioned services (35) – design, development, testing, installation, maintenance, updating, hosting and customisation of websites for third parties; website design and development for others; website design consultancy (42)

GC T-107/16

Airhole Facemasks, Inc. v EUIPO; sindustrysurf, SL 16 May 2017 Reg 207/2009

Goods and services in classes 9, 16, 25, 28, 35, 37, 38, 41, 42, 43, 45, including photographic equipment, printed matter, clothing, games, advertising, telecommunications, education and entertainment OUTDOOR PRO

Goods and services in classes 9, 12, 14, 18, 22, 24, 25, 28 and 35

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The GC upheld the BoA’s decision that the mark applied for was descriptive and devoid of distinctive character pursuant to article 7(1)(b) and (c). Both elements of the mark, ‘INSTA’ and ‘SITE’ had ordinary and obvious meanings defined within the English dictionary: ‘INSTA’ indicated ‘instant’ and, in the context of the goods and services at issue, ‘SITE’ would be understood as referring to ‘website’. The fact that the neologism did not appear in the English Dictionary itself did not preclude a finding of descriptiveness where there was no unusual variation of syntax or meaning used to distinguish the combination of descriptive words. Given the complex nature of the goods and services at issue which were aimed at the professional public, as well as the public at large, there would be a higher than average level of attention at the time of purchase, particularly as the idea of creating websites ‘instantly’ was identified as a wellestablished and widespread concept. The relevant consumer was likely to understand INSTASITE as an informative term or an advertising slogan which indicated the nature of the goods and services at issue without further reflection, and would not therefore be perceived as an indication of origin.

The GC upheld the BoA’s decision refusing registration of the mark applied for all goods and services (save for certain services within class 41) on the basis of a likelihood of confusion, pursuant to article 8(1)(b). The GC confirmed that there was no requirement for the BoA to have considered the validity of the mark in opposition proceedings and endorsed the BoA’s finding that the earlier mark had distinctive character for at least a part of the relevant public of the EU. The marks were visually similar, on account of the shared word OUTDOOR, which was the entire word element of the mark applied for. The graphic representation of the mark would not alter this assessment of similarity. In the assessment of phonetic similarity, the ‘pro’ element of the earlier mark was considered to be weak, so the marks were highly similar in this regard. To the English-speaking public, the marks were conceptually similar. The GC upheld the BoA’s decision that, save for certain class 41 services relating to film and radio broadcasts, the goods and services at issue were identical or similar and a likelihood of confusion existed as a result.

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Application of the lis pendens rule Merck KGaA v Merck & Co. Inc. and ots Opinion of A-G Szpunar; C-231/16; 3 May 2017 A-G Szpunar opined on the interpretation of the lis pendens rule contained in article 109(1) of Regulation 207/2009. The key issue related to the application of this rule where the court first seised was hearing infringement proceedings based on national trade mark registrations within a Member State, while the second court seised was an EU trade mark court with jurisdiction in respect of the entire EU. The A-G considered that, where the proceedings coincide only to the extent that they concern the territory of that Member State, the EU court should decline jurisdiction as regards the part of the action relating to that particular Member State’s territory. Background Merck KGaA brought infringement proceedings against the defendants before an EU trade mark court in Germany and, at the time proceedings were issued, a separate action was already pending between the same parties (save for one of the defendants) before the High Court of England and Wales. The parallel proceedings comprised, amongst other issues, an action for infringement based on the use of ‘Merck’ on the Internet. Merck KGaA was the proprietor of several UK and EU trade mark registrations, including a EUTM for the word mark ‘Merck’ registered in respect of goods in classes 5, 9 and 16 and services in class 42. The defendants belonged to the corporate group headed by Merck & Co., Inc. based in New Jersey, USA, one of the world’s largest pharmaceutical companies, which had grown out of a former American subsidiary of the original German group, Merck. Several coexistence agreements were entered into between the German group and the American group regarding use of various marks and names including or comprising the word Merck. Merck & Co. Inc.’s group operated several Internet sites using ‘Merck’ and the content of those sites was accessible in the same form throughout the world, including the EU. Members of the group had also established an Internet presence on Facebook, Twitter and YouTube. In March 2013, Merck KGaA brought an action in the UK against the first two defendants in the main proceedings, as well as three other companies belonging to the same group, alleging a breach of a coexistence agreement and infringement of national UK registrations and international registrations designating the UK as a result of the use of ‘Merck’ by the defendants on the Internet. Merck KGaA also brought an action for infringement before the Regional Court of Hamburg, against the defendants in the main proceedings, based on the EU trade mark registration for Merck and the use of ‘Merck’ on their Internet sites and on Facebook, Twitter and YouTube. Merck KGaA subsequently withdrew its action in Hamburg in so far as it related to the UK. The defendants argue that the 54 CIPA JOURNAL

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action in Hamburg was inadmissible having regard to article 109(1), at least in so far as it concerned the plea, which alleged that the EU trade mark had been infringed in the entire EU. The partial withdrawal was said to be irrelevant in this regard. The referring court considered that the two actions at issue were the same and that the wording of that provision did not enable it to decline jurisdiction in part, in relation to one Member State only. A-G Szpunar applied the established three-fold test for interpreting the lis pendens rule, namely that (1) the parties, (2) the cause of action, and (3) the object of the actions, must all be the same. Were the actions between the same parties? The action before the Hamburg Regional Court named a defendant that was not a defendant in the action before the main proceedings in the UK. The A-G therefore considered whether the actions were in fact between the same parties. The general principle was that parties must be the same persons but, in exceptional circumstances, the requirement may be satisfied even if the parties to the parallel proceedings were different. In relation to the subject-matter of the proceedings, it was conceivable for the interests of the two parties to be regarded as identical for the purposes of the lis pendens rule. A-G Szpunar opined that such exceptional circumstances existed in this case: within a group of companies, control of IP rights, including trade mark rights, must be given to one of the legal persons, often the parent company, even though, in practice, the signs may be used in the same way by all group companies. In such circumstances, the interests of the companies concerned exhibited such unity that those companies could be regarded as being one and the same party for the purposes of avoiding contradictory judgments. Were actions for infringement the same? A-G Szpunar opined that the principles of article 109(1) must be the same as those of article 27 of the Brussels I Regulation. By applying case law relating to article 27, he found that in order for the actions to be the same, they must have the same cause of action, consisting of the same factual and legal basis, and the same object, meaning the end that each action has in view. Although both actions in the present case seek to prohibit the same sign, the territorial effect of the prohibitions and the scope of allegations of infringement in the two actions overlapped only in part, to the extent that they relate to the territory in which the national mark is protected (i.e. the UK). Declining jurisdiction In light of the above, A-G Szpunar opined that the lis pendens rule contained in article 109(1) should be interpreted as meaning that, where parallel actions are brought on the basis of a national mark and an EU trade mark, and these actions www.cipa.org.uk

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overlap in part – to the extent that they relate to the territory of the national mark – the EU trade mark court, where it is the second court seised, must decline jurisdiction with respect to the part of the action concerning the territory common to both actions (but that the second court seised could allow the action before it to continue as regards the remaining territory of the EU).

Concept of genuine use and interpretation of class headings Opinion of Advocate General Wahl; C-501/15; 17 May 2017 A-G Wahl has opined on two issues relating to the concept of genuine use. Firstly, A-G Wahl considered whether use of the pictorial element of a figurative mark that also comprised a word element could constitute genuine use of that mark as a whole. Secondly, the A-G opined on whether retail services relating to goods falling within a particular class were covered by a registration that included the class heading only within its specification. In opposition proceedings, Cactus relied on a figurative mark consisting of the word CACTUS and a figurative element. The registration pre-dated the CJ’s decision in IP Translator (C-307/10, reported in July [2012] CIPA 413) and the class 35 specification covered only the general class headings. The GC had upheld the opposition in relation to specific goods and retail services in relation to those goods. On appeal, the EUIPO submitted that the GC had incorrectly attributed the class heading to all services within class 35. The EUIPO further submitted that the GC had incorrectly found that the use of the figurative element of the mark alone (without the word element) did not alter the distinctive character of the mark for the purpose of proving genuine use. How is the distinctiveness of a trade mark to be assessed where that trade mark is employed in abbreviated form? The A-G opined that, despite the GC failing to declare its intention to conduct a global assessment of equivalence, it was clear from the decision that it had properly carried out this assessment. A comparison of the mark as used (a stylised cactus) was made against the mark as registered (a stylised cactus and the word element) and on this basis the GC concluded that the two marks were essentially equivalent. As the elements in question were conceptually equivalent, the distinctive character of the word element CACTUS could not be different from that conveyed by the figurative element. A separate examination of the distinctiveness of the word element was not necessary. The GC was therefore right to find that the use of the stylised cactus alone without the word element did not alter the distinctive character of the earlier figurative mark for the purpose of proving genuine use.

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Can a trade mark cover retail services even if those services are not mentioned in the alphabetical list of class 35 of the Nice Classification? In relation to this question, the A-G agreed with the approach taken by the GC. The A-G considered that it would be inconsistent to accept the application of the CJ’s statement in Praktiker (C-418/02, reported in July [2005] CIPA 476) but not that in IP Translator in relation to trade marks that had already been registered prior to the dates of those judgments (such as the figurative trade mark at issue) as both of those judgments concerned trade mark applications. As the issue before the CJ related to the scope of protection afforded by a registered trade mark, the A-G was of the opinion that the judgments in both Praktiker and IP Translator did not apply. The A-G therefore considered that the GC was correct to find that specification for the class 35 class heading was sufficient to cover all the services within that class, including retail services of the relevant goods.

Court of Appeal confirms Kit Kat shape mark has no acquired distinctiveness Société des Produits Nestlé SA v Cadbury UK Ltd* The Chancellor of the High Court, Kitchin and Floyd LJJ; [2017] EWCA Civ 358; 17 May 2017 The CA dismissed Nestlé’s appeal from a decision of Arnold J in which he dismissed Nestlé’s appeal from a decision of the hearing officer with whom he agreed that the shape of Nestlé’s four-finger KIT KAT product had not acquired a distinctive character and was therefore not registrable as a UK trade mark ([2016] EWHC 50 (Ch), reported in March [2016] CIPA 62). Nestlé applied to register the following three-dimensional sign as a UK trade mark in respect of various goods in class 30:

The mark corresponded to the shape of Nestlé’s four-finger KIT KAT product except that it lacked the KIT KAT logo embossed onto each of the fingers of the actual product. The application was opposed by Cadbury on various grounds, in particular that registration should be refused under section 3(1)(b), in response to which Nestlé relied upon the proviso to that provision. The hearing officer found that the mark was devoid of inherent distinctive character and had not acquired a distinctive character in relation to the majority of goods covered by the application. Following a preliminary reference by Arnold J, the CJ concluded that in order to register a trade mark which had acquired a distinctive character within the meaning of article JULY-AUGUST 2017

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3(3), the applicant must prove that the relevant class of persons perceived the goods designated exclusively by that mark, as opposed to any other mark, which might also be present, as originating from a particular company. When the case returned to the High Court, Arnold J held that the hearing officer had not erred because survey evidence adduced by Nestlé merely showed that consumers merely recognised the mark and associated it with KIT KAT products. That a majority of those surveyed were able to name KIT KAT did not prove that they perceived the mark as exclusively designating the trade origin of such products. Kitchin LJ said that there was an important distinction between, on the one hand, such recognition and association and, on the other hand, a perception that the goods designated by the mark originated from a particular undertaking. Products in a shape with no inherent distinctiveness, but which had become very well-known, sold on a very large scale under and by reference to a brand name, which was inherently highly distinctive, did not necessarily mean that the public had come to perceive the shape as a badge of origin such that they would rely upon it alone to identify the product as coming from a particular source. They might simply regard the shape as a characteristic of products of that kind or they might find it brought to mind the product and brand name with which they had become familiar. This kind of recognition and association did not amount to distinctiveness for trade mark purposes, as the CJEU had confirmed in its decision in this case. If a third party were to use that same shape for the same product, the proprietor would not need to show a likelihood of confusion about the origin of the product for, subject to certain defences, a likelihood of confusion would be presumed. But if consumers did not perceive the shape as denoting the origin of the product, no one would actually be confused and the protection afforded by the registration would not be justified. Although the CJEU had not used the term “reliance” in giving its guidance, Kitchin LJ agreed with Arnold J that it was legitimate for a tribunal, when assessing whether the applicant had proved that a significant proportion of the relevant class of persons perceives the relevant goods or services as originating from a particular undertaking because of the sign in question, to consider whether such person would rely upon the sign as denoting the origin of the goods or services if it were used on its own. Agreeing with Kitchin LJ, Floyd LJ added that he had found it helpful to have in mind a basket of unwrapped and otherwise unmarked chocolate bars in the shape of the mark applied for available for selection in a shop; for there to be acquired distinctiveness, the consumer must perceive them as being Kit Kats or as originating from the people who made Kit Kat, and not from others. A perception that they looked like Kit Kats was not enough. He added that it was not a precondition that consumers should have come to rely on the shape an indicator of trade origin. The ultimate question was whether the mark, used on its own, had acquired the ability to demonstrate exclusive origin, although it would be unwise to 56 CIPA JOURNAL

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attempt a list of the ways in which this could be demonstrated. Sir Geoffrey Voss, Chancellor of the High Court, agreed with the judgments of both Kitchin and Floyd LJJ and Nestlé’s appeal was dismissed.

Court of Appeal confirm invalidity of colour mark Glaxo Wellcome UK Ltd (t/a Allen & Hanburys) & Anr v Sandoz Ltd* The Chancellor of the High Court, Kitchin and Floyd LJJ; [2017] EWCA Civ 335; 10 May 2017 The CA (Kitchin LJ giving the lead judgment) dismissed Glaxo’s appeal from Judge Hacon’s decision that its trade mark was invalid because it did not satisfy the requirements of article 4 ([2016] EWHC 1537 (Ch), reported in August-September [2016] CIPA 43). Glaxo’s EU trade mark was registered in class 10 in respect of inhalers with the following visual representation (a photograph of an inhaler):

The trade mark also had the following description: “The trade mark consists of the colour dark purple (Pantone code 2587C) applied to a significant proportion of an inhaler, and the colour light purple (Pantone code 2567C) applied to the remainder of the inhaler.” The trade mark had an INID code (code 558) applied to its certificate of registration. This code designated it as a “Mark consisting exclusively of one or several colours”. Glaxo brought a claim for trade mark infringement against Sandoz and Sandoz counterclaimed for revocation of Glaxo’s mark. Sandoz applied for summary judgment. Judge Hacon held that Glaxo’s mark was invalid, as it was not sufficiently precise and uniform, nor was it sufficiently clear and unambiguous. Glaxo appealed. Central to its appeal was its submission that the EUTMR rules suggested that for marks such as Glaxo’s EUTM, the pictorial representation was paramount and the verbal description was secondary. This was on the basis that rule 3(2) made a pictorial representation mandatory whereas rule 3(3) stated that the application “may” contain a description of the mark, making the provision of a verbal description optional. Kitchin LJ said as follows: 1. The starting point was article 4 which provided that a trade mark may consist of any sign capable of being represented www.cipa.org.uk

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graphically and which was capable of distinguishing the goods and services of one undertaking from those of another. Its graphical representation had to be such that the authorities and the public could identify the sign clearly and precisely. 2. The graphical representation encompassed not just the pictorial representation of the sign but also any description which accompanied it. 3. No suggestion could be discerned from the CJEU jurisprudence that the pictorial representation was paramount and the verbal description was secondary; to the contrary, the CJEU had focussed in its judgments on the graphical representation as a whole. 4. The Rules did not support Glaxo’s position. The permissive language in Rule 3(3) catered for applications (for example, some figurative marks) which did not require any description to render them clear and precise. It could not be inferred from this that the guidance given by the CJEU as to what was needed to satisfy the requirements of article 4 should in any way be qualified where the application was to register one or more colours per se. 5. An argument advanced by Glaxo which was based on a previous version of the Guidelines for examination of EU trade marks issued by the EUIPO around the time that the application for its trade mark was filed had to be rejected, not least because such Guidelines were not authoritative and had no legislative force. 6. Glaxo could not rely on what it described as common practice filing. Firstly, common practice could not be a proper basis for interpreting the EUTMR and, secondly, the evidence simply did not establish that there was any common practice of the EUIPO to consider a mark for one or more colours per se as being defined by the pictorial representation which showed how the colour(s) were to be applied in relation to the goods for which it was registered. Kitchin LJ went on to agree with Judge Hacon’s description of the differences between the INID code, the visual representation, and the description as setting a “puzzle” for the reader as to the correct interpretation of the mark. As there were at least three possible interpretations of the mark, it was clear that it lacked the clarity, intelligibility, precision, specificity, and accessibility that the law demanded, and also offended against the principle of fairness because the uncertainty gave Glaxo an unfair competitive advantage. Finally, observing that the issues in the present case were different to that in a case pending before the General Court (Case R 2037/2013-1 Red Bull gMBh V Optimum Mark Sp. Z.o.o.) the appeal was dismissed. Volume 46, number 7-8

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PASSING OFF CA allows appeal on question of joint tortfeasorhip Glaxo Wellcome UK Ltd (t/a Allen & Hanburys) & Anr v Sandoz Ltd (“Sandoz UK”) & Anr* Floyd & Moylan LJJ & Sir Timothy Lloyd; [2017] EWCA Civ 227; 6 April 2017 The CA (Sir Timothy Lloyd giving the lead judgment) allowed Glaxo’s appeal from a decision of Judge Hacon ([2017] EWCA Civ 227, reported in December [2016] CIPA 44), ordering that two of Sandoz UK’s group companies, Aeropharm and Hexal, be added as defendants to Glaxo’s passing off claim against Sandoz UK. Glaxo brought a claim for trade mark infringement and passing off against Sandoz UK relating to the latter’s AirFluSal inhaler. The trade mark part of the claim was stayed pending an appeal (reported above) but the passing off claim continued. Glaxo claimed that the AirFluSal inhaler passed off its Accuhaler, each of which is shown below:

The Accuhaler and AirFluSal inhaler and packaging

Glaxo applied to join three further members of the Sandoz group in the proceedings: Sandoz International GmbH, Aeropharm GmbH, and Hexal AG. The first was joined by consent and therefore Judge Hacon was only concerned with Aeropharm and Hexal. He refused Glaxo’s application to join Aeropharm and Hexal as defendants because: (1) there was no sufficient allegation of a common design against either of them to provide a sufficiently arguable case of their being liable as joint tortfeasors with Sandoz UK; and (2) even if there had been such an allegation, the claim against them would have been barred by limitation because the acts relied on were done more than six years before the issue of proceedings. JULY-AUGUST 2017

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Joint tortfeasance Judge Hacon found that Aeropharm and Hexal had, between them, facilitated the sale and promotion of AirFluSal products in England by: 1. contributing to the design of the AirFluSal inhaler and its packaging, 2. obtaining marketing authorisation in the UK through data collection, and 3. carrying out trials as part of an EU-wide programme. However, he found that the part they played did no more than facilitate the sale and promotion of AirFluSal on the UK market and did not amount to active cooperation in that sale or promotion. Referring to the Supreme Court’s decision in Fish & Fish v Sea Shepherd ([2015] UKSC 10), the CA was of the view that Glaxo’s allegation that the design work was carried out by Aeropharm and Hexal with the intention that the product be sold in the EU including the UK was sufficient to make out an arguable case that they were party to a common design and a combination with a view to the resulting product being sold in the UK. Despite the fact that Sandoz UK was not involved in decisions about the design and get-up, it was the entity through which the act was carried out which was the subject of the combination and common design by Sandoz International, Aeropharm and Hexal, namely marketing in the UK. It could not be that, because Sandoz UK was only involved at a later stage once the work carried out by Aeropharm and Hexal was complete, they had not been in a combination with Sandoz UK intending that the acts should be done in the UK which amounted to passing off – if that were so, then careful use of a fragmented corporate structure might enable a group to limit the exposure of some relevant member entities to liability on the basis of joint tortfeasance. Therefore, the CA concluded that Judge Hacon fell into error in not finding that there was an adequate allegation of combination and common design, pursuant to which acts were committed by Sandoz UK which, on Glaxo’s case, amounted to passing off. Limitation Contrary to Judge Hacon’s finding, the CA held that limitation provided no justification for refusing to join Aeropharm and Hexal as additional defendants. Although Glaxo’s case was based at least in part on acts done more than six years before the commencement of proceedings, it was clear from Fish that the accessory was not liable for its acts of assistance but for the primary tortfeasor’s act. Therefore, no cause of action accrued against Aeropharm or Hexal until Sandoz UK started placing the product on the UK market. The appeal was allowed and the case remitted to the High Court for consequential case management directions. 58 CIPA JOURNAL

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COPYRIGHT Communication to the public covers sale of a multimedia player with pre-loaded links to unauthorised content Stichting Brein v Jack Frederik Wullems CJ; Second Chamber; C-527/15; 26 April 2017 Following a referral from the District Court, Central Netherlands, the GC held that: 1. The concept of “communication to the public”, within the meaning of article 3(1) of Directive 2001/29/EC (the Copyright Directive), must be interpreted as covering the sale of a multimedia player, such as that at issue in the main proceedings, on which there were pre-installed add-ons, available on the Internet, containing hyperlinks to websites — that were freely accessible to the public — on which copyright-protected works had been made available to the public without the consent of the right holders; and 2. Article 5(1) and 5(5) of Directive 2001/29 must be interpreted as meaning that acts of temporary reproduction, on a multimedia player, such as that at issue in the main proceedings, of a copyright-protected work obtained by streaming from a third party website offering that work without the consent of the copyright holder did not satisfy the conditions set out in those provisions. The CJ considered four questions referred to it: 1. Must article 3(1) of the Copyright Directive be interpreted as meaning that there was “a communication to the public” within the meaning of that provision, when someone sold a product (multimedia player) in which he had installed addons containing hyperlinks to websites on which copyrightprotected works, such as films, series and live broadcasts were made directly accessible, without the authorisation of the right holders? 2. Does it make any difference whether the: a. copyright-protected works as a whole had not previously been published on the Internet or had been published through subscriptions with the authorisation of the right holder; b. add-ons containing hyperlinks to websites on which copyright-protected works made directly accessible without the authorisation of the right holders were freely available and could also be installed in the multimedia player by the users themselves; or c. websites, and thus the copyright-protected works made www.cipa.org.uk

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accessible thereon, without the authorisation of the rights-holders, could also be accessed by the public without the multimedia player? 3. Should article 5 be interpreted as meaning that there was no “lawful use” within the meaning of article 5(1)(b) if a temporary reproduction was made by an end user during the streaming of a copyright-protected work from a thirdparty website where that copyright-protected work was offered without the authorisation of the right holder(s)? 4. If the third question was answered in the negative, was the making of a temporary reproduction by an end user during the streaming of a copyright-protected work from a website where that copyright-protected work was offered without the authorisation of the right holder(s) then contrary to the “three-step test” referred to in article 5(5)? The CJ also considered the opinion of A-G Campos SánchezBordona who considered that the sale of media players incorporating hyperlinks to unauthorised content infringed the copyright in that content. Act of communication Addressing questions 1 and 2 together, the CJ considered whether the sale of the multimedia player was an act of communication. The CJ noted that the author’s right of communication to the public, provided for under article 3(1), covered any transmission or retransmission of a work to the public by wire or wireless means, including broadcasting. Furthermore, for there to be an “act of communication”, it was sufficient, in particular, that a work was made available to a public in such a way that the persons forming that public may access it, irrespective of whether they avail themselves of that opportunity – Svensson and Others, Case C-466/12, reported in March [2014] CIPA 184. The CJ had already held, in that regard, that the provision, on a website, of clickable links to protected works published without any access restrictions on another site, afforded users of the first site direct access to those works and that this was also the case for the sale of a multimedia player – Svensson and Others, Case C-466/12, reported in March [2014] CIPA 184; BestWater International, Case C-348/13; and GS Media, case-160/15, reported in November [2016] CIPA 66. Although the mere provision of physical facilities for enabling or making a communication did not in itself amount to communication within the meaning of the Copyright Directive, the Court nevertheless held, as regards the provision of television sets in hotel rooms, that while the “mere provision of physical facilities” does not as such amount to a communication to the public, that facility may make public access to broadcast works technically possible. Therefore, if, by means of television sets, the hotel distributed the signal to customers staying in its rooms, a Volume 46, number 7-8

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communication to the public took place irrespective of the technique used to transmit the signal – SGAE, Case C-306/05, reported in January [2007] CIPA 38. The present case did not concern the “mere” provision of physical facilities: the defendant, with full knowledge of the consequences of his conduct, pre-installed onto the multimedia player add-ons that specifically enabled purchasers to have access to protected works published — without the consent of the copyright holders of those works — on streaming websites and enabled those purchasers to watch those works on their television screens. The defendant’s “intervention” enabled a direct link to be established between websites broadcasting counterfeit works and purchasers of the multimedia player, without which the purchasers would find it difficult to benefit from those protected works. It was clear from the evidence submitted that the streaming websites at issue were not readily identifiable by the public and the majority changed frequently. Communication to a “new public” The multimedia player had been purchased by a fairly large number of people and the communication covered all persons who could potentially acquire the media player and had an Internet connection. Those people might access the protected works at the same time, in the context of the streaming of the works on the Internet. Thus, the communication was aimed at an indeterminate number of potential recipients and involved a large number of persons (ITV Broadcasting and Others, Case C-607/11, reported in April [2013] CIPA 214). The CJ then considered whether the communication was to a “new” public, in particular in relation to the posting of hyperlinks and the importance of obtaining the consent of the holder of the copyright in protected works that have been made freely available on a website, having regard to article 3(1) of Directive 2001/29, which specifically provides that every act of communication of a work to the public must be authorised by the copyright holder. It was common ground that the sale of the multimedia player was made in the full knowledge that the add-ons gave access to works published illegally on the Internet and the player was advertised for that purpose. It was not disputed that the multimedia player was supplied with a view to making a profit and, therefore, it could be expected that the person posting such hyperlink add-ons carried out the necessary checks to ensure that the work concerned was not illegally published on the website to which those hyperlinks led. It was therefore to be presumed that the posting had occurred with the full knowledge of the protected nature of that work and the possible lack of consent to publication on the Internet by the copyright holder. Act of temporary reproduction The CJ answered the third and fourth questions together and in light of relevant case law – Infopaq International, Cases C-5/08 and C-302/10, Football Association Premier JULY-AUGUST 2017

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DECISIONS

League and Others, Cases C-403/08 and C-429/08, and Public Relations Consultants Association, Case C-360/13, reported in August [2009] CIPA 569, December [2011] CIPA 789, and July [2014] CIPA 428 respectively. Having particular regard to the content of the advertising and the fact that the preinstallation of the add-ons was a major attraction to potential purchasers, it was held that the purchaser accessed free and unauthorised offers of protected works deliberately and in full knowledge of the circumstances. It was also held that, as a rule, temporary acts of reproduction such as these would adversely affect the normal exploitation of those works and caused unreasonable prejudice to the legitimate interests of the right holder, resulting from the reduction in lawful transactions relating to the protected works. It therefore followed, that those acts of temporary reproduction did not satisfy the conditions set out in article 5(1) and (5).

Former student’s claim against university struck out Yu-Ting Cleeves v The Chancellor, Masters and Scholars of the University of Oxford* Whipple J; [2017] EWHC 702 (QB); 5 April 2017 Whipple J struck out Ms Cleeves’ claim, which included an allegation that the University of Oxford had infringed the

copyright in a research paper she had produced during her studies there, on grounds of abuse of process. The Judge was of the view that Ms Cleeves (a litigant in person and former student at the University of Oxford) had failed to set out the basis of her case in her Particulars of Claim; namely (i) the parts of her research paper which she claimed had been copied and unlawfully reproduced by the university in eight later publications, and (ii) the reasons why she rejected the outcome of an investigation carried out by the university, which had concluded that hers was not an original interpretation of the work and significance of the Chinese poet she had studied, but reflected a general view found in the work of other academic commentators. This latter point was critical in the Judge’s opinion because, if Ms Cleeves’ research was not original, then there was no reason for her or the Court to infer that the eight publications in question drew on her work at all, with the result that she would have no case. The Judge went on to strike out Ms Cleeves’ claim on grounds that it was abusive in nature and/or otherwise likely to obstruct the just disposal of the proceedings, and had no real prospect of success. The fact that Ms Cleeves was seeking to use the Court process to accuse institutions and individuals of dishonesty where there was no evidence to support such accusations and the unreasonable way in which she had conducted the litigation to date were further considerations which led the Judge to conclude that the case was abusive.

Study Guide to the Patents Acts Doug Ealey (2017); £55 / £45 members +PP for outside the UK

Doug Ealey’s Study Guide to the Patents Acts sets out to achieve the opposite of such books as Visser and Hoekstra. Rather than provide exhaustive commentary on patent law for reference during the open book EQEs, it instead simplifies the law and commentary as far as possible to provide a barebones reference that can be readily learnt by students taking the closed-book UK finals. This book is designed to help prepare for the PEB FD1 (formerly P2) examination. The 2017 edition has been updated to incorporate recent changes in law and to revise the guidance on taking the exam. To order a copy please email publications@cipa.org.uk or visit www.cipa.org.uk/eshop/ To find out more on the FD1 / P2 Study Guide group on LinkedIn go to: https://www.linkedin.com/grp/home?gid=4425194.

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STUDY GUIDE TO THE PATENTS ACTS Doug Ealey

9th Edition

www.cipa.org.uk

05/07/2017 13:00:47

GOING REMOTE

PERSONAL

Going . . . e ot Rem

Medellín, Colombia

hey don’t call Medellín the City of Eternal Spring for nothing – although, paradoxically, it hasn’t always been that way. You see, between you and me, it doesn’t seem to have much to do with the weather – think steamy, tropical thunderstorms rather than delicate April showers. Spring, however, is also the season of new beginnings, and Medellín’s story of rebirth and transformation over the past 15 years or so is nothing short of miraculous. Once a hub of cocaine-fuelled crime, and ruled over with an iron fist (plus an arsenal of weapons) by Pablo Escobar – he of Narcos notoriety – now Colombia’s second city is a vibrant, cosmopolitan place with a real sense of restored pride. As is often the case, we were based in one of the nicest areas of the city – here, the leafy and coffee shop filled area of El Poblado, where you're tripping over expats – so it’s important to acknowledge that not the whole of Medellín is like this. Every city in the world has problem areas. But Medellín has taken more active steps than most to redress this over the last couple of decades. The city (well – half city, half jungle to be more accurate) sits in a deep valley, surrounded by steep mountains on both sides. Looking out from a rooftop, it appears as if the scenery is rising up to meet you, carrying the clouds along on top. As beautiful as they look, though, it’s generally these mountain-side communities which are the most vulnerable. Right out on the edge of the city, ramshackle settlements were set up spontaneously in the mid-1900s by families escaping violence in their home villages. Isolated, and with little in the way of income, displaced communities like these were easy targets for guerrilla groups – and the likes of Escobar – to take over. Comuna 13, perched high up in the hills of the west of the city, was once one of the most notorious neighbourhoods here – which in what was also the murder capital of the world is not to be sneezed at. An overpopulated shanty town located right next to a major highway (and popular

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By Heather Lane (Fellow)

trafficking route), in the 1980s and 1990s the area was under the control of guerrillas loyal to Escobar and, even after his death in 1993, continued to suffer sky-high crime rates as rival gangs fought to be in charge. Today – whilst by no means a fait accompli – it is a colourful residential neighbourhood where you can happily walk the streets without fearing for your life, thanks (at least in part, and leaving aside a major military operation that took place here in 2002) to some very successful “democracy architecture”. Namely, a cable car line linking the district as a whole into the city’s metro system and a series of six bright orange, outdoor escalators which turn the hike up the hill from an arduous trek into a fleeting opportunity to admire the view. Enabling the area’s residents to easily and affordably access the rest of the city – and its many employment opportunities – has in turn brought prosperity back to Comuna 13. The community itself has more than played its part too, encouraging street art and music as a better means for

Comuna 13, perched high up in the hills of the west of the city

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PERSONAL

expression with the result that the area feels something like a living, breathing – and evolving – art gallery. While the recent improvements might be most obvious in “on the edge” areas such as these, though, it’s safe to say that the whole city is reaping the rewards. One of the most notable changes has been the recent influx of tourists – seen as confirmation (as if they needed any!) that Colombia really is back on the map. That said, if Colombia were a football team (its favourite national sport), Medellín would likely be the star player. The rest of the country is following suit but at a varying pace. In Bogotá for instance, where I spent a week before moving to Medellín, security was noticeably tighter – most buildings had armed security guards, and outdoor restaurants and the like were typically caged-in. However, it was hard to see that all this was strictly necessary – certainly during my time there I never witnessed anything untoward and the only time I felt slightly uneasy was when I noticed all the men lurking in doorways. Until I realised they were the security guards of course. Chatting to a local, she confirmed that it was perhaps

Crossword – solution and winner

GOING REMOTE • ANNOUNCEMENTS

a remnant of times past rather than a present-day necessity. And I was pleased to note that at least one apartment block agreed with her, having replaced its security guard with a plastic mannequin in uniform… The fact remains, though, that 15 years ago it just would not have been safe enough for us to take a ten-hour bus ride from Bogotá to Medellín, over the mountains and through the spectacular Colombian countryside. But we did, and I can’t recommend it highly enough. Next month: Lima, Peru Heather Lane (Fellow) 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 Williams Powell is pleased to announce that associates Katherine Ellis (Fellow) and David Grainger (Fellow) have

Unconventional No.8 by Edgar Wunder: the winner of the May 2017 crossword competition is Dr Chris Tevlin (Fellow) from Marks & Clerk LLP in Manchester. Thank you to all the readers who sent solutions in.

R A I D S S U B S I D E S

E L N A S A L B O N E P T

C L A N K B T B O L E R O

Y Y N C P A R S N I P O N

C L E H O N E W J E I O K N Y Y O N A E F R A Q E R E C O N E N O D U C E D H

A E G T S E T U S E D E O

G O R A S Y B E E T R A P P A A N O R L T E R O L E M T M O R O U E N I N O N E N E A A M T I L D E E N T E S R T O Y S N E S T Y

The crossword does not comply with the EPC since it suffers from a lack of unity (ONE) in the wordplay of nine clues.

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been made Partners of the firm. See more at www.williamspowell.com. Helen Wallis (Fellow) has been promoted to partner and Rachel Free (Fellow) has been promoted to of counsel, in CMS’ intellectual property team in London. These promotions coincide with the firm’s merger with Olswang and Nabarro, which took place on 1 May. See more at https://cms.law/en/GBR/. CIPA is moving from Chancery Lane to a new home just around the corner at Halton House, 20-23 Holborn EC1N 2JD. The office move will take place on Monday 31 July, and we will be closed all day on Friday 28 July to make final preparations for the big day. We look forward to welcoming members and friends to our modern new offices in August and, while we do our utmost to keep disruption to a minimum, would ask for a little patience and understanding during the final week of July as we begin the moving process. Letters for the Editor and announcements should be e-mailed to: editor@cipa.org.uk

www.cipa.org.uk

05/07/2017 13:10:32

PERSONAL

LETTERS

Letters to the Editor Regulation transformed into an international treaty With reference to the article on trade marks and designs (May [2017] CIPA 13) listing seven possible options for the UK separating from the EU Regulations might I suggest that there is another way forward. It will involve challenging work by those involved, but could not the Regulation be transformed into an international treaty equivalent to the EPC? Disquiet appears to be arising amongst EU27 traders at the doubling of their costs and/or diminution of the protection afforded by these other options, necessitating two Registers – so there might be strong support for the proposal, bearing in mind that everyone is anxious that trade should continue between the EU27 and the UK. Whilst the conclusion of an international treaty will require a degree of graciousness on the part of the Commission in relinquishing, in part, competence in relation to the granting of trade mark rights, competence in relation to issuing Directives determining the extent of the rights might well be retained by the Commission. It may well be possible to draw upon the work entailed in the negotiation of the UPC Agreement, which appears to have circumvented objections involving the CJEU. It is suggested that the EUTM Regulation (and the EU Design Regulation) be replaced by international regional treaties (similar, for example, to the Benelux Treaties) administered by an international office at Alicante and closely following the wording of the two Regulations (and, as now, co-existing with national

systems). As now, infringement and validity actions would be handled by designated national courts but with appeal to a central court set up by way of either the international regional treaties or by way of a separate international treaty. The systems would be open to adherence by EEA and other states, thereby adding to the attraction. Removing or limiting the jurisdiction of the CJEU would not mean a loss of control by the Commission – since Directives would remain. Arguably, a dedicated court would be far more consistent and effective than using the non-specialist EU courts and avoid waste of their resources. Much of the discussion over the other options is concerned with transitioning existing rights (e.g. seniority, intention to use, genuine use, exhaustion, geographical indications, certification marks and representation rights) to the divided system. An international treaty transposing the provisions of the TM Regulation would avoid these discussions since the status quo will be maintained. The systems would be self-supporting financially with any excess of income over expenditure being paid to the participating states pro rata to, say, population and/or GDP after supporting maintaining and extending the very valuable, approaching world-wide, databases and other projects such as the Observatory and European support projects as well as catering for plant variety protection. Similar considerations could apply in respect of the Design Regulation.

New book – Amendment of Specifications Paper FD3 Study Guide, by Tim Allsop (2017); £50 / £40 CIPA members.

D.O. Lewis, O.B.E. (Fellow)

Amendment of Specifications Paper CIPA FD3 Study Guide Tim Allsop

With the first edition selling out in record time, the CIPA FD3 Study Guide for the Amendment of Specifications Paper has been updated for 2017 to take account of recent changes to the Patents Rules relevant to the response candidates must give. The book includes marked up scripts from high-scoring candidates from the 2015 paper, which in conjunction with the examiner's comments can be used by the reader to see what a good response really looks like." To order a copy please email publications@cipa.org.uk or visit www.cipa.org.uk/eshop/

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2017

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BOOK REVIEW

DRUG DISCOVERY

The Science and Business of Drug Discovery – Demystifying the Jargon Author: Edward D. Sanders. Publisher: Springer US (2011); e-ISBN 978-1-4419-9902-3. Order online at www.springer.com/us/book/9781441999016

significant number of patent attorneys practising in the UK are employed directly by pharmaceutical and biotechnology companies. A further significant number work in private practice, and spend some or most of their time advising clients in these fields. For both categories of professional, The Science and Business of Drug Discovery – Demystifying the Jargon will provide valuable context for their work, and assist them in providing commercially relevant advice. The drug discovery industry is unique in several ways, particularly in the very lengthy product development cycle, extremely rigorous regulatory requirements, and the central role that patents play in achieving a commercial return. In order to develop a sensible patent strategy in the field, an understanding of these peculiarities is extremely helpful, if not essential. Unfortunately, it is difficult to find in a single resource, an overview of the industry which is at once comprehensive and accessible. This is the role that Dr Zanders’ book seeks to fill. As the title suggests, the work attempts to provide an overview of both the commercial and scientific underpinnings of the modern pharmaceutical industry, whilst avoiding (or succinctly explaining) terminology likely to obfuscate. In particular, the different scientific disciplines involved in drug discovery and development are clearly explained, and the author goes to great length to avoid any assumption of background technical knowledge on the part of the reader.

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The work is divided into three parts. The first, “Background to Drug Discovery and Development”, covers the basics of chemistry, pharmacology and biology relevant to the subject, along with a historic overview of milestones in the development of medicines. These aspects are covered remarkably succinctly and clearly, with the objective being to ensure further parts of the book are accessible to readers regardless of technical background. Part II is entitled “The Drug Development Pipeline: Discovery to Testing in Humans”. This builds on the foundations of Part I, and deals with the various activities involved in modern drug discovery, including identification of targets, medicinal chemistry, process chemistry and formulation,

and preclinical development. The contemporary nature of the industry is reflected, with a substantial chapter devoted to biotherapeutics. Part III covers “Clinical Trials to Marketing Authorisation”. Newcomers to the industry will find this particularly helpful; the purpose and conduct of each phase of human clinical trials is explained in Dr Zanders’ clear yet thorough prose. Again, the latest trends in the sector are reflected, with an excellent chapter covering diagnostics and personalized medicine. The global pharmaceutical business is covered in Part IV. Intellectual property is dealt with in this section, together with issues such as life cycle management and the generic industry. The final part is a supplement to the main work, and comprises three chapters written with particular professions in mind. The Science and Business of Drug Discovery is useful both as a readable (if dense) overview of a complex and changing sector for those newly involved in the sector (or looking to stay abreast of changes), and as a reference work. It will be immensely valuable for patent practitioners working in this area. Adrian Bradley (Fellow) Friday, 1On 5 September 2017, Ed Zanders will be speaking at a seminar: "How the drug discovery industry works". He will present topics on the structure and commercial environment of the biopharmaceutical industry. See page 66 for details. www.cipa.org.uk

05/07/2017 13:12:12

NEWS

PRESS RELEASE • LSC

Former President of CIPA, awarded OBE CIPA press release, 19 June 2017

ndrea Brewster, Immediate Past President of CIPA, has received an OBE in the Queen’s Birthday Honours for services to intellectual property. Among her contributions to the IP sector, Andrea has championed the importance of diversity and inclusivity throughout the IP professions, creating and launching a cross-profession diversity task-force, IP Inclusive, in 2015. She continues to spearhead this initiative, which brings together volunteers from across the IP sector. Over 100 organisations and businesses have now signed the IP Inclusive Charter, committing them to take practical steps to improve the inclusivity of their businesses. “I am honoured to receive an OBE for my efforts… The protection and exploitation of intellectual property is an important driver of the economy. Commercial ideas and innovations, once protected, can generate revenue for future investment, and the professionals who help make that happen will be key to the UK’s future success. I am proud to have been able to both support businesses’ IP strategies and to help my colleagues in the intellectual property sector become more responsive to businesses’ needs. I have worked with some great and inspirational colleagues over the years and feel that this honour is also recognition for their commitment and enthusiasm, as well as for the strong team spirit within our Chartered Institute.”

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UK business make better use of its innovations is demonstrated by her voluntary work with the government’s Intellectual Property Office (IPO). Highlights include: •

•

before becoming its Vice President in May 2014 and its President in May 2015. During her presidential year Andrea helped to modernise CIPA by: •

•

• •

Reconnecting CIPA’s leadership with its members through a programme of regional meetings and improved communications. Encouraging younger members to become involved in CIPA’s governing Council. Improving the profile of patent administrators within the Institute. Helping to revitalise and professionalise the Institute’s training and continuing professional development programmes, including projects to improve members’ commercial skills and responsiveness to business needs.

In late 2015, Andrea convened an inaugural meeting of representatives of all the UK’s IP professions – solicitors, barristers, patent and trade mark attorneys and civil servants – to plan for a possible Brexit ahead of the EU referendum in June 2016. Important marketing materials for use overseas were produced in the months that followed. Her commitment to helping

•

Significant contributions to the IPO’s IP Audit Plus programme, where the IPO has worked with CIPA members and IP professionals to deliver more than 1,000 audits over three years. A vision for advisors to provide an “IP triage” service to help businesses identify their IP and get the right advice at the right time. A triage tool created in partnership between CIPA and the IPO is currently being trialled. Support for the IPO’s work in stimulating the IP insurance market, instigating CIPA’s development of a list of insurance providers to help businesses meet the cost of legal expenses and allow them to better protect their assets in court.

Friday, 1 September 2017

Litigation Skills Course

Location: venue to be confirmed 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 face-to-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. To register go to www.cipa.org.uk/ patent-examination-board

JULY-AUGUST 2017

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CPD & EDUCATION

INSTITUTE EVENTS

Institute Events For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events Thursday, 13 July 2017 Seminar

West of England Meeting

Time: 12.30–19.00 Location: Bristol Marriot Royal Hotel, College Green, Bristol, BS1 5TA Join us and a host of speakers to discuss topics, such as: The positive Impact of Workplace Allies, Abbvie litigation and ADR: Focus on mediation. Visit http:// www.cipa.org.uk/whats-on/events/westof-england-meeting/ for more details.

Wednesday 19 July 2017 Webinar

Assignments and Title Updates Time: 12.30–13.30

Roy Scott (Keltie) 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. CPD: 1; Prices: £72 (members £48) FREE for Associate members of CIPA, email cpd@cipa.org.uk to claim your place

CPD: 3.5; Prices: £234 (members £156)

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 audience-focused approach (e.g. “legal-light” in the case of lay clients) allows such sessions to pay off not only for the client but also for the practitioner. CPD: 1; Prices: £72 (members £48)

Tuesday, 18 July 2017 Webinar

UPC: Getting legal with licences, agreements, ownership

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CIPA Administrators Conference Building for the future… Location: Glaziers Hall, London, SE1

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

Thursday, 7 September 2017 Seminar

Manchester Meeting 2017

Location: Hilton Hotel, 303 Deansgate, Manchester, M3 4LQ CPD: 3.5; Prices: £234 (members £156) More details on page 79.

Friday, 15 September 2017 Seminar

How the drug discovery industry works Time: 12.30–18.30 Location: CIPA, London

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

Time: 12.30–13.30

Join Martyn Fish and Michelle Davies (HGF) for the 6th in the series of the UPC webinars. The focus will be on topics such as: Checks • Obligation/rights • Loop holes • Fit for UPC? • Actions Available by owner.

Thursday, 28 September 2017 Conference

Congress 2017 Navigating to the future

Location: Glaziers Hall, London, SE1

Thursday, 5 October 2017 Webinar

Commercialisation of Academic Research Time: 12.30–13.30

The crucial role of IP, especially patents, in the process of taking research ideas from academia and turning them into successful businesses. Technology Transfer is having to evolve and adapt quickly to meet the challenges of the changing environment and new technology, and it is vital therefore to understand the part IP has to play. Jeremy Holmes, Imperial Innovations. CPD: 1; Prices: £72 (members £48)

16-17 November 2017 Conference

2017 Life Sciences Conference

Location: Whittlebury Hall, NN12 8QH More details on page 68.

CPD: 8; Prices: starting at £200+VAT. More details on page 69. www.cipa.org.uk

05/07/2017 13:13:12

UP & UPC WEBINARS

EDUCATION

UP and UPC webinar series update

ue to popular demand, the webinars in this series have been extended by 30 minutes, in order to cover the necessary ground. The webinars will have the usual 12.30 start, but will run to 2pm. The 90-minute run time will pilot for the remainder of Part I webinars, the extra half hour being dedicated to the same number of slides being shown at a slower pace as well as more time for questions. Feedback from the series has included questions going back to very fundamental points, and comments on the amount covered (“extremely content rich,” etc.). UP and UPC bring a new patent and a new jurisdiction so there is of course an awful lot to know at a number of different levels and the webinar series can only scratch the surface. Do not despair; watch this space for an update on plans to deliver a true “UP UPC basics” in the autumn, for the benefit of patent attorneys and administrators. We have a new timeline, of sorts. The Chairman of the UPC Preparatory Committee has given his best indication of timing, fully reasoned and being as specific as possible in the circumstances: “I am hopeful that the period of provisional application can start during the autumn 2017, which would mean that the sunrise period for the opt out procedure would start in early 2018 followed by the entry into force of the UPCA and the UPC becoming operational.” With this revision of the timetable CIPA will be taking advantage of the opportunity to spread out delivery of Admin Part and Part II the UP UPC series. The series will kick off in September as planned, but can now run into early 2018. We are revising the schedule and will publish this as soon as possible.

The case management system (CMS) has progressed, seemingly to good effect (see page 16) and we are following this closely in order to be able to announce as soon as possible a month, and perhaps even a date, for “a walk through the opt out”, featuring the CMS in its final (beta test) version before becoming operational. Finally, with perhaps less than a year to go before the UPC opens its doors and the first UPs emerge, the webinar series has painted a wealth of options for where to dip into the hefty but very definitely readable tome “Agreement on a Unified Patent Court” and perhaps more selectively readable “Rules of Procedure for the UPC” (draft) and other enlightening legal texts. Your reading will be rewarded with the chance to test your new-found knowledge in some UPCrelated word and number games, in a future edition. Please get in touch if you want to report on webinars in the Journal and elsewhere. Please keep sending in your feedback and ideas… and any UPC sudoku, crosswords, etc. Enormous thanks again to members who have volunteered their time and thoughts to matters UP and UPC, including delivery of webinars, ongoing planning of the series and numerous other UPC issues which have fallen out of the woodwork, most notably a flurry of CMS and admin-related activity. 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. 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.

PART I • C O R E • Getting Practical with European Patents and the UPC 1. 2. 3. 4. 5.

What do I need to do, when and how? Managing knowns and unknowns of the “opt out” What will the UPC landscape look like? How will the Unitary Patent affect your patent strategy? Getting legal with the Unitary Patent and how to get it

6. 7.

Validity and infringement opinions in the UPC Getting legal with licences, agreements, ownership: due diligence for UPC Recordings and slides of past webinars are available via CIPA Membership Team – cpd@cipa.org.uk

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 1. 2. 3. 4.

Pre-Action considerations Court Procedure I: Overview Provisional and protective measures Revocation action

5. 6.

Actions for Infringement and Declaration of non-infringement Court Procedure II: Case Management

See online for more details

ADMIN PART • A D M I N / C O R E • Practically in the UPC 1. A walk through the “opt out”

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2. CIPA Administrators Conference

3. A walk through the Request for Unitary Effect

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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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www.cipa.org.uk

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NAVIGATING TO THE FUTURE

CIPA Congress 2017 September 28th

Keynote Speakers: Benoît Battistelli, President of the EPO Tim Moss, CEO of the Intellectual Property Office

Panels to expect: • Pushing the boundries with speaker Heli Pihlajamaa, EPO • Advocacy - Tips and Techniques • Review of the Lambert Toolkit • Competition Law and Patents • The UPC and Litigation Then join us after the convention for our drinks reception

Rates: Non member rate - £420.00 (Includes £70.00 VAT) Member rate - £330.00 (Includes £55.00 VAT) Student member rate - £120.00 (Includes £20.00 VAT) Academics rate - £120.00 (Includes £20.00 VAT) Please note: Students, Non-Members and Academics will need to book via sending an email to cpd@cipa.org.uk

Sponsored by

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INSTITUTE EVENTS

Patents Case Law Report of the Patents Case Law Seminar, London, 28 November 2016.

his seminar had a tough brief: to summarise case law over the last year from the UK IPO, the UK courts, the EPO and the US, and in only just over three hours. Despite this formidable brief, the speakers were admirably able to pick out relevant, and interesting, developments in their jurisdictions, presenting them in an easily digestible way to the around 100 attendees.

UK IPO decisions The event was chaired by Adrian Bradley of Cleveland. After a warm welcome, he handed over to the first speaker, James Porter of the IPO, who ran through patents decisions handed down by the comptroller. Of the 41 ex parte decisions issued between November 2015 and October 2016, the majority (21) related to excluded subject-matter. Unfortunately, these decisions will be of little comfort to those looking to argue that their applications do not relate to excluded subject-matter, as none of these applications were allowed. Demand for inter partes decisions was down year-onyear, with only 27 decisions issued between November 2015 and October 2016, 16 of which related to entitlement. However, there has been steady demand for opinions from the comptroller over the last 12 months. Since the comptroller was granted new powers to revoke patents on the basis of an opinion showing a clear lack of novelty and inventive step, he has started revocation proceedings related to seven patents, and three have been revoked so far. The amended Patents Rules that were introduced from 1 October 2016 were also highlighted, and in particular, the new “intention to grant” notification to avoid UK applicants having to file pre-emptive divisional applications. Other changes include a simpler period for requesting reinstatement of an application of 12 months from the date of termination of the application.

UK court decisions Next up was Jonathan Markham of Beck Greener, who gave us his “top-ten” decisions of the UK courts in 2016. The cases discussed included Meter-Tech v British Gas, which clarified that for the experimental use defence to apply, the act which would otherwise constitute infringement must be done for experimental purposes related to the subject of the invention. Positec Power Tools v Husqvarna provided guidance on the conditions that must be satisfied for disclosure to be granted, namely: (1) What is the probative value of the material that could be produced? (2) What is the cost of providing this 70 CIPA JOURNAL

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material? And, in view of (1) and (2), would disclosure be fair, proportionate and in the interest of justice? There was also clarification on when disclosures are considered to be “made available to the public” in Unwired Planet v Huawei. In this case, Birss J ruled that a document is considered available as prior art only if it is made public prior to the date of filing of a patent application in the time zone of the patent office at which the patent application is filed. The top case was, perhaps unsurprisingly, Warner-Lambert v Actavis & Ors [2016] EWCA Civ 1006, which was the eighth case between these parties relating to the drug pregabalin, marketed under the brand name Lyrica. In this case, Floyd LJ clarified his previous “foreseeability” test, and explained that, for a Swiss-form claim to be infringed, “it is only essential that the manufacturer is able to foresee that there will be intentional use for the new medical indication”, but that “the invention will be negatived where the manufacturer has taken all reasonable steps” to prevent the consequences occurring.

US decisions After a coffee break came Timothy McAnulty of Finnegan who summarised developments in the US courts over 2016. Among the cases discussed were Cuozzo, in which it was held that during an inter partes review, the broadest reasonable interpretation of claim construction used by the USPTO should be used. An interesting decision for those working with non-attorney US patent agents was In re Queen’s University. In this case, the Federal Circuit held that privilege should be recognised for communication between US patent agents and clients in the course of the agent’s authorised practice, despite not being covered under attorney-client privilege. One of the “hot topics” this year in the US has been patent eligibility, following the previous Alice decision, which appeared to herald a far stricter approach to patent eligibility in the US than previously. Recent decisions related to this included TLI Comms and Enfish, which the USPTO is urging US examiners to refer to in evaluating the Alice test of patent eligibility. Furthermore, the Affinity Labs of Tex. decision highlighted that omitting detailed technical details on the implementation of an invention in the specification increases the risk of the invention being held invalid as relating to an abstract idea.

EPO decisions Dr Ewan Nettleton (Novartis Pharma AG) and Dr Dominic Adair (Bristows LLP) closed the seminar with an update on www.cipa.org.uk

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CPD & EDUCATION

EPO decisions from 2016. Ewan explained that there have been no EBA decisions in 2016, with G1/15 (relating to partial priority) and G1/16 (relating to disclaimers and added matter) still pending. Nevertheless, there were a variety of TBA decisions in 2016, including T 1673/11, in which it was held that changing Swissform claims to EPC 2000 claims added matter. There were also a couple of decisions (T 1841/11 and T1742/12) that confirmed that the closest prior art need not have the same purpose as the claimed invention. Procedural decisions were ably covered by Dominic. T2068/14 will disappoint those representatives wishing to attend oral proceedings (OPs) via video conference (VC): in this decision, it was held that VC is only appropriate for Examining Division OPs, and that there is no right under

INSTITUTE EVENTS

the EPC to a preferred format for hearings. There was also a successful appeal against a refusal by the Examining Division in T 823/11 as it was held that the duration of first instance proceedings of more than 14 years amount to an excessive delay, which violated Article 6(1) of the European Convention on Human Rights.

Summary In summary, the seminar was an ideal way to catch up on recent case law developments. In particular, the quality of the speakers was outstanding: they kept the audience engaged despite the somewhat Herculean task of condensing a year’s worth of case law into just 40 minutes each. Dr Gemma Wooden (Student), EIP Europe LLP

South of England seminar Report of the South of England seminar, Thursday 16 February 2017.

he South of England seminar was held at the Norton Park Hotel near Winchester, Hampshire. The seminar provided an opportunity to hear the latest news from CIPA in addition to a valuable and timely update on the Unified Patent Court from Gordon Harris of Gowling WLG.

CIPA Bye-Laws After a brief introduction from Chair Roger Burt of the CIPA Council, CIPA Chief Executive Lee Davies provided a short update on ongoing work revising the CIPA Bye-laws. Lee provided examples of changes being implemented in CIPA that include improved accounting, the introduction of a membership committee for assessing membership applications and the addition of membership categories for European patent attorneys and intellectual property administrators.

CIPA position on Brexit “Business as usual,” was the message from CIPA President Tony Rollins who was keen to highlight the Brexit position paper available on the CIPA website. Tony was also keen to highlight that post-Brexit it is preferential for the UK to remain part of the Unified Patent Court (UPC). The presentation further touched on the potential implications of Brexit for intellectual property rights including Community trade marks and Community registered designs. Ideally, CIPA would like UK attorneys who are currently able, to remain able to represent at EUIPO. Should this not be the case, then the view expressed was that no reciprocal right should be allowed to exist. Post-Brexit, laws relating to pharmaceuticals were identified as candidates for revision, Volume 46, number 7-8

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the example provided being first marketing authorisation for supplementary protection certificates. Also discussed was the influence of competition law on copyright post-Brexit and how exhaustion of rights may need a redress. These were a few of many currently unresolved matters relating to Brexit that were highlighted as ongoing considerations.

UPC update Gordon Harris of Gowling WLG began his presentation with the 12 principles from the Government white paper on exiting the European Union. Gordon highlighted sections of the white paper referring to the removal of the European Communities Act 1972 and the end of the jurisdiction of the Court of Justice of the European Union (CJEU) in the UK. The white paper was contrasted with the Unified Patent Court Agreement (UPCA) recitals, which clearly articulate the importance of the CJEU and EU law in the various provisions. Furthermore, there are currently no exit provisions in the UPCA. It was clear that there is conflict between the two and that “smooth and orderly exit from the EU” was going to be a challenge. The message of the presentation was clear to all present: CIPA, along with its members, need to understand these conflicts now and be prepared for the resulting issues and the inevitable questions that will be asked by our clients. Between us all we will make this work. The recommended course of action at this stage was to continue familiarising with the UPC case management system and continue progressing any unitary patent opt-out strategies. Dominic Clacy (Student) JULY-AUGUST 2017

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EDUCATION

CPD SEMINARS & EDUCATION

Trade Secrets Directive CIPA webinar report ‘The New Trade Secrets Directive’, 15 February 2017. Speaker: John Hull (Associate), consultant at Farrer & Co.

n the UK there is currently no statutory protection for trade secrets or confidential information. It is possible to steal a physical item – a USB stick, for example – but not the information contained therein: information is not a property in English criminal law. UK trade secret law is based on case law, and tends to cover traditional, commercial trade secrets (formulae, customer lists, etc), with any legal action likely to be for breach of confidence. Coco v A.N. Clark (Engineers) Ltd [1969] RPC 41 defined three elements for breach of confidential information: 1. the ‘necessary quality of confidence’; 2. shared under an obligation of confidentiality; and 3. evidence of misuse.

To these three points a fourth is added: precise owneridentification/definition of the secret. The need for a new law was identified within the EC Communication ‘A Single Market for Intellectual Property Rights’1, which noted that trade secrets are at the boundary between IP and other areas of law. There are also significant differences in EU national laws that result in fragmentation of protection. Two European studies resulted. The first report2 confirmed the findings of the Communication – widely varying protection and remedies, litigation and evidential problems, and lack of procedural tools – and argued for greater consistency and study. Business3 and public4 views were sought. The second study5 reviewed IP, competition and commercial laws across Europe, again emphasizing the legal patchwork and recommending the introduction of a new law. The new draft Directive was published on 28 November 2013, amended at Council level (26/05/2014), considered by the Committee on Legal Affairs (February/March 2015), with

trilogue negotations (informal tripartite meetings attended by representatives of the European Parliament, Council and Commission) during winter 2015, with the Directive (2016/943 (EU), adopted on 8 June 2016) having an implementation date of 9 June 2018. The Directive and all related materials are available at www.ec.europa.eu/internal_market/iprenforcement/ trade_secrets/index_en.htm. John Hull noted that, since Brexit will not be completed by this date, the Directive should become part of UK law; and, as the UK already complies via its own extensive substantive and procedural legal framework, a “form of implementation” may be required. The new Directive requires national states to introduce procedures and remedies (note: no new IP right has been introduced), and the provision of a minimum set of standards. John advised that national rules on disclosure (e.g. freedom of information) are unaffected and exempt from the Directive. John then took the attendees briefly through the main articles (see table). In John’s view some problem areas exist: for example, the definition of trade secret includes the concept of commercial value, but negative information could also possess value; in the Directive, trade secret theft is not a criminal offence, whereas protection of trade secrets in Germany has both criminal and civil elements in law; and the unresolved patchwork of enforceability resulting from 28 different courts and tribunal systems. In closing, John reminded the audience that the main area of trade secret misappropriation is employees, and the attendant need for clarity on the difference between a ‘trade secret’ and an employee’s skill and experience. Nothing in the Directive addresses this, suggesting it will be looked at by courts on a national basis. Alexis Harper (Associate)

Summary of Trade Secrets Directive Article

Article title (comment)

Subject-matter and scope

Definitions (key examples)

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Overview (comment)

Trade Secret (see also article 39 of the TRIPS Agreement), Trade Secret Holder (a natural or legal person “controlling” [not owing] a trade secret), Infringer, Infringing Goods.

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EDUCATION

Article and Article title (comment)

CPD SEMINARS & EDUCATION

Overview (comment)

Lawful acquisition, use and disclosure of trade secrets

Independent creation, reverse engineering, workers’ rights, “honest commercial practices” (currently undefined), as prescribed by EU or national law (28 possibilities therefore).

Unlawful acquisition, use and disclosure of trade secrets

Unlawful access to files/documents, anything contrary to “honest commercial practices”, NDA/contract breach, acquisition via a third party.

Exceptions

Freedom of expression under EU Charter of Fundamental Rights (right to receive ideas etc.), public interest disclosure, employee disclosure to Union representatives, protecting a “legitimate interest” under EU/national law.

(the key) General obligation

1. “Member States shall provide for the measures, procedures and remedies necessary to ensure the availability of civil redress against unlawful acquisition, use and disclosure of trade secrets. 2. The measures… shall: a. be fair and equitable; b. not be unnecessarily complicated or costly or entail unreasonable time limits or unwarranted delays; and c. be effective and dissuasive.”

Proportionality and abuse of process

Measures must be proportionate and avoid abusive litigation.

Proportionality and abuse of process

At a Member State’s choice but not exceeding six years (difficult for cross-border effectiveness if periods differ).

Preservation of confidentiality of trade secrets in the course of legal proceedings

Restricted access to documents. Restricted access to hearings. Redacted decisions.

Provisional and precautionary measures

Conditions of application and safeguards

These (interim measures) may include prohibitory injunctions and seizure of infringing goods, and must be based on appropriate evidence and balancing factors such as the value of the secret, conduct of the parties, and the impact of unlawful use on the parties and public. There is a strict time limit for proceeding from interim measures to trial, and a provision for a crossundertaking in damages.

Injunctions and corrective measures

Conditions of application, safeguards and alternative measures

Damages

The (final) measures may include injunctions, recall of infringing product, and destruction/delivery up; and are conditional on an assessment of similar balancing factors (see above).

Availability of damages may depend on the value of the trade secret, steps taken by the holder to protect the secret, the defendant’s conduct, compensation in lieu of an injunction. Amount of damages may depend on actual prejudice, “negative economic consequences”, unfair profits, and “moral prejudice” (damage to reputation or goodwill).

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2015

The not-so-secret diary of a CIPA President

By Andrea Brewster

1.30pm: It is time for our twice-yearly visit from the nice man at the EPO, to check we still understand how much the EPO loves us. My job is to say the bit N OV at the end about how much we love the EPO back. We hear all about making the examination process more efficient. One of the measures being adopted is that examiners will be encouraged to pick up the phone and speak to us, rather than pretending to be on a coffee break when we call. What they are going to speak to us about, mainly, is not filing so many stupid auxiliary requests. But we have to file auxiliary requests! we cry. Because the Boards of Appeal will not let us file them later! The nice man says he is hoping the Boards of Appeal will change their position on this. His words are greeted by the sound of several patent attorneys being unconvinced at once. Mr Roberts says we have to keep auxiliary requests because the auxiliary request is what makes the EPO Special. It is not the only thing that makes the EPO Special, obviously. But it is better than the American system, which is to file all your auxiliary requests as part of the same claim set and hope that only 145 of them are knocked out before grant. We also have a small disagreement about eDrex and OCR. This is a vital part of the twice-yearly visit and we would all feel cheated if we didn’t spend at least a few minutes on it. It has to be said that the disagreement gets a little more half-hearted each time it’s raised, because within a few years patent applications will be drafted, filed, examined and granted by artificially intelligent machines (as opposed to artificially intelligent people) and, frankly, they can sort out their own mistakes while we sit in our armchairs having 3D-printed pizzas delivered to us by Amazon®. By 4 o’clock it is getting dark outside and the nice man has to catch a plane. I say how much we love the EPO and he says how much he loves our feedback and we both know there is a slight lack of basis problem over these two assertions but in the interests of diplomacy, and of still being able to get our clients’ European patents granted, we smile graciously anyway. It is time for me to go home before I say something the others might regret.

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Today it is the Grand Launch of the IP Inclusive diversity task force. Da-da-da-DAAAA!!! Because the task force does not actually have any N OV money, just a lot of really well-meaning volunteers, we are borrowing someone’s meeting room for the occasion, and also their staff, their cloakroom, their chairs and tables, their IT system and their drinks. Let’s face it, the alternative would have been to borrow a church hall somewhere. Mr Alty, who is in charge at the IP Office, has taken some time off from being in charge in order to deliver a keynote speech for us. All I have to do is add some bits of wittering in between other people’s talks about what the task force has been up to. I am a pro at wittering. At the end of Mr Alty’s speech, there is a Grand Ceremonial Signing of the Equality, Diversity and Inclusivity Charter, which Unlucky Gary has printed out for us on posh paper. The posh paper is absolutely not nicked from the Law Society down the road. If it had been absolutely nicked from the Law Society, it would be tied up with pink ribbon. Next we have a seminar about unconscious bias. Unconscious bias is when your brain tricks you into believing things for which there is no rational explanation. Like when you support a football team that never wins anything, or when you agree to go for just one drink with Mr Davies. The seminar includes some optical illusions to show how easily our brains can be duped. Actually the main thing these illusions demonstrate is that the brain can be made to think virtually anything so long as you put it in a Powerpoint® slide. We are all guilty, the speaker says, of confirmation bias. This means we go looking for evidence in support of the conclusion we have irrationally jumped to on the basis of one Powerpoint slide. We will look very hard for this evidence, even if there is little of it. We are also guilty of “groupthink”, which means that we prefer to think what the other people in the room are thinking; stereotyping; selective filtering; and of course (although the speaker did not specifically mention it today) splitting infinitives. I have to say I have not met many patent attorneys who are interested in groupthink; quite the opposite, in fact. But I do know we are guilty of stereotyping (all EPO examiners are out of their minds; anything to do with regulation is the Devil’s work) and of selective filtering (before we do our strategic review, let’s get the commas in the right place) and of confirmation bias (my client sold three of his scarecrows last week, therefore they must be inventive). Apart from me, of course. I do not go looking for evidence of any kind. Evidence is over-rated.

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Overall it is a really grand Grand Launch Event and I am extremely dead proud of what’s been achieved over the last eleven months, despite having me supposedly in charge. We haven’t made the IP professions completely diverse yet, but on the basis of the law of increasing entropy we have every reason to believe we’re heading in the right direction. Afterwards, a few of us go for just one drink with Mr Davies to celebrate. Skilful multi-tasking allows us to manage several just one drinks at once. By the end of the evening, none of us are heading in the right direction and the entropy levels are doing my head in. But hey, it was a Great Day.

It’s official: advent has arrived at CIPA. The Christmas tree is up. It is a small Christmas tree, D EC tastefully decorated on the theme of Austerity. To supplement it, someone has made garlands out of ruled faint A4 refill pads. I hope they have permission for these extravagances.

current President with a pair of CIPA cufflinks. The cufflinks are extremely special, because only Presidents are allowed to wear them, and it is therefore a Great Honour to be presented with them. Except, of course, if you are not a gentleman. Clearly this possibility was not envisaged when CIPA’s ceremonial rituals were devised. So I let it be known that I did not think cufflinks would suit me. I may have used a slightly different turn of phrase, but it amounted to the same thing: cufflinks are a no-no. And so, with a gentlemanliness that impresses me still, the Past Presidents instructed their jeweller to take a pair of CIPA cufflinks, saw the cufflinky part off one of them and attach a lapel pin fixture in its place. Or possibly they asked the EyeEyePeePee to do this with his rail-side soldering kit. Either way, I now have a CIPA lapel pin of my very own, and for generations to come, CIPA Presidentesses will be able to enjoy a suitably bespoke form of decoration. I feel mightily proud.

I am officially Famous! There are published articles about the Grand Diversity Launch Event D EC (da-da-da-DAAA!!!), and they have my photo in! The interview I did the other week has also been published, and in it I sound almost articulate so I think the nice journalist must have made a few things up afterwards. The article refers to me as “Brewster”. Like “Cameron”. Or “Mussolini”. I would rather it said “President Brewster”, but I guess you only get that kind of reverence if you’re looking after a whole country as opposed to 2,500 cantankerous but essentially harmless patent attorneys. Meanwhile, at CIPA HQ the main downside is that Mr Lampert, our Chief Shouty Person who has not yet finished his new Social Media Policy on account of I keep distracting him, now lives in a perpetual state of terror that I am going to say something unwise or undignified which will be published before he can do anything to stop it. These are some of his worst fears:

2.30 pm: The Christmas Pixies have brought Christmassy cakes for the December Council meeting. The difference between a Christmassy D EC cake and a normally cake is that a Christmassy cake carries a veneer of gold spray paint, which may or may not be edible but since it’s Christmas, who cares? Fortunately, everyone knows you do not need to say thank you to the Pixies, because they only visit In Secret. So nobody does. It is a long Council meeting, even with me being fierce in the Chair. This may be due to my having a mouthful of gold paint for a good proportion of the time, and thus being unable to shout at people. When I do shout at people, a festive spray of gold stars accompanies the shouting, which might almost look angelic if you were feeling really Christmassy, but they are not and so it doesn’t, and either way it rather ruins the effect of the fierceness. Also the damp cakey bits are undignified. We get lots done, though. We say No to several things. We say This is Outrageous to some other things. And we say What will our members think? to some more things. Then we say, Actually, yes, what will our members think? And someone suggests asking our members what they will think but someone else says No, not yet and we all look relieved, because none of us is entirely sure how Survey Monkey® works but we daren’t admit it.

5.15 pm: I am just about to close the meeting (fiercely, of course, and spattered with gold) when Mr Poore says Stop! There is still something Important and Ceremonial to do! He presents me ceremoniously with a CIPA lapel pin. It is a gift from the Past Presidents. Every year, they present the Volume 46, number 7-8

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• • • • • •

•

IP Institutes merge in major gin-fuelled presidential summit: Interview with president Brewster and a Lindt® gold reindeer. Brewster’s ten tips for being a bumbling numpty and getting away with it. Exclusive: “IP should be more namby-pamby,” says President Brewster. Brewster spills the beans about unauthorised CIPA festivities. “Why I flounced out of outrageously tedious committee meeting” – discredited President tells all. “I was so embarrassed!” Andrea reveals how she once spat gold spray paint at colleagues and “hasn’t been able to face a mince pie since.” Trade Secrets – after months of CIPA chaos, Brewster exposed as bumbling numpty. JULY-AUGUST 2017

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CPD & EDUCATION

INSTITUTE EVENTS

EPO Oppositions and Appeals Report of CPD webinar “EPO Oppositions and Appeals”: 26 April 2017

haired by Michael Jaeger, our speaker, Ilya Kazi set out his stall early on: this was to be a practiceoriented overview of EPO oppositions and appeals with sharing of practical tips and favoured tactics. Just as a quick reminder, however, a brief summary was also given of the new “accelerated” timeline for opposition (see April [2017] CIPA 65). Before filing an opposition: as an opponent, what is the commercial objective? Complete revocation, specific claim limitation or just clarification / admission as to claim interpretation? Be clear from the outset. What art/grounds are available? Are these the same as considered by the examiner during prosecution? If so, an uphill battle may be faced. Or are new grounds/art available? Do foreign prosecution files contain anything useful? Is more searching required? If art/grounds are not raised/discussed in the notice of opposition they may be difficult to introduce later. But do not distract from good arguments with hopeless points. Draft out the notice of opposition. A shorter, punchier document may be more effective than one of 50+ pages covering all bases, even the weaker ones. Truthfully, how strong is the case? If very weak, is it worth filing an opposition at all? Patentee’s response: as a patentee faced with an opposition, be realistic: does the opponent have a point? What is the commercial intent here? Which part(s) of the patent are truly valuable and why? Do we know who the opponent is, and what their commercial objective is? Are there any other proceedings this may affect? Is claim amendment likely to be necessary? If so, file amendment now versus file later? File as main request and structured auxiliary requests? Important to have an amendment that deals with each objection – particularly so where an added matter flaw relates to a key claim feature. After patentee’s response: an opponent can, of its own motion, submit further arguments. May be useful to focus the issues.

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Expert evidence: either party may involve an expert witness. Consider whether truly helpful? More likely to be of use in complex technical areas, where matters of technical fact are in dispute or where questionable technical assertions are being made. Likely to be considered ‘late filed’ if not introduced at outset, but considered in some measure anyway. Preliminary opinion: can be detailed or short, and gives, more or less, a measure of the thinking of the Opposition Division (OD). Can be useful to try and ‘read between the lines’. It is only a preliminary view. Do not be complacent if it is in your favour. As a patentee, use it as a guide to consider amendment options. Oral proceedings: on the day, a team approach with a lead advocate and (junior?) colleague with all the documents in front of them can work well. Having the client attend can be useful if technical questions arise or as patentee, if unexpected amendment options may arise on the day. Should you prepare for every eventuality (at great expense to clients) or take a more focused, pragmatic approach? Remember the commercial objective. It is unlikely that proceedings will follow a predictable script. There will be surprises. You need to be able to stay calm, focused and to think on your feet. You need to deal with what is presented as it is presented but you can ask for a time out if truly surprised and you can remind the OD about procedure if it departs radically from what is reasonable. Go in there prepared to put your client’s best case forward on all the points. Do not let anyone, whether the OD or other side put you off doing so. Understand the OD’s view, and help them come to your view. Pick the battles to fight and judge how far to fight them, with regard to the mood and the overall timing. You can often gently help the procedure by tackling things in the order that is most helpful. Be mindful of the possibility of appeal. Do not abandon a point just because the OD is unconvinced. On appeal, you may succeed, but do not annoy the OD by labouring www.cipa.org.uk

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OTHER EVENTS

unwinnable (on the day) points. Be wary of withdrawing claim requests. Appeal: similar general considerations apply to appeal practice. In general, Appeal Boards are more consistent, experienced and rigorous. As the Board does not include the primary examiner it is likely to be less sympathetic to examination decisions and more rigorous on issues such as added matter. Nonetheless, will need a good reason to overturn an opposition decision. Procedure is more strictly applied (notwithstanding their discretion) and falling foul of it may have terminal consequences. The Appeal Preliminary Opinion is likely to be detailed, and it is rarer for an Appeal Board to depart from it, but it can happen. Again, do not be complacent. Overall: a valuable reminder that oppositions and appeals are a different ball game to everyday prosecution. Above all, a reminder to stay focused on the commercial objective and also to keep an open mind. You may feel that you have winning arguments, but on the day you will meet another experienced practitioner who will appear not to be even remotely convinced. In the words of our speaker, ‘If you know what you’re doing, it’s great fun!’

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

Christopher Pike (Fellow)

Summer drinks at the TIPLO House of Lords reception The Intellectual Property Lawyers Organisation (TIPLO) is delighted to invite readers of CIPA Journal to a sunshine drinks reception and three-course meal at the TIPLO House of Lords reception. We very much hope the sun will be out for our river terrace reception in The Cholmondeley Room in the House of Lords on Tuesday, 18 July 2017, from 6:45 pm. Please join us for an evening of networking, canapés and drinks, courtesy of Lord Hope of Craighead, one of the first Supreme Court Justices, who may share with us some of his judicial experiences. TIPLO events are not only a great way to network but also a good opportunity to take clients to such a prestigious legal venue. For tickets and further information on prices, please e-mail Ms Nicola Miller, writetotiplo@gmail.com

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Life on the Inside How to liaise with in-house attorneys – report of CIPA webinar, Tuesday 20 June 2017

avid Galaun (Fellow), a senior patent attorney in Cisco’s IP team gave a very insightful talk from the perspective of an in-house patent attorney. David manages Cisco’s video and media and optical portfolios. He has been in-house all his career, starting at BT. He introduced Cisco as a company and its origins in San Francisco. The company was founded by a husband and wife team wishing to email others from different offices at Stanford University and being unable to do so because of technical barriers. This lead to the development of the first multi-protocol router. The company is now a leader in networking, with annual revenues of around $50 billion. Cisco’s first patent was filed in 1988. Its first patent granted in 1992 coinciding with the start of the Worldwide Web. The company has over 14,000 granted US patents, and over 21,500 granted patents worldwide. Patents are under the responsibility of the vice president intellectual property who is based in California. The IP team, which is comparatively lean team of 34 people, is broadly organised into five groups. One group, Portfolio Development, includes a team of patent attorneys designated as patent portfolios managers. An IP strategy and licensing group looks after standards issues, licensing, M&A, patent marketplace and policy issues. After Cisco’s acquisition of NDS, Cisco setup a ‘Virtual Law Firm’, for former NDS patent attorneys who wished to continue drafting and prosecution work. This group prosecutes former NDS cases, and drafts and prosecutes new Cisco cases. A small disputes group looks at pre-litigation issues such as approaches from patent trolls. An operations group headed by a patent attorney comprises software engineers and paralegals. Patent litigation is handled by a group within a wider Cisco litigation team. People within the IP department often play a variety of roles, and may function across different groups. Team members are located in California, North Carolina, London, Oslo and Jerusalem, making scheduling meetings challenging. David explained that the company is very proud of the Cisco Patents On-Line (CPOL) workflow tool, which provides end-to-end support for Cisco’s patent program both internally and externally. He emphasised that CPOL is not a docketing system – outside counsel being expected to manage their own docketing systems. CPOL has approximately 11,200 unique users per year including inventors, review committees, inhouse counsel, outside counsel, and system administrators. CPOL is maintained by two software engineers. Turning to the patent process, David explained that inventors submit invention submissions into CPOL, receiving

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decisions on their submissions via the system. Reviewers enter comments and votes into the system. The IP team can use CPOL to send instructions to outside counsel. Outside counsel can submit draft applications for review and recommendations, updating pertinent filing information and status reports within the system. Administrators help to manage the database records. Access to different parts of CPOL is restricted by a user’s role. Inventors using CPOL see colour coded information specific to them. When creating a new invention submission, data is entered into predefined fields. When an application is filed, inventors are asked to comment on service levels from the external patent attorney who drafted the case, Inventors can also check on the status of their applications, for inventor rewards and inventor plaques. During patent prosecution, inventors are frequently asked if inventions are in use in Cisco products. In connection with the review process, David told us that Cisco has 22 patent review committees which are technology, rather than business unit, focused and often staffed by senior engineers. Of about 3000 submissions received a year, 700800 are approved for filing. Reviewers comment and vote anonymously on invention submissions, commenting on novelty and business/commercial value. Four commercial value metrics are considered: Cisco relevance; market relevance; detectability; and difficulty of design around. During review meetings, the intention is that final decisions are made on whether to approve for filing, decline, publish defensively, or to seek further information from the inventors. Conditional approval of an invention submission may also be given leading to a prior art search by outside counsel with a request for a recommendation. David’s talk included several screenshots of the impressive CPOL system. Outside counsel is relied on heavily to support filing and prosecution of patent applications, and their work is driven by CPOL. Outside counsel updates CPOL with status information. Contact with the patent portfolio managers is minimised, outside counsel being expected to exercise their own judgement, and to follow up with inventors as necessary. The portfolio is pruned on a quarterly basis by the patent portfolio manager. Cisco’s patent application preparation and prosecution guidelines provide general directions and guidelines to law firms that prepare and/or prosecute patent filings for the Missed this webinar? A recording is available from CIPA, contact cpd@cipa.org.uk.

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company. The guidelines define Cisco’s expectations for preparation and prosecution activities, ensuring quality and consistency across Cisco’s patent portfolio. Furthermore, the guidelines promote efficiency in the preparation of patent applications for Cisco and should expedite the review of patent applications by Cisco patent portfolio managers before filing. Turning to recommendations for outside counsel in dealing with Cisco, David said that he welcomed a succinct summary of inventions and the issues at hand supported by reasoned and detailed information, and not having to chase outside counsel for information. Attorneys following the Cisco guidelines was also helpful to him. David appreciated outside counsel speaking up when an application is a dud. Owning up to errors straightaway with proposals for remedy was important. Finally, knowledge of Cisco’s markets and what is commercially important was also valued in outside counsel. Invention harvesting is an important activity at Cisco and has two forms. First “patent mining” is a collaborative effort to harvest invention disclosures in a strategic technical area often before a product release. Outside counsel helps with the mining session, listing initial inventions for submission, and creating submissions in CPOL. Again, the patent mining process flow is managed within CPOL. Second “Patentathons” were introduced in an attempt to improve outputs from patent mining activities. These are one-day events reserved for drafting and completing invention submissions. Key inventors in targeted technology areas are invited to participate on basis of having a Brief Invention Disclosure (BID) ‘accepted’ in advance, which is less burdensome than a full invention submission. The meetings are fully supported by patent attorneys, subject-matter experts, and mentors. An expedited review process follows with the aim of making final decisions by the end of the following day. Nine such events have been held since November 2015 and over 1600 BIDs have been submitted, of which over 660 have been ‘accepted’ for a full write-up, leading to over 250 new patent filings. Chair Michael Jaeger (Fellow) asked about the culture of inventiveness at Cisco and how this has changed in David’s

INSTITUTE EVENTS

time. David commented on how the Patentathons have helped improve the culture although it often leads to the same faces turning up. It has, however, involved inventors who have not participated in the patent process before. He mentioned the awards programme which rewards inventors financially after filing. Submissions which are not successful may also be rewarded to encourage first time submitters.

Questions and answers Responding to other questions David commented as follows: Does outside counsel get involved in strategy work? DG commented that outside counsel may be involved in licensing work and in larger M&A deals to evaluate patent portfolios, or support disposals. How many outside firms does Cisco use? Cisco uses 10-15 firms in the US and now has a direct relationship with two firms in Europe, and one firm in each of Canada, India and China. Does Cisco look for new outside counsel? The roster is fairly stable. Cisco reviewed its outside counsel in Europe recently leading to another firm being taken on. How are overseas filing territories considered? Most cases are filed in the US first. Reviewers and outside counsel make recommendations on filing outside the US, with only 20-25% being filed overseas. China and Europe are key territories. What is Cisco’s view on the Unitary Patent? This development is under active consideration. As a company which focuses on UK, Germany and France for EP filings he thought that the additional costs may not be worthwhile. The company has not yet finalised its views on filings and opt outs. John Dean (Fellow)

Thursday, 7 September 2017 Seminar

Manchester Meeting 2017 Time: 12.30–19.00 Location: Hilton Manchester Deansgate Hotel, 303 Deansgate, Manchester, M3 4LQ Visit http://www.cipa.org.uk/whats-on/ events/manchester-regional-meeting-2017/ for more details.

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CPD: 3.5; Prices: £234 (members £156)

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COURSES

CEIPI preparation courses for the European Qualifying Examination 2018 A complete range of high-quality courses using proprietary high-quality training material Our offer for English-speaking candidates:

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

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

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

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

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

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

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

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Training for the EQE Dates: 13-14 November 2017 8-10 January 2018 Venue: Central London, venue to be confirmed 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) of the European Patent Office. It is structured in two parts and reflects the 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

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COURSES •RECRUITMENT

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

Fully-Qualified Patent AƩorney required (Part-Ɵme or full-Ɵme) Highly competitive remuneration package to suit high-quality, experienced candidates. Do you have experience in patent drafting/prosecution at the forefront of electronics, software, telecommunications, semiconductors and/or medical devices technologies? If so, join us to add value and enhance our International clients’ patent portfolios to help maintain their market dominance. Since 2002, Optimus’ reputation for exemplary quality and service has grown, year-on-year. The successful candidate can work in our Hampshire, Cornwall or Michigan (USA) offices, or could be provided with their own office premises.

Do you want to provide bespoke services to clients from innovaƟon creaƟon through draŌing, prosecuƟon to strategic porƞolio management?

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This is a unique opportunity for an ambiƟous, client-focused candidate to join the OpƟmus team. Closing date for applicaƟons is 31st August 2017. 82 CIPA JOURNAL

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RECRUITMENT

Senior Patent Attorney



INTERNATIONAL

Your BRIDGE to the continent. Develop your footprint in continental Europe

Location: Chester area, UK or Reading, UK ConvaTec is a developer, manufacturer and marketer of innovative medical products focused on therapies for the management of chronic conditions. We provide products used for advanced chronic and acute wound care, ostomy care, continence and critical care and infusion devices. At ConvaTec, we exist to improve the lives of the people we touch. Our vision is to be the most respected and successful MedTech company, worldwide. We drive for excellence in all we do – anticipating and addressing our customers’ needs with advanced technologies and best-in-class products and services. As Senior Patent Counsel, reporting directly to the VP, Global Head of Intellectual Property for ConvaTec, you will have the opportunity to take ownership in the company’s diverse, global patent portfolio, from invention harvesting, patent drafting and prosecution to both offensive and defensive Opposition work. Our global portfolio spans a variety of technologies, from advanced wound care, ostomy and continence care to infusion devices. You will have exposure to the company’s new technology working closely with the scientists and engineers that develop it to support the company’s culture of innovation and build a valuable patent portfolio to protect it. This newly created role will provide you the opportunity to help grow and shape the company’s global IP strategy for today and the future. In turn you will have the opportunity to grow and develop in your role with us by driving patent policy and procedure for the company, sharing your patent and technical knowledge and running patent committees. For further information about the role, please contact Helen Thomas, HR Manager, using the contact details below. ConvaTec, Global Development Centre, First Avenue, Deeside Industrial Estate, Deeside, CH5 2NU www.convatec.com  email: helens.thomas@convatec.com

CKpatent could be A possible gateway to the EU, to Germany, to Munich A starting point for a roadmap to your EU desk Your door to your new Munich oﬃce A part-time solution Services offered to start a co-operation: White label services Oral proceedings deputy in Munich Work sample offered free of charge

Contact Christian Koester mail@ckpatent.com

Signiﬁcant experiences with Oppositions, Appeals, Infringement cases Background in Chemistry – from API’s to zeolites

Stay in touch with the continent

PATENT ATTORNEY We are looking for a talented attorney to join our firm on the Isle of Man. We are a boutique legal practice specialising in the law relating to e-commerce and the Internet and, more particularly, relating to the development, protection and exploitation of software, online and land-based gaming, payment processing and mobile payment technology. The successful applicant will be a qualified patent attorney with two to five years relevant post-qualification experience, either in a patent firm or as in-house counsel, and will possess excellent skills in written and oral communications. You will work closely with developers and senior management and will be responsible for invention harvesting, patent drafting, portfolio management and IP risk management. Salary package: £125 - 150K p.a., dependent upon experience The Isle of Man offers an enviable quality of life – relaxed, peaceful and friendly – in which both family and enterprise can flourish. It provides many diverse leisure activities, particularly sport and outdoor pursuits in an unspoilt, high-quality environment. Closing date is 30 September 2017 Applications to be addressed for the attention of: Mr. Frank Verardi, Novellie Verardi & Mitchell, MGS House, Circular Road, Douglas, Isle of Man, IM1 1BL. Tel: +44 1624 641520 Fax: +44 1624 641521. No agencies. Direct applications only. E-mail: fverardi@novellie.com Website: www.novellie.com Volume 46, number 7-8

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CMS Cameron McKenna Nabarro Olswang LLP is a member ﬁrm of CMS.

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THE PINKS

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:PV MM MPWF XIFSF XF DBO UBLF ZPV Patent Secretary : London TJB51156 Join a Practice at the top of its game. This highly regarded business is seeking a Patent Secretary to join their London HQ to provide full and comprehensive secretarial and PA support at Partner level. Ideally CIPA qualified, you will be rewarded with not only a fantastic financial package but also a lovely working environment and active social scene. Patent Paralegal : London TJB52750 Prestigious Private Practice in London is seeking a Patent Paralegal to join them as they expands their support function. This is a key and crucial role within the business where you will be responsible for recording all registrable transactions globally. You will have previous Patent experience, excellent written, communication and organisation skills, and be able to work using your own initiative. Candidates with the CIPA qualification will be looked on favourably. Great remuneration package awaits you. #JPUFDI "UUPSOFZ 1BSU /FXMZ 2VBMJGJFE -POEPO LKA52527 Long established IP Practice looking for an impressive Life Sciences Patent Attorney to boost its rapidly expanding London outfit. Boasting a sterling client base, both nationally and globally, this is a chance to enjoy high-quality work (with a strong focus on healthcare) including drafting, IP strategy advice, prosecution, opposition and appeal work within a superb training environment, with significant direct client contact at an early stage. .FDI &OH "UUPSOFZ 1BSU /FXMZ 2VBMJGJFE :PSLTIJSF LKA52869 Well regarded, national firm requires a Mechanical Engineering, part or newly qualified Attorney to join its friendly, established team in Yorkshire. Varied case-load of broad-ranging direct, domestic clients, their Attorneys benefit from high quality, hands-on training at every stage of your IP career. A degree in Physics, Engineering or a related discipline would be ideal; very competitive remuneration / bonus available. Engineering Patent Attorney : Manchester LKA50839 A genuinely different practice which prides itself on giving its Attorney’s freedom, flexibility and autonomy, and itsclients a service more akin to an in-house advisor than an arms-length external counsel. Financial rewards reflect the professional ones with a very attractive bonus scheme. Those with an engineering background will be looked on favourably although other technical disciplines will be also considered.

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Life Sciences Attorney : Midlands CEF51868 Our client is a leader in the industry, with an enviable Life Sciences department and an impressive client base. An expert Attorney with a Life Sciences/Chemistry background is sought to join their respected West Midlands office. If you're an Attorney who is part or newly qualified, we want to hear from you! Those outside this band will also be of interest. You'll be a passionate Patents expert who can flourish independently and as a member of a team. &MFDUSPOJDT "UUPSOFZ :PSLTIJSF VAC52643 Specialising in Electronics or Electrical Engineering, you will be joining one of the largest practice groups in this field in Europe. This means impressive, high quality and varied work with a portfolio ranging from aerospace to telecommunications, medical equipmentto academic research. The emphasis is on delivering the highest quality service to the firms' clients, meaning you will be immersed in client contact and relationship building from day one. Biotech Attorney : Cambridge CEF52358 Leaders in the Intellectual Property industry seek a Biotech expert to help drive the busy Cambridge office. You'll be a Part-Qualified to Qualified Patent Attorney with a background in Biotechnology and a couple of years' practical experience within the patent profession. Our client can offer some flexibility on location, and so those who seek a London base may also find this of interest. Most of all, you'll have an appetite for high quality work and a commitment to drive this top tier IP practice. .FDIBOJDT &MFDUSPOJDT "UUPSOFZ -POEPO $&' A Patents & Trademarks front-runner is providing an unparalleled opportunity for a remarkable Attorney to enjoy the surge of business they are experiencing in their London office and so is looking for exceptional Attorneys from a Mechanical or Electronics background to join their all-star team. We are interested in hearing from Attorneys from 3 years PQE+. There is a real opportunity for progression here, including route to Partnership! 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.

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Dawn Ellmore Employment Serving the IP profession since 1995 Latest Patent Attorney Vacancies: Chemistry Patent Attorney ŏ London :H DUH GHOLJKWHG WR EH ZRUNLQJ ZLWK D VXFFHVVIXO ÀUP ZLWK D IDQWDVWLF UHSXWDWLRQ DQG D SURJUHVVLYH RXWORRN This would suit an experienced attorney looking to build their own practice.

Senior Patent Attorney ŏ Mechanical Engineering ŏ Hertfordshire $ FDUHHU RSSRUWXQLW\ ZLWK JUHDW SURVSHFWV RIIHULQJ DQ DWWUDFWLYH VDODU\ DQG EHQHÀWV SDFNDJH ZLWKLQ D YHU\ IULHQGO\ DQG ZHOFRPLQJ WRS WLHU ÀUP

In-House FQ Chemistry Patent Attorney ŏ North of London 2IIHULQJ XS WR WKLV LV D IDQWDVWLF LQ KRXVH RSSRUWXQLW\ IRU D IXOO\ TXDOLÀHG SDWHQW DWWRUQH\ ZLWK XS WR \HDU· SRVW TXDOLÀFDWLRQ H[SHULHQFH

FS/FQ Patent Attorney ŏ Biotechnology ŏ London $ UDUH RSSRUWXQLW\ KDV DULVHQ IRU D ÀQDOV VWDQGDUG RU QHZO\ TXDOLÀHG DWWRUQH\ WR VWDUW ZRUN DW WKLV HVWHHPHG ÀUP LQ /RQGRQ WDNLQJ RQ WKH ÀUP·V KLJK SURÀOH ELR UHODWHG ZRUN

PQ/NQ Mechanical Engineering Patent Attorney ŏ Yorkshire 2XU FOLHQW LV VHHNLQJ D SDUW RU QHZO\ TXDOLÀHG DWWRUQH\ ZLWK D EDFNJURXQG LQ PHFKDQLFDO HQJLQHHULQJ although those with an electronics or physics background will also be considered.

PQ/NQ Mechanical Engineering Patent Attorney ŏ London 7KH ÁRXULVKLQJ (QJLQHHULQJ GHSDUWPHQW RI D KLJKO\ UHSXWDEOH ÀUP LV ORRNLQJ IRU DQ HQWKXVLDVWLF SDUW RU QHZO\ TXDOLÀHG HQJLQHHULQJ DWWRUQH\

Life Sciences Patent Attorney ŏ Cambridge :H DUH SOHDVHG WR EH DVVLVWLQJ RXU FOLHQW LQ WKHLU SXUVXLW RI D SDUW RU IXOO\ TXDOLÀHG SDWHQW DWWRUQH\ WR MRLQ their thriving practice and gain a generous salary in return.

PQ Patent Attorney ŏ Engineering/Physics ŏ South Coast

If you are looking to develop your career further and take on more professional responsibility then this is the perfect opportunity for you.

PQ Life Sciences Patent Attorney ŏ London 7KLV ÀUP LV VHHNLQJ D FDQGLGDWH ZKR KDV D GULYH WR VXFFHHG DQG GHWHUPLQDWLRQ WR WDNH WKHLU FDUHHU WR incredible heights within a successful and expanding practice.

Telecoms Patent Attorney ŏ London &RYHULQJ DUHDV LQFOXGLQJ WHOHFRPPXQLFDWLRQV GLJLWDO DQDORJXHV DQG RWKHU LQWHUHVWLQJ HOHFWURQLFV related work, this is an excellent opportunity for rapid career progression.

Salaried Partner (Patent Attorney) ŏ Glasgow $ XQLTXH RSSRUWXQLW\ IRU D 6HQLRU 3DWHQW $WWRUQH\ 6DODULHG 3DUWQHU WR ZRUN ZLWK H[WHQVLYH SRUWIROLRV UDQJLQJ IURP QHZ LQQRYDWRUV WR WKH ZRUOG·V ELJJHVW FRPSDQLHV REC-pp88-89-Dawn-Elmore_DPS_2.indd 88

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Latest Patent Support Vacancies: Patent Paralegal/PA ŏ London

Offering £45,000+, this is an exciting opportunity with one of our most prestigious clients. This role is ideal for someone seeking variety in their work and new challenges.

Principal Patent Administrator ŏ Leeds

A great chance, offering £37,000+, to take that progressive next step in your IP career. A varied role for an H[LVWLQJ DGPLQLVWUDWRU ZLWKLQ D EXVWOLQJ ,3 ÀUP DQG JURZLQJ GHSDUWPHQW

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Patent Secretary ŏ London $ IDQWDVWLF UROH KDV DULVHQ ZLWKLQ DQ ,3 ÀUP IRU D SDWHQW VHFUHWDU\ WR MRLQ D WKULYLQJ OLIH VFLHQFHV WHDP supporting a handful of busy associates. Offering up to £38,000+.

Billing Assistant ŏ London $SSO\ QRZ IRU D QHZ %LOOLQJ $VVLVWDQW UROH ZLWKLQ D OHDGLQJ ODZ ÀUP 7UDLQLQJ ZLOO EH SURYLGHG ZKHUH UHTXLUHG and our client is offering up to £35,000 by way of remuneration.

IP Project Assistant (In-House) ŏ Cambridge :H DUH GHOLJKWHG WR EH ZRUNLQJ ZLWK WKLV H[FLWLQJ DQG IRUZDUG WKLQNLQJ LQ KRXVH ÀUP 7KLV LV D FKDQFH WR do interesting work for a very interesting company.

Patent Renewals Administrator ŏ London

Dawn Ellmore is currently working on the perfect role for an individual with a positive attitude and an enthusiasm for patent administration work.

Patent Administrator ŏ Scotland 2QFH D SDUW RI WKLV ÀUP DV VXFFHVVIXO FDQGLGDWH FDQ H[SHFW DQ DWWUDFWLYH VDODU\ WKH FKDQFH WR work with interesting attorneys and increasing workload with experience.

Patent Secretary ŏ London $ VPDUW DQG PRGHUQ RIÀFH LV RIIHULQJ D SDWHQW VHFUHWDU\ ZLWK \HDUV· H[SHULHQFH WR MRLQ WKHLU team. You will be given lots of responsibility and a warm welcome on arrival.

Patent Administrator ŏ Midlands 2XU FOLHQW·V SRUWIROLR RI ZRUN LV UDSLGO\ H[SDQGLQJ DQG WKH\ DUH QRZ ORRNLQJ IRU D KLJKO\ PRWLYDWHG DQG RUJDQLVHG LQGLYLGXDO WR MRLQ WKHLU VXFFHVVIXO WHDP DV D SDWHQW DGPLQLVWUDWRU

Patent PA Secretary to Partner ŏ London $ ZHOO RUJDQLVHG 3DWHQW 3$ LV VRXJKW IRU RXU FOLHQW·V &KHPLVWU\ WHDP ,GHDOO\ \RX ZLOO KDYH DW OHDVW \HDUV· SDWHQW H[SHULHQFH DQG WKH &,3$ &HUWLÀFDWH DV ZHOO DV IDVW SUHFLVH W\SLQJ VNLOOV

,I \RX DUH LQWHUHVWHG LQ ÀQGLQJ RXW PRUH DERXW WKHVH YDFDQFLHV RU WKH PDQ\ RWKHU UROHV ZH DUH FXUUHQWO\ ZRUNLQJ RQ SOHDVH JHW LQ WRXFK 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 @Dawn_Ellmore REC-pp88-89-Dawn-Elmore_DPS_2.indd 89

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Please scan to visit our website and view all our current vacancies:

Dawn Ellmore Employment 05/07/2017 12:06:07

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RECRUITMENT

+44 (0)20 7831 2290 mail@beresfordcrump.co.uk

Fully Qualified Biotech Patent Attorney Beresford Crump LLP was founded in 2015 as the successor to Beresford & Co. For our clients, we are an invaluable business resource of IP advice and support services. For our employees, we aim to provide equal opportunities and support to nurture their careers in a respectful working environment. As we approach our second anniversary, we are looking for a fully qualified biotech patent attorney to help us grow our life sciences practice and become a prominent member of our team. As a firm with big ambitions, the prospects are excellent for the right candidate to come and make their mark. Beresford Crump LLP already has a vibrant and expanding biotech & chemistry practice. You will be called on straight away to assist with our existing caseload which includes an interesting mix of drafting and prosecution for great local and overseas clients in the fields of pharmaceuticals, medicinal chemistry, protein arrays, sophisticated drug delivery, diagnostics and biomarkers, novel treatments, etc., but we are looking for more than that.

In more detail, we are looking for: Life Sciences: A patent attorney with at least a good first degree in biochemistry, biological sciences or similar to work closely with the partners across a wide variety of technologies for clients in the UK and abroad, but with a particular focus on life sciences in general and biotechnology in particular. Some prior knowledge of modern bioinformatics techniques would be an advantage. In addition to drafting and prosecution, the role will include some due diligence work, as well as oppositions and appeals. We are particularly interested in people who already have, or who wish to obtain, Higher Courts Litigation and/or Advocacy Certificates. The successful candidate will work at Beresford Crump LLP’s offices at 16 High Holborn, London WC1V 6BX. Replies to this advertisement, as well as confidential preliminary enquiries relating to this position or the firm, should be sent with your CV to Marion Grant, an independent recruitment specialist, email marion@mariongrant.co.uk or telephone 07939 224518.

It is vital for the long-term success of our practice that our professionals are not just excellent patent attorneys, but have a desire to help grow and ultimately manage the practice. We are looking for entrepreneurs, who want to take a leading role in a new firm with a bright future. You will share the partners’ passion for high quality patent drafting and prosecution and excellent client service. You will also believe in making the most of all the opportunities a career as a patent attorney has to offer, including exercising your litigator rights as part of the range of services excellent patent attorneys should offer their clients. With two members of the firm possessing Higher Courts Litigation and Advocacy Certificates, the firm regularly provides clients with litigation and advocacy services in intellectual property cases in the English courts up to and including the Supreme Court. With the likely advent of the UPC, the firm expects litigation to be an increasingly important area of activity for all its attorneys.

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In-house opportunity, Silence Therapeutics, Biotechnology, London Silence Therapeutics is poised at an exciting time in its growth, and is expanding its IP portfolio as a result of its ongoing efforts in the field of RNAi Therapeutics. They are able to offer an opportunity that is highly varied and one which will require European travel. You will work very closely with R&D departments and enjoy a collaborative environment where you will develop IP strategies in conjunction with scientific staff.

Newly Qualified Patent Attorney, Telecoms/Electronics, Hoffmann Eitle, London As a pan-European firm Hoffmann Eitle can offer a really unique array of experiences to patent attorneys joining their team. Given the close working relationship with the other offices situated across Europe, the workload will be highly diverse across a wide range of technologies. Attorneys are given access to a variety of experiences and, in addition to prosecution and drafting work, you will be encouraged to build first-hand knowledge of oppositions and broader litigation work as well as having control over building your own portfolio, with considerable support from the team.

Part Qualified (1-2 Years’ Experience), Chemistry, Midlands A strategically minded practice known for their commercial edge requires a recently qualified attorney to help manage their current work load, as well as adding to their portfolio with additional clients across the chemical and pharmaceutical fields. The practice handles a diverse range of technologies and manages the full lifecycle of their clients' IP, from initial IP capture and invention harvesting, drafting and prosecution through to all ongoing portfolio management and handling any contentious matters that may occur.

Trainee Patent Attorney, IT&E, London Begin your career in the best possible way with access to an individually tailored training and support scheme, an ever changing mix of technologies and an interesting client base. This firm can give you the best of both worlds, offering a close knit and collaborative working environment coupled with the opportunity to work with a leading international client base. They take pride in the level of independence they offer their attorneys, with regular client contact and the chance to build business and represent the firm at networking events.

Qualified Patent Attorney, Electronics/Engineering, Bristol Client satisfaction is at the forefront of this firm’s ethos, as is departmental connectedness and the provision of an open and supportive working environment. The firm offers its attorneys a great deal of room for professional development and the opportunity to attend a number of CPD and networking events. There is a very meritocratic structure ensuring that progression towards Partnership is both achievable and transparent.

Finalist, Physics, London Join an unquestionable force in the industry, with an ever growing list of cutting edge clients originating from across the physics, engineering and electronics fields. There is no risk of you becoming pigeonholed in this role, with the opportunity to work within cross office teams and collaborate on a diverse portfolio of clients, ranging from innovative start-ups and sole inventors, to SMEs and multinational corporations based in the UK, US and Asia.

Finalist, Chemistry, London Fancy working across a variety of subject areas, rather than being focused on just one area alone? This role is for you. The firm encourages the fast development of well-rounded commercial and legal abilities with the goal of helping their attorneys progress up the ladder very quickly. The Partners are deliberately recruiting into a demographic gap which means that whilst there are attorneys who will be both further and less far in their career than the person joining the practice in this role, there will be no internal competition impeding progression.

Part Qualified Patent Attorney, Engineering, Brighton This firm is commercially driven and takes a hands on approach to all matters, allowing you to gain valuable skills and substantial direct client experience from early on. The firm prides itself on its excellent training scheme, which is facilitated by the friendly and supportive working environment it offers. Remote/flexi working is available so if you’re not based in Brighton, don’t fancy travelling to the office every day, or prefer to work from a variety of locations – this opportunity could be one for you.

Nearly/Newly Qualified, Physics, Oxford Get to grips with your own fair share of work and get your hands dirty with this interesting opportunity offered by a quietly confident firm with very open views on remote/flexi working. You will become acquainted with high profile and high quality clients, and be offered significant responsibility from the off. Your portfolio will include direct clients based both in the UK and overseas, and will consist mainly of start-ups and SMEs – allowing you to work as closely as you like with the inventors, becoming an integral part of their IP plans.

Partner Designate, Electronics, Midlands Recent internal shifts have resulted in this firm being able to offer an accelerated track to Partnership within a dramatically reduced time frame. You will work with leading names across electronics (and engineering to some extent) both local to the region and further afield, with direct clients and an impressive foreign associate network spread across the world. There is a refreshing approach to BD, with individual budgets allowing you to pursue your own new business interests.

Senior Associate, Electronics/Engineering, Midlands Enjoy an extremely broad client base and handle innovative technologies originating from a range of fields, including electronics, telecommunications, medical devices, mechanical, semiconductors, software and computer systems. You will have access to a much more varied work portfolio than is normally expected, with endless drafting and prosecution supplemented with more commercial and management focused responsibilities.

Opportunities for Electronics Attorneys, Leeds/Sheffield/York/Manchester It’s no secret that opportunities for electronics attorneys are rife in the industry at the moment. We’re working with a number of firms in the North who are able to accommodate candidates at all levels. Yes, you heard us - from trainee all the way up to Partner. Same clients, same salary, and not to mention the North is a lovely place to live.

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

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6RIWZDUH DQG RU (OHFWURQLFV 3DUW RU 4XDOLĆHG 3DWHQW $WWRUQH\V VRXJKW IP Asset is an established, Oxford-headquartered, fast-growing IP practice with a good client EDVH :H DUH JURZLQJ RXU /RQGRQ RIĆFH EDVHG LQ D VKLQ\ QHZ EXLOGLQJ LQ 3DGGLQJWRQ ZLWK H[FHOOHQW IDFLOLWLHV :H EHOLHYH LQ SURYLGLQJ SUDFWLFDO FRPPHUFLDOO\ IRFXVHG ,3 DGYLFH DQG DUH DLPLQJ WR WUDLQ DWWRUQH\V LQ WKH VDPH PDQQHU WR KHOS GULYH DQG EXLOG WKH EXVLQHVV :H KDYH EXLOW D YHU\ HIĆFLHQW VHW RI SURFHVVHV DQG V\VWHPV WR HQDEOH DWWRUQH\V WR IRFXV RQ GHOLYHULQJ YDOXDEOH work to clients rather than spend time on administrative tasks. :H DUH VHHNLQJ FDSDEOH VHOI PRWLYDWHG SDUW TXDOLĆHG RU IXOO\ TXDOLĆHG DWWRUQH\V VSHFLDOLVLQJ LQ computer-implemented and/or electronics inventions to help grow our team. The role would SULPDULO\ LQYROYH DVVLVWLQJ WKH 6RIWZDUH DQG (OHFWURQLFV 3DUWQHUV VR D VWURQJ GHJUHH RU 3K' LQ 3K\VLFV (QJLQHHULQJ RU &RPSXWHU 6FLHQFH LV VRXJKW 3UHYLRXV H[SHULHQFH ZLWK PDFKLQH OHDUQLQJ IXHO FHOOV PHGLFDO LPDJLQJ DQG FRPSXWHU YLVLRQ ĆQWHFK F\EHU VHFXULW\ DHURVSDFH DXWRQRPRXV YHKLFOHV DQG RU URERWLFV ZRXOG EH EHQHĆFLDO $WWRUQH\V ZLWK LQ KRXVH H[SHULHQFH ZRXOG EH SUHIHUUHG $WWRUQH\V ZLWK VRPH H[SHULHQFH RI PXOWL GLVFLSOLQDU\ ZRUN ZRXOG DOVR EH RI LQWHUHVW $WWRUQH\V ZLWK H[SHULHQFH LQ DJUHHPHQW DQG OLWLJDWLRQ ZRUN DOVR SUHIHUUHG There will be opportunities to get involved with work across diverse technologies and we provide RXU FOLHQWV D YHU\ FRPSUHKHQVLYH VHUYLFH RIIHULQJ VR FDQGLGDWHV ZLOO JHW WKH RSSRUWXQLW\ WR EHFRPH DQ LQWHJUDO SDUW RI RXU FOLHQWVè WHDP 7KHUH ZLOO DOVR EH WKH RSSRUWXQLW\ WR JHW LQYROYHG LQ due diligence, commercialisation and contentious work. :H RIIHU D FRPSUHKHQVLYH LQWHUQDO WUDLQLQJ SURJUDPPH IRU SDUW TXDOLĆHG DQG VLQJOH TXDOLĆHG DWWRUQH\V WR KHOS WKHP EHFRPH GXDO TXDOLĆHG ZLWK VXSSRUW IRU DWWRUQH\V WR DWWHQG H[WHUQDO FRXUVHV WR VXSSOHPHQW RXU LQWHUQDO WUDLQLQJ SURJUDPPH :H DOVR RIIHU GXDO TXDOLĆHG DWWRUQH\V mentoring and hands-on support to help them build a client base and progress to Partnership. 6RPH RI RXU DWWRUQH\V DUH 3(% ([DPLQHUV DQG VRPH WXWRU RQ H[WHUQDO FRXUVHV VR ZH KDYH excellent internal training capabilities. ,I \RX ZDQW WR EH SDUW RI D IXQ G\QDPLF DQG JURZLQJ WHDP RU VLPSO\ ZLVK WR GLVFXVV WKH SRVVLELOLW\ GR JHW LQ WRXFK $SSOLFDWLRQV E\ HPDLO WR generalenquiries@ipasset.com.

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FOCUS ON FLEXIBLE WORKING… BIOTECH - LONDON (FT OR PT) 0GYN[ 3WCNKƂGF QT 2CTV 3WCNKƂGF (Ref 909434)

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The biotech portfolio of this established, KPVGTPCVKQPCNN[ HQEWUGF ƂTO KU TCRKFN[ expanding and as a result an exciting new opportunity has arisen for a part or newly SWCNKƂGF CVVQTPG[ VQ LQKP VJG ITQYKPI VGCO of a partner making waves in the biotech arena. If you are enthused at the prospect of active involvement in the ongoing development of a prospering practice, please FQ EQPVCEV WU VQ FKUEWUU HWTVJGT 6JG ƂTO KVUGNH is a pioneer of modern working practices and as such this position can be offered on a full or part time basis along with work from home RTQXKUKQPU # EQORGVKVKXG UCNCT[ CPF DGPGƂVU package will be on offer.

Several new client acquisitions in the chemistry and life sciences group at this VQR TCPMGF ƂTO JCXG TGUWNVGF KP CP QRGPKPI HQT C SWCNKƂGF QT ƂPCNU UVCPFCTF EJGOKUVT[ URGEKCNKUV VQ LQKP CP GZRCPFKPI VGCO ;QWT caseload would be heavily weighted towards pharmaceuticals and would encompass a variety of duties including oppositions, appeals and FTO analysis as well as drafting and prosecution. The group work with some of the world’s leading pharmaceutical corporations. Low chargeable hour targets CPF ƃGZKDNG YQTMKPI RTQXKUKQPU GPUWTG VJCV an effective platform is provided in order to achieve a happy work/life balance.

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One of the UK’s most renowned engineering focused patent prosecution practices is seeking to make a new appointment to its busy team. The ƂTO JCXG C DTQCF CPF GZVGPUKXG ENKGPV base comprising of both multinational corporations and SMEs. Although you would initially take up a busy existing caseload there will is ample opportunity to travel and be actively involved in business FGXGNQROGPV ECORCKIPU 6JG ƂTO RTQOQVG a healthy work/life balance and can offer work from home platforms. A competitive UCNCT[ CPF DGPGƂVU RCEMCIG YKNN DG QP QHHGT to the successful appointee.

Seeking an escape from the hustle and bustle of the City? Consider a move to the beautiful [GV XKDTCPV UQWVJ EQCUV 6JKU TGXGTGF ƂTO KU seeking to add to its busy and expanding electronics and IT team with the hire of a SWCNKƂGF QT ƂPCNU UVCPFCTF NGXGN CVVQTPG[ The roles present the opportunity to deal with a high-quality caseload in an autonomous and progressive working environment. With a low staff turnover, vacancies within VJG ƂTO CTG TCTG 4GPQYPGF HQT KVU RTQXKUKQP QH CP GZEGNNGPV VTCKPKPI RNCVHQTO VJG ƂTO KU one of the UK’s longest standing and most GUVCDNKUJGF URGEKCNKUV +2 QWVƂVU 9QTM HTQO home provisions are available.

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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

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RECRUITMENT

Are you looking for a career that gives you the opportunity to work with a variety of prestigious global clients? $UH \RX DQ HQWUHSUHQHXULDO SDUW TXDOLȴHG TXDOLȴHG SDWHQW DWWRUQH\ ZLWK H[SHULHQFH LQ SK\VLFV HOHFWURQLFV VRIWZDUH WHOHFRPV RU UHODWHG VXEMHFWV" ΖI VR ZH ZRXOG ORYH WR KHDU IURP \RX

Our Electronics, Computing & Physics group is one of the largest in Europe with an exciting portfolio ranging from telecommunications network providers and medical equipment to aerospace and electronic equipment companies, as well as in academic research. We focus on understanding our clients’ needs and delivering high quality practical advice with commercial context. So why is Withers & Rogers a great place to work? ȏ ȏ ȏ

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To apply, please email your CV and covering letter to recruitment@withersrogers.com. To discuss WKH UROH LQ FRQȴGHQFH SOHDVH FRQWDFW Susie Barsby, Recruitment Assistant, on DD 0117 9106 203.

London ȏ Bristol ȏ Leamington Spa ȏ 6KHɝHOG ȏ Munich /RQGRQ RɝFH 0RUH /RQGRQ 5LYHUVLGH /RQGRQ 6( $8 8QLWHG .LQJGRP

94 CIPA JOURNAL

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F\FOH WR ZRUN VFKHPH FKLOGFDUH YRXFKHUV GD\Vȇ DQQXDO OHDYH SHU DQQXP ULVLQJ WR GD\V SHU DQQXP DQG D KHDOWKFDUH FDVK SODQ DIWHU PRQWKV VHUYLFH

www.cipa.org.uk

05/07/2017 12:07:52

THE PINKS

RECRUITMENT

Join our market-leading IP practice, freshly formed by the merger of CMS, Nabarro and Olswang Part and Fully Qualiﬁed Patent Attorneys London, Scotland, Munich, Flexible

Opportunities include, but are not limited to: — Patent Attorney - Electronics/Software - London — Part Qualified Patent Attorney Electronics/Software - London — Part Qualified/Recently Qualified Patent Attorney – Life Sciences - London — Patent Attorney – Electronics/Software - Munich — Patent Attorney – Electronics/Software – Glasgow/Edinburgh These varied roles will offer exposure to prosecution work, including drafting, filing and opposition work, as well as the opportunity to work on exciting commercial and litigation projects. These specialist career paths will suit technically astute individuals looking to develop their careers as UK, German and European Patent Attorneys.

In return we’ll offer: — A competitive salary and comprehensive benefits — Promotion prospects — Wide and varied direct client exposure — A modern, technology-focussed environment enabling flexible and remote working — A non-hierarchical, collaborative environment Interested in being part of our firm? Visit cms.law to find out more and to apply. Alternatively, connect with Claire in our recruitment team at recruitment@cms-cmno.com to ask any questions.

cms.law

Volume 46, number 7-8

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CIPA JOURNAL

05/07/2017 12:08:11

THE PINKS

RECRUITMENT

OXFORD

IP Asset is an established, Oxford-headquartered, fast-growing IP practice with a good client base. We believe in providing practical, commercially-focused IP advice and are aiming to train DWWRUQH\V LQ WKH VDPH PDQQHU WR KHOS GULYH DQG EXLOG WKH EXVLQHVV :H KDYH EXLOW D YHU\ HIĆFLHQW set of processes and systems to enable attorneys to focus on delivering valuable work to clients rather than spend time on administrative tasks. If you want to be part of a fun, dynamic and growing team or simply wish to discuss the possibility, do get in touch. Please send applications for either the patent attorney or paralegal roles by email to generalenquiries@ipasset.com.

3DUW RU 4XDOLĆHG 3DWHQW $WWRUQH\V VRXJKW :H DUH VHHNLQJ FDSDEOH VHOI PRWLYDWHG SDUW TXDOLĆHG RU IXOO\ TXDOLĆHG DWWRUQH\V VSHFLDOLVLQJ LQ life sciences, software, chemistry, telecommunications/electronics or mechanical engineering to help drive the next phase of expansion. There will also be the opportunity to get involved in due diligence, commercialisation and contentious work. :H RIIHU D FRPSUHKHQVLYH LQWHUQDO WUDLQLQJ SURJUDPPH IRU SDUW TXDOLĆHG DQG VLQJOH TXDOLĆHG DWWRUQH\V WR KHOS WKHP EHFRPH GXDO TXDOLĆHG ZLWK VXSSRUW IRU DWWRUQH\V WR DWWHQG H[WHUQDO FRXUVHV WR VXSSOHPHQW RXU LQWHUQDO WUDLQLQJ SURJUDPPH :H DOVR RIIHU GXDO TXDOLĆHG DWWRUQH\V mentoring and hands-on support to help them build a client base and progress to Partnership. Some of our attorneys are PEB Examiners, and some tutor on external courses, so we have excellent internal training capabilities.

([SHULHQFHG 3DUDOHJDOV VRXJKW Having successfully recently recruited 2 new paralegals we have expanded the business and need more. To help support current work and future growth we are now seeking a capable, self-motivated, patent paralegal (formalities professional) to join our existing team of paralegals. 7KH UROH ZLOO LQFOXGH UHFRUGV PDQDJHPHQW DQG DVVLVWLQJ ZLWK IRUHLJQ ĆOLQJ DQG DVVLJQPHQW programmes, so previous record keeping and patent formalities experience is a pre-requisite. The role may also include some secretarial/PA duties in support of the senior staff, so dynamism and a willingness ‘to muck in’ are important qualities in someone seeking this role.

96 CIPA JOURNAL

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www.cipa.org.uk

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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

Patent Attorney

Electronics

Trademark Attorney

Part Qualiﬁed - Newcastle

Qualiﬁed - Munich

Qualiﬁed – London

Ref: 124315

Ref: 118671

Ref: 138178

Are you a part/newly qualiﬁed Patent Attorney (any

Exciting new instruction for G2 Legal.

We are

Experienced Trade Mark Attorney required (5yrs+

technology) considering your employment options

looking for a German qualiﬁed Patent Attorney

PQE) who will be responsible for managing and

and career prospects? I am working with a ﬁrm that

(Patentanwalt)

Physics/

developing an existing portfolio, and building the

has grown their business from 15 Partners to 42 within

Electronics/Software to join this ﬁrm’s Munich

ﬁrm’s trade mark registration/portfolio practice.

8 years. This success is largely due to the fantastic

based electronics team. The Munich office is

The successful candidate will be advising a range

people within the organisation and the company’s

central to the ﬁrm’s international proﬁle and

of clients, predominantly in the entertainment and

commitment to training and developing their staff.

undertakes work for many of its major clients. You

new technology ﬁelds. This ﬁrm has an excellent

There is an open door to progression that is not reliant

will beneﬁt from a fantastic salary and an exciting

reputation for their work and the position has an

on other people moving within the organisation.

and varied portfolio.

industry leading salary and excellent beneﬁts package.

Physics

Electronics/Engineering/Telecoms

Mechanical Engineering

Trainee - Nationwide

Senior Associate – London

Part/Newly Qualiﬁed – Leeds

Ref: 124333

Ref: 120151

Ref: 138321

Are you seeking a trainee Patent Attorney position

In a market where opportunities for electronics

This well respected ﬁrm is seeking a Patent Attorney

with a well-respected IP firm that has a proven

Attorneys are plentiful, this role presents food for

with expertise in mechanical engineering to join the

track record of developing careers? Providing

thought for those who are enthused at the prospect

Leeds team. Some experience in other technical

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

of becoming Partner in the near future.

This ﬁrm’s

ﬁelds, for example electronics or physics, would be

from you. I am working with a variety of firms

reputation is outstanding within this ﬁeld. Working

advantageous but is not essential. You will be either

throughout the UK seeking such individuals.

with a client base containing cutting edge technology

newly qualiﬁed or well on your way to completing

Once I understand your career motivations, I can

corporations, you will gain the opportunity to

your ﬁnal exams, with an appetite to learn and take

advise the companies best equipped to introduce

assist in a range of contentious activities including

on your own portfolio. Great career development

you to.

opposition’s appeals and litigation support.

platform available.

Electronics

Electronics & Mechanical Engineering

Chemistry

Part/Newly Qualiﬁed - Bristol

Qualiﬁed - Birmingham

Qualiﬁed – London

Ref: 125274

Ref: 124305

Ref: 98939

Would you like to maximise your full potential and

Somewhat of an open remit exits In Birmingham for

Qualiﬁed

achieve your long term career goals? Feel like you

Patent Attorneys with high tech, physics, telecoms,

constraints?

have heard this before? This ﬁrm has a fantastic

electronics or mechanical engineering backgrounds.

autonomous

proven track record of delivering this and is

You will work closely with the lead Partner in the

international ﬁrm has a strong presence in

committed to enabling you to achieve your goals

group to contribute towards the development of the

London as well as a solid reputation in Europe.

at the pace that works for you. You will be working

group and the business. The successful candidate

An opportunity has now arisen for an Attorney

with a specialist team of electromechanical

will have capacity to work independently and directly

specialising in chemical subject matter to join its

Attorneys and design Solicitors handling all non-

with small, medium and large industrial clients and

busy London office. A competitive salary and good

contentious and contentious design matters.

universities in the UK and overseas.

promotional prospects will be on offer.

with

expertise

chemistry

specialist

Seeking working

shackled

collaborative,

environment?

This

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

Email attorneys@g2legal.com

Tel 020 7649 9298

G2 Legal 26 Finsbury Square London EC2A 1DS

REC-pp97-G2_1.indd 97

Mob 07426 043744

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

05/07/2017 12:09:00

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

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

Forward-thinking private practice 98 CIPA JOURNAL

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www.cipa.org.uk

05/07/2017 12:09:18

Before you apply the suntan lotion, don’t forget to apply to these roles! Explore new opportunities in IP www.weareaspire.com/IP

Physics/Electronics - CPA or EPA £Excellent package/beneﬁts. Bath, 1013303

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

NEW! You are a qualified CPA or EPA with experience of physics, electronics or telecoms related subject matter looking for a new firm to match your professional ambitions. You’ll be responsible for a profitable and diverse portfolio of established UK and international clients - including a rich diet of drafting work. You should be commercially astute with fantastic client-facing skills to complement your technical competencies. This thriving, established practice will appeal to those who want to work in a friendly, hands-on and supportive culture with an excellent platform for long-term career advancement; prospects are exceptional for those who harbour partnership aspirations.

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.

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

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

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! Chemistry/Pharmaceutical CPA or EPA £highly attractive package + bonus, Cambridge, 1011441 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. Electronics/Physics - Finalist/Qualified £excellent + bonus + benefits. London, 1008811

A fantastic opportunity for a commercially astute software/electronics specialist has arisen within a truly dynamic and progressive international firm. You must be CPA or EPA qualified (up to 5 years PQE) having gained significant experience of original drafting and contentious areas of IP. Due to a substantial increase in referral work with many pivotal innovation-lead blue-chip brands, there is an immediate requirement for a bright, conscientious and ambitious team-player to add value to the firm’s growth plans. This role will challenge and excite in equal measure; a truly unique position with enviable clients and a brilliant career structure tailored to your professional ambitions. Biotechnology Attorney - Finalist/Qualified £Excellent + package. London, 1002491 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? Computer Science/Software CPA or EPA £Excellent + bonus + package. London, 1006955

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

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.

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-pp99-Aspire_1-RHS.indd 99

05/07/2017 12:09:34

THE PINKS

RECRUITMENT

Vacancy for Ambitious Attorney 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 an opportunity for a part-time fully qualified trade mark attorney.

For the position, the candidates will require an excellent academic record. The position will be based in our office in Sevenoaks and will involve a varied caseload, under the initial supervision of a Partner. The successful candidate 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 nick.private@grahamwatt.co.uk.

100 CIPA JOURNAL

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THE PINKS

RECRUITMENT

Great people make a place great

Cooley’s patent group, which is comprised of 110+ attorneys and patent professionals, collaborates

Two Part-Qualified Patent Attorney Positions

seamlessly between our ofﬁce network and has

Organic Chemistry/Pharmaceuticals

expertise across all areas of engineering and science. We handle ground-breaking IP matters and business-critical litigation across a wide array of dynamic industries both domestic and international. At the same time we counsel start-ups and entrepreneurs poised to become the business and technology leaders of the future. Cooley takes great pride in representing the most innovative companies in the world. We have decades of experience working with cutting-edge companies to protect and monetise breakthrough technologies which are fundamental to their businesses. The London patent practice was established in 2015 to offer clients a comprehensive service covering all aspects of patent practice in the life-sciences, mechanical and high-tech sectors. We are now looking to enhance this offering by recruiting enthusiastic and proactive part-qualified patent attorneys to join this thriving team and benefit from the support and strength of an international law firm.

Electronics/Physics London You will preferably be a part-qualified patent attorney (post QM qualification) with a strong technical and academic background. Although a PhD in the relevant subject matter is preferred, it is not essential for the right candidate. You will also have experience in the drafting and prosecution of patent applications in your area of expertise. You will enjoy contributing to a team with ambition and to the development of a global patent practice. Whilst the role will primarily support an expanding workload from existing clients, your passion for developing a client base of your own will be encouraged. Cooley offers excellent personal and professional development opportunities and competitive remuneration and benefits. Interested applicants should send a CV and covering letter to: Sarah Warnes Trainee Recruitment & Legal Talent Manager Cooley (UK) LLP Dashwood 69 Old Broad Street London, EC2M 1QS t: 020 7556 4414 e: swarnes@cooley.com

In order to provide equal employment and advancement opportunities to all individuals, employment decisions at the Firm will be based on merit, qualifications and abilities. The Firm does not discriminate in employment opportunities or practices on the basis of race, color, religion, national origin, ancestry, gender, sex, gender identity, gender expression, age, medical condition, sexual orientation, sexual preference, marital status, citizenship, pregnancy, childbirth or related medical condition, physical or mental disability, genetic characteristics, veteran status or any other status or characteristic protected by federal, state or local laws. This policy governs all aspects of employment, including but not limited to, recruitment, selection, job assignment, compensation, discipline, promotion, termination, and access to benefits and training.

Volume 46, number 7-8

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CIPA JOURNAL 101

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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

About the job

Renewals C TP\ ;TPSTa

We require an enthusiastic leader for our busy renewals team. Reporting to our Head of >_TaPcX^]b cWT bdRRTbbUd[ P__[XRP]c fX[[ T]bdaT cWT Ud[ [\T]c Û R[XT]c X]bcadRcX^]b c^ aT]Tf patent, trade mark and design registrations in all IP jurisdictions. With a remit to challenge and X\_aêT _a^RTbbTb P]S fâZ ^fb cWT a^[T aT`dXaTb P] T\_WPbXb ^] aT[XPQX[Xch PRRdaPRh P]S TU RXT]Rh H^d fX[[ [XPXbT X]cTa]P[[h fXcW ^da 5X]P]RT CTRW]^[^Vh P]S 2dbc^\Ta 2PaT cTP\b P]S TgcTa]P[[h fXcW ?PcT]c >U RTb P]S ^da ]TcfâZ Û PVT]cb Pa^d]S cWT fâ[S ;TPSX]V cWT cTP\ with a ‘hands on’ attitude, you should be capable and willing to both “do” and “coach”.

About you

Who are Envoy?

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How to apply

Previous Intellectual Property administration experience, for example, gained from a formalities position in private practice or industry; A meticulous eye for detail; Good interpersonal skills for liaising with practitioners in private practice; Presentation and client communication skills; CTP\ [TPSTabWX_ RP_PQX[Xch* CWT R^] ST]RT P]S PQX[Xch c^ bcT_ X]c^ P [TPSTabWX_ a^[T* P]S CTRW]XRP[ P_cXcdST U^a dbX]V P]S Tg_[PX]X]V ^] [X]T P]S 8C bhbcT\b

Interested? Send your CV and covering letter (including details of your notice period) to Kim Magee at: k.magee@envoyrenewals.com

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Envoy are specialists in global IP annuities and renewals. Founded in 2008, Envoy’s customers now stretch across 40 countries. Our clients include renowned patent and trade \PaZ a\b V[^QP[ [Pf a\b d]XeTabXcXTb P]S blue chip corporations.

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“We are passionate about matching people to careers - not jobs. People want to speak to us because we listen. We are reinventing IP recruitment.”

www.ip-support.co.uk

REC-pp103-LSG_1.indd 103

020 7776 8966

info@ip-support.co.uk

05/07/2017 12:10:52

THE PINKS

RECRUITMENT

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

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

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

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

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Now recruiting: Part / Fully Qualiﬁed Patent Attorney Physics / Engineering / IT London & Bath www.abelimray.com/careers

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