CIPA Journal, September 2017 by CIPA Journal

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

September 2017 / Volume 46 / Number 9

More than a pinch of salt? Actavis v Eli Lilly: Lilly: What patent attorneys and examiners need to know

SPC summer review 2017 Carpmaels & Ransford

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Test your UPC knowledge – UPC number quiz Estelle Senior

US: surviving Alice in the e-commerce arts Mark Nowotarski

Going Remote... Lima, Peru Heather Lane

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

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www.ip-support.co.uk 020 7776 8966 info@ip-support.co.uk

We have a number of positions available for: Part/Fully Qualified Patent Attorneys Engineering/Electronics - London Patent Secretaries & Administrators All levels - All UK Regions

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Contents 19 12

3, 16 & 25

UP FRONT

ARTICLES

Editorial

Alasdair Poore 6 6

Actavis v Eli Lilly

SPC summer review 2017

Life Sciences Conference Test your UPC Knowledge

Estelle Senior 54

Gwilym Roberts

Council Minutes

Lee Davies

47 53

Mark Nowotarski

Chief Executive’s report

Lee Davies

Surviving Alice in the e-commerce arts

EDUCATION West of England Meeting

Sean Gilday 56

Institute events

Carpmaels & Ransford

NEWS 8

AGM and Council elections

Lee Davies 9

Philippines update

Going Remote – Peru

Heather Lane 52

Obituary

EPO decisions

Bristows

Threats Act – Commencement

James Porter 10

IPO decisions

Barker Brettell

The not-so-secret diary

Andrea Brewster

Patent decisions

Beck Greener 31

USPTO regulations

Tim Jackson

PERSONAL 48

PEB – QAA report

Dr Robert Taylor 10

DECISIONS

Trade marks and other IP

Bird & Bird

THE PINKS

D. Mirandah and R. Pescante 11

IPO higher education resources

Christopher Smith 11

IPO survey for CIPA members

Arthur West

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Courses and events International Recruitment Support

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58-61 60-61 58-79 58 & 80

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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 Coordinator: Frances Bleach Chief Executive Lee Davies Head of Media and Public Affairs Neil Lampert Executive Assistant: Charlotte Russell Communications Officer: Kristina Grinkina Head of Education Georgina Sear Education Projects Co-ordinator: Angelina Smith Education Administrator: Bernadette Dulko Finance Manager Spurgeon Manuel Office Supervisor Lea Weir-Samuels General enquiries: 020 7405 9450; mail@cipa.org.uk; www.cipa.org.uk

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Editorial STOP PRESS: Mandatory Continuing Professional Development. One Actavis decision to be consumed every few months. Please read the following warnings carefully. If you take an overdose, consult your fellow practitioners urgently. After the numerous decisions over the last 18 months in the WarnerLambert litigation – providing food for thought on issues such as plausibility, insufficiency, direct and indirect infringement, and the meaning of Swissform claims – yet again Actavis litigation has been in the news with more food for thought, but more than thought this time – mandatory consumption. Perhaps all those attorneys (maybe slightly smug) who passed P6 (as it then was) years ago, should now be required to take a resit. Would they, as the cover picture encapsulates, say K=Na? Please bear in mind that this editorial is not intended to be a short summary of Actavis v Eli Lilly. For that you can see pages 16 and 25, as well as articles planned for future editions of the Journal. This editorial is intended to stimulate ideas – and hopefully get some comments back. Editor’s champagne awaits the most informative (or perhaps entertaining) response. The Supreme Court decision in Actavis v Eli Lilly1 has undertaken an extensive, but nevertheless succinct, review of the history of purposive construction, of door lintels and epilators, of the Improver questions, which morphed into the Protocol questions (and remained even after the Protocol2 in question was amended), and has taken by the scruff of the neck, and shaken up the components of “purposive construction” and dumped them into a new order. In reaching that new Volume 46, number 9

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order Lord Neuberger has paid specific attention to what other EPC jurisdictions have said about the question, something that the court had in any event to do, because, rather unusually, it (that is the UK Supreme Court3) was determining the question of infringement in relation to France, Italy, and Spain as well. That new order is one which every patent attorney will need to be not just familiar with, if indeed they are not there yet, but also have an idea as to its future implications. The decision surely has a robust common sense and logic about it – but it also throws up some substantial

Alasdair Poore

construction, but there are two questions: 1. Is it covered by the literal wording of the claim? (The construction question.) 2. If not, is it an equivalent? (The equivalent question(s))

A fresh view of construction? The first question is properly a question of construction. It does not (I think) take us back to “the literal wording”. Some of the old rules are definitely not thrown away, so determining that the person

It is important that future innovation is not stifled in the interests of providing ever stronger protection for current innovations. questions both on legal issues such as validity as well as infringement, and on practical issues such as how the approach to drafting and prosecution will be or should be affected. It even throws open the question of whether those infringement opinions that we have given in the past few years now need to be revisited. So without labouring something that will be laboured on many other occasions, what is the core of the decision? In essence, in order to determine whether something is an infringement, there is not a single question of

skilled in the art would have understood by the word “vertical” or the range 1% to 25%4 are still perfectly proper questions of construction where one will not necessarily be tied to the strict meaning of the words in question. The rule here is the same (well almost) as applies in relation to contract5. Patent attorneys – here is your reason to refresh your knowledge on contractual interpretation! But, some may ask, does this question matter, in the light of the second question, is it an equivalent, which preActavis could be thought of as at least covering the construction question. For candidates in exams, of course it SEPTEMBER 2017

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UP FRONT

matters. My question is, does it matter in practice? Answers and examples on a postcard (or in a letter) – remember, it might merit the Editor’s champagne. Incidentally, I believe it does.

The equivalents question – time travel: can the prior art infringe? The second (equivalents) question spawns three sub-questions. They are almost, but not quite, a repeat of the Protocol questions. The crucial difference in how they are framed is that it is now permissible, in the second Protocol question (“Is it obvious that the equivalent would have worked in the same way?”), to view this on the basis that you know that the equivalent actually works6. Bearing in mind that this could be (and in this case was) knowledge acquired after the priority date or even the publication date of the patent it seems to imply that the scope of a patent (that is what infringes it7) can change, with maturing knowledge, even after publication or grant. Maybe the answer is that the scope has not changed,

it is just one’s knowledge of the scope that has changed – does that make for a reasonable degree of certainty? Some have suggested that this could mean that the granted patent could validly cover a prior art embodiment8. Is this possible and, if so, in a similar way to registered designs, will the courts find their way around it? Perhaps this is why Lord Neuberger was reluctant to make a definitive statement as to whether or not the equivalent had to be obvious9, as it was suggested10 was required in Germany.

Infringement: a moving target? This takes one back to the first (and also to the third) of the new Protocol questions. Fundamental to all this analysis is “what is the inventive concept?” That is (presumably) fundamental to determining whether something can be an equivalent. How and when is it determined? The problem of the inventive concept is epitomised by the discussion in Improver over coiled springs, metal coiled springs and

Notes and references 1. [2017] UKSC 48 – www.bailii.org/ew/cases/EWCA/Civ/2016/1006.html 2. By the addition of Article 2, which stated: “Equivalents: For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims” – which one might be forgiven for thinking would have lead more directly to this review of equivalence. 3. The original application was for a declaration of non-infringement. The (then) Brussels Regulation, article 22(4) provides for exclusive jurisdiction in relation to matters concerning the registration or validity of a patent. This did not relate to registration or validity, so in principle it was open to the English courts to accept jurisdiction in accordance with their national practice. 4. i.e. as in Convatech [2015] EWCA Civ 607 – www.bailii.org/ew/cases/EWCA/Civ/2015/607.html 5. para 58. Principles that Lord Neuberger notes were recently “affirmed” in Wood v Capita Insurance Services Limited [2017] UKSC 24 – www.bailii.org/uk/cases/UKSC/2017/24.html 6. paras 62, 63 7. Lord Neuberger is at pains to differentiate the question of scope of protection from just “construction” of the claim or patent. 8. Prior art discloses compound A is useful for an application.

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EDITORIAL

rubber bars (or should it have been “an entity which, when rotated, has a large number of opening and closing jaws”, which can grab the hair and pull it out). In some cases, the inventive concept may be clear, but in others it may not: there may be a wide range of concepts to choose from. Is it what the patentee says it is? Should the patentee be silent as to the inventive concept so that later one can argue for the most? If (as may be typical in some case) there is only one embodiment or example, how does one assess the inventive concept from this? Should the patentee disclose lots of inventive concepts, maybe in layers, so that there are ranges of scopes that can be considered? Is it really a construct made by the court (in the light of expert evidence)? Is this analogous the question of inventive contribution in software and business method patents? Does lack of clarity about the inventive concept go to lack of clarity of the claims themselves? Can one expressly state in the patent that two identically worded claims should be viewed, one with equivalents, and

Compound B is not obvious in the light of it, because there are too many alternatives some of which will work and some of which will not. The patentee discovers compound B works for the application and the mechanism (which he considers his inventive concept). It is now obvious that compound A works like compound B. Does the patent cover compound A? Or is it now clear that the inventive concept is rather narrower than the inventor thought, since it cannot possibly cover compound B. And if so, how wide is the exclusion zone around compound B? 9. The issue seems to have been rather on the cusp here: it was agreed that substitution of ionic potassium for ionic sodium would have been a natural approach to follow, and that it was straightforward to do, but not that it was obvious that it would work. 10. para 64 11. para 87 12. para 88 13. See the Spanish approach summarized in para 85: In Spain there is a doctrine of actos propios, which as Arnold J explained in para 184, is “the doctrine of one’s own acts”, but it only justifies relying on the prosecution file in relation to statements which are “unequivocal, clear, precise, conclusive, undoubted and [do] not reflect any kind of ambiguity” 14. The question here is determining what is fair. Balancing this against “reasonable certainty for third parties” alone does not provide an assurance that the inventor obtains only a fair (potential) reward for their innovation.

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UP FRONT

one without equivalents? One thing is probably clear (but is it really?) – the benefit of equivalents certainly appears also to create the hazard of more prior art. But perhaps it is as simple as redefining the inventive concept (as opposed to the literal wording); and the inventive concept can never extend to the prior art? So not only may the patent scope get broader (or be better understood as being broader) based on subsequent events, but it can narrow itself to avoid the prior art, when that comes to light. Thoughts (and examples) please! Some German jurisprudence could help here.

Prosecution blues? One of the additional discussion points in the decision was the use of the prosecution file for interpreting the patent. The result, a “sceptical, but not absolutist” approach11: where the construction is truly unclear or where it would be contrary to the public interest (but not absolutely12 to exclude other possibilities). The issue here, as observed later in this Journal [page 16], is that this means that the attorney has to assume that the prosecution file might be referred to, and has to consider tailoring their language to this possibility. The lesson is, when responding to the Patent Office, leave at least two interpretations of anything you say13.

EDITORIAL

what you wanted to include in the claim is in fact an equivalent. But does this raise the profile of another added subject-matter objection – that the nature of the amendment made means that the inventive concept has now changed? And that itself amounts to added subject-matter?

Fair or damaging innovation? The approach in Actavis, and the new Protocol questions, would almost certainly seem to make for broader interpretation of the scope of a patent in the UK, and in particular more difficulty in designing a work-around. Maybe that is good, if it brings more certainty to the consistency of decisions on infringement. And certainly it is preferable to be seen to be playing by the same rules in the context of the UPC. But it could also be seen as assisting the UK courts in competing with those in mainland Europe by being more patent friendly. There is of course a strong argument that a strong patent system is good for innovation – but there are also increasingly vocal challenges to that view (although there have always been challengers). The answer is not so simple – what is good for innovation is a well-balanced patent system. In a sense, the aim of the test of infringement may

be to provide a balanced system: “fair protection for the patent proprietor”.14 It could be said that protection against taking the concept (even after subsequent experimentation) is the minimum for fairness, and to achieve that balance. However, there is a clear risk that too wide a doctrine of equivalents, especially based on what is discovered after the invention is made, may dampen innovation. It is often argued that the search for workarounds is a valuable driver in innovation; and it is clear that the vast majority of developments are built on the back of previous developments (as indeed was this one). Extending protection to areas that require further experimentation should be treated with caution. It is important that this future innovation is not stifled in the interests of providing ever stronger protection for current innovations. That is what a fair level of protection should engage. Perhaps the Supreme Court will have a further opportunity to explore that balance when it considers the issues of plausibility and sufficiency in WarnerLambert v Generics (and also Actavis) early next year. In the meantime, please send your comments to editor@cipa.org.uk – the Editor’s champagne is waiting.

Do added matter objections dissolve? One clear benefit of the approach is that one can become (potentially) less concerned about the problem caused by having to make a narrowing amendment with inadequate literal support in the body of the specification. There are reams of case law on intermediate generalisations and added subject-matter, in brave attempts to avoid examiner objections without yielding too much ground. Indeed, part of the problem in Actavis was that the examiner had objected that the original claim lacked support, and there was no intermediate fall back. Now, at least in theory, one can be less concerned about this, on the basis that one can, in future, still argue that Volume 46, number 9

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Chief Executive’s report

he move happened. CIPA’s office is now located on the second floor of Halton House, 20-23 Holborn, London, EC1N 2JD. The move was not without a few glitches, not least the closure of most of central London on the intended moving day for the Prudential Ride London cycle event, which was overlooked by our logistics company. Rather than a leisurely move across a quiet weekend, we had to change our plans to a more frantic exercise on the following Monday, dodging traffic wardens and busy streets. But we made it happen, thanks to the fantastic efforts of CIPA’s staff. We are now working in an entirely different environment, having moved from the small, compartmentalised offices of 95 Chancery Lane, to the large, open-plan setting at Halton House. We are learning how to work differently, which is not without its challenges, but we have the advantage of much improved knowledge of what each of us is up to, which was previously hampered by too many walls and doors. There were two important aspects to finding and designing a new office for CIPA. In addition to improving the

back-office facilities for staff, providing excellent meeting spaces for members to at least match those available at 95 Chancery Lane was a priority. Whilst we still await the installation of a demountable wall, I hope members will enjoy the modern meeting rooms we have created, which have the advantage of opening-up into a large seminar room. Not wishing to waste an inch of space, you will even find a members’ bar area for that all-important networking before and after events. It is not just our accommodation that is changing. This summer we are also saying sad but fond farewells to two key members of staff. Everyone thought that, after almost two decades looking after CIPA’s day-to-day financial transactions, Andrew Hewitt was part of the fixtures and fittings. Andrew has made the bold decision to spread his wings and take on responsibility for the full financial system with a company more local to him. We are incredibly sad to see Andrew go, but we wish him all the very best in his new job. Also moving on is Rebecca Gulbul. Rebecca came to CIPA three years ago as an intern looking to gain experience

of the IP world to back up her legal qualifications. Rebecca’s interest is in IP policy and she quickly became a full-time member of staff, supporting committees in the writing and publication of policy papers. Rebecca has been offered the opportunity to utilise her research skills by undertaking a PhD scholarship in IP. We wish Rebecca every success in her studies and are sure that she will remain in touch as she goes about her research. Part of Rebecca’s role involved supporting the work of CIPA’s law committees, work previously undertaken by Gary McFly when he was my Executive Assistant. We have decided to reinstate the Executive Assistant role, not least because I need looking after if I am to end up in the right place at the right time. I am delighted to be able to say that Charlotte Russell, who many of you will know from the events, regional meetings and seminars she has organised, has been appointed as Executive Assistant. This is a new and exciting opportunity for Charlotte, one I know she will be successful in. Lee Davies, Chief Executive

Council Minutes Minutes of the Council meeting held on Wednesday 7 June 2017 at 14:30. Item 1: Welcome and apologies Present: A.J. Rollins (President, in the Chair), S.F. Jones (Vice-President), C.P. Mercer (Honorary Secretary), J.D. Brown, R.J. Burt, M.P. Dixon, J.A. Florence, C.M. Hammer, G.J. Iceton, A.C. Instone, J.T. Jackson, R.P. Jackson (by phone), R.D. Mair, A. Mukherjee, B.N.C. Ouzman (by phone), A.D. Poore, T.W. Roberts (by phone), V.B. Salmon and S.M. Wright. 6

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Lee Davies (Chief Executive) and Neil Lampert (Head of Media and PR) were in attendance. Apologies: A.R. Brewster (Immediate Past President), P.G. Cole, S. Ferrara, S. Harte and G.V. Roberts.

Item 2: Conflicts of interest 132/17: There were no conflicts of interest.

Item 3: Minutes 133/17: The Minutes of the Council meeting held on Wednesday 3 May 2017 were approved following amendment. 134/17: From minute 104/17. Vicki Salmon informed Council that the Litigation Committee would consider the scope and content of a membership survey, designed to gather information on the scale and nature of litigation www.cipa.org.uk

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activities undertaken by patent attorneys, at its next meeting. 135/17: From minute 107/17. Tony Rollins advised Council that he had been away from the UK on a combination of CIPA business and holiday and that he would be away for the latter part of June and the Council meeting in July. Tony said that the Officers would consult their diaries and offer up some potential dates for a symposium to address Brexit-related issues that were not linked to either the UP/UPC or EUIPO. 136/17: From minute 112/17. Tony Rollins advised Council that he had arranged a pre-meeting with all those from CIPA who were due to attend the UK IPO meeting on 12 June 2017 to consider proposals from the Industry Trilateral and that, if necessary, the group would hold a follow-up discussion before the EPO meeting scheduled for 20 June 2017. Council agreed with a proposal from Tony Rollins that he should liaise with the CIPA members attending the UK IPO meeting to set out CIPA’s position as there would not be time to bring the discussion back to Council. Tony advised Council that BusinessEurope had invited him to attend the EPO meeting on 20 June as an industry expert and that the UK’s official representation would be through the UK IPO. 137/17: From minute 114/17. Catriona Hammer advised Council that the Exploitation Committee was considering the IPO’s Corporate Plan. 138/17: From minute 119/17. Tim Roberts presented Council with a paper on the implications for the implementation of the Nagoya Protocol following Brexit. Tim advised Council that the paper was based on an earlier version he had written for the Journal (May [2017] CIPA 34). Simon Wright added that the paper had Volume 46, number 9

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the full support of the Life Sciences Committee. Rob Jackson suggested that the introduction to the paper needed to make it clear that it was addressing the post-Brexit scenario and the transposing of EU regulations into UK law. Rob added that he would forward his comments to Tim Roberts. Tony Rollins said that it might be helpful for the paper to draw out issues such as instances where genetic resources are common to more than one country. Action: Council asked Tim Roberts to liaise with the Chair of the Life Sciences Committee, Simon Wright, for final sign-off of the paper. 139/17: From minute 119/17. Simon Wright advised Council that there was consensus in the Life Sciences Committee that CIPA should submit an Amicus Brief in relation to the Warner‐Lambert v Actavis case, addressing the issue of plausibility. Paul Cole’s paper, previously circulated to Council members, was seen as a good starting place, but Council asked the Committee to focus on matters of law and not procedural issues such as amendment. Action: Council remitted the drafting of an Amicus Brief to the Life Sciences Committee, with the Patents Committee being kept informed. Council requested that the draft brief should come back to Council before submission.

Item 4: Brexit 140/17: Tony Rollins advised Council that there was very little to report since the May meeting of Council, other than that he and Neil Lampert had drafted a press release for publication following the election, calling on the UK government to recognise the urgency in passing the legislation required to enable ratification of the UPC Agreement and for the Brexit negotiation to include the UK’s participation in the UPC after Brexit.

Item 5: Bye-laws 141/17: Council considered a report on the review of the Bye-laws and agreed to schedule an AGM under the existing Bye-laws for the beginning of October 2017, to allow for the presentation of the annual accounts to the membership and the elections for Council, President and Vice-President. Council agreed to draft a revised set of proposed Byelaws, setting out the new transitional arrangements, which will need to be put in place, for the Privy Council to consider and to aim to schedule a General Meeting for members to consider the proposed Bye-laws, with a view to launching the new Bye-laws in time for the 2018 membership year. Council agreed to amend Byelaw 34.1 to address the Privy Council Advisors’ concerns that the transitional provisions should require Associate and Student members who transfer to the new EPA Member and Paralegal Member grades to evidence that they fulfil the requirements for these classes of membership. Action: Lee Davies to plan for the AGM to be held early in October 2017 and to inform the Privy Council of the intention to revise the transitional arrangements in the proposed Byelaws prior to re-submitting these to the Privy Council Advisors.

Item 6: Regulatory issues 142/17: Confidential minute. 143/17: Tony Rollins advised Council that IPReg seemed to be making good progress on its response to the Competition and Markets Authority’s implementation action plan, which would be published in due course. 144/17: Tony Rollins asked members of Council to forward any comments on the FD4 (P6) Review to Simone Ferrara, Chair of the Education and Professional Standards Committee, so that the Committee could consider these when formulating CIPA’s response. SEPTEMBER 2017

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Item 7: Office relocation 145/17: Lee Davies informed Council that the lease negotiations for Halton House had been successfully completed and that Tony Rollins and Stephen Jones had witnessed the affixing of CIPA’s seal to the lease documents. Lee added that he was in the final stages of concluding the negotiations for the fit-out contracts and that he would be in a position to provide a more detailed report at the July meeting of Council.

Item 8: IPO and EPO matters 146/17: Tim Jackson advised Council that there were a number of IPO and EPO updates within the minutes of the Patents Committee. Tim added that he and Gwilym Roberts were due to meet with Sean Dennehey to discuss a range of issues relating to the work of the IPO and that he would Report to Council following that meeting. Tim said that the Patents Committee was in the process of arranging for Alfred Spigarelli of the EPO to visit CIPA in late November or early December to discuss EPO procedures.

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Item 9: Committees and committee reports 147/17: Congress Steering Committee John Brown advised Council that the preparations for Congress were going well, with delegate numbers higher than at the same time last year. John added that the ‘early bird’ delegate rate would come to a close at the end of June. John said that the resignation of Sir Michael Pitt as Chair of the Legal Services Board had created a slight problem with the programme, but that he hoped that Tim Moss, the new Chief Executive of the IPO, would accept an invitation to speak at Congress. 148/17: Internal Governance Committee Council noted the report from the Internal Governance Committee. Bobby Mukherjee advised Council that there had been a significant negative adjustment to CIPA’s annual accounts, largely as a result of the annual assessment of the performance of the defined benefits pension scheme, which had suffered from movements in corporate yield bonds

(as had similar schemes). Bobby added that the Committee had examined the accounts, which would come to Council in July, and wanted to meet with the actuary advising the pension scheme to obtain a better understanding of the operation of the scheme and the options open to CIPA. 149/17: Patents Committee Council noted the report from the Patents Committee. 150/17: International Liaison Committee Council noted the report from the International Liaison Committee. Richard Mair informed Council that the visit of the Intellectual Property Institute of Canada (IPIC) had gone very well. Richard added that the American Intellectual Property Lawyers Association (AIPLA) meeting was arranged for Friday 16 June and included a breakfast meeting on diversity. Richard said that the Committee continued to liaise with the Korean Patent Attorneys Association over its visit in September and that the

AGM and Council elections 2017 The 2017 AGM will be held in London at 5.30 pm on Wednesday 4 October 2017, immediately following the Council meeting scheduled for that date. At least eight Council members are standing down at the AGM, as required by the Bye-laws. A number of Council members have decided not to stand for re-election. Fellows of CIPA are invited to stand for Council and to become involved in leading the Institute and shaping its future direction. The President and the VicePresident will also stand down to make way for those newly elected to these roles. This year, the ballot list will be approved at an Ordinary General

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Meeting (OGM) in London on Wednesday 6 September, 2017. The election process will commence shortly after the OGM and the results will be declared at the AGM. Any Fellow may be nominated for election as a member of Council or as Vice-President. Any Fellow nominated for election as President must have previously served as VicePresident or as a member of Council. Nominations should be made to me, the Chief Executive, in writing and must include the consent of the

Fellow being nominated. Fellows may nominate themselves for election to Council or the nomination may be made by another Fellow on their behalf. Nominations for President and Vice-President must be supported by four other Fellows. The election will be conducted online. Postal ballots will be available upon request to Lea Weir Samuels. Please e-mail lea@cipa.org.uk, or telephone Lea on 020 7440 9360. Lee Davies, Chief Executive

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Committee was turning its attention to the International Association for the Protection of Intellectual Property (AIPPI) conference in Sydney, Australia, in October 2017. 151/17: Life Sciences Committee Council noted the report from the Life Sciences Committee. Julia Florence provided Council with an update on the Committee’s response to the SPC survey being undertaken by the Max Planck Institute on behalf of the European Commission.

Item 10: Officers’ reports 152/17: Council noted the Officers’ reports.

Item 11: Chief Executive’s Report 153/17: Council noted the Chief Executive’s report.

Item 12: Applications for election 154/17: Fellows Council approved the following

COUNCIL • PEB

first time Fellow applications: Chloe Amanda Wildman; Paul Kaufman; Samuel Judge; Stuart Clarkson; David Edward Nelms; Harrison Hoon Seok Chang; Samuel Bird. Council approved the following second 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. 155/17: Students Council approved the following Student Membership applications:

Ashley Broom; David Stanier; Conor McLaughlin; Henry Aldridge; Gabriel Bracken; Luzia Trobinger; Camille Terfve; Michael Loadman; William Fowler; Andrew Godley.

Item 13: Resignations, etc 156/17: Council noted the report on resignations.

Item 14: Any other business 157/17: Tim Roberts complained about the audibility of the conference call system when joining the meeting by telephone. Lee Davies explained that the existing system was at the end of its life and that, rather than invest in a new system at this time, there would be improved video and audio conferencing facilities at the new office.

Item 15: Date of next meeting 158/17: Wednesday 5 July 2017. The President closed the meeting at 17:34 Lee Davies, Chief Executive

PEB – QAA report The QAA review report – external assurance of the PEB 2017

he Patent Examination Board (PEB) is pleased to publish the second independent evaluation of its operations, carried out by the Quality Assurance Agency (QAA) between April and June 2017, in accordance with IPReg’s regulatory requirements for awarding organisations that provide regulated qualifications. The full report is accessible at www.cipa.org.uk/patentexamination-board/communications/general-communications/ It provides an external perspective of the PEB’s policies, procedures and processes, and evaluates the progress made since the first external review carried out by QAA in 2015. The report identifies the PEB’s openness and transparency with which it conducts its activities and engages with stakeholders, and the actions it has taken to standardise the setting of Foundation Certificate examination papers and mark schemes, as examples of good practice. Volume 46, number 9

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The report makes several important recommendations for the PEB to take into account and action by June 2018. These include developing its relationship with employers, engaging with the findings of the recent FD4/P6 research programme and considering actions to address candidates’ perceptions about the clarity, consistency and fairness of the examination requirements. The PEB welcomes the report, is reassured that good progress has been made since 2015 and acknowledges that further work lies ahead. We are already working on the recommendations and are confident that we will continue to provide the high-quality qualifications and support for candidates that the profession requires. Dr Robert Taylor, Chair of the PEB Governance Board. SEPTEMBER 2017

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NEWS

OVERSEAS • OFFICIAL

USPTO regulations The following recommendations were sent to Mr Nicolas Oettinger, Senior Counsel for Regulatory and Legislative Affairs at the USPTO, by Tim Jackson, Chair of CIPA's Patents Committee, on 17 July 2017. We welcome your Working Group on Regulatory Reform, which has requested ideas from the public to improve and streamline USPTO regulations. We would like to submit the following two suggestions. 1. We suggest that the USPTO should adopt the PCT standard for Unity of Invention for all applications, not just those originating in the PCT. The use of two different standards is difficult and confusing for both applicants and examiners. We understand that the USPTO's traditional unity standard is rooted in what could easily be covered in a single search by an examiner using the United States Patent Classification (USPC). However, now that the USPC has been superseded by the internationally-agreed Cooperative Patent Classification (CPC), it would be a logical simplification to adopt the PCT unity standard in all circumstances, as it is the corresponding internationally-agreed

unity standard used by other major patent offices. 2. We would like to reiterate our strong support for the USPTO’s existing initiative on importing prior art automatically from applicants’ other applications, leveraging international electronic resources such as the Global Dossier. Please see our comments1. Coupled with appropriate reform of USPTO Rules 56, 97 and 98, this will potentially provide a very significant reduction in the applicant's regulatory burden, with no increase in the examiner’s burden. The prior art retrieved automatically will be the same as presently filed with an applicant's Information Disclosure Statements, but should also give the examiner access to contextual information on why the foreign examiner cited it. 1. See https://www.uspto.gov/sites/default/files/ documents/importpriorartcomments_a_ci pa_28oct2016.pdf [also published December [2016] CIPA 8]

Philippines update Accelerated examination in Philippines through PPH partnership with EPO The EPO has launched a new Patent Prosecution Highway (PPH) pilot programme with the the Philippines Patent Office (IPOPHL) to enable work-sharing and accelerated examination of patent applications from 1 July 2017. The EPO has other PPH pilot programmes currently in operation with China, Japan, Korea, the US, Australia, Canada, Colombia, Israel, Mexico, Russia and Singapore. Where the EPO work product contains one or more claims that are determined to be patentable or allowable, an applicant may request participation in the PPH pilot programme at IPOPHL. Both parties to the pilot programme will assess its results to see whether it should be fully implemented after the trial period. The trial period may be extended, if necessary, to adequately assess the feasibility of the PPH programme.

Denise Mirandah and Rudina Pescante (Mirandah Asia – Singapore)

Threats Act – Commencement The Commencement Order for the IP (Unjustified Threats) Act has now been made, and so the provisions of the Act (except those specifically related to the UP/UPC) will come into force on 1 October 2017. • • •

The Commencement Order can be seen at: www.legislation.gov.uk/uksi/2017/771/contents/made The guidance for business can be seen at: www.gov.uk/government/publications/ip-unjustified-threats-act The Act itself can be seen at: www.legislation.gov.uk/ukpga/2017/14/contents/enacted James Porter, Deputy Director, Patents, IPO

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NEWS

OFFICIAL

IPO survey for CIPA members The Intellectual Property Office (IPO) is keen to understand customer needs regarding the process of authentication and sign-in to a future secure online account. The IPO envisage that an IPO online account would be used by its customers to file and view information and correspondence relating to the IP applications and rights they manage. As part of this research the IPO has developed a short survey, which we encourage CIPA members to complete: https://response.questback.com/intellectualpropertyoffice/onlineaccount This survey should take no longer than 10 minutes to complete. Arthur West, Head of Customer Insight, IPO

IPO higher education resources IPO launch new resources to raise awareness of IP in universities and colleges

he IPO is working with CIPA, industry and university lecturers to develop an offthe-shelf one-hour lecture and associated resources, IP Tutor Plus. To support university lecturers and deliver a consistent message on IP, IP Tutor Plus focuses on highlighting what IP is, how IP is commercialised and how it fits into their students’ possible future careers. IP Tutor Plus will be phased in from September through to December 2017 and will encompass four modules to support lecturers in: • • • •

STEM; creative; humanities; and law, business and accounting.

The course will include lecture slides, notes, FAQ, case studies and talking points. The purpose of this is to ensure that students across the UK are being Volume 46, number 9

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provided with a good benchmark of information around IP.

to have a well-rounded knowledge of IP.

How can you use this tool?

With IP Tutor, Intellectual Asset Management Guide for Universities and Lambert Toolkit already supporting students, management and collaborations. These new tools will fill the gaps in supporting lecturers and researchers.

Of course, often a lecturer will want to get a professional representative in to provide the extra level of information and expertise to their students’ learning. We hope that IP Tutor Plus will provide a good base for you to work from in your own engagement of students.

What else is the IPO doing? The IPO is also launching IP for Research in September. This targets PhD and early career researchers with the understanding of how IP exists in their research and how the commercialisation is carried out. IP for Research will provide an online platform including six quick guides on aspects around the commercialisation process, a series of workshops and an IP lens, which will highlight the key principles that they should understand

For Further Education we have produced the Future Innovators Toolkit (FIT). FIT targets A Level STEM students. The tool consists of two lesson plans, case studies and power point slides. It is designed to encourage students to explore the relevance of IP to their lives and future careers. More information can be found here: http://crackingideas.com/catresources/ Further+&+Higher+Education Christopher Smith, Innovation Policy Advisor, IPO SEPTEMBER 2017

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Surviving Alice in the e-commerce arts

As has been well documented, the Supreme Court’s decision in Alice Corp. v CLS Bank has had a dramatic impact on the allowability of computer-implemented inventions in the US. In the second in a series of articles, Mark Nowotarski explores the dynamics of that impact on the e-commerce arts. His first article1 showed that in the finance arts (e.g. banking and insurance), Alice had an immediate and substantial impact reducing allowances per month by a factor of 10. A similar but more complicated impact was felt in e-commerce. Allowances per month immediately dropped but then recovered only to drop again. Mark presents an analysis of what is being allowed today as a guide to practitioners filing applications in this field. The full article, including all the tables and figures mentioned, can be seen online at www.bilskiblog.com/blog/2017/05/ surviving-alice-in-the-e-commerce-arts.html

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Art unit organization by subclasses E-commerce patents fall under the general category of business methods and are examined in work groups 3620 and 3680 at the USPTO. Table 1 below shows the technologies they encompass as well as the associated “old” US patent classifications2 and the examining art units3. The old US patent classifications are referenced because they are still used to assign applications to art units. They do not necessarily correspond to IPC classifications. The primary US class of e-commerce and business method patents is class 705. The “e-commerce subclasses” [in the table online] are based on the majority subclasses being examined in each art unit. The subclass designations account for at least 80% of the applications being examined in each art unit. Interestingly, a significant minority of applications in these art units are not classified as 705 applications. According to conversations I have had with examiners, these are cases that were originally assigned to other work groups but were later referred into these work groups because the original classifications were not correct. Apparently, even after reassignment into these work groups, the original class/subclass designations stayed in the PAIR4 records for the applications. Work groups 3620 and 3680 act as parallel work groups with matching individual art units handling applications in the same e-commerce subclasses. The applications are assigned roughly equally to the matching art units as they come in from the classification contractor5. The subclasses with the most applications are: discounts or incentives; operations research; electronic shopping; business cryptography; and healthcare management. Each of these majority subclasses is examined in one or more of its own art units that specializes in that subclass. Minority subclasses (e.g. reservations, shipping, transportation) are grouped together and assigned to the remaining art units. www.cipa.org.uk

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I have highlighted the “business cryptography” subclass green since this technology has been the least impacted by the Alice decision [see online]. The allowances per month have increased in its primary examining art unit 36856. I have highlighted the “heath care management” subclass red since this technology has been the most severely impacted by the Alice. The impact of Alice in the other technology subclasses falls somewhere in between cryptography and health care management.

Overall trends Figure 1 [see online] is a graph of allowances per month, abandons per month and appeals per month for the combined e-commerce work groups 3620 and 3680. The graph covers January 2014 (pre-Alice) to September 2016. Data was obtained using PatentAdvisor7. The allowances per month dropped almost immediately after the Alice decision and the USPTO preliminary guidance of June of 2014. This is similar to what happened in the finance arts (work group 3690). Examiners have related to me that there was a tremendous urgency on the part of USPTO management to implement the Alice decision as soon as possible. This was in sharp contrast to how management reacted to the Bilski decision in 20108. Management’s direction to examiners at that time was to not make any abrupt changes until the full implications of the decision were clear. The drop in allowances per month was followed by a rise in allowances per month coinciding with the first comprehensive guidance given to examiners in December 2014. It looked like examiners and applicants could use the guidance to find common ground. Applicants could amend claims to show that their inventions had the “something more” required to overcome an Alice 101 rejection. Unfortunately, the allowances per month again dropped a few months later and settled back down to the same low level that was seen immediately after Alice. The window of allowability that had opened was closed. More recent data (for July 2017), has shown the allowances per month going up again. Apparently, applicants and examiners are learning from their experiences and finding common ground more easily. The abandons per month grew steadily after Alice but appear to have recently gone down. Abandons per month are still very high, however, relative to allowances per month. They correspond to an allowance rate9 of about 14% for 2016. Figure 1 also shows the notices of appeal filed per month. The notices of appeal per month dropped after Alice, rose in 2015 and have since fallen back to pre-Alice levels. Most notices of appeal have been briefed and are proceeding to the PTAB.

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Allowance recalls Management urgency in implementing the Alice decision is reflected in the large number of allowances that were reviewed and immediately withdrawn in July and August of 2014. This immediate recall of allowances is similar to what happened in work group 3690. Work groups 3620 and 3680, however, have continued the practice of reviewing allowances after they are mailed and withdrawing those that the reviewers do not feel satisfy Alice. This is illustrated in figure 2 [see online]. Figure 2 shows all allowances that have been mailed between January of 2014 and September of 2016. The allowances that were recalled in July and August of 2014 are shown in red (based on the mailing date of the notice of allowance, not recall date). The allowances that have been withdrawn in the ongoing recalls are shown in black outlined by red. Allowances that have issued as patents are shown in green. The ongoing recalls appear to occur on about a monthly basis with different individual art units being reviewed in each month. All the withdrawn allowances shown above had 101 rejections after the allowance. Many of the ongoing recalls also have had 112, 102 and 103 rejections10. This pattern of ongoing recalls is expressly at odds with statements made by the USPTO that the recalls immediately after Alice were a one-time event. The ongoing recalls further demonstrate how arbitrary the 101-examination process is. I found the withdrawn allowances by using PatentAdvisor to identify applications that had a notice of allowance followed by a non-final rejection. I then reviewed each case to make sure that the non-final rejection directly followed the notice of allowance without any intervening actions by the applicant (e.g. an RCE11). The last withdrawal I have seen was in October of 2016. I have set up a watch in PatentAdvisor to see if any more show up in the future.

Overcoming an Alice 101 rejection Allowances per month have fallen since Alice, but there are still a significant number of patents issuing in these work groups. Most allowed cases that do issue have had to overcome a post-Alice 101 rejection. I reviewed a random selection of 200 file wrappers for these allowed cases to see if there were any common themes in the claim amendments that led to their overcoming their respective 101 rejections. The reviewed cases were randomly selected from the allowances of 2016. For 58% of the applications in the sample, the last rejection before allowance had a 101 rejection. For 20% of the allowed applications, the 101 rejection was resolved before the last action. For 22% of the applications, there was no post-Alice 101 rejection. So, for many applications, the 101 rejection was not the hardest rejection to overcome. This is somewhat better than what SEPTEMBER 2017

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US UPDATE

I saw in work group 3690 (finance) where the 101 rejection was usually the hardest rejection to overcome and was not resolved until the last rejection before allowance. One of the major challenges of figuring out why some cases are being allowed and some are not is that only a few examiners give a detailed reason for why a 101 rejection was overcome in their notices of allowance. Most examiners either give a cursory reason (e.g. “the applicant’s arguments are persuasive”) or no reason at all. My method, therefore, was to find the amendments to the independent claims that overcame a 101 rejection and use my best judgement to identify the “something more” in the added limitations that overcame the 101 rejection. If there was no post-Alice 101 rejection, I tried to identify the limitations that would have led the examiner to immediately accept the claims as statutory. I then categorized these limitations into different groups with common themes. Others may look at the same data and reach different conclusions as to what the common themes are. If any reader would like a list of the cases, I would be happy to share it with them. The major themes were “physical limitations” and “software limitations”. The minor themes within physical limitations were “mobile devices/sales kiosks” and “physical sensors”. The minor themes within software were “graphics/ image processing”, “business methods: cryptography/ security” and “business methods: other”. Examples of the limitations in each theme are shown in table 2 [see online]. The percentage of applications falling into each theme is shown in the header rows. The percentages add up to more than 100% since the limitations often fell into more than one theme. None of these limitations are magic bullets. Most applications that have similar limitations are still being rejected under 101. Nonetheless, the applications that do have these limitations are being allowed at a higher rate than those that do not. The fact that incorporating physical limitations into an e-commerce claim leads to a holding of statutory subject-matter makes a certain amount of sense. At least superficially the claim looks more like standard patentable subject-matter. Mobile devices and sales kiosks are physical things. Similarly, a claim that measures a physical quantity makes the claim look like the statutory claims in Diamond v Diehr12. In Diehr, the statutory claim had a temperature sensor. Similar logic may extend into the graphics/ image processing theme. Often image processing requires the capture of a physical image or the portrayal of a physical object. It is not clear to me, however, why cryptography should stand out as statutory subject-matter. Cryptography can be characterized as the purely mathematical transformation of data from one coding scheme to another. Purely mathematical transformations were held to be non-statutory in Gottschalk v Benson13. Nonetheless, as Figure 3 [see online] shows, the 14

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SURVIVING ALICE

High-risk investors need patents to protect their investments. If there is no likelihood of protection, there is less likelihood of investment.

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US UPDATE

allowances per month for applications classified as business cryptography have been only moderately affected by Alice. If anything, the allowances per month have gone up. This is not to say that these applications are not getting 101 rejections, but it does indicate that overcoming a 101 rejection in this art unit is relatively straightforward. It also suggests that applicants would do well to incorporate any aspect of cryptography or system security related to their invention in their applications. Applicants might even look to making the cryptography or system security aspects of their invention the focus of the application. This will help get the application classified into the cryptography art unit where there seems to be better reception to amendments and arguments to overcome a 101 rejection. Seeing that cryptography was an “Alice-friendly” art unit led me to consider whether there were any especially “Alice-hostile” art units. The answer that came up was the health care management art units 3626 and 3686. Figure 4 [see online] shows the combined allowances per month for these art units. These are among the most devastated art units I have seen so far. Similar to financial services, allowances per month have fallen by about a factor of 10. There apparently is very little in the field of health care management innovation that these art units consider to be statutory. Yet it is hard to imagine a field more crucial to the welfare of the people of the United States. Political solutions alone will not solve skyrocketing health care costs in the US. Radical, high-risk innovation by the private sector is also needed. If radical high-risk innovation can put a smart phone in everyone’s pocket, it certainly can help make health care universally affordable. This is the type of innovation that patents are designed to promote. Table 3 [see online] highlights the innovations in health care management

Notes and references 1. Mark Nowotarski, “Surviving Alice in the Finance Arts”, Bilski Blog 30 January 2017. 2. After 1 January 2016, the USPTO no longer published the US Patent Classifications on issued patents or pending applications, 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 used in PAIR. 3. The patent examiner corps is organized and managed by art units (e.g. 3681). Art units are organized into work groups (e.g. 3680). Work groups are organized into technology centres (e.g. 3600). 4. PAIR is the US “Patent Application Information Retrieval” database. This has the file wrappers of patent applications that are published in the US. https://portal.uspto.gov/pair/PublicPair 5. Classification of US patent applications is done by an outside contractor, but it is confirmed by the SPEs when they get cases assigned to their art units.

SURVIVING ALICE

that, in all likelihood, will not get patented in the post-Alice environment. This table is a random selection of titles for currently pending applications in health care management that have received a post-Alice 101 final rejection. The chances of any of these applications getting allowed is very small. Applicants seeking high-risk investments to implement health care management innovations may have a significant hurdle to overcome if they cannot get patents. High-risk investors need patents to protect their investments. If there is no likelihood of protection, there is less likelihood of investment. If there is no investment, there is no progress in solving these extremely difficult problems. Many applicants in the business method fields of finance and e-commerce fully appreciate that convincing an examiner to allow their claims is almost impossible. Quite naturally they are turning to an appeal. In my next article, I will examine how appeals in these work groups are faring to see if that provides any realistic hope of overcoming a postAlice 101 rejection. This is an updated and edited version of “Surviving Alice in the e-commerce arts” that appeared on Bilski Blog, 17 May 2017. See the full article, including the tables and figures, at www.bilskiblog.com. Mark Nowotarski is a registered US patent agent and technology consultant specializing in business methods and consumer products. Since 2001, he has had his own practice, Markets, Patents & Alliances, http://marketsandpatents.com. He also runs a business method IP consulting web site, www.survivingalice.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. 6. A significant number of business cryptography applications are also examined in art unit 3621. The allowances per month of business cryptography applications have also increased in art unit 3621. The allowances per month of the other subclasses examined in art unit 3621 (discount/incentive) have not. 7. http://www.reedtech.com/products-services/ intellectual-property-solutions/lexisnexis-patentadvisor 8. Bilski v Kappos, 561 U. S. 593 (2010). 9. Allowance rate = allowances per month/(allowances per month + abandons per month) 10. “101” means the claims do not cover statutory subject-matter. “112” means the claims are not clear. “102” means that the claims are not novel. “103” means that the claims lack an inventive step. 11. RCE is a request for continued examination. In the US, the applicant can request further examination after a rejection is final instead of filing an appeal if there are still issues that can be worked out with the examiner. 12. Diamond v Diehr, 450 U. S. 175, 187 (1981). 13. Gottschalk v Benson, 409 U. S. 63, 67 (1972).

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Actavis v Eli Lilly What patent attorneys and examiners need to know about the UK’s, and perhaps Europe’s, biggest infringement case for 12 years. By Gwilym Roberts (Fellow)

ctavis v Eli Lilly has revisited the “Protocol questions” on non-literal infringement and re-thought a chain of cases on claim interpretation going back to Catnic. After 35 years of doctrinal development going back to the legendary Catnic case and seemingly settled in Kirin-Amgen in 2005, the Supreme Court has injected a nitro boost and taken the lead in establishing a test applicable across Europe. Formerly, the Protocol questions to find whether a variant infringed a claim were:

1. Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no – 2. Would this (i.e. that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art? If no, the variant is outside the claim. If yes – 3. Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If yes, the variant is outside the claim. Now they have been reformulated by Lord Neuberger and, in particular, the updated second question is based on the assumption that the skilled person knows that the variant would actually work: i. Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent? 16

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ii. Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention? iii. Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention? In the reformulated questions, non-literal infringement would be established if the answers to (i) and (ii) were ‘yes’, and the answer to (iii) was ‘no’. This article looks at whether this represents a significant change in practice, as well as whether Lord Neuberger’s acknowledgment of the relevance of prosecution history in some circumstances carries the greater ramifications. [Also see the case report on page 25.]

The basics of the case Eli Lilly found a way to reduce toxicity of the anti-cancer drug Pemetrexed by administering the drug in combination with vitamin B12. After a very broad initial claim, and the usual added matter wrangling’s at the EPO, claims were granted to Eli Lilly directed to the use of a specific salt, Pemetrexed disodium, in combination with vitamin B12. Actavis used different Pemetrexed salts with the same effect. “A fight ensued, which presumably wouldn’t have happened if an amendment had been available to ‘a Pemetrexed salt’ and it went all the way to the Supreme Court.”

The decision It looks like Lord Neuberger felt that there was infringement, and that infringement would be found in other European www.cipa.org.uk

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ARTICLE

jurisdictions. But, application of the UK’s current ‘Protocol questions’ – Reminder: is there an immaterial variant? Would that have been obvious at the publication date? Was strict compliance intended nonetheless? – would not deliver that result.

The old test The Catnic-to-Kirin-Amgen suite of cases tells us that you should not do the following: 1. look for literal infringement; 2. if that does not catch the infringement, apply the Protocol questions. Instead, there is supposed to be a ‘single cause of action’. You just interpret the claim and work out what it is intended to mean, kind of in vacuo and without knowledge of the infringement’s effects. That approach has been criticised in the past and probably is not what anyone does, though they will pay lip service to it.

The new test Here, Lord Neuberger has effectively said ‘what about the Protocol to article 69 EPC – which the Protocol questions are supposed to reflect? It is directed to determining the extent of protection, not to interpreting a claim, and it mentions equivalents!’ He holds that shoehorning the equivalents issue via the ‘immaterial variants’ aspect into a single interpretation step can lead to errors. Instead, we should now interpret and if that does not settle it, apply a more equivalents-driven variant of the Protocol questions

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ACTAVIS v ELI LILLY

(step two above) to determine the extent of protection. We are also allowed knowledge of the result achieved by the variant.

The new test in this case – equivalents The facts in this case give a good illustration and, given that the revised approach reflects what many practitioners were probably inadvertently doing anyway, is unlikely to be dismissed as being fact or technology specific. First, the interpretation step. The Actavis product did not use Pemetrexed disodium, but neat Pemetrexed or different salts thereof. These do not infringe on a normal interpretation of the claim. Second, the three revised Protocol questions. The first reformulated question is relatively unchanged and could be paraphrased as ‘is it an equivalent?’ The judge held that the Actavis products achieved substantially the same result in substantially the same way – so yes. The second Protocol question caused the most problems. Under the old approach there would not have been infringement because the unpredictability of substituting other salts means that it would not have been obvious at the date of the patent that the Actavis product was an immaterial variant. Neuberger disliked this, as it showed the artificiality of treating this purely as a matter of interpretation. He preferred a more pragmatic approach, stripped out the time limitation and effectively asked: “can you tell from the patent, with knowledge at the date of infringement, whether it’s an equivalent (i.e. you do not have to guess if it works, and you can consider recent developments in the technology)?”.

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ARTICLE

Therefore, in the present case, the question was not ‘might it have been obvious that other salts are an immaterial variant?’, but ‘given that the other salts achieve the same result, would it be obvious that they did so in the same way?’. Based on the facts, his answer again was ‘yes’. The third Protocol question of ‘strict compliance’ is still largely applicable, and could be expressed as ‘did the patent nonetheless exclude the equivalent?’. Thankfully, this was considered from the perspective of the whole specification and again at the infringement date. Infringement was found.

Relevance of the file history We will look at what this means for patent attorneys below, but the change that has more immediate implications stems from the judge’s consideration of the EP file history. The instruction is that we should now consider it, but ‘sceptically’, and only where it unambiguously resolves a point, or is in the public interest (e.g. where the patentee had expressly excluded an interpretation during prosecution). Having said that, Lord Neuberger used the file history for confirmatory purposes here; the original claims were broad; the permitted amendment to Pemetrexed disodium was occasioned by intermediate generalisation objections, and so strict compliance is not required. This has implications both for drafting and prosecution (and although it does not affect the decision, practitioners may agree that the evidence given to Lord Neuberger on the operation of the EPO may have been a little sketchy), so patent examiners might be interested to read the relevant passages of the decision too.

What does this mean for a patent attorney? 1. The test for infringement really is more pragmatic. You can expressly use knowledge of the invention and you can read the patent sensibly and assess whether there is an immaterial variant. In terms of certainty, there was always an argument that consulting the file history was a step too far. But, surely everyone already has a glance at it. Also, the most convincing argument against taking it into account appears to have been Lord Hoffman’s statement, ‘life is too short’! That was back in 2005, but accessing the file is now a matter of a couple of clicks, at least at the EPO. As long as we are not entering an era of pitched battles about what the content of a file history means, this seems a welcome development. 2. Judging by the ‘light touch’ level of knowledge of what goes on at the EPO prosecution level, in this particular case, practitioner knowledge may be absolutely vital in analysing the file. We therefore may see more attorneys appearing as experts in this area. 3. Less welcome is the impact on our daily practice before patent offices. What is done is done, and it is probably best not losing sleep about existing skeletons in closets. There is 18

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no suggestion that anything but the immediate file history is considered relevant (but of course someone is going to try and cite patent family members in other jurisdictions). Besides, we are usually so aware of the potential impact of statements here in, say, US equivalent proceedings that we are pretty careful anyway. Naturally, we should avoid statements expressly excluding certain interpretations – we have Lord Neuberger’s clear guidance on that. Note, however, that unlike in many jurisdictions, the use of a limiting amendment did not restrict the scope of the claim. The judge looked at the original broad claim, concluded that strict restriction to a particular Pemetrexed salt was not intended, and then extended the claim scope more broadly than the eventual allowed wording on that basis. However, the context and presentation of the amendment here were relevant. As it was required to overcome an intermediate generalisation objection (to the judge’s apparent bemusement) there were no limiting statements in the accompanying submissions that might otherwise have caused problems. In essence, when making any amendment or statement to the office in the future, the attorney should imagine the judge reading it and drawing inferences about the patentee’s intent. 4. When it comes to drafting, the importance of dealing with potential added matter issues arises once again. Put in as much basis as you can, and consider a ‘pyramid’ of terminology from the broadest expression of a feature, through intermediate or alternative formulations, to the narrowest. The reality is that the perfect wording is usually only available in hindsight, as was undoubtedly the case here, and you could take comfort from the fact that in the end the court generously generalised the eventual term. Or you could consider how much cheaper it would have been to have been literally infringed.

Conclusion This is an important decision, and it is useful to consider its impact not just on litigators, but prosecutors, drafters and even examiners. Current best practice may not have changed too much, but every interaction with the patent office now carries just a little more weight, and the ‘how-would-a-judge-readthis’ test needs to become second nature when formulating a response. At the broader level, it feels like a welcome clarification or confirmation of a practical application of the infringement determination tests, despite the extra pressure on patent attorneys. We will wait to see if this more ‘pragmatic’ approach develops not just in the UK but across Europe, and turns out to be as significant as it looks. Gwilym Roberts (Fellow) is a partner at Kilburn & Strode LLP in London. www.cipa.org.uk

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SPC summer review 2017 In the second of a two-part review, the team at Carpmaels & Ransford 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. Daniel Wise (Fellow) and Natalia Wegner-Cribbs (Fellow)

How specific is the specific mechanism? A recent CJEU referral seeks guidance on how to apply the speciﬁc mechanism to SPCs The doctrine of exhaustion of rights in the EU prevents holders of patent and SPC rights from asserting those rights to prevent parallel importation of their products from one member state into another. The specific mechanism of the acts of accession to the EU for the Czech Republic, the Slovak Republic, Romania, Slovenia, Croatia, Latvia, Poland, Bulgaria, Lithuania, Estonia and Hungary (the “new” member states) provides an exception to this doctrine for pharmaceutical products, but only in certain circumstances that relate to the filing date of the patent and/or SPC. A recent CJEU referral from the Düsseldorf District Court, Pfizer Ireland Pharmaceuticals, Operations Support Group v Orifarm GmbH (C-681/16), asks for guidance on how the provisions of the specific mechanism should be applied to SPCs.

What are the trigger dates for the speciﬁc mechanism and are they different for patents and SPCs? The specific mechanism was designed to account for the fact that many of the new member states did not provide patent protection for pharmaceutical products until long after protection was available within the EU. The specific mechanism allows a patent or SPC in force in an “old” EU member state to be relied upon to prevent the import and marketing of a pharmaceutical product from a new member state, as long as at the filing date of the patent or SPC in the old member state no equivalent protection could have been obtained in the new EU member state. In the vast majority of new member states, patents for pharmaceutical products became available many years before SPC protection was introduced. The much later implementation of SPC protection gives rise to scenarios in which the specific mechanism could be applied only in relation to the SPC. Volume 46, number 9

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The Higher Regional Court of Düsseldorf had previously considered this issue in Ezetimib (2 U21/15). In that case, the claimant requested a preliminary injunction to prevent parallel importation from Croatia into Germany on the basis of a German SPC. The claimant relied on the specific mechanism since, at the filing date of the German SPC, SPC protection could not have been obtained in Croatia. The defendant argued that the specific mechanism did not apply under these circumstances because the claimant had failed to obtain a basic patent for its product in Croatia (patent protection for pharmaceutical products had been available in Croatia at the time the basic patent for the German SPC had been filed). According to the Court, the wording of the specific mechanism in the Act of Accession of the Republic of Croatia was unambiguous. It held that the key date for the applicability of the specific mechanism was the date of the German SPC application. In the Court’s view, the fact that the claimant had failed to obtain a basic patent was of no relevance to the applicability of the specific mechanism for the SPC. No question was referred to the CJEU in that case. The facts in the referral by the Düsseldorf District Court in Etanercept (4b O 48/15) are different but the underlying point is related. Here, the German SPC was based on a German patent that was filed at a time when no patent protection for pharmaceutical products was available in the relevant new member states. In this case it was the absence of corresponding patents in the new member states that led to the lack of corresponding SPC protection in the new member states, even though SPC protection was available in principle in all of them with the exception of Croatia. The parallel importer took the position that patent and SPC protection needed to be considered separately (consistent with the District Court’s position in Ezetimib). It relied on the fact that, on the filing date of the German SPC application, SPC protection was available in all new member states except Croatia and hence that under these circumstances the specific mechanism did not apply. The

Last time… In the July-August 2017 issue of the CIPA Journal, the Carpmaels & Ransford team summarised 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.

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patentee argued that the specific mechanisms should apply since it was impossible to obtain an SPC under circumstances where the law of a new member state had failed to provide an essential prerequisite for obtaining SPC protection (i.e. the basic patent). The Court agreed that it would indeed seem inequitable that the merely theoretical possibility of obtaining an SPC in a new member state at the filing date of the SPC application in the old member state could render the provisions of the specific mechanism unenforceable. However, it also pointed out that the specific mechanism was an exception to the principle of exhaustion and as such needed to be construed narrowly. In its view, it was therefore reasonable to argue that it was relevant only whether at the time of obtaining the SPC in the old member state corresponding provisions for obtaining SPCs were available in the new member states in question, in particular since the provisions of the specific mechanism referred to patents and SPCs separately. Recognising this tension, the Court has sought guidance from the CJEU.

Does the speciﬁc mechanism apply to the extended term of an SPC? Related to these issues, the patentee became aware of the defendant’s parallel importation activities during the extended term of the German SPC. As with the SPC itself, the parallel importer argued that the six-month paediatric extension of the SPC term had to be considered separately from the term of the SPC as originally granted. It pointed out that, with the exception of Croatia, the option of obtaining a paediatric extension for an SPC was available in all the new member states in question at the relevant date, and accordingly the specific mechanism should not apply to the extended part of the SPC’s term. The patentee countered that the relevant provisions of the specific mechanism differentiated only between patents and SPCs, and hence that the specific mechanism was applicable for the entire SPC term including the additional paediatric extension. The referring Court agreed that a further differentiation made by the parallel importer found no textual basis in the law. Both the SPC Regulation and the Paediatric Regulation had the same purpose of improving public health. It was therefore reasonable to conclude that the term “SPC” encompassed both unextended and extended SPCs. The Court further pointed out that the acts of accession did not intend for the transitional provisions to be fixed for a certain duration, but linked their enforceability to the possibility of obtaining a patent or SPC in a new member state at a relevant date. Furthermore, the Court emphasised the primacy of the acts of accession over the secondary law of the Paediatric Regulation, which meant that the latter should not expand the applicability of the specific mechanism. Nevertheless, the further ambiguity led to additional questions being referred to the CJEU. www.cipa.org.uk

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Outlook In the years that have passed since the specific mechanism first appeared there has been relatively little national case law on the topic and even fewer referrals to the CJEU. It is perhaps unsurprising that, given the value attached to SPCs and their extensions, this case has been referred. The CJEU’s conclusions will be of interest to advisors in this area, although the number of situations in which the specific mechanism can come into play are dwindling as time goes on. Jens Grabenstein (Fellow)

SPCs in the UP/UPC environment A single European SPC, national SPCs based on UPs or partially unitary SPCs? As the arrival of the Unitary Patent (UP) draws nearer, questions regarding how SPCs based on these UPs will be handled are becoming ever more pertinent. The UP is expected to come into existence in early 2018 and the current expectation is that it will be possible to use UPs as the basic patent on which to base a family of national SPCs, resulting in somewhat of a hybrid system, the details of which remain uncertain. Along with the UP will come the arrival of the Unified Patent Court (UPC), which will have jurisdictional competence over all UPs. SPC holders will have additional strategic decisions to make regarding opting out of the UPC system patents that have existing associated SPCs. In February 2017, the European Commission published information on its initiative to eliminate uncertainties as to how the unitary patent will coexist with national SPCs, and the possible creation of a unitary SPC. The European Commission indicated that it intends in the first semester of 2017 (which ends in June 2017) to issue a communication providing guidance on how SPCs will fit into the UP and UPC framework. We expect the Commission to confirm that national SPCs will be available on the basis of a UP, and potentially for the Commission to also announce moves towards a unitary SPC. While we wait with anticipation for further clarity we can gain some insights from the Commission’s comments so far.

The unitary SPC The uSPC would be examined and granted as a single right and would cover all UP states. This system could replace the current application process, which requires separate applications in individual countries, and would reduce costs for applicants and would simplify logistics. Many questions need to be answered before the uSPC can become a reality. Who would grant uSPCs and which court would hear appeals in relation to decisions to refuse uSPC applications? How would the administrative fees be set and apportioned? What would be the language of proceedings? Volume 46, number 9

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The Commission has considered the EPO; an EU body such as the EU IPO; and the EMA as possible candidates for overseeing the new system. Alternative solutions have been suggested, including mutual recognition between national patent offices or the creation of a virtual granting authority involving both member states and the Commission. It is proposed that refusals of applications for uSPCs would be appealable to the UPC, with a further appeal to the CJEU also being available. One thing seems clear: there is the will at the Commission to proceed with the uSPC, although it remains to be seen whether plans will be grounded for reasons of practicality.

Partially unitary SPCs The Commission has raised the possibility of partially unitary SPCs (puSPCs), which cover some but not all EU member states and would be available in situations where MAs are applied for nationally. In theory puSPCs would allow SPCs to be filed based on a UP when a first national MA has been granted. That puSPC would then be enforceable in member states in which the puSPC holder has a granted valid MA. As most MAs are now granted centrally by the EMA, it is unclear how often puSPCs would be applicable, although perhaps puSPCs may find practical use in relation to plant protection products (which are often authorised in only some parts of Europe) more commonly than they might in relation to medicinal products. The coming months are likely to bring with them longawaited guidance on how SPCs will fit into a post-UP world. How widely used any system involving SPCs based on a UP will actually be in the early days of the new patent and court system does, however, remain to be seen.

National SPCs based on a UP Whilst it seems that the Commission has an appetite for introducing uSPCs in the future, given the impending expected start date of the UP, uSPCs will not be available based on the first UPs to be granted. However, the Commission has previously indicated that, in view of the open definition of the basic patent in articles 1 and 3 of the SPC Regulation, national SPCs will be available based on a UP. The communication that we are expecting to be issued soon by the Commission should provide clarity on this point. A hybrid system of national SPCs based on a UP will be an odd one, because national SPCs granted based on a UP will not benefit from the unitary quality of the UP (which is the overarching purpose of the UP system) and will instead potentially include different product definitions, grant dates, assignees and renewal fees, as is the case with the current system. It seems unlikely that UPs will regularly be used as the basis for SPCs in the near future due to the threat of central revocation by an untested court. However, given the SEPTEMBER 2017

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considerable cost savings for UPs where an applicant needs Europe-wide protection (as is common in the pharma sector), it seems likely that some applicants will eventually file SPCs based on a UP.

UPC jurisdiction over national SPCs based on a UP or “classical” EP The appeal systems for pre-grant refusal and post-grant revocation of national SPCs based on UPs will be different. Pregrant refusal of a national SPC application will be appealable only to the relevant national court (as is the case under the current system). Post-grant, the UPC would instead have jurisdiction over a corresponding revocation action, as it would with any infringement action regarding the UP or SPC. While odd, this hybrid system is still perhaps an improvement over the current system where both the application and revocation/ infringement procedures are handled by separate national offices and separate national courts. Allowing revocation and enforcement at the UPC may bring some improvements in predictability, while also reducing costs for pan-European actions. Additionally, national SPCs based on “classical” EP patents will be under the jurisdiction of the UPC unless an opt-out is filed. Of course, an opt-out is not available after a UPC action has started, so each patentee’s opt-out strategy needs to be considered in advance of the UPC opening its doors. The added complication for opting out patents together with the associated SPCs is that authorisation to opt out must be obtained not only from any patent co-owners but also from any co-owners of the SPCs (if the SPC has been granted).

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An opt-out is not available after a UPC action has started, so each patentee’s optout strategy needs to be considered in advance of the UPC opening its doors.

Liz McKinley (Fellow)

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The European Commission’s review of the SPC system The times they are a-changin' Europe’s SPC system is under scrutiny as the European Commission’s overall evaluation of SPCs and safe harbour provisions takes shape. SPCs have been available in Europe since 1993 for medicinal products and were introduced for plant protection products a few years after that. The original purpose according to the European Commission’s “Explanatory Memorandum” at the time was to improve Europe’s competitiveness and to encourage innovative research and development within Europe’s pharmaceutical sector. Is the SPC system achieving these aims? The nature of “innovation” in the sector has arguably moved on, from new chemical entities to new therapeutic entities and uses more generally, and the current SPC system may not capture these developments so well. Legal uncertainty and a lack of predictability caused by the significant procedural differences between national patent offices has been a concern for many years. The frequent referrals to the CJEU on the interpretation of the SPC regulations could be a sign that the system is under considerable strain. It is therefore no surprise that the European Commission recently launched an initiative to substantively revisit the legal framework relating to SPCs. The initiative stems from the Commission’s broader “Single Market Strategy”, in which it announced that it will “explore a recalibration of certain aspects of patent and SPC protection” in Europe with the aim of strengthening “EU-based manufacturing and competitiveness”. It highlights in particular the creation of a unitary SPC title, the introduction of an SPC manufacturing waiver, and updating of the scope of the Bolar and research exemptions. In February 2017, the Commission published its “Inception Impact Assessment”, setting out the Commission's initial analysis of the issues, policy objectives and potential solutions. As part of the initiative, the Commission has contracted a number of studies to analyse the economic and legal aspects of the issues, notably a “Study on the legal aspects of the supplementary protection certificates in the EU”, which is being conducted by the Max Planck Institute for Innovation and Competition in Munich. As part of the study, a workshop was held in Munich earlier this year, at which representatives from industry, private practice and the national patent offices exchanged their views on the current SPC system and the potential for change. More recently, a questionnaire-based survey was distributed, seeking the views of stakeholders on certain issues with the current SPC system and on the proposed changes. According to the Commission’s current schedule, it is unlikely that any definitive legislative proposals will be known until next year at the earliest, and it will probably take a few more years for any legislative changes to be implemented. Although the Inception Impact Assessment states that the Volume 46, number 9

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“likely type of initiative” will be a legislative proposal, it also mentions other options such as non-legislative instruments aiming at improving implementation of existing EU legislation, or a combination of non-legislative and legislative instruments. Based on the Commission’s tender documents for the legal study, the Inception Impact Assessment, and the recently distributed questionnaire that forms part of the legal study, there seem to be three main areas with the SPC system that are candidates for reform.

1. Addressing the substantive and procedural challenges of the SPC system High on the Commission’s agenda are inconsistencies in the quality, procedure and substantive results of SPC examination between the national patent offices, as well as the SPC eligibility for biologics, combinations of substances and regulated products other than pharmaceutical and plant protection products (such as medical devices). The Max Planck Institute’s legal study focuses heavily on these aspects, and the questionnaire devotes the majority of the questions to these substantive aspects of the SPC legislation. Of particular interest, especially in view of recent court decisions and referrals to the CJEU, is the Commission’s notion that: “the system might be out of tune with recent developments in innovative sectors that are – or will be – subject to marketing authorisation systems (e.g. personalised medicines, chemicals in general, biopharmaceuticals, new uses of patented products, intelligent pills)”. In particular, the Commission refers to the need to adequately incentivise “new forms of innovation”, especially in the field of biomedicines. Other more specific, but equally thorny, issues in the Commission’s sights are raised in the legal questionnaire: •

•

What are the criteria for assessing whether a product is “protected” by the basic patent – should an infringement-type test, a “core inventive advance” test, or an added matter-type test be applied? What types of authorisation constitute a “valid” authorisation for SPC purposes – should all variations count? What about type II variations? And should it be possible to file an SPC application even after patent expiry? Should the practice of filing SPCs based on another party’s marketing authorisation continue unchanged? Does this practice lead to practical problems for the holder of the authorisation in obtaining a licence from the patent holder? Or should there be a requirement for obtaining the authorisation holder’s consent? SEPTEMBER 2017

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There are also procedural issues on the Commission’s mind, for example, the availability of third party observations and/ or oppositions for SPCs, and the possibility of amending the product definition in an SPC after grant. No concrete proposals for any of these issues are known yet, but the Commission’s Inception Impact Assessment sets out that a legislative “update” to the existing SPC framework is an option “with a view to new challenges faced by the pharmaceutical industry”.

2. Introducing an SPC manufacturing waiver According to the Commission, a problem with the current SPC system is “the loss of export markets and lead-time to entry into member state markets for EU-based generics and biosimilars”. In particular, the Commission is concerned that manufacturers of generic and biosimilar medicines based in non-EU countries that have shorter or no SPC protection (such as Canada, Brazil, Russia, India and China) can enter markets in which patent protection has expired up to five years earlier than is possible for EU-based manufacturers, because of the maximum five-year SPC term available in Europe. One of the potential legislative changes that the Commission foresees to address this concern is a SPC manufacturing waiver, which would allow EU-based manufacturers of generic and biosimilar medicines to manufacture their products within the EU during the SPC term of the reference medicine, for the sole purpose of exporting their products to countries without SPC protection. A provision for a similar export manufacturing waiver (along with a new Canadian SPC-type right) is present in the draft bill for the EU–Canada “Comprehensive Economic and

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Trade Agreement” (CETA) trade deal, which is expected to come into effect this year. It is possible that this provision will provide further momentum for a corresponding European manufacturing waiver.

3. Creating a unitary SPC title The Commission recognises that there is inconsistency and fragmentation between the member states’ practices in granting and enforcing SPCs, as well as additional costs for applicants seeking SPCs across the whole EU. The introduction of an EU-wide unitary SPC is expected to alleviate these issues: in particular, the Commission states that a unitary SPC will “increase reliability, and reduce the cost and burden of the registration and enforcement of SPCs in Europe while maximising the benefits of the Unitary Patent system”. Liz McKinley discusses the likely framework for unitary SPCs in her article above. In the meantime, we are eagerly awaiting the outcome of the legal study, and the Commission’s final view on whether there is appetite for change. Until then, Bob Dylan put it best in his 1964 hit The Times They Are a-Changin': “don’t speak too soon, for the wheel’s still in spin”. Natalia Wegner-Cribbs (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: PART 2 For more information on Carpmaels & Ransford or the authors of these articles, please visit: www.carpmaels.com/

VOLUME 46 NUMBER 09 2017

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Jens Grabenstein Senior Associate

Liz McKinley Senior Associate

Daniel Wise Partner

Natalia WegnerCribbs Associate www.cipa.org.uk

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DECISIONS

Patent decisions Decision of the Supreme Court | Claim construction | Scope of protection | Protocol to Article 69 EPC | Non-literal infringement | questions | Relevance of prosecution history Eli Lilly and Company v Actavis UK Limited [2017] UKSC 48; 12 July 2017 Lord Neuberger, Lord Mance, Lord Clarke, Lord Sumption, Lord Hodge [Also see the article by Gwilym Roberts on page 16.] This was a Supreme Court decision. The lead judgment was given by Lord Neuberger, the other judges agreeing. The case provides the Supreme Court’s guidance on the scope of patent protection for the first time: previous guidance was given by the House of Lords in Kirin-Amgen Inc. v Hoechst Marion Roussel Limited [2004] UKHL 45. The Supreme Court decision was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 12 July, 17 July and 10 August 2017. The first instance decision of Arnold J [2014] EWHC 1511 (Pat) was reported at June [2014] CIPA 350. The appeal judgment of Floyd LJ and others [2015] EWCA 555 was reported at July [2015] CIPA 44. The case related to European Patent No. 1313508 of Lilly directed towards the use of the cancer treatment pemetrexed disodium in combination with vitamin B12. In Actavis’s generic product the active ingredient was pemetrexed diacid, pemetrexed dipotassium or pemetrexed ditromethamine. At first instance the judge found that the claims were not infringed. The Court of Appeal found that there was indirect infringement but no direct infringement. Before the Supreme Court, Lilly was successful in its appeal that there was direct infringement and Actavis was unsuccessful in its cross-appeal that there was no indirect infringement, as set out in more detail below.

Claim construction and scope of portection The key issue was the meaning of the claim wording “pemetrexed disodium” to the skilled team including an oncologist and a chemist. Lord Neuberger reviewed the Protocol to article 69 EPC, noting that article 2 of the Protocol required due account to be taken of equivalents, and reviewed the case law in the UK and other EPO jurisdictions. He took the view that the correct approach to establishing claim scope involved separate steps of (i) claim construction as a matter of normal interpretation and (ii) assessment of possible infringement by a variant outside the claim construction, making use of a modified version of the Improver (Protocol) Volume 46, number 9

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questions. This was contrary to the single-step approach used in Kirin-Amgen. Lord Neubergers’s analysis of the correct approach is set out below: “In my view, notwithstanding what Lord Diplock said in Catnic [1982] RPC 183, 242, a problem of infringement is best approached by addressing two issues, each of which is to be considered through the eyes of the notional addressee of the patent in suit, i.e. the person skilled in the relevant art. Those issues are: (i) does the variant infringe any of the claims as a matter of normal interpretation; and, if not, (ii) does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial? If the answer to either issue is ‘yes’, there is an infringement; otherwise, there is not. Such an approach complies with article 2 of the Protocol, as issue (ii) squarely raises the principle of equivalents, but limits its ambit to those variants which contain immaterial variations from the invention. It is also apparent that the two issues comply with article 1 of the Protocol in that they involve balancing the competing interests of the patentee and of clarity, just as much as they seek to balance the encouragement of inventions and their disclosure with the need for a competitive market. In my view, issue (i) self-evidently raises a question of interpretation, whereas issue (ii) raises a question which would normally have to be answered by reference to the facts and expert evidence. In Kirin-Amgen [2005] RPC 9, Lord Hoffmann, following his approach in Improver [1990] FSR 181 (which itself had followed Lord Diplock’s analysis in Catnic [1982] RPC 183) effectively conflated the two issues, and indicated that the conflated issue involved a question of interpretation. I have considerable difficulties with the notion that there is a single conflated, or compound, issue, and, even if that notion is correct, that that issue raises a question of interpretation. Indeed, in my view, to characterise the issue as a single question of interpretation is wrong in principle, and unsurprisingly, therefore, can lead to error. While normal principles of interpretation could, I think, accommodate the notion that ‘vertically’ extended to an item which was not at precisely 90° to another item, I do not see how such principles could possibly lead to the conclusion that a slotted rubber rod was within the expression ‘helical metal spring’. As Hoffmann J said in Improver [1990] FSR 181, 197, ‘the

The UK patent court case reports are prepared by John Hull, Anna Hatt, Jonathan Markham, 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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angle of the support member [in the allegedly infringing product in Catnic [1982] RPC 183] can be regarded as an approximation to the vertical’, but ‘[t]he rubber rod is not an approximation to a helical spring’. The problem with treating the issue as one of normal interpretation is thus that that point alone may be thought to have been sufficient to put an end to the patentee’s infringement argument on facts such as those in Improver [1990] FSR 181, and there would seem to have been little purpose in going through the three questions in that case.” Applying the first step, the judge held that: “In the present case, there is no doubt that, according to normal principles of interpreting documents, the Actavis products do not infringe the Patent, as in no sensible way can pemetrexed free acid, pemetrexed ditromethamine, or pemetrexed dipotassium mean, i.e. be said to fall within the expression, ‘pemetrexed disodium’ in claim 1 of the Patent[.] Moving on to the second step, the judge reviewed the Improver questions and reformulated the second question: “The first Improver question, which asks whether the variant has a material effect on the way in which the invention works, seems generally satisfactory. It is a question which was framed in the context of a mechanical patent, and is not wholly aptly expressed for every type of case. However, in practice, the question as framed by Hoffmann J, with its emphasis on how ‘the invention’ works, should correctly involve the court focussing on the ‘the problem underlying the invention’, ‘the inventive core’, or ‘the inventive concept’ as it has been variously termed in other jurisdictions. In effect, the question is whether the variant achieves the same result in substantially the same way as the invention. If the answer to that question is no, then it would plainly be inappropriate to conclude that it could infringe. If, by contrast, the answer is yes, then it provides a sound initial basis for concluding that the variant may infringe, but the answer should not be the end of the matter. The second Improver question is more problematic. In my view, it imposes too high a burden on the patentee to ask whether it would have been obvious to the notional addressee that the variant would have no material effect on the way in which the invention works, given that it requires the addressee to figure out for himself whether the variant would work… In my opinion, the second question is better expressed as asking whether, on being told what the variant does, the notional addressee would consider it obvious that it achieved substantially the same result in substantially the same way as the invention. In other words, it seems to me that the second Improver question should be asked on the assumption that the notional addressee knows that the variant works to the extent that it actually does work. That, I think, would 26 CIPA JOURNAL

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be a fair basis on which to proceed in terms of balancing the factors identified in article 1 of the Protocol, and it is, I think, consistent with the approach of the German, Italian and Dutch courts. It is also consistent with the fact that the notional addressee is told (in the patent itself) what the invention does. This reformulated second question should also apply to variants which rely on, or are based on, developments which have occurred since the priority date, even though the notional addressee is treated as considering the second question as at the priority date. Such an approach is supported by the desirability of both consistency of approach and pragmatic justice. It seems right in principle to have the same question, including the same assumption (i.e. that the variant works) for all cases… If the variation represents an inventive step, while it may render it less likely that the patentee will succeed on the second reformulated question, I find it hard to see why that alone should prevent the resultant variant from infringing the original invention… The third Improver question as expressed by Hoffmann J is whether the notional addressee would have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention. That is in my view an acceptable test, provided that it is properly applied. In that connection, I would make four points. First, although ‘the language of the claim’ is important, consideration of the third question certainly does not exclude the specification of the patent and all the knowledge and expertise which the notional addressee is assumed to have. Secondly, the fact that the language of the claim does not on any sensible reading cover the variant is certainly not enough to justify holding that the patentee does not satisfy the third question. Hence, the fact that the rubber rod in Improver [1990] FSR 181 could not possibly be said to be ‘an approximation to a helical spring’ (to quote from p 197) was not the end of the infringement issue even in Hoffmann J’s view: indeed, as I have already pointed out, it was because the rubber rod could not possibly be said to be a helical spring that the allegedly infringing product was a variant and the patentee needed to invoke the three Improver questions. Thirdly, when considering the third question, it is appropriate to ask whether the component at issue is an ‘essential’ part of the invention, but that is not the same thing as asking if it is an ‘essential’ part of the overall product or process of which the inventive concept is part. So, in Improver [1990] FSR 181, 197, Hoffmann J may have been (and I mean ‘may have been’) wrong to reject the notion that ‘the spring could be regarded as an “inessential”’: while it was undoubtedly essential to the functioning of the ‘Epilady’, the correct question was whether the spring would have been regarded by the addressee as essential to the inventive concept, or inventive core, of the patent in suit. www.cipa.org.uk

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Fourthly, when one is considering a variant which would have been obvious at the date of infringement rather than at the priority date, it is, as explained in para 63 above, necessary to imbue the notional addressee with rather more information than he might have had at the priority date. In these circumstances, given the weight that has been given by courts in this jurisdiction (and indeed in some other jurisdictions) to the three ‘Improver questions’, I think it must be right for this court to express in our own words our reformulated version of those questions. In doing so, it is right to emphasise, as Lord Hoffmann did in Kirin-Amgen [2005] RPC 9, para 52, that these questions are guidelines, not strict rules (as indeed the Oberlandesgericht indicated in Case No 6 U 3039/16, when saying that it was ‘generally’ true that ‘three requirements must be met’). While the language of some or all of the questions may sometimes have to be adapted to apply more aptly to the specific facts of a particular case, the three reformulated questions are as follows: i. Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent? ii. Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention? iii. Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention? In order to establish infringement in a case where there is no literal infringement, a patentee would have to establish that the answer to the first two questions was ‘yes’ and that the answer to the third question was ‘no’.” The judge applied the reformulated Improver questions to the case as follows: “In my view, application in the present case of the three questions just identified results in the conclusion that the Actavis products infringe. So far as the first question is concerned, there can be no doubt but that those products work in the same way as the invention: they all ultimately involve a medicament containing the pemetrexed anion and vitamin B12… As to the second question, it seems to me clear that the notional addressee of the Patent would appreciate (and would have appreciated as at the priority date) that each of Volume 46, number 9

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the Actavis products would work in precisely the same way as pemetrexed disodium when included in a medicament with vitamin B12. When it comes to different versions of pemetrexed medicaments, it is clear that the use of a free acid, and of ditromethamine and dipotassium salts was in each case well established as at the priority date – see para 26(ii) to (iv) above. Furthermore, the notional addressee of the Patent would regard investigating whether pemetrexed free acid, pemetrexed ditromethamine or pemetrexed dipotassium worked as a purely routine exercise – see para 25(i) above. The reason why I differ from the Court of Appeal and Arnold J on this second question is that, in accordance with the second question as formulated in Improver [1990] FSR 181, 189, they considered that the notional addressee should not be treated as knowing that the Actavis products did in fact work at all, whereas, as explained above, that seems to me to involve too strict a test. Turning to the third question, the Court of Appeal considered that the notional addressee ‘would understand that the patent was clearly limited to the disodium salt, and did not extend to the diacid, or the dipotassium or ditromethamine salts’… In my opinion, the Court of Appeal adopted an approach which places too much weight on the words of the claim and not enough weight on article 2 of the Protocol (and it is only right to add that, in doing so, they were, like Arnold J at first instance, following Lord Hoffmann’s guidance in Kirin-Amgen [2005] RPC 9). Thus, when considering the third test, Floyd LJ made the point at para 72(ii) of his judgment that ‘there is no obvious leeway as a matter of language for giving it a broad as opposed to a narrow construction’. That seems to me to demonstrate the risk of treating the issue raised by the third question as being one of normal interpretation. (Another way of looking at the point is, in the language of Sir Hugh Laddie, that it involves wrongly conflating the issue of interpretation with the issue of scope of protection.) As already explained, if it was a decisive point it would make a nonsense of asking the three questions: if one cannot depart from the language of the claim when considering those questions, what is the point of the questions in the first place? ... ‘No plausible reason has been advanced why any rational patentee should want to place so narrow a limitation on his invention’ as to limit the scope of protection afforded by the Patent to pemetrexed disodium – a telling but not always conclusive point. Additionally, there is no teaching in the specification which relates to the relevance or importance of the sodium cation… it seems to me very unlikely that the notional addressee would have concluded that the patentee could have intended to exclude any pemetrexed salts other than pemetrexed disodium, or indeed pemetrexed free acid, from the scope of protection.” SEPTEMBER 2017

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Thus, the judge held that there was direct infringement.

Relevance of prosecution history Lord Neuberger went on to consider the relevance of the prosecution history to establishing claim construction and the scope of protection. The claims had been limited during prosecution to specify that pemetrexed was present in its disodium salt form. This was done to address an added subject-matter objection. The judge considered the question of when it is permissible to have recourse to the prosecution history of a patent when considering whether a variant infringes that patent, both in general terms and in relation to the current case. He answered the question as follows: “In my judgment, it is appropriate for the UK courts to adopt a sceptical, but not absolutist, attitude to a suggestion that the contents of the prosecution file of a patent should be referred to when considering a question of interpretation or infringement, along substantially the same lines as the German and Dutch courts. It is tempting to exclude the file on the basis that anyone concerned about, or affected by, a patent should be entitled to rely on its contents without searching other records such as the prosecution file, as a matter of both principle and practicality. However, given that the contents of the file are publicly available (by virtue of article 128 EPC 2000) and (at least according to what we were told) are unlikely to be extensive, there will be occasions when justice may fairly be said to require reference to be made to the contents of the file. However, not least in the light of the wording of article 69 EPC 2000, which is discussed above, the circumstances in which a court can rely on the prosecution history to determine the extent of protection or scope of a patent must be limited. While it would be arrogant to exclude the existence of any other circumstances, my current view is that reference to the file would only be appropriate where (i) the point at issue is truly unclear if one confines oneself to the specification and claims of the patent, and the contents of the file unambiguously resolve the point, or (ii) it would be contrary to the public interest for the contents of the file to be ignored. The first type of circumstance is, I hope, self-explanatory; the second would be exemplified by a case where the patentee had made it clear to the EPO that he was not seeking to contend that his patent, if granted, would extend its scope to the sort of variant which he now claims infringes.” He considered that in the case at issue the contents of the prosecution file did not justify departing from his provisional conclusion that there was direct infringement.

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Further issues and conclusion •

• •

The judge indicated in his conclusion that direct infringement extended to France, Italy and Spain, as well as the United Kingdom. He upheld the Court of Appeal’s decision that there was indirect infringement. Thus, the decision was to allow Lilly’s appeal on the direct infringement point, and to dismiss Actavis’s cross-appeal on the indirect infringement point.

Construction | Invalidity | Obviousness | Settlement Varian Medical Systems International AG v (1) Elekta Limited and (2) Elekta Holdings Limited [2017] EWHC 712 (pat); 6 April 2017; Birss J This case concerned European patent (UK) 0 963 218, which related to a combination of a magnetic resonance imaging (MRI) system with a radiotherapy system. The type of radiotherapy system used consisted of a linear accelerator (Linac) to generate high-energy X-rays used for treatment. The claimant, Varian, was the patentee and developer of radiation oncology tools. The defendants, Elekta, provide radiation therapy and radiosurgery equipment. This action was one of a total of 34 actions before various courts around the world including the United States, Germany and the UK. The case ultimately settled before the judgment was formally handed down. Under such circumstances, it is at the discretion of the court whether to hand the judgment down. However, the judge held that this was in the public interest: “Since the draft judgment had been provided to the parties the court has a discretion whether to hand down or not (Prudential Assurance Co. v McBains Cooper [2000] EWCA Civ 172). A key factor is the public interest. The validity and proper scope of a patent are matters which affect the public as well as the parties. This judgment finds the patent is invalid and so the public interest outweighs any private interest.” Elekta, with other commercial partners, had developed a Linac and an MRI machine that can operate simultaneously. This was referred to as the MR-Linac. Using the system, MRI images could be obtained while the patient is lying on a treatment couch and the Linac could be used to deliver the appropriate X-rays to treat the tumour. The MRI system could image the tumour in such a way that the movement of, for example, a lung cancer tumour due to breathing can be tracked. The system had an automatic function whereby the X-ray beam is turned off if the tumour moves more than a certain distance from the target zone of the beam, which was known as gating. The automatic gating function allowed www.cipa.org.uk

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the X-ray beam to irradiate the patient only when the tumour is directly in the line of fire. Without this gating the beam would be on all the time with the result that more healthy tissue was irradiated. Varian alleged that the MR-Linac machine infringed European patent (UK) 0 963 218 because it was able to carry out this gating function. Elekta denied infringement and counterclaimed for invalidity. The judge firstly dealt with construction and infringement together. Construction was decided on the facts of the case and, under the judge’s construction of claim 1, the MR-Linac was deemed to infringe claim 1. Elekta had also objected that the patent was insufficient on the grounds that building a combined machine that falls within the claims of the patent would have required the skilled team to solve problems with which it had never previously had to grapple, and to engage in lengthy research projects with no guarantee of success. Elekta argued that the patent was insufficient because i. it provided insufficient instructions to construct a machine whereby the radiotherapy beam and the MRI would operate without causing interference to each other; ii. it provided no adequate instructions to enable imaging or detecting the position of the radiotherapy beam by the presence of free radicals and ionisation products as described in the specification; and finally iii. it provided no adequate instructions to construct an MRI machine with a magnetic field of sufficient strength and/or homogeneity to capture an image with sufficient resolution to distinguish the tumour from abutting volumes in a time frame to enable real time control. The discussion on insufficiency was lengthy. In summary, the judge noted: “Elekta’s submission is that to overcome these points is not routine work, and even if they are each solvable individually, as a whole it all adds up to placing an enormous burden on the skilled team. They submit the work is to be fairly called a ‘research project’ and therefore requires too much of the skilled team.” However, ultimately the judge dismissed Elekta’s arguments and held the patent sufficient: “Over and above the basic idea in the patent, the document does not inspire confidence but the team would expect a combined machine could be made. Bearing in mind how complicated the two machines are anyway, I do not believe making a workable prototype of the combined system is really all that difficult. It requires an awful lot of essentially routine work by a substantial team over a lengthy period. Volume 46, number 9

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In this field that is not an undue burden. I reject the insufficiency case.” On obviousness, Elekta argued three obviousness cases based on two documents – Van Vaals and Shepherd. Shepherd was the starting point for two obviousness attacks. Both cases of obviousness based on Shepherd were rejected. However, the judge held that the patent was obvious from Van Vaals. Finally, Elekta objected on the grounds of added matter. The alleged source of this was amendments made to the claims during prosecution. Elekta’s main objection was in relation to soft tissue imaging. Elekta’s submission was that the patent application only disclosed the concept of controlling the radiation applied to the treatment region in the context of using the MRI to detect the effects of irradiation and correlating these effects with previously gathered soft tissue imaging data. However, in the granted claim this control feature had been taken out of context and separated from its essential input feature and so Elekta argued that the patent as granted disclosed the idea of controlling the beam using soft tissue imaging rather than the effects of irradiation, and that this constituted an unallowable intermediate generalisation. The judge agreed with this: “In my judgment … the patent not only covers more than was disclosed in the application, it actually does disclose more too. The reference to a means for controlling the beam in claim 1 necessarily requires the skilled reader to think about what information is to be used to control the beam. The claim makes clear that the only information to be gathered is MR imaging. That is the information the reader would understand they are being told to use. That is why Dr Fenwick and Mr Collins had the view they had. It is because the patent, in a subtle but vital way, does teach more than the application.” In summary, Birss J held that the patent was invalid for obviousness and added matter. The claim was sufficient and would have been infringed if valid.

FRAND | Licensing | Injunction Unwired Planet v (1) Huawei Technologies Co. Ltd and (2) Huawei Technologies (UK) Co. Ltd [2017] EWHC 1034 (Pat); 7 June 2017; Birss J This decision is the second instalment of the non-technical trial in the long-running dispute between Unwired Planet and Huawei. It follows the widely reported first instalment ([2017] EWHC 711 (Pat)) in which Birss J dealt with the matter of FRAND licensing terms. This decision of the second instalment was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 8 June 2017. SEPTEMBER 2017

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The background of the dispute is well documented. In brief, a number of Unwired Planet’s standard-essential patents had been found valid and infringed and Huawei had refused to accept licensing terms offered by Unwired Planet. At the main nontechnical trial, the judge decided on the particular form of licence that represented FRAND terms between the parties. The main issue before the judge in this second hearing was whether to grant an injunction and if so, the form of the injunction. There were also a number of peripheral issues relating to other forms of relief. In its pre-hearing submissions, Huawei offered two undertakings and contended that the court should accept these instead of granting a final injunction. Specifically, Huawei offered to enter into any form of licence settled by the court after final order (or after final determination or withdrawal of an appeal) and to abide by the terms of the licence decided in the main nontechnical trial as if they were in full force whilst any appeal was pending. Huawei argued that these undertakings had the effect of committing it to a licence agreement one way or another. Unwired Planet argued that the undertakings did not have these effects and that a final injunction should be granted. Unwired Planet also agreed that any injunction granted should be stayed pending appeal. The judge disagreed with both sides, noting that although the undertakings offered by Huawei were “watertight”, they were offered too late: “Huawei contend that absent an appeal they would sign the Settled Licence now. I do not doubt that but it is no different from the position of any defendant who changes their tune after they have lost a case… In my judgment the undertaking offered by Huawei now is too late. By refusing to offer an unqualified undertaking before trial and before judgment Huawei forced Unwired Planet to come to court and vindicate its rights. The right thing to do now is grant a FRAND injunction albeit one which will be stayed on terms pending appeal.” Turning to the form of the injunction, the judge noted that a problem with FRAND and standard-essential patents was that the defendant should have the ability to take a FRAND licence and an injunction was only appropriate for as long as the defendant refuses to do so. The judge also noted that if the defendant agrees to take a FRAND licence, there should be no injunction at all. With that in mind, the judge defined a “FRAND injunction”: “A FRAND injunction should be in normal form to restrain infringement of the relevant patent(s) but ought to include a proviso that it will cease to have effect if the defendant enters into that FRAND licence. If as in this case, the FRAND licence is for a limited time, shorter than the lifetime of the relevant patents then the injunction should also be subject to an express liberty to either party to return to court in future to address the position at the end of 30 CIPA JOURNAL

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the term of the FRAND licence. In any case the FRAND injunction should also be subject to an express liberty to apply in the event the FRAND licence ceases to have effect for any other reason.” To deal with an appeal the FRAND injunction in the form described can simply be stayed pending appeal on terms to secure appropriate payments in the meantime

Transfer of cases between IPEC and High Court 77M Limited v (1) Ordnance Survey Limited and (2) The Controller of Her Majesty’s Stationery Office [2017] EWHC 1501 (IPEC) 15 June 2017; HHJ Hacon This was an application by the defendant OS to transfer a database rights claim from IPEC to the High Court. It is reported here because of its general relevance to intellectual property proceedings. The case was reported and discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 29 June 2017. The judge considered the factors listed under CPR 63.18(2) and Practice Direction 30(9), that is: • •

whether a party can only afford to bring or defend the claim in the Intellectual Property Enterprise Court; whether the claim is appropriate to be determined by the Intellectual Property Enterprise Court having regard in particular to the value of the claim, the complexity of the issues and the estimated length of the trial.

He reviewed the case law including decisions by HHJ Birss in ALK-Abello Limited v Meridian Medical Technologies [2010] EWPCC 14 and Comic Enterprises Limited v Twentieth Century Fox Film Corporation [2012] EWPCC 13. 77M was a small/medium entity seeking the protection of the IPEC costs regime via after-the-event insurance. OS was a government-owned body. The judge indicated that OS’s governmental status was not of significance, noting, however, that low costs were appropriate for a publicly funded litigant as well as a SME. OS argued that 77M’s conduct of the case was inappropriate for the IPEC. The judge disagreed. The judge considered that the value of the claim was not as high as suggested by OS and that the issue of value was not of great weight. The judge considered that the trial could be heard within three days, but that 77M should take all possible steps to streamline the case. The judge considered that the decisive factor was 77M’s status as a SME seeking the protection of the IPEC’s cost regime, so that the case should not be transferred for reasons of access to justice. However, he indicated that this matter could be reconsidered at the case management conference if there had been a change in circumstances. www.cipa.org.uk

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IPO decisions

IPO

Entitlement: section 12 IT-ACS Limited v Federal State Institution (Moscow) et al. BL O/286/17; 20 June 2017

Inventive step: section 3 Yo! Limited BL O/272/17; 1 June 2017 The application related to an apartment room with transformable functionality, in which voids in a false wall, false ceiling and false floor of the room incorporated systems to allow the room to be reconfigured between sitting room, dining room, bedroom and kitchen configurations. The examiner objected that the claimed invention was obvious in light of the skilled person’s common general knowledge, given that folding beds and the use of voids to contain furniture was known from various documents. The applicant argued that common general knowledge was territorial, based on comments in Dyson v Hoover [2011] CH 1440 and Generics v Warner-Lambert [2015] EWHC 2548 regarding common general knowledge needing to be common within the UK. Given that the documents cited by the examiner were from various non-UK sources, with some not being available in English, the applicant argued that they did not demonstrate the common general knowledge of the skilled person, and if they were they would be more widely cited in other documents. The hearing officer considered that, for a patent document to be considered common general knowledge, it would need to be widely cited and perhaps be accessible from sources other than the patent literature databases for it to cross the boundary representing the state of the art into common general knowledge. In this case the documents were not widely cited, and instead only represented the state of the art. Territorial knowledge was not necessarily applicable, since the relevant skilled person would not be constrained by only UK knowledge but would look more widely to work undertaken in other countries. Awareness of some space saving techniques would be part of the general knowledge, such as would appear in architecture journals, and the prior art showed that floor, ceiling and wall voids were known individually. None of the prior art, however, showed these in combination, which was the inventive concept of the application. The hearing officer was not convinced that the skilled person would put the individual components together, and therefore considered that the claimed invention was not obvious. The application was remitted to the examiner for continued examination.

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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Proceedings were initiated by the claimant (IT-ACS) under section 12 regarding various foreign and EP applications. The defendants – Federal State Institution (Moscow) – were notified of the proceedings, and were given a six-week period within which to file any counterstatements. The IPO received a telephone call from the defendants’ patent attorney shortly before 5pm on the final day of the period, requesting an extension. He was asked to confirm the request and set out reasons by email. An email was then received shortly after 5pm the same day, explaining that he had just been informed of the proceedings and that reaching out to all the Russian inventors would be difficult. The claimant objected to the extension, arguing that the defendants had had six weeks from the notification letter to respond, that the extension would result in hardship for the claimant, and that as the form request by email was received after 5pm, it was received after close of business and so was too late. The hearing officer noted that the IPO was taken to be closed at 5pm on the final day of the period for all business other than the filing of applications, forms, and other documents. Any request for an extension would therefore have to have been filed by 5pm. The extension request was not therefore formally received by the IPO until after expiry of the period. However, considering the overriding objective to deal with cases justly as set out in rule 74, the hearing officer determined that, if the extension was not granted, the alternative would be to allow proceedings to continue unopposed, which would not allow for all the relevant facts to be made available for a fair and just resolution of the issue. The hearing officer therefore used the Comptroller’s discretion under rule 81 to extend the period for filing a counterstatement.

Sufficiency: section 14(3) The Hong Kong University of Science and Technology BL O/326/17; 13 July 2017 The application claimed a compound defined by a Markush formula, with only one compound within the scope of claim 1 being defined in a dependent claim and described in the application. The compound was described as being isolated from the root of the plant Rhodiola rosea, and was claimed to have particular use in the treatment of pain and management of type 2 diabetes. The examiner objected that the invention as defined by the broader claim 1 was speculative, unsupported across its full breadth and insufficiently disclosed because the applicant had not shown how to make any other compound within the scope of claim 1 and had not shown how such compounds would have the same activity. The hearing officer reviewed the case law relating to sufficiency, including the decisions of Biogen v Medeva [1997] SEPTEMBER 2017

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RPC 1, Pharmacia v Merck [2002] RPC 775 CA and Generics v Lundbeck [2009] UKHL 12. In the case of a single compound, a single example would be needed, as held in Generics. In Biogen, the House of Lords held that a patentee must enable the invention to be performed in general terms if claimed generally, as well as demonstrating that there was a common principle shared by members of the same class. Pharmacia added that the specification must also describe the advantage of the compounds, and this advantage must be shared by compounds within the claim. The examiner had argued that the application was insufficient because it disclosed only one way of obtaining a single compound by extraction, and provided no details of alternative synthetic means of producing any compound within the claim scope. The various possible substitutions of groups within the general formula would not be a trivial exercise, and there was no guidance as to how any of the alternative compounds could show the claimed activity. The applicant filed further amendments to narrow the scope of the general formula, and argued that the narrower scope would be sufficient because the skilled person would be able to synthesise the compounds using common general knowledge. In support of this, several documents were provided showing various possible substitutions that could be used. The applicant also argued that the claimed activity was due to the core scaffold structure of the general compound, and it was therefore plausible that the effect would be achieved across the claim scope. The hearing officer considered whether, in light of these submissions, the application was sufficient according to Biogen, which held that the skilled person should have sufficient information at the date of filing to make the compounds. The possible synthetic schemes were shown in various publications, all of which were published after the earliest priority date of the application. None of the schemes would therefore be available to the skilled person at the filing date. The disclosures in the specification were not therefore sufficient to allow the invention as defined by claim 1 to be performed without placing an undue burden on the skilled person. In relation to whether compounds within the broader class would have the same activity, the hearing officer considered that the application did not contain any evidence to support the assertion that there was a structure activity relationship arising from the core scaffold structure. The skilled person would therefore face an undue burden in establishing whether the activity was present. The applicant was offered an opportunity to further amend the application to narrow the claim to the single disclosed compound, otherwise the application would be refused.

Review of opinions: section 74B Linpac Packaging Ltd v Ingenium IP Ltd BL O/318/17; 13 July 2017 In Opinion 23/16, requested by Ingenium, the examiner came to the opinion that the patent was not valid due to lack of novelty 32 CIPA JOURNAL

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and lack of inventive step. The proprietor (Linpac) requested a review of the opinion, focussing on four main issues. Firstly, the examiner had disregarded a machine translation of a French prior art document because the date of translation was much later than the priority date of the patent. The hearing officer considered that the examiner had no reason to disregard the translation, as date of translation is in most cases totally irrelevant. However, nothing turned on this point as the examiner had gone on to use an Australian equivalent document. Secondly, the examiner had chosen not to consider a further piece of prior art because it had been cited during prosecution. The hearing officer was of the view that considering the document would have been useful to the parties in this case, but did not consider the examiner to have erred. A decision could only be made that an opinion was wrong if the examiner had made an error of principle or reached a conclusion that was clearly wrong (DLP Limited [2008] RPC 11). The hearing officer was not therefore able to set the opinion aside on this point. The third issue related to construction of the claim language, in particular the term “substantially vertical” in claim 1. The examiner had construed the term to encompass extending away from a base, so that even angles of just 30˚ from horizontal would be considered to be substantially vertical. The hearing officer considered that this was not a reasonable interpretation, and so determined that the opinion, in as much as it relied on this construction (which it did for inventive step), should be set aside. The fourth issue related to whether the examiner had incorrectly concluded that a prior art document disclosed a feature of claim 1. The hearing officer found that there was significant ambiguity surrounding the feature, making it impossible to say for certain whether the feature was in fact disclosed. Without a clear indication one way or the other, it was not apparent how the examiner formed his opinion on the issue, making the examiner’s conclusion of lack of novelty based on the document clearly wrong. As a result, the hearing officer ordered that the opinion be set aside. Revocation proceeding under section 73(1A) that were initiated following the opinion, which had been stayed pending the outcome of the review, were terminated.

Revocation: section 72 Saunders and Dolleymore LLP v Keter Plastics Ltd BL O/350/17; 24 July 2017 The patent related to a stackable, wheeled bucket. The claimant (Saunders) sought revocation on the grounds that the patent lacked novelty or an inventive step over a prior art document describing a wheeled cart. The claimant argued that “bucket” should be construed more broadly than a pail, highlighting dictionary definitions of “bucket” such as a compartment on an outer edge of a water wheel. The claimant argued that the prior art cart had overlapping uses with the bucket described in the patent, and all of the features of claim 1 of the patent. The fact www.cipa.org.uk

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that the cart was not called a bucket, according to the claimant, did not mean that it could not be considered to be a bucket. The proprietor (Keter) argued that the construction of the term “bucket” was not ambiguous in the context of the patent. The bucket was used for light-to-medium transport of items, and of relatively small size as evidenced by the extended handle necessary to allow a user to pull the bucket without stooping. The proprietor contended that the cart of the prior art was too large and bulky to be considered a bucket, and highlighted the similarities of the case with the situation in Hickman v Andrews [1983] RPC 147, where it was found a bookbinders press could not anticipate a workbench, despite an overlap in uses. The hearing officer decided that “bucket” should be construed with an implicit limitation on its size, and that therefore the cart of the

prior art was too big and bulky to be considered a bucket. Claim 1 was thus novel. Considering inventive step, the hearing officer determined that the cart of the prior art, if made smaller, would not fall within the scope of the claim, notwithstanding a lack of evidence of motivation of the skilled person to make such a change. The application for revocation therefore failed. In respect of costs, the proprietor argued that the claimant’s application was an abuse of process, as equivalent patents had been found valid at the EPO and in German and Italian national proceedings. The hearing officer did not agree, stating that the claimant was perfectly entitled to make an application under section 72 even when the validity of foreign equivalents had been successfully defended. The hearing officer therefore awarded costs to the proprietor on the standard scale.

EPO decisions

in composition of the Opposition Division took place. However, just because this oral announcement corresponded to the written decision, this did not necessarily mean that the reasoning leading to that conclusion accurately reflected the reasoning of all members who had taken part in the oral proceedings. Therefore, because the procedural error affects the reasoning behind the written decision, upon which any subsequent appeal would centre, the decision had to be set aside and the case remitted to the Opposition Division for further prosecution.

Procedural violation and remission; article 11 Rules of Procedure of the Boards of Appeal (RPBA) T2175/16: Dehydration of 1-Phenyl Ethanol / Lyondell Chemical Technology TBA decision of 30 May 2017 Chairman: P. Gryczka Members: R. Pérez Carlón and C. Schmidt This is a decision of the Technical Board of Appeal setting aside the Opposition Division’s decision to revoke a patent on the ground that a serious procedural violation had occurred. The facts were that a change in the composition of the Opposition Division took place between the oral proceedings, at the end of which a decision revoking the patent was given orally, and the written decision being issued. This was evidenced by the fact that the person who signed the decision of the opposition division as first examiner had not been the first examiner at the oral proceedings. The Board considered that such a change in composition constitutes a substantial procedural violation, which justifies that the decision be set aside, the case be remitted to the Opposition Division and the appeal fee be reimbursed (T 862/98). The Board also had reference to the Case Law of the Boards of Appeal (8th edition 2016, III.K.2.2.2.), which states that such a change in composition should be avoided and, if that is not possible, parties should be offered new oral proceedings. The respondent’s argument that because the change in composition did not affect the outcome, it could not be considered a procedural violation, was rejected. The Board accepted that the decision to revoke the patent had been taken and announced orally before the change Volume 46, number 9

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Patentable subject-matter – essentially biological processes; article 53(b) Decision of the Administrative Council dated 29 June 2017 to amend rules 27 and 28 EPC to exclude from patentability plants and animals exclusively obtained by an essentially biological breeding process. On 29 June 2017, the Administrative Council of the European Patent Office (EPO) decided to amend rules 27 and 28 EPC to exclude from patentability plants and animals exclusively obtained by an essentially biological breeding process (Decision of the Administrative Council CA/D 6/17, published in OJ EPO 2017, A56). By way of background, in G2/12 and G 2/13 (Tomatoes II and Broccoli II, respectively) the Enlarged Board of Appeal carried out a lengthy and in-depth analysis leading to the conclusion that a narrow interpretation of the exception to patentability in article 53(b) EPC was appropriate and thus plants and animals were in principle patentable even if they were inevitably derived from essentially biological processes. Following this, the European Parliament in December 2015 asked the Commission to consider various issues concerning Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection SEPTEMBER 2017

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of biotechnological inventions (‘the Biotech Directive’) which resulted in the Commission’s Notice 2016/C 411/03 of 3 November 2016. The exclusion to patentability in the Biotech Directive is framed much like that in article 53(b) EPC i.e. it expressly excludes from patentability essentially biological processes for the production of plants and animals but does not mention products derived from such processes. The Commission reviewed the context and provisions of the Biotech Directive to conclude that the European Union legislators’ intention when adopting the Biotech Directive was to exclude from patentability such products. The Commission’s Notice states that it is intended only as guidance in applying the Biotech Directive, and the EPO is not bound by the views of the Commission nor any decision of the Court of Justice of the European Union on interpretation of these provisions. Nevertheless, in light of the divergent approach the EPO issued a Notice on 24 November 2016 that all proceedings in examination and opposition cases in which the invention is a plant or animal obtained by an essentially biological process would be stayed ex officio. The decision of the EPO to stay proceedings was taken following the discussion by EPO member states in the Patent Law Committee of the Administrative Council in relation to the Commission’s Notice. The EPO proposed to the Administrative Council to align the EPO’s law and practice with the interpretation of the Biotech Directive and to safeguard uniformity in harmonised European patent law. The Administrative Council followed this recommendation and decided to amend the relevant Regulations as follows. Rule 28(2) EPC now reads: “(2) Under Article 53(b), European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.” Rule 27 EPC now reads: “Biotechnological inventions shall also be patentable if they concern: (a) […]

EPO

(b) without prejudice to Rule 28, paragraph 2, plants or animals if the technical feasibility of the invention is not confined to a particular plant or animal variety; (c) […]” The new provisions applied with immediate effect starting on 1 July 2017. The EPO has since issued a Notice dated 3 July 2017 confirming that the stay implemented in November 2016 was released as of 1 July 2017 and affected applications will gradually be resumed with cases examined according to the revised rules. (See CIPA’s comments, July-August [2017] CIPA 11.)

Plausibility / lack of inventive step – Article 56 EPC T 0488/16: Cyclic protein tyrosine kinase inhibitors / Bristol-Myers Squibb Holdings Ireland TBA decision of 1 February 2017 Chairman: A. Lindner Members: G. Seufert and L. Bühler This was an appeal by the patent proprietor against the decision of the Opposition Division to revoke the patent as it had not been plausibly demonstrated at the filing date that the compounds of the invention were suitable for the claimed use. The decision highlights the risk of failing to include experimental data in a patent application, particularly in cases involving Markush formulas covering a broad range of chemical compounds. The patent in issue disclosed a Markush formula (covering millions of compounds) and 580 example compounds falling within it, including dasatinib, which is used in the treatment of cancer and is marketed by Bristol-Myers Squibb as Sprycel®. The compounds covered by the formula were alleged to possess protein tyrosine kinase (PTK) inhibitory activity. The application described a number of PTKs (and associated diseases), which were potential targets for the claimed compounds and suggested that certain assays could be conducted to establish the alleged inhibitory activity. The

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

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application included an assertion that the examples had been tested in one or more assays and had shown activity, but no experimental results were provided for any compound in any assay. The TBA upheld the decision of the Opposition Division that the technical problem underlying the invention, namely the provision of PTK inhibitors to treat diseases associated therewith, was not plausibly solved at the filing date. As a result post published evidence showing that example compounds had been tested and found to be active could not be relied on by the proprietor. Accordingly, the appellant’s formulation of the problem to be solved by the invention had to be reformulated in a less ambitious way, namely, the provision of a further chemical compound. On that basis, the patent was held to lack inventive step. In its reasoning on the issue of plausibility, the Board referred to the lack of experimental data in the patent and held that a mere assertion that “compounds have been found active” in the absence of any verifiable technical evidence was not sufficient to establish plausibility. This was particularly so in circumstances where the invention was directed to a very broad class of compounds with structurally different candidates with unknown properties. In such circumstances, it would be inherently unlikely that all of the compounds (or at least a substantial amount of them) would exhibit the alleged PTK inhibitory activity. The Board explained that whilst experiment proof is not always required to establish plausibility if:

EPO

“the nature of the invention is such that it relies on a technical effect, which is neither self-evident nor predictable or based on a conclusive theoretical concept, at least some technical evidence is required to show that a technical problem has indeed been solved”. It was not acceptable to draw up a generic formula, which covered millions of compounds, with a brief assertion of PTK inhibitory activity, and leave it to the imagination of the skilled reader or to future investigations to establish which compound inhibits which PTK and is therefore suitable for treating the PTK’s associated diseases. The Board refused to refer a number of questions to the Enlarged Board of Appeal concerning whether the technical effect on which the invention was based had been made plausible as these were mainly technical questions to be answered by the Board. In attempting to establish plausibility, the appellant relied on declarations from two expert witnesses which were largely dismissed by the Board. The Board considered that the opinion of highly skilled experts on how a document was to be understood did not reflect the view of the notional skilled addressee. Further the assessment of a disclosure from the point of view of the skilled person did not normally require expert evidence as the Board would usually be in a position to assess this itself given it includes two technically qualified members.

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.

Volume 46, number 9

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STUDY GUIDE TO THE PATENTS ACTS Doug Ealey

9th Edition

SEPTEMBER 2017

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TRADE MARKS

Trade marks Decisions of the GC Ref no.

Application (and where applicable, earlier mark)

Comment

GINRAW

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to article 8(1)(b). The goods at issue were identical or similar. The BoA was correct to find that the marks had an average degree of visual and phonetic similarity. ‘RAW’ was the distinctive and dominant element of the mark applied for as ‘GIN’ would be considered, by the English-speaking public, to be descriptive in relation the goods at issue. On the basis of the shared ‘RAW’ element, the marks shared an average degree of conceptual similarity. The GC consequently endorsed the BoA’s global assessment of similarity and held that there was a likelihood of confusion between the marks.

T-258/16

Mediterranean Premium Spirits, SL, v EUIPO; G-Star Raw CV

– household and kitchen utensils, kitchenware and glassware (21) – alcoholic beverages (except beers), gin (33) RAW

– household or kitchen utensils (21) – alcoholic beverages (except beers) (33)

7 June 2017 Reg 207/2009

GC T-294/16

Kaane American International Tobacco Company FZE v EUIPO (Global Tobacco FZCO) 8 June 2017 Reg 207/2009

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– tobacco; smokers’ articles; matches (34)

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The GC upheld the BoA’s decision to revoke the mark on the grounds of non-use pursuant to article 51(1)(a). The evidence submitted was not capable of proving the mark had been put to genuine use within the EU during the relevant period. Participation at international trade fairs within different EU cities had been carried out under the name Kaane and not the mark at issue. The BoA held that the word and figurative element of the mark were co-dominant. Use of the words ‘GOLD MOUNT’ without the mountain image on photographs at the trade fair did not constitute genuine use of the mark as registered or in a form which did not alter the distinctive character of the mark. Similarly, an invoice and advertisement in Tobacco Asia failed to show the mark as registered and were clearly targeted at the Asian market, which did not constitute genuine use of the mark within the EU. In the circumstances, no proper reasons for nonuse of the mark had been given. The fact that the relevant goods did not comply with the applicable EU legislation during the relevant period (as the carbon monoxide emissions exceeded the maximum allowable limit) did not constitute a proper reason. The mere fact that an obstacle to use of a trade mark existed, such as compliance with EU legislation, would not suffice to justify non-use. Nor would the mere fact of having started efforts to comply suffice. The BoA was therefore

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Ref no.

Application (and where applicable, earlier mark)

TRADE MARKS

Comment correct to find that it was for the trade mark proprietor to control the manufacture of the goods covered by the mark – the manufacture of cigarettes which complied with EU legislation depended on the will of the proprietor and non-compliance was not therefore a proper reason for non-use.

GC T-659/16

LG Electronics, Inc. v EUIPO 14 June 2017 Reg 207/2009

GC T-541/15

Industrie Aeronautiche Reggiane Srl v EUIPO; Audi AG 20 June 2017

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SECOND DISPLAY

– smart phones; displays for smart phone; digital set top boxes; leather cases for mobile phone; leather cases for smart phones; application software; software for mobile phones; software for televisions; tablet computers; monitors for computers; LED displays; leather cases for tablet computers; flip covers for tablet computers; portable computers; television receivers; displays for television receivers (9) – watches; parts and fittings for watches; wrist watches; electronic clocks and watches; bracelets (jewelry); watchbands; watches incorporating cameras and MP3 players, and that communicate data to smart phones and PDAs (14) NSU

– automobiles, motorcycles, namely two-wheeled vehicles with combustion engines and a cylinder capacity exceeding 125cc, if heat engines; all-terrain vehicles (12) NSU

– parts of machines (7) – bicycles, accessories for automobiles and bicycles, parts of vehicles (12) (German mark)

The GC upheld the BoA’s decision that the mark was descriptive and lacked distinctive character pursuant to articles 7(1)(b) and 7(1)(c). Both SECOND and DISPLAY had meanings in English and their use together was not a neologism. The mark would be understood by the relevant public as a combination of those two words with a meaning that did not go beyond the meaning of the two words taken individually. ‘SECOND DISPLAY’ was capable of describing the characteristics of the goods at issue, namely those with an additional screen or a screen capable of measuring seconds. The GC endorsed the BoA’s decision that goods such as ‘leather cases for mobile phones’ were ancillary to the electronic devices and were intended to be used in combination with those goods. As such, the mark applied for was also capable of describing those goods. On the basis of the descriptive nature of the mark, there had been no requirement for the BoA to consider registrability under article 7(1)(b).

The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks pursuant to article 8(1)(b). The GC confirmed that genuine use of the earlier mark had been demonstrated within invoices, notwithstanding their low value, and annual reports that showed use of the mark in relation to spare parts and accessories for vehicles. The goods at issue shared a similar nature, intended purpose and method of use. It was not the case that ‘parts of vehicles’ were used only for spare parts for historical vehicles and sold via specific distribution channels. Furthermore, ‘parts of machines’ in class 7 and ‘accessories for automobiles and bicycles, parts of vehicles’ in class 12, were not solely intended for a specialised public, but may also be purchased by the public at large for the repair or maintenance of a vehicle. The relevant public therefore comprised the German public at large. Taking into account the identity of the marks, and the high similarity of the goods at issue, the BoA was correct to find a likelihood of confusion. SEPTEMBER 2017

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Ref no.

Application (and where applicable, earlier mark)

LONGHORN STEAKHOUSE

– restaurant services (43) T-856/16

Rare Hospitality International, Inc. v EUIPO 21 June 2017 Reg 207/2009

GC T-20/16

M/S Indeutsch International v EUIPO; Crafts Americana Group, Inc

– knitting needles and crochet hooks (26)

21 June 2017 Reg 207/2009

TRADE MARKS

Comment

The GC upheld the BoA’s decision that the mark applied for was descriptive pursuant to article 7(1)(c). Consumers who particularly enjoyed red meat, in particular beef, and had an extensive knowledge of the field comprised a not insignificant part of the relevant public. To those consumers, ‘LONGHORN’ would be understood as the name of a specific breed of cattle, namely the Texas Longhorn. For the remaining public, the term was a juxtaposition of everyday English words, capable of designating an animal with long horns. ‘STEAKHOUSE’ was a term widely used to designate ‘a restaurant specialising in serving steak’. The connoisseurs within the relevant public would immediately perceive a sufficiently direct and specific relationship between the mark applied for and the services at issue, rendering the mark descriptive for that public. Even for the average consumers who were not aware of the specific breed of cattle, the mark would be descriptive of the relevant services. In invalidity proceedings, the GC annulled the BoA’s decision that the mark lacked distinctive character pursuant to article 7(1)(b). The BoA had incorrectly assessed the distinctive character of the mark with reference to the patterns on the surface of the actual knitting needles and crochet hooks produced by M/S Indeutsch International. The correct assessment concerned the actual mark as registered, regardless of how it was used in practice. Where a mark consisted of a 2-D or 3-D representation of a product in whole or in part, distinctive character was to be assessed by reference to the relevant standards and customs of the sector of the goods concerned and whether the mark identified the essential characteristics of the goods at issue. Neither scenario applied in this case. The patterns on the actual goods differed from the mark in non-negligible ways, including the fact that the pattern on the goods were coloured and distributed at irregular intervals. This amounted to a significant alteration of the characteristics of the mark as registered and could not be relied on in the assessment of distinctive character.

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. 38 CIPA JOURNAL

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Ref no. GC T-632/15

Tillotts Pharma AG v EUIPO Yoshida Metal Industry Co; Ferring BV 21 June 2017

Application (and where applicable, earlier mark) OCTASA

– preparations and substances for preventing and treating diseases of and disorders of the gastro-intestinal tract (5) PENTASA

– pharmaceutical preparations and medicinal products (5) (Benelux and German national marks)

Reg 207/2009

GC holds word mark VENMO invalid on grounds of bad faith PayPal, Inc., v EUIPO; Hub Culture Ltd GC; Eighth Chamber; T-132/16; 5 May 2017 The GC annulled the decision of the BoA, holding that registration of the word mark VENMO was invalid on the ground of bad faith pursuant to article 52(1)(b). Hub Culture Ltd had established a virtual digital social currency called ‘VEN’ and owned a US word mark for VEN for financial services in class 36. Subsequently, a company called Venmo Inc. (later owned by PayPal, Inc.) was established in the US, providing online payment services under the unregistered mark VENMO. Communications took place between the two companies concerning the use by Venmo of the VENMO mark. Hub Culture then sought and obtained an EUTM for VENMO for various goods and services in classes 9 and 36. Venmo Inc’s parent company applied to invalidate the mark under article 52(1)(b). The cancellation division declared the mark invalid. The BoA annulled that decision, holding that no act in bad faith had taken place. In reaching its decision, the GC agreed with the BoA that the fact that Hub Culture knew about use of an identical sign by Venmo was not sufficient in itself to permit the conclusion Volume 46, number 9

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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 marks shared a certain visual and phonetic similarity, though it was below average. The marks shared the same lexical construction, namely a Greek number followed by the suffix ‘-ASA’. Further, the marks comprised a similar number of letters, each had three syllables, differing only in the first syllable. There was weak conceptual similarity for the part of the relevant public who understood ‘OCT’ and ‘PENT’ as being Greek numbers. These similarities, in conjunction with fact that the marks were also used in relation to identical products, was held to create a likelihood of confusion as to the origin of the relevant products on the part of the relevant public. The GC dismissed the appeal from the BoA’s decision that the earlier mark had acquired enhanced distinctiveness as a result of intensive and long-term use. The identity of the goods and similarity of the marks justified the decision regarding a likelihood of confusion, even if the mark protected by the earlier national registrations had only a normal level of distinctiveness.

that Hub Culture was acting in bad faith. The GC held that the BoA was also right to examine other relevant factors. However, the further analysis carried out by the BoA was not based on all of the relevant factors, in accordance with the case-law, and was vitiated by several errors. Firstly, the BoA incorrectly concluded that the registration of the mark could be seen as following a logical commercial trajectory, despite finding that Hub Culture was clearly aware, at the time of filing the registration, that Venmo was using an identical sign to the mark at issue and that Hub Culture had not used that sign before the filing of the application. That conclusion was based, inter alia, on Hub Culture’s registrations for VEN, its use of VEN MONEY and the domain name ‘venmoney. net’. However, the GC held that, save for the registration of the domain name, genuine use of VEN MONEY, in itself or as an integral part of that domain name, had not been established. Even if such use had been established and Hub Culture had succeeded in arguing that VENMO would be perceived by the relevant public as an abbreviation of VEN MONEY, that fact was not sufficient in itself for the BoA to find that there was a plausible commercial logic underlying the registration of the mark. If the Intervener intended to protect its VEN trade mark, it would have been sufficient to apply to register VEN MONEY, which it also claimed to use. SEPTEMBER 2017

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Secondly, the BoA had accepted that the evidence did not establish Hub Culture’s intention to use the VENMO mark genuinely, but nevertheless stressed that applicants were not obliged to use a trade mark immediately following registration as they enjoyed a five-year grace period. The GC found that, whilst the five-year grace period had not yet expired on the date of adoption of the BoA’s decision, the intention to prevent a third party from marketing a product may, in certain circumstances, be an element of bad faith on the part of the applicant, when it subsequently became apparent that the applicant applied for registration of an EUTM without intending to use it. Thirdly, the BoA had incorrectly relied on the fact that the sign VENMO, used by Venmo, was an unregistered sign and did not enjoy a particular reputation. Although mere use of an unregistered mark did not preclude a third party from applying to register an identical or similar mark in respect of identical or similar services, the proprietor of the unregistered trade mark would not be prevented from alleging the application had been made in bad faith. In so far as it was undisputed that Hub Culture knew about Venmo’s use of the prior unregistered mark, the assessment of its reputation was irrelevant for the purpose of determining whether Hub Culture knew or should have known that there was a potential likelihood of confusion. Finally, although Venmo had explicitly stated in correspondence to Hub Culture that it was not seeking to have global operations outside of the US, the GC held that it was apparent from the terms of that correspondence that Venmo had not entirely excluded the intention to ‘have global operations’ in the near or more distant future.

Meaning of “Establishment” under article 97(1) Hummel Holding A/S v Nike Inc. and Nike Retail BV CJ; Second Chamber; C-617/15; 18 May 2017 Following a request for a preliminary ruling from the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany), the CJ has ruled that a legally distinct second-tier subsidiary (with its seat in an EU Member State) was an establishment of a parent company with no seat within the EU, within the meaning of article 97(1) if that subsidiary: • • •

is a centre of operations in that Member State; has a certain real and stable presence from which commercial activity is pursued; and has the appearance of permanency to the outside world, such as an extension of the parent company.

Hummel Holdings (‘Hummel’) (a Danish company) manufactured sports goods and clothing. Nike Inc., (‘Nike’) (an American company) was the ultimate holding company of the Nike Group. Nike Retail (a Dutch company) operated the website on which Nike goods were offered for sale and advertised for sale in Germany. Nike Deutschland GmbH (‘Nike Germany’) 40 CIPA JOURNAL

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TRADE MARKS

was a subsidiary of Nike Retail that negotiated contracts with intermediaries and supported Nike Retail in connection with advertising and the performance of contracts. Nike Germany provided aftersales services for end consumers in Germany but did not have its own website nor did it sell any goods to end consumers or intermediaries. Hummel claimed that certain Nike products sold in Germany, in particular basketball shorts, infringed its EUTM registration for the figurative mark, registered in respect of clothing, footwear and headgear in class 25. Hummel brought an action for trade mark infringement against Nike and Nike Retail in the Düsseldorf Regional Court, which ruled that it had jurisdiction to hear the claim on the basis that Nike Germany was an ‘establishment’ of Nike within the meaning of article 97(1). The claim of trade mark infringement was dismissed on the merits and Hummel appealed to the Higher Regional Court in Düsseldorf. Nike and Nike Retail objected to the appeal on the basis that the German courts lacked international jurisdiction to hear the claim as Nike Germany was not an ‘establishment’ of Nike within the meaning of article 97(1). In the circumstances, the Higher Regional Court in Düsseldorf stayed the proceedings and referred the following question to the CJ: “Under which circumstances is a legally distinct secondtier subsidiary, with its seat in an EU Member State, of an undertaking that itself has no seat in the European Union to be considered as an ‘establishment’ of that undertaking within the meaning of article 97(1).” In response to this question, the CJ found that there must be visible signs to enable the existence of an ‘establishment’ to be easily recognised and that the existence of the establishment requires a certain real and stable presence, from which commercial activity is pursued, as manifested by the presence of personnel and material equipment. In addition, that establishment must have the appearance of permanency to the outside world, such as the extension of a parent company. However, whether the ‘establishment’ was a first- or a second-tier subsidiary of the parent company and whether the establishment had distinct legal personality were not deemed to be relevant issues.

Extent of protection of PDO considered in invalidity proceedings EUIPO v Instituto dos Vinhos do Douro e do Porto, IP (“IVDP”) A-G Sánchez-Bordona for the CJ; C-56/16 P; 18 May 2017 A-G Sánchez-Bordona has opined on the extent of protection afforded by the PDOs for PORT and PORTO. In a cross appeal within invalidity proceedings, the A-G recommended that both the decision of the GC and that of the Cancellation Division be annulled. www.cipa.org.uk

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IVDP had applied to invalidate the registered mark PORT CHARLOTTE, registered in respect of whisky, on the basis of its prior registration for a protected designation of origin for PORT/PORTO for port wine under Regulation 1234/2007. The invalidity action relied on two grounds, namely: i. infringement of article 53(1)(c) on the basis that the mark took advantage of the distinctive character and reputation of the PDO contrary to article 8(4) ii. infringement of article 53(2)(d) and article 52(1)(a) on the basis that the mark lacked distinctive character pursuant to article 7(1)(c). The EUIPO had dismissed the application for a declaration of invalidity and the GC’s decision annulled the decision of the EUIPO (T-659/14; 18 November 2015, not reported in CIPA Journal). Both parties appealed. The main focus of the appeal was whether the body of legal rules applicable to the protection of a PDO for wines was, exclusively or comprehensively, that laid down in Regulation 1234/2007. IVDP submitted that Portuguese law should be applied as it considered that Portuguese law offered a higher level of protection than EU law. Citing the decision in Budĕjovický Budvar v Rudolf Ammersin GmbH (C-478/07), the A-G observed that PDOs were afforded comprehensive protection by EU legislation, which aimed to create a uniform and exhaustive system of protection across all Member States. The GC had erred in accepting that additional protection could be afforded under national law. Although the circumstances of Budĕjovický Budvar related to beer, the parallel legislation relating to wines under Regulation 1234/2007 was designed to achieve the same purpose. The A-G observed that where a Member State had no national legislation relating to PDOs, EU law would permit that Member State to grant protection at a national level on a transitional basis but such protection would cease on the date that the Commission issues a decision in relation to the registration of that PDO. The GC had also failed to correctly assess the extent of protection afforded by PDOs for wines as a criterion for determining whether or not their reputation had been exploited by marks which appropriated their characteristic term. As such, it had failed to properly determine whether the reputation of IDVP’s PDO for PORT/PORTO had been exploited by the registration of the PORT CHARLOTTE mark. PORT CHARLOTTE clearly included the PDO for PORT. The GC had therefore erred in finding that the first condition of article 118(2)(a)(ii) of Regulation 1234/2007 had not been satisfied. The A-G disagreed with the GC that the PDO PORT lacked its own distinctive character. The GC’s reasoning was that the word PORT, when included alongside another word, would be perceived by the public as denoting a mere geographical place (a port) identified by that second element. The A-G Volume 46, number 9

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concluded that the fact that the word PORT meant harbour in English and French could not justify leaving the PDO without protection. When the EU authorities approved its registration as a PDO this entitled it to the same protection as other PDOs. The A-G stated that the Regulation prevented the term PORT or PORTO from being used on its own, or with other words, in trade marks applied to alcoholic beverages that were likely to derive unfair advantage from the reputation of the PDO as a result. Finally, the A-G considered that the GC had erred in failing to recognise that the mark PORT CHARLOTTE evoked the PDO PORT or PORTO. The A-G considered that the GC erred in its definition of evocation in that it found no evocation because it considered there was no likelihood of confusion between whisky and port wine. Even in the absence of a likelihood of confusion, PORT CHARLOTTE may evoke the wines protected by the PDO in the mind of the reasonably well-informed European consumer and due account should have been given to this fact by the GC. The A-G therefore recommended that both the decision of the GC and that of the EUIPO be annulled.

BMW successful on appeal against repair and maintenance business Bayerische Motoren Werke Aktiengesellschaft (‘BMW’) v Technosport London Ltd & Anr (‘TLL’)* Floyd and Patten LJJ; [2017] EWCA Civ 779; 21 June 2017 The CA (Floyd LJ giving the lead judgment) allowed BMW’s appeal from Judge Hacon’s decision in the IPEC in which he held that TLL’s use of ‘BMW’ in conjunction with its trading name ‘Technosport’ did not infringe the mark ‘BMW’ nor constitute passing off (reported June [2016] CIPA 50). TLL was a company dealing in the repair and maintenance of cars, mostly BMWs. In the course of its business, it used signs identical to BMW’s following trade marks: (i) an EUTM for ‘BMW’ (the ‘BMW Mark’); (ii) an EUTM for a roundel device mark as shown below, and (iii) an international registration for the ‘M’ logo as shown below:

the ‘Roundel’

the ‘M Logo’

Each of the trade marks was registered in respect of, among other things, the maintenance and repair of cars, motors, engines and parts of these goods in class 37. TLL had displayed the Roundel on a facia board on the exterior of its premises, SEPTEMBER 2017

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in the interior (on a banner displayed in the reception area), on a van used to conduct its business, and on business cards distributed to customers. The M Logo was displayed on TLL’s website. The BMW Mark was used on a shirt worn by the company director while he carried out the company’s business (either alongside or beneath the word TECHNOSPORT), and in the company’s Twitter handle ‘@TechnosportBMW’. It also appeared on the rear of TLL’s van, as shown below:

more evidence (including evidence from actual consumers) to establish that the juxtapositioning of BMW with a dealer’s name would convey the impression that the dealer was authorised. Floyd J disagreed, finding that BMW did not need to prove that all authorised dealers used the trading style “Dealer BMW”, nor did they need to prove that whenever the average consumer sees the dealer’s name juxtaposed in any context with the BMW Mark they assume that it refers to an authorised dealer. The issue was whether that impression was conveyed by the sign ‘Technosport BMW’, or that there was a risk that it would be. Further, Interflora I ([2012] EWCA Civ 1501) had established that evidence of individual consumers would generally not assist the Court where what was in issue was an ordinary consumer product. In addition, it was wellestablished that evidence of actual confusion was never a prerequisite of success in an infringement or passing off action. Floyd LJ commented that by focusing on the absence of evidence of particular kinds, Judge Hacon had lost sight of the need to consider each of the uses in the context in which they occurred. Had he done so, he would inevitably have reached the conclusion that the use of the ‘Technosport BMW’ signs was more than informative and carried the risk that it would be understood as misleading use. Considering the use of ‘Technosport-BMW’ on the van without the roundel, Floyd LJ found it was infringing because:

Judge Hacon found that TLL had infringed the Roundel and ‘M’ Logo marks and was liable for passing off in respect of its use of those signs, because such use would lead the average consumer to believe that TLL was an authorised BMW dealer. There was no appeal from the Judge’s conclusions on those issues. However, BMW appealed the Judge’s decision that its BMW Mark was not infringed under either article 9(1)(b) or 9(1)(c) of the Regulation (as it read at the relevant time) and that its use by TLL did not constitute passing off. (It was accepted that the passing off action stood or fell with the trade mark infringement action.) Floyd LJ said that one could not start from the proposition that any use of the BMW Mark in the course of a business specialising in the repair of BMWs would be an infringement – use of the mark was necessary and legitimate in order to explain to the public what the business did. Equally, one could not start from the proposition that use of BMW in relation to a motor car repairing service could never be an infringement, as that was what the mark was registered for. Floyd LJ said that the distinction was between uses which conveyed the true message “my business provides a service which repairs BMWs and/or uses genuine BMW spare parts” (informative use) and those which conveyed the false message “my repairing service is commercially connected with BMW” (misleading use). Floyd LJ took the view that Judge Hacon had made an error of principle when deciding whether the use of the Technosport BMW signs was informative use or misleading use. He had taken the view that BMW ought to have adduced

i. there was nothing to indicate that the sign was being used informatively, such as “BMW repair specialist”; ii. it was unrealistic to suggest that use of ‘technosport’ without BMW in TLL’s web address would enable the average consumer to understand that the headline ‘TechnosportBMW’ was being used in an informative sense; iii. the name of a business as the provider of the relevant services was more readily taken to be use in relation to the services offered than it might be in the case of goods; iv. the presence of a risk of the kind in question did not depend on it being the universal practice of authorised distributors to use that trading style – the risk existed because the use of a trade mark within a trading style in this way and without further explanation naturally carried with it the risk that it would convey the impression of a connection between TLL and BMW, which went beyond the fact that BMW cars and spare parts were used in the business.

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In respect of the shirts and Twitter handle, again Floyd LJ concluded that there was no immediate context to indicate that use of the BMW mark was merely informative. Having concluded that BMW was right on article 9(1)(b), Floyd LJ did not go on to consider its case under article 9(1) (c), commenting that it raised some difficult questions as to whether a use which had been found to be purely informative could nevertheless take unfair advantage of a well-known mark. He preferred to leave consideration of that issue to a case in which it arose more directly. www.cipa.org.uk

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Expert evidence Glaxo Wellcome UK Ltd & Ots v Sandoz Ltd & Ots* Chief Master Marsh; [2017] EWHC 1524 (Ch); 28 June 2017 Chief Master Marsh (CMC) refused to grant Sandoz permission to adduce expert evidence because its application was not sufficiently particularised. Glaxo brought a claim for trade mark infringement and passing off against Sandoz relating to Sandoz’s AirFluSal inhaler. Sandoz sought permission to adduce evidence from one or more experts in three areas: i. the medical conditions treatable by the use of the relevant inhalers; ii. the practice of healthcare professionals, including GPs, in prescribing inhalers; and iii. the practice of healthcare professionals, including GPs, in dispensing prescriptions relating to inhalers. The Master noted that the Court was being asked to give permission in advance without knowing the identity of the proposed expert witnesses, their qualifications, their relevant professional experience and the evidence they were able to give. Importantly, the Court did not know what elements of their evidence, if any, could properly be characterised as expert evidence as opposed to evidence of fact for which permission was not needed. The Master observed that the parties had been unable to come near to agreeing a list of issues prior to the CMC, and said that it was essential in a case of any complexity for the Court to be able to relate the proposed expert evidence to specific issues. While it was common ground between the parties that the Court would need evidence within the three areas proposed by Sandoz, the Master considered that there was a distinction between the first area of proposed expert evidence and the other two such areas. The first area was not a matter of opinion nor was it didactic evidence that need be contentious nor require explanation from an expert. The Master said that parties should engage with each other and establish whether there were “genuine fault lines between them”, concluding that any differences in the present case were unlikely to be such as to require expert evidence. He added that he saw no basis for this first area of expert evidence to be required from both a respiratory specialist and a GP. In relation to the second and third areas of proposed expert evidence, the Master’s main objection was that the Court was unable to characterise with any degree of accuracy the type of evidence that Sandoz wished to introduce based on the limited description provided. He said that, had the application been supported with evidence about the likely individual experts, their experience, and the sort of evidence they might give, it might then have been possible for the Court to identify evidence that might properly be characterised as expert evidence, as required under CPR Part 35. In the circumstances, Volume 46, number 9

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it was not. Referring to Fenty v Arcadia, he said that it was: “one thing for a witness to give evidence about his or her experience in a particular area from which the Court itself is able to extrapolate and quite another for a witness to give evidence which is founded in a body of expertise rather than the witness’ own experience”. Concluding that it would be wrong to grant the sort of openended permission sought when it appeared the relevant evidence could be made available from non-expert witnesses, the Master refused Sandoz’s application.

Use of another’s Amazon listing found to infringe and pass off Jadebay Ltd & Anr v Clarke-Coles Ltd T/A Feel Good UK* Judge Melissa Clarke; [2017] EWHC 1400 (IPEC); 13 June 2017 Judge Melissa Clarke held that Feel Good had infringed Jadebay’s trade mark under section 10(2) by using Jadebay’s licensee’s Amazon listings for flagpole products to sell its own. The Judge also held that Feel Good’s actions amounted to passing off. However, Jadebay’s claim for infringement under section 10(3) failed. Jadebay owned the following UK trade mark, which was registered in class 20 for “flagpoles plastic storage box garden furniture”:

Prior to registration, Jadebay had used the words DESIGN ELEMENTS as an unregistered trade mark. It sold aluminium flagpoles on Ebay.co.uk and licensed the second claimant (“Noa and Nani”) to sell aluminium flagpoles on Amazon.co.uk. Noa and Nani’s listings on Amazon appear in the centre and on the right in the screenshot below and include the words “by Design Elements”:

It was not disputed that an Amazon listing, although set up by one seller, could be used by multiple sellers to sell the same SEPTEMBER 2017

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product. When there were multiple sellers on a listing, Amazon would select one as the default seller and would promote it in the listing and by way of a ‘Buy Box’. The Buy Box seller was usually the one that charged the lowest total price for the product plus delivery charges. Feel Good used Noa and Nani’s Amazon listings to offer for sale flagpoles which, though different in design, were also 20ft tall aluminium flagpoles of a comparable quality. Feel Good undercut Noa and Nani’s prices, winning the ‘Buy Box’ and becoming the default seller, therefore capturing the majority of sales from the relevant listings during the period it sold from them. The Judge was satisfied that Feel Good’s actions amounted to use in the course of trade of the sign ‘Design Elements’, which was aurally, conceptually and visually similar to Jadebay’s mark, in relation to goods identical to those for which the mark was registered. She concluded that there was a likelihood of confusion on the part of the average consumer due to the high degree of similarity between mark and sign, the identity of the goods, the distinctiveness of the mark to repeat customers, the careful consideration the average consumer would have given to the information on the listings before making a purchase, the real possibility of there being unreported actual confusion, and the likelihood that the average consumer would consider that Feel Good’s products emanated from the stated manufacturer, Design Elements, or was economically linked to that source. The claim under section 10(2) therefore succeeded, as did the passing off claim given that the relevant listings stated that the flagpoles consumers were considering purchasing were ‘by Design Elements’. However, as the Judge could not be satisfied that Jadebay’s mark had a reputation amongst a significant part of the relevant public, the claim under section 10(3) failed. Feel Good was ordered to pay £25,350 in damages which, in the absence of detailed analysis from Jadebay and Noa and Nani, was the result of a broad brush approach taken by the Judge, attributing a loss of profits of £14.45 per unit (based on a sale price to consumers of £39.99 plus £4.99 shipping less specified deductions) x 1755 units sold by Feel Good using the relevant listings.

Geographical indications Mermeren Kombinat AD v Fox Marble Holdings Plc* Judge Hacon; [2017] EWHC 1408 (IPEC); 14 June 2017 Mermeren was a Macedonian company which had been extracting marble from near Prilep, Macedonia, since 1950 and selling it as “Sivec” or “Sivec Bianco”, Sivec being a mountain pass in the Prilep region. Marble had been quarried from the region since the time of the Roman Empire and was famed for its white colour and homogenous appearance. Mermeren owned an EUTM for the word SIVEC registered in August 2013 in respect of “marble of all types”. It brought a claim against UK company Fox for infringement of its EUTM by selling marble extracted from the Prilep region under the sign 44 CIPA JOURNAL

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‘Sivec’. Fox pleaded a defence under article 12, namely that the mark indicated the geographical origin of the marble. It also claimed that the mark was invalidly registered and/or should be revoked under articles 7(1)(b), (c) and (d) and articles 51(1) (b). Due to concessions made by Fox, the Judge limited his analysis to articles 7(1)(c), 7(3) and 52(2). The Judge said that whether ‘Sivec’ designated a geographical origin of marble at the two relevant dates (the date of filing and the date of the counterclaim) was to be assessed through the eyes of the average consumer who was a specialist dealer in marble or a person who advised their customers on the choice of materials to be used in a building, and who came from within the EU.

Inherent character of the mark under article 7(1)(c) The Judge said that Fox was wrong to take into account use of the mark, which was not relevant to the analysis under article 7(1)(c). Although Sivec was a real place, it was a very obscure place that the average consumer would not have heard of. It could not, therefore, inherently designate a geographical origin in the mind of the average consumer. Fox’s argument under this head was therefore rejected.

Acquired distinctive character under article 7(3) The Judge was of the view that use of a real place name in association with a type of marble could generate the perception that the name designated a geographical origin even if the average consumer had never heard of that location. It was the perception of the average consumer, not the reality, which mattered. The Judge found it likely that, at least up to 2011, the average consumer in the EU did not regard the use of ‘Sivec’ by Mermeren as trade mark use and it could not have acquired distinctive character. (It had been used only on invoices and without an ® sign.) However, the Judge found that between 2011 and the date of filing (during which time Mermeren had focused on advertising and promotion of the mark) a significant proportion of relevant persons (i.e. markedly above de minimis) had come to believe that Sivec was a trade mark owned by Mermeren, signifying that marble marked with that name came from a single undertaking. Therefore, the mark had acquired distinctive character within the meaning of article 7(3). Accordingly, the mark was found to have been validly registered as it was not contrary to any of the prohibitions to registration contained in articles 7(1)(b) to (d). Alternatively, the mark did designate a geographical origin by 2010 but this had been reversed through use in the period between 2011 and the filing date. By the date of filing, the mark was distinctive and remained so up to the date of the counterclaim, which was the relevant date for the application of article 52(2). Mermeren’s mark remained validly registered and there were no grounds for its revocation. www.cipa.org.uk

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DECISIONS

DESIGNS

Scottish Court of Session hears first appeal from decision of UKIPO hearing officer

Designs

CCHG Ltd T/A Vaporized v Vapouriz Ltd Lady Wolffe; [2017] CSOH 100; 12 July 2017

High Court lays down case management principles for registered design cases

For the first time, the Scottish Court of Session heard an appeal from a decision from the UKIPO’s hearing officer. CCHG appealed from a decision of the hearing officer following the invalidation under section 5(2)(b) of its registered UK mark for a device which incorporated the stylised words “VAPORIZED INHALE THE FREEDOM”. Vapouriz’s earlier mark is shown on the left below and CCHG’s mark is shown on the right:

Spin Master Ltd v PMS International Group* Carr J; [2017] EWHC 1477 (Pat); 9 May 2017

Lady Woolfe noted that, while in England and Wales an appeal to the Court was a “review” of the hearing officer’s decision, under the Court of Session rules, an appeal “shall be a rehearing”. However, she was of the view that: “nothing turns on the differences in formulation in the respective procedural rules of the two jurisdictions. Given that the TMA 1994 is of UK-wide application, it is desirable that the exercise of the appellate function by this court, if not its procedural rules, accords with that in England”. Lady Woolfe went on to find that there was no detectable error in principle on the part of the hearing officer, nor that he was plainly wrong in the conclusion he reached.

Parliament House where the Court of Session is located. Picture supplied by the Scottish Courts and Tribunals Service. Volume 46, number 9

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At the CMC, Carr J applied previous CA guidance regarding case management in registered design claims and set down a series of steps to be followed in such cases. Spin Master brought a claim for infringement of a Registered Community Design and PMS counterclaimed for unjustified threats of infringement of three different species of IP right. Referring to the CA’s guidance in Proctor & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936 which was expanded in Dyson v Vax [2011] EWCA Civ 1206, Carr J said that admissible evidence should be limited and hearings short. He was concerned that the CA’s guidance had not been fully taken on board in this case. The Judge reduced the time for trial to three days (including reading time), refused to grant orders for further information and disclosure, refused Spin Master permission to amend its Particulars of Claim to include a claim for bonus damages (at the CMC stage at least), and limited the areas in which expert evidence could be adduced and the length of such evidence. Carr J went on to lay down the following steps to be considered in future registered design cases in order to achieve shorter trials: (i) parties should, in appropriate cases, produce images at an early stage to show the differences or similarities relied upon and, in the case of the defendant, those features which were wholly functional or in which design freedom was said to be limited (requests for further information were unlikely to be helpful); (ii) allegations and evidence of copying were not relevant to the issue of design freedom and were appropriate only in claims for infringement of unregistered design right and/or copyright, and parties should carefully consider whether and why any disclosure at all (even standard or issue based disclosure) was necessary; (iii) expert evidence as to whether the alleged infringement produces on the informed user the same or a different overall impression should not be included in cases concerning consumer products; (iv) parties should try to limit the length of expert evidence to an agreed number of pages; (v) the court should be satisfied as to the relevance of any fact evidence; (vi) parties should be prepared at the pre-trial review to identify issues on which cross-examination was necessary and why; (vii) where multiple designs/infringements were alleged, parties should each select a limited number of samples on which the issues could be tested; (viii) the parties should give careful thought to those issues which could be postponed to a damages enquiry, which would only need to be considered if liability was established. SEPTEMBER 2017

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Copyright IPEC refuses to transfer case to the general Chancery Division Phonographic Performance Ltd v JJPB Ltd & Anr* Birss J; [2017] EWHC 1370 (Ch); 15 June 2017 Birss J granted injunctions on applications for judgment in default in favour of PPL. PPL is a collecting society which operates for the benefit of its members and enforces its members’ copyrights. PPL brought two actions against traders who had been playing music in public without the relevant licence. Neither filed an Acknowledgement of Service or Defence and a default judgment would ordinarily follow. However, the question arose as to whether an injunction should also be granted given that the defendants had paid all outstanding licence fees relating to the infringements on which the claim was brought, but were continuing to carry out new infringements. Since in both cases the defendants were continuing to infringe, the Judge thought it right and appropriate for the court to grant an injunction, taking into account the law on the quia timet nature of injunctions in Merck Sharp Dohme Corp v Teva [2013] EWHC 1958 (Pat) and Landor v Azure [2006] EWCA Civ 1285. He concluded that the alternative would be to require PPL to issue fresh proceedings and make the same claim for an injunction in those proceedings that they now made on the present application. In the Judge’s view this would elevate form over substance and would simply add to PPL’s costs and, in turn, to those of the defendants. Therefore, the injunctions were granted.

IPEC refuses to transfer case to the general Chancery Division 77M Ltd v Ordnance Survey Ltd (‘OS’)* Judge Hacon; [2017] EWHC 1501 (IPEC); 15 June 2017 Judge Hacon dismissed OS’s application to transfer 77M’s case to the general Chancery Division. Reciting the relevant law, including ALK-Abello Ltd v Meridian Medical Technologies [2010] EWPCC 14, Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2012] EWPCC 13 and Environmental Recycling Technologies v Stillwell [2012] EWHC 2097 Pat, the Judge considered the following:

Size of the parties

stifled by a state litigant. He said that there was no relevant distinction between a private litigant and a government body, and accepted OS’s argument that the nature of the parties was of itself neutral.

Parties’ ability to fund proceedings Judge Hacon did not take the view that it was incumbent upon an SME to prove exhaustively that it could not access loans from elsewhere to fund litigation in order to have good reason to benefit from the costs cap in IPEC. An SME with limited financial resources was precisely the kind of litigant that was, subject to other considerations, entitled to the benefit of the costs cap. Further, the fact that lower costs were incurred in IPEC was equally relevant in the case of a publicly funded litigant such as OS.

Behaviour of 77M The Judge was not convinced that this was a case in which the behaviour of 77M had been so inappropriate to the conduct of litigation in IPEC that it counted as a major factor in favour of transfer to the general Chancery Division. Although its pleading had been somewhat over developed, it had not pleaded either worthless causes of action or defences to counterclaim and had, in fact, made some significant concessions in the reply and defence to counterclaim.

Value of the claim On OS’s claim to damages under its counterclaim, 77M offered to waive the £500,000 limit so OS’s argument in this respect became a neutral point. As to the value of an injunction, the Judge was not convinced by OS that this would be extraordinarily high and, in any event, it was not unheard of for IPEC to hear cases which involved injunctions with a significantly high value.

Complexity of the issues The Judge was not convinced that the issues were so complex that the trial could not be heard within three days. However, he left it open for the judge hearing the CMC to revisit the question of a transfer at that stage, and impressed upon 77M that it ought to take all possible steps to streamline the case when approaching the CMC. Taking the above into account, Judge Hacon was of the view that a transfer to the general Chancery Division would raise a serious likelihood of having the practical effect of blocking 77M’s access to justice, which had been described in Comic Enterprises as capable of being a decisive factor. In Environmental Cycling it had been described as an enormously important factor capable of overwhelming other matters, and Judge Hacon agreed.

77M was an SME and OS was a government-owned body with substantial licensing revenues. Judge Hacon rejected 77M’s argument that a private party’s access to justice should not be 46 CIPA JOURNAL

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www.cipa.org.uk

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CPD & EDUCATION

INSTITUTE EVENTS

The Life Sciences Committee is pleased to announce

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

UK, EPO, Russia and US law updates



Nagoya – update and in practice



UPC update and a panel session on life post-Brexit



Plausibility in the UK and at the EPO



Patenting antibodies and regulatory issues for biosimilars



Making money out of technology

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

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

Volume 46, number 9

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2015

The not-so-secret diary of a CIPA President

By Andrea Brewster

11am: A group of us meet with visitors from WIPO

and the UK IPO. Some of our discussions are about the UK joining something called the Hague System, D EC which is something to do with registered designs, which are some other things I know very little about, of which there are many. Apparently it is easy to get a Hague design and there is a really simple online form which potentially leads you to worldwide design domination. It sounds great to me that the UK is going to be part of such a fantastic system and I wonder why we didn’t think of it before. Especially if we are planning on leaving one of the other fantastic multinational systems we’re part of. 1 pm: Meanwhile, back at CIPA HQ, someone has moved the austerity-themed Christmas tree into the library and Secret Santa has visited and put presents under it. Secret Santa has also put out a paper plate with mince pies on, and a couple of bowls of peanuts. Kirsty hands out the presents. I am well chuffed with mine. It is a Presidential Survival Kit. This includes two cans of gin and tonic, some chocolates with gin in and some chocolates with whisky in. Somebody clearly knows me well. The EyeEyePeePee’s present is a chocolate tool kit and a chocolate train. They are not to the same scale, which I think bothers him. 2.30 pm: Now we are at the CIPA staff Christmas lunch. We are not served our food until well past 3pm, and a couple of peanuts have proved inadequate to maintain my blood sugar levels, so despite my paper hat I am a Little Bit Grumpy. Thus, for instance, I would rather my sea bass had been lightly steamed and not boiled in a dishwasher on the Vesuvius setting. And I am not happy with the after-taste my Christmas pudding carries, of meat pie and pencil sharpenings. The others say: How do you know what pencil sharpenings taste like? I say: Pencil sharpenings is what we had for us tea oop north and we was glad of it. I say: Not everyone can afford to use truffle shavings to garnish their food. I can tell they are thinking that social mobility may not be such a good idea after all. Still, we manage to have a good time despite the food. Because

The Not-so-Secret Diary is available in blog form, with additional material and more up-to-date news – http://thenotsosecretdiary.weebly.com/ 48 CIPA JOURNAL

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the company is excellent. Because we all love each other very much. Because we are thrilled with the paper hats and rubbish jokes and plastic toys from our Christmas crackers. I may be a Little Bit Grumpy, but I can still have fun catapulting my green plastic frog into the VeePee’s drink.

Student induction day #2. The new students exchange notes on the best and the worst firms to train with, who pays the highest salaries and D EC who throws the best Christmas parties. After Mr Hodkinson’s talk about professional ethics, they exchange notes on which firms break the most rules from the IPReg Code of Conduct. After Mr Dixon’s talk about business practice, they exchange notes on whose billing figures are best. After my talks they exchange notes on the latest episode of I’m A Celebrity, because they’ve never heard such rubbish in their lives. In the afternoon, Mr Luckhurst gives his usual soothing presentation about stress in the workplace. He says if you are suffering from stress you should talk to someone about it. If that talk results in you and the someone going into an office together, shutting the door and filling out a P45, you have picked the wrong someone to talk to. Later, Mr Harris from ITMA tells us about qualifying as a trade mark attorney. Mr Harris can remember the Bad Old Days when the trade mark exams were so difficult that if you plotted the marks on a cumulative frequency curve the only way you could get a pass was by quantum tunnelling. Fortunately, ITMA got rid of the qualifying exams and now you have to go on qualifying courses instead. The cumulative frequency curve for a qualifying course looks a little bit different, because if you have paid the qualifying course fee you don’t expect to have to resort to quantum tunnelling to get your certificate at the end of it

09 D EC

11 am: I meet up with an old friend, who is also

a patent attorneyette. We talk about how lucky we are still to be young at heart and not to have www.cipa.org.uk

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succumbed to mid-life crises. In my case, of course, the only way I have avoided having a mid-life crisis is by calling it Voluntary Work instead. She asks me how I am getting on being President. I say 6 months, 19 days, 11 hours. Later I do some Christmas shopping. This is almost stressful enough to constitute a mid-life crisis in itself. I cannot find any suitable Christmas presents, so I buy a new dress instead. The dress is designed for someone who is young at heart but not at waist height. It is so bag-shaped that it attracts a 5p levy. It is, in other words, perfect for covering up the bits of me that are enjoying their own separate mid-life crises, in regions they are not strictly supposed to occupy. It will do nicely for the grand ITMA Christmas lunch on Friday. 8 pm: 6 months, 19 days, 20 hours. How am I getting on being President? Well, apart from nobody taking me seriously not even the President of ITMA, I think perhaps I am getting away with it. Because over the last few months I have realised two things: (1) I am quite good at bluffing; and (2) so are a lot of other people. These two facts together have boosted my confidence no end. I now know that few people are as good as they appear to be but they will expect you to pretend they are and to pretend that you are too. And that way, everyone can be happy.

Once again we are writing to the EPO. We seem to be doing a lot of writing to the EPO at the moment. D EC This time we are not writing to say Thank you for coming to visit us last week or Here are some good, solid, British ideas about the electronic Druckexemplar. No, sir. This time we are writing about the Boards of Appeal. It is well known that the Boards of Appeal are due for restructuring. It is aussi well known that Monsieur Le President Battistelli has some plans and that Monsier Le Chat d’IP ne like pas those plans. Le Chat d’IP a written beaucoup about les plans du President et aussi about les plans que le Chat thinks le President might avoir up son sleeve. Aussi plus, il est well known que les Boards d’Appeal have un beaucoup big backlog de work et que something doit être done about it. Quelques people av written to Monsieur Le President pour lui expliquer ça. Alors, along vient le CIPA et c’est up to us to write la best lettre au President pour expliquer exactly comment les Brits think les Boards d’Appeal ought to être restructured. We know le President listens à CIPA parce que everyone listens à CIPA; nous sommes slap bang au centre de l’IP Universe. Et c’est moi qui va write cette lettre. Parce que moi, je write bien le français. Everyone says ça.

The Congress Steering Committee holds a teleconference to decide whether the Congress D EC it is going to steer next year is a thumping great flagship of a Congress, a nifty little speed-boat of a Congress, or something in between. The Waters of Debate are a little choppy, but we have a shared desire to avoid the Rocks of Losing Tons of Money and we can also see that the Shores of Bums on Seats are a good few miles away yet. In the end we conclude that a one-day conference may be preferable to a two-day conference. Even within our most learned and sophisticated profession, attention spans have got shorter since the advent of social media. I consider suggesting that all speeches be limited to 140 words, that speakers be required to deliver multimedia presentations, that the compere be replaced by a series of hyperlinks and that the buffet lunch be served using a drop-down menu. But I do not share these thoughts with the rest of the Committee.

11.30 am: I am having coffee with my counterpart at the Licensing Executives Society. We exchange D EC notes about what it is like being a Presidentess of an organisation full of volunteers, some of whom were men at the time when being a man was all it took and everything else went without saying. It is an immensely comforting conversation. We resolve that we will organise some joint training events. We will only tell people about these events once they fall safely into the category of Things That Have Already Been Done, Sorry rather than Things We Would Like To Do Please. The training will be about IP exploitation strategies, and it is risky organising any kind of project with the word “strategy” in its title. 2 pm: Now I am at the grand ITMA Christmas lunch. As planned, I am wearing my navy blue, mid-life carrier bag. I am glad I ignored the ITMA President when he told me it was a fancy dress party: no one else is in fancy dress, apart from a few who have come as trade mark attorneys. The ITMA President has to stay sober in order to make an after-lunch speech. Of course, I would not have bothered if I were in his shoes. But that is why we don’t have a grand CIPA Christmas lunch.

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Mr Lampert says CIPA is not sending any corporate Christmas cards this year. This is so that we can reduce our environmental impact and save D EC lots of money to give to charity, and absolutely not because we forgot. Funnily enough, I have adopted a similar policy at home.

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PERSONAL

Going . . . e ot Rem

f Peru were an aisle in a DIY shop (bear with me here), it would be my favourite – the paint section, floor to ceiling with colour swatches displaying just about every colour you can imagine, plus more that you can’t. “Elephant’s breath”, anyone? It really is a rainbow of a country, and nowhere is that more apparent than at the crux of the ancient Incan Empire itself, Cusco – where the buildings, people and even their pet alpacas are a riot of colour. Every technicolour masterpiece needs a neutral background, however, to fully appreciate its vibrancy, and here Lima – our base for the month – provides exactly that. In the nicest possible way, it’s the magnolia to Cusco’s fullysaturated spectrum. At this time of year, Lima is shrouded by a permanent blanket of grey cloud (lovingly called the “donkey’s belly”) which casts the city in an eerie half-light from dawn til dusk. A rare break-through of sun is a cause for celebration (I think this happened precisely once while I was there). All in all, it’s safe to say it’s not the most inspiring city I’ve lived in. But you know what they say about clouds. This one’s silver lining is two-fold: the food, and the CAT PARK! Need I say more? (Google “Parque Kennedy” if the answer is yes). But on to Cusco, which couldn’t be more different from Lima’s industrial cityscape. With ancient churches, cobbled streets, bustling craft markets, and clear blue skies ringed by mountain tops, Cusco has more character than you can shake a hiking pole at. We were lucky enough to visit in the run-up to June’s festival of the sun, when Cusco celebrates the winter solstice – meaning spontaneous break-outs of music and dance in the main square were a daily, and wonderful, occurrence. I haven’t often wanted to describe a city as exuberant, but that’s the word that springs to mind for Cusco. Probably Cusco’s main draw is, of course, Machu Picchu – the world-renowned abandoned Incan city that surely needs no introduction. Nowadays, you can get to Machu Picchu without even breaking a sweat, via a train to its nearest town

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GOING REMOTE

Lima, Peru By Heather Lane (Fellow)

of Aguas Calientes and then a short bus to the site itself. But where would be the fun in that? So it was that, after three days in Cusco acclimatising to the altitude and panic-buying granola bars and hiking socks, we found ourselves at some ungodly hour in the morning staring down the barrel of the Inca Trail… Or, as I prefer to call it, the Incamation super-highway. Five hundred years ago, the Incan Empire was huge: it compassed not only Peru and most of Ecuador, but parts of Bolivia, Argentina, Chile and Colombia. To enable movement of people, goods and information through the Empire, a vast network of roads – amounting to tens of thousands of kilometres of trails – was constructed, stretching all the way from what is now Quito (Ecuador) in the north to Santiago (Chile) in the south. The now-famous Inca Trail is but a tiny, 43km long section of that network – still going strong 400 years later. As well as using the roads for llama-powered transport, one of their primary functions was communication

Lima – people and their pets are a riot of colour

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PERSONAL

– messages were passed from city to city by a relay team of road runners, who either memorised the information or carried it in a complex pattern of knotted threads, ready to be decoded by a specialist interpreter (possibly the first digital to analogue converter?) at the other end. So, essentially an early version of the internet – and fibre-optic broadband at that, given that using this system, according to some sources, the Incas could pass a message from Quito to Cusco (nearly 2000 km) in just five days. Back to the present day, though, and as we arrived at Machu Picchu some four days, three nights, 43 km and innumerable granola bars later, you could say we fell more into the dial-up modem category. No prizes for speed, liable to break down frequently and prone to making strange noises – but we got there eventually. Arriving shortly after dawn at the Sun Gate high above the ancient city, we were greeted with a majestic view of… clouds. Fortunately (and with a bit of patience) our luck held, and as the sun rose higher in the sky, the mist evaporated to reveal the ruins below us in all their glory. Never has there been such a sight for sore legs.

GOING REMOTE • ANNOUNCEMENTS

It’s hard to sum up Peru – like that Dulux paint catalogue, there really is something for everyone. I haven’t even been able to touch on all the things we did outside Lima and Cusco, like finding a true oasis in the middle of the desert, sledging down sand-dunes, visiting a winery that felt more like Italy than South America, or helping to build a house in just two days. But without a doubt it has been one of the high points – both literally and metaphorically – of the year so far. Next month: Cordoba, Argentina Heather Lane (Fellow) is a senior associate at Gill Jennings & Every LLP, working remotely while travelling round the world with Remote Year. To see where Heather is now, and for 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 TLIP Ltd became an ABS from July 2017. At the same time,

Autumn Conference

Birmingham: IP and social media 12 October 2017, 10am - 7pm, Birmingham CPD: IPReg - 5 hours Twitter: #AutumnCITMA

Cathy Mack (Associate) joined the Board of TLIP Ltd as a Director and Chief Operating Officer. Cathy joins Alex Turnbull (Fellow), Paul Lynch (Fellow) and John Nevard (non-executive Director) on the Board of TLIP Ltd. The IP Federation announced that James Horgan (Fellow) has been elected as the new President of the Federation,

CITMA’s Autumn Conference returns to Birmingham for an eighth consecutive year. An exciting range of speakers will provide a comprehensive education on the interaction of social media and intellectual property law. The morning session will include a walk-through of the practical steps involved in having infringing content removed from social media platforms, an introduction to the technology that can be used to monitor infringement, tips on how to use social media to find evidence of infringement, and a review of recent CJEU copyright case law in relation to hyperlinking. Presentations after lunch include a view from the marketing industry, a guide to the law on “memes” and other user generated content, and reviews of the impact of social media on IP valuation and advertising. For more details see: https://www.citma.org.uk/events/ autumn_conference/2017_autumn_conference_-_birmingham

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effective 14 July 2017. James will be assisted by Immediate Past President, James Hayles (Fellow). They will both work with newly elected Vice-President, Belinda Gascoyne (Fellow). Elkington and Fife LLP is pleased to announce the opening of its Munich office on 1 August 2017. The Munich office will enable the firm to continue to serve clients at the EUIPO after Brexit, and will also be very useful when preparing for oral proceedings at the EPO. For further information, please contact Chris McLeod by email to chris.mcleod@elkfife.com CIPA has moved from Chancery Lane to a new home just around the corner at Halton House, 20-23 Holborn EC1N 2JD. Telephone numbers remain the same. Letters for the Editor and announcements should be e-mailed to: editor@cipa.org.uk

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PERSONAL

OBITUARIES

Pyers Pennant 1939–2017

t is with great sadness that we report the death of Pyers Pennant who was a partner at Stevens Hewlett & Perkins for many years and was senior partner when he retired from the business in 2000. Pyers entered the patent profession in 1960 after graduating from Trinity College, Cambridge where he read Natural Sciences. His career began with the firm Boult Wade & Tennant where he trained and qualified. After a short spell with Marks & Clerk, he moved to Stevens Langner Parry & Rollinson, the predecessor of Stevens Hewlett & Perkins, in 1967 and remained there for the rest of his career.

the creation of interference colouring of anodized aluminium. He was immensely proud of the contribution he made and expressed this by saying: “The invention belongs to the inventor, and the patent belongs to the client. But the specification is mine, and I have always taken a parental interest in its conception and birth as a patent application and watched with affection its progress to adolescence and grant.”

Litigation, also, was not an area with which Pyers was unfamiliar. He had been involved in several cases where the courts had clarified the law. He He was, at all times, a fair was, for instance, the and just man. His fairness, instructing attorney in justness and communityAmersham v Corning, mindedness eventually led where the Court of Appeal refused to him to apply to become a delay UK infringement magistrate. proceedings until the EPO had determined a corresponding opposition. Although his work spanned Pyers was a member of UNION chemistry, chemical engineering, and AIPPI, and a regular attendee metallurgy and biotechnology, at IP conferences around the world he was particularly proud to have and was, also, a director of PAMIA obtained, for his client, patents and a Fellow of the Royal Society of in significant (and, at the time, Chemistry. radical) developments in genetics Pyers was responsible for and, also, in obtaining the grant of recruiting and training a number of some of the seminal patents in the prospective patent attorneys over the field of immunoassay techniques. years, including the co-authors of Working in the completely different this piece. As a teacher and a mentor, technology of aluminium processing he could not have done more to also provided Pyers with great educate his trainees into the arcane satisfaction and he obtained the discipline of patent law and to coach grant of many patents in this them in objectivity and clarity of field, especially ones relating to thought.

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He was, at all times, a fair and just man. His fairness, justness and community-mindedness eventually led him to apply to become a magistrate and he served on the bench for many years. Relaxation for Pyers seemed, to his colleagues, like hard work. One could never imagine him merely sitting around doing nothing and his life was full and active. He was a keen and very interested traveller, visiting many different countries, and had a genuine passion for mountain climbing. Photographs of such exploits adorned the walls of his office and he was always ready to talk about these to anyone expressing interest. In less active times, he was an avid (and very good) bridge player. After retirement, home moved from Penge to the Cuckmere Valley, East Sussex where Pyers became a popular and active member of the local community. It was here that Pyers died peacefully, aged 77, on 8 May 2017 following a battle with cancer. He is survived by his loving wife, Camilla, their three children Jeremy, Donald and Jessica, and 11 grandchildren. We will all miss him. Stephen J. Wilkinson and Robert J. Gaunt (Stevens Hewlett & Perkins)

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EDUCATION

UPC QUIZ

Test your UPC knowledge UPC Number Quiz by Estelle Senior (Fellow), HGF

Q1: Add together: a. b. c. d.

Number of countries that have officially deposited their ratification of the Agreement on the UPC as of 23 August 2017 Number of confirmed regional divisions Number of planned local divisions in Germany Total number of Judges on a panel at UPC Court of Appeal

Divide this answer by: e. Number of months to request unitary effect at the EPO following the date of publication of the mention of the grant in the European Patent Bulletin

Q2: What number (in euros) is the EPO’s agreed total cost to renew a UP (for years 2 – 20)? Divide this number by the Rules of Procedure Rule number that explains the procedure for the “Lodging of an Application to opt-out and withdrawal of an opt-out” See https://www.epo.org/law-practice/unitary/unitary-patent/cost.html and https://www.unified-patent-court.org/sites/default/files/UPC-Rules-of-Procedure.pdf

Q3: Add together: a. the Number of the 2016 UK Statutory Instrument that gives effect to European Union legislation in relation to the European patent with unitary effect and to an international agreement on the Unified Patent Court b. Plus the Article number in Regulation 1260/2012 that discusses the Transitional measures for UP translation arrangements c. Plus the number of months a defendant has to lodge a Statement of defence from the service of the Statement of claim for an Infringement Action at the UPC. Answers will be published in the next edition of this Journal. Please e-mail your entries to editor@cipa.org.uk by Monday 18 September 2017. A bottle of fizzy wine for the first correct entry drawn.

Go to the following sites to help you with question 1 a. see https://www.consilium.europa.eu/en/documents-publications/agreements-conventions/agreement/?aid=2013001 b. see http://europa.eu/rapid/press-release_STATEMENT-14-46_en.htm c. see https://www.unified-patent-court.org/locations d. see https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/309007/upc-judges.pdf e. see http://documents.epo.org/projects/babylon/eponet.nsf/0/658AE58124AC70DBC1257DB10028B3D4/$File/e_ draft_rules_unitary_patent.pdf or https://www.epo.org/law-practice/unitary/unitary-patent/applying.html Go to the following sites to help you with question 3 a. See http://www.legislation.gov.uk/uksi/2016/388/note/made b. See http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2012:361:0089:0092:EN:PDF c. See https://www.unified-patent-court.org/sites/default/files/UPC-Rules-of-Procedure.pdf

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INSTITUTE EVENTS

West of England Meeting Report of the West of England Meeting and CPD seminar, Bristol, 13 July 2017

Following a spread of delicious canapés courtesy of the College Green Marriott in Bristol, Julia Florence welcomed everyone to the afternoon’s talks.

The positive impact of workplace allies The first talk was on the positive impact of workplace allies by Lesley Evans (IP Inclusive). The IP field is currently less inclusive than general lawyers. Steps being taken to combat this include ‘IP Inclusive’ – a movement trying to improve diversity and exclusivity in the IP community. More specific groups include ‘Women in IP’ and ‘IP Out’ (LGBT). What are workplace allies and why do we need them? Lesley explained that they do simple things to encourage, help and champion under-represented people to even the playing field. But how uneven is the playing field? The UK has gender pay gap. Currently it is under 5% for 20 year olds, but the divide opens once people are in their 30s and 40s. This is due to a combination of men applying for jobs at an earlier stage, and men receiving better feedback on how to do their job. Lesley went on to give six tips for workplace allies: 1. Make sure ideas are heard. Women are interrupted more, heard less, receive less credit and tend to sit in peripheral places in meetings. So, workplace allies can invite and encourage women’s participation, ask to hear what they are saying if they are interrupted, and give credit where it is due. 2. Challenge the ‘likeability penalty’. Leaders need to be confident and assertive, but people generally do not seem to like these qualities when women show them. This impacts the language we use – for example, compare “strong” for a man with “bossy” for a woman. Workplace allies can think about the language they use to describe workplace behaviour, and make it consistent for both men and women. They can also challenge discriminatory behaviour in others. 3. Celebrate accomplishments. Women tend to get less credit for successful outcomes and more blame for failure, as well as less recognition for their part in team projects. Women are also more inclined to suffer from so-called ‘imposter syndrome’ – to put success down to luck or others. Workplace allies can find opportunities to 54 CIPA JOURNAL

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celebrate women’s contribution, and encourage women to talk about their achievements. 4. Encourage women to go for it. Men tend to apply for jobs when they meet 60% of the specified criteria, whereas women tend to wait until they meet 100%. In tests, removing gender from internal and external selection processes was found to improve women’s chances of success. In one study simply replacing a woman’s name with a man’s was found to increase hiring prospects by 61%. Workplace allies can encourage women to volunteer for projects / tasks. They can distribute tasks on a gender neutral basis and challenge the ‘imposter syndrome’ mentioned above. 5. Give direct feedback. 66% of women received negative feedback on their personal style (e.g. “you can be abrasive”) compared to less than 1% of men. Women get less specific feedback with fewer recommendations for improving their performance. 6. Mentor and sponsor women. Workplace allies can provide advice, support and feedback for women. This can be informal, e.g. being a sounding board, or it can be a more structured programme, e.g. scheduled meetings. Workplace allies should try to build belief, encourage women to try new things, and ask for their input. Finally, Lesley encouraged everyone to sign up to the IP Inclusive charter. Details can be found on the IP Inclusive website.

Litigation – update Next up was a talk on the AbbVie litigation and other recent cases on remedies by Christopher de Mauny (Bird & Bird). Christopher discussed four cases, mainly talking about the AbbVie case. Fujifilm v AbbVie Humira is a drug worth more than $12.5bn in basic sales, the patent for which is due to expire in 2018. Fujifilm commenced proceedings to revoke two EP patents directed to dosage regimes of Humira, and to attempt to deal with an EP application heading towards grant. Fujifilm’s product could be launched, however, damages can be backdated – in this case a huge liability could occur. The path was therefore not clear. www.cipa.org.uk

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CPD & EDUCATION

Fujifilm sought an Arrow declaration – a type of remedy. Arrow declarations are declarations that a product / activity was known or obvious on a certain date. They are generally used to preempt a Gillette defence if a patent is asserted against the declaration holder in future. They are useful because there is no mechanism to challenge validity of a patent application. One must wait for it to grant, by which time it may be too late! An advantage of Arrow declarations is that you can specify exactly what you are doing and argue that that is what is obvious. One does not need to attack the wording of a patent on the opposing side’s terms. However, these types of declarations, putting the validity of a patent in question, are not in the exhaustive list of section 74(1) Patents Act. So should they not be disallowed as per section 74(2)? This was the question before the Court of Appeal – does an Arrow declaration offend section 74, and should they be available? The court considered the remedies are available to Fujifilm. At present, none. But there would be once the patent was granted. The court came to the conclusion that Arrow declarations are allowable in principle, but the mere existence of a pending application is not enough. Further justification is required to prevent parties seeking declarations whenever they launch a product. The main criterion was held to be whether they would serve a useful purpose. In this case, the useful purposes could be considered to be promoting commercial certainty, encouraging settlement, and helping third parties too. The court decided to grant the declaration. Is this case a one-off ? The facts of the case were unusual. Arrow declarations will probably be issued rarely in future, but people are bound to try with commercially valuable products. They are not limited to life sciences particularly, but it may be that only these patents are sufficiently valuable to justify their use. Edwards Lifesciences v Boston Scientific A heart valve found to have infringed Boston Scientific’s patent. However, the valve was the only kind that would work for a small class of patients. Should an injunction be granted? The court decided that it should not if it would be “oppressive” or “grossly disproportionate”. They also considered the public interest in not granting an injunction. The injunction was granted but stayed pending appeal. GSK v Wyeth Holdings GSK’s meningitis vaccine Bexsero was found to infringe Wyeth’s patent. Wyeth did not seek an injunction because of the public need for a vaccine. After liability, Wyeth applied for account of profits for the future in lieu of an injunction. However, this leads to an interesting contradiction – GSK would obviously stop producing vaccine if all of the profit went to Wyeth. If allowed, the effect would be the same as if an injunction were simply granted. Unwired Planet v Huawei Huawei was found to infringe several of Unwired Planet’s standard essential patents. The court had set terms for FRAND licences. The question was whether an injunction be granted (stayed pending appeal), at least until Huawei actually took that licence, or was it enough for Huawei to give undertakings? If granted, various problems Volume 46, number 9

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could occur, e.g. repudiation of the licence. Additionally, the licence had an expiry date in January 2021, whereas the patents lasted longer. This lead to possible cliff edge. In response, Justice Birss created a new type of injunction, called a FRAND injunction, which expires when they take the licence (undertakings not enough). The parties can return to court when the licence expires.

ADR – mediation The next talk was entitled “Alternative Dispute Resolution: Focus on Mediation”, by His Honour Michael Fysh QC SC. Michael gave a discussion of the difference between arbitration and mediation. Arbitration – a court trial that does not take place in court. This gives secrecy and manoeuvrability compared to court proceedings. Matters proceed in a characteristic way according to the Arbitration Act 1996. Mediation – a form of negotiation between parties facilitated by a mediator who is neutral and who decides nothing. No single winner usually emerges from the process, and there is no decision. The outcome is usually a win-win for the litigants. There are no forensic accountants, no costly enquiry as to damages. There is also no crossexamination, which some litigants can wish to avoid. Proceedings end with a written agreement that can be enforced according to contract law. There is an EU directive to encourage mediation and promote “amicable settlements”. A disadvantage of mediation is that it cannot establish precedent, or produce a judgment to use elsewhere as with full court proceedings. There is additionally no publicity, which is sometimes desirable.

UKIPO – practice changes The final talk was given by Russell Maurice (Senior Patent Examiner at the UKIPO) who gave an update of practice changes at the UKIPO First, a review of recent changes to Patents Rules. The UKIPO now issues a notification of intention to grant, which gives time to file any divisional applications. There is a simplified time period for requesting reinstatement. Finally, omnibus claims are now generally not allowed. There is a new online filing service for trade marks. The digital services for opinions and SPCs are now combined. There is a target to issue 90% of CSEs within six months, which has been achieved. Over 95% of accelerated actions are being completed within two months. To compensate for this, the target for nonaccelerated actions has been changed to half of the remaining time to the end of the compliance period. In the second half of the talk, Russell tackled the signposts of AT&T for assessing technical effect. Attorneys should refer to these in preparing their arguments, as Examiners do use these in practice. Following the final talk there was a prize draw for a bottle of Penderyn whisky provided by Patent Seekers, which was won by your humble author! Julia thanked all the speakers and drew proceedings to a close, whereupon there was an opportunity for the attendees to discuss the talks and socialise over drinks. Sean Gilday (Fellow) SEPTEMBER 2017

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INSTITUTE EVENTS

Institute Events For a complete list of CIPA events please see the website – www.cipa.org.uk/whats-on/events Thursday, 7 September 2017 Seminar

Manchester Meeting 2017

Location: Hilton Hotel, 303 Deansgate, Manchester, M3 4LQ CPD: 3.5; Prices: £234 (members £156)

Thursday, 7 September 2017 Seminar

Patent infringement and the new UK doctrine of equivalents

Time: 17.30–18.30 Location: Brodies LLP, 110 Queen Street, Glasgow, G1 3BX The ruling of the UK Supreme Court in July 2017 in Actavis v Lilly has changed the way that patents will be interpreted in the future in the United Kingdom. Graham Burnett-Hall of Marks & Clerk will explain the ruling and consider how the new doctrine of equivalents may be applied in practice in various technology sectors. CPD: 1; Prices: Members £54

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)

Tuesday, 19 September 2017 Seminar

Imposter Syndrome CIPA / IP Inclusive Time: 08.30–10.30 Location: Various UK locations

Imposter Syndrome: many of us suffer from it, even if we didn’t know it had a name. Especially people in under-represented groups, such as women and ethnic minorities and LGBT professionals. In this webinar, executive coach Jo Maughan will tell us how to identify and overcome Imposter Syndrome – in ourselves, and in those we manage. For more details please see www.cipa.org.uk/whats-on/events/ imposter-syndrome-cipa-ip-inclusive/

Thursday, 28 September 2017 Conference

Congress 2017 Navigating to the future

Location: Glaziers Hall, London, SE1 CPD: 8; Prices: starting at £200+VAT.

Thursday, 28 September 2017 Conference

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

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

Thursday, 28 September 2017 Social

IP Diversity networking drinks

Location: Glaziers Hall, 9 Montague Close, London, SE1 9DD Please join CIPA and IP Inclusive

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for drinks, following the main CIPA Congress, to celebrate IP Inclusive's achievements so far and in particular the launch of the BAME-focused support group "IP & ME". All IP professionals are welcome, whether or not you attended Congress or the parallel Administrators' Conference. Price: Free

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)

Thursday, 5 October 2017 Social

Southampton Happy Hour

Location: The Dancing Man Brewery, Town Quay, Town Quay, Southampton, SO14 2AR To all the members in the South of England, please come and join us at The Dancing Man Brewery for some drinks after work and a chance to network with other CIPA members in the area. Please note this is a members only event. Members will need to book ahead

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CPD & EDUCATION

and drinks tokens will be distributed on arrival to registered delegates. Price: Free

Tuesday, 17 October 2017 Webinar

with a buffet lunch served from 12:30 pm. The full programme will be on the CIPA website shortly. So keep your eyes peeled! CPD: 3.5; Prices: £234 (members £156)

Computer-Related Inventions in India Time: 12.30–13.30

Join S.K. Srihari, partner at K & S Partners, for a one-hour cpd webinar focusing on: the law proscribing patentability of software applications; Brief history on the law and its evolution; Indian Patent office views on software applications; and examination guidelines for computerrelated inventions. CPD: 1; Prices: £72 (members £48)

Thursday, 19 October 2017 Seminar

West-Midlands Meeting

Time: 12.30 - 19.00 Location: Hotel La Tour Birmingham, Albert Street, Birmingham, B5 5JT We will be heading to Birmingham for this regional meeting and seminar. This year we will be at the Hotel La Tour,

16-17 November 2017 Conference

The famous CIPA Patent Case Law Tour is returning for 2017, all dates, locations and prices are listed above. For more details visit: www.cipa.org.uk/whats-on/events CPD: 3.5; Prices: £234 (members £156)

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Monday, 27 November 2017 Seminar

Patent Case Law – London

Time: 12.30–17.30 Location: The Honourable Society Of The Inner Temple London, Ashely Building, Middle Temple Lane, London, EC4Y 7HL CPD: 3.5; Prices: £234.00 (members £156.00)

2017 Life Sciences Conference

Location: Whittlebury Hall, NN12 8QH More details on page 47.

Thursday, 9 November 2017 Seminar

Patent Case Law – Bristol

Time: 12.30–17.30 Location: Bristol Marriot Royal Hotel, College Green, Bristol, BS1 5TA

Wednesday, 6 December 2017 Seminar

Patent Case Law – Manchester

Time: 12.30–17.30 Location: DoubleTree By Hilton, 1 Piccadilly Place, 1 Auburn Street, Manchester, M1 3DG

CPD: 3.5; Prices: £234.00 (members £156.00)

The famous CIPA Patent Case Law Tour is returning for 2017, all dates have been confirmed! The tour will focus on interesting patent decisions to have come from the UK and US courts and the EPO Boards of Appeal in 2017.

Time: 12.30–19.00 Location: DoubleTree By Hilton, 34 Bread Street, Edinburgh, EH3 9AF

CPD: 3.5; Prices: £234 (members £156)

Patent Case Law Seminars Bristol • Edinburgh • London • Manchester

INSTITUTE EVENTS

Tuesday, 12 December 2017 Seminar

Patent Case Law – Edinburgh

The tour will focus on interesting patent decisions to have come from the UK and US courts and the EPO Boards of Appeal in 2017. Back by popular demand the speakers on the road show are: Jon Markham, Beck Greener James Porter, IPO Dominic Adair, Bristows LLP Anthony Tridico, Finnegans Europe LLP Gemma Barrett, Bristows LLP

SEPTEMBER 2017

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THE PINKS

COURSES • SUPPORT • RECRUITMENT

JDD CONSULTANTS

EQE 2018 REVISION COURSES 2-3 NOVEMBER & 27 NOVEMBER - 5 DECEMBER 2017 We have a full set of residential revision courses for the spring 2018 European Qualifying Examinations (EQE). Our Pre-Exam course is on 4-5 December 2017. Our main suite of courses for Papers A&B, C and D are on 27 November – 1 December 2017 and we have add on Introduction courses for Papers C and D on 2 and 3 November 2017. You can book a course for one paper, several papers or all – as desired. The courses are in Milton Keynes and are supported by our online Moodle resources forum. The course fee includes accommodation and meals, but there are discounts if accommodation is not needed and for bookings of a suite of courses and/or the booking of 5 or more courses by a firm. For further information, a leaflet and online booking, please visit www.jddcourses.co.uk or phone us at 01234 294049 / 07791959630. We are a CIPA Approved Training Provider. E-mail: jdd.consultants@ntlworld.com / admin@jddcourses.co.uk Fax: +44(0)800 0664016

Assimilate IP is providing the following courses: 

Freedom to Operate for the Life Sciences and Pharmaceutical Industries 18 September, LSE, London and 27 November, St John’s Innovation Centre, Cambridge



Introduction to Intellectual Property 23 October in Harwell Innovation Centre, Didcot



Freedom to Operate 23 October in Harwell Innovation Centre, Didcot

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

Patent Consultant Sought Immediate availability of original patent drafting

IT support for business and home

ON-CALL IT support for the IP industry Specialists in set-up & support for Progressor, Equinox and EPO online filing Cost-effective, comprehensive support of hardware & software for Windows & Mac systems, peripherals, networks, smart phones and tablets Cambridge, Essex, Herts & London

Subject-matter: Telecoms, circuits, computer software Interested? please send details of your experience to patentdrafts@gmail.com

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THE PINKS

COURSES

Training for the EQE 13-14 November 2017 Venue: Kingsway Hall Hotel, 66 Great Queen St, Bloomsbury, London WC2B 5BX 8-10 January 2018 Venue: The Honourable Society of Gray’s Inn, 8 South Square, London, WC1R 5ET Are you training to be a European Patent Attorney? Are you preparing to take the EQE in Spring 2018? Support your studies by attending our preparatory course, learn from experienced practitioners and previous candidates, and network with fellow professionals. This course is for candidates preparing for the main papers (A, B, C and D) of the European Qualifying Examination (EQE) RI WKH (XURSHDQ 3DWHQW 2IÀFH ,W LV VWUXFWXUHG LQ WZR SDUWV DQG UHÁHFWV WKH practical nature of the examinations. Bookings for Parts 1 and 2 are now accepted.

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

www.ccls.qmul.ac.uk/events Volume 46, number 9

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THE PINKS

INTERNATIONAL

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THE PINKS

COURSES • INTERNATIONAL • RECRUITMENT

CERTIFICATE IN INTELLECTUAL PROPERTY LITIGATION AT NOTTINGHAM LAW SCHOOL START DATE: NOVEMBER 2017 This course will: • Allow you to expand your business and your expertise, providing you with the ability to enforce your clients’ Intellectual Property rights. • Enable you to qualify to conduct High Court litigation. This year the course will also be used to familiarise students with how, at each stage of the litigation process, a case would progress through the Uniﬁed Patent Court.

Visit www.ntu.ac.uk/ip for more information about this course and to apply

European Patent Attorney Qualified or Part-Qualified

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

Cruickshank is one of Ireland’s oldest and best-known firms of Patent & Trade Mark Attorneys having first been established in 1929. Based in Dublin, Ireland, in modern offices we have a reputation as being highly commercial, focused and friendly to deal with. Currently we are looking to fill a position within our Patents team for a qualified European patent attorney with an electronics/ electrical background. We will also consider applicants from other backgrounds with experience prosecuting patents in these fields or applicants that are well along the way to their EQE’s. Working on a variety of domestic and foreign cases applicants will be responsible for client management and work closely with the partners in the area of practice development. Remuneration will be in line with expectations and experience, and the successful applicant will also enjoy a significant amount of autonomy in a very friendly, relaxed and modern atmosphere. For more information or a conversation in confidence please contact Richard O’Connor at +353 1 2992222 or email your details to roconnor@cruickshank.ie

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 Volume 46, number 9

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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

Looking for a Diverse Global InͲhouse role?

Patent Attorney

Based near Kenilworth, Warwickshire.

AGCO is a leading global manufacturer of agricultural equipment with over $7bn sales. With a growing and young IP portfolio that includes over 2,500 patent rights and 1,800 trade marks, a vacancy has arisen inside AGCO’s UKͲbased IP team for an ‘allͲrounder’ patent attorney role. Based at the Stoneleigh site, the role will involve a broad range of IP activities including patent creation, valuations, I&V assessments, IP mining, oppositions and handling assertions both in and out. Supporting multiple engineering sites over the globe the role will involve regular overseas travel. The full range of products offered by AGCO presents a wide range of technologies to the IP department from pure mechanical ‘moving bits’ in balers, tractors, sprayers and poultry housing through to electronicͲbased control systems that integrate a network of ag machines. The successful candidate will be a fullyͲ or partͲqualified EP and/or UK patent attorney with a background in mechanics and/or electronics. To be considered for this role please eͲmail your CV to: RecruitmentUK&Ireland@agcocorp.com Talent Acquisition Specialist, AGCO Limited, Abbey Park Stoneleigh, Kenilworth, CV8 2TQ. Tel: 02476 852008.

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Closing date for applications 15th October 2017. No agencies please. www.agcocorp.com

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THE PINKS

RECRUITMENT

PART-QUALIFIED PATENT ATTORNEYS (ELECTRONICS AND CHEMISTRY) LONDON Our London office is seeking two part-qualified patent attorneys (electronics and chemistry) to join the growing team. Finnegan offers full-service IP legal and technical experience in virtually every industry and technology, with more than 300 professionals focused solely on intellectual property. Each role will involve the full range of patent work from drafting and prosecution through to oppositions, appeals and litigation support, as well as providing strategic counselling to our international client base, with a very high proportion of direct client work. You will be joining a team committed to building and expanding the European practice of one of the world’s leading IP law firms. You can find out more at: http://www.finnegan.com/opportunities/ The ideal candidates will have: • • •

at least two years’ experience passed the PEB Foundation Certificate, or hold an equivalent qualification a degree in electronic engineering/physics/computer science or chemistry. Candidates with a chemical engineering or materials science background will also be considered

Finnegan offers competitive pay and a comprehensive benefits package, including: • • • • • • •

Private medical insurance, and ability to add dependents Private dental insurance, and ability to add dependents Life assurance Income protection Contributory pension scheme Vision care Season ticket loan

If you are interested in learning more about opportunities at Finnegan, please contact: Sharon.Hamilton@finnegan.com.

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

Hanna IP, 58 Howard Street, Belfast, BT1 6PJ Block B, The Crescent Building, Northwood, Santry, Dublin 9 www.hannaip.com

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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 66 CIPA JOURNAL

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Dawn Ellmore Employment Patent, Trade Mark & Legal Specialists

Patent Attorney Vacancies: Intellectual Property Analyst ŏ South East

Work in the IP department of a leading technology company. Previous IP experience is a must as is a degree in either engineering or law.

Salaried Partner (Patent Attorney) ŏ Electronics ŏ Glasgow

Seeking high-calibre candidates with extensive experience in the SURIHVVLRQ D PLQLPXP RI \HDUV· SRVW TXDOLÀFDWLRQ H[SHULHQFH DQG D track record of success.

FQ Engineering Patent Attorney ŏ Hertfordshire

This opportunity is an excellent chance to join a very friendly and VXFFHVVIXO ÀUP DQG ZRUN ZLWK D ZLGH YDULHW\ RI FOLHQWV

PQ Patent Attorney, Chemistry or Biotechnology ŏ London ,QWHUQDWLRQDO ODZ ÀUP LV VHDUFKLQJ IRU D 34 DWWRUQH\ WR FRYHU D FRQWUDFW RI WR PRQWKV GXUDWLRQ :RUN ZLOO EH ZLWK D 3DUWQHU LQ WKH ÀUP·V prominent Life Sciences team.

PQ/NQ Engineering Patent Attorney ŏ Yorkshire

Our distinguished client is seeking a self-motivated candidate with a background in mechanical engineering, electronics or physics.

Telecoms Patent Attorney ŏ London

An excellent opportunity for rapid progression, working with a variety of LQQRYDWLYH FOLHQWV ZLWKLQ D IRUZDUG WKLQNLQJ ÀUP

PQ/NQ Engineering Attorney ŏ London

Flourishing engineering department where the workload is continuing to expand, you will assist with our client’s growing portfolios.

Engineering or Chemistry Patent Attorney ŏ Glasgow :H DUH DVVLVWLQJ DQ LQQRYDWLYH ,3 ÀUP ZLWK WKHLU VHDUFK IRU DQ DWWRUQH\ WR complement their expanding team and develop their practice.

Engineering Patent Attorney ŏ South West 7KLV ZHOO HVWDEOLVKHG ÀUP LV VHHNLQJ DQ DWWRUQH\ ZLWK D EURDG HQJLQHHULQJ background, capable of handling both mechanical and electrical work.

PQ/FQ Chemistry Patent Attorney ŏ London 7KLV XQLTXH ÀUP RIIHUV JHQXLQH URXWHV IRU SURJUHVVLRQ DQG FDUHHU development, as well as challenging work and a friendly atmosphere.

REC-pp68-69-Dawn-Elmore_DPS_2.indd 68

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Call us on: 020 7405 5039 Or Contact:

Visit: www.dawnellmore.co.uk

luke.rehbein@dawnellmore.co.uk for attorney vacancies daniel.airey@dawnellmore.co.uk for support vacancies james.smithson@dawnellmore.co.uk for business support

Patent Support Vacancies: Senior Patent Secretary to Partner ŏ London

An excellent opportunity for someone with a minimum of 4 years’ experience looking for the next step in their career.

Patent Secretary ŏ Cambridge

This role will be rich in variety, and the successful applicant can expect a wide range of responsibilities covering secretarial, PA and admin duties.

Patent Paralegal Secretary ŏ Yorkshire ([FLWLQJ QHZ UROH LQ D VXFFHVVIXO DQG IULHQGO\ ÀUP ZLWK SOHQW\ RI UHVSRQVLELOLW\ DQG DQ DWWUDFWLYH VDODU\ DQG EHQHÀWV SDFNDJH

Renewals Assistant ŏ London

Fantastic opportunity for someone with a minimum of 2 years working in renewals, with the ability to work under pressure and to tight deadlines.

Patent PA/Secretary to Partner ŏ London

This role would be perfect for an existing Patent Secretary who wants the responsibility of supporting a busy Partner. You can expect a mixture of PA and secretarial duties.

Senior Patent Formalities Administrator ŏ London )LUVW FODVV FKDQFH WR WDNH WKDW SURJUHVVLYH QH[W VWHS LQ \RXU ,3 FDUHHU 7KLV UHQRZQHG ÀUP DUH VHHNLQJ VHQLRU VXSSRUW ZLWKLQ D JURZLQJ GHSDUWPHQW

Patent Secretary ŏ South West $ OHDGLQJ ,3 ÀUP LV VHHNLQJ D GHSHQGDEOH DQG FDSDEOH LQGLYLGXDO WR MRLQ their busy team as a senior patent secretary with paralegal duties.

Billing Assistant ŏ London 1HZ YDFDQF\ ZLWKLQ DQ ,QWHUQDWLRQDO ODZ ÀUP WR DVVLVW EXV\ IHH HDUQHUV with all their billing requirements.

Junior Patent Secretary ŏ London

Suitable for a motivated individual with at least 6 months’ patent H[SHULHQFH WKLV LV D SHUIHFW ´VHFRQG MREEHUµ SRVLWLRQ

Patent and Trade Mark Records Clerks ŏ UK Wide

We currently have an abundance of patent and trade mark records roles in all UK locations, and at all levels of experience.

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Dawn Ellmore Employment

30/08/2017 22:27:44

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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Back to work blues?

Explore exciting opportunities www.weareaspire.com/IP

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

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

You are an EPA qualiﬁed patent attorney with a proven background in mechanical, materials or physics 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.

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.

Mechanical Engineering - Finalist/Qualiﬁed £ very competitive + package. Leeds, 1009266

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

NEW! Fantastic new role for an attorney with mechanical engineering experience to join a hugely successful team. An immediate portfolio of richly challenging and profitable clients awaits a progressive individual with proven experience of high-touch client management. You will be joining a firm that excels in being able to provide high value contentious work (oppositions/appeals), as well as varied drafting/prosecution too. You should have prior experience of client development and thrive on capitalising future growth through fostering long-term relationships. Career opportunities are excellent to progress internally, whether you’re near-qualified or more experienced. Computer Science/Software CPA or EPA £Excellent + bonus + package. London, 1006955

A fantastic opportunity for a commercially astute software/electronics specialist has arisen within a truly dynamic and progressive international firm. You must be CPA or EPA qualified (up to 5 years PQE) having gained significant experience of original drafting and contentious areas of IP. Due to a substantial increase in referral work with many pivotal innovation-lead blue-chip brands, there is an immediate requirement for a bright, conscientious and ambitious team-player to add value to the firm’s growth plans. This role will challenge and excite in equal measure; a truly unique position with enviable clients and a brilliant career structure tailored to your professional ambitions. Electronics/Physics Attorney - CPA or EPA £attractive + bonus. London or Bristol, 1012867

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.

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!

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

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

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

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?

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

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THE PINKS

RECRUITMENT

EUROPEAN PATENT AND TRADE MARK ATTORNEYS

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CIPA JOURNAL

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Offering a fresh perspective Patent Secretary : London TJB53113 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 Records : London TJB53352 Prestigious IP Practice requires a Records Clerk to join their London office. As one of the fastest growing IP firms, this firm has experienced huge success and expansion over recent years, and continues to do so. The work is of high quality and plentiful, making this a hands on role with huge potential. With a clear departmental structure, there is scope to develop your skills and increase your responsibilities in the future. Electronics Attorney : Dublin CEF53319 A leading European IP firm seeks a proactive and dynamic Electronics Attorney to join their Dublin office. With clients ranging from start-ups to international players and a wealth of interesting work available from the off, this role offers the cosmopolitan city centre on your doorstep as well as a highly competitive package. Those of you who are qualified under a different jurisdiction are welcome to apply should you be European part-qualified. Engineering Attorney : Bath CEF51354 IP innovators seek an Engineering dynamo to drive their South West outfit. Offering an international outreach, top tier recognition and unrivalled growth, this award winning firm requires a commercially astute Attorney to join their Bath office to work alongside IP experts and big name clients! If you're an Attorney from Finalist to 2 years PQE level, we want to hear from you. The field of Engineering will be your forte, holding an unequalled work ethic and a craving for quality work. Electronics Attorney : Cambridge CEF50866 Industry leading innovators seek a High Tech expert! Our client is looking for a Part-Qualified Electronics or Physics Attorney to join their talented Technology department. The work will be challenging and varied, including a mix of high tech electronics, physics, and increasingly, nanotechnology. Based in the Cambridge office, you'll learn from the best in the business.

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

&OHJOFFSJOH 1IZTJDT "UUPSOFZ 4VSSFZ -," Well established, solid Practice requires an Engineering Patent Attorney to join its team in Surrey. Promoting the highest standards of client care, the firm acts as a much valued advisor to those they are representing. If you are fed up of the daily race to the City, why not think about enjoying a different pace, without having to compromise on the standard of work available? #JPUFDI "UUPSOFZ 0YGPSE -," Biotech Attorneys - this is the one you have been waiting for! Known for the premium clients that they are proud to represent, this Practice are looking for an Attorney through to Salaried Partner level candidate, with impressive credentials. A supportive working environment can be taken as a given and the firm are excellent at rewarding their Attorneys - both financially and in terms of personal progression and career development. .FDI &OH "UUPSOFZ 1BSU /FXMZ 2VBMJGJFE :PSLTIJSF -," 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. Chemistry Attorney : London VAC53445 Looking for high quality work with big name clients? An excellent opportunity has arisen for a Chemistry Attorney to join a well-established and forward thinking international IP firm at their head office based in the heart of central London. You will be working closely with the team and be exposed to a wide range of chemical and pharmaceutical work. For the right person, this role comes with an attractive salary and a clear cut, tailor made progression path. In-House Patent Attorney : Midlands VAC53615 Looking for your next venture? This is an in-house role with an enormity of variety, client contact and industry exposure. Required is an attorney from an Engineering background, some Electronics experience is desirable but not essential. You must be of at least finals standard, either EPA or CPA. Generalist Attorneys with demonstrable Mechanical Engineering experience will also be considered.

Scan the QR Code for our website

www.saccomann.com

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

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THE PINKS

RECRUITMENT

Alistair Hindle Associates European Patent & Trade Mark Attorneys

Are you looking for a new challenge? Alistair Hindle Associates is a young and dynamic firm of European Patent and Trade Mark Attorneys based in Edinburgh. We have a reputation for excellence in both the quality of the work that we do and the client service that we provide. We’re looking for an outstanding patent attorney, with a background in physics, engineering or electronics to join our fast growing team. If you are a qualified patent attorney, or a finals standard trainee, with substantial experience of drafting and prosecuting applications for high technology inventions, excellent client skills and keen attention to detail, you could be exactly who we are looking for.

This is an excellent opportunity to be instrumental in growing an entrepreneurial ﬁrm, working on intellectually demanding cases in a friendly working environment. You’ll get involvement in decision making from day one and really have the chance to make the role your own. Interested? Please apply with your CV and covering letter, addressed to Alistair Hindle, to: careers@ahpatent.com Alternatively please call 0131 243 0660 and ask to speak to Alistair if you would like more information on the role.

Alistair Hindle Associates are signatories of the IP Inclusive Charter.

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

Amendment of Specifications Paper Amendment of Specifications Paper CIPA FD3 Study Guide Tim Allsop

FD3 Study Guide, by Tim Allsop (2017) £50 / £40 CIPA members. 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/

2017

CIPA JOURNAL

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TEMPTING? PATENT MANAGEMENT CONSULTANT - LONDON 6TCKPGG QT 2CTV 3WCNKƂGF

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4GH 6JKU JKIJN[ TGICTFGF ƂTO KU TGICTFGF CU VJG DNWG RTKPV HQT VJG OQFGTP RCVGPV RTCEVKEG they enjoy a formidable reputation and their RNWU UVCHH CTG CODKVKQWU EQNNCDQTCVKXG professionals who enjoy a progressive environment and relish in the support they enjoy from training and development. This particular role will join the mechanical and engineering team led by two very charismatic partners who can offer you an intoxication mix of work form automotive to aeronautical engineering and satellite VGEJPQNQI[ s URCEGUJKRU KU RWUJKPI KV C DKV and an array of consumer products. The role YKNN KFGCNN[ UWKV C RCTV SWCNKƂGF CVVQTPG[ YJQ JCU CV NGCUV [GCTUo GZRGTKGPEG WPFGT VJGKT belt and offers a level of autonomy – equally [QW EQWNF DG PGYN[ SWCNKƂGF GKVJGT YC[ VJKU is a wonderful opportunity for an ambitious patent attorney eager to be inspired.

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BIOTECH – SENIOR ASSOCIATE – LONDON 4GH

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An opportunity has arisen for a senior associate NGXGN DKQVGEJ URGEKCNKUV VQ LQKP C DWU[ ƂTO YKVJ an international reputation. The role has arisen FWG VQ KPƃWZ QH PGY KPUVTWEVKQPU KP VJG VGCO QH VJG NGCF DKQVGEJ RCTVPGT KP VJG .QPFQP QHƂEG 6JG ƂTO KU MPQYP HQT KVU KPENWUKXG YQTMKPI environment and excellent client care. There are excellent career progression prospects for an ambitious and technically savvy attorney. An excellent remuneration package will be offered to the successful appointee. Partnership prospects are genuine with regular promotions taking place.

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# INQDCN HQTEG KP VJG +2 URCEG VJKU 75 ƂTO KU seeking to continue the steady development QH KVU .QPFQP QHƂEG &GURKVG DGKPI C TGNCVKXG PGYEQOGT VQ VJG .QPFQP UEGPG VJG ƂTO JCU OCFG UKIPKƂECPV RTQITGUU KP FGXGNQRKPI KVU 7- CTO #P QRRQTVWPKV[ JCU PQY CTKUGP HQT C RCTV SWCNKƂGF GNGEVTQPKEU URGEKCNKUV YKVJ CV NGCUV VYQ [GCTUo GZRGTKGPEG KP VJG RTQHGUUKQP to join its growing team. If you are seeking something a little bit different and are enthused at the prospect of working for one QH VJG YQTNFoU DKIIGUV +2 RTCEVKEGU VJGP VJKU opportunity is well worth exploring.

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

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THE PINKS

RECRUITMENT

BRIGHT FUTURES FOR ENQUIRING MINDS Global leader, top package, near Cambridge, England

SENIOR PATENT ATTORNEY (IP PROJECTS) PATENT ATTORNEYS (PORTFOLIO MANAGEMENT) Cambridge Display Technology (CDT) is one of the UK’s leading technology companies with a reputation for innovation and technical excellence. 7KH &RPSDQ\ ZDV DFTXLUHG E\ 6XPLWRPR &KHPLFDO LQ DQG QRZ &'7 LV WKH (XURSHDQ 5HVHDUFK &HQWUH IRU WKH *URXS FKDUJHG ZLWK LGHQWLI\LQJ DQG LQFXEDWLQJ QHZ WHFKQRORJLHV 7R NHHS SDFH ZLWK WKH &RPSDQ\V FRQWLQXDO LQQRYDWLRQ SURJUDPPH LQ WKH ´HOGV RI )OH[2/(' 2UJDQLF 3KRWRGLRGHV %LR 6HQVRUV DQG (QHUJ\ +DUYHVWLQJ DQG PDQ\ RWKHU XQLTXH WHFKQRORJLHV &'7V ,3 WHDP QHHGV WKUHH PRUH HQHUJHWLF LQWHOOLJHQW DQG WKRXJKWIXO 3DWHQW $WWRUQH\V WR VXSSRUW WKH *URXSV HYHU JURZLQJ DQG FKDOOHQJLQJ ,3 DFWLYLWLHV

SENIOR PATENT ATTORNEY (IP PROJECTS) 7KH FDQGLGDWH ZLOO VXSSRUW PXOWLSOH SURMHFWV IRFXVVLQJ RQ )72 OLFHQVLQJ DVVHW WUDQVIHU DQG DJUHHPHQW UHODWHG ZRUN 7KH UROH ZLOO LQYROYH ZRUNLQJ FORVHO\ ZLWK &'7V -DSDQHVH SDUHQW WR GHOLYHU D ¬EHVW LQ FODVV FRVW HIIHFWLYH DQG HI´FLHQW ,3 VHUYLFH 5HJLVWUDWLRQ DV D &3$ (3$ RU 86 SDWHQW DWWRUQH\ LV PDQGDWRU\ DV LV D GHJUHH LQ HLWKHU &KHPLVWU\ %LRFKHPLVWU\ 3K\VLFDO &KHPLVWU\ DOWKRXJK RWKHU VFLHQWL´F GLVFLSOLQHV ZLOO EH FRQVLGHUHG LI DFFRPSDQLHG E\ VXI´FLHQW H[SHULHQFH RI 671 VHDUFKLQJ ([FHOOHQW FRPPXQLFDWLRQV VNLOOV DQG DQ HQTXLULQJ LQWHOOHFW DUH SUHUHTXLVLWHV IRU WKLV SRVLWLRQ UHSRUWLQJ WR WKH ,3 'LUHFWRU

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GET THE FACTS ¨ 3OHDVH FRQWDFW *UDKDP 0DUORZ graham@marlowiprecruit.com

or telephone +44 (0)1423 522838. $OO WKLUG SDUW\ DSSOLFDWLRQV ZLOO EH IRUZDUGHG WR 0DUORZ ,3 5HFUXLWPHQW IRU DVVHVVPHQW

76 CIPA JOURNAL

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Nearing Qualification, Electronics, Midlands Sometimes it can be difficult to make the leap and move positions, especially if you’re on the cusp of qualifying. Is the career progression really as transparent as they say? Can you really work with all of the clients and benefit from the range of work that they promise? We know from experience that this firm are true to their word and really support their attorneys throughout their careers. So, go on - now is a good as time as any to finally make that leap.

Part Qualified Patent Attorney, Biotechnology/Chemistry, London Join a firm who can offer you a vastly different and inclusive learning environment, where you will work under a variety of Partners with a range of technical and career backgrounds, and be encouraged to become involved with your own clients and work projects from very early on. Ideal candidates will have experience working across both the chemistry and biotechnology fields, although those who have focused on one area more predominantly than the other will also be considered.

One Year’s Experience, Physics, London Opportunities this early on in your career can be few and far between, but that’s no reason not to pay attention when one does come along. This firm understands that there are a number of factors that can cause itchy feet early on, and that none of them reflect on your ability to become a competent patent attorney. This position offers overseas travel, direct clients from across the UK, Europe and the US, as well as excellent training and a dedicated support structure tailored for each trainee.

Finalist Patent Attorney, Physics, North They say it’s grim up North but we certainly beg to differ, especially with this gem of an opportunity with a leading and widely recognised electronics and engineering specialist. There’ll be a huge amount of highly contentious work available, due to the firm working with cutting edge clients developing the latest break throughs in technology, as well as excellent ongoing training and support from cross office teams made up of Partners, fellow fee earners and highly skilled administrative staff.

Part Qualified Patent Attorney, Electronics, London This firm has a demonstrable track record in successfully welcoming attorneys early on in their career, and is well known for its hands on and tailored approach to its training. They encourage a friendly working environment, with an excellent work life balance and innovative clients originating from the UK, Europe and Asia – in particular Japan. The team is modest in size, however as a consequence they are able to offer additional responsibilities to the norm at such an early stage, such as being involved in firm wide management decisions and networking opportunities.

Senior Associate, Electronics, Midlands Variety is the spice of life (apparently), and so is the nature of the opportunity at this firm! You will be allowed free rein on building your own portfolio to include technologies that suit your own strengths and interests, even if it’s in an area the firm have yet to cover, and become involved in cases as part of a cross office specialist team with the assistance of highly skilled and experienced support staff. You’ll also have the chance to supervise and train junior members of staff and represent the firm at leading seminars, conferences and networking events.

Nearly/Newly Qualified, Electronics, Yorkshire Are you struggling to get enough one on one time with your supervising Partner? Feel overlooked for promotion due to the sheer number of fellow fee earners knocking on the same door? Looking for a range of interesting technology to work with, rather than endless drafting for one faceless client? This firm could help with all of that. Their northern team is small but perfectly formed and boasts a range of experience for you to draw from, including physics, computer systems, optics, telecoms and biomedical devices.

Finalst/Newly Qualified Patent Attorney, Biotechnology, London Work alongside a highly renowned Partner who is building a new team in London. Be part of an ambitious growth project that should lead to very interesting and diverse work and the chance to make your mark. You will be trusted with significant amounts of autonomy and an environment that will allow you to explore more contentious areas of IP, as well as preparation and prosecution. The firm itself are highly progressive, commercially orientated and meritocratic.

Associate, Electronics or Engineering, Midlands Senior Associate can sometimes be a waiting room where Partnership hopefuls spend years wondering if the next step is truly achievable. There’s no risk of that here, with Associates openly progressing straight to senior management positions complete with real responsibility for shaping the future of the firm, its clients and the portfolio of work on offer. Don’t worry about stepping on anyone’s toes, there’s an internal hierarchy gap due to recent promotions throughout the firm meaning you won’t be taking anybody else’s spot on the list.

Associate, Electronics/Engineering, London A recent revamp has resulted in this firm being able to offer something drastically different compared to your standard IP practice. They were already a breath of fresh air - however they now benefit from strengthened resources, both across support staff and fee earners in IP and the wider legal sector, and boast a phenomenal international direct client base in the UK, Europe and further afield. You will still have plenty of drafting and prosecution to keep you busy, as well as litigation and developing in depth commercial IP strategy.

Finalist/Newly Qualified, Chemistry, London If you’re looking for a role with the opportunity to travel, work with a diverse and intriguing European client base, and have the option to be seconded overseas – then this is the one for you! Our client is highly regarded in the industry for nurturing and retaining some of the best minds in IP, as well as offering an excellent work life balance, flexible working and a transparent and unpressured career path to Partnership.

Finalist Patent Attorney, Biotechnology, Midlands Want a highly commercial firm with top notch clients, fantastic salary and a challenging work portfolio, all with the lower cost of living and beautiful scenery of the surrounding countryside? Get in touch! Our client is looking to add to their growing Life Sciences team after a period of ongoing success and can offer the right candidate a mixed bag of hands on work and the opportunity to seek out your own clients, both local to the area and further afield.

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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30/08/2017 22:23:06

THE PINKS

RECRUITMENT

New Appointment – ‘Have An Impact’

DIRECTOR OF INTELLECTUAL PROPERTY Biotechnology Stevenage GYROSCOPE™ Therapeutics (GYROSCOPE) is a new company recently formed by Syncona Ltd (Syncona) and operates in the ﬁeld of gene therapy. From October 2017 the company will be based at the Stevenage BioScience Catalyst which is the UK’s ﬁrst open innovation biomedical catalyst. Syncona was formed in 2016, when BACIT (formerly Battle Against Cancer Investment Trust) acquired Syncona Partners Ltd to form an investment company valued at more than £850 million. Syncona is a unique healthcare company with the track record, capability, scale, capital, ambition and long term view to succeed in delivering life changing outcomes for patients.

The Role – the Candidate will: • Work in a fast-paced, dynamic environment with high-calibre individuals covering all aspects of the business from investment, operations, science and development. • Work with the management team and innovation partners in delivering the IP strategy. • Take a commercial role in terms of FTO analysis, patentability studies and competitive mapping etc. • Take ownership of the IP process – be that patents, trade marks or designs – from preparatory IP support through to supporting license or joint venture negotiations.

GYROSCOPE will utilise its cutting edge technology and expertise in the immune system, genetics and gene therapy areas.

• Liaise closely with the R&D team to identify emerging IP and ensure it is properly captured.

GYROSCOPE has and is successfully recruiting world-class executives into key management roles and now wishes to appoint a Director of Intellectual Property (IP) to work with its management team. The company has both an active research group and manufacturing group who are generating IP which the company is seeking to protect and commercialise.

• Possess an excellent first degree in biology, biochemistry, molecular biology, biotechnology or a related discipline.

The appointment of a Director of IP is of key importance to the continued protection of the emerging IP assets, and management of IP risk. You will have a unique and exciting opportunity to join a team fostering innovation at the cuttingedge and to drive future IP strategies and activities.

The Candidate will:

• Be a qualified EPA, and preferably CPA, with six years’ post-qualification experience. • Be commercial in mind-set and enjoy interacting with the business. • Be dynamic, personable and able to connect with different cultures and different scientific/ therapeutic areas. • Be able to work autonomously with minimal supervision, taking leadership of IP aspects and be able to make decisions on imperfect information.

APPLICATIONS: Please contact Marlow IP Recruitment Ltd on +44 (0)1423 522838 or alternatively email your CV to Graham Marlow, Managing Director quoting reference number 2065; graham@marlowiprecruit.com All third party applications will be forwarded to Marlow IP Recruitment for assessment.

CIPA JOURNAL

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SEPTEMBER 2017

www.cipa.org.uk

30/08/2017 22:22:47

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 (1-3 yrs

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 industry

on other people moving within the organisation.

and varied portfolio.

leading salary and excellent beneﬁts package.

Physics

Biotech

IT & Engineering

Trainee - Nationwide

Associate – Oxford

Part Qualiﬁed – London

Ref: 124333

Ref: 129441

Ref: 130045

Are you seeking a trainee Patent Attorney position

Ideal for a progressive and commercially astute

Forward thinking company are seeking a part

with a well-respected IP firm that has a proven

qualiﬁed Patent Attorney (CPA or EPA) with a

qualiﬁed Patent Attorney with expertise in either

track record of developing careers? Providing

proven life sciences/biotechnology background and

mechanical engineering or electronics to join the

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

drafting/prosecution experience with direct clients.

London team. Whilst there is an existing caseload for

from you. I am working with a variety of firms

Therefore, you must be comfortable in liaising with

the successful candidate, a desire to acquire, foster

throughout the UK seeking such individuals.

clients and feel conﬁdent in advising and defending

and grow new clients and contacts is a key aspect

Once I understand your career motivations, I can

complex patent portfolios. First-hand experience

of the role. Therefore, you will need to demonstrate

advise the companies best equipped to introduce

of handling blue-chip, SMEs and University based

effective communication skills and the drive to grow

you to.

clients is desirable.

the practice.

Electronics

Electronics & Mechanical Engineering

Chemistry

Salaried Partner - London

Qualiﬁed - Birmingham

Qualiﬁed – London

Ref: 118669

Ref: 124305

Ref: 98939

An exciting opportunity has come available through

Somewhat of an open remit exits in Birmingham for

Qualiﬁed

growth to join this London ﬁrm as a Partner designate.

Patent Attorneys with high tech, physics, telecoms,

constraints?

The initial role is designed to develop to equity within

electronics or mechanical engineering backgrounds.

autonomous

one or two years. The ﬁrm is well established and has

You will work closely with the lead Partner in the

international ﬁrm has a strong presence in

a strong reputation within the industry for the quality

group to contribute towards the development of the

London as well as a solid reputation in Europe.

of its work in the IT & Engineering team. The IT &

group and the business. The successful candidate

An opportunity has now arisen for an Attorney

Engineering team is the ﬁrm’s largest department,

will have capacity to work independently and directly

specialising in chemical subject matter to join its

and this appointment will play a pivotal role in further

with small, medium and large industrial clients and

busy London office. A competitive salary and good

advancing its market share and strategic objectives.

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-pp79-G2_1-RHS.indd 79

Mob 07426 043744

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

30/08/2017 22:22:31

Feeling squeezed? We can help. Tight deadlines, changes in the market, cost/budget pressures, resource constraints and increased risk can leave you feeling more than a little squeezed. Talk to our specialist team to see how we can help relieve the pressure.

IP annuities and renewals IP recordals PCT national/regional phase entries 7HYPZ *VU]LU[PVU ÄSPUNZ Stand-alone translations by patent attorneys European patent validations (for EP attorneys only)

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Introducing our group brand

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30/08/2017 22:22:05

Novagraaf is recruiting a

Managing Director, Trademarks to lead its trademark business in the UK An exciting new opportunity to shape and grow the UK business of a leading IP ﬁrm. The role would be perfect for senior, entrepreneurial and ambitious trademark practitioners looking for their next step in the profession.

A track record of inspiring leadership and commercial growth, as well as innovative client management and practical expertise is required. Candidates should ideally have international experience, and a career history that includes both private practice and industry.

Competitive and attractive rewards package • Excellent development opportunities • Highly visible position within the Novagraaf group • A key role within a fast-growing and dynamic organisation • UK ofﬁces in London, Manchester and Norwich •

FOR MORE INFORMATION visit www.novagraaf.com/en/vacancies or e-mail rhona@connor.co.uk

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30/08/2017 22:02:51

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30/08/2017 22:03:08